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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 CAFC used this opportunity to tackle the issue of whether the new Rule 56 is the same as the 'reasonable examiner' standard of the old Rule 56, or whether the new standard is narrower. In other words, whether a misstatement that is material under the 'reasonable examiner' standard but arguably not material under the new Rule 56 standard still meets the threshold level of materiality required for a finding of inequitable conduct.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.