Masimo Corporation v. Philips Electronics North America Corporation, et al, 1-09-cv-00080 (DED September 2, 2014, Order) (Stark, J.)
Thursday, September 4, 2014
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."