Patents invalidated due to inequitable conduct due to nondisclosure
Praxair, Inc. et al., v. ATMI, Inc. et al., No. 03-1158-SLR, June 13, 2007.
Robinson, C.J. After a bench trial on inequitable conduct held on December 12, 2005, the Court concluded the prior art withheld was not cumulative and that the individuals accused of inequitable conduct were aware of that art. Intent to deceive was based on the high materiality of the art.
The patents disclose embodiments of an apparatus which safely controls the discharge of pressurized fluids from the outlet of pressurized tanks. On December 7, 2005, a jury found ATMI infringed the asserted claims from the two patents in suit and that the patents were not invalid. The Court issued findings of fact and conclusions of law with respect to the merits of the inequitable conduct defenses. See 445 F.Supp. 2d 473(D.Del. 2006). This opinion addresses the remaining issues. The Court previously found restricted flow orifices (RFOs) to be material because their description is similar to that of a capillary as disclosed in the patents. Four individuals were accused of inequitable conduct during the prosecution of the patents: John Tolomei, Chief Patent Counsel for UOP, LLP; David LeFebre, at the Mat/Sen group of UOP; Thomas Martin and Roy Senerdjian, both at the Mat/Sen group of UOP and named inventors. Trial testimony established that RFOs were well known in the art and were used by the patentee prior to filing the patents in suit. The patentee offered no explanation for not disclosing this RFO art and because of the high materiality the Court found intent to deceive by Martin, LeFebre, and Tolomei. No intent to deceive was found with respect to Tolemei’s failure to disclose a prior patent, although the patent was material and noncumulative. The absence of a good faith explanation for a nondisclosure, without more, cannot rise to the level of clear and convincing evidence.
A full copy of the full opinion is available here.
Robinson, C.J. After a bench trial on inequitable conduct held on December 12, 2005, the Court concluded the prior art withheld was not cumulative and that the individuals accused of inequitable conduct were aware of that art. Intent to deceive was based on the high materiality of the art.
The patents disclose embodiments of an apparatus which safely controls the discharge of pressurized fluids from the outlet of pressurized tanks. On December 7, 2005, a jury found ATMI infringed the asserted claims from the two patents in suit and that the patents were not invalid. The Court issued findings of fact and conclusions of law with respect to the merits of the inequitable conduct defenses. See 445 F.Supp. 2d 473(D.Del. 2006). This opinion addresses the remaining issues. The Court previously found restricted flow orifices (RFOs) to be material because their description is similar to that of a capillary as disclosed in the patents. Four individuals were accused of inequitable conduct during the prosecution of the patents: John Tolomei, Chief Patent Counsel for UOP, LLP; David LeFebre, at the Mat/Sen group of UOP; Thomas Martin and Roy Senerdjian, both at the Mat/Sen group of UOP and named inventors. Trial testimony established that RFOs were well known in the art and were used by the patentee prior to filing the patents in suit. The patentee offered no explanation for not disclosing this RFO art and because of the high materiality the Court found intent to deceive by Martin, LeFebre, and Tolomei. No intent to deceive was found with respect to Tolemei’s failure to disclose a prior patent, although the patent was material and noncumulative. The absence of a good faith explanation for a nondisclosure, without more, cannot rise to the level of clear and convincing evidence.
A full copy of the full opinion is available here.
