By David Hricik, Mercer Law School
In a single decision issued by several panels, the Board held that the patentee had failed to act in good faith by, boiled down, intentionally withholding material test data that was inconsistent with the arguments it was making in favor of patentability of both original and proposed substitute claims. The case is Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics LLC, IPR2021-00847 (Patent 8,084,443 B2), IPR2021-00850 (Patent 8,293,467 B2), IPR2021-00854 (Patent 8,669,240 B2), IPR2021-00857 (Patent 9,212,399 B2), IPR2021-00860 (Patent 9,683,256 B2) (May 3, 2023).
Basically, the claims were directed to a composition that would kill certain pathogens and the test data showed it didn’t. If so, then of course the Board’s conclusion that intentionally withholding that information violates the duty of candor is itself no news.
What is worth discussing is the Board’s statement that Rule 56 applied to an IPR. It cited and quoted Rule 56 in several spots, though it also cited and quoted the IPR rules in other spots.
Why does this matter? Citing Rule 56 is wrong. By its terms it applies only to “the filing and prosecution of a patent application…” IPRs are not “patent prosecution.” (Nor are ex parte re-examinations, which are subject to a different rule from both Rule 56 and the IPR rules, but I digress.). But, the Board did rely also on the IPR rules, which are the applicable ones, so what’s the problem?
That gets to the second point: the Board’s decision masks the extraordinary breadth of the disclosure rules in IPR. Specifically, in an IPR who is subject to a duty to disclose is much broader — ridiculously broad — compared to Rule 56.
Specifically, Rule 56 only applies to inventors, practitioners, and those “substantively involved” in prosecution. 37 C.F.R. § 1.56(c) In contrast, the main rule that applies to original claims in an IPR proceeding, 37 C.F.R. § 42.11(a), applies to “parties and individuals involved” in the proceeding. Re-read that: not only is it not limited to “substantively involved,” it says “parties.” No such language appears in Rule 56.
Another IPR rule applies when a party files a paper, and it has a different scope of “who” is subject to disclosure. Specifically, there’s an obligation to disclose inconsistent information, but it is both broader and narrower than both Rule 56 and 42.11(a): that obligation applies to “inventors, corporate officers, and persons involved in the preparation or filing of the documents or things” where the inconsistency exists. 37 C.F.R. § 42.51(b)(1)(iii)
A decade or so ago I was speaking at the Office and pointed out that the word “party” in 42.11(a) is ridiculously broad as is including inventors and corporate officers in 42.51(b)(iii) since it is not limited to those inventors and corporate officers who are at least involved in the proceeding (do you really have to call Tim Cook to see if he knows something when Apple is in an IPR? Inventors who left the company and aren’t involved?).
Would this have mattered here? Doesn’t look like it as the data that was withheld was seemingly known to the lawyers representing the patentee, but it is important in IPR proceedings to watch this trap about the scope of disclosure (and it’s also more important that the USPTO fix it…).