The U.S. Court of Appeals for the Federal Circuit reversed a jury verdict of inequitable conduct on the ground that “a prosecuting attorney is free to present argument in favor of patentability without fear of committing inequitable conduct.” Rothman v. Target Corp., Case No. 08-1375 (Fed. Cir., Feb. 13, 2009) (Rader, J.).

Rothman sued Target Corp. and 10 other defendants for patent infringement in the U.S. District Court for the District of New Jersey. The claimed invention was a tank top with a built-in nursing bra. Ms. Rothman, the inventor, created a prototype by stitching together two off-the-shelf items, a Jockey tank top and an Olga nursing bra. While her patent application was pending, Ms. Rothman engaged in licensing negotiations with one of the co-defendants in the case, Leading Lady. One year later, Leading Lady terminated negotiations by asserting that it developed its own nursing tank top.

During prosecution of Ms. Rothman’s patent application, the patent attorney did not submit Leading Lady’s competing product as prior art. In addition, to overcome an obviousness rejection, the patent attorney distinguished prior art references even though he did not have any prior experience in the field of the invention.

At trial, the defendants argued two grounds for inequitable conduct: the failure to disclose Leading Lady’s nursing tank top and purported misrepresentations based on the patent attorney’s arguments made during patent prosecution. The jury concluded that Ms. Rothman’s patent was invalid as obvious and unenforceable due to inequitable conduct.

The Federal Circuit affirmed the jury verdict of obviousness based on substantial evidence that one of ordinary skill in the nursing garment industry would have been motivated to combine a tank top and nursing bra at the time of invention.

In reversing the jury verdict of inequitable conduct, the Court found that Ms. Rothman’s patent attorney submitted numerous prior art references that were similar to Leading Lady’s nursing tank top. Therefore, the Court reasoned, Leading Lady’s product was not material because it was cumulative of information already before the examiner.

Additionally, the Court concluded that while the law prohibits genuine misrepresentations of material fact, in this case, the patent attorney’s interpretation of prior art constituted legitimate attorney argument. The Court explained that it has “little basis to find deceptive intent in the routine back and forth between examiner and applicant” and that the “boundaries on a patent attorney’s conduct are not so narrow.” Further, the Court emphasized that “the Patent Act gives the examiner the discretion to reject or accept an applicant’s arguments based on the examiner’s own conclusions regarding the prosecution record.”