Failure to Disclose Adverse Litigation Claim Constructions During Ex Parte Reexam States Inequitable Conduct Claim

Masimo Corp. v. Philips Elect. North Am. Corp. (D. Del. Sept. 2, 2014) addressed whether the accused infringer would be permitted to amend its answer to include a claim for inequitable conduct.  The district court rejected Masimo’s contention that the answer failed to state a claim and allowed amendment.

The substantive allegations of the claim were that during ex parte reexam the patentee knew of but failed to disclose a district court’s claim interpretation that contradicted its position in reexam.  Specifically, the District Court had construed the claims to not require that claimed calculators actually determined a particular ratio, but in the PTO it argued the opposite — that the claimed calculators do require calculating the two ratios.

The district court acknowledged that the broadest reasonable construction standard applied in the office, but not in court, but nonetheless found the allegations sufficient under Exergen and Rule 9(b) and allowed amendment and also discovery into the issues.

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.

6 thoughts on “Failure to Disclose Adverse Litigation Claim Constructions During Ex Parte Reexam States Inequitable Conduct Claim

  1. 3

    David, if the district court construction was not final, the construction was not binding on the applicant in any sense.

    Further, if the construction was not advocated by the patentee, there is no possibility of an estoppel.

    As I understand the duty, one cannot argue one way here and another way there. It is not clear that that happened here.

    Moreover, the PTO was made aware of the magistrate judges claim construction under dispute in its IDS and the NIRC said that the examiner’s claim construction was that of the court.

    The order makes much of the 10 whole days that elapsed between the court’s SJ order and the NIRC, during which the patentee apparently intentionally failed to bring that order to the attention of the PTO as if that was at all significant. Big F’n Deal.

    In the end, the court was of the view that there was intentional deception by the patentee who knew that the examiner had not adopted the court’s claim construction even while saying that she was using the court claim construction. But the evidence of this was in the NIRC that issued after any misrepresentations. At best the court is saying that the patentee has an obligation to correct the record when the it was apparent that the claim construction given the claim by the patent office was not the court’s construction.

    So what do we have? The courts claim construction was disclosed to the Office. The patentee nevertheless continued to argue its own claim construction. I think the patentee had a right to do this. The only problem seem to occur with the NIRC, and whether the mistake by the examiner had to be pointed out to her because it was material.

    But at no time did the patentee lies or mislead about anything.

    1. 3.1

      Ned, largely agree.

      I think this is an incredibly complex issue, for some of the reasons you mention. BRC v. court-construction; the high reversal rate of courts; and so on.

      A lot would be gotten rid of if we had one claim construction approach!

    1. 2.1

      On the landing page, you can see and read your write-up, and even link to the times article.

      But if you attempt to go directly to the thread (for example, to write a comment) you receive a “404 page not found” message.

Comments are closed.