Research Corporation Technologies v. Microsoft (Fed. Cir. 2008)
In the third of a trio of inequitabe conduct opinions by Judge Rader, the CAFC reversed the lower court’s ruling that RCT’s digital halftoning patents were unenforceable. Amazingly, the appellate panel found instead that it was storied district court judge Manny Real who was guilty of bad behavior. [Discussion of the district court case.]
The panel – Judges Newman, Rader, & Freeman – could not have been better for a patentee accused of inequitable conduct. Here, the CAFC held that the lower court clearly erred by failing to establish the materiality of RCT’s actions during prosecution.
“The trial judge found inequitable conduct because the inventors did not disclose [the inventor’s] post-filing K factor tests to the USPTO. Because [the inventor’s] work occurred after she and Dr. Parker had filed the patent application, these K factor experiments were not material to their inventive activity. In the circumstances of this case, therefore, the inventors had no obligation to report their later tests to the USPTO.”
The next quote will be taken out of context and often used:
“Importantly, [the inventor] and her coauthors published the K factor tests to the scientific community. Publication is an act inconsistent with an intent to conceal data from the USPTO.”