Network Signatures v. State Farm: No Inequitable Conduct For Conforming Unintentional Delay Statement

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).

Legal Reasoning (Newman, Wallach)
I. Legal Standard: Inequitable Conduct and Unintentional Delay
Inequitable Conduct Standard“To 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, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011) (en banc)). “Materiality and intent must be separately established.” [...] Network Signatures, at *5-6.
Unintentional Delays
Payment Delay, Generally"Acceptance of late payment of maintenance fees is authorized by statute, 35 U.S.C. §41(c)(1), and implemented by 37 C.F.R. §1.378(a), which states that the Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unavoidable (paragraph (b) of this section) or unintentional (paragraph (c) of this section) and if the surcharge . . . is paid as a condition of accepting payment of the maintenance fee."
Id. at *6-7.
Legislative History of Unintentional Delays“Before 1992, §41(c) required the petitioner to show that the late payment was “unavoidable,” and the pre-1992 regulation, 37 C.F.R. §1.378, required the petitioner to “enumerate the steps taken to ensure timely payment.” The statute was amended on legislative recognition that “[t]he ‘unavoidable’ standard has proved to be too stringent in many cases. Many patentees have been deprived of their patent rights for failure to pay the maintenance fees for reasons that may have been unintentional yet not unavoidable.” H.R. Rep. No. 102-993, at 2 (1992). The current regulation, 37 C.F.R. §1.378(c)(3), requires only a statement that the delay was “unintentional.” The standard PTO form requires no details for “unintentional” delay, and contains the preprinted “statement” that: “The delay in payment of the maintenance fee to this patent was unintentional,” without requesting further detail.”
Id. at *7.
II. Following a PTO Form, Silent on Articulating a Reason for Unintentional Delay, Does not Amount to Inequitable Conduct
Boilerplate Language Enough To Explain Unintentional Delay"Mr. Karasek acted promptly upon learning of commercial interest in the ’122 patent, after only two weeks of delay. The record shows no irregularity in Mr. Karasek’s actions. He submitted the NRL petition on the form provided by the PTO; the form does not require a statement of the reasons for the initial non-payment and for the changed position. In Field Hybrids, LLC v. Toyota Motor Corp., No. 03-4121, 2005 WL 189710 (D. Minn. Jan. 27, 2005) the court held that there was not inequitable conduct in representing that the delay was unintentional, for the attorney “simply used the standard language required by federal regulations.” Id. at *9."
Network Signatures, at *7-8.
Court Refrains from Addressing Minor aspects of PTO Proceedings"On matters unrelated to the substantive criteria of patentability, but within the authority of the Director, “it is almost surely preferable for a reviewing court not to involve itself in the minutiae of Patent Office proceedings and to second-guess the Patent Office on procedural issues at every turn.” Laerdal Med. Corp. v. Ambu, Inc., 877 F. Supp. 255, 259 (D. Md. 1995) (citation and internal quotation marks omitted).2 We have recognized an “unwillingness to extinguish the statutory presumption of validity” where the patentee’s conduct “did not affect the issuance of the patent.” Therasense, 649 F.3d at 1291."
Id. at *8-9.
"The district court’s summary judgment of inequitable conduct cannot stand. The judgment is reversed. The case is remanded for proceedings on the merits of the complaint. REVERSED AND REMANDED"
Network Signatures, at *10.


CLEVENGER, Circuit Judge, dissenting. Network Signatures, Clevenger Op. at *1.
I. On the Materiality Requirement for Inequitable Conduct
Initial Decision NOT to Pay Maintenance Fee was Intentional“The relevant facts on materiality are not in dispute. The Navy made a deliberate decision not to pay the 7.5 year maintenance fee for the ’122 Patent, and the ’122 Patent expired on April 23, 2004. Several days later, Karasek learned that Hazim Ansari had attempted to contact the Naval Research Laboratory (NRL) about licensing the patent. No one at the NRL received or appreciated these messages. On the same day that Karasek received this second-hand information, he filed a revival petition with the PTO stating that the ’122 Patent was unintentionally abandoned. Karasek did not include any information about Mr. Ansari’s contacts with the NRL or inform the PTO of the NRL’s original intentional decision to abandon the patent.”
Network Signatures, Clevenger Op. at *3.
Precedent on Unintentional DelayIn Carlson, the PTO denied a revival petition because [t]he discovery of additional information after making a deliberate decision to withhold a timely action is not the “mistake in fact” that might form the basis for acceptance of a maintenance fee . . . . The discovery of additional, other information is simply a change in circumstances that occurred subsequent to the expiration of the patent.
Id. at *4.
Administrative History (Fed. Reg. Notice)“In its Final Rule notice, the PTO explained when a petition for unintentional abandonment of a patent application will not be granted: Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of § 1.137(b) […] The PTO treats unintentional revival of a patent application in the same manner as unintentional revival of an issued patent."
Id. at *5.
II. On the Intent Requirement for Inequitable Conduct
Too Many Issues of Fact to Grant Summary Judgment (SJ)“While I do not believe that these issues cannot be resolved against Karasek on summary judgment, I cannot foreclose the possibility that State Farm could produce evidence sufficient to meet the Therasense standard at a merits trial. For example, Karasek’s statement that he never considered filing a supplemental statement with the revival petition rings hollow in light of his review of several PTO cases which included supplemental state- ments. See J.A. 344. The evidence that Karasek knew the PTO granted revival petitions as a matter of course also suggests that he deliberately decided to withhold information […]”
Network Signatures, Clevenger Op. at *7-8.
Ambiguity as to Facts Resolved in Favor of Network Signatures at SJ stage"[A]t the summary judgment stage we must take the facts in the light most favorable to Network Signatures. State Farm has not shown that the “single most reasonable inference” to be drawn is that Karasek intended to deceive the PTO. At the summary judgment stage, another reasonable inference is that Karasek honestly, although misguidedly, believed that the PTO would grant his revival petition even if he did disclose the surrounding circumstances. This would make Karasek negligent, but negligence does not rise to the level of deliberately deceiving the PTO under Therasense. 649 F.3d at 1290."
Id. at *8.

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