*1 Ring affirm the court’s denial of We also counsel. disqualify motion to
Plus’s and AF-
RE VERSED-IN-PART
FIRMED-IN-PART SYSTEMS, DATA
GOLDEN HOUR
INC., Plaintiff-Appellant,
v. INC.,
EMSCHARTS, Defendant- Appellant,
Cross
Softtech, LLC, Defendant-Appellee. 2009-1306, 2009-1396.
Nos. of Appeals,
United States Court
Federal Circuit.
Aug. *2 LLP, Phillips, Sidley Austin
Carter G.
DC,
plaintiff-ap-
Washington,
argued
him the brief
Eric
pellant. With
were
Townsend;
Shumsky
Rachel H.
A.
Flint,
Tacy
Chicago,
F.
IL. Of
mination and
Pankaj Venugopal,
proceed-
Wash-
remand for further
counsel was
ington,
ings
opinion.
DC.
consistent with this
Weisblatt,
LLP,
Wiley Rein
Eric H.
*3
Background
DC,
for defendant-
Washington,
argued
defendant-appellee.
cross
and
appellant
I
Dadio,
M.
him on the brief was Susan
With
patent,
Golden Hour’s '073
“In-
entitled
PC,
Rooney
&
of Alex-
Ingersoll
Buchanan
tegrated Emergency Medical Transporta-
andria,
Martin A.
VI. Of counsel was
System”
tion Database
is directed to
Brian
Findlay
Roger
Bruehs. Eric H.
and
computerized systems and methods for
Craft,
LLP,
TX,
Findlay
Tyler,
of
Craft
management
information
services
con-
defendant-appellee.
for
emergency
nection with
medical
trans-
port,
performed by
which is often
heli-
by
for the court filed Circuit
Opinion
copter.
emergency
Providers of such
opinion
DYK.
filed
Judge
Dissenting
transportation
medical
must collect and
Judge NEWMAN.
Circuit
large
track
amounts of data for
pur-
NEWMAN, FRIEDMAN,
Before
and
poses
dispatching transport,
treating
DYK,
Judges.
Circuit
(clinical services),
patients
and also for
DYK,
Judge.
Circuit
billing.
systems
patent
of the '073
integration
for the
of dispatch,
(“Gold
Systems,
Hour Data
Inc.
Golden
services,
billing
clinical
data. The
Hour”)
a
of the
appeals
judgment
en
from
module,
patent
dispatch
'073
discloses a
a
for the East
United States District Court
module,
module,
clinical
an administration
trial,
a
ern District of Texas. After
billing
By
and a
module.
integrating
infringement
a verdict of
of vari
rendered
recordkeeping,
systems
these
seek to
ous claims of United States Patent No.
(“the
6,117,073
patent”)
inefficiency, inaccuracy
po-
'073
in favor of
avoid the
against
defendants emsC
Golden
tential adverse clinical results that come
(“emsCharts”)
harts,
Softtech,
Inc.
redundancy in recordkeeping.
with
(“Softtech”). However, the
LLC
district
The final
“Background
sentence
subsequently granted Judgment
court
as a
patent
of the Invention” section of the '073
(“JMOL”)
joint in
Matter of Law
of no
concept
summarizes the basic
of the inven-
1, 6-8, 10,
fringement of claims
and 12-22
tion:
is
a comprehensive
“what
needed is
patent
of the '073
and held the '073
dispatch-
that includes modules for
inequitable
due to
conduct.
unenforceable
teams,
ing emergency
tracking
medical
Systems,
Hour Data
Inc. v. emsC
to and from the
their movement
accident
harts, Inc.,
al.,
2:06-CV-381,
et
No.
scene,
a clinical
managing
diagnosis and
2009) (“In
(E.D.Tex. Apr.3,
WL 943273
accurately billing
pa-
treatment and
Order”)-,
fringement
Golden Hour Data
for the
pat-
tient
services rendered.”
'073
Inc.,
al,
emsCharts,
Systems, Inc. v.
et
1, 6-8, 10,
ent col.l 1.66-col.2 1.3. Claims
No. 2:06 CV
prising fragmentation throughout the collecting flight relating information transport medical environment is also emergency transport to an crew dis- myriad evident of entities patch; throughout country practicing the differ- collecting patient information from a ent standards of care and documenta- pa- clinical with a encounter associated .... especially tion This is evident when requiring emergency tient incident med- (such aspects system certain as emergency transport ical care the computerized laboratory clinical result crew; and displays) have upgraded been integrating patient the information uniquely computerized system, tailored flight with the information to an produce remaining while the functions are still pa- encounter record indicative of the in an archaic performed manner. While tient’s clinical encounter. system upgraded may the be effective Id. col.211.54-C01.221.6. singular aspect, for one such as dis- February Dr. Kevin Hutton patching, reporting, lab or chart dictat- (“Hutton”) (“Jones”) Dr. Scott Jones ing, system the remainder of the does formed Golden Hour order to commer- improve not its effectiveness due to the ultimately cialize the invention covered archaic components. other patent. Hutton '073 acted as Golden Although attempted others have chief executive officer. Hutton Hour’s conflict, remedy fully integrated this no engaged Jones the Knobbe Martens Olson systems developed. medical have been (“Knobbe Martens”) & LLP firm Bear law example, For the Air Medical Software prosecution patent assist (Innovative Lebanon, Engineering of application. leading to the application N.H.) provides computer software for patent '073 was filed on March dispatching emergency crews acci- Hutton were and Jones the named inven- managing flight dent scenes and (“Fuller”), tors. Michael Fuller a senior infor- However, (“Car- mation. it does patent agent, and John M. Carson comprehensive integration flight son”), work, partner supervised who his filed, diagnosis, prepared, prosecuted with a clinical sys- rejections by arguing, on Sloane and administration based billing system billing in- tem. part, that Sloane’s disclosure formation added). (emphasis col.l 11.11-57 '073 solely charge is based 4, 1998, during prosecution August, On encounter between Sloane’s patent, Fuller submitted the '073 patient. billing Such would be (“IDS”) Disclosure Statement
Information solely spent based on the amount of time system. the AeroMed describing further counseling patient as to what the IDS, “Applicants are Fuller stated: In the Software, appropriate treatment would be. It computer aware of billing any not consider actual Dispatch, Air Medical does software for Charting, medications, Management, Medical Program treatment such as interven- Transfer Continuing Tracking, Education tions, procedures.... or [TJhis Lines, Center, Referral Physician’s Appli- for virtual services rendered. AeroMed Software Applications. Custom cant’s tracks actual services ren- Engineering of Innovative product is a dered and bills for such.
Lebanon, 4944-45. Hampshire.” J.A. New *5 light In of J.A. 4951-52. Golden Hour’s application included patent
The all response, claims were allowed and the the Patent During prosecution, claims. September 2000. '073 issued (“PTO”) issued a Trademark Office and II 18, 1999. February action on first office action, rejected office the examiner In this infringers The accused are emsCharts 8-14, 1-5, anticipated and 23-27 as claims produces a and Softtech. emsCharts web- (“Sloane”). 5,619,991 Patent No. by U.S. charting program based medical called to of these claims were directed Certain program emsCharts. The emsCharts information with integration billing of patient provides charts information and integration of dispatch data alone and integrated billing. produces Softtech with clinical billing dispatch and data both computer-aided flight dispatch software rejec- anticipation examiner’s data. The Vector, coordinates called which of “is system tion noted that the Sloane information, patient pickup flight such as billing informa- configured generate two delivery, flight tracking. and and examiner allowed tion.” 4940. The J.A. companies strategic partnership, formed a 15-22, claims which did not relate original to work to- programs enabled their two information, billing integration to the of gether, and collaborated to sell the two integration to the of but which related a unit. programs as and clinical data. The examiner dispatch Hour September In Golden though prior that art teaches “[t]he noted infringe- and Softtech for sued emsCharts in- systems computerized and methods of patent. Golden Hour ment of the '073 management,” data “does tegrated directly infringing accused emsCharts suggest computerized or method teach patent by 12-14 claims 10 and of the '073 integrating pa- collecting that includes sell, making, using, offering selling flight information to tient information with system. Golden Hour its emsCharts.com 4940- an encounter record.” J.A. produce to- also accused emsCharts and Softtech rejection, Golden response 41. to the 1, 6-8, gether jointly infringing claims 1, 7, 10, 23, 26, and Hour amended claims the asserted claims and 15-22. Most of here. Golden respects 27 in not relevant integration data. The involve the rejections based also traversed the Hour. It jury returned a verdict Hour overcame on Sloane. Golden that the brochure would have been antici- AeroMed brochure describ- that an found anticipate the '073 system patory did not of some of the claims of the '073 ing the art, is, had di- It found that emsCharts if it that if it patent. had been 12-14, 10 and that rectly infringed claims had existed before the date of invention or in- jointly had and Softtech emsCharts than a year filing. more before See 35 15-22, 1, 6-8, claims fringed § U.S.C. 102. of all infringement had induced emsCharts brochure, prosecution Based on the It then determined that claims. these prepared counsel the IDS and filed it on infringement was willful and emsCharts’ August description $3,500,000 Hour. to Golden awarded system AeroMed in the identical IDS is jury verdict favor of Golden After the (with exception being plu- of “Centers” Hour, trial district court held bench brochure) ral in with what is set forth inequitable con- to consider the issue on the front cover of the brochure. The had duct. The brochure integrated billing IDS did not disclose the anticipate not to was a central fea- At described brochure. no inequitable conduct trial. The ture of the during prosecution application time brochure was undated described the billing system was the brochure or the (“the bro- provided to the examiner. chure”). Hutton that he did not testified argued prosecution The defendants at the time that have the brochure counsel committed conduct 2, 1998, March application was filed on but intentionally failing disclose the bro- that he received it about three weeks after *6 chure or the information contained in the Midyear at the AeroMedical Services Con- brochure because contradicted the state- gave prosecution ference. Hutton counsel specification ment that AeroMed sometime AeroMed brochure before provide comprehensive “does not inte- 4,1998. August gration of flight information with a The inside of the AeroMed brochure diagnosis, clinical billing system and ad- system an inte- described AeroMed as system.” ministration patent '073 col.l grated dispatch with module argued 11.54-57.Defendants also that the with charting combined medical and bill- selectively disclosing act of material recit- ing. It stated that Dispatch “[t]he AMS ed on the front of the brochure but not Module can be Man- Flight used with disclosing “integrated” the recitation of agement integrated Module.... It is an “billing” on the inside the brochure also ” flight dispatching program.... real-time inequitable constituted conduct. fast, It easy J.A. 10848. advertised “[a] respect materiality, With to the district
way flight plans, to create quotes, cost court found that the AeroMed brochure track aircraft. No-nonsense medical “integration” “billing.” disclosed In- charting. Billing.” at Id. 10847. It noted Order, equitable slip at op. Conduct Flight Management that “[t]he Module is The district court then observed that “the companion Dispatch to the All Module. inventive feature of the '073 was the Dispatch entered Mo- billing integration” and that the brochure’s dule is combined into Flight Management integration disclosure between the Dis- duplicate entry so that data is eliminated.” patch Management Module and the that, Id. at 10848. It assured with the (which Module, billing) “clearly module includes Flight Management “[bjilling be- what Hutton comes a breeze with the user definable contradicts both Dr. reports.” parties dispute prosecution Id. The do not counsel had to the represented 1, 6-8, 10, fringement any of the claims system] the AeroMed [about PTO timely appealed 11. The court and 12-22. Golden Hour Id. at application.” court, of the jurisdiction inside and we have over that the information to this found 1295(a)(1). the dis- § inconsistent appeal [with] “was this under 28 U.S.C. IDS, and inconsistent in the closure Discussion had prosecution counsel] [Hutton
how orig- described Inequitable I Conduct Therefore Id. at 10. application.” inal ar appeal, On first part “Fuller selected that because court gues improperly the district threaten that did not brochure to disclose patent unenforceable due to held the '073 ... the entire and “excluded patentability” inequitable patent may conduct. “A be have been a serious teaching that would inequitable rendered unenforceable due to the district court patentability,” obstacle applicant, if an with intent conduct question” can be no “[t]here found examiner, mislead or deceive the fails to “highly information is the withheld information or disclose material submits at 15. material.” Id. materially false information to the PTO intent, respect to the court With Control, during prosecution.” Digital Hour’s nondisclosure of that Golden Works, Mach. Inc. v. Charles 437 F.3d disclosure of the brochure and selective (Fed.Cir.2006). party intent of the brochure evidenced contents render a unenforceable seeking to The court concluded to deceive the PTO. inequitable prove due to conduct must been aware of the that Fuller must have materiality and intent clear and both Id. at 12-13. contents of the brochure. evidence. Id. The court must convincing that “Golden Hour The court reiterated weigh materiality then the levels of part one its counsel selected the determine whether the conduct intent [that] brochure to disclose was at issue amounts to conduct. it had Aer- with how described consistent court’s factual Id. We review the district and found that “[s]uch oMed to the PTO” *7 findings materiality deceptive as to to selectivity strong evidence of intent for clear error and the ultimate intent office about the rele- patent mislead the for abuse inequitable decision on conduct by art as described its prior vant v. Scientific, Star Inc. R.J. of discretion. at court there- Id. 13. The competitor.” Co., 1357, Reynolds Tobacco 537 F.3d single that “the most rea- fore concluded (Fed.Cir.2008); Kingsdown Med. 1365 to drawn is that Gold- sonable inference be Consultants, Inc., Ltd. v. Hollister 863 intended to deceive the en Hour (en (Fed.Cir.1988) 867, in F.2d banc 876 at 14. The court then bal- office.” Id. part). relevant materiality with the high anced the level of deceptive of intent and concluded evidence that the argues appeal inequitable committed that Golden Hour to its court erred with respect district conduct, unen- rendering the '073 findings concerning both materiali- factual forceable. therefore, intent, the ulti- ty and inequitable of conduct mate determination granted mo-
The court also emsCharts’ cannot stand. respect for JMOL with tion court joint infringement. of verdict Materiality A that there was insufficient evidence have held that information is by “[W]e or “control” or “direction” emsCharts versa) (or a examiner joint in- material when reasonable vice to find Softtech 1374 chure, deciding in it important and therefore cannot be material.
would consider application to issue as MPEP section 609 whether to allow instructs examiners not Scientific, 537 F.3d at patent.” Star consider references included an IDS (citations omitted). The Rules comply § 1367 PTO which do not 37 C.F.R. 1.98. 1.98(b)(5) materiality. also aid the definition requires Section that “[e]ach provides applicant Rule 56 that an has ... publication by pub- must be identified (if duty to disclose information that is materi- lisher, title, any), author pages relevant patentability al to and states that date, publication, place publi- added). (b) section, (emphasis cation.” Golden Hour Under this information is therefore maintains that a patentability it is not reasonable ex- material when aminer could not have considered the bro- already cumulative to information of rec- patentability chure material to being appli- or made of because the ord record cation, prohibit rules would the examiner from considering the brochure because it was
(1)
establishes, by
It
itself or in com-
words,
prior
known to be
art.
In other
information, a pri-
bination with other
Golden Hour
maintains
a reference is
unpatentability
ma
case of
of a
facie
prior
not material unless the
art status of
claim; or
the reference is established on the face of
(2)
refutes,
with,
It
or is inconsistent
the reference.
a position
applicant
takes in:
(i) Opposing
argument
unpa-
an
The MPEP itself contradicts this
[PTO],
tentability
relied on
or
reading. The sections on which Golden
(ii)
Asserting
argument
patenta-
Hour relies do not limit an IDS to the
bility.
references,
prior
submission of
art
and the
MPEP states that
is no require
“[t]here
1.56(b).
§
37 C.F.R.
The PTO rules clear
ment that the information
in an
[identified
ly require the submission of known infor
prior
must be
art
IDS]
references
order
mation
contradicts material informa
to be
considered
examiner.”
already
tion
submitted to the PTO. See
(2008). Further,
§
MPEP
609
prior
our
N.V.,
Bayer
Monsanto Co. v.
Bioscience
may
cases make clear that information
be
(Fed.Cir.2008);
514 F.3d
1239-40
material
if it
qualify
even
does not
as
Pharm., Inc.,
Corp.
Pharmacia
v. Par
Duro-Last,
art. As we held in
Inc. v.
(Fed.Cir.2005).
F.3d
If
a mis
Seal, Inc.,
Custom
321 F.3d
statement or omission is material under
(Fed.Cir.2003),
standard,
the Rule 56
it is material for the
purposes
long
court has
Digital
[t]his
conduct.
held that whether a
*8
Control,
material, i.e.,
prior
The district court found the brochure reasonable examiner would have consid- and the undisclosed information contained important deciding ered the reference in in the brochure to be material because it application whether to allow the to issue representations contradicted the about the patent, as a is not controlled whether system specification, in the actually anticipates reference the that the brochure was also material in view claimed invention or would have ren- partial of the disclosure of the brochure’s dered it obvious. argues contents in the Hour IDS. Golden Control, Digital the See also 437 F.3d at PTO Rules and the Manual of 1318 (“[A] (“MPEP”) Examining may Patent misstatement or omission be Procedure precluded would have if an examiner from material even disclosure of that mis- considering the undated AeroMed bro- statement or omission would not have ren- specification, art. In the prior Li not itself unpatentable.”); invention the dered system the AeroMed applicants v. Toshiba described P’ship Ltd. Family Second (Fed.Cir.2000). 1373, applica- of the in existence as of the time Corp., 231 F.3d (“In was Br. Pl.-Appellant’s in here the the brochure tion. See The information ‘Background of the Invention’ section of clearly material. which was filed on application, the '073 First, may well have been the brochure 1998, the identified March made the district court art. While prior at software that existed art of the prior the status finding as to no time.”). specification pat- of the '073 The brochure, note that there is substantial we brochure, stat- describes the AeroMed ent the brochure is in the record that evidence system] provides that “the ing [AeroMed Freeman, Aer- art. Charles prior indeed dispatching emer- computer software developer and the bro- oMed’s software and man- gency crews to accident scenes author, the that he had testified chure’s However, flight information. it does aging him at the 1996AMTC Con- with brochure provide comprehensive integration not in had been If the brochure ference.1 information with a clinical flight diag- make the in that would existence nosis, billing system and administration art; system it prior further brochure (em- system.” '073 col.l 11.52-57 art, prior given have been described would added). present-tense repre- phases 1998. See date of March application 102(b).2 that the AeroMed “does § A reasonable examin- sentation 35 U.S.C. into the ... likely inquire comprehensive integration wish to er would not art of the disclosed prior billing” unchanged status ... continued light representa- applica- the brochure throughout pendency system appearing tions as to contradiction to that state- tion. direct Hour itself Indeed Golden specification. brochure, ment, the AeroMed received “might have been that an examiner admits filing, that with mere weeks after states it because re- curious about the brochure module, Management “[b]illing subject matter as the to the same lated with the user definable becomes breeze prior Pl.-Appel- art.” earlier recitation can be calculated charges Patient reports. Br. 25. lant’s any ways number of to include printed itemizing time and of medical transport Second, and the informa- the brochure By correcting not supplies.” J.A. 10848.3 material be- contained therein were tion specification, appli- the statement they representa- contradicted other cause truth in PTO, continued to maintain its if the was cants tions to the even However, prior to be art. testimony not was as follows: 1. His jury the brochure was not did not find that Q.....So you was said this brochure art, only prior that none of the claims of the from 1996? anticipated. could '073 was A. Uh-huh. that the brochure was have concluded Q. displayed you at the you had it And it— art, anticipate. did Therefore but that it AMTCshow in 1996? *9 jury finding the no brochure is there is A. That is correct. prior art. not Q. you Are sure about that? A. Uh-huh. he "[t] brochure also states that 3. The Q. Really? companion Management is a to the Module A. Uh-huh. “[ajll Dispatch Module” and that J.A. 4033. by Dispatch is combined the Module entered Flight Management duplicate data so suggest that the bro- into 2. Hour seems to entry J.A. 10848. is eliminated.” because the chure cannot be material contradiction to what is disclosed the inside of the brochure. J.A. direct 4944-45 added). impor the (emphasis the AeroMed brochure. Given significance Given the integrated billing patenta tance of to the integrated billing patentability, the invention, bility of the information incon billing failure to disclose the characteris- contrary application’s sistent with or to the tics of the the IDS was representation capabilities of Aer highly also material. The failure to dis- billing system in specification oMed’s the integrated billing close the would lead one a important would have been to reasonable to believe that the AeroMed did examiner.4 provide comprehensive not integration billing. The brochure’s recitation of
Further,
brochure,
receipt
after
integrated billing,
applicants
which
failed
applicants
the
describing
filed
IDS
disclose,
undoubtedly
would
have been
AeroMed brochure. The IDS was also
material to a reasonable
IDS,
examiner.5 For
present
worded in the
tense.
example, the
sys-
existence of an
prosecution
“Appli-
counsel stated that
integrated billing
tem with
cants are aware of AeroMed Software”
would raise the
possibility
public
and listed the attributes of the
use or on-sale
software
bars
brochure,
if
found on the front of the
even
prior
but did
brochure itself was not
integrated
disclose
found on art.6
Ltd.,
Mfg.
4. See Larson
Co. v. Aluminart Prods.
reasonable examiner to consider the [submis-
1317,
(Fed.Cir.2009) (find
context,
559 F.3d
1338-39
sion] in
not with a selective and
ing
by
misleading
material a withheld
"[b]y
adverse decision
disclosure” and that
submit-
substantially
a
appli
ting
examiner in
similar
the entire
...
untranslated
reference to
"refuted,
cation because it
along
one-page, partial
or was inconsistent
the PTO
with a
trans-
with,
position
focusing
that claim limitations of the
portions
lation
on less material
and a
[patent
patentable
in suit] were
over the John
concise statement directed to these less mate-
Monsanto,
patent”);
son
portions, [applicant]
1377 that the district court could agree We affirm the district therefore We submitting in the for not the explanation find the finding that the court’s to the PTO was produced contents not to not or its undisclosed brochure known). (if material. highly its contents were be credible that it Fuller’s was was explanation B Intent undated materials. practice not to submit separate is a intent element that oth- But Fuller testified that he knew deter conduct inequitable of an component Martins practitioners er at Knobbe sub- Scientific, F.3d at 537 mination. Star to the PTO and mitted undated brochures intent, con “the involved prove To 1366. those brochures. that the PTO considers evidence, all the duct, light in viewed if even Fuller be- importantly, But most faith, must indi good including evidence not have that the PTO’s rules would lieved require to a find culpability cate sufficient to consider the permitted the examiner Control, Digital of intent to deceive.” ing brochure, suggestion there is no undated omitted). (citations In at 1319 437 F.3d in thought that that the information Fuller by direct evi proven need not be tent Fuller the brochure was off-limits—indeed dence; from indirect it can be inferred from the brochure submitted information Scientific, evidence. Star circumstantial Energy, in Semiconductor the IDS. See Inc. v. (citing Cargill, at 1366 537 F.3d (holding that “[i]t 204 F.3d at Foods, Ltd., 476 F.3d Canbra pro- to upon [the inventor] was incumbent (Fed.Cir.2007)); Danbury v. Merck & Co. with sufficient information vide the PTO (Fed. 1418, 1422 Pharmacal, Inc., F.2d the for a reasonable examiner to consider Cir.1989). of intent “must An inference context, in not awith selec- [submission] on sufficient evidence only be based misleading disclosure” and be- tive and evidence, of that light and be reasonable that” he cause inventorO failed to do “[t]he single most reason be the but it must also facto hide behind the MPEP post “cannot from the able to be drawn able inference sum, prosecution counsel guidelines”). convincing the clear and to meet evidence any explanation for with- failed to Scientific, 537 F.3d at standard.” Star the missing the information from holding brochure, assuming he was aware of the Fuller, Hutton, or The contention is brochure’s contents. both, the PTO fail- intended to deceive court also did not err The district fully capabilities the ing disclose cursory of finding that the most “[e]ven in the bro- system described descrip- the have revealed reviews would appears to have The district court chure. integration— tion of AeroMed’s high to deceive from inferred intent in the center col- only thing described brochure, from materiality of the brochure,” i.e., that it page umn one IDS, disclosure the selective representations was inconsistent with explanation the lack of a credible from Con- specification. Inequitable See prosecution Hutton and counsel part Order, slip op. at 13. duct for the selective disclosure.7 they knew prosecution counsel "[Applicant] was Hutton information where withheld the PTO at making false nearly inven- were statements attempting to claim a identical filing patent application tion”). [March the time the level of persuasive, it does not rise to 2] is Hutton, convincing find evidence needed to clear and respect both Fuller and 7. With Inequitable "although Conduct conduct.” district court also observed Order, slip op. at 4. prove Dr. presents to evidence emsCharts *11 key question then is whether appears district court to have dis- credited testimony Fuller Hutton fact read the bro Fuller’s that he did not and/or read the brochure because of its inconsis- chure. Fuller testified that he did not tency with his statement that he did not regarding remember the circumstances disclose the brochure because it was un- preparation and the brochure dated, stating that IDS. He testified as follows: ignorance Fuller claims of what inwas probably just I looked at the front [of the brochure. Counsel testified he does said, oh that’s Aer- brochure] not recall reading description of Aer- May oMed Software. have been—and I oMed’s in the brochure.... That wrote that down. testimony is inconsistent. Counsel testi- I don’t recall Your Honor. I really only explanation fied the repli- for exact so, likely, just don’t. And but I looked ca of language from the brochure at trying the front of the brochure only was that he looked at the front of describe the software that was available the brochure and not the inside. If just things wrote down those counsel did not submit the brochure be- were—that were on the front of the undated, cause it was he must have at brochure. least done a cursory revieiv the bro- J.A. 4673. Fuller never testified defini- chure to determine there was no date. tively that he did not read the brochure in Order, Inequitable Conduct slip op. at 12- Here, full. there are possible explana- two (citations omitted). However, Fuller tions for the failure to advise the PTO actually never testified that he did not integrated billing about the disclosed in disclose the AeroMed brochure because (1) the brochure: that Fuller and Hutton was undated.8 Fuller only testified that it (2) brochure, failed to read the practice was his in 1998 not to submit one or both read it deliberately with- undated materials. A fair reading of Full- held the information. The distinction be- testimony er’s is that he testified that he tween explanations important. these two did not reading remember the inside of the If one or both read the brochure and brochure, had, but that even if he he would deliberately did not damaging disclose the not have submitted it because it was his inside, information on the their actions practice not to submit undated materials. give would rise to an inference of intent to The district court that it indicated However, deceive. if they did not read the aspects of Fuller’s testimony to be “incon- (and did not do so to avoid learn- sistent” unhelpful. Id. at 15. ing information), of damaging those actions Hutton, respect With to inventor the dis- regarding the failure to disclose the infor- trict court also generally indicated that it mation on the inside of the brochure would found testimony his to be incredible. Id. most, (“Dr. at gross amount negligence. 12at Hutton can not claim he did not negligence Gross is not material.”); con- find the brochure at id. 8 n. 3 (“Dr. Kingsdown, duct. See 863 F.2d at testimony Hutton’s trial art; testimony 8. His relevant they’re was as follows: not material. The Examiner Q: won't even consider them. your practice Was it at the time Q: practice your And was that application based on that became the '073 understanding was filed of the PTO’s rules to submit undated materi- concern- ing als to the PTO? the IDS? A: No. say. There’s no reason to submit un- A: Yes. what That's the rules They're dated materials. not even J.A. 4662. *12 actually lim- that Fuller or Hutton or both read understanding of AeroMed’s his about to withhold the brochure and determined evidence with other is inconsistent itations PTO, knowing from the it to its contents record, testimony in the with his in First, regarded material. Hutton Aer- conduct.”); be id. trial on bench In a primary competitor. oMed as his in the inconsistencies (discussing at 8-9 Hutton told plan, December 1996 business when he re- testimony regarding Hutton’s only that similar potential “[t]he investors he was brochure and whether ceived in management product the air But the dis- billing).9 had aware is a software transport medical market actually find that either court did not trict called Air Medical Software product of the inside Hutton was aware Fuller or (Innovative (AMS), Engineering, Lebanon findings of brochure. As contents of the NH).” repeated He this state- J.A. 7277. court’s turn on a district intent so often financing from proposal seeking ment in a see, determinations, e.g., Monon credibility Finan- Technology CONNECT the UCSD Trailers, Inc., 239 F.3d Stoughton Corp. v. 10,211. in Au- And cial Forum. J.A. (Fed.Cir.2001), it is essential 1263-64 document, gust 1997 “Business Overview” find- detailed factual that the court Hour has Hutton stated that “Golden one crucial facts—such as respect ings in major competitor our initial Hutton read the Fuller whether and/or software called Aero Medical Soft- segment, market whether, brochure; knowing the in- entire (AMS) (Innovative Engineering).... ware material, they deliberately formation be comprehen- The AMS software does not it; deliberately they withheld or whether ... sively integrate information The AMS brochure in to read the entire refused electronically bill or track software cannot informa- learning damaging order to avoid (emphasis origi- inventory.” J.A. 8262 tion. nal). likely that Hutton would have It is argues that no remand in a quite been interested brochure the record evidence necessary because competitor’s system. described the event, not, support finding any could Second, Quite apart from information that Hutton disagree. intent. We sys- nature of the withheld received about the AeroMed highly originally material reference, production hearsay. Hutton testi- suspicious late tem was based on knowledge brochure, jury court’s find- fied at the trial his and the district filing at the time of credibility, there is am- the AeroMed as to witness ings from a col- patent application was support finding the ple evidence that could having very billing is different from court stated that: particular, the district jury properly. testimony billing trial about Dr. Hutton's in the that does not function understanding AeroMed's limitations is his Order, slip op. Inequitable at 8 n.3 Conduct rec- with other inconsistent ord, evidence omitted). (citation (emphasis original) testimony in the bench trial and with his the eve "[u]ntil court also noted that district example, Dr. inequitable conduct. For trial, maintained he the bench Dr. Hutton proffered evidence in both the Hutton when received the bro- could not recall he prove that he did not trial and bench trial trial, however, Dr. Hut- At the bench chure. have electronic bill- AeroMed to understand getting the brochure in late ton recalled trial, however, he ing In the bench at all. at the AeroMedical Services March of 1998 billing, but that he knew there was testified (footnote Midyear Id. at 8-9 Conference.” integrated. Dr. Hutton further it was not ' Also, omitted). court observed the district trial that because of testified in the bench that Dr. inventor of AeroMed testified that the billing, way it was clear to him AeroMed did AeroMed) gotten the at a have (the Hutton must did inventor of that Freeman n. 4. Id. at 8 billing. system which lacks 1996 conference. A not understand Mfg. him that “there was no league Corp., who told Dennison Co. v. Panduit billing system 809, 811, integration with the and U.S. 106 S.Ct. 89 L.Ed.2d very (1986); difficult from them.” In- Davidson, was *13 817 see v. Gechter 116 Order, equitable slip op. (Fed.Cir.1997) at 8. 1454, (“When Conduct F.3d 1457 the at Hutton testified the conduct opinion explaining the decision lacks ade- filing prior bench trial that to the date of quate findings, fact meaningful review is patent application, understanding the his not possible....”); O’Neill v. United system physi- of “came from the AeroMed States, 139, (3d Cir.1969) 411 F.2d 146 cians, ... program directors who had (remanding to the district court for further system.” used the J.A. 4727. He also findings factual where factual findings that it understanding testified was his conclusory were reviewing and the court system the a pretty good “had could not determine what evidence the ... dispatch system!,] it had some inte- accepted lower court as credible and what gration system!,]” ... with a clinical and it rejected). In particular, the district billing, system though prob- had the “had determine, instance, court must in the first billing.” lems with J.A. 4727-28. Dur- [its] whether Hutton or Fuller fact read the ing preparation the of the application, deliberately brochure and decided to with- conveyed Hutton this knowledge of the damaging hold information from the PTO. prosecution to counsel “pretty and was process involved the II Infringement Joint drafting and prosecuting” application. the respect joint With to infringe imprecise J.A. 4726. The nature of the ment, grant this court reviews the by earlier information received Hutton JMOL de novo. Novartis Corp. Pharms. might suggest that Hutton Fuller and/or Labs., (Fed. v. Abbott 375 F.3d carefully would review the Aero brochure. Cir.2004). appropriate JMOL is when “a Third, representations as to the Aer- party fully has been heard on issue oMed were central to the claim of during jury a trial and the court finds that patentability in original application. jury a legally reasonable would not have a centrality by This was demonstrated evidentiary sufficient basis to find for the filing of an IDS based on the brochure. party on that issue.” Fed.R.Civ.P. again suggests This that Fuller and/or 50(a)(1). We first consider the method Hutton would be interested in reading the claims, is, claims 15-22. Where the brochure. multiple combined actions of parties are Fourth, it might unlikely seem that a alleged infringe process claims, to pat patent practitioner represen- would make ent prove holder must that one party exer tations as to the in an IDS with- cised “control or direction” over the entire out reading the entire brochure and would process steps such that all process not be in reading interested the entire can be attributed to controlling party, brochure to determine whether there was i.e., Muniauction, the “mastermind.” Inc. anything in it that might disclose its v. Corp., Thomson 532 F.3d art status. (Fed.Cir.2008) Res., (citing BMC Inc. v. L.P., Paymentech, 498 F.3d 1380-81
But this also is not situation in (Fed.Cir.2007)). Here, the finding which a district court deceptive intent is com pelled. It concluded that the is not our to evidence of control or task make factual findings. direction Therefore we must was insufficient as a matter of remand to the district court for uphold finding joint it to make law to infringe detailed factual findings in the first instance. See ment. agree We with the district court court, district intent to here was insufficient for adduced before the that the evidence or direction. We see deceive was clear and jury to control not established infer evidence; however, deceptive discussion of this if convincing no extended need for the district affirm court’s trial issue and we intent was not at the established process claims issue, as to the grant of JMOL the burden party this jointly infringed to be so, it is for this court inappropriate do (claims 15-22). at it. remand another shot as granted also JMOL
The district court
I
not share
materiality,
As for
do
appeal
1 and 6-8.
systems
claims
On
*14
conclusion that the undated AeroMed bro-
argues
that
apparently
Hour
Golden
(the
chure,
at a trade show
Asso-
obtained
infringement
liable for
of
emsCharts was
Services) a
ciation of Aeromedical
few
its
those
because emsCharts sold
claims
after
patent application
weeks
this
was
and
program
Softtech’s
emsCharts.com
filed,
invalidating prior
and
not to be
together, and to-
software
Vector
art,
clearly
convincingly
was so
and
“mate-
comprised
sys-
gether
systems
the
these
patentability”
rial to
that failure to
claims.
tems of
asserted
Such a sale
the
copy
quoting
of the brochure while
its
liability
part
on the
of
might well create
page,
patent that
front
invalidates the
was
the patented
the sale of
emsCharts for
found valid
content of
over the entire
the
or not emsCharts con-
system, whether
not show
brochure. The record does
that
problem
by
The
that
trolled
is
Softteeh.
before
published
the brochure was
the
agreement, claims
and 6-8 were submit-
was
patent application
Golden
filed.
joint
jury only
infringement
on a
ted
the
provided
documentary
The defendants
no
theory.
only
a verdict can
be sus-
Such
date,
any publication
evidence of
and the
or
of
tained if
was control
direction
there
district court
not find the brochure to
did
Under these cir-
by
Softteeh
emsCharts.
art;
only evidence was
be
their
the
cumstances,
properly granted
was
JMOL
author, quot-
“uh-huh’s”
the brochure’s
claims as well
to the
systems
as to the
as
majority opinion.
ed at footnote 1 of the
process claims.10
the
The record
that when
bro-
showed
AFFIRMED-IN-PART,
VACATED-
possession
came
Hour’s
chure
into Golden
IN-PART, and REMANDED
show,
given to
at the trade
it was
patent attorney, who referred
it
Hour’s
Costs
in the Invention Disclosure Statement filed
No costs.
PTO,
quotation
the
including
with
At
inner
page
page.
cover
but not the
the
NEWMAN,
Judge, dissenting;
Circuit
evidence,
trial,
full
the
was in
brochure
stay requested.
defendants, and the
and stressed
the
Inequitable
Conduct
invalidating.
I.
jury found
that was
deceptive
majority’s ruling
view
the
in
court held
suit
district
in
was
the district
intent
not established
ground
“inequita-
on the
unenforceable
court,
holds,
jury’s
validity
verdict
panel majority
ble
conduct.”
brochure,
charge
inequi-
despite the
and I
that on the evidence that was
agree,
(1)
majority
suggestions,
does
the district court's
Contrary
not sustain
10.
to the dissent's
1,
ruling
infringement
JMOL
of claims
6-
majority
hold that even if there
does not
8,
"infringement
and 15-22
cannot
findings, "intent to deceive was not
because
were new
law,”
id. at
convincing
found as
see
even
by clear and
evi-
be
matter of
established
(2)
dence,”
proper
Dissenting Op.
instructions.
see
Inc.,
(Fed.
should be laid to rest. At
v.
table conduct
Ltd. Hollister
limitation to deliver best-of- strives “emsCharts of law. as a matter incorrect customers,” said products to our breed Goutmann, President Pete Vice or on the “control focused parties “We believe founder of emsCharts. joint in- negating as criterion direction” partnership with Softtech strategic this stated, for has for this court fringement, industry air medical will Muniauction, Inc. v. Thomson example flight management solu- complete with a (Fed.Cir.2008), that Corp., F.3d 1318 delivering charting the best of infringement when entities cannot be there tion— dispatch.” with the best of inven- patented practice collaborate incor- a universal statement tion. Such evidence, a this and other J.A.5030. On here, a as A effort collaborative rect. jury could have found this reasonable infring- to sell “strategic partnership” activity infringed the various collaborative unit, immune from is not ing system as claims, My in the verdict form. as shown partici- simply because infringement discarding this verdict on colleagues err corporate separate have a entities pating cannot be infringement ground jury found that the defen- status. From this rul- as a matter of law. combined and Softtech dants emsCharts ing, again I must dissent. integrated into an procedures
their *16 of claims all of the limitations
that met 15-22, joint infringe-
6-8, finding thus these infringe and inducement
ment majority acknowledges panel The
claims. in- in collaboration defendants claims, but without discussion fringed the OF HUMAN FOUNDATION jury verdict. overturns UNDERSTANDING, that emsCharts showed The evidence Plaintiff-Appellant, the functions integrated and Softtech v. and sold the en- programs, their software was package. as a suing system STATES, Defendant-Appellee. UNITED release an- press shown an October No. 2009-5129. promot- partnership,” nouncing “[t]his integrated resultant ing their Appeals, States Court United press release transition.” “seamless Federal Circuit. states: 16, 2010. Aug. allows emsCharts partnership This line with existing product their combine Aided Dis- [Computer CAD
Softtech’s to de- technology, enabling them
patch] data solu- complete pre-hospital
liver Medical Services. Emergency
tion with the integrates
.... Vector manage- EMS web-based
emsCharts a seamless application, providing
ment reports to medical from CAD
transition