Chief Judge Stark Grants Leave to Assert Inequitable Conduct Defense and Counterclaim

June 14, 2018

Publication| Intellectual Property

In MorphoSys AG v. Janssen Biotech, Inc., No. 16-221-LPS (D. Del. Apr. 19, 2018), Chief Judge Stark granted the defendants’ motion to amend their pleadings to assert inequitable conduct. The Court found that the proposed amended answers and counterclaims sufficiently alleged that certain individuals having a duty of candor failed to disclose information material to patentability with a specific intent to deceive the Patent & Trademark Office. Chief Judge Stark further concluded that the defendants acted diligently by moving months before the close of fact discovery, approximately a year before trial, and shortly after depositions on which defendants relied to establish good cause for the allegations. Accordingly, the Court concluded that any prejudice the plaintiff may suffer from having to face inequitable conduct claims (such as additional discovery) could not defeat the motion to amend.

Key Point: The Court granted the defendants’ motion to amend to add the inequitable conduct counterclaim and defense, but noted that on the merits the defendants have a high burden and may ultimately fail to prove the allegations.

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