Tuesday, August 10, 2010

Golden Hour at the CAFC: selective disclosure might be a problem

Inequitable conduct was one issue in the CAFC decision in Golden Hour vs. EMSCharts. The actions in question were those of a senior patent agent named Michael Fuller at Knobbe Martens.

The CAFC noted:

On August, 4, 1998, during prosecution of the ’073
patent, Fuller submitted an Information Disclosure
Statement (“IDS”) further describing the AeroMed sys-
tem. In the IDS, Fuller stated: “Applicants are aware of
AeroMed Software, computer software for Air Medical
Dispatch, Flight Program Management, Medical Chart-
ing, Continuing Education Tracking, Transfer Center,
Physician’s Referral Lines, and Custom Applications.
AeroMed Software is a product of Innovative Engineering
of Lebanon, New Hampshire.” J.A. 4944-45.


After the jury verdict in favor of [patentee] Golden Hour, the dis-
trict court held a bench trial to consider the issue of
inequitable conduct. The brochure that the jury had
found not to anticipate was a central feature of the ineq-
uitable conduct trial. The brochure was undated and
described the AeroMed system (“the AeroMed brochure”).
Hutton testified that he did not have the brochure at the
time that the application was filed on March 2, 1998, but
that he received it about three weeks after at the
AeroMedical Services Midyear Conference. Hutton gave
prosecution counsel the AeroMed brochure sometime
before August 4, 1998.


Based on the brochure, prosecution counsel prepared
the IDS and filed it on August 4, 1998. The description of
the AeroMed system in the IDS is identical (with the
exception of “Centers” being plural in the brochure) with
what is set forth on the front cover of the brochure. The
IDS did not disclose the integrated billing system de-
scribed in the brochure. At no time during prosecution of
the application was the brochure or the billing system
information provided to the examiner.

(... ; selective disclosure)

Defendants also argued that the act
of selectively disclosing material recited on the front of
the brochure but not disclosing the recitation of “inte-
grated” “billing” on the inside of the brochure also consti-
tuted inequitable conduct.


Therefore because “Fuller
selected that part of the brochure to disclose that did not
threaten patentability” and “excluded . . . the entire
teaching that would have been a serious obstacle to
patentability,” the district court found that “[t]here can be
no question” that the withheld infmaterial.” Id. at 15.


The PTO rules clearly require the
submission of known information that contradicts mate-
rial information already submitted to the PTO. See
Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229,
1239-40 (Fed. Cir. 2008); Pharmacia Corp. v. Par Pharm.,
Inc., 417 F.3d 1369, 1373 (Fed. Cir. 2005). If a misstate-
ment or omission is material under the Rule 56 standard,
it is material for the purposes of inequitable conduct.
Digital Control, 437 F.3d at 1316.

(...; material art need not be prior art)

our prior cases make clear that informa-
tion may be material even if it does not qualify as prior
art. As we held in Duro-Last, Inc. v. Custom Seal, Inc.,
321 F.3d 1098, 1107 (Fed. Cir. 2003),
[t]his court has long held that whether a prior ref-
erence is material, i.e., whether there is a sub-
stantial likelihood that a reasonable examiner
would have considered the reference important in
deciding whether to allow the application to issue
as a patent, is not controlled by whether that ref-
erence actually anticipates the claimed invention
or would have rendered it obvious.
See also Digital Control, 437 F.3d at 1318 (“[A] misstate-
ment or omission may be material even if disclosure of
that misstatement or omission would not have rendered
the invention unpatentable.”); Li Second Family Ltd.
P’ship v. Toshiba Corp., 231 F.3d 1373, 1380 (Fed. Cir.


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