Patentee’s Failure to Notify Examiner of Court’s Adverse Claim Construction May Constitute Inequitable Conduct

The court granted defendant's motion to amend its pleadings to include a claim for inequitable conduct during reexamination. "[Defendant] alleges specific [plaintiff] representatives . . . each failed on several occasions to inform the PTO that the interpretation of the asserted claims of the [patent-in-suit] [plaintiff] urged the PTO to adopt had been rejected by this Court. . . . Regardless of whether a patentee in all cases has an obligation to disclose a District Court's adoption of an unobjected-to recommended claim construction, or whether a patentee has an obligation to explain the impact of a Court's claim construction on arguments the patentee has made to the examiner, under the facts alleged here it is plausible to believe that [plaintiff] intentionally decided not to make these disclosures because [plaintiff] intended to deceive the examiner into believing she was applying the Court's claim construction, when [plaintiff] knew she was not, and when [plaintiff] feared application of the Court's claim construction could lead the examiner to invalidate its claims."

Masimo Corporation v. Philips Electronics North America Corporation, et al, 1-09-cv-00080 (DED September 2, 2014, Order) (Stark, J.)