Ohio Willow Wood v. Alps South: Proving Materiality of Withheld and Misrepresented Information during Inequitable Conduct Inquiry

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).
[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).

Procedural HistoryThis suit was filed by The Ohio Willow Wood Company (“OWW”) against Alps South, LLC (“Alps”) for in- fringement of United States Patent No. 5,830,237 (the “’237 patent”). The United States District Court for the Southern District of Ohio granted summary judgment that: (1) OWW was collaterally estopped from challenging the invalidity of claims 1, 2, 4, 15, 16, and 20 of the ’237 patent; (2) claims 18, 19, 21, 22, and 23 of the ’237 patent were invalid for obviousness; and (3) Alps failed to raise a genuine issue of material fact with respect to inequitable conduct.
The Ohio Willow Wood Co. at *2.
Legal Reasoning (Dyk, Bryson, Reyna)
Factual Background
Litigation and ReexaminationsIn the present suit, OWW filed its complaint against Alps for infringement of the ’237 patent on December 27, 2004. […] Shortly after receiving the claim construction order, Alps initiated the first of two consecutive ex parte reexaminations of the ’237 patent in the PTO. The district court stayed the litigation during these reexamination proceedings.
The Ohio Willow Wood Co. at *2-3.
Second Reexamination [In the second reexamination,] Alps provided the PTO with testimony from Mr. Comtesse in the form of a declaration and deposition transcript. The deposition occurred in the present litigation prior to the court’s issuance of the stay. According to Alps, Mr. Comtesse’s testimony proved that the SSGL [Single Socket Gel Liner] did not have the same gel bleed-through issues as the Silosheath since he testified that the SSGL was constructed using a proprietary DuPont fabric called “Coolmax,” which was different from the nylon material used with the Silosheath. […] The examiner […] issued a final rejection that all claims of the ’237 patent were obvious in view of the SSGL and other undisputed prior art. […] Faced with the examiner’s final rejection of the claims in view of the SSGL, OWW appealed to the Board of Patent Appeals and Interferences (“BPAI”). […] Based on the evidence of record, the BPAI concluded that Comtesse’s testimony was insufficient to sustain the examiner’s rejection […]
Id. at *6-8 (text added).
Legal Standard
Inequitable Conduct“[t]o prove inequitable conduct, the challenger must show 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.” In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012) (citing Therasense, 649 F.3d at 1287).
Id. at *16.
But-For MaterialityTypically, an allegation of inequitable conduct before the PTO requires proof that the patentee withheld or misrepresented information that, in the absence of the withholding or misrepresentation, would have prevented a patent claim from issuing. Therasense, 649 F.3d at 1291.
Id. at *17.
MATERIALITY [1]: Withheld Information
Legal Standard for Corroborating Evidence
Rule of Reason StandardAlthough our precedent requires testimony asserted to invalidate a patent to be corroborated, we do “not impose an impossible standard of ‘independence’ on corroborative evidence by requiring that every point . . . be corroborated by evidence having a source totally independent of the witness.” […]. Rather, whether testimony regarding invalidating prior art is sufficiently corroborated by documentary, physical, or testimonial evidence is evaluated under a “rule of reason” standard. […]
The Ohio Willow Wood Co. at *19 (citations omitted).
Inquiries in Rule of Reason StandardWhen conducting a rule of reason analysis, this court generally considers the following eight factors: (1) the relationship between the corroborating witness and the alleged prior user; (2) the time period between the event and trial; (3) the interest of the corroborating witness in the subject matter in suit; (4) contradiction or impeachment of the witness’ testimony; (5) the extent and details of the corroborating testimony; (6) the witness’ familiarity with the subject matter of the patented invention and the prior use; (7) probability that a prior use could occur considering the state of the art at the time; and (8) impact of the invention on the industry, and the commercial value of its practice. […]
Id. at *20-21 (citations omitted).
OWW Knowingly Witheld Material Information from the Examiner during Reexamination
Non-Disclosure of Prosthetists TestimonyIn 2006, before the reexamination proceedings, OWW was provided with three declarations from prosthetists that were knowledgeable about prosthetic liners that were available on the March 5, 1995 critical date. […] [Mr. Gailey] testified that OWW sent him an SSGL in the mid-1990s, that the covering of the SSGL was made from a “cotton polyester blend” fabric, that there is “no bleed-through of the gel,” and that “the fea- tures of the SSGL remained the same for many years after its initial introduction.” […] The declarations of the other two prosthetists, Mr. James McElhiney and Mr. Jack Uellendahl, likewise asserted that there was no gel on the exterior of the SSGL because it used a fabric that was thicker and less permeable than the nylon fabric of the Silosheath and prevented gel from bleeding-through to the outside surface. Although OWW was aware of the three declarations in support of Mr. Comtesse’s testimony, it did not disclose them to the PTO in the reexamination proceedings.
Id. at *21-22.
Non-Disclosure of Relevant Patent

OWW was also aware that Silipos had filed a patent application that allegedly covered the commercial embodiments of its products (the “Silipos Patent Application”). There is no evidence that the examiner or the BPAI was aware of this abandoned patent application. […] This evidence supports the conclusion that the Silipos Patent Application covered the SSGL devices and they only had gel on their interior surfaces, thereby providing further contemporaneous evidence supporting Mr. Comtesse’s testimony regarding the construction of the SSGL.
Id. at *22.
Non-Disclosure of Physical Samples [B]efore the BPAI, Mr. Gayan [counsel for OWW during reexamination] argued that there were no known examples of SSGL products from the relevant time period, and during the review by the panel, he characterized them as a “ghost.” But SSGL samples from the relevant period were reviewed by Mr. Comtesse during deposition. OWW did not provide the actualSSGL devices to the PTO or the BPAI, which would have corroborated Mr. Comtesse’s testimony be- cause they showed no bleed-through and also corroborate the fact that the construction of the SSGL remained unchanged since its initial launch.
Id. at *22-23 (text added).
MATERIALITY [2]: Misrepresented Information
Legal Standard: Automatic MaterialityA party alleging inequitable conduct, however, need not strictly demonstrate but-for materiality in all cases. Rather, “[w]here the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit,” materiality is presumed. [...] In this context, materiality is premised on the notion that “a patentee is unlikely to go to great lengths to deceive the PTO with a falsehood unless it believes that falsehood will affect issuance of the patent.” [...].
The Ohio Willow Wood Co. at *18 (citations omitted).
Material Misrepresentation in Affadavit By Purposely Attempting to Discredit Testimony
Record Does Not Support Allegation of Personal Stake in Outcome of the CaseMr. Comtesse never admitted that he was interested in the outcome of the present dispute nor did he ever admit that he was receiving royalty payments at the time of his deposition in 2006. To the contrary, Mr. Comtesse’s testimony indicated that his relationship with Silipos ended in 1999 and that he had no personal stake in the outcome of the dispute between Alps and OWW
Id. at *25.
Conscious Attempt by Attorney to Discredit TestimonyThe record also indicates that OWW’s counsel was aware that Mr. Comtesse’s level of interest was critical to convincing the BPAI to reverse the examiner’s final rejection in the second reexamination. OWW asserted that: “[i]t is well settled that issues of corroboration become more important and the amount of weight afford- ed to such testimony may be lessened when the witness is an interested party,” “Mr. Comtesse’s interest in the outcome of this proceeding goes to the weight to be given to his testimony,” and “Mr. Comtesse is an interested party and, thus, corroborating evidence of the asserted SSGL construction is even more necessary.” These statements demonstrate that OWW’s counsel knew that the misrepresentations about Mr. Comtesse’s interest and inventorship would “affect issuance of the patent” by triggering heightened scrutiny of his testimony.
Id. at *28.
Legal StandardThe specific intent to commit inequitable conduct may be inferred from indirect and circumstantial evidence. [...] But, deceptive intent must be “the single most reasonable inference drawn from the evidence.” [...]. Additionally, because the burden of proof is on the party alleging inequitable conduct, the patentee need not offer a good faith explanation for its alleged misconduct unless a threshold level of deceptive intent has been demonstrated. [...].
The Ohio Willow Wood Co. at *29 (citations omitted).
Material Issues of Fact Exist regarding SJ MotionThe facts, when viewed in a light most favorable to Alps, preclude summary judgment on the issue of deceptive intent. There is no dispute OWW’s counsel knew that if the BPAI accepted Mr. Comtesse’s account of the prior art SSGL then the ’237 patent would not have emerged from the second reexamination proceeding. Thus, OWW’s counsel in that proceeding, Mr. Gayan, sought to discredit Mr. Comtesse’s testimony and, as noted in the foregoing section, did so by making misrepresentations and mis- leading statements that were directly refuted by credible evidence that OWW did not otherwise disclose. Under the circumstances, this evidence creates a genuine issue of material fact as to whether Mr. Gayan’s conduct before the PTO was undertaken for the deliberate purpose of obtaining an otherwise unwarranted patent.
Id. at *29.
In conclusion, […] we hold that there are genuine issues of material fact regarding whether OWW’s counsel committed inequitable conduct during the reexaminations of the ’237 patent. We therefore reverse the district court’s grant of summary judgment on the issue of inequitable conduct and remand that issue for trial.
The Ohio Willow Wood Co. at *30.

Editor Note
The Opinion also includes brief discussions on collateral estoppel and obviousness. To read about these, click here.

Image Attribution Statement: Unknown (McLoughlin Bros. Publishers), "The Little Jam Thief,"  available under a Public Domain, copyright expired, http://commons.wikimedia.org/wiki/File:The_Little_Jam_Thief.jpg (last visited Nov. 16, 2013).  
© 2000-2019, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy