Inequitable conduct relief denied in part and deferred in part pending additional proof as to intent
Praxair, Inc. et al. v. ATMI, Inc. et al., No. 03-1158-SLR, Aug. 17, 2006.
Robinson, J. The Court finds Defendant failed to prove inequitable conduct by clear and convincing evidence after a bench trial with respect to some art, but with respect to others, it deferred ruling pending additional proof as to intent. Trial testimony waived attorney client privilege with respect to communications between the attorney and the inventors, which will be reviewed in camera for evidence of intent.
A bench trial on inequitable conduct was held on December 12, 2005 after the jury found asserted claims were infringed and the patents were not invalid on December 7, 2005. The defendant accused four individuals of intentionally withholding prior art references from the Patent Office. The court found some of the withheld art not to be material and thus not supportive of an inequitable conduct claim. Other withheld art was deemed material and not cumulative. The Court deferred ruling on intent to deceive and required production of documents for in camera review to determine if they are relevant to the issue of intent to deceive. Privilege relating to conversations between the attorney and the inventors was waived in trial testimony which disclosed some substance and not merely the existence of conversations claimed to be privileged communications.
Robinson, J. The Court finds Defendant failed to prove inequitable conduct by clear and convincing evidence after a bench trial with respect to some art, but with respect to others, it deferred ruling pending additional proof as to intent. Trial testimony waived attorney client privilege with respect to communications between the attorney and the inventors, which will be reviewed in camera for evidence of intent.
A bench trial on inequitable conduct was held on December 12, 2005 after the jury found asserted claims were infringed and the patents were not invalid on December 7, 2005. The defendant accused four individuals of intentionally withholding prior art references from the Patent Office. The court found some of the withheld art not to be material and thus not supportive of an inequitable conduct claim. Other withheld art was deemed material and not cumulative. The Court deferred ruling on intent to deceive and required production of documents for in camera review to determine if they are relevant to the issue of intent to deceive. Privilege relating to conversations between the attorney and the inventors was waived in trial testimony which disclosed some substance and not merely the existence of conversations claimed to be privileged communications.
