Is the mention of a reference in the Background a “disclosure”?

Have you ever run across a patent that discusses a prior art reference in the Background of the patent; but, in looking at the References Cited section of the patent as well as the file wrapper for the patent you see that the reference mentioned in the Background was neither IDS’d  by the applicant nor cited by the examiner?  Have you ever wondered whether that amounts to inequitable conduct?  I’ve researched the issue a little in the past and never was able to locate a case that decided the issue.  So, I was intrigued to hear the oral argument in Ring Plus v. Cingular Wireless, 2009-1537 (Fed. Cir. Aug. 6, 2010) which had similar facts.

The panel determined that there was insufficient evidence to prove intent to deceive the PTO.  It noted that this was not a non-disclosure case because the references at issue were disclosed in the application itself (i.e., in the Background section).   The district court’s finding of unenforceability due to inequitable conduct was reversed.  The opinion stated:

Cingular notes that the applicants prepared, but decided not to file, an IDS that listed both Strietzel and Sleevi. Again, this evidence relates to materiality, but not intent. While it may have been relevant if this was a non-disclosure case, it is not; Sleevi and Striezel were disclosed in the application itself.


The exchanges between the judges and the attorneys during the oral argument were very interesting.   The defendant-appellee argued that MPEP Section 609 in force in 2004 required citation of the reference by the applicant.  [Listen] and [Listen].

The plaintiff-appellant argued that the MPEP requires the examiner to read the application before conducting a search.  Since a search was conducted, the plaintiff-appellant argued that the examiner must have read the entire application and been aware of the references. . . . [Listen].

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

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

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