A.B. *** Co. v. Burroughs Corp. - 798 F.2d 1392 (Fed. Cir. 1986)

Rule:

Pursuant to Patent Office Rule 56(a), 37 C.F.R. § 1.56(a), those who practice before the United States Patent and Trademark Office have a duty to disclose to the Office information they are aware of which is material to the examination of the application. Known information is material where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.

Facts:

Appellant purchased patent rights to a high-speed ink-jet recorder. The district court, however, subsequently held certain patent claims unenforceable due to inequitable conduct on the part of the inventor and his patent attorneys. Specifically, the court found they failed to bring to the examiner's attention certain articles, of which they were aware, disclosing material matters bearing on the most important part of the claimed invention. After the examiner independently discovered the articles, he rejected claims previously allowed, but ultimately allowed most of the claims after amendment.

Issue:

Can nondisclosure by an applicant during prosecution be considered inequitable conduct sufficient to render the issued patent unenforceable where the nondisclosure was of known prior art references on which the examiner (after independently discovering the references) rejected claims previously allowed, most of which were then allowed after amendment?

Answer:

Yes.

Conclusion:

The court affirmed, holding that the fact that the claims may have been patentable over the withheld prior art was not relevant. Further, the district court's intent and materiality findings were not clearly erroneous, where the examiner considered the articles important enough to reject previously allowed claims, and the inventor and his attorneys knew or should have known of the articles' materiality. The court was satisfied that the information not disclosed by the inventor and his patent attorney was material for purposes of Rule 56(a).