Intent Required To Show Suppression And Inequitable Conduct

In Flex-Rest, LLC v. Steelcase, Inc . (No. 05-1354, -1367; July 13, 2006), a Federal Circuit panel affirms a jury verdict of invalidity of one Flex-Rest patent and a grant of summary judgment that Steelcase did not infringe another Flex-Rest patent, both patents relating to computer keyboard positioning systems. It also affirms the district court's denial of Steelcase's motion for a determination of inequitable conduct in procuring the patent found to be invalid.

In the district court, Flex-Rest argued that Steelcase's KBS device did not qualify as prior art because it had suppressed or concealed the invention of that device. Steelcase's patent application was filed about six and one-half months after its reduction to practice, and Steelcase unveiled its KBS device at a trade show at about the same time. This time period between reduction to practice and filing was not considered to be an unreasonable delay, and Flex-Rest was deemed to have failed to provide any evidence of an intent to withhold the KBS device from the public. Thus, insufficient evidence is present to support a jury instruction regarding an inference of suppression or concealment.

With regard to inequitable conduct, the panel considers a letter and photographs from a competitor that were received by Flex-Rest's patent counsel. The letter containing the photographs was dated May 14, 1996, and the photographs, which were undated, were identified in the letter as showing equipment embodied in “the Seiler patent.” Flex-Rest's patent counsel did not consider the photographs to be credible evidence of prior art. Moreover, he considered the photographs to be cumulative of a patent disclosed to the PTO and thus did not disclose them as well. In light of this evidence, the district court is found not to have abused its discretion in finding that Flex-Rest's patent counsel lacked intent to mislead the PTO.