•            Inequitable Conduct:  Selective withholding of material reference where a cover page is consistent but inside content is inconsistent with arguments made was remanded to the district court for a finding on scienter – deceptive intent – and inequitable conduct 
  •            Joint Infringement:  Establishing joint infringement of a process or system claim sufficient to support a jury verdict of joint infringement continues to require a “controlling party”, i.e., a “mastermind”

In Golden Hour Data v. emsCharts, a decision rendered by the Court of Appeals for the Federal Circuit on August 9, 2010, the Federal Circuit remanded the case to the district court for it to make detailed factual findings as to whether Applicant and/or patent counsel actually read a highly material brochure that they identified on an information disclosure statement but never produced to the Patent Office, knowing it to be material. The brochure cover was consistent with, but its inside contents were inconsistent with, prosecution arguments. Golden Hour Data, No. 2009-1306, slip op. at 26.  

In this action involving charges of inequitable conduct during prosecution of a patent application, the Court explained that the failure to advise the PTO about the integrated billing disclosed in the brochure is explainable by either (1) the failure of Applicant or patent counsel to read the brochure or (2) the deliberate withholding by Applicant and/or patent counsel of damaging information on the inside of the brochure that they had read.  Id. at 21  On the key question of whether Applicant and/or patent counsel in fact read the brochure the district court failed to make any finding of fact.  Id. at 21  The Federal Circuit remanded this issue to the District Court since “it is not the task of the Federal Circuit to make factual findings [on materiality and deceptive intent]”.  Id. at 12, 26-27. 

The Federal Circuit also affirmed a grant of judgment as a matter of law (JMOL) with respect to joint infringement.  The majority first considered the process claims and relied on Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) and BMC Resources, Inc. v. Paymentech, L.P, 498 F.3d 1373 (Fed. Cir. 2007), for the well established proposition that “control or direction” of one party by another is required for joint infringement of process claims. The Federal Circuit held the method claims not infringed because no one person exercised “control or direction” over the entire process.  The system claims were likewise not infringed but only because the parties had agreed to submission of the system claims to the jury on a joint infringement theory based on the control or direction of Softech by emsCharts. Id. at 28  As stated by the Court “such a sale might well [have] create[d] liability on the part of emsCharts for the sale of the patented system, whether or not emsCharts controlled Softech.”  Id. 

The Juhasz Burge PC Firm can help you to better understand the effect of Golden Hour Data on your patents. For more information regarding Golden Hour Data and advice on how this decision may affect your patents, please contact The Juhasz Burge PC Firm.

Your patents may be your most important asset. To help you protect your patents contact Juhasz Burge PC, the firm committed to Positioning Your Patent Beyond The Horizon℠.

For more on Golden Hour go to the August 2010 Juhasz Burge PC Advisory.