Tag Archives: Inequitable Conduct

How to Jump-Start your Business Method Cases: Part IV

Patent, Patent Prosecution

In part III, I introduced the concept of a petition to make special as one of the best ways to decrease pendency of your patent application.  The petition to make special allows the Patent Office to examine your application out of turn and on an expedited basis. 

Normally, during examination, the Patent Office is relied upon to perform a search and analysis of the prior art.  However, the Office offers rapid examination through the petition to make special if the patent applicant performs the search himself.

MPEP 708.02 provides the rules for filing the petition to make special based on prior art search by the applicant.  Specifically, the applicant must submit the following:

  1. A petition to make special with fee ($130).
  2. Patent claims to a single invention (avoid a restriction requirement)
  3. A statement that a pre-examination search was made listing (i) field of search by class and subclass, publication, chemical abstracts, foreign patents, etc.  Note — the search must be directed at the claimed invention.  (A search made by a foreign patent office satisfies this requirement if the claims in the corresponding foreign application are of the same or similar scope to the claims in the U.S. application for which special status is requested.)
  4. A copy of each reference deemed most closely related to the subject matter encompassed by the claims; and
  5. A detailed discussion of the references, which points out with particularity, how the claimed subject matter is patentable over the references.  A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references is not sufficient.

If your petition to make special is deficient, you will be given one opportunity to perfect the request.  However, that would cause a delay — something your are trying to avoid.

Comments: The petition to make special comes with some risks.  Specifically, that of inequitable conduct if (i) the search was not done properly or (ii) the references were mischaracterized.  To avoid this, I would recommend relying upon an external search firm to perform the search.  In addition, the inventor should be thoroughly questioned to ensure that all prior art that he is aware of has been presented.  Care should be taken to avoid mischaracterizing the references — if you cannot properly distinguish the prior art then it may be better to not file a patent application.

Links:

PATENTS: Failure to Cite Prior Art to PTO Results in Inequitable Conduct Finding and Award of Attorney’s Fees for Defendant

Patent

Bruno Independent Living Aids v. Acorn Mobility Services (Fed. Cir. 2005)

Bruno sued Acorn for infringement of its patented stairlift device.  The case was dismissed on summary judgment.  The district court also found the case ‘exceptional’ and awarded attorney fees to the defendant Acorn because Bruno “intentionally withheld invalidating prior art from the PTO” — even though the prior art had been submitted to the FDA in its request for approval to sell the medical device.

The appellate court affirmed the finding of inequitable conduct and the award of attorney’s fees based on the following factors:

  • Bruno had actual knowledge of the invalidating prior art;
  • Bruno knew or should have known of its materiality (having told the FDA that their design was the ‘substantial equivalence’ of the prior art;
  • The same attorney who filed the FDA request participated in prosecution of the patent;
  • Bruno never provided a credible explanation for the nondisclosure.

Affirmed.

Federal Circuit: Court Erred in Finding Case “Exceptional”

Patent, Patent Cases 2004,

Spectrum Labs v. Tech International (Fed. Cir. December 29, 2004).

Spectrum sued Tech Int’l for infringement for its patent related to a method of removing unwanted substances from human urine samples.  The purification method allows urine to be tested without interference from the unwanted substances.  The Nevada District Court granted summary judgment of non-infringement to Tech and granted Tech’s motion for attorney’s fees — noting that the suit was frivolous and in bad faith. 

Tech appealed the award of attorney’s fees.

On appeal, the Federal Circuit reversed — finding that the case was not "exceptional" under the statute (35 USC 285).

The CAFC listed types of cases that may create an "exceptional" circumstance: inequitable conduct before the PTO, litigation misconduct, vexatious and otherwise bad faith litigation, frivolous suit or willful infringement.  However, the Appeals Court found "none of those circumstances present" in this case.

A district court must provide reasoning for its determination that a case is exceptional for us to provide meaningful review. Further, an exceptional case finding is not to be based on speculation or conjecture but upon clear and convincing evidence.  The facts cited in the section 285 order do not provide clear and convincing evidence that Spectrum’s investigation and credit check constituted vexatious behavior. The section 285 order merely highlighted the fact that the credit check and background investigation occurred after issuance of the summary judgment order. Section 285 Order, slip op. at 3. The district court’s open speculation about the purpose of Spectrum’s investigations adds no support to its finding.

The Law: The determination whether to award attorney’s fees under section 285 involves a two-step process. First, the district court must determine whether Tech proved by clear and convincing evidence that this case is "exceptional." . . . Second, if the court finds the case to be exceptional, it must then determine whether an award of attorney’s fees is appropriate.

Comment: This case is really a commentary on claim construction jurisprudence.  In my view, the court could not call this an exceptional case because of the uncertainty associated with claim construction.

Owners of Duragesic (R) win patent appeal

Patent, Patent Cases 2004,

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Alza v. Mylan Labs., (Fed. Cir. 2004) (04-1344).

Alza sued Mylan for infringement of its patents relating to administration of fentanyl through the skin.  Because fentanyl, a narcotic, is prone to abuse, the inventors developed a patch that minimized the amount of drug that would be used in the system.  The patch is sold by Janssen as Duragesic (R).

Alza won at the district court level.  On appeal, Mylan argued that (i) the claims were not correctly construed and (ii) one of the patents was unenforceable due to inequitable conduct.

Claim construction: The appeals court looked only to the specification and prosecution history to determine that "fentanyl citrate" was not a "skin permeable form" of fentanyl — thus avoiding prior art.

In determining the meaning of a disputed claim term, a court looks first to the intrinsic evidence of record, examining, in order, the claim language itself, the specification, and the prosecution history.

Inequitable Conduct: The district court found that a statement made by the applicants during prosecution was literally true, but "had the potential to mislead the examiner."  However, on the question of intent, the district court could not find the requisite deceitful intent associated with inequitable conduct. 

The Federal Circuit affirmed: "We discern no clear error or abuse of discretion."

Dissent (in part) by Dyk: Judge Dyk would have found inequitable conduct.

Here, the patentee made an untrue assertion and simultaneously submitted accurate facts not in accord with that assertion.  Such a submission of accurate facts does not cure a false statement.

NOTE: The patent expires January 23, 2005 — Mylan must wait until then to begin selling a generic version of the patch.

Intirtool v. Texar (Fed. Cir. 2004)

Patent, Patent Cases 2004,

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Intirtool, Ltd. (MASS-TEX) v. Texar Corp. (ToolPro) (Fed. Cir. May 10, 2004).

In this patent infringement case, the district court found that Intirtool’s patent was invalid for failure to satisfy the written description requirement. (U.S. Patent 5,022,253) Additionally, the district court concluded that damages accrued prior filing the lawsuit were barred by laches. The Federal Circuit reversed these rulings for either clear error or abuse of discretion.

The first dispute revolved around whether the preamble:

hand-held punch pliers for simultaneously punching and connecting overlapping sheet metal

restricted the claims to pliers that have a connecting functionality.

The Federal Circuit held that the preamble was not limiting in this case because the body of the claim was described in such exacting structural detail that deletion of the preamble would not affect the claim. (NOTE: The body of claim 1 is quite large for this type of technology, listing 60+ lines in the patent).

In terms of inequitable conduct and laches,

the district court based its conclusion that Intirtool had engaged in inequitable conduct on its view that Intirtool had, during the prosecution of the ’253 patent, “repeatedly stated, and indeed stressed, that the described tool simultaneously punched holes and connected ceiling grids, knowing that this assertion was false.”

The Federal Circuit again disagreed with the district court – finding that the “connecting” references made by the patentee were “merely preamble features of the invention.”

Golden Blount v. Peterson

Patent, Patent Cases 2004

Golden Blount, Inc. v. Robert H. Peterson Co. (Fed. Cir. 2004).

In an infringement action over a patented fireplace burner assembly, the district court, after a bench trial, found for the plaintiff patent holder. (U.S. Patent 5,988,159). A Federal Circuit panel vacated the infringement holding:

Because the district court’s sparse opinion provides this court with only bald conclusions for review, we conclude that the district court’s judgment as to literal infringement, contributory infringement, induced infringement, and infringement under the doctrine of equivalents is insufficient under Rule 52(a).

Additionally, the appellate court upheld a finding of validity. (Apparently, bald conclusions of validity satisfy Rule 52(a) because of the accompanied presumption of validity). Finally, the court refused to hear an inequitable conduct charge that had not been raised below.

Norian v. Stryker (Fed. Cir.)

Patent, Patent Cases 2004

Norian v. Stryker

In the most interesting portion of the case, the Appellate Court found that the District Court erred in allowing the jury, while determining validity, to consider factual misstatements made by the patentee during prosecution. (Jury did not rule on inequitable conduct.) The Appellate Court did not overrule the verdict on that point, however, because no objection was made at trial.

The case was reversed and remanded on other grounds.