Intellectual Property Law

No evidence of intent to deceive, no inequitable conduct

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

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of inequitable conduct against the patentee.  At issue was whether the patentee's failure to disclose a letter describing an aspect of the prior art constituted inequitable conduct.  The court reversed finding that the alleged infringer had failed to provide sufficient facts to support an inference of intent to deceive.

The defendant's theory involved a plan by the patentee to switch law firms once it appeared the first firm intended to disclose the letter, and preventing the second firm from discovering the existence of the letter.  The opinion provided a clear look of how the Federal Circuit will analyze inequitable conduct.  The court teed up its analysis by stating:

To successfully prove inequitable conduct, the accused infringer must present "evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO]."  Further, at least a threshold level of each element -- i.e., both materiality and intent to deceive -- must be proven by clear and convincing evidence.  And even if this elevated evidentiary burden is met as to both elements, the district court must still balance the equities to determine whether the applicant's conduct before the PTO was egregious enough to warrant holding the entire patent unenforceable.  Thus, even if a threshold level of both materiality and intent to deceive are proven by clear and convincing evidence, the court may still decline to render the patent unenforceable.

Most important to the court was that an accused infringer proves threshold levels of intent to deceive the PTO and materiality with clear and convincing evidence. The clear and convincing standard requires that the evidence be strong enough to show that an inference of intent to deceive is the "single most reasonable inference able to be drawn from the evidence."  In this case, there was simply "no evidence, direct or indirect," to support the inference the defendant sought to draw.  As a result, the finding of inequitable conduct was reversed.

More on Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. after the jump.

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Full post as published by FileWrapper on September 10, 2008 (boomark / email).