In M. Eagles Tool Warehouse, Inc. (d/b/a S&G Tool Aid Corp.) v. Fishing Tooling Company, Inc. (d/b/a Astro Pneumatic Tool Co., (No. 05-1224, -1228, February 27, 2006) , the Federal Circuit reverses a district court's grant of summary judgment that a patent is unenforceable due to inequitable conduct. The summary judgment motion asserted that patent was unenforceable for not disclosing information regarding the 20- year selling of a predecessor product to the PTO. The district court found that the information was material because the predecessor product contained claim limitations that the patent examiner held not to be found in the prior art and inferred an intent to deceive from a lack of good faith explanation for not disclosing that prior sale information.
In reversing, the Federal Circuit panel states that intent to deceive cannot be inferred solely from the fact that information was not disclosed; but that there must be a factual basis for a finding of deceptive intent. That is, a failure to disclose prior art to the patent examiner, where the only evidence of intent is a lack of a good faith explanation for the nondisclosure, cannot by itself constitute clear and convincing evidence sufficient to support a determination of culpable intent. To satisfy the requirement of the intent to deceive element of inequitable conduct, the involved conduct, viewed in light of all the evidence of good faith, must indicate sufficient culpability to require a finding of intent to deceive.
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