Intellectual Property Law

Disclosure of prior art abstract only when more relevant detail known results in inequitable conduct

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

In a decision Friday, the Federal Circuit affirmed a district court's finding of inequitable conduct based on nondisclosure of details of a poster presentation presented at a scientific conference.  While the patentee disclosed the abstract during prosecution of the patents-in-suit, notes taken by one of the patentee's employees with much more detail of what was actually presented at the conference were not.  The court affirmed the conclusion that these notes were highly material, because they directly contradicted statements made by the patentee during prosecution in support of patentability.

The court also affirmed the finding of intent to deceive.  The notes had been widely circulated among the patentee's scientists working in the field of the invention, and the prosecuting attorney was aware of them.  The attorney stated that while he was aware of the notes, he did not know or understand the contents of the notes, even though he discussed them with the employee who took the notes.  The district court found this statement not credible, and the Federal Circuit found no clear error.  As a result, the finding of inequitable conduct, and therefore unenforceability, was affirmed.

There were three related patents also at issue, and the court likewise affirmed the holding of unenforceability as to those patents.  Although the patentee dismissed its infringement claims under those patents with prejudice and offered a covenant not to sue after the first appeal in this case, the court held that because the alleged infringer maintained its claim for attorney fees under § 285, the issue of inequitable conduct was still within the district court's subject matter jurisdiction.  As a finding of inequitable conduct necessarily results in unenforceability of the patents, the court affirmed the unenforceability of the three related patents.

More detail of Monsanto Co. v. Bayer Bioscience N.V. after the jump.

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Full post as published by FileWrapper on January 28, 2008 (boomark / email).