Opinion
Civ. No. 97-2298 (RLE)
November 1, 2000
At Duluth, in the District of Minnesota, this 1st day of November, 2000.
I. Introduction
This matter came before the undersigned United States Magistrate Judge pursuant to the consent of the parties, as authorized by Title 28 U.S.C. § 636 (c). This is a civil action, brought by the owners of a Patent for an automatic transmission fluid changing device, against a competitor, for claimed damages relating to patent infringement, and false advertising. The Trial of the action commenced on April 25, and continued through May 4, 2000. Ultimately, a Jury returned a Verdict in favor of the Plaintiffs, on both the patent infringement and false advertising claims. One issue, being equitable in nature, was reserved for the Court's determination. See, PerSeptive Biosystems, Inc. v. Pharmacia Bio- tech, Inc., 225 F.3d 1315, 1317 (Fed. Cir. 2000) ("The defense of inequitable conduct is entirely equitable in nature, and thus not an issue for a jury to decide."), citing Paragon Podiatry Lab.. Inc. v. KLM Labs., Inc., 284 F.2d 1182, 1190 (Fed. Cir. 1993); Gardco Mfa., Inc. v. Herst Lichting Co., 820 F.2d 1209, 1211-13 (Fed. Cir. 1987).
At Trial, and outside the presence of the Jury, the Defendant argued that the Plaintiff James Viken ("Viken"), and/or his Patent attorney, Warren Sturm ("Sturm"), engaged in inequitable conduct before the U.S. Patent and Trademark Office ("PTO"), thereby rendering his Patent — the Viken Patent — unenforceable, in that he assertedly made several material misrepresentations in his patent specification, with an intent to mislead the Patent Examiner. Viken denies any inequitable conduct, on either his part, or on the part of his Patent counsel, and contends that the Defendant has failed to present any evidence upon which such a finding could be legitimately made. Both parties presented evidence on the inequitable conduct issue.
Following the Trial, the parties requested leave to submit post-Trial written submissions, in the nature of final arguments, on the issue of inequitable conduct, and leave was so granted. Upon our receipt of those arguments, we took the matter under advisement. For these purposes, the Plaintiffs have appeared by Alan M. Anderson, and Christopher K. Larus, Esqs., and the Defendant has appeared by Warren E. Olsen, and Karl L. Cambronne, Esqs.
Based upon the entirety of the Record before us, the files, records, and argument of counsel, and being fully advised in the premises, we now make the following Findings of Fact, and Conclusions of Law, as to the affirmative defense of inequitable conduct:
II. Findings of Fact ~
1. The Defendant accuses Viken, and Sturm, of having committed inequitable conduct by "repeated instances of selectively withholding material portions of prior art," by "doctoring a figure given to the Patent Examiner to delete material features," by "mischaracterizing the prior art to obfuscate the significance of the withheld portions and deleted features," by "entirely failing to disclose prior art brake bleeder devices," by "fabricating deficiencies in the prior art [Becnel] patent," and by "making misleading representations about alleged tests to support the fabricated deficiencies of the prior art." See,Defendant's Opening Brief on Inequitable Conduct, at 1-2. Having carefully reviewed the Record before us, we find no clear and convincing showing that Viken, or Sturm, engaged in any form of inequitable conduct in applying for, or in otherwise obtaining, the Viken Patent. Moreover, given our opportunity to carefully assess the demeanor of both Viken, and Sturm, as witnesses, we find that their testimony is believable in all critical respects. Specifically, we find no clear and convincing evidence that Viken, or Sturm, either failed to make material disclosures to the PTO, or made material misrepresentations. Further, we find no competent evidence, direct or circumstantial, that either Viken, or Sturm, intended to mislead the PTO in any material respect. At best, the Defendant's accusations are an unsupported hodgepodge of conjecture and surmise, interlaced with nothing more than the Defendants' suspicions, economic self- interest, and adversarial mistrust.
The Plaintiffs complain that, once again, the Defendant has resorted to a "trial by ambush" approach, by manufacturing arguments, after the Trial, which were never raised at a time when the Plaintiffs could conduct discovery, or present evidence at Trial, as to the newly raised contentions. See, Plaintiffs' Reply Memorandum randum Regarding Alleged Inecuitable Conduct, at 1-2. As the Plaintiffs correctly note, prior to Trial, the Defendant's inequitable conduct defense was predicated on the asserted failure of the Viken Patent Application to disclose two prior art Patents, and on the purported inoperability of one or more embodiments disclosed in the Patent Application. We are unable to say, with precision, that one or more of the newly formulated arguments was not fostered by Trial evidence and, in that sense, was tried with consent. In any event, we find, and conclude, that the newly devised arguments have no greater merit than those which were disclosed prior to Trial.
2. Contrary to the Defendants' view, that the Plaintiffs failed to disclose the Becnel Patent to the PTO, the evidence clearly demonstrates that Viken repeatedly disclosed the Becnel Patent during the prosecution of his Patent Application. For example, Viken identified the Becnel Patent by title, name, and number, as part of a "list of prior art encountered in the course of a search of the prior art with which [Viken's] invention is con- cerned." Affidavit of Christopher K. Larus, Ex. B., at col. I; II. 15-6, 27-28. Indeed, by our count, the Becnel Patent is identified as prior art on no fewer than nine occasions in the Viken Patent Application.
A complete rendition of the factual predicates of this action is contained in Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp.2d 1045, 1088 (D. Minn. 1999). Necessarily, we now confine our Findings to those factual matters which are germane to the inequitable conduct defense.
3. Viken also referred to the Becnel Patent in the text of his Patent Application by stating, as follows:
Of the above references, some of which pertain to other activities involving the addition or removal of fluid from various and sundry mechanisms, the Becnel U.S. Pat. No. 3,513,941 for FLUID CHANGE MEANS FOR AUTOMATIC TRANSMISSIONS and the DiMatteo U.S. Pat. No. 4,745,989 * * * are believed to be the most directly pertiment to my invention. In Becnel and DiMatteo, a method and apparatus are described for draining and refilling the fluid in a motor vehicle automatic transmission. The similarities between Becnel and DiMatteo are almost surprising in that each of them provides a cooler outlet and some arrangement for adding fluid to the transmission either through the filler port or to a return line from the transmission cooler fluid. When a transmission cooler line is opened and drained with no restriction the rate of flow at which the fluid is exhausted rapidly increases and fluid is pumped out of the transmission and torque converter much faster than it can be replaced by being pumped in the return line as specified in Becnel's invention, resulting in a disruption of the usual internal and external fluid flow rates and flow patterns which occur normally; this disruption includes an intermittent, recurrent starvation condition to certain internal transmission components resulting in undue stress and frequent damage to those components. Becnel's invention appears to have the capability to supply fresh fluid into the transmission through the return line from the cooler back to the transmission at a predetermined, pre-selected flow rate, but his invention allowed no clear means of balancing and/or matching that flow rate to the rate at which fluid is normally circulated through the cooler line back to the transmission or regulating the exhausting of aged fluid into the wasted receptacle to produce a balanced substitution of fresh fluid for aged fluid.
* * *
In the course of arriving at the method and apparatus of my invention, the concepts present in Becnel and DiMatteo were utilized in a similar manner and it was discovered that most, if not all, of the transmissions operated upon became excessively hot or were subject to internal damage to the fluid seals, rear bearings, or other internal components because it was impossible to maintain equality between the fluid added and the fluid drained, because it was impossible to maintain normal fluid flow rates and flow patterns external to and internal within the transmission and its component parts. In other words, what is lacking in Becnel or DiMatteo is a realistic, functional, reliable means or a method for maintaining a balance to provide a dynamic equality of fluid added and fluid removed by replacing aged fluid with fresh fluid through an opened transmission cooler line without disrupting normal internal and external flow rates and flow distribution patterns.Id., at col. I; II, 38-68. 1-55 [emphasis added]
4. While it is true that Sturm did not submit a copy of the Becnel Patent, or any other prior art Patent, to the Patent Examiner who was considering the Viken Patent Application, the Application plainly disclosed not only the materiality of the Becnel Patent, but also the Applicant's belief that the Becnel Patent was one of two which were "most directly pertiment to [Viken's] invention." Id. In addition, Sturm submitted an illustration of prior art, which depicted one figure — Figure No. 5 — which is similar to one contained in the Becnel Patent. See, id., Figure No. 1 This illustration — which appears as Figure No. 1 of the Viken Patent — represented a hand-drawn conceptual sketch of the Becnel device.
5. The Defendant has maintained that the conceptualization somehow misled the PTO, but the evidence presented at Trial did not establish that the submission of the sketch of Figure No. 5 of the Becnel device represented a material misrepresentation to the Parent Examiner, on the part of Viken. At Trial, the Defendant's expert, Eugene Johnson ("Johnson"), testified that Figure No. 1 of the Viken Patent was not "a fair and complete showing of what Becnel teaches in Figure No. 5," and was, therefore, "misleading". See, Defendant's Opening Brief on Inequitable Conduct, Ex. C., p. 44, ln. 13-14. This characterization was primarily based upon the fact that, according to Johnson:
There is a gauge or flow meter 46 shown in figure 1 of Becnel that's not depicted at all in figure 1 as presented by Mr. Viken in the patent application. There is also a valve 66 in Becnel that's shown that's not represented at all in the Viken version of figure 1.Id., at pg. 38, ln. 19-23.
Although the sketch submitted to the Patent Examiner, by Sturm, did not precisely detail Figure 5 of the Becnel Patent, Johnson testified that, under the Rules and practices of the PTO, Viken was not required to submit an exact copy of the Becnel Patent, or any other prior art Patent, to the Patent Examiner. Id., at pg. 51, ln. 16. Indeed, Johnson testified that, under the applicable Rules of the PTO, an applicant can properly disclose prior art by describing it in the Patent specification.Id., at pg. 52, ln. 21-25. Thus, there is no evidence that Sturm violated any Regulation, or Rule, which governs the practice before the PTO, by providing the hand-drawn conceptual sketch to the Patent Examiner, rather than an actual copy of the Becnel Patent. Further, the Defendant failed to produce any convincing evidence that a more accurate depiction or Figure 5 of the Becnel Patent would have influenced the decision of the Patent Examiner, on whether to issue a Patent to Viken.
6. No evidence was presented to credibly establish that the Patent Examiner failed to reviewed the Becnel Patent, or was influenced by Sturm's illustrative depiction of Figure No. 5 of the Becnel Patent. At Trial, Nickolas Westman ("Westman"), who is a member of the Patent Bar, testified that the Patent Examiner, who was assigned to review Viken's Application, was a "primary" Examiner, who was experienced in considering Patent Applications. See, Larus Aff., Ex. A. Vol. III, at 22. Westman also testified that the Becnel Patent was within the particular Patent field searched by the Patent Examiner, when he was considering Viken's Patent Appli- cation. Id., at 19. Further, Westman testified that there were initials, or letters, next to the description of the Becnel Patent, as contained in the Viken Patent Application, and that those notations could well have been made by the Patent Examiner to reflect his consideration of the Becnel Patent. Id., at 20-21. In addition, during cross-examination, Westman noted that, although the Manual of Patent Examining Procedure ("MPEP") instructs Examiners to write in the margins of a Patent Application the word "considered, " or some other equivalent, in order to denote the checking of a listed prior art reference, in his experience, such notations were often not made, and therefore, Westman opined that, in all likelihood, the Patent Examiner merely failed to follow these specific instructions, while investigating Viken's repeated references to the Becnel Patent. Id., at 43-44.
7. In contrast, at Trial, Johnson testified that, based on the file history, and his experience with Patent Applications, "the compelling probability is that the examiner did not pay much attention to the Becnel patent, if any." Defendant's Opening Brief on Inequitable Conduct, Ex. C., p. 35, ln. 17-25. However, Johnson admitted that he had "no way of knowing" whether the Patent Examiner reviewed the Becnel Patent. Id., atp. 45, ln. 2-4.
8. The Becnel Patent claims a "method of simultaneously draining and refilling" automatic transmission fluid. Larus Aff., Ex. E. col. III; II, 7-10. In his Patent Application, Viken stated:
In the course of arriving at the method and apparatus of my invention, the concepts present in Becnel * * * were utilized in a similar manner and it was discovered that most, if not all, of the transmissions operated upon became excessively hot or were subject to internal damage to the fluid seals, rear bearings or other internal components because it was impossible to maintain equality between the fluid added and the fluid drained, because it was impossible to maintain normal fluid flow rates and flow patterns external to and internal within the transmission and its component parts.Id., Ex. B., col. II, 38-48 [emphasis added].
Thus, Viken never claimed to have used the specific embodiment that was disclosed in the Becnel Patent, as he was addressing conceptual similarities.
10. While the Defendant theorizes that Viken, and Sturm, devised an approach to the PTO which would selectively withhold material facts concerning the Becnel Patent, and would mollify an Examiner into disregarding the obligations of the PTO to investigate the propriety of Viken's Patent Application, through the "doctoring" of a conceptual illustration, and the fabrication of deficiencies in the Becnel device, we search this Record in vain for any clear or convincing support for such a theorization. As to the illustrative sketch, we have previously determined "that the Becnel Patent does not expressly teach a means for equalizing the flow of used fluid into the receiver, and new fluid out of me fluid source." Transclean Corn. v. Bridgewood Services, Inc., 77 F. Supp.2d 1045, 1080 (D. Minn. 1999). We went on to find that, as a matter of law, there was no showing that "a person of ordinary skill would read the Becnel Patent specification, and recognize that this method of flow equalization is necessarily present in the embodiment disclosed in Fig. 5." Id. at 1081. Nothing presented at Trial demonstrated any material omission in the conceptualized illustration in the Patent Application, owing to the absence of certain meters and valves, or that the illustrative depiction was somehow materially misleading. We find that no such misinformation was presented in the Viken Application.
The Defendant correctly observes that, previously, we determined, on the basis of a paper Record which included Becnel's declaration and Johnson's opinion, that the Defendant had "color- ably demonstrated that Becnel was able to read the fluid guages, and then manually adjust the flow of fresh fluid so as to equalize the fluid flows, but neither his declaration, nor Johnson's opinion, offer any explanation as to how a person of ordinary skill would read the Becnel Patent specification, and recognize that this method of flow equalization is necessarily present in the embodiment disclosed in Fig. 5." Transclean Corp. v. Bridgewood Services, Inc., supra at 1081. We went on to find that, "[i]n light of this failing, no reasonable Jury could conclude that [the Defendant] has shown, by clear and convincing evidence, that Claim 1 of the Viken Patent is anticipated by the Becnel Patent." Having now observed Secnel as a witness, and the significant impeachment which undermined the substance of his testimony — which was not possible in conjunction with his prior declaration — we would no longer ascribe to the view that the Defendant had "colorably demonstrated" that Becnel was able to effectively assure equalized fluid flows.
9. At Trial, Viken testified that he conducted tests using a method similar to that disclosed in the Becnel Patent, on several occasions, and that, while conducting those tests, he found that, before the entire capacity of the transmission had been supplied with fluid, he was forced to turn off the vehicle's engine because the transmission had discharged its fluid supply, and consequently, had become "starved" for fluid. This testimony was corroborated by the production of receipts, which Viken testified were evidence of his purchase of materials used in conjunction with the tests. See, Larus Aff., Ex. D. Although the Defendant claims that Viken' s tests did not accurately reflect the processes described in the Becnel Patent, and also, that any automobile damage that resulted from the tests was likely due to Viken's deficient equipment operation, there is no clear and convincing evidence, in this Record, to support these assertions. The testimony, and corroborative evidence, which addresses the tests that were performed by Viken, and the results that were achieved, are sufficiently clear as to discount any responsible notion that Viken, or his Patent counsel, were intentionally attempting to mislead the PTO by proffering test results that were never obtained, or that were materially at odds with the concepts contained in the Becnel Patent.
The Defendant contends that "Becnel testified that he used a device identical to that illustrated at Fig. 5 of in [sic] his "941 patent on hundreds of cars between at least 1967 and at least 1969, and never had any problems with damaged transmissions." Defendant's Opening Brief on Inecuitable Conduct, at 8 [emphasis in ori- ginal] . As we have previously noted, we find little credible in Becnel's testimony, as he demonstrated a persistent inability to accurately chronicle events, or to adequately explain significant contradictions in his prior statements and testimony. Our disbelief of Eecnel's testimony appears to have closely paralleled that of the Jury.
11. The remaining misrepresentations, which assertedly undergird the Defendant's inequitable conduct defense, are not established in this Record. According to the Record before us, and our independent legal research, a Patent Applicant is under no obligation to disclose all conceptualizations that it may believe could be construed, by someone, as constituting prior art. We have no clear or convincing evidence that Viken, or Sturm, failed to disclose what they responsibly regarded as prior art. However the Defendant, and Becnel, might characterize the prior art brake bleeder device, we find their contention, that the failure of the Viken Patent Application to refer to such devices as prior art, should be viewed as a material misrepresentation, to be without competent evidentiary support, and truly an after-the-fact rationalization.
12. In effect, the Defendant urges that the sum of the Plaintiffs' inequitable conduct evidences their effort to materially mislead the PTO, even though the individualized bases for a finding of inequitable conduct, are not probative. We are not so per- suaded. This Record is bereft of any clear and convincing evidence of material misrepresentation on the part of the Plaintiffs, or their legal representatives, whether the evidence is compartmentalized, or considered collectively.
13. At Trial, no evidence was presented to establish an intent, on the part of Viken, either directly, or through Sturm, to deceive the Patent Examiner. Although the Defendant seeks to infer an intent to deceive on the part of Viken, from Sturm's allegedly misleading preparation of his Patent Application, there was no evidence presented from which we may reasonably infer such an intent. First, Viken testified that, prior to engaging the services of Sturm, he had never before applied for a Patent. Also, Sturm testified that the illustration depicting the Becnel device, which was submitted with Viken's Patent Application, was most likely prepared by a professional artist, based upon instructions from Sturm. See, Larus Aff., Ex. A. Vol. IV, at 8. These instructions took the form of a sketch, that was created by Sturm. Id. Sturm testified that he was well-aware of the duty of candor and full disclosure that were owed to the PTO by a Patent Applicant, and that he advised Applicants of that duty. Id. at 22. Sturm also testified that he had never, to his knowledge, intentionally misrepresented or omitted anything to the PTO during his 46 years of experience practicing in the field of Patent Law, and that he had no knowledce of any behavior, on the part of his clients, that would qualify as an intentional misrepresentation, or a conscious failure to disclose information to the PTO, during the Patent Application process. Id. at 21-22.
14. Specifically, Sturm testified that he had no knowledce regarding an intentional misrepresentation, or a failure to disclose, on the Viken's behalf, during the processing of the Viken Patent Application. Id., at 22. Sturm further testified that he believed that he was fulfilling his duty of full disclosure of the Becnel Patent, when he brought it to the attention of the Patent Examiner, by citing it in the specification.Id., at 22-23. No evidence was presented, by the Defendant, that would lead us to question Sturm's veracity. Giving due weight to our observation of the demeanor of this witness, and affording full weight to the evidence as a whole, we conclude that Sturm is a credible witness. Therefore, we conclude that there is no evidence to suggest that Sturm purposefully withheld information from the Patent Examiner, in an attempt to prevent the Examiner from properly considering the Becnel Patent.
Although it appeared plain to the Court that Sturm had not been prepared for his testimony, by the conduct of a close review of his work file, and that he had not been regularly engaged to provide testimony in Court proceedings, he answered the questions put to him with deliberate care, and we found nothing in his demeanor, or deportment, that would fairly detract from his believability as a witness.
15. At Trial, Westman testified, as a qualified expert witness on such matters, as follows:
In my opinion, there wasn't any material misrepresentation [on the part of Viken]; and in my opinion, there was — if there was any type of a misrepresentation or misstatement, I don't see anything that indicates an intent to do so.
* * * The introductory portion of Mr. Viken's patent mentions the Becnel patent specifically, by number and name.
* * *
And so, to me, that means that there wasn't any intentional withholding of the showings of the Becnel patent.Id., Vol. III, at 17.
In addition, Westman testified that, after examining the Patent, he did not observe any evidence that would suggest an intent, on Viken's part, to mislead. Id. at 23.
16. At Trial, the testimony of Johnson failed to lend credence to the assertion that Viken, either directly, or through Sturm, intentionally misled the Patent Examiner. Rather than testifying that either Viken or Sturm intended to deceive the Patent Examiner, Johnson stated:
I said in my deposition that I know of no overt act or statement or evidence that would tell me that he intended to deceive the examiner. He could have. But I have no way of knowing, based on overt evidence or statements, that he intended to deceive the examiner.Id., Vol. V, at 54 [emphasis added].
Having painstakingly reviewed this Record, we join in Johnson's view, that no evidence has been presented which can properly give rise to a reasonable inference that either Viken, or Sturmn, intended to mislead the PTO in the submission of Viken's Patenc Application.
17. The attached Memorandum is expressly made a part of these Findings of Fact, insofar as the Memorandum contains factual findings.
III. Conclusions of Law
1. The Court has jurisdiction over this action pursuant to Title 28 U.S.C. § 1331 and 1338, as the action arises under the Patent laws of the United States. See, Title 35 U.S.C. § 1, et seq. The Court also has personal jurisdiction over the parties under Title 28 U.S.C. § 1391 (c). Venue in this District is proper in accordance with Title 28 U.S.C. § 1400 (b).
2. The Defendant has failed to prove, by clear and convincing evidence, that Viken, either directly, or through Sturm, made material misrepresentations, or material omissions, in his Patent Application with an intent to mislead the Patent Examiner.
3. The Defendant's failure to prove, by clear and convincing evidence, the predicate showings of material misrepresentations, or omissions, and of an intent to deceive, leaves no open question as to the enforceability of Viken's Patent. There being no showing of inequitable conduct, the Viken Patent is enforceable.
4. The Plaintiffs are entitled to a Judgment which dismisses the inequitable conduct defense of the Defendant, with prejudice.
5. The attached Memorandum is expressly made a part of these Conclusions of Law, insofar as the Memorandum contains legal conclusions.
IV. Order
That, given the foregoing Findings of Fact and Conclusions of Law, the Court hereby directs that the Defendant's inequitable conduct defense be dismissed with prejudice and, by separate Order, we will direct that Judgment be entered in favor of the Plaintiffs.
MEMORANDUM
A. Standard of Review. The law applicable to the affirmative defense of inequitable conduct is well-settled. "Applicants for patents, including their legal representatives, have the duty to prosecute patent applications in the PTO with candor, good faith, and honesty." Life Technologies, Inc. v. Clontech, 224 F.3d 1320, 1324 (Fed. Cir. 2000), citing Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995);37 C.F.R. § 1.56 (1999). "In-equitable conduct requires that the patentee withheld material information from the patent examiner or submitted false material information, with the intent to deceive or mislead the examiner into granting the patent." Upjohn Company v. Mova Pharmaceutical Corp., 225 F.3d 1306, 1312 (Fed. Cir. 2000), citingKingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 872 (Fed. Cir. 1988) (en banc). As the Court recently explained, in Per- Septive Biosystems, Inc. v. Pharmacia Biotech, Inc., supra at 1317:
"Determination of inequitable conduct requires a two-step analysis. First, the trial court must determine whether the conduct meets a threshold level of materiality. The trial court must then also determine whether the evidence shows a threshold level of intent to mislead the PTO.
Citing Baxter Int'l Inc. v. McGaw, Inc., 149 F.3d 1321, 1327 (Fed. Cir. 1998); Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1439 (Fed. Cir. 1988)
The threshold findings of materiality, and intent, "must be made by clear and convincing evidence." Fiskars, Inc. v. Hunt Manufacturing Co., 221 F.3d 1318, 1326 (Fed. Cir. 2000), citing Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., supra at 876. "To be clear and convincing,' the `evidence must produce a firm belief or conviction that the matter sought to be established is highly probable and free from serious doubt.'" Transclean Corp. v. Bridgewood Servicesm, Inc., supra at 1070, quoting Maxwell v. K Mart Corp., 88C F. Supp. 1323, 1329 (D. Minn. 1995).
At the time that Viken filed his Patent Application," [i]nfor mation [was] material where there [was] a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Upjohn Company v. Mova Pharmaceutical Corp., supra at 1312, citing 37 C.F.R. § 1.56, prior to the 1992 amendment. "An applicant can not be guilty of inequitable conduct if the reference was cited to the examiner, whether or not it was a ground of rejection by the exami- ner. Fiskars, Inc. v. Hunt Manufacturing Co., supra at 1327. In addition to materiality, the party who alleges inequitable conduct must also prove an intent to deceive.Life Technologies, Inc. v. Clontech Laboratories, Inc., supra at 1324 ("Materiality and intent to deceive are distinct factual inquiries, and each must be shown by clear and convincing evidence."). The standard of materiality does not require that, "but for" the misconduct, the Patent would not have issued. Merck Co. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1421 (Fed. Cir. 1989). Rather, the standard expects that "[c]lose cases should be resolved by disclosure, not unilaterally by the applicant." LaBounty Mfg. v. International Trade Com'n, 958 F.2d 1066, 1076 (Fed. Cir. 1992)
"Intent need not be proven by direct evidence; it is most often proven by a showing of acts, the natural consequence of which are presumably intended by the actor." Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1374-75 (Fed. Cir. 2000), quoting Molins PLC v. Textron, Inc., supra at 1180. "Generally, intent must be inferred from the facts and circumstances surrounding the applicant's conduct."Id., quoting Mo- lins PLC v. Textron, Inc., supra at 1180-1181. Nevertheless, "[i]ntent to deceive can not be inferred solely from the fact that information was not disclosed; there must be a factual basis for a finding of deceptive intent." Upjohn Company v. Mova Pharmaceutical Corp., supra at 1312, quoting Hebert v. Lisle Corp., 99 F.3d 1109, 1116 (Fed. Cir. 1996). "Proof of high materiality and that the applicant knew or should have known of that materiality makes it difficult to show good faith to overcome an inference of intent to mislead." Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., supra at 1375. "The more material the omission or the misrepresentation, the lower the level of intent required to establish inequitable conduct, and vice versa."Id., quoting Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1257 (Fed. Cir. 1997).
"Once these threshold levels of materiality and intent are satisfied, the ultimate determination of inequitable conduct is within the discretion of the trial court, which must make the equitable judgment concerning whether the applicant's conduct is so culpable that the patent should not be enforced." Life Technolo- Pies, Inc. v. Clontech Laboratories, Inc., supra at 1324. "[C]ourts must view the involved conduct "in light of all the evi- dence' and must then determine whether that conduct in its totality manifests a sufficiently culpable state of mind to warrant a determination that it was inequitable." Molins PLC v. Textron, Inc., supra at 1181, quoting Consolidated Aluminum Corp. v. Foseco Int'l, Ltd., 910 F.2d 804, 809 (Fed. Cir. 1990).
B. Legal Analysis. Where, as here, the Defendant has been found guilty, by a Jury, of Patent infringement, the Defendant can find insulation, from the proven infringement, by demonstrating that the Patent was unenforceable because it was secured by unscrupulous means — that is, by inequitable conduct. Not surprisingly, "the habit of charging inequitable conduct in almost every major patent case has become an absolute plague." Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988); Molins PLC v. Textron, Inc., supra at 1182 ("[U]njustified accusations of inequitable conduct are offensive and unprofessional," and [t]hey have become a "plague' on the patent system."). In our considered judgment, that "plague" has improperly been visited upon this case.
Lest there be the slightest doubt to the contrary, in rendering our Findings and Conclusions, we have faithfully applied the Standard of Review that we have here recounted.
We find the notion, as espoused by the Defendant, that the Plaintiffs only referenced the Becnel Patent in their Patent Appli- cation, as pertiment prior art, because they wanted to shield the substantive pertinence of that Patent from the Examiner's attention to be implausible, if not perverse. We have no reason to believe, and the evidence before us does not suggest one, that a party seeking to shield a Patent from a Patent Examiner's review, would so pointedly identify, and so repeatedly reference that Patent, as have the Plaintiffs in the Viken Patent Application. We think it self-evident, as the Court confirmed inFiskars, Inc. v. Hunt Manufacturing Co., supra at 1327, "that when a reference was cited to the patent examiner it can not be deemed to have been withheld." The Court went on to plainly hold that "[a]n applicant can not be guilty of inequitable conduct if the reference was cited to the examiner, whether or not it was a ground of rejection by the exami- ner." Id.; see also, Molins PLC v. Textron, Inc., supra at 1185 (failure to cite prior art references not inequitable conduct where file included omitted patents); Scripps Clinic Research Found. V. Genentech, Inc., 927 F.2d 1565 1582 (Fed. Cir. 1991) ("When a reference was before the examiner, whether through the examiner's search or the applicant's disclosure, it can not be deemed to have been withheld from the examiner."); Orthopedic Equipment Co. v. All. Orthooedic Appliances, Inc., 707 F.2d 1376, 1383 (Fed. Cir. 1983) (nondisclosure not material because the examiner independently ascertained the existence of the undisclosed prior art).
The Defendant's reliance on Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368 (Fed. Cir. 2000), is misplaced. There, the Patent Applicant provided the PTO with a not. fully translated foreign language version of prior art, and that portion of the art that was translated was misleadingly incomplete. In concluding that the resultant Patent was unenforceable, the Trial Court found both material omissions, and a deceitful intent. Here, we find neither predicate showing, for the invocation of an inequitable conduct defense, to have been made either clearly or convincingly.
We think this is a logical, if not an unavoidable incident, of the Court's recognition that "a reference need not be provided to the examiner if it is merely cumulative to or less material than other references before the examiner." Upjohn Company v. Mova Pharmaceutical Corp., supra at 1312, citing Baxter Int'l, Inc. v. McGaw, supra at 1328. Here, rather than an omission, the prior art references, as to which the Defendants complain, were expressly disclosed to the PTO. While the Defendant presumes that the Patent Examiner failed to perform his obligation to responsibly investigate Viken's Patent Application, "[a]bsent proof to the contrary, we assume that the examiner did consider the references." Molins PLC v. Textron, Inc., supra at 1184, citingNorthern Telecom, Inc. v. Dataooint Corp., 908 F.2d 931, 939 (Fed. Cir. 1990) ("It is presumed that public officials do their assigned jobs."), cert. deni- ed, 498 U.S. 920 (1990). We decline to assume, given the absence of any competent evidence to support the notion, that the Patent Examiner abdicated his nondelegable obligation to investigate those references of prior art that Viken, and Sturm, had plainly brought to his attention.
We understand the Defendant's contention, that Viken's description of Becnel's Patent was inaccurate, or purposefully deceitful. Apart from the Defendant's conclusory characterization or the Becnel references, we find no credible evidence to support that claim, much less clear and convincing evidence. Apart from the Defendants' tortured misconstruction of Viken's explication of the Becnel device, as that conceptual explanation was contained in the Viken Patent Application, the Record is devoid of any credible, and competent showing, that the Defendant's mischaracterization has any basis in fact. We have had the unobstructed opportunity to view the conflicting testimony of the parties' witnesses and, based upon the witnesses' demeanor, deportment, and substantive testimony, we are not persuaded that the Defendant has carried its burden of proof on the affirmative defense of inequitable conduct. Rather, the believability of Viken, and Sturm, have persuaded us that they neither sought to withhold material evidence from the PTO, nor did they otherwise engage in anything less than candor in their exchanges with the Patent Examiner.
Simply put, we have been directed to no evidence, much less clear and convincing evidence, of any withholding of prior art with an intent to deceive, or any material misrepresentations, in Viken's Patent Application, which would properly invoke the inequitable conduct defense. Moreover, apart from the Defendant's sinister suspicions, we have been pointed to no evidence that either Viken, or Sturm, intended to deceive the PTO with respect to Viken's Patent Application. Accordingly, we have nothing to balance in terms of any showing of the Plaintiffs' culpability and, therefore, we conclude, based upon all of the evidence of Record, that the Defendant has failed to sustain its burden that Viken, Sturm, or any representative of the Plaintiffs, engaged inequitable conduct so as to render the Viken Patent unenforceable.
As the Court of Appeals for the Federal Circuit has repeatedly recognized, "[g]iven the ease with which a relatively routine act of patent prosecution can be portrayed as intended to mislead or deceive, clear and convincing evidence of conduct sufficient to support an inference of culpable intent is required." Moulins PLC v. Textron, Inc., supra at 1181, quoting Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 939 (Fed. Cir. 1990), cert. denied, 498 U.S. 920 (1990) This is just such a case, where inventiveness has woven a cloak of deception which bears no likeness to the reality of the Record before us.