Claim for "Chromium Catalyst" Limited by Specification and Disclaimers in Prosecution History

Case: Atofina v. Great Lakes Chemical Corp., No. 05-1359 (Fed Cir. 3/23/06)

The One Sentence Summary: The panel affirmed non-infringement findings, but reversed findings of anticipation and inequitable conduct.


What They Were Fighting About: After a bench trial, the district court ruled that there was no literal infringement of a patent for synthesizing difluoromethane, that the claims were anticipated and that the applicant committed inequitable conduct.

Federal Circuit Holdings:

• The district court properly found non-infringement due to a claim construction of the term "chromium catalyst" as excluding active ingredients other than chromium. The specification referred to pure chromium as the catalyst. The prosecution history included disclaimers of catalysts other than pure chromium in response to rejections based on prior art showing mixed catalytic compounds. Even though a narrower disclaimer would have been sufficient to distinguish the prior art, the actual disclaimer was broader than necessary and thereby narrowed the claims.
• The district court clearly erred in finding anticipation of a narrower range of ingredients by a reference showing a broader range. The narrow species was not anticipated by the prior art reference disclosure of a broad genus. Overlapping ranges of the prior art reference and the claimed invention did not anticipate the claims.
• The district court erred in finding inequitable conduct due to failure to submit a full translation of a Japanese patent. There was an insufficient factual basis for finding intent to deceive. The abstract that was disclosed was similar to the full translation.
  
  

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Examiner's Amendment Presumed to Be Limiting in Claim Construction

Case: Schoenhaus v. Genesco, Inc., No. 05-1278 (Fed Cir. 3/15/06)


The One Sentence Summary: The panel affirmed summary judgment based on implied claim construction rulings where the term "orthotic device" had to be interpreted consistently across all claims where it appeared, and the term "rigid" added by Examiner's Amendment must be interpreted to exclude semi-rigid elements.


What They Were Fighting About: The district court granted summary judgment of non-infringement, holding that a claim for an "ortothic device" could not be interpreted to encompass a shoe with rigid elements, and that the term "rigid" added by Examiner's Amendment excluded semi-rigid elements.

Federal Circuit Holdings:

• The term "orthotic device" appearing in both claims 1 and 2 was presumed to have the same meaning unless it was clear from the specification and prosecution history that the term had different meanings at different portions of the claim.
• Substituting plaintiff's proposed construction of orthotic device as a shoe lead to a nonsensical construction that must be rejected.
• While an applicant may be his own lexicographer, the specification and prosecution history did not show evidence that the term "rigid" was defined to include "semi-rigid."
• An Examiner's amendment to include the word "rigid" must be presumed to be added as a limiting element for a substantial reason related to patentability.
• The broader disclosure of the specification for a semi-rigid construction was surrendered to the public when the claims had narrower scope of "rigid" material.
  
  

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Summary Judgment of Patent Non-Infringement May Be Granted Without Evidence of Non-Infringement

Case: Exigent Technology, Inc. v. Atrana Solutions, Inc., Case No. 05-1338 (Fed. Cir. 3/22/06)

The One Sentence Summary: Although district court court could grant summary judgment of non-infringement without evidence of non-infringement, its decision, without a final judgment, did not moot the parties' settlement agreement.


What They Were Fighting About: Patentee alleged defendant infringed its patent for a "multi-function transaction processing system" for various uses, including credit card purchases and pre-paid phone card services.

Federal Circuit Holdings:

• Nothing more is required to obtain a summary judgment of non-infringement than a motion stating that the patentee had no evidence of infringement and pointing to specific ways in which accused systems did not meet the claim limitations. Evidence of non-infringment is not required.
• Affirms district court's construction of the term "payment authority" as data input by the consumer representing the monetary value of the transaction and the consumer's authorization for payment. Because defendant's system did not meet this limitation, it was entitled to summary judgment of non-infringement.
• Patentee failed to set forth any argument or evidence of infringement and no evidence of the accused device was ever submitted on summary judgment.
• Affirms denial of patentee's Rule 56(f) motion and request for further discovery before responding to the summary judgment motion where patentee had received two extentions of time to respond and had not shown why additional discovery was necessary.
• Reverses district court's holding that patentee's motion to enforce a settlement agreement reached before the entry of final judgment was moot. Remands and directs district court to consider whether the agreement (in the form of a term sheet) was enforceable.
  
  

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Threats of Patent Litigation Against Customers Did Not Establish Actual Controversy for Declaratory Judgment Action In Absence of Legal Risk

Case: Microchip Tech. Inc. v. Chamberlain Group, No. 05-1339 (Fed Cir. 3/15/06)

The One Sentence Summary: Threats of patent litigation against customers did not establish declaratory judgment jurisdiction when there was no legal risk to declaratory judgment plaintiff.


What They Were Fighting About: Declaratory judgment plaintiff Microchip sold microprocessors used in garage door openers, along with software that could learn garage door opener codes. Chamberlain had patents on technology that learned garage door codes without requiring manual input of the codes. In the settlement of earlier patent litigation, Chamberlain promised not to sue Microchip. In this litigation, Microchip brought declaratory judgment claims, claiming that an actual controversy existed because of Chamberlain's threats of claims against Microchip's customers. The district court found jurisdiction, and ruled on summary judgment that the patents were invalid.

Federal Circuit Holdings:

• The district court erred in finding jurisdiction under the Declaratory Judgment Act.
• Microchip did not have a reasonable apprehension of suit. Its apprehension of suit against its customers was not adequate to establish an actual controversy.
• There must be an underlying legal cause of action threatening the declaratory judgment plaintiff. The practical threat to Microchip's customers was not a legal cause of action.
• Microchip was not threatened with a direct or contributory patent claim, nor did it have any agreement to indemnify its customers. Therefore, it was not subject to the legal risk necessary for declaratory judgment.
  
  

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Questions As To Ownership Of Trademark And Existence Of Trade Secrets Precluded Summary Judgment On Infringement And Misappropriation Claims

Case: Doeblers' Pennsylvania Hybrids, Inc. v. Taylor Doebler, III, et. al., Case No. 03-cv-01079 (3d Cir. 3/23/06)

The One Sentence Summary: The Third Circuit reversed and remanded summary judgment for plaintiff on its claims for trademark infringement and trade secret misappropriation, because there were questions of fact as to whether defendant still owned the trademark, and whether Plaintiff’s information was a protectable trade secret.

What They Were Fighting About: Two sets of family members used the surname “Doebler” as a trademark selling corn seed. The Plaintiff, “Doebler’s Pennsylvania Hybrids, Inc.” (“Hybrids”) sued for trademark infringement and misappropriation of trade secrets against “Doebler Seeds, LLC” (“Seeds”). Hybrids claimed that although Seeds had first owned the mark “Doebler,” it had either assigned or abandoned it, or was divested of ownership of the mark due to Hybrids’ use. Hybrids also claimed that Seeds had misappropriated its trade secrets because one if Hybrids’ former employees had taken a disk which contained the names of its seeds, and then began working for Seeds.
Third Circuit Holdings:

• As to plaintiff’s assignment theory, the court held that because there was no written assignment and no other conclusive evidence of assignment, there was a question of fact as to whether an assignment took place.
• As to plaintiff’s abandonment theory, the court found there was evidence showing that Seeds did not cease in its use of the Doebler mark, but instead likely increased its use after Hybrids began to use it. The court also rejected Hybrids’ position that if Seeds did use the mark, it was used only with license from Hybrids. The court again found that there was no conclusive written or oral agreement between the parties establishing a license of the Doebler mark.
• The court rejected plaintiff’s divestment theory, stating "The Lanham Act expressly provides how ownership may be divested through abandonment and how ownership of registered marks may be divested through assignment. To follow a divestive balancing test where initial ownership is already established, and where assignment or abandonment cannot be shown, would flout the Lanham Act by permitting a finding of abandonment under another name, when abandonment cannot be established under the statute. Considering that abandonment must be “strictly proved,” we will not permit it to be found under a different name through a balancing test (citations omitted)."
• In reversing summary judgment on the trade secret claim, the court found that the plaintiff had not established that the brand names for its hybrid seeds were a trade secret. The court discussed the Federal Seed Act, which generally requires the same variety of seed to carry the same name from supplier to supplier, thereby raising a question of fact as to whether the brand name for a hybrid seed could ever be a trade secret. Moreover, there was evidence that some of Hybrids’ claimed trade secret information had been discussed with at least one other company, indicating that Hybrids did not consider the information to be a trade secret, or employ the proper means of protecting same.
  
  

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District Court's Claim Construction of a Softball Bat Patent Fouls Out

Case: Wilson Sporting Goods Co. v. Hillerach & Bradsby Co., Case No. 05-1103 (Fed. Cir. 3/23/06)

The One Sentence Summary: Claim constuction under which the parties stipulated that an accused device did not infringe was improperly narrow.


What They Were Fighting About: Patentee claimed infringement of a softball bat patent that incorporates interior structural members to improve the bat's impact response.

Federal Circuit Holdings:

• Despite the sparse record that impeded a full review, the appellate court founds flaws in the trial court's claim construction that led to the entry of the stipulated judgment of non-infringement and offered some analysis to guide the trial court upon remand.
• The trial court failed to consider the distinctions contained in the various claims that affect the meaning of the word "gap" in the claims.
• Whereas the trial court inferred great significance to the word "rigid" in the claims based on the prosecution history, the appellate court found "rigid" to be a very relative term that added nothing to the meaning of the claim.
  
  

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Whether Trade Dress Is Product Design Is a Factual Finding

Case: In re Slokevage, Case No. 05-1389 (Fed. Cir. 3/21/06)

The One Sentence Summary: Affirms refusal by United States Patent and Trademark Office to register a mark described as a "configuration" consisting of a label with the words "FLASH DARE!" in a V-shaped background, and cut-out areas located on each side of the label.


What They Were Fighting About: Trade dress applicant claimed that whether trade dress is product design was a legal not factual question, and that her trade dress was inherently distinctive.

Federal Circuit Holdings:

• Resolved an issue of first impression by concluding that whether trade dress is product design is a factual finding akin to determining whether a trademark is inherently distinctive or deceptive.
• Applicant's "configuration" of registered word mark, registered design mark , and patented design for cut-outs on the rear of garments constituted product design and thus could not be inherently distinctive.
• Unlike a trademark whose "predominant function" is source identification, product design serves other functions, such as rendering the product more useful or appealing. The design at issue could serve such utilitarian and aesthetic functions.
• The display of elements in the drawing of the trade dress and the separate registration of the word and design aspects of the trade dress showed that the trade dress was not unitary.
  
  

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Pond's Clear Pore Strips Does Not Infringe Patent For Removing Blackheads

Case: Kao Corp. v. Unilevel United States, Inc., Case No. 05-1038, -1049 (Fed. Cir. 3/21/06)

The One Sentence Summary: Patent for removing blackheads from skin was valid but not infringed by a product that used a chemical compound excluded by the patent.


What They Were Fighting About: Unilever alleged that patent held by Kao was invalid because of insufficient written description, obviousness and inequitable conduct and that its Pond’s Clear Pore Strips product did not infringe.

Federal Circuit Holdings:

• The patent claimed a method for removing blackheads with a cosmetic article comprised of wetting the article, applying it on the skin, and peeling the article off after it had dried using a poly(alkyl vinyl ether/maleic acid) copolymer or a polyalkylvinyl ether/maleic anhydride) copolymer.
• Affirms the district court’s holding that Kao complied with the written description requirement set forth in 35 U.S.C. § 112, rejecting Unilever’s argument that the patent failed to alert a person having ordinary skill in the cosmetic field of the wetting step. The district court held that the claims apprised persons of ordinary skill in the art to the wetting step by including the phrase “wetting the skin or said cosmetic article” and that a detailed description of the wetting step was not necessary.
• Unilever’s prima facie case that the '382 patent was obvious in light of two prior patents was rebutted by the evidence of Kao’s “unexpected results” in achieving a 23% blackhead removal ratio as compared to the 4% ratio achieved using a polyvinyl alcohol in an earlier patent (Gueret). Even if another patent (Gangadharan) was actually the closest prior art and should have been compared by the district court, Unilever failed to demonstrate that Gangadharan achieved a removal ratio that would make Kao obvious.
• Affirms district court’s holding that the selective disclosure of the most positive available data did not constitute inequitable conduct invalidating Kao’s patent. Although the omissions were material, the trial court did not find the requisite intent to deceive because the data was ultimately presented to the examiner.
• Affirms district court’s holding that Unilever’s product did not literally infringe because it did not meet the copolymer limitation of the claims. The district court construed that limitation to mean either poly(alkyl vinyl ether/ maleic acid) copolymer or poly(alkyvinyl ether/maleic anhydride) copolymer, but not the salt form thereof, which was used by Unilever.
• Judge Newman concurred that the patent was valid but dissented with regard to infringement, finding that the Unilever product did not use the salt form of the copolymer that was excluded from the patent.
• Judge Mayer concurred with regard to inequitable conduct and non-infringement, but dissented with regard to the affirmance of nonobviousness because the Kao introduced no evidence that its invention removed blackheads unexpectedly better than the Gangadharan invention.
  
  

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No Infringement For Dental Devices Containing Features Opposite To Those Described In Claim's Preamble

Case: Bicon, Inc. and Diro, Inc. v. The Straumann Co., et al., Case No. 05-1168 (Fed. Cir. 3/20/06)

The One Sentence Summary: Patentee and licensee of apparatus for preserving space around dental implant during healing unsuccessfully claimed infringement by defendant's two dental implant products, neither of which incorporated key limitations of the claim at issue.

What They Were Fighting About: The patent for the apparatus, an implant for a patient's jaw to hold dental crowns, included one claim which had language in the preamble that could be construed as a limitation. If that limitation was part of the claim, defendant's devices would not infringe. The parties therefore disputed whether that limitation should be treated as part of the claim.

Federal Circuit Holdings:

• The claim at issue included a preamble, which described an abutment on the root member of the device, and further described that abutment as having a "frusto-spherical basal surface portion and a conical surface portion." The Federal Circuit found this language to be part of the claim limitations. Since defendant's devices lacked that feature, and in fact had opposite features, they did not infringe, either literally or under the doctrine of equivalents.
  
• The Federal Circuit rejected plaintiffs' argument that the preamble merely described the apparatus' purpose, reasoning that it provided a detailed description of the abutment's characteristics, and other claim elements were defined in a way that depended on those physical characteristics. Thus, other elements described in the body of the claim depended on the physical characteristics of the abutment stated in the preamble.
  
• The Federal Circuit rejected the argument that a preamble should never be read as a limitation, citing cases that held otherwise, for example because the preamble recites essential structure that is important to the invention or necessary to give meaning to the claim. Here, the preamble's limitation was necessary to define the structure of the claimed device.
  
• The Federal Circuit further reasoned that a contrary finding would require treating several elements of the claim as superfluous, which would both render the patent ambiguous, and be contrary to standard rules of construction. Plaintiff's construction would also effectively read other limitations out of the claim altogether, which again was contrary to standard rules of construction, and also contrary to the descriptions provided in the specifications.
  
• In rejecting plaintiff's argument for infringement under the doctrine of equivalents, the court noted that it effectively would have required treating a concave element of defendant's device as equivalent to the convex abutment described in the preamble, which is directly opposite the limitation requiring that it be frusto-spherical in shape. Observing that "[a] claim that contains a detailed recitation of structure is properly accorded correspondingly limited recourse to the doctrine of equivalents," the Federal Circuit also found that the patent implicitly disclaimed subject matter that was distinctly different, or even of opposite shapes, and thus defendant's devices did not infringe under the doctrine.
  
• Finally, the co-plaintiff\licensee was found to lack standing because it was a non-exclusive licensee. The only evidence it had offered on summary judgment for finding it to be an exclusive licensee was the company president's statement that its right to practice was "exclusive at the moment," but he had clarified that it was exclusive in the sense that Bicon was the only one doing it at that time.
  
  

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Supreme Court to Consider Whether A Patent for a B Vitamin Deficiency Test Improperly Covers a Law of Nature

Case: Laboratory Corporation of America Holdings v. Metabolite Laboratories Inc. et al., No. 04-607

The One Sentence Summary: The Supreme Court will be considering whether a patent on a test based upon a correlation of an amino acid to B vitamin deficiencies improperly grants a patent on a law of nature. Read the Yahoo! news article here.


The Supreme Court will be considering whether a patent on a test based upon a correlation of an amino acid to B vitamin deficiencies improperly grants a patent on a law of nature. Read the Yahoo! news article here.

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Former Employee's Use of a Data-Erasing Program to Hide Evidence Before Returning a Company Laptop Allowed Federal Computer Fraud and Abuse Act Claims

Case: International Airport Centers v. Citrin, No. 05-1522 (7th Cir. 3/8/06)

The One Sentence Summary: An employer's claims against a former employee under the Computer Fraud and Abuse Act, 18 U.S.C. § 1030, should be allowed to proceed because the former employee's use of a data-erasing program to delete files on his laptop and destroy evidence of wrongdoing before returning the laptop to his employer was a "transmission" to intentionally cause damage to data on the laptop.


What They Were Fighting About: The Seventh Circuit reversed the dismissal of the employer's claims against an employee who allegedly breached his employment contract by competing with his employer.

Seventh Circuit Holdings:

• Installation of the file-erasing program via the Internet or insertion of a computer disk was a "transmission" covered by the CFAA.
• The complaint also stated claims that the former employee accessed the computer without authorization because he lost his agency to access the computer once he breached his duty of loyalty.
• The federal claim under the CFAA should be reinstated along with the supplemental state law claims.
  
  

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Failure to Disclose Prior Art Device Was Not Basis for Summary Judgment of Inequitable Conduct

Case: M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., Inc., No. 05-1224, 05-1228 (Fed Cir. 2/27/06)

The One Sentence Summary: Summary judgment of inequitable conduct was improper where there were material factual questions as to the materiality of prior art not disclosed to the patent office and the only evidence of intent to deceive the patent office was the lack of a good faith explanation.


What They Were Fighting About: The district court granted summary judgment of inequitable conduct invalidating a patent for a tool for removing decals where the applicant failed to disclose a prior art device to the PTO.

Federal Circuit Holdings:

• There is no clear and convincing evidence of culpable intent when the only evidence of intent to deceive the PTO is lack of a good faith explanation for failure to disclose a prior art device to the patent office.
• The examiner's statement that he could not find all the limitations of the claimed invention in the prior art did not necessarily put the applicant on notice of the materiality of a piece of prior art that did not have all the limitations.
• Even gross negligence may not support a finding of inequitable conduct.
• Lanham Act, tortious interference and unfair competition violations based on the inequitable conduct finding must be reversed.
  
  

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Patents Do Not Necessarily Confer Market Power Upon The Patentee

Case: Illinois Tool Works Inc. v. Independent Ink, No. 04-1329 (U.S. Supreme Court 3/1/06)

The One Sentence Summary: In a reversal of precedent dating back to 1947, the Supreme Court held that a patentholder does not necessarily have market power for antitrust purposes. Thus, tying arrangements involving patents are not "per se" antitrust violations.


What They Were Fighting About: Antitrust defendant manufacturer required purchasers of its patented printhead and ink containers to also purchase its unpatented ink.

Supreme Court Holdings:

• The presumption that a patent confers market power arose as part of the patent misuse doctrine and migrated into antitrust law in International Salt Co. v. United States, 332 U.S. 392 (1947). The presumption resulted in tying arrangements involving patented products being treated as "per se" antitrust violations.
• In 1988, Congress amended the Patent Code to eliminate the presumption in the patent misuse context and provided that patent owners could condition the license of rights to a patent on the purchase of a separate product unless the patent owner "has market power in the relevant market for the patent or the patented product."
• Although the 1988 amendment did not expressly refer to the antitrust laws, it makes no sense that an act permitted by the patent law would be a federal crime under the law of antitrust.
• Therefore, tying arrangements involving patented products shall no longer be treated as "per se" antitrust violations and antitrust plaintiffs must prove the defendant has sufficient power in the tying product market to restrain competition in the market for the tied product.
• Removing the presumption is in accord with the conclusions reached by Congress, the antitrust enforcement agencies and most economists.
  
  

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Design Patent Infringement Should Be Evaluated as on Whole Design Rather Than Element by Element

Case: Amini Innovation Corp. v. Anthony California, Inc., No. 05-1159 (Fed Cir. 3/3/06)

The One Sentence Summary: District's court erred in granting summary judgment on copyright and design patent claims for beds with ornamental carving.



Federal Circuit Holdings:

• In assessing copyright claim, the district court properly separated "ornamental woodwork" for analysis because the furniture pieces that were adorned with the woodwork were not protectable.
• The district court erred in granting summary judgment of no substantial similarity on the copyright infringement claim. The district court erred in applying both the extrinsic objective test and the fact intensive intrinsic test. A reasonable juror could have found substantial similarity.
• The district court should have considered the entire design rather than individual elements for the design patent infringement claim.
  
  

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First Sale Defense to Patent Infringement Action Established by Circumstantial Evidence

Case: Jazz Photo Corp. v. US, No. 05-1096, 05-1109, 05-1175 (Fed Cir. 2/28/06)

The One Sentence Summary: The Court of International Trade did not err in finding that the first sale affirmative defense had been established by Jazz, an importer of repaired lens fitted film package cameras that were subject to a Fuji patent.



Federal Circuit Holdings:

• The case was not moot even though the cameras at issue had been sold overseas - other relief was still available, so there continued to be a case and controversy.
• The Court of International Trade did not err in accepting a first sale affirmative defense based on circumstantial evidence that the cameras at issue had been sold lawfully in the United States.
• The court did not err in finding that cameras had been permissibly repaired rather than reconstructed.
• The court did not err in ordering United States Customs agents to supervise Jazz in segregating cameras that were stored in a bonded Customs warehouse.
• The court did not err in denying intervention by Fuji, the patent holder, or its joinder as a necessary party.
• The court did not err in sealing the trial record to protect confidential information of Jazz, and denying Fuji access to that material.
  
  

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Google's Cache Was a Fair Use According to District Court

Case: Field v. Google, U.S. Dist. Ct. Nevada No. CV-S-04-0413-RCJ-LRL (1/19/06)

The One Sentence Summary: The district court granted summary judgment to Google on fair use and DMCA defenses to a copyright claim based upon Google's creation of cached versions of plaintiff's copyrighted material that had been posted on the web.


What They Were Fighting About: Plaintiff sued Google for copyright infringement, seeking statutory damages for Google's copying of his web site by its automated Googlebot program.

District Court Holdings:

• Google did not directly infringe plaintiff's copyrights when a user clicked on a cached page because the user rather than Google was creating the copy by clicking on the cache.
• Google was entitled to summary judgment that plaintiff had given an implied license for Googlebot to copy his site by failing to use metatags that would have prevented caching of his site.
• Plaintiff's claim was barred by estoppel because he allowed Google's Googlebot to copy his site by failing to use no-copy metatags, and Google had no knowledge that plaintiff did not consent.
• The first fair use factor weighed in favor of Google because the caching served important purposes and was transformative.
• Google's commercial status was of only minor relevance in fair use, and Google did not profit from caching plaintiff's work.
• Plaintiff's works were assumed to be creative, but counterbalanced by his posting of his copyrighted works for free on the web.
• Although Google copied the entire work for caching, this was necessary given the functions of the cache.
• The caching did not harm any market for plaintiff's works.
• Google acted in good faith by explaining how to avoid caching, whereas plaintiff did not because he allowed caching to take place despite the ability to block it.
• Google was entitled to the safe harbor provision of section 512(b) of the Digital Millenium Copyright Act regarding caching.
  
  

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Inventors' Failure to Disclose The Known Relationships of Declarants to Patentholders Constituted Inequitable Conduct

Case: Ferring B.V. v. Barr Labs., Inc., No. 05-1284 (Fed Cir. 2/15/06)

The One Sentence Summary: Affirms district court's ruling on summary judgment that a patent was invalid due to inequitable conduct because the inventors submitted declarations to the PTO without disclosing that four of the five declarants had been employed by or received research funds from the patentholder.


What They Were Fighting About: Plaintiff patented a medicinal compound and the method of administering it through the gastrointestinal tract after being swallowed. Plaintiff had submitted declarations that persuaded patent examiners that certain prior art references to "peroral" application referred to absorption through the walls of the mouth, not to swallowing and gastrointestinal absorption.

Federal Circuit Holdings:

• Inequitable conduct occurs when a patentee breaches the duty of "candor, good faith, and honesty" either by making affirmative misrepresentations or failing to disclose material information to the PTO.
• An inquiry into inequitable conduct involves: 1) a determination whether the withheld information meets a threshold level of materiality and intent to mislead, and 2) a weighing of the materiality and intent in light of all the circumstances to determine whether the patent should be held unenforceable. The predicate facts must be proven by clear and convincing evidence.
• The test for materiality is whether there is a substantial likelihood that a reasonable examiner would have considered the information important.
• A declarant's relationship with the patent applicant or holder are material if: 1) the declarant's views on the underlying issue are material, and 2) the past relationship was a significant one.
• Here, the declarations were highly material to the pivotal issue of whether a reference to "peroral" in prior art would be read by those in the art to suggest gastrointestinal absorption. Significant past relationships included having been a research director or paid consultant for the patentholder or having received research funding from the patentholder.
• The applicants were on notice as to the materiality of the past relationships because the examiners were clearly concerned about the objectivity of those providing declarations.
• Summary judgment on the issue of intent was appropriate because the record established that: 1) the applicant knew of the information, 2) the applicant knew or should have known of the materiality of the information, and 3) the applicant did not provide a credible explanation for the withholding.
• In view of all the circumstances, the trial court did not abuse its discretion in finding inequitable conduct as a matter of law.
• Inventors must diclose the known relationships between declarants and interested parties so that patent examiners can consider those interests in weighing the declarations.
• According to the vigorous dissent, the majority incorrectly treated past affiliations as "per se" material, and wrongly adopted a "should have known" standard for deceptive intent.

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