Golden Hour Data Systems, Inc. v. EmsCharts, Inc. and Softtech, LLC, No. 2009-1306, -1396 (Fed. Cir. Aug. 9, 2010).
The district court held the patent, covering a system for the integration of medical data, unenforceable for inequitable conduct. The district court had found that the patent’s inventor and prosecuting attorney selectively disclosed a brochure describing a competitor’s system, that the brochure was highly material, and that selective disclosure led to an inference of intent.
The Federal Circuit agreed with the district court’s materiality decision, explaining that a reference “may be material even if it does not qualify as prior art”; in this case the brochure was undated and found by the jury not to be an invalidating reference. However, the Federal Circuit reversed and remanded as to the intent prong. Because even “gross negligence” may not constitute intent, the factual record must show that the inventor and patent prosecutor actually knew the content of the entire brochure and selectively disclosed only some information in order to obtain patentability. The court explained that, “[a]s findings of inequitable conduct so often turn on a district court’s credibility determinations, it is essential that the court provide detailed factual findings with respect to crucial facts….” In this case, the factual findings needed to describe whether the inventor and patent prosecutor were aware of the entire contents of the brochure. The Federal Circuit, reviewing the facts, determined that a finding of deceptive intent was not “compelled” by the record and remanded.
A copy of the opinion can be found here.