Nondisclosure of Similar Claims’ Rejection May Void Patents

Failure to disclose the rejection of claims in a copending application before a different examiner that were substantially similar to the asserted patent claims may constitute inequitable conduct that could render the patent unenforceable.  The Federal Circuit held that a contrary decision by another examiner reviewing a similar claim meets the threshold materiality test of Akron Polymer Container Corp. v. Exxel Container Inc. and Rule 56, but vacated a summary judgment of unenforceability and invalidity, reasoning that the district court failed to address intent to deceive.  Although the patentee filed a terminal disclaimer limiting the term of its patent, the terminal disclaimer did not include a provision that any patent granted on that application…shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the rejection.  (Dayco Products Inc. v. Total Containment Inc., Fed. Cir., 5/23/03).

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