GS CleanTech Crop. v. Adkins Energy LLC
Obscuring and withholding evidence of a pre-critical date offer for sale renders a patent unenforceable for inequitable conduct.
Results for Materiality
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Outside the Box Innovations v. Travel Caddy, Inc.
It is unresolved whether an incorrect claim of small entity status under 37 C.F.R. § 1.27(a) qualifies as information material to patentability. However, where there is no evidence that small entity status was deliberately falsely claimed, underpayment of the application fee can be remedied by payment of the deficiency, rather than eradication of the patent. If immaterial to the patentability of the application, litigation related to the application need not be disclosed.
Golden Hour Data Systems, Inc. v. emsCharts, Inc.
Information that directly contradicts an applicant’s statements, even if not prior art, is most likely material and should not be excluded from submission to the Examiner for consideration. For a finding of intent, a court must provide detailed factual findings with respect to crucial facts. Joint infringement can only be found if there is sufficient evidence for a finding or inference of “control” or “direction.”
Larson Manufacturing Co. v. Aluminart Products Ltd.
Failure to cite office actions articulating new rejections of a continuation application in the reexamination of the parent application is material and may lead to a finding of inequitable conduct.
McKesson Info. Sol’ns v. Bridge Med.
A patentee commits inequitable conduct by failing to cite material prior art discovered by one examiner in a co-pending case before a different examiner, by failing to cite a rejection of a “substantially similar” claim to a different examiner or by failing to cite an allowance of related claims by the same examiner in a continuation application.
Novo Nordisk Pharmaceuticals Inc. v. Bio-Technology General Corp
The presumption of enablement does not appear to hold for non-patent publications used as anticipatory references. A prophetic example drafted in the past tense may be used to find inequitable conduct in some circumstances.
Intirtool Ltd. v. Texar Corp.
Intirtool’s patent on pliers for punching and connecting overlapping sheets of metal is not invalid for failing to comply with written description requirement because a claim’s preamble should only be read as limiting when it recites additionally structure or steps underscored as important by the specification. Also, because the Federal Circuit does not read the preamble as a limitation, there cannot be inequitable conduct because there is neither materiality nor falsity. Finally, Intirtool is not barred by latches because the latches clock cannot start until a pantentee has constructive or actual knowledge of an act of infringement that gives rise to a legal claim.
Kingsdown Medical Consultants, Ltd. v. Hollister, Inc.
Finding that particular conduct amounts to “gross negligence” does not justify inference of intent to deceive unless involved conduct, viewed in light of all evidence, including evidence indicative of good faith, indicates sufficient culpability to require finding of deceptive intent, and ultimate question of whether inequitable conduct occurred is equitable in nature and as such is reviewed by appellate court under abuse of discretion standard; final determination that inequitable conduct occurred in relation to one or more claims renders entire patent unenforceable.
Purdue Pharma L.P. v. Endo Pharmaceuticals Inc.
Plaintiffs’ patents directed to compositions that claim pain control over four-fold dosage range in approximately 90 percent of patients are unenforceable for inequitable conduct during prosecution, since plaintiffs’ repeated assertion that inventors’ “surprisingly discovered” that pain could be relieved over this claimed reduced dosage range was deliberate decision to represent mere “expectation” or “insight” as precisely quantified “result” or “discovery.”
Hoffman-La Roche Inc. v. Promega Corp.
Inequitable conduct was found based upon the presentation of an example in the past tense when the example had never been performed as written. The court found that the misrepresentation was made with an intent to deceive and was material to patentability, despite the failure of the claims to recite the misrepresented subject matter.