The Clarified Law of Inequitable Conduct

Although not new writing law, in Star Scientific, Chief Judge Michel does a nice job of clearly breaking down inequitable conduct analysis into simple two steps. The case clarifies that threshold levels of materiality and intent must each be proven by clear and convincing evidence.

Inequitable Conduct Two Step Analysis:

  1. Whether the accused infringer proven threshold levels of (a) intent to deceive the PTO and (b) materiality, both with clear and convincing evidence. Although the intent element may be proven by circumstantial evidence. The clear and convincing standard requires that the evidence must be strong enough to point to “intent to deceive” as the “single most reasonable inference able to be drawn from the evidence.”
  2. If both elements are proven by clear and convincing evidence, the court should “look to the equities” to determine whether the evidence warrants a finding of inequitable conduct and thus unenforceability. It is only at this second stage when the court may balance the relative weight of proof. In particular, “[t]he more material the omission or the misrepresentation, the lower the level of intent required to establish inequitable conduct, and vice versa.” (Quoting Critikon, 120 F.3d 1253 (Fed. Cir. 1997)(J. Rich)).

Still unclear is the meaning of “threshold.” Presumably proving a “threshold level of intent” should be easier than simply proving “intent.”


13 thoughts on “The Clarified Law of Inequitable Conduct

  1. 13

    If non-disclosed prior art is so material that it seems unlikely [to the judicial fact-finder] that a claim of a patent in suit would not have issued if it HAD been disclosed to the examiner, and if either an inventor or an involved attorney had knowledge of that art while the application was pending, CAFC cases in recent years would seem to suggest that “intent” is likely to be “IMPLIED from the circumstances.”

  2. 12


    I think the former view is correct, the idea being that if there is a sliding scale between materiality and intent, the scale doesn’t extend to the extremes to punish (a) completely innocent failures to disclose highly material references, or (b) the person who intends to deceive the PTO by not telling the examiner that his cat is a co-inventor.

    There must be *some* amount of materiality AND intent, though I don’t think it’s clear from the case law how much that “threshold” level is.

  3. 11


    At the equity-balancing stage, I think the court is less interested in putting things in categories and more interested in determining how egregious the case is.

    I think that if an applicant goes to greater lengths to deceive the PTO, he has more “intent” for the purposes of that part of the analysis. To take a ridiculous hypothetical, the applicant who intercepts an examiner’s mail or tries to destroy all records of an invalidating reference has more “intent to deceive” than an applicant who merely has a material reference on his desk and consciously decides not to dislose it because he believes it will invalidate his patent… though both hypothetical applicants have “specific intent” to deceive the PTO.

  4. 10

    The quote from Critikon doesn’t make sense to me. “The more material the omission or the misrepresentation, the lower [the] the level of intent [is] required to establish inequitable conduct and vice versa.” Earlier in the opinion (p.12) the court quotes Molins v. Textron saying that the level of intent must be specific intent.

    So, if a defendant must prove by clear and convincing evidence that the applicant had a specific intent to deceive the PTO, then when the court weights equities, how can there be a lower level of intent (any thing less than specific intent) to balance against the proven materiality?

    Can someone explain to me what how there can be an intent greater than specific intent? Am I reading the quote from Molins too broadly? Thanks.

  5. 9

    Is use of the word “threshold” really meant to imply some lower level of requirement, i.e., “threshold intent” vs. “intent”; or, is it merely descriptive of the relative order of the inquiries? Under the latter view, “threshold” is simply descriptive of the fact that a court decides whether intent and materiality were proven by clear and convincing evidence before the court looks to the equities.

  6. 5

    “At some point CAFC will go en banc on this issue, and then all our malpractice policies will sky-rocket.”

    Kingsdown was supposed to be the en banc solution

  7. 4

    How right you are, Paul. The panel is everything on IC.

    It was noted by QED on this blog on Aug 7 with respect to Research Corporation Technologies v. Microsoft (Fed. Cir. 2008) in which Judge Rader slapped back an inequitable conduct finding by an out-of-control district judge:

    “All patent cases should go to a single panel of Rader, Newman, and Michel. If Prost and Moore had had this case, they would have affirmed . . .”

    At some point CAFC will go en banc on this issue, and then all our malpractice policies will sky-rocket.

  8. 2

    Nice, but will other panels of the CAFC follow this? The facts here {lack of ANY evidence for certain D.C. bench conclusions} seem unusually egregious in this case, and thus perhaps too easily distingushed in other cases?

    P.S. Would not a reexamination have been a lot easier, cheaper and more effective for a patent like this?

  9. 1

    Given that Chief Judge Michel authored this opinion, one may wonder if this signals a trend by the Federal Circuit to reign in dubious or weakly supported allegations of inequitable conduct. If true, that would be “good news” for patentees and those of us in the prosecution world who have to worry that every action we take during prosecution will be misconstrued, mischaracterized, or distorted. Only time will tell.

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