In APOTEX INC. v. UCB, INC., Appeal No. 2013-1674, the Federal Circuit affirmed a judgment of inequitable conduct.

Apotex sued UCB for patent infringement.  The two accused products were also prior art to the asserted patent.  During prosecution, the patentee found through experimentation that the process that is the subject of its application was already used in making one of the accused products.  The patentee repeatedly misrepresented this information before the PTO.  Further, the patentee did not cite other prior art and submitted results of experiments that were never conducted.  The district court ruled the asserted patent unenforceable due to the patentee’s inequitable conduct before the PTO.

The Federal Circuit affirmed.  Clear and convincing evidence demonstrated that the patentee engaged in material misconduct.  The patentee’s affirmative misrepresentations of facts were “but-for material” to the issuance of the patent.  The Federal Circuit determined that the Examiner allowed the claims only after being convinced that the prior art did not use the same process as the applicant’s invention.  Clear and convincing evidence also demonstrated that the patentee intended to deceive the PTO.  The patentee knew, or at least had a strong suspicion, that it was seeking to patent the very same process used to obtain an already existing and widely available drug.