Over the last year or so, I’ve given a half dozen talks to practitioners about the differences between the duty of candor in PTAB proceedings compared to general prosecution and Therasense. Each time I do, I can tell the audience is learning that when you’re in IPR, you ain’t in Kansas any more.
The key issue is who is covered by a duty of disclosure. Under Rule 56, and Therasense, only the knowledge of persons “substantively involved” in prosecution “counts” and must be disclosed. (The language of Rule 56 says so, and the Federal Circuit has followed that language in a few cases even though technically it does not control inequitable conduct which is a statutorily-based defense under 282(b)(1) of the Patent Act.)
In contrast, in PTAB proceedings there are two rules that relates to candor, and they are extraordinarily (and, I believe, unintentionally) broad. (Rule 56 does not apply in prosecution; other rules do.). Oddly, neither rule is the same as Rule 56, and each rule also differs from each other — and for no apparent reason.
The general rule of candor in 37 C.F.R. 42.11(a) provides: “Parties” — stop there and think about what that means — “and individuals involved in the proceeding” — again, stop and recognize that substantive involvement in the proceeding is not required — “have a duty of candor to the Office during the course of a proceeding.” Yes, the rule says a “party” owes a duty of candor, so ostensibly the knowledge of every person who works for a party “counts.” How many people work for Google?
The other candor rule applicable in PTAB proceedings is triggered when a party files a paper with the Office. It provides that, unless the information has already been served, a party “must serve relevant information that is inconstant with a position advanced by the party during the proceeding” when filing the paper, and (now for the “who” part) this “requirement extend to inventors, corporate officers, and persons involved in the preparation or filing of the document or things.”
Notice that you cannot read either rule to means something less than what it says without running into basic statutory interpretation problems. For example, you can’t read it to mean “inventors and corporate officers who are involved in the proceeding” because that renders the words “inventors” and “corporate officers” superfluous.
So, when you’re involved in a PTAB proceeding, be very careful about whose information may “count” for purposes of inequitable conduct during the proceeding. To be clear: I think the rule can’t mean what it says, and I’ve advocated that both rules be changed to be identical to Rule 56 (in terms of who is covered, at least), but my belief doesn’t overcome the text of the rules.