By Scott A. McKeown
| September 20, 2010
Paperwork
The Fruit of the Poisonous Inequitable Conduct Tree= Mammoth IDS Filings

Last week, I commented on a recent ruling in Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (N.D.O.H) relating to patent resissue/recapture. In addition to the interesting recapture issues presented, this case also demonstrates why the USPTO must be continually burdened with mammoth IDS filings in post-grant proceedings.

Last week a further ruling was issued in this case on a summary judgment motion. Plaintiff Bendix requested summary judgment of NO inequitable conduct based on a multitude of defendant accusations relating to the plaintiff's conduct during the patent reissue proceeding. Despite the plaintiff's disclosure of litigation materials, expert reports etc, as well as the defendant filing their own carefully worded protest in the patent reissue proceeding, the defendant pointed to a single sentence of a deposition as being withheld from the USPTO....I couldn't make this up.

In the September 14, 2010 decision (here), the defendant alleged three bases for inequitable conduct: 1) that the error identified for initiating the patent reissue was not a "mistake"; 2) that the defendant's expert report submitted to the USPTO was not appropriately highlighted to the defendant's satisfaction; and 3) that a single deposition statement was not brought to the attention of the USPTO, despite the fact that the statement never made it in the defendant's expert report, or reissue protest.

The court properly rejected these theories, the discussion of which is not all that eventful (can be read in the above linked decision).

I simply draw attention to this inequitable conduct fact pattern because, sadly, it is not at all uncommon. With concurrent litigation, a significant concern of patent holders is "how much' information needs to be submitted in a parallel post grant proceeding of the USPTO to satisfy 37 C.F.R. § 1.555(b)(2)?"

In other words, where does one draw the line? Dispositive motions? Validity and claim construction issues only, depositions, trial transcripts?  Where does it all end?  What if this information is subject to protective order?

ANSWER: typically, it ends in one big pile on the PTO doorstep, better safe than sorry.

Perhaps the upcoming en banc decision in Therasense will provide some much needed relief from this sillyness....
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