Inequitable Conduct in Patent Prosecution

68 If money damages are deemed an inadequate remedy for making the plaintiff whole, the federal courts also have the power to issue injunctions that force the defendant to perform or cease to perform certain actions. In patent law, injunctions normally take the form of a command to the defendant to cease the infringing activity. In certain instances, injunctions are preliminary in nature, meaning they are issued before a final judicial determination on the merits. Preliminary injunctions are applied only under circumstances in which the plaintiff is deemed to be likely to prevail on the merits and the type of harm caused by the defendant s continued actions is irreparable. 

Beyond the honesty in communication (candor) required by the U.S. patent system to issue strong patents, there is an affirmative duty on applicants for patents in the United States to disclose any material information that they are aware of that might affect the patentability of their invention. Although we have already learned that examiners at the USPTO will independently search the prior art during patent examination, they often do not have the familiarity with the subject matter that the patent applicants and their representatives do. This collective duty of disclosure, candor, and good faith are critical to the mission of not only the USPTO but to the applicant as well, for at least three reasons. 

The first reason is that patentees should want the strongest possible system of patent procurement and enforcement possible. To have such a system, all parties involved in the patent process need to work collectively to uphold the integrity of the system. No jury or judge will view your patent favorably if the entire system itself is a sham. 

Second, the holder of the patent wants the strongest patent possible. If a patent is to have value, it must survive the rigors of litigation, and patents that have been procured through less than fully honest means are going to work against the patentees should they try to enforce the patent in federal court. 

If the first two reasons were too tangential to convince you then may be the third will  

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A finding of inequitable conduct in the prosecution of one patent can even extend beyond a finding of nonenforceability of the claims of that patent but also may render the applicant s closely related patents unenforceable as well. 

The duty of disclosure goes beyond just the applicant but includes anybody substantively associated with the filing and/or prosecution of the patent application, such as the inventors, applicants, assignees, and their representatives before the patent office. More will be said about inequitable conduct in section 2.3. 

Patent prosecution requires a duty of candor that includes a duty to provide material information to the USPTO during the prosecution of a patent application. This duty applies to patent counsel, inventors, and anybody else substantively involved in the preparation of the application and who is associated with an inventor, assignee, or one who is obligated to assign the patent application. Failure to comply with this duty can result in a finding of inequitable conduct, which can render the application unenforceable. The subject of inequitable conduct will be discussed in detail in Chapter 2. 

In the case of Nilssen et al. v. Osram Sylvania, et al. 504 F.3d 1223 (CAFC 2007), the CAFC upheld the District Court s finding that plaintiff s asserted patents were invalid due to inequitable conduct committed by the patentee during the prosecution of the patents. It is interesting that the patentee had replaced his own legal representatives during the prosecution of the patents to represent himself before the USPTO. In regard to the adequacy of his representation the CAFC panel opined ... 

I]t was the Vincents who sought a patent on the invention, regardless of whose invention it was. Thus, their inequitable conduct during prosecution of the application leading to the patent renders the patent unenforceable, just as the conduct of an attorney who participates in the prosecution of a patent application may render a patent unenforceable. 

If you are on the defendant side, you list reasons why the patent is invalid, for example, it was obvious, not novel, not useful, invented earlier as described in prior art (anticipated), the specification does not have an adequate description of how to implement the invention (lack of enablement), the patent applicant held back important information that he should have provided to the patent examiner and did not tell all (inequitable conduct), or the file history describes how the applicant restricted the meaning of the claims during patent prosecution. Not only the listed reasons above, but in addition that you have actually tested the medical device, and it does not infringe the patent because it does not contain every element of the claim or imder the doctrine of equivalents. 

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