The opinion of the court was delivered by: Hon. Rudi M. Brewster United States Senior District Court Judge
ORDER ON NON-JURY ISSUE OF INEQUITABLE CONDUCT REGARDING U.S. PATENT NO. RE 39,080
On January 29, 2007, a jury trial commenced in case no. 02cv2060 on issues pertaining to U.S. Patent Nos. 5,341,457 and RE 39,080 ("the '457 patent" and "the '080 patent," respectively). On February 22, 2007, the jury returned a verdict in favor of Lucent Technologies, Inc. ("Lucent") finding the patents valid and infringed by Defendant Microsoft Corporation ("Microsoft"). In addition to the affirmative defenses put before the jury, Microsoft raised several additional defenses regarding the '080 patent that were not presented to the jury. Four of these were decided as set forth in the Court's Order March 19, 2007: (1) ownership; (2) license; (3) invalidity under the recapture doctrine; and (4) intervening rights. An additional remaining issue, inequitable conduct with respect to the '080 patent, is addressed herein.
U.S. patent No. 5,627,938 ("the '938 patent") was applied for on September 22, 1994. It issued on May 2, 1997. The '958 patent lists James D. Johnston as the sole inventor and Lucent as the assignee. The '938 patent states that it is a continuation of application serial no. 844,811 filed on March 2, 1992.
On August 13, 2002, Lucent applied for a reissue of the '938 patent. The '080 reissue patent was granted on April 25, 2006. The claims of the reissue are almost identical to those of the '938 patent; the only change is the deletion of dependent claim 2 in the reissue. The difference between the '938 and '080 patents appears in their claim of priority date; the '080 claims an earlier priority date of December 30, 1988, by claiming priority to an application that eventually issued as the '457 patent. Following the issuance of the '080 reissue patent, on or about September 9, 2005, Microsoft filed a protest with the USPTO. The USPTO denied entry of the protest on or about October 21, 2005.
In the instant trial which concerned the '080 patent as well as the related '457 patent, Microsoft introduced several pieces of evidence towards the inequitable conduct issue. First, Microsoft alleged that Dr. Ferreira contributed to the work that was included in the '938 patent. Microsoft introduced as evidence Dr. Ferreira's notebook with notations and drawings. The relevant pages were dated between 1990-1991. (Test. Rogitz, February 15, 2007, Tr. at 51). The notebook had not been disclosed to the USPTO during the prosecution of the '080 patent. (Id.) Microsoft submitted the notebook in a protest to the USPTO filed after the '080 patent issued. (Id. at 52.)
Microsoft also introduced evidence related to a 1989 agreement between AT&T and Fraunhofer Gesellschaft ("Fraunhofer"), a German research company. (the "AT&TFraunhofer Agreement"; Def.'s Ex. 6489.) According to this agreement, work performed fell into one of two categories: "Existing Technology," which was conducted by either party prior to the agreement and "New Work" performed during the period of the agreement (April 1989 and June 1990). (Id; see also Test. Brandenburg, Feb. 5, 2007, Tr. at 192.) New Work was jointly owned by AT&T (and its successors) and Fraunhofer. Microsoft contended that based on this evidence, the '938 patent was potentially co-owned by Fraunhofer and this fact was not disclosed when Lucent filed for the '080 reissue patent. (See Test. Rogitz, February 15, 2007, Tr. at 57, 60.)
Microsoft's third piece of evidence was a statement made before the European Patent Office ("EPO") on or about 1997 in the prosecution of a European patent application related to the '938 patent. (Id. at 65.) In the EPO proceedings in response to an inventive step rejection, Lucent made representations that the European version of the '457 patent did not teach or suggest the claims of the European version of the '938 patent. (Test. Rogitz, February 13, 2007, Tr. at 213.) This statement to the EPO was not disclosed to the USPTO when Lucent filed for the reissue. This evidence was also filed by Microsoft in its protest to the USPTO. (Test. Rogitz, February 15, 2007, Tr. at 65-66.)
"To prove inequitable conduct in the prosecution of a patent, the defendant must have provided evidence of affirmative misrepresentations of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive." Dayco Products, Inc. v. Total Containment, Inc., 329 F.3d 1358, 1362 (Fed. Cir. 2003).
The Federal Circuit has presented a clear road map where a "failure to disclose" form of inequitable conduct is alleged. The allegation requires clear and convincing evidence of:
(1) prior art or information that is material;
(2) knowledge chargeable to applicant of that prior art or information and of ...