Materiality Not Resolved by Disclosing Previously Withheld References in New Application

The court denied plaintiff's motion for summary judgment that its call center patent was not unenforceable for inequitable conduct and rejected plaintiff's argument regarding a lack of materiality. "Plaintiff argues that the PTO itself has already answered the question of whether it would have allowed the [patent-in-suit's] claims had it been aware of the non-disclosed information. [Nine months ago], [plaintiff] copied the 'exact claims from the [patent-in-suit]. . . into [a new] pending [patent application], and the same Examiner from the [patent-in-suit] allowed the claims after considering . . . [the prior art] patent invalidity contentions and charts (and thus, the charts Defendants allege are but-for material)' and other relevant litigation documents that [plaintiff] submitted from this case. . . . It is unclear what appropriate action a patentee accused of inequitable conduct can take at the PTO to cure the alleged problems after a patent has issued, but the Court is not convinced that Plaintiff’s solution is it. The Court does not endorse Plaintiff’s method of adding the challenged claims to a separate patent application, providing the previously withheld references to the examiner, and waiting to see whether the examiner will accept the claims a second time, in the second patent."

NobelBiz, Inc. v. Global Connect, LLC, 6-12-cv-00244 (TXED July 16, 2015, Order) (Schroeder, J.)