Questions About Petition to Make Spedical Almost Sink Patent

Scanner Technologies Corporation v. Icos Vision Systems Corporation N.V., [ 2007-1399] (June 19, 2008) [CLEVENGER, Michel, Gajarsa] The Federal Circuit affirmed in part, reversed in part, and remanded the district court’s finding the asserted patents unenforceable, invalid for obviousness, and not infringed, the finding of unenforceability extending to all related patents derived from the same common parent application.
BRIEF: Patentee successfully petitioned to make the application special due to on-going infringement, and in the ensuing litigation the defendant claimed that the affidavits supporting the petition were fraudulent. In order to establish inequitable conduct, the party challenging the patent is required to establish by clear and convincing evidence that the patent applicant (1) either made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office. LOF: Both intent and materiality are questions of fact, and must be proven by clear and convincing evidence. The Federal Circuit said that a false statement in a Petition to Make Special is material if it succeeds in prompting expedited consideration of the application." However the Federal Circuit rejected the determination that the “rigid comparison” between the accused product and claims required a physical inspection. Overall the Federal Circuit criticized the adverse inference the district court made on virtually every alleged misrepresentation, finding that the existence of a reasonable alternative explanation prevented there from being clear and convincing evidence of inequitable conduct. The Federal Circuit ultimately concluded that the district court was incorrect about materiality, and therefore reversed the finding of invalidity for inequitable conduct.
The Federal Circuit also considered whether the case was exceptional LOF: Whether a case is exceptional under section 285 is a factual question reviewed for clear error. Because the district court's finding of inequitable conduct served as the essential foundation of its finding that this case was exceptional, the district court likewise erred in finding that this case was exceptional, and therefore abused its discretion in awarding attorney fees.
Turning to the question of obviousness, finding “there simply was not much evidence of secondary indicia of obviousness for the court to consider and discuss” the Federal Circuit rejected the patentee’s argument that the court failed to consider evidence of objective indicia of nonobviousness. On the substance of obviousness, the Federal Circuit found the trial testimony showed that the relatively small logical gap between the prior art and the claim in this case is closed by a person of ordinary skill in the art "pursu[ing] known options within his or her technical grasp."Lastly the Federal Circuit rejected the patentee’s complaint that the district court failed to consider infringement of all of the claims. The Federal Circuit noted that the parties had stipulated that infringement would rise and fall with claim 1, and said that even without the stipulation, the district court’s decision was correct because no evidence was introduced about infringement of the other claims.