United States Court of Appeals for the Federal Circuit 2009-1216, -1254
AVID IDENTIFICATION SYSTEMS, INC.,
Plaintiff-Appellant,
v.
THE CRYSTAL IMPORT CORPORATION, DATAMARS SA and DATAMARS, INC.,
Defendants.
John W. Thornburgh, Fish & Richardson P.C., of San Diego, California, for plaintiff-appellant. With him on the brief were Juanita R. Brooks, Roger A. Denning, and Michael A. Amon.
K.T. Cherian, Howrey LLP, of San Francisco, California, for amicus curiae Allflex USA, Inc. With him on the brief were Ronald S. Wynn; and Richard L. Stanley, of Houston, Texas.
Appealed from: United States District Court for the Eastern District of Texas
Judge T. John Ward United States Court of Appeals for the Federal Circuit 2009-1216, -1254
THE CRYSTAL IMPORT CORPORATION, DATAMARS SA and DATAMARS, INC.,
Appeals from the United States District Court for the Eastern District of Texas in case no. 2:04-CV-183, Judge T. John Ward.
__________________________
DECIDED: April 27, 2010 __________________________
Before MAYER, LINN, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST. Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge LINN.
PROST, Circuit Judge.
Avid Identification Systems Inc. (“Avid”) brought suit against Datamars SA and its
subsidiary Crystal Import Corporation (collectively “Datamars”) alleging infringement of
Avid’s U.S. Patent No. 5,235,326 (“the ’326 patent”) directed to a multi-mode radio-
frequency identification system for reading encoded biocompatible chips. The patent
was found valid and infringed, but held to be unenforceable for inequitable conduct.
This appeal challenges the district court’s finding of inequitable conduct. In reviewing
the district court’s finding, we address which individuals are “substantively involved” in
the preparation or prosecution of a patent application and thus owe a duty of candor and good faith to the Patent and Trademark Office under 37 C.F.R. § 1.56. We affirm
the finding of the district court.
BACKGROUND
Avid is a small, closely held company that designs and markets biocompatible
radio frequency identification chips for implantation in animals. Avid markets its chips to
pet owners as a way of increasing the chances that an estranged companion animal will
be identified and reunited with its family. Avid markets devices for reading its chips to
animal hospitals and shelters.
Avid’s founder and president, veterinarian Dr. Hannis Stoddard, testified that he
decided to form the Avid corporation after visiting an animal shelter to reclaim his own
lost dog. He explained that most animals at the shelter were clearly lost pets, but there
was no way to find their homes. Dr. Stoddard made it his mission to implement a better
system of dealing with the identification and processing of recovered animals. He and a
colleague, Peter Troesch, formed Avid for the purpose of carrying out Dr. Stoddard’s
mission.
When the company first started, Avid purchased unencrypted identification chips
from a supplier, relabeled them, and sold them as a marketer and distributor. The
company discontinued its resale business model in around 1985 because Dr. Stoddard
wanted Avid to develop its own technology. Specifically, Stoddard wanted Avid to
develop a chip and reader system, where the reader could read both the unencrypted
chips currently on the market as well as encrypted chips that Avid produced. Stoddard
hired at least three engineers, Dr. Polish, Dr. Malm, and Mr. Beigel, to carry out this
objective. By about 1990, these engineers developed an encrypted identification chip
2009-1216, -1254 2 that could be read by a reader programmed with Avid’s decryption code. They also
developed a “multi-mode” reader that could read both Avid’s encrypted chip and
traditional unencrypted chips.
Dr. Stoddard demonstrated some of Avid’s technology at a U.S. Livestock
Committee trade show in around April of 1990. In August of 1991, Avid filed for the ’326
patent on a multi-mode encrypted chip and reader system, where the reader can read
both unencrypted chips and Avid’s encrypted chips. The inventors named on the
application were Polish, Malm, and Beigel. Dr. Malm was also listed as the prosecuting
attorney. A few days before the patent application was filed, the inventors assigned
their rights to Avid. Dr. Stoddard signed the small entity status affidavit filed with the
patent. Avid was also pursuing European patent rights for its encrypted chip and reader
system during this time. The ’326 patent issued in August of 1993.
Datamars is a competitor of Avid in the companion animal identification chip
market. Avid brought suit against Datamars and several other competitors in 2004
alleging infringement of its ’326 patent, as well as unfair competition and false
advertising claims. The other defendants settled their claims with Avid. The case
against Datamars proceeded to trial and a verdict.
The jury found the ’326 patent willfully infringed and not invalid, and found in
favor of Avid on the unfair competition and false advertising claims. The jury awarded
Avid $26,981 on the patent infringement claim and $6 million on the unfair competition
claim. Following the trial, Datamars filed a motion to hold the patent unenforceable for
inequitable conduct. The district court granted the motion, without trial, finding that Dr.
Stoddard’s trade show demonstration was material prior art under 35 U.S.C. § 102(b)
2009-1216, -1254 3 and that information regarding the demonstration was withheld from the U.S. Patent and
Trademark Office (“PTO”) with deceptive intent. Specifically, the district court found that
Dr. Stoddard owed a duty of candor to the PTO.
After this ruling on inequitable conduct, the parties entered into a settlement
agreement. Pursuant to the terms of the agreement, the parties stipulated to a
dismissal of all claims other than those related to the ’326 patent, the payment for unfair
competition was reduced to $3 million, Avid filed an unopposed motion for
reconsideration of the district court’s inequitable conduct decision, and Datamars
agreed not to contest the standing, jurisdiction, mootness, or case and controversy of
the inequitable conduct decision on appeal to this court. In the event that Avid prevailed
on reversing the inequitable conduct determination on motion for reconsideration or on
appeal to this court, Datamars agreed to pay the $26,981 previously awarded by the
jury for infringement of the ’326 patent.
The district court dismissed the unopposed motion for reconsideration of the
inequitable conduct decision, finding that there was no case or controversy between the
parties. The district court explained that the terms of the settlement agreement explicitly
precluded Datamars from opposing the motion for reconsideration in any way, thus
eliminating any adversity between the parties on all matters before the district court.
The district court noted in its opinion that Avid argued, for the first time on
reconsideration, that Dr. Stoddard did not have a duty of candor before the PTO.
Avid timely appealed the district court’s determination of inequitable conduct to
this court. Datamars did not file a brief in response.
2009-1216, -1254 4 DISCUSSION
There are two issues before this court on appeal: first, whether the court has
jurisdiction to decide the issue of inequitable conduct, and second, if we do have
jurisdiction, whether the district court abused its discretion in holding the ’326 patent
unenforceable for inequitable conduct. We discuss each in turn.
I. Case and Controversy
As a preliminary matter, we must determine whether the issue of inequitable
conduct is properly before this court. The mere fact that Datamars agreed with Avid not
to dispute standing, jurisdiction, mootness, and case or controversy in this appeal does
not thereby give Avid standing or this court jurisdiction. Similarly, it does not create a
case or controversy where one would not otherwise exist. This court must always
determine for itself whether it has jurisdiction to hear the case before it, even when the
parties do not raise or contest the issue. Special Devices, Inc. v. OEA, Inc., 269 F.3d
1340, 1342 (Fed. Cir. 2001); View Eng’g, Inc. v. Robotic Vision Sys., Inc., 115 F.3d 962,
963 (Fed. Cir. 1997).
Amicus Allflex argues that Avid’s appeal is mooted by the settlement agreement
between Avid and Datamars. Allflex argues that the provision of the settlement carving
out the ’326 patent and making the $26,981 payment contingent on the outcome of this
appeal is not enough to preserve a controversy between the parties. Allflex argues that
Datamars has no further interest in the disposition of this case, and that the $26,981
“side bet” is a nominal gesture in light of the $3 million in consideration to Datamars for
agreeing not to oppose reconsideration below or the procedural appropriateness of the
appeal.
2009-1216, -1254 5 For the reasons stated in the district court’s opinion dismissing Avid’s motion for
reconsideration, we agree with the district court that the terms of Avid’s settlement
agreement with Datamars eliminated any case or controversy before the district court
regarding the motion for reconsideration. The settlement agreement’s limitations on
Datamars’s ability to oppose Avid’s efforts on appeal, however, are different from the
agreement’s limitations on Datamars’s ability oppose Avid’s motion for reconsideration.
As a result of these differences, there is still a live controversy between the parties on
A live controversy still exists because Datamars remained free under the
settlement agreement to oppose this appeal on the merits. See, e.g., Kimberly-Clark
Corp. v. Proctor & Gamble Distributing Co., 973 F.2d 911, 913-14 (Fed. Cir. 1992).
That it chose not to submit a brief does not deprive this court of jurisdiction over the
issues on appeal. Similarly, Datamars’s agreement not to contest the procedural
appropriateness of the appeal does not release this court from its legal obligation to
determine procedural appropriateness sua sponte. See Johannsen v. Pay Less Drug
Stores N.W., Inc., 918 F.2d 160, 161 (Fed. Cir. 1990). Both the merits and procedure
are therefore issues before the court on appeal.
Although the $26,981 riding on the outcome of the appeal may be dwarfed by the
other monetary provisions of the settlement agreement, this amount is not a token or
arbitrary sum introduced for the purpose of manufacturing a controversy. It represents
the entirety of the jury award for patent infringement, which Datamars would have been
legally obligated to pay to Avid if the ’326 patent were not held unenforceable.
2009-1216, -1254 6 For these reasons, we conclude that there remains a live controversy between
the parties on the issue of unenforceability of the ’326 patent, and that this court has
jurisdiction to decide the case under 28 U.S.C. § 1295(a)(1). We now turn to the merits
of the issues presented.
II. Inequitable Conduct
A party may show inequitable conduct by producing clear and convincing
evidence of (1) material prior art, (2) knowledge chargeable to the patent applicant of
prior art and its materiality, and (3) the applicant’s failure to disclose the prior art to the
PTO with intent to mislead. FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 (Fed.
Cir. 1987). Information is material if there is a “substantial likelihood that a reasonable
examiner would consider it important in deciding whether to allow the application to
issue as a patent.” J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 1559 (Fed. Cir.
1984).
This court reviews the ultimate determination of inequitable conduct under an
abuse of discretion standard. Kingsdown Med. Consultants Ltd. v. Hollister Inc., 863
F.2d 867, 876 (Fed. Cir. 1988) (en banc in relevant part). The underlying findings on
materiality and intent are reviewed for clear error and will not be disturbed on appeal in
the absence of a “definite and firm conviction” that a mistake has been made. Id. at
872.
In the present appeal, Avid challenges the district court’s finding that the trade
show demonstration was material and that Dr. Stoddard had a duty of candor to
disclose this information. Avid does not dispute on appeal that Dr. Stoddard withheld
2009-1216, -1254 7 the information with specific intent to deceive the PTO for the purposes of obtaining a
patent. We thus turn to the issues of materiality and duty of candor.
A. Materiality
In evaluating materiality, this court typically refers to the definition provided in 37
C.F.R. § 1.56, by which the PTO promulgated the duty of disclosure. See Astrazeneca
Pharm. LP v. Teva Pharm. USA, 583 F.3d 766, 773 (Fed. Cir. 2009). Information is
material where a reasonable examiner would find it important to a determination of
patentability. Id.
On appeal, Avid argues that the district court’s finding of materiality was clearly
erroneous because Dr. Stoddard’s trade show demonstration related to a precursor
product that did not contain all of the elements of the ’326 patent claims. Avid’s
arguments against materiality focus on the fact that a jury was presented with the trade
show information and still found the patent not invalid. Avid concludes that the jury
must have found that the trade show demonstrations were not § 102(b) prior art. Such
arguments, however, confuse the concepts of “material” and “invalidating.” We have
often held that a reasonable examiner may find a particular piece of information
important to a determination of patentability, even if that piece of information does not
actually invalidate the patent. See Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1314-15
(Fed. Cir. 2008) (holding that similar prior art that did not meet all of the patent’s claim
limitations was nonetheless material); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d
1306, 1312 (Fed. Cir. 2000); Molins PLC v. Textron, Inc. 48 F.3d 1172, 1179-80 (Fed.
Cir. 1995).
2009-1216, -1254 8 The district court found that sales demonstrations would be important to a
determination of patentability under § 102(b). See 35 U.S.C. § 102(b) (“the invention
was patented or described in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the date of the application for
patent in the United States”). The district court found that the precursor product, while
not invalidating, reflected the closest prior art, and thus was highly material to
patentability. We hold that the district court’s analysis of materiality is not clearly
erroneous.
B. Duty of Candor
PTO Rule 56, codified at 37 C.F.R. § 1.56, imposes on all individuals associated
with the filing and prosecution of a patent application a duty of candor and good faith in
dealing with the PTO during the period of examination of a patent application. 37
C.F.R. § 1.56(a). The duty of candor includes a duty to disclose to the PTO all
information known to each individual that is material to the issue of patentability. Id.
This information includes prior sale or public use of the invention one year or more
before the filing date of the application. See 37 C.F.R. § 1.56(b). Thus, to have a duty
to disclose information to the PTO, an individual must (1) be associated with the filing
and prosecution of a patent application such that he owes a duty of candor to the PTO,
and (2) know that the information is question is material. Id. § 1.56(a).
For purposes of identifying who owes a duty of candor to the PTO, Rule 56
defines “individual[s] associated with the filing or prosecution of a patent application” as
(1) each named inventor, (2) each attorney or agent that prepares or prosecutes the
application, and (3) every other person who is substantively involved in the preparation
2009-1216, -1254 9 or prosecution of the application and who is associated with the inventor or assignee.
37 C.F.R. § 1.56(c). Individuals other than the attorney, agent, or inventor, who are
“substantively involved in the preparation or prosecution of the application,” may comply
with their duty of candor by disclosing known material information to one of the attorney,
agent, or inventor. 37 C.F.R. § 1.56(d).
If an individual who is substantively involved in the preparation or prosecution of
an application fails to comply with his duty of candor, then that individual’s misconduct is
chargeable to the applicant for the patent, and the applicant’s patent is held
unenforceable. Molins, 48 F.3d at 1178; FMC Corp., 835 F.2d at 1415 n.8. In this
case, it is undisputed that Dr. Stoddard is not an inventor of the ’326 patent, or an
attorney or agent who prepared the ’326 patent application. Thus, whether Dr.
Stoddard owed a duty of candor to the PTO, such that his misconduct would be
chargeable to Avid (the applicant for the ’326 patent), depends on whether he was an
individual who was “substantively involved in the preparation or prosecution of the
application” and “associated with the inventor or assignee.” 37 C.F.R. § 1.56(c)(3).
What constitutes “substantive[] involve[ment] in the preparation or prosecution of
the application,” the issue on which this case turns, has not previously been addressed
by this court. We read “substantively involved” to mean that the involvement relates to
the content of the application or decisions related thereto, and that the involvement is
not wholly administrative or secretarial in nature. See Manual of Patent Examining
Procedures § 2001.01 (8th ed., rev. 2, May 2004).
In this case, the district court made the following findings of fact with respect to
inequitable conduct:
2009-1216, -1254 10 1) that Avid was aware of the consequences of selling or offering to sell its reader and tag before filing the ’326 patent application, 2) that Avid attempted to file the ’326 patent application in advance of the 102(b) date, i.e. within one year after its first sales, but failed, and 3) that Avid intentionally withheld evidence of such sales from the PTO in an effort to deceive the PTO and secure allowance of the ’326 patent. 1
Inequitable Conduct Order at 7. Based on these findings, the court concluded that Avid
acted with deceptive intent during prosecution of the ’326 patent. Id. at 8.
In support of its inequitable conduct finding, the district court also made several
findings related specifically to Dr. Stoddard. Id. Based on these findings, the district
court concluded that Dr. Stoddard was “substantively involved” within the meaning of 37
C.F.R. § 1.56(c)(3), such that he owed a duty of candor to the PTO.
The district court’s fact findings related to Dr. Stoddard include: the nature of his
position as president and founder of Avid, that Avid is a closely held company, and that
Stoddard hired the inventors to reduce his encrypted chip concept to practice. Id.
These facts establish that Dr. Stoddard was associated with the inventors of the ’326
patent and with the assignee, Avid, in accordance with the latter requirement of
§ 1.56(c)(3).
1 The district court’s use of “Avid” in these findings is not entirely clear because only individuals, rather than corporations such as Avid, owe a duty of candor to the PTO. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328 (Fed. Cir. 2009); Manual of Patent Examining Procedures § 2001.01 (explaining that “the duty applies only to individuals, not to organizations”). Accordingly, only individuals can breach that duty and give rise to a finding of inequitable conduct. Id. Although the district court opinion mentions a few different individuals, it appears that all of its inequitable conduct conclusions with respect to “Avid” refer to the conduct of Dr. Stoddard that is imputed to Avid. See Avid Identification Sys. Inc. v. Crystal Import Corp., No. 2:04-CV-183, slip op. at 8 (E.D. Tex. Sept. 28, 2007) (“Inequitable Conduct Order”).
2009-1216, -1254 11 With respect to the first requirement of § 1.56(c)(3), requiring that the individual
be substantively involved in the preparation or prosecution of the application, the district
court found that Dr. Stoddard was “involved in all aspects of the company’s operation,
from marketing and sales to research and development.” Inequitable Conduct Order at
8. Dr. Stoddard’s involvement in “all aspects” of Avid, including its research and
development, contributes to a reasonable inference that he was also involved in the
preparation of the patent application relating to that research. That this fact would
contribute to such an inference is especially reasonable here, since the ’326 patent was
directed to the system that fulfilled Dr. Stoddard’s personal mission and the purpose for
which his company was created.
The district court also cited two communications related to Dr. Stoddard’s
substantive involvement in patent matters. See Def. Trial Ex. #27 and Def. Trial Ex.
#251. One communication was from an inventor named in the ’326 patent and
contained content for a European patent application. Dr. Stoddard was one of two
recipients of this communication, the other being the European prosecuting attorney.
The European patent application was the international phase of the ’326 patent
application. The other communication was a note from the same inventor to Dr.
Stoddard advising him to check with Avid’s European patent attorney before
demonstrating any of Avid’s technology, as it might affect Avid’s patent rights in Europe.
The district court discussed these documents and found that they also
contributed to an inference that Dr. Stoddard was substantively involved in patent
matters related to the identification chip system. The documents related to the
European filing refer to the same subject matter as the ’326 patent, and preparations for
2009-1216, -1254 12 both patent applications were underway at roughly the same time. Given the nature
and content of these communications, and the district court’s findings with respect to Dr.
Stoddard’s role in the company, the inference that Dr. Stoddard was similarly involved in
the ’326 patent application is reasonable and the finding of substantive involvement is
not clearly erroneous.
Additionally, the district court determined that Dr. Stoddard’s testimony at trial
was not credible, his memory of facts was suspiciously selective, and he refused to
acknowledge certain incontrovertible events. 2 See Inequitable Conduct Order at 4. The
district court’s findings with respect to Dr. Stoddard’s lack of credibility as a witness cast
doubt on Dr. Stoddard’s assertion that he did not understand the claimed technology
and was not involved in the preparation of the ’326 patent application.
Our conclusion that the district court’s duty of candor analysis was not clearly
erroneous is reinforced by our own review of the entire record and relevant case law,
which reveals sufficient reason to uphold the district court’s judgment. Cf. Bruno Indep.
Living Aids, Inc. v. Acorn Mobility Servs. Ltd., 394 F.3d 1348, 1354 (Fed. Cir. 2005)
(“While the district court indeed provided little explicit support for its finding of intent, it is
well established that, as an appellate tribunal, we review judgments, not opinions. We
therefore focus our review on whether there is sufficient evidence in the record to
sustain the judgment of intent to deceive the PTO.” (citing Black v. Cutter Labs., 351
U.S. 292, 297 (1956); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir.
1983); Consol. Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 814 (Fed. Cir. 1990)
2 For example, Dr. Stoddard was Avid’s main fact witness on the issue of patent validity, and the district court explicitly discredited the portions of his testimony relevant to the validity of the ’326 patent under § 102(b).
2009-1216, -1254 13 (“An appellate court need not close its eyes to the record where . . . there is a way
clearly open to affirm the district court’s action.”))).
Dr. Stoddard was personally responsible for the disputed prior art
demonstrations. He was in contact with at least one of the inventors during the
preparation of the ’326 patent application regarding patent-related matters. He was also
advised by that inventor to check with a patent attorney before disclosing information
about Avid’s technology to the public. He signed the small entity status affidavit shortly
before the application was filed. These facts lend further support to the inference that
Dr. Stoddard was substantively involved in preparations for filing the application, and
demonstrate that Dr. Stoddard spoke for Avid in representations to the PTO.
Although Dr. Stoddard did not contribute enough to the patentable features of the
claims to be considered an inventor, the functionality of the system described in the ’326
patent was his idea. The inventors he hired were specifically instructed to reduce his
idea to practice. Dr. Stoddard’s inclusion on substantive communications related to the
preparation of the European counterpart to the ’326 patent application further support
the more general conclusion that he was substantively involved in preparation of the
patent application covering the system he conceived.
Under the terms of Rule 56, the PTO does not assign a duty of candor to persons
not associated with a patent application, or to those involved only in a ministerial
capacity. Such persons would not be in a position to appreciate that their conduct or
knowledge might be relevant to the PTO. 3 The district court did not clearly err in
3 Our holding does not automatically extend the duty of candor to all individuals who contact one of the inventors or sign the small entity affidavit. Nor does our holding extend the duty generally to all individuals on the commercial side of product
2009-1216, -1254 14 determining that Dr. Stoddard was not such an exempt person. Indeed, to accept Avid’s
argument that a person such as Dr. Stoddard owes no duty of candor would allow
intentional deception by the types of people most likely to have knowledge of § 102(b)
prior art, i.e., those on the commercial side of patented product development.
The dissent errs by conflating Rule 56’s requirements of substantive involvement
and knowledge that the undisclosed information is material. According to the dissent,
the “substantively involved” has a knowledge requirement; the person must be “able to
assess the materiality of any information [that person] may know or discover.” Dissent
at 4. The dissent’s proposed definition fails, however, because that is not what Rule 56
says. Involvement and knowledge are separate inquiries under Rule 56, located in
separate sections (subsections (c) and (a), respectively) and serving different purposes.
Under § 1.56(c), we ask whether a person is substantively involved with the preparation
or prosecution of a patent application in order to determine whether that person is
associated with the filing and prosecution of a patent application, and thus owes a duty
of candor to the PTO under § 1.56(a). Nothing in § 1.56(c)(3) requires, as the dissent
suggests, the individual be “able to assess the materiality of any information [he] may
know or discover” in order to be substantively involved. Dissent at 4. Rather, what a
person knew or should have known only matters after he is found to be “associated with
the filing and prosecution of a patent application,” such as by being substantively
involved. Id. § 1.56(a).
development. We simply hold that the district court may properly consider a variety of factors, such as an individual’s position within the company, role in developing or marketing the patented idea, contact with the inventors or prosecutors, and representations to the PTO in deciding whether that individual is “substantively involved” within the meaning of § 1.56(c)(3) and thus owes a duty of candor to the PTO.
2009-1216, -1254 15 In other words, a finding that an individual was “substantively involved in the
preparation or prosecution” of a patent application only determines that the individual
owed a duty of candor to the PTO. Whether the individual involved in the alleged
misconduct owed a duty of candor to the PTO is merely a threshold inquiry in the
inequitable conduct analysis. Once a court finds that the individual had a duty of
candor, the court must proceed to the dual prongs of materiality and deceptive intent, to
determine whether that duty was violated. This subsequent analysis, in particular the
deceptive intent inquiry, encompasses the concerns raised by the dissent. If an
individual is unable to assess the materiality of the information at issue, then he would
lack the deceptive intent required to find that he committed inequitable conduct. 4
Therefore, the dissent’s main objection to our “substantive involvement” test is
misplaced.
Based on the district court’s findings and on the entirety of the evidence of
record, we hold that the district court did not abuse its discretion in rejecting Avid’s
argument that Dr. Stoddard owed no duty of candor to the PTO. Dr. Stoddard withheld
material information regarding his sales demonstrations of products that reflected the
closest prior art to the claims of the ’326 patent. Dr. Stoddard acted with deceptive
intent. Dr. Stoddard’s actions are imputed to Avid, the patent holder. We therefore
affirm the district court’s judgment that Avid’s ’326 patent is unenforceable due to
inequitable conduct.
AFFIRMED
2009-1216, -1254 16 COSTS
Each party shall bear its own costs.
4 As occurred here, the district court may find the same evidence probative of whether a person was “substantively involved” and whether that person acted with deceptive intent. The inquiries, however, are distinct.
2009-1216, -1254 17 United States Court of Appeals for the Federal Circuit
2009-1216, -1254
THE CRYSTAL IMPORT CORPORATION, DATAMARS SA and DATAMARS, INC.,
Appeal from the United States District Court for the Eastern District of Texas in case no. 2:04-CV-183, Judge T. John Ward.
LINN, Circuit Judge, concurring-in-part and dissenting-in-part.
I am pleased to join Parts I and IIA of the majority opinion concluding that there
remains a live controversy between the parties on the issue of unenforceability of U.S.
Patent No. 5,235,326 (“the ’326 patent”) and affirming the district court’s materiality
ruling. I respectfully dissent, however, from Part IIB affirming the district court’s ruling
that the duty of candor required by 37 C.F.R. § 1.56(c)(3) applies to Dr. Stoddard.
This case involves the application of 37 C.F.R. § 1.56 (“Rule 56”), a rule adopted
by the United States Patent and Trademark Office (“PTO”) that places on defined
individuals a duty of candor and good faith, including a duty of disclosure, in dealing
with the PTO during the period of examination of a patent application. 37 C.F.R. §
1.56(a). These individuals include: (1) each named inventor; (2) each attorney or agent
who prepares or prosecutes the application; and (3) “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is
associated with the inventor, with the assignee or with anyone to whom there is an
obligation to assign the application.” 37 C.F.R. § 1.56(c). Since Dr. Stoddard is not a
named inventor or an attorney or agent associated with the filing of the ’326 patent, the
question presented in this case turns on the application of Rule 56(c)(3), which, as the
majority recognizes, has never been explicitly addressed by this Court.
Rule 56(c)(3) lists two criteria that must be met before imposing a duty of
disclosure on an individual. First, the individual must be “substantively involved in the
preparation or prosecution of the application.” 37 C.F.R. § 1.56(c)(3). Second, the
individual must be “associated with the inventor, with the assignee or with anyone to
whom there is an obligation to assign the application.” Id. I agree with the majority that
Dr. Stoddard was associated with the inventors of the ’326 patent and that the second
prong of Rule 56(c)(3) is met in this case. Where I part company with the majority is the
conclusion that Dr. Stoddard was “substantively involved in the preparation or
prosecution of the [’326 patent] application” as required by the first prong of
Rule 56(c)(3).
We review a district court’s determination of inequitable conduct under an abuse
of discretion standard. Kingsdown Med. Consultants Ltd. v. Hollister Inc., 863 F.2d 867,
876 (Fed. Cir. 1988) (en banc). “We will not substitute our judgment for that of the trial
court in relation to the discretionary ruling of inequitable conduct unless the appellant
establishes that the ruling is based upon clearly erroneous findings of fact or a
misapplication or misinterpretation of applicable law or that the ruling evidences a clear
error of judgment on the part of the district court.” Brasseler, U.S.A. I, L.P. v. Stryker
2009-1216, -1254 2 Sales Corp., 267 F.3d 1370, 1379 (Fed. Cir. 2001). In my view, the district court both
misapplied Rule 56(c)(3) and clearly erred in finding that Dr. Stoddard was
“substantively involved in the preparation or prosecution of the application.”
Accordingly, I would reverse the determination that the ’326 patent is unenforceable due
to inequitable conduct.
I. Who Owes the Duty of Candor
The majority correctly recognizes that the duty of candor is codified at 37 C.F.R.
§ 1.56 and includes the duty to disclose to the PTO all information that is material to the
issue of patentability known to certain individuals. 37 C.F.R. § 1.56(a). As the majority
further notes, the question in this case is to whom does the duty of candor extend under
the language “every other person who is substantively involved” in Rule 56(c)(3)?
The majority holds that a district court may consider an “individual’s position
within the company, role in developing or marketing the patented idea, contact with the
inventors or prosecutors, and representations to the PTO” when deciding whether an
individual is “substantively involved,” regardless of whether those factors relate to the
person’s awareness of the merits of the application in question or engagement in any
specific activity relating to that application. Majority Op. at 12,14, 15 n.4. The majority
goes even further to extend the duty generally to “those on the commercial side of
patented product development,” because they are “the types of people most likely to
have knowledge of § 102(b) prior art.” Majority Op. at 15. With all due respect, I find no
basis in the rule or in any policy for such an expansive reading of Rule 56(c)(3).
The obligation imposed by the duty of candor is to disclose to the PTO
information “material to patentability.” 37 C.F.R. § 1.56(a). Because one cannot assess
2009-1216, -1254 3 whether information is “material to patentability” without knowledge of the technical
details or legal merits of an application, it should be self-evident that when Rule 56(c)(3)
talks about persons who are “substantively involved” it is referring to those persons who
are both (1) engaged in the preparation or prosecution of an application and (2)
sufficiently apprised of the technical details or legal merits of the application as to be
able to assess the materiality of any information they may know or discover as the
application is prepared or prosecuted. This naturally excludes not only the “typists,
clerks, and similar personnel who assist with the application” in a non-substantive way
as described in the Manual of Patent Examining Procedure (“MPEP”) § 2001.01, but
also corporate officers, managers, employees, and all other individuals who are neither
aware of the technical details or legal merits of the application nor engaged in the
preparation or prosecution thereof. Simply having a general interest or even a financial
interest in the invention or a general awareness of the application is not enough.
This interpretation does not improperly import into Rule 56(c)(3) the knowledge
component from materiality, as suggested by the majority. Majority Op. at 15. Instead,
it recognizes that Rule 56(c)(3) uses the phrase “substantively involved.” The use of the
word “substantive[]” limits the set of individuals who have a duty to disclose to those
who possess a specific understanding of the substance of the application. This has
nothing to do with the question of whether any particular piece of information is material,
but relates to the separate question of whether a person is substantively involved; i.e.,
sufficiently apprised of the details of the application as to be in a position to make that
assessment. Reading the separate parts of Rule 56 in harmony is not improperly
conflating them, as the majority suggests.
2009-1216, -1254 4 The majority reads “substantive[]” to mean that the involvement “relates to the
content of the application or decision related thereto, and that the involvement is not
wholly administrative or secretarial in nature.” Majority Op. at 10 (citing MPEP §
2001.01 (8th ed., rev.2, May 2004)). Such an expansive interpretation is nowhere
suggested in the cited section of the MPEP or anywhere in Rule 56. The PTO could
easily have written a rule as broad as that set forth by the majority. However, the PTO
purposefully limited the duty of disclosure to material information in order to limit the
submission of irrelevant and cumulative information that could overwhelm the PTO and
obscure potentially important disclosures. See Duty of Disclosure, 42 Fed. Reg. 5589
(Jan. 28, 1977) (“‘Relevant’ is replaced by ‘material’ because the latter term connotes
something more than a trivial relationship.”); MPEP § 2001 (8th ed., rev.2, May 2004)
(“There is no duty to submit information which is not material to the patentability of any
existing claim.”). By extension, the PTO also limited the duty to those individuals in a
position to determine what disclosures are material─those substantively involved in the
preparation or prosecution of the application.
While I do not quibble about the majority’s characterization of this as a threshold
inquiry, calling it such does not justify writing “substantively” out of the rule and lowering
the threshold to extend the duty to disclose to everyone having some relationship to the
invention or application no matter how peripheral or tangential it may be to the
substance of the application. The majority’s interpretation places on persons who are
not in a position to assess materiality an obligation to disclose information the relevance
of which they have no way of determining. The effect is either to encourage the filing of
information regardless of its materiality, just to be on the safe side, or to widen the net of
2009-1216, -1254 5 inequitable conduct that may be cast by accused infringers after the fact in litigation.
Neither result is desired or warranted and cannot be justified on the rationalization that
Rule 56(c)(3) is simply an innocuous threshold inquiry. Indeed, this court has held that
the identity of the individual accused of inequitable conduct is essential to the
determination of whether the patent can be found unenforceable. See Exergen Corp. v.
Wal-Mart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009) (“The pleading, however,
provides no factual basis to infer that any specific individual, who owed a duty of
disclosure in prosecuting the ′685 patent, knew of the specific information in the [prior
art] patents that is alleged to be material to the claims of the ’685 patent.”).
Finally, the majority suggests that intent should solve the concern I have
expressed. Majority Op. at 16. With all due respect, that suggestion is premised on
circular reasoning that ignores Rule 56(c)(3) entirely. If intent was all that mattered,
there would be no need to be concerned at all about who had the duty to disclose.
II. Dr. Stoddard’s Involvement
In this case, there is no evidence that Dr. Stoddard was substantively involved in
the preparation or prosecution of the application for the ’326 patent. Specifically, there
is no evidence to even suggest that Dr. Stoddard had any knowledge of the technical
details or legal merits of the application for the ’326 patent while it was being prepared
or prosecuted. I find it significant that no document or testimony shows that Dr.
Stoddard participated in any inventor meeting with patent counsel, received a draft of
the application prior to filing, or received any draft response of an office action to the
PTO during prosecution or was otherwise apprised of the technical details or legal merit
of the application. In fact, Robert Malm, the prosecuting attorney of the ’326 patent,
2009-1216, -1254 6 testified that Dr. Stoddard was not substantively involved in the preparation or
prosecution of the patent. J.A. 14100, 14104 (Malm’s testimony stating that he did not
have any conversations with Dr. Stoddard about patent prosecution matters and that no
individual at Avid reviewed responses before they were filed with the PTO).
The majority cites two communications as evidence sufficient to support the
district court’s inference that Dr. Stoddard was substantively involved in the ’326
application. Majority Op. at 12-13. Neither of these documents actually related to the
’326 application. The first memo, addressed to Dr. Stoddard from a named inventor of
the ’326 patent, mentioned only the possible effect of Avid sales on a European patent
application. The second memo, which indicated that Dr. Stoddard was provided a copy,
was addressed to a patent attorney who was never involved in the ’326 patent
application and included new material for an unspecified patent application. This memo
did not give any indication that it was in any way related to the ’326 patent application.
These documents do not support the conclusion that Dr. Stoddard had any awareness
of the details or merits of the ’326 application.
The majority incorrectly points to Dr. Stoddard’s involvement in Avid’s research
and development as a factor indicating that he was substantively involved in the
preparation of the patent application relating to that research. Majority Op. at 12. Dr.
Stoddard’s research activities are simply evidence that Dr. Stoddard was “associated
with the inventor, with the assignee or with anyone to whom there is an obligation to
assign the application.” 37 C.F.R. § 1.56(c)(3). Because it is the actual substance of
the application that defines what constitutes “material” information that the individual
must disclose to the PTO, Rule 56 requires more than just this association. See 37
2009-1216, -1254 7 C.F.R. § 1.56(b)(1), (c)(3).
The majority also ascribes significance to the fact that Dr. Stoddard was
personally responsible for certain prior art demonstrations. Majority Op. at 14.
However, this fact does not contribute to a finding that Dr. Stoddard was substantively
involved in the patent application. While employees who perform product
demonstrations may well be the individuals most likely to have knowledge of prior art,
that knowledge, in itself, does not give rise to a duty of disclosure to the PTO. See
Kemin foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V., 464 F.3d 1339,
1346 (Fed. Cir. 2006) (affirming district court’s refusal to find inequitable conduct based
on the failure of an employee scientist—not a named inventor—to disclose a prior art
reference noting that he was “only tangentially involved in prosecution” of the patent).
Unless such an individual also has knowledge of the technical details or legal merits of
the patent application and is engaged in the preparation or prosecution thereof, he is
not bound by Rule 56. Moreover, while the district court found Dr. Stoddard’s testimony
on the issue of prior art demonstrations was less than candid, that neither shows that he
was involved in the ’326 patent application nor demonstrates that whatever involvement
he may have had was substantive in any way.
Finally, Dr. Stoddard’s signature on the small entity status affidavit, declaring that
Avid is a small business concern eligible for reduced patent application fees, provides
no evidence that he had any knowledge of the substantive details contained in the
patent application. The small entity status document relates only to information about
the corporation and not to anything material to patentability.
The majority states that Dr. Stoddard is substantively involved in the application
2009-1216, -1254 8 for the ’326 patent based on the entirety of the evidence in the record. However, as
noted above, none of the individual pieces of evidence the majority cites as the basis for
this finding—Dr. Stoddard’s role in the company, the two memos regarding patent
prosecution, the small entity status affidavit, Dr. Stoddard’s involvement in the product
demonstrations, or Dr. Stoddard’s lack of credibility at trial—show that Dr. Stoddard was
even peripherally involved with the actual application at issue. Simply combining the
evidence does not change the fact that there is nothing in the record showing that Dr.
Stoddard had anything at all to do with the application for the ’326 patent.
For the foregoing reasons, it is my view that the evidence does not support a
finding that Dr. Stoddard was substantively involved in the preparation or prosecution of
the ’326 patent. He was neither engaged in the preparation or prosecution of the ’326
patent application nor sufficiently apprised of its technical details or legal merits to allow
him to assess what information would be considered material to its patentability.
Because the district court misapplied Rule 56(c)(3) and clearly erred in extending the
duty of disclosure to Dr. Stoddard, I would reverse the finding that the ’326 patent is
unenforceable due to inequitable conduct.
2009-1216, -1254 9