Monday, September 29, 2008

Praxair gets a win at CAFC in ATMI case

The CAFC did more heavy lifting on inequitable conduct in the Praxair case:

Inequitable conduct in breach of this duty can be established by showing by
“clear and convincing evidence that the applicant (1) made an affirmative
misrepresentation of material fact, failed to disclose material information, or submitted
false material information, and (2) intended to deceive the [PTO].” Cargill, Inc. v.
Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). The required showings of
materiality and intent are separate, and a showing of materiality alone does not give rise
to a presumption of intent to deceive. See Kingsdown Med. Consultants, Ltd. v.
Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988); see also M. Eagles Tool Warehouse, Inc.
v. Fisher Tooling Co., Inc., 439 F.3d 1335, 1341 (Fed. Cir. 2006) (“[A] failure to disclose
a prior art device to the PTO, where the only evidence of intent is a lack of a good faith
explanation for the nondisclosure, cannot constitute clear and convincing evidence
sufficient to support a determination of culpable intent.”). An inference of intent to
deceive is generally appropriate, however, when (1) highly material information is
withheld; (2) “the applicant knew of the information [and] . . . knew or should have
known of the materiality of the information; and (3) the applicant has not provided a
credible explanation for the withholding.” Ferring B.V. v. Barr Labs., Inc., 437 F.3d
1181, 1191 (Fed. Cir. 2006);

Praxair lost on the '115 but won other points; of the '115-->

Of intent:

Here intent to deceive may be inferred from findings: (1) that the RFO art was
highly material to the prosecution of the ’115 patent, (2) that the applicants knew of the
RFO art and knew or should have known of its materiality, and (3) that the patentee has
failed to come forward with any credible good faith explanation for the applicants’ failure
to disclose prior art use of RFOs to the PTO. See Pfizer, 518 F.3d at 1367;

the district court also explicitly found that the prosecuting attorney (Tolomei) and one of the
inventors (LeFebre) knew of the undisclosed RFO art. Praxair, 445 F. Supp. 2d at 480
(“Messrs. LeFebre . . . and Tolomei . . . admitted to an awareness of the RFO prior


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