Patent Attorney Argument as Inequitable Conduct

Rothman v. Target Corp. (Fed. Cir. 2009)

A New Jersey jury found Rothman’s patent invalid, not infringed, and unenforceable due to inequitable conduct. (Pat No. 6,855,029). On appeal, the Federal Circuit reversed the inequitable conduct holding, but otherwise affirmed.

Obviousness: The asserted patent covers a breastfeeding shirt that includes a concealed, but fully supportive nursing bra. The original prototype was built by Ms. Rothman by sewing a Jockey brand tank-top together with an Olga brand nursing bra and some additional fabric. Thus, here we have a situation where the inventor took off the shelf items and took a few hours (a day into the night) to form them into a new combination. The appellate panel recognized that the particular manner in which an invention is actually made does not negate patentability. However, the appellate panel did see the simple inventive process as evidence of “the predictability and expectations in this field of art.” Based on these facts, the court could find no reason to disturb the obviousness holding since a PHOSITA “would have been motivated to combine an existing tank top with an existing nursing bra to arrive at the claimed invention.”

Inequitable Conduct: The Federal Circuit reversed the jury’s finding of inequitable conduct. One point of interest involved the patent attorney argument that “nursing garments are highly specialized … as distinguished from maternity garments, [and] are not analogous prior art to women’s garments in general…. Therefore, it is improper to combine a prior art reference from nursing garments with a prior art reference from garments generally, with no connection to nursing garments.” It turned out that the patent attorney had no prior experience in nursing garment technology and did not consult any industry experts before making his claims regarding the ‘highly specialized’ nature of the art and the impropriety of combining prior art.

The Federal Circuit no problem with these attorney statements:

[The attorney’s] remarks show an effort to persuade that does not even approach an effort to deceive the PTO or abuse the prosecution process. …

Appellees find fault with the final sentence from the excerpt above. However, [the attorney’s] conclusion that it is “improper to combine a prior art reference from nursing garments with a prior art reference from garments generally, with no connection to nursing garments” is nothing more than attorney argument based on the foregoing facts … [derived] from his analysis that nursing garments are different from regular women’s wear. … In any event, this type of conclusory analysis betrays no intent to deceive the PTO and obtain a patent with objectively false information. Rather, it is an attempt to characterize the prior art in a manner favorable to the attorney’s client—far from deception. No reasonable jury could rely on Mr. Jacobson’s statements as clear and convincing proof of inequitable conduct.

While the law prohibits genuine misrepresentations of material fact, a prosecuting attorney is free to present argument in favor of patentability without fear of committing inequitable conduct. . . . This court has little basis to find deceptive intent in the routine back and forth between examiner and applicant. Moreover, this court recognizes that the Patent Act gives the examiner the discretion to reject or accept an applicant’s arguments based on the examiner’s own conclusions regarding the prosecution record.

Attorneys should take this decision with a grain of salt based on the fact that Judge Rader authored the opinion and Judge Friedman was on the panel. Judge Rader is well known for his opinion that inequitable conduct is too liberally adjudged.

70 thoughts on “Patent Attorney Argument as Inequitable Conduct

  1. 69

    “Ronald Reagan’s corpse called. He wants you to continue fellating him.”

    A little peek into “Mooney’s World”

    How sad.

  2. 67

    Examiners engage in inequitable conduct all the time.

    They make misleading and unreasonable arguments. Sometimes they outright lie.

    Why doesn’t anyone care about *that*?

  3. 66

    “over the deep end”

    LOL

    When all you’ve got left is playing games with screen names, I’d say you probably know about the deep end all too well.

  4. 65

    “the obvious political partisanship of the sponsor”

    LOL. Obama’s election appears to have driven the JustSayinEye troll over the deep end.

  5. 64

    The problem with 6 is that he doesn’t know what he doesn’t know.

    Here is an essay that 6 should read and heed.

    What Every Schoolboy Doesn’t Know

    by Mortimer J. Adler, Ph.D.

    an excerpt from the beginning:

    “What every schoolboy doesn’t know is that he doesn’t know very much. This is precisely what every intelligent adult does know — that he did not get an education in school.”

    6 is clearly stuck at the Schoolboy level.

  6. 63

    I think with the obvious political partisanship of the sponsor, note the unusual anti-Rader bias (I don’t know anyone who doesn’t have the highest regard for him), and the shenanigans with the Mooney et al. puppet show (who is really a mouthpiece for what the sponsor wants to say), the objectivity and credibility of this site is coming into question.

    While its amusing to banter back and forth, some of the content is really showing an anti-patent anti-practitioner stance. I personally don’t have a lot of respect for sideline watchers who casually criticize federal judges as if it was “cool.” Or who dismiss entire bodies of subject matter as obvious garbage.

  7. 62

    Someone took issue with the statement that “attorney argument can almost never constitute inequitable conduct”

    What part of this don’t you get? Aside from material misrepresentations, an argument to advance a particular interpretation, line of reasoning or legal theory made in good faith is pure advocacy and is rightly exempt from sanctions.

  8. 61

    “Malcolm,

    Please see comment at 3:17 PM above.”

    Beyond snark, what are you expecting out of moon beam?

    Cogent analysis?

    FYI — that was a punch line.

  9. 59

    “Considering my school was the place where I learned that atoms move when electricity is placed through conductors”

    You better clarify that statement.

    ….. as I play out a little rope.

  10. 58

    JAOI “where did I read something about “new and useful”?, especially when the undeniable need existed for, say, 4 generations, give or take?”

    Doesn’t matter. A cup with the letters CIFIFISLILSI written on the side is “new” and “useful” but nobody is getting a patent on it. This is where reason and reality trumps and obliterates your ideology. Also, not the only place where that occurs. This news flash, as always, free of charge to anyone who can read.

  11. 57

    Geee wiz, where did I read something about “new and useful”?, especially when the undeniable need existed for, say, 4 generations, give or take?

  12. 56

    JAOI: “How many generations of nursing mothers did not have the advantage of Ms. Line Rothman’s invention?”

    Should we start with Eve?

    “If there was motivation to produce such a nursing garment, why did it go un-produced for untold generations?”

    Un-produced or unpatented? Perhaps it went unproduced because nobody really cared.

    “Seeing the unseen-for-generations-nursing-garment problem WAS the invention.”

    That’s a marketing problem and, as the CAFC and the PTO are desperately trying to tell you, merely “seeing” or “determining” or “recognizing” that a product can be marketed and sold to people is not a source of patentability.

  13. 54

    My limited experience leads me to believe that random selection is not always the rule. If a case has potentially political or other significant ramifications, I believe the process is way less than random.

    I suspect it is not uncommon for “result oriented” decisions to become fait de compli at the onset, even before discovery starts.

    I tend to believe in statistics, rather that mere coincidence.
    And yes, the possibilities are sickening.

  14. 52

    Hey Defector,

    I sympathize with you, but please do not attribute your dissatisfaction to “everyone” of us commenters. I Just ignore posts by ignorant kibitzers.

    Also, perhaps it is this particular lousy CAFC Rothman v. Target decision that has you somewhat upset.

  15. 51

    Paul Cole said:
    “Why on earth were Mr Rader, Mr Friedman and Mr Bryson selected as the panel for this particular case? For obvious reasons Pauline Newman, Sharon Prost and Kimberly Moore would have been a more appropriate selection. In all seriousness, nursing children is not an experience men go through in their lives, and this is an invention whose practicality and value is best judged by women.”

    My educated guess is that cases are assigned randomly, after screening for conflicts. Think of the possibilities for abuse if the Chief Judge or the Clerk hand-picked the panels and the cases.

  16. 50

    6, you “learned that atoms move when electricity is placed through conductors”? I think you should ask for your tuition back.

    Thanks everyone for reminding why I stopped reading Patently-O.

  17. 49

    “I fear that the panel’s decision will be viewed by patent prosecutors as a tacit green light to make misleading and unreasonable arguments .”

    The light has been green forever.

  18. 48

    “BTW, where is 6? Is he stuck holding a bucket under an electric cord in hope of catching the electrons that fall out.”

    Considering my school was the place where I learned that atoms move when electricity is placed through conductors I would say that if anything I might need to contact your school and inform them of the leaps and bounds that science has taken in the last 50 years so I’ll stop seeing your ridiculous arguments that I smack down on a daily basis. Then again, maybe you graduated 50 years ago so your school isn’t to blame.

  19. 47

    “As I said before, “substantially every invention” is a “combination of old elements.””

    That’s why I was surprised that we issued any more than 1000 or so patents per year when I first got here.

  20. 46

    While I do not disagree with the outcome of the Court’s inequitable conduct analysis on the facts of the case, I am troubled by this federal circuit panel’s suggestion that attorney argument can almost never constitute inequitable conduct. Attorneys should be held to a higher standard than others who participate in the patent prosecution process, because attorneys have a special duty as officers of the court and members of the patent bar to assure that the ex parte patent prosecution process is conducted based on full and fair disclosure. Attorney argument that is clearly misleading, entirely baseless, and/or that would justify Rule 11 or other similar sanctions in a Federal district or appellate court should be grounds for a finding of inequitable conduct, regardless of whether the attorney can articulate with the benefit of hindsight a good faith excuse or justification. It seems to me that a fundamental problem in the patent system is that patent examiners, under stress to meet their quotas, too often fall prey to clever but clearly incorrect arguments of patent prosecutors, who wear down the examiner into submission by engaging in a series of confusing, misleading, unfair and baseless arguments. It should be the objective of inequitable conduct to deter patent prosecutors from such conduct–and I fear that the panel’s decision will be viewed by patent prosecutors as a tacit green light to make misleading and unreasonable arguments in order to grind a busy patent examiner into submission.

  21. 45

    Why on earth were Mr Rader, Mr Friedman and Mr Bryson selected as the panel for this particular case? For obvious reasons Pauline Newman, Sharon Prost and Kimberly Moore would have been a more appropriate selection. In all seriousness, nursing children is not an experience men go through in their lives, and this is an invention whose practicality and value is best judged by women.

    Ms Line Rothman is a lady who should command the sympathy of the patent community. Not only has she had an idea and patented it, but she has founded a company on the basis of her concept and her products are apparently well received. Ms Mandy Haberman in the UK is made of the same stuff (she invented the very successful Anywayup Cup).

    Evidence of Ms Haydee Johnson is inherently more relevant, but evidence of male witnesses should be treated with caution. Most important really is not whether the garment could easily have been produced from existing materials but how women reacted to and used it, and whether it provided anything novel for them and made their lives easier. Judging by Ms Rothman’s website, arguably it did.

    I am not arguing that the decision was necessarily wrong, but that there is a need for caution when considering inventions of this simplicity. When the people affected are entirely women and the judges are entirely men, there is as more than usual risk that the decision may have been incorrect.

  22. 44

    All Seeing Eye deadpanned, “Attorneys should take comfort in this decision that they are free to make good faith arguments like the one made in this case during the course of routine zealous advocacy for their client…”

    Attorneys should take comfort only after seeing that Judge Rader in on their panel.

  23. 43

    That does it.

    I’m going to do everything I can to make “POWERFUL COMPUTER BRAIN” the next big meme.

  24. 42

    Hi Leo,

    Sort of – how long is a generation anyway?

    (But my last question wasn’t õ¿e)

  25. 41

    “On the same art, the EPO did not even come to the idea to run an obviousness objection. Was it sleeping, or was the attack just not available under the EPO’s brutally efficient version of TSM? How long must I wait, before the virtues of the EPO obviousness model receive wider appreciation?”

    Max, I don’t think you need to wait any longer for US prosecutors to appreciate the PSA ;) We already do.

  26. 40

    “How many generations of nursing mothers did not have the advantage of Ms. Line Rothman’s invention?”

    Four. Or is this a trick question?

  27. 39

    Once upon a time many years ago, my wife sued the IRS for trying to auction-off her country estate for my unpaid taxes, taxes which were unpaid because in the ’80’s my and all other legitimate ’70’s tax shelters were declared no-good in one kangaroo tax court after another.

    At one hearing, sitting with our son, who was only months old, next to her attorney at the plaintiff’s table in open federal court, my wife lifted her blouse to reach her nursing bra to nurse our son to keep him calm and quiet.

    True story – I’ll never forget that surreal moment.

  28. 38

    Terrible opinion on obviousness. If this product was so obvious then why did it take more than 50 years to make the product which appears to have a demand in the market place. Long felt need and making $$ is a sign of non-obviousness. No even one piece of prior art showing a shirt with some type of nursing bra. Based on the record, the problem was not known in the art and as the CAFC held in Ball Aersol, this must be expressly addressed. Also troubling is the Court’s statement: “Of course, the manner in which the invention was made does not …negate .. the invention’s patentability. In this case, however, the inventive process shows the predictability and expectations in this field of art. The inventor own creativity was used against her. Maybe the inventor should have waited to file suit until Target made $10 million in sales and argued commercial success. Terrible.

  29. 37

    Dear Max, Learned Hand et al.,

    Re. e.g.:
    “The line of reasoning in this case regarding off the shelf items is an abomination.
    As I said before, ‘substantially every invention’ is a ‘combination of old elements.’”

    An abomination is right. What horrible Opinions in this case, Just terrible. All those responsible for such a tragic outcome ought to be ashamed!

    How many generations of nursing mothers did not have the advantage of Ms. Line Rothman’s invention? If there was motivation to produce such a nursing garment, why did it go un-produced for untold generations?

    Seeing the unseen-for-generations-nursing-garment problem WAS the invention.

    Max, I must be getting old because I cannot find what you wrote only a few days ago that captured this notion so clearly and concisely—please repeat your comment.

  30. 36

    “My respect for Patently-O blog analyses have [sic] been diminished greatly by the author of this article.”

    I can’t help but find it ironic that you are “Saddened by poor authorship” and yet have written a critique that makes little sense. You say that respect for Patently-O has been damaged “by the author of this article.” Would you like to share with us what the author did that caused this? Was he caught being mean to puppies, or in some other unsavory activity? If you meant to say that this particular article is disappointing, you failed.

  31. 35

    Notwithstanding the CAFC’s overturning of the DC’s decision on i.c., I find the fact that the question even had to go to the CAFC to be chilling, and I take note of Dennis’ observation that it was Judge Rader, known for his “i.c. is out of control” stance, who penned the decision. The attorney argument in question is of the sort that can be found in innumerable responses in thousands if not millions of patent file histories. To start calling this i.c. would put most practitioners’ livelihoods at risk for responses they filed years ago. It would also put an unnecessary hurdle in the way of applicants, in the form of increased attorney time making sure that their mere arguments (which the PTO doesn’t give great weight to anyway – that’s why rule 132 petitions exist) don’t constitute i.c. I fear for the next time a D.C. makes a similar finding and the CAFC panel doesn’t overturn it.

  32. 34

    My respect for Patently-O blog analyses have been diminished greatly by the author of this article.

  33. 33

    anyone who actually thinks that an examiner might be dazzled and swayed by such a non-analogous art argument puffed out by attorney has never examined, or wasn’t very good at it.

  34. 32

    From the article:

    (1) ‘The appellate panel recognized that the particular manner in which an invention is actually made does not negate patentability.’

    (2) ‘However, the appellate panel did see the simple inventive process as evidence of “the predictability and expectations in this field of art.”‘

    So the manner in which an invention is made doesn’t negate patentability, but is does do a bunch of other stuff that can negate patentability? That’s just wrong.

    The fact that a “simple” invention reaches the federal circuit is itself evidence of non-obviousness.

  35. 31

    “I guess the line between inequitable conduct and 100% pure transparently self-serving bullcrap is not as fine as one might imagine.”

    MM,

    Again, I’m going to make an exception to responding to your oxymoronic rhetorical nonsense. The others on this blog, including ASE and patent leather, are correct that treating what this patent attorney said as inequitable conduct (even remotely) is nuts. Frankly, if you call yourself a patent attorney, you need to find a new line of work. (I’m not the first to say this either.) Get a life MM.

  36. 29

    On the same art, the EPO did not even come to the idea to run an obviousness objection. Was it sleeping, or was the attack just not available under the EPO’s brutally efficient version of TSM? How long must I wait, before the virtues of the EPO obviousness model receive wider appreciation?

  37. 25

    How about some evidence from the patentee of how long maternity shirts and nursing bras have been known independently before this “obvious” combination was constructed?

    I would hope that there was at least that some evidence of a prior art shirt/bra that led to this result rather than the appalling idea that it was simply obvious because it was simple.

  38. 23

    “Is it really that far? I don’t have a problem with the finding of no inequitable conduct. But I think Rader is engaging in a bit of deception of his own. It’s not clear, though, whether he’s fooling himself or trying to fool others.”

    Since when did it become hip for trolls of their own blog to criticize federal judges because they were appointed during a Republican administration?

    Rader has an impeccable record and career. It is sad that a troll of his own blog is attempting to besmirch that record. I wonder if Judge Rader knows what’s going on over here at PatentlyO, er I mean MooneylyO, where suddenly (and surprisingly) patents have become political.

  39. 22

    “Federal Circuit will tolerate just about anything short of clear proof of deliberate deception when it is the PTO, which must rely on patent attorneys in an ex parte proceeding; while I believe that the same judges hold attorneys practicing before them, in adversarial proceedings, to a much higher duty of making sure the representations in the briefs are accurate.”

    This is to balance out the BPAI, who break their spines on a regular basis through their legal contortions and bending over backwards to affirm Examiner rejections.

    If Examiners were practicing before Federal judges and making the same type of legal/factual arguments they do in making rejections in Office Actions, 75% of the Examiners would be behind bars.

    Also, for about 20% of Examiners, I bet I could get their schools to revoke their engineering degrees for some of the bonehead “findings” I’ve seen out of embaressment and to protect their school’s reputation.

    BTW, where is 6? Is he stuck holding a bucket under an electric cord in hope of catching the electrons that fall out.

  40. 21

    Federalist, I’m not saying this decision is wrong. It is just that I see something of a double standard when some judges on the Federal Circuit will tolerate just about anything short of clear proof of deliberate deception when it is the PTO, which must rely on patent attorneys in an ex parte proceeding; while I believe that the same judges hold attorneys practicing before them, in adversarial proceedings, to a much higher duty of making sure the representations in the briefs are accurate. Try arguing “Yes I made a material factual misrepresentation in my brief, but I was just grossly negligent in my brief-writing so don’t sanction me” with a cite to Kingsdown.

    I am still working on the paper.

  41. 20

    “Rader is engaging in a bit of deception of his own.”

    So says the king of deception.

  42. 19

    “Attorneys make legal arguments like this all the time.”

    And every jury knows that attorneys would never ever would make a ridiculous argument in the hopes that someone might actually be fooled by it.

    Rader “it is an attempt to characterize the prior art in a manner favorable to the attorney’s client—far from deception.”

    Is it really that far? I don’t have a problem with the finding of no inequitable conduct. But I think Rader is engaging in a bit of deception of his own. It’s not clear, though, whether he’s fooling himself or trying to fool others.

    Perhaps that’s his point.

  43. 18

    “I have always wondered whether the Federal Circuit would look as kindly on a brief to that Court making the same (mis)representations, in an ex parte proceeding (e.g. for a emergency stay), and without consulting any experts or other sources beforehand.”

    TJ, c’mon. The attorney said that combination was improper because of the level of specialization in the field. It’s an argument about a legal conclusion of combinability, not a fact. Attorneys make legal arguments like this all the time. E.g., “the slippery floor was not forseeable because the floor was black” or “the enforcement clause is unconscionable because it unfairly limits the defendant from making a living” That’s not misrepresentation; that’s advocacy. Now, if the attorney had said that red was blue or asserted the prior art didn’t disclose an embodiment that it did, let’s go ineq. cond.

    By the way, how’s the response been to that paper about amended claims getting a filing date as of their amendment?

  44. 16

    The Federal Circuit’s reasoning seems very sound to me. Like the Federal Circuit, I think that the language was at most “puffing”, and it would have not fooled anyone, certainly not any competent examiner, for a second.

    If the Circuit had upheld the inequitable conduct ruling, it would have had a very negative impact on the field. What language would then be safe?

  45. 14

    Take lasers, you can make a semiconductor laser. Since the invention of the laser people have been testing the temperature of the lasing cavity. Then some PhD “inventor” “came up with” the idea of using a POWERFUL MICROCOMPUTER and some other stuff to actually carefully monitor and control the temperature of the lasing cavity. Wow golly gee willikers (even my grandmother was too embarrassed to say stuff like that) who could have imagined that such a thing would work. Of course cooling the laser had previously been nearly impossible and impossibly expensive, but alas this “inventor” figured out a way to cool it using, guess what, a low cost material.

  46. 11

    I see nothing wrong with the attorney’s statement. If that was really considered inequitable conduct, then there wouldn’t be much left to argue in an amendment!

  47. 10

    Caveman: “did not consult any industry experts before making his claims regarding the [non-analogous arguments made by attorneys in the] art.”

    Nobody needs an “expert” to tell them that a paper system for organizing documents alphabetically is analogous to an “electronic” system for organizing documents alphabetically.

    But when your system or toolbox is organized using a POWERFUL COMPUTER BRAIN all bets are off in the magical mystical world of computer-related patent prosecution.

    Take nursing. You can feed your baby with a bottle. Since the invention of the bottle, people have been testing the temperature of milk. Then some “inventor” “came up with” the idea of using a POWERFUL COMPUTER BRAIN to measure the temperature. Wow golly gee willikers who could have imagined that such a thing would actuall work?!?!?!?!!?

    Now inventor number two is going to improve this awesome bottle. How can it be done? By wrapping the bottle in a mesh that was once so expensive that a competitor used a cheaper mesh!!!!

  48. 9

    “Frankly, the argument that combining nursing garment art with maternity garment art is ‘improper’ is ridiculous but less ridiculous than the non-analogous art arguments that are regularly approved of by the computer/software patent folks in these parts.”

    “It turned out that [moon child] had no prior experience in [software] technology and did not consult any industry experts before making his claims regarding the [non-analogous arguments made by attorneys in the] art.

  49. 8

    “Translation: any baloney will suffice as long as nothing contradictory and known by the attorney is in writing and/or discoverable.”

    And the above deviates from normal advocacy practice how? What world do you live in Mooney? I think you watched “Liar, Liar” one too many times.

  50. 7

    The line of reasoning in this case regarding off the shelf items is an abomination.

    As I said before, “substantially every invention” is a “combination of old elements.”

  51. 6

    “shallowness of the original Examination”

    As I and many others have tried to explain to Mooney, not every application needs to shake the foundations of science…

    Simple subject matter leads to simple examination, although, as in this case, the arguments can become the focal point.

  52. 5

    “I hope Ms. Rothman didn’t lost too”

    I think there is a problem with verb tense here…

    I guess in Mooney’s opinion, Judge Rader must be a “wingnut.” Particularly since he never (to my knowledge) served in the Peace Corps or wore Birkenstocks.

    “self serving bullcrap”

    Like trolling on your own blog.

  53. 4

    I have always wondered whether the Federal Circuit would look as kindly on a brief to that Court making the same (mis)representations, in an ex parte proceeding (e.g. for a emergency stay), and without consulting any experts or other sources beforehand.

  54. 3

    “routine zealous advocacy”

    Translation: any baloney will suffice as long as nothing contradictory and known by the attorney is in writing and/or discoverable.

    Frankly, the argument that combining nursing garment art with maternity garment art is “improper” is ridiculous but less ridiculous than the non-analogous art arguments that are regularly approved of by the computer/software patent folks in these parts.

    Kudos to the defense for raising the issue. If nothing else, they surely highlighted the shallowness of the original Examination of this patent.

  55. 2

    I guess the line between inequitable conduct and 100% pure transparently self-serving bullcrap is not as fine as one might imagine.

    At least not if you’re Judge Rader.

    In any event, at least they got the obviousness part right. I hope Ms. Rothman didn’t lost too much money playing with lawyers in the shiny happy world of the patent bubble.

  56. 1

    “Attorneys should take this decision with a grain of salt”

    This sounds like Mooney talking again. Again with the burr under the saddle with regard to Judge Rader.

    Attorneys should take comfort in this decision that they are free to make good faith arguments like the one made in this case during the course of routine zealous advocacy for their client, even if sideline watchers think that the claims and even the arguments are “garbage.”

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