Intellect Wireless, Inc. v. HTC Corp.
910 F. Supp. 2d 1056
N.D. Ill.2012Background
- Plaintiff Intellect Wireless accuses HTC of patent infringement relating to the '186 and '416 patents for wireless devices displaying caller ID and pictures.
- Henderson is the inventor and IW’s owner; HTC asserts inequitable conduct based on false Rule 131 declarations to establish earlier conception dates.
- PTO Rule 131 declarations were filed (Aug 2006, Dec 2006, Dec 2006) to swear behind references (Wolff, Richardson, Albert) and to claim actual reduction to practice/diligence.
- THERE was a July 1993 Hashimoto demonstration claimed as actual reduction to practice, which later trial testimony showed to be simulated and not an actual transmission.
- The court found the declarations contained false statements and were not corrected, supporting unenforceability of the patents for inequitable conduct.
- The court ordered judgment that the patents are unenforceable and IW’s action is dismissed with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Rule 131 declarations were false or misleading | IW insists statements were truthful and supported by corroboration | HTC contends statements were false to back-deduction of dates and diligence | Yes; false statements material to prosecution found |
| Whether the false statements show intent to deceive | IW argues lack of specific intent; errors were inadvertent | HTC argues intentional deceit inferred from multiple false claims | Yes; clear and convincing evidence of intent to deceive |
| Whether the declarations were withdrawn or corrected prior to issuing | IW claims corrections were made or corrected deficiencies | HTC asserts no proper withdrawal or correction occurred | No; no effective withdrawal/correction; misrepresentations remained |
| Whether the inequitable conduct warrants unenforceability relief | N/A | Inequitable conduct warrants unenforceability | Yes; patents unenforceable due to inequitable conduct |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed.Cir. 2011) (materiality is but-for, with an exception for egregious misconduct)
- Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556 (Fed.Cir. 1983) (procedure for correcting misrepresentations in PTO prosecutions)
- Price v. Symsek, 988 F.2d 1195 (Fed.Cir. 1993) (rule of corroboration for inventor testimony in diligence)
- Mazzari v. Rogan, 323 F.3d 1000 (Fed.Cir. 2003) (actual reduction to practice requires that invention work for its purpose)