Free Memorandum and Order - District Court of Delaware - Delaware

Case 1:O7—cv-00552-SLR Document 35 Filed O3/07/2008 Page 1 of 2
IN THE UNITED STATES DISTRICT COURT
IN THE DISTRICT OF DELAWARE
ELAN CORPORATION, PLC and )
ELAN PHARMA INTERNATIONAL )
LTD., )
Plaintiffs, g
v. g Civ. No. 07-552-SLR
TEVA PHARMACEUTICALS USA, g
INC., )
I
Defendants. )
MEMORANDUM ORDER
At Wilmington this 7th day of March 2008, having heard oral argument on
plaintiffs’ motion to dismiss counts III and VI of defendant’s counterclaims and to strike
its third and sixth affirmative defenses; and having reviewed the papers submitted in
connection with said motion;
IT IS ORDERED that said motion (D.l. 12) is denied without prejudice to renew.
Although the court agrees with the basic proposition underlying the motion, that ls, that
attorneys are permitted to advocate for their own interpretation of the prior art before an
examiner, nonetheless, arguments made to the PTO can form the basis for inequltable
conduct defenses under certain circumstances. E, ggg, Young v. Lumenis, Inc., 492
F.3d 1336, 1349 (Fed. Cir. 2007) ("[G]ross mlscharacterizations or unreasonable
interpretations of the [prior art] reference" can support an inequltable conduct
determinatlon.). At this stage of the proceedings, the court is required to take

Case 1:O7—cv-00552-SLR Document 35 Filed O3/07/2008 Page 2 of 2
defendant’s factual representations as true, that is, that the arguments made to the
examiner involve intentional falsehoods about a material reference.
IT IS FURTHER ORDERED, however, that no discovery shall be taken
regarding the intent prong of the inequitable conduct defense. Specifically, the
deposition(s) of the prosecuting attorney(s) shall not be taken, nor shall interrogatories
or document production requests be propounded that are related to such, absent
further order of the court.
United States gistrict Judge
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