Home -> Law Blog Directory -> Intellectual Property Law Blogs -> FileWrapper

Intellectual Property Law

: FileWrapper

Failure to consider evidence of good faith leads to reversal of inequitable conduct finding

By McKee, Voorhees & Sease, P.L.C.

In a decision last week, the Federal Circuit affirmed a district court's finding of no infringement and invalidity for obviousness, and reversed the district court's finding of unenforceability due to inequitable conduct.

The Federal Circuit, citing KSR, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill in the art would employ, and held that there was a only small logical gap between the prior art and the claim at issue that could be closed by a person of ordinary skill in the art pursuing known options within his or her technical grasp and therefore the claim was obvious.  

Regarding inequitable conduct, the court reaffirmed that intentionally misleading or false statements made in a petition to make special can lead to a finding of unenforceability, even if the statements do not relate to the patentability of the invention, as long as the false statement succeeds in obtaining expedited review of the application.  Here, however, the evidence was just as susceptible to the inference that intentional misrepresentations occurred as to the inference that the statements were either innocent, not misleading, or both.  As stated by the court: 

Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference.  All reasonable inferences must be drawn from the evidence, and a judgment then rendered on the evidence as informed by the range of reasonable inferences.

Here, the district court clearly erred because it failed to give due weight to evidence of good faith that would call for inferences contrary to a finding of deceit.  As a result, the finding of inequitable conduct was reversed.  The district court also affirmed the finding of noninfringement.

More detail of Scanner Tech. Corp. v. ICOS Vision Sys. Corp. after the jump.

[More]

Full post as published by FileWrapper on June 25, 2008 (boomark / email).