While this guest Kat was enjoying the Easter Monday public holiday in the UK, the US Courts were busy issuing decisions, and so today the IPKat's attention was drawn by an article on Bloomberg to this decision issued on 9 April 2012 by the Court of Appeals for the Federal Circuit.
A perfusion, which contains approximately 1 mg/ml or less of compound of formula as defined in claim 1, and which contains less than 35 ml/l of ethanol and less than 35 ml/l of polysorbate, wherein said perfusion is capable of being injected without anaphylactic or alcohol intoxication mani-festations being associated therewith.
6. The composition of claim 1, wherein R5 is hydroxy and R7 is tert butoxy.
7. The composition of claim 6, wherein said surfactant is polysorbate.
rejected the “sliding scale” approach to proving inequitable conduct “where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa.” Instead, we instructed that “[i]ntent and materiality are separate requirements.” Additionally, we held that but-for materiality is the standard for evaluating the materiality prong of the analysis unless there is affirmative egregious misconduct.
A prior art reference “is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”
To satisfy the intent requirement, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” In Therasense, we confirmed that inequitable conduct requires clear and convincing evidence of a specific intent to deceive the PTO and that “the specific intent to deceive must be ‘the single most reasonable inference able to be drawn from the evidence.’”
In reviewing the district court’s inequitable conduct determination, we review the court’s underlying factual findings for clear error and its ultimate decision as to inequitable conduct for an abuse of discretion.
“This court reviews the district court’s factual findings regarding what reasonable inferences may be drawn from the evidence for clear error.”
In this case, the district court heard extensive testimony from inventor Fabre regarding both the Vidal and GV references, and the court’s finding that Fabre acted with a specific intent to deceive the PTO in withholding those references is not clearly erroneous.
In light of the evidence before the district court supporting the finding of a specific intent to deceive, coupled with the deference we must afford to the district court’s credibility determinations, we cannot conclude that the court’s finding that Fabre withheld the Vidal reference with the specific intent to deceive the PTO was clearly erroneous.