July 2011

Spotlight Info

In American Calcar, Inc. v. American Honda Motor Co., Nos. 09-1503, -1567 (Fed. Cir. June 27, 2011), the Federal Circuit vacated the district court’s decision on inequitable conduct and remanded for consideration of inequitable conduct under the guidelines set forth in the recent case, Therasense v. Becton, Dickinson & Co., No. 08-1511 (Fed. Cir. May 25, 2011) (en banc).  American Calcar, Inc. (“ACI”), holder of patents relating to various aspects of vehicle computer systems, asserted its patents against American Honda Motor Company, Incorporated (“Honda”).  In finding inequitable conduct, the district court required less evidence of intent to reach a finding of inequitable conduct because certain withheld information was highly material. 

On appeal, the Federal Circuit restated the but-for materiality standard announced in the Therasense decision.  Applying this standard, the Court agreed with Honda that certain withheld information was material, because the jury found the asserted claims anticipated by that information.  With respect to a second reference, the Court was not able to infer a finding of materiality from the district court’s opinion and thus remanded the issue.  Turning to the intent prong, the Federal Circuit concluded that the district court applied an incorrect standard under Therasense.  Since the district court made no holding that any of the inventors knew that the withheld information was in fact material and made a deliberate decision to withhold it, the Court vacated the district court’s finding of intent and remanded the issue.  See the full summary in this issue.