Speaker 1  0:00  
Good afternoon, and welcome to today's webinar. Inequitable conduct, how to protect your patents from this unenforceability trap, presented by Autumn. My name is Samantha Spiegel, Autumn's Professional Development Manager, and I will be your staff host for today, all lines have been muted to ensure high quality audio, and today's session is being recorded. If you have a question for the panelists, we encourage you to use the Q and A feature rather than the chat feature. If you have a technical question or a comment, please feel free to use the chat today's session. May be eligible for CLE credit. Throughout the webinar, you will see pop up surveys that are simply asking for a yes or no answer. If you do not intend to apply for CLE credits, you may dismiss the poll by clicking on the X in the top right corner of the pop up window. If you do intend to apply for CLE credit, you must answer the question as it is answered. For more information about CLE eligibility for this session or what states have already approved this program, please contact me directly before we begin, I would like to take a moment to acknowledge and thank autms 2021 online professional development sponsor. We appreciate your ongoing support, and I now have the pleasure of introducing you to today's presenters. Warren Wesner is a founding shareholder of schwegman Lundberg and Wesner, his practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics and biofuels and agricultural chemistry, including related opinions and licensing matters. In addition, Warren has served as an expert witness and also works in mediation of inventorship disputes and solutions for complex prosecution problems. Warren received a PhD and a JD from the University of Wisconsin, Madison. He published, he has published and spoken widely on legal topics. Was the previous Chair of the chemical practice committee of the American intellectual property law Association, previous Chair of the biotechnology committee, and served as a member of the amicus committee. Warren is also a certified licensing professional. David historic is a professor of law at Mercer University, School of Law. He graduated cum laude from Northwestern University, School of Law after graduating phi, beta, Kappa and with high honors from the University of Arizona. He then practiced law for 14 years, first with Baker bots and then with litigation boutiques, principally litigating patent infringement, legal malpractice and complex commercial litigation. He left full time practice in 2002 and began to teach at Mercer. He principally teaches law of lawyering, patent law, litigation and civil lawsuits. He has authored or co authored books on property, statutory interpretation, civil procedure and ethical issues in patent prosecution and litigation. He is nationally recognized as an expert in ethics and intellectual property law. And finally, William Covey is the Deputy General Counsel and director of the US of the Office of enrollment and discipline at the USPTO, where he leads a diverse team of over 45 attorneys and staff who investigate and prosecute practitioner misconduct. His team works to ensure compliance with their ethical obligations. William has also served as acting general counsel of the USPTO. Welcome all, and thank you for being here. And I will turn it over to David to kick us off. Thanks,

Speaker 2  3:15  
Samantha. If you go ahead and go to the next slide, we're going to talk about inequitable conduct, which is a statutory defense to patent infringement. I am not going to spend a lot of time going over these things that you know, but I think some context will be helpful. It is based in the statute is named as a defense in Section 282 one, and because of how we interpret statutes, we presume that Congress intended it to be somewhat anchored to the case law at that time. And these are, you know, just squibs about the cases that were in existence in 1946 1952 and they were really bad conduct, bribery of somebody and then submitting a false affidavit to favor the patent owner, paying somebody to write an article saying, oh, you know, this invention is great, and then submitting that article to the patent office and then suppressing evidence of perjury by the inventor. Really bad things. And so the assumption is, or the way we interpret statutes, leads us to it has to be really bad for it to fit within the the idea of inequitable conduct, or, as the statute uses, the phrase unenforceability. The problem is, is that, as you probably know, if you're been around a while, it expanded. It expanded a lot, until Chief Judge Rader called it the atomic bomb of litigation. And that led to the next slide and an en banc decision by the Federal Circuit and Samantha, there you go. And this was in their sense, which was in July of 2011 and the court really tried to rein in inequitable conduct, not as tightly perhaps, as those cases show it, but but much more than it had been so. There really were three requirements, first, that the information had to be material, and it broke with the patent office approach under Rule 56 and instead, it had to be material in that under the broadest reasonable interpretation, an examiner more likely than not would have rejected a claim. There had to be clear and convincing evidence that somebody substantively involved in prosecution, and here the court has used the patent office approach to whose knowledge counts somebody substantively involved in prosecution withheld that information and knew that it had been material. Both of those things. And then third, clear and convincing evidence that the single most reasonable inference is that same person intended to see the patent office by withholding or misrepresenting the information so that severely constrained where inequitable conduct had had grown to now I'll mention a little while. While I'm pointing why I am mentioning rule 56 because I'll talk about some of the rules about IPRS a little bit later on. Now, the court said that's what you need for classic, if you will, inequitable conduct, but it also said that there was an exception, if you will, for what it called Affirmative, egregious misconduct, and the example that it gave was filing an unmistakably false affidavit, which ties into those those prior cases. So that's when Thera sense came out, the thing we're going to deal with. Now, if you flip to the next slide, Samantha address the whether recent cases have, you know, relit this fuse. Chief Judge Raider supposedly said, you know, we put out the atomic bomb, or defuse the atomic bomb. But there are several recent district court cases that have found unenforceability, and there are three recent Federal Circuit decisions which reveal, I think, really huge cracks in their sense and raise related concerns to it. And Warren is going to talk about those in a second. The point I wanted also to draw your attention to, was rule 36 affirmances. I clerked to the Federal Circuit in 2012 that was the like the oldest clerk that had ever and one of the things that I noticed, and it's grown more since, is the court used rule 36 to affirm cases. Now, as a clerk, I got to tell you, I loved it, because, you know, Chief Judge Raider would go off to to the hearings. They'd have their conference afterwards, and then we meet, and if I saw that the case I was responsible for got rule 36 that meant I didn't have to write an opinion about it. Now, as a lawyer, when I had a rule 36 entered against me, I hated it. But what I think may be happening, and I don't have any data on it, it'd be hard to show is that there have been affirmances of findings by an equitable conduct where the Federal Circuit has affirmed under Rule 36 and so we don't see that inequitable contract has become easier to find, because all we see from the Federal Circuit is a rule 36 apartments. And with that, I'll turn it over to Warren is going to talk about the specifics of these three fairly recent Federal Circuit cases.

Speaker 3  8:09  
Oops. Did you skip? Can you back up one? Yeah. Were you done talking about this slide? Then I Well, there were, yeah, yeah, it's have recent cases. Relit the fuse is certainly the question. There three recent Federal Circuit cases are GS, clean tech court, viadkins, energy LLC, a 2020, case, little earlier, Regeneron, pharmaceuticals versus Maris, Federal Circuit, 2017 of course, Gilead V Merck, which has drawn quite a lot of attention. That was in 2020 2018 and again, as David noted, rule 16 affirmances may be hiding the breadth of the erosion of the rather strict, fair sense, rules, qualifications, next slide, please. You know the first case I'm going to talk about, and is advocate. I called it advocacy V candor, which is language from the Federal Circuit leads to an equitable conduct. This is a case of GS clean tech V Adkins. There were four patents in suit. The main representative claim was a method of recovering oil from a thin silage comprising in sequence, evaporating the thin silage to create a concentrate having a moisture contact greater than 30% of content, contact content of greater than 30% to 90% and centrifuging the concentrate to recover the oil. Sort of interesting. Interesting because you can understand this claim, whether or not you have a PhD in chemistry or even an EE degree, pretty much anybody could probably get what this claim was about, which really drives you over to the facts and the other patents and suit claim relatively minor processing steps and the next slide, the on sale bar was the critical part of the patent statute involved here, the trial court held on summary judgment that the patents were invalid because an offer to sell had occurred prior to the critical date under 102 B, and the experimental use exception to the on sale bar was not available. The judge did a bench trial on an equitable conduct, and he found that the inventors and their attorneys at the law firm can or Coburn had committed inequitable conduct. But the judge denied considering evidence offered by the patentee on the lack of materiality. Remember, he had already found the patents invalid for violation of the on sale bar by patentee only an equitable conduct was appealed to the Federal Circuit, and the Federal Circuit reviewed, ended up reviewed the reviewing the finding of the on sale bar under the abuse of discretion standard. And David is going to expand on that procedural aspect shortly. Next slide, please. DAVID Well, the facts about the on sale bar were complicated, and I'm going to demonstrate that the two inventors, Cantrell and winsness, founded a company called VDT. They had a business relationship with another company called Agra energy, and they operated, actually a dry mill ethanol plant, and might have need of this patent. The inventors filed a provisional application on August 17, 2004 and so that set the critical date of for 102 B as August 17, 2003 sonder, old one or 2b on August 1 2003 one of the inventors, Cantrell, emailed several agri energy employees and attached the it was called throughout the decision as the July 23 proposal. And this offered agri energy a no risk trial of their oil recovery system, in which the system could be used for a period, for 60 days. And after that trial, agri energy could purchase quote the system, whatever that meant for $423,000 or just return the equipment to VDT quote, no questions asked. This may sound like a pretty good deal, but the proposal was not accepted, at least not on August 1. Next slide please. Now there were two, two law firms involved here. The first patent attorney was not told anything about the July to 2003 proposal to Agra energy, but the attorney was told that the invention is when they're trying to get their patent. The attorney was told that the invention was workable in June 2003 due to positive results of in house tests. This was used as evidence that the invention was, quote, ready for patenting, but it cut off the avail of saying making that representation effectively cut off the availability of the experimental use exception to the on sale bar the plaintiff. Clean Tech hired shortly after, hired the inventors. They acquired the VDT technology for making oil in 22 006, 2006 and then transferred the prosecution to an attorney, their attorney, Haggerty at canter Colburn in 2008 and part of the record states that he explained the on sale bar to the inventors. I put a little side note, I speak on an equitable conduct a fair amount and the miscommunication between attorneys can, in some cases, lead to protection of both attorneys from inequitable conduct. I call. Sort of the Keystone Cops defense. And you see it working occasionally in the case law where the attorney accused of inequitable conduct will say, Well, I was the second attorney or third attorney that came in and handled these files, and the attorneys before me, I thought they had filed a appropriate IDs, but they never got around to it, apparently. And you know, I didn't, didn't know, and that's why I didn't file, disclose this reference in an IDS. But this, this is not a situation where that that happened. Next slide please. Now things get complicated. Okay, cantor Coburn refiled the first application in 2009 and submitted a letter, an informal document, supporting reduction of to practice in 2004 suddenly, we've moved this up, but not disclosing the July 2003 proposal or the evidence that the had been given to the first attorney of an earlier reduction to practice before the critical date. CC Cantor Coburn learned of the July 2003 proposal in March of 2010 Haggerty did file an IDS at that time listing it, but stated that it was irrelevant because the invention had not been carried out prior to the critical date. He did not discuss the on sale bar at all. Next slide please. Now things get worse. One of the inventors went to agri energy, and the inventor, now employed by clean tech, went to agri energy and offered them a royalty free license in exchange for, quote, admitting that the patent was valid. Canter Colburn attorney, I think was another one, sent agri energy a letter asking it to confirm that it had never received drawings or diagrams of the proposed system in 2003 and that the system had been provided for funny thing, experimental use, agri energy refused to do this in November of 2010 canter Coburn sent in what was has been referred to, once referred to as the first Cantrell declaration. And That stated, this is a formal 132 declaration that the proposal had been made in August 18. 2003 which simply wasn't true, and argued that there was no on sale bar, since this was less than a year before the filing date of the application, and they included no other information, and there were other emails that were not sent. Next slide, please.

Speaker 3  18:04  
And worse, cantor Coburn filed a second Cantrell it would be a rule 132 declaration, including an august 2003 letter with the July 23 proposal attached. Okay, now they're sending in the proposal, but they didn't retract the false information in the first declaration or explain the significance of the July 23 proposal, which was after the bar date. I mean, you know longer, file, filed in violation of 102 B on sale. The district court found, and the Federal Circuit agreed that both clean tech and canter Colburn had committed inequitable conduct. Little unusual to see a law firm included in an inequitable conduct. Finding the district court stated that Cantor Colburn, quote, purposefully evaded disclosing or failed to seek out relevant information and so participated in the inequitable conduct. In other words, they chose advocacy over candor, which became sort of a bell note of this case, can you see the next slide please? Well, did a question that went through my mind is, did Cantor Coburn have a good faith belief that the July 23 proposal? Did not trigger the on sale bar, and the on sale bar is extremely fact driven, so it would be relatively easy to feel that this odd sort of you can run have a trial run. Can't run our process for a while as the trial, and then if you like it, you can pay us. If you don't, you can send it back the caf firm the finding that the proposal was an offer to sell the process, but they went on to analyze it under the UCC, this is not, not easy for them, and found that it was a quote sale on approval, since the delivered goods may be returned by the buyer, even though they conform to the contract. Contracts, there was no contract here, though, so long as the goods are delivered primarily for use by the buyer, the C CAFC panel disregarded arguments by clean tech, but it did not perform the method for agri energy before the critical date for a promise of future compensation. Um, so they're saying we didn't, you know, demonstrate this process before the critical date for commercial purposes. And they cited a case plum tree software, the data mines and and argued that the July 23 2003 proposal was not a conditional sale plum tree was helpful precedent, but the Federal Circuit in this case held that clean tech had waived this argument by failure to raise it below I sort of felt that could have gone either way, because I think it was quoted In some of the documents, even though litigation documents, even though it wasn't specifically argued. Next slide, please, inequitable conduct, as I mentioned, puts a great weight on the attorneys. Subjective state of mind while the on sale, experimental use inquiries are extremely fact driven, they depend on objective facts. But an equitable conduct requires clear and convincing evidence that a person knew of the information, knew not, should have known that it was material, that it would block a claim and withheld it with an intent to deceive. Sale on approval is an obscure corner of contract law. Janice Mueller's patent law treat his fifth edition does not even cite plum tree in its discussion of the on sale. Bar Janice Mueller's patent law two volume set just recently was published, and in that in a footnote, she cites plum tree, but not for Well, sorry, it's one line in a footnote, and it's not at all clear how it applies to the situation. But given that the cantor Colburn attorneys knew of the July 2003 proposal, what if they didn't believe that it was a commercial sale and so believed it was not material, then all of a sudden, all of the necessary elements of inequitable conduct are not present. Of course. The problem is that both clean tech and canter Colburn acted to cover up the proposal the July 20, the July 2003 proposal that set the bar date was after the bar date, and the lack of experimental use was outside the bar date and the lack of experimental use and so knowledge of materiality, the court inferred knowledge of materiality. Remember, it had already found clean tech, clean text, patent invalid for the on sale. Bar, well, that seems to meet the meet the standards for showing of materiality, at least the court thought so. Next slide, the PTO did not believe there was an on sale bar, but Kenner Coburn did not effectively purge the fraud by its declaration, following its declarations. So this analogy sort of came to mind, that if you shoot at a person, but you miss, but you think you've killed him or her, so you throw away the gun, you try to hide it. Are you guilty of murder? Of course, the answer is no. You didn't kill anybody. Generally, if you miss read a reference or fail to understand its relevance to the pending claims you're prosecuting, you will not be found to have committed inequitable conduct, even if the reference is but for material and it's hard, hard bar you. If you hit a non material reference, you did not commit inequitable conduct. That's a conclusion from Thera. Sense, certainly because you didn't receive the benefit of a claim based on your hiding clean tech and Cantor Coburn would have been better off, I think, with respect to inequitable conduct, if not maybe validity. If they had sent in the July 2003 proposal right away and argued using plum tree and what other, whatever other authorities they could locate that it was not a sale citing plum tree, of course, a moral of the story, again, is you can advocate for your client, but don't lie for your client. And David is going to do the next two slides, since they're sort of procedurally directed.

Speaker 2  25:57  
Yeah, they the procedure. And also gives a little bit more color to this idea that you were talking about, about the lack of intent, but, but you know that thought that if it had not been a sale, it doesn't matter or an offer to sell, it does not matter if you covered it up. Just just hold that thought for a second and just realize how important then the district court's decision that it had been on sale becomes hadn't been on sale, no inequitable conduct, no invalidity either, but certainly no inequitable conduct. So what happened is the defendant moved for summary judgment on sale based upon the letter, as Warren explained, and I, you know, give a little bit more color to it, they said it was a test module, and it was to see if the later claim method, or something close to it, would work. Now they argued that That letter was not an offer. It wasn't of the claim method, and as he pointed out, instead of it was an offer to use the system, whatever that was. And I have a typo there. I apologize. It had not been ready, ready for patenting, and any use would have been experimental. And again, it's common for folks to start using something not knowing it will work. The reason you're using it is to see if it will work. The fact that it does work does not mean you were not experimenting during that time. You were experimenting and it turned out it worked, but you didn't know that until that point in time. Later. Plum tree sort of fits in a little bit into that bucket of cases. But even so, the trial court held on summary judgment that some of the method claims had been on sale. Now look at what happened next, and then this goes to again, the idea of knowledge, of materiality and intent. The patentee submitted the trial court's opinion and the underlying evidence during prosecution of a continuation application to the same examiner who they had allegedly intentionally deceived into issuing the 858, patent. She reviewed it and granted a continuation. So just think about that as just practical. Wait a minute, the examiner who supposedly you intentionally lied to reviewed this and issued claims that should not have issued if it, in fact, had been on sale back then and now, with that little bit additional background, whether invention is on sale is a question of law that can be based on underlying facts, but there was no dispute about the facts themselves in this particular case. So if this had been a normal appeal of a summary judgment, then it would have been reviewed de novo, with no deference to the trial courts, legal conclusion that no reasonable jury could have found for the patentee. In other words, there was clear and convincing evidence, no dispute of issue, issue, material fact, no reasonable jury could have found other than it was on sale, that would have been the question before the court in a normal summary judgment appeal. But what happened next? If you flip to the next slide, the district court found this held a bench trial, found that attorneys and others knew of the sale. They knew that it had been material, and the only reasonable inference was that each of them had been tend to deceive during the trial, the trial court refused to consider the fact that the same examiner had granted the continuation, and it also refused because it had granted summary judgment of on sale to admit evidence as to whether the invention, the invention, had been on sale. I think about it. We're going again here to the attorneys, subjective state of mind. The trial court excluded evidence as to what they thought about the the ONS, whether it had been on sale, even though that was now the issue before the court, and now on appeal. GS, clean tech said, you know, you got to review that on sale finding de novo. That's it's a question of law. You review de novo. The Federal Circuit refused to do that instead. And I teach civil procedure, and I don't know how you review finding of on sale under abuse of discretion. It's a square peg, round hole, but that's what they did. And they also refused to review findings of fact for materiality and tend to deceive. I'm sorry. They did those for clear error, not for clear I'm sorry, but for abuse of discretion. So normally, a finding of fact you review for clear error, but they again, and I don't know how you do this, they reviewed a finding of fact for whether it was an abuse of discretion to find that fact. So the panel court said that, and this is again, another part of this opinion that disturbs me and shows the erosion of fair sense. The trial court did not abuse its discretion in finding that clean tech knew of the information. The standard is a person knew of the information, a person had the intent to deceive, not a company, and it affirmed that clean tech had an intent to deceive, because those findings of fact and those legal conclusions were not abuse of discretion, the panel affirmed. Now I know they took, they sought rehearing on bond, GS clean tech debt, and they actually applied for cert on just the standard review question, and cert was denied, like, I think, a month ago. On that, with that, I'll hand it back to you. To Warren,

Speaker 3  31:13  
yes, I'm going to do the Regeneron case and the Gilead case with a lot, maybe too many words on a slide, but only two slides, but they're but they're both instructive. In the Regeneron case, there was an adverse inference, adverse inference of prosecution misconduct because of the litigators, of the litigators actions years later. So let's look at the these facts. The lawyer was is prosecuting an application after they get a Notice of Allowance. The lawyer learned of new prior art. Lawyer concluded that it was not material and doesn't does, did not submit it and didn't use the quick path IDs route that's in the MPEP for filing. Well, it's provisionally filing an RCE, basically at the time you disclose the information you just got. But does the attorney did follow the office enrollment discipline suggestion, I guess they he wrote the he or she wrote the office and wrote a memo to the file as to why he believed it was not material. Okay, fine. The 123, patent issue, you're taking your chances. But you know, it's a reasonable thing to do the 123 patent issues, the lawyer filed a continuation and and then disclose the prior art in that continuation. Okay, years later, represented by another firm, the client patentee, asserts the patent the defendant asserts inequitable conduct. This is very heated litigation. There's a lots of fighting over documents, relevance of documents and what should be disclosed and not disclosed, and years later, some claims were found invalid based on the undisclosed prior art up there the first point moments before a plan, planned bench trial on an equitable conduct as a sanction for patentees lawyers litigation misconduct, the trial court barred the lawyers from testifying to show lack of intent to deceive the PTO and instead presumed intent, and so found an equitable conduct by the lawyer the Federal Circuit affirmed pretty much copied the fact findings from the district of court opinion as if it were making them for for the first time itself, among other things, it found materiality, even though the lawyer had interpreted the claims more narrowly than the former client did years later in litigation. So the client the start the litigation, the client asserted the claims as they were, fairly narrow claims. On the other side said, Oh no, these are much broader claims. Well, if the claims were, the Court accepted the claims as broader. The attorney was stuck at that point because a broader interpretation now made this prior hurt relevant, and so the activity of the litigators, and I won't go into detail about the litigation, misconduct, led to a finding that the original attorney had committed an equitable conduct. Even though the the Court needed to find a broader, a broader they interpreted the claims more broadly than than they had originally been awarded and the next patent, please. Next patent, next slide, Gilead. I wrote variations on the theme instead of client a, I guess I'll say Company A was in negotiations with Company B, but an in house lawyer for company A was handling the prosecution, and there were going to be negotiations and but this attorney, prosecuting attorney, was subject to a firewall. He attended the nonetheless, one of his boss bosses, even though he was uncomfortable, the prosecuting attorney was asked to be in the meeting, or at least they said it was okay that he was on the call with Company B. The lawyer learned of B's confidential information, the structure of a lead compound. Think it was sobaldi. The lawyer later use that information to narrow the claim of a pending application of Company A

Unknown Speaker  36:29  
that had support for the narrow claim and got a patent with the narrow claim allowed this. This had an earlier filing date than client. Client B's patent, and now he waited the lawyer, waited until the the

Speaker 3  36:53  
opponent's patent, client a, client B's and patent had issued or had been published, and so he could say, Well, look, I didn't know what the lead compound was or know what the focus was until it was published. But client a sued on that, on the narrowed patent, and the jury found that that the announced attorney had obtained, and the jury found that the narrowed claim infringed, not derived and awarded client a $200 million a nice jury, but this was vacated by the district court judge vacating the the verdict was affirmed by The CAFC, due to the lawyer and Company A's unclean hands and misusing the information, including giving false testimony and cert has been been denied in that case, I want to say a little something about misusing the information. Well, this was an unclean hands case. Remember, the prosecutor and attorney attended a meeting he should not have been at, but one of the factors was that the attorney that his deposition and on trial gave conflicting testimony, and I think that really soured the job about whether or not he'd even been at the meeting, although it was quite clear that he had been at the meeting, and cert, as I said, cert, was denied at the next slide. And I think David's going to take it, take it back,

Speaker 2  38:36  
yeah, and I'm going to make a couple of broad points and then drill down on this next little sub topic, one big broad point is to recognize that inequitable conduct is hard to find to prove. The burden of proof is very, very difficult, even though we think, as we're pointing out, it has been eroded some. But there are other consequences. I mean, if you fail to disclose something, it weakens the patent, even if it is arguably not, but for material so and all the shenanigans that Warren was talking about, about people changing their stories, those things hurt the value of a patent. You also have the potential for discipline short of that. And I want to focus in here on this next topic. I'm looking at the rules about an equitable conduct because those would apply if you were disciplined by the Office of enrollment and discipline, and they also are used I have seen in litigation to create traps, and I'll talk about that in a second. So all I did here is I just broke down rule 56 on the top bar and just said prosecution and the WHO part the who is the inventor, the practitioner and those substantively involved in prosecution, as I mentioned a while ago, the Federal Circuit has limited inequitable costs. Conduct to that group of people, it has to be one of those people who had the information, knew it was material, and had the intent to deceive, and they have specifically relied on rule 56 See, in doing so, what is it that you have to disclose under the rule? It is prima facie case of unpatentability, or information which is inconsistent with what you're arguing to an examiner. Have argued, I mean, that's, that's simplifying it a bit. So that's, that's the rule. Now there are, since changed what side of that and made it but for material effectively. Now these rules are the next two little red things. Two red columns are IPR generally, and this is the language of the rule. It says parties and individuals involved in the IPR. And when I read rules, I look at them carefully, and I notice, first of all, the individuals involved. It doesn't say individuals substantively involved. So that tells me it's broader. They don't have to be substantively involved. The word that scares the heck out of me is the word parties. Okay, if I represent Apple, Apple is the party to the IPR. So that means that everybody at Apple owes this duty of disclosure. And then, what is it? The, what's the what part it says it's a general duty of candor in good faith. And so I assume it's got to be at least inconsistent information. I mean, it's prima facie and patentability, yeah, but it's at least inconsistent in front but that's just me making sense of people. If you file a document in IPR, there's a different rule that applies, and the WHO part of it is inventors, corporate officers, and then it says, And this is the way it's written, and persons involved in preparing the documents. So it doesn't say inventors involved in preparing corporate officers involved in preparing its inventors, corporate officers and persons involved in preparing the documents. So that's a different least it's narrower than parties. But again, I'll go to Apple. I'm going to buy a new iPad when they finally come out. Do? I got to call Tim Cook up. Say, Hey Tim, I want to know about these new iPads. But by the way, I understand your corporate officer, and I'm representing apple and IPR, and I need to know what you know, because I'm about to file a document, and what does it say you have to do is information that's inconsistent with what you're arguing in that paper. And obviously, if you're arguing for patentability, that would include information that shows the claim is unpatentable, or should, should be unpatentable. So what I've seen this is the trap that I have seen happen is this, you'll get a claim out of an IPR, you'll be back in litigation, and the other side will say this, you patent lawyer or attorney during the IPR had an obligation to go talk to Tim Cook, to go talk to fill in the blank person, and that person new information that was inconsistent or would have gutted your claim. And you were ethical. This is the box you were ethical during prosecution. So you abided by that rule. You went and talked to everybody at Apple. I mean, I'm exaggerating, but you get the idea you went and talked to all the corporate officers, because otherwise you're saying you were unethical during the IPR. So which is it, did you violate your duties during the IPR and you didn't learn about this information, or you learned about the information, you didn't disclose it during the IPR. That's the box that gets you into. Now, I think that's nonsense, because these rules can't mean what they say. They cannot, and nobody goes out and talks to everybody at Apple during an IPR calls up Tim Cook, but it creates the potential, because of the wording of the rules, for those arguments be made. And I've seen people make these arguments, and it's a difficult thing to get out of when I'm sitting here saying, Yeah, I know the rule says that, but that's not anybody does. That's a weird place that we are in with these rules. If you go to the next slide, and I'll be really, really brief about this one, this is the same thing, but with if you get substitute claims, it says parties and individuals involved. So we're back to parties and people involved. And then there's one case from PTAB where they said it was the patent owner, which I assume, you know, means the party. It just happened to be the patent owner. They were focusing in on, and then on the what part they said that the the information that you had to disclose that anybody who's part of the party or any individual involved was prior art known to the patent owner, and prior art of record, okay, prior known to the patent owner. Just look at that for a second and just think about what that means, if it's me and I'm patent owner, great if it's apple, that creates a lot of problems. And then prior to record, which is not much of a problem, because it says material art in the prosecution history in the current proceeding, art on which the board did not Institute. But then look what they at any other proceeding. Before the office, but it says involving the patent. So maybe continuations, maybe, I don't know, but notice those rules are very different than the prosecution rules. And I remember years ago when IPRS first came out, someone from patent office came up to me after I talked about these rules and how aggravating the work. They said, Yeah, people don't realize that, that IPRS aren't prosecution, and that is an educational thing that they were facing back then. So with that, we've got some some takeaways. And Warren, I'm sure you want to, or you may want to jump in a couple points here, if you go on the next slide. Samantha, you know there's, there's some sort of bright lines out there that need to be followed. The next slide talks about declarations. They are still time bombs. If you there, the Federal Circuit, both before and after, Thera sense has affirmed that proposition. Whoops, no backup one, I'm sorry, in Roman Haas, which is a pre theracence case, there is no room to argue. The submission of false affidavit is not material, because if you're submitting an affidavit, it's for a reason related to patentability. Now, obviously you can have stupid statements in them that don't count after Thera sense. In the intellect wireless case, there was a rule 131 declaration stating the invention had been reduced to practice and that was false. The The other thing that Warren mentioned this is, you know, this idea of purging inequitable conduct, if you're going to withdraw the debt a statement, you have to be very, very clear about it to avoid this problem later on, and trying to massage around it may just make things worse, because it may look like you're trying to cover up something. Now there's this box that you get in because you don't want to come flat out and say something that you don't necessarily know is true. In other words, again, going using the example of the on sale bar, maybe they didn't know that it was on sale. They didn't know that it wasn't on sale. So they're sort of in a little bit of a quagmire about how to avoid that problem. So gotta be very, very careful in how you write it. But if you're very, very careful in how you write it, you may have like you're trying to cover it up. That relates to a broad point that with some of the takeaways I'll get to more in a moment. But one of the things that has become clear to me, I do expert witnessing work sometimes involving an equitable conduct, I have way more time to go through the file and look for things than you, as a practitioner, did in responding to the office action or whatever you're doing. And it's, I don't say it's easier. That's, that's not the right word. There's statements in the case law that say it's easy to make it appear that a routine, routine thing during prosecution looks like an equitable conduct. That is true, but it is also true that with much more time, it's easier for me to see things that you did and to show that what is it things are rotten in Denmark, I think is the Shakespeare quote, If you go to the next slide, there's some wiggle room still about false declarations. Again, not every statement in a declaration, if it is false, necessarily will lead to inequitable conduct. But in this 2011 case, this was just after Thera sense, the plaintiff filed a petition to make state, I'm sorry, a petition to make special with a statement that he was obligated to supply certain saw guards that would infringe his patent claims. Home Depot, though, began to use another supplier, so that statement was mooted, but he didn't update the petition to make special

Speaker 2  48:33  
so the court said, you know, that was not but for material, it was. It's not really an unmistakably false affidavit didn't reach the threshold of affirmative egregious misconduct. So there are some exceptions and a couple cases, more recently, the network signatures case and outside the box where, you know, they looked at the materiality of the statement made in the declaration closely, because it's not just a binary. There was a false statement. So therefore we have either Affirmative, egregious misconduct or but for materiality. But be very, very careful with what you write in declarations, because they will be fly spec later on if that patent is asserted. And again, it may not be that it will get to an equitable conduct, but what will happen is, if you're seeking to enforce the patent, the potential target will say, Well, look what happened in that declaration. So your network, network signatures.

Speaker 3  49:29  
Was interesting because the patent fee had the applicant had let the patent expire, then good licensing opportunity came along very shortly after, and the attorney filed a petition to revive Well, you had to say, back then, at least I haven't looked at it recently, you had to say that it was not, not just a well, you had to say it was unintentional. Um. Um, and the attorney checked that box when it pretty clearly was intentional abandonment, but, but interestingly, I think, was Pauline Paul judge Newman wrote that. Look, the Federal Circuit is this was a box on a form in in a PTO document, and the Federal Circuit is not going to police the PTOs. You know, every line of every PTO document that somebody makes a mistake, we're going to accuse them of inequitable conduct or find them guilty of an equitable conduct. So it's sort of an interesting case to see. They've changed the rules a little bit since this case to make it like, if it's something like more than two years past the abandonment, you have to provide written reasons why you're reviving at this point, why it's proper to revive

Speaker 2  50:55  
David. And if you'll scroll onto the next slide, when we got a slew of kind of takeaways. Yeah, the rule is, disclose, disclose, disclose. I know Thera sense narrow the scope of what you have to disclose, but if you, everybody I have talked to is still cross, citing stuff from related applications, corresponding foreign applications responses, even if responses from related applications by other examiners, Office Action rejections, office actions. You know that is still a trap. There's you should have an automated, or quasi automated system now, where everything's just getting stuck on an IDS and filed somewhere. And one of the slides I know, we said, don't worry about burying. And I'll make that point now. There's, I think, been one case in the history of the United States that's found burying the material reference as on an IDS as being the basis for finding an equitable conduct. And it was a really egregious case. You know, if one I know, you know, good practices, one thing to do is just put everything in by patent number, you know, just the way the numbers put them in. The day you got them, just some, just some system, you know, and be, be the same across all your cases. So that way you can just say, look, it came in. I filed them in patent number, because that's the way I do things, or date, whatever works best for you, but be consistent and do it that way across all cases. And that way the burying allegation becomes very, very difficult to prove.

Speaker 3  52:29  
Go on, it's a dangerous situation, for sure. I knew the attorney who was involved in the McKesson decision, and he was, he's anything at the firm where I was at the time. He was one of the most straight shooting, honest, you know, ethical attorneys I think I've ever met. And but the problem is, I think that not all these cases were, they were related applications, but, I mean, even think they were part of the same tree, yeah. In other words, arguably, you have to send in relevant art or art you believe might be relevant, no matter how you you know, how you get how you get it, how you find it. The

Speaker 2  53:14  
problem you mentioned earlier, though, is also captures that too, if you're prosecuting it, and you're looking at the claims as being this wide, so something comes in and you're like, that's not material. I don't even worry about it. Later in litigation, your client says, Oh, the claims this big, you now have a problem. I mean, that's what happened in not reject with Regeneron. I can't which one it was now was, yeah, I think so,

Speaker 3  53:42  
yeah. And suddenly the unrelated case becomes related for that reason. So again, that the heading on that slide, disclose, disclose, disclose, unfortunately, I think, remains the same. It's interesting in McKesson, when it went back down, inequitable conduct was affirmed, reaffirmed by the district court, yep, and the Federal Circuit didn't take it again, and in McKesson was McKesson was the same sort of situation. Nobody, nobody overturned McKesson because Thera sense was decided. So McKesson. And another question that arises is, how close to the claims have to be in when you're in a cross citing situation? I mean, some some authorities, have said, well, they have to be substantially similar. Well, what does that mean? It's probably a stricter standard, or broader encompassing standard than obviously double battening. But certainly, if you're in that kind of situation, over one of your own applications, and probably many of us have been in that situation, it can be tricky. Yeah. What happens? It all gets sent in.

Speaker 2  55:01  
Yeah, that doesn't happen. The Patent Office helped the patent examiner do their job, because suddenly they got an IDS with, you know, 97 things on it, you know, all right, and let's we're not to move on a little bit, because I don't want will to get cut off. Too bad if you flip to the next slide, and I apologize for rushing through, but we, I'm sure that Samantha can make the slides available. And some of these takeaways, I think, are maybe self evident. You know, again, IDs is, yeah, they cost money to do, but figure out a way to automate them. You know, as best that you can, again, there's a question about what, what it means to automate them when you're not certain of the boundaries, but clearly related applications in the same family would would fall within that bucket. Ordinarily, be very careful with with inventors, especially academics, also, again we've mentioned on this slide, but affidavits, you know, anything that is written in an affidavit will be carefully looked at later on, if you're seeking to enforce that patent or license it or sell it, and if there are blemishes, they will come to light. Yeah, I think, yeah. Antitrust issues being aware of misrepresenting facts. And there's always that fine line between, are you arguing or are you stating facts? And just be very, very careful about that, because, again, it will, it can get spun later on. You want to go ahead and move to the next slide. This one about litigate. Litigate. The first one here relates to the this problem of the standard or review. If you're a litigator and you're representing a patent owner, and the court finds invalidity, and there's an inequitable conduct claim coming after that. So you know, hey, it's on sale, but there's an issue coming up of a bench trial. You may want to think about seeing if you can do an interlocutory appeal under Rule 50 4b or seeking a certified appeal under 1290 2b to get de novo review of that invalidity finding, because otherwise you might end up with this abuse of discretion finding, and that is not a good way to deal with an equitable conduct. Hopefully they'll clean up the mess they made in that case, but that is one potential thing, this next one for prosecutors. You know, think about some of the cases we've talked about where you do something and it's fine, and later on, a lawyer misbehaves, or the claim is argued broader than you thought it was, and you are found to have intentionally withheld information from the office because of some bad misconduct by litigator or claim construction. That wasn't what how you at least viewed the claim back then, take prosecution bars and these, you know, not NDA type agreements seriously on your side in particular, make sure your lawyers aren't filing or amending claims or doing filing applications using information they obtained through an NDA or prosecution bar. And I think there's like, one more more takeaway, and then we'll get out of here and let will do his thing if you go to the next slide, I'm sorry. Samantha, oops. No, there we go. We did. It is all yours.

Unknown Speaker  58:21  
Well, we can hear you.

Speaker 4  58:25  
How about now? Here we go. All right, good. All right. I was just paying David and Warren lots of compliments, so I'll skip over that too. So I think the point for those who are listening to this presentation, I've heard this before, and I'm always fascinated, and it's a good reminder to me, because we do see things coming into the office and questions, because these are complicated type issues to deal with, and they're not easy. But one thing I do want to kind of highlight at the beginning is one if you look at our cases, inequitable conduct type issues are, are where in our public decisions, and why is that? So we, when we see these types of issues, we take a good hard look at it, because we do know, as you just heard in the last hour or so, you know, how different courts have looked at how the Federal Circuit has looked at it and that, you know, there are reasonable interpretations to doing things. We have patent attorneys who have practiced, prosecuted, litigated on staff, who they've been, they've been in your shoes, so to speak. They look at these cases as we kind of get them referred to us from courts or from opposing counsel, and we try to think of these things in terms of what was, what the person did, was it kind of reasonable, so to speak. I know that's kind of a nebulous term, but we don't like to second guess what the attorney or the prosecuting attorney did at the time, even though we may not agree with it. So to that end, I mean, there should be. A little bit of security that you know that the office just doesn't automatically take an inequitable conduct finding by a district court, for example, and say, boom, we're going to launch a an investigation and move to take some type of disciplinary action. In those cases, where we do get referrals, we find out information of something that has happened in a district court we typically like to see, well, one will look at the case ourselves, because we realize we've probably got some expertise in house that's probably a little more than a district court may understand certain things than what our in house. We may have a different view of it, right? So we we have, I know in one particular case I'm thinking of right off the top of my head, where we entered into a tolling agreement, because we just didn't think the district court got it right, and we kind of waited for the appeal process to work itself out. That case is not a reported case, because what happened is the appeals court viewed the case the way we did and and so nothing public happened, but we just kind of extended. We said, Hey, let's not go through a full blown investigation. Let's not waste the attorneys time, and let's not waste the PTO s resources and time. So we kind of waited to see, because we thought, you know what this is, this may not hold up in the long run. So we try to take a step back and wait for those things the other point too. And I know the litigators, I've been on panels where there have been patent litigators, what I'm going to say is, it's there, or they'll they would probably say, Don't do this or or they may disagree with me. But one thing we do is we look at, hey, do you have some evidence or something, even if it's a small notes or things of why you did what you did at that point in time. So when you have someone coming in later in the game, who's got who's spending 10 hours for every hour you spent going through everything with a fine tooth comb, comb, I think, like what David was talking about, we're not looking for a lot, but just something to justify what you did, or tell us what you did. The litigators in the room, or those who are doing litigation may not. They don't want they want fewer and fewer notes, because that's just more things for an attack. But I can tell you from the professional responsibility OED thing, we love that because it might also help you kind of remember, Gee, why did I not disclose that particular reference, or what have you? And why did I do what I did? Even just a small note or something like that's hugely valuable to us because it shows one you thought about it at the time, and we're not going to second guess you if you said, You know what I thought about the time, unless we think there's some you really just buried your head in the stand in some sort of inappropriate way. We're not going to again second guess it guess you, even though we may disagree with you. So anyway, so let's, as i Let's go through some of the slides here, some of the cases and things that we typically talk about. Next slide, please. And these relate to the duties of candor, disclosure, I think, which David and Warren have very nicely kind of laid out for you, as far as you know, what the rules in play are here. And this is just kind of a laundry list. You can have it in one it in one neat slide. These are your professional responsibility rules. And it also the last item is the rules before the board, which kind of knows, not surprisingly, kind of dovetail with what's in the prosecution piece. So it kind of makes sense, right? It should be kind of something that everybody understands. You know, you need to be honest and forthright Bay as a basic foundation before the office, because there were granting the offices granting significant rights, patent rights, we want to make sure that we get it right and that that's kind of the deal. The bargain basically to getting a patent. So next slide. Okay, so we've had, again, we've had a few cases that have kind of touched on this issue, and I'll mention one that I do like to talk about. All of these I think have great teaching, points and reminders. I will say, if you do make a mistake, and we do have cases, Tendler is not one of them, but there are many unreported cases, and they're unreported because when they make a mistake, the practitioner figured it out or took some type of action to correct it, and didn't just kind of hope the problem would go away or wait for something else, or just hope no one would find out, basically. So in Tendler, very briefly, you can see the facts. Here's a 131 declaration that was submitted, send it to the client afterwards. And basically the applicant, the inventor, basically say, hey, there's inaccurate things in here. Tendler then calls up the examiner, calls up on the phone and says, Oh, and this was his side of this is what his version was, obviously that, oh, there's, there's some changes I need to make to that 131, declaration, but didn't follow up with anything in writing to the office. So the only thing in the file wrap and only thing that the public record had was, was this original, inaccurate declaration that ended up in what the public could see. So Mr. Tan. Didn't follow it up with in writing. So, you know, big kind of red flag, right? If you do have this type of issue, you need to kind of make sure the record and what's in writing to the office, because then that led to a, you know, kind of a back and forth, as you know, these examiners handle many, many cases throughout a year, and something could come up years after the fact, and the chances that they're going to remember your phone call or not remember your phone call is pretty you know, as you can imagine, you know, people can't remember phone calls they had last week or two weeks ago, let alone a few years ago. So that's kind of a an interesting or kind of very important point that I think Tendler kind of kind of brings to bear. And then the Federal Circuit basically said the same thing, basically, as you can see here, you know, basically supporting that point that when you have this type of issue, you really need to kind of follow it up with, you know, in things, in writing before the office. So next slide please. Four year suspension for that one case too, by the way, four years. Hicks, okay? David, I don't know if you were at the Federal Circuit when, Mr. Hicks, well, these are very rare cases we have to come from the Federal Circuit. I don't know if this rings a bell, but this is, this is interesting. So if you're going to not be 100% truthful with a court, the last place you want to do it is the Federal Circuit, where we have lots of interaction with the Federal Circuit. Obviously, because of the nature of our bit, our Solicitor's Office spends quite a bit of time there, in front of those judges. I interact with the judges on different other programs that the PTO has. So we've got a pretty good, there's a pretty good flow of information. So that was kind of one of the one of the faults that I think Mr. Hit, one of the problems Mr. Hicks had was basically not being truthful. And this goes to, you got to be honest and upfront with a tribunal. And remember, tribunal is not just a what we would take, technically, think of as a court or a board, but also includes, if you look under the PTO s rules, the examiners are considered a tribunal, so kind of extends beyond that. So when you're dealing with them, you got to be upfront and be truthful. So, you know, and so for the when the Federal Circuit issues an opinion and basically says that you made or an attorney made misleading or improper statements, you know, big red flag, right for something that's going on there, and and we get it, there's litigation, there's argument. You're trying to pitch the case, or you're trying to put the case in the best light for your client. But you got to be really careful with that in some instances, that you don't step over the line and just say things that are not true, right? And that's what Mr. Hicks did. So as you can see, Mr. Hicks, you know, ended up in a published Federal Circuit decision. If you're curious, here it is. And the other reason you don't want to do this are you being careful? And always think about this. And I always tell people of this, about any of the cases that we talk about from OED, is we're always look, I'm always looking for new material to keep our briefings and slides up to date to keep the public so if you want to be provide us with new material, please, please do because we like to have new cases to keep keep things refreshed. So that's I'm saying that tongue in cheek, obviously. But people, I've actually had people say we please stop talking about me in public about the case. And I said, Sorry, it's public, and it's a great it's great. It's a great it's a great teaching point for the other 1000s of others, too. So anyway, next slide please.

Speaker 4  1:08:28  
So that. So these misrepresentations before the office. It obviously just isn't on the patent side. It's on the trademark side, but the concepts and the principles are basically the same, right? You know, when you're doing things or handling things, you can imagine this fact, scenario when you're trying to revive an abandoned application, you know, saying you didn't receive something, you know, when it just isn't true, that's going to get just get you in trouble. So these are kind of, I think they're, they're, they're basic points about how, when you deal with the office, you know how you have to kind of make sure you're you're upfront based if you make a mistake. When we see that in OED, we have people coming to us say, Hey, I made a mistake. I sent something in. I shouldn't, but this is the action I took afterwards, or this is what I'm going to do to fix the problem. That goes a long, long way, because that tells us one you recognize that, Hey, you made a mistake, right? And everybody makes mistakes, and you're willing to fix and you want to kind of get back on track. The tough thing is, when people say, Well, I didn't make I didn't make a mistake, I didn't receive the information from the office, and then we can prove that you received it, right? We have hard evidence to move forward. So that's what happened in mass. Acadi, this, this type of case. So next slide please. Same kind of not, not being, you know the idea of against not being, having a having lacking candor before the office. Again, this is just another example on the trade. Park side, where you can see where, again, not telling the office you know the full story of what's going on with the trademark application or applications. It's just not a good place to be into So, and I know it's kind of beating the drum of being forthright. I don't have any examples, and I don't think I've seen this lie David with the bribery from the 1930s and 40s. So we don't see any of those types of cases, thankfully anymore. It's more discrete things like these types of issues, you know, you know, because you missed the filing deadline, coming up with an excuse. Because I think sometimes, and I don't know this 100% but attorneys are concerned with malpractice type issues of missing things, so that's a separate issue. But then they kind of, you know, they're going to get especially now with electronic and we have lots of records, and we can prove when things so it's, it's just, it's just our cases are easier and easier to show. We can get ISP addresses and things to see where documents are being filed from. So we have a lot of electronic data that's being collected by our system that is really hard to say. You know, some of these types of cases just just six, seven years ago, in 2014 when this particular case made its way through the system. So next slide, please. Okay, inequitable conduct. This is not a PTO case, but we did have a little bit of an eye on this one. It's called Ohio Willow wood case. And I think this is a and I raised this case because it's, I think, an excellent point for those of you who are dealing with companies or third parties as you're representing them in the prosecution or representing them for their patent application or applications, so very quickly, you have a scenario where a prosecuting attorney is dealing with a company and there's this director of research, not an attorney, not an agent, and they are the interface between the attorney for possibly efficiency reasons or just a management reason, and the registered practitioner is getting information on prosecuting application. You know, you know, basically business from this, this particular person. The issue here becomes, when that director or this person at the company or the third party starts telling the prosecuting attorney certain things that are relevant or material to prosecuting the application. For example, they're basically, they're acting like a filter or a conduit, right? So the attorney is not getting the information directly from the source, essentially. So they're kind of relying on this person what to be, to tell them the truth and give them the full story. Well, they're not obligated. They don't have professional responsibility rules that they're subject to, but the but the registered practitioner does so. In this particular case, the issue came up there was inequitable conduct, and it basically, it kind of came down to, well, the director of research at this company, you know, that was kind of the linchpin of the of where the issue kind of, you know, the breakdown basically occurred. This scenario could also arise, not just domestically. It could also come up. It could arise itself. When you're dealing with a third party, a foreign national type company, or third party an international type of client, where they may have some other, somebody else between you, representing them on the on the national stage, or in the United States, and then between the actual inventor in a foreign country for language reasons, or what have you, just the way they've structured themselves. Same kind of thing here in Ohio, Willow would just kind of be alert to these types of issues and see how you can, you know, make sure that you get the information you have and so you can comply with your your professional responsibility was because, as we just have been talked quite a bit about, rule 56 and the duty to disclose, make sure they understand that, and you know how the process, at least at a high level, not to they don't need to go to, obviously, a patent law class, but they need to understand what, what the offices rules are, and also what your obligations are to to the office. Next slide, please. Janka, I think in the next jank and Bowman, our next two cases, I'm going to talk about, I think Warren and David touched a little bit on issues here where there is either some type of, there's like a court order or something like that, that's also kind that's that's out there to make sure a protective order to make sure that information in some companion litigation that's related to to an examination or re exam before the office where the protective order says, Hey, you you received information, obviously that you know that you cannot disclose it's under a protective order. In this particular case, jenka is is is connected with Bowman, the next case I'm going to talk to you about. And so there was information where they both had access, but there was a protective order. And jank, I can received information from the other individual at the firm that then was and or past information to the other individual that was under a protective order. And. Um, that arguably may have been necessary to prosecute another application or re examine some other matter. The quick fix, and this is a if you, if you run into this issue, as I said, I saw this mentioned in one of the slides earlier, is to go back and get the protective order modified, or whatever. Just take that extra step and do it. Because if there's this type of an issue, the other side will pick up on that. And it's as you can see here, and Mr. Jenko was publicly reprimand, reprimanded for this type of the way he handled these these documents that were under a protective order, basically violated the protective order and turned them over to someone who was not authorized to receive it. So now let's go to the next slide with with Mr. Bowman. So, so that's kind of the issue with Bowman and jenka. But here's another point, too, and I and the point going to the point about information disclosure statements to the office, and your duty of candor to the office and being truthful and complying with the rules is, you know, look turning well, one, when he turned over six boxes of documents, he didn't look, he didn't take a look at them, and some of the documents were actually marked that they were under this other protect, this protective order. So Well, he's got two problems there, right documents, and the protective order didn't even take a look at the six boxes of documents that were delivered to the PTO as part of an IDS that was submitted to the office. So major problem. I know it takes a lot of time sometimes to go through voluminous document requests and things, but this is kind of one of those things where you got you got two major problems here, you know, with a protective order and then not even taking a look at what you're submitting to the officer, not knowing what's in those boxes, and then signing documents and, you know, basically attesting to making certain attestations to the office as to what they are without even knowing what they are, is a major problem. You're wondering, well, how does this stuff get caught? And I'll just tell you, generally, if you think you're going to just kind of slide by on something, there's always a there's always opposing counsel in cases. There's always associates and partners who have left the firm who know about things that were being done. We get information flow. I'm not even talking about internal to the PTO, so we're getting information flow from all of those sources who are saying, Oh, I'm just, hey, I need to let you know. By the way, I noticed this when I was at XYZ firm. I don't work there anymore, but I do. I know, I understand. I have a duty to let the office know if I know a professional responsibility, violations or problems, and I just want to comply with my obligation. So, by the way, so and so at the law firm was submitting documents, or submitted documents they didn't even read, and they were marked as confidential. So not saying that's what happened in here, but I'm just saying a general statement that's how those types of things end up at the office, because they're always this kind of a people always ask me, Well, how do things get to the office? And I said, you'd be shocked at the way we get things right, somebody you might never suspect, an associate at the firm, or another partner who's left, or whatever it will get to us in one shape or form or another. So next slide please. All of these cases that I talked to you about are we have a FOIA Freedom of Information Act reading, if you're curious and want to look at these, they're usually kind of interesting reading. They're usually

Speaker 4  1:18:28  
good stories of what not to do. And as I said, it's good for me to be able to talk to you about these, because it's always good to learn from the mistakes of others and things that they've done so that you don't make the same types of mistakes. And as I said initially, when I start, when I took I was things were handed off from David on today's talk. Next slide, the rules are complicated for professional responsibility. Rules, not just with regards to an equitable conduct and just a whole host of things, prosecuting an application, representing a client at the board. We understand that, and we do get that. I want you to be assured that we do try to not just run off and open up investigations without at least doing some amount of due to diligence or taking a look at the case. I mentioned how the cases come to us. We don't take court, court decisions as dispositive. We look at them ourselves. We do take a hard look and take our own or do our own investigation and make our own findings and make our own recommendations as to how we should proceed with it, with the with a case. Next slide please. And as I said again, the rules are complicated. They are there are nuances to them. There are people like Warren and David who work with these things quite a bit. It sounds like you both appear as experts in cases, but we at the PTO on. Also realize that they're complicated, and many practitioners, the vast, vast majority, want to comply with the rules to make sure that the sort of the integrity of the entire patent system is kind of upheld. To help you do that, you see the phone number on your screen. That's the main number at the PTO. And so every day, we have two to three of our seasoned investigators who are available to answer questions give you guidance as to you know what rules are in play and what you need to think about as you're kind of you're faced with a particular fact problem. There's no charge for this. And the promise the office makes you is we don't record these calls. We don't keep any records. It's not a way for us to get new casework right. We have plenty of cases. We have no more than enough investigations. We want to help those of you who actually want to get the right get to the right answer. You want to comply with your your obligations too. So that's the promise. We don't look at your phone number. You don't have to tell us it's your neighbor, your quote, unquote friend, and we're not going to go into palm or tees or anything like that and kind of try to figure out who you are and go pull all your cases and say there's got to be something here they asked us a question on inequitable conduct. So let's go through all this person's cases. That does not happen, and I think this is being recorded, so you can quote me on that. So with that, I will end it a few minutes early in case we have some questions. I don't see any, but I'll turn it back over to Samantha, thank you. Thank

Speaker 1  1:21:27  
you all. As a reminder to anyone attending, if you want to pop in a question, please feel free to do so. Warren David will do you guys have any parting kind of last thoughts, nuggets you want to share with our communities of what not to forget that one piece of takeaway back to your office.

Speaker 3  1:21:48  
Well, I've run into a odd number of cases where the person accused of inequitable conduct attempted to patent a competitor's product that had been out on the market and out in public, even. And that can be, you can get away with that with the patent office. I mean, the patent office can probably, may be able to get your application through, but you're claiming, again, you're claiming a competitor's product. I mean, there are, there are some ways to justify that, or sometimes when that's appropriate, if the person has kept the product secret, not created prior art, and perhaps you can patent and you figure it out. Perhaps you can patent it, file an application on it. But if you do something that blatant, and I won't cite the case here, but in one case, antitrust liability was was found as well, or suggested strongly by the Federal Circuit that there were antitrust it was a large corporation that tried to patent a smaller competitor's product, and they could have been found guilty of antitrust violations because they had market power.

Speaker 2  1:23:11  
I'll just echo a couple things that will said. First of all, you know, he said, you know, they won't go investigate you. One thing I tell lawyers is, don't follow my advice. And the reason I and I'm joking when I said that, because you, if you call the OED, they may be able, in five minutes, to get you through a problem. You spend that five minutes and you won't have hours and hundreds of hours in a case later on with the problem, the same thing, I get calls from people, and I listen to him, I say, Have you thought about doing it this way? Thought about doing it that way? And the problem goes away. It these cases that happen later is when you spend hundreds or dozens of hours trying to eliminate a problem, or if somebody's been reported to the OED, it might have taken me five minutes to help them avoid the problem. Later on, we're dealing with a request for information from the requirement for information from the OED. It takes hours and hours to do that. Now my daughter's in school. The tuition is high, so you know, I'm jumping call the OED with those tight questions. The only other thing I'll say is be really cautious that the O W case that will mention it happens in all kinds of fact patterns where they're non disclosure agreements and somebody is acting as a filter, or there's a prosecution bar, or there's a joint venture involved, and there's a lot of ways that that middle man can create problems For practitioners, and I've seen that come up in a bunch of different ways, in the university area in particular, but in other places too.

Speaker 4  1:24:50  
Yeah. And last thing I just want to highlight, too is in the rules. And I have seen this if you do find yourself on a district court finding of inequitable. On that short end. So to speak, I have seen it where, where attorneys self report themselves to the office to kind of get ahead of that. And I just had a case in December. It wasn't an equitable conduct. Was another ethical that was hugely important in my calculation, as far as one where they trying to set things right, so to speak, they made a mistake, and they want to kind of make things right. So that's another thing to think about. And if you if it's inequitable conduct, we do wait until the appeals have run their course. We will not do anything before then. Well,

Speaker 1  1:25:36  
it looks like we haven't had any other questions come through. So with that, we will end right on time today. And on behalf of autm, I just want to thank each of you for such an informative discussion and sharing your expertise with us, and thank all of our attendees for joining today. As a reminder, a recording of the webinar will be available for viewing, usually within a couple of days of the event, and it is included in your registration fee. And if you have any COE specific questions, please don't hesitate to reach out to me directly, and please remember to complete the webinar evaluation, which will pop up when you close out of this webinar. This helps us serve your needs in the future. Again. Thank you so much, and I hope you all have a wonderful rest of the day and week ahead. You.

Transcribed by https://otter.ai