Inequitable Conduct Renders Fracking Patent Unenforceable

Following a bench trial, the court determined that defendant's hydraulic fracturing patent was unenforceable for inequitable conduct and found that defendant and its founder had the specific intent to deceive the PTO by withholding information regarding $1.8 million in sales before the critical date. "[Defendant and/or its founder] knew of the significance of the 'critical date' and the one-year grace period for filing a patent application. [Defendant's founder] testified at trial that his business partner . . . had discussed with him the requirement that the patent process required filing the application within one year after the invention was first offered for sale or used publicly. . . . [Defendant's founder] declared to the Patent Office, under penalty of perjury, that he understood the contents of the application and acknowledged his duty to disclose material information. . . . The single most reasonable inference to be drawn from the evidence requires a finding of deceitful intent in light of all of the circumstances."

Energy Heating, LLC et al v. Heat On-The-Fly, LLC et al, 4-13-cv-00010 (NDD January 14, 2016, Order) (Erickson, J.)