Mark your calendar and save the date of June 24th, 2010. The AIPLA has calendared that date for the AIPLA Electronics and Computer Law Road Show in Denver, CO [Link]. I believe this seminar formerly went by the name AIPLA Advanced Electronics and Computer Law Seminar. Kudos to the AIPLA for reinstituting this valuable seminar that has been on hiatus for the last few years.
By the way, late June typically has ideal weather for visiting Denver and hiking and biking in the Colorado mountains.
The White House has nominated Judge Kathleen O’Malley from the Northern District of Ohio to fill the vacancy on the United States Court of Appeals for the Federal Circuit.
Judge O’Malley sat by designation with the Federal Circuit on February 6th and 7th of 2007. You can listen to the oral arguments featuring Judge O’Malley here:
Panel with Judges Rader and Gajarsa
Monsanto v. Syngenta Seeds, 2006-1472 (Fed. Cir. November 4, 2007) [Listen]
Biomedical Patent Management Corp. v. State of California, 2006-1515 (Fed. Cir. Nov. 23, 2007) [Listen]
Byrne v. The Black and Decker Corp., 2006-1523 (Fed. Cir. May 21, 2007) [Listen]
Panel with Judges Lourie and Dyk
Ormco Corp. et al. v. Align Technology, 2006-1240 (Fed. Cir. Aug. 24 2007) [Listen]
Pods v. Porta Stor, 2006-1504 (Fed. Cir. April 27, 2007) [Listen]
Judge Kathleen O’Malley from the Northern District of Ohio is rumored to be the nominee for the open position on the Federal Circuit.
Judge O’Malley sat by designation at the Federal Circuit in 2007. You can listen to Judge O’Malley in this oral argument from Ormco Corp. v. Align Tech., Inc. [Listen].
Director David Kappos is looking for your comments on the direction of design patent law. He recently posted his insight on the Crocs v. ITC case and the Federal Circuit’s judicial gloss on the KSR opinion: [Link].
Reproduced by permission. ©2010 Colorado Bar Association,
39 The Colorado Lawyer 39 (January 2010), All rights reserved.
An Update on the Law of Inequitable Conduct in Patent Prosecution
_________________________________________________________________________________________________________
by William F. Vobach
The Court of Appeals for the Federal Circuit recently handed down decisions in several cases involving inequitable conduct law. These decisions will affect attorneys who prosecute patents and those involved with the licensing and litigation of patents. It is important that practitioners who work in the field of patent law be familiar with these recent cases and understand the effect the rulings have on already issued patents and pending patent applications. This article discusses three recent cases concerning the law of inequitable conduct: Dayco Products, Inc. v. Total Containment, Inc.;1 McKesson Information Solutions, Inc. v. Bridge Medical, Inc.;2 and Larson Manufacturing Co. v. Aluminart Prods. Ltd.3
Background of Inequitable Conduct
Attorneys, inventors, and others involved with the patent process, such as officers of an inventor’s company, are under a duty to disclose material information to the U.S. Patent and Trademark Office (USPTO) between the date a patent application is filed and the date the application issues as a patent.4 This duty is referred to as the “duty of disclosure” by the patent bar. What qualifies as “material information” is open-ended, and a comprehensive list of this type of information is not available. However, examples of information that should be cited to the examiner include: prior patents, published patent applications, published articles, filings made during patent litigation, and related patent applications.5 When a piece of information is deemed material, it is cited to the USPTO for examiner consideration.6 The examiner then makes a notation to the patent file that the information has been considered before issuing the patent.7
The penalty for failing to cite material information can be severe. For example, when one knowingly fails to cite material information with the intent to mislead or deceive an examiner, the issued patent can be deemed unenforceable by a court during patent litigation.8 A court’s authority to render a patent unenforceable for inequitable conduct springs from the equitable principle that “he who comes into equity must come with clean hands.”9 During patent litigation, it is common for defendants to assert that material information that was known to the patentee during prosecution was not cited to the USPTO, and that the resulting patent should be held unenforceable due to inequitable conduct.10
The analysis used to prove inequitable conduct is a two-step process. First, it is determined whether the withheld information meets a threshold level of materiality and intent to mislead. Next, the materiality and intent are weighed in light of all the circumstances to determine whether the applicant’s conduct is so culpable that the patent should be held unenforceable.11
Different standards for materiality exist. One is whether a reasonable examiner would have considered the prior art important in deciding whether to allow the patent application.12 Another standard is whether the information: (1) establishes a prima facie case of unpatentability, or (2) refutes or is inconsistent with a position the applicant takes.13
The Dayco Products Case
The first case in recent years to significantly alter the law of inequitable conduct relating to patent prosecution was Dayco Products, Inc. v. Total Containment, Inc.14 In Dayco, the Federal Circuit indicated for the first time that an office action15 from a related patent application might be material to an examiner inspecting a separate patent application.16
Dayco concerned two families of patent applications that were being examined by different patent examiners.17 The first family of applications was related to U.S. application number 993,196 ( ’196 family of applications or ’196 application) and was being examined by Examiner Eric Nicholson.18 The second family of applications, a family that resulted in the patents asserted in the Dayco litigation (patents-in-suit), was being examined by Examiner David Arola.19 During prosecution of the ’196 family of applications, the existence of the patents-in-suit was brought to the attention of Nicholson.20 However, during prosecution of the patents-in-suit, Arola was not informed of the existence of the ’196 family of applications.21 The two families of applications contained substantially identical claims, and Nicholson issued rejections of those claims on three occasions. Arola was not informed of Nicholson’s rejections or the reference that served as the basis for the rejections (Wilson reference).22
On summary judgment, the district court found the patents-in suit unenforceable for inequitable conduct. The district court relied on three items that had not been cited to Arola: (1) the pendency of the ’196 application before Nicholson; (2) the Wilson reference; and (3) the rejection of substantially similar claims in the’196 application by Nicholson based on the Wilson reference.23
The Court of Appeals for the Federal Circuit addressed each of these three issues. It found that the applications for the patents-in suit and the ’196 application contained similar claims, and Arola could have issued a double-patenting rejection if he had been notified of the existence of the ’196 application.24 This could have resulted in the need to file a terminal disclaimer. The terminal disclaimer would have effectively limited the assignability of the patents because it would have required co-ownership of all of the patents throughout their term. Therefore, the Federal Circuit deemed that the pendency of the ’196 application was “material.”25
The court also ruled that the failure to cite the existence of the ’196 application did not meet the threshold showing of intent to deceive.26 Under Akron Polymer Container Corp. v. Exxel Container, Inc.,27 intent could not be inferred because the patentee disclosed the existence of a second application to a first application’s examiner, putting the USPTO on notice of the co-pendency of the applications. The fact that the applications that issued as patents-in-suit were disclosed to the examiner of the co-pending application—but not vice versa—implied a lack of intent to deceive.28 The court found no basis for summary judgment regarding the failure to cite the existence of the ’196 application to Arola, who was examining the patents-in-suit, because a threshold level of intent to deceive was not satisfied.29
With respect to the failure to cite the Wilson reference, the Federal Circuit ruled that summary judgment was improper.30 The court held that Nicholson’s reliance on the Wilson reference was informative, but not dispositive. The determination of whether Wilson met the threshold level of materiality required a detailed factual analysis of the relevance of what was disclosed by the Wilson reference relative to what was being claimed by the patents-in suit.31 In addition, the intent to deceive element was not satisfied, because the attorney who withheld the Wilson reference from Arola had submitted an affidavit explaining that in good faith he concluded that the reference was not material. The court stated:
[I]nequitable conduct requires not intent to withhold, but rather intent to deceive. Intent to deceive cannot be inferred simply from the decision to withhold the reference where the reasons given for the withholding are plausible.32
Finally, the Federal Circuit addressed whether Dayco committed inequitable conduct for failure to cite an office action rejecting claims in the ’196 application when those claims were substantially similar to the claims in the patents-in-suit. The court noted:
This court has never addressed whether the prior rejection of a substantially similar claim in a copending United States application is material under the reasonable examiner standard.33
Noting that patent disclosures can be complicated, and that examiners with different technical backgrounds and levels of understanding often differ in their interpretation of these documents, the court stated that a different interpretation is clearly information that an examiner could consider important when examining an application.34 The court held that a contrary decision of another examiner reviewing a substantially similar claim meets the “reasonable examiner” threshold of materiality test of “any information that a reasonable examiner would substantially likely consider important in deciding whether to allow an application to issue as a patent.”35 The court also held that this information meets the threshold level of materiality under the materiality test of 37 C.F.R. § 1.56.36
The McKesson Information Solutions Case
McKesson Information Solutions, Inc. v. Bridge Medical, Inc.37 was the second case to significantly alter the requirements for inequitable conduct for patent prosecution in recent years. In McKesson, the Federal Circuit noted that even when the same examiner is examining two co-pending applications, material office actions from one application need to be cited to the other. The court indicated that even a notice of allowance in one application can be material and might need to be cited.
The McKesson case involved the prosecution of three patent applications relating to similar subject matter, prosecuted by the same attorney on behalf of the same client. The facts of the case are as follows:
1. The first application, U.S. application 07/205,527, was examined by Examiner Trafton and eventually issued as U.S. patent 4,857,716.38 It was the patent-in-suit.
2. The second application, U.S. application 06/862,149, was examined by Examiner Lev.39
3. The third application, U.S. application 07/078,195, issued as U.S. patent 4,835,372 and also was examined by Trafton.40
4. The third application and the first application shared a common parent application.41
A district court found the patent being asserted in the patent litigation, U.S. patent 4,857,716, to be unenforceable for inequitable conduct for three reasons: (1) a reference known as the Baker reference that was before Lev in the 06/862,149 application was not disclosed to Trafton in the 07/205,527 application;42 (2) Lev’s office actions rejecting claims in the 06/862,149 application were not disclosed to Trafton in the 07/205,527 application;43 and (3) the notice of allowance by Trafton of claims in U.S. application 07/078,195 was not cited back to Trafton in U.S. application07/205,527.44
The Federal Circuit first addressed the non-disclosure of the Baker reference. The court reviewed the district court’s factual findings with respect to the materiality of the reference and found that there was no clear error by the district court in finding that the Baker reference was noncumulative art.45 The court then reviewed the district court’s finding that there had been deceptive intent by the patent attorney in not disclosing the reference. McKesson made several arguments as to where the district court erred with respect to the intent issue. One assertion was that Baker had been cited by Lev as teaching a claim feature that was irrelevant to the application being examined by Trafton. The court noted that this was unconvincing, because Lev had cited the eighteen-column Baker reference and the patent attorney was on notice of the entire Baker reference.46 Another argument was that the patent attorney learned of the Baker reference only after making assertions to Trafton that went counter to the teachings of Baker. The court noted that this fact was of no consequence. Only seventeen days had passed between the attorney’s assertion and the citation of Baker by Lev, so the attorney knew or should have known of Baker’s materiality.47 The court also concluded that there was no clear error by the trial court with respect to intent.48
With regard to the prosecution of patent applications, the Federal Circuit stated:
Yet, in spite of the advice provided to prosecuting attorneys in the 1986 version of the MPEP that “information . . . specifically considered and discarded as not material” ought to be “recorded in [the] attorney’s file or applicant’s file, including the reason for discarding it,” MPEP §2004(18)(5th ed. Rev. 3, 1986), Schumann offered no such recorded reason; he was only able to give speculative testimony about the conclusions he must have drawn at the time with respect to Baker’s materiality.49
As a practice tip, when parties determine not to cite an arguably material reference to a related case, they might want to draft a memo to the prosecution file for future reference. Because files are often transferred to other law firms when companies or patent portfolios are acquired, a practitioner also might want to keep a copy of the memo when the file is transferred. The rationale for this is that if the practice of the acquiring firm is to clean a file of all notes and memos when the patent issues, the memo explaining why a reference was not cited could inadvertently be discarded.
The Federal Circuit next examined whether the district court erred with respect to the failure to disclose Lev’s rejections to Trafton.50 The court addressed the issue of how similar claims should be in two different applications for purposes of assessing the materiality of rejections. The Federal Circuit stated:
Under Dayco, that standard is satisfied in the rejected-claims setting if the rejected claims are substantially similar to the claims at issue. 329 F.3d at 1368. In other words, a showing of substantial similarity is sufficient to prove materiality. It does not necessarily follow, however, that a showing of substantial similarity is necessary to prove materiality. Indeed, in the same way that prior art need not be substantially similar in order to be material . . . rejected claims in a co-pending application also need not be substantially similar in order to be material.51
McKesson argued that the district court judge neglected to consider the differences in the claims being examined by the different examiners. The court disagreed and concluded that there was no clear error in the district court’s finding that the undisclosed rejections were material.52
With respect to the intent prong of the inequitable conduct test, McKesson argued that at the time the patent-in-suit was prosecuted, patent attorneys were not aware that further disclosure of rejections in co-pending applications was necessary.53 In addition, McKesson argued that it was not until 2003, in the Dayco decision, that the patent bar was put on notice that disclosures of rejections are necessary.54 The Federal Circuit dismissed this argument, relying on 37 C.F.R. § 1.56 and the Manual of Patent Examining Procedure.55 The Federal Circuit concluded that there was no clear error by the district court in finding that the patent attorney intended to deceive the USPTO by not disclosing the two rejections by Lev to Trafton.56
Next, the court addressed the district court’s factual findings with respect to the failure to disclose the notice of allowance from the third application (U.S. application 07/078,195 that was being examined by Examiner Trafton) to Examiner Trafton for his examination of U.S. application 07/205,527.Trafton was examining both applications, and the district court found that the common applicant had a duty to disclose the notice of allowance issued by Trafton in one application back to Trafton for his examination of the other application. The Federal Circuit first addressed the materiality of the allowance of the claims. McKesson argued that a notice of allowance was material only if there was a substantial likelihood that the examiner would have issued a double patenting rejection based on the allowed claims.57 The Federal Circuit disagreed, noting that “material information is not limited to information that would invalidate the claims under examination.”58The Federal Circuit noted that the notice of allowance did give rise to a conceivable double-patenting rejection.59 In addition, the court noted that one could not assume that Trafton would necessarily recall his decision to grant the claims of one application when he was examining a different application.60 The court found that it was not error for the district court to have found the allowance of the claims to be material.61
With respect to the intent prong, the patent attorney had testified at trial that he did not consider the identity of the examiner in deciding whether to disclose information about co-pending applications. Therefore, McKesson could not argue that the patent attorney had not disclosed the notice of allowance because he thought Trafton already knew of its existence.62
As a final step of the inequitable conduct analysis, the materiality and intent findings are weighed in light of all the circumstances to determine whether the conduct by the applicant is so culpable that the patent should be held unenforceable.63 The district court’s determination in this regard was reviewed by the Federal Circuit for abuse of discretion. In this instance, the Federal Circuit determined that there was no abuse of discretion in holding the patent-in-suit unenforceable. The court declined to determine whether any one of the three instances of non-disclosure by itself would have been sufficient for holding the patent unenforceable.64
The Larson Manufacturing Case
Larson Manufacturing Co. v. Aluminart Prods. Ltd.,65 decided in 2009, addressed whether failure to submit office actions from a related application constituted inequitable conduct. Larson asserted U.S. patent 6,618,998 against Aluminart in a patent infringement action.66 The patent related to storm doors with retractable screens.67 In response, Aluminart requested re-examination of the patent and the request was granted; the patent litigation was stayed pending the result.68 During re-examination, a continuation application of the 6,618,998 patent also was prosecuted by Larson. The same attorney conducted the prosecution of the continuation application and the re-examination. Two office actions from the continuation application were cited to the re-examination Panel (Panel), but a third and fourth office action were not.69 After issuance of the re-examination certificate and lifting of the stay, Aluminart asserted that Larson had committed inequitable conduct for failure to cite the remaining two office actions. Aluminart also asserted inequitable conduct for the withholding of three prior art references.70 The district court agreed with Aluminart and found the 6,618,998 patent unenforceable for inequitable conduct.71
On appeal, the Federal Circuit disagreed with the district court in regard to the un-cited prior art references, finding them to be merely cumulative and not material.72 With respect to the un-cited office actions, the Federal Circuit found no clear error in the district court’s findings that those items constituted material information.73
As noted above, two office actions had previously been cited to the Panel. One was cited in the request for re-examination by Aluminart, and the second was referenced in an information disclosure statement submitted to the Panel.74 A third and fourth office action in the continuation application were not cited to the examiner of the re-examination proceeding. Aluminart argued that despite the fact that the Panel did not have the third and fourth office actions before it, it was aware of the simultaneous proceedings of the continuation application because the first office action from the continuation was used to prompt the re-examination. Larson also argued that the third and fourth office actions did not contain examiner comments different from previous office actions and did not disclose any new references that had not already been cited to the Panel.75 The Federal Circuit disagreed and noted that the third and fourth office actions contained another examiner’s adverse decisions about substantially similar claims and were not cumulative of the first and second office actions.76 The court commented that even a withdrawn rejection might be material. The court stated:
Importantly, during the time from when the Third Office Action issued to the time when the Fourth Office Action withdrew the pertinent rejection—more than a year—there was an adverse decision by another examiner that refuted or was inconsistent with, the position that claim limitations of the ’998 patent were patentable over the Johnson patent. Accordingly, the Third Office Action was material.77
The Federal Circuit also noted that the fourth office action raised a new rejection that was not before the Panel.78 The fourth office action from the continuation application contained an interpretation of a prior art reference that was different than the Panel’s interpretation of that reference. The Federal Circuit concluded that:
the adverse decision of the examiner in the ’039 Continuation, based on a different explanation and interpretation of the Kemp patent and other prior art, was “clearly information that an examiner could consider important.”79
The court next addressed the intent prong—whether Larson’s attorney had intentionally tried to deceive the patent office by withholding the third and fourth office actions. The court noted that the district court had found intent based on the withholding of the undisclosed office actions and the three undisclosed prior art items. The Federal Circuit deemed the prior art items to be immaterial and noted that the district court would need to reconsider whether the withholding of only the third and fourth office actions was done with deceptive intent.80
The court went on to give some guidance to the district court on how to assess deceptive intent on remand. The court said that materiality does not presume intent and that nondisclosure, by itself, cannot satisfy the deceptive intent element. For this proposition, the court cited the Federal Circuit’s 2008 opinion in Star Scientific v. R.J. Reynolds Tobacco Co.81 The alleged infringer will need to prove, by clear and convincing evidence, a specific intent to deceive the USPTO. Deceptive intent can be inferred, but any circumstantial evidence will need to be clear and convincing. The inference will be the single most reasonable inference able to be drawn from the evidence to meet the clear and convincing standard.82 An accused infringer cannot carry its threshold burden simply by pointing to the absence of a credible good faith explanation.83 The court also noted that the district court on remand should take into consideration any evidence of good faith that militates against a finding of deceptive intent. The district court was instructed to consider the fact that Larson had notified the Panel of the simultaneous prosecution of the ’039 Continuation and had thus put the USPTO on notice of the co-pendency.84 If the district court concludes on remand that the third and fourth office actions were intentionally withheld, it will have to balance the levels of materiality and intent to determine whether a finding of inequitable conduct is warranted.85
The Federal Circuit remanded the case to the district court for a determination of whether the withholding of the office actions showed an intent to deceive the USPTO and, if so, whether a balancing of the materiality and intent led to the conclusion that the patent was unenforceable for inequitable conduct.86
Practice Pointers from
Dayco, McKesson, and Larson
As a result of the Dayco, McKesson, and Larson cases, patent prosecutors now will need to consider whether office actions are material and in need of citation to other patent applications. Several practice pointers can be derived from these cases to assist the patent prosecutor.
1. Cite the existence of related patent applications to their counterpart examiners.
2. Cite references from related cases if they are material.
3. Cite office actions from related applications and re-examination proceedings if they are material.
4. Cite Notices of Allowance or Notices of Allowability if they might be relevant to a double-patenting rejection in a different application.
5. Do not assume that an examiner who is inspecting multiple applications owned by the same party will remember prior art or reasons for rejection from one case to the next.
6. If a decision is made not to cite what later might be argued to be material information, create a memo to the file explaining the reasoning not to cite it, so as to be able to prove that there was no intent to deceive an examiner by withholding the information.
7. Assign prosecution of related applications to the same law firm and preferably the same attorney within that firm to ensure consistent arguments and familiarity during prosecution.
8. If an examiner is verbally notified of material information, follow it up with a written submission or a memo to the prosecution file memorializing the fact.
9. Explain to support staff the importance of retaining any memoranda regarding these issues so that the memoranda are not accidentally thrown out at the conclusion of prosecution.
10. Simply following a law firm’s internal policy regarding citation of material information is not protection if that policy is incorrect.87
Conclusion
The Federal Circuit has made it easier to find a patent unenforceable for inequitable conduct in view of the Dayco–McKesson–Larson line of cases. Patent prosecutors should take note of the new requirement to cite material office actions, even to applications having a common examiner. Patent litigators and licensing attorneys also should review this line of cases to assess the impact on the strength of their positions during litigation or licensing.
Notes
1. Dayco Products, Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed.Cir. 2003).
2. McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed.Cir. 2007).
3. Larson Manufacturing Co. v. Aluminart Prods. Ltd., 559 F.3d 1317 (Fed.Cir. 2009).
4. See 37 C.F.R. § 1.56 (duty to disclose information material to patentability).
5. See U.S. Department of Commerce, U.S. Patent and Trademark Office (USPTO), Manual of Patent Examining Procedure (MPEP ),§§ 09.04(a),2001.05,and 2001.06 (8th ed.,Rev.7,ThomsonWest,2008).
6. Id. at § 609.
7. Id.
8. See Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed.Cir. 2006).
9. See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814 (1945).
10. See Burlington Industries Inc. v. Dayco Corp., 849 F.2d 1418 (Fed.Cir. 1988). See also McKesson, supra note 2 at 897, 926 (Judge Newman’s dissent,stating:“This court returns to the ‘plague’of encouraging unwarranted charges of inequitable conduct….”).
11. See Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed.Cir. 2001).
12. See Driscoll v. Cebalo, 731 F.2d 878, 884 (Fed.Cir. 1982).
13. See 37 C.F.R. § 1.56.
14. Dayco, supra.
15. The USPTO conducts its examination of a patent application by issuing “office actions, ”which are written communications addressing the patentability of proposed patent claims. An examiner might issue several office actions during the examination process for a particular application.
16. Dayco, supra note 1 at 1367 (“This court has never addressed whether the prior rejection of a substantially similar claim in a copending United States application is material under the reasonable examiner standard.”). See also McKesson, supra note 2 at 897, 919 (“This court addressed the failure to disclose rejections in co-pending applications for the first time in Dayco.”).
17. Dayco, supra note 1 at 1361.
18. Id.
19. Id.
20. Id.
21. Id.
22. Id. at 1361-62.
23. Id. at 1364.
24. Id. at 1365.
25. Id. (“A copending application may be material even though it cannot result in shorter patent term when it could affect the rights of the patentee to assign the issued patents.”).
26. Id. at 1366.
27. Akron Polymer Container Corp. v. Exxel Container, Inc., 148 F.3d 1380 (Fed.Cir. 1998).
28. Dayco, supra note 1 at 1366.
29. Id.
30. Id. at 1367.
31. Id.
32. Id.
33. Id.
34. Id. at 1368.
35. Id.
36. Id. (“When prosecuting claims before the Patent Office, a patent applicant is, at least implicitly, asserting that those claims are patentable. A prior rejection of a substantially similar claim refutes, or is inconsistent with the position that those claims are patentable.”).
37. McKesson, supra note 2 at 897. A dissenting opinion was filed by Judge Newman.
38. Id. at 904
39. Id.
40. Id. at 906-07.
41. Id. at 907 and 902. (U.S. patent application no. 07/205,527 was a continuation of U.S. application no. 06/862,278, and U.S. application no.07/078,195 was a continuation-in-part of U.S. application no. 06/862,278).
42. Id. at 908-13.
43. Id. at 910-13.
44. Id. at 912-13.
45. Id. at 915.
46. Id. at 918.
47. Id.
48. Id.
49. Id. The court noted the full text of MPEP § 2004(18) (5th ed. Rev. 3, 1986):
Finally, if information was specifically considered and discarded as not material, this fact might be recorded in an attorney’s file or applicant’s file, including the reason for discarding it. If judgment might have been bad or something might have been overlooked inadvertently, a note made at the time of evaluation might be an invaluable aid in explaining hat mistake was honest and excusable. Though such records are not required, they could be helpful in recalling and explaining actions in the event of a question of “fraud” or “inequitable conduct” raised at a later time.
50. McKesson, supra note 2 at 919.
51. Id.
52. Id. at 922.
53. Id.
54. Id.
55. U.S. Department of Commerce, USPTO, MPEP, §§ 2001.04 and 2001.06 (5th ed. Rev. 3, 1986); McKesson, supra note 2 at 923.
56. McKesson, supra note 2 at 925-26.
57. Id. at 925.
58. Id.
59. Id.
60. Id.
61. Id.
62. Id. at 926.
63. See Purdue, supra note 11.
64. McKesson, supra note 2 at 926.
65. Larson, supra note 3 at 1317.
66. Id.
67. Id. at 1321.
68. Id. at 1324.
69. Id.
70. Id. at 1325.
71. Id.
72. Id. at 1333 and 1337.
73. Id. at 1339.
74. Id. at 1337.
75. Id.
76. Id. at 1338.The court stated: [A]lthough the previous office actions used the Johnson patent to reject the similar claims of the . . . Continuation, the Third Office Action explicitly explained, for the first time, that the Johnson patent shows “the screen is attached across its width . . . to the coupling element . . . thereby indicating that such extends into the tracks.” This was the first time that the examiner of the . . . Continuation conveyed such specific explanation about the Johnson patent.
77. Id. at 1338-39.
78. Id. at 1339 (“The Fourth Office Action articulated a new rejection of the ‘extending into screen tracks limitation’ in view of the Johnson and Kemp patents.”).
79. Id.
80. Id. at 1340.
81. Star Scientific v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed.Cir. 2008).
82. Larson, supra note 3 at 1340 and 1366, citing Star Scientific, supra note 81.
83. Larson, supra note 3 at 1341, citing M. Eagles Tools Warehouse v. Fisher Tooling Co., 439 F.3d 1335, 1341 (Fed.Cir. 2006) (“When the absence of a good faith explanation is the only evidence of intent, however, that evidence alone does not constitute clear and convincing evidence warranting an inference of intent.”).
84. Id.
85. Id. (“At that point, the court must balance the substance of those threshold levels—with a higher level of materiality permitting a lower level of intent, and vice versa.”). Emphasis in original.
86. Id. at 1320-21.
87. See McKesson, supra note 2 at 897, 911-12 (noting that “[t]he court also discounted as not credible . . . [the prosecuting attorney’s] testimony that his firm at the time did not have procedures in place for citing office actions in co-pending applications” and “even if [the prosecuting attorney’s] former firm did have such procedures in place (a matter not decided in fact), the court held that our decision in Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370 (Fed.Cir. 2001) prevents firms from ‘insulat[ing] [their attorneys] against charges of inequitable conduct by instituting policies that prevent [the attorneys] from complying with the law.’”). ■
_____________________________________________________________________________________
About the Author
William F. Vobach is a partner with
Swanson and Bratschun, LLC in
Littleton. He is a registered patent
attorney-(303) 268-0066,
Intellectual Property and Technology Law articles are sponsored by the CBA Intellectual Property and Technology Law and Policy Sections. They provide information of interest to intellectual property and technology attorneys who advise clients on protecting and exploring various forms of intellectual property in the marketplace.
______________________________________________________________________________
The Colorado Lawyer/ January 2010/ Vol. 39, No. 1
I thought the following C-Span videos from the George Washington Law and Federal Circuit Bar Association’s “The National Appellate Court Celebration and Introspective Symposium” held on March 18, 2009 were very interesting.
The first video on “The Role of the Federal Circuit Court of Appeals” includes Judges Newman, Friedman, and Rader and Chief Judge Michel. [View]
The second video on “The Solicitors General View of the Federal Circuit Court of Appeals ” includes a panel of former solicitors general. [View]
Another C-Span video from May 19, 2006 is “The Federal Circuit Judicial Conference” and includes all the judges of the court. [View]
Typically during oral argument the appellant and appellee are each given fifteen minutes to argue their respective cases. When there is more than one appellant or appellee, the allotted time must be shared. The sharing of oral argument time is most often clumsy, ineffective, and discouraged by the judges. Rather, it is more persuasive when one attorney argues all the issues. Because attorneys represent individual clients and not entire sides of a case, however, sharing of time will undoubtedly continue so that each attorney can ensure that his or her client is fairly represented.
As a heads up to those facing this issue in the future, it is possible to move for additional time to be shared among multiple parties on one side. For example, in E-Pass Technologies, Inc. v. 3COM Corp. et al., 2006-1356 (Fed. Cir. Jan. 12, 2007) the Federal Circuit granted the three appellees ten minutes each for a total of thirty minutes rather than the typical fifteen minutes for all appellees. This is what Chief Judge Michel remarked at that time: [Listen].
I ran across this interesting statistic in Chief Justice Roberts’ annual report of the Federal Judiciary for the year 2008:
“The Judiciary, including the Supreme Court, other federal courts, the Administrative Office of the United States Courts, and the Federal Judicial Center, received a total appropriation in fiscal year 2008 of $6.2 billion. That represents a mere two-tenths of 1% of the United States’ total $3 trillion budget. Two-tenths of 1%! That is all we ask for one of the three branches of government—the one charged “to guard the Constitution and the rights of individuals.” Alexander Hamilton, Federalist No. 78.”
Director David Kappos is looking for your suggestions on updating the MPEP [Link].
The MPEP was a topic of discussion in the oral argument of Boehringer Ingelheim v. Barr Labs, 2009-1032 (Fed. Cir. January 25, 2010) decided just recently. In this sound bite, Judge Prost asks counsel about the meaning of “consonance” in MPEP section 804.01 and Judge Dyk inquires whether the meaning of consonance given by the MPEP is too narrow: [Listen].
Readers might be familiar with Dr. Mehmet Oz, an author and expert on health matters who is often featured on “The Oprah Winfrey Show.” It looks like Dr. Oz might also be eagerly awaiting the Supreme Court’s decision in Bilski v. Kappos, as he has his own business method patent application pending at the PTO. The title of the application is “System and Method for Determining a Measure of Human Beauty” [Link to application].
The Federal Circuit will soon decide the case of Medtronic Navigation, Inc. v. BrainLab. That case concerns the issue of whether it was proper to sanction Medtronic and its attorneys $4.4M for their opponent’s attorney fees, due to conduct during a jury trial.
Judge Matsch, who presided over the Medtronic Navigation trial, recently awarded attorneys fees to another party in another patent case in his court. In CCC Group, Inc. v. Martin Engineering, Inc., 05-cv-00086-RPM-MJW (D. Colo. January 19, 2010), Judge Matsch awarded attorneys fees to the defendant and found the patents at issue unenforceable due to inequitable conduct.
It will be interesting to see if this decision is appealed. I will have to study the decision further; but, one statement in the opinion seems to indicate that it was purportedly deceitful and misleading to include as Fig. 1 in a patent a drawing that was an oversimplification of the prior art.
You can read the district court’s opinion here: [Read].
As you may recall, I4I v. Microsoft , 2009-1504 (Fed. Cir. Dec. 22, 2010) is the largest jury verdict of patent infringement to be affirmed on appeal. The Federal Circuit late last year affirmed the jury verdict of $200M in damages and $40M in enhanced damages as well as an injunction of the patented feature from Microsoft’s WORD software. [Link] Microsoft filed a Combined Petition for Rehearing and Rehearing En Banc. Yesterday, I4I filed its response to that petition.
You can read I4I’s response here: [Read].
See also:
Microsoft Requests Rehearing En Banc in I4I Case
The Federal Circuit recently affirmed the jury verdict of infringement in Ariba v. Emptoris, 2009-1230 (Fed. Cir. January 8, 2010). The patent at issue concerned an electronic auction. Interestingly, one of the claims at issue from US patent 6,216,114 was a Beauregard claim:
69. A machine-readable medium whose contents cause a computer to control overtime in an electronic auction, by performing:
a) defining a first time interval, a second time interval, a first overtime condition and a first closing time for a first lot, wherein said first overtime condition comprises:
receiving a plurality of bids;
assigning an ordinal rank to each bid from a best bid to a worst bid; and
receiving a bid having an ordinal rank that is within a predefined number of rank ordinal positions of best bid;
b) determining whether said first overtime condition occurs during said first time interval; and
c) extending said first closing time using said second time interval in accordance with said determination.
Again, the Federal Circuit affirmed the jury verdict of infringement of this Beauregard claim.
There was one question during the oral argument which struck me as odd. Judge Moore asked the attorney for the defendant-appellant whether the claim at issue was an originally filed claim. [Listen]. Perhaps it was just curiosity on Judge Moore’s part — I can’t think of any legal precedent that would require claims that were added or amended after a patent application was filed to be treated any differently during litigation for purposes of literal infringement than one would treat an originally filed claim.
The court’s rule 36 opinion is available here: [Read]. (Just a heads up that there is an error in the caption that has the attorneys who argued the appeal shown as representing the opposing party.)
Reproduced by permission. ©2009 Colorado Bar Association,
38 The Colorado Lawyer 76 (December 2009). All rights reserved.
Book Reviews
Drafting Patents for Litigation and Licensing
By ABA Section of Intellectual Property Law, Bradley C. Wright, ed.
776 pp.; $325
BNA Books, 2008
P.O. Box 7814, Edison, NJ 08818-7814
(800) 960-1220l; www.bnabooks.com
Reviewed by William F. Vobach
William F. Vobach is a patent attorney and a partner with the intellectual property firm of Swanson and Bratschun in Littleton. He is co-editor of the Intellectual Property and Technology Law section of The Colorado Lawyer and a contributing author on “Patent Law” in the CBA’s The Practitioner’s Guide to Colorado Business Organizations—(303)268-0066, bvobach@sbiplaw.com.
Drafting Patents for Litigation and Licensing is an excellent book for anyone involved in the practice of writing patent applications, preparing patent non-infringement and invalidity opinions, or litigating patents. It will be less helpful to business attorneys who are not actively involved in counseling clients about patent law. However, for those attorneys who already have a general understanding of patent law and desire to learn more, this book will serve as a good reference.
Although patent attorneys are aware of the dichotomy between patent preparation and patent enforcement, not all attorneys might recognize a dichotomy exists. Although a patent application typically costs an inventor several thousands of dollars in attorney fees to prepare, millions of dollars typically will be spent when the patent is enforced. Thus, a significantly greater amount of money goes into enforcing an issued patent during litigation as compared to preparing the initial patent application. It therefore benefits all patent attorneys to be aware of the pitfalls that confront an attorney preparing a patent application. For example, it benefits not only those attorneys preparing patent applications so as to avoid these pitfalls, but also patent litigators looking for new arguments to attack an asserted patent.
This book focuses primarily on the preparation of patent applications and the pitfalls that can confront a patent attorney during the application process. In the first chapter, the current state of the law of claim construction is discussed. Then, a very useful chapter discusses the problems that can occur when drafting a patent application. The next chapter draws on the lessons learned from claim construction cases to propose a process that the attorney can employ when preparing a new patent application. I found these first three chapters of the book to be an excellent refresher on the recent developments and trends in patent law. Moreover, I have continued to refer back to them while I have prepared opinions or drafted patent applications.
The next third of the book deals with technical areas of patent law and the issues that are unique to each area. There are chapters focusing on mechanical patents; electrical patents; chemical and pharmaceutical patents; biotechnology patents; software, e-commerce, Internet, and business method patents; and design patents. The chapters are authored by specialists in their respective area of patent law and therefore are well tailored to address issues that confront practitioners in each technical specialty area. The chapter on design patents is one of the better treatments of this area of the law that I have seen.
The third section of the book discusses other topics of interest to patent attorneys, such as continuation practice, drafting patent applications with a view toward Europe, and combining patent prosecution with other forms of representation. The subject matter in these chapters, including the discussion about a firm serving as both opinion counsel and litigation counsel, is particularly well presented. Among the authors is David Hricik, who is one of the leading scholars on ethical issues confronting patent attorneys.
Due to the frequency with which changes occur in patent law, there have already been some significant changes in the law that will have to be updated when the book is supplemented. However, there is no avoiding this issue in books of this nature and I would not put off ordering the book until a supplement is released. Even without a supplement, the book will be valuable for many years to come.
I can highly recommend this book to all patent practitioners—both patent prosecutors and patent litigators alike. The authors selected to write each chapter clearly know their subjects and do an excellent job of presenting the material. The book is well crafted to assist those in the practice of drafting, litigating, or licensing patents to assist their clients in assessing the strengths and weaknesses of a patent.
Review of Legal Resources is published to apprise attorneys of books and other resources that may be of interest to them. Readers wishing to make review suggestions, provide review copies, or write reviews should contact Leona Martínez at leonamartinez@cobar.org. For a list of titles available for review at press time, see the notice on page 124 entitled “Read a book. Write a review.”
Readers who have questions about any reviewed material should contact the reviewer. Please contact the publisher to obtain a copy of the book.
CBA members can purchase any ABA publication at a 20 percent discount through the CBA’s Department of Law Practice Management (LPM). Some materials may be available for checkout through the LPM Lending Library. For more information about LPM purchases and the LPM Lending Library, contact Michelle Gersic at (303) 824-5342, (800) 332-6736, or mgersic@cobar.org.
The Colorado Lawyer | December 2009 | Vol. 38, No. 12
Are registered patent attorneys more successful litigators than those attorneys who are not registered? I imagine the answer you get to that question will depend on whom you ask. In looking at the number of registered attorneys arguing patent cases at the Federal Circuit, however, I found the breakdown between registered attorneys and unregistered attorneys extremely interesting. There is a clear pattern of there being a greater percentage of unregistered attorneys arguing on behalf of appellees. And, a clear pattern of there being a greater percentage of registered attorneys arguing on behalf of appellants.
So, as fodder for discussion around the water cooler, what do these statistics mean, if anything? Does the higher percentage of unregistered attorneys representing appellees mean that unregistered attorneys are better trial lawyers, can think more like jurors or judges, are highly skilled appellate lawyers at general practice firms? Does the higher percentage of registered attorneys representing appellants mean that when the stakes are high, parties bring in a hired-gun appellate lawyer with a registration number? What about the high reversal rates at the Federal Circuit — what do they suggest about the ultimate outcome of a case? Do the trends have anything to do with movement of patent litigation and patent litigators away from boutique patent firms to large general practice firms? I don’t know the answer to these questions — but, I do find the opposing trends interesting.