Patent Applicant's Failure to Cure False Affidavit Meets Therasense Materiality

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By Tony Dutra  

Oct. 9 --A false affidavit, without curing the false representations, satisfies the materiality prong for an inequitable conduct finding, the U.S. Court of Appeals for the Federal Circuit ruled Oct. 9 (Intellect Wireless, Inc. v. HTC Corp., Fed. Cir., No. 2012-1658, 10/9/13).

The decision confirms that, though the en banc court's decision in Therasense tightened the requirements for evidence of materiality, a false affidavit is at least one of the “affirmative act of egregious misconduct” that the Therasense majority said, “strikes a necessary balance between encouraging honesty before the PTO and preventing unfounded accusations of inequitable conduct.”

In affirming a lower court's judgment here, the court further held that any cure must specifically identify the false representations in the original affidavit.

No Actual Reduction to Practice

Daniel A. Henderson of Intellect Wireless Inc. filed a patent application in Jan. 5, 1994, that led to the two patents (U.S. Patent Nos. 7,266,186 and 7,310,416) at issue here. The invention relates to transmitting caller identification information to and displaying it on a device such as a mobile phone.

Intellect filed a patent infringement lawsuit against HTC Corp. in the U.S. District Court for the Northern District of Illinois, and HTC countered with an inequitable conduct defense.

During prosecution, Henderson had filed a declaration to overcome prior art by saying that the invention was reduced to practice, evidenced by a public demonstration in July 1993. However, no transmission was made to the mobile phone in that demonstration. It merely displayed pre-stored messages.

A revised declaration was subsequently submitted, but it still used the phrase “actual reduction to practice.” Senior Judge William T. Hart rejected the argument that, through the revised declaration, Henderson had corrected the error in the first declaration and was now contending that the patent application served as constructive reduction to practice.

Intellect appealed Hart's inequitable conduct judgment.

Egregious Misconduct Exception

A charge of inequitable conduct must meet both the materiality and intent prongs of Therasense Inc. v. Becton Dickinson & Co., 649 F.3d 1276, 2011 BL 137835, 99 U.S.P.Q.2d 1065 (Fed. Cir. 2011) . Therasense clearly distinguished the two prongs and clearly tightened the evidence requirements for each, including a high “but-for materiality” test.

However, as Judge Kimberly A. Moore's opinion here noted, Therasense created an “egregious misconduct” exception, based on the unclean hands doctrine that underpinned inequitable conduct decisions in the 1930s and 1940s. The Therasense court used “the filing of an unmistakably false affidavit” as an example, whereby misconduct is deemed to be material with requiring application of the but-for test.

The court held that Henderson's conduct in this case met the exception. Though the court allowed that Henderson could have cured the original declaration, it said “the revised declaration did not cure the misconduct because it never expressly negated the false references to actual reduction to practice in the original declaration.”

The court thus confirmed that Therasense did not modify Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1572, 220 U.S.P.Q. 289 (Fed. Cir. 1983): “we require that the applicant 'expressly advise the PTO of [the misrepresentation's] existence, stating specifically wherein it resides.'”

Strong Inference of Intent

The court further affirmed the lower court's judgment as to the intent prong, again applying Rohm & Haas. “Submission of an affidavit containing fabricated examples of actual reduction to practice in order to overcome a prior art reference raises a strong inference of intent to deceive.”

Henderson also engaged in a “pattern of deceit,” the court said, by claiming actual reduction to practice in other patent applications in the same family, and in using language in the two declarations that “dances around the truth.” The court said:

The second declaration, which claims to rely on constructive rather than actual reduction to practice, continues to reference a “prototype” (that was never built), a “product brochure” (even though there was no product), and “commercialization” (that never occurred).  


The court thus affirmed that the asserted patents were unenforceable due to inequitable conduct.

Judges Sharon Prost and Kathleen M. O'Malley joined the opinion.

Meredith Martin Addy of Steptoe & Johnson LLP, Chicago, represented Intellect. Stephen S. Korniczky of Sheppard Mullin Richter& Hampton LLP, San Diego, represented HTC.


To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Naresh Sritharan at

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