In Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 2009 U.S. Dist. Lexis 118383, Magistrate Judge Stark analyzed defendant Fairchild’s motion to strike and dismiss certain counterclaims and affirmative defenses of inequitable conduct and/or patent misuse asserted by plaintiff Power under the pleading standards articulated by the Federal Circuit in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) and Federal Rule of Civil Procedure 9(b). After analyzing each of the counterclaims and affirmative defenses at issue, Judge Stark recommended that defendant Fairchild’s motion be granted in part and denied in part.
In setting forth the applicable legal standard, Judge Stark recognized that “inequitable conduct, ‘while a broader concept than fraud, must be pled with particularity’ pursuant to rule 9(b).” An individual involved with the filing and prosecution of a patent application engages in inequitable conduct when he or she makes an affirmative misrepresentation of material fact, fails to disclose material information, or submits false material information to the Patent and Trademark Office (“ the PTO”) with specific intent to deceive the PTO. Thus, “[a] pleading that simply avers the substantive elements of inequitable conduct, without setting forth the particularized factual bases for the allegation, does not satisfy Rule 9(b).” Rather, as set forth in Exergen, in order “to plead the ‘circumstances’ of inequitable conduct with the requisite ‘particularity’ under Rule 9(b), the pleading must identify the specific who, what, when, where and how of the material misrepresentation or omission committed before the PTO.”