Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

 

A patentee’s failure to inform the PTO that the circumstances supporting his Petition to Make Special no longer exist is not material to patentability and thus is not inequitable conduct under the new materiality standards established in Therasense.

Powell v. Home Depot U.S.A., Inc., No. 2010-1409, -1416 (Fed. Cir. Nov. 14, 2011).

The patentee of a radial arm saw guard sued an alleged infringer. The patentee prevailed before the jury on willful infringement and damages, and before the court on inequitable conduct, claim construction, enhanced damages, and attorney fees. The Federal Circuit affirmed on all these issues.

On inequitable conduct, the relevant facts are as follows: the alleged infringer hired the patentee to develop the radial arm saw guards for its stores. The patentee developed the device and offered samples, which the alleged infringer copied for production by a different manufacturer. Meanwhile, the patentee filed a patent application and a Petition to Make Special, seeking expedited review by the PTO because he thought he was obligated to supply devices to the alleged infringer. He failed to update the record when it became clear the alleged infringer had used a different manufacturer to supply the device. The alleged infringer argued this omission was inequitable conduct, but the district court balanced the equities in the patentee’s favor.

On appeal, the Federal Circuit affirmed, but used different reasoning in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011), which issued during the pendency of the appeal. In Therasense, the Federal Circuit established new “but-for” and “affirmative egregious misconduct” standards to determine whether a bad act is material to patentability, step one of the inequitable conduct determination. Therasense, at 1290. In the instant appeal, the Court found the patentee’s conduct (1) failed the but-for materiality standard and (2) “is not the type of unequivocal act . . . that would rise to the level of ‘affirmative egregious misconduct.’” In short, there is no inequitable conduct “[w]here . . . the patent applicant fails to update the record to inform the PTO that the circumstances which support a Petition to Make Special no longer exist.”

Judge Dyk, dissenting in part, disagreed only with the court’s analysis of willfulness, concurring in the inequitable conduct analysis.

A copy of the opinion can be found here.

    
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