Posted On: August 17, 2009 by Pilar G. Kraman

Judge Robinson: Prior decision of inequitable conduct on remand from Federal Circuit REVERSED

In Cordis Corporation v. Boston Scientific Corporation and Scimed Life Systems, Inc., C.A. No. 98-197-SLR (D. Del. Aug. 10, 2009), Judge Robinson reversed her March 2002 decision that nondisclosure of material prior art during prosecution of the patent-at-issue was inequitable conduct which tainted the prosecution of another patent, making both unenforceable. Id. at 1. The Federal Circuit had remanded, in June 2006, for additional findings of fact regarding deceptive intent and how the later patent was tainted by the inequitable conduct related to the first patent. Id. In reversing her prior decision, Judge Robinson applied the standard reinforced by the Federal Circuit in 2008 in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 538 F.3d 1365 (Fed. Cir. 2008) related to the evidentiary burden to be met in order to prove inequitable conduct. Id. at 5-6. Although Judge Robinson determined that a material reference was not disclosed to the PTO, “defendants must prove, by clear and convincing evidence, that [the patentee] and/or [his attorney] ‘made a deliberate decision to withhold a known material reference.’” Id. at 8 (citing Star Scientific, 537 F.3d at 1366) (emphasis added). Judge Robinson determined that the clear and convincing standard had not been met by defendants because “the evidence cited in support of finding inequitable conduct is not clearly more compelling than the evidence cited in support of not finding inequitable conduct.” Id. at 8-9. In addition, nondisclosure of the material prior art could not carry over to the later patent because the prior art in question was identified in connection with this later patent and reviewed by the PTO examiner. Id. at 9-10.

Cordis Corporation v. Boston Scientific Corporation and Scimed Life Systems, Inc., C.A. No. 98-197-SLR (D. Del. Aug. 10, 2009)