Under Federal Rule of Civil Procedure 9(b), inequitable conduct must be pled with particularity. Merely averring the substantive elements of inequitable conduct without presenting specific factual bases for the allegation is insufficient. In Exergen, the Federal Circuit clarified that to plead inequitable conduct, “Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” In addition, although “knowledge” and “intent” may be averred generally, a pleading of inequitable conduct “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.” Applying these principles to the case at bar, the Federal Circuit held that SAAT’s pleading of inequitable conduct was deficient regarding the specific facts alleged. SAAT argued that Exergen’s ‘685 patent was unenforceable due to inequitable conduct because Exergen did not disclose other patents during the prosecution of the ‘685 patent that were material to the patentability of the ‘685 patent and not cumulative of information already of record in the prosecution history of the ‘685 patent. However, the Federal Circuit concluded that SAAT’s pleading failed to identify the “who” of the alleged material omissions, because it referred only to “Exergen, its agents and/or attorneys,” and did not name a specific individual associated with the filing or prosecution of the application who knew of the material information and deliberately withheld or misrepresented it.

SAAT’s pleading also failed to identify the “what” and “where” of the alleged material omissions, because it did not identify to which claims and limitations the withheld references were relevant, or where the material information was found in the references. In addition, SAAT’s pleading failed to explain “why” the withheld information was material and not cumulative, and “how” an examiner would have used the information in evaluating the patentability of the claims, because it did not identify the claim limitations that were not covered by the material already of record.

The Federal Circuit also held that SAAT’s pleading of inequitable conduct was deficient regarding the reasonableness of the inference of knowledge and intent. SAAT maintained that Exergen was aware of the other patents that were not cited during the prosecution of the ‘685 patent. However, SAAT’s pleading did not provide a factual basis for inferring that a specific individual who owed a duty of disclosure in prosecuting the ‘685 patent knew of any specific information in the other patents that was material to the patentability of the claims of the ‘685 patent. According to the Federal Circuit, an individual can know that a specific reference exists without a presumption that the individual knows about specific material information within that reference. Also, an individual’s mere disclosure of a reference during the prosecution of one application but not during the prosecution of a related application is insufficient to meet the threshold level of deceptive intent required for an allegation of inequitable conduct.

SAAT also asserted that arguments made by Exergen during prosecution of the ‘685 patent were inconsistent with statements on Exergen’s website, and that these arguments were misrepresentations and omissions made with an intent to deceive the PTO. However, the Federal Circuit concluded that SAAT failed to allege any facts from which one could conclude that the individual who made the arguments to the PTO was aware of the allegedly contradictory statement on Exergen’s website. Therefore, the Federal Circuit held that SAAT’s pleading of inequitable conduct was deficient under Rule 9(5).