03/18/2020

March 2, 2020 – Purposefully Evading Disclosure Duties or Failing to Seek Out Relevant Information Can Lead to a Finding that Patent Counsel Committed Inequitable Conduct

The Federal Circuit in GS CleanTech Corp. v. Adkins Energy LLC, Appeal Nos. 2016-2231, 2017-1838, 2017-1832 (Fed. Cir. March 2, 2020), determined that a patentee and its patent counsel committed inequitable conduct during prosecution of four related patents that CleanTech asserted against Adkins and others.  Based on the evidence of record, the district court determined, among other things, that CleanTech’s patent counsel participated in the inequitable conduct. Slip op. at 21-23.  The district court found, for instance, that patent counsel intimately involved in the prosecution of the asserted patents ignored clear “red flags” and failed to ask the inventors and a third party key questions about the invention or contemporaneous documents. Id. The district court also found that patent counsel failed to correct false information that it submitted to the USPTO.  The Federal Circuit found no error or abuse of discretion in the district court’s analysis and conclusions on inequitable conduct. Id. at 31-38.  The Court affirmed the judgment that the patents are unenforceable due to inequitable conduct. Id.