This case deals with inequitable conduct relating with filing references in information disclosure statements. The court standard of review is set out in Therasense for non-disclosure of references to the USPTO. see 649 F.3d at 1290-91. In this case, Attorneys for 1st Media failed to disclose various references that were cited in cross-referenced cases.
Under the Therasense standard, absent affirmative egregious misconduct, a defendant must prove by clear and convincing evidence both of the “separate requirements” that: (1) “the patentee acted with the specific intent to deceive the PTO”; and (2) the non-disclosed reference was but-for material. Id. Therasense explained that in order to show that the patentee acted with the specific intent to deceive the PTO, a defendant must prove “that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” Id. at 1290 (emphasis added).
It appears that the holding of this case hinged on whether Sawyer, the patent attorney who failed to file an IDS with references of the related applications, acted with specific intent to withhold the references. However, the court ruled that because Sawyer neither omitted all the references in specific office actions nor did the record show any letters from Sawyer informing others of the Office Action in question, he did not selectively choose which references to include in an IDS. Specifically, the court ruled that knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive.
However, the court did take a jab at Sawyer and his practice by stating “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. To sustain a charge of inequitable conduct, “clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.” Molins, 48 F.3d at 1181.”
Austin Patent Attorney Takeaways:
1) Have a good docketing system that you can use to monitor cross-related cases both domestically any internationally. Even though the court held failure to cross-site references unintentionally doesn’t meet the standard for inequitable conduct, it will make your life a lot easier by taking time on the front end with a good docketing system.
2) Don’t try to determine what references may or may not be material. If an examiner listed them in an Office Action, someone at some point thought they were material so you might as well just sight them as well.
3) Don’t pick and choose references from an Office Action to submit in an IDS. If you are going to submit any reference, submit them all. If appears that this was a large reason in this case why no inequitable conduct was found (due to Sawyer neglecting to file any of the references in the Office Action).