*1 (now THERASENSE, known as INC. Inc.) Care, and Ab
Abbott Diabetes Laboratories, Plaintiffs-Appel
bott
lants,
BECTON, AND COMPA DICKINSON Corpora
NY, and Nova Biomedical
tion, Defendants-Appellees,
Bayer LLC, Defendant- Healthcare
Appellee. 2008-1511, 2008-1512, 2008-
Nos.
1513, 2008-1514, 2008-1595. Appeals,
United States Court of
Federal Circuit.
May *3 Whealan, of Spring,
Jоhn M. Silver MD argued plaintiffs-appellants on rehear- ing en banc. With him on the brief were Detre, Singla K. and Peter A. Mun- Rohit LLP, ger, Tolies & Olson of San Francis- co, CA; Jeffrey Weinberger, I. of Los CA; Angeles, Jeffrey A. Lamken and Mi- Jr., LLP, Pattillo, chael G. MoloLamken Washington, were DC. Of counsel Chan- *4 Jr., D’Apuzzo, Rowley, tal Fred A. M. Ward, Song Andrew W. and Donald W. LLP, of An- Munger, Tolies & Olson Los geles, CA. Badke, LLP, Ropes Gray
Bradford J. & York, NY, argued of New for defendants- Becton, appellees Company, Dickinson and rehearing et al. on en him banc. With on the brief was counsel Sona De. Of was Gabrielle M. Ciuffreda. Krevans,
Rachel Morrison & Foerster LLP, Francisco, CA, argued of San defendant-appellee Bayer Healthcare rehearing LLC on en banc. her on With Brian Greg- the brief were M. Kramer and CA; Reilly, ory Diego, W. of San Casino, P. George Joseph Kenneth M. LLP, Amster Rothstein & Ebenstein of York, NY. R. New Of counsel were Jason Bartlett, Jorjani, Wesley E. Parisa Overson. Chen, Solicitor,
Raymond T. Office of Solicitor, Patent and United States Office, Alexandria, ar- Trademark of VA gued for amicus curiae the Director of the Patent Trademark United States Of- rehearing on banc. him on fice en With Jr., Knight, the brief were Bernard J. Counsel, Johnson, Sydney 0. Jr. General A. Gongola, and Janet Associate Solicitors. on the was R. McIn- Of counsel brief Scott tosh, Staff, Attorney, Appellate Civil Divi- Justice, sion, Department of United States Washington, DC. Lamm, Bar Asso- Carolyn B. American IL, ciation, curiae Chicago, for amicus rehear- The American Bar Association on P.C., Sawyer counsel on the brief were ing Spinola, Group, en banc. Of Law of Palo Lafuze, Michael A. and William L. Alto, Valek CA. LLP, Houston, TX.
Vinson & Elkins Mammen, Christian E. University of L. Farella Braun & Martel Cooper, John Law, Hastings California College of the Francisco, CA, LLP, of for amicus San Francisco, CA, San for amici curiae Intel- Laboratories, Dolby Inc. on rehear- curiae Property lectual Law Professors on re- ing en banc. hearing en banc. Taranto, Taranto, Richard G. Farr & Hutchinson, Jr., Leland W. Freeborn & DC, Washington, for amicus curiae Veri- LLP, IL, Chicago, Peters for amici curi- Communications, Inc. on rehearing zon en Foundation, ae Ole K. Nilssen and Geo on the brief were banc. Of counsel John Ltd. rehearing on en banc. himWith Levine, F. Thorne and Gail Verizon Com- the brief were Jonathan Hill and Matthew Inc., Arlington, munications VA. Kramer. J. Hricik, University David Mercer School Gibson, Perry, Mark A. Dunn & Crutch- Law, Macon, GA, for amicus curiae *5 LLP, DC, Washington, er of for amici Professor Hricik on rehearing David en curiae Sanofi-Aventis and Microsoft Cor- banc. poration on rehearing en banc. himWith McDonnell, Boehnen, Paul H. Berghoff, on the brief were Matthew D. McGill and LLP, IL, Berghoff, Chicago, Hulbert & of William G. Jenks. for Property amicus curiae Intellectual Owners on rehearing Association en banc. Robert A. Armitage, Lilly Eli and Com- himWith on the brief was Kurt W. Rohde. IN, pany, of Indianapolis, for amici curiae Of counsel on the brief were Douglas K. 43 Patent Employed by Practitioners Eli Rhodes, Norman H. and Kevin Intellectual Lilly Company rehearing on en banc. Association, Property Washing- Owners of himWith on the brief were James J. Kel- ton, counsel DC. Of was Herbert C. ley and Mark J. Stewart. Wamsley, Property Intellectual Owners Chalsen, Christopher Milbank, E. Association, of Washington, DC. Tweed, LLP, Hadley McCloy & of New Greenspoon, Robert P. Flaehsbart & NY, York for amicus curiae The American LLC, IL, Greenspoon, of Chicago, for ami- Intellectual Property Law Association on ci curiae Acacia Research Corporation and rehearing en banc. With him on the brief Media, 1st rehearing LLC on en banc. were Lawrence T. Kass and Nathaniel T. Scott, LLP, Ian Duane Morris of New Browand. Of counsel on the brief was York, NY, for amicus Apotex, curiae Inc. Alan Kasper, J. American Intellectual on rehearing en banc. him With on the Property Association, Law Arlington, of BennetL-Paris, brief M. Joseph were of VA. Atlanta, GA; Robert Gould and Elese Sauer, Hansjorg Biotechnology Industry Hanson, IL; Chicago, of and Matthew C. DC, Organization, Washington, of for ami- Mousley, Philadelphia, of PA. Of counsel cus curiae Biotechnology Industry The Or- on the Upadhye, brief was Shashank Apo- ganization on rehearing en banc. tex, Inc., Toronto, of CA. Johnston, Timothy D. Nutter McClen- Hadidi,
Frederick F. Chao Hadidi Stark LLP, Boston, MA, nen & Fish LLP, of for ami- Park, & Barker of Menlo for CA Association, amici cus curiae Boston Patent curiae Patent Law Prosecution Firms rehearing Practitioners on on en him rehearing en banc. banc. With on the Of counsel on Rory the brief was Julie Y. Mar- brief was P. Pheiffer. Owens; Sereboff, IP A. C. Shumsky SoCal Law and James C.
Steven LLP, CA, Village, Trela, Jr., for IL. Group Chicago, Westlake Constantine L. Bar Conejo Valley Associa- Korn, amicus curiae was E. Of counsel on the brief David With him on rehearing on en banc. tion Pharmaceutical Research and Manufactur- M. were Mark A. Goldstein and the brief America, Washington, ers of DC. Sarvaiya. Kala Batchelder, LLP, Howrey James R. Obion, Nissen, Spivak, C. Robert CA, Alto, East Palo for curiae SAP amicus McClelland, Neustadt, LLP, of &Maier America, rehearing en Inc. on banc. Alexandria, VA, curiae for amicus Ecore Inc., Respess, Wiliam L. Nanogen International, rehearing en banc. Inc. on CA, Diego, San for amicus Die- curiae San Paul, Wexler, Hastings, Bruce M. Janof- go Property Intellectual Association Law York, LLP, NY, New for sky & Walker on banc. Of on the rehearing en counsel al. curiae Ltd. et on re- amici Eisai Olson, brief was E. Douglas Hastings, Paul him on hearing en banc. the brief With Janofsky Walker, of San Diego, CA. & Stephen Igor B. Kinnaird V. were Witcoff, Shifley, Charles Banner & W. DC. Timofeyev, Washington, Ltd., IL, Chicago, curiae The amicus Stronski, K. Frommer Lawrence James Property Intellectual Law Association NY, LLP, York, ami- Haug of New & Chicago rehearing on en banc. Bar Circuit Associ- cus curiae Federal banc. Of counsel on rehearing ation en Popeo, Daniel Washington Legal J. Stewart, was P. Stewart the brief Terence DC, Washington, Foundation of for amicus *6 Stewart, Washington, of DC. & Washington Legal curiae on Foundation rehearing With him brief en banc. on the Jr., Lord McAughan,
Robert J. Locke Samp. was A. Richard TX, Liddell, LLP, Houston, Bissell & for amicus curiae Houston Intellectual Lehman, Bruce A. International Intel- rehearing Law on en Property Association Institute, of Property Washington, lectual banc. DC, for curiae Intel- amicus International Diskant, L.
Gregory Belknap Patterson Institute, Property rehearing lectual on en York, LLP, NY, Tyler for & of New Webb banc. curiae The amici Johnson & Johnson and Samuels, Jeffrey University of Akron M. Company rehearing Procter & on Gamble Law, Akron, OH, amicus School of for en banc. With him on brief were University curiae of Akron School M. and Charles D. Hoff- Eugene Gelernter rehearing Law on en banc. him on With
mann; Johnson, Eric Philip and S. I. Har- the brief C. Kahrl. was Robert Hadad, Henry ris and of New Bruns- S. Mills, LLP, Jeffrey King & Spalding D. wick, NJ. TX, Austin, for amicus Associa- curiae Pedersen, Brad D. Patterson Thuente tion of Citizens for Patent Protection P.A., Pedersen, Christensen Minne- on en rehearing the Public Interest banc. MN, apolis, for amicus curiae Patterson him the brief was Brian C. Ban- With on Pedersen, P.A. re- Thuente Christensen on ner. hearing en bane. Henry Procter Dinger, Goodwin C. LLP, Sidley Austin Phillips, Carter G. LLP, MA, Boston, for Teva amici curiae DC, amicus curiae Phar- Washington, for USA, Inc., et al. Cisco Pharmaceuticals and maceutical Research Manufacturers Inc., Systems, and Generic Pharmaceutical rehearing on en banc. With him America Kushan, rehearing en Jeffrey P. Eric Association on banc. With on the brief were strip, glucose on the brief were Elaine Herrmann test him contacts a in the blood Blais, K. and An- Nicholas Mitrokostas enzyme an on result- strip, reacts with M. Batchelor. drew ing in transfer of electrons from the glucose enzyme. A mediator trans- Bagatell, L. Brown & Dan Perkins Coie on Bain, Phoenix, AZ, fers these electrons to an electrode P.A., amicus Then, Corporation rehearing strip. Intel en curiae electrons flow from counsel on the brief was Tina M. meter, banc. Of glucose strip to which calculates Chandler, Corporation, Intel Chappell, glucose concentration on the based AZ. electrical current. RADER, strip The '551 claims a
Before test Judge, Chief NEWMAN, LOURIE, BRYSON, an electrochemical sensor for whole testing GAJARSA, LINN, DYK, PROST, blood without a membrane over the elec- MOORE, O’MALLEY, REYNA, trode: Judges.
Circuit single disposable 1. A use electrode strip attachment signal read- Opinion for the court filed Chief circuitry of a out sensor to detect RADER, Judges Judge which Circuit representative current of the concentra- NEWMAN, LOURIE, LINN, MOORE, compound tion of a in a drop of a whole full, join REYNA in which sample comprising: blood Judge joins O’MALLEY in part Circuit V. a) elongated support having sub- Concurring-in-part dissenting-in- flat, stantially surface, planar adapted
part opinion Judge filed Circuit for releasable attachment to said read- O’MALLEY. circuitry; out Dissenting opinion filed by Circuit b) a conductor extending along first said BRYSON, Judge in which Judges Circuit surface and comprising a conductive ele- GAJARSA, DYK, join. and PROST ment for connection to cir- said readout RADER, Judge. Chief *7 cuitry; The United States District for Court c) an strip active electrode on said Northern District of California found U.S. electrical contact with said first conduc- 5,820,551 (“the No. patent”) Patent '551 positioned tor and to contact whole said unenforceable due to inequitable conduct. sample; blood Therasense, Becton, Inc. v. Dickinson & (N.D.Cal.2008) F.Supp.2d d) a along second conductor extending (“Trial ”). (now Opinion Therasense, Inc. comprising said surface a ele- conductive Inc.) Care, Abbott Diabetes and Abbott ment for connection to said read out “Abbott”) (collectively, Laboratories ap- circuitry; and peal judgment. This court vacates e) a reference in elec- counterelectrode and remands for proceedings further con- trical contact said second conductor opinion. sistent with this positioned and to contact said whole sample, blood
I said config- wherein active electrode is patent The '551 disposable involves exposed ured to said whole blood glucose blood test strips for diabetes man- sample without an mem- agement. intervening These strips employ electro- chemical sensors other filtering to measure the level of brane or whole blood glucose a sample of blood. When .... blood member whole at the (empha- brane for blood time of 13 1.29-col. 1.3 patent col. '551 added). blood,” important an invention. “Whole sis claim, con- means blood that
term evidentiary request, To meet Dr. including red components, all of tains submitted a to the Sanghera declaration cells. blood (“PTO”) U.S. Patent Trademark Office art, employed prior In the some sensors stating: the flow tive membranes tive membranes could not deal with diffusion-limiting membranes Fouling thirteen leading cose. Other cause terms: being protective membranes patent”), the mediator membrane surrounds “Live obviousness, electron transfer saw over U.S. Patent Abbott pass, multiple rejections glucose molecules.” Col.4 11.63-66. '382 blood” used active but not red “Optionally, occurs another years, Lawrence filed the the '551 slower patent specification glucose refers including electrode layers, when red blood cells stick permit live to the electrode. Protec- No. art sensors used mediators of blood to blood within a patent but Pope, both permeable to water blood, original application 4,545,382 original application rapid repeated rejections prevent and interfere with glucose molecules in the owned cells. preferably anticipation Abbott’s in 1984. Over electrode be- influx of enzyme to control by Abbott. protective (“the “fouling.” discussed the time following protec- body. when '382 glu- J.A. 7637. affidavit, represented: that an active eleсtrode used protective membrane was protective membrane lines [O]ne enzyme No. the '382 The membrane with whole blood sample read in view of the [O]ne sary. technical read as One guage ent [a] teaching phraseology. 4,545,382 to teach that whole blood optional. art skilled in the art would have not 63 to 65 ... with a whole blood skilled in the skilled in the art would not read at line 63 of column and mediator would patent] “optionally, continued Pope, disclosure of teaching optionally merely that the use a He would working examples, column of submitting but sample to believe [following art would but with a if it rather barrier preferably” of a comprising not, ['382 the use were was neces- whole blood U.S. sample.... Sanghera’s preferred. mere protective especially require have felt layer [4] samples patent] Patent to be of a pat- lan- a *8 Ab- attorney, Sanghera, Dr. Gordon and teaching suggestion is no There Develop- of Research and bott’s Director for use unprotected active electrodes ment, their the novel features of studied specimens with whole blood in '382 [the present to a new application and decided patent].... Pope presented for a new patent. reason J.A. 7645-46. a new to examiner based on claims the earlier, years prosecuting while require protective a Several sensor did pat- to European counterpart the '382 Pope for whole blood. asserted the membrane (“EP ent, 0 078 European the Patent EP would overcome distinction '636”), representations to the whose al- Abbott made patent, art '382 electrodes prior (“EPO”) regard- European Patent Office required protective membrane. legedly preferably” but “optionally, to the same requested ing an affidavit The examiner specification. language European required art a mem- the that the show said, distinguish a Ger- sor. Furthermore January On said Dl, required man reference labeled protective should prevent membrane membrane, diffusion-limiting Abbott’s glucose penetration, the molecules from argued counsel that their European patent “permeable” glucose the membrane is require a invention did not diffusion-limit- molecules. This teaches the skilled arti- ing membrane: that, san the [Dl membrane] whereas semipermeable the mem- Contrary to ... permeability must control the of the Dl, protective brane the membrane ... glucose purpose protec- the of the optionally glucose with the sen- utilized patent tive membrane in suit is patent sor suit is not [sic] not to control permeation controlling permeability sub- glucose very molecules. For this reason Rather, strate .... accordance with the sensor electrode as claimed does not patent column lines 30 33 of the (and have) must not a semiperme- suit: able membrane sense in the ofDl. “Optionally, preferably being when but (first added). emphases J.A. 6585 and third blood, protective used on mem- live enzyme brane surrounds both the and II layers, permeable mediator water 2004, Becton, In March Dickinson and glucose molecules.” (“Becton”) Co. sued Abbott the District See also claim of the in suit as seeking declaratory of Massachusetts granted according to which the sensor judgment noninfringement U.S. Pat- protective electrode has outermost (“the 6,143,164 ent patent”) Nos. '164 (11) permeable membrane to water and (“the 6,592,745 patent”). '745 Becton’s glucose Accordingly, molecules.... product was a glucose strip, blood test purpose protective membrane BD Strip. Test Abbott countersued Bec- suit, preferably used ton in the Northern District of California measurements, with in safety vivo is a alleging strip infringed Becton’s prevent measurement any course '164, '745, patents. and '551 The District of particles coming during [sic] use but off Massachusetts then transferred its case to not a permeability control the sub- the Northern District of California. Ab- strate. bott then sued Nova Biomedical Corp. added). J.A. 6530-31 (emphases (“Nova”), supplier, Becton’s in- alleging 23, 1995, May On European Abbott’s fringement of the patents asserted in Ab- patent counsel explana- submitted another suit against bott’s In August Becton. tion about Dl reference and EP '636. 2005, Abbott Bayer also sued Healthcare “Optionally, preferably being but when (“Bayer”), LLC that its alleging Microfill blood, used on a protective live mem- and Autodisc glucose strips blood infringed brane both enzyme surrounds the '551 and '745 patents. The Northern layers, permeable mediator to water District California consolidated all of the glucose molecules.” *9 cases. It is that this submitted disclosure is The district court granted summary unequivocally clear. The protective judgment of noninfringement of all however, assert- optional, membrane is ed claims in the and preferred patents. '164 '745 when used on live blood Therasense, Becton, order Inc. v. prevent larger to the Dickinson constituents & blood, Co., (N.D.Cal. 835, 854, particular the erythrocytes F.Supp.2d 560 880 2008). interfering with the electrode sen- The district also nearly court found from
1285
of a
patent
proved,
patent.
claims
'745
bars enforcement
the
of the
all of
asserted
Id. at
anticipation.
880. This judge-made
invalid due to
doctrine evolved from a
Supreme
applied
trio
Court cases
trial,
the
a bench
district
Following
the doctrine of unclean hands to dismiss
1-4 of
that claims
the
determined
court
patent
egregious
involving
cases
miscon-
invalid due
obvious-
patent
'551
were
Keystone
duct:
Driller
v.Co. General Ex-
patent
the '382
and
light of
U.S.
ness
Co.,
240,
146,
(“the
cavator
290 U.S.
54 S.Ct.
78
4,225,410
patent”).
'410
Patent No.
(1933),
L.Ed.
v.
1127.
293
Hazel-Atlas Glass Co.
Opinion at
The central issue
Trial
Co.,
238,
prior
Hartford-Empire
was
the
art
for obviousness
whether
322 U.S.
64
glucose
997,
(1944),
disclosed a
sensor
would have
L.Ed.
S.Ct.
88
1250
overruled
for
blood to a
without mеmbrane
whole
by
grounds
on other
Oil Co. v.
Standard
ordinary skill in the art. The
person
States,
17,
31,
429
United
U.S.
97 S.Ct.
50
found that
the '382
district court
(1976),
L.Ed.2d 21
and Precision Instru-
protective
“a
disclosed sensors
Manufacturing
ment
v.
Co. Automotive
optional
except
was
in all cases
membrane
Co.,
806,
324
Machinery
Maintenance
U.S.
blood,
case
case
live
in which
the
the
(1945).
65 S.Ct.
corrupt
patentee
investiga
between the
before and after
transaction
Hazel-Atlas’s
243-44,
prior
242-43,
at
S.Ct.
spoke
and the
user.
Id.
54
him.
tors
Id. at
64 S.Ct.
court
146. The district
declined
dismiss 997. After Hazel-Atlas settled with the
hands.
these cases for unclean
Id. On patentee,
patentee
paid
the
Clarke
total
Circuit reversed and re-
appeal, the Sixth
$8,000.
These
Id.
facts surfaced
the
manded with instructions
dismiss
suit,
later
United States Hartford-Em
The
af-
complaints.
Supreme
Id.
Court
(N.D.Ohio
1942).
pire
F.Supp.
46
541
247,
firmed. Id. at
146.
S.Ct.
Hazel-Atlas,
243,
1287
Instead,
also di-
Inequitable
conduct
818,
Automo-
PTO.
Atlas, Key- at 322 U.S. 64 S.Ct. re- development court’s stone, at 290 U.S. 54 S.Ct. More- does not quirement inequitable conduct over, “deliberately they all involved cannot) (and Court supplant Supreme carefully scheme[s] executed planned inequitable conduct precedent. Though but only the PTO also to defraud” cases, unclean developed these from Hazel-Atlas, courts. 322 U.S. supply hands remains available to doctrine As the conduct doc- S.Ct. 997. like egregious misconduct remedy from unclean hands trine evolved these Court cases. Supreme cases, scope a broader it came embrace emerged from As misconduct, only including egregious hands, intent to unclean the standards for acts of misconduct intended affirmative fluctuated deceive and courts but deceive both PTO has past, In the this court of information over time. the mere nondisclosure also *12 1288 meeting low
espoused
prosecuting attorney
patentee’s
standards for
from the
requirement,
finding
intent
it satisfied
litigation
Stephen
team. See
A. Merrill et
gross negligence
negli
based on
or even
al., Nat’l Research Council of the Nat’l
Cebalo,
See
gence.
Driscoll
731 F.2d Academies,
System
A Patent
the 21st
for
(Fed.Cir.1984)
(“Where
878,
they
885
(2004). Moreover,
Century 122
inequita-
knew,
known,
should
with
or
that the
ble conduct
cast
charges
a dark cloud over
be
to the
held reference would
material
patent’s validity
paint
paten-
and
consideration, their
PTO’s
failure
dis
as a
tee
bad actor.
Because
doctrine
proof
close the reference is sufficient
turpitude
pat-
focuses
the moral
the existence of an intent to
mislead
consequences
entee with ruinous
for the
PTO.”);
Orthopedic Equip.
v. All
Inc.
reputation
patent attorney,
his
dis-
Inc.,
Orthopedic Appliances,
F.2d
707
courages settlement and deflects attention
(Fed.Cir.1983)
1376,
(requiring
1383-84
from the
of validity
infringe-
merits
and
only gross negligence to sustain
finding
a
ment issues.
Paper,
Committee Position
intent).
This court has
previously
also
Inequitable
The Doctrine
Conduct and
adopted
using
broad view of materiality,
Duty
Candor
Patent Prosecu-
a “reasonable examiner”
based
standard
tion: Its
Impact
Current Adverse
on the
on the PTO’s 1977 amendment to Rule 56.
Operation
the United States Patent
See Am. Hoist & Derrick Co. v. Sowa &
74,
(1988).
System,
Q.J.
16 AIPLA
In-
75
Inc.,
Sons,
1350,
(Fed.Cir.
725 F.2d
1362
equitable
disputes
conduct
also “inereas[e]
(1977) (a
1984);
§
see also 37 C.F.R.
1.56
complexity,
duration
cost of pat-
and
reference material if “there
ais
substan
infringement litigation
ent
is already
tial likelihood that a reasonable examiner
complexity
notorious for
and high
important
deciding
would consider it
Appendix
cost.” Brief
and
of the Ameri-
application
whether
allow the
to issue
patent”).
can Bar
weakening
Further
show
Ass’n as Amicus
Curiae
ing
inequitable
needed
establish
con
most
Perhaps
importantly,
duct,
placed
this court
then
intent
remedy for inequitable conduct
is the
together on
scale.”
“sliding
patent
“atomic bomb” of
law. Aventis
Hoist,
Am.
teriality ... harms the effectiveness
and the courts. See
While
bribery
perjury); Keystone,
both
low standards for intent
246-47,
(bribery
U.S.
S.Ct.
inadvertently
many
led to
unintended
*14
evidence).
suppression of
them,
consequences, among
ad-
increased
judication
complexity,
cost and
reduced
Intent
sepa
and
are
settlement,
courts,
likelihood of
burdened
Roche,
requirements.
rate
Hoffmann-La
resources,
strained PTO
increased PTO
Promega
Inc. v.
Corp., 323 F.3d
1359
backlog,
impaired patent
and
quality.
(Fed.Cir.2003). A district court should not
tightens
court
This
now
the
standards
scale,”
a “sliding
use
where a weak show
finding
both intent and
in or-
may
of
ing
intent
be found sufficient based
der to redirect
doctrine that has been
a strong
materiality,
showing of
public.
overused to the detriment of the
Moreover,
vice versa.
may
a district court
solely
not infer intent
from materiality.
V
Instead, a
weigh
court must
the evidence
prevail
To
on a claim of inequita
of intent to
its
independent
deceive
of
anal
conduct,
ble
infringer
the accused
must
ysis materiality.
of
Proving that the appli
prove
patentee
the
acted with the
reference,
cant
knew of
should have
Star,
specific intent
to deceive the PTO.
known of materiality,
and decided not
Kingsdown,
537 F.3d at
(citing
1366
863
submit
to
prove
it
the PTO does not
876).
at
finding
F.2d
A
that the misrepre
Star,
specific
intent
deceive. See
537
sentation or
gross
omission amounts to
(“the
at
F.3d
1366
fact that
information
negligence
negligence
under a “should
later found material
was
disclosed can
have known”
satisfy
standard does not
not,
itself,
satisfy
deceptive
the
intent
requirement.
intent
Kingsdown, 863 F.2d
conduct”).
element of
involving
at
“In a
876.
case
nondisclosure
information,
clear and
evi
convincing
Because direct evidence of de
must
applicant
rare,
dence
show that the
ceptive
made
intent is
may
a district court
a deliberate decision to withhold a known
infer intent from indirect and circumstan
Molins,
material reference.”
48
at
F.3d
S.D.,
Mfg.
tial evidence. Larson
Co. of
added).
(emphases
words,
1181
In other
Ltd.,
Inc.
Aluminart Prods.
infringer
the
prove
accused
must
clear
(Fed.Cir.2009). However,
1340
convincing
evidence
applicant
that the
meet
the
convincing
clear and
evidence
reference,
knew the
knew that it was
standard,
specific
the
intent
to deceive
material,
and made deliberate decision to
single
must be “the
most
infer
reasonable
withhold it.
ence able to be drawn from the evidence.”
Star,
Indeed,
at
F.3d
the evi
requirement
This
of knowledge
de-
dence
require
“must be sufficient to
a find
origins
liberate action has
in the trio of
ing
deceitful intent in the
all
Supreme
light Court cases that set in motion
development
Kingsdown,
circumstances.”
F.2d
added).
cases,
Hence,
(emphasis
doctrine.
In each of
pat-
those
when there
entee acted knowingly
deliberately
are multiple reasonable inferences that
purpose
defrauding
drawn,
the PTO
bemay
intent to deceive cannot be
affidavits,
patentee
had submitted two
Corp. v. ICOS
See
Techs.
found.
Scanner
F.3d
Sys. Corp.,
falsely claiming
the invention had
Vision
(“Whenever
(Fed.Cir.2008)
prof-
evidence
production
used in the
of rubber
been
materiality or intent
either
fered
show
goods
only
in fact
test slabs of
when
rub-
multiple reasonable infer-
susceptible of
been
produced.
ber had
Id. Because
ences,
clearly
court
errs in over-
a district
was
misrepresentation
but-for
in favor
another
looking one inference
issuance,
patent’s
cause of
Court
inference.”).
This
equally reasonable
held that was immaterial and refused
court’s factual
the district
court reviews
extinguish
patent’s presumption
of va-
reasonable infer-
findings regarding what
lidity:
the evidence for
may be drawn from
ences
goods
Production of rubber
use or
Star,
F.3d at 1365.
error. See
clear
indispensable
grant-
sale was not
party alleging inequi
affidavits,
Because the
ing
patent.
Hence
proof,
reckless,
conduct bears the burden
table
though perhaps
were not
*15
any good
not
faith
“patentee need
offer
the
essentially
basis for it or
material to its
infringer
the accused
explanation unless
presumption
issue. The reasonable
of
in
provefs]
...
a threshold level of
first
by
validity
grant
furnished
the
convincing
by
tent
to deceive
clear
therefore,
seem to
patent,
would not
Star,
at 1368.
F.3d
evidence.”
destroyed.
for
good
explanation
of a
faith
absence
Although
at
Id.
48 S.Ct.
Corona
not,
withholding
does
a material reference
hands,
does
address unclean
the
Cord
not
itself, prоve intent
to deceive.
conduct, it
inequitable
to
demon-
precursor
unwillingness
the
extin-
strates
Court’s
to
VI
statutory
validity
the
of
guish
presumption
past,
the
this court has tried to ad-
In
patentee
misrepresenta-
the
a
where
made
inequitable con-
proliferation
the
of
dress
the
not
the
tion to
PTO
did
affect
charges
the intent stan-
by raising
duct
patent.
of
thus
issuance
the
Corona Cord
In
this court
Kingsdown,
dard alone.
supports
materiality
a but-for
standard
gross negligence alone
made clear that
conduct, particularly given that
inequitable
justify
not
an inference
enough
was
unenforceability
remedy
the severe
F.2d at 876.
intent
deceive.
far
mere
inequitable conduct
exceeds the
that “the involved
Kingsdown established
validity.
of presumption
removal
a
culpa-
sufficient
conduct ... must indicate
that,
gen
This court holds
as a
a
bility
finding
of intent
require
matter,
required
added).
eral
the
(emphasis
This
Id.
deceive.”
is but-for ma
standard,
alone,
inequitable
establish
standing
did
higher intent
teriality.,
an
fails to dis
applicant
number of
con-
When
not reduce the
PTO,
prior
prior
duct cases before
courts
did
art to the
art
close
problem
of mar-
cure
overdisclosure
if the
have
but-for material
PTO would not
To
ginally
prior
relevant
art to
PTO.
a
had it
aware of the
allowed
claim
been
concerns,
adjusts
these
this court
address
Hence,
assessing
art.
undisclosed
materiality.
as well the standard for
reference, the
materiality of a withheld
must
whether the PTO
court
determine
In Corona Cord Tire Co.
Dovan
have
if it
would
allowed
claim
had been
Court con-
Corp.,
Supreme
Chemical
reference.
of the undisclosed
aware
patentee’s
mis-
sidered
determination,
358, making
patentability
this
to the PTO. 276 U.S.
representation
(1928).
373-74,
apply
preponderance
L.Ed.
the court should
S.Ct.
...
give
standard and
claims
exerted
behalf
one
who
deceit
of the evidence
broadest
reasonable construction.
any
gained
their
unfair means has
an advan-
Examining
Patent
Proce-
added) (internal
See Manual of
tage.”) (emphasis
citations
(8th
(“MPEP”)
§§
ed.
dure
omitted). Moreover,
enforcement
an
2010).
Rev.8,
patentability
July
Often
injure
otherwise valid
does not
validi-
congruent
of a
will
claim be
misconduct,
merely
public
because of
lurk-
ty
properly
a claim is
determination —if
ing
prosecution,
in patent
somewhere
court based on the
invalidated
district
patent’s
was immaterial
to the
issuance.
reference,
deliberately withheld
then
Although but-for materiality
necessarily material
reference is
because
generally
proved
satisfy
must be
finding
invalidity
in a district court re-
evidence,
convincing
conduct,
quires
materiality prong
clear and
evidentiary
higher
burden than that used
recognizes
exception
court
However,
prosecution
even
PTO.
egregious
cases of affirmative
misconduct.
if a
district court doеs
invalidate
exception
general
requir
This
rule
deliberately
claim based on a
withheld ref-
ing
proof
but-for
incorporates elements of
erence,
may
the reference
be material if it
early
unclean hands cases before the
would
blocked
issuance under
Court,
Supreme
which dealt with “delib
evidentiary
the PTO’s different
standards.
erately planned
carefully
executed
§§
See MPEP
706 (preponderance of the
scheme[s]” to defraud the
and the
PTO
(broadest
evidence), 2111
con-
reasonable
*16
Hazel-Atlas,
245,
courts.
As an
ineq
gaged in
acts
egregious
affirmative
of
hinges
uitable conduct
basic
fairness. misconduct, such
an
filing
as the
of
un
remedy imposed by
equi
a court
“[T]he
affidavit,
mistakably false
the misconduct
ty should be
with
viola
commensurate
material. See
is
Rohm & Haas Co. v.
Penick,
tion.” Columbus Bd.
Educ. v.
Crystal
1556,
Chem.
722 F.2d
1571
465,
449,
2941,
443
S.Ct.
U.S.
99
61
(“there
(Fed.Cir.1983)
is no room to ar
(1979).
L.Ed.2d 666
Because
gue that submission of false affidavits is
(or
patent
an
renders
entire
even
material”);
Int’l,
see also
Ltd.
Refac
unenforceable,
a patent family)
as gener
1576,
Corp.,
v. Lotus Dev.
1583
rule,
only
al
this doctrine should
applied
be
(Fed.Cir.1996)
(finding the
intentional
in instances
the patentee’s
where
miscon
employment
omission of declarant’s
duct resulted in the unfair benefit
re
company
inventor’s
rendered the affidavit
Star,
an
ceiving
unwarranted claim. See
inherently
false and that
are
“[a]ffidavits
(“[j]ust
537 F.3d at
it
1366
is inequitable
material”).
all,
patentee
After
is un
permit
to
a patentee who
his
obtained
likely
go
great
lengths
to
to
to deceive
through
misrepresenta
deliberate
the PTO with a
it
falsehood unless
be
tions or
omissions material information
lieves
the falsehood will affect issu
patent against others,
enforce the
it is
patent.
247,
ance of the
See id. at
64
also
to strike down an entire
(pointing
patentee’s
S.Ct. 997
out
patentee
only
where the
committed
lawyers
“went
considerable trouble and
missteps
minor
or acted with
cul
minimal
expense” to manufacture false evidence
all,
pability”). After
patentee
obtains
they
it
because
believed was needed to
advantage
no
pat
from misconduct if the
patent).
obtain issuance of the
Because
ent would have issued anyway.
Key
See
stone,
245,
(“The
neither mere nondisclosure of
art
U.S. at
1295
Corp.
v.
Sony
56
See
Am.
right.
Rule
Because Rule
Univ.
prong of
second
of
Studios, Inc.,
417,
materiality, adopt-
439,
464
104
City
low bar
U.S.
sets such
inevitably
(1984)
774,
result
(finding
this standard would
coming the obviousness over the dissenting and part part. if had '382 Abbott disclosed the EPO briefs. Patent practitioners call regularly court provide guidelines. this clear
The district court intent found They seek to know under good precisely deceive based on the absence what of a failing faith explanation governing principles to disclose the circumstances will be However, EPO briefs. Id. at 1113-16. applied, precisely they how will be “patentee any good need not offer faith applied. precision While may be in the explanation infringer unless accused patent practitioners do, nature of what prove[s] first ... a threshold of in level defining the desire for rules in the scienti- tent convincing to deceive clear and understandable, fic world the law does not Star, evidence.” 537 F.3d at always lend itself to such precision. In- upon district court also relied the “should deed, dealing when application negligence known” in reach standard remedies, equitable principles and the law ing finding Opin intent. See Trial imprecise by design. ion (“Attorney at 1113 Pope knew or I understand and admire majority’s should have known that the withheld infor to respond practitioners’ desire calls for highly mation would have been material to precision clarity. I also understand examiner”). Because the court district perceived its concern with litigation abuses did not find intent to deceive under the surrounding assertions of con- knowing and deliberate standard forth set believe, however, I duct. mаjority that the opinion, this court vacates the dis call responds to that and addresses those trict court’s findings intent. Id. at ways concerns fail to acknowledge remand, 1113-16. On the district court and remain true the equitable nature of should determine whether there clear doctrine seeks to cabin. convincing demonstrating evidence that Sanghera Pope knew of the EPO respectfully I dissent from those por- briefs, knew of materiality, their and made majority opinion tions which de- the conscious decision not to them disclose scribe the test it directs lower courts to in order to deceive the PTO. apply assessing materiality and which *20 reasons,
For the vacates and foregoing court remands for further inquiry this the district finding ineq- materiality vacates court’s the of determinations made uitable conduct and remands for further district the court this case. As ex-
1297 below, jority I in the of and the other dissenters. This is so remainder concur plained because, addressing types when the of con- judgment. and majority’s decision that duct should be deemed of sufficient
I. a finding inequita- concern allow for of conduct, majority’s majority decision ble both the and dissent I concur judgment impose strain too hard to hard and fast of vacate and remand rules. court with instructions reconsid- district Spe- of conduct. finding inequitable
er its
jurisdiction
equity
“The
of
has
essence
court under-
cifically, because the district
been the
of the Chancellor to do
power
governing
standably referred to standards
to mould each decree to the
equity and
from
determination drawn
our
intent
its
particular
case.”
necessities of
Wein
law,
court
district
should be
prior case
Romero-Barcelo,
305,
berger v.
456 U.S.
assess, in
first
opportunity to
given
(1982)
1798,
312, 102
72
91
S.Ct.
L.Ed.2d
evidence,
instance,
and its
whether the
Bowles,
321,
(quoting
v.
Hecht Co.
321 U.S.
determinations, support a find-
credibility
(1944)).
329,
587,
64 S.Ct.
proposed by colleagues. but, applicants possible, so, ent in doing that, may disregard we majority equitable
While despite states nature inquiry Thus, of the at adopts, hand. we must strictures test it “the that, clear unclean make while we believe hands doctrine the test remains available remedy encompasses virtually we offer all supply а for forms of egregious miscon- duct conduct sufficient to a finding like that warrant Supreme Court cases,” conduct, inequitable open we pos- statement does not address leave express Maj. sibility some Op. concerns I here.3 form of intentional mis- Since, painstak- currently 1287-88. as the conduct we do majority envision ingly explains, the inequitable equitable doctrine of could warrant relief. ap- This conduct we are defining grew, proach respects Supreme out those Court’s rec- cases, “unclean hands” ognition asserted dichot- equity courts of “exercise See omy is a one. Consol Alumi- false judgment light prior precedent, but majority responds 2. The supplant this characteriza- simply very unclean hands could tion, general opin- criticism in this allegations inequitable majori- conduct ion, defining broadly its test more ty seeks curb. acknowledging degree flexibility within that, applaud four corners. For I spectrum, 4.At other end of the the dis- think, however, majority. I do not that this acknowledgement sent’s that a district court explanation additional sufficient address inequita- retains discretion to to find decline expressed opinion. all of the concerns in this ble conduct even in the face of evidence of I propose remain of the view that I the test similarly and intent is insufficient here is the consistent most with the doctrine’s the unyielding to undercut nature of the test origins. adopts. clearly conduct It allow, instance, Indeed, language finding does not for a raises some additional concerns. If "unclean hands” remains avail- for conduct not encom- misconduct, charges able passed by in cases PTO Rule 56.
1299
statute,
equita
nor
with the
consistent
specific
the fact that
of
with awareness
Accordingly,
of
I
ble nature
the doctrine.5
circumstances,
predict in ad-
hard to
often
that,
cases
would overrule those
and hold
in
vance,
special
warrant
treatment
could
discretion, a
in the exercise of its
district
Florida,
Holland v.
an
case.”
appropriate
—
may
render
than all
choose to
fewer
court
2549,
-,
2563, 177
130 S.Ct.
U.S.
unenforceable, may simply
claims
dismiss
(2010).
L.Ed.2d 130
it, may
action before
or
fashion some
flexible nature of
with the
Consistent
remedy, so
long
other reasonable
as
moreover,
should
jurisdiction,
we
equity
court
remedy imposed by the
is “commen
determining
proper
that
recognize
Bd.
surate with
violation.” Columbus
of
given
a
instance
remedy for
Penick,
449, 465, 99
Educ. v.
443 U.S.
of
the discretion of district
is within
conduct
2941,
(1979);
also
III.
firm
integrity
conviction that
the
of the
process
application
PTO
as to the
at issue
provide guidance
To
district courts to
wholly
was
In adopting
undermined.
such
aid in the
their discretion in
exercise
test,
confirm,
I also
we should
believe
as
inquiries beyond
inequitable conduct
—
above,
explained
equitable
nature
“any
Supreme Court’s direction
willful
of the doctrine demands that this
pro-
test
concerning
act
the cause of action which
firm
guidance only
guidancе—
vide
rightfully
transgress equita
can
be said
—albeit
respect
to district courts with
to the exer-
is sufficient
ble standards of conduct
cause
cise of their
in the
by
ineq-
for the
of the maxim
discretion
face of
invocation
chancellor,”
Mfg.
Instrument
uitable conduct
Precision
claims.
Co.,
Co. v. Auto. Maint. Mach.
324 U.S.
ably
For the
by
reasons
articulated
806, 814-16,
65 S.Ct.
where: but for conduct las, the article in question present- was not the form an affirmative act or through ed to the PTO affidavit. 322 non-disclosure), intentional the patent 240-41, tests, U.S. 64 S.Ct. Both (as would not have issued Chief Judge moreover, fail to allow room to address Rader explains concept majori- in the beyond conduct their contours which equi- (2) ty opinion); constitutes a ty ignore. should not representation false or misleading of fact (rendered so either because the statement IV. made is false on face or information is Applying propose, I any the test or rea- which, known, omitted if would render the sonable test for representation (3) comports or misleading); false with Supreme precedent, district court finds that I the behavior Court would is so offensive that court is left with a affirm the finding district court’s that the opine
which I do not deception. courts would to address that of intentional form —district remedy have discretion to fashion some lesser case This unlike the situation where a ref- of information nondisclosure Indeed, already I the omis- erence before an believe examiner was material. as material under the who can his or her own qualify here draw conclusions sions plus” standard and as to it teaches majority’s “but-for what and is able to that, accepting gov- that test spin even discount offered counsel. See standard, Labs., on the Innogenetics, a remand issue erning N.V. v. Abbott necessary (Fed.Cir.2008). nor appro- is neither F.3d Al- *24 priate. though in- key sentence itself was Shay, inquiry deed before Examiner note, As the other dissenters whether point had shifted to a extrinsic evi- glucose art that sensors prior taught is, Shay dence. That Examiner had ac- used to whole blood without could be test quiesced Attorney Pope’s request to to key a was focus protective membrane resort evidence to extrinsic to show patentability inquiry. PTO examiner’s sentence would been under- to submit ex- requesting permission After by differently stood skilled artisans than response rejection to trinsic evidence suggested. its Having words received PTO, submitted sworn from the Abbott evidence, permission supply to extrinsic Dr. expert from its Gordon declaration duty-bound Attorney Pope pres- was Sanghera accompanied statements any ent inconsistent extrinsic informa- Pope. counsel Lawrence Both from its tion him. known to the arena of representations to the examiner contained evidence, extrinsic un- examiner was to be regarding they alleged ap- what able to way fend for himself. He had no understanding pri- of the critical propriate what, any, contrary if extrin- knowing reference which the examiner or art with things, they Among concerned. other sic information had been left out of the was unequivocally Sanghera that one skilled asserted declaration. He was com- prior art would have read the art pletely dependent Attorney Pope on say protective that use membrane Sanghera fully any Dr. ex- disclose was samples optional. information, con, whole blood pro with trinsic known from these declarations was the point Omitted them on the factual covered contrary rep- made fact Abbott had the submission. on matter
resentations this same Id. The district court’s conclu- (“EPO”) in con- European Patent Office thorough They sions were and correct. prosecution nection with the earlier of a should be affirmed. There, Ab- European application. V. represented “unequivocal- it was bott prior language art ly clear” the same I do weigh policy debate was, that the membrane protective meant majority between the and the dissenters. fact, optional. There are merits to concerns ex- each, they pressed by may be rele- The district court concluded that these vant, in varying degrees, to the exercise “highly nondisclosures were material” be particular a court’s in a case. discretion “they precise on the cause centered sen cannot, however, Policy justify concerns question prior art tence refer [in adopting legal that di- ence], broad standards taught.” what meaning Therasense, Becton, verge explicated by from the Su- doctrines Inc. v. Dickinson & (N.D.Cal. provide A immut- preme Court. desire F.Supp.2d 2008). guidance parties able to lower courts and specifically, More the district court similarly justify is not sufficient to found: equitable an doc- disclosure” in order to avoid attempt court’s to corral the risk trine with neat tests. of an rendering all claims otherwise valid patent unenforceable because of the omis- are To the extent there concerns with sion marginally of some relevant reference. litigation surrounding improper abuses result, As a have frequently examiners doctrine, important use of this otherwise been an art swamped excess of there are vehicles available the district references little having relevance to court to address those concerns. Careful applications them. application before pleading requirements Exergen Corp. forth in v. Wal-Mart set traced, can problems These at least Stores, Inc., (Fed.Cir.2009), in part, uncertainty to doctrinal on three early management techniques case de points: First, what standard of intent signed unsupported to ferret out and test in assessing allega- should be applied claims, stay orders to *25 tion applicant rep- that an has made false discovery or consideration of such claims or failed to resentations disclose material pending all other determinations in the Second, facts to the PTO. what standard sanctions, case, or even are all tools dis be applied should to such trict employ appropriate. courts can where misrepresentations or nondisclosures. reasons, I For these concur in in part Third, “sliding whether there should be a part and dissent in from decision the scale” a strong showing under which today. majority announces I would leave either materiality or intent should be able to district courts the discretion apply to make weaker up showing for a on the equitable doctrine to the unique cir- other element. they cumstances with presented, are agreement There is substantial as to while them to in encouraging keep sight proper resolution two of those three obligation guard against their abuses of First, parties issues. to this and case it. agree
most of the
that proof
ineq-
amici
BRYSON,
Judge,
Circuit
with whom
require
showing
uitable conduct should
a
GAJARSA, DYK,
PROST,
Circuit
specific
PTO;
neg-
intent to deceive the
Judges, join, dissenting.
ligence,
negligence,
gross
even
should
Second,
enough.
parties
be
I
agree
most of
party
the amici
that a
invok-
There is broad consensus that the law of
ing
inequitable
defense
conduct
in
inequitable conduct
an unsatisfactory
prove
required
should be
both specific
adjustment.
state
needs
In recent
materiality by
intent and
clear and con-
years, differing
ap-
standards have been
evidence;
vincing
there should be no “slid-
in
plied
determining
particular
whether
ing scale”
a
whereby
strong showing
toas
conduct
inequitable
rises to the level of
one
up
element can make
for
proof
weaker
patent
conduct sufficient to render a
unen-
as to the other.
forceable. That
uncertainty
doctrinal
has
However,
remaining
on the
issue—the
had
consequences
adverse
both for
proper
apply
determining
standard
litigation
for
In litigation,
the PTO.
whether
sufficiently
the conduct
issue is
counterclaims of inequitable conduct have
material to
render
suit unen-
many
been raised
too
cases and have
sharp disagreement.
forceable—there is
PTO,
proved difficult to resolve.
In the
disagreement
That
is what divides the
lack
a
clear and uniform standard
majority
court in
The
inequitable
this case.
pat-
conduct has led some
takes
prosecutors
position
ent
to err
the side of “over-
nondisclosures should
a
culpability
require
indicate sufficient
sufficiently
trigger
material to
deemed
if,
intent to deceive.” Id. at 876.
only
finding
had
inequitable
defense
disclosed, the
question
been
matter
court
Kingsdown
did not find
pat-
not have obtained
would
applicant
necessary
proper
to address the
standard
however,
sig-
marks
position,
That
ent.
determining materiality, because that
and,
believe,
departure
I
unwise
nificant
addressed in earlier cases.
issue had been
Since its
precedents.
court’s
from this
Kingsdown,
five-judge
years
Four
before
has looked to the
days, this court
first
&
v. Lex
panel opinion
J.P. Stevens Co.
rule,
56, 37 C.F.R.
Rule
PTO’s disclosure
(Fed.Cir.1984),
Ltd.,
1.Inequitable 9(b) requires proof, conduct apply R.Civ.P. to counterclaims in- by evidence, clear convincing conduct, equitable requiring detailed factu- important 1359, 1. distinguish It is (Fed.Cir.2007); between relax- Ferring 1366 B.V. v. ing required proof proof Labs., of intent Inc., if 1181, Barr F.3d 437 1190-91 strong, impermissible, which is (Fed.Cir.2006); GFI, Corp., Inc. v. Franklin opposed considering degree of mate- 1268, (Fed.Cir.2001); 265 F.3d Paragon 1274 intent, riality as relevant issue of Lab., Labs., Inc., Podiatry Inc. v. KLM 984 appropriate, particularly given that direct 1182, (Fed.Cir.1993); F.2d 1189 Merck & Co. intent, evidence of such as an admission of Pharmacal, Inc., Danbury v. 873 F.2d deceptive purpose, is seldom available. See (Fed.Cir.1989). Foods, Ltd., Cargill, Inc. v. Canbra 476 F.3d merely plead unpatent claims would have been found and not notice al averments claims. Such respect to such able. This is not a tweak to the doctrine ing with likely to dis requirements conduct; are pleading inequitable it is fundamental Ex counterclaims. See courage baseless change would have the effect elimi Stores, Inc., 575 Corp. v. ergen Wal-Mart nating independent role of the doctrine (Fed.Cir.2009). Third, 1312, 1326-29 F.3d inequitable conduct as to disclosure obli that lack inequitable conduct assertions in limited gations except circumstances. can controlled legal support be factual and rejected repeatedly This court has the “but of-the through application courts by trial in light for” test as too restrictive provided by Fed.R.Civ.P. sanctions inequitable conduct policies served held, repeatedly this court Finally, as has Danbury doctrine. See Merck & Co. v. inequitable conduct is an the doctrine of Pharmacal, Inc., (Fed. 1418, 1421 F.2d doctrine, and even when the ele equitable Cir.1989); L.P. see also Purdue Pharma v. of intent and are satis ments Inc., Endo Pharms. 438 F.3d fied, court to it remains for the district (Fed.Cir.2006); Hoffmann-LaRoche, Inc. determine, equitable in the exercise of its Promega Corp., v. 323 F.3d whether, “in all the judgment, light of (Fed.Cir.2003); Textron, Molins PLC circumstances, the conduct of particular Inc., (Fed.Cir.1995); 48 F.3d 1179-80 culpable that its patentee is so Burroughs Corp., A.B. Dick Co. v. LaBounty Mfg., enforced.” should (Fed.Cir.1986). F.2d Those Comm’n, Trade Inc. v. U.S. Int’l policies dictate that it should continue to (Fed.Cir.1992). 1066, 1070 do so. problem of “over- regard With persuasively argues As the PTO in its marginally numbers of large disclosure” of brief, amicus the “but for” standard for relevant references the course materiality is too restrictive to serve the in its amicus brief prosecution, the PTO purposes that the doctrine of judicial confidence that strict expresses designed promote. conduct was If a convincing” “clear and adherence to the failure to disclose constitutes infringers which accused must standard only a proper when disclosure prove specific intent to deceive the PTO claim, rejection result in of a there would largely problem. Since the will solve applicants little to be *28 will be incentive directly problem of over-disclosure affects PTO, with the because in most candid PTO, there is no reason not to credit the inequitable instances the sanction of con- tightening that a the PTO’s assertion apply only will if the claims that issue duct inequitable the intent element of the con- anyway. example, are invalid For under duct doctrine should be sufficient to ad- materiality, appli- the “but for” test of that a problem dress the drastic modi- considering cant whether to disclose facts only element not fication possible prior about a use of the invention contrary required, but would be is not little reason to disclose those would have in the interest efficient examina- PTO’s applicant the PTO. If the re- facts to tions. use, prior pat- mained silent about the the II issued, prior ent and the use was never discovered, applicant would benefit majority The holds that a failure to dis- But even if the from the nondisclosure. pur- information is “material” for close litigation, prior during use was discovered only conduct if it satis- poses inequitable failure to disclose would be held to test; i.e., for” the conduct fies the “but conduct, if that, only for the constitute must be such but addition, period relevant within that of time. rendered the prior use otherwise applicant rarely would thus that it explains claims invalid. the PTO has access concealing prior use nothing by lose regarding inequitable to relevant facts con- PTO, he would not be at because from duct, investigative it lacks re- because enforce an other- right losing risk of result, sources. As a the PTO has con- patent. wise valid cluded that a court is the best forum alleged which to consider breaches of the situation, if particularly op- In that duty inequi- disclosure the context of an patent a valuable is at to obtain portunity table conduct defense. See Patent and stake, be no inducement there will Implementation Office forthcoming. appli- If the Trademark applicant to be 1.56,1095 misleadingly § art or Gaz. Pat. & cant withholds C.F.R. Off. Trade- succeeds, (Oct. 11,1988). matters and particular discloses mark Office that would not have he obtains Ill Even if the nondisclo-
issued otherwise.
dis-
misleading
sure or
disclosure
later
infirmities,
practical
from its
Aside
covered,
majority’s
ap-
under the
rule the
adopted by majority
“but for” standard
off,
as the
will
plicant is no worse
duty
is inconsistent with the
that the Su-
only
lost
if the claims would otherwise
be
preme Court and the PTO have both de-
be held invalid. So there is little
lose
applying
pat-
scribed as
who seek
those
of deceit.
It
no
by following course
ex parte application process.
ents
profes-
uprightness
indictment of the
patent applicants
prosecu-
sionalism of
A
group
say
they
as a
should not
tors
The doctrine
conduct has
subjected
system
an incentive
be
such
origins
trilogy
Supreme
in a
Court
all,
long
recog-
that.
been
After
has
dating
decisions
back to the 1930s. The
may
open
tempt
nized that “an
door
cases, Keystone
first of the three
Driller
large
saint.”
stakes sometimes
Given
Co. v. General Excavator
290 U.S.
patent prosecutions,
regime
issue
(1933),
54 S.Ct.
1307
244,
in
rule.” 322
at
complaints
the
those cases.
U.S.
S.Ct. 997. The
dismissal of
determination,
the Court
reaching
In
Court found
standard to be satisfied
necessary
find it
to decide whether
did not
on the facts before it.
plaintiff
that the
evidence of
use
the
response
argument
have had the effect
suppressed
had
would
in question
article
was not “basic” to the
patent.
enough
It was
invalidating
in litigation,
Supreme
issues
Court
conduct had “immediate
improper
that the
stated that the circumstances did not “call
necessary
equity
relation to the
[that
attempted appraisal.”
for such an
patentee sought]
respect
of the mat-
U.S. at
997.
S.Ct.
The Court
litigation.”
ter in
290 U.S.
54 S.Ct.
explained: “Hartford’s officials and law-
yers thought
the article material. They
later, in
A decade
Hazel-Atlas Glass Co.
persuade
conceived it in an effort to
Hartford-Empire
U.S.
grant
hostile Patent Office to
their patent
(1944),
L.Ed. 1250
the Su-
S.Ct.
application, and went to considerable trou-
preme
again
Court
held
unen-
expense
get
published.”
ble and
it
Id.
forceable,
in part
this time
because of mis- The
Court added
Hartford’s fraud
Patent
by
patentee
before the
“had its
genesis
plan
publish
an
obtaining
patent.
paten-
The
Office in
article
purpose
for the deliberate
of deceiv-
tee,
to issuance of
encountering resistance
ing the Patent Office.... Had the Dis-
Office,
arranged
the Patent
trict Court learned of the fraud on the
an
publication
for the
article
a trade
original infringement
Patent Office at the
publication that described the invention as
trial, it would have been warranted in dis-
in the
The
a remarkable advance
field.
missing Hartford’s case.” Id. at
product
to be the
of a
purported
article
Significantly,
S.Ct. 997.
the Court did not
party,
though
disinterested
even
was
regard the issue of Hartford’s conduct as
actually
patentee’s
written
one of the
turning on whether the fraudulent conduct
lawyers.
patent ultimately
The
issued.
was the
for” cause of the issuance
“but
court,
was also used in
where it
The article
patent.
The Court stated that it would
patentee
obtaining
a favor-
assisted
have come
if
to the same conclusion even
judgment
appellate
able
from
court.
fraudulently pro-
the statements from the
patentee subsequently
went to consid-
actually
cured article were
true.
Id. at
lengths
erable
to ensure that
the truth
247,
would not
The efforts at conceal-
stead, the Court focused on the patentee’s
failed, however,
in-
ment
and the accused
deceiving
purpose
“deliberate
the Pat-
sought
fringer
relief
the lower court
refusing
ent Office” as the core reason for
on the misconduct.
based
patentee’s rights
pat-
to enforce the
in the
Because the misconduct was discovered
ent.
expiration
after the
of the term of court
later,
A year
Supreme
again
Court
during
judgment
question
which the
was
addressed the issue of the effect of miscon-
entered,
Supreme
invoked the
Court
during proceedings
duct
before the Patent
fraud,
of after-discovered
doctrine
subsequent patent
Office on
enforcement
judgment
permitted
court
revisit
*30
case,
actions in court. That
In-
Precision
even after the end of the term in which it
entered,
Manufacturing
strument
Co. v. Automo-
if
was
the circumstances “are
Machinery
tive Maintenance
324 U.S.
sufficiently gross
deemed
to demand a de-
(1945),
Shortly
Key-
after the decisions in the
Hazel-Atlas,
stone,
knowledge
persons
of skill
the art
and Precision Instru-
cases,
Supreme
question.
made a
the field
Some
these facts
ment
Court
directly
uniquely
on will be
in the hands of the appli-
further observation
bears
Keystone-Hazel-Pre
ground.
asserted claims on that
Id. at
2. Two decades before
trilogy,
Supreme
cision
Court considered
S.Ct. 380.
during pros
misstatements made
Although
majority
sup-
the effect of
cites Corona as
validity
on the
of a
on a meth
port
ecution
interpretation
for its narrow
of the mate-
vulcanizing
conduct,
Corona Cord Tire
od for
rubber.
riality requirement
Corp.,
Co. v. Dovan Chem.
276 U.S.
little
Corona is of
relevance to that
issue.
(1928).
B
light
parte
at
In
of the ex
F.2d
793.
defined the disclosure obli-
The PTO has
patent prosecution,
nature of
number
patent prose-
in
those involved
gation for
filed,
capaci-
and the limited
applications
of
the PTO has
in its Rule
cutions
ty of the PTO “to ascertain the facts nec-
statutory authority
under its
promulgated
essary
adjudge
patentable
merits of
“govern
that
regulations
to establish
that
application,”
each
the court stated
proceedings
the Office.” 35
conduct of
honesty
“highest standards of
and candor
2(b).
§
Rule 56 was first
U.S.C.
When
part
applicants presenting
on the
of
such
portion
promulgated
necessary
...
facts to the office are
ele-
inequitable conduct
rule that addressed
working patent system.”
ments in a
Id. at
fraudulently
provided
“any application
reason,
approved
794.
the court
For
any
filed or in connection with which
fraud
expansion
types
of the
“the
miscon-
practiced
attempted
on
Patent
applicants
penal-
duct for which
will be
Office,
§
may be stricken.” 37 C.F.R.
1.56 ized.” Id.
(1950).
light
policies,
In
of those
the court ex-
Ap-
of Customs and Patent
Court
plained
that the test for
“can-
construed the PTO’s disclosure rule
peals
applied
narrowly
not be
too
if the rela-
Curtiss,
in Norton v.
its 1970 decision
tionship of confidence and trust between
F.2d at 779. The court
that case
applicants and
Patent Office is to have
authority
upheld the Commissioner’s
any
meaning,”
findings
real
and that
for fraud on the
patent application
strike
materiality should not be limited to those
in violation of the PTO’s Rule 56.
PTO
facts,
they
cases in which the true
if
had
Interpreting the term “fraud”
Rule
known,
likely
pre-
been
“would most
began by noting
the court
the term
particular
vented the allowance of the
should not be limited to the kind
fraud
claims at issue.” 433 F.2d at
In
795.
independently
would be
actionable as
cases,
such
the claims at
issue “would
(whiсh
a tort or crime
the court referred to
invalid,
event,”
any
probably be
and the
fraud”).
Instead,
as “technical
the court
question
whether
was unen-
explained that “fraud” as used in the Rule
really
secondary
“would
forceable
‘inequitable’
“a
range
included
wider
importance.”
Accordingly,
Id.
the court
justify holding
pat-
conduct” that would
proper interpretation
concluded that a
Defining
ent
at
unenforceable.
Id.
element must include fac-
broadly
purpose
fraud more
for the
patentability
tors other than the
of the
ruled,
justified,
Rule 56 was
the court
be-
issue, including
subjective
“the
claims
“applicants
cause
before the Patent Office
considerations of the examiner and the
being
relationship
are
held to a
of confi-
applicant.” Id.
agency.
dence and trust to that
The indi-
substantially
the PTO
revised
expansion
concept
cated
of ‘fraud’
the disclo-
explicit
Rule 56 to make more
attempt
manifests
the courts to
relationship meaningful.”
obligations imposed
patent appli-
make this
Id.
sure
*33
Examining
Appeal
patent.”);
to issue as a
cants.
Patent
Halliburton Co. v.
43,729, 43,730
Procedures,
Fed.Reg.
41
1435,
Schlumberger
Corp.,
Tech.
925 F.2d
1976).
4,
The 1977 ver-
(proposed Oct.
(Fed.Cir.1991) (“Information
1440
is mate-
imposed
“duty
rule
of can-
sion of the
rial if there is ‘substantial likelihood that a
faith” on those involved in
good
dor and
reasonable examiner would consider it im-
prosecution
patent
or
preparation
portant
deciding whether to
allow
required
them “to
applications
dis-
”)
application
patent.’
(citing
to issue as a
they
information
are
close to the Office
56).
the 1977version of PTO Rule
is material
to the exami-
aware of which
ensuing years,
In the
reg
court has
application.”
nation of the
The rule de-
ularly referred to the “reasonable examin
fined information as “material” if there
er” test as the standard for measuring
“a
likelihood that a rea-
was
substantial
raising
in cases
ineq
claims of
would consider it im-
sonable examiner
See, e.g.,
uitable conduct.
Golden Hour
portant
deciding
whether to allow the
emsCharts, Inc.,
Sys.,
Data
Inc. v.
614
application
patent.”
to issue as a
1367,
(Fed.Cir.2010);
F.3d
1373-74
Levi
creation,
Shortly after this court’s
Mfg.
ton
Co. v. Universal Sec. Instru
began addressing inequitable con
court
ments, Inc.,
(Fed.
1353,
606 F.3d
1358-59
claims raised in the course of
duct
Cir.2010); Astrazeneca
LP
Pharms.
outset,
litigation. From the
infringement
Inc.,
766,
Teva Pharm.
583 F.3d
773
USA
to the PTO’s Rule 56 as
the court looked
(Fed.Cir.2009);
Prods.,
Dayco
Inc. v. Total
standard for the
setting
appropriate
Inc.,
Containment,
1358,
329 F.3d
1363
inequi
doctrine of
materiality prong of the
(Fed.Cir.2003)
cases).
(citing
Under that
Am. Hoist
table conduct. See
& Derrick
test,
Inc.,
consistently
the court has
Sons,
1350,
ruled that a
725
Co. v. Sowa &
F.2d
(Fed.Cir.1984) (“The
false statement or
may
PTO ‘standard’
nondisclosure
for
appropriate starting point
any
is an
material
purposes
for
of an
materiality”;
discussion of
failurе to satis
conduct determination even if the inven
fy
obligation,
that disclosure
combined
question
tion in
would
patent
otherwise be
PTO,
with an intent to deceive the
can
See,
Control,
e.g., Digital
able.
Inc. v.
unenforceable);
render a
J.P. Ste
Works,
1309,
Charles Mach.
437 F.3d
vens,
(adopting
nation by the position with or refutes a taken claim; of a unpatentability 56(b)(2) facie case Rule applicant before the office. or clearly beyond a “but for” test and is goes (2) with, refutes, dispute inconsistent in this It or is therefore the focus takes in: position applicant case. (i) argument unpa- Opposing an adopted At the time it the 1992 revision Office, by
tentability relied
possi-
to Rule
the PTO considered
(ii) Asserting
argument
patenta-
an
bility
adopting a “but for” test of mate-
bility.
majority
that
riality of the sort
has
today.
rejected
The
that
adopted
Office
56(b) requires
Rule
part
The first
test,
a nar-
concluding
adopting such
that,
information
at
applicant
provide
row standard “would not cause the Office
supple-
or further
explanation
least absent
to obtain the information it needs to evalu-
mentation,
compel
would
the conclusion
patentability
may
decisions
ate
so
unpatentable.
Thе
the invention
presumed
by
correct
the courts.” The
explains
“prima
rule
that a
facie case
if
PTO added that
it did not have the
“when the
unpatentability” is established
information, “meaningful examina-
needed
that a
compels
information
a conclusion
patent applications
place
tion of
will take
unpatentable
prepon-
claim is
under the
infringement
for the first time
case
evidence, burden-of-proof
derance of the
Duty
before a district court.”
of Disclo-
standard, giving each term its broadest
sure,
Fed.Reg.
at 2023.
consistent with the
reasonable construction
any
consideration
specification,
before
change,
In the aftermath of that
this
may
given
to evidence which
be submit-
frequently
court has
treated the PTO’s
contrary
attempt
ted in an
to establish a
setting
of the rule as
forth the
new version
patentability.”
adopting
conclusion of
proper
materiality,
standard for
cases
rule,
explained
that it intend-
PTO
of failure to disclose mate-
involving claims
references,
applicants
ed for
to submit
information,
applications
rial
at least for
aware,
they
were
that would render
processed
Indepen-
after 1992. In Bruno
pending
unpatentable
claims
over the
Aids,
Living
Mobility
dent
Inc. v. Acorn
Rules,
Proposed
Fed.Reg.
references.
(Fed.Cir.
Services, Ltd.,
4. The that the "but for” test see 2009), (Supp. provision that was not copyright Ill but applied is in both and trademark applicable presumption copy- the registration. made To law to claims of fraudulent 410(c), context, § right validity U.S.C. set forth in 17 contrary, copyright the in the courts subject pre-2008 which remains to the stan- rejected have the "but for” test in favor of Copyright dards. See 2 Nimmer on registration that a federal will be invali- rule 7.20[B][1], 7-212.4(2) § at n. 25.2. willfully or dated if the claimant misstates that, known, trademarks, “might deciding to state a fact if true that in fails As for is rejection application.” the will occasioned a whether fraud on PTO result the 859, register, Update, the 736 F.2d cancellation of a mark on federal Eckes Card Prices added); (2d Cir.1984) (emphasis apply materiality. see courts a "but for” test of 861-62 See, e.g., Express Trading generally 2 & David Nim- Orient Co. v. Federat- Melville B. Nimmer 7.20[B][1], Stores, Inc., (2d mer, Copyright Dep’t § at 7- ed 842 F.2d Nimmer on (rev. 2010) ("If Cir.1988) 4(1) (defining that ed. the material fact as "one & n. 21 wilfully have affected the action on the or fails to state a would PTO’s claimant misstates that, known, Citibank, applications”); might the N.A. v. Citibanc fact if have caused Inc., (11th reject application, Grp., Cir. Copyright [it] Office to the "false, invalid.") 1984) by (citing (requiring may numerous material statement be ruled cases). Congress adopted plaintiff of a that would have consti- a "but fact In registration govern grounds tuted for denial of the for” test to the effect of errors on known.”). right the author right bring and the had the truth been As a civil action by majority discussing course charted is when the use of sensors with Supreme blood, contrary thus to the Court deci- following: whole stated the rise to the doctrine of gave sions that Optionally, but preferably being when conduct, long to a line of our blood, used on live a protective mem- principles precedent, own and brane surrounds enzyme both the and applied that courts have in oth- layers, permeable the mediator to water rule, this court’s new er contexts. Under glucose and molecules. an who conceals information applicant patent, '382 col. 11.63-66. A central intent to deceive the will be free PTO issue before the examiner was whether the patent his it can to enforce unless be “optionally” pas- use of the term in that convincing proved by clear evidence that sage possible indicated it was to use not have patent would issued but (or live) sensors whole blood without though majority Even for the fraud. protective membrane. justifies part by rule in asserting its new The district court found that the persons prosecution improve pat- that it will in prosecuting involved the '551 applica- PTO, I am ents before the convinced tion, attorney Abbott’s Pope Lawrence likely rule to have an the new adverse expert, Dr. Sanghera, Gordon made and the impact public large, the PTO representations to the examiner that the significantly—is a view shared that — pertinent passage in the patent '382 should the PTO itself. taken at particular, face value. Sanghera Dr. submitted a IV declaration though he stated that even the '382 case, The facts of this as found patent referred to the use of a protective court, why district illustrate the materiali- surrounding membrane enzyme ty standard of Rule 56 is suitable test for layers mediator glucose meter as inequitable conduct claims based on disclo- “optionally, preferably” present, but “one during sure violations. A central issue skilled in the art would have felt that an examination that led to the issuance of the comprising enzyme active electrode patent prior '551 was whether the art had require a mediator would a protective taught glucose sensors could be used if membrane it were to be used awith protective to test blood whole without sample.” reason, whole blood For he membrane. The examiner focused on stated, he was “sure that one skilled in the taught whether the art '382 art patent] would not read '382 [the the use of sensors without membranes. teach that the face, protective use of a mem- On its '382 seemed to sample option- brane with a whole blood teach that sensors could be used without testing ally merely preferred.” Pope, membranes when whole blood be- Mr. *39 specification of the patent, prosecuting attorney, cause the '382 added own his re- PTO, reasons, leading law treatise trademark has would not exist. For those as out, however, pointed McCarthy explained, cancellation of a mark has the "standard of dis- register extinguish procure- from the federal does not closure and hence of ‘fraud’ in the rights registrations the trademark of the mark’s owner or ment federal trademark be, is, right infringers. quite defeat the owner’s sue should different from that in McCarthy, McCarthy patent procurement. stringent J. Thomas on Trade- The stan- (4th Competition applicable § patent ap- marks and 31.60 of disclosure dard[s] Unfair ed.2008). plications appropriate applica- are ... not registration, registration.” Unlike the effect of a trademark tions trademark Id. at which, (internal grants right patent quotation § the issuance of a 31.65 and citation omit- ted). but for examination and allowance at the Pope. Dr. Mr. The Sanghera’s through Sanghera Dr. submitting when marks issue, after a finding in court’s on that made He stated: “One skilled declaration. analysis representations of the not have read disclosure detailed the art would bodies, teaching as that the held to be clear- patent] the two cannot be of the ['382 ly membrane with whole The court also found protective of a erroneous. district use optional. was He would samples that Abbott’s failure to disclose to the ex- blood not, working in view of the ex- especially aminer that it had made inconsistent state- optionally, pref- read the but amples, have regarding teaching ments ‘to the EPO ... as a technical teach- language erably patent highly of the was material. '382 phraseology.” patent rather mere ing but the court found that the failure particular, teaching is no added: “There Pope Mr. in inconsistency to disclose the those state- active unprotected electrodes suggestion of nondisclosure cov- ments was kind specimens in [the with whole blood for use being ered PTO Rule as nondisclo- or the other art of rec- patent '382] with a sure of information “inconsistent Shortly application.” after ord ... position applicant takes in [assert- made, were the examin- those submissions That ing argument patentability.” for a er allowed the claims membraneless too, regarded clearly finding, cannot be sensor. central role of the light erroneous of the portion patent in the pertinent of the '382 found, problem,
The the district court that led to application examination directly made contradicto- that Abbott had patent. of the the issuance '551 ry representations European to the Patent (“EPO”) concerning teaching Office intent, Turning to the issue of the dis- in connection the '382 with the trict court failure to found Abbott’s European patent applica- of a prosecution disclose material information was inten- tion and had not disclosed those contradic- tional, i.e., specific it was made with the tory representations to the PTO. Before intent to deceive the PTO. The district EPO, Eu- represented Abbott that the testimony Pope court heard live from Mr. ropean counterpart '382 re- Sanghera and Dr. and conducted a detailed optional- a “protective ferred to membrane analysis testimony light of their of the ly of the glucose utilized with sensor analysis, record. Based on that the court “pref- patent,” and that the membrane was justify concluded that their efforts to their erably to with in vivo measure- be used unpersuasive. conduct were The court specific ments.” reference to the With Pope Sanghera found that Mr. and Dr. language patent reciting from the use contrary representa- were aware of the protective “optionally, membrane consciously made to the tions EPO preferably being but when used on live from the chose to withhold them PTO. blood,” Abbott told the EPO: “It is sub- carefully expla- The court considered their unequivocally mitted this disclosure is nations for their failure to disclose the clear. protective option- membrane is expla- references and found each witness’s al, however, it preferred when used on lacking. nation to be The court discred- prevent larger live blood order to that he under- Pope’s explanation ited Mr. blood, particular constituents of the er- “unequivocally stood the term clear” *40 ythrocytes interfering from with the elec- permea- submission to relate to the EPO trode sensor.” membrane, bility not to the text “unequiv- immediately following the words
The district court found that Abbott’s clear,” that ocally plainly where it is stated representations to the EPO contradicted PTO, optional. The court was representations its made membrane by Pope’s persuaded Mr. statement PTO did not contradict the statements EPO, made to the the court found that Dr. “optionally, prefera- he but that believed Sanghera representation knew that a had meant, patents, “op- context of bly” made to been the EPO that the '326 pat- always.” tionally, but ent not require did a membrane when used possible then considered alter- The court Noting with whole blood. that Dr. Sangh- Pope’s native reasons for Mr. decision not trial testimony era’s had been impeached contradictory EPO state- to disclose prior- his inconsistent statements on ments, that possibility such as the Mr. points, finding certain that Dr. Sangh- Pope meaning had misunderstood “unconvincing era exhibited an trial de- the terms “whole blood” and “live blood.” meanor,” the district court found that he however, Ultimately, the district court requisite acted with the intent to deceive. identify plausible could no reason for the inAs the case of Mr. Pope, the district nondisclosure and therefore found that Mr. findings court’s Sanghera as Dr. are not Pope deceptive had acted with intent. clearly erroneous. finding,
That based on the court’s consid- Viewed in light of the district court’s Pope’s eration of Mr. demeanor and over- findings, compelling this case is a one for credibility, analy- all as well as the court’s applying principles con- whole, sis of the record as a cannot be said duct. The district court found that Ab- clearly representatives to be bott’s deliberately erroneous. with- held material from the directly PTO that reasons, For similar the court that found refuted Abbott’s contention that one Sanghera Dr. also acted with intent skilled in the art would have believеd that deceive the PTO. The court considered the '382 taught that a membrane rejected the possibility that Dr. required was analysis. whole blood Sanghera Pope, believed that Mr. Abbott’s Abbott’s position inconsistent on the teach- PTO, counsel before the would disclose the ings of this critical reference squarely falls material information. The court began by scope within the of information of the sort that finding Sanghera’s Dr. declaration be- 56(b)(2), i.e., referred to in Rule PTO in- representations fore the PTO contained “refutes, formation that or is inconsistent misleading by that were omission. The with, position the applicant takes in ... explained finding court as follows: [ajsserting argument of patentability.” Given the examiner’s focus on the issue of He step. did not have to take this extra protective whether the membrane so, Having obligated done he was prior not, art patent optional was avoid intentional deception. His sworn importance issue was of critical in the statements to the PTO about the mean- prosecution of the application issued ing of the “optionally preferably” but patent, though as the '551 even the undis- sentence were known him to be in- information, revealed, closed if may not company’s consistent with his own state- rejection resulted of the claims ments to the EPO —statements he had at issue. Accordingly, the district court helped himself craft. made all the findings necessary support Sanghera’s testimony As to Dr. that he holding that the '551 patent was unen- believed statements he made to the forceable for conduct.5 Be- Understandably relying on this court's levels and intent.” Al law, point case district court stated one though suggest those remarks a looser stan Pope that Mr. "knew or should have here, known” they dard than that advocated do not the withheld information would have ruling ineq undermine the district court’s examiner, highly been material to the and at conduct, uitable because the district court point “balancing another the court referred to *41 findings factual court’s the district cause and because clearly erroneous
are not proper with the comports
legal analysis conduct the doctrine
role of law, judgment the district court’s
in patent is unenforceable the '551 affirmed.
inequitable conduct should dissent. respectfully
I GROUP, TECHNOLOGY
ALLIED
INC., Plaintiff-Appellant, STATES, Defendant-Appellee,
UNITED Solutions,
Monster Government
LLC, Defendant-Appellee.
No. 2010-5131. Appeals, States Court of
United
Federal Circuit. 9, 2011.
June Sept.
Rehearing En Banc Denied attorney clearly remarks findings [to satisfied the declaration and the elsewhere made requirements of the more restrictive stan- respect Sanghera, With to Dr. PTO].” set above. dard for forth "consciously that he made sworn court found Pope particular, court found that Mr. deliberately that were [PTO] statements to the specific intent to deceive Examin- "acted with misleading.” respect With to the issue PTO,” Shay Pope er and the that Mr. and Dr. moreover, judge did "balancing,” the district Sanghera and deliberate "made conscious against necessary to balance intent find decision to withhold disclosure to the PTO of explicitly materiality, he found because EPO, and that these statements” strong to both the evidence was materials both of them "knew that the EPO and intent. made affirmative statements inconsistent