For inequitable conduct purposes, even prior art representing the state of the art without the core inventive concept can be “but for” material if the core inventive concept is found to be obvious, and all relevant operational details (beyond mere existence alone) must be submitted to the PTO. Here, for example, a navigation system providing search capabilities for one type of information was found to be material to patentability for claims directed to searching other types of information because searching different types of information was found to be obvious. “[T]he reference may be material if it would have blocked patent issuance under the PTO’s different evidentiary standards.”
Background / Facts: The patents being asserted here describe and claim aspects of a multimedia system for use in a car to access vehicle information and control vehicle functions. The closest prior art is a 1996 Acura RL (“96RL”) navigation system, which the inventors used as the basis for their claimed improvements. Whereas the prior art 96RL navigation system provides a search function for navigational details (destinations, addresses, directions), the claimed invention provides the ability to retrieve information about “an aspect of the vehicle” itself, such as climate control functions, the radio, the engine, etc. Otherwise, all the contextual limitations can be found in the prior art 96RL navigation system. While the patentee disclosed to the PTO the existence of the prior art 96RL navigation system, they did not disclose operational details such as the owner’s manual or photographs in their possession.
Issue(s): Whether the operational detail information deliberately withheld from the PTO was material to patentability.
Holding(s): Yes. Although acknowledging that the limitation at the heart of the claimed invention of searching for and displaying information about an “aspect of the vehicle” was not disclosed by the withheld information, the court found that the inventive concept was merely in “the nature of the information contained in the systems” and that “it would have been obvious to a person of ordinary skill in the art to include different information in the 96RL navigation system.” “[T]he mere substitution of one kind of information as the object of the search—which, under a broadest reasonable interpretation of the claim, could be anything about the car—would be an obvious, and thus unpatentable, invention.” Accordingly, “the undisclosed operational details of the 96RL navigation system are material to the patentability of the [] patents.” This is true even though, as the dissent points out, patentability was actually confirmed by the PTO over the originally withheld information during a subsequent reexamination.