Parker Vision, Inc. v. Qualcomm Incorporated, No. 3-11-cv-00719 (M.D. Fla., Jan. 22, 2013).

ParkerVision owns U.S. Patent 6,061,551 for downconverting electromagnetic signals. It brought suit against Qualcomm for infringing the ‘551 patent and five related patents. Qualcomm counterclaimed that the ‘551 patent is unenforceable for inequitable conduct, and the other five patents are unenforceable because they stem from the ‘551 patent.

Among various theories of inequitable conduct alleged by Qualcomm was that the inventor and prosecuting patent attorney “buried” the PTO with references (the ‘551 patent lists, as cited references, 340 US patents, 36 foreign patent documents, over 150 literature references, and 55 press releases).

To prevail on a defense of inequitable conduct, the accused infringer must prove both intent and materiality. Specific intent to deceive must be “the single most reasonable inference able to be drawn from the evidence” and materiality is but-for materiality under Therasence.

The court had to look no further than its Therasense decision to dispose of the question of intent to deceive. “With inequitable conduct casting the shadow of a hangman’s noose, it is unsurprising that patent prosecutors regularly bury PTO examiners with a deluge of references, most of which have marginal value.” Qualcomm’s assertions that ParkerVision provided voluminous references to the PTO in order to “distract” the examiner was not, in the court’s view, the single most reasonable inference to be drawn from the record. In fact, “taking into account the practice of bringing inequitable conduct charges against a patentee for under-disclosing references, an equally if not more reasonable inference is that ParkerVision aimed to insulate itself from such claims by over-disclosing references.”

Clearly there is little risk in over-disclosing references to the PTO. Time will tell whether the Therasense but-for standard of materiality will temper this practice.