Initial Rejection During Reexam Based on Withheld Reference Does Not Establish Materiality for Inequitable Conduct

Following an evidentiary hearing, the ALJ determined that one of complainant's polyimide film patents was not unenforceable for inequitable conduct where the withheld reference was not material. "[T]he brief description of [the Japanese prior art reference] in the specification was not a sufficient disclosure to the PTO. . . . [Complainant] did not provide a full copy of the reference, or any sort of translation of the reference, to the PTO. . . . Still, I do not find that [the reference] is material under the 'but-for' materiality standard. . . . Even though the examiner has issued an initial rejection of claim 1 in the reexamination based on the combination of [the Japanese reference and another], I do not find that this is conclusive evidence of materiality. This was only an initial rejection, and is in no way a final determination from the PTO. There is still a possibility that claim 1, as currently written, will be allowed over the combination of [the references]. Therefore, the initial rejection in reexamination is not sufficient evidence to demonstrate that the PTO would not have allowed the claims had it been aware of [the Japanese reference]."

Polyimide Films, Products Containing Same, and Related Methods, 337-TA-772 (ITC June 11, 2012, Order) (Rogers, ALJ).