PTAB Finds Patentee Breached Duty of Candor During IPR But in Doing So Conflates Rule 56 and IPR Candor Rules

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…).

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.

18 thoughts on “PTAB Finds Patentee Breached Duty of Candor During IPR But in Doing So Conflates Rule 56 and IPR Candor Rules

  1. 6

    Awkward writing content . Very unusual and difficult to read.

    [applies to the mega Virtue Signaling post one post more recent than this one, with the comments turned off]

    1. 6.1

      You know what’s “awkward”? Not being able to go back and read the comments from MAGAts like you and others that were posted here in the few months following Biden’s victory back in November 2019.

      1. 6.1.1

        I do not follow you. What is the obstacle that prevents the reading of comments from that time?


          The “obstacle” was that I needed to click on the date of the post to get to the “show comments” button. 😛 Thanks for encouraging me to try again!

      2. 6.1.2

        You do know that I am not what you label as a MAGAt, eh?

        Your one-bucketing is noted.


          Your beliefs about what label is appropriate are completely irrelevant. What’s relevant is that 99% of your political commentary here is reciting worn out MAGAt scripts about “leftists”. Just own it because nobody is fooled by your silly iconoclast posturing.


            Not so — it seems a merely your own Sprint Left and One- Bucketing that leads your feelings to be so.

  2. 4

    Here’s another not-Rule-56 “duty of candor” issue noted in a recent Wall Street Journal article, entitled “Judge Targets Secret Funding of Intellectual Property Suits.” In particular, DL D.C. Chief Judge Connolly’s efforts re his court’s very large patent litigation docket to force disclosure of the secret financiers and controllers behind PAE’s. Including those run by patent attorneys setting up asset-free Texas shell corporations [on paper run by apparently unrelated and asset-free third parties] set up solely to sue on acquired patents and pass back the suit settlement cash.* The article claims there are now billions of dollars from secret sources funding patent infringement suits. It indicates that some of these “plaintiffs” are trying to get out of that district rather than disclose the secret real parties in interest.

    *”double blinds?”

  3. 3

    Thanks David. Even to this pro se Pro Say, the reliance on Rule 56 did seem misplaced.

    Would such misplacement be grounds for an appeal to the CAFC?

    But given the multiple basis for the sanction, would an appeal be worth the cost?

    “By joining such a conglomeration, are you in essence signing up for a duty for ALL cases that UP proceeds with?”

    anon’s posit makes sense. Would be nice if someone’d give it a PTO / court test run.

    1. 3.1

      I am guessing the error is not reversible, since I don’t think it matters here (unless you can challenge the regulation as outside the scope of the rule making authority of the PTO? I don’t know). But it seems harmless error from a quick thought.

      1. 3.1.1

        Of course it’s harmless. The whole point of the article here is that there is a broader rule that is unquestionably applicable.


          the whole point…

          is NOT how you portray it, but rather the extreme extent of the breadth of that broader ‘net.’

  4. 2

    Does “parties” capture all of the supporters (and those supporters benefit from actions of) related to such entities as Unified Patents? By joining such a conglomeration, are you in essence signing up for a duty for ALL cases that UP proceeds with?

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