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Federal Circuit Finally Defines Materiality for Inequitable Conduct
After almost 15 years of admittedly dodging the issue, the Court of Appeals for the Federal Circuit in Digital Control Incorporated v. Charles Machine Works, ___ F.3d ___, 2006 WL 288075 (Fed. Cir., Feb. 8, 2006), finally determined that the U.S. Patent and Trademark Office Rule 56, as amended in 1992, does not supplement or replace existing case law in determining the threshold of materiality. The court stated that '[a]lthough we have affirmed findings of materiality based upon the new Rule 56, we have declined to address whether the Rule 56 standard replaced the old 'reasonable examiner' standard.' Id. at *4. Instead, the court found the Rule 56 standard merely 'provides an additional test of materiality' to the existing 'but for,' 'but it may have,' and 'reasonable examiner' tests.
The decision in Digital Control arose from a determination by the district court that the two patents in suit were unenforceable because of inequitable conduct by the inventor during prosecution. In particular, the district court had first granted partial summary judgment to the defendant on the basis that misrepresentations in a Rule 131 affidavit and failure to cite prior art were material. Then, after a bench trial on the issue of intent, the district court determined that the misstatements and omissions were material under the 'reasonable examiner' standard even though the patents were filed and prosecuted after the 1992 amendments to Rule 56. The CAFC, while noting that '[d]etermining at summary judgment that a patent is unenforceable for inequitable conduct is permissible,' reversed the summary judgment as to the materiality of the omission to cite the prior art.
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It
Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.
Blockchain Domains: New Developments for Brand Owners
Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.