Here is an interesting case addressing whether the affirmative defense of inequitable conduct was adequately plead as an affirmative defense in answer to a complaint for patent infringement. In Music Choice v. Stingray Digital Group Inc., 2-16-cv-00586 (E.D. Texas May 2, 2017), Magistrate Judge Payne recommended denying a motion to dismiss affirmative defenses and counterclaims of inequitable conduct, finding that the defendant had provided “sufficient indirect and circumstantial evidence to support the intent element of inequitable conduct at the pleading stage” by alleging that the applicant for the patent had deceived the USPTO with respect to inventorship, and that “the PTO would not have granted the patents had it known” who the true inventors were.
The opinion further commented that the “inequitable conduct claim may prove deficient” after discovery. I suspect so; I may be biased by my experience as a patent examiner, but how often does the PTO pay attention to the inventors are (rarely), and if it does how often does it base its decision to allow claims based on who the inventors are (almost never)?
Should a deception as to inventorship be inequitable conduct? I’ve been involved in defending cases where I sure thought so. But under the current two-pronged standard (materiality and intent to deceive), when is an inventor’s identity ever material to patentability? Perhaps the defendant here should have been required to explicitly plead how and why the deception concerning inventorship was material, not just that it was.