Worldwide Home Products, Inc. v. Time, Inc., et. al., 1-11-cv-03633 (NYSD September 30, 2013, Order) (Swain, J.)
Tuesday, October 8, 2013
Submission of Low Resolution Photographs of Prior Art Evidences Intent to Deceive PTO
The court granted summary judgment on defendant's inequitable conduct defense because plaintiff's counsel disclosed a low-resolution image of a prior art product and failed to disclose a high-resolution image or the actual product to the PTO. "[Plaintiff's counsel] had a telephone interview with the PTO examiner, after which he filed the Amended Application which distinguished the Application from the [prior art] Reference on the basis of non-abutment of the cascade hooks of the hangers portrayed in the [prior art] Reference. It is also undisputed that the top and bottom surfaces of the cascade hook members of the [prior art] Hangers do in fact abut when nested, and that [counsel] had [the prior art] Hangers in his possession at the time he spoke to the PTO examiner. . . . Even after the PTO examiner had determined that the [prior art] Reference constituted prior art, and [counsel] had led the examiner to an incorrect conclusion about the [prior art] Hangers and amended the Application to turn on that incorrect conclusion, [counsel] did not disclose either the physical [prior art] Hangers or the high-resolution photographs of the [prior art] Hangers (both far clearer demonstrations of how the hanger worked than the thumbnail images in the [prior art] Reference). He now claims that he did not do so because he did not know that they were prior art. [Counsel] selectively withheld the most relevant information from the PTO examiner, which is indicative of a clear intent to deceive."