10 Wake Forest Intell. Prop. L.J. 30
In 2004, this author published an article that analyzed the requirements for proving the defense of inequitable conduct to a claim of patent infringement. In particular, the article focused on the second element of inequitable conduct – intent to deceive – and whether it can be inferred from the failure to disclose a material or highly material reference. The article noted that in Kingsdown Med. Consultants Ltd. v. Hollister, Inc., the Federal Circuit ruled en banc in relevant part that “a finding that particular conduct amounts to “gross negligence” does not of itself justify an inference of an intent to deceive.”
The court overruled Driscoll v. Cebalo, which had concluded that gross negligence would support the finding of an intent to deceive. The court’s en banc decision in Kingsdown rejected this rule. Nonetheless, the earlier article reviewed at least four Federal Circuit decisions that appeared to have resurrected the overruled standard from Driscoll. An early case to have gone astray on this issue was Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., which inexplicably relied solely on Driscoll as support for the very proposition on which Driscoll had been overruled by Kingsdown, namely, “[I]ntent may be inferred where a patent applicant knew, or should have known, that withheld information would be material to the PTO’s consideration of the patent application.”
It is now five years later, twenty years after the Kingsdown decision, and unfortunately the conflicting state of the case law has not improved. On the one hand, there have been several Federal Circuit decisions that have relied upon or otherwise remained true to Kingsdown by finding that the failure to disclose a material reference alone is insufficient to support a finding of an intent to deceive the PTO and, therefore, inequitable conduct. Notwithstanding its awareness of the issue, however, in the past five years the Federal Circuit has issued several more precedential opinions that continue to rely upon Critikon or its erroneous version of the standard. Some of these cases are not necessarily inconsistent with Kingsdown, while several other decisions are difficult to reconcile with the Kingsdown standard for finding an intent to deceive.
Against this background, this article will first review in more detail the post-2004 Federal Circuit cases that have followed Kingsdown and held that the intent to deceive cannot be inferred merely from the failure to disclose a known material reference. Second, the article will analyze in more detail post-2004 Federal Circuit cases that have continued to inappropriately follow Critikon or other cases upholding a finding of intent to deceive based solely on the failure to disclose a known material reference. Finally, the article will review several reasons, apart from its precedential status, that the Federal Circuit should uniformly and strictly enforce the higher Kingsdown standard for proving an intent to deceive.