*1 1324 it disregard denying
fest the law” because held favor CitiFinancial and her mo- only that FAA prohibits private parties tion to vacate or modify the award. For contract the FAA’s supplementing by from reasons, foregoing we AFFIRM. vacatur, statutory grounds for without ex AFFIRMED. addressing grounds those pressly whether judicially. may be supplemented Coffee WW, L.L.C., 300 Beanery, Ltd. v. Fed. (6th Cir.2008), 415, cert.
Appx. 418-19 de
nied, WW, LLC, Ltd. Beanery, v. Coffee — U.S. -, 81, 175 28 130 L.Ed.2d S.Ct.
(2009).9 judicially-created hold that our
We
bas-
Apparel
LIMITED
TALTECH
and TAL
for
longer
es
vacatur are
in light
no
valid
Limited, Plaintiffs-Appellants,
In
holding,
agree
of Hall Street.
we
so
v.
the Fifth
categorical
Circuit
ESQUEL ENTERPRISES LIMITED
language
compels
of Hall Street
such a
Esquel
Inc.,
Apparel,
Street,
conclusion. See Hall
552 U.S. at
(“the
Defendants-Appellees.
586, 128
at 1404
compels
S.Ct.
text
§§10
reading
categories
and 11
No. 2009-1344.
exclusive”);
589,
id. at
128
at 1406
S.Ct.
(“the statutory
of Appeals,
text
United States Court
gives us no business to
statutory
expand
grounds”);
id. at
Federal Circuit.
(“§§
provide
failed to demonstrate the of any existence the statutory grounds vacating for or award,
modifying the arbitrator’s the dis-
trict court by § bound confirm award.
III. CONCLUSION
Frazier appeals the district court’s or- confirming
ders the arbitration award in In Sterling Heights, AIG Baker LLC Ameri bitration award. Id. at 1270. We observed Multi-Cinema, can §§10 "severely judi- that while and 11 limít[ ] (11th Cir.2009), we stated in dicta that Hall cial vacatur and modification of an arbitra- award,” Street "confirmed sections 10 and 11 [that] tion these sections did not control grounds the FAA offer the expe appeal exclusive for the circumstances of the because the dited vacatur or modification award district court neither vacated nor modified statute,” but, rather, under the but had no occasion to the arbitration award entered judicially-created grounds decide judgment confirming whether our the award and then sub- vacating granted arbitration awards sequently judgment survive relief from that 60(b)(5). wake of Sterling Hall Street. In AIG Baker Rule under Id. 1271. We then Heights, FAA, we § addressed whether held which treats a when, judgment court violated the FAA confirming reason not an arbitration award 11, granted §§ set forth just any 10 or judgment, per- American like other federal civil relief grant under Federal Rule of Civil Procedure mitted the district court to relief under 60(b)(5) 60(b)(5). judgment confirming from its an ar- Rule Id. 1273-74. *3 Grudziecki, Drinker & L. Biddle
Ronald DC, LLP, Washington, argued Reath him the defendants-appellees. With Gary Jeffrey Rinkerman and were J. brief Michael J. Mc- Killian. Of counsel was G. Manus. FRIEDMAN, MAYER,
Before GAJARSA, Judges. Circuit for the court filed Circuit Opinion *4 filed Dissenting opinion MAYER. Jusge Judge GAJARSA. Circuit MAYER, Judge. Circuit TAL Lim Apparel Limited and Talteeh “TAL”) (collectively appeal sup ited judgment United States plemental for the Western District of District Court 13, 2007, July Washington reinstating its attorney fees and judgment, awarding § post- under 35 U.S.C. costs rate judgment interest allowable judgment. Taltech the time of the earlier Ltd., F.Supp.2d Esquel v. Enters. Ltd. (W.D.Wash.2009) (Taltech). 1195, 1211 attorney fees and affirm the award of We costs, post-judgment inter and reverse the rate. est
BACKGROUND States Talteeh Limited owns United (“'779 5,568,779 patent”) which Patent No. thermal adhe- including to seams is drawn Lim- pucker. Apparel TAL sive to reduce ited, manufac- patent, of the '779 licensee garments, including dress tures and sells 29, 2004, Esqu- defendant April shirts. On (“Esquel”), apparel Enterprises, el Ltd. filed a competitor, and TAL manufacturer seeking declaratory judgment a complaint non-infringement, and TAL counter- claimed, infringement. alleging Jr., LLP, West, Howrey William K. trial, Following a bench DC, plaintiffs-ap- Washington, argued Talteeh inventor John concluded that him on the brief pellants. With inequitable conduct dur- Wong engaged Kane; Duane Mathiowetz Pamela S. Francisco, of the '779 before ing prosecution CA. Anthony, of San Farah S. Trademark Patent and DISCUSSION the United States (“PTO”) he Office when did disclose courts rea may District award raincoat seam that included heat-fusible attorney to a prevailing party sonable fees (undisclosed seam, tape adhesive raincoat § exceptional “in cases.” 35 U.S.C. “URS”), misrepresented and when he “ types of conduct can form a ‘[T]he which made and sold previously raincoat seam finding exceptional [in basis case (“double seam”). top-stitch TAL Based on inequitable conduct before the clude] inequitable and a findings, P.T.O., during litiga misconduct [and] misconduct, the court litigation Roche, tion.’” Inc. In v. Hoffmann-La exceptional under 35 declared case vamed, Inc., (Fed.Cir. 213 F.3d 13, 2007, July § 285. The final U.S.C. 2000) Instruments, (quoting Beckman Inc. attorney judgment Esquel awarded fees AB, v. LKB Produkter exceptional and costs based case (Fed.Cir.1989)). inequitable To establish TAL finding. appealed. infringer prove conduct the accused must This court vacated the con by convincing clear and evidence that the TALtech duct determination. Ltd. Es patentee withheld material information *5 Inc., quel Apparel, Fed.Appx. 279 974 with intent the Kingsdown to deceive PTO. (Fed.Cir.2008). The attorney fees and Consultants, Inc., Med. v. Hollister Ltd. costs excep were also vacated because the (Fed.Cir.1988) (en 867, 863 F.2d 872 banc based, finding tional case was at least in to precedent “gross overrule that stated part, inequitable on TAL’s conduct in fail a negligence” finding decep of mandates ing to disclose the URS. The case was intent). Materiality tive and intent are court remanded the district to deter questions fact we of review for clear mine if the was URS cumulative Ger GFI, error. Inc. Corp., v. Franklin 265 (“Robers”). man Patent No. 1 104 802 Id. (Fed.Cir.2001). 1268, 1273 If F.3d the ma at 977. met, teriality requirements intent and are remand, On court set out its the court must then determine whether presented previously reasons as three the cited conduct sep- inequitable amounts to independent arate support and bases to its the of balancing conduct levels materi (1) intent; finding exceptional inequitable ality greater showing case: and one (2) URS; failing conduct in showing disclose the allows a lesser the other. Lar inequitable in misrepresenting Mfg. conduct the son Co. S.D. v. Prods. Aluminart seam; (3) Ltd., top-stitch 1317, (Fed.Cir.2009) double 559 abusive F.3d 1327 Taltech, litigation Control, F.Supp.2d Digital tactics. 609 (citing Inc. v. Charles Ma (Fed.Cir. bases, Works, at 1211. On the court entered chine 437 F.3d 1313 2006)); supplemental final judgment Scientific, Reyn which also Star Inc. v. R.J. Co., imposed interest from the date of the earli- olds Tobacco 537 F.3d 1365 13, 2007, (“[T]he July judgment. (Fed.Cir.2008) er TAL moved district court must 60(a) under Rule of the Federal Rules of still equities balance the to determine judgment Civil Procedure that the specify applicant’s whether the before § an 28 interest rate under 1961 egregious enough U.S.C. PTO was to warrant unenforceable.”). from the date judgment. holding new patent the entire “Thus, appeals motion was TAL denied. both the even if a threshold level of both exceptional finding judgment materiality case and intent to are prov deceive interest rate. jurisdiction evidence, This court has en clear convincing 1295(a). § under 28 may U.S.C. court still decline to render
1329
standards,”
materiality
and also found that
Scientific, 537 F.3d
Star
unenforceable.”
“culpability
high.”
patentee’s
at
Taltech,
F.Supp.2d
609
at 1209. A cumu-
ul
the district court’s
We review
however,
reference,
material,
is not
lative
con
determination
timate
1.56(b) (2008),
§
37 C.F.R.
and TAL
see
Larson
for an
of discretion.
duct
abuse
that the
argues
is cumulative to Ro-
URS
(citing Digital Con
Mfg.,
I. “joint it resulted in a sensical” because joint then sewn into be- is itself [that] court’s indepen first pieces.” two Id. it con- tween Therefore ground exception dent for case that so inad- not dis cluded TAL’s submission was al is TAL’s conduct in would equate “the examiner closing the URS. The concluded to most of the not have understood the Robers Patent stringent the URS met “the patentability material to on the anything single teach focused claims based on a opinion stating “plain- product ‘smooth seam’ method and sentence its Id. tiffs’ limits the claims issue.” translation claims Taltech, F.Supp.2d Robers Patent.” Products, Dayco TAL cites Inc. v. Total added). (emphasis at 1204 Based this Containment, F.3d sentence, implies TAL that the court did (Fed.Cir.2003), and Halliburton Co. Robers, clearly not consider all when it Schlumberger Technology Corp., (“Plaintiffs’ Id. at 1205 did. translation of (Fed.Cir.1991), support scope the Robers Patent restricted its admitting comparison. its URS-Robers seams.”) added). ‘closure’ (emphasis accepted These cases state the idea that determining if art when uncited is fully Further the court evidence that cumulative to before examiner the specification, considered the Robers ad- compare trial court must both to the claims, disregard dition patent-in-suit, claims of neither but argument TAL’s that Robers must include of a adequacy translation. involves armhole the specification seams because Similarly, emphasizes. ele the dissent phrase “universally applica- contains the ment-by-element comparison of Robers ble.” TAL relies on a taken out sentence says and the which it results specification of context within the relevant, being thereby Robers more mak states invention universally appli- “[t]he But ing URS cumulative. the dissent’s TAL, According to cable.” this sentence underlying premise is flawed. The trial precludes alone Robers from being limited court’s failure conduct URS-Robers sentence, however, to closure seams. The comparison thoroughly was based on ana methods, laundering refers to diverse lyzing the differences between the Robers correctly the court that it found does From translations. this the court deemed scope of “broaden the seams for which the have exam Robers been before the might invention be useful.” Id. purposes, for all intents which iner argument against TAL’s comparison. obviated need dictionary court’s chosen meaning also disputes TAL also the court’s second proffers fails. While TAL its own defini- *7 finding the reason URS non-cumulative closure, “drawing together tions Robers, claiming applying to that not Ro- edges parts integu- or to form a united inappropriately bers armholes narrowed ment,” integument, “something that by focusing solely its disclosure encloses,” or covers these definitions do claims to the exclusion of Robers’ broad alter pre- not the outcome. Even if the objects disclosure. And it to the court’s perti- ferred “closure” is definition more dictionary of an improper use definition for nent, TAL explain does not how it would “closure.” patent have better informed a examiner of emphasis The district court’s on the applicability.” ] Robers’ More- “universal over, term “closure” did not limit to its both arguments Robers of TAL’s for univer- claims; appears throughout applicability “closure” are sal undermined its own specification, only findings1 Robers in proposed against not that advocated alleges claims. TAL court improperly being applicable Robers to armhole seams. seams, suggest assembly 1. "Robers does not specifically teach or the sub- but not does ject thermoplastic strip matter of claim 25 of Patent of a in '779 state the use an suggest because it does not teach or a dress [and was] armhole seam never intended seam," only gener- apply Figures shirt armhole and "Robers 4 and 5 to a shirt dress ally strip thermoplastic of a discloses use in armhole seam.” col.3, patent sleeve.” '779 findings ignored are shirt proposed These in an armhole seam 11.32-36.Vilene SL33 dissent. new, previous is “a different combination — disputes the court’s TAL further ly not elements before disclosed—of not that the URS does by alleging references,” only separate in examiner armhole, if it and that even an disclose is, Mfg., non-cumulative. Larson seam, it would an armhole disclosed (citing Molins F.3d at 1333 PLC Tex to the examiner be important have been (Fed.Cir. tron, 48 F.3d a had references with already he cause 1995)). and thermal ad variety clothing seams argument TAL’s The dissent reasserts finding that the URS is hesives. require that the broad claims did not by the evi supported seam is armhole were, degree citing Lar specificity, URS’s Even if it a Id. at 1206. dence. Manufacturing son Co. South Dakota seam, as the dissent type of different Ltd., Products 559 F.3d v. Aluminart think, non-cumulative it remains seems (Fed.Cir.2009), support. In limited to closure Robers is because language require the claim did not case seams. type stripping- of weather or a specific finding, TAL asserts As for the Vilene capability; retention therefore particular (1) would not have been the examiner im teachings references with these were particu- use of a concerned with the URS’s Here, however, Id. at 1333. material. the broad claims did lar adhesive because polyamide, claims 3 and include (2) specificity; degree require specific example SL33 is a of a Vilene if he have been concerned with even would This information is material polyamide. adhesives, Robers’ disclosure particular because a reasonable examiner would or genus anticipates species, a small important deciding consider whether (3) obvious; Robers’ renders the claims pat application to allow the issue as temperature pressing disclosure of a —150 Scientific, ent. Star specific thermo- degrees Celsius—teaches The dissent’s that Vilene SL33 assertion (4) many the examiner had plastics; irrelevant” its corre “wholly because examples thermoplastic adhesives sponding limitation is not discussed garment patents. seams other various the examiner’s reasons for allowance argument, Regarding the first unsupportable. found the Vi- examiner would have URS’s arguments third are TAL’s second and important combination lene SL33/armhole wholly previous with its as- inconsistent claims 3 and include dependent because distinguishing sessment of When Robers. a spe- of which Vilene SL33 is polyamide, *8 admit- patent, Wong Robers from the '779 example, specification cific and the states technolog- interlining ted that Robers’ pucker is phenomenon of seam “[t]he ically polyamide, distinct from and unsuita- troubling in armhole seams because most type manner of ble due to its bias cut and of adhesive. of their visible location and the proposed findings ... at trial2 also un- body attachment between the shirt TAL’s were, issued, per- applied powder, pure solvent there are to be in or 2. "At the time Robers forms; haps, seeking which practitioner hundreds of materials and resins for a of the art to 'thermoplastics.' be characterized as could pucker problem in 1994. These are solve severely lack of disclosure would con- This important, operational information.” “Robers practitioner.” a "Robers teach- found skilled tapes interlinings, mentions the use.of without interlinings, which are to be es the use of any detail[ but discloses little if of the mate- ] thermoplastic one or coated with material on sides, they both but does not disclose whether amendment, in a position that Robers ei- dress shirts” instead dercut its current closely approximat of that more anticipates or renders obvious the URS ther Taltech, seam; teaching. high-priced 609 ed a dress and SL33 shirt URS’s Vilene argued TAL 1207. to F.Supp.2d at failure disclose the which included were, perhaps, SL33, issued “there when Robers Vilene is with its non consistent which of materials resins hundred disclosure of the Vilene SL33 mode. best ‘thermoplastics.’ conduct, be characterized light could in involved viewed “[T]he severely evidence, lack of would con- This disclosure including all the indica evidence a practitioner.” a If skilled found skilled good ... tive of faith sufficient indicated] by practitioner would be confounded Ro- culpability require of intent to generic thermoplastics, bers’ disclosure .at Kingsdown, deceive.” anticipate consisting it group cannot “the bases, On these the district court could olefinic, polyester, polyure- polyamide, properly infer that TAL acted with decep thane, ethylene vinylacetate copolymer tive intent. The dissent insists Ro Id.; by materials” claims 3 and 22. recited bers was before the examiner and the col.8, col.6, 11.63-65; patent '779 11.49-51. but, cumulative, again, URS was therefore argument regarding TAL’s Robers’ disclo- contrary the district court deemed to the of a fails pressing temperature sure faulty because translation. similar reasons. Moreover, good there is no evidence The argument examiner had faith counter the evidence of intent. many thermoplastic examples adhesive in voluntary The on Wong’s dissent relies garment patents various seams other URS, citing disclosure of the Rothman v. unpersuasive. practition- also “skilled (Fed.Cir.2009). Target, 556 But would, proposed findings by er” TAL’s this court Rothman found no substantial definition, knowledge have of the “exam- patentee requi evidence that the had the ples thermoplastic adhesives paten site intent to deceive based on the prior yet other patents,” knowledge this tee submitting letters to the PTO discuss by was deemed TAL when insufficient ar- ing art; the alleged prior the holder of the guing against ap- Robers. We decline to alleged prior previously art participating in ordinary higher skill ply level of than negotiations rights to license Accordingly, that advocated TAL. issue; prior patentee having no not URS’s Vilene SL33 disclosure is cumu- sample, photograph, drawing, descrip or lative to Robers because Vilene SL33 is alleged prior tion of the art to submit to polyamide group within the included in PTO; patentee’s attorney having taught claims 3 good faith alleged prior belief that the thermoplastic. Robers’ recitation of art; was not patentee and the sub mitting all the information did have to
The district
court also did
err
petition
special.
the PTO with its
make
concluding that TAL
with the
acted
rial desired of or workable seam; and it that about pattern of armhole withheld “highly consistent Pfizer’s of shirts disclosing percent references.” five to six the dress sold contrast, (Fed.Cir.2008). In stark in early TAL 1990s had by Apparel 1366-67 the during a de- the Wong disclosed top-stitch overlock stitches. The double issued, despite the position, after misrepresentation is material be- seam ability to knowledge having sufficient not cause it is cumulative of other disclo- during was prosecution; disclose sures, argument and it refutes TAL’s that court; and by credible the deemed appearance top pro- stitches “the two disclosing pattern of offers no consistent through garment ply the truding upper good This is not faith. references. in heavy may acceptable be the seams materiality raincoats, error in the Seeing no clear a configuration but such is whol- fail- analyses intent TAL’s deceptive or ly inadequate garments, particu- most that we conclude ure to disclose larly Similarly, dress shirts.” the overloek its discre- court did not abuse the district misrepresentation is material be- stitch inequitable finding in conduct. tion it also is not of other cause cumulative disclosures, and it TAL’s statement refutes
II.
11, 1996,
that
in its March
amendment
independent
district court’s second
The
open
“[although
edge C can be avoid-
finding an
case is
ground
exceptional
by incorporating
ed
an overlook stitch
misrepre-
inequitable
TAL’s
conduct
this
along
edges,
unacceptable
stitch is
TAL
top-stitch
the double
seam.
senting
shirts,
applications, particularly
in most
argument
“deemed
this
was
alleges
it increases the thickness of the
because
by this
on the first
Court
insubstantial
and is uncomfortable as it rubs a
seam
court drew
contrary,
To
this
appeal.”
The district court did not err in
wearer.”
inequitable con-
conclusions about the
no
misrepresentations material.
finding these
misrepre-
arguments surrounding
duct
however,
misrepresentations,
For both
top-stitch
seam.
sentation
double
non-materiality.
In es-
the dissent asserts
“vacate[dj
Instead,
of attor-
we
the order
1.56(b)
sence,
says
dissent
section
§
under 35
285 because
ney fees
U.S.C.
misrepresentation
be
requires
tied
court based its conclusion
are
no
reasons claims
allowed. There is
exceptional
an
case at least
this was
requirement.
The statements
such
part
inequitable
con-
upon
11, 1996,
March
amendment are
TAL’s
FedAppx. at 977.
duct.” 279
intended
TAL’s lat-
arguments
prevent
pat
is material to
“[I]nformation
being applied
est disclosure from
to dress
in
entability
it is
cumulative to
when
shirts, and combined
a reference dis-
already of
being
record or
made
formation
cases,
closing an overlook
In both
stitch.
application,
in the
and ...
[i]t
of record
“[a]sserting
argument
patent-
TAL is
an
with,
refutes,
position
or is inconsistent
required.
ability” as
It
is irrelevant
(i) Opposing
takes in:
an
applicant
arguments
were the ulti-
whether
unpatentability
relied on
argument
for the patent’s
mate reasons
allowance.
(ii)
Office,
argument
Asserting
or
knowledge
to the con-
Despite
of facts
1.56(b) (2008).
§
patentability.” 37 C.F.R.
examiner
trary,
represented
TAL
analysis
of TAL’s
top
the “overlock
that “two
stitches” and
aspects:
misrepresentations relies on two
were,
“wholly inade-
respectively,
stitch”
that about
of dress
percent
It withheld
five
“unacceptable.”
quate,” and
The conse-
in the
TAL
shirts sold
United States
representations
quence
featured two
of both
Apparel
top stitches
*10
have been
to be-
discovery
prepared
defense;
the examiner would
led
ducted
and
factually inaccurate statements.
lieve
jury request
waiver of a
only weeks before
Esquel
extensively
trial
after
had
pre-
and in-
alleges materiality
The dissent
pared; voluntary
prejudice,
dismissal with
agree
tent have been conflated. We
trial,
in the middle
five of its claims of
an
of inequitable
intent is
element
infringement in order to
responding
avoid
clear
requiring support by
convincing
evidence,
Esquel’s
for entry
judgment
but
that in-
to
motion
the dissent’s belief
requires
wholly
tent
pursuant
52(c);
facts
distinct from
to Fed.R.Civ.P.
withdraw-
establishing materiality
those
is incorrect.
an
al of
International Trade Commission
unequivocal
TAL’s assertion of
untruths
complaint shortly before
hearing
be-
reference,
pres-
about a
simultaneous with
gan;
engaging
in similar tactics on
reference,
entation
in order to mini-
remand from this court.
impact
mize
reference’s
on the examin-
court,
“As an appellate
we are ill-
er
TAL’s
to
shows
intent
deceive.
weigh
suited to
All
such evidence.
The dissent is also troubled
the dis
instances described above
context-spe
are
that Wong “repre
trict court’s statement
cific,
that,
and the district court found
to
‘recently
sented
the PTO that he had
context, they
taken
to litiga
amounted
aware’ of the
Top-Stitch
become
Double
tion misconduct. There is sufficient evi
Seam,” Taltech,
F.Supp.2d
dence
the record for the
court
district
to
attorney
was
making
when it
his
the state
have concluded that
trial misconduct oc
court, however,
fully
ment.
district
curred, and
we are
left
the firm
grasped
attorney’s
be in
decision to
conviction
a mistake was committed.
tentionally ambiguous
Wong
about when
Furthermore,
ill
appellate
it
behooves an
sales,
was
of the prior
aware
and this
court to
judge
overrule
trial
concerning
imputable
misdirection is
to Wong, FMC
litigation
litigation
misconduct when the
Co., Inc.,
Corp. v. Manitowoc
judge,
occurred
front of the trial
not the
(“[T]he
(Fed.Cir.1987)
n.
Nilssen,
appellate court.”
528 F.3d at
knowledge
applicant’s
and actions of
attor
1359. The
court presided
district
over this
ney
chargeable
applicant.”).
are
years,
case for over five
and it had the
Accordingly, it
was
clear error for
opportunity to
litigation
review the
con
court
deceptive
to find
intent in
remand,
after
during
duct
which
found
misrepresentations;
and after “ba-
that TAL’s misconduct continued. Tal
equities
lancing]
to determine whether
tech, 609
F.Supp.2d
1210. The court
the applicant’s conduct before the PTO
also found that
Wong’s pat
based
“Mr.
egregious
enough
holding
warrant
of changing
tern
his
testimony
suit the
patent unenforceable,”
the entire
Sci-
Star
theory
jour
du
plaintiffs’
and in light of
entific, 537
holding.
F.3d at
in so
shifting
contentions
the record cannot
improved.”
be
Id. The
trial
had
III.
ample
concluding
reasons for
that TAL’s
The district court’s
indepen
final
litigation tactics were abusive.
ground
finding
dent
exceptional
case is abusive litigation tactics. TAL ar
IV.
gues that its tactics were reasonable under
turning
Now
interest
support
circumstances
do not
calculation:
“[I]nterest
of bad
shall be calculated
faith. The district court
entry
relied on
cumulation of
from
date of the
the judg
TAL’s dismiss
damages
ment,
al of
Esquel
claim after
con-
at a
equal
weekly
rate
aver-
*11
system.
Treasury
charges
pervade
our
maturity
1-year constant
age
below,
respectful-
the
stated
I
the Board of Gover For
reasons
published by
yield, as
majority opinion.
System,
ly
dissent from the
Federal Reserve
nors of the
preceding!
the date
]
calendar week
the
inequitable conduct claim
Defendants’
1961(a)
§
28 U.S.C.
judgment.”
the
drawing
on a handmade
the
rests
(2009).
the
court’s
consider
district
We
inventor,
Wong,
piece
John
sketched on
the
in accordance with
award
interest
during
deposition.
his
Defen
paper
review,
see
standard
Ninth Circuit’s
requested
Wong
dants’ counsel
draw
novo,
1272,
GFI,
which is de
experi
him to
prior
“inspired”
Am.
Parenthood v.
Coalition
Planned
making pucker-free
ment
seams
(9th
Activists,
1013,
Life
In
response,
dress shirts.
he sketched
Cir.2008).
Circuit,
According Ninth
rain
prior
waterproof
art seam used to
Corp.
&
Aluminum Chem.
under Kaiser
factory.
coats manufactured in the TAL
1570, 108
827, 110 S.Ct.
Bonjorno, 494 U.S.
During litigation, Wong’s drawing was la
(1990), “post-judgment inter
L.Ed.2d 842
beled the “Undisclosed Raincoat Seam”
judg
may
only
run
from the date of
est
(“URS”).
trial,
After a bench
the district
supported
ment later determined to be
Wong
court found that
committed fraud on
legal
It
not run from a
may
the evidence.
the U.S. Patent and Trademark Office
Planned Par
ly
judgment.”
insufficient
(“PTO”) because he failed to disclose the
enthood,
CONCLUSION on his failure to disclose ble conduct based Accordingly, judgment on a but did so based flawed part, court is affirmed in and reversed in inquiry. cumulativeness The district court and the case is remanded for further part, erroneously teachings limited the of both opin- proceedings accordance with this and the reference in or- the URS Robers appellees. ion. Costs der to render them non-cumulative properly art. district court inter- Had the AFFIRMED-IN-PART, REVERSED- references, preted teachings of both IN-PART AND REMANDED. that the mere- would have found URS was GAJARSA, ly cumulative of Robers. Judge, dissenting. Circuit in- also ongoing pan- improperly The district court exemplifies This case materiali- ferred intent to deceive from the demic of baseless *12 inadequacies the reference and sev- and held that limited Ro- ty the non-disclosed of Esquel made to the PTO. bers’ disclosure. Taltech Ltd. v. Wong eral statements Inc., Enters., instances, F.Supp.2d drew 609 the court In district both (W.D.Wash.2009). despite equally an an inference of bad faith reasonable, in- likely more plausible, and analysis The district court’s is flawed. analysis good of faith. Such ference First, on the issue remand was whether rejected by this court and is has been Robers, the URS was cumulative of See Scanner Techs. legally erroneous. Thus, not apparent vice versa. it is what Corp., Sys. Corp. ICOS Vision the court district meant when it stated (“Whenever (Fed.Cir.2008) evi- that “the would not the Court view Robers materiality proffered dence show either TALtech, Patent as cumulative.” 279 Fed. susceptible multiple or intent is reason- of Second, while Appx. the district inferences, a clearly district court errs able quibbled proper court over the translation overlooking one inference in of favor English, of several words from German to inference.”). equally another reasonable it also noted that “the chose translators legal The district court’s numerous and English having, different words the detail factual errors are discussed more part, equivalent most meanings.” Tal- below. tech, F.Supp.2d (emphasis at 1204 add- ed). precise, The art of translation is not A. and, any absent evidence of to de- intent began The district court its cumulative- ceive, minor variations in submitted trans- inquiry interpreting teachings by ness lations do constitute con- Robers, prior of art on the closest record. duct. application is a patent Robers German Had properly the district court consid during
was considered
the examiner
teachings
Robers,
ered the
it would
prosecution
is
a
cited as
reference on
merely
have concluded
the URS is
'779
patent.
part
face
As
cumulative
Robers. To determine
inquiry,
cumulativeness
whether a
reference
cumulative
a portion
English
considered
trans-
PTO,
prior art
this court
disclosed
lation
Robers
TAL submitted to
an element-by-element approach
uses
the PTO:
compare
prior
the disclosed
art reference
production
a process
pucker
for the
of a
and the
prior
undisclosed
art reference
seam, in particular
pope-
free closure
with the claimed invention. See Baxter
materials,
gabardine
a
line
wherein
McGaw,
Inc. v.
Int’l
containing
of or
a
thermoplastic
seam
(Fed.Cir.1998).
case,
In this
the un
already
sewn into the seam a method
reference,
disclosed
has
known,
part
and the
of the material
(a)
following
elements:
a
fabric
top
adjoining the seam is
while
then ironed
(b)
(c)
layer,
layer,
a
a
bottom fabric
folded
slight
under
tension.
(d)
(e)
adhesive,
strip
stitch,
a set
a
During
Likewise,
litigation, Esquel submitted a
stitch.
top
the disclosed refer
ence,
very
different translation of
has
patent,
the Robers
the Robers
same
(a)
(“2”), (b)
to aid the district court in
a
interpreting
top
layer
elements:
fabric
(c)
(“3”),
layer
German reference. After
comparing
strip
bottom fabric
folded
(d)
remand,
(“1”),
(“4”),
two
translations
of adhesive
a set stitch
(e)
(“5”).
court found TAL’s
inadequate
top
translation
stitch
*13
cumulative refer-
however,
obligation
an im
to disclose
Robers,
also discloses
ences.”).
The failure
the district court
in the
present
not
element that is
portant
analyze
the two references ele-
properly
through
top
passes
stitch
Robers’
URS.
is
error.
adhesive,
ment
element
reversible
strip of
layer, the
the first fabric
layer. Wong testi
fabric
and the second
Moreover,
court correct-
had
district
top
stitch was discov
type
that this
fied
teachings of Robers and the
ly read the
pucker
seam
preventing
vital in
to be
ered
patent,
'779
in the context of the
URS
invention
shirts. The claimed
ing
dress
concluded that Robers is the
would have
through
both
top
passes
stitch
uses
in-
reference. The claimed
more relevant
of adhesive.
strip
and the
layers of fabric
achieving pucker-
is directed
vention
to the success of
was critical
This element
Likewise, Ro-
in dress shirts.
free seams
invention, yet
entirely
it is
the claimed
achieving pucker-
claims a method of
bers
because
URS’s
absent from
URS
Indeed,
free
dress shirts.
Ro-
seams
layers of fabric
through
top
passes
stitch
aim”
that its “chief
was to
bers teaches
every
Thus,
ele
only.
Robers discloses
garments
for
in which the
provide “seams
discloses and also dis
ment that the URS
reliably prevented
puckers
occurrence
not disclosed
top
the critical
stitch
closes
treatment
in the
despite subsequent
Accordingly,
the URS
in the URS.
laundering
drying.”
repeated
form of
support
merely
testified,
cumulative and does
Conversely, Wong
the URS
Halli
inequitable conduct. See
finding of
in raincoats. Because the
only
used
Robers,
Corp.,
reference,
Tech.
Schlumberger
v.
was dis-
burton Co.
more relevant
(“[T]he
(Fed.Cir.1991)
closed,
failure to disclose the less
Wong’s
support
pertinent
more
reference does
were
relevant
cited references
finding.
court’s
applications than were
the Halliburton
Pro-Mold,
Lakes
Tool Co.
Great
Halliburton had no See
withheld references.
(Fed.Cir.
Plastics,
does not specifically disclose Vilene SL33.
1996) (finding that
However,
less relevant
is not
the district court’s materiality
art).
prior
material
finding based on
SL33
Vilene
is error.
general
Claims 3 and
type
disclose a
Additionally, in finding the URS not cu-
thermoplastic adhesive,
polyamide,
Robers,
mulative of
the district court im-
However,
the garment seams.
none of
properly limited the
of both
scope
require
any
claims
Vilene
or
SL33
other
Turning
Robers.
URS and
first
specific
type
thermoplastic
the district court
adhesive.
concluded
However, The examiner
URS was an “armhole seam.”
considered numerous exam-
ples
there is no evidence whatsoever that the
polyamide
garment
adhesives
Wong
URS was an “armhole seam.”
testi-
record,
seams in the
art on
including
factory
fied
his
Thailand made a Benstock, Swan, Off, and Saniscalchi.
*14
stitch,
that
one
only
top
raincoat seam
had
Thus, no reasonable examiner would have
testify
but he
that
did not
such seams were
found the URS’s disclosure of Vilene SL33
Wong
used as armhole seams.
also testi- material because the specific type
po-
of
TAL plant Malaysia
fied that the
in
used lyamide adhesive was not relevant to the
raincoats,
different
one of
seams
which
of
examination
the pending claims.
had a
having
set stitch and another not
a
already rejected
This court has
the ar
Wong
set stitch. When
sketched the URS
gument
the
now
majority
upholds,
in
deposition
his
did
he
not identi-
namely, that
undisclosed reference is
fy it as an armhole
Wong
seam.
did testi-
specific
material where it
discloses
ele
fy that
rain
“the
coat seams that
[he]
ment in greater detail than the examiner’s
apart
either
or
at in early
took
looked
cited
Mfg.
references. Larson
Co. v. Alu
variety
1994” contained a
pat-
of different
Prods.,
minart
1332-33
terns and
stitches and
some were
(Fed.Cir.2009).
the
Reversing
finding of
“in
used
the armhole or around the arm of
conduct,
this
noted
that:
a rain
But Wong
coat.”
was never asked
The claim language and limitations at
during
deposition
the
whether the
issue require
specific type
neither a
of
drawing
he
the
which made at
deposition,
weather stripping
particular
nor a
reten-
Furthermore,
was an armhole seam.
he
Rather,
tion capability.
the limitations
never
Nevertheless,
testified that it was.
... simply require any type
general
the district court improperly limited the
stripping
weather
...
Panel
[T]he
was
raincoat,
URS to an armhole
of a
seam
with
particular
concerned
reten-
merely
instead of
a raincoat seam. The
capability. Accordingly,
tion
a greater
district court
to
failed
understand that the
capability
retention
of weather stripping
drawing
URS was a
during
made
the de-
i.e.,
wholly
immaterial
position subsequent to the issuance of the
irrelevant —
could not
and
be the basis of a
patent,
only
how
reply to
the inven-
distinguishing feature to make the [un-
tor was
to
“inspired” make the invention.
art
TALtech,
prior
disclosed
reference]
the
See
Fed.Appx.
i.e.,
DE
'478
ma-
cumulative —
Furthermore,
majority
the
improperly
terial.
flimsy
affirms the district
attempt
court’s
(internal
omitted).
Id. at
citations
distinguish the URS as non-cumulative
analysis
The same
prior
applies
art
this case.
based
the URS’s disclosure of
a specific
adhesive,
The examiner was not concerned with
type
any
thermoplastic
Maj.
specific
Vilene
Op.
type
SL33.
at 1330-31.
adhesive. The
While
examiner’s
element,
Robers discloses an
“particular folding
adhesive
focus was the
steps of
(or particular position- TAL
garment parts
during prosecu-
the
disclosed
the PTO
respect
ing
parts)
of the above
Accordingly,
tion.
district
the
court’s find-
element,”
in the '779
bonding
specified
ing of inequitable
Wong’s
conduct based on
“par-
Those
independent claims.
patent’s
failure to
is entirely
disclose the URS
im-
folding steps”
“positioning”
ticular
legally
proper
erroneous.
present
elements were not
either
majority
also affirms
URS;
thus,
Robers or the
the examiner
court’s reliance on a
series
immaterial
Accordingly,
spe-
allowed the claims.
representations
during
prosecu-
made
type of adhesive—Vilene SLL3 or
cific
patent.
tion
the '779
Even assuming
irrelevant,
i.e.,
wholly
im-
otherwise —was
regarding
prior
statements
material, and
a basis for distin-
cannot be
factually incorrect, none
are
of the state-
prior
noncumulative
guishing
URS as
ments are material
patentability
art.
claimed invention.
Turning
analysis
to the district court’s
First,
majority
affirms the district
Robers,
improperly
the district court
limit-
court’s erroneous reliance on TAL’s state-
scope
of Robers
buttonholes.
ed
ment
regarding
top-stitch
the “double
Yet Robers teaches
his invention
seam” found
art. TAL stated
“may
advantage
be used to
with closure
*15
in
that
top
Amendment
“two
types”
seams of all
and is not limited to
buttonholes,
through
fastening
protruding
upper gar-
such as
as the
stitches
dis-
trict court
found.
erroneously
ply may
Robers also ment
in
acceptable
be
the seams
that that
closure
may
teaches
these
seams
raincoats,
heavy
it wholly
of
but
is
inade-
used to
shirt
be
achieve a “smooth
breast”
quate
garments,
most
including dress
explains
may
invention
“the
also
majority
shirts.” The
finds that statement
used,
example,
one or both
be
on
sides
“refute[dj” by
is
evidence that a small
a
purpose
buttonhole for the
of rein-
percentage
TAL’s dress shirts included
merely
forcement....”
A buttonhole is
top
Maj.
two
atOp.
stitches.
1333. The
type
contemplated
one
closure
assumes, however,
majority
disclosure,
patent. Despite
express
this
statements are
“material”
somehow
be-
the district court
held
Robers’ disclo- cause “it is not
cumulative
other disclo-
was limited to
sure
buttonholes. The dis-
sures,” despite
the fact
the claimed
interpretation
trict court’s
of the URS and
top
invention does not
two
include
stitches.
are
Robers
unreasonable and contradicted
Id. Accordingly, the examiner would have
express teachings
of both refer-
had no
representation
interest
this
be-
ences.
it
cause
does not
impact
patentability
sum,
In
Robers
a
discloses method to of the claimed seams.
seams,
achieve “smooth”
shirt
dress
like
Second, the
affirms
majority
another er-
covering “pucker-
the claimed invention
finding regarding
roneous
a
statement
free”
seams
dress shirts. The
TAL’s 1996
about prior
Amendment
hand,
other
discloses seams in rain-
Maj. Op.
“overlock” stitches.
at 1333.
prevent
coats to
water from entering the
TAL stated that an
“overlock stitch
raincoats,
prevent
puckering.
unacceptable in
applications, particu-
most
Moreover, Robers discloses more elements
shirts,
larly dress
it
because
increases the
the claimed
than
invention
the URS.
thickness
the seam and is uncomfortable
Robers is the more
reference in
relevant
Again,
a
majority
rubs wearer.”
Thus,
relation to the
invention.
claimed
relies on
some
the URS is not
evidence that
of TAL’s
merely
material
Robers, a
cumulative of
reference which dress shirts
use of an
included the
over-
single
supra p.
TAL
stitch.
top
stitch to find that
made mate-
closed
See
lock
3).
relating
(Robers’
to its
misrepresentation
rial
Fig.
majori-
Even if the
dress shirts.
Id. at
pucker-free
claimed
ty and district court believe that the Ro-
However,
majority
fails to ex-
“inadequate,”
bers translation was
such in-
statement,
TAL’s
that a thick
plain how
adequacy could not have prevented the
acceptable
stitch was not
for a
overlock
from understanding
Fig-
examiner
Robers’
seam,
shirt
misled the exam-
smooth dress
which,
ure 3
whether read
German or
claims,
allowing
iner in
none of which English, indisputably
single top
contains a
Ac-
type
includes this
of overlock stitch.
in-
Accordingly,
stitch.
the district court
cordingly,
logical
there is no
factual or
ferred intent from the failure
to disclose
legal
for the
support
already
element that was in fact
be-
finding.
fore the examiner. This
establishes
only that the URS was cumulative of Ro-
B.
bers, but also that the district
in-
court’s
Because I believe that
the URS and
of deceptive
ference
intent is unwarranted.
representations
TAL’s
to the PTO are not
Corp.,
Hebert v.
See
Lisle
99 F.3d
material, I need not determine whether
(Fed.Cir.1996) (“Intent
to deceive
TAL intended to deceive the PTO. See
solely
cannot be inferred
from the fact that
Scientific, Inc. v.
Reynolds
Star
R.J.
To
disclosed;
information was not
must
there
(Fed.Cir.
Co.,
bacco
factual
deceptive
be a
basis for a
2009) (“[A]t least a threshold level of each
intent.”).
i.e.,
materiality
both
and intent
element —
proven by
to deceive—must be
clear and
Next, the district court inferred intent
evidence.”). But,
convincing
because
allegedly “misleading”
from an
statement
majority
approved a deceptive
has
intent
by Wong
only recently
that he had
become
*16
that
any support
lacks
in law or
aware of the disclosed
top-stitch
double
represents
dangerous
fact and
departure
Taltech,
seam. See
Wong “recently himself had become (Fed.Cir.2009) (“[Jacobson] did not Seam,” of the aware” “Disclosed Raincoat call gar the examiner’s attention to these examiner was not and the misled. art, prior ments as [but had intended he] Nonetheless, majority contends that PTO, to conceal the existence ... from the “fully grasped attor- he have never would included prior [the ney’s ambigu- to be intentionally decision in his petitions references] filings.”); Wong ous when of the about aware Pfizer, Inc. Teva Pharms. USA Maj. Op. cursory A sales.” (Fed.Cir.2008) (“Given reading opinion, district court’s how- of a existence credible reason for ever, reveals the district court com- withholding, materiality of the refer misread the pletely 1996 amendment as standing ences alone is not sufficient referring Wong’s the Dou- knowledge of *17 intent.”). establish These inferences Seam, Top-Stitch patent ble instead of the more good faith are reasonable than the Taltech, knowledge. attorney’s See 609 district unsupported court’s inference of (“[I]n at F.Supp.2d 1208 amend- his 1996 deceptive Techs., intent. See Scanner 528 ment, represented he to the PTO that he (“[T]he F.3d at 1377 district court erred ‘recently had become aware’ of the Double when it an adopted unfavorable inference Seam, Top-Stitch a statement that was ... equally over an reasonable favorable misleading Wong because Mr. aware was inference.”). ... filing before his application”) added). (emphases majority’s The at- Moreover, the district court’s intent to tempt to rewrite the opin- district court’s analysis, majority’s deceive and the affir- ion fails correct the blatant legal errors thereof, mance fails to follow prece- our committed below. majority dent. The repeatedly conflates materiality Next, Praxair, issues of and intent. See the district court cited ATMI, 1332, Inc., 1306, Maj. Op. at 1333-34. This approach Inc. v. 543 F.3d 1313-14 (Fed.Cir.2008), improperly for the that de- reads the element of proposition intent ceptive intent can a high- inequitable be inferred when deceive out of our
1342 precedent. equally See Astrazeneca Pharms. LP there is an reasonable inference Inc., 766, v. Teva Pharms. 583 F.3d that TAL believed that USA (“Intent (Fed.Cir.2009) 776 deceive is “wholly inadequate” stitches are or “unac- independent inequitable element of con and, therefore, ceptable” incorporated duct, independently and must be estab only percent stitches into five evidence.”). convincing lished clear and their shirts on the market. Because it is true that the misrepre While “when TAL’s statements support equally two sentation or withheld information highly is plausible inferences and can be viewed as material, quantum of proof lesser is attorney argument, reasonable intent,” requisite needed to establish the majority legal and the commit error L.P. Purdue Pharma. v. Endo Pharms. by inferring deceptive intent in this situa- (Fed.Cir.2006), 438 F.3d tion. Scientific, Star at quantum proof necessary. some is still (explaining that an deceptive inference of Int’l, Inc., Organ See Allen Co. v. Kimball intent “must be single most reasonable (Fed.Cir.1988) (“Ma 839 F.2d inference able to be drawn from the evi- intent, teriality presume does not which is dence to meet the clear convincing separate component essential of in standard”). conduct.”). equitable conclusion, In majority’s opinion af- case, majority’s In this opinion fails firms a judgment district court that con- identify any quantum proof beyond intent, supportable tains no finding of questionable materiality findings. For ex- materiality limited findings, wholly ample, majority deceptive infers intent ignores good evidence of faith. In doing from “TAL’s unequivocal assertion of un- so, the majority upon reverses the road reference, truths about a simultaneous which this court’s inequitable conduct reference, presentation in or- precedent is presently traveling. As we der to minimize the reference’s impact on recently explained, strictly “[t]he need to Maj. Op. the examiner.” (empha- enforce ... elevated [an] standard of added). sis An deceptive inference of in- proof paramount pen- because the may tent be drawn an applicant’s from alty inequitable severe, conduct is so gross mischaracterization or unreasonable patent.... loss the entire This interpretation of the prior Young art. penalty originally applied only in Lumenis, Inc., (Fed. 492 F.3d cases of fraud the Patent Office.” Id. Cir.2007). However, attorneys are enti- (internal omitted). quotation marks tled to make arguments reasonable re- court’s of deceptive intent garding Rothman, the prior art. not supported by clear convincing (“While prohibits 1328-29 the law genu- evidence and the conduct find- fact, ine misrepresentations of material *18 ing should be reversed. Id. prosecuting attorney is free present ar- gument patentability favor of without D. conduct.”). fear of committing inequitable I disagree Because majority’s
The district court majority charac- conduct, I also dis- terize TAL’s statements that certain regarding majority’s sent findings art stitches are “wholly inadequate” or shirts, exceptionality and the “unacceptable” attorney’s award of despite dress ev- idence of their fees. The percent findings inclusion five district court’s are so shirts, clearly TAL’s dress “unequivocal affirming un- erroneous that its deter- Maj. However, truths.” Op. minations causes this court to compound by the district court’s occasioned errors precedent. to follow this court’s
failure reasons, I reverse the would
For court, because its conclusions are erroneous.
legally Angela Hazle HAZLEHURST and
Rolf
hurst, parents Yates Ha of William
zlehurst, Petitioners-Appellants, AND
SECRETARY OF HEALTH SERVICES, Re
HUMAN
spondent-Appellee.
No. 2009-5128. of Appeals,
United States Court
Federal Circuit. 13, 2010.
May