Under Therasense, Failure to Disclose Non-Enabling Reference was not Material Misrepresentation Sufficient to Support Inequitable Conduct Defense

On remand, the court reversed its pre-Therasense finding of inequitable conduct and determined that plaintiff's database patent was not unenforceable under Therasense v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) where plaintiff identified a prior art system in its IDS but did not produce a brochure regarding that system to the PTO. "The [prior art] System that is the subject of the [undisclosed] Brochure represents a significant body of programming effort that, under Federal Circuit standards, could not be enabled by a mere bullet-point brochure. . . . Since the [brochure] lacked enablement, it could not have stopped the PTO from granting the [patent-in-suit's] claims had it been disclosed. Accordingly, under the appropriate Therasense 'but-for' test, the [brochure] is not material, and [defendant's] inequitable conduct defense fails."

Golden Hour Data Systems, Inc. v. emsCharts, Inc., et. al., 2-06-cv-00381 (TXED August 15, 2012, Order) (Gilstrap, J.).