Withheld offer for sale renders patents unenforceable for inequitable conduct

GS CleanTech v. Adkins Energy was decided on March 2, 2020 on appeal from the Northern District of Illinois. The Patents-in-Suit are “directed to the recovery of oil from a dry mill ethanol plant’s byproduct, called thin stillage.” The district court determined on summary judgment that defendant Adkins did not …

Federal Circuit on finding materiality for inequitable conduct after Therasense

To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO. Therasense v. Becton, Dickinson and Co. (en banc). The accused infringer must prove both elements — intent and materiality — by clear and convincing evidence. Id. A district court should not use a …

It was error to award all requested fees without causal connection between the misconduct and the award

Rembrandt v. Comcast was decided on July 27, 2018 on appeal from the District of Delaware. After several years of litigation by plaintiff Rembrandt “against dozens of cable companies, cable equipment manufacturers, and broadcast networks,” the district court “entered final judgment against Rembrandt as to all claims.” After an adverse claim construction, …

Courts may deny fees after finding inequitable conduct but must explain

Energy Heating v. Heat On-The-Fly was decided on May 4, 2018 on appeal from the District of North Dakota. Before trial, the district court granted summary judgment in declaratory plaintiff Energy’s favor, dismissing some of declaratory defendant Heat’s infringement claims, and finding Heat’s asserted patent obvious. The jury found liability under …

Post hoc litigation misconduct supports adverse inference of specific intent to deceive the PTO

Regeneron v. Merus was decided on July 27, 2017 on appeal from the Southern District of New York. There, the district court held the asserted patent invalid because of plaintiff Regeneron’s inequitable conduct during prosecution. The district court first found that Regeneron withheld four references from the USPTO that were material. (The withheld references …

No inequitable conduct because the examiner had available the info from the withheld docs

U.S. Water v. Novozymes was decided on December 15, 2016 on appeal from the Western District of Wisconsin. The patents relate to the production of ethyl alcohol (ethanol) from milled grain. The district court held the asserted claims invalid as inherently anticipated, and denied defendant Novozymes’s summary judgment motion as to inequitable conduct. The …

Treble attorney fees for defending against a fraudulently obtained patent

TransWeb v. 3M was decided on February 10, 2016 on appeal from the District of New Jersey.  Prior than one year before the priority date of the asserted patents, defendant TransWeb’s founder handed out samples (that were arguably prior art) at an industry exposition. The jury found plaintiff 3M’s patents invalid …