Because unenforceability is permanent invalidity, an unrelated accused infringer may likewise take advantage of an unenforceability decision under the collateral estoppel doctrine. Gen. Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1413 (Fed. Cir. 1994) ("The principle ofBlonder-Tongue . . . respecting collateral estoppel also applies to unenforceability."). Application of Blonder-Tongue, being an issue of patent law, is a matter within the exclusive jurisdiction of the Federal Circuit Court of Appeals and hence is subject to its law.

Thus, we have explicitly held that an affidavit, such as a petition to make special, is material as a matter of law if "it succeeds in prompting expedited consideration of the application." Gen. Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994). Dr. Mercer made affirmative misstatements as part of an affidavit submitted with the purpose and effect of preserving his patent application.

UC also argues that the district court clearly erred in finding that UC actually used pBR322 and then misrepresented that it used pMB9. In response, Lilly argues that under General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 30 USPQ2d 1149 (Fed. Cir. 1994), UC's misrepresentation was sufficient to support a finding of inequitable conduct, and that such a misrepresentation need not bear directly on patentability as long as that misrepresentation was made in an effort to obtain a patent more quickly than otherwise. Lilly also argues that the district court properly found that UC's alleged pattern of deceit before a variety of governmental bodies was sufficient to render the patent unenforceable under the broad doctrine of "unclean hands."

Thus, a false statement is made in a petition to make special is material if "it succeeds in prompting expedited consideration of the application." General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994). "A misstatement or omission may be material even if disclosure of that misstatement or omission would not have rendered the invention unpatentable."

A party that obtains a patent by misleading the PTO is precluded, by the doctrine of unclean hands, from enforcing the patent.General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1408 (Fed. Cir. 1994). Inequitable conduct includes the submission to the PTO of information that is materially false, whether by affirmative misrepresentations or the omission of material information, coupled with an intent to deceive.

See, Fox Industries, 922 F.2d 801, 803 (Fed. Cir. 1990). In Gen'l Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994), the court held that, "as a matter of law a false statement in a petition . . . is material if . . . it succeeds in prompting expedited consideration of the application." Here, Ulead contends that the false statements submitted by Mr. Haberman and Lex's registered patent counsel induced the PTO to twice accept the payment of maintenance fees lower than the fees required by law, to twice revive the '188 Patent, and to twice surround an expired patent with the semblance of validity.

Inequitable Conduct Applicants for patents, including their patent attorneys, are required to prosecute patent applications in the PTO with candor, good faith, and honesty. Elk Corp. of Dallas v. GAF Bldg. Materials Corp., 168 F.3d 28, 30 (Fed. Cir. 1999); 37 C.F.R. § 1.56 (Rule 56). Specifically, applicants have a duty to disclose to the PTO information they are aware of that is material to the application. 37 C.F.R. § 1.56(a). A person who obtains a patent after breaching this duty, by failing to disclose material information and intentionally misleading the PTO, has engaged in inequitable conduct and cannot enforce the inequitably acquired patent. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579 (Fed. Cir. 1997); General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1408 (Fed. Cir. 1994).

Hebert, 99 F.3d at 1116 (internal quotation omitted). The heightened duty to "look for and produce all relevant prior art" associated with a Petition to Make Special, Gen. Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994), does not demand that the applicant somehow obtain proprietary information about unsubstantiated potential prior art that he believes in good faith is immaterial. Mr. Jacobson's letter to Mr. Corrado inviting further discussion regarding Leading Lady style 460 fully satisfied Glamourmom's investigatory and reporting duties. Moreover, even crediting Leading Lady's revised chronology of its inventive endeavors on style 460, Mr. Jacobson had a good faith belief that style 460 was not material prior art. For starters, the provisional patent application for style 460 that Leading Lady sent to Mr. Jacobson lists the 029 patent as prior art and includes figures from Ms. Rothman's patent with the label "prior art."

Because we affirm the district court's determination of unenforceability with respect to the `115 patent, there is no need to consider ATMI's challenges to the jury verdicts as to the issues of infringement and validity with respect to the `115 patent. See General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1412-13 (Fed. Cir. 1994); Cargill, 476 F.3d at 1362. Accordingly, we consider the merits of ATMI's challenges only as to the jury verdict regarding infringement and validity of the `609 patent.

Flex-Rest, LLC v. Steel-case, Inc., 455 F.3d 1351, 1363 (Fed. Cir. 2006) ( quoting Purdue Pharma, 438 F.3d at 1128). Scanner argues that the district court erred in failing to assess materiality to patentability, and instead applied what it considers broad dicta in this court's decision in General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994). In General Electro, we stated "as a matter of law that a false statement in a Petition to Make Special is material if . . . it succeeds in prompting expedited consideration of the application."