What is a reasonable interpretation of the teachings of the prior art?
The opinion did draw an important distinction:
To be clear, we agree with Apotex that Dr. Sherman had no duty to disclose his own suspicions or beliefs regarding the prior art. There is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art. The misconduct at issue, however, goes beyond failing to disclose a personal belief or alternative interpretations of the prior art; here, Dr. Sherman affirmatively and knowingly misrepresented material facts regarding the prior art.
As to intent, the Federal Circuit states that "[Dr. Sherman] knew enough to recognize that he was crossing the line from legitimate advocacy to genuine misrepresentation of material facts."
Finally, the Federal Circuit did not reach the "egregious misconduct" determination because the evidence of materiality and intent were sufficient and thus the District Court's inequitable conduct determination was not an abuse of discretion.
As to the point about "advocating," IPBiz notes the CAFC cited Rothman v. Target Corp.
, 556 F.3d 1310, 1328–29 (Fed. Cir. 2009). That case was an appeal from the United States District Court for the District of New Jersey, Garrett E. Brown, Jr., with the decison written by CJ Rader. Note the outcome: Because the district court erred in upholding the jury's inequitable conduct finding, this court affirms-in-part and reverses-in-part. The relevant text is:
The boundaries on a patent attorney's conduct are not so narrow, however. While the law prohibits genuine misrepresentations of material fact, a prosecuting attorney is free to present argument in favor of patentability without fear of committing (p. 1329) inequitable conduct. See Young v. Lumenis, Inc., 492 F.3d 1336, 1348 (Fed. Cir. 2007) ("We therefore fail to see how the statements . . . which consist of attorney argument and an interpretation of what the prior art discloses, constitute affirmative misrepresentations of material fact."). This court has little basis to find deceptive intent in the routine back and forth between examiner and applicant. Moreover, this court recognizes that the Patent Act gives the examiner the discretion to reject or accept an applicant's arguments based on the examiner's own conclusions regarding the prosecution record.
In any event, this type of conclusory analysis betrays no intent to deceive the PTO and obtain a patent with objectively false information. Rather, it is an attempt to characterize the prior art in a manner favorable to the attorney's client — far from deception. No reasonable jury could rely on Mr. Jacobson's statements as clear and convincing proof of inequitable conduct.
See also IPBiz post
CAFC affirms inequitable conduct against Apotex in Moexipril case
and earlier post
CAFC: "Apotex’s conduct in this case is particularly egregious"