Tuesday, October 12, 2010

Accused infringer attempts to find inequitable conduct in date within invention disclosure

Takeaway: In an attempt to render a patent unenforceable for inequitable conduct, an accused infringer looked to the Invention Disclosure Form for another patent owned by the patentee. The infringer argued that the patentee should have informed the PTO about the other patent because the Invention Disclosure Form showed that the other invention was publicly disclosed before the patent-in-suit, thus making it prior art. The district court found no inequitable conduct because the Invention Disclosure Form clearly described the disclosure date as an expected date of disclosure, and the infringer presented no evidence that an actual disclosure occurred before the filing of the patent-in-suit. Power Integrations, Inc. v. Fairchild Semiconductor Inter., 578 F.Supp.2d 698 (D.Del. 2008).

Details:
Power Integrations, Inc. v. Fairchild Semiconductor Inter., 578 F.Supp.2d 698 (D.Del. 2008)

Power Integrations sued Fairchild for patent infringement. A jury found several claims valid and willfully infringed. A bench trial was held on the issue of inequitable conduct for several of the patents-in-suit. 

With respect to one of the patents-in-suit, the '876 patent, Fairchild argued that Power Integrations failed to disclose to the PTO another Power Integrations patent by the same inventors, the '851 patent. Fairchild asserted that the '851 invention was publicly disclosed before the filing date of the '876 patent-in-suit, thus making it prior art under § 102(a) "known by others"

As evidence of a public disclosure date for the '851 invention, Fairchild pointed to a March 1998 date listed in the patentee's Invention Disclosure Form. Power Integrations countered this March 1998 date was merely an expected public disclosure date, and that public disclosure of the '851 invention did not actually occur until February 1999, after the application for the '876 patent-in-suit was filed.

The court found that March 1998 date relied on by Fairchild was clearly marked on the Invention Disclosure Form as "Expected Date of First Public Disclosure (Ex. Article, Customer Presentation, etc.)". The inventor signing the form testified that the date in question "is an expected date that the inventor or inventors enter as an earliest possible date that would be disclosed, just to give an indication to the attorney on the urgency of the patent ... It doesn't necessarily mean that it was disclosed at that date." The court found no evidence of an actual public disclosure of the '851 invention before the filing date of the '876 patent-in-suit, and thus granted the defendant's motion for Judgment of No Equitable Conduct for the '876 patent-in-suit.

The infringer raised another argument for why the '851 invention should have been considered prior art. The infringer argued that the the Invention Disclosure Form of the '876 patent-in-suit included Fig. 1 of the '851 patent in, and that the Form also described that figure as "prior art." This same figure was included in the patent application for the '876 patent-in-suit -- but was not labeled as "prior art." This inclusion, said the infringer, was an attempt to deceive the PTO, rather than acknowledging the '851 as prior art to the '876 patent-in-suit. The opinion contained no discussion of this issue.


My two cents: The case isn't interesting for it's outcome: the court reached the right result. But as with many other cases, I find the arguments raised by the parties to be of interest. Here, the infringer tried to make something of the dates on the Invention Disclosure Form. It was critical here that the Form clearly indicated Expected Date. I should think that would be enough, such that the inventor's testimony as to the meaning of "Expected Date" was just icing on the cake. But I wonder if the outcome could have been different if the label used on the form said something other than "Expected".

And what about the figure from the '851 patent showing up with the description "prior art" in the the Invention Disclosure Form of the '876 patent-in-suit? The court didn't comment on this. I say this should not be considered an admission of prior art, because "prior art" is a legal term and inventors throw it around without appreciating the significance of the term.

On the other hand, what if an inhouse patent attorney signed the Form too? The inhouse attorney knows the term has significance. So does that extra fact turn it into an admission?

6 comments:

  1. "And what about the figure from the '851 patent showing up with the description "prior art" in the the Invention Disclosure Form of the '876 patent-in-suit? The court didn't comment on this. I say this should not be considered an admission of prior art, because "prior art" is a legal term and inventors throw it around withoutt appreciating the significance of the term."

    Now who's making scary comments!

    The "prior art"-admission rule only applies, I believe, to admissions made before the PTO. It certainly applies to registered practitioners - I am not sure about inventors.

    I've never liked the rule anyway - it's far too harsh.

    In any case, the rule doesn't, and it shouldn't, apply to what inventors, or even their lawyers, say among themselves, or within their respective corporations. Right?

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  2. >"prior art"-admission rule only applies, I
    >believe, to admissions made before the PTO.
    >It certainly applies to registered
    >practitioners - I am not sure about inventors.

    I haven't read this case yet, but it seems relevant:

    In re Nomiya , 509 F.2d 566, 571 n.5 (CCPA 1975) (It is a ““basic proposition that
    a statement by an applicant, whether in the application or in other papers submitted during prosecution, that certain matter is ‘‘prior art’’ to him, is an admission that that matter is prior art for all purposes...””).

    I read "Applicant" as including inventors. Don't know if the reference to "prosecution" is meant to exclude non-pros contexts.

    >rule doesn't, and it shouldn't, apply to
    >that inventors, or even their lawyers, say
    >among themselves, or within their respective
    >corporations. Right?

    Well, I don't know if there is a specific rule dealing with this situation. Perhaps the "admitted prior art" doctrine is in fact limited to statements made in prosecution.

    But statements made by inventors can be damaging. That's exactly why we have discovery and depositions. So even if an inventor's statement about "prior art" isn't an admission under the specific "prior art admissions" rule, it might be damaging under a more general rule. Even if not considered an admission, it could be damaging testimony, depending on what the fact finder made of it.

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  3. Why does the inventor's statement of filing date matter here, even if the term "expected" were not there? Any alleged-intentional non-disclosure would not be material, knowing what we do now about the actual filing date. What additional facts am I missing?

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  4. You're right that the inventor can bind himself to the PTO with prior art admissions just as much as a registered practitioner.

    "in the application or in other papers submitted during prosecution" is pretty clear that the admission must be submitted to the PTO during prosecution.

    The more interesting question, I think, is whether the rule should be modified or expanded to include non-pros contexts. I would say absolutely not - it's bad policy. But maybe you and others feel differently.

    In my view it is already way too hard to get a patent, and way too easy to kill it.

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  5. >Any alleged-intentional non-disclosure would
    >not be material, knowing what we do now about
    >the actual filing date.

    Not true. The "Public Disclosure" date at issue on the Invention Disclosure Form was before the filing date of the patent-in-suit. And so would have made the invention on the Form prior art under 102(a) "known by others".

    >What additional facts am I missing?

    None. But perhaps the explanation in my post wasn't clear about 102(a) "known by others." Perhaps I'll revise my post.

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  6. >"in the application or in other papers
    >submitted during prosecution" is pretty clear
    >that the admission must be submitted to the
    >PTO during prosecution.

    OK, I'll agree until proven otherwise that the Admitted Prior Art doctrine expressed in In re Nomiya applies to prosecution only.

    >whether the rule should be modified or
    >expanded to include non-pros contexts.

    Definitely not. I say that because a statement made in prosecution is made by a patent practitioner who *knows* the ramifications of calling something "prior art."

    As I said before, inventors don't realize that and throw around the term "prior art" carelessly. As it stands, if an inventor's characterization of something as "Prior Art" is discovered in litigation -- as happened in Power v. Fairchild -- the fact finder can decide what to make of that statement. But hopefully the patentee's attorney will explain why the inventor's characterization should be discounted.

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