Failure to Correct Examiner’s Misunderstanding of Prior Art No Grounds for Inequitable Conduct Defense

The court granted plaintiff's motion to strike as insufficient defendant's inequitable conduct defense based on plaintiff's failure to correct an examiner's misunderstanding of a prior art reference. "[Defendant] argues that although disclosure of prior art is usually enough to avoid a charge of inequitable conduct, when the patent examiner made clear that he misunderstood the scope of [a reference's] disclosure, the prosecuting attorney had a duty to respond to the examiner's confusion by pointing out that [the reference] inherently disclosed the pulse width limitation. Although this argument is not unreasonable, it goes against the great weight of the case law. . . . [E]ven if there could be a factual scenario where an inventor commits inequitable conduct by failing to clear up a misunderstanding of prior art held by a patent examiner that the patent examiner could have recognized on his own, the specific facts alleged here by [defendant] would not rise to the level of inequitable conduct."

Nevro Corp. v. Boston Scientific Corporation et al, 3-16-cv-06830 (CAND October 4, 2017, Order) (Chhabria, USDJ)