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August 3, 2005

Inequitable Depth of Field

James Frazier, a photographer and film maker, was awarded 5,727,236 for a camera lens offering extreme depth of field: in-focus images of subject matter both close-up and far away. Then he tried enforcing the patent, creating his own horror movie.

To overcome examiner rejections of prior art and indefiniteness during prosecution, Frazier submitted a video "[i]n the interests of demonstrating to the Examiner the features and uniqueness of the optical system of this patent application." And so the patent was granted.

The problem was that the video wasn't made with the patented lens. During trail, in Frazier v. Roessel Cine Photo Tech (CAFC 04-1060), Frazier argued that there was insufficient proof to show that the examiner was misled by the video because the claimed lens system was capable of producing the shots on the video.

Frazier’s numerous arguments directed to materiality overlook the fact that mere submission of the video with footage shot with other than the claimed invention constituted a sufficiently material misrepresentation without regard to whether the P/F lens could create the same shots.

A district court’s holding that a patent is unenforceable for inequitable conduct involves underlying findings of materiality and intent to deceive based on clear and convincing evidence and an equitable determination of unenforceability based on those findings. Ruiz v. A.B. Chance Co., 234 F.3d 654, 670 (Fed. Cir. 2000); Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 204 F.3d 1368, 1373 (Fed. Cir. 2000).

Inequitable conduct requires a breach of the duty of candor that is both material and undertaken with intent to deceive the Patent and Trademark Office (“PTO”). Li Second Family Ltd. P’ship v. Toshiba Corp., 231 F.3d 1373, 1378 (Fed. Cir. 2000). Breaches of the duty of candor may include submission of false material information or failure to disclose material information. Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 872 (Fed. Cir. 1988).

Perseptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1322 (Fed. Cir. 2000) (“[T]he materiality of intentional false statements may be independent of the claims of the patent.”); Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1571 (Fed. Cir. 1983) (“In contrast to cases where allegations of fraud are based on the withholding of prior art, there is no room to argue that submission of false affidavits is not material.”).

Frazier argued that he had not intended to deceive.

Frazier argues that he could not have intended to deceive unless he believed that the P/F lens system was incapable of achieving the depth of field of the AI lens. Frazier’s argument, if correct, would require proof that he subjectively believed the video submission was deceptive.

This court has repeatedly said that direct evidence of intent is unavailable in most cases and unnecessary in any event. Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs. Ltd., 394 F.3d 1348, 1354 (Fed. Cir. 2005) (“‘Intent need not, and rarely can, be proven by direct evidence.’ Rather, in the absence of a credible explanation, intent to deceive is generally inferred from the facts and circumstances surrounding a knowing failure to disclose material information.” (quoting Merck & Co. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1422 (Fed. Cir. 1989))); Ulead Sys., Inc. v. Lex Computer & Mgmt. Corp., 351 F.3d 1139, 1146 (Fed. Cir. 2003) (“Direct evidence of deceptive intent is not required; rather it is usually inferred from the patentee’s overall conduct.”).

Posted by Patent Hawk at August 3, 2005 12:01 AM | Inequitable Conduct