Last week, the Federal Circuit issued its opinion in Golden Hour Data Systems, Inc. v. EMSCHARTS, Inc. et al., 2009-1306 (Fed. Cir. Aug. 9, 2010). The main issue in the case concerned alleged inequitable conduct by the patent agent who prosecuted the application. Judge Ward of the Eastern District of Texas had ruled in the district court case that the patent was unenforceable due to inequitable conduct by the patent agent.
Essentially, the arguments on appeal centered on whether the patent agent had “intent to deceive the patent office.” As I understand it, the patent agent, prosecuting the application in 1998, had been given a brochure by the inventor shortly after the filing of the application. The brochure was undated. The patent agent had a practice of not submitting undated material to the patent office because it would not be considered by the examiners. So, the patent agent summarized the brochure and submitted the summary via an IDS. The summary, however, did not disclose information from the middle of the short brochure that Judge Ward found material.
The defendants’ attorney argued that because Judge Ward had found that even a cursory review of the brochure would have made someone aware of the material information that this amounted to “selective disclosure” by the patent agent rather than non-disclosure. The defendants also argued that it was inconsistent to say that you couldn’t submit the entire brochure as being undated and to say that you weren’t aware of the material information; because, even a cursory review to check for the date allegedly would have made one aware of the material information.
The Federal Circuit seemed to feel that Judge Ward danced around the intent issue. So, they remanded the case back to Judge Ward.
This oral argument is pretty interesting if you are a prosecutor. It highlights just how easy it is to get run over by the inequitable conduct bus ten years after you’ve filed an IDS and no longer have the necessary recollection of the facts to be able to defend yourself.
Here are some of the more interesting portions of the oral argument: [Listen], [Listen], [Listen], [Listen], and [Listen].
You can listen to the entire oral argument here: [Listen].
You can read the Federal Circuit opinion here: [Read].