Apparent False Statement Reviving Abandoned Patent Application Warrants Production of Privileged Documents Concerning Revival

The court granted in part defendant's motion to compel the production of privileged documents under the crime-fraud exception concerning revival of an abandoned application that led to the patent-in-suit. "[D]efendant . . . argues that the applicants committed fraud in reviving [the patent application]. [A]n applicant may revive an abandoned application where the abandonment and delay in revival were unintentional. [Defendant] maintains that both the abandonment of the [application] and at least part of the delay in seeking revival were intentional. . . . [Defendant] has met its burden with respect to the delay in revival. . . . [An] email indicates that [the applicant] itself informed [a third party] that it had not paid the Issue Fee. This admission permits the reasonable inference that [the applicant] knew by December 1999 that the [patent] Application had been abandoned, which would render false the applicants' February 2002 representation that '[t]he entire delay in filing the required reply . . . was unintentional.' The court believes the necessary inference here rises above 'mere speculation.'. . . Given the apparent falsity of the applicants' representation to the PTO and their demonstrated knowledge that 37 C.F.R. § 1.137(b) required the entire delay to be unintentional, an inference of intent is not only reasonable but effectively required here."

Shelbyzyme LLC v. Genzyme Corporation, 1-09-cv-00768 (DED May 22, 2013, Order) (Sleet, J.).