Of late, the C.A.F.C. has indicated that it considers many claims of inequitable conduct meritless and, as a result, that this defense to claims of patent infringement is “disfavored.” Well, maybe so, but apparently the word hasn’t gotten around to all of the district court judges, one of whom recently found three (3) patents unenforceable for this reason. (CCC Group Inc. v. Martin Engineering Co.)
In reaching his decision, the judge held that the testimony of three of the patentee’s witnesses was “not credible.” In this regard, the judge clearly disagreed with the jury, which had found the patents not invalid and infringed. In his decision on inequitable conduct, the judge wrote, “This court is bound by that verdict. Like infringement, it may be that the jury failed to understand the requirements of the law. Were it not for the preclusive effect of the jury verdict, this court would have found invalidity. A person with reasonable knowledge of the prior art would have known these patents were the product of overreaching and exaggerating the novelty of what was done…” He proceeded to award attorney’s fees and costs to the defendant.
THE LESSON TO BE LEARNED: The judge gets the final say.
Question:
A small company ("the patentee") has begun patent infringement proceedings against a competing company ("the competitor") that sold a low priced knock-off of the technology to customers.
The competitor also challenged the patents of the patentee in an interference proceeding at the USPTO prior to issuance. That challenge, based on prior art arguments, failed; and patents have been issued to the patentee.
Is the patentee's infringement case strengthened by the fact that the competitor already challenged and failed to block the patents at the USPTO, prior to their issuance?
As far as I know, the competitor has no new information or evidence since the USPTO interference proceeding and is simply hoping that a jury and/or judge will reach different conclusions than the USPTO did.
It seems to me that this would be a very strong point, in favor of the patentee. The USPTO has already gone through a careful review of the competitor's prior art challenges, and it seems to me that would be a good predictor of the outcome of the case in the federal court system.
Is this a reasonable analysis/conclusion?