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March 19, 2009

Screen Door

Judge Linn, concurring in Larson v. Aluminart, observed that the CAFC "has significantly diverged from the Supreme Court's treatment of inequitable conduct and perpetuates what was once referred to as a "plague" that our en banc court sought to cure in Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 n.15 (Fed. Cir. 1988) (en banc) (quoting Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988) ("[T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague."))."

The CAFC was muddled as to whether an applicant is held responsible for not pointing out incongruities in office examination, even though the applicant informed the Office of contemporaneous examinations. Whether the PTO has any responsibility to coordinate itself or act consistently was left unaddressed.

In essence, Judge Linn chronicled the heedless declining standard for inequitable conduct. By being in concurrence, not dissent, Linn basically complained about himself being a carrier of the plague, which was spread further in this ruling.

Larson Manufacturing v. Aluminart Products and Chamberdoor Industries (CAFC 2008-1096, -1174) precedential

Larson's 6,618,998 has been through the wringer. '998 "claims a door with a moving glass insert. The insert travels in weather stripping-lined tracks and attaches to a spring-based rolled screen."

Larson went after Aluminart in October 2003. Aluminart screamed inequitable conduct, and filed for a reexamination, which was granted by the PTO. The district court stayed the suit pending reexam outcome.

The patent office twin-tracked the '998 reexam with a continuation in the same family, both prosecuted by Larson's patent attorney, James Patterson. The continuation went through four rejections over prior art before being abandoned.

[D]uring the reexamination proceedings, Larson's patent attorney, Mr. Patterson, submitted an Information Disclosure Statement ("IDS") disclosing some 200 patents for review by the Reexamination Panel. In addition, Mr. Patterson submitted several district court pleadings from this litigation, including Aluminart's initial inequitable conduct allegations. He also submitted a supplemental IDS on June 10, 2005, disclosing the co-pending '039 Continuation, the existence of the Second Office Action in the prosecution of the '039 Continuation, and three additional references cited during the prosecution of the '039 Continuation--U.S. Patent No. 5,540,476, and the Kemp and Ralph patents. However, neither the Third Office Action, the Fourth Office Action, nor the DE '478 patent cited by the examiner in the Fourth Office Action, were ever disclosed to the Reexamination Panel.

'998 survived reexamination.

On January 26, 2006, the Reexamination Panel issued a Notice of Intent to Issue Ex Parte Reexamination Certificate, canceling claims 1-10, confirming the patentability of claims 14-20, and allowing claims 11-13, 21, and 22 with slight amendments. The '998 Reexamination Certificate was published on September 19, 2006.

The stay was lifted, whereupon Aluminart again screamed inequitable conduct over the reexam during the bench trial.

Alluminart (sic) argued that Larson withheld several material references from the Reexamination Panel: (1) product and marketing materials for screen configurations produced by a company named Genius (the "Genius Literature"); (2) the DE '478 patent; (3) product and marketing materials for screen configurations produced by a company named Preferred Engineering (the "Preferred Engineering Literature"); and (4) the Third and Fourth Office Actions. Aluminart further argued, based on comparisons with the disclosed prior art and testimony from its expert, Dr. Jerry Hall, that the withheld references were not cumulative of prior art already before the Reexamination Panel. Aluminart also argued that this material was withheld with deceptive intent. According to Aluminart, notwithstanding its inability to provide direct evidence, Larson's deceptive intent could be inferred by the number of withheld references and its failure to provide any plausible excuse for its non-disclosure.

In response, Larson asserted that each of the allegedly material references was cumulative of prior art already disclosed to the Reexamination Panel, namely the Johnson and Kemp patents, and U.S. Patent No. 6,082,432 (the "Kissinger patent"). Regarding the Third and Fourth Office Actions, Larson argued that, while these were not disclosed, every critical reference cited in them had been disclosed to the Reexamination Panel. Furthermore, Larson argued that there was no need to disclose the Third and Fourth Office Actions themselves because they both merely contained examiner analysis that was the same as that in previous office actions, which had already been disclosed to the Reexamination Panel. Addressing the issue of intent, Larson focused on the absence of direct evidence, arguing that merely withholding references, without more, could not constitute the requisite intent. Additionally, Larson argued that it had disclosed to the Reexamination Panel the parallel prosecution of the '039 Continuation. This disclosure, it asserted, was evidence of good faith rather than an intent to deceive.

The district court agreed with Aluminart, finding Larson guilty of inequitable conduct and holding '998 unenforceable. The judge did not grant Aluminart the requested attorneys fees, noting "that not every ruling of inequitable conduct results in an exceptional case determination."

This episode's bulging recitation of inequitable case law, by CAFC Judge Schall:

"A patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution." Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006). To successfully prove inequitable conduct, "the accused infringer must present '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].'" Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008) (quoting Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007)). In addition, "at least a threshold level of each element--i.e., both materiality and intent to deceive--must be proven by clear and convincing evidence." Star Scientific, 537 F.3d at 1365.

"[W]e have held that 'information is material when a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.'" Star Scientific, 537 F.3d at 1367 (quoting Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1297 (Fed. Cir. 2008)). Moreover, "[i]nformation concealed from the PTO may be material even though it would not invalidate the patent." Li Second Family Ltd. v. Toshiba Corp., 231 F.3d 1373, 1380 (Fed. Cir. 2000). However, a withheld otherwise material reference is not material if it is merely cumulative to, or less relevant than, information already considered by the examiner. See Digital Control, 437 F.3d at 1319; Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1577 (Fed. Cir. 1996).

"[I]nequitable conduct requires not intent to withhold, but rather intent to deceive." Dayco Prods., 329 F.3d at 1367. "The intent element of the offense is . . . in the main proven by inferences drawn from facts, with the collection of inferences permitting a confident judgment that deceit has occurred." Akron Polymer Container Corp. v. Exxel Container, Inc., 148 F.3d 1380, 1385 (Fed. Cir. 1998).

If the requirements of materiality and intent are met, "[t]he court must then determine whether the questioned conduct amounts to inequitable conduct by balancing the levels of materiality and intent, 'with a greater showing of one factor allowing a lesser showing of the other.'" Digital Control, 437 F.3d at 1313 (quoting Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 693 (Fed. Cir. 2001)).

The threshold for overturning the district court is having the "firm conviction that a mistake has been committed."

"When, after a trial, the court has made factual findings as to materiality and deceptive intent, those factual findings are reviewed for clear error, and the decision of the ultimate issue of inequitable conduct is reviewed for abuse of discretion." Digital Control, 437 F.3d at 1313. A factual finding is clearly erroneous "when, 'although there is evidence to support [the finding], the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.'" Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1338-39 (Fed. Cir. 2001) (quoting United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)). An abuse of discretion occurs when (1) the trial court's decision is clearly unreasonable, arbitrary, or fanciful, (2) the court's decision is based on an erroneous construction of the law, (3) the court's factual findings are clearly erroneous, or (4) the record contains no evidence upon which the court rationally could have based its decision. See W. Elec. Co. v. Piezo Tech., Inc., 860 F.2d 428, 430-31 (Fed. Cir. 1988).

Larson regurgitated the same arguments as before the district court, along with "the [district] court improperly inferred intent merely because of the nondisclosure of references."

The CAFC agreed with Larson that the uncited prior art was cumulative.

The issue of Larson not notifying the reexamination panel of continuation office actions was thornier. What strikes this writer is the inability of the PTO to keep track of, and coordinate to the necessary degree, its examinations.

We now come to Larson's failure to disclose to the Reexamination Panel the Third and Fourth Office Actions from the '039 Continuation. As noted above, both the Third and Fourth Office Actions contained PTO examiner rejections and analysis concerning claims similar to those in the '998 patent's reexamination.

Larson acknowledges that the Third and Fourth Office Actions both contained examiner comments and rejections. It argues, though, that the examiner provided only summary rejections without meaningful analysis. According to Larson, in the Third and Fourth Office Actions, the examiner articulated rejections almost identical to the previous office actions; mostly discussed the Johnson patent, which had been thoroughly explained in previous office actions; and focused on claim limitations that were not at issue. In other words, Larson contends, because the Third and Fourth Office Actions did not contain examiner comments different from previous office actions and because Larson disclosed all of the material references discussed in those actions, the office actions themselves were not material.

Aluminart accused Larson of talking out of both sides of its mouth: opposite arguments during reexam and continuation examination.

Relying on Dayco Products, Aluminart responds that Larson fails to recognize that it is not only the references cited in the office actions that are important, but also the substance of the examiner's comments. According to Aluminart, the Third and Fourth Office Actions contained remarks that are inconsistent with Larson's arguments to the Reexamination Panel. Specifically, in the Third Office Action, the examiner rejected the claims at issue because the Johnson patent allegedly discloses a screen that extends into tracks. Subsequently, Larson argued the exact opposite position to the Reexamination Panel--that the Johnson patent does not show this feature. In addition, Aluminart argues that the examiner in the Fourth Office Action, despite conceding that the Johnson patent does not disclose a screen that extends into tracks, articulated a new rejection based on the Johnson and Kemp patents, stating for the first time that the Kemp patent discloses this feature.

The CAFC found the omission material, even though it was later found not to be, because the continuation examiner was wrong in the first place. Who was talking out of both sides of their mouth?

We agree with Aluminart on this point. Because the Third and Fourth Office Actions contained another examiner's adverse decisions about substantially similar claims, and because the Third and Fourth Office Actions are not cumulative to the First and Second Office Actions, the district court correctly found the withheld Office Actions material. In Dayco Products, the patentee failed to disclose rejections in a copending application of claims "that were substantially similar in content and scope to claims pending in the applications that issued as the patents-in-suit." 329 F.3d at 1367. We held "that a contrary decision of another examiner reviewing a substantially similar claim" was material. Id. at 1368. We further explained that, because a "rejection of a substantially similar claim refutes, or is inconsistent with the position that those claims are patentable, [the] adverse decision by another examiner . . . meets the materiality standard." Id.

We acknowledge that the '039 Continuation examiner later withdrew his rejection based upon the Johnson patent and came to the same ultimate conclusion as the Reexamination Panel--that the Johnson patent did not disclose the "extending into screen tracks" limitation. The '039 Continuation examiner's later view, however, does not change the fact that the Third Office Action contained valuable reasoning and rejections at the time when it was made.

The fourth continuation office action found that examiner and the reexamination panel not coming to the same conclusion as to prior art. Blame the applicant for not pointing out the incongruities.

Under these circumstances, the adverse decision of the examiner in the '039 Continuation, based on a different explanation and interpretation of the Kemp patent and other prior art, was "clearly information that an examiner could consider important." Dayco, 329 F.3d at 1368.

For the foregoing reasons, we hold that the district court did not err in finding the Third and Fourth Office Actions not cumulative and material.

The district court "largely inferred deceptive intent based on Larson's failure to disclose." In other words, South Dakota Judge Lawrence L. Peirsol had merged materiality and intent into a singular analysis.

We therefore vacate the court's deceptive intent finding and, consequently, its ultimate determination of inequitable conduct. See, e.g., Purdue Pharma L.P. v. Endo Pharmas. Incy, its ultimate determination of inequitable conduct. ., 438 F.3d 1123, 1135 (Fed. Cir. 2006) (vacating unenforceability because the deceptive intent finding was clearly erroneous and remanding "to give the trial court an opportunity to reconsider its intent finding"); Molins PLC, 48 F.3d at 1184 (finding of deceptive intent was "clearly erroneous, and the determination that the method of disclosure constituted inequitable conduct cannot be sustained").

Remanded for the district court to determine whether Larson withholding continuation office actions was done "with a threshold level of deceptive intent and, if so, whether balancing that level of intent with the level of materiality warrants holding the '998 patent unenforceable."

Judge Schall gave the district court judge some advice. First, just take another look at the evidence you already have. Additional evidence is unnecessary.

Second, while "deceptive intent can be inferred from circumstantial evidence," it must "be the single most reasonable inference," and "meet the clear and convincing standard."

Second, materiality does not presume intent, and nondisclosure, by itself, cannot satisfy the deceptive intent element. See, e.g., Star Scientific, 537 F.3d at 1366; M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1340 (Fed. Cir. 2006); see also Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1313 (Fed. Cir. 2008) ("[A] showing of materiality alone does not give rise to a presumption of intent to deceive."). Rather, the alleged infringer must prove by clear and convincing evidence a specific intent to deceive the PTO. See Star Scientific, 537 F.3d at 1366; see also Kingsdown Med. Consultants v. Hollister, Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc in relevant part) (holding even "'gross negligence' does not of itself justify an inference of intent to deceive"). While deceptive intent can be inferred from circumstantial evidence, the circumstantial evidence must still be clear and convincing. Star Scientific, 537 F.3d at 1366. "Further, the inference must not only be based on sufficient evidence and be reasonable in light of that evidence, but it must also be the single most reasonable inference able to be drawn from the evidence to meet the clear and convincing standard." Id. Relatedly, just as merely withholding a reference cannot support an inference of deceptive intent, see Dayco Prods., 329 F.3d at 1367 ("Intent to deceive cannot be inferred simply from the decision to withhold the reference where the reasons given for the withholding are plausible."), so too an accused infringer cannot carry its threshold burden simply by pointing to the absence of a credible good faith explanation. Star Scientific, 537 F.3d at 1368; see M. Eagles Tools Warehouse, 439 F.3d at 1341 ("When the absence of a good faith explanation is the only evidence of intent, however, that evidence alone does not constitute clear and convincing evidence warranting an inference of intent.").

Third, the accused party gets some benefit of doubt.

Here's where the CAFC ruling is downright bizarre. Case law precedence indicates an applicant notifying the Office of copending examinations points "away from an intent to deceive." Which should shatter "clear and convincing" evidence of intent. Which happened in this case. Given that no further evidence is required, why didn't the CAFC rule on the matter, that Larson did not intend to deceive, rather than remand?

Third, on remand, the district court should take into account any evidence of good faith, which militates against a finding of deceptive intent. See, e.g., Purdue Pharma, 438 F.3d at 1134; N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 939 (Fed. Cir. 1990). However, while the court must consider any such evidence provided, the patentee is not required to offer evidence of good faith unless the accused infringer first meets its burden to prove--by clear and convincing evidence--the threshold level of deceptive intent. See Star Scientific, 537 F.3d at 1368. In that regard, we note that, on remand, the district court should consider that Larson notified the Reexamination Panel of the simultaneous prosecution of the '039 Continuation, and "thus put the PTO on notice of copendency." Akron Polymer Container, 148 F.3d at 1383-84; see Dayco Prods., 329 F.3d at 1366 ("[M]embers of the family of applications that issued as the patents-in-suit were disclosed to the examiner assigned to the copending application," which pointed "away from an intent to deceive."). The court also should consider the fact that Larson disclosed several pleadings from this lawsuit--including Aluminart's initial allegations of inequitable conduct--and that there was a Second Office Action issued in the '039 Continuation proceedings. Despite Larson's failure to expressly notify the Reexamination Panel of the Third and Fourth Office Actions, the court should consider whether its disclosure to the Reexamination Panel of the parallel proceedings, nevertheless, points away from deceptive intent and must be given weight. See Akron Polymer Container, 148 F.3d at 1383-84 ("Exxel contends, we think convincingly, that it hardly could be seeking to deceive the PTO as to the existence of copending applications when it actually disclosed the fact of copendency to the Venus examiner.").

After that, an ineffable balancing of "threshold levels" occurs. They call this case law, which is hypothetically intended as guidance for district courts.

If the district court satisfies itself--in light of all the evidence and consistent with our materiality findings--that Aluminart has established a threshold level of intent by clear and convincing evidence, it will then be required to balance the levels of materiality and intent to determine if a finding of inequitable conduct is warranted. Star Scientific, 537 F.3d at 1367 (balancing requires a determination of "whether the applicant's conduct before the PTO was egregious enough to warrant holding the entire patent unenforceable"). At that point, the court must balance the substance of those threshold levels--with a higher level of materiality permitting a lower level of intent, and vice versa. Id. Indeed, some references may be highly material, while others may only be minimally material. See, e.g., Kemin Foods, L.C. v. Pigmentos Vegetales, 464 F.3d 1339, 1345-46 (Fed. Cir. 2006) (affirming the district court's finding on the "level of materiality" that a withheld reference was not "highly material"); Purdue Pharma, 438 F.3d at 1133 ("Th[e] omission of information was material, but not as material as an affirmative misrepresentation . . . .").

Judge Linn, in concurrence, not dissent. Referring to the fact that the patent-in-suit underwent examination twice, both times the applicant accused of inequitable conduct -

Symptoms of this plague are apparent from the facts of this case.

Linn chronicles the slide down the slippery slope of more easily declaring guilt.

The ease with which inequitable conduct can be pled, but not dismissed, is a problem of our own making. The Supreme Court's three inequitable conduct cases involved overt fraud, not equivocal acts of omission. Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 809, 819 (1945) ("patent claims infected with fraud and perjury" where assignee knew that its employee "gave false dates as to the conception, disclosure, drawing, description and reduction to practice" during interference proceeding and then "secured the perjured . . . application and exacted promises from the other parties never to question the validity of any patent that might be issued on that application"); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240, 243 (1933) (false affidavits and deposition testimonies obtained "for valuable considerations" averring that the prior art use "was an abandoned experiment" and "to keep secret the details of the prior use"); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 240, 243 (1944) (false trade article procured from "an ostensibly disinterested expert" in exchange for $8,000 to gain patent issuance in spite of previously "insurmountable Patent Office opposition"), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976).

We clarified en banc that the "two elements, materiality and intent, must be proven by clear and convincing evidence," and that "'gross negligence' does not of itself justify an inference of intent to deceive." Kingsdown, 863 F.2d at 872, 876. But in seeming contradiction with Kingsdown, a standard even lower than "gross negligence" has propagated through our case law. This standard permits an inference of deceptive intent 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.'" Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1313-14 (Fed. Cir. 2008) (alterations in original) (quoting Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1191 (Fed. Cir. 2006)) (citing Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1367 (Fed. Cir. 2008); Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1257 (Fed. Cir. 1997)).

This test is problematic. First, the "high materiality" prong of the intent element simply repeats the materiality element. Conflating materiality and intent in this manner is inconsistent with the principle that "materiality does not presume intent, which is a separate and essential component of inequitable conduct." Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 552 (Fed. Cir. 1990) (quoting Allen Organ Co. v. Kimball Int'l, Inc., 839 F.2d 1556, 1567 (Fed. Cir. 1988)). The second, "should have known" prong sets forth a simple negligence standard, lower even than the "gross negligence" standard that was expressly rejected in Kingsdown.1 I also question whether a fact-finder who has deemed information to be "highly material" would not also be compelled to conclude that a reasonable patentee "should have known of the materiality," at least when the patentee "knew of the information," as prong two requires. Third, the "credible explanation" prong effectively shifts the burden to the patentee to prove a negative: that it did not intend to deceive the PTO. But it is the "accused infringer"--not the patentee--who "must prove by clear and convincing evidence that the material information was withheld with the specific intent to deceive the PTO." Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). As to this third prong, we have also explained that "[t]he patentee need not offer any good faith explanation unless the accused infringer first carried his burden to prove a threshold level of intent to deceive by clear and convincing evidence." Id. at 1368 (emphasis added). As explained above, however, the first two prongs are not evidence of deceptive intent. The first is evidence of materiality; the second is evidence of negligence. These two prongs are therefore insufficient as a matter of law to establish a clear and convincing "threshold level" of deceptive intent before the third prong can ever properly come into play.

1 The source of this divergence can be traced to Critikon, 120 F.3d at 1256 (citing Driscoll v. Cebalo, 731 F.2d 878, 885 (Fed. Cir. 1984)). It relied on the pre-Kingsdown "should have known" standard of Driscoll v. Cebalo, a case explicitly overruled by Kingsdown on the issue of gross negligence, 863 F.2d at 876. See Lynn C. Tyler, Kingsdown Fifteen Years Later: What Does It Take to Prove Inequitable Conduct?, 13 Fed. Cir. B.J. 267, 276-83 (2004) (collecting panel decisions that rely on precedent explicitly overruled by Kingsdown).

As it now stands, the test generally permits an inference of deceptive intent to be drawn whenever the three prongs are satisfied. This is in tension with the rule in Star Scientific that "the inference must not only be based on sufficient evidence and be reasonable in light of that evidence, but it must also be the single most reasonable inference able to be drawn from the evidence." Id. at 1366 (emphasis added). It cannot be said that deceptive intent is the "single most reasonable inference" when all that prong two shows is that the patentee "should have known" that the information was material. An equally reasonable inference under this test is that the patentee incorrectly believed that the information was not material, or that the patentee was negligent, or even grossly negligent. None of these gives rise to deceptive intent under Kingsdown, nor is deceptive intent the "single most reasonable inference" under Star Scientific.

For the foregoing reasons, I respectfully submit that the test for inferring deceptive intent, as it currently exists, falls short of the standard "need[ed] to strictly enforce the burden of proof and elevated standard of proof in the inequitable conduct context." Star Scientific, 537 F.3d at 1365. The facts of this case suggest that the time has come for the court to review the issue en banc.

Posted by Patent Hawk at March 19, 2009 2:10 PM | Inequitable Conduct


Judge Linn makes a very astute observation that the Federal Circuit (with the help of patent litigators who should know better) has created an unnecessary "monster" out of inequitable conduct. Also as Judge Linn accurately characterizes the three leading SCOTUS cases on inequitable conduct (a characterization I shared before I saw his concurrence), these three cases "involved overt fraud, not equivocal acts of omission."

Also, while reference is made repeatedly to Dayco Products, astonishingly no reference is made to McKesson Information Solutions v. Bridge Medical. While the result in McKesson makes me ill (and points out a glaring problem of how harshly and inconsistently the amorphous "second-guessing" standard for inequitable conduct is applied), why isn't McKesson relevant here?

Here also is my proposal for removing inequitable conduct as the "plague" it is because it is alleged all too often with no facts to support:

1. The "materiality" prong can be proven only if it is shown that one or more patent claims (or the entire patent itself if we're talking an issue like improper inventorship) would not have issued "but for" the deliberate omission or misrepresentation of the alleged "mateial" information.

2. The "intent to deceive" prong requires proof of specific intent or "wanton or reckless disregard" as to the omitted/misrepresented information. So-called "gross negligence" shouldn't be the standard.

3. Completely dump the "sliding scale test." This conflates the "materiality" and "intent to deceive" prongs in a way that's not helpful.

4. Each of the "materiality" and "intent to deceive" prongs must be proven "beyond a reasonable doubt." That will leave inequitable conduct to address only the truly "egregious" instances.

5. Inequitable conduct must be alleged with the particularity required for fraud under FRCP 9.

6. 35 USC 285 and FRCP 11 should be liberally applied to "frivolous" allegations of inequitable conduct.

That's my 2 cents to get this "plague" put in its appropriate place, and to get back to judging patents on the merits.

Posted by: EG at March 20, 2009 5:24 AM


What are you worried about? You read Tafas. Ineq. conduct can be fairly adjudicated by the courts. Just as J. Prost.

Posted by: anon at March 20, 2009 11:54 AM


Do I detect some cynism here about the Federal Circuit's ability to put a leash on the inequitable conduct "plague"? (And I did read Prost's astoundingly naive opinion in Tafas; not a good day for the Federal Circuit, or making patent prosecution realistic or rational.)

Posted by: EG at March 20, 2009 1:36 PM

"Whether the PTO has any responsibility to coordinate itself or act consistently was left unaddressed."

It seems to me that the PTOs responsibilty in the Examination process is directly related to its abilty to hire a sufficient number of Examiner's to keep up with he workload. In other words, if we can't keep up with the work, then we'll (the PTO) promulgate new rules that put an onerous burden on the applicant.

Is it really too much to ask of an Examiner to pull up an Office action in a related case, read it, and draw his/her own conclusions?

Posted by: liam at March 20, 2009 2:42 PM