By John L. Rogitz of Rogitz & Associates
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Inequitable Conduct: Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., no. 2007-1448 (reversing judgement of inequitable conduct): In a case acknowledging not only the inequity of permitting a patentee to profit by fraud, but the inequity of destroying a patent for minor missteps, CAFC opines that when no evidence was brought to light that a patentee knew what an undisclosed "smoking gun" letter said prior to transferring the patent application to another firm or that the letter was a reason for changing firms, intent is not demonstrated with clear and convincing evidence; furthermore, information in letter was cumulative to other information of record and thus the letter was not material, but the CAFC nonetheless took the opportunity to comment on the evidence of intent; also reversed was a finding of invalidity based on indefiniteness.
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Reexamination: In re Swanson clarifies that a substantial new question of patentability for purposes of opening a reexamination can be raised by prior art that was considered during the original prosecution, since Section 303 of the Patent Law overrode the contrary rule in In re Portola Packaging Inc., 110 F.3d 786 (Fed. Cir. 1997). In this case, the Board affirmed a rejection on prior art that had been considered in broader claims in the original patent and moreover that...
