Whether where one law firm prosecutes two copendent, closely-related, jointly assigned patent applications, the non-disclosure of the second application to the first application's examiner until after allowance of the first application constitutes inequitable conduct, where the second examiner previously had been given notice of the first application.
No. The disclosure of copendency to at least one examiner while one application is still pending places the PTO on notice as to the copendency of the two applications, and demonstrates good faith that balances any apparent deceitful intent.
Defendant Exxel holds U.S. Patents No. 4,423,829 (the '829 patent) and 4,387,833 (the '833 patent). In March, 1992, Plaintiff Akron filed suit seeking a declaratory judgment that their product did not infringe the '829 patent. Exxel counterclaimed, asserting infringement. On cross motions for summary judgment as to infringement, the district court held that Akron Polymer's nonaerosol dispenser infringed on the '829 patent. Plaintiff Akron then amended its complaint to allege that the '829 patent is unenforceable for inequitable conduct.
The "Katz application," which gave rise to the '829 patent, was filed on August 23, 1980; the "Venus application," covering quite similar subject matter and resulting in the '833 patent, was filed later the same year. Though prosecuted by attorneys at the same law firm who knew of the similarity and overlap between the two inventions, the Venus application was disclosed to the Katz application examiner only after the PTO had issued a notice of allowance for the Katz application. The law firm had previously disclosed the existence of the Katz application to the Venus application examiner. The district court held that the Venus application was not material to the issue of inequitable conduct because it was not prior art to the Katz application. On appeal, the Federal Circuit vacated the finding of lack of materiality on the ground that materiality encompasses "any information that a reasonable examiner would substantially likely consider important in deciding whether to allow an application to issue," rather than just prior art. Akron Polymer Container Corp. v. Exxel Container, Inc., 40 U.S.P.Q.2d 1265, 1269 (1995).
On remand, the district court held the '829 patent unenforceable for inequitable conduct. Exxel Container appealed, claiming the district court erred in finding a threshold level of deceitful intent. In this case, the Federal Circuit reversed, holding that disclosure of the Katz application to the Venus application's examiner put the PTO on notice of the copendency of the two applications, and that therefore Exxel "hardly could be seeking to deceive the PTO as to the existence of copending applications."