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Federal Circuit Overturns Summary Judgment Finding of Inequitable Conduct

BY Donald J. Firca, Jr.
August 26, 2010

The Federal Circuit recently agreed to an en banc review of the admittedly scattered precedents concerning inequitable conduct. Therasense, Inc. v. Becton, Dickinson & Co., 2010 U.S. App. LEXIS 9549 (April 26, 2010). In vacating its earlier panel decision in Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289 (Fed. Cir. 2010), the rehearing order sets out six issues surrounding the materiality-intent standard at the core of any inequitable-conduct analysis. In the meantime, the current materiality-intent standard continues to result in drastically different outcomes, even among members of the same panel. Such was the result in the Federal Circuit's split panel decision in Leviton Mfg Co. Inc. v. Universal Security Instruments, Inc., 2009-1421 (Fed. Cir. May 28, 2010).

The Leviton Case

In Leviton, the majority decision overturned a finding of inequitable conduct on summary judgment, remanding the case for an evidentiary hearing. Prosecution counsel was found to have withheld material information from the Examiner during prosecution with full knowledge of his obligation to disclose such information. Despite prosecution counsel's knowledge and the materiality of the withheld information, however, the majority was reluctant to conclude that prosecution counsel withheld the information with an intent to deceive. The court reasoned that in instances where summary judgment of inequitable conduct has been affirmed, the intent to deceive was inferred from an affirmative act on the part of the applicants and the misleading nature of such acts.

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