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 court found no materiality or intent. Both parties appealed.
The Federal Circuit vacated the summary judgment grant of inherent anticipation, and affirmed the district court finding of no inequitable conduct.
To show inequitable conduct, the defendant must show that “the patent applicant made misrepresentations or omissions material to patentability, that he did so with the specific intent to mislead or deceive the USPTO, and that deceptive intent was the single most reasonable inference to be drawn from the evidence.” To prove materiality, one must show that the patentee withheld or misrepresented information that would otherwise have prevented a patent claim from issuing. “A finding of inequitable conduct as to any single claim renders the entire patent unenforceable and may render unenforceable other related patents and applications in the same technology family.”
The Federal Circuit affirmed the finding of no materiality. The patents-in-suit (two were asserted) are continuations of the application that also led to a related patent that was not asserted against Novozymes (patent X). To overcome an examiner obviousness rejection, plaintiff US Water narrowed its proposed claims of patent X to add the enzyme after fermentation (the prior art added the enzyme before). Patent X issued. Around the same time, US Water was involved in a litigation regarding Patent X in which it argued that adding the enzyme during fermentation was equivalent to adding it after fermentation. US Water withheld these litigation documents from the USPTO during the prosecutions of the patents-in-suit. During the Patent X litigation, US Water amended the continuation application that led to one of the patent-in-suit. The amended claims broadened the time to add the enzyme, and they identified the differences with Patent X. During prosecution of the other patent-in-suit, a third party identified to the USPTO the distinction between the patent-in-suit and Patent X, noting that the claims of the patent-in-suit were not limited by when the enzyme was added.
Defendant did not show materiality. The amendment of the continuation application of the patent-in-suit set out the amended claims with differences with Patent X highlighted. So it “would have been amply clear” to the examiner that the patentees were seeking a claim that was broader than Patent X in the sense that the after-fermentation limitation was removed. Further, the third-party submission provided one more reason that the examiner knew she had to evaluate the allowability of the broader claims over the prior art. Because of this submission, the record showed that the examiner was aware of the differences between the pending claims of the patents-in-suit and Patent X (the unasserted patent). The examiner reviewed the third-party’s submission and the relevant prior art, and found that the evidence didn’t affect the ultimate patentability determination. US Water did not withhold or misrepresent information to the USPTO. Because there was no materiality, the Federal Circuit didn’t address intent.
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