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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.
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.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
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.
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.