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 claim had it been aware of the reference.

Mipox identified ITS data sheets that disclosed cleaning devices composed of a cleaning pad layer attached to a polyester substrate, which is attached to an adhesive layer. Mipox argued that the ITS data sheets alone anticipate claim 1 of the ‘683 patent. Mipox further argued that the ITS data sheets, when combined with U.S. Patent No. 6,130,104 to Yamasaka (“Yamasaka”), would render claim 1 of the ‘683 patent obvious.

Claim 1 of the ‘683 patent recites a method for fabricating a cleaning device with two release liner layers, a cleaning pad, and an adhesive layer. The ITS data sheets disclose a cleaning device with two protective covers, a cleaning surface, and adhesive layer, and a polyester layer between the cleaning surface and the adhesive layer. Mipox argued that because the ITS data sheets disclose each element of the cleaning device and that they inherently disclose a method of fabrication of the cleaning device.

The Court held that claim 1 specifically required that the adhesive layer be formed on the cleaning pad layer, and that the polyester layer between the cleaning surface and the adhesive layer of the ITS data sheets was fatal, even under the broadest reasonable interpretation of the claim. That is, the ITS data sheets disclose a structure that could not have been made by the claimed method.

On the inherency argument, the Court held that a device cannot inherently anticipate a method for fabricating that device. That is, pure process claims are distinguished even if the claimed process would produce a product already existing in the market. Because the ‘683 patent clams a “method for fabricating” a device, and not the device itself, and that the ‘683 patent is not directed to a product-by-process, the device described in the ITS data sheets cannot anticipate the method of claim 1.

Lessons for Practice

There are other reasons why the inequitable conduct pleading could fail (Mipox appears not to have presented much evidence on the intent element), but the Court here took a narrow view of what the PTO would consider material. The Court’s assertion that “Mipox…assumes a device reference, joined to a method patent claim, may render obvious a method claim” and that “a device claim does not anticipate a novel method claim” seems not to appreciate the low threshold of relevance applied by some examiners in making a rejection. Here, is the inherency argument plausible enough that a typical examiner could reject claim 1 based on the ITS data sheets alone?

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