Intellect Wireless, Inc. v. HTC Corp.: Misrepresentation to PTO renders patent unenforceable
In a case that should serve as a warning to anyone looking to overcome Office Actions by making misleading or false statements to the PTO, an infringement action was dismissed after a patent was found unenforceable due to inequitable conduct during its prosecution.
A patent involving wireless transmission of caller identification information, owned by Intellect Wireless, Inc. was held unenforceable due to inequitable conduct. The court noted in their decision: “To prove inequitable conduct, the challenger must show by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive.” Furthermore, “[w]here a patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit, the misconduct is material and the patent will be unenforceable.”
The court found that the misconduct was material in nature because, during the course of prosecution, the inventor had filed a declaration, which the court determined to be false, in which the inventor claimed that his invention was actually reduced to practice and demonstrated at a meeting in July of 1993, in order to overcome a prior art reference cited against the claims of the invention. Because Intellect was not able to show that neither the inventor nor the patent attorney advised the PTO about the misrepresentation (as required to cure misconduct), materiality was established.
To make matters worse, statements that were made during the course of prosecuting other related patents, within the same patent family, included another declaration by the inventor, stating that he had constructed smartphones that “displayed . . . message information transmitted via the wireless network” thereby representing to the PTO that the invention had been reduced to practice on that earlier date. However, the court found that was not the case—the “smartphones” shown during those meetings only contained pre-loaded images for the purpose of demonstration and the “smartphones” were actually imitation phones constructed out of wood, with pre-loaded images. The court goes on to say: “To be clear, the wood and plastic imitation smartphones were not capable of performing the claimed functions.”
The court concluded that there was a pattern of deceptive statements made through the prosecution of the patent in question, and other related patents, enough to clearly indicate that there was intent to deceive the PTO.
So what can be done if an inventor provides misleading or misrepresenting statements, and you file an application only to find out later on that you have made a misrepresentation to the PTO? Well, the court pointed out that “when an applicant files a false declaration, we require that the applicant expressly advise the PTO of [the misrepresentation’s] existence, stating specifically wherein it resides.” Further, “if the misrepresentation is of one or more facts, the PTO [must] be advised what the actual facts are.” Finally, the applicant must “take the necessary action . . . openly. It does not suffice that one knowing of misrepresentations in an application or in its prosecution merely supplies the examiner with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate his own conclusions.”
In other words, be clear as to what the real facts actually are- even if it means being unable to overcome a rejection.
Saul Acherman
Attorney at
JAFARI LAW GROUP®, INC.