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 his own conclusions.” Although it is becoming more difficult to prove that conduct rises to the level of inequitable, the court expressly noted that “filing a false affidavit is exactly the sort of ‘affirmative act[] of egregious misconduct’ that renders the misconduct ‘material.’”
Background / Facts: The technology at issue in this case involves wireless transmission of caller identification (ID) information. To overcome a prior art reference during prosecution, the inventor submitted a declaration stating that “the claimed invention was actually reduced to practice and was demonstrated at a meeting … in July of 1993.” It is undisputed, however, that the inventor did not actually reduce the claimed invention to practice, nor did he demonstrate a prototype in July of 1993. Thus, the original declaration contains multiple unmistakably false statements. Under the Rohm & Haas standard confirmed in Therasense, absent curing, this alone establishes materiality.
Issue(s): Whether a later, revised declaration and subsequent statements submitted by the inventor to the PTO corrected these misrepresentations.
Holding(s): No. “At best, the revised declaration obfuscated the truth. It mentioned ‘diligence from the date of conception to the effective filing date,’ implying that [the inventor] was now relying upon constructive reduction to practice.” However, the revised declaration still “expressly mentioned ‘actual reduction to practice’ and ‘bringing the claimed subject matter to commercialization,’ further obscuring the truth.” Unsupported testimony by the inventor’s prosecuting attorney that “in a phone call, he told the Examiner that the ‘revised declaration had none of the actual reduction to practice elements in it’ because ‘[the inventor] had some misgivings about the actual reduction to practice’” was thoroughly discounted by the court as being contrary to the evidence and at best “self-serving statements made during litigation.” In sum, “the revised declaration did not cure the misconduct because it never expressly negated the false references to actual reduction to practice in the original declaration. … Nowhere did the declaration openly advise the PTO of [the inventor’s] misrepresentations, as our precedent clearly requires.”