Docket No. 2015-1132, -1133
NEWMAN, CHEN, HUGHES
February 19, 2016
Brief Summary: DC finding of inequitable conduct affirmed.
Summary: This appeal follows an earlier decision remanding part of the case against Alps for trial (Ohio Willow Wood, FC 2013). OWW’s patents (US 5,830,237) relate to cushioning devices that fit over residual stumps of amputated limbs to make prosthetics more comfortable. The ‘237 patent was reexamined twice and then the DC granted Alps’s motion for SJ of invalidity as to all of the ‘237 claims. The DC also granted SJ to OWW that there was “no triable issue of inequitable conduct” but the FC reversed that decision in 2013, finding OWW misrepresented whether its Director of R&D (Mr. Colvin) who oversaw the reexaminations and litigation “was an interested witness” and “withheld various pieces of material information and had no reasonable explanation for the several misrepresentations it made to the PTO.” It found “[t]he collective weight of the evidence…‘would support a finding of intent that is the single most reasonable inference to be drawn from the evidence’”. On remand, the DC found inequitable conduct (by OWW through Mr. Colvin) in the second reexamination, awarding Alps attorneys’ fees incurred after the Board’s decision on the second reexamination. Alps requested the DC extend its holding on the ‘237 patent to OWW’s US 6,964,688; 7,291,182; and 8,523,951, which the DC denied because the arguments “regarding the similarity of those patents go beyond the scope of evidence presented in this case.” The evidence of inequitable conduct were letters regarding the date on which a prior art device was available and whether that art “disclosed a protective garment having ‘an inner layer comprising a gel’” that Mr. Colvin did not disclose to its reexamination counsel or the Board and that would have corroborated testimony by Alps’ witness Mr. Comtesse (and which OWW represented was uncorroborated), and the withholding of declarations “filed under seal and…subject to a protective order” (as alleged by OWW). The FC panel found the DC conclusion that the corroborating evidence was material to patentability not to be clearly erroneous. The opinion explained that while “[s]pecific intent…may be inferred from indirect and circumstantial evidence”, “deceptive intent must be ‘the single most reasonable inference drawn from the evidence’” (Therasense, FC 2011). And it found no clear error with the DC decision “that deceptive intent was the most reasonable inference for Colvin’s conduct”. Regarding the declarations, the FC panel disagreed with the DC “that there was clear and convincing evidence that Mr. Colvin was aware of” the same (only circumstantial evidence that did not meet the clear and convincing standard (1st Media, FC 2012; Star Sci., FC 2008). But it agreed with the DC finding of IE based on the letters issue. And it rejected Alps’s contentions of IE in the first reexamination (“OWW did not withhold or misrepresent ‘but-for’ material information”). It also affirmed the DC decision not to extend the holding regarding the ‘257 patents to the other patents.