Inventor’s Supervisory Capacity and Signature on Report Containing Withheld Data did not Establish Intent to Deceive

Following a bench trial, the court found that the first of plaintiff’s two asserted patents, covering the composition of a pharmaceutical compound (dexmedetomidine hydrochloride), was not unenforceable due to inequitable conduct, because defendants failed to carry their burden in demonstrating a specific intent to deceive the PTO. "Defendants simply assume that because [an inventor] was in some supervisory capacity that he would have been aware of [data supporting defendant's inequitable conduct claim]. But such an assumption is insufficient to demonstrate clear and convincing evidence of intent that [the inventor] therefore deliberately withheld the data. Nor will the Court attribute specific intent to [the inventor] simply by virtue of his signature on a 100-page report that contained the [data] on page 61. . . . [The inventor] could not recall whether he or anyone else submitted the [data] to [his company's patent department]. [The inventor's] lack of memory is frustrating, but it cannot be used to demonstrate specific intent to deceive. That is a jump in reasoning the Court is unwilling to and cannot make."

Hospira, Inc., et. al. v. Sandoz International GmbH, et. al., 3-09-cv-04591 (NJD May 4, 2012, Order) (Cooper, J.)