The failure to disclose a prior art device to the PTO, where the only evidence of intent is a lack of a good faith explanation for the nondisclosure, cannot constitute clear and convincing evidence sufficient to support a determination of inequitable conduct.
In M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Company, Inc., Nos. 05-1224, -1228 (Fed. Cir. February 27, 2006), the Court of Appeals for the Federal Circuit reversed a summary judgment ruling of unenforceability due to inequitable conduct.
Fisher's `914 patent is directed to a combination of a pneumatic driver with an eraser wheel to remove decals from a motor vehicle. During prosecution, Fisher never disclosed its own prior art Model 220 die grinder, a tool containing some of the features claimed in the application that issued as the `914 patent. The examiner allowed the claims because he could not find prior art that disclosed all of the claimed limitations. The district court determined the Model 220 die grinder would have been material to patentability, inferred intent to deceive based on nondisclosure, and granted summary judgment of unenforceability to Eagles.
Reversing, the federal circuit emphasized the requirement for a factual basis for finding of intent to deceive. Here, the only evidence of intent to deceive was Fisher's failure to offer a good faith explanation for its nondisclosure. According to the federal circuit, the lack of a good faith explanation for nondisclosure, by itself, was not sufficient to constitute clear and convincing evidence of an intent to deceive.
Further, the federal circuit rejected Eagles' argument that Fisher must have known of the relevance of the prior art model, based on the Examiner's statement that all of the claimed limitations could not be found in the prior art. Because many of the claimed features were not found in Fisher's prior art die grinder, the district court erred in concluding that Fisher must have known the relevance of its prior art model based on the examiner's statement alone.
The case presents an interesting contrast to Ferring v. Barr (Feb. 15, 2006), wherein the court reasoned that statements by examiners (and reasonable implications therefrom) could form the basis of a materiality finding, where an applicant should have known that nondisclosure would be material based on those statements. In Ferring, the court inferred intent based on the absence of a good faith explanation for nondisclosure at the summary judgment stage, essentially requiring affidvait evidence of good faith in order to establish a genuine issue of material fact.
Please visit http://media.aplf.org/rm/20060307-public/Eagles.pdf for a copy of the case for your reference.
To discuss these topics further, please feel free to contact the author, Michael R. Dzwonczyk (firstname.lastname@example.org), at Sughrue Mion, PLLC in Washington DC, USA.
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