Inequitable Conduct Based on Failure to Submit Rejection in Co-Pending Case

Larson Mfg. Co. v. Aluminart Products Ltd. (Fed. Cir. 2009)pic-15.jpg

In an earlier post, I discussed the concurring opinion in this case where Judge Linn argued for a restatement of the law of inequitable conduct that makes it more difficult to allege inequitable conduct absent evidence of fraud. This post covers the majority opinion.

Larson sued Aluminart for infringement of two claims of its patent covering a storm door with a moving glass panel. Without reaching the merits of the infringement argument, the district court found the patent unenforceable due to inequitable conduct during prosecution. The district court found that the patentee had improperly withheld documents from the examiners during reexamination of the patent. (The reexamination had been requested by Aluminart). The Federal Circuit provided the following description of the lower court holding:

The [district] court found that Larson failed to disclose to the Reexamination Panel three items of prior art and two office actions issued in the prosecution of a continuation application that grew out of the application that resulted in the ’998 patent [the patent being reexamined]. The court rejected Larson’s argument that the three items of prior art were cumulative of prior art which already was before the Reexamination Panel and therefore were not material, as well as its argument that the office actions were not material because all of the critical references noted in them already had been disclosed to the Reexamination Panel. After finding that Larson intended to deceive the Reexamination Panel, the court balanced its findings of materiality and intent and found inequitable conduct.

On appeal, the Federal Circuit vacated the holding and remanded for a potential new trial on inequitable conduct.

The inequitable conduct charges stem from the PTO's parallel examination of both the reexam of the patent in suit and a continuation application. During the reexam, Larson's patent attorney submitted hundreds of references, district court proceedings, and disclosed the co-pending continuation. However, the patent attorney did not cross-cite two office action rejections from the continuation or one of the prior art references from the continuation (although every other reference from the continuation was cited). In addition, the attorney did not cite two marketing configuration sheets that were later uncovered during discovery.

Law of Inequitable Conduct: Inequitable Conduct requires clear and convincing evidence of at least a threshold level of evidence that the applicant both (1) "made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information" and (2) by that act "intended to deceive the PTO." The materiality of the action is determined based on a reasonable examiner standard – what would a reasonable examiner "consider important in deciding whether to allow the application to issue as a patent?" If an unsubmitted reference is cumulative to information already on hand, then it will not be seen as material. Proof of intent to withhold a reference is not sufficient. Rather, the evidence must show intent to deceive the PTO. That said, intent may be proven by circumstantial evidence. After finding both threshold materiality and intent, the court must determine if the proof is sufficient to find inequitable conduct and consequently hold the patent unenforceable.

What is Cumulative?: After reviewing the submitted and unsubmitted prior art references in detail, the Federal Circuit found that the lower court had clearly erred in finding the art non-cumulative. Notably, the only features found in the non-submitted art that were not in the submitted art were "irrelevant to the claim limitations at issue and therefore could not support a finding of materiality and non-cumulativeness." Although the unsubmitted prior art included a different embodiment than the submitted reference, that difference was not important because the claims were broadly drafted in a way that cover both embodiments.

Disclosure of Office Actions in Related Cases: The examiner of the co-pending continuation filed four office action rejections. The first was used as the basis for the reexamination request. The second was used as a basis for an initial rejection in the reexamination. However, the patentee did not submit the third or fourth office action for consideration. The Federal Circuit agreed with the lower court that the office actions should have been submitted because the rejections contained "adverse decisions about substantially similar claims" that were "not cumulative" to materials already submitted to the examiner.

Because the Third and Fourth Office Actions contained another examiner’s adverse decisions about substantially similar claims, and because the Third and Fourth Office Actions are not cumulative to the First and Second Office Actions, the district court correctly found the withheld Office Actions material.

In its analysis, the Federal Circuit reviewed Dayco Products where it found the patentee had wrongly withheld rejections from co-pending applications.

In Dayco Products, the patentee failed to disclose rejections in a copending application of claims “that were substantially similar in content and scope to claims pending in the applications that issued as the patents-in-suit.” 329 F.3d at 1367. We held “that a contrary decision of another examiner reviewing a substantially similar claim” was material. Id. at 1368. We further explained that, because a “rejection of a substantially similar claim refutes, or is inconsistent with the position that those claims are patentable, [the] adverse decision by another examiner . . . meets the materiality standard.” Id.   

Thus, on remand, the district court must determine whether the patentee failure to submit the two office actions was done with sufficient intent to deceive the PTO. Although seemingly dicta, the Federal Circuit provided four points of explicit guidance to the lower court. First, the district court need not accept any additional evidence; Second, the court should remember that "material does not presume intent, and nondisclosure, by itself, cannot satisfy the deceptive intent element." Rather, if intent is inferred, it must be "the single most reasonable inference able to be drawn from the evidence." Further, intent cannot be inferred based on a decision to withhold if the patentee has plausible legitimate reasons for withholding. Third, good faith on behalf of the applicant must be considered as it "militates against a finding of deceptive intent." One element of good faith here, may be that the patentee notified the examiners of the co-pending application. Finally, although the Federal Circuit agreed that the office actions were material, the court did not opine on how material. Thus, if the lower court does find clear and convincing evidence of a threshold intent to deceive, the court must again determine whether the combined intent and materiality are sufficient to warrant a holding of inequitable conduct.

Notes:

  • This case is rather silly because the defendant Aluminart was closely following the reexamination. I can almost guarantee that Aluminart realized that the documents had not been submitted even before the reexamination certificate was issued. Certainly, the company could have brought the omission Larson's attention if it truly was material.

41 thoughts on “Inequitable Conduct Based on Failure to Submit Rejection in Co-Pending Case

  1. 41

    What about markman orders? trial transcripts – “PTO deemed admissions”, depositions? evidence produced under protective orders? What about interviews in co-pending cases – estoppel arguments?, What about restriction requirements? What about burying a reference?

    Q: Is there any duty of candor imposed on the requestor? What if the requestor is not register to practice by PTO?

  2. 40

    The examiner might well have looked at the notorious office actions three and four to see if a canned rejection would work even without the rule. We’ll never know.

  3. 39

    The PTO should pass a rule that states that making the Examiner aware of the related pending application is enough. They can get anything they need from the electronic file with no effort.

  4. 38

    “The PTO should adopt a procedure that puts the burden on Examiners to follow prosecution of a co-pending application once an Applicant has made it of record in an IDS, and that permits an Applicant to direct the Examiner to the other application file for copies of the cited references. (ight now there is a similar rule for parent/child applications.)”

    Word.

  5. 37

    The PTO should adopt a procedure that puts the burden on Examiners to follow prosecution of a co-pending application once an Applicant has made it of record in an IDS, and that permits an Applicant to direct the Examiner to the other application file for copies of the cited references. (ight now there is a similar rule for parent/child applications.)

    An on-going requirement to submit Office Actions in co-pending applications can result in never-ending prosecution if you keep having to file RCEs to submit IDSs to make the Office Actions of record in each related application.

    We are killing too many trees making multiple copies of references to submit in co-pending applications when the Examiner could just as easliy pull them up from the co-pending application file.

  6. 36

    Just Brayin’: “The frequent difficulty of the decision whether or not to cite is why we (except Mooney) get paid the big bucks.”

    [rolls eyes]

    Truly pathetic. Better trolls, please.

  7. 35

    Note the following nugget from the Larson opinion, at page 32, explaining why the Third Office Action of the parallel ‘039 prosecution was material to the reexamination, even though Larson had submitted the First and Second Office Actions: “We acknowledge that the ‘039 Continuation examiner later withdrew his rejection based upon the Johnson patent and came to the same ultimate conclusion as the Reexamination Panel–that the Johnson patent did not disclose the…limitation. The ‘039 Continuation examiner’s later view, however, does not change the fact that the Third Office Action contained valuable reasoning and rejections at the time when it was made.”

    (There was also another German reference cited, but the court focused instead on the Examiner’s comments in the Office Actions on other references–see also footnote 4 of the opinion)

    So, even if the Examiner’s rejection is baseless and they later change their mind about the reference (even as in this case, as a result of Applicant’s arguments), the Office Action can still be “material” and serve as a basis for finding IC. Note also that Larson apparently argued that the Third and Fourth Office Actions were “boilerplate,” which I didn’t check but which seems entirely plausible given some of the Office Actions I see. I think this is ridiculous–if the Examiner changed his mind, i.e., was “wrong,” how can that be material?

  8. 34

    If the PTO thinks times are tough now, just wait until a few years from now when the maintenance fee revenue stream starts getting much more shallow, due to the lowered allowance rate of the last few years.

    In many fields, practitioners can become orders of magnitude more efficient at tasks after they’ve been at it for a number of years (I’m talking >5, >10). There’s always going to be some turnover, but maybe the best way for the PTO to get more efficient is to focus on keeping those Examiners who have been there for a long time. Something like big pay jumps after a 7-year mark, and again at 10 years, or compensation based on *actual* performance, not the current system.

  9. 33

    Umm, why do they not have this problem in Europe? Maybe because they have a professional core of Examiners that stays a long time and they actually trust them to do their job (like searching and knowing of other related cases…).

    Yes, I do know they yanked law school in light of the economy – I heard it straight from Doll – but they should never reinstate it. Patent law is hard, you can’t be great in two or three years.

  10. 32

    You asked: “does mckesson require us to submit responses/amendments in addition to Office Actions?”

    I says: Definitely required if the response takes a different position in the co-pending case than the position you are advocating in the present case. But even if not required, go ahead and submit it anyway. That provides your rebuttal to the erroneous statements made by the other Examiner that the present Examiner is now going to consider.

    But if you’re going to submit the Office Action, submit the response anyway. Do you really think the Examiner in your present case will spend much of his/her preciously thin examination time on these other actions and responses that are filed? Then again, it would likely be treted as any other IDS reference and get at least a quick look.

    Remember the intent element here. If you have a family of 50 U.S. cases and have some system in place to cross-cite potentially material references, failure to cite the actual office actions may not rise to the theshold level of materiality, and even if it does, may not rise to the level of actual intent to deceive.

    This has the potential of adding thousands of dollars *per case* where there is a large (or medium) co-pending family.

    Query–does citation of Office Actions and responses fall under the non-patent literature standard, so that a copy must be submitted in the IDS, or is citation sufficient? Published apps aren’t any more “patent” documents than file histories and we do not have to provide copies of published apps. Actions and responses are already published in PAIR.

  11. 31

    MPEP 704.01 “When an examiner is assigned to act on an application which has received one or more actions by some other examiner, full faith and credit should be given to the search and action of the previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general the second examiner should not take an entirely new approach to the application or attempt to reorient the point of view of the previous examiner, or make a new search in the mere hope of finding something. See MPEP § 719.05.”

    While this applies to searches and “actions” by different examiners in the same application, it may affect the degree to which an examiner in one case defers to an examiner in a different but related case. Also, its not so much that the Examiner is “bound” by the other Examiner, but if the Examiner in the related case draws some relevant conclusions or characterizations, the Examiner in the subject case could consider that characterization material to the patentability of the pending claims in the subject application.

  12. 30

    Actually Paul, I believe the opposite statement is present in the MPEP, e.g. that Examiners should accord each other’s findings with full faith and credit. But now, I’m gonna have to go look.

  13. 29

    Since we are talking only about office action examiner statements in somehow related applications, not about actual art, is there not somewhere in the MPEP [if someone is more motivated than myself to look for it] a statement that what an examiner has held is not binding or controlling on another examiner? If thus not even controlling for an allowance or a rejection, should it logically be a basis for inequitable conduct?

  14. 28

    JTS, I wholeheartedly agree as you will see if you note my last sentence, “The frequent difficulty of the decision whether or not to cite is why we (except Mooney) get paid the big bucks.”

    That’s why I laugh at those that decry the “unpredictability” of patent law (or any other law, or life, for that matter).

    As if we can establish a simple rule that we can always follow such as we should “ALWAYS” cite every OA in every related case. As if a patent attorney can charge a client obscene fees for simply doing pro forma stuff without actually thinking. WRONG.

    If it was that simple, everyone including Mooney could be doing it.

    I think your hypo was the McKesson case, and the answer was yes, especially if there was a chance that the Examiner was not clearly already aware of the relation of the cases. The better question might be whether it is sufficient to simply note the related Office Action by reference in a response.

  15. 27

    Just sayin’: it depends on what you mean by “related”.

    The Continuation/Divisional relation between applications is artificial and does not really tell how logically related two applications are. You can have two non-familial applications (no priority claims) that are very similar, with similar claims, same description, etc., maybe even a double patent issue raised by the PTO. You can have two formally related applications (same priority chain) that whose only similarity is the figures and written description, but completely different claims.. inventions that might have been filed as separate applications. Just because two applications are formally related tells the practicioner nothing about what might need to be cross-disclosed.

    There’s no rule-of-thumb that can replace an attorney looking at potentially related cases (whether related by subject matter or formally related) and carefully considering whether material in one application is relevant to another application (basically, if something would hurt your case, then it’s relevant). If you just disclose everything, then you’re wasting your client’s money. If you never disclose then you’re wasting your client’s patent. Sure, err on the side of caution, but rote blind disclosing – to me – is a form of professional laziness, costs clients, and bogs the system.

    Here’s a question: Is it ever necessary to disclose to an Examiner the same Examiner’s Office Action for a related case?

  16. 26

    does mckesson require us to submit responses/amendments in addition to Office Actions?

  17. 25

    The issue of whether to cite office actions themselves (as opposed to simply the references cited therein) came up long ago during an extensive thread followin the McKesson case.

    I remember distinctly saying that office actions themselves should be cited out of an abundance of caution and receiving a lot of flak about it from several posters, who I’m sure were nervous as citing office actions was clearly not part of their regular practice.

    After McKesson and now Larson, it seems pretty clear that Office Actions in related cases should be cited. The frequent difficulty of the decision whether or not to cite is why we (except Mooney) get paid the big bucks.

  18. 24

    “…but I think it is precisely this which needs to be used more often in hiring and retention decisions. We should trust our instincts more often….In a similar manner when somone lies to your face, you might instinctively recognize it.”

    It’s a good thing you are not a hiring manager or in HR Jules. Studies have shown that people that quote studies without understanding them are generally clueless and become expendable rather quickly in downturns. Uhoh for you.

    “The USPTO was hiring 1200 examiners per year, and now there’s a hiring freeze – from 1200 per year to zero. What is the motivation for all this?”

    Let’s throw in the closing of the academy on top of this.

    Hmm, could it be the realization that examiners simply are not needed? The Office has rule making authority as long as the rules are related to processing in the office and the rules are reasonable to the office. With the first step now complete that applicants have to perform a rigorous search and analysis (to a minimum MPEP level), Who needs so many examiners?Heck, the SPE’s can connect the dots, and do so much quicker. Pendency will drop, allowances will climb, the production system can remain unchanged and the union will be gutted. Even downstream litigation will be easier with estoppal effects and the soon to be unveiled rule of invalidating power prior art (hey – you’re responsible for the search – you didn’t find that art? too bad – patent invalid. Next.)

    Can you envision the next power grab – If only patents were more like registrations, we would be able to process them so much quicker….

  19. 23

    I.C. issues are fact specific, so in a sense, the comments above are correct and all I.C. decisions are “limited to their facts”.

    But I.C. decisions, esp. McKesson, can be appreciated for the types of facts that are considered relevant. There were a lot of facts in McKesson, but a critical fact was the D.Ct. holding that the two applications/patents were very similar; the claims were similar. The D.Ct. held that the “core features” of claims in the two patents were similar. To me, the key fact for whether to consider disclosing an OA (assuming that you already cite the art from any sibling OA) is whether the claims are similar; whether they’re for the same invention/embodiment, but of varying scope, or perhaps differ by only a minor limitation. Of course even for apps for different inventions, the attorney should be alert for anything in an OA that a different examiner for a sibling case might find relevant.

  20. 22

    me … They did yank “the law school carrot” in light of the current economy. I couldn’t tell by what you said whether you were aware of this.

    However, I don’t necessarily agree with your premise that a person pursuing a law degree as an examiner will produce bad work. Sure it exists, but I think it’s a lot more complicated.

    Studies have shown that you will judge a person within the first few seconds of meeting them. Strength of character is hard to measure, but I think it is precisely this which needs to be used more often in hiring and retention decisions. We should trust our instincts more often. I have seen examiners who intend to get a law degree and leave, and it is simple to read on their faces that intent. In a similar manner when somone lies to your face, you might instinctively recognize it.

    Fear and necessity are great motivators. The USPTO was hiring 1200 examiners per year, and now there’s a hiring freeze – from 1200 per year to zero. What is the motivation for all this? You can’t possibly expect every examiner to be 100% top quality. On top of that you have a 40 year old production system, as if technology hasn’t changed in 40 years, creating a burden.

    People make bad decisions every day. So yes, there are probably a few people that use the USPTO to fund law school then leave. That’s not even necessarily a bad thing. People do good or bad work based on a lot of different factors. Those people, like everyone else, will be judged accordingly.

  21. 21

    “I think it is past time to remove the law school carrot for Examiners. Hire people who intend to stay…and cultivate them into a great corps.”

    42 minutes later (email to PTO employees):
    A message from Steve Smith, Chief Administrative Officer

    Due to budget constraints, the Agency has suspended funding for the following programs:

    1. The Non-Duty Hours Legal Studies Program and the Non-Duty Hours Technical Studies Program. This suspension became effective on Monday, March 16; and the Patent Office Professional Association was properly notified of this action on that date.

  22. 20

    Does the court give any indication of what Larson’s excuse was for not disclosing? I wonder if Larson learned what NOT to say from McKesson, i.e., “If I had to do it all over again, Your Honor, I’d still withhold those Office Actions.”

  23. 19

    “The problem for materiality is not easily answered. As an agent/attorney, one could have a reasonable belief that a reference (office action/piece of art) is cumlative or not material, but how are you going to be certain that the a court will decide otherwise. You can’t.”

    And yet people still pay hundreds or thousands of dollars to board jet planes every day.

  24. 18

    “So, in view of the reasons line of cases, one should cite whatever could potentially be relevant. That is, anything. If an attorney/agent tries to parse out what should or shouldn’t apply, the attorney potentially risks an invalid patent (inequitable conduct) and malpractice as such (you should have cited everything, but you didn’t, so pay me for my patent which may be invalid).”

    Of course, according to this logic, specifications should be 10,000 pages long and use every alternative term, definition, express recitation of ranges down to the ten-thousandth decimal point because “you never know.” Meanwhile, there is reality.

    “Blind disclosure undercuts the “intent to deceive” prong of the test. If you have a systematic approach to disclosing everything in selected categories – e.g., art from related cases, foreign searches, etc. – without applying attorney judgment regarding relevance, you can never have intent to deceive.”

    Except for when there is a minor hiccup, then your “systematic approach” has the potential to make that hiccup sound a lot like a revolver shot. See, e.g., the very case we’re talking about.

  25. 17

    “If you have a systematic approach to disclosing everything in selected categories – e.g., art from related cases, foreign searches, etc. – without applying attorney judgment regarding relevance, you can never have intent to deceive.”

    unless you negligently fail to follow that procedure … then your unexplained failure becomes “intent”

  26. 16

    Determining what an examiner would consider material/relevant is a losing game. No matter what judgment you apply, you are throwing yourself open to risk – such as a district court judge or patent-untrained Federal Ckt judge to get conned into an IE holding.
    Blind disclosure undercuts the “intent to deceive” prong of the test. If you have a systematic approach to disclosing everything in selected categories – e.g., art from related cases, foreign searches, etc. – without applying attorney judgment regarding relevance, you can never have intent to deceive.

  27. 15

    “As an agent/attorney, one could have a reasonable belief that a reference (office action/piece of art) is cumlative or not material, but how are you going to be certain that the a court will decide otherwise[?] You can’t.”

    That’s true, but isn’t intent the real issue in that case where your reasonable belief on materiality differs from the court? From Larson, quoting Dayco: “Intent to deceive cannot be inferred simply from the decision to withhold the reference where the reasons given for the withholding are plausible.” That says your reasons need only be plausible, which sounds easier to satisfy than even a “reasonableness” standard. In any event, this suggests a disclosure standard that falls way short of being certain that no court will ever find the reference material. It seems to me that Larson is easily off the hook if this case is properly argued on remand.

  28. 14

    The problem for materiality is not easily answered. As an agent/attorney, one could have a reasonable belief that a reference (office action/piece of art) is cumlative or not material, but how are you going to be certain that the a court will decide otherwise.

    You can’t.

    So, in view of the reasons line of cases, one should cite whatever could potentially be relevant. That is, anything.

    If an attorney/agent tries to parse out what should or shouldn’t apply, the attorney potentially risks an invalid patent (inequitable conduct) and malpractice as such (you should have cited everything, but you didn’t, so pay me for my patent which may be invalid).

    This line of cases is pretty bad and hopefully Congress will restructure the court expanded views of “inequitable conduct”.

  29. 13

    OK, I haven’t read In re Clark or Stevens v Lex Tex, so I hope this question doesn’t admit of a ridiculously easy answer of which I’m unaware:

    How is a ruling by the PTO under 37 CFR 1.56 not substantive? It directly invades the territory of 35 USC, and is unrelated to the workings within the PTO.

    Has the PTO ever terminated examination of an application under 37 CFR 1.56?

    Applicant’s representative’s conduct is regulated through the canons.

    And exactly how did 37 CFR 1.56 get extended to the post-grant situation? IC as it relates to the APPLICANT/PATENT OWNER should be the sole province of the courts, as an equitable remedy, and the PTO shouldn’t have any say in attempting to codify a remedy that affects the substantive rights of a patent-holder.

  30. 12

    ” As other posters on this thread have correctly noted, Dayco/McKesson aren’t limited to their facts. Failure to cite relevant prosecution materials ”

    Ah, the key word: relevant. Not “failure to habitually cite prosecution materials” (which is what I said was a waste of time). Not “failure to cite EVERY page of prosecution materials” (that would be more or less the same as ‘habitual filing’). But “failure to cite RELEVANT prosecution materials.”

    Yes, these IC cases are extremely fact dependent, more so than any other cases. Resist the temptation to panic. Judge Linn didn’t. You can do better.

  31. 11

    I think it is past time to remove the law school carrot for Examiners. Hire people who intend to stay…and cultivate them into a great corps.

  32. 10

    Funny as heckfire.

    Examiners are mostly clueless.

    The thought that what one of them is saying might be relevant to a parallel/related proceeding is hilarious.

    You have 10 Examiners write 10 different actions on the same set of claims and you’ll get 10 Actions that have less in common than Clifford the Big Red Dog and Mars’ polar caps.

  33. 9

    “Dayco/McKesson are limited to their facts and habitually disclosing every office action in every related case is a waste of time.”

    MM,

    Once again, your ignorance is showing. As other posters on this thread have correctly noted, Dayco/McKesson aren’t limited to their facts. Failure to cite relevant prosecution materials from applications in the same family, or otherwise related, is at your peril of being “second guessed” later in litigation for inequitable conduct. The Federal Circuit isn’t going to throw you a “life line” even in this circumstance.

  34. 8

    Q: which would a defendant typically prefer: a ruling of unenforceability, or a ruling of invalidity? (e.g. for reasons of costs, etc.)

    as here, where defendant COULD have brought the omissions to the plaintiff’s attention, and thus to the court’s attention, foreclosing an IC argument on those omissions, but DID NOT and went the IC route instead

  35. 7

    This is an insane outcome. What can we expect Examiners to do? Now they aren’t supposed to search, they have never read the specification, they cannot draft nonobviousnewss rejections after KSR…

    What can we epxect them to do if they can’t follow a related case in the same family? Why can European Examiners manage all this, but U.S. examiners can manage none?

  36. 6

    I must say that I am amazed that a court could hold that not submitting office actions – after disclosing the continuation! – could possibly be inequitable conduct. Doesn’t the Examiner have any responsibility to follow the progress himself? How can intent be proved or even inferred?

    OK, I am glad to know the court’s view and I will comply. But the court is being an ass.

  37. 5

    “Many prosecutors I know, contrary to my advice, do not cross-copy office actions among related cases on the theory that Dayco/McKesson will and should be strictly limited to their facts. Not so.”

    Dayco/McKesson are limited to their facts and habitually disclosing every office action in every related case is a waste of time. If you have a family of cases of any substantial size with staggered ongoing prosecution, you’ll never get a patent issued because you’ll continually be pulling them to file Supplemental IDS.

    I haven’t read the case, but the whole issue boils down to: (1) why didn’t the patentee disclose the office actions in question and (2) how offensive is the lameness of the answer to (1) given the materiality of the rejection in the non-disclosed Office Actions?

    Another point I’ve raised in the past which arises here: would the patentee’s lapse look as bad if the patentee had not been so diligent about disclosing every other guldarn piece of art under the sun? Super diligence with respect to disclosure makes the omitted refs “stick out.” If those omitted refs are arguably material, you’ve just screwed yourself royally.

  38. 4

    “The materiality of the action is determined based on a reasonable examiner standard”

    Nitpicky point: The Federal Circuit held in *Digital Control* that any of the five standards of materiality it has used over the years is legit.

  39. 3

    Many prosecutors I know, contrary to my advice, do not cross-copy office actions among related cases on the theory that Dayco/McKesson will and should be strictly limited to their facts. Not so.

  40. 2

    Advocacy trumps logic, nice. The defendant had full knowledge that the office actions were not cited, even though the art in the office actions were. So, the defendant kept this little nugget in their back pocket so they could make an “inequitable conduct” charge.

    So, the trick here is to allege inequitable conduct for any reference/prior art document not cited, and then to expand such criteria to continuations, cip, divisionals, and then broadly “related applications”.

    Look that the foreign prosecution matter (was the reference cited in Brazil not translated, etc. etc.). See if the A references were cited.

    If you find that one piece of art/office action under these circumstances wasn’t cited, argue inequitable conduct.

  41. 1

    “Certainly, the company could have brought the omission Larson’s attention if it truly was material.”

    Interesting comment, Dennis. However, this reexamination was ex parte, and Aluminart was not allowed to participate directly. Are you suggesting that perhaps there should be a duty to raise the issue earlier, or that perhaps there should be some kind of estoppel arising out of this conduct?

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