Failure To Cite Business Relationship To Applicant In Declaration To PTO Results In Finding Of Inequitable Conduct

In Ferring B.V. & Aventis Pharms., Inc. v. Barr Labs, Inc. (No. 05-1284; Feb. 15, 2006), the Federal Circuit affirms the district court's summary judgment of unenforceability due to inequitable conduct. Writing for the majority, Judge Dyk holds that four allegedly disinterested declarations submitted to the PTO by individuals who had an unstated business relationship with the applicant provide sufficient evidence of materiality and intent to deceive even under the higher evidentiary standards of summary judgment.

U.S. Pat. No. 5,407,398 was initially rejected during prosecution as anticipated by another U.S. patent. In an effort to overcome the rejection, the applicant submitted a number of declarations from supposedly disinterested parties to provide “objective evidence” regarding the definition of a key claim term. Based in part upon those declarations the examiner allowed the patent. Trial testimony later revealed a prior business relationship with four of the five declarants. The majority agreed with the district court that these omissions were highly material and made with intent to deceive. Judge Newman points out in her lengthy dissent that the court's finding of intent to deceive was based entirely upon failure to list the business relationship in each declarant's CV, where one would not normally include such information. Judge Newman also took issue with the fact that inequitable conduct was found here on summary judgment and concludes that the majority not only ignored Kingsdown but also creates a new “‘should have known' standard of materiality, from which deceptive intent is inferred, even in the total absence of evidence.”