District Judge William F. Kuntz II denied defendants Yishai Z. Pliner, Lloyd Gladstone, and Prong, LLC’s motion for summary judgment of unenforceability due to inequitable conduct. Defendants argued that plaintiff Yeoshua Sorias and his co-applicant (collectively “Applicants”) made a material and intentionally false statement to the PTO to obtain U.S. Patent No. 8,712,486 (“the ’486 patent”). The ’486 patent describes “a phone charger integrated onto [a cell] phone and having prongs foldable into the charger.”

The patent examiner initially rejected pending claim 4, citing prior art U.S. Patent No. 5,838,554 by Lanni (“Lanni”). Pending claim 4 recited a charger with a “thickness dimension [of] less than 12 mm.” In order to traverse the rejection based on Lanni, Applicants argued that “since the width dimension of conventional AC prongs is approximately 10 mm, and a housing is also provided around the prongs, implementing the embodiment in Lanni . . . at under 12 mm is impossible.” The patent examiner was convinced by this argument, and ultimately allowed claim 4.

Defendants allege that Applicants’ “categorical” statement that the width of conventional AC prongs is 10 mm was made with the intent to deceive the PTO since “the actual width dimensions of conventional AC prongs must be between 6.096 mm and 6.604 mm, as set in the standard published by the National Electronic Manufacturers Association.” The court concluded that defendants failed to prove Applicants’ intent to deceive by clear and convincing evidence. It explained that Applicants determined the 10 mm length by measuring an AC plug’s base rather than just its prongs, and that “the mere fact that [Applicants] made an incorrect measurement and therefore an incorrect statement does not imply intent to deceive.” The court also noted “the ease with which the patent examiner could have verified [Applicants’] statement.”

Case: Sorias v. National Cellular USA, Inc., No. 14-CV-2897 (WFK) (SMG), 2015 BL 190458 (E.D.N.Y. June 15, 2015)