Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Part I of IV)”, we discussed using pending reexamination proceedings to support invalidity contentions.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to prove inequitable conduct on the part of the patentee. Admissibility in Litigation? 

Reexamination Evidence Used to Prove Inequitable Conduct

To prove inequitable conduct, the infringer must show evidence that the patentee either misrepresented a material fact, failed to disclose material information, or submitted false material information with the intent to deceive the Patent Office.  Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008) (quoting Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007)).  Additionally, at least a “threshold level” of both materiality and intent to deceive must be proven by clear and convincing evidence.  Star Scientific, 537 F.3d at 1365.

Information is considered material where “a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.’”  Star Scientific, 537 F.3d at 1367 (quoting Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1297 (Fed. Cir. 2008)).  Similarly, the Manual of Patent Examining Procedure § 2642 instructs examiners to apply nearly the same standard in determining whether a substantial new question of patentability exists: “A prior art patent or printed publication raises a substantial question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable.”  Accordingly, where an examiner determines that prior art presents a substantial new question of patentability in granting a request for reexamination, accused infringers assert that such consideration proves the prior art’s materiality.  This argument is enhanced when, during reexamination, the examiner issues a rejection based on that information.  The Federal Circuit itself has stated that “the result of a PTO proceeding that assesses patentability in light of information not originally disclosed can be of strong probative value in determining whether the undisclosed information was material.”  Molins PLC v. Textron, Inc., 48 F.3d 1172, 1179 (Fed. Cir. 1995).  See also 3M Innovative Properties Co. v. Dupont Dow Elastomers, LLC, 2005 U.S. Dist. LEXIS 44877, at *6-7 (D. Minn. Sept. 8, 2005) (“Evidence of the result of the completed reexamination proceedings could be highly relevant to … inequitable conduct allegations at trial . . . .   On the other hand, admission of evidence of an incomplete reexamination would have low probative value, would distract from the core issues of the case, and would be highly prejudicial”).  Thus, at least where reexamination is complete, the results of that reexamination may be important in determining the materiality of a reference.  What is not clear is when the proceedings of a reexamination which is not yet complete can help determine materiality.

In a recent case considering this issue, the defendants took a cue from the Federal Circuit and attempted to apply the idea behind Molins where a request for reexamination had been granted, but no final decision had been made.  In Intel Corp. v. Commonwealth Scientific and Industrial Research Organisation, after the USPTO granted the relevant request for reexamination, the defendants sought to supplement their summary judgment motions with evidence of the grant.  They argued that the grant of the request was probative to an inequitable conduct analysis, specifically to the element of materiality.  No. 06-cv-551 (E.D. Tex. April 9, 2009) (order denying motion to supplement).  The outcome however, was not as the defendants would have hoped.  The court was critical of the defendants’ delay in filing for reexamination and of defendants’ delay in moving to supplement their summary judgment motions, noting that such delays “weigh[ed] heavily against supplementation.”  Id. at  4.  It then distinguished Molins based on the status of the reexamination proceedings.  The court determined that the mere grant of a request for reexamination was not probative of either willfulness or inequitable conduct.  Id.

As will be discussed in subsequent posts, alleged infringers have also recently attempted to use evidence of granted reexamination requests to rebut charges of willful infringement and to oppose motions for preliminary injunction.