Golden Hour Data Systems, Inc. v. emsCharts, Inc., et al., (E.D. Tex. 2012);

1st Media v. Electronic Arts, (Fed. Cir. 2012).

The patentee in Golden Hour, failed to submit a brochure that described features of the claimed invention, initially rendering the asserted patent unenforceable for inequitable conduct. On rehearing, post-Therasense, the Circuit Judge reversed the earlier decision, reasoning that the claimed method required a significant body of programming effort that, under Federal Circuit standards, could not be enabled by a mere bulletpoint brochure. Since the brochure lacked enablement, it would not have affected the PTO’s decision to grant the claims in issue under the Therasense ‘but-for’ test.

And in 1st Media, the Federal Circuit drove another nail in the coffin. The patent-at-issue was one of a family of patents prosecuted around the world. The district court found inequitable conduct based on the failure of the inventor and patent attorney to cite three references in the U.S. prosecution that had resulted in rejection of foreign applications. Although the district court found the patentee’s explanations unpersuasive, the Federal Circuit held that the evidence did not meet the high “deliberate decision to withhold” standard of Therasense. The infringer bears the burden of proving such a deliberate decision by clear and convincing evidence, the court held, and the proof cannot be inferred from knowledge and materiality. “[I]t is not enough to argue carelessness, lack of attention, poor docketing or cross-referencing, or anything else that might be considered negligent or even grossly negligent.”