Praxair v. Advanced Technology Materials (CAFC 2007-1483)

Inequitable Conduct

The district court hesitantly decided a reference of high materiality, coupled with failure to adequately explain its submission omission, was a death knell for '609 and '115.

[T]he district court found that [prior art on restricted flow orifices (RFOs)]... were material. As to intent to deceive, the district court found that both the inventors of the '609 and '115 patents and Tolomei had knowledge of RFO devices, which were widely used prior to the applications that led to the '115 and '609 patents. The district court focused, in particular, on four statements made in the prosecution history of the '115 patent characterizing the prior art. The district court viewed these statements as inconsistent with the existence of the prior art use of RFOs. The district court concluded that the applicants could not have made these assertions "had the RFO art been before the PTO." Praxair, 489 F. Supp. 2d at 394. Given the lack of any testimony explaining the failure to disclose RFOs to the PTO, the district court concluded that "the level of materiality of the RFO art is sufficiently high so as to support an ultimate finding of inequitable conduct." Id.

Case law is a confused as to whether intent to deceive can be inferred by failure to explain failure to disclose known prior art.

[A] showing of materiality alone does not give rise to a presumption of intent to deceive." "[A] failure to disclose a prior art device to the PTO, where the only evidence of intent is a lack of a good faith explanation for the nondisclosure, cannot constitute clear and convincing evidence sufficient to support a determination of culpable intent." But "[a]n inference of intent to deceive is generally appropriate, however, when (1) highly material information is withheld; (2) "the applicant knew of the information [and] . . . knew or should have known of the materiality of the information; and (3) the applicant has not provided a credible explanation for the withholding."

The full savoy truffle on inferring intent -

Inequitable conduct in breach of this duty can be established by showing by "clear and convincing evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO]." Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). The required showings of materiality and intent are separate, and a showing of materiality alone does not give rise to a presumption of intent to deceive. See Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988); see also M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., Inc., 439 F.3d 1335, 1341 (Fed. Cir. 2006) ("[A] failure to disclose a prior art device to the PTO, where the only evidence of intent is a lack of a good faith explanation for the nondisclosure, cannot constitute clear and convincing evidence sufficient to support a determination of culpable intent."). An inference of intent to deceive is generally appropriate, however, when (1) highly material information is withheld; (2) "the applicant knew of the information [and] . . . knew or should have known of the materiality of the information; and (3) the applicant has not provided a credible explanation for the withholding." Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1191 (Fed. Cir. 2006); see also Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1367 (Fed. Cir. 2008) (applying the standard set out in Ferring to conclude that no inference of intent was possible in the face of a credible good faith explanation for the withholding); Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1257 (Fed. Cir. 1997) ("[A] patentee facing a high level of materiality and clear proof that it knew or should have known of that materiality, can expect to find it difficult to establish 'subjective good faith' sufficient to prevent the drawing of an inference of intent to mislead."). "Once threshold findings of materiality and intent are established, the trial court must weigh them to determine whether the equities warrant a conclusion that inequitable conduct occurred." Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1128 (Fed. Cir. 2006).

The appeals court noted "that the structure of prior art RFOs described by the district court did not embody all claim elements of '115 patent." But the RFOs were still "highly material."

Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) ("[M]ateriality is not analyzed in a vacuum. It is not dependent on a single element viewed in isolation. Rather, it is judged based upon the overall degree of similarity between the omitted reference and the claimed invention in light of the other prior art before the examiner.").

Praxair also defended with the observation that the RFO are was cumulative (redundant). The argument hadn't been made at the district court level, so was ignored. For gratuitously killing a patent, however, the CAFC majority should have picked up on the argument themselves.

Information that is cumulative is not material. See, e.g., Honeywell Int'l, 488 F.3d at 1000. However, we decline to address this argument on appeal, because we conclude that Praxair waived this argument by failing to raise it before the district court. See Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1322 (Fed. Cir. 2008); see also, e.g., Singleton v. Wulff, 428 U.S. 106, 120 (1976) ("It is the general rule, of course, that a federal appellate court does not consider an issue not passed upon below.").

The supposedly misleading statements were only made during '115 prosecution, not '609, which had already received notice of allowability. So '609 got a pass from Judges DYK and Bryson, while leaving '115 dead.

Judge Lourie rightly thought '115 should have gotten a walk as well.

I believe the district court incorrectly conflated intent with materiality. It cited no evidence of intent to deceive. Non-citation of a reference does not necessarily justify an inference of intent to deceive. See M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1342-43 (Fed. Cir. 2006) (finding a lack of good faith explanation of nondisclosure insufficient to infer intent to deceive the PTO).

While a smoking gun may not be needed to show an intent to deceive, more is needed than materiality of a reference. The district court did not find anything further here. In addition, the court did not engage in any balancing of materiality and intent as is required by our precedent. N.V. Akzo v. E.I. DuPont de Nemours, 810 F.2d 1148, 1153 (Fed. Cir. 1987).

Furthermore, the court did not make findings of knowledge of materiality sufficient for an inference of intent to deceive. The court found, and the majority now affirms, that Tolomei and LeFebre "had knowledge" of the RFO art. Praxair, Inc. v. ATMI, Inc., 489 F. Supp. 2d at 395. However, that finding is insufficient. An inference of intent to deceive requires more than knowledge of the existence of the nondisclosed art; it also requires a finding that the applicant knew, or should have known, of the materiality of that art. Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1191 (Fed. Cir. 2006) (citing Bruno, 394 F.3d at 1354; Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1257 (Fed. Cir. 1997)). The court made no mention of either attorney's knowledge of the materiality of the RFO art, and no evidence of record demonstrates that they knew of the materiality of the RFO art. The majority states that "Tolomei at least was aware of its obvious materiality in light of" the four statements made by Tolomei to the PTO during prosecution. That conclusion, however, is not supported by any finding of the district court.

Indefiniteness

The district court reasoned that "the term 'port body' [in the '895 patent claim 1] . . . is not described, labeled, or coherently discussed in the patent. The meaning of the term 'port body' is not discernable from the patent specification." Praxair, Inc. v. ATMI, Inc., No. 03-1158-SLR, slip op. at 7 (D. Del. Nov. 8, 2005).

Case law is that a claim is indefinite only if sense of it can't be made, particularly by narrowing its interpretation. Struggling to understand what the claim means is not indefiniteness.

Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005). Indefiniteness, like claim construction, is a question of law, and we review a district court's entry of summary judgment on the issue of indefiniteness de novo. Id. at 1347.

The second paragraph of 35 U.S.C. § 112 requires that the specification of every patent must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." This requirement serves a public notice function, ensuring that the patent specification adequately notifies the public of the scope of the patentee's right to exclude. See Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338 (Fed. Cir. 2003). A claim satisfies the definiteness requirement of § 112 "[i]f one skilled in the art would understand the bounds of the claim when read in light of the specification." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A claim will be found indefinite only if it "is insolubly ambiguous, and no narrowing construction can properly be adopted . . . ." Id. On the other hand, "[i]f the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Id.

Though a struggle to figure, the CAFC ruled that '895 was "not indefinite."

Although the discussion of the port body in the '895 patent's specification may not be a model of clarity, the specification adequately explains...

The laugh line: "indefiniteness is a legal rather than a factual question." The appeals court is never one to let facts get in the way of a ruling. They call it justice.