• Magistrate Judge Stark Recommends That Defendants' Motion to Strike Inequitable Conduct Counterclaim Be Granted In Part and Denied In Part    
  • April 6, 2010
  • Law Firm: Richards, Layton & Finger, P.A. - Wilmington Office
  • In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009), Magistrate Judge Stark recommended that Fairchild’s motion to strike and dismiss Power’s counterclaim of inequitable conduct be granted in part and denied in part.  Magistrate Judge Stark analyzed the motion under the pleading standards for Rule 9(b) and Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009).  Fairchild argued that, as to the first of the three patents at issue, Power did not sufficiently allege that the inventor had knowledge of prior art, but Power noted that the inventor discussed the prior art in contemporaneously filed patent applications.  Magistrate Judge Stark recommended that the Court deny the motion to strike on this issue but recommended that the motion be granted as to two other individuals, since Power did not show that the patent agent for the other two patents at issue filed or prosecuted this patent, and did not allege that the attorney who prosecuted this patent had knowledge that the facts he presented to the PTO were false or misleading.

    Power also alleged infectious unenforceability, because the specifications of this first patent and the two others at issue were related, shared some figures, had substantively the same limitations, and were all asserted against Power products.  Magistrate Judge Stark did not consider this sufficient to establish an immediate and necessary relationship so as to infect the other two patents and recommended that the Court grant the motion to strike on this issue.  Magistrate Judge Stark found that Power’s inequitable conduct claim against the second of the three patents at issue failed to allege the “what” and the “where” under Exergen and further found that Power’s allegations that the inventor had knowledge of prior art and deceptive intent relied on an “attenuated chain of logic”; therefore, Magistrate Judge Stark recommended that the motion to strike be granted.

    Because Power alleged in its counterclaim that the inventor, in his applications for other patents, had described prior art for the last of the three patents at issue, Power sufficiently alleged knowledge on his part.  Magistrate Judge Stark inferred that the inventor failed to disclose these references with deceptive intent and recommended that the Court deny the motion to strike on this issue.  The same allegation against the patent agent for this third patent did not suffice, however, because Power did not allege that the agent prosecuted the inventor’s other patents, which included the prior art descriptions.  But Power failed to allege that the patent agent or the inventor knew that products described in an article with which they were familiar contained material prior art for this third patent, so Magistrate Judge Stark recommended that the motion to strike be granted on this issue.  Finally, Magistrate Judge Stark noted that, by satisfying Exergen and Rule 9(b), those claims for which he recommended that the motion to strike be denied also satisfied the standards to survive a Rule 12(b)(6) motion to dismiss.