The Ohio Willow Wood Company v. Alps South, LLC, 813 F.3d 1350

Background

OWW owns patents (including U.S. Patent No. 5,830,237) on gel-coated prosthetic liners; Alps accused those patents as invalid based on prior art including Silipos products (Silosheath line and SSGL).
Two PTO ex parte reexaminations occurred. After the first, OWW amended claims to require gel only on the interior surface; the Board later reversed an examiner rejection in the second reexamination by crediting OWW’s argument that testimony about the SSGL lacked corroboration.
Key disputed evidence: (a) testimony of Silipos employee Jean‑Paul Comtesse claiming the SSGL had gel only on the inner side and used Coolmax fabric, (b) two 1999 letters from Silipos counsel (the Scalise letters) and (c) three 2006 declarations submitted in district-court briefing asserting the SSGL existed pre‑1995 and did not bleed-through.
District court initially granted summary judgment of invalidity, this Court reversed on inequitable-conduct summary judgment and remanded for trial on intent and materiality issues (Ohio Willow Wood Co. v. Alps S., LLC).
On remand, after a bench trial the district court found OWW (through its R&D director James Colvin) committed inequitable conduct in the second reexamination by failing to disclose the Scalise letters (and possibly other items) and by allowing misrepresentations about lack of corroboration; the court found the ’237 patent unenforceable and awarded fees.
On appeal, the Federal Circuit affirmed unenforceability based on withholding the Scalise letters (finding materiality and deceptive intent as to Colvin), but reversed as to the 2006 declarations (insufficient evidence Colvin knew of them). The court declined to extend unenforceability to related patents.

Issues

Issue	Plaintiff's Argument (OWW)	Defendant's Argument (Alps)	Held
Whether withheld Scalise letters were material to patentability in the second reexamination	Letters did not conclusively prove prior art / referred to different product; not material	Letters corroborated Comtesse and were dispositive once OWW argued Comtesse was uncorroborated	Material: withholding was but-for material given Board’s focus on corroboration; finding not clearly erroneous
Whether Colvin (OWW) acted with deceptive intent by not disclosing corroborating evidence	Colvin had benign reasons (thought letters not prior art; limited disclosure duties)	Colvin knew of letters, knew corroboration issue was dispositive, could have disclosed, but chose not to	Deceptive intent (single most reasonable inference) established as to Scalise letters; finding upheld
Whether Colvin knew of 2006 sealed declarations and withheld them with deceptive intent	Colvin unaware due to protective order; thus no intent	Declarations corroborated Comtesse and were known to Colvin	Reversed as to declarations: insufficient clear-and-convincing evidence Colvin knew their contents
Whether unenforceability should extend to related OWW patents	Alps sought extension to related patents based on similarity	OWW argued those patents were not at issue and relief was beyond pleadings/evidence	District court did not err: decline to extend unenforceability absent specific claim/evidence

Key Cases Cited

Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013) (prior panel decision remanding inequitable-conduct issues and discussing corroboration importance)
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) (standard for inequitable conduct: materiality and intent; deceptive intent must be the single most reasonable inference)
Am. Calcar, Inc. v. Am. Honda Motor Co., 768 F.3d 1185 (Fed. Cir. 2014) (standards of review for inequitable conduct findings)
Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339 (Fed. Cir. 2013) (review standards cited for factual findings)
1st Media, LLC v. Elec. Arts, Inc., 694 F.3d 1367 (Fed. Cir. 2012) (circumstantial-evidence insufficiency in inequitable-conduct proof)
Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) (requiring clear-and-convincing proof for intent to deceive)
El Paso Nat. Gas Co. v. Neztsosie, 526 U.S. 473 (1999) (cross-appeal propriety when seeking to diminish adversary rights)
Bailey v. Dart Container Corp., 292 F.3d 1360 (Fed. Cir. 2002) (same, on cross-appeal procedure)