Frazier v. Roessel Cine Photo Tech (Fed. Cir. 2005)
by Jessica Lunney
The CAFC (Judges Bryson, Linn, and Dyk) affirmed the district court’s finding of inequitable conduct but vacated and remanded the award of attorney’s fees.
In a patent infringement suit, the district court based its inequitable conduct finding on two references: (i) a video submitted to the PTO to overcome a rejection and (ii) an unsubmitted, clipped advertisement in the client’s patent file. Generally, the patent was directed towards a video camera lens, and the submitted video footage allegedly showed lens functionality. As it turns out, the video was not actually created with the claimed lens. The CAFC was unimpressed with the inventor’s assertion that the footage could have been filmed using his invention.
Materiality + Intent: Because the video allowed a traversal of the PTO’s multiple rejections, the court deemed the video footage to be material. Intent was implied from both the inventor’s repeated changing of his sworn testimony and the myriad misrepresentations he made to his business partner and his patent attorney.
The CAFC reversed the inequitable conduct finding inasmuch as it was based on the advertisement and therefore vacated the award of fees and remanded to the district court to determine whether the case was still exceptional. Bryson’s separate opinion supported the entirety of the district court’s holding.
NOTE: Jessica Lunney is a law clerk at MBHB and a law student at Emory. She will complete law school in June 2006.