In Intellect Wireless, Inc. v. HTC Corporation and HTC America, Inc., the Federal Circuit affirmed a district court decision holding Intellect's U.S. Patent No. 7,266,186 unenforceable due to inequitable conduct relating to both the claiming of subject matter which had not been reduced to practice and the filing of multiple declarations each containing false statements.
Intellect admitted that a first declaration contained false statements regarding reduction to practice of the clamed device. However, Intellect continued to argue that in a later declaration the false statement was corrected and that the initial false statement had been an "inadvertent mistake."
Upon inspection of the later declaration, the Federal Circuit found that the statement of reduction to practice had not been removed and that the language used in the later declaration appeared to intentionally confuscate the errors.
Intellect also argued that at the time of the later declaration, both the reduction to practice had occurred and the Examiner had been made aware of the change to the declaration. However, the Federal Circuit found no evidence of either the reduction to practice at the time of filing the later declaration or any record that the Examiner had been made specifically aware of the erroneous declaration. Accordingly, the district court decision was affirmed.
In this decision, the Federal Circuit offers the following guidance regarding the submission of an erroneous declaration: The declaration must be corrected, and the Examiner must be made aware both of the error and the reason why any correction is being made as it relates to the error.