Thursday, May 30, 2013

Intent Requirement Precludes Inequitable Conduct “In All But The Rarest Cases”

Following a bench trial, the court found that plaintiff did not engage in inequitable conduct to obtain its wind turbine patent because defendant failed to establish that plaintiff's employees deliberately withheld prior art and prior uses from the PTO. "This finding is made with some reluctance, as the Court finds the prior art is material -- a fact which [plaintiff] may have considered -- but there is insufficient evidence to conclusively prove that [plaintiff] deliberately deceived the PTO. . . . A patent applicant can know the art is material, not present it to the PTO, and still avoid a charge of inequitable conduct. This third requirement of 'deliberateness' creates a hurdle that is unlikely to be jumped in all but the rarest cases. Here, [plaintiff] submitted just one piece of prior art, omitting the entire state of the wind industry at the time. . . . By omitting the entire state of the U.S. wind industry, [plaintiff] led the Patent Office to believe that its invention was the first to successfully ride through zero voltage events; yet there is insufficient proof this was a deliberate effort to deceive."

General Electric Company v. Mitsubishi Heavy Industries Ltd., et. al., 3-10-cv-00276 (TXND May 28, 2013, Order) (Furgeson, J.).

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