This issue came up in Leviton Mfg Co., Inc. v. Shangai Mehaio Elec., 613 F.Supp.2d 670 (D. Md. 2009), a typical patent infringement suit with an inequitable conduct counterclaim. The trial judge did find inequitable conduct, and given the judge's findings of fact, I'm not surprised. The prosecuting attorney failed to disclose another patent application — one with different inventors yet nearly identical claims. The trial court found that such a scenario raised questions about (1) the inventorship of the '766 patent; (2) whether the specification of the '766 patent supported its claims; and (3) the possibility of double patenting.
All this sounds like sketchy behavior which might indeed merit a charge of inequitable conduct. But more important was the point made by the court when the patentee tried to argue that the other application wasn't material because it wasn't prior art. The court in Leviton pointed out that Federal Circuit case law makes it clear that information may be material under Rule 56 even when it's not prior art, because a prior art rejection isn't the only relevant issue during prosecution. Other issues such as inventorship, double patenting, and enablement must be considered when determining whether or not a particular piece of information triggers the Rule 56 duty of disclosure.
What if the bad Leviton facts (same claims, different inventors) weren't present? What if the only question on duty to disclose was "could the reference be used as prior art?" A simple analysis might be: "Since the effective filing date of my app predates the effective filing date of the reference, the reference is not prior art, so no need to disclose."
The Leviton court seemed to suggest that this is the wrong analysis. The court noted that the MPEP directs the Examiner to look at the actual filing date of an application-in-prosecution, not its effective filing date:
Plainly, the Germain application is material even though it was filed subsequent to the effective filing date of the '766 Patent. Patent examiners are required to "search all applications based on the actual U.S. filing date of the application rather than on the filing date of any parent U.S. application for which benefit is claimed. Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application but before the actual filing date of the application being examined." Manual of Patent Examination Procedure § 707.05, Examiner Note (emphasis added). The '766 application's effective filing date is August 20, 1999 because it claims priority to its parent application's filing date. The '766 application was actually filed on April 19, 2004, after the Germain application was filed. The Germain application was material prior art because its effective filing date is after the filing date of the '766's parent application but before the '766's actual filing date.I didn't find any other inequitable conduct cases in which the court suggested that the actual filing date of the application-in-prosecution should be used to make the is-prior-art determination. Even so, it may be worth considering this next time you're looking at filing an IDS.
(Leviton, 613 F.Supp.2d 670, 682, emphasis in original.)
Where the possibility of double patenting exists, the filing dates for the relevant applications/patents are completely irrelevant. You would have to report relevant applications regarless of the relationship between actual and effective filing dates.
ReplyDeleteWith respect to prior art, I'd be very surprised if materiality exists for IC purposes based on the actual filing date when the priority claim is not in question. But other than cases involving divisionals, perhaps priority *is* generally in question.
>Where the possibility of double patenting
ReplyDelete>exists, the filing dates ... are completely
>irrelevant.
Agreed. That was the judge's point, I think: because issues other than prior art are also in play, filing dates are not the only thing that matter in determining duty to disclose.
I think this is a good practice pointer because in thinking so much about prior art ramifications, we might miss the bigger picture which includes non-prior-art.
>With respect to prior art, I'd be very
ReplyDelete>surprised if materiality exists for IC
>purposes based on the actual filing date
>when the priority claim is not in question.
I don't know enough about the materiality prong of IC case law to say one way or another.
Note that priority was *not* at issue in Leviton. Yet the court said pretty clearly that the same-claims-different-inventor application was *material* because of the *actual filing date*.
"Leviton also strenuously argues that only prior art is material to an inequitable conduct analysis. This argument directly contravenes Federal Circuit law. [Various cites...]
Plainly, the Germain application *is material* even though it was filed subsequent to the effective filing date of the '766 Patent. [Quote from MPEP § 700.05 requiring examiners to search based on actual filing date.] The Germain application *was material prior art* because its effective filing date is after the filing date of the '766's parent application but before the '766's actual filing date."
Now, maybe the court went farther than it needed to, and that statement was dicta. The way I view it, the real reason that the same-claims-different-inventors app was material was that it implicated double patenting, incorrect inventorship, etc. Nothing to do with prior art status and/or filing dates.
But the court *did* quote that section of the MPEP and did explicitly state that the reference in question was "material prior art".
I'm not saying we should all change our IDS practices because of Leviton. But I do find DC decisions interesting precisely because you can see how a judge might rule on the issues. Even if the judge got it wrong, and would clearly be overruled, I think it's good to know that this *might* come up.
"Note that priority was *not* at issue in Leviton."
ReplyDeleteI took the "raised questions about ...whether the specification of the '766 patent supported its claims" to mean that priority was a possible issue.
Yeah, OK, maybe I was interpreting the issue too narrowly. All I really meant was that I didn't see any reference in the case to invalidation based on prior art after the earliest priority date. But yes, you're right that "claims not supported in the spec" does raise the issue of priority.
ReplyDelete