Thursday, February 15, 2007

"Good Faith" of Patentee Not Relevant to Finding of Inequitable Conduct

Cargill v. Cambra Foods (06-1265) - February 14, 2007

During the prosecution of Cargill's patents on special types of canola oil, Cargill had in its possession a report and test data regarding the subject matter being patented. When the application was initially rejected, Cargill successfully argued that the prior art failed to demonstrate certain stability characteristics possessed by the claimed invention.

When Cargill asserted its patents against Cambra, it was learned that the report and test data was not submitted to the USPTO. Moreover, the district court found that the report and test data contradicted Cargill's USPTO arguments on the claimed stability characteristics. As the information was found to be "highly material," the court found the patent unenforceable due to inequitable conduct.

Cargill argued that the data contained in the report is not material because the tests underlying the report were performed under unusual conditions and were not comparable to the data submitted to the examiner. Cargill also argued that, because the data did not set forth any testing conditions, it too could not be compared with the data before the examiner.

The CAFC rejected those arguments:

Even accepting as true the factual premises of those arguments, the documents withheld during prosecution remain material. "[M]ateriality is determined from the viewpoint of a reasonable patent examiner, and not the subjective beliefs of the patentee" . . . A reasonable examiner would certainly want to consider test data that is directly related to an important issue of patentability, along with the applicant’s interpretation of that data. Whether the examiner would have ultimately allowed the patent to issue is irrelevant because "[u]nder the ‘reasonable examiner’ standard, a misstatement or omission may be material even if disclosure of that misstatement or omission would not have rendered the invention unpatentable."
As for intent to deceive, Cargill submitted that the district court found that the applicant had a good faith belief that the withheld test data did not need to be disclosed to the examiner. As such, this factor would weigh in Cargill's favor against finding inequitable conduct. Again, the CAFC disagreed, and reminded everyone that if you are in doubt, disclose, disclose, disclose!
While gently suggesting that the applicant perhaps honestly believed [the product] to be a patentable invention, the court nevertheless expressly held that the applicant knowingly misled the PTO about the available evidence. Even if there were a mitigating explanation for the withheld data, it was no excuse for the applicant’s purposeful omissions in this case. "Close cases should be resolved by disclosure, not unilaterally by the applicant" . . . That rule is drawn from the policy that "applicants [should] continue to submit information for consideration by the Office in applications rather than making and relying on their own determinations of materiality."

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