In light of Therasense, we affirmed the district court's finding of the materiality of the prior art with respect to the '497 patent, and vacated the district court's other determinations of materiality and intent. Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318 (Fed.Cir.2011) (“Calcar II ”). On the question of the materiality of the prior art as to the '465 and '795 patents, we remanded for the district court to determine whether the patents would have been granted “but for” the information that the applicant did not disclose, following the test for materiality set forth in Therasense. Id. at 1335.
In order to prevail on inequitable conduct, a defendant must prove by clear and convincing evidence that (1) a patentee misrepresented or omitted material information from the PTO ("materiality") (2) with the specific intent to deceive the PTO ("specific intent"). Am. Calcar, Inc. v. Am. Honda Motor Co. , 651 F.3d 1318, 1334 (Fed. Cir. 2011) (citing Therasense , 649 F.3d at 1287 ). Inequitable conduct may involve actions by both "the patentee and the attorney who prosecuted the application that resulted in the patent-in-suit, because the knowledge and actions of applicant's attorney are chargeable to [the] applicant."
7. After Therasense, "[t]o prove inequitable conduct, the accused infringer must provide evidence that the applicant (1) misrepresented or omitted [but-for] material information, and (2) did so with specific intent to deceive the PTO." Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1334 (Fed. Cir. 2011) (citing Therasense, 649 F.3d at 1287). 8.
The first test is often referred to as the “function-way-result” test and “asks whether an element of an accused product ‘performs substantially the same function in substantially the same way to obtain the same result’ as an element of the patented invention.” American Calcar, Inc. v. American Honda Motor Co., Inc., 651 F.3d 1318, 1338 (Fed.Cir.2011). The second way to prove infringement under the doctrine of equivalents is to show that the differences between the claimed element and the corresponding infringing element are “insubstantial.”
(Id. at 28 (citing Am. Calcar, Inc. v. Am. Honda Motor Co., Inc., 651 F.3d 1318, 1340 (Fed. Cir. 2011) ("'[i]n response to' connotes that the second event occur in reaction to the first event.")).)
In re Gleave , 560 F.3d 1331, 1334 (Fed. Cir. 2009). An anticipatory prior art reference must also enable "one of skill in the art to practice an embodiment of the claimed invention without undue experimentation." Am.
35 U.S.C. § 102 provides that “[a] person shall be entitled to a patent unless ... the invention was ... described in a printed publication ... or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1); see Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed.Cir.2011). To anticipate a claim under § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.”
In light of Therasense, the Federal Circuit vacated this Court's finding of inequitable conduct and remanded the case for further proceedings. See Am. Calcar, Inc. v. Am. Honda Motor Co., Inc., 651 F.3d 1318 (Fed. Cir. 2011). After remand, the parties submitted an additional round of briefs and refined their arguments.
Accordingly, after Therasense, "[t]o prove inequitable conduct, the accused infringer must provide evidence that the applicant (1) misrepresented or omitted material information, and (2) did so with specific intent to deceive the PTO." Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1334 (Fed. Cir. 2011) (citing Therasense, 649 F.3d at 1287). I. MATERIALITY
J.A. 294. Additionally, despite CleanTech's suggestions to the contrary, see Appellant's Br. 105, inequitable conduct's materiality requirement does not provide the patentee with the right to a jury and instead must be resolved by the trial court, see Am. Calcar, Inc. v. Am. Honda Motor Co., Inc. , 651 F.3d 1318, 1333 (Fed. Cir. 2011) ("Inequitable conduct is equitable in nature, with no right to a jury, and the trial court has the obligation to resolve the underlying facts of materiality and intent."). After a bench trial, the District Court concluded that CleanTech and its attorneys at Cantor Colburn engaged in inequitable conduct in obtaining the Patents-in-Suit, rendering the patents unenforceable.