1st Media, LLC v. Electronic Arts, Inc.
694 F.3d 1367
Fed. Cir.2012Background
- 1st Media appeals district court ruling that Lewis and Sawyer committed inequitable conduct to render the ’946 Patent unenforceable.
- The inequitable conduct allegations focus on nondisclosure of three material references (Bush, Baji, Hoarty) and related rejections in co-pending applications.
- Therasense standard governs inequitable conduct, requiring clear and convincing evidence of specific intent to deceive and but-for materiality.
- Plaintiff’s and defendants’ arguments centered on whether knowledge of materiality plus lack of disclosure sufficed to infer deliberate withholding.
- District court found credibility issues with Lewis and Sawyer, but concluded non-disclosures supported an inference of intent to deceive.
- Appellees moved for factual findings and the court adopted them; on appeal the Federal Circuit reverses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Bush nondisclosure shows intent to deceive | 1st Media argues no deliberate withholding shown | Appellees argue Bush shows deliberate withholding due to knowledge of materiality | Reversed: no proven deliberate decision to withhold Bush under Therasense |
| Whether Baji nondisclosure supports intent to deceive | 1st Media contends no deliberate withholding given overlap and belief of distinct technologies | Appellees claim deliberate withholding supported by prosecution history | Reversed: no clear deliberate withholding shown for Baji |
| Whether Hoarty nondisclosure supports intent to deceive | 1st Media argues Hoarty not material or singled out | Appellees assert non-disclosure showed mens rea due to similarity to IMM/IMD/MCPS | Reversed: no deliberate withholding shown for Hoarty |
| Overall application of Therasense standard | 1st Media contends district court failed to apply requiring deliberate withholding | Appellees argue evidence supports intent to deceive | Reversed: Therasense requires deliberate withholding; record lacks such evidence |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011 (en banc)) (clear, convincing proof of specific intent to deceive required; but-for materiality and deliberate withholding must be shown)
- Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324 (Fed. Cir. 2012) (affirmative conduct showing awareness of materiality may support a finding; selective disclosure exists in some cases)
- Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995) (deliberate decision to withhold a known material reference required for intent to deceive)
- Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) (single most reasonable inference standard for intent to deceive after Therasense)
- Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (earlier standard on intent and materiality before Therasense)