Dickson Industries, Inc. v. Patent Enforcement Team, L.L.C . (Fed. Cir. 2009) (nonprecedential) 08-1372.pdf
Application of inequitable conduct jurisprudence continues to divide the Federal Circuit. Judge Rader has perhaps been the most outspoken critic of the current over-use of inequitable conduct allegations. In this case, Judge Rader was joined by Judges Mayer and Posner (by designation) in vacating a lower court finding of inequitable conduct.
The PET patent covers an apparatus for making drainage grooves at the edge of a roadway. Prior to litigation, PET had argued that the machines for making rumble strips at the side of the road also violate the patent rights. Subsequently, Dickson sued for declaratory relief.
The jury found the patent invalid and found the patent holder liable for $1.5 million for tortiously interfering with with Dickson's business relationships. The court then also (1) found the patent unenforceable due to inequitable conduct during reexamination for failure to disclose material information and (2) awarded attorney fees to Dickson.
On appeal, the Federal Circuit affirmed the anticipation decision, but vacated the decision on inequitable conduct.
The case largely centered around one prior art reference - "Spangler" - which discloses an apparatus to make rumble strips. PET knew about Spangler during reexamination of its patent, but did not disclose that reference to the PTO.
Agreeing with the Jury, the Federal Circuit found substantial evidence indicating that Spangler discloses all the elements of PET's patent - rendering the patent invalid.
Ordinarily, after finding the patent invalid, the court would not need to decide issues of inequitable conduct. Here, however, the appellate panel addressed inequitable conduct because that conduct served as the basis for the lower court's award of exceptional case attorney fees.
Amending Pleadings to Add Inequitable Conduct Charges: Allegations of inequitable conduct are parallel to charges of fraud and ordinarily must be pled with specificity. Thus, in most cases the accused infringer does not have sufficient evidence to allege inequitable conduct in the initial filing of defenses. Here, the court initially denied Dickson's motion to amend its complaint to add IC charges. However, at trial the court changed its mind and allowed the issue to be presented.
On appeal, the Federal Circuit found that PET was "prejudiced" by the inconsistent orders and was thus denied "the opportunity to adequately defend against the allegation of inequitable conduct at trial. For instance, PET was denied the opportunity to introduce evidence of good faith, which militates against a finding of deceptive intent."
The district court’s contradicting positions undermine the legitimacy of its ruling on inequitable conduct. This court cannot say with confidence that the record regarding inequitable conduct is not incomplete. Thus, this court vacates the district’s decision on the issue of inequitable conduct and remands to provide an opportunity to fully develop the record regarding inequitable conduct. Further, this Court vacates the award of attorney fees premised on inequitable conduct as premature.
In a warning to the lower court, Judge Rader again raised the notion that inequitable conduct litigation "has become an absolute plague."
Given the severe consequences of unenforceability when it is imposed on a patent, it is paramount that the district court exercise necessary caution to ensure that the patent owner met its burden of proof with respect to both the materiality and deceptive intent.
- Judges Mayer and Posner (sitting by designation) participated in the panel.
- Update: I have fixed an important typographical error. Judge Rader indicated that inequitable conduct litigation is the problem (not inequitable conduct itself).