Baker & Daniels’ Trevor Carter, a Practice Center Contributor, recently passed along this article that he co-authored with colleague Andrew McCoy on the August 6th Federal Circuit decision, Ring Plus, Inc. v. Cingular Wireless Corp., 09-1537.
In Ring Plus, Inc. v. Cingular Wireless Corp., No. 2009-1537 (Fed. Cir. Aug. 6, 2010), the Federal Circuit reversed a final judgment of inequitable conduct and found that the prosecuting attorney of U.S. Patent No. 7,006,608 (“the ‘608 Patent”) did not intend to deceive the PTO.
While we do not believe this article is biased, we note that we are counsel in a pending Federal Circuit appeal involving inequitable conduct. See, Joovy LLC v. Target Corp., No. 2010-1323 (Fed. Cir.) We represent Target and were successful in obtaining a final judgment of unenforceability due to inequitable conduct at the district court.
In Ring Plus, the district court found two instances of inequitable conduct, both involving material misrepresentations: one in an amendment made during prosecution, and the other within the Background section of the ‘608 Patent. The Federal Circuit reversed the district court’s ruling that the amendment amounted to a material misrepresentation, but affirmed the finding that the following statement in the Background section was a “highly material” misrepresentation regarding U.S. Pat. No. 4,811,382 (“Sleevi”) and U.S. Pub. No. 2001/0051517 (“Strietzel”): “in each of the aforesaid [Strietzel and Sleevi references], there is no algorithm or software proposed for operating the telephone system. Thus, Strietzel and Sleevi both propose hardware based systems, but no software to operate those systems.” (emphasis added.)
Contrary to this statement, the district court found that Strietzel and Sleevi both disclosed software-based algorithms. While the Federal Circuit panel agreed with this finding, it took issue with the district court’s conclusion that Strietzel and Sleevi unambiguously disclose software for operating a telephone system. While neither reference explicitly discloses software, they describe components that are generally understood by persons of skill in the art to be associated with computers and software. The materiality finding was supported by deposition testimony from the prosecuting attorney in which he testified that Strietzel and Sleevi would be operated, at least in part, by software; the attorney’s deposition testimony that Strietzel and Sleevi were among the most relevant prior art references; and by a patentability opinion from the attorney in which he informed the applicant that Strietzel and Sleevi were the most pertinent prior art references and, as such, would “fairly well preclude broad patent protection.”
The district court also found that the attorney acted with deceptive intent. The district court gave little weight to the fact that Strietzel and Sleevi were disclosed in the Background, as well as the prosecuting attorney’s testimony that he believed the statement in the Background to be accurate because the references are ambiguous and insufficiently detailed on disclosing software. The district court found the attorney’s testimony not plausible and, therefore, held that the single most reasonable inference to be drawn was that he intended to deceive the PTO. The Federal Circuit reversed, noting that “the [District] Court premised its finding of intent almost entirely on its view that the references unambiguously disclose software. We disagree that the disclosure of software is so plain.” And the Federal Circuit concluded that Cingular failed to present any evidence to rebut the prosecuting attorney’s testimony that he, in good faith, believed that Strietzel and Sleevi were ambiguous on disclosing software.
Tags: Federal Circuit, inequitable conduct, intent to deceive, materiality, noninfringement, PTO, Ring Plus v. Cingular wireless
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