In Ohio Willow Wood v. Alps South, Nos. 2015-1132, -1133 (Fed. Cir. Feb. 19, 2016), the Federal Circuit affirmed a finding of inequitable conduct.
OWW asserted infringement against Alps South, who sought reexamination of the claims. Appealing a rejection from the reexamination, OWW argued before the Board that certain testimony the examiner relied upon in making his rejection was uncorroborated. The Board agreed, reversing the examiner’s rejection and explaining that the examiner erred in crediting uncorroborated testimony, and the claims were confirmed.
Following a bench trial, the district court found, and the Federal Circuit agreed, that the corroborating evidence was actually in the possession of OWW. Further, the Federal Circuit agreed that the withheld evidence was material, as corroboration was dispositive before the Board while OWW asserted that the testimony was uncorroborated. Regarding intent, the district court found that the OWW employee responsible for overseeing the litigation was aware of corroborating evidence, but failed to correct his counsel’s misrepresentations to the Board. The Federal Circuit explained that this evidence supported a finding of deceptive intent, where the employee understood both that the reexam turned in substantial part on the question of corroboration and that he could have given his counsel the corroborating evidence at any point, but did not do so.