In AMERICAN CALCAR, INC. v. AMERICAN HONDA MOTOR CO., Appeal No. 2013-1061, the Federal Circuit affirmed a finding of inequitable conduct.
Calcar asserted patents related to car multimedia systems. Honda moved for a finding of invalidity due to inequitable conduct because the patentee withheld an owner’s manual and photographs of a Honda prior-art vehicle during prosecution. The district court agreed. It reasoned that, but for the withheld information, the PTO would not have granted the patents. Furthermore, the district court found that the patentee intended to deceive the PTO because he knew the information was material and made a deliberate decision to withhold it. Calcar appealed.
The Federal Circuit affirmed. On materiality, the Federal Circuit rejected Calcar’s argument that the district court failed to account for inventive differences between the withheld prior art and the claims of the asserted patents. The district court did address that issue when it found that the only difference was “the nature of the information contained in the systems” and that it would have been obvious to a person of ordinary skill in the art to include different information in the prior art system. Thus, the district court did not commit clear error in its finding of materiality. Similarly, the Federal Circuit determined that the district court did not commit clear error with respect to the intent prong. The Federal Circuit held that partial disclosure of material information about the prior art “cannot absolve a patentee of intent if the disclosure is intentionally selective.” The patentee had “ample time and opportunity for comprehensive disclosure,” and thus an inference of negligence is not supported by the evidence.
In dissent, Judge Newman argued that, during reexamination of one of the patents in suit, the PTO found the previously withheld information was not material to patentability, and thus the materiality prong could not be satisfied. She also questioned whether the intent prong was satisfied, arguing that alternative inferences could be drawn from the patentee’s statements and actions towards the PTO and emphasizing the jury’s advisory verdict of no inequitable conduct.