Duty to Disclose Does Not Include Duty to Respond to Examiner Confusion

Earlier this month, in Nevro Corp. v. Boston Scientific Corp., District Judge Vince Chhabria of the U.S. District Court for the Northern District of California granted a motion to strike filed by Plaintiff Nevro Corp., determining that the specific facts alleged by Defendants did not rise to the level of inequitable conduct.

Defendants had alleged that after the inventor had disclosed a specific reference -- the Fang reference -- the Examiner had indicated that claim 58 of the asserted patent would be rejected as obvious because the Fang reference disclosed all but one of the limitations, and the one undisclosed limitation was obvious.  According to Defendants, the attorney prosecuting the application that issued as the asserted patent informed the Examiner that the Fang reference was the inventor's own reference, and therefore argued that obviousness did not apply.  The Examiner then allowed claim 58.  Defendants contended that the Fang reference did in fact disclose the missing limitation, inherently if not explicitly, and argued that the prosecuting attorney should have pointed this out to the Examiner, which Defendants asserted would have resulted in an anticipation rejection of claim 58.  Defendants explained that while disclosure of a prior art reference is usually enough to avoid a charge of inequitable conduct, when the Examiner made clear that he misunderstood the scope of the Fang reference, the prosecuting attorney had a duty to respond to the Examiner's confusion by pointing out that Fang inherently disclosed the allegedly missing limitation.

In granting Nevro's motion to strike Defendants' inequitable conduct defense, the District Court explained that "[a]lthough [Defendants'] argument is not unreasonable, it goes against the great weight of the case law, which stands for the proposition that while an inventor must disclose all material information to the patent examiner, he is not required to make sure the patent examiner understands that information."  In support of this determination, the Court cited Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1327 (Fed. Cir. 2000), which states that there can be no liability for inequitable conduct "if [a] reference was cited to the examiner, whether or not it was a ground of rejection by the examiner."

The District Court also noted that based on Defendants' allegations, the instant case was not one in which "the inventor made an affirmative misrepresentation about prior art or withheld information uniquely in its possession that would have cleared up a patent examiner's known misunderstanding."  The Court concluded that "even if there could be a factual scenario where an inventor commits inequitable conduct by failing to clear up a misunderstanding of prior art held by a patent examiner that the patent examiner could have recognized on his own, the specific facts alleged here by [Defendants] would not rise to the level of inequitable conduct."  However, because the Court realized that it may be possible for Defendants to allege additional facts that would raise a viable inequitable conduct defense –- such as an affirmative misrepresentation of fact by the prosecuting attorney or concealment of information that the Examiner could not have discovered on his own -- the Court granted the motion with leave to amend.

Nevro Corp. v. Boston Scientific Corp. (N.D. Cal. 2017)
Order Granting Motion to Strike by District Judge Chhabria