Brief By: Wayne Xu
Case Name: Praxair, Inc. v. ATMI, Inc.
Case Cite: 489 F.Supp.2d 387
NOTE: This case has now been reversed in part on appeal. Patently-O (cache) discusses it.
Facts: Patent holder brought action against competitor alleging infringement of patents. The patents were for an apparatus which safely controlled discharge of pressurized fluids from an outlet of pressurized tanks. The patent holder left out two prior arts: the RFO art and the Zheng art.
History: After a jury verdict in Patent holder’s favor, the court commenced bench trial regarding competitor’s inequitable conduct defenses.
Issue: Whether there was inequitable conduct in not revealing the existence of certain prior arts.
Rule: In order to show inequitable conduct, a defendant must establish by clear and convincing evidence that : (1) the omitted or false information was material to patentability of the invention; (2) the applicant had knowledge of the existence and materiality of the information; and (3) the applicant intended to deceive the PTO. A smoking gun is not essential to establish an intent to deceive. An inference of intent is warranted where a patent applicant knew or should have known that the withheld information would be material to the PTO’s consideration of the patent application.
Holding: The RFO and Zheng prior arts were both material to the PTO. However, only the intent regarding the RFO can be established.
Reasoning / Analysis:
(Part 1) The RFO prior art
--Materiality—
This case spent much time explaining why the RFO prior art was material to Praxair’s patent application. The court stated that “In view of the fact that the applicants could not have made several arguments in furtherance of patentability had the RFO art been before the PTO, the level of materiality of the RFO art is sufficiently high so as to support an ultimate finding of inequitable conduct.â€
--Knowledge—
The Court established that the applicants knew of the RFO’s existence. The record was replete with many witnesses testifiying that they had worked with RFOs at Praxair.
--Intent—
Because of the high materiality of the RFO art withheld from the PTO coupled with the absence of any explanation for the nondisclosure, and intent to deceive was inferred.
(Part two) The Zheng patent
--Materiality—
The Zheng patent teaches a pressure drop across the filter that suggests a restriction in flow. The lower court determined that the Zheng patent was a material reference and is not cumulative of the prior art of record. ATMI had not pointed to any particular evidence or made any argument that would compel a finding of “high†materiality.
--knowledge—
Praxair was clearly aware of the Zheng patent during prosecution. However, it did not, in good faith, believe that disclosure of the patent was necessary.
--intent—
Although Praxair did not state it had formed a good faith belief that the disclosure of the Zheng patent was not necessary during prosecution, an absence of a good faith explanation for a nondisclosure, without more, cannot rise to the level of clear and convincing evidence that there was an intent to deceive.
Case Name: Praxair, Inc. v. ATMI, Inc.
Case Cite: 489 F.Supp.2d 387
NOTE: This case has now been reversed in part on appeal. Patently-O (cache) discusses it.
Facts: Patent holder brought action against competitor alleging infringement of patents. The patents were for an apparatus which safely controlled discharge of pressurized fluids from an outlet of pressurized tanks. The patent holder left out two prior arts: the RFO art and the Zheng art.
History: After a jury verdict in Patent holder’s favor, the court commenced bench trial regarding competitor’s inequitable conduct defenses.
Issue: Whether there was inequitable conduct in not revealing the existence of certain prior arts.
Rule: In order to show inequitable conduct, a defendant must establish by clear and convincing evidence that : (1) the omitted or false information was material to patentability of the invention; (2) the applicant had knowledge of the existence and materiality of the information; and (3) the applicant intended to deceive the PTO. A smoking gun is not essential to establish an intent to deceive. An inference of intent is warranted where a patent applicant knew or should have known that the withheld information would be material to the PTO’s consideration of the patent application.
Holding: The RFO and Zheng prior arts were both material to the PTO. However, only the intent regarding the RFO can be established.
Reasoning / Analysis:
(Part 1) The RFO prior art
--Materiality—
This case spent much time explaining why the RFO prior art was material to Praxair’s patent application. The court stated that “In view of the fact that the applicants could not have made several arguments in furtherance of patentability had the RFO art been before the PTO, the level of materiality of the RFO art is sufficiently high so as to support an ultimate finding of inequitable conduct.â€
--Knowledge—
The Court established that the applicants knew of the RFO’s existence. The record was replete with many witnesses testifiying that they had worked with RFOs at Praxair.
--Intent—
Because of the high materiality of the RFO art withheld from the PTO coupled with the absence of any explanation for the nondisclosure, and intent to deceive was inferred.
(Part two) The Zheng patent
--Materiality—
The Zheng patent teaches a pressure drop across the filter that suggests a restriction in flow. The lower court determined that the Zheng patent was a material reference and is not cumulative of the prior art of record. ATMI had not pointed to any particular evidence or made any argument that would compel a finding of “high†materiality.
--knowledge—
Praxair was clearly aware of the Zheng patent during prosecution. However, it did not, in good faith, believe that disclosure of the patent was necessary.
--intent—
Although Praxair did not state it had formed a good faith belief that the disclosure of the Zheng patent was not necessary during prosecution, an absence of a good faith explanation for a nondisclosure, without more, cannot rise to the level of clear and convincing evidence that there was an intent to deceive.