Enforcing A Patent Obtained By Fraud On The Pto Is An Exceptional Case Supporting An Award Of Attorneys Fees

Bruno Independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 04-1114, -1115 (Fed. Cir. 2005), the federal Circuit affirmed an award of attorneys fees to defendant pursuant to 35 USC §285 as an “exceptional case” due to plaintiff’s inequitable conduct in prosecuting the patent in suit. Plaintiff failed to disclose to the Patent Office several invalidating prior art stair lifts that plaintiff submitted to the FDA to get approval of its stair lift. The ultimate determination of inequitable conduct is a matter “committed to the discretion of the trial court, and is reviewed for an abuse of discretion, while the underlying findings of materiality and intent are reviewed for clear error, and will not be disturbed in absence of a definite and firm conviction that a mistake has been made. The Federal Circuit observed that the same person responsible for the FDA filing was involved in the patent prosecution, and rejected the argument that the FDA submission had no relevance on whether the information was material, stating: one who knows of the art or information cannot intentionally avoid learning of its materiality -- it may be found that he should have known of that materiality.