IP Blog
Inequitable Conduct
Failure to Disclose Sales Before Critical Date is Inequitable Conduct
Failure to disclose “material information of prior sales” resulted in a holding that U.S. Patent No. 8,146,428 “is unenforceable due to inequitable conduct” based on a finding of a “specific intent to deceive the PTO into granting the patent.” Total Rebuild, Inc. v. PHC Fluid Power, LLC, No. 6:15-CV-1855 (W.D. La. Sept. 13, 2019). The ‘428 patent is directed to...
No Inequitable Conduct: Duty to Disclose Only Goes So Far
A patent prosecutor did not have a duty to disclose that a cited prior art reference inherently disclosed a claimed feature where the examiner misunderstood the reference as failing to disclose the feature. On this basis, a motion to strike in inequitable conduct defense relating to the reference was granted. Nevro Corp. v. Boston Scientific Corporation, No. 16-cv-06830-VC (N.D. Cal. Oct....
Inequitable Conduct: Prior Device Material to Method Claim?
A court has struck an inequitable conduct defense as inadequately pled because, said the court, the allegedly withheld prior art directed to a device was not material to a patent claim directed to a method for manufacturing a similar device. International Test Solutions, Inc. v. Mipox International Corporation, NO. 16-cv-00791-RS (N.D. Cal. May 16, 2017). International Test Solutions (“ITS”) owns...
What Facts Support Inequitable Conduct at the Patent Office?
Here is an interesting case addressing whether the affirmative defense of inequitable conduct was adequately plead as an affirmative defense in answer to a complaint for patent infringement. In Music Choice v. Stingray Digital Group Inc., 2-16-cv-00586 (E.D. Texas May 2, 2017), Magistrate Judge Payne recommended denying a motion to dismiss affirmative defenses and counterclaims of inequitable conduct, finding that...
Don’t-Ask-Don’t-Tell Approach Meets Intent Requirement for Inequitable Conduct
The filer of a petition to revive an expired patent met the intent prong of the test for inequitable conduct by acting with at best willful ignorance; the filer certified that a failure to pay a maintenance fee was unintentional when he not only had not investigated, but had no knowledge, as to why the maintenance fee in fact had...
No Intent to Deceive, No Inequitable Conduct
The Federal Circuit has reversed a finding of inequitable conduct where “the record contains no evidence of a deliberate decision to withhold those references from the PTO as required under Therasense, Inc. v. Becton, Dickinson & Co.” 1st Media, LLC v. Electronic Arts, Inc., No. 2010-1435 (Fed. Cir. Dec; 13, 2012). The opinion was authored by Judge Linn, and joined...
Inequitable Conduct After Therasense: Definitely Harder to Prove
Specific intent to deceive the USPTO did not exist where an inventor removed mention of a reference from his patent application, and then testified that the “reference was cumulative or merely provided background information.” Imura International U.S.A., Inc. v. HR Technology, Inc., No. 08-2220 (D. Kans. April 24, 2012). The party asserting inequitable conduct also failed to show materiality under...
Impact of Therasense: Defendant Denied Motion to Plead Inequitable Conduct
In Pixion, Inc. v. Citrix Systems, Inc., No. C 09-03496 (N.D. Cal. April 16, 2012), the court denied Citrix’s motion for leave to amend its Answer to plead the affirmative defense of inequitable conduct because Citrix could not “show that the USPTO would have rejected the” patents-in-suit even if the allegedly withheld reference had been disclosed. Pixion’s patents allegedly covered...
Inequitable Conduct After Therasense Does Not Always Require "But-for" Materiality
Even under the heightened “but-for” materiality standard for proving inequitable conduct in patent prosecution set forth by the Federal Circuit in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011) (en banc), a pleading would be sufficient that set forth “affirmative egregious misconduct, such as the filing of an unmistakably false affidavit.” Based on allegations...