The fair context of any facts pulled from a related litigation record should be fully disclosed to the PTO. Picking-and-choosing certain facts while withholding or even misrepresenting others from a record to which the PTO is not privy may rise to the level of inequitable conduct.
Background / Facts: The patent being asserted here is directed to a cushioning device that goes over the residual stumps of amputated limbs to make the use of prosthetics more comfortable. After litigation commenced through discovery, the defendant filed a request for reexamination at the PTO, in which the patent was ultimately upheld by the Board of Appeals. Based on information made known to the patentee in the course of the litigation, the patentee zealously attacked an obviousness rejection by the examiner and convinced the Board that affidavit evidence supporting the rejection was uncorroborated and biased.
Issue(s): Whether the patentee withheld or misrepresented information that, in the absence of the withholding or misrepresentation, would have led the Board to credit the affidavit evidence.
Holding(s): Yes. “[W]e conclude that a reasonable finder of fact could conclude that [the patentee] withheld evidence from the PTO during the second reexamination that sufficiently corroborated [the affidavit author’s] testimony. … The corroborating evidence that [the patentee] did not disclose to the PTO includes witness testimony, documents, and physical samples.” In particular, the patentee apparently withheld “three [other] declarations in support of [the affidavit author’s] testimony,” “a patent application that allegedly covered the commercial embodiments of [the] products [at issue in the affidavit],” and physical samples of those products, which the patentee characterized as “ghost” samples even though they were produced during deposition of the affidavit’s author. “Overall, the testimony from the three prosthetists, the patent application, and the physical exhibits provide consistent and convincing evidence that corroborates [the affidavit].” Further, the court found in the full deposition transcripts “testimony and other record evidence [that] directly contradict [the patentee’s] representations to the [Board] of [the affidavit author’s] purported admissions [regarding his personal interest in the case].” In conclusion, the court noted that “[i]f [the patentee] had simply withheld a single piece of information or made a single misrepresentation, this would be a different case. However, [it] withheld various pieces of material information and had no reasonable explanation for the several misrepresentations it made to the PTO.”