Saturday, November 16, 2013

SJ denying inequitable conduct reversed in OWW v. Alps

Ohio Willow Wood v. Alps involved an issue of inequitable conduct

This suit was filed by The Ohio Willow Wood Company (“OWW”) against Alps South, LLC (“Alps”) for infringement of United States Patent No. 5,830,237 (the “’237 patent”). The United States District Court for the Southern District of Ohio granted summary judgment that: (1) OWW was collaterally estopped from challenging the invalidity of claims 1, 2, 4, 15, 16, and 20 of the ’237 patent; (2) claims 18, 19, 21, 22, and 23 of the ’237 patent were invalid for obviousness; and (3) Alps failed to raise a genuine issue of material fact with respect to inequitable conduct. We affirm on the issues of collateral estoppel and obviousness, but reverse and remand on the issue of inequitable conduct.

Of inequitable conduct:

Inequitable conduct is an equitable defense to patent infringement. Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). It is only applied where the patentee has unfairly obtained an unwarranted patent through misconduct. Id. at 1292. Thus, “[t]o 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 PTO.” In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012) (citing Therasense, 649 F.3d at 1287).


We agree with Alps. When viewing the evidence in a light most favorable to Alps, there are genuine issues of material fact regarding whether OWW committed inequi- table conduct during the reexamination proceedings that preclude summary judgment.


A party alleging inequitable conduct, however, need not strictly demonstrate but-for materiality in all cases. Rather, “[w]here the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit,” materiality is presumed. Id. at 1292 (citations omitted). See also Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1294 (Fed. Cir. 2012) (“a false affidavit or declaration is per se material”). In this context, materiality is premised on the notion that “a patentee is unlikely to go to great lengths to deceive the PTO with a falsehood unless it believes that falsehood will affect issuance of the patent.” Id.

Juicy Whip v. Orange Bank is cited

Corroboration does not require that every detail of the testimony be independently and conclusively sup- ported by explicit disclosures in the pre-critical date documents or physical exhibits. See Lazare, 628 F.3d at 1374; Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 741 (Fed. Cir. 2002) (the standard of proof required to corroborate testimony related to prior public use is not “beyond a reasonable doubt”) (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 60 (1923)).

Of inventorship

In patent law, the “inventor” is the person who conceived of the invention. C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998); Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994) (“[d]etermining ‘inventorship’ is nothing more than de- termining who conceived the subject matter at issue”). Here, Mr. Comtesse never admitted he was an “inventor” or that he conceived of the idea for the SSGL. He only testified that he was involved in the development of Silipos’ products and had particular skills that were beneficial to developing and manufacturing the SSGL. Conversely, OWW was aware that Mr. Robert Gould (not Mr. Comtesse) was listed as the inventor on Silipos’ patent application that allegedly covered the SSGL de- vice. Thus, even if Mr. Comtesse had testified to inven- torship or conception, which he did not, applying the proper evidentiary standards to OWW’s assertions of Mr. Comtesse’s sole inventorship required clear and convinc- ing evidence not only that Mr. Comtesse conceived of the SSGL but also that Mr. Gould had not conceived of any aspect of the SSGL. OWW did not possess any such information, but nevertheless made the self-serving assertion to the BPAI that Mr. Comtesse was “the inven- tor” of the SSGL.

We have considered OWW’s remaining arguments and do not find them persuasive. We leave it to the district court to determine if the inference of deceptive intent that we hold could be drawn when viewing the evidence in a light most favorable to Alps remains after assessing the credibility of OWW’s witnesses. See, e.g., Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1334-1337 (Fed. Cir. 2012) (affirming on the issue of inequitable conduct because patentee’s asserted good faith belief for withholding material information from the PTO was contrary to record evidence and the district court concluded that the patentee’s witness lacked credibility).


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