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 <i>Digital Control Incorporated v. Charles Machine Works</i>, ___ 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.' <i>Id.</i> 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.

15 minute read March 29, 2006 at 02:29 PM

By

Peter Toren