Inventor's Failure to Disclose Invalidating Prior Art Justifies Attorney Fee Award

The court granted defendant's motion for attorneys' fees under 35 U.S.C. § 285 because plaintiff failed to disclose a prior art software program later determined to be invalidiating prior art in a reexamination proceeding. "[Plaintiff] wrongly argues that 'inequitable conduct cannot be the primary basis for an attorney’s fees award . . . .' If a plaintiff knows that its patent would not have issued but for the intentional omission of material information during prosecution of the patent, then the plaintiff knows that the patent is invalid and acts deceitfully in suing for its infringement. . . . In light of [the inventor's] declaration that [a prior art] program was key to his conception, the failure to identify it and produce it violated the good faith requirements of [Local Patent Rule 3.2.b]. Early disclosure of this reference in accordance with the rules could have substantially impacted and shortened the litigation and the reexamination proceedings."

Deep Sky Software, Inc. v. Southwest Airlines Co., 3-10-cv-01234 (CASD June 1, 2015, Order) (Bencivengo, J.)