By Jason Rantanen
In Leviton, Chief Judge Michel issued his last words as a judge on the subject of inequitable conduct, while Judge Prost provided some hints as to her views on the questions pending before the court in Therasense v. Becton Dickinson.
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Leviton Manufacturing Company, Inc. v. Universal Security Instruments, Inc. (Fed. Cir. 2010) (Case No. 2009-1421)
The district court's inequitable conduct determination in this case arose from two patent applications Leviton filed in 2003 and 2004. The applications contained virtually identical claims, but listed completely different inventors. The first application (the "Germain application") was filed in October 2003 and claimed priority to a February 2003 provisional application; the second, which led to the '766 patent (the patent in suit), was filed in 2004 as a continuation of an application filed on August 20, 1999. The prosecuting attorneys did not disclose the Germain application during the prosecution of the '766 patent.
After granting Leviton's mid-litigation motion to dismiss, the district court concluded that the case was exceptional based on inequitable conduct and vexatious litigation, resulting in an award of attorneys' fees.
- Note: The majority treated the district court's inequitable conduct finding as a summary judgment, as there was no evidentiary hearing. The dissent would have reviewed the factual findings under the clear error standard because they arose in the context of an exceptional case determination.
Majority: Factual Issues Relating to Intent Precluded Summary Judgment of Inequitable Conduct
The majority, written by then Chief Judge Michel and joined by Judge Moore, concluded that summary judgment of inequitable conduct should be reversed. With respect to materiality, they agreed with the district court that the Germain application constituted undisclosed material information. Although the copying of the claims was not per se material under 37 C.F.R. § 10.23(c)(7) (which relates to the interference context), it was relevant to double patenting and inventorship. They also agreed that the failure to disclose litigation involving the '766 patent's parents was material.
On intent, however, the majority concluded that the district court's inference of deceptive intent was not the only reasonable one based on the record. In particular, they noted that the explanation given by Leviton's litigation counsel was not unreasonable as a matter of law, thus precluding a grant of summary judgment. Rather, it could only be found implausible following an evidentiary hearing.
Dissent: Summary Judgment Should Be Affirmed
In her lengthy dissent, Judge Prost indicated that she would reach the opposite conclusion on intent. Particularly informative are her views on inferring intent. First, she explicitly adopted the Larson Manufacturing requirement that an inference of intent "must be the single most reasonable inference able to be drawn from the evidence." Dissent at 11. Second, she gave her thoughts on plausible explanations, reasoning that the prosecuting attorney's explanation (that he did not believe the Germain application was material because it was not prior art) was implausible because a veteran patent prosecutor would know that prior art is not the only type of information that is material to the examiner. Thus, she would "allow the district court to reject [the explanation] as "unreasonable" and "implausible" and therefore insufficient to create a genuine issue of material fact." Dissent at 17.
- Comment: Judge Prost's logic would appear to be applicable to any situation in which the prosecuting attorney's explanation was incorrect – which generally necessarily follows once materiality has been found. All one needs to do is to point out that the attorney must necessarily have known better, and the explanation would be rendered implausible.
About Jason: After spending several years in practice as a patent litigator, Jason is now looking at law from the academic side and is currently a Visiting Researcher at UC Hastings. Although he does not currently represent clients, for the sake of full disclosure he notes that he has represented clients on both sides of inequitable conduct issues, including Abbott Laboratories in connection with the Therasense litigation.
Sonnett,
You do perform some sort of integrity/conflict of interest checks with new clients and new matters, do you not?
Your IC check is no more difficult than that – what a reasonable attorney would do.
The recent developments in law concerning IC are making it very difficult to prosecute anything more than a single patent application.How realistic would it be a patent attorney to review all of their patent applications to determine which claims are similar and which aren’t.
Glaxo insists that these studies are not conclusive, and says that more studies must be conducted by qualified scientists before any conclusions about Avandia’s safety can be drawn. Earlier this year, the company suffered a setback in its Avandia defense when two US lawmakers released a report that criticized Glaxo’s handling of safety issues surrounding Avandia.
Ned,
You conflate materiality with invalidity. Something may be material and yet not make the claims invalid.
Clearly the Rule is written as I have described (heck I even quoted it). Your view is clearly wrong.
Now whether the Office had/has authority to make such a rule – that’s a different question, now isn’t it? I’ll leave that to you and IANAE to thresh out.
The point is, the Rule is what the Rule is. Your convolutions in trying to interpret the rule so it fits your world view rather than accept the plain and direct meaning is rather amusing. Your fighting against what it clearly says just shows how misdirected you are. Not every Rule makes sense so it’s OK to admit that you are wrong and still argue that the Rule should be changed – aint no shame in that. But it is shameful to climb up on your pedestal and proclaim that the Rule means what you want it to mean, and keep arguing a losing cause.
ping, you conflate materiality with intent. If a reference cannot be used to make a prima facie case of unpatentability, alone or in combination, it is not material and there should be no obligation to disclose it to the PTO. If there is, then the system is broken.
Ned, try to listen to IANAE,
“then it is clear that X is not that important regardless.” is a false statement.
You are conflating actual invalidity with something that may or may not be invalidating. “Material” simply is not synonymous with “invalidating”. It is not a concern with whether the jury finds the item “material-for-the-jury” but rather, whether the jury finds the item “material-for-the-examiner”.
I done quote you the context before, let’s see if repeating it let’s sink into the remaining neurons or if those neurons are like totally spent:
37 CFR 1.56(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability.”
You might notice that this calls for the examiner to make an evaluation. Ya wouldn’t call for an evaluation if the law meant only those things that were definitively invalidating.
Do ya think ya got it this time?
Let’s keep it simple:
Suppose the allegation is that the withheld reference disclosed X, a limitation in context not disclosed by any other reference.
Now, this issue is placed before the jury as a necessary fact to be found in order to render the claim invalid:
Does the reference disclose X? If yes, does the reference, alone, or in combination, render the claim invalid?
If the jury says no the reference does not disclose X, I think the court is bound by that decision.
If the jury said it does disclose X, but that the claim is not invalid nevertheless, then it is clear that X is not that important regardless. The prior art does not disclose something else.
Ugh. So, the jury is given the reference and it finds the claim not invalid under both 102 and 103. Now you suggest that the jury did not necessarily decide that the reference did not disclose all the claim elements or render them obvious either alone or in combination with other references? (And let’s not change the facts by bringing up other references, or secondary considerations.)
Besides, if a reference is being argued both for IC and invalidity, the jury verdict can include whether the reference disclosed the elements, one by one, or rendered the claim obvious.
Now, given such a jury verdict, is it STILL your contention that the IC issue does not involve whether the reference discloses the claim elements or renders them obvious in view of other references so that there are NO overlapping findings of fact whatsoever?
Cynical, true, but I truly believe this is what is really going on in many cases.
I’m as cynical as they come, but I don’t believe this is what is really going on in many cases. Firstly, the courts are not reaching this result in that many cases, despite the “plague” of defendants pleading it in every case. Secondly, a lot of those cases reach this result on a fact record that clearly shows shady conduct by the applicant of exactly the sort you’d want an inequitable conduct rule to punish.
So we have the “important to a reasonable examiner” standard. In the case of a reference, this should mean that the references discloses the claim elements or can be combined with other references to render the claim obvious.
I refer you to my previous post, wherein I attempted yet again to explain the important distinction between “this information is relevant to the case” and “this information determines the outcome of the case”.
does not mean that “materiality” is not a common issue of fact with invalidity.
It may not mean that, but materiality happens not to be a common issue of fact. When a jury finds a claim not-invalid over a reference, nobody ever asks that jury “okay, but did you consider that reference relevant to your determination?” There is absolutely no logical reason why the jury couldn’t consistently answer “yes” to that question every time, but the jury is never asked the question because the question is not relevant to validity, so that question is free to be decided in a later proceeding where the answer matters.
In your attempt to define “materiality” you actually began to talk about what the reference discloses.
Wait, did you actually think I thought what the reference discloses is immaterial to materiality? I’m sorry you had to find out this way, but I think you’re arguing with a strawman.
IANAE, just because IC has other issues that have to be proved regarding intent, non disclosure, cumulativeness and the like does not mean that “materiality” is not a common issue of fact with invalidity. See, Beacon Theaters.
In your attempt to define “materiality” you actually began to talk about what the reference discloses. Bravo.
Now, if a reference can be “material” even if it cannot form the basis for a prima facie case of unpatentablity alone or in combination with secondary references, then I would agree that a finding of IC is not inconsistent with a finding of “not invalid.”
So we have the “important to a reasonable examiner” standard. In the case of a reference, this should mean that the references discloses the claim elements or can be combined with other references to render the claim obvious. But the Feds have never even attempted to define what this means. This lack of definition allows the courts to hold patents unenforceable “just because they can” — and that “just because they can” means that if they disagree with the jury verdict they can get to the same result (invalidity) by holding the patent unenforceable.
Cynical, true, but I truly believe this is what is really going on in many cases.
IANAE, all you are saying is that IC requires a difference level of proof that invalidity.
No, I’m also saying it requires proof of an almost completely disjoint set of facts.
If a finding of “not conclusive” were inconsistent with a finding of “material”, trial courts all over the country would be unable to decide on the admissibility (materiality) of evidence without pre-deciding the result of the case.
I know you’re a lawyer. This can’t possibly be too fine a distinction for you to process.
if the materiality of the reference is determined by whether it discloses the claim elements.
See, there’s your problem right there. The “if”.
Materiality is not determined by whether the reference discloses the claim elements. Materiality is determined by whether the reference is relevant (and non-cumulative) evidence in the examiner’s determination of whether the prior art as a whole discloses the claim elements.
IANAE, all you are saying is that IC requires a difference level of proof that invalidity. Assuming that the level of proof were in fact different, the question is still the same, does or does not the reference disclose the elements of the claim.
But the level of proof IS the same. Both IC and invalidity require clear and convincing evidence.
So, one really cannot avoid the issue. A finding of “not invalid” over the reference is inconsistent with a finding that the reference is material if the materiality of the reference is determined by whether it discloses the claim elements.
More in the next post.
Read, this, please:
What part of it do you think is relevant to the discussion?
Note: Nobody here is claiming that you’re wrong in any way about what the Seventh Amendment says. I’m only saying it doesn’t apply to this particular situation.
Read, this, please:
Beacon Theaters v. Westover
link to caselaw.lp.findlaw.com
then the find of a jury that a reference DOSE NOT disclose the claims elements is inconsistent with a court finding that they DO.
You have a remarkable flair for tautology.
A finding of materiality is not a finding that the reference discloses the claim elements. At most it’s a finding that it appears prima facie to disclose them, or that an examiner examining the claims would have liked to decide for himself whether or not the elements are disclosed.
While we’re on the subject, I’ll note that a PTO finding in re-exam that a claim is invalid on the balance of probabilities is not technically inconsistent with a jury finding in litigation that a claim is not invalid over the same art by a clear and convincing standard.
IANAE, if the materiality of a reference has something to do with whether it discloses the elements of a claim, or makes them obvious (and I suggest that under Rule 56 as written that it does), then the find of a jury that a reference DOSE NOT disclose the claims elements is inconsistent with a court finding that they DO.
– if it is held not invalid, then find no IC as a matter of law.
Ned, the problem with your approach is that invalidity and unenforceability are two completely different defenses that only coincidentally have the same practical result for the infringer. They both depend on different facts, and there’s no reason why the result in one should determine the result in the other.
Non-infringement is another such defense, that also allows the defendant to escape all liability. It would be pretty silly, would it not, to find infringement as a matter of law once the claim is found not-invalid.
Just as Newman noted in her dissent, the most important aspect of the case is that the jury heard the evidence and found the patent no invalid. That should have decided the issue.
That did decide the issue. What you and Newman are missing here is that the issue on appeal is a different issue.
If a criminal defendant is charged with two offenses, should we let him go free simply because he has an alibi for one of them?
ping, we are going to have to agree to disagree on this point.
“the most important aspect of the case is that the jury heard the evidence and found the patent no invalid. That should have decided the issue.”
Except Ned, it is not the most important aspect, because the “crime” was not before the jury, but rather, was (in the absence) before the examiner.
The foul was waaay before the shot.
Ya see – you keep missing the point of when the inequitable conduct happened.
The law is simply not no-harm, no-foul. The law is not a validity question. “Material” is not synonymous with “validity”. It is not a matter of nullifying the jury verdict, cause the matter aint looking at validity.
Go back and re-read all of my man IANAE’s comments and enlighten yourself.
Cy Nical, Dr. Stoddard has nothing to do with the point I’m making. Others here somehow think having the president involved is the most important aspect of this case. It is not. Just as Newman noted in her dissent, the most important aspect of the case is that the jury heard the evidence and found the patent no invalid. That should have decided the issue. That it did not is the problem both she and I identified.
The court the held the patent uneforceable in view of the same evidence considered by the jury.
I don’t think this is correct, Ned. The question of whether Dr. Stoddard was involved in the patent prosecution is not related to the invalidity issue. Are you suggesting that it should be?
yeah, ping, let’s nullify jury verdicts if we don’t think they got it right.
H’mm. Now how could we do that and make it look like we were abiding by the constitution? H’mm.
Wait, I have a great idea!!! Withhold a remedy or, better, declare the patent unenforceable because we just don’t like the plaintiff, or because the defendant pays better. Great!
Now we’re cooking. Now that we have the means to overturn jury verdicts, let the cash flow and the tyranny begin. Hallelujah, almighty! Sing the praises of the mighty Federal Circuit, Amen.
“if it is held not invalid, then find no IC as a matter of law.”
sigh.
back to the no-harm-no-foul mentality.
Ned’s idea of the game is standing at the free throw line waiting to shoot a foul shot that will never come.
I sincerely hope the Avid folks petition the Supremes for a stay and potentially raise the constitutional issue as well.
IANAE, I think I have made myself clear that, in the case of non disclosure of prior art, the 7th Amendment requires
– the validity issues to be tried to the jury first;
– if the claim is held invalid, then determine whether the non disclosure was intentional; and
– if it is held not invalid, then find no IC as a matter of law.
what happened here is, by slight of hand, the court overruling the jury. That, frankly, should not be possible under our constitution.
Ned, I fully understand that that’s the point you’re trying to make.
What I want to know is whether inequitable conduct can exist at all “under our constitution” if your point is correct. Humor me, and contrive me an inequitable conduct case that works. Or just come out and say that the entire doctrine of inequitable conduct is unconstitutional. But pick a side.
Mooney, Newman pointed out that just being the “closest” had never, prior to the Avid case, required a finding of materiality without more. Avid is a aberration even under the Fed. Cir. extremist views of the duty.
IANAE, Avid involved evidence presented to a jury. They held the patent not invalid over that evidence. There was no misrepresentation by anyone.
The court the held the patent uneforceable in view of the same evidence considered by the jury.
Regardless of your views to the contrary, IANAE, what happened here is, by slight of hand, the court overruling the jury. That, frankly, should not be possible under our constitution.
Jason, the Feds just denied Avid’s motion to stay pending Therasense. Newman dissented. She noted that had the current Rule 56 applied, that Avid would not have been found to have committed IC. She said it was UNJUST (my emphasis) not to stay Avid pending a decision in Therasense.
That’s the case where the President of the company admitted withholding the closest art from the PTO because he was afraid it might negatively impact prosecution.
Wow. So “unjust” to deny them another chance.
In effect, therefor, the finding by the court here represents a form of judicial jury nullification.
Ned, can you give any example, even made-up, of a court decision that satisfies all of the following conditions?
1) At least one claim is found not invalid by a jury
2) The patent is found unenforceable by the court for failure to disclose a prior art reference
3) The decision is constitutional under the 7th Amendment
Go for it. I need something to read while I’m waiting for the citation of the court decision that held that “virtually all members of the MMS” acted reasonably in that oil spill two months ago.
sigh.
Back to the invalidity misunderstanding by Ned.
IANAE, do you want to do the honors?
General comment:
The Avid court found IC because a prototype was not disclosed to the PTO. The jury had the prototype before it, but held the patent not invalid over it. In effect, therefor, the finding by the court here represents a form of judicial jury nullification. The holding here is blatantly unconstitutional under the 7th Amendment — IMHO.
The link to the denial is here:
/media/docs/2010/07/09-1216o.pdf
Jason, the Feds just denied Avid’s motion to stay pending Therasense. Newman dissented. She noted that had the current Rule 56 applied, that Avid would not have been found to have committed IC. She said it was UNJUST (my emphasis) not to stay Avid pending a decision in Therasense.
Ken,
Ya gotta cite so that IANAE can read.
Feed the beast.
Start reading.
Start citing.
off topic question
Scenerio An attorney does something he is not supposed to do as an atty.in a government entity. If he gives up his license at the same time he does this something,to fall under 42USC Section 1983, isn’t that enough to show his intent. and he is not going to fall under the protection of that Statute
Start reading. The fact that you are not familiar with those rulings explains much.
I provided an example for every situation I raised
You didn’t raise “situations”, you gave four very specific cases, which you said were “examples” of “the courts” considering conduct to be reasonable.
I am curious to read exactly what those courts decided in those four specific cases.
I provided an example for every situation I raised along with supreme court precedent on the same.
(1) Exercise of discretionary powers is pretty much never subject to any kind of “reasonable person” standard of review. That’s what discretionary means. A finding that acts are discretionary in nature means that the reasonable person standard does not apply, not that the person was acting reasonably.
(2) It’s not at all clear to me what point you’re trying to make with this “qualified immunity” business, but it sounds like you’re giving an example of the court actually mandating an objective reasonableness test.
(3) Still waiting for those four case cites I asked for.
And this:
link to reuters.com
And this:
Qualified immunity is a doctrine in U.S. federal law that arises in cases brought against state officials under 42 U.S.C Section 1983 and against federal officials under Bivens v. Six Unknown Named Agents, 403 U.S. 388 (1971). Qualified immunity shields government officials from liability for the violation of an individual’s federal constitutional rights. This grant of immunity is available to state or federal employees performing discretionary functions where their actions, even if later found to be unlawful, did not violate “clearly established law.” The defense of qualified immunity was created by the U.S. Supreme Court, replacing a court’s inquiry into a defendant’s subjective state of mind with an inquiry into the objective reasonableness of the contested action. A government agent’s liability in a federal civil rights lawsuit now no longer turns upon whether the defendant acted with “malice,” but on whether a hypothetical reasonable person in the defendant’s position would have known that his actions violated clearly established law.
As outlined by the Supreme Court in Harlow v. Fitzgerald, 457 U.S. 800 (1982),[1] qualified immunity is designed to shield government officials from actions “insofar as their conduct does not violate clearly established statutory or constitutional rights of which a reasonable person would have known.”
In 2001, the Supreme Court in Saucier v. Katz established a rigid order in which courts must decide the merits of a defendant’s qualified immunity defense. First, the court determines whether the complaint states a constitutional violation. If so, the next sequential step is to determine whether the right at issue was clearly established at the time of the official’s conduct. The Court subsequently overruled Saucier in Pearson v. Callahan, holding that the two-step procedure was no longer mandatory.
I first became aware of this with the Federal Tort Claims Act. Read this and learn my padowan:
Hundreds of lawsuits were filed as a result of the disaster. Many of them were combined into Elizabeth Dalehite, et al. v. United States, under the recently enacted Federal Tort Claims Act (FTCA). On April 13, 1950, the district court found the United States responsible for a litany of negligent acts of omission and commission by 168 named agencies and their representatives in the manufacture, packaging, and labeling of ammonium nitrate, further compounded by errors in transport, storage, loading, fire prevention, and fire suppression, all of which led to the explosions and the subsequent carnage. On June 10, 1952, the U.S. Fifth Circuit Court of Appeals overturned this decision, finding that the United States maintained the right to exercise its own “discretion” in vital national matters. The Supreme Court affirmed that decision (346 U.S. 15, June 8, 1953), in a 4-to-3 opinion, noting that the district court had no jurisdiction under the federal statute to find the U.S. government liable for “negligent planning decisions” which were properly delegated to various departments and agencies. In short, the FTCA clearly exempts “failure to exercise or perform a discretionary function or duty”, and the Court found that all of the alleged acts in this case were discretionary in nature.
In a stinging dissent, three justices argued that, under the FTCA, “Congress has defined the tort liability of the Government as analogous to that of a private person,” i.e., when carrying out duties unrelated to governing. In this case, “a policy adopted in the exercise of an immune discretion was carried out carelessly by those in charge of detail,” and that a private person would certainly be held liable for such acts. It should also be noted that a private person is held to a higher standard of care when carrying out “inherently dangerous” acts such as transportation and storage of explosives.
According to Melvin Belli in his book Ready for the Plaintiff! (1956), Congress acted to provide some compensation after the courts refused to do so.[8] The Dalehite decision was eventually “appealed” to Congress, where relief was granted by means of private legislation (Public Law 378, 69 Stat. 707 (1955)). When the last claim had been processed in 1957, 1,394 awards, totaling nearly $17,000,000, had been made.
link to en.wikipedia.org
it appears that in the last 50 years the courts have substantially lowered the expectations that the public are legally allowed to expect from governmental agents.
Can you give specific case citations for the examples you provided, where the courts have held that those particular people acted reasonably in those particular situations? That would be (1) the police officer who tased the 86-year-old woman, (2) “virtually all of the members of MMS” regarding the BP spill, (3) the president who lied to the grand jury, and (4) the patent examiner in McKesson. So four cases, I guess.
I’m particularly interested in (3) and (4), since I’m not really sure how a reasonable person standard would even apply, and I’m curious to read the courts’ decisions.
This is a big can of worms, however, it appears that in the last 50 years the courts have substantially lowered the expectations that the public are legally allowed to expect from governmental agents. There are countless examples of this in various situations throughout our republic. For example a police officer tazing an 86 year old woman who is on an oxygen bottle is clearly considered reasonable for a police officer. However, a reasonable person would clearly have been found to have acted unreasonably and could be held liable for damages. Virtually all of the members of MMS were found to have acted reasonably in its oversight of BP and their actions or inactions thereof, has destroyed the lives of millions of Americans- not enough bureacrats have been punished for their handling of BP. It is reasonable for the President of the United States to lie to a Grand Jury, but not for a reasonable person. In the McKesson case it was considered reasonable for a patent examiner to overlook material information in a case that he was currently working on so as to preclude citing the same in a second case, but for a reasonable person, a patent prosecutor he cannot. It just seems to me that what we face here is a microcosm of a much greater problem. Government actors are allowed to carry-out their functions with impunity despite the most egregious harm caused by their actions or inactions, but everyone else must act with heightened awareness. I wonder if the colonists had to deal with this under King George?
This is not funny.
All the more reason to properly understand it, since we’re all in the same business.
If this really is a new judicially-created obligation, as you claim, it is cause for concern. If it’s a simple matter of the attorney being aware of a problem that attorneys usually fix, but not fixing it on the PTO record and not telling the examiner there’s a problem, it starts to sound more like garden variety malpractice.
IANAE, what appears to be a private resolution in the case at bar has turned into a holding of IC that has resulted in the PO being ordered to pay millions in attorneys fees and the firm representing the PO being sued for malpractice.
This is not funny.
But historically, once two interfering applications are commonly held, the owner determines who is first to invent and simply files his determination with the PTO so that it is on the record.
But historically, if this determination is not filed with the PTO, and it turns out the owner has two applications pending with identical disclosures but naming different inventors, and the examiner for one of those two applications becomes aware of this set of facts, should the examiner consider this to be an impediment to allowing the application?
In other words, is this about “failure to … potentially allow the examiner to make the determination”, or is it really about failure to either fix the problem or bring the problem to the examiner’s attention so he could require that the applicant fix it prior to allowing the case?
Jason, not to be a pest, but what appears to be a major new requirement for disclosure has been largely overlooked. The court held that when the are two inventive entities under an obligation of assignment to the same entity, each claiming the same invention, the conflict in inventor claims must be disclosed to the PTO for the examiner to somehow resolve who is first to invent outside an interference context.
Just how the examiner is supposed to do this is not explained. But historically, once two interfering applications are commonly held, the owner determines who is first to invent and simply files his determination with the PTO so that it is on the record. The private investigation is apparently what happened here, but the failure to notify the examiner of the rival claims and potentially allow the examiner to make the determination on who was first was held to be material. Indeed, the private decision to go with the inventive entity who filed years before the other inventive entity was itself cited as a factor indicating intent to deceive when every attorney worth his salt would ordinarily do the same thing as was done is this case — determine the earliest inventors by years were the first inventors.
Conflicts of inventors happen all the time inside companies. Typically, the inside patent attorneys conduct an investigation to determine who was first and then file a application naming the “first” inventors. This case would seem to suggest that this private resolution of such a conflict without disclosing anything to the PTO is going to lead to a charge of IC.
Ever since In re Bass and In re Clemens, we have repeatedly amended statutes to take priority of invention away from the purview of examiners. We have repeatedly attempted to leave the issue of priority to the owner. All that is of interest to the public under the statutory regime is that the owner not receive two patents on the same invention.
But now that long legislative effort has suddenly and unexpectedly been resurfaced in the oddest manner by requiring the disclosure of private inventor conflicts to the PTO under penalty of a holding of inequitable conduct.
I agree with you totally that a reasonable person should be applied . . . not a reasonable examiner standard.
Is there a difference between a reasonable examiner and a reasonable person who is examining a patent application? Would you disclose different art in an IDS to a non-examiner?
Or is this simply an echo of the prevailing sentiment around here that “reasonable examiner” is a contradiction in terms?
IANAE it speaks volumes your silence concering the ever changing policies of the USPTO many of which have been found unconstitutional and its effect on fixing a reasonable examiner standard.
Okay, I’ll bite. Which of those policies do you think have any effect on what art a reasonable examiner would want to see while he examines an application? You don’t have to limit yourself to the unconstitutional ones.
I’ll let you know after I see your answer whether I’m willing to admit that “the USPTO adminstrations have made the entire Duty of Disclosure problematic”, but for the moment I admit nothing of the kind.
Ken Brooks I am not a woman and have never been one. Moreover, I have never been taught about the theory of being a woman. As a result, this standard that would be imposed upon me is one that the government has never apprised me of, i.e., it is impossible for me to understand the law to which I must conform my behaviour.
You should put that on a big sign at the door to your office, Ken.
Don’t you mean that (E)quity can never trump the (C)onstitution?
IANAE it speaks volumes your silence concering the ever changing policies of the USPTO many of which have been found unconstitutional and its effect on fixing a reasonable examiner standard. I interpret this as a tacit admission on your part that the USPTO adminstrations have made the entire Duty of Disclosure problematic. What is also telling is the fact that the courts fail to address 37 CFR 1.105. I mean the examiners have an opportunity to request information. However, that rarely happens. So what we have here are the courts trying to make patent prosecutors the insurance policy against government lack of diligence or, at worst malfeasance. This operates as a violation of the 13th Amendment for patent prosectuors and a taking for the applicant pursuant the 5th Amendment if an examiner does not find a reference with reasonable diligence that is easily accessible to the public and the patent prosecutor knew about it and a court detracts from the enforcement of a patent based upon that reference that the prosectuor did not bring to the attention of the examiner. Equity can NEVER trump the constitution.
Nobody asked but is exactly correct. That is an example of what I mean by the lack of command of the English language raising Constitutional Issues.
IANAE I am happy that you see things my way. I agree with you totally that a reasonable person should be applied . . . not a reasonable examiner standard.
When attacking the Examiner’s command of the English language, one could say that an Examiner’s allowances are just as suspect as their rejections…
IANAE is a friggin genius!
Who else can turn a discussion about a ‘reasonable” anything standard into a discussion of a construct called PHOSITA? That same person called PHOSITA who is at the same time “ordinary”, yet have nigh omniscient power to know not only “all” of a particular art, but also any other art that offers “the same problem”.
Against such a “reasonable” standard, the discussion becomes mallable to any desired twist and turn.
There is no one that can stop IANAE!
It is no enough for a person to have some idea of where the limits are in order for the government to hold them liable for thier actions. The limits must be clear.
Reasonable person tests have been perfectly adequate in many areas of the law, and sometimes they’re as definite as you can make a test without completely destroying its effectiveness.
Section 103 is no more definite, even with all the caselaw at the highest level that purports to establish tests for obviousness. You still have to look at the knowledge and experience of a fictional person, and determine what that fictional person would have done with a particular set of information. The test can’t be any more specific because the facts to which it applies are so varied, and each set of circumstances is unique by construction. At the same time, we can’t abolish the test because a patent system without any notion of obviousness would be worse.
The good news about the duty of disclosure is that you don’t even have to know exactly where the boundary is. It’s enough to know which situations clearly cross the line in either direction, and in the unclear cases the rule is still clear – disclose the reference.
Nonetheless, I interact with several doctors a day. Am I to be charged with the knowledge of a reasonable doctor standard? I also interact with a bank teller, am I to be charged with a reasonable bank teller standard?
If you interact with several doctors a day in your capacity as a patient, you should probably have a reasonably good idea of what information your doctor might want to know during the course of a checkup, and you shouldn’t complain later on if you get a bad diagnosis or treatment because you withheld a material fact. You might not know exactly what constitutes a reasonable doctor standard of performance or competence, but that’s not the question here.
Same goes for your teller. You probably know what information your teller needs to process your transaction.
WIth many examiners of late I have found it impossible to communicate with, because they do not have command of the Enlish language.
I have also had that problem. It’s truly unfortunate. A good command of the English language is an essential professional skill for any US examiner, but I don’t think its presence or absence should have any effect on what art that examiner would like to see.
IANAE:
It is clear that you are either a layman or an attorney who is very inexperienced with the law. This comment “you have at least some idea of where the limits are.” make clear that you want to hold people to a test that is unconstitutionally vague. It is no enough for a person to have some idea of where the limits are in order for the government to hold them liable for thier actions. The limits must be clear.
With respect to interacting with Examiners all the time, as placing one on notice of what is expected. I return to the McKesson case. I, in my wildest dreams would have never believed that an exmainer would not take a cursory perusal of their PALM system to see if there are cases related to one under examination.
Nonetheless, I interact with several doctors a day. Am I to be charged with the knowledge of a reasonable doctor standard? I also interact with a bank teller, am I to be charged with a reasonable bank teller standard?
Returning to Examiners’, however, there are other impediments being placed on notice of a reasonable examiner standard. WIth many examiners of late I have found it impossible to communicate with, because they do not have command of the Enlish language. Despite my best efforts I simply cannot break the communication barrier. This poses several Constitutional issues. Then there is the fact that during the Bush administration the experienced Examiners left en masse back between 2004 and 2005. Now we have a whole new generation of examiners. We are also subject to changing policies of the USPTO, some of which were identified as unconstitutional as set forth in Glaxo Smithkline. I would go further and state that an unconstitutional policy is an unreasonable policy by any standard. Therefore, given the communication barrier and the recent past actions olicies of the administration of the USPTO coupled with “scattered” case law on inequitable conduct it is impossible to determine the meaning of “reasonable examiner” sufficiently to establish a constitutional sound test for purposes of the Duty of Disclosure.
“you have at least some idea of where the limits are.”
Actually, you still have no idea where the limits are. All you know is something within the limits. That don’t tell you how far or how close you be to the limtis.
Besides, I’m still trying to understand the “reasonable woman” part (is that statement “near” a limit? How near?).
I am not a woman and have never been one. Moreover, I have never been taught about the theory of being a woman. As a result, this standard that would be imposed upon me is one that the government has never apprised me of, i.e., it is impossible for me to understand the law to which I must conform my behaviour.
I find it somewhat disingenuous to say that you can’t possibly know what would reasonably offend a woman because the government hasn’t apprised you of a bright-line test for that. If you could offend a woman when called upon to do so, and most people could, you have at least some idea of where the limits are. You interact with women all the time, and at any given moment roughly 3/4 of them are reasonable. (You see? That remark was somewhere near the boundary.)
We interact with examiners all the time, too. For all I say about how agents don’t understand examiners, we generally know what art they’d like to see, and we generally know what art we’d rather they not see, and that’s a pretty good starting point for what a reasonable examiner would consider material.
You don’t need to be “placed on notice” as to a specific test to know how to conduct yourself in a generally professional manner. Most cases finding inequitable conduct seem to be particularly egregious cases where no sane agent would even begin to think the conduct was reasonable. In this case, the reference was about as material as could be, the reason given by the attorney was obviously a flimsy rationalization, and furthermore there wasn’t even a good reason to withhold the reference when any issues could have easily been resolved in-house or in prosecution.
Our entire society depends on us acting reasonably, pretty much all the time. We have a pretty good idea of what that means, even though the vast majority of us have never seen any legislation or read any caselaw. When you see somebody who doesn’t know what acting reasonably means, you tend to think he should be locked up. We are more than capable of discerning reasonable from unreasonable, especially in patent prosecution where we know which way to tend in doubtful cases.
Good Speech, there Ken. Bravo.
Sexual harrassment and inequitable conduct/the problem with the reaonsable woman standard is present with the reasonable examiner standard. Years ago in the area of sexual harassment law there was a lively discussion with respect to imposing upon all parties involved in relations between the sexes the test of reasonable woman. It was believed that this would be a better test because it recognizes a difference between men and women regarding the effect of unwanted interaction with a sexual tone. The issues I have with this test are one of due process. I am not a woman and have never been one. Moreover, I have never been taught about the theory of being a woman. As a result, this standard that would be imposed upon me is one that the government has never apprised me of, i.e., it is impossible for me to understand the law to which I must conform my behaviour. I have always believed this and I understand that this is a sound theory. It is identical to a law being void for vagueness, because the person to which the law applies can never truly know what is expected of them.
We have the same issues here. The Federal Circuit has imposed upon us a test which the government has completely failed to train us to understand. A very small percentage of the bar has been to the examiner’s academy. Therefore, most of us have no formal training in this area. Moreover, there are no clear indications of how a reasonable examiner differs from a reasonable person. Therefore, the test of reasonable examiner imposed by the Federal Circuit is unconstitutional, because it fails the due process notice requirement that must be satisfied for any law to apply to an American Citizen. Even by the Federal Circuits own admission it states that the law is scattered. If I am correct in my belief, it was not until 2 years ago that the Federal Circuit actually stated what test is to apply to the Duty of Disclosure. So here we have a test that is recently thrust upon the patent bar and for which we have never been provided an opportunity by the federal government to be placed on notice as to what a reasonable examiner is. This test, just like the reasonable woman standard in that it is inimical to due process notice requirements of our American justice system. The only test that may be applied and comport with the due process requirements of our Constitutional Republic is a reasonable person standard. This is what is happening in the instant case. The attorney merely said that he didn’t think the reference was material. Most of the patent attorneys try to act reasonably with the USPTO. However, the Federal Circuit has made clear that a reasonable person is not enough. In fact, as happened in McKesson, if a practitioner acts as a reasonable person that can amount to fraud upon the Federal Government. What the Federal Circuit has made clear is that you must act in accordance with the knowledge and experience that a specially trained agent of the Federal Government or otherwise be held to have committed equitable fraud. It matters not that we are never provided an opportunity to train at the examiner’s academy or that they do not provide a detailed course as to the inner operations of the USPTO. This probably fails the due process requirements of our Constitutional Republic and it certainly is not equitable. So I leave with the question is it not just as likely that the patent prosecutor who is being defrauded?
Well, if the two specs share common subject matter, they are related.
Now I ask you, nobody, if you are aware of two inventive entities within the same company, each claiming to be inventors of the same invention, after this case, would you file two applications naming the two different inventive entities with two different oaths and throw your applications into an interference (not possible with common ownership btw) so that the patent office and not you decide the issue of inventorship?
You would say, and rightly so, that I was a l u n- atic. But that is effectively what the Feds held here.
The “positive” obligation to disclose DOES NOT and NEVER DID EXIST under the statutes and Supreme Court authority.
The obligation under Supreme Court authority and Section 115 is not to file claims one KNOWS or SHOULD KNOW (objective standard) to be unpatentable over the art.
The obligation of “CANDOR” relates to statements and their accuracy. Contrast the crap litigators say all the time that are borderline false or knowingly false.
Looking for some practical advice here, what should someone do in terms of trying to determine what to cite for related cases.
US office actions?
Foreign office actions?
All cited prior art?
All “material” art known by the inventors and patent attorney(s) who prosecute the related applications.
The answer may be yes to all of the above. So, the next question is what is a related case? Is it determined by the claims, the specification, the co-inventors.
How could one practically insulate themselves against an IC charge if they are responsible for a large patent portfilio in a particular art area with many similar inventions (different inventors/same inventors, whatever).
But when NON DISCLOSURE is the issue,
Non-disclosure in the face of a positive obligation to disclose. Let’s not forget that.
If you don’t give food to a hobo and he dies of starvation, not your problem. If you don’t feed your son and he dies of starvation, you’d best get yourself a good lawyer, because you failed to perform your legal obligation. That puts your failure to act right up there with actually doing a bad thing.
IANAE, “no harm, no foul.” I don’t believe I have gone that far across the board. But when NON DISCLOSURE is the issue, that is my position.
Jason, a couple of responses:
1. To take your counterexample on its terms, if you have an “experienced shooter” claiming that he shot because he thought the gun was unloaded–presumably to scare the victim–then we have two competing possibilities: (a) the shooter is telling the truth and there is no mens rea; or (b) the shooter is lying, knew the gun was loaded, and really intended to kill. Whether any reasonable jury can believe (a) over (b) surely depends on the level of experience as well as many other facts. If no experienced shooter anywhere in a million years would ever fire a gun as a hoax even if he did believe it was unloaded, then that casts pretty strong doubt on the veracity of story (a); and leads to the conclusion that (b) is the only inference open to a jury. In that sense, I don’t see anything wrong with Prost’s theory that no experienced prosecutor could really believe what this prosecutor claimed to have believed. Perhaps we are just reading Prost very differently on what she is saying.
2. As for whether recklessness establishes intent under current law, I would not be nearly so absolute. See, e.g., In re Bose Corp.
580 F.3d 1240, 1246 n.2 (Fed. Cir. 2009). The law is pretty clear that recklessness suffices to establish intent for a Walker Process antitrust violation, and IC is usually considered a lesser offense. Cf. Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1069 (Fed. Cir. 1998). On a deeper theoretical level, recklessness is usually held to suffice for intent at least partly based on the same underlying rationale as I read Prost espousing: if it is plainly unreasonable for a person to believe what they say they believed, they probably didn’t really believe it.
I can see real reasons that the prosecuting attorney would not realize that he had any duty whatsoever to disclose anything about the Germain patent application.
Ned, if you don’t mind my saying so, you have a remarkably keen eye for such reasons.
I continue to be irked by your “no harm, no foul” attitude toward inequitable conduct.
Paul, the more I look into it, the more I think the issues are fact specific to this case, not to ignorance of the law or the MPEP. I can see real reasons that the prosecuting attorney would not realize that he had any duty whatsoever to disclose anything about the Germain patent application. I think the whole panel is flatly wrong on the materiality issues involving the Germain application.
I ask you as a veteran practitioner yourself, have you ever submitted an inventorship dispute internal to a company to the PTO after having resolved it internally? I would say never. To even suggest that there is a obligation that the PTO must decide this issue is bizarre.
However, I am all ears. If I am wrong in this, please let me know.
Was this an error in judgment, or was it a legal error, a misunderstanding of the law of “double patenting” and what must be disclosed to the PTO, that a competent practitioner is legally obligated to know about?
Unfortunately, if it was legal ignorance, that is not going to be an excuse, and a client is stuck with whatever their attorney does for them as their agent.
[The fact that the PTO has never managed to get its proposed MCLE program off the ground is not helping.]
The court’s summary of the facts neatly ignores certain critical facts on double patenting. The ‘766 patent application was filed with a petition to make special which was accepted. The same attorney was in charge of both applications and knew that the ‘766 would issue first. Further, he had complete control over when the Germain patent application would issue. In other words, he knew that the there would be no double patenting.
My God, but the Feds have really gone off the cliff towards extremism if the patent bar is to be held to account for IC under circumstances such as these.
Instead, the correct rule to me seems to be that it should not turn on whether the explanation is “right” or “wrong,” but rather whether, after viewing all the evidence, the factfinder concludes that it simply implausible that the person of IC really thought as he claimed.
I think that actually is what Prost was going for. The explanation is implausible because it boils down to “this reference is not material because it’s not this one kind of material reference”, coming from an attorney who was clearly aware of another, more fitting, kind of material reference.
That’s like saying “I didn’t think it was prior art because it’s not 102(a) art”, when it was more likely to be 102(b) art anyway, and you knew that 102(b) existed. It’s simply not plausible that you sincerely believed that at the time. It is, however, plausible that you were trying to rationalize non-disclosure.
Lots of fascinating comments. I can’t possibly respond to them all, but here are a few thoughts:
-The notion of curing IC is one that is particularly appealing to large patentees with chains of continuations. However, it seems to be another reason to engage in serial continuations – and that’s not necessarily a good thing. In any event, various judges have commented on this concept in other cases, and I suspect we’ll see more on it.
-TJ points out that a finding of willful infringement opens up the accused infringer to the same regieme as a finding of inequitable conduct. I disagree – the effects of inequitable conduct and willful infringement are potentially vastly different in scale, and cannot be directly compared. In addition, inequitable conduct has a collateral effect on individuals, while a finding of willful infringement rarely, if ever, does.
-To clarify my comment: the problem to me is that, under Judge Prost’s reasoning, if the rule is that if there is a presumption of intent if the Judge/panel concludes that the person who is accused of IC’s explanation is “wrong,” there is no way to rebut it. It effectively becomes an automatic finding of IC (which would result in intent being found as a matter of law/SJ being granted). Instead, the correct rule to me seems to be that it should not turn on whether the explanation is “right” or “wrong,” but rather whether, after viewing all the evidence, the factfinder concludes that it simply implausible that the person of IC really thought as he claimed.
In Leviton, the question is whether the person accused of IC really only thought about the Germain application in terms of prior art, or whether he really thought of it in inventorship/terminal disclaimer terms and was so worried about it that he hid it from the examiner. To me, that’s a question that should not be answered on summary judgment, unless the explanation is so outlandish that it defies rationality (which is where I see TJ’s “bloody knife” hypothetical as falling – the counterhypothetical would be the shooter who pulls the trigger on a gun that she erroneously believed was unloaded. Everyone knows that you should always treat guns as loaded, even if you think they’re not, but does that mean that a shooter whose explanation was that she believed the gun was unloaded should be found to possess a mens rea of purpose or knowledge?)
-Before you cry out “well it’s still reckless!,” I would note that we should be careful about importing the concept of “recklessness” into inequitable conduct without some serious thought about its ramifications. First of all, it’s not currently the law. Second, one of the reasons why recklessness is necessary in the willfulness context is because we’re dealing with corporations, not individuals, and establishing “knowing infringement” or “purposeful infringement” is very hard when you’re dealing with corporations. In the inequitable conduct context, however, the actors are individuals, and we can conceptualize what the two higher categories mean. That said, the notion of using recklessness in inequitable conduct is certainly on the table for the court (I even recall a recent article arguing for its adoption) – but it’s not something that should be done lightly.
Overall, intent is really a interesting question. There’s so much wrapped up in this concept, and digging down through the layers takes far more then one case.
IANAE, rejection?
Even if the examiner had the information about Germain in the ‘766 case, what could he have done with it given the fresh oath filed by the applicants in ‘766 and the large difference in filing dates?
Nothing, AFAIK.
Unless someone here educates me just a bit on what the examiner could have done to resolve the inventorship issue under these circumstances, I will just have to say that the Feds are way out there on the materiality of the inventorship issue.
The Germaine patent was germane?
an issue that had to be resolved by the examiner. Why?
I don’t think they mean the examiner was necessarily the one who had to decide the issue of inventorship. I think they mean that there’s an apparent question of inventorship on the face of the applications, and the examiner would have been expected to raise the issue in a rejection since the attorneys clearly had not “act[ed] accordingly”.
Just checked, a new oath was filed — twice.
1) On double patenting: the ‘766 patent was disclosed in the Germain application. The primary reason it was not disclosed in the ‘766 application was that the attorneys knew it would issue first.
2) The issue of inventorship was declared to be material by the majority — an issue that had to be resolved by the examiner. Why? Why can’t the attorneys for the common assignee determine who invented first and act accordingly without ever informing the PTO, so long as there is no double patenting? These are two applications owned by the same entity.
Conflicts in inventorship happen all the time in coorporations. They are routinely handled in house. But this case seems to suggest that the whole issue must be disclose to the PTO for the examiner’s decision. To that I say, OMFG!
Am I completely wrong here? On these two issues, can there be NO reasonable explanation for why the Germain application was not disclosed in the ‘766 patent application?
Lionel, it is true that you can always argue that an experienced attorney should have known, and then further that his denial is so implausible that he must have actually known. But whether that argument is convincing will depend on the facts of an individual case.
Agreed. In this case, the attorney’s reasoning is roughly as plausible as if he had failed to disclose “highly material” third-party prior art on the basis that “it doesn’t raise a double-patenting issue, so it didn’t seem like I had to”.
The good news is that the issue still has to be heard on the merits, where I presume Prost’s reasoning will ultimately win the day.
Shame about the attorney fees, though.