By Jason Rantanen
Although the court ultimately reversed the determination of inequitable conduct based on a lack of intent, its discussion of materiality is significant because the misrepresentation at issue occurred in the patent itself, in the form of statements about a prior art reference. Prosecutors may want to take special note of this opinion in crafting their Background of the Invention sections.
Ring Plus, Inc. v. Cingular Wireless Corp. (Fed. Cir., August 6, 2010)
Panel: Lourie, Gajarsa and Moore (author)
Ring Plus is the assignee of Patent No. 7,006,608 (the '608 patent), which relates to a software based algorithm and method for generating and delivering messages over a phone line that replace or overlay a ring-back signal.
After granting summary judgment of noninfringement, the district court held a bench trial on the unenforceability of the '608 patent. Following the bench trial, the district court concluded that the '608 patent was unenforceable due to inequitable conduct. Ring Plus appealed both determinations, along with the denial of its motion to disqualify Cingular's counsel.
Inequitable conduct: Materiality but no Intent
The district court's inequitable conduct determination was based on two alleged misrepresentations concerning the substance of two prior art references, Strietzel and Sleevi. The district court found that the first misrepresentation was in the Background of the Invention section of the '608 patent, which asserted that both references proposed hardware based systems but no software to operate those systems. Contrary to this assertion, the district court found, one of skill in the art would have understood the references to disclose software-based algorithms.1
The panel agreed that this was a material misrepresentation. Although neither reference explicitly disclosed software, the panel could not say that the district court clearly erred in finding that a person of ordinary skill in the art would have understood the references to disclose software-based algorithms.
In arriving at the conclusion that the statement about the contents of the prior art constituted a misrepresentation, the panel rejected the contention that it was merely attorney argument. The court did not address this issue in any depth, merely stating that because the statement was a misrepresentation, it "was outside the boundas of permissible attorney argument." Slip Op. at 9.
Comment: I am a troubled by the court's cursory statement on this point because of the ambiguity it creates. These types of sweeping assertions, made without addressing the substance of the argument or citing relevant authorities, are the kinds of things that are likely to tie attorneys and judges in knots. Indeed, the court's quotation from Rothman is particularly perplexing, as Rothman reached the opposite conclusion on similar facts. At a minimum, one would expect the court to explain why Rothman does not apply.
Ultimately, however, the panel concluded that Cingular had failed to present clear and convincing evidence of intent to deceive. In arriving at this conclusion the court noted that the references were ambiguous as to operating software, and the prosecuting attorney's testimony gave rise to the inference that the applicants believed that the two references did not disclose software for operating a telephone system. Because this inference was as reasonable as the district court's inference of deceptive intent, the district erred in its finding of deceptive intent.
Other holdings
The panel also addressed Ring Plus's challenge to the district court's construction of two claim terms, which formed the basis of the noninfringement ruling. The court affirmed the district court's construction, relating to the sequence of steps in the '608 patent. In addition, the court rejected Ring Plus's argument that Cingular's counsel should have been disqualified for ex parte contact with a Ring Plus director and officer. The court concluded that there was no evidence of impropriety under Fifth Circuit law.
1The district court also found that the applicants made a misrepresentation about these references during prosecution; the panel concluded that this statement was not a misrepresentation.