Cargill Inc. v. Canbra Foods, Ltd. (Fed. Cir. 2007)
An applicant’s good faith belief that test results need not be disclosed did not outweigh an intent to deceive, inferred due to the high materiality of the undisclosed material, the Federal Circuit held, affirming a finding of patent unenforcability for inequitable conduct.
In affirming a district court decision, the Federal Circuit discounted the applicant’s belief that published test results were immaterial because they were performed under unusual conditions. The Court stated that materiality is determined from the viewpoint of a reasonable Examiner, not from the subjective beliefs of the applicant. The Court noted that, because the Examiner repeatedly raised novelty issues to which the test results related, the applicant knew, or should have known, that the withheld information would be highly material to the Examiner in reviewing the application.
The Court stated that intent to deceive can be inferred from the high degree of materiality of the withheld material. In addition, the Court rejected Cargill’s argument that the district court’s fi nding of the applicant’s good faith belief that disclosure was not required, negated the inferred intent to deceive. The Court stated that, while subjective good faith can support a defense to inequitable conduct, there is no such thing as a good faith intent to deceive. The Court stated that when an applicant knows, or should know, that information would be material to the examiner, but decides to withhold that information, good faith does not negate an intent to manipulate the evidence. The Court noted that self-serving manipulation of highly material evidence can hardly be called good faith.