Federal Circuit finds that inequitable conduct for Submission of Misleading Video Evidence Supporting Patentability

During prosecution of a patent application for a camera lens, Frazier argued that the increased depth of field achievable with the claimed lens distinguished the claimed lens from the prior art, and submitted a video purportedly shot with the claimed lens showing this increased depth of field, when in fact certain scenes in the video were not shot with the claimed lens.  The examiner subsequently allowed the application without further rejection.  Frazier sued Roessel for infringement, and the district court found that the submission of the video was a material representation made with intent to deceive, and accordingly held that the patent was unenforceable for inequitable conduct.

On appeal, Frazier argued there was insufficient proof to show the examiner was misled by the video because the claimed lens was capable of producing the shots in the video, as evidenced by Frazier’s recreation of the shots in the video using the claimed lens and his expert’s testimony about the capabilities of the claimed lens.  The appeals court was not convinced, holding that the mere submission of the video constituted a sufficiently material misrepresentation without regard to whether the claimed lens could produce the same shots.  Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1571 (Fed. Cir. 1983) (“In contrast to cases where allegations of fraud are based on the withholding of prior art, there is no room to argue that submission of false affidavits is not material.”).

Frazier also argued that he could not have intended to deceive unless he believed the claimed lens was incapable of achieving the depth of field of the lens used to shoot the video.  The appeals court was not convinced, stating that Frazier’s argument, if correct, would require proof that he subjectively believed the submission of the video was deceptive, and holding that direct evidence of intent is unavailable in most cases and unnecessary in any event.  Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs., Ltd., 394 F.3d 1348, 1354 (Fed. Cir. 2005) (“‘Intent need not, and rarely can, be proven by direct evidence.’  Rather, in the absence of a credible explanation, intent to deceive is generally inferred from the facts and circumstances surrounding a knowing failure to disclose material information.” (quoting Merck & Co. v. Danbury Pharmacal. Inc., 873 F.2d 1418, 1422 (Fed. Cir. 1989))); Ulead Sys., Inc. v. Lex Computer & Mgmt Corp., 351 F.3d 1139, 1146 (Fed. Cir. 2003) (“Direct evidence of deceptive intent is not required; rather it is usually inferred from the patentee’s overall conduct.”).

A copy of the case can be found at Frazier v. Roessel Cine Photo Tech, Inc., 417 F.3d 1230, 75 U.S.P.Q.2D 1822 (Fed. Cir. 2005).

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