inequitable conduct : CAFC Alert

Hiding prior art from the Patent Office: from inequitable conduct to antitrust violation

Nicolas Seckel | February 18, 2016

TransWeb, LLC v. 3M Innovative Properties Co.  (Precedential)

February 10, 2016

Before Wallach, Bryson and Hughes.  Opinion by Hughes.

Summary:

A 3M inventor and the in-house prosecuting attorney concealed a prior public use by TransWeb which rendered the 3M invention unpatentable. A sample of the TransWeb prior art was given to the Patent Office Examiner with the pretense that it had been communicated under a confidentiality agreement. Given 3M’s capacity to monopolize the market, this fraud constituted, not just inequitable conduct, but also antitrust violation. Under the antitrust statute, 3M is liable, not only for treble damages ($103,000), but also treble attorney fees ($23 million).


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Inequitable Conduct under the Therasense Standard

Andrew Melick | October 1, 2014

American Calcar, Inc. v. American Honda Motor Co., Inc.

September 26, 2014

Panel:  Prost, Newman and Wallach.  Opinion by Prost. Dissent by Newman.

Summary:

American Calcar, Inc. (“Calcar”) sued American Honda Motor Co., Inc. (“Honda”) for infringement of fifteen patents, three of which are involved in this case. The three patents are related by a common priority application and share a common specification. The patents deal with a multimedia system for accessing vehicle information and controlling vehicle functions. The parent application disclosed and explicitly referred to a system used in the 1996 Acura RL. However, Honda alleged that Calcar deliberately withheld the 1996 Acura RL owner’s manual and photographs taken of the system that were in Calcar’s possession. The district court found the missing information to be material under the “but for” materiality standard and found that the missing information was intentionally withheld based on the “single reasonable inference” standard. The CAFC affirmed the district court’s finding.


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Patent Infringement Litigation as a Double-Edged Sword: Invalidated Patents and Inequitable Conduct

John M. Wang | December 6, 2013

The Ohio Willow Wood Company (OWW) v. ALPS South LLC. (Alps)

Decided November 15, 2013

Before Dyk (Circuit Judge), Bryson (Circuit Judge) and Reyna (Circuit Judge).  Opinion by Reyna.

Keywords: collateral estoppel, obviousness, inequitable conduct, reexamination, and rule of reason.

Summary:

OWW initiated a suit against Alps for patent infringement.  After a long legal battle including two ex parte reexaminations, two District Court proceedings, and two CAFC appeals, OWW lost two patents and was charged with inequitable conduct.

Details:

OWW is the owner of US Patent No. 5,830,237 (the ‘237 patent), entitled “Gel and Cushioning Devices,” filed on March 5, 1996.  The ‘237 patent disclosed cushioning devices designed to cover the residual stumps of amputated limbs, acting as a shape-conforming buffer, as illustrated below, to make the use of attached prostheses more comfortable.  The primary invention was a cushion liner comprising a fabric covering in the shape of a tube sock coated on only one side with mineral oil-based polymeric gels.

fig.1

On December 27, 2004, OWW filed its complaint against Alps for infringement of the ‘237 patent.  After the District Court issued its Claim Construction order in the proceedings, Alps filed its first request for an ex parte reexamination of the ‘237 patent.  The District Court stayed the litigation for the duration of reexamination proceedings, pending resolution of the validity of the disputed patent.
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A District Court application of Therasense

Lee Wright | February 28, 2013

Caron and Spellbinders Paper Arts Company, LLC vs. QuicKutz, Inc.

United States District Court for the District Of Arizona

November 13, 2012, Decided

 

SUMMARY

In Therasense, Inc. v. Becton, Dickinson & Company, 649 F.3d 1276 (Fed. Cir. 2011) the CAFC ruled that District Courts must find intent and materiality separately, i.e., weighing the evidence of intent to deceive independently from analysis of materiality.

Here, in one of the few cases since Therasense, a District Court applies separate analyses for each of intent and materiality.  In addition, the District Court applied the exception to the but-for materiality requirement in cases of affirmative egregious misconduct.

Knowingly not naming the inventors was held to be inequitable conduct.

Declarations by persons not skilled in the art were held to be inequitable conduct.

Declarations that did not disclose financial relationships with the inventors were held to be inequitable conduct.

A Declaration where the Declarant, when he made the declaration, did not know whether the statements in the declaration were true or not was held to be inequitable conduct.


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Saved by Therasense: Deliberate decision to withhold references not found where art was cited in foreign counterpart and domestic co-pending applications

Ryan Chirnomas | October 10, 2012

1st Media v. Electronic Arts et al.

Decided  September 13, 2012

Panel: Rader, Linn and Wallach.  Opinion by Rader.

Summary

This case demonstrates how Therasense has changed the inequitable conduct analysis.  Although the individual inventor and sole practitioner knew of references which were probably material, and did not submit the references, this is now insufficient to demonstrate inequitable conduct.  It must additionally be shown that there was a specific decision to withhold the documents from the USPTO, in order to show an intent to deceive.  This can be demonstrated, for example, by selective disclosure.  However, no such evidence was presented, and thus an intent to deceive, the first part of the inequitable conduct analysis, was not found.


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Revisiting Therasense, CAFC finds that an inventor’s subjective belief that submission of documents was unnecessary may not be sufficient to avoid a showing of intent to deceive

Shuji Yoshizaki | April 18, 2012

Therasense判決に基づくCAFC判決;書類のIDS提出は必要ではないとする発明者の主観だけでは欺瞞の意図の立証を避けるのには十分ではないかもしれない。

Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Hospira Inc. and Apotex Inc.

April 9, 2012

Panel:  Linn, Dyk, and Prost; Opinion by Prost

Summary:

The court found that the patents were invalid over withheld references, and unenforceable for inequitable conduct.

If the patentee did not narrow the ordinary meaning of  a claim term by either acting as its own lexicographer or disclaiming claim scope either in the specification or during prosecution, that  claim term cannot be interpreted more narrowly than its ordinary meaning.

If the claims at issue are found invalid over a withheld reference under the clear and convincing evidence standard, then the withheld reference is found but-for material under the preponderance of evidence in Therasense; in this case, the materiality requirement was met since the patents were invalid based on the withheld references.

The witness’ explanation that that he believed he did not need to disclose the references to the PTO may not be sufficient to show that there was no specific intent to deceive the PTO because that finding was not the single most reasonable inference that could be drawn, unless the testimony is credible and the evidence presented is supported.  The reference disclosing the information that shaped the inventive thinking should be cited, and there is no justification for telling the PTO about the prior art disclosing the problem an inventor examined while concealing key prior art disclosing the solution he chose.


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