Monday, February 20, 2006

Ferring v. Barr. Split on inequitable conduct at CAFC.

In Ferring v. Barr, 2006 U.S. App. LEXIS 3554, Judge Newman wrote:

"Inequitable conduct" in patent practice means misconduct by the
patent applicant in dealings with the patent examiner, whereby the applicant
or its attorney is found to have engaged in practices intended to deceive or
mislead the examiner into granting the patent. It is a serious charge, and the
effect is that an otherwise valid and invariably valuable [*40] patent is
rendered unenforceable, for the charge arises only as a defense to patent

Today my colleagues on this panel not only ignore Kingsdown and
restore a casually subjective standard, they also impose a positive inference of
wrongdoing, replacing the need for evidence with a "should have known"
standard of materiality, from which deceptive intent is inferred, even in the
total absence of evidence.
Thus the panel majority infers material
misrepresentation, infers malevolent intent, presumes inequitable conduct, and wipes out a valuable property right, all on summary judgment, on the theory that the
inventor "should have known" that something might be deemed material. The panel
majority, steeped in adverse inferences, holds that good faith is irrelevant and
presumes bad faith. Thus the court resurrects the plague of the past, ignoring
the Kingsdown requirements of clear and convincing evidence of a
misrepresentation or omission material to patentability, made intentionally and for the
purpose of deception. I respectfully, but urgently, dissent.

At issue is conflict-of-interest by an affiant/declarant.

The affiant's or declarant's interest is a factor which may be considered, but the affidavit or declaration cannot be disregarded solely for that reason." As appellants concede, we have previously held that a declarant's prior relationships with the patent applicant may be material, and that failure to disclose such relationships to the examiner may constitute inequitable conduct. Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1581-82 (Fed. Cir. 1996); Paragon, 984 F.2d at 1191-92.


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