By John L. Rogitz of Rogitz & Associates
John Rogitz has conducted extensive domestic and foreign prosecution in the areas of computer hardware and software for high-tech institutions. He has also conducted extensive patent prosecution in the biomed field, including medical instrumentation, as well as in the fields of superconductors, magnetic resonance imaging, materials and consumer electronics. Mr. Rogitz can be reached at 619-338-8075.
Inequitable Conduct: Avid Identification Systems, Inc. v. The Crystal Import Corp., 2009-1216, 1254 represents another dangerously injudicious expansion of the viral-like "plague" of inequitable conduct so we will treat it at greater length than customary.
Under Rule 56 those having a duty of candor toward the PTO are (1) inventors, (2) prosecuting attorneys/agents, and (3) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor or assignee. Mischief arose in this case over expanding #3 to encompass the following set of facts.
A company founder who was not an inventor or prosecuting attorney on a pet locator patent was held to be "substantively" involved in the prosecution of the patent at issue and, hence, obligated to disclose a material early demonstration of a precursor product (albeit one that the jury had found not to be invalidating). The founder admitted to intentionally withholding the information so the question boiled down to, was he an obligated person under Rule 56? Not a single piece of direct evidence existed to support the CAFC's holding that he was substantively involved in the prosecution of the patent, and in fact the prosecuting attorney testified under oath that he founder was not<...