The Software IP Report

No Inequitable Conduct: Duty to Disclose Only Goes So Far

By Charles Bieneman

Categories: Inequitable Conduct, The Software IP Report

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. 4, 2017).

During prosecution, the patent examiner had made obviousness rejections of claim 58 under 35 USC § 103 based on the “Fang” reference, which the inventor both owned and had disclosed. After the patent prosecutor pointed out the subject patent application’s common ownership with the Fang reference, the examiner withdrew the obviousness rejection and allowed claim 58.

The defendant here alleged that Fang inherently disclosed “pulse width,” the recited feature of claim 58 that the Examiner had said was missing from Fang. According to defendant, this would have transformed Fang into a 35 USC § 102 anticipation reference, which could not have been disqualified based on the common ownership. Moreover, argued the defendant

although disclosure of prior art is usually enough to avoid a charge of inequitable conduct, when the patent examiner made clear that he misunderstood the scope of Fang’s disclosure, the prosecuting attorney had a duty to respond to the examiner’s confusion by pointing out that Fang inherently disclosed the pulse width limitation.

The court found the defendant’s argument “not unreasonable,” but nonetheless rejected it. The “great weight of the case law” made clear that the duty to “disclose all material information to the patent examiner” did not extend to ensuring that “the patent examiner understands that information.” This was not the case “where the inventor made an affirmative misrepresentation about prior art or withheld information in uniquely in its possession that would have cleared up a patent examiner’s known misunderstanding.” And even if inequitable conduct could be found based on a failure to clear up an examiner’s misunderstanding, the court would have exercised its discretion to not find it based on the facts here.