Archive for February, 2010

An Update on the Law of Inequitable Conduct in Patent Prosecution

Monday, February 22nd, 2010


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



          The Federal Circuit has made it easier to find a patent unen­forceable for inequitable conduct in view of the DaycoMcKessonLarson 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.



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

Role of the Federal Circuit Court of Appeals

Saturday, February 20th, 2010

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]

Inequitable Conduct — Standards of Review

Thursday, February 18th, 2010

In an unusual disposition in Sensormatic Electronics LLC v. Von Kahle, et al., 2009-1193 (Fed. Cir. Feb. 17, 2010), the Federal Circuit issued an “order” affirming the district court with a brief explanation of the issues on appeal, rather than a perfunctory Rule 36 Judgment containing no explanation.  It will be interesting to see if the court follows up with a Rule 36 Judgment.  Absent a judgment by the panel, I’m curious whether the losing party is procedurally in a position to request a panel rehearing, request rehearing en banc, or petition for certiorari.

The court’s order is available here: [Read].

Inequitable Conduct Issues

At the district court, the defendant asserted inequitable conduct by the inventors for failure to cite during original examination a reference that was later cited by an examiner during a reexamination of the patent.  The inventors stated that they did not believe the reference was material and therefore did not cite the reference to the PTO in the original prosecution of the patent.  The district court judge found the inventors’ testimony credible and therefore made a factual finding that the inventors did not have the requisite intent for inequitable conduct.  In the “order” above, the Federal Circuit “affirmed” the district court.

The Federal Circuit stated its standard of review of a district court’s unenforceability decision in Scanner Technologies v. Icos Vision Systems, 528 F.3d 1365(Fed. Cir. 2008) by stating:

The ultimate question of inequitable conduct is committed to the discretion of the district court and we review the court’s determination that the patentee engaged in inequitable conduct for abuse of discretion. Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 541 (Fed. Cir. 1990), cert. denied, 500 U.S. 918 (1991). An abuse of discretion occurs when (1) the court’s decision is clearly unreasonable, arbitrary, or fanciful, (2) the court’s decision is based on an erroneous construction of the law, (3) the court’s factual findings are clearly erroneous, or (4) the record contains no evidence upon which the court rationally could have based its decision. Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1229 (Fed. Cir. 2007).


In order to establish inequitable conduct, the party challenging the patent is required to establish by clear and convincing evidence that the patent applicant “(1) either made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office.” Symantec Corp. v. Computer Assoc. Int’l, Inc, 522 F.3d 1279, 1296 (Fed. Cir. 2008) (quoting Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). Both intent and materiality are questions of fact, and must be proven by clear and convincing evidence. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). We review a district court’s findings on the threshold issues of materiality and intent for clear error. Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1366 (Fed. Cir. 2008). Under the clear error standard, the court’s findings will not be overturned in the absence of a “definite and firm conviction” that a mistake has been made. Id. “Once threshold findings of materiality and intent are established, the district court must weigh them to determine whether the equities warrant a conclusion that inequitable conduct occurred.” Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1363 (Fed. Cir. 2006) (quoting Purdue Pharma, 438 F.3d at 1128).


One of the issues asserted by the appellant/defendant in the oral argument of Sensormatic was that one of the inventors (who was accused of inequitable conduct by the defendant) stated at trial that if he had it to do over again, he would not cite the reference in question to the examiner.  [Listen].  This assertion went unchallenged — during oral argument at least.
The statement of “If I had it to do over again, I’d do it again” may sound familiar to those familiar with the McKesson v. Bridge Medical, 487 F.3d 897 (Fed. Cir. 2007) case.  The patent attorney accused of inequitable conduct in that case stated that if he had it to do over again he would not have cited the information in question.  In McKesson, however, the district court judge found intent and the Federal Circuit affirmed.  In Sensormatic, the district court judge found no intent and the Federal Circuit has now affirmed.  Hence, this demonstrates the significance of the “clear error” standard of review for the intent prong in inequitable conduct cases and the importance of prevailing at the district court level.


Use of Summary and Abstract for Claim Construction

For those of you that are concerned that judges might put too much emphasis on statements in the Abstract and Summary of a patent, you might find this part of the Sensormatic oral argument interesting in that some of the judges appeared willing to read in a limitation of “abruptness” into the claims without first identifying some sort of textual “hook” from the claims. [Listen] and [Listen].  The inventors asserted that they understood the claims to include an abruptness limitation even though that language apparently does not appear in the claims.


You can listen to the entire oral argument in Sensormatic here: [Listen].

Called out of the audience to argue a case

Tuesday, February 16th, 2010

When filing a brief with the Federal Circuit the parties are allowed to denote material appearing in their briefs as confidential.  Similarly, material presented in the Joint Appendix can be marked confidential.   At oral argument, the judges of the Federal Circuit will often ask the parties if these confidential markings are still applicable for two reasons: (1) so that the judges are free to ask questions about the material in open court and have it recorded; and (2) so that the judges know what can be published in any written opinion.

In one case from several years ago, counsel for an intervenor in the case was present at oral argument but was not taking part in the oral argument itself.  He was called up to address the confidentiality issue and Judge Bryson remarked that this was like the attorney nightmare where one is called out of the audience to argue a case: [Listen].

Cobbling snippets together — does not teach

Monday, February 15th, 2010

Patent prosecutors and their clients are familiar with an examiner picking and choosing unrelated pieces of text from a lengthy reference in order to reject a claim.  The Federal Circuit has noted that this is improper in the context of anticipation when the reference does not teach the elements of the claim as arranged in the claim.  The Federal Circuit has had occassion to reiterate this rule over the last couple of years in Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) and in NetMoneyIn v. Verisign, 545 F.3d 1359 (Fed. Cir. 2008).  Even more recently in Therasense v. Becton Dickinson and Co., 2009-1008 (Fed. Cir. Jan. 25, 2010) the Federal Circuit stated:


The way in which the elements are arranged or combined in the claim must itself be disclosed, either expressly or inherently, in an anticipatory reference. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). The requirement that the prior art elements themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added).


The concept of “inherent disclosure” does not alter the requirement that all elements must be disclosed in an anticipatory reference in the same way as they are arranged or combined in the claim. “[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation . . . .” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)); see also Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999))). For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.



In the context of inducing infringement, judges of the Federal Circuit have expressed a similar principle as well.  Namely, in the oral argument of E-Pass Technologies, Inc. v. 3COM Corp. et al., 2006-1356 (Fed. Cir. Jan. 12, 2007), the plaintiff asserted that pieces of information contained in a lengthy instruction manual for a PDA were sufficient to induce direct infringement of a method claim.  Chief Judge Michel and Judge Linn expressed significant doubt about such a theory because it required cobbling together snippets of information contained at disparate parts throughout the instruction manual.  [Listen] and [Listen].  In its opinion, the panel stated:


In contrast, the evidence here shows, at best, that the Palm defendants taught their customers each step of the claimed method in isolation. Nowhere do the manual excerpts teach all of the steps of the claimed method together, much less in the required order. Accordingly, it requires too speculative a leap to conclude that any customer actually performed the claimed method. Indeed, the very same record evidence upon which E-Pass attempts to rely also shows that the accused PDAs are general-purpose computing devices that can be used for a variety of purposes and in a variety of ways. In comparison, the device at issue in Moleculon was intended to be used in only one way—to practice the infringing method—and that method was explicitly taught by the proffered instructions. Id. If, as E-Pass argues, it is “unfathomable” that no user in possession of one of the accused devices and its manual has practiced the accused method, see E-Pass Repl. Br. at 16, E-Pass should have had no difficulty in meeting its burden of proof and in introducing testimony of even one such user. Having failed to meet that burden, E-Pass has no basis to overturn the district court’s decision.

You can listen to the entire E-Pass oral argument here: [Listen].

You can read the court’s  E-Pass opinion here: [Read].

You can listen to the oral argument in Therasense here: [Listen].

You can read the court’s Therasense opinion here: [Read].

Additional Time for Oral Argument

Sunday, February 14th, 2010

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].

Judicial efficiency

Wednesday, February 10th, 2010

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.”

[Link to 2008 Annual Report]

Updating the MPEP

Tuesday, February 9th, 2010

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].

Dr. Oz’s Patent Application

Sunday, February 7th, 2010

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].

You be the judge — Inequitable Conduct

Friday, February 5th, 2010

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].