'; When Disclosing Less Can Help You Out

When Disclosing Less Can Help You Out

February 17, 2016 Chicago Daily Law Bulletin

Patentees and patent practitioners are perhaps all too familiar with the duty of disclosure required by the United States Patent and Trademark Office (USPTO) and the specter of inequitable conduct that lurks behind. Although the Federal Circuit in Therasense raised the bar for an ultimate finding of unenforceability in a patent dispute, subsequent caselaw has shown it is still not all that difficult to make the initial pleading for failing to disclose a relevant prior art reference.

When it comes to allegations of attempting to bury a relevant prior art reference within an excessively large disclosure, courts have been inclined to give applicants the benefit of the doubt. Patent practitioners and applicants have thus continued to err on the side of overdisclosure rather than underdisclosure. However, there are potential ramifications to overdisclosure that practitioners and applicants should consider so as to avoid taking it too far.

Examiner Requirements for Information

Pursuant to 37 C.F.R. § 1.105, the USPTO “may require the submission… of such information as may be reasonably necessary to properly examine or treat the matter.” When such a requirement is issued, failure by applicants to provide an adequate response may result in the patent application being abandoned. See Star Fruits S.N.C. v. United States (Fed. Cir. 2005).

While requirements for information under this rule are not often encountered during typical patent prosecution, citing a large number of prior art references substantially increases the chances of patent examiners issuing such requirements for the applicant to provide information to assist them with examination. This is particularly problematic when the patent examiner instructs the applicant to identify the most relevant references or to otherwise characterize the subject matter contained therein.

For example, in CoStar Realty Information, Inc. v. CIVIX-DDI, LLC (N.D. Ill. 2013), the court found that, but for the examiners’ requirement for information and the applicant’s attempt to comply, there would not have been a problem with the applicant submitting over 1000 references during the prosecution of a particular application. However, because the examiner asked the applicant to identify the most relevant references, it created an opportunity for the applicant to deliberately focus the examiner’s attention elsewhere and opened the door to a colorable claim of inequitable conduct.

Evidence of Prior Knowledge

Another potential unintended consequence of overdisclosure is the establishment of a basis for the owner of the cited art to allege willful or indirect infringement against the patent applicant. To adequately support allegations of willful or indirect infringement, the patentee must plead facts from which the accused infringer’s knowledge of the infringed patent can be inferred. Cases like Potter Voice Techs., LLC v. Apple Inc. (N.D. Cal. 2014) and Intellectual Ventures I LLC v. AT&T Mobility LLC (D. Del. 2014) have unequivocally held that corporations’ previous identification of a patent-in-suit as prior art during prosecution of their own patent applications provides a sufficient basis for such pleading.

Increased Administrative Burden

From a practical standpoint, identifying and gathering an excessive number of prior art references, as well as overly broad cross-citation policies, is often a source of headache for practitioners, applicants, and their support staff alike. Although citation of large numbers of references and cross-citation is sometimes necessary, background art compilations and patent families are apt to quickly get out of hand and result in unnecessarily large and frequent disclosures of prior art.

Mistakes happen, and as the amount and frequency of the disclosures increase, the more likely it is that a wrong box gets checked or something gets missed. Seemingly minor errors, such as incorrectly checking a box on a disclosure form, can potentially result in having to defend against an inequitable conduct claim in later litigation. See, e.g., Polaris Indus. Inc. v. Arctic Cat Inc. (D. Minn. 2015). Missing a cross-citation from a foreign counterpart can potentially be a similarly egregious error. See, e.g., Lutron Elecs. Co. v. Crestron Elecs., Inc. (D. Utah 2013).

Practical Guidelines

Under Therasense, violation of the duty of disclosure requires that a patent practitioner or applicant make a deliberate decision to withhold a prior art reference that the practitioner or applicant knew to be a material reference—i.e., a reference over which a claim would not be allowed if it had been disclosed. In theory, this sets forth a very high threshold for what actually needs to be disclosed.

In practice, practitioners and applicants will and should continue to err on the safe side and follow the rule of thumb of disclosing any prior art reference that may be relevant to the claimed invention. However, in view of the various considerations discussed herein, practitioners and applicants should perhaps give more thought as to how to reasonably limit the universe of “maybe relevant” prior art. In particular, abolishing the practice of providing batch citations of background art, as well as eliminating unnecessary cross-citation relationships, are good places to start.