Synovis Life Technologies Inc. v. W.L. Gore & Associates, Inc., D. Mn. (07-CV-1396) (order March 19, 2009)
During litigation, Defendant asserted that Plaintiff made affirmative misrepresentations to the PTO in the application leading up to the patent-in-suit. During prosecution, the PTO rejected some claims on indefiniteness and others on prior art. With regard to the indefinite claims, the Examiner specified features, that, in the Examiner's opinion, distinguished the claims over the cited art of record. The Examiner further indicated that these claims would be allowed once the 112(2) issues were addressed.
A personal interview was conducted where certain features were incorporated into the independent claims, including "the discussion found in paragraph  of the application as published." Amendments were made, and the application was allowed.
The Defendant contended that the amendments relying on "paragraph " were affirmative misrepresentations because the new language did not have antecedent support. This argument was further supported by deposition testimony in which one of the inventors admitted that the arrangement referred to in the paragraph would not work as stated in the context of the claims. Thus, Defendants alleged that the patentee
materially and substantially deviated from the language of paragraph 0018 of the published application when submitting new application claims 41 and 45, failed to apprise the examiner of such deviations, and indeed affirmatively misrepresented to the examiner that claims 41 and 45 had antecedent support . . . knowing such representation to be false.Defendant moved to amend its Answer and Counterclaim to assert the defense of inequitable conduct. In granting the motion, the district court stated
“[M]ateriality is not limited to prior art” but embraces any information that a reasonable examiner would be substantially likely to consider important in deciding to allow the patent . . . Plaintiff challenges the materiality of the misstatement because the PTO “had all the information it needed to determine if the statement was accurate.” At the hearing, Plaintiff asserted that if the examiner had the information to determine whether the information provided by an applicant was true or a misstatement, then the information is not material. This Court has not found any cases setting out such a bright-line test and analogous cases do not support Plaintiff’s proposed rule.
It is clear that a misrepresentation that is contradictory to information that is not presented to the examiner is an intentional material misrepresentation. . . . It is a much closer question when the patentee makes a statement contradictory to information that is actually before the PTO.
[T]his Court cannot adopt or apply a bright-line rule that, if the PTO had the information to ascertain the veracity of the alleged misstatement, the misstatement is not material. Instead, the issue of materiality must be decided on a case-by-case basis. Because of the procedural posture of this motion, this Court, for instance, does not know whether the examiner actually looked at and considered the specification after the amended application. On the other hand, the Court acknowledges that considering and reviewing the specification is fundamental to the patent approval process . . . While the Defendant faces a heavy burden to establish at trial that the alleged misrepresentation was material – at this stage, the Court cannot make that determination. Accordingly, based on this record, this Court cannot find that the proposed affirmative defense of inequitable conduct is futile as a matter of law. Instead, the Court will grant the motion and allow the parties to address the adequacy of the defense at a later time.