Optium Corp. v. Emcore Corp., 603 F.3d 1313, CPLRG 0063 (Fed. Cir. 2010) (NEWMAN & Mayer; PROST, concurring in the result)OptiumEmcore05052010
MAJOR ISSUES: inequitable conduct; intent to deceive the PTO; no presumption from high materiality and lack of credible explanation for nondisclosure
COMMENT. This is one of numerous Federal Circuit opinions in 2010 addressing the intent element of the inequitable conduct defense. The opinions show a division among Federal Circuit judge on the circumstances and evidence justifying an inference of an intent to deceive. For other opinions, see Lazare Kaplan International, Inc. v. Photoscribe Technologies, Inc., 628 F.3d 1359 (Fed. Cir. 2010); Cancer Research Technology Ltd. v. Barr Laboratories, Inc., 625 F.3d 724 (Fed. Cir. 2010); Golden Hour Data Sys., Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir. 2010); Ring Plus, Inc. v. Cingular Wireless Corp., 614 F.3d 1354 (Fed. Cir. 2010); Leviton Mfg. Co., Inc. v. Universal Security Instruments, Inc., 606 F.3d 1353 (Fed. Cir. 2010); Taltech Ltd. v. Esquel Enterprises Ltd., 604 F.3d 1324 (Fed. Cir. 2010); Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817 (Fed. Cir. 2010). The conflicting views of the Federal Circuit judges on the standards for proving intent is the apparent cause for the court’s action granted rehearing en banc in another case in April 2010. Therasense, Inc. v. Becton, Dickinson & Co., 374 Fed. Appx. 35, CPLRG 0058 (Fed. Cir. 2010).
CROSS REFERENCES. On the intent element of inequitable conduct, Chisum Patent Law Digest 4200; Chisum on Patents 19.03.
1. OPTICAL COMMUNICATION. Two patents concerned optical communication. U.S. No. 6,282,003 USPatNo6282003; U.S. Pat. No. 6,490,071 USPatNo6490071.
a. INVENTOR CITES REFERENCE IN INTERNAL REPORTS. The named inventor cited the reference in question (Willems) twice in internal reports: first, as an end note to a passage in the background section of an research report, and second, in the background section of the patent owner’s invention disclosure form.
b. NO DISCLOSURE TO PTO. During prosecution, the patent owner’s attorneys submitted an Information Disclosure Statement but did not include the Willems reference.
c. DEPOSITION TESTIMONY OF INVENTOR AND ATTORNEYS: NO RECOLLECTION OR EXPLANATION. In deposition testimony, the inventor and attorneys could not recollect “precise details of the events that had occurred ten years earlier” and offered no explanation why Willems was not submitted to the Patent and Trademark Office.
d. EXPERT: WILLEMS MATERIAL; CLAIMS PRIMA FACIE OBVIOUS IN VIEW OF COMBINATION OF WILLEMS AND OTHERS REFERENCES. The accused infringer’s expert opined that Willems was material and that it, in combination with other references, rendered the patent owner’s claims prima facie obvious.
2. DISTRICT COURT: NO INEQUITABLE CONDUCT EVEN IF REFERENCE MATERIAL; NO EVIDENCE OF INTENT; NO INFERENCE. In granting summary judgment of no inequitable conduct, the district court held that, even assuming that the Willems reference were highly material, there was no evidence of deceptive intent and no basis for inferring it.
3. ACCUSED INFRINGER: INTENT PRESUMED WHEN A HIGHLY MATERIAL REFERENCE IS NOT DISCLOSED AND A PATENT OWNER PROVIDES NO CREDIBLE EXPLANATION FOR THE NONDISCLOSURE? The accused infringer argued that, under some Federal Circuit authority, “deceptive intent is presumptively established when the evidence could support a finding of `high materiality,’ at least in instances where the applicant has not provided a credible explanation for the nondisclosure.”
4. SHIFT IN BURDEN OF PROOF: CONTRARY TO PRECEDENT. In an opinion by Judge Newman, who has consistently decried the current “plague” of attacks on patents based on alleged inequitable conduct and objected to use of the materiality of undisclosed information as a basis for inferring intent, the Federal Circuit affirmed, dismissing the accused infringer’s “proposed shift in the burdens” as “contrary to precedent.”
5. CONCURRING OPINION BY JUDGE PROST. Judge Prost concurred, expressing concern that “the majority opinion might be interpreted to limit the kind of evidence that may be considered by the district court in determining deceptive intent.”