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, arranging for “the preparation and submission of an expert declaration containing false statements instrumental to issuance of the patent” (e.g., as here, by manipulatively withholding pertinent information from the declarant) is “particularly significant and inexcusable.”
Background / Facts: The patent being asserted here is directed to a process for manufacturing moexipril tablets. Moexipril is an angiotensin-converting enzyme (“ACE”) inhibitor used to treat hypertension. At least during prosecution if not prior to filing, it appears that the inventor and acting in-house counsel was aware that the accused product was made according to his claimed process, concealed this knowledge from the PTO, and misrepresented the nature of the accused product and other prior art through his counsel’s arguments and an expert declaration from an expert intentionally kept in the dark.
Issue(s): Whether this conduct rises to the level of inequitable conduct under the standard for materiality.
Holding(s): Yes. “To be clear, we agree with [the patentee] that [the inventor / counsel] had no duty to disclose his own suspicions or beliefs regarding the prior art. There is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art. The misconduct at issue, however, goes beyond failing to disclose a personal belief or alternative interpretations of the prior art; here, [he] affirmatively and knowingly misrepresented material facts regarding the prior art. … We find particularly significant and inexcusable the fact that [he] arranged for the preparation and submission of an expert declaration containing false statements instrumental to issuance of the patent.”