In my reading of post-Therasense cases to update our Ethics in Patent Prosecution book (buy yours soon!), the only clear trend I’ve seen so far is that district courts are lining up behind the proposition that “burying” important information can no longer lead to inequitable conduct.
For courts finding inequitable conduct based upon burying (at least arguably), see Costar Realty Info., Inc. v. LoopNet, Inc., 946 F. Supp.2d 766 (N.D. Ill. 2013) (refusing to decide whether burying is never inequitable conduct and finding additional allegations sufficient to state a defense); Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co., Inc., 837 F. Supp. 1444, 1477, 24 U.S.P.Q.2d (BNA) 1801 (N.D. Ind. 1992) (finding inequitable conduct where attorney listed reference but discussed less relevant aspects of it); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 U.S.P.Q. (BNA) 260 (S.D. Fla. 1972) (finding inequitable conduct where 13 references were listed in letter stating that they had been found in prefiling search, but in fact 13th reference was a patent that had issued afterward).
For courts finding no inequitable conduct, see Molins, 48 F.3d at 1184 (finding that attorneys’ mere submission of long list of references soon after they were discovered did not evidence intent to deceive); Seaboard Int’l, Inc. v. Cameron Int’l Corp., 2013 WL 3936889 (E.D. Cal. July 13, 2013) (no inequitable conduct despite allegedly burying art within hundreds of thousands of submitted pages of litigation materials); Parkervision, Inc. v. Qualcomm Inc., 2013 U.S. Dist. LEXIS 8467 (M.D. Fla. Jan. 22, 2013); Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 749 F. Supp.2d 892 (W.D. Wis. 2010); Symbol Techs., Inc. v. Aruba Networks, Inc., 609 F. SUpp.2d 353 (D. Del. 2009); Semiconductor LabSunrise Med. HHG, 95 F. Supp. 2d at 460–61 (finding no inequitable conduct based on lack of materiality of buried reference); Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 68 F. Supp. 2d 508 (D.N.J. 1999) (finding accused infringer unlikely to prevail on claim of “burying references” because of lack of evidence of intent to mislead); C&F Packing Co. v. IBP, Inc., 916 F. Supp. 735, 750 (N.D. Ill. 1995) (“An examination of the IDS at issue … does not support a finding that the applicants buried” the prior art).
I’ve got to say that I don’t agree with the proposition that burying should never be inequitable conduct. I was involved in one case, for example, where a critical, single piece of paper was submitted in weird places (not on an IDS, but truly random places, including, once, as a Figure to the patent application). I’ve also seen cases where, it seemed to me, the practitioner in fact put the key information on an IDS with a bunch of junk.
Further, given that the narrower “materiality” standard from Therasense should mean less “junk” is being cited, there should be little need to file as much information as before, leaving submission of lots of marginally relevant information, along with something known to have been key information, more, not less, suspect. It will be interesting to see how this doctrine develops.