Wednesday, October 09, 2013

CAFC discusses inequitable conduct in INTELLECT WIRELESS, INC. v. HTC


Therasense is cited

“To prove inequitable conduct, the challenger must
show by clear and convincing evidence that the patent
applicant (1) misrepresented or omitted information
material to patentability, and (2) did so with
specific intent to mislead or deceive ”
the U.S. Patent and Trademark Office (PTO).
In re Rosuvastatin Calcium Patent
Litig. , 703 F.3d 511, 519 (Fed. Cir. 2012). “When the
patentee has engaged in affirmative acts of egregious
misconduct, such as the filing of an unmistakably false
affidavit, the misconduct is material.”
Therasense, Inc v. Becton, Dickinson & Co.
, 649 F.3d 1276, 1292 (Fed. Cir.2011) (en banc).
“We review the district court’s ultimate
finding of inequitable conduct for abuse of discretion, and
review the underlying findings of materiality and intent
for clear error.”
Novo Nordisk A/S v. Caraco Pharm.
Labs., Ltd. , 719 F.3d 1346, 1357 (Fed. Cir. 2013).

Filing false statements with the PTO is a bad thing:

We agree with HTC. It is undisputed that Mr. Henderson’s original declaration
was unmistakably false. Absent curing, this alone establishes materiality. There
is no dispute in this case that Mr. Henderson did
not actually reduce the claimed invention to practice

nor did he demonstrate a prototype in July of 1993. (...)

We note that Therasense
in no way modified Rohm & Haas’s holding that the materiality prong of inequitable
conduct is met when an applicant files a false affidavit
and fails to cure the misconduct.

Outcome: asserted patents are
unenforceable due to inequitable conduct.


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