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Client Alert | 1 min read | 03.02.06
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.
[http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/05-1224.pdf].
Insights
Client Alert | 5 min read | 12.12.25
Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality
On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument.
Client Alert | 8 min read | 12.11.25
Director Squires Revamps the Workings of the U.S. Patent Office
Client Alert | 8 min read | 12.10.25
Creativity You Can Use: CJEU Clarifies Copyright for Applied Art
Client Alert | 4 min read | 12.10.25
Federal Court Strikes Down Interior Order Suspending Wind Energy Development
