In two cases decided in March, the U.S. Court of Appeals for the Federal Circuit reinforced the necessity of proving an intent to deceive in any claim of inequitable conduct. Kao Corp. v. Unilever United States, Inc., Case Nos. 05-1038, -1049 (Mar. 21, 2006) (Gajarsa, J.); Atofina v. Great Lakes Chem. Corp., Case No. 05-1359 (Mar. 23, 2006) (Lourie, J.; Dyk, J. dissenting). Each case repeats essentially the same admonition: "[i]ntent to deceive cannot be inferred solely from the fact that information was not disclosed; there must be a factual basis for a finding of deceptive intent," and "[M]ateriality does not presume intent, which is a separate and essential component of inequitable conduct."
In Kao, the district court found that the patentee selectively disclosed only positive test data in a declaration submitted during prosecution to show "unexpected results" and to substantiate other evidence submitted during prosecution. The undisclosed test results demonstrated an improvement over the prior art, but not as great of an improvement as the disclosed results. They also contradicted a conclusory statement of the declarant. In addition, the patentee failed to disclose the margin of error of the tests. The inventors had no explanation for their failure to report all of the results. While the district court found the omissions "material," it found that the omissions were not made with an intent to deceive, relying on the fact that the omitted test results were ultimately presented to the examine ("albeit over one year after" the declaration). While the Federal Circuit noted that "there was evidence from which the trial court could have concluded that Kao acted with intent to deceive" and that "[g]iven a blank slate, we might weigh the evidence differently," it refused to usurp the decision of the trial court as the finder of fact on the issue of intent.
In Atofina, the district court found the patentee committed inequitable conduct because the patentee failed to disclose the full translation of a Japanese reference, mischaracterized the reference and withheld test results related to the reference. The Federal Circuit reversed without remand, finding that the district court improperly inferred intent. The Court noted that the patentee disclosed an abstract of the Japanese reference and discussed the abstract in a manner consistent with the complete reference. "The duty at issued in this case is the duty of candor, not the duty of translation." Further, the Court found that the reference did not disclose the characteristics on which the district court relied to find that the patentee’s statements were misleading. Absent any valid factual basis for the finding of intent, the Court held that there was no inequitable conduct. Judge Dyk dissented, arguing that the case should be remanded for a determination of the materiality of the translation. In Judge Dyk’s opinion, the catalyst disclosed in the full translation may render a misleading statement made by applicant to the examiner characterizing the references as not teaching a particular type of catalyst.
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