On September 13th, the Fed. Cir. reversed a district court ruling that the inventor and the attorney who prosecuted a chain of applications claimed multi-media entertainment systems had committed inequitable conduct by failing to disclose three “relevant” references at various times. This was a pre-Therasense decision, and the judge had held the IC part of the trial prior to the case-in-chief. Thus, Therasense, “but-for materiality” had not been considered – the district court appears to have used the “reasonable examiner” standard.
The panel distinguished Aventis v. Hospira, 675 F.3d 1324 (Fed. Cir. 2012) as based on an “affirmative conduct by the applicants showing not only specific awareness of materiality [but-for materiality had been established at trial], but careful and selective manipulation of where, when and how much of the most material information to disclose…. Evidence of such selective disclosure is not present here.” Slip op. at 13-14.
At best, the panel seemed to say, the attorney and the inventor did not communicate well, and even if their testimony about relevance was not credible, that finding alone cannot be used as affirmative evidence of a deliberate decision to withhold prior art.:
“[T]his court has now made clear that ‘[t]o prevail on a claim of [IC], the accused infringer must act with the specific intent to deceive the PTO….’In a case involving non-disclosure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known, material reference.’” [citing Kingsdown]… Moreover, it is not enough to argue carelessness, lack of attention, poor docketing or cross-referencing, or anything else that might be considered negligent or even grossly negligent.” Sip. op. at 12-13.
As interpreted by 1st Media, the Therasense standard for intent should make it nearly impossible to show specific intent when multiple actors were involved in uncovering, evaluating – or not evaluating and citing – or not citing – prior art, often years in the past. In Aventis, the “deliberateness” of the decision not to cite two but-for material references was laid at the feet of one project manager. Will there ever be clear and convincing evidence that a cabal of attorneys, managers and inventors met and [all?] decided not to cite a reference that they [each?] knew to be material?