Issue 05/36 | August 8, 2005
Misleading Video
 Inequitable Conduct Upheld Where Misleading Video Submitted During Prosecution

Continuing the revitalization of the inequitable conduct defense, the federal circuit held that the submission of a misleading video to the PTO during prosecution constituted a material misrepresentation of fact, and provided ample basis for an inference of intent. Applicant’s claims that the video used to demonstrate superiority of the claimed lens system could have been made with the claimed lens were irrelevant.

In Frazier v. Roessel Cine Photo Tech, Nos. 04-1060, -1092 (Fed. Cir. August 2, 2005), the federal circuit affirmed an inequitable conduct determination (based on the submission of a misleading video during prosecution), reversed an inequitable conduct finding (based on the failure to submit a magazine article) and remanded for reconsideration of an exceptional case determination.

Frazier’s ‘236 patent is directed to lens systems that achieve superior depth-of-field resolution in pictures. Panavision, in collaboration with Frazier, filed and prosecuted a patent application on one of Frazier’s designs, the “Z lens.” During prosecution, a Panavision executive discovered an advertisement depicting a Roessel periscope-type lens (similar to the Z lens, but lacking a claimed element) and gave a copy of the advertisement to patent counsel, but the ad was never submitted to the PTO. During prosecution, applicant argued the superiority of the depth of field achievable with the claimed invention as compared with prior art lenses. In support, applicant submitted a video “[i]n the interests of demonstrating [ ] the features and uniqueness of the optical system of this patent application.” The relevant video portions were not shot with the claimed Z lens, but rather with a prior art “AI Lens”, a normal, wide-angle objective lens, or an L-shaped Lens. The district court found inequitable conduct based both on the failure to submit the magazine article as well as the misstatement as to which lens was used to make the video, and awarded attorneys’ fees after a finding that the case was exceptional.

The federal circuit affirmed based on the submission of the video, holding that the submission of the video with footage shot with other than the claimed lens constituted a sufficiently material misrepresentation without regard to whether the claimed lens could create the same shots. Intent was properly inferred where applicant submitted a video in order to represent the capabilities of the claimed lens, knowing that portions of the video were shot with a different lens. However, the court found the materiality element lacking from the magazine advertisement because (1) the patent corresponding to the lens in the ad did not raise a prior invention issue with the Frazier ‘236 patent; (2) the ad did not disclose enough to place a person of ordinary skill on notice of its materiality with respect to the claims of Frazier’s application; (3) the ad did not trigger a duty by Frazier or Panavision to investigate facts relevant to its materiality; and (4) the ad did not disclose evidence of contemporaneous invention.

Dissenting, Judge Bryson disagreed that the materiality of the advertisement should turn on whether a single claimed element was missing from the lens shown in the withheld advertisement. Relying on Baxter, he stated that “a reference may still be material even if it lacks one limitation of the claimed invention.”

To view the full decision visit http://media.aplf.org/rm/20050808-public/Frazier.pdf

To discuss these topics further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC, USA.

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