Federal Judiciary

"... Some Days You're the Bug" - Golden Hour v. EMSCharts verdict hits the inequitable conduct windshield

By Michael C. Smith

Some days you're the windshield.

Some days you're the bug.

Hit it, Mark.

Dire Straits said it best in "The Bug" - one of the better cuts from my favorite album from law school days.  Golden Hour Data Systems was feeling pretty shield-ish in December when it obtained a $3.5 million jury verdict in Judge Ward's court in Marshall - the last patent verdict out of the district in 2008.  But things took a turn for the worse after the inequitable conduct bench trial on March 5, which resulted in Judge Ward's order of yesterday afternoon invalidating the asserted patent for inequitable conduct.

Sometimes you're the Louisville Slugger, baby. 
Sometimes you're the ball.

The rub was not the failure to disclose information in the original patent filing, but the breach of the applicant's ongoing duty of good faith and fair dealing, Judge Ward concluded, zeroing in on a brochure that was not disclosed after the initial filing when the applicant became aware of it.  Well, part of it was, actually.  With respect to materiality, the Court wrote that "Fuller selected that part of the brochure to disclose that did not threaten patentability.  He excluded, however, the entire teaching that would have been a serious obstacle to patentability."  Judge Ward also found the requisite intent, relying on the same fact - the selective quotation from the brochure.
One other interesting fact surfaced in the opinion.  Judge Ward noted that the prosecution counsel "made no attempt to prepare for the inequitable conduct hearing to offer an explanation" for the above - in fact he testified that he did not even review the application file before coming to trial, thus providing the court with "no assistance in determining an alternative explanation for the failure to provide the PTO with such highly material information.  Again, such cultivated ignorance cannot be rewarded." (Emphasis mine).

Sometimes it all comes together.
Sometimes you're going to lose it all...

Full post as published by Eastern District of Texas Federal Court Practice on March 24, 2009 (boomark / email).