Intellectual Property Law

Judge Thynge: Finding in favor of plaintiff after bench trial on issues of inequitable conduct and patent misuse

By Karen E. Keller, Andrew A. Lundgren et al.

In Cordance Corp. v. Amazon. com, Inc. et al., C.A. No. 06-491-MPT (D. Del. July 23, 2010), Judge Thynge recently presided over a bench trial on defendants? claims that plaintiff was guilty of inequitable conduct. During prosecution of the patent in question, the patent inventor swore that he conceived the invention prior to the effective date of another patent that formed the basis for the PTO's rejection of the patent application. Id. at 7. Defendants argued that the patent inventor ?intentionally misled the PTO? by making several misstatements. Id. at 12. Judge Thynge ultimately found, however, that defendants? ?purported examples of inconsistent testimony? and ?lack of factual support for [the patent inventor?s] declaration to the PTO that he was diligent in reducing his [invention] to practice[,]? among other things, were insufficient to prove intent to deceive by clear and convincing evidence. Id. at 27-34.

Cordance Corp. v. Amazon. com, Inc. et al., C.A. No. 06-491-MPT (D. Del. July 23, 2010)

Full post as published by Delaware IP Law Blog on August 06, 2010 (boomark / email).