*1 (Fed.Cir.1999) v. R.L. Aukerman Co. (citing A.C. Co., 1020, 1031 Constr.
Chaides
(Fed.Cir.1992)). Thus, to the extent infringing engaged has Yamaguchi
Mr. debts, discharge of his
activities since gives activities infringing of those
each of action dates
rise to a cause dis infringement, after the
the moment of Mr. Yamaguchi’s debts. As
charge of Mr. Yamaguchi that Mr.
Hazelquist alleging infringing activity after
engaged Hazelquist has discharge,- Mr.
bankruptcy action, of ac multiple causes
a cause of
tion, bankruptcy which arose after enjoined by
discharge which is not Thus, Yamaguchi’s Mr.
section 524. immunize discharge did not
bankruptcy causes of action
him from suit for those discharge. The dis
that arose after the error,-
trict court’s dismissal
we reverse.
REVERSE
FERRING B.V. AVENTIS
PHARMACEUTICALS, INC.,
Plaintiffs-Appellants,
v. INC., LABORATORIES,
BARR
Defendant-Appellee.
No. 05-1284. Appeals, Court of
United States
Federal Circuit.
Feb. 2006. En Banc
Rehearing Rehearing April
Denied *2 Mondolino, Morgan,
Dennis J. Lewis & Bockius, LLP, York, York, of New New argued plaintiff-appellant Ferring B.V. him Stephen With on the brief B. Judlowe, Steinhauer, Esther H. Edward Reisner, Gold,, Jeffrey Timothy M. M. P. Heaton. Sobel, LLP, Kaye
Gerald Scholer York, York, argued plaintiff- New New Pharmaceuticals, appellant Aventis Inc. With him on the brief were Aaron Stiefel DiNapoli. and Daniel P. F. Attridge,
Daniel Kirkland & Ellis LLP, DC, Washington, argued for de- fendant-appellee. With him on the brief Donovan, Charanjit were Edward Brah- C. ma, Battaglia, John T. and John C. O’Quinn. NEWMAN, MAYER, DYK,
Before Judges. Circuit Opinion for the court Judge Circuit DYK. Judge
Dissent Circuit NEWMAN. time-consuming. proved cumbersome and DYK, Judge. Circuit Therefore; dosage the claimed solid oral (“Ferring”) and Aventis Ferring B.V. compound and method of ad- form (“Aventis”) Pharmaceuticals, brought Inc. thought to be an im- ministering were *3 Laboratories, Inc. Barr against suit art, prior provement over thé because the (“Barr”) Ferring’s pat- of infringement for designed simply medicine was to be swal- (filed 5,407,398 Dec. ent, No. Patent U.S. through gastroin- lowed and absorbed (“ 1985) for Barr moved patent”). ’398 inequitable tract. conduct testinal As that the ’398 summary judgment, arguing history prosecution claim from the arises inequita- due was unenforceable patent patent, begin the ’398 we will there. and, alternatively, Barr ble conduct patent. The dis- infringe the’398 did not I summary judgment on granted trict court district affirm the grounds. We both Hans Vilhardt On December summary judgment on grant of court’s Hagstam application Helmer filed an and is unenforceable patent ground 28, 1986, May patent.1 for the ’398 On conduct, and we do not due to at a appeared and his counsel Vilhardt infringement. reach the issue by Exam- preliminary interview conducted Moyer iners and Stone at the Patent and BACKGROUND (“PTO”). At the inter- Trademark Office view, pri- certain the examiners discussed compound a medicinal Ferring patented references, Patent including or art U.S. administering said com- a method of 1967) (filed (“ 3,497,491 ’491 Sept. No. claim one of Fer- Specifically, pound. (the Ferring patent” patent”). or “Zaoral independent com- patent ring’s ’398 claim) patent the exclusive licensee of the ’491 an “antidiuretic claimed position expiration pat- in 1987. The ’491 gas- until its comprising for humans composition absorbable, purposes, antidiuretic antidiuretically taught, ent for trointestinally vasopressin” “l-deamino-8-D-arginine effective, peptide] 1-deam- [the amount of pero- ... “may parenteral, be used for the phar- and a ino-8-D-arginine vasopressin ral, subcutaneous, intranasal, intramuscu- carrier in solid maceutically acceptable lar, patent ’491 application.” in or intravenous absorption for dosage oral form 1.15-23, (emphasis col.5 1.15-20 hu- at col.3 tract said gastrointestinal added). were concerned 1- The examiners at col.4 1.23-29. patent mans.” ’398 of the disclosure patent’s the ’491 deamino-8-D-argiriine vasopressin may peptide of the “peroral” application art were known compounds other suggested the oral administration associat- have symptoms the diuretic prevent absorption. peptide gastrointestinal for they were ab- ed with diabetes when “peroral” as that the term argued Vilhardt patient’s the walls of the through sorbed not teach the tablet, in the ’491 did through or used dissolving via a mouth gas- administration peptide of the oral passage liquid via patient’s nasal but rather for ab- However, absorption, trointestinal such plastic tube. spray mouth. sorption through the walls administering the medicine modes invention, and both applications their Hagstam had been 1. Inventors Vilhardt and, rejected antici- employed by application as- as times their 3,497,- prospective rights signed all of their U.S. Patent No. pated or obvious over pros- Ferring. patent to Prior the '398 491. issue, had twice filed ecution at the inventors entirely con- ... drug unambiguously gastroin- examiners were means As the vinced, absor[p]tion.” testinal they “suggested applicants ob- J.A. ” from a tain evidence non-inventor 13, 1987, On November the inventors interpretation of the term their rejection appealed this to the Board of added). (emphasis at 3460 “peroral.” J.A. Appeals Patent Interferences (“Board”). 21, 1990, September On 12, 1986, Vilhardt, on June response, that, Board accepted the declarants’ view counsel, submitted four decla- through his rule, a general “peroral” administra- him- including two from Vilhardt rations peptide tion of a would not be read Miller, self, Myron Dr. from a and one one suggesting art as the administration for *4 Czernichow. These decla- from a Dr. Paul gastrointestinal absorption. This is be- relayed the scientific rations each writer’s peptides normally “hydrolyzed cause “peroral” term in the that the ’491 belief the stomach it expected and would be compound the patent meant that could be their biological activities would lost” mouth,” “through the administered but prior.to gastrointestinal absorption. J.A. only absorption through the cheek of Thus, at standing 3688. the ’491reference However, tongue. the mouth under the or alone anticipate applicant’s would not the the declarations failed disclose that regarding peroral claims the administra- receiving had Czernichow been research However, peptide. of the tion Board funding Ferring Spe- from from 1985-86.2 applicants’ determined that claims cifically, Czernichow received research patent light were obvious over the ’491 a clinical funding investigation to conduct of an by article written Ivan Vavra in 1973. (DDAVP) relating particular drug to a l-deamino-8-D-argi- Vavra disclosed that preparation. vasopressin nine structurally unique is declarations, on Despite the November among peptides degrade in that it does not rejected the examiners certain quickly. although The Board found that patent anticipated ’398 or claims of the “peroral” may the term not usually sug- patent: rejec- over the ’491 The obvious gest gastrointestinal absorption of a Applicants tion “As are the exclu- stated: peptide, patent’s the ’491 disclosure of the patent, sive licensee of the Zaoral [’491] “peroral” administration of l-deamino-8- obviously expeditious Applicants to D-arginine vasopressin, when combined argue ‘peroral’ referred to in the peptide Vavra’s disclosure patent sublingual referred or [’491] degrade, slow to would appli- render the routes, buccal whereas the instant mode of cant’s claims obvious. The Board thus administration excludes such routes as it rejec- affirmed examiners’ obviousness absorption by gastrointestinal involves However, tion. because the examiners at 4390. tract.” J.A. reference, had not relied on the Vavra requested inventors designated reconsideration Board its decision as “a new
The examiner, rejection a new provisions after which Examiner under the of 37 C.F.R. rejections. 1.196(b),” Siegel, reaffirmed the Examin- explained appli- [§ ] Siegel er stated the ’491 “clear- cant prosecu- could “elect to have further ly orally administering teaches said vaso- tion in response before examiner and that pressin,” administering rejection “oral of a new ....” J.A.
2. Czernichow testified that he was not receiv- he submitted his first declaration. ing funding in June when communicated with each of go back to Vilhardt opted inventors 21, 1990, the these declarants before their declarations On November examiners. five more declarations inventors submitted submitted to the PTO. Vilhardt also were that the the examiners Yavra persuade sent Barth a “draft declaration.” itWhile not, read with would when exactly reference is unclear what was contained in suggest gastrointesti- patent, declaration, the ’491 the draft Vilhardt admitted before, absorption peptide. nal As lines,” gave that he Barth “some telling submitted declarations from the inventors him “what he describe in the affida- should Vilhardt, Miller, They and Czernichow. vit.” J.A. at 5544. Vilhardt also sent from a Dr. lain also submitted declarations Robinson a “draft declaration.” a Dr. Barth. Each Robinson and Tomislav sum, four of the five declarations explained why, in the of these declarations submitted to the PTO in 1990 written judgment, the professional own declarant’s who had employed scientists been that the suggest reference did Vavra Ferring, received research funds from gastrointestinal- could be absorbed peptide participated drafting and Vilhardt before, the inventors did not ly. Just as two of the four declarations submitted *5 had the examiners that Czernichow inform non-inventors. The examiners were not receiving Ferring.3 funds from This been Ferring otherwise made aware of the con- however, time, to inform also failed these nections. After declarations were (one of the that Robinson the examiners submitted, pre- the examiners allowed the declarants) Ferring’s pre- been new claims, viously rejected patent and the ’398 director from 1985-1986 clinical research September issued on 1991. The PTO Ferring consultant for paid and a any provide explanation did not for its Robinson was the re- While 1986-1989. allowance. Ferring, Ferring at search director involving research funding Vilhardt’s II also did peptide at issue. The inventors (another Ferring exclusively right de- licensed the that Barth new not disclose clarant) patented market its antidiuretic projects on several funded and sell worked July to Aventis.4 In Barr' by Ferring compound 1984 and 1987. Barth between Drug Applica- New intermittently with Vilhardt filed Abbreviated also worked (“ANDA”) Drug and tion with the Food and projects small between 1988 on some Administration, seeking approval to mar- although it is unclear from Barth’s generic compound at testimony this research was fund- ket version whether ANDA, with its Barr Neither nor issue. connection by Ferring. ed Robinson’s “paragraph IV certifica- accompanied with filed so-called Barth’s declarations (“CV”). tion,” any rele- which is a statement Vitae Czernichow’s Curriculum patents generic compound vant did include an extensive CV. declaration infringed. 21 However, either invalid or will not be it did not mention his research (2000). 355(j)(2)(A)(vii)(IV) § Ferring. U.S.C. by to whether DDAVP is covered the ’398 It unclear from the record whether Czer- receiving funding at the patent. opinion nichow was research our is confined to Because very issue, time he drafted his second declaration. inequitable we do not conduct claim, non-infringement which reach Barr's l-deamino-8-D-arginine 4. The salt form of require us to resolve whether DDAVP would "DDAVP,” product vasopressin, is the actual patent. is covered Ferring disagree here. and Barr issue added). paragraph (emphasis IV certification claimed Ferring Barr’s and Aventis timely was invalid. In re- appealed. that the ’398 infringement filed an ac- sponse, DISCUSSION pursuant against tion Barr to 35 U.S.C. Appellants argue that district court 271(e)(2).
§
summary
Barr moved for
in granting summary
erred
-judgment to
judgment
inequitable
based on
conduct
Barr on
the issues of inequitable
both
con-
non-infringement.
The district court
duct and infringement. Because we find
granted summary judgment
to Barr on
properly
the district court
granted
grounds. On the
of inequitable
both
issue
summary judgment to Barr
inequi-
on the
conduct, the district court found:
ground,
table conduct
we do not
reach
undisputed
evidence in this case
infringement issue.5.
supports
finding
inequitable
con-
“Inequitable
conduct
occurs
patentee
agents
duct
and its
when a patentee
duty
breaches his or her
grant
judgment. The
‘candor,
faith,
to the PTO of
good
reluctance of the PTO to issue the ’398
”
honesty.’ Warner-Lambert Co. v. Teva
patent was evident. Each affidavit sub-
USA, Inc.,
Pharms.
in support
mitted
of its issuance was
(Fed.Cir.2005) (quoting Molins PLC v.
highly
prosecution
thus
material to the
Textron, Inc.,
(Fed.Cir.
history. That three of
challenged
1995)).
While
conduct includes
declarations were submitted after sever-
misrepresentations
affirmative
of material
rejected
al iterations of
attempts to ob-
facts, it also
patentee
arises when the
fails
tain
patent’s
speaks loudly
issuance
*6
material
disclose
information to the
as to motive and intent. While credibili-
Id.;
PTO.
Pharmacia Corp. v. Par
ty determinations from a courtroom ob-
Pharm.,
Inc.,
1369,
(Fed.
417 F.3d
1373
may
necessary
servation
at times be
Cir.2005).
inequitable
“The
conduct analy
intent, here,
of
issue
the entire rec-
performed
sis is
steps comprising
two
presents
convincing
ord
clear and
evi-
‘first, a determination of whether the with
dence of an intent to
mislead
exam-
held reference
meets
threshold level of
iners,
evidence,
viewing
even
as it
mislead,
materiality and intent to
and sec
viewed,
must
light
be
most favor-
ond, a weighing
materiality
able to Plaintiff. The submission of the
light
intent in
all
of
the circumstances to
declarations,
Czernichow and Robinson
determine
applicant’s
whether the
conduct
Barth,
and to a lesser extent
that of
is so
that
culpable
patent
should be
finding
of intent
to mislead
”
Prods.,
held
Dayco
unenforceable.’
Inc.
the PTO.
Containment, Inc.,
1358,
v. Total
329 F.3d
(Fed.Cir.2003)
J.A. at
specifically
18. The court
found
1362-63
(quoting Purdue
that “it must have been clear to Dr. Vil- Pharma L.P. v. Boehringer
Ingelheim
GMBH,
(Fed.Cir.
hardt at
preliminary meeting
1359,
with the
237 F.3d
1366
2001)).
examiner that a non-inventor affidavit was
predicate
The
facts
prov
must be
sought for purposes
obtaining objective
of
en
convincing
clear and
evidence.
Id.
evidence that the invention was not antici-
at 1362.
precedent urges
“While our
cau
pated by
prior
art or
grant
summary
obvious.” J.A. 16 tion in the
of
judgment
See,
GFI,
e.g.,
Corp.,
Inc. v. Franklin
inequitable
265
deemed unenforceable due to
con-
1268,
(Fed.Cir.2001)
F.3d
(finding
1275
duct).
in-
fringement
patent
issues moot after
(Fed.Cir.2005).6
Inc.,
1371,
con
F.3d
inequitable
a defense
respecting
have
clear that examiners have
We
made
duct,
judgment
is
foreclos
information
authority
request
broad
Lab.,
KLM
Inc. v.
Podiatry
Paragon
ed.”
(Fed.Cir.
that
deem relevant
issue
Labs.,
F.2d
Fruits S.N.C. v.
patentability. Star
Unit
v. The
1993);
Digital
also
Control Inc.
see
(Fed.Cir.
States,
ed
Works,
Machine
Charles
2005).
requests
ex
response
(“De
(Fed.Cir.2006)
2006 WL
aminers,
frequently
sup
submit
applicants
summary judgment
termining
the ex
porting
parte
declarations. Given
is unenforceable
patent
PTO, it
before the
is
proceedings
nature
uncommon.”).
but
permissible,
conduct is
has
important that the examiner
especially
all the
needed to determine
information
I
rely
he
whether and what extent
should
applicant.
presented
on declarations
court’s de-
the district
consider
We first
long
general
The
law of evidence has
genuine
no
there were
termination
testimony
any
wit-
recognized
to ma-
respect
fact with
issues of material
suspect by
past
may
ness
be rendered
Our
teriality
intent.
review.in
party.7
pertinent
The
relationship with
Dayco
without deference.
respect
specifically
examiners have
rules
PTO
Prods.,
at 1362-63.
evidentiary principle, ex-
recognized this
plaining: “Affidavits or declarations should
Materiality
A.
closely
pre-
the facts
be
scrutinized
or
weighed
sented
with care.
affiant’s
been
applications
have
For
may
a factor which
declarant’s interest
held
prior to
we have
prosecuted
considered,
“[ijnformation
but the affidavit
declara-
is deemed material
disregarded solely for that
tion cannot be
that a rea
a substantial likelihood
there is
(The
at 5415
Manual
reason.”
J.A.
would have considered
sonable examiner
Procedure).
appel-
As
Examining
Patent
deciding
important
information
*7
concede,
previously
we have
held
to issue
lants
application
allow the
whether to
prior relationships with
L.P. v.
a declarant’s
Family
patent.”
as a
Li Second
material,
(Fed.
may be
1373,
patent applicant
Corp.,
Toshiba
relationships to the
Cir.2000)
such
§ 1.56 failure
disclose
37 C.F.R.
(quoting
inequitable con-
(U.S.A.)
may constitute
(1989));
Apotex,
v.
examiner
LLC
Syntex
recognizing
supports
language
the case law
several
of
the PTO amended the
Although
6.
materiality).
§
in
we have continued
1.56
C.F.R.
standards
pre-1992 language regarding mate-
to use the
prose-
evaluating patents
riality
that were
Robinson, 530 F.2d
v.
7. See United States
Dayco
the amendment. See
cuted before
(D.C.Cir.1976) (finding wit-
a
1079-80
Prods.,
to the
10.
"Refac
holding regarding
two
these
district court's
that,
credibility could be
even
trial when
after
pertinent
because these
declarants is not
here
weighed,
prior
omitted disclosure of
and was
employment or financial
had no
declarants
(Bullen
[
contacts that
two PTO declarants
the inventors. Id.
connection with
Cikra)
assignee
with the
of the
had had
]
patent
question
not suffice for material-
in
did
...
per-
assertions that
the
that affidavits from disinterested
Despite appellants’
completely
identity of the declarants was
in
to
the
sons were needed
order
overcome
examiners,
the actual
to the
rejection.”
irrelevant
ground
substantive
Id.
summary judgment
added).
on
dem-
Here,
record made
(emphasis
at 1581-82
Indeed,
it shows
onstrates otherwise.
summary judgment the district court was
at least of the de-
background,
the
correct to conclude as a matter of law that
Czernichow,
clarants Robinson
was
request
for non-inventor
the examiners’
only
highly
but was
material.
material
declarations was for declarations from in-
specifically requested
examiners
without intimate ties to the in-
dividuals
Moreover, the
“non-inventor” affidavits.
Ferring
ventors or
itself. The court could
they
expressly stated that
examiners
conclude from the record as a matter of
objectivity of
about the
those
concerned
pertinent
that this concern
to the
law
was
’491
from
distinguish
patent
to
trying
following
further
submitted
re-
affidavits
rejection,
In their 1986
patent.
’398
mand
con-
the Board since the central
Applicants
stated: “As
the examiners
art
patent
prior
cern was still the ’491
of the Zaoral [’491]
the exclusive licensee
or in
whether alone
combination with the
obviously expeditious
Ap-
patent, it is
Vavra reference.
‘peroral’
referred
plicants
argue
to
to
Finally,
materiality, ap-
on the
issue
sublingual
to
in the
referred
have,
pellants argue
they
at
could
routes,
or buccal
whereas
the instant
trial, presented
a fact
evidence
raise
pat-
[in
mode of administration
their new
concerning
significance
issue
either the
as it
excludes such routes
involves ab-
ent]
experts’
significance
views or the
gastrointestinal
tract.”
sorption
past relationships.
appellants
But the
The examiners were thus
J.A.
contrary
presented no such
evidence
Ferring
fact that
keenly aware of the
response
summary judgment
to the
mo-
patent,
licensee of the ’491
the exclusive
tion. As we discuss below in connection
expire,
and had an
which was soon
intent,
with the issue of
the appellants
convincing
the PTO
interest
genuine
cannot raise a
issue of material
application described an invention not dis-
by speculating
fact
as to what evidence
patent.
in the ’491
The examiners
closed
might have
introduced at trial.
been
applicants
and the
as one
treated
on the
and the same. Based
examiners’
Thus,
correctly
the district court
deter-
request
for non-inventor affidavits and
undisputed
mined that
facts estab-
comments,
clear
subsequent
their
showing materiality;
lished a threshold
summary judgment
record that
indeed, the record established that the un-
the examiners were concerned about the
aggre-
information at
disclosed
least
objectivity
providing
of those
declarations
gate
highly
material as a matter of
relationship
Ferring,
and their
and that
law.
ap-
communicated this concern
plicants.
B.
Intent
circumstances,
applicant
Under such
Even
an omission is found to be
materiality
is on
of infor-
notice as
material, the omission must also be found
mation
the declarants’ ties to
regarding
here,
to have been made with the intent to de
Ferring.
particular
Of
relevance
we
in
“Materiality
presume
found in
that an
charac-
ceive.
does not
examiner’s
Refac
'
tent,
separate
terization of the inventor’s affidavit as
which is a
and essential
GFI,
“self-serving”
component
“on
put the inventors
notice
conduct.”
*10
1191
that
plicant.
say
it to
we have
Manville
Suffice
Inc.,
(quoting
at 1274
Sys.,
Paragon,
917
as
that
recognized,
Paramount
cases such
Corp. v.
Sales
(Fed.Cir.1990)). However,
appropriate
552
on the
judgment
F.2d
can,
“[ijntent
not,
rarely
prov
be
need
issue of intent
there has been'
failure
Co., Inc.
Merck &
evidence.”
en
direct
supply highly material information and if
Pharmacol,
Inc., 873 F.2d
Danbury
v.
summary judgment record establishes
the
(Fed.Cir.1989).
recently
We
(1)
knew of the informa-
applicant
Aids, Inc. v.
Indep. Living
in Bruno
held
(2)
tion;
applicant
knew or should have
Servs., Ltd.,
1193 Inc., Marketing Supply, & applica- of this to the examination ferial (Fed.Cir.1995) (“There Furthermore, Vilhardt 1562 must be suf tion.” J.A. 3455. substance, throughout the by attorney counsel ficient other than ar represented was the PTO. gument, requires before to show that the issue proceedings trial.”). As said in Paragon, “insup we that “there was no argue also Appellants ... portable, specious explanations or [or] Vilhardt, foreigner a reason for Dr. genuine excuses will not suffice to raise a the exam- non-lawyer, to have understood fact.” In or issue of declarations from requesting iner to be fact, genuine der to raise a issue of a relationship Ferring.” no persons with party conflicting must submit evidence in again, appellants Br. at 25. Here Aventis’ the form of an affidavit or other admissi such an infer- nothing offered ble evidence.15 already ence. As we have discussed in discounts an affi-
Refac, once the examiner
being
Far from
explana-
there
credible
bias,
applicant is deemed to
davit for
withholding,
tion for the
there is evidence
notice that a disinterested affidavit
be on
summary judgment
support-
in the
record
F.3d at 1581-82. The
required.
81
ing
past relationships
a conclusion that the
here indicates that the examiners
evidence
deliberately
Although
concealed.
opinions
of those
previously discounted
(who
already
was
known
Vilhardt
Ferring
the examin-
connected to
because
have an affiliation with Fer-
examiners to
Ferring to have a substantial
ers found
ring) submitted a
with
declaration
CV
his
patent.
in the
Given the examin-
interest
previously
which
that he had
disclosed
and the evidence that Vil-
ers’ statements
Ferring,
been the Research Director at
request
played
hardt understood their
no
Robinson’s declaration came with
CV
bystander’s
obtaining
role in
more than
recently
and no indication that he was
affidavits,
reasonably infer
one cannot
Likewise,
Ferring’s Research Director.
simply
was
unaware
Vihardt
with no
Barth’s declaration
submitted
satisfy
duty
or his
examiners’ concerns
others,
Czhernichow’s dec-
CV. Unlike
those concerns.
by an extensive
accompanied
laration was
However,
short,
it failed to mention his re-
appellants’ argument
CV.
simi-
funding
Ferring.
search
Under
concerning
explanations
credible
consists
circumstances,
that the
Conclusory alle
lar
we concluded
entirely
speculation.
prior employment
pat-
omission of
attorney arguments
are insuf
gations
supported
showing
entee
of intent. See
to overcome a motion for
ficient
Refac,
F.3d at 1581. So too Vilhardt
judgment.
Biologische
Biotec
Naturver
initially
that he had no contact with
Biocorp,
&
v.
stated
packungen GmbH Co. KG
Inc.,
(Fed.Cir.2001);
declarants,
later admitted —when
but
log referring
privilege
confronted with the
Anonyme
Societe
v. Northlake
Glaverbel
Inc.,
(“The party opposing
Liberty Lobby,
[sum-
F.3d at
v.
477 U.S.
15. Anderson
248-49,
point
below Kaminski, Manage Michael D. Effective Litigation, ment U.S. Patent Intell. of
AFFIRMED (footnote (2006) & Prop. Tech. L.J. omitted) (citing Kingsdown Med. Consul COSTS tants, Hollister, Inc., Ltd. v. F.2d No costs. (Fed.Cir.1988) (en in relevant part)). banc NEWMAN, Judge, Circuit PAULINE My panel colleagues on this have re- dissenting. era, gressed benighted rejecting to that bring objectiv- the efforts of Kingsdown “Inequitable patent in practice conduct” conduct, ity charges inequitable in- of by patent applicant means misconduct stead the culture of attack on reviving examiner, dealings patent rights attorney reputations inventor and whereby applicant attorney or its on innuendo. My based inference and col- engaged practices found to intend- have leagues, novel un- endorsing several into ed deceive or mislead examiner supportable wrongdoing, of presumptions granting charge, It is a serious patent. injury practice of do the reasonable and the effect is that otherwise valid solicitation, they patent defy even patent invariably valuable rendered summary judgment. rules of unenforceable, charge for the arises infringement. as a patent defense to This is Practitioners hyperbole. evolved, issue from an recall the adverse litigation-driven As earlier era well pat- on innovation when perfection the law came to demand industrial impact complexities support for com- few could attain in the of ents were not a reliable investment, part patent practice. simply The result was not mercial based on the their fraudulently judicial patents prac- belief that elimination of obtained patents, seriously situations tice were flawed. With invalida- when such existed. of most disproportionally patents were tion reached consequences courthouse, of pernicious, beyond pun- far the contribution a di- went incentive to the weaken- consider all patent including minished of the evidence evi- technology-based investment ing faith, of dence of good and that both materi- concern, and impact serious national ality deceptive proved intent must be vigor commercial was rec- on the nation’s convincing Kings- clear and evidence. as well as ognized by government down longer established no would scientific communities. industrial and See negligence alone of holding ineq- Policy Review In- Industrial Domestic uitable conduct. The Federal Circuit did novation, Report, Dep’t of Final Com- not patent believe inventors and attor- (1979). The formation of the merce Fed- neys anyone are more or less virtuous than Appeals part eral Circuit Court else; they simply charges held that program the nation’s to restore technolo- deceptive proved objec- action must be leadership gy-based with the aid of an standards, requires tive as the law system. effective property-forfeiting charges under the com- recognized spe The Federal Circuit mon law. Experience Kings- shows that conduct charges cious simple changes down ’s in the law were an innovation, to technologic a disincentive important contribution to restoration of *15 in Burlington Dayco Corp., and Indus. v. patent system the as an incentive to indus- (Fed.Cir.1988) 1418, 1422 this innovation, trial recog- for this court has “ charging court remarked that “the habit of ‘patentee’s nized that a oversights are inequitable every major conduct in almost easily magnified proportion by out of one ” patent case has become an absolute infringement.’ accused of Northern The plague.” Federal Circuit understood Telecom, Datapoint Inc. v. Corp., 908 F.2d with which infringers the ease accused (Fed.Cir.1990) (quoting Pfizer, challenge patent the niceties of pros could Inc. v. Int’l Corp., 538 F.2d Rectifier ecution, for as the law stood it was irrele (8th Cir.1976)). vant whether the examiner was in fact deceived, Today my purported colleagues panel or the flaw in on this whether not prosecution patentability, only ignore affected or Kingsdown and restore casu- whether the action an intentional mis subjective standard, was ally impose also representation negligence, or at worst positive wrongdoing, replac- inference of statutory whether the invention the met ing the need for evidence with a “should requirements patentability.1 of Thus the have known” standard of materiality, from Federal undertook bring Circuit to objec inferred, deceptive which intent is even in tive standards and perspective reasoned to the total of absence evidence. Thus the the of charge inequitable conduct. panel majority infers misrepre- material sentation, intent, infers malevolent pre-
In Kingsdown, the Federal Circuit held inequitable conduct, wipes sumes out order to invalidate a property right, summary valuable all on obtaining conduct in the pat- ent, judgment, on theory there must a material that the misrep- be both inventor resentation and intent to deceive. The “should have something might known” that necessary court established that it is to panel majority, be deemed material. The example, required pro- For an inventor is to report, vided an entire search he was accused prior vide burying significant the Patent Office with all art refer- references. The ences known to the required provide inventor are "materi- inventor was also a one- patentability”; provided al to if the inventor sentence statement about each reference that references, listed; inequi- selected he was accused of he much was made of whatever was selection; pro- table conduct in the and if he and was not in that sentence. inferences, trial, funding major- holds the clinical steeped in adverse presumes ity point bad fails to that 25 good faith is irrelevant out of the 28 pages the court resurrects of his publications, faith. Thus CV list his ignoring Kings- plague past, pages qualifications, the first 3 his —where convincing clear requirements experience down work and honors are listed— misrepresentation or omis- organized evidence of such that one would are not patentability, made inten- sion material expect partial funding pro- for a research tionally purpose deception. and for ject appear. The most reasonable in- urgently, respectfully, I but dissent. ference, Ferring which is entitled on that Dr. judgment, Czemi- The Accused Conduct Ferring chow’s relationship with so examiner, at an interview at'which worthy listing remote as to of a not be present, Dr. Vilhardt was inventor Further, my colleagues his CV. ac- asked for “non-inventor” affidavits on knowledge, summary judgment record and its meaning “peroral” significance contains no evidence Dr. Vilhardt invention, in ac- apparently to the claimed Indeed, of this prior relationship. aware the PTO custom that an cordance with evidence on this issue is his an- not adequate.2 inventor’s statements upon swer whether he being asked knew strictly complied The inventor whether Dr. Czernichow been Fer- dis- request, presenting statements four ring my knowledge, consultant: “Not to tinguished inven- scientists who no, grant but whether he had some kind of filing of the declarations of tors. The know, I I wouldn’t but never affiants, Czernichow, Drs. three of the him heard as a consultant.” described *16 Barth, Robinson, my is held col- and leagues to establish conduct Dr. Tomislav Barth was a Professor at simply they did not state their because Academy of Sciences of the Czech professional relationships ap- past with the Organic in of Republic Department plicant. past affiliations are not These Chemistry Biochemistry, with twenty- and clearly material mat- convincingly as a years of in the fields experience five of law, omission ter of and their does not metabolism, peptide biochemistry, pharma- convincing of establish clear and evidence cology pharmacokinetics. The record deceptive as a matter of intent law. that made research Ferring states had Sciences, Academy grants to Czech
Dr. a Paul was world re- Czernichow pro- Dr. on such and that Barth worked endocrinologist, Profes- pediatric nowned jects, although compensated by not he was Hospital En- sor Pediatrics at the des experi- Ferring. Dr. Barth later did some Paris, fants-Malades, had published Ferring mental work for “allowances for states Fer- papers. The record costs,” he and accommodation and but was ring equipment in a provided used time engaged not in work at the such Dr. pre- clinical trial that Czernichow had for paid declaration was not his his viously hospital. at the re- conducted He in the sum- affidavit. There is no evidence from Ferring ceived no remuneration for judgment that Dr. trial, mary record Vilhardt paid this and was not for his affida- affiliation, apart aware of majority prior vit. much of was Although the makes during speculation questioning that fails to from his “extensive CV” mention his meaning ordinary in the requested term En- 2. An examiner later dismissed defining "peroral,” stating language.” glish declarations necessary not "such evidence is to construe Barth, years request that Tomislav four after the examiner’s possible that “it is person testimony. of contact between There is no a sort “non-inventor” who was evidence, acade- department allegation, any and the or even an Ferring —the may anything gain have obtained small fee my, that he of these scientists had or know.” for that. I don’t of the of the lose as result issuance ’398 patent. finding panel majority Myron Dr. Miller was the Chief of Geri- all of the affiants had “intimate ties” at the Administra- atric Medicine Veterans mischaracterization, patentee with the in Syracuse, tion Medical Center New and the inference that their scientific York, pa- 111 scientific published and had opinions may be biased and were submit- The record no research or pers. shows deceptive travesty. ted intent is a relationship appli- with the employment Further, charge such malfeasance cant, Dr. Miller and none is asserted. adversely cannot be decided on declarations, two one to define submitted judgment. generally Wigmore See IV “peroral” concerning gastrointesti- and one (3d ed.1957) § (every Evidence wit- absorption. paid nal He was not for these in ness is law assumed to be of normal statements. veracity). moral There character Robinson, neurophysiolo- Dr. I.C.A.F. simply any no evidence of intention to gist expert neurophysin and an chemis- fact, relationships; these withhold try, the time of his declaration there is no evidence that Dr. Vilhardt head of the of Molecular Neuroen- Division even thought about whether dis- docrinology at the National Institute for affiliations, close these much less that he London; he held a Medical Research made the deliberate decision to withhold endocrinology doctorate in from Oxford material from the In- information PTO. University published and had 161 scientific deed, professors’ reputations papers. Dr. Robinson worked for enough, scholarship, on the face of their pre-clinical as director of research for one put dispute panel majority’s into 1985-86, year paid and as a occasion- summary judgment they deliberately al until consultant 1989. He too was not important concealed information that was *17 statements, paid by for his and the time of credibility to the of their affidavits. declaration, his consulting his rela- tionship with had ended. His dec- Nonetheless, in- my colleagues, without response laration was not in submitted evidence, quiry deceptive or rule that in- request the examiner’s for “non-inventor” panel majority tent must be inferred. The 1986; testimony years it was filed four necessarily posits that the examiner was later, after the Board had affirmed the misled, so, intentionally by and the ab- applicant’s interpretation “peroral” sence from their or curricula affidavits vi- rejection entered new based on obvious- relationships. majority tae of these The ness. reaches this conclusion that clear and con- short,
In summary judgment vincing materiality record evidence of and intent established, by respected upon considering consists of declarations four not scientists, facts, weighing particular non-inventor three of whom had but ad- relationship Ferring, presumption, a scientific inference and on sum- verse Dr. mary judgment. Vilhardt knew of one of these That is not the law of conduct, affiliations—Dr. Robinson’s affiliation and it is not a reason- application any was omitted from a declaration able of the rules and sub- relationship protocols mitted after the ended and of evidence. See Baker Oil Tools, Vann, Inc., Inc. v. Geo contravention of the require examiner’s (Fed.Cir.1987) (“If 1558, 1566 facts of ma- ment. Id. at 1192. And in Interna Refac teriality reasonably disputed, tional, or intent are Ltd. v. Lotus Development Corp., the issue is not amenable to (Fed.Cir.1996) the rele disposition.”) vant omitted material information was the Materiality prior declarant’s experience with in vention. The declarant stated Refac The issue here is not validity. that “he could have written” the claimed panel majority’s The finding of “materiali- computer program “from the written dis ty” is not materiality, substantive scientific closures and flow chart shown in the draw materiality per but se of the relationship ing of patent application,” [the] but failed applicant. the affiant to the There is no to disclose that he “had worked with and evidence or any assertion that of the affi- reviewed documentation for the commer “peroral” ants mis-defined or presented a cial embodiment of the invention” as an opinion, false or that the examiner was employee at the inventor’s company, and deceived provided information or “recognized the flow chart being as provided, or that these pro- scientists essentially him the same one” shown to vided misinformation or deliberate omis- during training at company. Id. at sions in order to deceive the examiner. 1581. In the Federal Circuit upheld Refac examiner, There is no evidence that the the ruling conduct, of inequitable but also asking non-inventor,” for the views of “a cautioned that finding “the omission of an asking expecting the views of a aspect of employment one’s history to be stranger applicant. inequitable conduct might thus seem to be panel The majority places great weight unduly severe, a heavy penalty for an ar on the Paragon cases of Podiatry and guably minor omission.” Id. at 1584. where, Refac, facts, quite different court found deliberate misrepresentation panel majority misreads these cases of the relationship of an affiant decep holding that prior employment history purposes. tive (1) These cases do not always material the declarant’s sweeping (2) inference now applied. testimony is material prior Lab., Paragon Podiatry Inc. v. KLM “significant.” affiliation is Given mini Labs., Inc., (Fed.Cir. mal “significant” affiliations found in this 1993), materiality issue, case, was not even at majority’s and the holding that affi appellants having conceded that always material, davits are under the ma request examiner’s for a jority’s “disinterested negligent rule the omission of a *18 party” third by was not met declarations past affiliation with applicant an will al from former owning consultants in ways stock be conduct. Neither assignee’s the company. The in Paragon affiants supports nor a broad rule Refac Paragon not only failed to mention their past material, that always affiliations are stock ownership, but carefully made the whatever those affiliations and whatever worded statement were not “in subject their relation to the matter. To past the employed by nor do I intend in contrary, the these analyzed cases were the employed by” future to be paten- the findings and in made accordance with the tee. Id. at 1191. agreed The court Eingsdown Materiality criteria. requires this “half-truth” represen evidence, was material as deceptive does intent. The affecting tation the panel substantive content of majority’s per new se rule is con affidavits, the deliberately and a trary artful to precedent, contrary to the rules of reason,
evidence, past relationship its between contrary as is Whether and mate- patent applicant declarant and the is relationships in the omitted assertion that depends rial on the facts patentability material.” “highly are See this case Hof Roche, relationship the and the nature of the dec- Corp., Promega Inc. v. fmann-La (“This material; (Fed.Cir.2003) per and laration. It is not se F.3d explain relationship the is not misrepre failure to has that affirmative court held Indeed, it rare that per deception. in se is patentee, contrast to the sentations any in omissions, working specialized field likely are more to be scientist misleading material.”) professionally would not have interacted as regarded the indus- with other scientists and with precedent all in Paragon Refac, like and do relationships tries in that field. Such area, questions of mate- this illustrate not an and de- warrant inference of bias nature, in riality and are factual intent must ception. There be evidence of bad faith and per se inferences analysis, integrity not innuendo. Scientific In Juicy Whip, deception improper. impeached by per not be se rules should Inc., 292 Bang, v. F.3d Orange Inc. without foundation. (Fed.Cir.2002) agreed that the this court case, of this the On the facts where relationship of declarant employment definition provided declarants text-book patentability, even was not material “peroral” opinion and their scientific knew that though applicant the exam- gastrointestinal prod behavior of the declaration as iner had misunderstood uct, past these declar- connections of for a indicating that the declarant worked per ants do not establish se material mis Juicy Whip, competitor. In as Refac representation. “Information is material court Paragon, considered a reasonable examiner would have consid respect to mate- particular facts with both of a important patentability ered it Refac, In riality and intent. Eli Regents claim.” Univ. Cal. v. 1579, inequitable conduct was in the found Co., 1559, 1570, Lilly & prior experience with declarant’s concealed (“[Ujnfounded (Fed.Cir.1997) speculation invention, his declaration stated evidence of convincing not clear that he have written” the claimed “could materiality.”) The information these from the computer program specification incorrect. affidavits was not shown to be contrast, Whip, In Juicy alone. (“There Regents, See at 1570 employment relationship misunderstood no to believe that a reasonable reason court not to material was held any examiner would have made different “to the issue before examiner.” ”). .... of due decision The fundamentals majority at 744. errs in panel F.3d process replaced should and cannot be Juicy Whip holding characterizing by non-evidentiary un inferences and may of an affidavit be im- “the substance speculation. founded facts therein material where the asserted Intent maj. op. at n. undisputed,” Indeed, involving court of materi that was not the issue. cases omission *19 information, applicant’s failure al “there must clear and was “bothered” the convincing applicant to evidence that correct the examiner’s misunderstand- relationship, made withhold a ing of the affiant’s but con- a deliberate decision to Int’l, aspect that was “immaterial to known material reference.” Baxter cluded Inc., McGaw, Inc. 1329 the examiner.” 292 F.3d v. 149 F.3d issue before (Fed.Cir.1998); Research Scripps at 744. see Clinic &
1201
Inc.,
Genentech,
v.
applicant
Fou nd.
927 F.2d
made a deliberate decision to
(Fed.Cir.1991) (“Conduct
reference”).
that withhold a known material
requires
rights
forfeiture of all
The majority cites
Indep.
Bruno
Living
deliberate,
proved by
must be
clear
Critikon,
Aids and
supports
Inc.
to
its
evidence.”) Thus,
convincing
pre
proposition that the court has recognized
summary judgment,
on
Barr must
vail
es
Paragon,
cases such as
summary
jury
tablish that no reasonable
could fail to
judgment
appropriate
on the issue of
convincing
find clear and
evidence of de
if
intent
there has been a failure to
ceptive
Liberty
intent. Anderson v.
Lob
supply highly material
information
242, 255-56,
by,
U.S.
S.Ct.
summary judgment
record establishes
.
(1986)
2505,
In its motion for summary judgment,
have known of the materiality of the
Barr put forward no evidence of deceptive
(3)
information, and
the applicant has
Nonetheless,
intent.
majority
holds
not provided a
explanation
credible
convincing
clear and
evidence of de
withholding.
See Bruno Indep. Liv
ceptive
may
intent
be inferred on sum
Aids,
ing
1354; Critikon,
394 F.3d at
mary judgment where the record estab
Inc.,
1202 Fur (Fed.Cir.1987)), explicitly by Kingsdoum). does not in this overruled apply 1415 ther, gulf a rule or there is a wide between case, argument no evidence for there is jury deliberately “may” that be inferred avoided intent Dr. Vilhardt that of circum materiality upon of undis consideration all the of learning stances, Kingsdoum, in accordance A fact-finder could not closed contacts. and a that intent “must” be inferred knowledge had of rule applicant that the find against party oppos as a of law consideration of all the matter materiality, upon solely on a ing summary judgment, based record. circumstances of omission, Kings- in of material violation failure disclose a mere to Nor there of sum doum and in violation the rules Critikon, in reference a known material mary judgment. Access, Vascular Inc. v. Becton Dickinson (Fed.Cir.1997); Inc., 1253, 1257 120 F.3d panel recent decisions Although some Critikon, Inc. know in also applicant over appear precedent to have relied on proceed in failed to disclose reissue ingly cannot by Kingsdoum, ruled such decisions conduct ings invalidity court, banc of this overrule an en decision simultaneously being as de asserted cases post-Kingsdoum numerous litigation involving very same fenses requirement have held fast And although Id. at 1255. patent. ma convincing clear and of both evidence may “intent inferred court stated that be See, teriality e.g., intent. Hoffmamu- knew, patent applicant (“the or should Roche, where La F.3d at district 323 1361 known, withheld information have finding court clear committed error PTO’s consider convincing would be material clear of intent to evidence 1256, id. at application,” ation of the to dis deceive in the inventors’ failure supported solely by close”); proposition Eng’g this v. Barbell In Corp. Allen Cebalo, dus., (Fed.Cir.2002) 1336, F.2d to Driscoll v. 731 reference 1351 (Fed.Cir.1984), 878, a case that was in (rejecting argument that nondisclosed 885 by Kingsdoum en on this so that its nondis overruled banc formation was material deceive, Kingsdoum, F.2d at should infer intent to very point. See 863 closure Critikon, Thus, applicant’s] Inc. “for conduct aspect [the 876. this even alone correctly gross negligence, amounted to practition has been identified law,” requi on would not be sufficient to show the ers as “bad both because relies intent”); Inc. v. Lighting, decision and be site Catalina the overruled Driscoll Plus, 1277, Lamps of a 1289 representative it is recent resur F.3d cause (Fed.Cir.2002) (“ Kingsdoum ‘intent can not gence of the to deceive plague infor Lynn Tyler, solely from the fact that intended cure.3 See C. inferred disclosed; must be a Years Later: mation was not there Kingsdoum What Fifteen Inequitable deceptive factual for a finding It to Prove Con basis Does Take (2004) 267, ”) duct?, (quoting Corp., intent’ Hebert v. Lisle 13 Fed. Cir. B.J. 276-78 (Fed.Cir.1996)); Photo (discussing resurgence Federal Cir F.3d Jazz Comm’n, rely on Trade precedent orp. cuit C v. Int’l panel decisions Indeed, majority's Digi precedent, hold panel contradiction of that it will 3. citation Works, practitioners pre-1992 tal v. Charles Mach. standard of Control Inc. 1313-17, prosecuted patents WL Rule 56 for F.3d at version of 8, 2006) (Fed.Cir. though no U.S.App. after even that standard LEXIS 2991 Feb. 1313-16, longer 2006 WL departure is a further exists. indication court's concerning inequitable U.S.App. at NO- precedent LEXIS con holds, Digital duct. The court in Control
1203
(“absence
(Fed.Cir.2001)
(Fed.Cir.2000)
(“Under
1094,
1110
all
the circum
prosecution
reference from the
record
record,
stances of
the court did not seri
intent;
prove deceptive
does not
there
ously misjudge
import
of the evidence
show,
sufficient to
clear
must be evidence
...
in reaching the conclusion that equity
ly
convincingly,
the intent to withhold
rendering
warranted
unenforce
material information
order to deceive or
able.”); Upjohn Co. v. MOVA Pharm.
Molins,
examiner”);
48
mislead
F.3d
1306,
(Fed.Cir.2000)
Corp., 225 F.3d
(“the alleged
at 1181
conduct must not
(“Both materiality and intent
to deceive
merely
improper perform
amount
to the-
proven by
must be
clear and convincing
of,
of,
ought
ance
or omission
an act one
to evidence.”); Refac,
inventor
relationship
experts who had no
expected
faith.
good
his
(2) that Dr.
under
Ferring;
Vilhardt
Broadcasting
v. Columbia
In Poller
request;
to be the examiner’s
stood
486,
Inc.,
7
82 S.Ct.
368 U.S.
System,
(3)
Dr.
contacted
and
that when
Vilhardt
(1962),
cautioned
the Court
L.Ed.2d 458
scientists and obtained
distinguished
these
summary judgment
grant
against
my colleagues
affidavits—an act
their
play leading
“motive and intent
when
natural” —he
“completely
characterize as
roles,” for:
deliberately concealed their
and
pres-
only when the witnesses are
It is
connections,
to deceive
past
with the intent
subject
to cross-examination
ent
Supreme
The
Court has reiterat
the PTO.
credibility
weight
and the
that their
“Summary judgment
in favor of
ed
testimony
ap-
can be
given their
persuasion,
with the burden of
party
is no substi-
Trial
affidavit
praised.
however,
inappropriate when the evi
by jury
long
which so
has
tute for trial
interpreta
susceptible
of different
dence
jus-
the hallmark of “even handed
been
trier of fact.”
tions or inferences
tice.”
Cromartie,
541, 553,
526
119
Hunt v.
U.S.
This court
U.S. at
granting judgment, appellees’ credited asserted infer
either supported over those
ences advanced and give appellants or did not
by appellants due”).
the inference tacts, colleagues My questioner draw adverse inference understood what not initially that, Dr. Vilhardt did recall because by the had meant term "affidavit” and contacts, years seventeen and thirteen distinctly while he what didn't "remember earlier, concerning these with the scientists happened days,” those he believed that being correspon- After shown file affidavits. correspondence most of handled contacts, indicating Vilhardt dence such Dr. attorneys. explained that these con- he had not recalled