Shen Wei (USA) Inc. v. Sempermed, Inc., No. 05 C 6004, 2007 WL 328846 (N.D. Ill. Jan. 30, 2007) (Guzman, J.).
Judge Guzman granted defendant leave to amend its answer adding inequitable conduct affirmative defenses and counterclaims alleging that plaintiffs failed to disclose their prior art sale of a medical glove embodying their invention, but not regarding the existence and sale of a third party’s glove of which plaintiffs were allegedly aware. The Court held that defendant’s affirmative defense and counterclaim met the Fed. R. Civ. P. 9(b) standard with respect to plaintiffs’ alleged sale of their own product more than one year before their priority date because, although defendant did identify the person who intended to deceive the USPTO, it was reasonable to conclude that the inventor was charged with the intent. With regards to the sale of the third party, Ostar, glove defendant only alleged that plaintiffs generally knew of the glove and its materiality, but failed to disclose it. Defendant did not plead with sufficient specificity: who knew about the Ostar glove, what they knew, when they knew it, whether the failure to disclose was intentional or why the Ostar glove was material.