Ethical Issues for Patent Prosecution Attorneys and Patent Litigators Related to
the Duty of Candor and Inequitable Conduct
April 22, 2008
Ethical Issues for Patent Prosecution Attorneys and Patent Litigators Related to
the Duty of Candor and Inequitable Conduct
April 22, 2008
Presentation to the
Austin Intellectual Property Association
Darryl J. Adams
2
The Duty of Candor and Inequitable Conduct
3
The Duty of Candor and Inequitable Conduct
Ethical Issues Related to the Duty of Candor and Inequitable Conduct
4
The Duty of Candor and Inequitable Conduct
Ethical Issues for Patent Prosecution Attorneys and Patent Litigators Related to
the Duty of Candor and Inequitable Conduct
5
Ethical Issues for Patent Prosecution Attorneys and Patent Litigators Related to
the Duty of Candor and Inequitable Conduct
6
Ethical Issues for Patent Prosecution Attorneys and Patent Litigators Related to
the Duty of Candor and Inequitable ConductMore Pitfalls for the Unwary Patent Prosecutor.
Ethical Issues for Patent Prosecution Attorneys and Patent Litigators Related to
the Duty of Candor and Inequitable Conduct
More Pitfalls for the Unwary Patent Prosecutor.
The Return of the Inequitable Conduct Scourge.
Ethical Issues for Patent Prosecution Attorneys and Patent Litigators Related to
the Duty of Candor and Inequitable Conduct
More Pitfalls for the Unwary Patent Prosecutor.
The Return of the Inequitable Conduct Scourge.
New and Innovative Ways to Screw the Patentee.
9
Duty of Candor and Inequitable Conduct Duty of Candor and Inequitable Conduct
· Duty to prosecute patents before the PTO with candor, good faith and honesty
· Inequitable Conduct is the breach of that duty
· Two prongs
Material omission or misrepresentation
Intent to deceive
10
Significant Developments in Inequitable Conduct Law Significant Developments in Inequitable Conduct Law
· Materiality Clarification of the Materiality
Standard
Disclosure of Related Prosecutions
Attorney Argument
· Intent Evolving Standard for Proving
Deceptive Intent?
· Standing to Intervene
· Proposed Legislation
11
Significant Developments in Inequitable Conduct Law Significant Developments in Inequitable Conduct Law
· Materiality Clarification of the Materiality
Standard
Disclosure of Related Prosecutions
Attorney Argument
· Intent Evolving Standard for Proving
Deceptive Intent?
· Standing to Intervene
· Proposed Legislation
12
Materiality – Clarification of StandardMateriality – Clarification of Standard
· Digital Control Inc. v. The Charles Machine Works, 437 F.3d 1309 (Fed. Cir. 2006).
Clarifies the interaction between the “old” and “new” Patent Office Rule 56 (37 C.F.R. 1.56).
Holding: New Rule 56 does not supplant or replace the “reasonable examiner” standard established under the old rule.
13
Materiality – Clarification of StandardMateriality – Clarification of Standard
· Old Rule 56 (“Reasonable Examiner” standard): Information is material “where there is a
substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application at issue as a patent.” 37 C.F.R. 1.56 (1977).
· New Rule 56 (1992): Information is material when:
“(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of
unpatentability relied on by the Office, or (ii) Asserting an argument of
patentability
14
· Digital Control Inc. v. The Charles Machine Works, 437 F.3d 1309 (Fed. Cir. 2006)
New Rule 56 does not supplant or replace “reasonable examiner” standard New Rule 56 is simply an “additional test”
Reasonable Examiner standard applies to patents prosecuted after the 1992 change in PTO rules
Standard for inequitable conduct governed by case law not PTO rules Rules may provide guidance
Materiality – Clarification of StandardMateriality – Clarification of Standard
15
Significant Developments in Inequitable Conduct Law Significant Developments in Inequitable Conduct Law
· Materiality Clarification of the materiality
standard
Disclosure of related prosecution
Attorney argument
· Intent Evolving standard for proving
deceptive intent?
· Standing to Intervene
· Proposed Legislation
16
· McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007)
Disclosing related applications to the Patent Office may be not sufficient
Must disclose details of prosecution material to patentability
Materiality – Related ProsecutionMateriality – Related Prosecution
PATENT APPLICATION
’195
PATENT APPLICATION
’149
PATENT APPLICATION
’278
'278 Application – Patient Identification System
'278 Application – Patient Identification System
3 node communication
'278 Application – Patient Identification System
3 node communication
Programmable unique identifier
No Familial Relationship To '278 Application
Examiner Lev
'149Application
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87OA R
esp – N
arro
wed
cla
ims
to
excl
ude
pol
ling
6/88
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87OA R
esp – N
arro
wed
cla
ims
to
excl
ude
pol
ling
6/88
Allo
wan
ce
12/19/88
Continuation of '278 Application
Examiner Trafton
'195Application
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87OA R
esp – N
arro
wed
cla
ims
to
excl
ude
pol
ling
6/88
Allo
wan
ce
12/19/88
Continuation of '278 Application
Examiner Trafton
'195Application
'195
Appl. fi
led
7/87
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87OA R
esp – N
arro
wed
cla
ims
to
excl
ude
pol
ling
6/88
Allo
wan
ce
12/19/88
Continuation of '278 Application
Examiner Trafton
'195Application
'195
Appl. fi
led
7/87
Allo
wan
ce
12/16/88
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87OA R
esp – N
arro
wed
cla
ims
to
excl
ude
pol
ling
6/88
Allo
wan
ce
12/19/88
Continuation of '278 Application
Examiner Trafton
'195Application
'195
Appl. fi
led
7/87
Allo
wan
ce
12/16/88
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87OA R
esp – N
arro
wed
cla
ims
to
excl
ude
pol
ling
6/88
Allo
wan
ce
12/19/88
Continuation of '278 Application
Examiner Trafton
'195Application
'195
Appl. fi
led
7/87
Allo
wan
ce
12/16/88
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
OA - R
ejec
ting
3 n
ode
clai
ms
4/87
OA R
esp – A
rgui
ng n
o re
f dis
clos
e
3 no
de
10/6/87
Allo
wan
ce
2/89
OA - A
llow
ed if
incl
ude
pro
gra
mm
able
iden
tifier
12/8/87
OA - R
ejec
ting
3 n
ode
clai
ms
2/87
No Familial Relationship To '278 Application
Examiner Lev
'149Application
OA R
esp – N
arro
wed
cla
ims
to
cove
r “r
eal t
ime
com
mun
icat
ion”
8/87
Inte
rvie
w to
dis
cuss
Bak
er ref
.
10/23/87
OA - R
ejec
ting
cla
ims
incl
. 3
node
and
pro
gra
mm
able
iden
tifier
12/1/87OA R
esp – N
arro
wed
cla
ims
to
excl
ude
pol
ling
6/88
Allo
wan
ce
12/19/88
Continuation of '278 Application
Examiner Trafton
'195Application
'195
Appl. fi
led
7/87
Allo
wan
ce
12/16/88
Patent At Issue
Disclosed Co-Pending'149 Appl.
Examiner Trafton
'278Application
36
· McKesson’s arguments rejected: Baker patent was not cited for three-node approach,
therefore applicant was likely unaware of its relevance
Federal Circuit “Although McKesson’s argument might have some merit if examiner Lev had cited one small section of a much larger work, citation to the eighteen-column Baker patent put [applicant] on notice of the content of the whole document.”
Alleged failure to disclose Baker patent was before Baker patent was cited by the second examiner
Duty of Candor remained in effect
“Mere seventeen-day gap” until Baker Patent was cited indicates that applicant “knew or should have known of Baker’s materiality.”
Materiality – Related ProsecutionMateriality – Related Prosecution
37
· McKesson’s arguments rejected:
Not until Dayco decision could applicants have been on notice to disclose rejections of co-pending applications
MPEP 2001.06(b) provided notice
Dayco decision itself concerned activities prior to Dayco
Disclosure of co-pending application shows good faith
Holding: MPEP 2001.06(b) and case law “plainly impose a duty of disclosure beyond a citation of the co-pending application.”
Disclosure of co-pending application is some evidence of good faith or lack of intent, but not sufficient.
Materiality – Related ProsecutionMateriality – Related Prosecution
38
· McKesson’s arguments rejected:
The same examiner allowed the claims of the ‘372 Application. Do not assume the Examiner recalls details of
other applications
The prosecuting attorney testified that he did not consider the identity of the examiner.
Materiality – Related ProsecutionMateriality – Related Prosecution
39
· How did patentee get in the mess?
Shifting requirements
Made excuses for not disclosing Not recall details
Multiple arguments why references were not material
Lost credibility
If conceded materiality and relied on ignorance or innocent mistake, result may have been different Difficult to admit error
High standard of review Materiality and Intent – Clear Error
Balancing – Abuse of Discretion
McKesson – Practice TipsMcKesson – Practice Tips
40
· Rethink disclosure procedures
Disclose material events in related applications
Same examiner
Determine materiality?
· Consider disclosing all OA and Responses in related applications
Existing practice for references?
Problematic when some are disclosed but not others
· What is next?
Foreign counterparts
Establish best practices?
McKesson – Practice TipsMcKesson – Practice Tips
41
Significant Developments in Inequitable Conduct Law Significant Developments in Inequitable Conduct Law
· Materiality Clarification of the materiality
standard
Disclosure of related prosecution
Attorney Argument
· Intent Evolving standard for proving
deceptive intent?
· Standing to Intervene
· Proposed Legislation
42
Attorney Argument Attorney Argument
· Disclosed prior art references from PCT application.
· “the references do not relate to the invention and, therefore, further discussion of the same is not necessary”
· Attorney never examined the prior art.
Boilerplate language.
· Deemed closest prior art in the PCT application and the claims were amended to overcome.
· Holding: Not a material misrepresentation – mere attorney argument.
Examiner had prior art and was free to accept or reject.
Innogenetics v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008)
43
Significant Developments in Inequitable Conduct Law Significant Developments in Inequitable Conduct Law
· Materiality Clarification of the materiality
standard
Disclosure of related prosecution
Attorney Argument
· Intent Evolving standard for proving
deceptive intent?
· Standing to Intervene
· Proposed Legislation
44
Intent Intent
· Threshold levels of intent and materiality must be proven by clear and convincing evidence Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed.
Cir. 1995)
· Intent can be shown by direct or circumstantial evidence Most often inferred from circumstantial evidence. Id.
at 1180.
· “Gross negligence” alone is not sufficient to infer intent Kingsdown Medical Consultants v. Hollister, Inc., 863 F.2d 867 (Fed.
Cir. 1988) (en banc) Must prove deceitful intent
45
Intent – Inferred from Materiality?Intent – Inferred from Materiality?
· Can Intent Be Inferred Solely From Nondisclosure Of Material Information? Hebert v. Lisle Corp., 99 F.3d 1109, 1116
(Fed. Cir. 1996) “Intent to deceive can not [sic] be inferred solely from
the fact that information was not disclosed; there must be a factual basis for a finding of deceptive intent.”
Braun, Inc. v. Dynamics Corp., 975 F.2d 815, 822 (Fed. Cir. 1992) Defendant argued that “intent to deceive may be
inferred solely from [applicant’s] failure to present to the PTO material prior art of which it was aware.”
“[M]ateriality does not presume intent, which is a separate and essential component of inequitable conduct.”
46
Trivia QuestionTrivia Question
Who is this devious looking villain?
47
Trivia QuestionTrivia Question
Who is this devious looking villain?
Answer: Snidely Whiplash
48
Trivia QuestionTrivia Question
Who is this devious looking villain?
Answer: Snidely Whiplash
Bonus Question: What 1970’s cartoon featured Snidely Whiplash?
49
Trivia QuestionTrivia Question
Who is this devious looking villain?
Answer: Snidely Whiplash
Bonus Question: What 1970’s cartoon featured Snidely Whiplash?
Answer: The Dudley Do-Right Show
50
Intent – Inferred from Materiality?Intent – Inferred from Materiality?
· Can Intent Be Inferred Solely From Nondisclosure Of Material Information? Hebert v. Lisle Corp., 99 F.3d 1109, 1116 (Fed.
Cir. 1996). “Intent to deceive can not [sic] be inferred solely from
the fact that information was not disclosed; there must be a factual basis for a finding of deceptive intent.”
Braun, Inc. v. Dynamics Corp., 975 F.2d 815, 822 (Fed. Cir. 1992). Defendant argued that “intent to deceive may be
inferred solely from [applicant’s] failure to present to the PTO material prior art of which it was aware.”
“[M]ateriality does not presume intent, which is a separate and essential component of inequitable conduct.”
51
Intent – Inferred from Materiality?Intent – Inferred from Materiality?
· Recent cases permit inference of intent based on materiality
Ferring B.V. v. Barr Labs, Inc., 437 F.3d 1181 (Fed. Cir. 2006)
Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337 (Fed. Cir. 2007)
Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed. Cir. 2007)
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Intent – Inferred from Materiality?Intent – Inferred from Materiality?
· Recent cases permit inference of intent based solely on materiality
Ferring B.V. v. Barr Labs, Inc., 437 F.3d 1181 (Fed. Cir. 2006)
Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337 (Fed. Cir. 2007)
Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed. Cir. 2007)
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· Ferring B.V. v. Barr Labs, Inc., 437 F.3d 1181 (Fed. Cir. 2006)
Examiner repeatedly rejected application based upon interpretation of term “preoral” in a prior art reference.
Examiner requested “non-inventor” declarations as to the meaning of “preoral.”
Applicant submitted several affidavits from “non-inventors.”
Applicant did not disclose that most of the declarants had past or present business or consulting relationships with Ferring.
Intent – Inferred from Materiality?Intent – Inferred from Materiality?
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Intent – Inferred from Materiality?Intent – Inferred from Materiality?
· Ferring, 437 F.3d 1181 (Fed. Cir. 2006)
No direct evidence that applicant intended to deceive Patent Office by not disclosing affiliations with the declarants
Many affiliations were tenuous
Federal Circuit affirmed a summary judgment of inequitable conduct
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Intent – Inferred from Materiality?Intent – Inferred from Materiality?
· Ferring, 437 F.3d 1181 (Fed. Cir. 2006)
Summary judgment on the issue of intent is appropriate if:
Information is highly material
Applicant knew of the information
Applicant knew or should have known of the materiality, and
Applicant did not provide a credible explanation for not disclosing
Creates an inference of deceptive intent, and shifts burden to patentee to prove good faith
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· Ferring, 437 F.3d 1181 (Fed. Cir. 2006)
Infer intent because applicant “should have known” of the materiality.
Negligence?
Kingsdown – “gross negligence” not sufficient
Summary judgment of inequitable conduct with no evidence of deceptive intent beyond failure to disclose highly material reference.
Intent – Inferred from Materiality?Intent – Inferred from Materiality?
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· Dissent – Judge Newman Break from precedent on intent.
“Heretofore, no case has found inequitable conduct based on omitted information when there was no evidence of intentional omission and not even circumstantial evidence of deceptive intent.”
Majority “impose[s] a positive inference of wrongdoing, replacing the need for evidence with a ‘should have known’ standard of materiality, from which intent is inferred, even in the total absence of evidence.
Distinguished cases majority relied upon for the “should have known” standard: Paragon: Involved affirmative misrepresentation, not an omission Bruno: Was not summary judgment; evidence presented that applicant
deliberately avoided learning of high materiality of undisclosed contacts Critikon: Not a “mere failure to disclose;” in a reissue proceeding, Applicant
knowingly failed to disclose assertions of invalidity and inequitable conduct against the same patent in concurrent litigation
Ferring B.V. v. Barr LabsFerring B.V. v. Barr Labs
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Significant Developments in Inequitable Conduct Law Significant Developments in Inequitable Conduct Law
· Materiality Clarification of the materiality
standard
Disclosure of related prosecution
Attorney Argument
· Intent Evolving standard for proving
deceptive intent?
· Standing to Intervene
· Proposed Legislation
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Standing To Intervene Standing To Intervene
· Nisus Corp. v. Perma-Chink Sys., Inc., 497 F.3d 1316 (Fed. Cir. 2007)
Patent attorney personally named as having committed the inequitable conduct.
Patent Attorney attempted to intervene, but was rejected by the District Court.
Federal Circuit found no standing to appeal.
Court states that while an attorney who is formally reprimanded may appeal, “judicial criticisms of lawyers’ actions are not reviewable.”
Contrary holding would result in a multiplicity of appeals from witnesses who are not parties to the suit.
Cannot be treated as final opinions in collateral proceedings.
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Significant Developments in Inequitable Conduct Law Significant Developments in Inequitable Conduct Law
· Materiality Clarification of the materiality
standard
Disclosure of related prosecution
Attorney Argument
· Intent Evolving standard for proving
deceptive intent?
· Standing to Intervene
· Proposed Legislation
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Proposed LegislationProposed Legislation
· HR 1908 (Passed Sept. 7, 2007)
· Materiality - Similar to New Rule 56 “(i) a reasonable examiner would have made a prima facie finding of
unpatentability, or maintained a finding of unpatentability, of one or more of the patent claims based on the information, and the information is not cumulative to information already of record or previously considered by the Office; or
(ii) information that is otherwise material refutes or is inconsistent with a position the applicant takes in opposing a rejection of the claim or in asserting an argument of patentability.”
· Intent - “specific facts beyond materiality of the information misrepresented or not disclosed must be proven that establish the intent of the person to mislead or deceive the examiner by the actions of the person.”
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· HR 1908 (Passed Sept. 7, 2007)
· Remedies - Court can choose appropriate remedy (A) Denying equitable relief to the patent holder and
limiting the remedy for infringement to reasonable royalties.
(B) Holding the claims-in-suit, or the claims in which inequitable conduct occurred, unenforceable.
(C) Holding the patent unenforceable.
(D) Holding the claims of a related patent unenforceable.
Proposed LegislationProposed Legislation
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· S. 1145 (Pending vote of the full Senate)
· Materiality - Similar to Old Rule 56
· Intent - Cannot infer intent solely from gross negligence or materiality
· Remedies - Court can chose appropriate remedy (A) Denying equitable relief to the patent holder and
limiting the remedy for infringement to reasonable royalties.
(B) Holding the claims-in-suit, or the claims in which inequitable conduct occurred, unenforceable.
(C) Holding the patent unenforceable.
Proposed LegislationProposed Legislation
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· Patent Prosecutors
Consider Ambien
Rethink disclosure procedures
Do not get caught up in language
Legislative reform may provide some relief
· Patent Litigators
Open season
Scour related applications and foreign applications
Patentee must put forth evidence of good faith
Summary on Recent DevelopmentsSummary on Recent Developments
Thank You
Darryl J. Adams D E W E Y & L e B O E U F L L [email protected]