Intervet Inc. et al v. Boehringer Ingelheim Vetmedica Inc.

Filing 134

MEMORANDUM ORDER re 110 MOTION to Amend its Answer and Counterclaim filed by Boehringer Ingelheim Vetmedica Inc. is GRANTED. Signed by Judge Leonard P. Stark on 10/9/12. (ntl)

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT QF DELAWARE
INTERVET INC., d/b/a MERCK
ANIMAL HEALTH and THE ARIZONA
BOARD OF REGENTS, on behalfofThe
University of Arizona,
Plaintiffs and Counterclaim
Defendants,

<t.A. No. 11-595-LPS

v.
BOEHRINGER INGELHEIM
VETMEDICA, INC.,
Defendant and Counterclaim
Plaintiff.

MEMORANDU~ ORDER
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Pending before the Court is Defendant Boehr~nger Ingelheim V etmedica, Inc.'s
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("Vetmedica") Motion to Amend its Answer and

Co~nterclaims against Plaintiffs Intervet Inc.,
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d/b/a Merck Animal Health and The Arizona Board qfRegents (collectively, "Intervet"). (D.I.
110) For the reasons set forth below, the Court will <!JRANT Vetmedica's motion.
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1.

Intervet filed its complaint for infring~ment of U.S. Patent No. 5,610,059 (the
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'"059 patent") against Vetmedica on July 6, 2011. (~.1. 1) The deadline to amend pleadings was
on or before February 16, 2012; trial is set for June 17, 2013. (D.I. 20)
2.

On August 29, 2012, Vetmedica mov,d to amend its answer and counterclaims

against Intervet to add an affirmative defense and cottnterclaim that the '059 patent is
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unenforceable due to inequitable conduct. (D.I. 110)
3.

Pursuant to Federal Rule of Civil Procedure 16(b)(4), "[a] schedule may be

modified only for good cause and with the judge's consent." Good cause is present when the
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schedule cannot be met despite the moving party's diligence. See Leader Techs., Inc. v.
Facebook, Inc., 2010 WL 2545959, at *3 (D. Del. Jtu(le 24, 2010). Pursuant to Rule 15, courts

generally grant motions to amend absent a showing or undue delay, bad faith, or dilatory motive
on the part ofthe movant, undue prejudice to the opppsing party, or futility of the amendment.
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See Dole v. Arco Chem. Co., 921 F.2d 484,487 (3d qir. 1990).

4.

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Vetmedica states that it could not hav4 amended its answer to comply with the
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Scheduling Order and pleading requirements of ineq1itable conduct, and has shown good cause
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for its motion. Vetmedica asserts that it discovered f~cts supporting its inequitable conduct claim
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after the amendment deadline. For example, Dr. Joeis' laboratory notebook, produced on May
4, 2012, was new and key evidence establishing that Pr. Joens had knowledge of the prior arti

H.F. Stills, Isolation of an Intracellular Bacterium.fr~m Hamsters (Mesocricetus auratus) with
Proliferative Ileitis and Reproduction of the Disease with a Pure Culture, 59 Infection and
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Immunity 3227 (1991) [hereinafter Stills 1991]- tha~ the inventors allegedly failed to disclose to
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the United States Patent and Trademark Office in vio~ation of their duty of candor. (D.I. 129 at
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4) Further, Vetmedica asserts that only through the ~ay 2012 deposition of Dr. Glock did it
learn that Dr. Glock knew of the materiality of Stills l991. Similarly, Mr. Seay' s August 2012
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deposition established that the inventors could not

ex~lain their failure to disclose Stills 1991.
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vetmedica acted diligently in gathering evidence to srpport its inequitable conduct claim and
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informed Intervet of its intention to amend its answe~ approximately one week after Mr. Seay' s
deposition. The Court finds good cause to allow Vet~edica's amendment.

6.

The Court does not fmd undue delay, t•d faith, or dilatory motive in Vetmedica's

actions. See generally Probert v. Clorox Co., Inc., 2~8 F.R.D. 491, 494 (D. Utah 2009), aff'd,
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404 F. App'x 486 (Fed. Cir. Dec. 9, 201 0) ("[U]nsupported charges of inequitable conduct are
disfavored by the Federal Circuit.").
7.

The amended claim is not futile, as wc)uld be the case if it "fail[ ed] to state a claim
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upon which relief could be granted." In re Burlingto~ Coat Factory Sec. Litig., 114 F.3d 1410,
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1434 (3d Cir. 1997). Inequitable conduct "requires i4entification ofthe specific who, what,
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when, where, and how of the material misrepresentadon or omission committed before the PTO."
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Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 13t2, 1327 (Fed. Cir. 2009); see also Fed. R.
Civ. P. 9(b). Vetmedica does so. (D.I. 110 Ex. 1 at Ij4-18) Vetmedica alleges facts from which
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the Court may infer that the inventors were aware of1he prior art and its materiality, as well as
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their deceptive intent. (!d. at 18-25)
8.

The Court is not persuaded that Intervtt will be unduly prejudiced if the Court

grants Vetmedica's motion. Intervet contends that it ~as been unable to explore inequitable
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conduct in the depositions of Dr. Glock and Mr. Sea+ nor did it generally pursue discovery
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relating to inequitable conduct. (D.I. 122 at 14) Dis1overy appears to be ongoing (D.I. 129 at 9)
and if any slight modification of the schedule is nece$sitated by Defendants' amendment, the
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parties may propose such a modification to the

Court~
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Accordingly, Vetmedica's Motion to Amend hs Answer and Counterclaims (D.I. 110) is
GRANTED.

Dated: October 9, 2012
Wilmington, Delaware

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