The Federal Circuit Court of Appeals has determined that a district court did not err in finding that the inequitable conduct of the inventor of technology involving wireless transmission of caller identification information rendered certain patents relating to that invention unenforceable. Intellect Wireless, Inc. v. HTC Corp., No. 2012-1658 (Fed. Cir., decided October 9, 2013). The inventor apparently submitted to the U.S. Patent and Trademark Office (USPTO) a declaration under 37 C.F.R. § 1.131 containing false statements—that is, to overcome a prior art reference during prosecution, the inventor asserted that “the claimed invention was actually reduced to practice and was demonstrated at a meeting . . . in July of 1993.” The claimed subject matter, however, was never actually reduced to practice. Rather, the device demonstrated in July 1993 was a simulation that “only contained preloaded images for the purpose of demonstration.” It was “not capable of wireless communication.”
Thus, the court determined that “the district court did not clearly err in concluding that [the alleged infringer] proved materiality by establishing that [the inventor] engaged in affirmative egregious misconduct when he filed a false declaration.” The court further agreed with the district court and the alleged infringer that the inventor failed to correct the misrepresentation in a revised declaration and subsequent statements. According to the court, the revised declaration “did not cure the misconduct because it never expressly negated the false references to actual reduction to practice in the original declaration.” The court also found support for the district court’s determination that the inventor acted with specific intent to deceive USPTO, ruling that he engaged in a pattern of deceit by submitting repeated false affidavits in connection with several related patents.