Prosecuting Counsel's Inequitable Conduct Is Not Attributable To Plaintiff Where Counsel's Actions Are In Direct Conflict With Plaintiff's Instruction

Following a bench trial on inequitable conduct the court determined that plaintiff's patent was not unenforceable even if prosecution counsel had intended to deceive the PTO. "Although any failures by [counsel] to carry out his client's instructions are attributable to [plaintiff] as his client vis-à-vis third parties such as the PTO, in balancing the equities, consideration must be given to the fact that [counsel's] inaction was in direct conflict with [plaintiffs'] directions. In addition, any inequitable conduct was not related to substantive patentability, but rather, to a procedural irregularity caused by the prosecuting attorney's failure to diligently prosecute in direct conflict with his client's instructions and without its knowledge."

Aristocrat Technologies, et. al. v. International Game Technology, et. al., 5-06-cv-03717 (CAND May 6, 2011, Order) (Whyte, J.)