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No Disclosure Required of Post-Filing Test Results; Judge Reassignment Ordered

By William F. Heinze

"Finally, this court remands with instructions to assign this case to a different judge for a proper determination of validity and infringement on the merits." These were the words of Federal Circuit Judge Rader on August 1, 2008 in Research Corp. Technologies Inc. v. Microsoft Corp., reversing, vacating, and remanding a decision by Judge Manuel L. Real of the United States District Court for the District of Arizona who was profiled by Nathan Koppel in the August 6, 2008 issue of the Wall Street Journal under "For 'Maverick' Federal Judges, Life Tenure is Largely Unfettered License."

Among the errors noted by Circuit Judge Rader:

The trial judge found inequitable conduct because the inventors did not disclose Dr. Mista's post-filing K factor tests to the USPTO. Because Dr. Mista's work occurred after she and Dr. Parker had filed the patent application, these K factor experiments were not material to their inventive activity. In the circumstances of this case, therefore, the inventors had no obligation to report their later tests to the USPTO.

. . . Additionally, the patents do not even mention the K factor. The K factor research is not necessary to practice the patented invention. In fact, most of Dr. Mista?s mask-generating programs included no K factor at all, including her final program called makemask. Importantly, Dr. Mista and her coauthors published the K factor tests to the scientific community. Publication is an act inconsistent with an intent to conceal data from the USPTO.

Because the trial court focused exclusively on candor, its findings and conclusions improperly excluded and ignored proferred testimony on the immateriality of the K-factor experiments. . . .

In sum, the trial court completely ignored the materiality prong. Indeed the trial court, in its sparse articulation of reasons for the decision, noted "I am not trying a patent case I am trying a particular matter that has been presented to me having to do with candor and good faith." Neglecting to consider both prongs of the analysis was clear error. The K factor tests probed the limits of accepted halftoning principles as part of a doctoral thesis. In light of the different purposes and disclosures of the patented technology, these experiments were not material to the patented invention and did not give rise to any disclosure obligation.

This court considers a transfer request with great caution, and, in the absence of personal bias, would grant such a request only in "unusual circumstances." Davis & Cox v. Summa Corp., 751 F.2d 1507, 1523 (9th Cir. 1985). This court understands that a transfer may require a new judge to learn material and thus may occasion some duplicative judicial effort. At the same time, this court must recognize that a pattern of error based on previously-expressed views or findings may make it difficult for a trial court to approach a remanded case with an open mind. After a thorough review of all the evidence, testimony, and facts of this case, this court concludes the strongly expressed convictions of the trial court in this case may not be easily and objectively reconsidered. Accordingly, this court remands with instructions to reassign this case. See 28 U.S.C. § 2106; Liteky v. U.S., 510 U.S. 540, 554 (1994). See also Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297 (Fed. Cir. 2005); Juicy Whip, Inc. v. Orange Bang, Inc., 382 F.3d 1367 (Fed. Cir. 2004). Thus, this court remands to the Chief Judge of the United States District Court for the District of Arizona to determine the reassignment of this case.

Because the trial court incorrectly held RCT's patents unenforceable due to inequitable conduct, this court reverses that holding and vacates the award of attorney fees. We also vacate the trial court's grant of Microsoft's noninfringement and invalidity motions as well as the grants of Microsoft's motions in limine. Finally, this court remands with instructions to assign this case to a different judge for a proper determination of validity and infringement on the merits.

Full post as published by I/P Updates on August 08, 2008 (boomark / email).