Intellect Wireless v. HTC: Curing Misrepresentations To The PTO

Affirming a finding of unenforceability due to inequitable conduct, the Federal Circuit recently confirmed that its Therasense decision "in no way modified" its previous ruling that "the materiality prong of inequitable conduct is met when an applicant files a false affidavit and fails to cure the misconduct." Slip Op. at 7. The Federal Circuit also found that a "pattern of deceit" makes "the inference stronger" for the intent prong of inequitable conduct. Id. at 10.

Intellect Wireless Inc. ("Intellect") sued HTC Corporation and HTC America, Inc. (collectively, HTC), for patent infringement (Intellect Wireless v. HTC, No. 2012-1658 (Fed. Cir. Oct. 9, 2013)). Each asserted patent had the same specification, which disclosed providing caller identification (ID) information from a message center to a personal communication device (e.g., a cell phone) via a wireless network, and displaying the caller ID information on the cell phone's screen. Id. at 2. After a bench trial, the district court held the asserted patents unenforceable due to inequitable conduct by the sole inventor, Daniel Henderson. Id. at 3.

In its decision, the Federal Circuit stated that, "[t]o prove inequitable conduct, the challenger must show by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive" the PTO. Id. (citing In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012)). Moreover, "[w]hen the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit, the misconduct is material." Slip Op. at 3 (citing Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (en banc)).

The unanimous decision noted, "It is undisputed that Mr. Henderson's original declaration was unmistakably false." Id. at 5. Contrary to the declaration, Mr. Henderson did not actually reduce the claimed invention to practice and he did not demonstrate a prototype in July 1993. Thus, "[a]bsent curing, this alone establishes materiality." Id. at 5. The court went on to reiterate the requirements for curing—which it found Intellect did not meet.

To "cure" after filing a false declaration, the Federal Circuit explained that the applicant must "expressly advise the PTO of [the misrepresentation's] existence, stating specifically wherein it resides." Id. (citing Rohm & Haas Co...