Last Friday two decisions of the Federal Circuit touched upon patent reexamination practices. In this post we will examine the first decision, Leviton Manufacturing Company, Inc. v. Universal Security Instruments, Inc./Shanghai Meihao Electric Inc. v. Leviton Manufacturing Company, Inc. In this decision, the question of whether or not inequitable conduct may be cured in a subsequent, post-grant proceeding of the USPTO was considered. The question before the CAFC in Levitton was whether or not a summary judgment finding of inequitable conduct in the district court should stand. Perhaps, being overly cautious in view of the pending en banc review in Theresense, Inc. v. Becton Dickinson and Co., and indicating that summary judgment of inequitable conduct is the rare case, the court reversed the lower court. Confusingly however, the majority indicated that conduct during patent reexamination may be indicative of a “good faith” intent.At issue in Levitton was the enforceability of U.S. Patent 6,864,766 (‘766 Patent) based upon the conduct of prosecuting attorney (Narcisse). It was alleged that attorney Narcisse committed inequitable conduct during prosecution of the application that led to the ‘766 Patent. Specifically, it was alleged that the Narcisse failed to inform the USPTO of litigation information and other application materials of the Patent Holder. The defendants urged that litigation ongoing during the prosecution of the application underlying the ‘766 patent (relating to other patents of the family) would have been of interest to a reasonable examiner as presenting invalidity contentions. Likewise, the defendants argued that an application that was filed later than the priority date of the ‘766 Patent, although not prior art, was of interest in a double patenting sense. The court acknowledged the materiality of these items, yet gave attorney Narcisse the benefit of the doubt as to intent. First, as to the undisclosed application, the court noted that an explanation provided by Narcisse at deposition explained that he did not submit the application since it did not qualify as prior art. He also noted that any double patenting rejection is properly applied in the second of the patents to issue. As to the failure to alert the Office as to the litigation, the attorney did not seem to have an explanation, but noted later disclosure in a reexamination of the ‘766 Patent (95/000,097). In this regard the court noted: . . . Narcisse later submitted a memorandum during ’766 reexamination proceedings disclosing all of the related litigations, and he summarized the inequitable conduct allegations that had been made with respect to the Germain application. While this does not necessarily demonstrate good faith, it may be evidence of good faith. Accordingly, it appears though the conduct of an ongoing reexamination, at least in the opinion of the majority, may be evidence of good faith in some situations. In a somewhat strongly worded dissent, Judge Prost explained: The majority proceeds to reason that Narcisse’s belated disclosure of the related litigation in reexamination proceedings, more than two years after the ’766 patent had issued and Meihao had raised the inequitable conduct allegations in this case, “may be evidence of good faith.” Majority Op. at 18. This proposition, for which the majority provides no citation, conflicts with our precedent. We have held that a patentee’s disclosure of withheld information in re-examination and re-issuance proceedings is “irrelevant” to whether the patentee committed inequitable conduct in acquiring the patent, an inquiry that centers on the patentee’s “intent during the prosecution of the original application.” Bristol-Myers Squibb Co., 326 F.3d at 1241; see Molins PLC, 48 F.3d at 1182 (“We recognize that [the withheld references] were cited eventually to the PTO and that the examiner . . . passed the reexamination application to issue thereafter. However, the references were not cited when they should have been.”). Thus, the majority’s suggestion that Leviton may be able to establish good faith in the prosecution of the ’766 patent by its disclosure of the related litigation years after the patent issued, where Narcisse knew of the related litigation and his duty to disclose it at the time of the initial prosecution, is, in my view, contrary to our precedent. It is well established that a Patent Owner may not file a reissue or an ex parte reexamination for the purpose of curing inequitable conduct, in this regard, Judge Prost is quite correct. On the other hand, the majority appears to be making the distinction (and I am admittedly reading between the lines here) that later acts may be indicative of past intent in certain situations, perhaps especially, where the post-grant filing is not self-serving . Here the reexamination was initiated by a third party (inter partes control no: 95/000,097). In other words, when reexamination is initiated by a third party, conduct of the later proceeding may aid the court in determining the complete story (i.e., intent) as it relates to an earlier alleged commission of inequitable conduct. Of course, one might argue that the later disclosure of litigation filings alleging inequitable conduct is by definition self serving since such matters are not considered by the Office in patent reexamination. It appears that the prosecuting attorney may have dodged a bulllet, for now anyway.