11/30/2014
 
 
 
 
By: Roy Rabindranath, Contributor 
 
TItle:American Calcar v. American Honda Motor Co., Inc. (Fed. Circ. Sept. 26, 2014).
Issue:[Whether] the judgment of the [lower court] finding that U.S. Patent Nos. 6,330,497 ("497 patent"), 6,438,465 ("465 patent"), and 6,542,795 ("795 patent") were unenforceable due to inequitable conduct [was an abuse of discretion].
American Calcar, at *2, 6 (Text Added).
Holding:The defendant proves inequitable conduct "by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO." [...] This court held in Therasense that the standard for "the inequitable conduct is but-for materiality." In particular, undisclosed prior art is "but-for material if the PTO would not have allowed a claim had it been aware of" it. [... In regard to the intent prong,] "because direct evidence of deceptive intent is rare a district court may infer intent from indirect and circumstantial evidence," provided that such intent is the single reasonable inference.
Id. at *5-6, 9 (Text Added, Internal Citations Omitted). 
 
 
08/18/2014
Category: Inequitable Conduct 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleApotex Inc. v. UCB, Inc., No. 2013-1674 (Fed. Cir. Aug. 15, 2014).
IssueApotex argues that merely advocating a particular interpretation of the prior art cannot support an inference of deceptive intent [and that there is no duty to disclose an inventor’s own suspicions or beliefs regarding relevant prior art.].
Apotex Inc. at *16 (text added).
HoldingThe district court’s findings regarding materiality and intent are not clearly erroneous, and its ultimate determination that Dr. Sherman [, the sole inventor of the patent at issue,] breached his duty of candor, good faith, and honesty before the PTO was not an abuse of discretion [because Dr. Sherman was aware that prior art, Univasc, was made according to his claimed process, concealed this knowledge from the PTO, and misrepresented the nature of Univasc and other prior art through his counsel’s arguments and Dr. Lipp’s declaration.]
Id. at *12-13 (text added). 
 
 
 
11/16/2013
Category: Inequitable Conduct 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleThe Ohio Willow Wood Co. v. Alps South, LLC, No. 2012-1642, 2013-1024 (Fed. Cir. Nov. 15, 2013).
IssuesThe crux of our materiality determination therefore hinges on whether OWW [Ohio Willow Wood] [1] withheld or [2] misrepresented information that, in the absence of the withholding or misrepresentation, would have led the BPAI to credit Mr. Comtesse’s testimony that the pre-critical date SSGL was constructed using a Coolmax fabric.
The Ohio Willow Wood Co. at *19 (text added).
Holdings
[1] [W]e conclude that a reasonable finder of fact could conclude that OWW withheld evidence from the PTO during the second reexamination that sufficiently corroborated Mr. Comtesse’s testimony regarding the construction of the SSGL. The corroborating evidence that OWW did not disclose to the PTO includes witness testimony [from three prosthetists], [patent] documents [that OWW was aware of], and physical samples [that OWW did not provide to the PTO or the BPAI].
Id. at *21 (text added).
[2] [Because OWW misrepresented Mr. Comtesse's testimony while being aware of the fact that Mr. Comtesse had no personal stake in the outcome of the case] we find OWW’s misrepresentations to the BPAI tantamount to the filing of an unmistakably false affidavit.
Id. at *29 (text added).
 
10/09/2013
Category: Inequitable Conduct 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleIntellect Wireless, Inc. v. HTC Corp., No. 2012-1658 (Fed. Cir. Oct. 9, 2013).
IssueIntellect argues that the district court clearly erred in its materiality finding [because] Mr. Henderson’s prosecuting attorney quickly corrected [a] false declaration by filing a revised Rule 131 declaration, which did not include facts supporting actual reduction to practice [...].
Intellect, at *4 (text added).
HoldingWe hold that the district court did not clearly err in concluding that HTC proved materiality by establishing that Mr. Henderson engaged in affirmative egregious misconduct when he filed a false declaration [because subsequent revised declarations were too obscure and failed to inform the PTO as to the misrepresentation that there was never an actual reduction to practice].
Id. at *7 (text added). 
 
09/24/2013
Category: Inequitable Conduct 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleNetwork Signatures, Inc. v. State Farm Mutual Auto. Ins., No. 2012-1492 (Fed. Cir. Sept. 24, 2013).
Issue"[In determining inequitable conduct, did] Mr. Karasek [intend] to deceive the PTO, apparently by using the PTO’s standard form petition for “unintentional” delay without setting forth the details of how or why the delay occurred[?]" Network Signatures, at *6 (text added).
Holding"Mr. Karasek’s compliance with the standard PTO procedure for delayed payment, using the PTO form for delayed payment, does not provide clear and convincing evidence of withholding of material information with the intent to deceive the Director [because the PTO does not require Applicant to provide a specific reason for the unintentional delay]." Id. at *8 (text added).
 
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