In a NFP order, the CAFC affirmed trial court rulings of not invalid and enforceable, in a suit about patents for those clunky tag devices and sensors used to deter shoplifters. Defendants appeared for trial in 2008 and stipulated to infringement, choosing to defend on invalidity and unenforceability grounds. Earlier, the defendants filed for re-exam, and with one possibly important exception, the claims survived.
The trial presentation on invalidity apparently relied on references submitted in the re-exams, and in consonant fashion, the court upheld the patents as valid.
The inequitable conduct ruling, and the remarks in the CAFC order, are curious or provoke this curiosity. In the re-exam, a claim was rejected based on the `033 patent, which defendants contended was withheld during prosecution. Quare: would not rejection based on that reference be prima facie proof that it was “material to patentability.” Even if that `033 reference was not enough to reject the claim, it at least would seem to be “material” prior art.
At trial, one of the inventors explained why he felt the `033 disclosed less than the examiner had said in the re-exam. On that basis, the trial Judge ruled that “the `033 patent was not material.” Per curiam, the CAFC affirmed, but stated “we do not address the question whether the information that was not disclosed was material.” It affirms based on the finding that the inventors “did not act with intent to deceive.” That’s a bit oblique to the district court’s specific findings that the non-disclosed art was cumulative and/or non-material, which was disconnected from the conclusory ruling that defendant “have not shown” the references were “intentionally withheld ..with an intent to deceive.”
Perhaps, here’s the difference between for-publication and NFP rulings by the CAFC: publication is needed to articulate how to reach the result on appeal; a ruling NFP comes to the right result, so there no need to say more about it. Sensormatic v. Von Kahle, (CAFC 2009-1193,