Intellect Wireless, Inc. v. HTC Corporation, 732 F.3d 1339

Background

Patents at issue (U.S. Nos. 7,266,186 and 7,310,416) claim wireless transmission and display of caller ID and pictures to portable devices; Intellect sued HTC for infringement.
Sole inventor Daniel Henderson submitted a Rule 131 declaration during prosecution asserting actual reduction to practice and a July 1993 demonstration.
The district court found those statements false: no working wireless prototype or demonstrable wireless transmission existed in July 1993.
Henderson filed a revised declaration and counsel made oral statements, but never expressly informed the PTO that the original declaration was false or stated the actual facts.
The district court held the patents unenforceable for inequitable conduct (material misrepresentation + specific intent to deceive); the Federal Circuit affirmed.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether false Rule 131 declaration was material to patentability	Revised declaration and examiner reliance on constructive reduction to practice cured any material falsehoods	Original declaration contained unmistakably false statements about actual reduction to practice that were not cured	Materiality proven: filing false affidavit is material and was not effectively cured
Whether Henderson acted with specific intent to deceive the PTO	Misstatements were inadvertent, corrected, or explained as drafting errors; examiner relied on constructive reduction	Pattern of misleading statements across family patents and failure to expressly correct supports intent to deceive	Specific intent inferred as most reasonable explanation given pattern of deceit and non-correction
Whether post-issuance statements or counsel communications cured the misconduct	Post-issuance clarifications and counsel’s oral explanations show lack of deceptive intent and examiner relied on constructive reduction	PTO/public were never expressly told the actual facts; post-issuance statements are self-serving and insufficient	Post-issuance efforts did not cure—Rohm & Haas requires express, open correction to the PTO
Whether the district court’s credibility and factual findings were clearly erroneous	Explanations and alleged copy‑paste errors undermine finding of deceit	Trial credibility findings supported by evidence; appellate court should defer	No clear error; credibility findings and inferences affirmed

Key Cases Cited

Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir.) (en banc) (filing a false affidavit is an example of egregious misconduct that is material)
Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556 (Fed. Cir.) (applicant must expressly advise the PTO of the misrepresentation and state the actual facts to cure a false affidavit)
In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511 (Fed. Cir.) (elements required to prove inequitable conduct: materiality and specific intent)
Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346 (Fed. Cir.) (standard of review—abuse of discretion for ultimate inequitable conduct; clear error for underlying findings)
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir.) (appellate courts should rarely reverse credibility determinations)