A New Peril for Patent Owners: Inequitable Conduct for Legal Arguments on Appeal to the Patent Appeals Board

bethShaw-0580editConvertedProfile-e1360002102239Featured Expert Column

Beth Z. Shaw, Brake Hughes Bellermann LLP

Inequitable conduct is a defense to patent infringement. It is only used where the patentee has unfairly obtained an unwarranted patent through misconduct. To prove inequitable conduct, a challenger must show by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO. The U.S. Court of Appeals for the Federal Circuit tried to clarify the law of inequitable conduct in Therasense sitting en banc in 2011. Yet, once again, a panel of the Federal Circuit is retreating from the standards set forth in Therasense.

The Federal Circuit in The Ohio Williow Wood Co. v. Alps South, LLC reversed and remanded for a district court to review the issue of inequitable conduct. In the background leading to the judgment in this case, Alps had challenged a patent of The Ohio Willow Wood Company (OWW) in two reexamination proceedings at the USPTO. The patent is directed to cushioning devices that go over the residuals stumps of amputated limbs to make use of prosthetics more comfortable. Alps requested a first ex parte reexamination of the patent, and OWW amended the claims of the patent.

Alps requested a second ex parte reexamination of the patent, challenging the amended claims, and the examiner at the USPTO rejected the claims as obvious. OWW appealed to the Board of Patent Appeals and Interferences (BPAI). OWW argued that the examiner’s rejection was improper because it relied on the uncorroborated testimony of an expert whom OWW characterized as a highly interested party. The BPAI concluded that the testimony was insufficient to sustain the examiner’s rejection.

The case had been stayed at the district court pending the result of the reexamination. When the district court lifted the stay, the court granted summary judgment of no inequitable conduct by OWW. Yet, the Federal Circuit found genuine issues of material fact regarding whether OWW committed inequitable conduct during the two reexamination proceedings. Continue reading “A New Peril for Patent Owners: Inequitable Conduct for Legal Arguments on Appeal to the Patent Appeals Board”