“They Chose Advocacy over Candor”

GS CleanTech Corp. and Cantor Colburn LLP v. Adkins Energy LLC (Fed. Cir. 2020) [Fed Cir Decision][DCT Decision]

The district court ruled against the patentee CleanTech — holding the four asserted patents unenforceable due to inequitable conduct during prosecution.  On appeal, the Federal Circuit has affirmed — particularly calling out the Cantor Colburn firm for its role.

The basic issue here is that the bio-oil recovery invention (embodied by at least some of the claims) had been the subject of a pre-filing commercial offer for sale after the invention was ready for patenting.  The pre-filing activity was not disclosed to the PTO in what the district court called a “complete lack of regard for their duty to the PTO.”

As the district court explained things: The inventors made a mistake by offering to sell the invention at that early date but compounded the mistake by taking “affirmative steps to hide that fact from their lawyers, then, later the PTO when they learned that it would prevent them from profiting.”  The district court also found that Cantor Colburn had acted inappropriately — either by purposeful evasion or by failing to seek out relevant information. They “chose advocacy over candor.”

Following Therasense, it is tough to prove inequitable conduct.

The accused infringer must prove by clear and convincing evidence that the patentee: (1) “knew of the reference” or prior commercial sale; (2) “knew that it was material”; and (3) “made a deliberate decision to withhold it.”

See Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc).

On appeal here though the Federal Circuit seemed to find this a straightforward case:

The District Court did not abuse its discretion in determining for numerous reasons that CleanTech deliberately withheld material information.

First, the District Court concluded that CleanTech knew the July 2003 Proposal to Agri-Energy threatened its chances of patenting its ethanol oil recovery method. This determination is supported by the
record. . . .

Second, the District Court found that the Inventors and the attorneys at Cantor Colburn withheld evidence of successful testing in 2003 and made false representations by implying that the invention was not reduced to practice until 2004. This finding is supported by the record. . . .

Third, the District Court determined that CleanTech and Cantor Colburn “threatened” Agri-Energy to coerce its support regarding the critical date for the Patents-in-Suit, after the July 2003 Proposal surfaced and during the pendency of the ’516 and ’517 patents. . . . District Court did not abuse its discretion in concluding that these attempts to threaten Agri-Energy spoke to CleanTech’s and Cantor Colburn’s intent to deceive the USPTO.

Fourth, the District Court concluded that the Inventors and Cantor Colburn made a “patently false” statement in the First Cantrell Declaration, by claiming the July 2003 Proposal was delivered to Agri-Energy after the critical date. The District Court’s determination that the declaration was false is supported by the
evidence. . . . This was done notwithstanding the Inventors’ knowledge that Mr. Barlage had practiced the claimed method in June 2003 and they had offered to sell the claimed invention to Agri-Energy in July or early August of 2003. See Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556 (Fed. Cir. 1983) (“[T]here is no room to argue that submission of false affidavits is not material.”). . . . The District Court did not abuse its discretion in concluding that the “patently false” statement in the First Cantrell Declaration was material and supported its intent to deceive determination.

Fifth, the District Court explained that the Inventors’ and Cantor Colburn’s failure to correct the false declaration in the ’484 patent prosecution was “strong evidence of intentional deceit[.]”  . . . Based on this evidence, we conclude that the District Court did not abuse its discretion in concluding that, by clear and convincing evidence, the single most reasonable inference to be drawn from the record was that the Inventors and Cantor Colburn intended to deceive the


19 thoughts on ““They Chose Advocacy over Candor”

  1. 10

    “Advocacy over Candor”

    . . . also brings to mind the “Lobster or cracked crab?” question from the “famous” movie Trading Places:


    Advocacy or candor?

    Can’t we have both?

    Ahhhh . . . the good ol’ pre-eBay, pre-Mayo, pre-Alice Constitutional days . . .

  2. 9

    Interestingly, the PTO recently allowed US2015/0191675 before the Appellate decision came out that claims priority to the litigated patents. The allowed method claims are just as broad as the litigated patents and the issue of the on sale bar was discussed head on during prosecution. The PTO agreed with Greenshift’s arguments relying on Plumtree that the on-sale bar was not applicable because the Offer Letter was not material to patentability because it was an experimental offer to supply a device for testing. Should be interesting to see how this plays out.

    1. 9.1

      If examiner-allowed rather than PTAB-allowed, or Solicitor approved, what weight does an ex parte non-lawyer examiner allowance decision have on a complex legal issue of the “on sale” bar in which the only facts presented are those presented by applicants, with no cross-examination or rebuttal, and before this Fed. Cir. decision?

  3. 8

    It is kind of amazing that anyone gets found to have committed inequitable conduct after Therasense. The Federal Circuit’s mens rea requirement is actually more stringent than the culpability required for second degree murder in most states. It’s basically the mental state you need to impose the death penalty. The fact that patent attorneys at firms like Cantor are ever found to have committed inequitable conduct, under Therasense, is really, really, bad.

    1. 7.1

      The PTO OED checks court reports on PTO IC, so there is a likelihood of an OED investigation.

      1. 7.1.1

        Thanks Paul.

        And perhaps the possibility that Cantor will be on the joint and several liability hook for atty fees + costs should the Dist. Ct. order such?


          You raise an interesting question, which I find puzzling. That is, who should or will actually pay for opponent attorney fees or other major sanctions awards in various different patent case sanctions situations? Clients, attorneys, both, or either one? Who gets to decide that and on what legal guidance?
          Of course, besides sanctions, in some other cases there might be a potential recovery from an insurance company for practice claims.

  4. 6

    One thing is for sure: the most totally unfair thing ever would be for the PTO to scrutinize other patents owned by this same company. Surely this bit of “overzealousness” was a unique event because conduct of this sort basically never happens and even if it did it tarnishes the profession for another patent attorney to be a big meanie and suggest such things.

  5. 5

    But … it’s impossible to know what someone was thinking!

    Or at least we’ve been told that here over and over again by “attorneys” trying to defend claims that recite steps of correlating one fact with another. And those “attorneys” could not possibly be trying to deceive or confuse anybody. They are very serious people (although according to their own logic other humans could never, ever possibly determine if they believed their own b.s. without a mind-reading machine).

    1. 3.1

      You weren’t there, you have no idea, but by all means, be judgmental. Especially since the panel totally f—-d up the inequitable conduct part of this decision.

      Sounds to me like the attorney at CC who prosecuted the case acted completely reasonably, and now, years and years after the fact, the judges are telling him he should have done something that’s impossible to do in patent prosecution situations, viz. conduct a full-blown discovery process on his own clients. And they’re imputing conduct of other attorneys at CC – litigation counsel, who only got involved AFTER the patents involved had issued – to the prosecuting attorney’s conduct. Their decision defies logic and common sense, as well as any sense of decency.

  6. 2

    I counted 12 defendants from 12 combined suits here, so presumably big bucks were at stake. A lesson here [besides false declaration consequences] is that trying to argue against an actual reduction to practice in the context of trying to avoid the “ready to patent” “on sale bar” for a delayed application filing is not easy.

    1. 2.1

      People tend to forget how much the Sup. Ct. changed the “on sale” bar in Pfaff v. Wells Elecs. (1998).


          Anon, the Sup. Ct. effectively overruled some prior confusing Fed. Cir. cases on this subject. I remember an AIPLA meeting in which the winning attorney noted that the decision was a surprise to both parties and did not adopt the arguments of either party!

  7. 1

    Seems to me that there was a recent discussion point regarding candor and advocacy (that was left by a certain person in a big hurry)…

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