A Prelude to Therasense
Optium alleged that the inventors of the Emcore patents committed inequitable conduct by failing to disclose a 1994 article by Willems et al., which was cited by the inventors in an internal research report prepared in February 1997 and in the background section of an invention disclosure form. A patent application was filed in February 1998, and though Emcore's patent attorneys identified several references in an Information Disclosure Statement and the Examiner cited additional references, the Willems article was not cited during prosecution of the original patent application or the continuation application. Emcore did not dispute that the inventors had knowledge of the Willems article. Although Optium did not have any evidence of an intent to deceive the Patent Office, it asserted that deceptive intent can be presumed from the high materiality of the Willems article absent contrary evidence from the applicants, e.g., an explanation as to why the Willems article was not disclosed. The district court granted summary judgment of no inequitable conduct based on Optium's failure to provide any evidence on which deceptive intent could be determined or reasonably inferred.
The Federal Circuit affirmed the district court's grant of summary judgment, explaining that inequitable conduct requires proof of materiality and intent to deceive by clear and convincing evidence. For the purposes of its analysis, the Court assumed that the Willems article was "highly material," leaving the determination of whether there was an intent to deceive the Patent Office. The Court held that intent cannot be inferred solely from the fact that information was not disclosed, and materiality of a reference cannot be sufficient to prove deceptive intent. Optium asserted that the alleged "high materiality" of the Willems article relieved it of the burden to produce any affirmative evidence of intent and instead required Emcore to provide a credible explanation for the nondisclosure. However, the Court held that such a shift in the burden is contrary to Federal Circuit precedent.
Judge Prost filed a concurring opinion noting that the majority opinion seems to imply that a high level of materiality and knowledge are entirely irrelevant to an inference of intent. Judge Prost explained that such a reading is contrary to Federal Circuit precedent, and a proper rationale for the Court's holding should have been: if a reference is of very high materiality, and it is shown that the patentee knew of the reference and appreciated its high level of materiality, and the patentee can offer no good faith explanation as to why the reference was withheld, then a district court may find such circumstantial evidence to be enough to support a finding of intent to deceive.
