Thursday, February 11, 2010

Intent to Deceive Inferred When Plaintiff Adds Element to Patent Claims to Overcome Rejection but Fails to Disclose Prior Art Containing that Element

Defendant was entitled to summary judgment on its inequitable conduct claim where plaintiff (i) amended its claims to overcome a rejection by adding a claim element, (ii) failed to disclose the most relevant prior art with respect to that element, and (iii) failed to provide a credible explanation for the withholding. "[A]n inference of intent is supported not simply by the lack of a credible good faith explanation for the nondisclosure, but also by independent evidence of a far more substantial factual basis, namely that Plaintiff actually made an argument in favor of patentability that contained, as the primary distinguishing element, a feature that was not disclosed in any of the prior art before the examiner and that was readily apparent in the undisclosed [prior art device and manual]. As Defendant correctly emphasizes, Plaintiff 'went beyond merely silently failing to disclose the [prior art device and manual] as a general reference'; rather, he 'affirmatively made misrepresentations by failing to disclose the closest, highly material reference which went to the critical point of patentability [i.e., the mounting portion/cam roller limitation] which [plaintiff] relied upon to obtain the [patent-in-suit].'"

Sabasta et al v. Buckaroos, Inc., 4-06-cv-00180 (IASD February 3, 2010, Order) (Pratt, J.)


RMorin said...

Interesting case. It's unclear from the description whether Plaintiff cited the reference at all (e.g., buried in an IDS). Was this a case of Plaintiff burying but citing the reference or a case of Plaintiff completely failing to cite the reference anywhere? Thanks -RM

The Docket Navigator said...


Thanks for the comment and question. We have not independently reviewed the prosecution history and the court’s decision is not entirely clear on the issue. However, it appears that the prior art device was not listed in the IDS. Sabasta argued that its application contained a description of functional elements that included all relevant aspects of the undisclosed prior art (i.e., that the prior art had been disclosed in all but name) but the court rejected that argument. If you’d like to see the court’s decision please send an email to and we’ll send you a copy.

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