Disclosing Expected Result as an Actual Result Leads to Unenforceable Patent

Novo Nordisk v. Bio-Technology (Fed. Cir. 2005).

The district court held Novo’s patent unenforceable due to inequitable conduct during prosecution.  The patent, covering a synthetic human growth hormone (hGH).

Inequitable conduct was based on:

• The wording of a prophetic example in the past tense — thus hiding the fact that the example was merely a prediction.  
• The fact that during the nine years of prosecution, Novo never alerted the PTO to the prophetic example — especially in light of the fact that Novo was never able to produce hGH using the described methodology.
• During interference, Novo failed to inform the BPAI that it was unable to produce hGH using the described methodology — even though it presented extensive expert testimony regarding use of the methodology.

On appeal, the CAFC affirmed, finding no “clear error” in the district court’s decision.  In addition, the CAFC rejected Novo’s argument that its attorneys should not be charged with inequitable conduct because the inventors had not fully informed the attorneys.

At the same time, Novo asks us to hold that its counsel’s failure to disclose the truth about Example 1 to the PTO or Board is excused because the inventors failed to fully inform them of the details surrounding Example 1. As we have done in similar situations in the past, we reject the “circular logic” of this request.