A U.S. patent grants a monopoly. It entitles the owner — often a company that employs the inventor, who assigns it to her employer, usually by contractual obligation — to practice the invention exclusively for a period of time. After the monopoly ends, though, anyone may use the invention. But during the monopoly period the owner may reap handsome profits, including from those whose devices, methods, and so forth infringe the claims of the patent. The monopoly grant pays the price of encouraging innovation. So the Constitution expects.
And yet the grant of a patent sometimes lacks the magic we expect. It falls subject to a Great Many defenses — including obviousness, unpatentability, and inequitable conduct.
What of this last — the inequitable conduct? What does that mean?
The Federal Circuit, arbiter of almost all patent cases, gave guidance on that question in nearly back-to-back opinions last week. Both cases sprang from the Eastern District of Texas, which does a marvelous job of handling patent infringement cases.
Each appeal turned on the issue of intent — whether the patent applicant omitted or misdescribed "prior art" with intent to deceive the patent examiner who blessed issuance of the patent. The court in both cases, with entirely different panels of the multiple-judge court, held that the evidence didn't warrant the district courts in invalidating the patents in suit. See Ring Plus, Inc. v. Cingular Wireless Corp., 09-1537 (Fed. Cir. Aug.6, 2010); Golden Hour Data Systems, Inc. v. emsCharts, Inc., No. 09-1306 (Fed. Cir. Aug. 9, 2010).
Blawgletter's dear friends at Patently-O deserve your close attention on, among other things, the Fine Points of proving the inequitable conduct defense. Some commenters said that lying in itself implies an intent to deceive.
But we agree with the panels in their views of the intent-to-deceive question, which calls for clear and convincing evidence that misrepresenter means to hoodwink the examiner. Bully for them.