Intellectual Property Law

Joseph J. Farnan: Failure to Disclose Does Not Always Equate to Inequitable Conduct

By Karen E. Keller, Andrew A. Lundgren et al.

Resolving a charge of inequitable conduct requires a close reading of an often conflicting factual record for clues that evince an intent to deceive. In a post-trial opinion released yesterday, District Judge Joseph J. Farnan Jr. acknowledged that fine evidentiary line by reluctantly refusing to find a patentee defrauded the PTO by summarizing, instead of naming, the controlling prior art.

Although labeling the mode of disclosure suspicious, the Court, based on these findings, ultimately declined to hold the patent-in-suit unenforceable:

"[T]he Court is troubled by the fact that Dr. Eklund possessed known material prior art references but did not disclose the actual references themselves. However, absent a bright line rule by the Federal Circuit that non-disclosure of possessed, material art equates with inequitable conduct, the Court is unwilling to strike a patent in the circumstances of a plausible explanation for that non-disclosure."

This decision underscores the importance of the standard of proof in patent litigation: to demonstrate an inequity clearly and convincingly requires more than arguing that the patentee neglected to choose the optimal vehicle for disclosure.

Power Integrations Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 04-1371-JJF (D. Del. Sept. 24, 2008).

Full post as published by Delaware IP Law Blog on September 25, 2008 (boomark / email).