Intellect Wireless v. HTC

By Jason Rantanen

Intellect Wireless, Inc. v. HTC Corp. (Fed. Cir. 2013) Download 12-1658.Opinion.10-7-2013.1
Panel: Prost, Moore (author), O'Malley

This opinion is notable because it involves one of the rare instances post-Therasense in which the Federal Circuit concludes that inequitable conduct occurred.

This appeal involves two related patents, Patent Nos. 7,266,186 and 7,310,416, which relate to wireless transmission of caller ID information.  During the prosecution of the '186/'416 patent family, Daniel Henderson, the inventor named on the patents, submitted a Rule 131 declaration to overcome a prior art reference.  A Rule 131 declaration is a document in which the inventor asserts that he or she invented the claimed invention prior to the date of a prior art reference cited by the examiner, a process colloquially referred to as "swearing behind."  (The mechanism does not allow applicants to bypass a statutory bar and was eliminated by the AIA.)  Mr. Henderson averred in the declaration that “the claimed invention was actually reduced to practice and was demonstrated at a meeting . . . in July of 1993.”  

When Mr. Henderson's company, Intellect Wireless, sued HTC for patent infringement, it came out that he had not actually reduced the invention to practice as of the date stated in the declaration.  The district court found that the false declaration constituted inequitable conduct under the Therasense framework.  Intellect appealed.

On appeal, the Federal Circuit affirmed, agreeing that both the requirements of materiality and intent were met. 

Materiality: One question left somewhat open after Therasense was the issue of what constituted egregious affirmative conduct.  Here, the court agreed that Mr. Henderson's conduct rose to that level. 

In one of its earliest opinions, the Federal Circuit held that when an applicant files a false declaration, the applicant must "expressly advise the PTO of [the misrepresentation’s] existence, stating specifically wherein it resides." Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1572 (Fed. Cir. 1983). In addition, "if the misrepresentation is of one or more facts, the PTO [must] be advised what the actual facts are." Id. 

Therasense, the Intellect Wireless panel held, did not modify this law.  "[T]he materiality prong of inequitable conduct is met when an applicant files a false affidavit and fails to cure the misconduct." Slip Op. at 7. 

Here, the original declaration was indisputably false; the only question was whether the subsequent actions by Mr. Henderson's attorney were sufficient to cure the falsity.  The court held that they were not.  While the attorney quickly submitted a revised declaration, that revised declaration failed to correct the falsehoods in the original declaration.  It did not expressly negate the false references to actual reduction in the original declaration, which included statements such as a reference to a "prototype now in the Smithsonian" that suggested a device embodying the claimed invention was actually built at the relevant time.  The panel agreed that "[n]owhere did the declaration openly advise the PTO of Mr. Henderson’s misrepresentations, as our precedent clearly requires," Slip Op. at 6., and "at best, the revised declaration obfuscated the truth."  Id.

Intent: The Federal Circuit also affirmed the district court's finding of intent to deceive.  In addition to the false statements made during prosecution of the '186 and '416 patents, Mr. Henderson also made false statements about actual reduction to practice during the prosecution of other patents in the family.  This pattern of false and misleading statements combined with the submission of a declaration containing fabricated examples of actual reduction to practice in order to overcome a prior art reference was sufficient to establish intent to deceive. 

12 thoughts on “Intellect Wireless v. HTC

  1. OT, but I notice that I am no longer listed in the Patently-O community. Please put me back into that community listing.

  2. I recall one case from years ago where the patent on a computerized wireless portable device appeared to be granted based, in part, on a personal Examiner interview in which a “protoype” of the claimed device was shown to the Examiner. The funny part was that the “prototype” only simulated the functionality recited in the claims.I wonder how often this happens? i.e., how often are Examiners presented with (and persuaded by) e.g., a simulation (or animation) of how a claimed “user interface” would ideally appear or function if someone eventually figured out how to program an actual computer to perform the functionality recited in the claim?

  3. What is benefit of putting such details in a 131 dec (prototype in smithsonian, etc) like here? My thinking has been that it is best to just say I conceived and reduced to practice prior to (date), attach your exhibit, and wait to see if the examiner demands more. Most of the time they don’t.If he doesn’t demand more, at court you could always argue the ambiguity of what it means to reduce to practice (i.e., prototype, draft foreign application, flow diagrams, alogrithm, etc).Any thoughts?

    1. at court you could always argue the ambiguity of what it means to reduce to practice (i.e., prototype, draft foreign application, flow diagrams, alogrithm, etc).Any thoughts?That’s pathetic.

      1. Malcolm, both you and the pathetic Frequent_Runner share the same empty suit icon….I chose Julius Caesar. Why don’t you choose something more appropriate than an empty suit. Why not Admiral Nelson?

      2. How is it pathetic? In normal declaration everyone usually just writes only so and so is sole or joint inventor. Nobody volunteers details such as when and where until asked in court/PTO or deposition. Of course I would never lie or tell someone to lie and I am sure most Patent Attorneys would not, but as long as the legal interpretation of invention/conception/etc changes, why limit someone to a specific definition? Before about 1995 you hadn’t invented a computer device until you wrote the code. Suddenly writing flow diagrams was enough for invention. This would be a case if someone had originally said they invented and reduced to practice on the day they wrote the code they might have been screwed.

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