Publication

November 2009Published Article

Pleading Inequitable Conduct: Be Particular About the Who, What, Where, Why, and How

Intellectual Property Today

Exergen Corp. v. Wal-Mart Stores, Inc., --- F.3d ----, 2009 WL 2366535 (Fed. Cir. Aug. 4, 2009)

The United States Court of Appeals for the Federal Circuit recently clarified the heightened requirements for pleading inequitable conduct under Federal Rule of Civil Procedure 9(b). In Exergen Corp. v. Wal-Mart Stores, Inc., et al., two defendants, S.A.A.T. Systems Application of Advanced Technology, Ltd. and Daiwa Products, Inc. (collectively, "SAAT"), appealed several of the district court's rulings, including the court's denial of SAAT's motion for leave to add an affirmative defense and a counterclaim based on inequitable conduct. The Federal Circuit affirmed this portion of the district court's ruling, holding that SAAT's inequitable conduct allegations did not satisfy the heightened pleading requirements of Rule 9(b).

To prove inequitable conduct, a party must demonstrate by clear and convincing evidence (i) an omission or misrepresentation of a material fact during patent prosecution, and (ii) intent to deceive the United States Patent and Trademark Office ("PTO"). See Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008).

The Federal Circuit stated that inequitable conduct must be pleaded with particularity under Federal Rule of Civil Procedure Rule 9(b) which requires the party alleging inequitable conduct to plead the "who, what, where, why, and how" of the material omission or factual misrepresentation. The allegations also must include facts sufficient to infer reasonably that a specific individual knew of the material omission or factual misrepresentation and withheld or misrepresented it with a specific intent to deceive the PTO. Therefore, the Federal Circuit agreed with the district court's determination that SAAT's allegations were deficient with regard to both the facts alleged and the reasonableness of alleged inferred intent.

In Exergen, SAAT's proposed counterclaim included seemingly detailed allegations:

  • The patent at issue, i.e., the '685 patent, was "unenforceable due to inequitable conduct by Exergen, its agents and/or attorneys during the prosecution of the application for the '685 patent before the PTO."
  • Exergen filed a separate patent application, the '808 patent application, prior to filing the '685 patent application and 15 years before the '685 patent issued. Thus, Exergen knew about the '808 patent during prosecution of the '685 patent, but Exergen did not disclose the '808 patent to the PTO.
  • The '808 patent "was material to the patentability of the '685 patent because it discloses a technique of scanning a radiation detector across a target to measure the maximum emitted radiation,"1 and it was "not cumulative to the information already of record in the prosecution history of the '685 patent."
  • Exergen also failed to disclose the '998 patent to the PTO, even though Exergen had cited the '998 patent an information disclosure statement in connection with another one of its patents prior to the issuance of the '685 patent. SAAT further alleged that "[t]he '998 patent was material to the patentability of the '685 patent because it discloses a technique of swiping a radiation detector across a target," and was "not cumulative to the information already of record in the prosecution history of the '685 patent."
  • With regard to intent, SAAT alleged that "[b]ecause Exergen was aware of the '808 patent and the '998 patent prior to the issuance of the '685 patent, Exergen had an opportunity to disclose each of these patents to the PTO during the prosecution of the '685 patent," and because the '808 and '998 patent were material to the patentability of the '685 patent, "Exergen had an obligation to disclose each of these patents to the PTO." Nevertheless, Exergen failed to cite either of these patents to the PTO during prosecution of the '685 patent. SAAT further alleged that it "is informed and believes, and therefore alleges, that Exergen, its agents and/or attorneys intentionally withheld the '808 patent and the '998 patent from the PTO with the intent to deceive the PTO to issue the '685 patent."
  • SAAT also alleged that Exergen made a number of arguments to the PTO to overcome patentability rejections of the pending claims that were contradicted by statements from Exergen's own website. SAAT provided the court with the quotes from the '685 patent's prosecution history and Exergen's website that it alleged were contradictory or inconsistent.
  • SAAT further indicated that the misrepresentation and omission were material to the patentability of the '685 patent because "the information was not cumulative to the information already of record in the prosecution history of the '685 patent, and it refutes, or is inconsistent with, a position taken by Exergen in asserting an argument of patentability. SAAT is informed and believes, and therefore alleges, that the misrepresentation and omission were made with the intent to deceive the PTO to issue the '685 patent.

Nevertheless, SAAT's allegations were deficient for three reasons:

  • Name the specific individual associated with the prosecution of the asserted patent who both knew of the material information and deliberately withheld it from or misrepresented it to the PTO (the "who");
  • Identify the specific claims and claim limitations to which the withheld references are relevant and where in those withheld references the material information is found (the "what" and "where"); and
  • Identify the particular claim limitations or combination of claim limitations that are supposedly absent from the information already disclosed to the PTO ("why" and "how").

With regard to (1), the Federal Circuit held that the accused infringer must identify specific individuals - simply referring to "the patentee, its agents and/or attorneys" is insufficient. In (2), the Federal Circuit explained that the accused infringer must tie specific claim limitations to the undisclosed information because information is only material if a reasonable patent examiner would have considered it important to the patentability of a specific claim. Finally, as to (3), general allegations that the withheld information is "material" and "not cumulative to the information already of record" are not sufficient. The accused infringer must explain "why" the withheld information was material and "how" a patent examiner would have used the missing information when assessing the patentability of the claims.

The Federal Circuit also concluded that SAAT's knowledge and intent allegations lacked sufficient particularity. As illustrated above, SAAT alleged that Exergen was aware of undisclosed references because it had disclosed those references in a related application and the contradictory information was available on Exergen's own website. SAAT based its deceptive intent allegations, however, solely on "information and belief." The court concluded that in order to satisfy the requirements of Rule 9(b), SAAT needed to provide the "information" on which it relied or plausible bases for its "belief."

The Federal Circuit explained that SAAT's allegations regarding knowledge lacked particularity because SAAT failed to plead facts showing that the individual associated with the prosecution not only knew of the prior art reference, but also knew of the specific material information contained in that reference. As to the contradictory information available on Exergen's website, SAAT needed to plead facts sufficient to raise an inference that the individual was actually aware of the allegedly contradictory statement at the time of making the statement.

With regard to intent, the Federal Circuit stated that the party alleging inequitable conduct must show that the applicant made a deliberate decision to withhold a known material reference from the PTO. While deceptive intent may be based upon "information and belief" when essential information is within another party's control, the pleading must still set forth the specific facts upon which that belief is based. The mere fact that an applicant failed to disclose a prior art reference disclosed in a related application is insufficient to meet the threshold level of deceptive intent.

Practical Considerations: Although Exergen may not have changed the standard for proving inequitable conduct, the Federal Circuit's decision makes it more difficult and expensive to plead inequitable conduct. For instance, the accused infringer will have to spend more time gathering the facts needed to plead inequitable conduct properly and, therefore, the cost of pleading inequitable conduct will increase. This increased cost must be weighed against the possible benefits for the accused infringer's case. At the same time, patentees have more incentive to file motions to dismiss inequitable conduct claims and responding to those motions will further increase the cost of alleging inequitable conduct.

Exergen also will impact the timing of inequitable conduct allegations. Accused infringers rarely will have enough information to plead inequitable conduct at the outset of a case in light of these strict pleading requirements. Instead, accused infringers will have to conduct discovery in order to develop inequitable conduct claims, including defeating the patentee's likely objections that such discovery is not relevant to the claims or defenses at issue in the case and not reasonably calculated to lead to the discovery of admissible evidence. Moreover, once an accused infringer has gathered particularized facts, it will have to convince the court to allow amendment of the pleadings at that stage of the case under Rule 15. As a result, at the outset of the case, an accused infringer should seek as much time as possible to amend its pleadings when negotiating the initial scheduling order. In contrast, a patentee should advocate a short deadline to amend without leave or good cause.

All together, the Federal Circuit has made it much more difficult for accused infringers to defend themselves via a claim of unenforceability due to inequitable conduct.

For more information, please contact Arthur Gollwitzer III at agollwitzer@michaelbest.com or 312.596.5803, or Angela J. Kujak at ajkujak@michaelbest.com or 608.257.3054.

1 Claims 1 and 2 of the '685 patent read: 1. A method of detecting human body temperature comprising: laterally scanning a temperature detector across a forehead; and providing a peak temperature reading from plural readings during the step of scanning. 2. A method as claimed in claim 1 wherein the temperature detector comprises a radiation sensor which views a target surface area of the forehead.

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