Recent Federal Circuit Cases Addressing Inequitable Conduct and the Duty of Candor

Name: Recent Federal Circuit Cases Addressing Inequitable Conduct and the Duty of Candor
Start: 2014-04-24T00:00:00Z
End: 2014-04-24T00:00:00Z

April 24, 2014

Webinar

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Intellectual property lawyers need to keep current with the growing body of case law from the Federal Circuit. The Court’s decisions can affect a company’s IP portfolio strategy on many levels in significant, and sometimes subtle, ways. Some decisions have particular importance and deserve a closer look.

Please join our panelists as they discuss decisions related to inequitable conduct and the duty of candor before the U.S. Patent and Trademark Office (PTO) and its Patent Trial and Appeal Board (PTAB), including considerations for fulfilling the duty of candor in light of the America Invents Act’s (AIA) new post-grant proceedings and concurrent adjudication before the PTAB and in district court:

Ohio Willow Wood v. Alps South (2013)

The Court held that factual issues existed regarding whether Ohio Willow Wood’s counsel withheld material information and made material misrepresentations with intent to deceive during an appeal to the PTAB in a reexamination proceeding in light of discovery information in a parallel district court litigation.

Wireless v. HTC (2013)

The Court held that Intellect Wireless’s counsel had failed to cure false statements regarding an actual reduction to practice of the invention made by the inventor during prosecution before the PTO.

Network Signatures v. State Farm (2013)

In a split decision, the Court held that the use of a standard PTO form claiming unintentional delay in filing maintenance fees, without disclosing that the delay occurred pursuant to a policy of intentionally abandoning non-commercially viable inventions, did not establish withholding material information with intent to deceive.

Judge Clevenger dissented, arguing that materiality was established by the attorney’s use of the FDA form statement of unintentional delay without disclosure of the underlying facts and that the question of intent should go to trial.