Inequitable Conduct: Backdating in Patent Law

OccamASP v. IQ Hong Kong (E.D. Wisc. 2007)

In 2001, Armament Systems (ASP) sued IQ Hong Kong and twenty-three other companies for infringement of its LED flashlight patent. (Patent No. 6,190,018).  Litigation was stayed while the PTO conducted a defendant-requested ex parte reexamination.  The patent subsequently was re-confirmed by the PTO as valid and litigation resumed in 2004.

During reexamination, the inventor (and ASP president) submitted a Rule 131 declaration evidenced by an early sketch of the invention.

Inequitable Conduct: The defendants allege that the sketch submitted during re-exam was a false document that had been fraudulently back-dated to overcome cited prior art.

A patent applicant’s inequitable conduct during prosecution can render a patent unenforceable. Inequitable conduct is proven with (1) affirmative misrepresentations of material facts with (2) intent to deceive the PTO.  Because most PTO proceedings are ex parte, inequitable conduct has been seen as an important tool to ensure proper applicant behavior.

ElectroStatic Detection: The defendants forensic expert used an ElectroStatic Detection Apparatus of the submitted sketch to uncover imprints of other sketches made on the same graph pad but with much later signature dates.  Using the physical evidence, the expert (former FBI chief of questioned documents) testified that it was a ‘near certainty’ that the submitted sketch had been falsely back-dated.

The inventor disputed these charges and instead offered several alternative potential methods by which the imprints could have occurred. This amorphous story did not help his cause — as noted by the court:  “[The inventor’s] evidence, taken as a whole, demonstrates that ASP has offered shifting, inconsistent, and un-corroborated explanations to account for indentation of the later sketches on Q1. As such, the evidence undermines the credibility of the [new] explanation offered by [the inventor] for the first time a trial.”

Occam’s Razor: Applying Occam’s Razor, the court sided with the simplest explanation — that of falsification.  As the basis for allowance, the submission was clearly material. Falsification secured a finding of intent. Thus, the court found the patent unenforceable for inequitable conduct.

 The case is now on appeal to the CAFC.

9 thoughts on “Inequitable Conduct: Backdating in Patent Law

  1. 9

    Great discussion in Wikipedia re: Occam’s Razor. It’s amazing what I learn from reading this blog. I particularly like the corollary razor of “If two expanations are equally probable, choose the most cynical”.

  2. 8

    One can certainly agree with the comment above that a high percentage of patent claims obtained from the PTO with typical Rule 131 declarations fail when litigated. The alleged prior invention date “evidence” used to “swear behind” earlier date references with Rule 131 is often found to be inadequate when actually tested by an inteference or other litigation. [See, e.g., an old JPTOS study of that by Mary Helen Sears.] It is the most common abuse of the “first to invent” system.
    P.S. This case also demonstrates the wisdom of demanding to see an original document rather than a copy thereof where the date or other authenticity is critical.

  3. 7

    “During reexamination, the inventor (and ASP president) submitted a Rule 131 declaration evidenced by an early sketch of the invention.”

    And the PTO bought that crap? Knowing that this patent was in the middle of litigation? A sketch and a declaration was deemed sufficient evidence under the circumstances?


    Just wow.

    For what it’s worth: this is another example undercutting the oft-recited garbage that re-exams make patents “stronger.” The fact is that any patent with a Rule 131 Declaration in its prosecution history is weaker than one without such a declaration.

    Prosecutors hate to hear this business because so many of them file such declarations instinctively. In the old days of massive hyper-incompetence and rubber stamping at the PTO, the filing of such a declaration was a magic card that seemed to solve all problems for attorneys and their clients.

    Guess again.

  4. 6

    This third party is clearly not a lawyer if the story of working Sundays-Fridays and most holidays seems suspicious.

  5. 5

    I had a case about 25 years ago where that happened. There was a third party that claimed to be a prior inventor and for a “consulting” fee for him and his attorney, they would cooperate in proving it up. During his deposition, it was determined that if the dates were correct in his notebook, he worked Sundays- Fridays and most holidays. Clearly it was back dated. All defendants settled.

  6. 4

    My personal fave was a deposition of an inventor with a typical Irish surname. The examining attorney had gotten a calendar from the year for the date of the questioned hand-written entry. He laid a foundation for the inventor’s act of dating it, what the inventor recalled about that day at work, etc., planning to spring on the inventor that the day was Easter Sunday. (The suggestion being that no Irishman would be working that holy day). When he sprung the trap, the inventor was unfazed, and answered, ‘I converted to Orthodox Judaism when I married, so yes, I often work on Sundays.’ Next question, please…

  7. 3

    Changing the date on an engineering drawing has been done before. See the case of Leonard Studio v McAnulty and others in the English High Court, where the dramatic denouement came in cross-examination of the Italian managing director who had told his Lordship a few minutes earlier that the drawings had been locked in his safe throughout the entire period in issue, and he had the only key. Faced with proof of the date change he appealed (in Italian) to his Lordship “Your Honour, it could not have been me. See, it has been done in an amateurish, clumsy way. It it had been me, it would have been done much more professionally”.

  8. 2

    This looks like it’ll be an uphill battle on appeal. The inventor’s representation to the PTO was either true or false, and if it was false, then there seems to be no question that there’s inequitable conduct.

    On appeal, the patentee will probably have to insist that the inventor was telling the truth and attack the evidence the district court used to support its conclusion that he wasn’t. It’s been done successfully before, but it’s quite the longshot, I think. link to

    This is very interesting because (1) it’s not the run-of-the-mill failure to disclose inequitable conduct case, and (2) it comes 4 days on the heels of this post:

    link to

  9. 1

    Price for GTA of a 1988 honda civic (worth 200$-) – 10 to 20 years?

    Price for deceitfully suing someone for $$$ – an appeal.

    American Patent system – Priceless

    If I were the judge in one of those cases I’d ask the defendent if he suffered any emotional distress during the trial, or physical distress getting to the courtroom, or if his moma worried any about him, or if he couldn’t stay home with a sick child during the trial, or if he couldn’t the right tie to go with his jacket that morning. If any of those happened to him, I would suggest he ask for, and then grant an award that would be in the $$$. I’d also call for whatever action I could against the lawyer if he was likely in on it.

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