High Level Of Materiality And Intent Required For Unenforceability Due To Withheld Information

In Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. DE C.V. , (Nos. 05-1479, -1480 and 06-1002; September 25, 2006), the Federal Circuit affirms the district court's denial of Pigmentos request for holding the patent-in-suit unenforceable for failing to disclose a journal article to the patent examiner. The patent-in-suit relates extracting purified lutein from plants for use in dietary health supplements. The withheld article, published in the journal Poultry Science, discloses methods for obtaining a purified lutein that is not suitable for human consumption. This article was used as the basis for experimentation by Kemin's president, who was not an inventor and was found to be only tangentially involved in the prosecution of the application for the patent-in-suit.

Despite a jury finding that this article was material to the patentability of the patent-in-suit and that it was withheld with an intent to deceive, the district court concluded that the levels of materiality and intent were not high enough to hold the patent unenforceable. The Federal Circuit, relying upon the testimony of Kemin's president that he did not believe the article to be material and his tangential involvement in the prosecution of the application, finds no clear error in the district court's findings of the level of materiality and intent.