Inequitable conduct is, in my humble opinion, the most disappointing claim. Whenever I see it in a pleading, I have a fleeting moment of excitement—maybe the patentee kidnapped the examiner's dog, maybe hypnotism will play a roll, maybe just a classic honeypot?
But it's never that. 9 times out of 10, its a reference that wasn't disclosed, but it probably should have been disclosed, yadda, yadda, yadda.
Despite the high standard for pleading IC (and how boring I find it), the claim tends to be fairly resilient. A quick look at recent opinions shows that Delaware Courts have denied the last 7 motions for summary of judgment of no inequitable conduct. You have to go all the way back to February of 2022 to find a success (Extang Corp. v. Truck Accessories Group, LLC, C.A. No. 19-923-KAJ (D. Del. Feb. 8, 2022) (Order)).
Judge Williams' decision last month (unsealed last week) in EIS, Inc. v. Intihealth Ger GmbH, C.A. No. 19-1227-GBW (D. Del Aug. 23, 2023), shows just hard it can be to get rid of inequitable conduct. The inequitable conduct claim there was based on the failure to effectively disclose an allegedly material reference. The reference was in a foreign language, but the applicant had only translated the abstract for the examiner.
The plaintiff moved for summary judgment of no inequitable conduct alleging all of the usual grounds—insufficient evidence of intent to deceive, lack of materiality, all the elements. The argument on lack of materiality was particularly strong because there had already been an IPR on the patent where the PTAB had considered the fully translated reference, but had not invalidated any of the claims. The Federal Circuit upheld this determination.
Nevertheless, Judge Williams found that this determination was not dispositive because the particular combination of references considered by the PTAB was different than the combination defendant was currently advancing:
That the PTAB considered a complete translation of Guan during IPR proceedings involving the '851 and ' 097 patents does not obviate that genuine disputes of material fact exist, particularly given that the prior art obviousness combinations considered during the IPRs are not identical to those raised by EIS's technical expert. For that reason, Novoluto's analogy to the CalTech case-which held that two prior art references "were not but-for material to the patentability of the asserted claims" because those two references and their related arguments were identical to those rejected during an IPR proceeding is unpersuasive
Id. at 15 (internal citations omitted).
It's tough to imagine a much better fact pattern for the patentee on materiality. Coupled with the generally poor track record these motions have in the district, I would hesitate to rank an SJ motion on these grounds very highly.
In case you're wondering, the last case where the Court did grant summary judgment of no inequitable conduct, the issue was a lack of intent to deceive (again, for a withheld reference). That order's below as well.
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