Patent Infringement Defense for Client Upheld by Federal Circuit

Federal Circuit upholds finding of material misrepresentations and clarifies standard for inequitable conduct in Tomlinson, Rust, McKinstry & Grable's successful defense of patent infringement claim.

In the case of Digital Control Inc. v. The Charles Mach. Works, 437 F.3d 1309 (Fed. Cir. 2006), Tomlinson, Rust, McKinstry & Grable successfully proved inequitable conduct on the part of the patent holder and invalidated three of plaintiff's patents at the trial court. The case was settled at that point except for an appeal by plaintiff of the trial court's ruling. The Federal Circuit upheld the trial court's finding of a material misrepresentation and remanded the case for additional findings on the materiality of prior art omissions and intent by the trial court. The case was promptly settled on remand.

During discovery Tomlinson, Rust, McKinstry & Grable found that the patent holder had filed a false 121 declaration to obtain the patent over the rejection due to a prior invention of the defendant. It was also discovered that a significant item of prior art was withheld from the examination process, in spite of the inventor's admission that he knew of it. Selection of Byrnes & Keller of Seattle, Washington was a key factor in obtaining this result. In the appeal, the Federal Circuit clarified that an inventor is held both to the reasonable examiner standard as well as to the revised rules of the patent office found at (citation). Key experts for the defendant were Dr. Ron Rhoton, electrical engineer and Hon. Gerald Mossinghoff, formerly Commissioner of the United States Patent and Trademark Office.

Posted on: December 15th, 2006