Defendants in patent cases often seem to throw in somewhat obscure affirmative defenses with little or no factual support. "Unclean hands" is a classic example. Defendants will sometimes seem to include defenses like unclean hands and prosecution latches with no real factual support (and, I suspect, not always the best grasp on what those defenses really mean).
Judge Stark issued an opinion today on a motion to strike "unclean hands" and "prosecution laches" defenses offers an example of what happens when a defendant actually does adequately support these defenses.
First, the standard: to succeed on a motion to strike affirmative defenses, the insufficiency must be "clearly apparent":
"[P]ursuant to Rule 12(f), the Court may strike from a pleading any insufficient defense." . . . A court should not strike a defense unless its insufficiency is " 'clearly apparent." ' . . . However, "a court is not required to accept affirmative defenses that are mere bare bones conclusory allegations, and may strike such inadequately pleaded defenses." . . .
Natera, Inc. v. Genosity Inc., C.A. No. 20-1352-LPS, D.I. 38 (D. Del. Mar 14, 2022).
As to unclean hands, Defendant's affirmative defense survived because its complaint alleged that the patentee had used confidential information to tailor its claims to Defendant's products:
[T]o establish an unclean hands defense, a defendant must show that "(1) a party seeking affirmative relief (2) is guilty of conduct involving fraud, deceit, unconscionability, or bad faith (3) directly related to the matter in issue (4) that injures the other party (5) and affects the balance of equities between the litigants." . . .
[Defendant] Genosity alleges that [Plaintiff] Natera never claimed ArcherDX's method during "protracted and convoluted prosecution at the [PTO] spanning more than a decade" and then drafted the claims of the '220 patent in an attempt to cover ArcherDX's method, doing so "only after one of its senior executives left Natera, began working for ArcherDX, gained access to confidential information relating to ArcherDX's technology and then returned to Natera." . . . A plausible inference can be drawn from these alleged facts that Natera misused ArcherDX's confidential information to obtain claims that it did not invent and then asserted these claims against Genosity.
Those allegations likewise supported Defendant's prosecution laches defense:
Prosecution laches "may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under the totality of the circumstances." . . . Natera contends that Genosity's affirmative defense of prosecution laches "simply pleads the legal conclusion of unreasonable delay or prejudice and does not plead any facts, other than simply citing the timeline of applications." . . . The Court, however, agrees with Genosity that its allegations that Natera delayed its prosecution of the claims of the '220 patent, and "Natera has improperly sought to delay competition in the IVD market by pursuing patent claims it did not invent" . . . plausibly support an inference that Natera's prosecution delay is "unreasonable and unexplained."
All told, it's interesting to see both what a motion to strike affirmative defenses looks like these days—the bar to survive is fairly low—and what kind of substantive allegations are sufficient to truly support unclean hands and prosecution laches defenses.
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