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Exergen Corp. v. Wal-Mart Stores, Inc. - 575 F.3d 1312 (Fed. Cir. 2009)


In sum, to plead the circumstances of inequitable conduct with the requisite particularity under Fed. R. Civ. P. 9(b), the pleading must identify the specific who, what, when, where, and how of the material misrepresentation or omission committed before the U.S. Patent and Trademark Office (PTO). Moreover, although knowledge and intent may be averred generally, a pleading of inequitable conduct under Rule 9(b) must include sufficient allegations of underlying facts from which a court may reasonably infer that a specific individual (1) knew of the withheld material information or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this information with a specific intent to deceive the PTO. 


Exergen's patents related to infrared thermometers for measuring human body temperature. SAAT manufactured thermometers that detect radiation from the skin that covers the temporal artery. Exergen sued SAAT for patent infringement. A jury found that SAAT directly infringed claim 7 of the '813 patent and that SAAT actively induced infringement of claims 1 and 27-30 of the '685 patent. Infringement of each patent was found to be willful. The jury also found in favor of Exergen on SAAT's invalidity defenses. Finally, the jury awarded lost profit damages totaling more than $ 2.5 million. SAAT moved for JMOL on the grounds of noninfringement, invalidity, and absence of lost profits. These motions were denied. Exergen moved to alter or amend judgment for an award of enhanced damages and prejudgment interest. Both parties appealed.


Did the trial court err in denying the motion for leave to allege inequitable conduct?




The court affirmed the denial of the alleged infringers' motion for leave to allege inequitable conduct. The court also determined that all claims of the '205 patent were anticipated and that no substantial evidence supported the jury's contrary finding. The alleged infringers could not be liable for infringement of this patent because invalid claims could not give rise to such liability. Furthermore, it determined that the patentee failed to introduce substantial evidence to support the jury's finding that the '813 and '685 patents were infringed. Because the court's invalidity and non-infringement determinations required that it reverse the damages award, it did not need to address the patentee's cross-appeal regarding enhanced damages and prejudgment interest. Finally, it concluded that the district court did not abuse its discretion in denying the alleged infringers' motion to amend their pleading because it correctly held that their proposed allegations of inequitable conduct failed to satisfy Fed. R. Civ. P. 9(b)'s heightened pleading requirement.

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