Intellectual Property > IP Newsflash > Fed. Civ. R. 9(b) Does Not Require That an Inequitable Conduct Defense Include Allegations That Intent to Deceive Is the Single Most Reasonable Inference to Be Drawn from the Facts
07 Apr '16

Plaintiff Seville moved pursuant to Fed. R. Civ. P. 12(b)(6) to strike the defendants’ inequitable conduct defense and corresponding counterclaim from the defendants’ answer on the basis that the defendants did not properly plead intent to deceive the Patent Office. The court denied Seville’s motion to strike and explained that the standard for pleading inequitable conduct is different from what needs to be proven to ultimately prevail on the issue.

In denying Seville’s motion to strike, the court reviewed the requirements that a party must satisfy to sufficiently plead inequitable conduct under Fed. R. Civ. P. 9(b), versus what a party must do to prove the intent prong of inequitable conduct. Under Rule 9(b), a party may properly allege “knowledge” and “intent” generally, and the party must specifically plead “sufficient allegations of material underlying facts from which a court may reasonably infer” that a specific person knew of withheld material information or knew that a material misrepresentation was false, and that the specific person withheld or misrepresented the material information with the specific intent to deceive the Patent Office. 

Seville challenged the defendants’ pleading of inequitable conduct on the basis that the defendants did not plead facts to show that intent to deceive was “the single most reasonable interference” that could be drawn from the alleged conduct. The court explained that such pleading is not required under Rule 9(b). Although, to ultimately prevail on their inequitable conduct claim, the defendants would have to prove specific intent under “the single most reasonable interference” standard, all that is required at the pleading stage is for the defendants to plead allegations of underlying facts from which a court may reasonably infer intent to deceive. Because the defendants plead that Seville and its patent attorney misrepresented the continuity status of the patent at issue and failed to disclose specific prior art to the Patent Office, among other failures, and since the court was required to accept the defendants’ allegations as true at the pleading stage, the court held that the defendants alleged sufficient facts from which the court could reasonably infer that Seville and its attorney engaged in conduct with the intent to deceive the Patent Office, and thus satisfied the pleading requirements of Rule 9(b).

Seville Classics, Inc. v. Neatfreak Group, Inc., et al., CV 15-06237 SJO (C.D. Cal. Apr. 1, 2016).