Thursday, July 25, 2013

Inventor’s Inconsistent Testimony Evidences Intent to Deceive

Following a bench trial, the court determined that plaintiff had engaged in inequitable conduct by deliberately withholding material prior art from its prosecution counsel and the PTO. "[T]he Court concludes, based on the content of [plaintiff's] testimony as well as his demeanor and the tone and manner in which it was presented, that [he] deliberately withheld [plaintiff's own prior art brochure, products, and sales materials] from [prosecution counsel]. . . . [T]hroughout his testimony, [plaintiff] sought to provide evasive answers to direct questions by referring to his unfamiliarity with, and lack of understanding of, patents and the prosecution process. . . . [A]t other times [he] demonstrated a substantial knowledge of patents and presented sophisticated arguments. . . . This inconsistency had a significant, adverse effect on [his] overall credibility. . . . [W]hen advantageous, [plaintiff] was savvy enough [to present an argument that] requires not only at least a professed knowledge about how examiners conduct searches, but also a comparison of [a patent in a subclass searched by the examiner] to [plaintiff's] own prior art, which is a bit of a surprising comparison to be made by [plaintiff], who professes to be unable to compare his own prior art to the claims of his own patent."

Kim Laube & Company, Inc., et. al. v. Wahl Clipper Corporation, et. al., 2-09-cv-00914 (CACD July 18, 2013, Order) (Kronstadt, J.).

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