The parties filed cross-motions for summary on the issue of inequitable conduct. The district court had previously denied summary judgment motions on the issue of inequitable conduct but that was prior to the Federal Circuit's decision in Therasense, Inc. v. Becton Dickinson and Co., 649 F.3d 1276 (Fed. Circ. 2011) (en banc). The district court granted the parties request to re-brief the issue in light of Therasense.
The plaintiff asserted on its renewed summary judgment motion that there was insufficient evidence of specific intent to deceive the Patent and Trademark Office ("PTO"). The defendant did not dispute that there was no direct evidence of specific intent in the case. Instead, the defendant relied on circumstantial evidence, arguing that the only logical inference from the evidence is one of intent to deceive the PTO. To make this argument, the defendant relied on the fact that two of the inventors knew of two significant references and failed to disclose them to the PTO. The district court noted, relying on Therasense, that "[p]roving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive." 649 F.3d at 1290. Based on this quote from Therasense, the district court concluded that the mere fact that the inventors failed to disclose these references was insufficient to defeat summary judgment in favor of the plaintiff.
Defendant also alleged an additional act of inequitable conduct in withholding an additional reference. The district court rejected this argument as well because one of the patents disclosed by the inventors disclosed this allegedly withheld reference in the specification. The district court found that this reference was cumulative to the references already cited to the PTO and accordingly that there were multiple reasonable inferences that may be drawn from the evidence. Therefore, an intent to deceive could not be found.
Finally, the defendant argued that the inventors failed to disclose several other references and also misleadingly used the same figures for two of the patents-in-suit. Again, the district court found that were multiple reasonable inferences for the failure to disclose these additional references, including that they were cumulative of other references before the PTO. With respect to the drawings, the district court noted that there was a dispute as to whether the drawings conveyed the same information and found that "[w]hatever the drawings represent, and assuming they represent different information, this evidence does not rise to the level of clear and convincing evidence of specific intent to deceive the PTO."
Accordingly, the district court granted summary judgment in favor of the plaintiff.
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