Pitfalls and Strategies to Avoid Charges of Inequitable Conduct
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On November 30, 2010, Woodard, Emhardt attorney John Bradshaw was a featured speaker in a webinar entitled “Summary of Pitfalls and Strategies to Avoid Charges of Inequitable Conduct.” The webinar was part of the Practical Tips for Young Lawyers series sponsored by the Intellectual Property Section of the American Bar Association. Mr. Bradshaw's presentation focused on the development of the doctrine of inequitable conduct and included a summary of specific circumstances where inequitable conduct has been found. Predictions on where the doctrine may be heading and current best practices for patent prosecutors was also discussed.
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Pitfalls and Strategies to Avoid Charges of Inequitable Conduct
- 1. Pitfalls and Strategies to Avoid Charges of Inequitable Conduct November 30, 2010 721831
- 3. “Why care about IC?”
- 37. Questions John Bradshaw jbradshaw@ uspatent.com 317-634-3456 x4950
Notas del editor
- Quote from Burlington Industries. Inc. v. Dayco Corp., 849 F.2d 1418 (Fed Cir. 1988). Many CAFC Judges say the lax standards are a scourge on the patent system (check this quote). However, recent article from Stanford (?) says that despite the increased numbers of pleadings for IC, the rate at which the CAFC is finding IC hasn’t changed much.
- Duty imposed on all individuals substantively involved in the prosecution of the application. Exists with respect to each pending claim until that claim is canceled or withdrawn from consideration. Serves the public interest by assuring that, at the time application is examined, the PTO is aware of an evaluates all information material to patentability. Others do their duty by providing information to the prosecuting attorney. What does the prosecuting attorney do?
- Look at when act-in-question occurred Molins fn8 – look at when act-in-question occurred. Pre-1992: Reasonable examiner would consider reference important to patentability. Post-1992: Prima facie unpatentability established by reference alone or in combination with other information. Ability to actually invalidate patent not required. IC cannot be found where patentee offers a plausible, good faith explanation for why nondisclosed info (even if highly material info) was not cited to PTO.
- Equitable doctrine: Even if there is both materiality and intent, each proven by clear and convincing evidence, the court may still decline to render the patent unenforceable.
- IC is Bifurcated
- 3 separate patents, not family members but all related to the same general technology. Technology had to do with pressurized tanks for storing hazardous fluids used in the semiconductor industry, and the invention related to the use of certain flow restrictors involving capillary passageways, which are long narrow flow paths. In the timeline, note that the patents were not prosecuted by Praxair, rather Praxair acquired them 2 ½ years after the last one issued. A year later, Praxair sued ATMI, which was its only competitor in the market. The Infringement Trial happened two years later, based on 2 of the patents, because one had been invalidated on Summary Judgment. ATMI asserted a number of defenses and made a big deal at the trial about this Zheng patent.
- Cordis, Corp. v. Medtronic AVE, Inc. – submission of material reference along with 60 other ref’s considered burying. Ref was submitted in daughter patent application but in buried form. B/c of failure to submit ref in parent applic & b/c submission in daughter applic was in buried form – both patents unenforceable. IC. IDEC Pharmaceuticals v. Corixa Corp ., burying ref in list of 100 ref’s, ref disclosed in specification (rather than IDS), and elimination of title of ref. IC. Examiner may ask for help – Examiner can ask Applicant to (1) provide explanation of why each reference was cited, (2) what specific feature in each reference is pertinent to respective limitations in claims, and (3) how each reference cited defines over the claims wherein (1), (2) ,and (3) should be meaningfully different. A simple statement that each of the references are relevant will not be sufficient. If applicant deems certain of the references as not relevant, applicant should submit new IDS containing only those pertinent references and still provide (1), (2) ,and (3) for those references cited. Because applicant has presumably inspected all of the listed citations, it is reasonable to require the applicant to provide the information needed so that the most relevant citations are fully considered.
- Patent related to pucker-free seams on garments
- 8 patents related to compact fluorescent light bulbs and their ballasts
- Examiner requested “non-inventor” affidavits previously; the affidavits submitted were in response to a new rejection. Examiner did not request declaration in response to new rejection. Declarant’s past r/n w/ applicant are material if (1) declarant’s views on the underlying issue are material and (2) past r/n to the applicant was significant. Intent to deceive inferred – patentee has burden to prove. Judge Newman dissent – Majority ignores Kingsdown.
- Advanced Magnetic – 1 st sole inventor deliberatively misrepresented that he was inventor. 2 nd inventor wrote letter to patent attorney stating he should be the sole inventor. 2 nd inventor later signed a separate letter under duress wherein the separate letter listed 1 st inventor as the only inventor. Patent unenforceable even as to innocent co-inventor. “Others” – 1) inventors, 2) patent attorney or 3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application. Most notable aspect comes at the end – Concurrence by Chief Judge Rader.
- President was not inventor on patent that issued, but he did demo an early version of the technology at a trade show more than 1 year prior to the filing date of issued patent. Trade show demo not disclosed to PTO. President did not dispute that info was withheld with specific intent to deceive PTO for purposes of obtaining patent. President argued he was neither inventor nor an attorney – no duty. Was he “substantively involved” in preparation or prosecution of patent? Crt looked at his position and responsibilities in company, his involvement in hiring the inventors to develop product, and his communication with inventors during European prosecution. Trade show demo involved preliminary product that failed to contain all of the elements of claims. Infringement jury found patent valid. Crt reasoned that demo was the closest prior art – thus material. 37 CFR 1.56(c) – duty of candor owed to PTO by (1) inventors, (2) attorney prosecuting application, (3) persons “substantively involved” with prosecution of patent.
- EPO – response was in Revocation proceeding. Both US applications had common inventors.
- In such instances, it may be possible to cure the unintentional breach of the duty of candor by immediate disclosure of the breach and appropriate corrective action. For example, Rohm & Haas Co. v. Crystal Chem. Co., teaches that the applicant must (i) expressly advise the PTO of the misrepresentation's existence; (ii) advise the PTO of what the actual facts are and make clear that further examination in light thereof may be required if any PTO action has been based on the misrepresentation; and (iii) establish patentability on the basis of the factually accurate record. If necessary, the application should be withdrawn from issue, or a patent taken to re-issue or re-examination in order to clean up the record. Likewise, we now hold that where intentional material misrepresentations have been made, as here, a complete "cure" must also be demonstrated by clear, unequivocal, and convincing evidence. Because all business with the PTO is to be transacted in writing and its actions must be based exclusively on the written record, 37 CFR 1.2, this question of fact should never be difficult to resolve. Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1566, 1572-3 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)
- MPEP 2004 - Finally, if information was specifically considered and discarded as not material, this fact might be recorded in an attorney's file or applicant's file, including the reason for discarding it. If judgment might have been bad or something might have been overlooked inadvertently, a note made at the time of evaluation might be an invaluable aid in explaining that the mistake was honest and excusable. Though such records are not required, they could be helpful in recalling and explaining actions in the event of a question of "fraud" or "inequitable conduct" raised at a later time.
- Examiner initials all references – Counterargument to burying references (Molins) & Initialed references appear on face of patent.