American Calcar, Inc. v. American Honda Motor Co.
768 F.3d 1185
| Fed. Cir. | 2014Background
- Calcar sues Honda for infringement of three patents with a common spec from the '355 patent.
- At issue are the '497, '465, and '795 patents claiming a vehicle information/display system.
- Honda moved for inequitable conduct based on Calcar founder Obradovich withholding prior art.
- 96RL navigation system was disclosed but its operational details allegedly withheld.
- District court on remand found materiality and intent satisfied under Therasense; patents unenforceable.
- Panel majority AFFIRMS; dissent argues no sufficient but-for materiality or intent and cites reexamination favors Calcar.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Materiality of undisclosed prior art | Calcar; Obradovich's undisclosed details were material | Honda; withheld info would have blocked issuance | But-for materiality not shown; remand findings supported |
| Intent to deceive PTO | Obradovich intended to deceive; credibility undermines defendants | No clear evidence of intent; jury found no inequitable conduct | No clear error; district findings upheld |
| Obradovich’s disclosure sufficiency | Partial disclosures were insufficient to negate intent | Reexamination confirms non-materiality of omitted items | Intentionally withheld details not shown to be material |
| Effect of Therasense standard on materiality | But-for materiality under Therasense favors inequitable conduct | PTO reexamination controls; not material | District court findings not clearly erroneous |
| Jury advisory verdict binding | Jury verdict should guide equitable conduct decision | Jury verdict advisory; not binding on equitable issues | Jury verdict not controlling; district court’s equity ruling affirmed |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (establishes but-for materiality and intent requirements; standard applied on appeal)
- Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013) (requires separate proof of materiality and intent; clear error review)
- In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511 (Fed. Cir. 2013) (discusses materiality and standards in patent litigation)
- KSR International Co. v. Teleflex Inc., 550 U.S. 398 (Sup. Ct. 2007) (teaches analysis of obviousness as a whole; not a simple element-by-element check)
- Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988) (discusses inference and credibilty in inequitable conduct)