Pharmacia v. Par Pharmaceuticals (Fed. Cir. 2005).
Inequitable conduct includes an intent to deceive coupled with either:
Affirmative misrepresentation of a material fact
Failure to disclose material information, or
Submission of false material information.
In this case, the CAFC affirmed a district court’s finding of inequitable conduct based on the patentee’s failure to submit certain prior art articles to the PTO along with the filing of a declaration that contradicted the articles. Intent was inferred by the materiality of the references and because one of the unsubmitted articles was co-authored by the declarant himself.
Regarding a second patent in suit that was joined to the first by a terminal disclaimer, the CAFC found that the inequitable conduct during prosecution of in the first patent did not extend to the second. Specifically, the appellate panel affirmed the conclusion that a terminal disclaimer alone does not bind two patents together for purposes of unenforceability due to inequitable conduct.