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."

Worldwide Home Products, Inc. v. Time, Inc., et. al., 1-11-cv-03633 (NYSD September 30, 2013, Order) (Swain, J.)

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