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Adverse Decision of One Examiner Is Material Information for Application with Substantially Similar Claims Before Another Examiner

May 23, 2003

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Last Month at the Federal Circuit - June/July 2003

Judges: Dyk (author), Mayer, and Michel

In Dayco Products, Inc. v. Total Containment, Inc., No. 02-1497 (Fed. Cir. May 23, 2003), the Federal Circuit reversed the district court’s grant of SJ of unenforceability and invalidity in favor of Defendant, Total Containment, Inc. (“TCI”), and remanded the case for trial.

Dayco Products, Inc. (“Dayco”) sued TCI for infringing certain claims of U.S. Patent Nos. 5,199,752 (“the ‘752 patent”), 5,297,822 (“the ‘822 patent”), 5,380,050 (“the ‘050 patent”), 5,129,686 (“the ‘686 patent”), and 5,486,023 (“the ‘023 patent”) (collectively “the patents-in-suit”), which are directed to flexible hoses and coupling assemblies that connect to each other for use in underground gascontainment systems.

In a prior decision, the district court had granted SJ of noninfringement in favor of TCI. The Federal Circuit, however, reversed-in-part, affirmed-in-part, and remanded that decision.

On remand, the district court again granted SJ in favor of TCI, this time on the ground that the patents-in-suit were unenforceable due to inequitable conduct during prosecution and for invalidity. The district court found inequitable conduct because the attorney that prosecuted the patents-in-suit failed to disclose the existence of a similar copending application and adverse office actions in that application.

The Federal Circuit held that this information was material, finding that the similar copending application could have led to a double-patenting rejection. In addition, for the first time, the Federal Circuit held that a contrary decision of another examiner reviewing a substantially similar claim is material information. The Federal Circuit reasoned that patent disclosures are often very complicated, and different examiners with different technical backgrounds and levels of understanding may often differ. Although examiners are not bound to follow other examiner’s interpretations, the Federal Circuit commented that knowledge of a potentially different interpretation was clearly information that is material because an examiner could consider it important when examining an application.

However, the Federal Circuit held that it was not improper for the district court to conclude on SJ that Dayco intentionally deceived the PTO. The Federal Circuit emphasized that inequitable conduct requires an intent to deceive, which cannot be inferred simply from a decision to withhold a reference. The Court also found that certain facts indicated that Dayco did not have an intent to deceive the PTO and had a plausible explanation as to why the reference was withheld.

As to the district court’s SJ of invalidity, the Federal Circuit found that TCI had failed to provide evidence as to why a missing element was necessarily or inherently present in the prior art. In addition, the Federal Circuit found that the district court had improperly grouped the claims and failed to address validity on a claim-byclaim basis. The Federal Circuit emphasized that where claims differ in scope in an aspect material to the analysis, those claims must be addressed individually.