United States District Court, D. Delaware
ABBVIE INC. and ABBVIE BIOTECHNOLOGY LTD
BOEHRINGER INGELHEIM INTERNATIONAL GMBH, BOEHRINGER INGELHEIM PHARMACEUTICALS, INC., and BOEHRINGER INGELHEIM FREMONT, INC.
MEMORANDUM AND ORDER CONCERNING DOC. NO. 71
RICHARD A. LLORET U.S. MAGISTRATE JUDGE.
(collectively “Boehringer”) have moved to compel
plaintiffs (collectively, “AbbVie”) to produce
documents sought in Boehringer's Second Set of Requests
for Production of Documents and Things (RPD) that are related
to Boehringer's unclean hands defense. Boehringer's
Motion (BI Mot.) at 1 (Doc. No. 71). AbbVie has responded
(Doc. No. 79) (AV Res.), and Boehringer has replied to the
response (Doc. No. 86) (BI Rep.).
claims its requests are tailored to the defense of unclean
hands. BI Mot. at 1. AbbVie claims that Boehringer failed to
plead the defense adequately, under Fed. R. Civ. Pro. 9(b),
and so should be denied discovery. AV Res. at 1.
Boehringer's Ninth Defense alleges that “Plaintiffs
cannot obtain relief, including injunctive relief, because of
unclean hands.” Id. at 3. AbbVie argues that
in Delaware, unclean hands must be pled with particularity
under Fed.R.Civ.P. 9(b). Id. at 5 (citing to
Sonos, Inc. v. D&M Holdings, Inc., No.
14-1330-RGA-MPT, 2016 WL 449493, at *5 (D. Del. Aug. 10,
2016)). AbbVie also contends that Boehringer's defense
actually is an “inequitable conduct” defense,
because it is based on “an unconscionable pattern of
withholding and/or misrepresenting information to the [Patent
Office].” AV Res. at 3 (citing to BI Mot., Ex. 2 at 6)
(brackets added by AbbVie); see EMC Corp. v. Pure
Storage, Inc., No. 13-1985 (RGA), 2014 WL 5795557, at *2
(D. Del. Nov. 5, 2014) (a party pleading inequitable conduct
must satisfy Rule 9(b)'s pleading requirements, because
the defense is founded on an affirmative misrepresentation of
facts with specific intent to deceive)). AbbVie contends that
Boehringer's discovery requests “should be denied
[because they are] based on an insufficiently pled defense or
allegations not yet in the pleadings.” Id.
(citing to Eurand, Inc. v. Myland Pharm., Inc., 266
F.R.D. 79, 82-83 (D. Del. 2010)).
points out that the time for filing a motion to strike the
affirmative defense has passed. BI Rep. at 1. Boehringer
argues that an unclean hands defense need not be predicated
on fraud. Id. at 2. Here, Boehringer's defense
and counterclaim allege a “global effort to improperly
delay competition with respect to adalimumab” by
pursuing “overlapping and non-inventive patents for the
purpose of developing a ‘patent thicket[.]'”
BI Mot. at 3 (citing to Doc. No. 20 at 44-47, ¶ 21-34).
defense of unclean hands may be based on fraudulent conduct,
but it need not be so. See Gilead Sciences, Inc. v. Merck
& Co., Inc., 888 F.3d 1231, 1239 (Fed. Cir. 2018)
(business and litigation misconduct established a defense of
unclean hands); In re New Valley Corp., 181 F.3d
517, 525 (3d Cir. 1999) (“when assessing whether to
invoke the doctrine of unclean hands, courts of equity must
not be bound by formula or restrained by any limitation that
tends to trammel the free and just exercise of
discretion”) (quoting Keystone Driller Co. v.
General Excavator Co., 290 U.S. 240, 245-46 (1933)). In
Keystone the Supreme Court held that the wrongful
suppression of evidence by plaintiff in a prior case
warranted application of the doctrine of unclean hands. 290
U.S. at 247. See also Gilead Sciences, Inc. v. Merck
& Co, Inc., 2016 WL 3143943, at *27 (N.D.Cal. 2016),
aff'd 888 F.3d 1231 (collecting cases in which
application of the doctrine of unclean hands was founded on
“improper business dealings.”). Sonos
contains language that suggests a defense of unclean hands is
categorically predicated on fraud, and so must satisfy Fed.
R. Civ. Pro. 9(b)'s particularized pleading
requirements. Nevertheless, the district court in
Sun Microsystems, Inc. v. Versata Enterprises, Inc.,
630 F.Supp.2d 395, 410 (D.Del. 2009), to which the court in
Sonos cites, refused to strike an unclean hands
defense that was not based on fraud. Sonos itself
notes that an unclean hands defense may rest on allegations
of unconscionability or bad faith, rather than fraud. 2016 WL
4249493, at *5. Sonos is authority for the
proposition that an unclean hands defense based on fraud or
misrepresentation must satisfy the pleading requirements of
Rule 9(b), but not for the broader proposition that every
invocation of unclean hands must satisfy Rule 9(b).
read Boehringer's theory, it alleges a species of
anti-competitive behavior that does not depend upon proof of
fraud. Cf., e.g. In re Processed Egg
Products Antitrust Litigation, 851 F.Supp.2d
867, 879 (E.D.Pa. 2012) (“in Lum v. Bank of
America, 361 F.3d 217 (3d Cir.2004), abrogation on
other grounds recognized by In re Insurance Brokerage
Antitrust Litig., 618 F.3d 300, 323 n. 22 (3d Cir.2010)
. . . the Court of Appeals recognized that ‘antitrust
claims generally are not subject to the heightened pleading
requirement of Rule 9(b), ' but that Rule 9(b) applies
when ‘[f]raud is the basis for the antitrust violation
alleged.' Id. at 220.”).
theory may or may not be viable as a patent defense or as a
basis for relief by way of counterclaim. The viability of the
claim as a matter of law may be tested through summary
judgment. A discovery motion is not a good mechanism for
litigating the substance of the defense. At this stage of the
litigation, Boehringer is entitled to discovery that is
reasonably and proportionately directed to its
claims. AbbVie must respond to Boehringer's
requests for production of documents and things.
it is on this 4th day of June, 2018,
ORDERED, that Boehringer's Motion to
Compel, Doc. No. 71, is GRANTED. AbbVie
shall respond promptly to Boehringer's Second Set of
Requests for Production of Documents and Things, No. 36-37
 AbbVie correctly points out the
Federal Circuit's concern over “the potential for
misuse” of the unclean hands doctrine, and the need to
“ensure that the unclean hands doctrine operates in
harmony with, and does not override” the Federal
Circuit's inequitable conduct standards. AV Res. at 9-10
(quoting from Gilead, 888 F.3d at 1240 and n.3). But
in Gilead the Federal Circuit affirmed a district
court's finding that business and litigation misconduct
other than fraud could establish a defense of unclean hands.
Id. The extent to which the limits on the
inequitable conduct defense, described in Therasense,
Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed.
Cir. 2011) (en banc) (cited to in Gilead, 888 F.3d
at 1240)), will circumscribe Boehringer's unclean hands
defense may inform the parties' summary judgment
 “Because an element of unclean
hands is based in fraud, the defense must be pled with
particularity under Fed.R.Civ.P. 9(b).” 2016 WL
4249493, at *5.
 The anti-competitive effect of a
so-called “patent thicket” of weak or invalid
patents has been the subject of scholarly and judicial
debate. See Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1327- 28 (Fed. Cir. 2016)
(treating the problem of patent thickets in the context of
software patents); Ass'n for Molecular Pathology v.
U.S. Patent and Trademark Office, 653 F.3d 1329, 1380
(Fed. Cir. 2011) (Bryson, J. dissenting) (arguing that patent
thickets create real disincentives to innovation in the
context of genetic research), vacated on other grounds
Association for Molecular Pathology v. Myriad Genetics,
Inc., 566 U.S. 902 (2012); Johanna Jacob, Should Our
Genes Be Part of The Patent Bargain? Maximizing Access to
Medical Diagnostic Advances While Ensuring Research Remains
Profitable, 28 Santa Clara Computer & High Tech.
L.J. 403 (2012) (arguing that concerns about patent thickets
are overblown in the context of genetic research)). Whether
the creation of a “patent thicket” can amount to
a cognizable defense to a claim of patent infringement, such
as unclean hands, and where the boundary line between licit
and illicit conduct might be, is not clear. The simple act of
applying for and receiving a patent, standing alone, can
hardly be the basis for patent invalidation.
 AbbVie's argument focuses on the
purported legal deficiencies of Boehringer's defense.
There is little to suggest that the relevant documents would
be overwhelmingly large in number, or take an inordinate