Apotex, Inc. v. UCB. Inc., __ F.3d __ (Fed. Cir. Aug. 15, 2014) (REYNA, Wallach, Hughes) (No. 2013-1674, S.D. Fla. (Middlebrooks, J.)) (2 of 5 stars)

Fed Cir affirms district court’s judgment that Apotex’s U.S. Patent 6,767,556 (“the ’556 patent”) is unenforceable due to inventor’s inequitable conduct.

As to materiality, the Fed Cir found that the inventor of the ’556 patent (Dr. Sherman, who has written 100+ patent applications himself) engaged in material misconduct based on (1) his active involvement in the prosecution of the ’556 patent, including the omission of relevant prior art and his insistence  on preparing and submitting an expert declaration that reinforced certain prior art representations; (2) his affirmative misrepresentations of material facts, specifically, the example experiments never actually conducted and characterization of prior art products; and (3) his misconduct being but-for material to the issuance of the ’556 patent because the examiner’s rejections were based on the same prior art that was the subject of the misrepresentations.  Notably, the Fed Cir explained that his actions came close to the type of affirmative misconduct that the court held in Therasense could justify finding inequitable conduct without showing but-for materiality.  The Fed Cir also clarified that while Dr. Sherman had no duty to disclose his own beliefs regarding the prior art, his misconduct went beyond that and rose to the level of affirmative and knowing misrepresentations.

As to Dr. Sherman’s intent to deceive, the Fed Cir found Dr. Sherman’s statements were not merely advocacy but factual and contrary to the true information, which he knew.  “In the aggregate, Dr. Sherman’s conduct evidences a pattern of a lack of candor.”  Slip. op. at 16.

Note:  This decision serves as a counterpoint to other decisions that suggest there can be no inequitable conduct for making statements about art that is before the examiner.