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Failure to Disclose Sales Before Critical Date is Inequitable Conduct

Failure to disclose “material information of prior sales” resulted in a holding that U.S. Patent No. 8,146,428 “is unenforceable due to inequitable conduct” based on a finding of a “specific intent to deceive the PTO into granting the patent.” Total Rebuild, Inc. v. PHC Fluid Power, LLC, No. 6:15-CV-1855 (W.D. La. Sept. 13, 2019). The ‘428 patent is directed to “systems and methods for safely testing devices and components under high-pressure.” Total Rebuild alleged PHC Fluid Power infringed the claims of the ‘428 patent. PHC Fluid Power challenged the enforcement of the ‘428 patent due inequitable conduct of the sole inventor regarding the on-sale and public-use bars of 35 USC § 102(b). The critical date for the ‘428 patent under 35 USC § 102(b) is August 8, 2007. The court noted that “[t]o prevail on inequitable conduct, the accused infringer must prove by clear and convincing evidence that the applicant…

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No Inequitable Conduct: Duty to Disclose Only Goes So Far

A patent prosecutor did not have a duty to disclose that a cited prior art reference inherently disclosed a claimed feature where the examiner misunderstood the reference as failing to disclose the feature. On this basis, a motion to strike in inequitable conduct defense relating to the reference was granted.  Nevro Corp. v. Boston Scientific Corporation, No. 16-cv-06830-VC (N.D. Cal. Oct. 4, 2017). During prosecution, the patent examiner had made obviousness rejections of claim 58 under 35 USC § 103 based on the “Fang” reference, which the inventor both owned and had disclosed. After the patent prosecutor pointed out the subject patent application’s common ownership with the Fang reference, the examiner withdrew the obviousness rejection and allowed claim 58. The defendant here alleged that Fang inherently disclosed “pulse width,” the recited feature of claim 58 that the Examiner had said was missing from Fang. According to defendant, this would have transformed…

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Inequitable Conduct: Prior Device Material to Method Claim?

A court has struck an inequitable conduct defense as inadequately pled because, said the court, the allegedly withheld prior art directed to a device was not material to a patent claim directed to a method for manufacturing a similar device. International Test Solutions, Inc. v. Mipox International Corporation, NO. 16-cv-00791-RS (N.D. Cal. May 16, 2017).  International Test Solutions (“ITS”) owns U.S. Patent No. 7,202,683 (‘683 patent), directed to manufacturing a cleaning device. Mipox alleged that ITS committed inequitable conduct during prosecution of the ‘683 patent. The substantive elements of inequitable conduct are (1) “an affirmative misrepresentation of a material fact, [failure] to disclose material information, or [submission of] false material information” and (2) “specific intent to deceive the” Patent and Trademark Office (“PTO”). Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327, n.3 (Fed. Cir. 2009). A reference is material if the PTO would not have allowed a patent…

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What Facts Support Inequitable Conduct at the Patent Office?

Here is an interesting case addressing whether the affirmative defense of inequitable conduct was adequately plead as an affirmative defense in answer to a complaint for patent infringement.  In Music Choice v. Stingray Digital Group Inc., 2-16-cv-00586 (E.D. Texas May 2, 2017), Magistrate Judge Payne recommended denying a motion to dismiss affirmative defenses and counterclaims of inequitable conduct, finding that the defendant had provided “sufficient indirect and circumstantial evidence to support the intent element of inequitable conduct at the pleading stage” by alleging that the applicant for the patent had deceived the USPTO with respect to inventorship, and that “the PTO would not have granted the patents had it known” who the true inventors were. The opinion further commented that the “inequitable conduct claim may prove deficient” after discovery.  I suspect so; I may be biased by my experience as a patent examiner, but how often does the PTO pay…

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Don’t-Ask-Don’t-Tell Approach Meets Intent Requirement for Inequitable Conduct

The filer of a petition to revive an expired patent met the intent prong of the test for inequitable conduct by acting with at best willful ignorance; the filer certified that a failure to pay a maintenance fee was unintentional when he not only had not investigated, but had no knowledge, as to why the maintenance fee in fact had not been paid.  3D Medical Imaging Systems, LLC v. Visage Imaging, Inc., 2:14-CV-267-RWS (N.D. Ga. Jan 11, 2017).  Because the unsupported certification was material to the United States Patent and Trademark Office’s decision to revive the patent, the court granted a motion for summary judgment seeking a declaratory judgment that U.S. Patent No. 6,175,655 was unenforceable for inequitable conduct. The ’655 patent’s prior owner was a bankrupt company that made a conscious decision not to pay the final maintenance fee for the ’655 patent.  The current owner, the plaintiff in…

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