Thursday, January 15, 2015

Split decision of CAFC in BARD PERIPHERAL VASCULAR v. W. L. Gore

Michael William McConnell of Kirkland & Ellis LLP, arguing on behalf of plaintiffs-appellees
Bard and Goldfarb, won an affirmance of a District of Arizona finding of willfulness
in patent infringement. [ BARD PERIPHERAL VASCULAR v. W. L. Gore ]. Judge Newman strongly dissented.

The litigation has been lengthy:

This dispute began with the filing of the 1974 patent
application from which the ’135 patent eventually issued—twenty-eight
years later. The technology and
patent claims that have been at issue are thoroughly
discussed in this court’s previous decisions involving the
’135 patent and underlying application. See Bard Peripheral
Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d
1171 (Fed. Cir. 2012) (“Bard I”); Cooper v. Goldfarb, 240
F.3d 1378 (Fed. Cir. 2001) (“Cooper II”); Cooper v. Goldfarb,
154 F.3d 1321 (Fed. Cir. 1998) (“Cooper I”).


Briefly, the ’135 patent relates to prosthetic vascular
grafts made of highly-expanded polytetrafluoroethylene
(“ePTFE”). The ePTFE material is made of solid nodes of
PTFE connected by thin PTFE fibrils. It is sold by Gore
under the brand name “Gore-Tex.” The patent generally
covers a vascular graft formed by ePFTE that is thus
homogeneously porous—a structure that allows uniform
cell regrowth to establish a firm integration of the graft
into the body. The different claims of the patent are
directed to grafts made of ePTFE with varying internodal
distances, which are also called fibril lengths.

At issue in this case:

In 2003, Bard Peripheral Vascular, Inc. (“BPV”) and
Dr. David Goldfarb filed suit against Gore for infringement
of the ’135 patent. A jury found the ’135 patent
valid and that Gore willfully infringed, and, in December
2010, the district court denied Gore’s motions for judgment
as a matter of law (“JMOL”) reversing the verdict.
Gore appealed, and, in February 2012, the panel affirmed.
Bard I, 670 F.3d at 1193. The en banc court denied
review but granted rehearing “for the limited purpose of
authorizing the panel to revise the portion of its opinion
addressing willfulness
.” Bard Peripheral Vascular, Inc. v.
W.L. Gore & Assocs., Inc., 476 F. App’x 747 (Fed. Cir.
June 14, 2012) (en banc). The panel accordingly vacated
the parts of its opinion discussing willfulness and allowing
enhanced damages and attorneys’ fees. Bard Peripheral
Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d
1003, 1005 (Fed. Cir. 2012) (“Bard II”). It held that as to
the threshold determination of willfulness, “the objective
determination of recklessness, even though predicated on
underlying mixed questions of law and fact, is best decided
by the judge as a question of law subject to de novo
review.” Id. at 1007.

There was an issue of Bard's standing and right to sue:

And, we see no clear error in the previous decision
on standing that would warrant an extraordinary review
at this stage.

Indeed, on the merits, this is an easy question. We
review de novo the district court’s determination of a
party’s standing, while reviewing any factual findings
relevant to that determination for clear error. SanDisk
Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1377
(Fed. Cir. 2007). Gore’s argument hinges on the absence
of a written instrument transferring to BPV what it
contends was the virtual assignment from Goldfarb to
Bard Inc. See Speedplay, Inc. v. Bebop, Inc., 211 F.3d
1245, 1250 (Fed. Cir. 2000) (holding that a written instrument
was needed to document the “transfer of proprietary
rights” to support standing to sue for patent
infringement); 35 U.S.C. § 261 (“Applications for patent,
patents, or any interest therein, shall be assignable by
law in an instrument in writing.”) (emphases added).
However, BPV has never claimed that in 2003 it had all
substantial rights to the ’135 patent.2 BPV’s position is
only that it was an exclusive licensee with the right to sue
for infringement. It is well established that the grant of a
license does not need to be in writing. See Waymark Corp.
v. Porta Sys. Corp., 334 F.3d 1358, 1364 (Fed. Cir. 2003)
(“Only assignments need be in writing under 35 U.S.C.
§ 261. Licenses may be oral.”); Rite-Hite Corp. v. Kelley
Co., 56 F.3d 1538, 1552 (Fed. Cir. 1995) (en banc) (holding
that to be an exclusive licensee a party may rely on either
an express or implied promise of exclusivity). In any
event, in 1997 there was a memorialized transfer of the
exclusive license from Goldfarb and Bard Inc. to BPV’s
predecessor. We agree with the district court that this
1997 agreement between the parties settles BPV’s right to
sue at the time of the complaint as Goldfarb’s exclusive
licensee. Bard III, at 19-20.

As to "all substantial rights,"

BPV and Goldfarb thus readily meet their burden to
establish standing. For Gore to prevail, it would have to
establish each of the following propositions: (1) the 1980
agreement that was styled as an “exclusive license”
between Goldfarb and Bard Inc. was in fact a virtual
assignment, and (2) Bard Inc.’s transfer of its rights to
BPV under the agreement failed because it was not in
writing. We see no error in the district court’s wellreasoned
analysis on the first point—inter alia, Goldfarb
retained significant reversionary rights, there was a field
of use restriction, and Goldfarb retained the right to share
in damages. See id. at 15. There was no basis, therefore,
to conclude that Goldfarb had transferred “all substantial
rights” to Bard. See Abbott Labs. v. Diamedix Corp., 47
F.3d 1128, 1132 (Fed. Cir. 1995) (finding that even limited
rights retained by the patentee made it a necessary party
in any subsequent infringement suit).

Nunc pro tunc comes up:

Gore argues that our case law prevents
such a retroactive agreement—but for support of
this proposition, all Gore cites is precedent in which we
considered agreements that were executed after the suit
was filed, such as Mars, Inc. v. Coin Acceptors, Inc., 527
F.3d 1359 (Fed. Cir. 2008). Here, by contrast, the 1997
memorialization occurred years before the suit was filed.
The 1997 agreement was not a nunc pro tunc written
agreement that occurred after the complaint. Compare,
e.g., Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d
1359, 1366-67 (Fed. Cir. 2010); Enzo APA & Son, Inc. v.
Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998). Accordingly,
the plaintiffs had standing at the time of the
complaint, and the district court had jurisdiction pursuant
§ 1338(a).

"Willful infringement" is the important part of the case:

To establish willful infringement, the patentee has
the burden of showing “by clear and convincing evidence
that the infringer acted despite an objectively high likelihood
that its actions constituted infringement of a valid
patent.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371
(Fed. Cir. 2007) (en banc) cert denied 552 U.S. 1230
(2008). “The state of mind of the accused infringer is not
relevant to this objective inquiry.” Id. Only if the patentee
establishes this “threshold objective standard” does the
inquiry then move on to whether “this objectively-defined
risk (determined by the record developed in the infringement
proceeding) was either known or so obvious that it
should have been known to the accused infringer.” Id.
While this second prong of Seagate may be an issue of
fact, the threshold determination of objective recklessness
requires “objective assessment” of the accused infringer’s
defenses. Bard II, 682 F.3d at 1006.

As to the objective standard:

Objective recklessness will not be found
where the accused infringer has raised a “substantial
question” as to the validity or noninfringement of the
patent. Spine Solutions, Inc. v. Medtronic Sofamor Danek
USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010); DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1336 (Fed. Cir. 2009).

In this case, Gore's argument relates to inventorship:

Gore’s argument is based on the
fact that its employee, Peter Cooper, supplied the particular
ePTFE tubing that Goldfarb used in making his
successful vascular graft (the “2-73 RF” graft). In Gore’s
view, Cooper furnished to Goldfarb “the embodiment of
the invention before Goldfarb conceived the invention
using that embodiment.” Bard III, at 7.

Here's the twist on reasonable:

As an initial matter, we reject Gore’s argument that
the mere fact a member of the previous panel dissented
on this issue indicates that its position was reasonable.
Gore does not point to any previous case in which we
followed this principle. To the contrary, in Paper Converting
Machine Co. v. Magna-Graphics Corp., 785 F.2d 1013,
1016 (Fed. Cir. 1986), for example, we noted that despite
the existence of a dissenting opinion in a prior opinion
affirming infringement, the same panel could still affirm
willfulness in a later appeal. Otherwise, we would be
imposing a rule that any single judge’s dissent on the
merits could preclude the determination of willful infringement.

Turning to the merits, Gore claimed that its employee,
Peter Cooper, was a joint inventor of the ’135 patent.
Therefore, Gore argued that the patent is invalid for nonjoinder
of Cooper as a co-inventor. Gore now argues that
even though it did not prevail, its argument was still
reasonable in light of the facts in the record and the law
of joint inventorship.

The CAFC gets into conception:

“Because conception is the touchstone
of inventorship, each joint inventor must generally contribute
to the conception of the invention.” Ethicon, Inc.
v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir.
1998). Conception is precisely defined as existing “when a
definite and permanent idea of an operative invention,
including every feature of the subject matter sought to be
patented, is known.” Sewall v. Walters, 21 F.3d 411, 415
(Fed. Cir. 1994). In other words, conception is only complete
when the “idea is so clearly defined in the inventor’s
mind that only ordinary skill would be necessary to
reduce the invention to practice, without extensive research
or experimentation.” Burroughs Wellcome Co. v.
Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).

As to the required degree of contribution to conception,
we have recognized that “[t]he determination of
whether a person is a joint inventor is fact specific, and no
bright-line standard will suffice in every case.” Fina Oil
& Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir.
1997). The underlying principle from our case law is that
a joint inventor’s contribution must be “not insignificant
in quality, when that contribution is measured against
the dimension of the full invention.” Id. Of particular
relevance to this case, we have held that if an individual
supplies a component essential to an invention, that is an
insufficiently significant contribution if the component
and the principles of its use were known in the prior art.
Hess, 106 F.3d at 981; see also Pannu v. Iolab Corp., 155
F.3d 1344, 1351 (Fed. Cir. 1998) (explaining that a joint
inventor is required to “do more than merely explain to
the real inventors well-known concepts and/or the current
state of the art”). Moreover, while joint inventors need
not “physically” work together under § 116, “the statutory
word ‘jointly’ is not mere surplusage.” Kimberly-Clark
Corp. v. Procter & Gamble Distrib. Co., Inc., 973 F.2d 911,
917 (Fed. Cir. 1992). We require that “inventors have
some open line of communication during or in temporal
proximity to their inventive efforts.” Eli Lilly & Co. v.
Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004).
Critically, “each inventor must contribute to the joint
arrival at a definite and permanent idea of the invention
as it will be used in practice.” Burroughs, 40 F.3d at 1229
(emphasis added); see also Vanderbilt Univ. v. ICOS
Corp., 601 F.3d 1297, 1308 (Fed. Cir. 2010) (“[C]oinventors
must collaborate and work together to collectively
have a definite and permanent idea of the complete

Applying these concepts to the facts of this case

In sum, the two questions for objectively assessing
Gore’s defense are (1) what constitutes the “definite and
permanent idea” of the invention at issue and (2) whether
Cooper and Goldfarb acted in concert to jointly arrive at
that idea. With respect to these questions, the factual
record and inferences from the record were raised in the
interference proceeding that preceded the issuance of the
’135 patent and this litigation—and were reviewed by this
court in Cooper I and Cooper II.
As to the first, we note that the invention at issue was
not merely the use of ePTFE in vascular grafts. Rather,
each claim of the ’135 patent includes, as its key limitation,
specified dimensions of fibril length that are essential
for a successful graft.

The key problem for Gore's argument:

Prior to the invention, Cooper
and others in the art believed that pore size was the key
parameter for success. Id. at 1324. We affirmed the
Board’s finding that prior to Cooper’s providing the lot of
ePTFE tubes that ultimately led to the successful 2-73 RF
graft, “he had not yet recognized the importance of the
fibril length required by the interference, i.e., he had not
yet conceived the invention, and he was not aware of the
fibril lengths of the material he was sending to Goldfarb.”
Cooper II, 240 F.3d at 1381. What Cooper told Goldfarb
was, more generally, that “he expected the material to be
suitable as a vascular graft.” Id. at 1384. In other words,
Cooper “had not conceived the fibril length limitation
before he sent the material to Goldfarb.” Id. at 1385.

But there is a twist:

To be sure, in those prior appeals we held that Cooper
“had conceived of the invention, including the fibril length
limitation” before Goldfarb evaluated the 2-73 RF graft
and reduced the invention to practice.
Id. at 1384-85
(citing Cooper I, 154 F.3d at 1326). However, we agree
with the district court that the record—established in
proceedings prior to the litigation—shows that Cooper
had “minimal contact” with Goldfarb on the subject of the
fibril length limitation:

Indeed, Cooper admits that, even after he conceived
the importance of fibril length, he did not
convey that information to Goldfarb. He also admits
that he did not ask Goldfarb to use grafts
with fibril lengths required by the interference
count, or to determine the fibril lengths of successful
grafts. While Cooper was not required to
communicate his conception to Goldfarb, Cooper I,
154 F.3d at 1332, 47 USPQ2d at 1905, his failure
to convey any information or requests regarding
fibril length prevents Goldfarb’s determination of
the fibril lengths of the material from inuring to
his benefit.
Bard III, at 9 (quoting Cooper II, 240 F.3d at 1385).
Based on the record established in Cooper I and II—that
we reviewed—Cooper and Goldfarb independently conceived
of the fibril length limitation. While Cooper I and
II concerned inurement in the context of interference,
they established that—barring Gore’s introduction of new
evidence or theories—Cooper and Goldfarb did not collaborate,
communicate, nor in any way jointly arrive at the
recognition that fibril length was significant for graft
success. Even if Cooper had achieved conception prior to
Goldfarb, Cooper II definitively held that Goldfarb arrived
at conception on his own, and, thus, his reduction to
practice did not inure to Cooper. 240 F.3d at 1386.

The CAFC does explicitly say:

This is an unusual case. Forty years have passed
since Goldfarb filed for the patent at issue in this case.
Gore tried to get a patent on the subject matter of the
patent on which it was sued. The subsequent decades of
prior proceedings shaped what defenses Gore could raise
once it was sued for infringement. Once it failed and the
’135 patent issued, Gore was left with an exceptionally
circumscribed scope of reasonable defense.

Judge Newman dissented:

On remand, the district court re-entered its prior
judgment in its entirety, reciting the evidence that in its
view supported the judgment. Again here on appeal, my
colleagues on this panel repeat the district court’s exercise,
do not apply de novo standards of review, and do not
apply the clear precedent which requires determination of
whether Gore acted with “objective recklessness” In re
Seagate Techs., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)
(en banc). Nor do my colleagues attempt to meet the
court’s responsibility to impart reasonable consistency
and objective standards to the penalty aspect of “willful”
activity, although this was the reason why the en banc
court established a system of de novo determination of
this question of law applied to the facts of the particular

Some of Judge Newman's issues with the decision:

The majority ignores that Gore’s employee Cooper
was the first to conceive of the invention – by final ruling
of the patent interference tribunal and this court; the
majority ignores that the ’135 patent was pending for
twenty-eight years, while Gore developed this Gore-Tex®
prosthetic product; the majority ignores that the district
court refused to enjoin Gore’s provision of these prosthetic
products after this litigation, citing the “potentially devastating
public health consequences”1; the court does not
mention the inequitable conduct that pervades Dr. Goldfarb’s
actions in obtaining the patent, including confessed
perjury of a key witness; the court does not mention the
action for misappropriation of Gore’s trade secrets by
Gore ex-employees who now testify against Gore; the
court does not mention the solid support for the theory
that there is at least joint invention.

Judge Newman discusses the interference, beginning with

The saga of Bard versus Gore started forty-one years
ago, when Gore’s employee Peter Cooper, manager of the
Gore plant in Flagstaff, Arizona, invited Dr. David Goldfarb
at the Arizona Heart Institute to participate in an
ongoing study of Gore’s product, expanded polytetrafluoroethylene
(“ePTFE”), for use as a vascular prosthesis,
i.e., as a graft to repair and replace blood vessels.


Dr. Goldfarb tested the Gore samples by inserting
them in blood vessels of dogs and inspecting their structure
by microscope. On October 24, 1974 Dr. Goldfarb
filed a patent application on the structure of the most
effective of the samples he tested. Cooper had previously
filed a patent application covering the same structure,
and the PTO declared an interference between the Cooper
and Goldfarb applications.

As to the perjury matter:

On remand the PTO held that Goldfarb’s work did not inure to
Cooper’s benefit, relying on affidavits of a Gore employee,
Dan Detton, who later admitted to perjury.2 Cooper II,
240 F.3d at 1380–81.

As to the legal question in this case, Judge Newman noted:

The panel majority, while mentioning that willful infringement
is now a matter of law, does not undertake the
required de novo review. Determination of a matter of
law requires consideration of the positions of both sides,
with due attention to the burdens and standards of proof.
As stated in Seagate Techs., a ruling of willful infringement
requires objective recklessness in the face of a high
likelihood of infringing a patent known to be valid and

The question for the reviewing court is not whether
the district court’s decision of law can be found supported
by substantial evidence. The question of willful infringement
is whether the accused infringer raised a substantial
question of invalidity or unenforceability regarding
the ’135 patent. In re Seagate, 497 F.3d at 1371. Willful
infringement cannot lie “when a reasonable defense is
raised,” Advanced Fiber, 674 F.3d at 1377, “[although] the
record contains substantial evidence to support the jury's
implicit finding” of validity and enforceability. Spine
Solutions, 620 F.3d at 1319. The required showing of
objective recklessness is not met, as a matter of law, when
the patent is reasonably subject to challenge.

Some issues identified by Judge Newman:

(1) the ruling of the Patent and Trademark Office,
affirmed by the Federal Circuit, that Gore's
employee Cooper was the first to conceive of the
invention that was patented by Goldfarb; (2) the
fact that Cooper provided Goldfarb with the Gore–
Tex® tubes that Goldfarb patented; (3) the fact
that Goldfarb tested the tubes in dogs at Cooper's
request; (4) the fact that others had previously
tested the Gore–Tex® tubes in dogs and sheep,
and had reported and published the same results
that Goldfarb later patented; (5) the fact that the
Goldfarb application was pending for 28 years,
leaving doubt as to the outcome in the Patent Office.
It is not irrelevant that the eventual allowance
of the Goldfarb application included the
admitted perjured affidavit of Detton, an affidavit
that Detton asked Goldfarb to withdraw, and was

As to enforceability issues:

Gore also presented by motion seven grounds of unenforceability
of the ’135 patent, quoted by the district court
as follows:
1. Plaintiffs and their attorneys failed to advise
the Patent Office of Dr. Volder’s connections
with Impra in his 1976 affidavit in which he expressed
his opinion on the issue of obviousness as
a presumably impartial person skilled in the art.
2. Plaintiffs and their attorneys failed to advise
the Patent Office at any time prior to withdrawal
of the rejection of Claims 1 to 10 of the
Goldfarb patent application, that in 1978 Lenox
Baker, M.D., withdrew and repudiated paragraph
6 of his 1976 affidavit filed with the Patent Office.
3. The filing of and reliance on two 1976 affidavits
from D. Dan Detton, notwithstanding Mr.
Detton’s repudiation of those affidavits before
they were filed, and Plaintiffs’ subsequent failure
to advise the Patent Office of Mr. Detton’s 1978
repudiation of his 1976 affidavits.
4. Plaintiffs’ reliance on an error that the Patent
Office made in connection with the Matsumoto
publication in Surgery, in which the Patent
Office Examiner mistakenly interpreted the wall
thickness in that publication to be 1 millimeter
(“mm”) rather than 0.5 mm.
5. Plaintiffs and their attorneys failed to provide
information to the Patent Office about Dr.
Volder’s work and his possible role as an inventor
or co-inventor, including the failure to disclose the
existence of and the subsequent destruction of the
Volder notebook.
6. Plaintiffs and their attorneys failed to comply
with the Patent Office order requiring production
of material information from the Goldfarb v.
Impra litigation.
7. Plaintiffs and their attorneys failed to advise
the Patent Office Examiner of the existence of
the Gore shipping log, which contained information
about prior art vascular graft wall thicknesses
that was inconsistent with the 1976
affidavits of Harold Green and Mr. Detton, and
inconsistent with the argument made by Dr. Goldfarb
and Mr. Sutton in persuading the Patent Office
Examiner to withdraw the November 1975
rejection of Claims 1 to 10.

Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc., 573 F. Supp. 2d 1170, 1173–74 (D. Ariz. 2008).

Judge Newman noted of the district court:

Each asserted ground of inequitable conduct was
summarily dismissed by the district court, which stated
that, even if Dr. Goldfarb misrepresented or intentionally
withheld information from the PTO and despite the
admitted perjury, the false information was “not material
to the prosecution of the ’135 patent.” Id. at 1215. That
reasoning cannot be sustained.

On the point of willfulness, Judge Newman concludes

In all events, the question as it relates to willfulness
is whether the defense of invalidity could reasonably be
raised, not whether it eventually succeeded. The flaws in
the Goldfarb patent and the way it was obtained provided
sufficiently reasonable defenses to both validity and
enforceability. On the entirety of the premises and applying
the correct legal standards, the judgment of willful
infringement cannot stand.

The case -- 573 F. Supp. 2d 1170 -- was filed July 29th, 2008.

As to legal authority, the decision includes:

179. Stated generally, patent applicants and their patent attorneys have a duty of candor, good faith and honesty in their dealings with the PTO. 37 C.F.R. § 1.56(a) (1989). The duty of candor, good faith and honesty includes the duty to submit truthful information and the duty to disclose to the PTO information known to the patent applicants or their attorneys which is material to the examination of the patent application. Elk Corp. of Dallas v. GAF Bldg. Materials Corp., 168 F.3d 28, 30 (Fed.Cir.1999); 37 C.F.R. § 1.56(a) (1989). The duty of candor extends throughout the patent's entire prosecution history. Fox Industries v. Structural Preservation Systems, Inc., 922 F.2d 801, 803 (Fed.Cir. 1990).

180. Breach of the duty of candor, good faith and honesty may constitute inequitable conduct. Id. If it is established that a patent applicant engaged in inequitable conduct before the PTO, the entire patent application so procured is rendered unenforceable. Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 877 (Fed. Cir.1988).

181. "To prove that a patent is unenforceable due to inequitable conduct, the [] infringer must provide clear and convincing evidence of (1) affirmative misrepresentations of a material fact, failure to disclose material information, or submission of false material information, and (2) and intent to deceive." Impax Labs., Inc. v. Aventis Pharms., Inc., 468 F.3d 1366, 1374 (Fed.Cir.2006).

182. Information is deemed material if there is a substantial likelihood that a reasonable examiner would have considered the material important in deciding whether to issue the application as a patent. See Elk Corp., 168 F.3d at 31; 37 C.F.R. § 1.56(a). Accordingly, a reference does not have to be prior art to be material information that must be disclosed to the PTO. See 37 C.F.R. § 1.56(a) (1989). "The [information] need only be within a reasonable examiner's realm of consideration." Merck & Co., Inc. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1421 (Fed.Cir. 1989).

183. Submission of a false affidavit may be determined to be "inherently material." Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1318 (Fed.Cir.2006).

The Therasense opinion, which generally made inequitable conduct more difficult to establish, did not come until
May 25, 2011. One recalls that there is an exception to the "but-for" standard when egregious conduct is involved:

Although but-for materiality generally must be proved
to satisfy the materiality prong of inequitable conduct,
this court recognizes an exception in cases of affirmative
egregious misconduct. This exception to the general rule
requiring but-for proof incorporates elements of the early
unclean hands cases before the Supreme Court, which
dealt with “deliberately planned and carefully executed
scheme[s]” to defraud the PTO and the courts. HazelAtlas,
322 U.S. at 245. When the patentee has engaged in
affirmative acts of egregious misconduct, such as the
filing of an unmistakably false affidavit, the misconduct is
material. See Rohm & Haas Co. v. Crystal Chem. Co., 722
F.2d 1556, 1571 (Fed. Cir. 1983) (“there is no room to
argue that submission of false affidavits is not material”)

The concurrence mischaracterizes this exception for
affirmative egregious acts by limiting it to the example
provided – the filing of an unmistakably false affidavit.
Based on this misunderstanding, the concurrence asserts
that this court’s test for materiality is unduly rigid and
contrary to Supreme Court precedent. In actuality,
however, the materiality standard set forth in this opinion
includes an exception for affirmative acts of egregious
misconduct, not just the filing of false affidavits. Accordingly,
the general rule requiring but-for materiality
provides clear guidance to patent practitioners and courts,
while the egregious misconduct exception gives the test
sufficient flexibility to capture extraordinary circumstances.
Thus, not only is this court’s approach sensitive
to varied facts and equitable considerations, it is also
consistent with the early unclean hands cases – all of
which dealt with egregious misconduct. See Precision,
324 U.S. at 816-20 (perjury and suppression of evidence);
Hazel-Atlas, 322 U.S. at 240 (manufacture and suppression
of evidence); Keystone, 290 U.S. at 243 (bribery and
suppression of evidence).


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