Failure to Disclose Employee Notes Constitutes Inequitable Conduct

In Monsanto Co. v. Bayer Bioscience N.V., (No. 07-1109; January 25, 2008) a Federal Circuit panel affirms a district court’s decision that a patent is unenforceable. Bayer disclosed an abstract relating to a poster shown at a scientific conference. Bayer did not disclose detailed notes that one of its employees took regarding the poster.

The panel’s analysis focuses on whether or not the district court made a clear error in determining the failure to disclose the notes, which were not prior art, amounted to inequitable conduct. Because the notes clearly and convincingly refute the position Bayer took in opposing the Examiner’s rejection, says the panel, the notes are material and should have been disclosed. But the panel is also careful in pointing out that not all internal documents of potential relevance must be submitted. In this case, however, the notes are material because they directly contradict Bayer’s arguments made in support of patentability.

With regard to intent, the panel points out that “[i]ntent is easily inferred when, as here, an applicant makes arguments to the PTO that it knows, or obviously should have known, are false in light of information not before the examiner, and the applicant knowingly withholds that additional information.” The district court’s determination that Bayer failed to offer a credible explanation for withholding the notes is not disturbed.