The Software IP Report

Don’t-Ask-Don’t-Tell Approach Meets Intent Requirement for Inequitable Conduct

By Charles Bieneman

Categories: Inequitable Conduct, The Software IP Report

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 not been paid.  3D Medical Imaging Systems, LLC v. Visage Imaging, Inc., 2:14-CV-267-RWS (N.D. Ga. Jan 11, 2017).  Because the unsupported certification was material to the United States Patent and Trademark Office’s decision to revive the patent, the court granted a motion for summary judgment seeking a declaratory judgment that U.S. Patent No. 6,175,655 was unenforceable for inequitable conduct.

The ’655 patent’s prior owner was a bankrupt company that made a conscious decision not to pay the final maintenance fee for the ’655 patent.  The current owner, the plaintiff in this case, knew that the patent was expired when he acquired it, and that the prior owner “had filed for bankruptcy roughly two months after the 11.5-year maintenance fee was due.”  Nonetheless, without, by his own admission, any knowledge or investigation, the plaintiff certified to the USPTO that the failure to pay the maintenance fee was unintentional.

The current patent owner made a bad decision.  Under Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011) (en banc), a finding of inequitable conduct requires (1) a material misrepresentation, and (2) a specific intent to mislead the USPTO.  The intent prong was met because the patent owner certified that the maintenance fee non-payment was unintentional without knowing whether that was true.  That is, his “certification was a misrepresentation because it represented that he knew something he did not.”  The patent owner was not helped, of course, by the record showing that in fact the failure to pay the maintenance fee was not unintentional.

Lessons for Practice

Therasense was widely seen as a correction to a pendulum that had swung too far in favor of defendants seeking inequitable conduct findings.  But this is not the first case to demonstrate that Therasense did not do away with common sense.