Optium Corp. v. Emcore Corp., No. 2009-1265 (Fed. Cir. May 5, 2010).

The accused infringer alleged that patentee’s failure to disclose an article to the examiner rendered the patents unenforceable due to inequitable conduct. The patentee did not dispute that the inventors were aware of the article and that it was not disclosed, but argued that the accused infringer failed to provide sufficient evidence of the applicant’s intent to deceive the examiner. On summary judgment, the district court found no inequitable conduct, holding that an intent to deceive the PTO could not be inferred merely on the basis of the high materiality of the reference.

The Federal Circuit affirmed. While intent may be inferred from circumstantial evidence, intent to deceive cannot be inferred solely from the fact that information was not disclosed. Rather, there must be a factual basis for a finding of deceptive intent. The Federal Circuit rejected the accused infringer’s argument to the extent it attempted to shift the burden upon a showing that a non-disclosed reference is “highly material,” and requiring the patentee to provide a credible explanation for the nondisclosure. The applicant need not provide such a good-faith explanation until the accused infringer has met its threshold burden of showing intent.

Judge Prost concurred with the majority, writing to clarify that while under the facts of this case materiality alone is insufficient to demonstrate intent, the materiality of a non-disclosed reference may be relevant to a determination of an applicant’s intent to deceive.

A copy of the opinion can be found here.