Digest of Am. Calcar, Inc. v. Am. Honda Motor Co., No. 2013-1061 (Fed. Cir. Sept. 26, 2014) (precedential). On appeal from S.D. Cal. Before Prost, Newman, and Wallach.

Procedural Posture: Patentee appealed district court finding that patents were unenforceable due to inequitable conduct. CAFC affirmed.

  • Inequitable Conduct: Where a co-inventor disclosed the existence of a prior art system but deliberately did not disclose the pertinent underlying data, the district court did not abuse its discretion in finding unenforceable the three patents relating to computerized navigation systems in defendant Honda’s vehicles. Regarding materiality, the CAFC agreed that the jury’s finding that the undisclosed prior art in question did not invalidate the patent did not necessitate a finding of no materiality due to the differing standards during prosecution and litigation. The CAFC further found that the district court did not err in finding intent to deceive where the co-inventor gave contradictory testimony in an earlier proceeding.

Newman, dissenting:

  • Inequitable Conduct: The criteria of inequitable conduct were “plainly not met” as the PTO addressed the undisclosed prior art in reexamination and confirmed patentability. There was also no evidence of intent to deceive the PTO, as the majority could not articulate what was not credible about the co-inventor’s testimony, relying upon “unsupported speculation outside of the record” to devise an “inference” of deceptive intent.