Federal Circuit Unanimously Affirms Inequitable Conduct, Teaching that Curing False Statements Needs to be Done Clearly

In Intellect Wireless, Inc. v. HTC Corp., the court affirmed the district court's conclusion of inequitable conduct.  Boiled down, the applicant filed a Rule 131 affidavit stating that it had actually reduced the invention to practice when, in fact, it had not.  In a later affidavit, references to "actual reduction to practice" were removed, but the affidavit still contained references to a prototype–that had never been made, among other things.  The court held that the affidavits were material, relying upon Therasense's statement that false affidavits were so by their nature.  It held there was intent to deceive based upon the first affidavit alone, confirmed by the filing of the second without clearing matters up coupled with similar misconduct in other related cases.

The case does not appear to break new ground, but it does reinforce the fact that inequitable conduct is not a dead letter.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

12 thoughts on “Federal Circuit Unanimously Affirms Inequitable Conduct, Teaching that Curing False Statements Needs to be Done Clearly

  1. 11

    grading is the worst part of being a professor, followed closely by faculty politics and meetings.

    I think just about everyone who has ever taught professionally would agree with that. I know I would!

  2. 10

    I’m grading. I’ll be completely candid: grading is the worst part of being a professor, followed closely by faculty politics and meetings.

  3. 9

    My comment about candor rings even more true with blog posts, as candor (truth) is treated by some as an ‘attack.’

    A shame really.

  4. 8

    Agreed, but the tension is with the logic. For example, can an attorney how simply say “I thought there was a prototype, but it was just a mistake in fact.” (That couldn’t have happened here/didn’t; but could it excuse too many ‘bad acts’?)

    Everyone have a good weekend. I’m off to grade…

  5. 7

    Not as much tension as would be indicated as the mistake in fact removes the intentional falsity and the two situations are thus easily distinguished.

  6. 5

    This seems at odds with Network Signatures v. State Farm. There, the statement that the abandonment was “unintentional” appears to have been false, which under Rohm and this case seems to be per se material (I agree that intent to deceive is still an issue in Network Signatures). But there still seems to be a tension.

  7. 2

    Agree… if the case gets litigated and if the defendant has money and if they discover it years later… I’m suspicious of inequitable conduct allegations, but I have also seen conduct that, in my view at least, was way over the line.

  8. 1

    If you’re going to file an affidavit, it’s got to be the truth or you have to be prepared for the entire case to go up in flames at some point.

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