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Failure to Submit Evidence Tending to Corroborate Invalidity Raises Genuine Issue of Fact on Summary Judgment for Inequitable Conduct
Ohio Willow Wood Co. v. Alps South, LLC, Nos. 2012-1642, 2013-1024, 2013 U.S. App. LEXIS 23062 (Fed. Cir. Nov. 15, 2013) (Reyna, J.). Click here for a copy of the opinion.
The Ohio Willow Wood Company sued Alps South, LLC for infringement of a patent directed to cushioning devices for residual stumps of amputated limbs. The district court granted summary judgment on three issues: First, some claims were invalid for obviousness based on the collateral estoppel effect of Ohio’s assertion of a related patent against a third party. Second, some claims were invalid for obviousness. Third, Alps failed to raise a genuine issue of material fact with respect to Ohio’s supposed inequitable conduct during an ex parte reexamination of the patent in suit.
The Federal Circuit affirmed on invalidity, finding no “patentably significant” distinctions between the claims in suit and those held invalid in the co-pending third-party litigation. Several claims that depended from the invalidated claims contained only obvious numerical limits on certain characteristics of the “gel composition” and the “fabric” of the device
On inequitable conduct, the court held that a reasonable fact finder could conclude Ohio had withheld material information from and made misrepresentations to the PTO during the reexamination.
Alps brought a second reexamination of the patent based on a product called the “Single Socket Gel Liner” (SSGL). Alps submitted a prior art advertisement and testimony from a witness, Mr. Comtesse, purporting to explain that the SSGL product performed in a way that invalidated the claims. The examiner agreed and rejected the claims. Ohio appealed, arguing the rejection improperly relied on uncorroborated testimony of “a highly interested party.” Ohio also denied the existence of evidence that the SSGL product exhibited bleed through of a gel or was made with a Coolmax fabric.
The Federal Circuit concluded there was evidence Ohio withheld information from the PTO that would have corroborated Mr. Comtesse’s testimony. Ohio knew the manufacturer of SSGL had filed a patent application and that Mr. Comtesse reviewed samples of SSGL products, which Ohio had characterized as “ghost[s].” Additionally, Ohio apparently made a material misrepresentation when it said Mr. Comtesse “admits that he is an interested party” and that “he continues to receive royalties” on the SSGL products he helped develop. On the contrary, Mr. Comtesse’s deposition testimony denying his interest directly contradicted Ohios’ representation.
Viewing these omissions and representations together, the court concluded that a jury could infer Ohio had a specific intent to deceive the PTO. Ohio’s counsel knew that Mr. Comtesse’s testimony was vital to invalidating its patent during reexamination, and sought to discredit him. Accordingly, the court reversed the district court’s grant of summary judgment and remanded the inequitable conduct issue for trial.