No Inequitable Conduct if Examiner Finds Withheld Reference while Searching

Teva Pharm. Indus. v. Apotex, 2008 U.S. Dist. LEXIS 60418 (D.N.J. 2008)

In 2007, Teva sued Apotex infringing its carvedilol patents. Apotex counterclaimed with charges of inequitable conduct – alleging that Teva had failed to disclose “any of the English language counterparts” of a submitted prior art reference.

The examiner actually found the withheld references in his search, and Teva argued no harm, no foul, no materiality. Apotex disagreed and argued that the examiner’s serendipity “does not, as a matter of law, absolve an applicant from a charge of inequitable conduct.”

New Jersey District Court Judge Brown agreed with the patentee Teva – holding that a reference cannot be considered “withheld from the examiner” if it is actually before the examiner.

“In Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1582 (Fed. Cir. 1991), the Federal Circuit stated that “[w]hen a reference was before the examiner, whether through the examiner’s search or the applicant’s disclosure, it can not be deemed to have been withheld from the examiner.”

. . .

The duty to disclose all information known to be material to patentability is deemed to be satisfied if, all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b) -(d) and 1.98.

. . .

It is undisputed that the document allegedly withheld by Teva was found by the examiner. Therefore, in light of the fact that the alleged failure to disclose the English language counterparts of EP 0 127 099 is the only basis for Apotex’s inequitable conduct counterclaim, the Court concludes that Apotex’s inequitable conduct counterclaim should be dismissed with prejudice.”

87 thoughts on “No Inequitable Conduct if Examiner Finds Withheld Reference while Searching

  1. 87

    under the proposed continuation/claims rules, you couldn’t file an RCE under the facts as confused SCOTUS stated, I believe.

  2. 86

    There is no inequitable conduct. The patent applicant has until the patent issues to notify the Patent Office of known material art, even if it is merely the English counterpart of the applicant’s foreign app or patent. I routinely receive inquiries from foreign firms about what to do with a reference, even their own patent, that they have stumbled across a few days prior to issuance – i.e. at the eleventh hour. Sometimes I think, “geez, how’d you guys miss this one? Now we need to abandon in favor of cont, or hand carry a withdraw from issue and RCE.” But rarely under such circumstances have I thought the foreign firm intended to deceive the Patent Office. This is probably what happened in this case. It seems obvious that Teva should have cited the US counterpart, but I have seen this eleventh hour predicament enough times that I think these things do happen without deceptive intentions.

  3. 85

    Jim H.–

    Thanks for the explanations. Usually I follow the civil/criminal distinctions as you mentioned, guess I was speaking Bar/BRI speak, as in “criminal liability”. (Just took the bar exam.)

  4. 84

    smashmouth football,

    Don’t forget that to commence the action, all that is needed is an allegation and not a colorable argument. As you are probably aware, the pleading requirements are low: allegation pleading — not fact pleading. Rule 11 requires a “reasonable inquiry” based on a “person’s knowledge, information, and belief[.]” CAFC case law essentially requires a “Rule 11 analysis” for patent suits comprising more or less of the comparison of the claims of the patent against the claims of the alleged infringing product, proces, etc…. In my former Big Firm, I performed a Rule 11 analysis prior to the firm teeing up the action; consider it as the firm’s due diligence.

    If anything is “colorable” at the pleading stage, it would be the allegations, but they only need to be as colorable as the minimums required by the FRCP, i.e., “reasonable inquiry.” Moreover, take a look at Form 16 of the FRCP for alleging a patent infringement claim. It is bare bone pleading; not much meat required at all. See

    link to patentlyo.com

    Then, the financial pain begins for the client (or financial gain begins for the attorney) because of the costly nature of discovery. Then, after the facts are discovered, the “colorable arguments” begin to take shape.

    A note of personable preference: I will typically reserve the term “guilty” (as well as illegal) for criminal actions and use “liable” (as well as unlawful) for patent actions.

  5. 83

    “But generally, isn’t the whole point of legal disputes that both parties have at least a colorable argument? If not, then someone is violating the Rules of Professional Conduct.”

    They’re so cute when they’re young…

  6. 82

    MaxDrei–

    About Black-and-White thinking: Sometimes the legal system rewards malefactors and screws meritorious parties. But no, I suppose more often neither party is wearing the proverbial black hat.

    Last year we had a even more unsatisfactory case, where neither party was particularly blameworthy but one of them had to be stuck with a BIG loss. One of those commercial law cases that could have been in a law school textbook where there’s a security interest and an assignment and a third party (who IS the malefactor) makes off with a pot of money.

    But generally, isn’t the whole point of legal disputes that both parties have at least a colorable argument? If not, then someone is violating the Rules of Professional Conduct. So generally you would expect lots of shades of gray. The obvious cases tend toward quick settlement or summary judgment (or guilty pleas).

  7. 81

    Here’s the world’s choice. Something to do with “due process” I suspect.

    A (common law): You win, unless the other side can prove IC. But it costs USD 5 million to prove it.

    B (civil law): You win, unless the judging panel smells IC. If it does, it finds a reason to give the victory to the other side.

    Difference for the little guy, the victim of IC: USD 5 million.

  8. 79

    Malcolm,

    “A windfall is “an unexpected, unearned, or sudden gain or advantage.””

    Given your definition, one constuction of “windfall” is “sudden advantage.”

    A patent provides one a competitive advantage because it provides a lawful monopoly. The patentee’s monopoly, however, is lost upon a finding of IC. One’s sudden loss of a patent monopoly is a competitor’s sudden advantage, i.e., a windfall by your definition.

  9. 78

    “sounds like an “unexpected” gain or advantage to me”

    I guess it depends on what you think of the patentee.

  10. 76

    “So the infringer avoids all liability, maybe gets fees shifted, and never has to pay for a license. Sounds like a windfall to me.”

    I think the term means something different from what you think it means. A windfall is “an unexpected, unearned, or sudden gain or advantage.”

    The infringer here has not unexpectedly, unearnedly or suddenly gained a thing. On the contrary, assuming that the IC finding is incorrect but is upheld on appeal (a huge assumption given how rarely that happens) and fees are shifted (I am not aware of this ever happening in a close IC case upheld on appeal), the infringer would have had to have work very hard to obtain the result. That’s hardly a windfall, even if there is a little bit of luck involved.

    But perhaps you have are biased against all anti-IC findings because, like Judge Rader, you think that the well-moneyed people playing the patent market are really honest and concerned about their “reputations.”

  11. 74

    Malcolm–

    I’m thinking about a willful infringer who gets by on a finding of IC by a judge who’s maybe pretty lazy but not quite as incompetent as Judge Real, and then the Federal Circuit panel has Moore and Prost.

    So the infringer avoids all liability, maybe gets fees shifted, and never has to pay for a license. Sounds like a windfall to me.

  12. 73

    Malcolm,

    “The defendant gains an “enormous windfall” if the IC charge sticks? Really? How does that work?”

    If a patent becomes unenforceable because of IC, then the alledged infringer could implement the claims of the patent because without the threat of infringement because the claims are no longer enforceable. If the product covered by the claims is a commercial success, an IC finding would remove the plaintiff’s barrier of entry erected by the monopolistic character of a patent.

    Long story short, company gets to make and market the product, process, etc…, embodied in the competitor’s patent to his heart’s content knowing that the patent is unenforceable. This could result in the “enormous windfall” of which was referred to by the smash.

  13. 72

    smashmouth “you have 2 slimy entities, the plaintiff-patentee who went near the edge of IC and the defendant-infringer who stands to gain an enormous windfall if the IC charge sticks”

    The defendant gains an “enormous windfall” if the IC charge sticks? Really? How does that work?

  14. 71

    Is SF short for Smashmouth Football? And Jim H are you serious there, or sarcastic? Lost on me, I’m sorry to say.

  15. 68

    “Sort of ‘Either you are with us or against us’ thinking. Is that your world?”

    That’s our world until January 2009.

  16. 67

    “One bad guy has to win”? Could it be, Smash, that this is an unsatisfactory conclusion for you? Would you rather have a world in which parties are either goodies or baddies, black hats or white hats, and a justice system set up to punish black, and reward white? Sort of “Either you are with us or against us” thinking. Is that your world? Or are you coming round to the view that, when it comes to legal disputes, it’s nothing but varying shades of grey?

  17. 65

    Curious–

    I agree the attempted murder issue is collateral to the purpose of the thread. Just figured that when several posters got into a heated disagreement about it, I would point out what is probably the leading case on the issue.

    As to the main issue in this thread, I thought the Federal Circuit was correct. I don’t share Mr. Mooney’s and groveboy1’s expansive view of IC. I guess I do tend to see IC as a collateral issue raised by infringers to distract, divert and confuse frequently ignorant District judges from the infringement and claim construction issues. It’s a little unseemly where in some cases, you have 2 slimy entities, the plaintiff-patentee who went near the edge of IC and the defendant-infringer who stands to gain an enormous windfall if the IC charge sticks. One bad guy has to win.

    And let me add I’m green at this game and acknowledge my views will inevitably evolve with more experience and knowledge.

  18. 62

    Didn’t look at this thread for a couple of days, but if somebody’s going to call me a bozo, I’m going to call them on it.

    If you shoot a corpse thinking it’s a live person, you have engaged in steps amounting to more than mere preparation in pursuance of murder. The fact that the person was dead is an intervening circumstance out of your control that prevents you from completing the crime, but doesn’t absolve you of the attempt. Likewise, if you attempt to rape a woman, and she successfully fights you off, or you get her clothes off and find out she’s a man, you’re still guilty of attempt. In each case, you are not guilty of the actual crime only because something intervened. Similarly, if you shoot at an inanimate object in a dark night thinking it’s a person you want to murder, you have attempted to murder that person, even if the only thing you “kill” is a rock. As far as I am aware, this has always been the common law rule. As somebody else pointed out, impossibility is something like you subjectively believe that it is murder to kill a puppy (perhaps you’re a member of PETA), and you kill a puppy thinking you are committing murder. You have tried to murder according to your subjective misunderstanding of the law, but you have not done or tried to do anything that legally amounts to murder. On the other hand, if you are a crazy extremist who subjectively believes it is murder to kill dogs but it’s perfectly okay to kill people, and you see a dog in dim light and think it’s a person, and shoot at it with intent to kill, and even if you miss, you are guilty of attempted murder.

  19. 61

    Just Visiting “I think the court would revisit the rule in light of such evidence. However direct evidence of intent to deceive is rare, and it’s not surprising that the court didn’t delve into that issue with no allegations of a plan or affirmative steps.”

    You’re not much fun today, JV. ;)

  20. 60

    Just Visiting,

    “That a third party considers a reference “less relevant” is not sufficient reason not to submit the reference. Further, defendants may boil the issues to contend based on the courts claim construction, financial limitations, negotiations with the plaintiffs or for any number of other reasons that don’t excuse not sending the references to the patent office.”

    I placed too much value on being terse here. As anyone who’s been through litigation knows, Patentee will do his own search to see what defendant is going to turn up. Defendant will do a search, the results of which should have been gotten through discovery. Patentee will have (1) screened out those references that are already of record in the patent; (2) screened out those references that already were turned up in Patentee’s own search; and (3) will have reviewed the remainder to varying depths depending on perceived relevance. In my experience, there just aren’t piles of prior art references left over after steps one and two. What is deemed relevant is submitted. Very typically, it matches the ammunition used to challenge validity. To the extent there are strays (and there certainly could be), they are submitted. In my happily limited experience as plaintiff counsel, there have never been strays.

    As to reconsideration as claims are amended: I take the view that I might claim any invention fairly disclosed in the application. Therefore, references relevant to any “invention” therein are submitted. I don’t limit my submissions’ relevance to only the claims as filed.

  21. 59

    In practice, inequitable conduct is a way for the infringer to cast the patent holder’s team in a bad light so that when the patent holder proves infringement, his hands look dirty and the amount of money he is awarded is lowered to account for the possibility that the patent holder is in fact a crook, even though the inequitable conduct claim is dismissed. This topic would make a great article -“Inequitable Conduct: Winning Patent Litigation Without Winning.”

  22. 58

    “The rule is that “[t]he duty to disclose all information known to be material to patentability is deemed to be satisfied if, all information known to be material to patentability of any claim issued in a patent was cited by the Office.” So what if, during discovery, a memo (or other evidence) is found that clearly reveals a plan as well as affirmative steps taken by the applicant to hide or withhold certain documents from the PTO?”

    I think the court would revisit the rule in light of such evidence. However direct evidence of intent to deceive is rare, and it’s not surprising that the court didn’t delve into that issue with no allegations of a plan or affirmative steps.

  23. 57

    Well, Rodrigo, there’s the thing. Shall there be a “line” beyond which the conduct becomes inequitable? If so, who shall draw that line? And in a land of “Binding Precedent” one must hope that whoever is drawing the line is a very experienced legal line-drawer. You can’t blame the lawyers, for invoking IC in every case, when there’s always a non-zero chance that it will work.

    It gets worse, of course, with 35 USC 101 (like Art 52 EPC). Who shall draw the line there, on what has “patentable character” and what not. Who’s got both the technical credentials, and the legal expertise, to write the Precedent that’s Binding. Aren’t you glad you practice in continental Europe?

  24. 56

    MaxDrei, I’m aware of the legal doctrine and motivation behind IC. I’m just flabbergasted that failing to provide references to English-language counterparts could even remotely be construed as “cheating”, as if the USPTO shouldn’t at least be able to find that out for himself. What’s next, requesting that the documents be provided as audiobooks, in case of examiner illiteracy? Sheesh…

    Also, it’s worth to note that all patent applications in a family do not necessarily contain the same information. Indeed, there often are discrepancies. So, it could perfectly be that the foreign-language document cited by another patent office is relevant, but the English-language document isn’t. In such a case, wouldn’t submitting the English-language document (whether instead of the foreign counterpart or with it) be *also* inequitable conduct?! Talk about a Catch-22 situation. And would it then be reasonable to expect from the applicant that he checks the translation of all English-language counterparts before submitting them (or not)??

  25. 55

    “Curious, I submit the references that were asserted in the invalidity challenge. The remainder would be less relevant and likely cumulative, or defendant would have attacked with them as well”

    That a third party considers a reference “less relevant” is not sufficient reason not to submit the reference. Further, defendants may boil the issues to contend based on the courts claim construction, financial limitations, negotiations with the plaintiffs or for any number of other reasons that don’t excuse not sending the references to the patent office.

    If you get a ton of references during litigation that might be relevant in a reexam or in prosecution of a related application I think you’re stuck with either submitting them all or making individual determinations of relevance. You may need to reconsider the decision not to submit a reference every time you make a new argument or amend the claims.

  26. 54

    Thank you, Jim H. for answering my queries on the IDS.

    So, if the examiner considers documents listed in the IDS, he includes them in the “Notice of References Cited”, right!

  27. 53

    Curious, I submit the references that were asserted in the invalidity challenge. The remainder would be less relevant and likely cumulative, or defendant would have attacked with them as well.

    And I both (a) explain that to the client and (b) put a note in the file that I explained it and the client ratified it.

    And in reality, it won’t be ten banker boxes of prior art references. If it came down to it, all of them could be submitted. The worst part would be that I must read every word on every page of every reference — right, Mr. Moatz?

  28. 52

    As pointed out by J. Doerre, Legal impossibility is usually a defense, while factual impossibility is not.

  29. 51

    Your client has numerous related U.S. and foreign patents and applications and has been involved in related litigation and thus has ten boxes of prior art which is arguably relevant to the application you just filed for him.

    What do you do?

  30. 50

    “And what about the legendary strategy of ‘burying’ a material reference among several hundred immaterial references? Is that strategy now rubber-stamped as one that cannot result in a finding of inequitable conduct?”

    Hasn’t the “burying” theory been effectively dead and buried at Federal Circuit level? Does anyone have a citation to a Federal Circuit case in which a finding of inequitable conduct was affirmed solely on the intentional burying of a reference?

  31. 49

    anon1:55 “The actor’s culpability is the same in both cases, but the harm he’s responsible for is different.”

    Truly that is the case. What troubles me about this line of IC cases is the possibility that more egregious behavior could go unpunished simply due to a “heart attack” or “lightning bolt”.

    The rule is that “[t]he duty to disclose all information known to be material to patentability is deemed to be satisfied if, all information known to be material to patentability of any claim issued in a patent was cited by the Office.” So what if, during discovery, a memo (or other evidence) is found that clearly reveals a plan as well as affirmative steps taken by the applicant to hide or withhold certain documents from the PTO?

    And what about the legendary strategy of “burying” a material reference among several hundred immaterial references? Is that strategy now rubber-stamped as one that cannot result in a finding of inequitable conduct?

  32. 48

    Traditionally, legal impossibility was a defense at common law, while factual impossibility was not.

    Consider a theoretical jurisdiction where murder is a crime, and arson is a crime defined as the intentional burning of the dwelling place of another. In this theoretical jurisdiction, Jane believes that John is working late at his nitroglycerin factory. Jane is upset with John and sets fire to his nitroglycerin factory with an intent to commit both arson and murder. John, however, is not actually working at the factory that night.

    If Jane is charged with arson and attempted murder, then at trial Jane could assert a defense of legal impossibility with respect to the arson charge, because it was legally impossible to commit arson by burning a non-dwelling place. Jane could attempt to assert a factual impossibility defense with respect to the attempted murder charge, but at common law, and in most jurisdictions today, such a defense would be fruitless. It would be a factual impossibility defense because Jane was operating on a misapprehension of fact, namely whether John was working at the factory.

  33. 47

    “Does this not highlight the excesses into which the inequitable conduct doctrine is leading?”

    LOL. A district court finds no inequitable conduct without much sweat, and some chicken little starts running around squawking about inequitable conduct findings becoming “excessive.”

    Only on PatentlyO.

  34. 45

    Lionel, I am not so sure of your conclusion. It has been a while since law school, but isn’t legal impossibility a defense, or wait, is that factual impossibility? One of those is a defense. Until someone addresses both legal and factual impossibility, I won’t be convinced.

    Next question – how do we “modernize” the US system and eliminate the duty of disclosure?

  35. 44

    hmmm…,

    Just saw your post. I would agree with that. I believe most of the posters here would be technically “incompetent” with respect to criminal law beyond such IP related subjects as misappropriation of trade secrets, criminal infringement, antitust violations, or export liabilities.

  36. 43

    hmmm…

    No, it does not prove GP’s point as I do not practice criminal law. If I did, (1) I would be more cognizant of state to state differences, (2) I would have knowledge of criminal law more recent than from when I took the bar exam, and (3) I would be practicing in NY, so other state’s laws would be irrelevant for the most part.

  37. 42

    “Sorry, Lionel, but doesn’t this prove GP’s point?” “Actually no. If you are going to call someone a bozo for reciting the law incorrectly, doesn’t that person have to be wrong even in their own jurisdiction?”

    I was referring to GP’s larger point, about incompetence. However, I assume that Lionel (fortunately) practices patent law, not criminal law. He (Lionel) is usually spot-on with respect to the former.

  38. 40

    “Sorry, Lionel, but doesn’t this prove GP’s point?”

    Actually no. If you are going to call someone a bozo for reciting the law incorrectly, doesn’t that person have to be wrong even in their own jurisdiction?

  39. 39

    Note that at common law, there was a distinction between factual impossibility and legal impossibility, just to muddy things up a bit more. This distinction persists to some extent, in some jurisdictions, to some attempted crimes. For example, believing you’re receiving stolen property, when legally the property is not stolen, might not be a legally punishable attempt. On the other hand, sticking your hand in an empty pocket, in a failed attempt to steal a wallet, may be attempted larceny.

    Which one of these most closely resembles the IC scenario here?

  40. 38

    “I sometimes forget these things are state by state, but I would hav assumed that what I stated would be true anywhere.”

    Sorry, Lionel, but doesn’t this prove GP’s point?

  41. 37

    Rodrigo, the USA has the English common law system, in which the doctrine of “equity” is about 700 years old. Think of it as a “cheats shouldn’t prosper” idea. If you want something from the Court (like an injunction to restrain an infringer) you have to come to the court with “clean hands”. If the judge finds your conduct to be “inequitable”, well then you don’t get out of him/her the relief you seek. Now that principle, as such, is admirable, and makes common law inherently more “just” than Roman civil law. The danger is, of course, that the equity tail can end up wagging the scope/validity substantive dog, like when there are truck loads of millions of documents to be worked through, in equitable “discovery” proceedings, and when most every patent litigation gets bogged down for years in argument whether Applicant’s conduct was inequitable. It’s interesting to look how the English common law courts manage the principles of equity, now that UK belongs to the EU, because the patents court in London competes for the lucrative European patent litigation business with the otherwise cheaper civil law courts in NL and DE. The London litigation industry doesn’t want its services costing fifty times more than litigations in Germany, where forum-shopping litigants can go instead. So, in London, discovery is very restricted (but its teeth can still bite) and inequitable conduct might still prevent you from getting the injunction you want out of the court. Is the Applicant a cheat, who cites the EP-A to the USPTO, but not the English language family member of that EP-A? What’s the proportionate (equitable) sanction? You tell me.

  42. 35

    I don’t get it. Does the bullet represent IC?

    How about this analogy: Ralph sees Gary murder some random gentleman. Ralph is incommunicado for a few days and then the police arrest Gary. Is Ralph guilty something?

  43. 34

    Eh Naan,

    That’s true. I sometimes forget these things are state by state, but I would hav assumed that what I stated would be true anywhere. I learned criminal law in NY.

  44. 33

    Lionel and GP: the impossibility defense exists in some states but has been trimmed or repealed in others. You may both be correct, depending on where you live.

  45. 32

    The prior art references were the work of one inventor with Boehringer Mannheim, which sole inventor is NOT a member of the Teva patent’s inventive entity. This was not Teva’s own prior work.

  46. 31

    “So you’re saying that the crime does not need to be possible for the liability to attach? That is, if a man waits for a day to kill his arch enemy, and then, in the dusk, he is sure he sees the arch enemy crouching in the weeds, and he shoots him with a 30-06 rifle, and it turns out that it was a rock and not a man.

    “It’s your legal counsel that the shooter is criminally liable for attempted murder?

    “Please post your Firm name so I can add it to my, “don’t call these bozos” list”

    GP,

    Please post your Firm Name so I can add it to my “don’t call these bozos” list. The situation you describe is unequivocally attempted murder. Did you ever take a course in criminal law? or are you a patent agent pretending to know more than he actually does?

    Put simply, just because the crime was impossible, does not mean the defendant is not guilty of ATTEMPTING the crime. Mens Rea coupled to action is all that is required.

  47. 30

    Mr. Mooney, in your hypothetical, the sniper would be guilty of attempted murder.

    As far as I know, there’s nothing legally significant about “attempted inequitable conduct.”

    The actor’s culpability is the same in both cases, but the harm he’s responsible for is different.

    Also, your analogy doesn’t work so well because in the analogy the sniper’s target dies, while in this case the reference does get before the PTO and there’s no harm.

    A better analogy would be that after the sniper fires, the bullet is on course to kill the target, but a pinecone falls in the bullet’s path and deflects it.

  48. 29

    “If the examiner was aware of the facts, as he/she had to be here, and allowed the patent, then principles of equity must kick in — latches, waiver, estopple — call it what you will.”

    The PTO does not decide inequitable conduct issues. They leave that for the courts. An examiner is simply not well positioned to evaluate why he didn’t get some reference.

    How did you conclude that the art was the applicant’s own reference?

  49. 28

    “The no-foul call was made on the spot prior to issue; the patentee and public are entitled to rely on it.”

    I assume that you believe that mere withholding does not give rise to IC. If so and the USPTO had no knowledge of intentional withholding, the USPTO couldn’t have made a determination as to IC. If the USPTO wasn’t in a position to make a determination as to IC, why should the patentee or the public be able to “rely” on the USPTO’s silence, which could have easily been the result of a failure to have all the facts?

  50. 27

    Scary thread – shows a lot of incompetence. Jeez, please let them not all be lawyers.

    1. Somebody wrote, “The sniper is clearly guilty of attempted murder, just like if I shoot a cold corpse, thinking it’s alive, it’s attempted murder.”

    So you’re saying that the crime does not need to be possible for the liability to attach? That is, if a man waits for a day to kill his arch enemy, and then, in the dusk, he is sure he sees the arch enemy crouching in the weeds, and he shoots him with a 30-06 rifle, and it turns out that it was a rock and not a man.

    It’s your legal counsel that the shooter is criminally liable for attempted murder?

    Please post your Firm name so I can add it to my, “don’t call these bozos” list.

    As for IC, you’re all wrong.

    IC is not meant as a device to punish practitioners.

    IC is meant as a device to invalidate patents that were gained under fraudulent terms.

    Simple as that.

    IC protects patent validity – it does not function to punish for the sake of punishing.

    And so this case is perfectly correct.

    What should happen is that the attorney who hid the art should be brought up before the Bar and the PTO to answer for his violation of clear law regarding the duty of Candor.

    QED.

    Jeez, you guys make it easy on me.

  51. 26

    OK, so when the examiner found the subject art, he knew the applicant knew it existed because it’s the applicant’s art. If there was an IC problem, the PTO had a duty to sort it out at that point. Surely the PTO can’t implant a ticking bomb in a patent by ignoring/condoning IC.

    If the examiner was aware of the facts, as he/she had to be here, and allowed the patent, then principles of equity must kick in — latches, waiver, estopple — call it what you will. The no-foul call was made on the spot prior to issue; the patentee and public are entitled to rely on it.

    This is the reverse of “no harm, no foul.” This is a judgment call by the ref. It’s not that there was no foul because there was no harm; it’s that there was no harm because there was no foul. Or, more precisely, there was no foul regardless of the issue of harm.

    Malcom’s ridiculous nanosecond heart attack analogy is far wide. (He struggles to see IC where there is none. He’s into UFOs and commies under the bed, too.)

  52. 25

    OK, so when the examiner found the subject art, he knew the applicant knew it existed because it’s the applicant’s art. If there was an IC problem, the PTO had a duty to sort it out at that point. Surely the PTO can’t implant a ticking bomb in a patent by ignoring/condoning IC.

    If the examiner was aware of the facts, as he/she had to be here, and allowed the patent, then principles of equity must kick in — latches, waiver, estopple — call it what you will. The no-foul call was made on the spot prior to issue; the patentee and public are entitled to rely on it.

    This is the reverse of “no harm, no foul.” This is a judgment call by the ref. It’s not that there was no foul because there was no harm; it’s that there was no harm because there was no foul. Or, more precisely, there was no foul regardless of the issue of harm.

    Malcom’s ridiculous nanosecond heart attack analogy is far wide. (He struggles to see IC where there is none. He’s into UFOs and commies under the bed, too.)

  53. 24

    “Would a contrary holding in the above case mean that the Applicant was forever prevented from “remedying” the “misconduct”?”

    Exactly right. This is the main problem with groveboy1’s theory. Failures to submit are curable by simply submitting the information at a time when the examiner can act on it. The examiner finding the reference does not lock-in the IC, but removes the applicants duty to submit.

  54. 23

    Let’s hire competent examiners, and like the rest of the world, not require any duty of disclosure.

    Would the contrary holding hurt patentees, for the following reason:

    Applicant finds reference on day Y. Fails to cite to Patent Office, who issues an Office Action on day Z, citing the reference. Would a contrary holding in the above case mean that the Applicant was forever prevented from “remedying” the “misconduct”?

  55. 22

    The dirty reference: BM filed a German national application in May 1983, published in November 1984. BM filed a subsequent EP application claiming priority; it published in December 1984. As best I can discern (no link to the opinion was given), Teva cited the *issued EP patent* — that is, the B1 publication when the European patent issued in May 1987. Teva neither submitted nor cited USP 5071868 (cited by the Examiner), which granted September 1987; the ‘868 patent is a divisional having the same disclosure as its ultimate parent application, first filed in May 1984 (well before Teva’s June 2000 effective filing date). A German application sired both the submitted EP patent and the ‘868 Patent. The ‘868 disclosure is the English version of that German parent.

    Looks like the Examiner either found it entirely on his own, or he found it by simply checking family data of the *TWO* patent references Teva had submitted. I don’t know why Teva wouldn’t have been aware of the related US case. Maybe they hadn’t checked before they filed their IDS, and the Examiner turned up the ‘868 reference before they did.

    In the totality of circumstances, I’m likewise not persuaded that the patent should be invalidated. It’d be nice to read the opinion and get more background facts, though.

  56. 21

    “Yet this decision rests on a finding of ‘no harm, no foul.'” Maybe the decision should be read merely to assert that under the circumstances, the defendant failed to prove that the patentee had the intent to deceive the PTO.

    Also must respectfully disagree with your argument that the legal standard to prove IC should be drastically lowered to include ordinary negligence. This would be the infringer’s ultimate wet dream.

  57. 20

    “It’s sort of like when a sniper has a target in his crosshairs and pulls the trigger but, before the bullet hits, the target has a heart attack and falls over dead.

    The difference is that if the sniper is patent prosecutor, all is forgiven.”

    That’s one of your funnier straw men.

  58. 19

    This is a terrible decision. For several decades, the Federal Circuit has held repeatedly that “but for causation” is not required to establish inequitable conduct, thus distinguishing the doctrine of inequitable conduct from the doctrine of fraud. Yet this decision rests on a finding of “no harm, no foul.” That clearly is not the law. Inequitable conduct has always been intended to be easier to prove than fraud precisely because of the ex parte nature of the patent prosecution process. As a result of the ex parte nature of the patent prosecution process, patent prosecutors and inventors are required to honor a heightened duty of disclosure than is required in the fraud setting. Thus, it should not matter if the examiner found the reference through serendipity–if the reference was material and if it was withheld with intent to deceive, a finding of inequitable conduct should follow regardless of whether the examiner found the reference on her own, as a consequence of which, no harm was done.

    For all those who constantly whine about the fact that the inequitable conduct doctrine is unique to the United States,
    remember this: The United States also is one of the only jurisdictions in which third parties cannot precipitate an adversarial “opposition” procedure once a patent has issued. PTO reexamination procedures, both ex parte and inter parte, are not equivalent by a longshot to opposition proceedings in Europe and many other jurisdictions worldwide. The doctrine of inequitable conduct is designed to take into account the unique ex parte nature of the U.S system, and that is why “but for causation” is not required to prove inequitable conduct, which is fundamentally different from fraud.

  59. 18

    Richard, how is Malcom’s hypo like felony murder? The whole point of felony murder is that your felony CAUSES a death. In Malcom’s hypo, the guy is already dead when the bullet hits him, thus no causation. The sniper is clearly guilty of attempted murder, just like if I shoot a cold corpse, thinking it’s alive, it’s attempted murder.

    On the other hand, if the bullet mortally wounds a man with a weak heart, who freaks out and has a heart attack, you have multiple sufficient causes, and then you’re guilty of murder.

  60. 17

    Do I understand correctly that submitting all references cited in foreign proceedings, but failing to provide all English-language counterparts (something which the USPTO should be frigging capable to find out itself given the foreign references) can be construed as “inequitable conduct” and lead to the unenforceability of the patent?!

    Why do you folks still have a “Patent and Trademark Office”? Scratch that, why do you folks still have a *patent system*, then?

  61. 15

    “It’s sort of like when a sniper has a target in his crosshairs and pulls the trigger but, before the bullet hits, the target has a heart attack and falls over dead.”

    This is an underreported phenomenon, actually. It has only been caught once, when the victim happened to be walking by an ECG.

  62. 14

    “Inequitable conduct is supposed to be a punishment for the relatively rare situation in which an applicant deliberately misleads the PTO”

    Did the applicant attempt to mislead the PTO here? The defendant’s theory appears to be that the application tried to mislead the PTO and failed. It’s also possible that the applicant’s IDS resulted in the examiner finding an easy to locate English counterpart.

    Without even looking at the allegations the plaintiff is alleged to have done, how can you say that the submittal of the German language reference was intended to deliberately mislead the PTO? I can imagine some facts where I might come to that conclusion, but there is very little evidenc here.

    I suspect that at least some IDS are filed by legal assistants and secretaries who sometimes file abstracts even when an English counterpart is available, and that at least some practitioners don’t do a review that would catch such a thing. Even if that were negligent, it wouldn’t be an attempt to deceive.

  63. 13

    Inequitable conduct is supposed to be a punishment for the relatively rare situation in which an applicant deliberately misleads the PTO. Just because the examiner happens to find that art shouldn’t absolve the applicant/prosecutor from his bad conduct.

    Posted by: Richard | Aug 12, 2008 at 12:29 AM

    Richard, you’re almost right. The test though is (1) materiality and (2). In other words, i.c. is supposed to be for those situations in which the PTO is successfully misled by the applicant.

  64. 12

    Maybe I’m confused because the summary isn’t complete. As I understand it, Teva submitted a (foreign language?) prior art reference, but did not cite the English counterpart.

    As I understand it, the applicant has to provide an English summary of any foreign language prior art. Was this not done?

    I am not aware of any case saying it’s inequitable conduct because I cite a prior art reference and then didn’t cite its other counterparts. I’ve got one PCT case that is being prosecuted in 44 countries. Is Mooney actually saying that all 45 applications, which are simply in different languages, must be cited by a patent applicant or else it’s inequitable conduct? That’s duplicative, wastes the examiner’s time, and does not promote public notice.

    I don’t see the thought crime here. I sometimes become aware of references when they are cited to me by the EPO and simply cite what they gave me to the USPTO.

  65. 11

    Why on earth would an intellectual property blog post a picture of the branded COREG (R) product in conjunction with a story about Teva’s carvedilol? Tsk, tsk, tsk.

  66. 10

    Does this not highlight the excesses into which the inequitable conduct doctrine is leading? Great fun for the litigators, but is it all really in the public interest? The purpose of patent law, is to reward inventors, not saints.

  67. 9

    Pat,

    The examiner’s initials next to the prior art or printed publication listed on the IDS means the examiner considered it. See MPEP ยง 609.

  68. 8

    Sorry. Sorry. Wrong thread. Intended for the 55 Scholars’ Edition. Rushing too much, this morning.

  69. 7

    Quick comment from Europe, where we CAN file new claims with a divisional, and go on filing divisionals for 21 years after the priority date. So we could indeed claim in the parent “Anything new and not obvious, that is fully enabled by the above disclosure” followed by a fancy new claim, directed to very specific subject matter, in the umpteenth divisional. But that specific claim would have to meet the OTHER provisions of the EPC, including: clear, supported and no new matter (Art 84 and 123 of the EPC). Those provisions are enforced strictly. The result: a fair balance between 1) reasonable legal certainty for the public and 2) fair scope of protection for the inventor.

    Any thoughts?

  70. 6

    Does IDS form part of search report in the US? What if it is initiated by the Examiner? Please help.

  71. 5

    I always thought that inequitable conduct was a “thought crime” meant to punish deliberately fraudulent behavior, but I stand corrected.

    Although in Malcolm’s hypothetical, I think the sniper would be guilty of felony murder [like a bank robber is guilty of felony murder if the security guard dies while he is robbing the bank].

  72. 4

    Inequitable conduct is not meant to be treated as a sin – it is meant to protect the public by promoting full disclosure during examination. That’s why the court held the way it did: if the art is before the examiner, the threat to the public is non-existent and so the patent isn’t unenforceable.

    If there is actual evidence of malfeasance, the PTO has a Board that reviews a practitioner’s compliance with her ethical duties, including the duty of disclosure. Sounds like that’s where any complaint in this case should be filed (I have no idea if there would be any merit in it).

    And to Malcolm’s hypothetical, in the event that the sniper’s intended victim could be shown to suffer a fatal heart attack prior to the bullet hitting him, the sniper would not be guilty of murder (attempted murder, yes, but to be guilty of murder you have to actually murder someone).

  73. 3

    CAPat:

    Couldn’t you prove that the prosecutor had withheld it by showing that he had it in his possession before the examiner pointed it out? I think this ruling is wrong, however. Inequitable conduct is supposed to be a punishment for the relatively rare situation in which an applicant deliberately misleads the PTO. Just because the examiner happens to find that art shouldn’t absolve the applicant/prosecutor from his bad conduct.

  74. 2

    Duh! This holding was a no-brainer, except to Mooney. Why would you cite a reference to the examiner if he already cited it? And how can you prove the practitioner wouldn’t have cited the reference if the examiner had not? I guess Mooney’s definition of inequitable conduct is not citing a material reference BEFORE the first office action?

  75. 1

    It’s sort of like when a sniper has a target in his crosshairs and pulls the trigger but, before the bullet hits, the target has a heart attack and falls over dead.

    The difference is that if the sniper is patent prosecutor, all is forgiven.

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