Inequitable Conduct at the Federal Circuit

I was thinking some today about the pending Federal Circuit inequitable conduct case in Conversant Wireless Licensing v. Apple Inc., Docket No. 19-02039 (Fed. Cir. 2019).  That case involves acts by the prior owner of Coversant’s patent — Nokia.  During standard setting discussions for an old GPRS communication standard, Nokia apparently delayed disclosure of its related patents for several years.  Although the patents were eventually disclosed, the district court found that the Nokia’s actions were problematic enough to hold the patent unenforceable.

I have not written as much about inequitable conduct since the Federal Circuit swept the issue away in, Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).  Perhaps parties are now too busy with IPR proceedings.

Chart below shows the number of Federal Circuit decisions using the term “inequitable conduct” each year.

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My prior chart in 2009 showed a totally different trend (also less precise markers).

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Inequitable Conduct: Trends at the Federal Circuit

33 thoughts on “Inequitable Conduct at the Federal Circuit

  1. 7

    I was accused of inequitable conduct by the attorneys at Cooper Dunham and Boies Schiller. They alleged the IPR they filed against a parent patent was material to patentability of the pending child patent. Demanded that I withdraw the child patent from issuance and file an IDS with their petition and the declaration they purchased from an MIT professor. I was fortunate to survive to a final judgment and make their client pay most of my attorney fees for dealing with their vexatious motions. I think most of the time attorneys are not held accountable for frivolous motions because it gets washed out in settlement.

  2. 5

    If one sued on a patent these days does discover material prior art that was undisclosed in the application, is not an IPR based on that prior art faster. cheaper and far more likely to succeed than an attempted inequitable conduct defense? With no need to show intentional withholding. [Of course if that prior art is prior commercial products it cannot be used per se in an IPR.]

    1. 5.1

      This is a good point, and a much more plausible explanation of the post-2010 drop-off than my own (deliberately insincere) #1 below.

    2. 5.2

      It’s also true, I’m sure (having been here in real time for many discussions regarding Dayco and other info disclosure cases), that the so-called “plague” and commentary regarding same had the real effect of waking up some of the hack prosecutors to develop better IDS practices.

      History lesson: the “do it on a computer” land grab led to an influx of speculators whose understanding of the … nuances (let’s say) of patent prosecution could fit in a thimble. Ordinary activities like PCT and provisional filings were alien concepts to these people, not to mention basic claim drafting mechanics and how to avoid drafting an obvious rejection in your own background section.

      Anybody who was at a firm with both chem/bio and a (LOL) “tech” practice at the time can testify as to the different universes that existed. Also … still true to a large extent.

      1. 5.2.1

        translation: anyone NOT entirely in Malcolm’s camp must be in that other “one bucket.”

        1. 5.2.1.1

          No idea what you’re talking about.

          It’s definitely true that attorneys with Ph.D.’s in chem/bio are rather different both from people who have neither of those things and from lawyers with bachelor degrees or degrees in writing instructions for computers.

          [shrugs]

          1. 5.2.1.1.1

            No idea what you are talking about

            Thank you for making my point.

            1. 5.2.1.1.1.1

              My point is there a lot of different buckets for normal people who aren’t greedy @-h-0les or id-i-0-ts.

              For Repu-k-k-k-es and glibertarians? Not so much.

              1. 5.2.1.1.1.1.1

                Malcolm, you have shown no ability whatsoever to determine what a normal person is.

                This is all part of your Trump-like personality. It it your way or the “one-bucket.”

      2. 5.2.2

        MM does have a point here, that 40-50 years ago there were still some older patent attorneys insufficiently sensitive to either anti-trust issues in licensing or what became PTO Rule 56 known prior art disclosure duties, and both issues occur far less often nowadays.

        1. 5.2.2.1

          Paul,

          Please stop being an apologist. None of what you say here that approaches reason is what “Malcolm’s point” is about.

  3. 4

    The reality is –like much of litigation–that the inequitable conduct is just another affirmative defense that is raised. It just raises costs and litigators used to raise it in ever litigation for fear of malpractice (and other reasons).

    It is good that it is not there as an easy option now.

    The biggest problem (I try to repeat this often) with patent litigation is that it is much more expensive to defend than to assert a patent. I think just allowing bifurcation and fixes to invalidity contentions would help a lot. The IPR was put in place because of the fail of the federal courts and Congress to put in place a system that worked in litigation.

    1. 4.1

      The biggest problem (I try to repeat this often) with patent litigation is that it is much more expensive to defend than to assert a patent.

      Interesting. I happen to agree with you, but I am surprised to read that you “try to repeat this often.” I have never seen you make this point before.

      I think just allowing bifurcation and fixes to invalidity contentions would help a lot.

      Agreed.

      The IPR was put in place because of the fail of the federal courts and Congress to put in place a system that worked in litigation.

      And the IPR fix mostly seems to be working. In fact, it seems to be working so well that it should probably be expanded to handle other grounds of invalidity beyond anticipation and obviousness.

      1. 4.1.1

        I am not sure that I understand your basis of “working well.”

  4. 3

    Because the worst thing ever is for lawyers — patent lawyers especially — to accuse another lawyer of hiding the ball so their client can sue multiple industry players for millions of dollars in exchange for doing pretty much nothing except adding the words “do it on a computer” to some logical steps that most ten year olds have been aware of for the last fifty years. That was the unspoken “problem” the Federal Circuit was most concerned about. And who was most concerned? Why, that squeaky clean Judge Randy Rader, of course, who loved tossing around that term “plague” and then quickly pivoted to complaining about the plague of all those oh-so-unfair ineligible subject matter defenses (“it’s supposed to be RARE, regardless of how many ineligible claims are asserted DERP!”).

    Another friendly reminder: the patent at issue in Therasense was ultimately obliterated by Judge Alsup because the stench of inequitable conduct was so thick that you could cut it with a knife.

    Another friendly reminder: total obvious fraud and future prison inmate Elizabeth Holmes and her j-u-n-k company were enabled by know-nothing patent attorneys and, of course, lots of Re-pu-bli-k-k-k-an types (Betsy DeVos, Rupert Murdoch, etc).

    None of this course means that we won’t all be sleeping in our “self-driving cars” in 2030. We’ll all be doing that! Sure we will. Many patent attorneys agree and gosh knows they are a very intelligent group of “tech savvy” people.

    1. 3.1

      Because the worst thing ever is for lawyers — patent lawyers especially — to accuse another lawyer of hiding the ball so their client can sue multiple industry players for millions of dollars in exchange for doing pretty much nothing except adding the words “do it on a computer” to some logical steps that most ten year olds have been aware of for the last fifty years. That was the unspoken “problem” the Federal Circuit was most concerned about.

      Surely you remember the pre-Therasense days where inequitable conduct was a standard argument in most patent cases, no? “Your claims are anticipated, and obvious, and… oh yeah, we think so highly of our prior art that your patent prosecutors must have been lying when they didn’t submit it to the PTO.” Sometimes the defendants were onto something real, and shady or corner-cutting prosecution would get exposed. But more often–at least as it often struck me–the idea seemed to be that if you add some lawyer puffery to your 102/103 defense, you magically have a separate inequitable conduct defense. And not only that, but you can skip much of the hard work of proving your technical case and analyzing claims, because now you have a tale of lying that if believed kills the whole patent. Inequitable conduct was a good tool that was being abused, so the Federal Circuit mostly got rid of it. The majority’s reasoning in Therasense was unimpressive, but do you completely discount the concern behind it?

      1. 3.1.1

        If there was a genuine “concern” about frivolous inequitable conduct arguments, then it should have been addressed in the same manner that any other frivolous arguments should have been addressed: sanctions under Rule 11.

        But there again we return to this peculiarly warped “legal culture” of ours where the worst thing ever is not to flat-out l-i-e to the PTO or the court, or to purposefully omit some fact known by decent high school students for decades (e.g., “computers exist to carry out logic tasks on data, and they don’t care about the ‘meaning’ of that data”; “authorization is an abstraction”; “reciting a prior art context for an illegal claim does not cure the claim of illegality” etc.) but rather the worst thing ever is to point out that the other side is telling l-i-e-s or omitting these irrebuttable material facts.

        This absurd situation is the Federal Circuit’s creation, although the Federal Circuit is probably not unique in its excessive reluctance to sanction over-zealous attorneys. Again, there is the bigger picture to consider. We live in a country “ruled’ by a Constitution that was written about 250 years ago almost entirely by and for white slave-owning males who impressed each other with the size and shape of their wigs. One of the two major political parties in the country has painted itself into a corner where its survival depends on pleasing the most ignorant and h@-teful collection of total s-h–humanity that’s walked the earth since the N@-zis. When viewed in that (inarguably correct) light, the idea that judges appointed by that same party will tend to elevate form and process over substance and human decency can be rather easily understood.

        Just look at our Supreme Court and some of their most recent major politically relevant decisions if you have any doubts about any of this. The term “True Believer” applies to these rightwingers who believe they can “create their own reality”. For the rest of us, well, we just have our baseball bats and our guns. And the fact that there’s more of us than Rich Whitey and his army of r@-cist zombie thugs, and there always will be.

        [shrugs]

        1. 3.1.1.1

          Your feelings — including (apparently something that you are so 0bsessed about that you cannot distinguish from true inequitable conduct) are noted.

      2. 3.1.2

        The majority’s reasoning in Therasense was unimpressive…

        You think so? I thought that Therasense reached a convincing and appropriate conclusion. If anything, I am more disappointed with the way that the CAFC under Prost’s chief judgeship has retreated (somewhat) from the Therasense consensus (a consensus from which Prost herself dissented), rather than the reasoning of Therasense itself.

        1. 3.1.2.1

          It does not align (in a one-bucket manner) with Malcolm’s feelings as to the Ends achieved.

          THAT is the extent of Malcolm’s “reasoning.”

        2. 3.1.2.2

          Others may disagree (including presumably the Therasense majority), but the majority seemed to say that since inequitable conduct was a judge-made doctrine, the Federal Circuit could tinker with it however it wanted. And because of some policy concerns the court decided to “tighten” the intent and materiality standards.

          I thought the Bryson-Gajarsa-Dyk-Prost opinion was the best of the set of opinions in that case but, again, many others presumably disagree..

          I’m curious how you think the CAFC has retreated somewhat from Therasense.

  5. 2

    The appropriate and just thing to do would be to void all of Nokia’s patents and pending apps and then ban them from the US patent system for, say, five years.

    But I suppose some rich bro will pop up momentarily and grouse about “process” because following “the law” is soooooo important in the US these days.

    Unless you’re a Repu-k-k-ke, of course. Looking forward to the GOP script about how Mango Spraytan was an “aberration” when we all know the truth (he’s the logical culmination).

    1. 2.1

      …says the Trump of these boards (completely oblivious as to WHY he is the Trump of these boards).

      Stultifying.

      1. 2.1.1

        I remember when Bildo and his dim witted cohorts couldn’t tell the difference between the two parties. But that was three years ago. It’s so different now.

        LOL

        Poor Rich Whitey. How is he going to protect his loot? We all care so much about that. Or at least Bildo does. Rich Whitey must be given sooooo much of that special process that we all owe to Him.

        1. 2.1.1.1

          LOL – More misrepresentations from you with your own special set of “facts” (or alternate facts).

          You are more and more like that Trump character.

          and yet again with the “R” card…?

          1. 2.1.1.1.1

            The ‘r’ card is going to be rubbed under your nose and under the nose of every other glibertarian shertbag who props up Mango and his r-@-ci-st diseased party until the end of time, Bildo. Maybe get used to it already?

            Life is about choices. Make the right one and you’ll be off the hook. Otherwise, own it. Put on your big boy pants and own it.

            You do have the ability to choose differently, you know. Why, you could even make a choice that isn’t all about you. Can you imagine that? Probably not, which is why I thought I’d bring it up.

            1. 2.1.1.1.1.1

              You do realize just what is stultifying (and why you are the Trump of these boards), right?

              1. 2.1.1.1.1.1.1

                You are stultifying, Bildo. The essence of stultifying, one might say.

      2. 2.1.2

        Among the other zillion important differences between me and your Dear Leader is that, in addition to being an admitted assaulted of women and a high-paying john who likes to sp e w on makeup-caked pron stars while his wife is pregnant, Mango is also an incompetent id-jit. And all this was known a long long time ago. But Big Jeans and all his corpulent pasty bros still pulled the handle for Mango and they will do it again. Go figure. But they are very serious people! Lots of insights.

        LOL

  6. 1

    I think that the explanation for the decline is that attorneys all suddenly grew much more ethical starting around 2010, and therefore the issue has simply ceased to present in litigation anymore.

    Well, maybe not…

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