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Larson v. Aluminart on inequitable conduct; has the time come for en banc review?

By Lawrence B. Ebert, Esq.

This is a detailed case. Of some interest is the issue of failing to disclose to the USPTO Office Actions of the USPTO:

We now come to Larson?s failure to disclose to the Reexamination Panel the
Third and Fourth Office Actions from the ?039 Continuation. As noted above, both the
Third and Fourth Office Actions contained PTO examiner rejections and analysis
concerning claims similar to those in the ?998 patent?s reexamination. In addition, the
Fourth Office Action cited the DE ?478 patent.

Within this was an issue of inconsistent positions:

Relying on Dayco Products, Aluminart responds that Larson fails to recognize
that it is not only the references cited in the office actions that are important, but also the
substance of the examiner?s comments. According to Aluminart, the Third and Fourth
Office Actions contained remarks that are inconsistent with Larson?s arguments to the
Reexamination Panel. Specifically, in the Third Office Action, the examiner rejected the
claims at issue because the Johnson patent allegedly discloses a screen that extends
into tracks. Subsequently, Larson argued the exact opposite position to the
Reexamination Panel?that the Johnson patent does not show this feature. In addition,
Aluminart argues that the examiner in the Fourth Office Action, despite conceding that
the Johnson patent does not disclose a screen that extends into tracks, articulated a
new rejection based on the Johnson and Kemp patents, stating for the first time that the
Kemp patent discloses this feature.

The practice of mindless repetition of previous rejections arises:

Rather, Larson posits that it disclosed each material
reference disclosed in the office actions and that the examiner?s rejections were only
boilerplate reiterations of previous rejections.

The CAFC factually disagreed: This was the first time that the examiner of the ?039
Continuation conveyed such specific explanation about the Johnson patent in connection
with the ?extending into screen tracks? limitation.

In the "why wasn't this done earlier" category:

The Fourth Office Action articulated a new rejection of the ?extending into screen
tracks? limitation in view of the Johnson and Kemp patents. Specifically, in the Fourth
Office Action, the examiner found for the first time that the Kemp patent shows a
?screen end member actually being located in a screen track.?

Footnote 4 should be studied by patent prosecutors:

We do not find the Third Office Action material because of Larson?s
attorney arguments to the Reexamination Panel, which were contrary to the ?039
Continuation examiner?s interpretations in the Third Office Action. Cf. Line Rothman &
Glamourmom LLC v. Target Corp., No. 2008-1375, 2009 WL 349474, at *15 (Fed. Cir.
Feb. 13, 2009) (?While the law prohibits genuine misrepresentations of material fact, a
prosecuting attorney is free to present argument in favor of patentability without fear of
committing inequitable conduct.?); Young v. Lumenis, Inc., 492 F.3d 1336, 1349 (Fed.
Cir. 2007) (arguing contrary to an examiner?s rejection and attempting to distinguish the
claims from the prior art were not affirmative misrepresentations of material fact).
Rather, as explained, the Third Office Action was material because it contained an
interpretation and adverse decision by another examiner that refuted the patentability of
the claim limitations of the ?998 patent.

We agree with Aluminart on this point.

Of cumulative references: See, e.g., Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d
1559, 1575 (Fed. Cir. 1997) (?What is relevant is whether [the withheld material]
discloses subject matter relevant to the examination of the . . . patent application that is
not taught by the [material already before the PTO].?); Micro Chem., Inc. v. Great Plains
Chem. Co., 103 F.3d 1538, 1550 (Fed. Cir. 1997) (finding withheld reference merely
cumulative because patents disclosing the ?relevant limitations of the claims? were
already before the examiner), abrogated on other grounds by Pfaff v. Wells Elecs., Inc.,
525 U.S. 55 (1998);

Judge Linn in a concurrence:

For the foregoing reasons, I respectfully submit that the test for inferring
deceptive intent, as it currently exists, falls short of the standard ?need[ed] to strictly
enforce the burden of proof and elevated standard of proof in the inequitable conduct
context.? Star Scientific, 537 F.3d at 1365. The facts of this case suggest that the time
has come for the court to review the issue en banc.

Full post as published by IPBiz on March 20, 2009 (boomark / email).