On February 19th, the Fed. Cir. affirmed a District Court’s finding of inequitable conduct in Ohio Willow Wood Co. (OWW) v. Alps South (Alps), LLC, following the Fed. Cir.’s remand of summary judgment of no inequitable conduct in 2013. (Ohio Willow Wood Cr. v. Alps South LLC, 2015 U.S. App LEXIS 2864 (Fed. Cir. 2016).) (A copy is available at the end of this post.)
The facts of the case are complex, and involve two reexaminations of U.S. Pat. No. 5,830,237, claiming a cushioning device for amputees, “SSGL.”
Alps had presented the testimony from an expert who had worked for a competitor, Silipos, Inc., and who testified that the SSGL device had been described in a trade magazine in 1995. OWW convinced the Board that his testimony should be given little weight, since it was uncorroborated and he was an interested third party. The district court invalidated the patent claims as obvious but granted s.j. of no inequitable conduct and awarded Alps attorney fees from 2011 forward.
The Fed. Cir. reversed on the basis that there was enough evidence of corroboration, namely two letters sent to OWW by an attorney at Silipos that described the product in detail, including a shipping invoice. The Director of Research was ultimately found to have intentionally failed to submit this highly material—to corroboration—prior art to the Patent Office. (The judge found that if the testimony had been corroborated, the patent would not have issued due to the on-sale bar.) He tried to argue that he had not read the letters because they were under a protective order, but the panel found that he was both directing the litigation and patent-sophisticated.