Federal Circuit Tightens Standards for Inequitable Conduct

In Therasense Inc. v. Becton Dickinson and Co., Civ. Case 2008-1511, 2008-1512, 2008-1513, 2008-1514, 2008-1595 (Fed. Cir. May 25, 2011) (en banc), Therasense (now known as Abbot) was sued by Becton in the District of Massachusetts seeking a declaratory judgment for non-infringement of U.S. Patent 6,143,164 and 6,592,745. Abbot countersued Becton and joined Nova Biomedical Corp., Becton’s supplier for infringement of U.S. Patents 164,745, and 5,820,551. Abbot also sued Bayer Healthcare LLC for infringement of the ‘551 and ‘745 patents. The case was transferred and consolidated in the Northern District of California. Abbot’s patent ‘551 was found to be unenforceable by the District Court, because Abbot failed to disclose to the United States Patent and Trademark Office (USPTO) a brief filed with the European Patent Office (EPO) regarding an earlier patent, U.S. Patent 4,545,382’s counterpart, in that office. Patent ‘551 was issued based on differentiation from patent ‘382.

Federal Circuit Finds Inequitable Conduct Could Be Based Upon Failure to Disclose Later-Filed Related Applications

In Leviton Manufacturing Company, Inc., v. Universal Security Instruments, Inc., and USI Electric, Inc., 2010 U.S. App. LEXIS 10917 (Fed. Cir. 2010), appellant Leviton Manufacturing Company Inc. (Leviton) appeals a decision which gave attorney’s fees and costs to Shanghai Meihao Electric Inc. (Meihao) based on inequitable conduct and vexatious litigation.  This article only concerns the inequitable conduct part of the case. Leviton filed patent No. 690,776 (Germain) on October 22, 2003.  Six months later, Leviton filed patent No. 827,093, now issued as 6,864,766 (766).  Both the 766 and the Germain have many nearly identical claims. During the prosecution of 766, Leviton did not disclose the Germain application or the fact that certain claims had been copied from Germain into the 766 patent.  The PTO then issued a double patent rejection for substantively identical claims.  In a suit between Meihao and Leviton, judge found that Leviton had committed inequitable conduct, and awarded over a million dollars in fees in summary judgment.

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Federal Circuit Finds Inequitable Conduct Where Statements in Prosecution Provide Evidence That Prior Art Devices Were Highly Material

In Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306 (Fed. Cir. 2008), Praxair brought suit against ATMI, alleging infringement of three Praxair owned patents: U.S. Patent No’s:  6,045,115 (the ‘115 patent); 6,007,609 (the ‘609 patent); and 5,937,895 (the ‘895 patent).  All three patents involve pressurized storage containers, used in the semiconductor industry, limiting the rapid discharge of hazardous gasses.  The ‘115 and ‘609 patents focus on capillary flow restrictors, while the ‘895 patent concerns a release valve.  Both Praxair and ATMI produce pressurized gas cylinders used to store the hazardous gasses used in the semiconductor industry. Praxair filed suit on December 22, 2003 in the U.S. District Court for the District of Delaware, asserting that several claims of each of the above-noted patents are infringed by ATMI.  ATMI responded by asserting an affirmative defense of invalidity of the Praxair patents and asserted counterclaims for a declaratory judgment of noninfringement and invalidity with regards to the ‘115, ‘609 and ‘895 patents.

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Federal Circuit Finds Information Discovered After the Filing of an Application Must Be Material to Form Grounds of Inequitable Conduct

In Research Corporation Technologies, Inc. v. Microsoft Corporation, 536 F.3d 1247, 87 USPQ2d 1519 (Fed. Cir. 2008), Research Corporation Technologies, Inc. (“RCT”) appealed the Federal Circuit for the District Court for the District of Arizona’s holding of RCT’s patents unenforceable due to inequitable conduct and its grant of summary judgment of invalidity and noninfringement in favor of Microsoft Corporation (“Microsoft”). The Federal Circuit reversed, vacated, and remanded the case to the District Court with instructions to reassign the case. Background Halftoning technology is used in computers and printers. A halftone is an image that simulates a continuous tone image, but is actually an arrangement of individual dots. The particular spacing between the dots gives the viewer the illusion of a continuous picture consisting of varying shades of gray in the image. One method of halftoning is thresholding, which uses a grid-like array, or mask, to carry the threshold to initiate pixels for a particular pattern. Due to the difficulty and

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Federal Circuit Finds Inequitable Conduct For Misleading Declaration Facts

In Aventis Pharma S.A.v. Amphastar Pharmaceuticals, Inc., No. 2007-1280 (Fed. Cir. May 14, 2008), Aventis Pharma S.A. and Aventis Pharmaceuticals, Inc. (collectively, “Aventis”) appealed the District Court for the Central District of California’s finding of inequitable conduct and holding of unenforceability of Aventis’ Patent No. RE 38,743 (the ‘743 patent) and Patent No. 5,389,618 (the ‘618 patent). The Federal Circuit affirmed. Background The ‘734 patent and ‘618 patent are directed to the composition of low molecular weight heparins (“LMWHs”). These LMWHs comprise the drug Lovenox® (marketed as Clexane® in Europe), which helps to prevent blood clotting, while minimizing the chance of hemorrhage, especially in high-risk surgery. In the first office action, the patent examiner rejected the claims under 35 U.S.C. §§ 102(b)/103 over several references, including European Patent 40,144 (EP ‘144), stating that each of the prior art references teaches sulfated heparinic admixtures within the molecular weight (MW) range of the claims and is considered to be inherently the same

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Federal Circuit Find Inequitable Conduct For Failure to Submit Notes

In Monsanto Company v. Bayer Bioscience N.V., 85 USPQ2d 1582 (Fed. Cir. 2008), Bayer owns four patents related to Bacillus thuringiensis (BT) toxins, which are proteins produced by strains of the BT bacteria.  BT toxins are harmless to humans and most animals, but are toxic to certain crop-destroying insects.  In 1986, Plant Genetic Systems (a predecessor to Bayer) succeeded in obtaining insect-resistant plants that expressed a truncated form of a BT toxin, resulting in the four Bayer patents.  Specifically, U.S. Patent No. 5,545,565 (one of the four Bayer patents) claims artificial genes comprising: a truncated BT toxin gene encoding a BT toxin of a specific amino acid sequence; and the regulatory region of a gene naturally expressed in plant cells, which enables the gene to be transcribed in plants. Monsanto, the alleged infringer, developed a genetically modified corn product that expressed a BT toxin with the same amino acid sequence claimed in the Bayer patents.  Accordingly, in December 2000, Monsanto

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Federal Circuit Finds Inequitable Conduct on Multiple Grounds

Decision Highlights Multiple Potential Grounds for Finding Inequitable Conduct Due To Falsely Claiming Priority, For Failing To Report Litigation In Related Cases, And For Failing To Submit Relevant Prior Art In Nilssen, et al. v. Osram Sylvania, Inc., et al., 504 F.3d 1223; 84 USPQ2d 1811 (Fed. Cir. 2007), Ole K. Nilssen and the Geo Foundation, Ltd. (collectively, “appellants”) appealed from the judgment of the United States District Court for the Northern District of Illinois in favor of Osram Sylvania, Inc. and Osram Sylvania Products, Inc. (collectively, “Osram”) holding fifteen patents issued to Nilssen unenforceable for inequitable conduct.  The fifteen patents include U.S. Patents 4,857,806 (“the ‘806 patent”); 5,164,637 (“the ‘637 patent”); 5,233,270 (“the ‘270 patent”); 5,343,123 (“the ‘123 patent”); 5,402,043 (“the ‘043 patent”); 5,416,386 (“the ‘386 patent”); 5,432,409 (“the ‘409 patent”); 5,479,074 (“the ‘074 patent”); 5,481,160 (“the ‘160 patent”); 5,510,680 (“the ‘680 patent”); 5,510,681 (“the ‘681 patent”); 4,677,345 (“the ‘345 patent”); 5,047,690 (“the ‘690 patent”); 5,189,342 (“the ‘342 patent”);

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