RICHARD A. LLORET, Magistrate Judge.
Defendants (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.).
Boehringer 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 ust 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)).
Boehringer 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).
A 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)
As I read Boehringer's theory, it alleges a species of anti-competitive behavior that does not depend upon proof of fraud.
Boehringer's 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.
Accordingly, it is on this 4th day of June, 2018,