Eddy Rivero

In Intellect Wireless, Inc. v. HTC Corp.,[1] the Federal Circuit affirmed that HTC did not infringe on Intellect’s patents, which claimed a method to send images and caller ID information over a wireless network. The court found that the patent applicant and founder of Intellect Wireless, Daniel Henderson, engaged in inequitable conduct stemming from his knowingly false declarations during the patent’s prosecution, and his failure to acknowledge the falsity of the declaration.[2] Until Intellect Wireless, the trend in the Federal Circuit was to strictly hold the defendants claiming a defense of inequitable conduct to an elevated evidentiary burden without clarifying exactly what that burden entailed.[3] While it is still uncertain whether Intellect Wireless reverses the trend, the decision clearly established the standard required to prove inequitable conduct by showing materiality and intent to deceive by clear and convincing evidence may be easily met.

To prove inequitable conduct, HTC had the burden to show by clear and convincing evidence, that the Intellect Wireless (1) misrepresented or omitted information material to patentability; and (2) did so with specific intent to mislead or deceive the U.S. Patent and Trademark Office [PTO].[4] In short, the materiality of the misrepresentation and intent to deceive form the two prongs of the inequitable conduct test.

Materiality requires that the patent holder “engaged in affirmative acts of egregious misconduct.”[5] The Federal Circuit affirmed the district court’s materiality finding because the patent applicant, Intellect, filed multiple unmistakably false declarations, first in the original declaration and again when the subsequent revised declarations failed to correct the falsehoods in the original declaration.[6] Intellect first declared to the PTO that it had reduced its invention to practice following a demonstration in July of 1993.[7] In a revised declaration that same month, Mr. Henderson described the invention as a “prototype now in the Smithsonian that was in development for a  . . . demonstration[,]” and also described in a brochure and packing receipt and that expressly mentioned “actual reduction to practice.”[8] However, the invention had never been actually reduced to practice in July of 1993, which was required in this case to make the invention patentable.[9] In determining that this amounted to a material misrepresentation, the court applied the Rohm & Haas standard. Rohm & Haas requires a patent applicant to (1) expressly advise the PTO of the existence of a misrepresentation, (2) if there are one or more facts misrepresented, the PTO must be advised of the actual facts, and (3) the patent applicant must take these necessary actions openly.[10] The misrepresentations in the original declaration were never expressly corrected or mentioned to the PTO, therefore Intellect failed to meet the standard and his misrepresentations were material.

As for the intent prong of the test, the Federal Circuit agreed with the district court’s assertion that Intellect acted with the specific intent to deceive the PTO.[11] Intellect argued that it made an inadvertent mistake in the original declaration and therefore, intent to deceive was  not the most reasonable inference.[12] The Federal Circuit disagreed by finding that the affidavit containing Intellect’s fabricated examples of the invention’s actual reduction to practice raised a strong inference of intent to deceive made in order to obtain the patent.[13] Furthermore, Intellect informed the PTO that he built a device that could receive images via wireless transmission. However the device was at best a simulation, not capable of wireless communication at all, and contained preloaded images.[14] Finally, the court found that Intellect’s multiple false declarations to the PTO that “dance[ed] around the truth[,]” indicated an intent to deceive.[15] Therefore, the district court did not clearly err when it interpreted Intellect’s pattern of deceit to indicate a clear intent to deceive.[16]

The decision in Intellect Wireless v. HTC reaffirmed that the only path by which a patent applicant can cure inequitable conduct during prosecution is through the Rohm & Haas standard. Consequently, submitting false declarations and failing to expressly correct them can be enough to satisfy the specific intent to deceive prong and the materiality prong necessary to show inequitable conduct. After Therasense, patent practitioners were concerned that the heightened clear and convincing evidence standard for intent to deceive would be too difficult to prove.[17] Now, Intellect Wireless shows that there  is no longer room to debate that the submission of false declarations without taking affirmative steps to address the falsities is an affirmative act of egregious misconduct, and therefore satisfying materiality. Merely filing a corrected document is not enough. Notably, this standard is purely Federal Circuit law since the Supreme Court has not definitely addressed inequitable conduct.

The Federal Circuit established the modern doctrine of inequitable conduct in the cases of Star Scientific Inc., Therasense, Inc., and Intellect Wireless. Inequitable conduct developed from the Supreme Court’s unclean hands doctrine in Precision Instruments Manufacturing v. Automotive Maintenance Machinery.[18] In Precision, Automotive Machinery sought to enforce a patent which was filed to the PTO with false dates of conception, disclosure, drawing, description, and reduction to practice.[19] Automotive discovered the false information but did not reveal it to the PTO.[20] The Supreme Court dismissed Automotive Machinery’s case because the patentee failed to disclose its knowledge of perjury to the PTO and actively suppressed evidence of the falsities.[21] The Supreme Court declined to revisit the unclean hands standard when it denied cert to 1st Media, LLC v. Elec. Arts, Inc.[22] While the Court continues to abstain from debating inequitable conduct, Intellect Wireless has now reopened to the door to the defense after two years of Federal Circuit uncertainty prompted by Therasense.

[1] 2013 U.S. App. LEXIS 20529 (Fed. Cir. Oct. 9, 2013).

[2] Id. at *3.

[3] See Terrence P. McMahon, The “Elevated Evidentiary Burden” to Prove Inequitable Conduct, 10 Sedona Conf. J. 197 (Fall 2009) (noting how the Federal Circuit in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) denied a finding of inequitable conduct because neither materiality nor intent to deceive were established by clear and convincing evidence); see also Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (declining to find inequitable conduct and tightening the standards for finding inequitable conduct by limiting the defense to cases to occasions when patent holders’ actions are related directly to the patent, and when the patent holder engaged in deceitful intent).

[4] Id. (citing In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012))

[5] Id. (citing Therasense, Inc. v. Becton, Dickenson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (en banc)).

[6] Id. at *7.

[7] Id. at *8.

[8] Id. at *7.

[9] Id. at *7 (noting that Intellect claimed actual reduction to practice to overcome a prior art reference, in order to meet the novelty requirement of patentability in 35 U.S.C. § 102 (2006)).

[10] Id. (citing Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1572 (Fed. Cir. 1983)).

[11] Id. at *11-*16.

[12] Id. at *12 (noting that the “most reasonable inference” is the standard in determining intent to deceive in inequitable conduct cases).

[13] Id. at *14.

[14] Id.

[15] Id. at *15.

[16] Id.  at *16.

[17] Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1302 (Fed. Cir. 2011)(J. Bryson, dissenting)(the dissent notes that there is broad consensus that the law of inequitable conduct is in an unsatisfactory state and requires adjustment and the standard adopted by the majority is inconsistent with the duty that the Supreme Court has described as applying to those who seek patents in the application process);  See also Stephen S. Korniczky, Federal Circuit Affirms Inequitable Conduct Determination Under Therasense “But For” Exception and Reaffirms Significance of Rohm & Haas, ShepardMullin (last updated Oct. 17, 2013) available at https://www.mondaq.com/unitedstates/x/268774/Patent/Federal+Circuit+Affirms+Inequitable+Conduct+Determination+Under+Therasense+But+For+Exception+And+Reaffirms+Significance+Of+Rohm+Haas.

[18] 324 U.S. 806 (1945); see also Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933); Hazel Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944).

[19] Precision Instruments Mfg. Co. v. Automotive Maint. Mach. Co., 324 U.S. 806, 809 (1945).

[20] Id. at 818.

[21] Id.

[22] 694 F.3d 1367 (Fed. Cir. 2012), cert. denied, 2013 U.S. LEXIS 7473 (U.S. Oct. 15, 2013).

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