THE OHIO WILLOW WOOD COMPANY v. ALPS SOUTH, LLC (Fed. Cir. 2016) (P) – Withholding information that directly counters arguments before the PTO constitutes inequitable conduct

by Steve Driskill | Feb 19, 2016 | Inequitable Conduct

Withholding information that runs directly counter to your central arguments before the PTO constitutes inequitable conduct. Here, for example, withholding earlier letters from a competitor’s in-house counsel that would have corroborated a declaration from the...

AMERICAN CALCAR, INC. v. AMERICAN HONDA MOTOR CO. (Fed. Cir. 2014) (P) – Materiality for inequitable conduct applies to even state of the art obviousness references

by Steve Driskill | Sep 26, 2014 | Inequitable Conduct

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)...

APOTEX INC. v. UCB, INC. (Fed. Cir. 2014) (P) – Manipulatively withholding information from an expert making a declaration is inequitable conduct

by Steve Driskill | Aug 15, 2014 | Inequitable Conduct

Although “[t]here is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art,” it is inequitable misconduct to “affirmatively and knowingly misrepresent[] material facts regarding the prior art.” In particular,...

OHIO WILLOW WOOD CO. v. ALPS SOUTH, LLC (Fed. Cir. 2013) (P) – Inequitable conduct for asserting selective facts from litigation record

by Steve Driskill | Nov 15, 2013 | Inequitable Conduct

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...

INTELLECT WIRELESS, INC. v. HTC CORPORATION (Fed. Cir. 2013) (P) – Curing otherwise inequitable conduct

by Steve Driskill | Oct 9, 2013 | Inequitable Conduct

It does not suffice that one knowing of misrepresentations in an application or in its prosecution “merely supplies the examiner with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate...

NETWORK SIGNATURES, INC. v. STATE FARM MUTUAL AUTO (Fed. Cir. 2013) (P) – Inequitable conduct pertaining to certifying “unintentional” delays

by Steve Driskill | Sep 24, 2013 | Inequitable Conduct

The Federal Circuit is exceptionally reluctant to find inequitable conduct, especially in non-substantive matters. In particular here, compliance with the standard PTO procedure for delayed payment, using the standard PTO form, does not provide clear and convincing...