Aristocrat Technologies et al v. International Game Technology et al

Filing 1047

FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to Revive Abandoned Patent Application). Signed by Judge Whyte on 05/06/2011. (rmwlc1, COURT STAFF) (Filed on 5/6/2011)

1
2
E-FILED on

3

5/6/2011

4
5
6
7
IN THE UNITED STATES DISTRICT COURT

9

FOR THE NORTHERN DISTRICT OF CALIFORNIA

10
United States District Court
For the Northern District of California

8

SAN JOSE DIVISION

11
12
13

ARISTOCRAT TECHNOLOGIES,
AUSTRALIA PTY LIMITED and
ARISTOCRAT TECHNOLOGIES, INC.,

14
15
16

Plaintiffs,

No. C-06-003717
FINDINGS OF FACT AND CONCLUSIONS
OF LAW (Claim of Inequitable Conduct with
Respect to Petition to Revive Abandoned
Patent Application)

v.
INTERNATIONAL GAME TECHNOLOGY
and IGT,

17
Defendants.
18
19
20
21

On June 15, 2010 the court stayed further district court proceedings in this case except for

22

proceedings on the claim of International Game Technology and IGT (collectively "IGT") that

23

Aristocrat Technologies, Australia Pty Limited, and Aristocrat Technologies, Inc. (collectively

24

"Aristocrat") committed inequitable conduct in the revival of abandoned United States Patent

25

Application No. 09/462,717 ("'717 application"). That application, after revival, was successfully

26

prosecuted resulting in the issuance of United States Patent No. 7,056,215 ("'215 patent"). IGT's

27

inequitable conduct claim focuses on the alleged falsity of the statement that "[t]he entire delay in

28

filing the required reply until the filing of a grantable petition under 37 CFR 1.137(b) was
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717

1

unintentional" made by Aristocrat's attorney in Aristocrat's petition to the Patent and Trademark

2

Office ("PTO") to revive the '717 application. The court heard the case beginning on April 4, 2011

3

and ending on April 7, 2011 when it was submitted for decision. After considering all the evidence

4

offered and the arguments of counsel, the court finds that IGT has not shown by clear and

5

convincing evidence that Aristocrat committed inequitable conduct rendering the '215 family of

6

patents unenforceable. The court now sets forth its Findings of Fact and Conclusions of Law.

7

I. Findings of Fact

8

A. The Parties

9

1. Plaintiff and counter-defendant Aristocrat provides a range of gaming solutions such as

United States District Court
For the Northern District of California

10

software, systems, and hardware, including electronic gaming machines. First Amended Complaint

11

("FAC") ¶ 1.

12
13

2. Defendant and counter-plaintiff IGT designs and manufactures electronic gaming
machines. Def.'s Ans. ¶ 5.

14

B. Late Filing of the '717 Application

15

3. During the late 1990s and early 2000s, Aristocrat worked with an Australian patent firm,

16
17
18

FB Rice & Co. ("FB Rice") to prosecute its patent applications worldwide. (Stipulated).
4. Chris Owens of FB Rice was one of the partners who worked on Aristocrat's patent
applications. (Stipulated).

19

5. On July 8, 1997 and September 9, 1997, Aristocrat filed in Australia provisional patent

20

applications PO 7780 and PO 9090, respectively. Dkt. No. 339 ¶¶ 1-2. One year later, on July 8,

21

1998, Aristocrat filed in Australia, under the Patent Cooperation Treaty ("PCT"), an international

22

application ("PCT Application") claiming priority to the above-referenced provisional applications.

23

Id. at ¶¶ 3-4. The July 8, 1998 international PCT Application ultimately issued in the United States

24

in 2006 as the '215 patent. Tr. Exh. 153.

25

6. Several PCT deadlines are based on a PCT Application's earliest claimed priority date

26

(regardless of whether or not it is later held to be entitled to that date). (Stipulated). First, PCT

27

Applications are published, by rule, after 18 months from the earliest claimed priority date. See PCT

28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
2

1

Article 21 ¶ (2)(a). The earliest application to which Aristocrat's PCT Application claimed priority

2

is the provisional Australian application filed on July 8, 1997 (PO 7780). See '215 patent at pg. 1.

3

7. Second, the U.S. "national fee" is due no later than 30 months from that date. See 35

4

U.S.C. § 371. Because January 8, 2000 fell on a Saturday, Aristocrat had until Monday January 10,

5

2000 to timely enter the national stage. 35 U.S.C. § 21 (b).

6

8. On December 30, 1999, Mr. Owens instructed Shahan Islam, a United States patent

7

attorney then of the Friedman Siegelbaum law firm, to enter the national stage for the PCT

8

Application in the United States by filing an application with the PTO. Tr. Exh. 8.

9

9. Pursuant to United States patent law and the Patent Office's Rules and Manual of Patent

United States District Court
For the Northern District of California

10

Examining Procedure1 ("MPEP"), the filing date for payment of the national fee to enter the national

11

stage in the United States is the date on which the Patent Office actually receives the fee, with one

12

exception. If the national fee is paid using the U.S. Postal Service's ("USPS") Express Mail Post

13

Office to Addressee service in compliance with the requirement spelled out in 35 U.S.C. § 21(a), 37

14

CFR 1.6(a)(2) and 1.10(a)(1) and (2), and MPEP 513, the filing date of the fee is the date entered by

15

the USPS as the "date-in" in the Express Mail label on the envelope in which the fee was mailed.

16
17

10. Mr. Islam mailed the necessary documents to commence the national stage of the United
States patent application via the USPS Express Mail. Tr. Exh. 30.

18
19

11. One day after the deadline expired, on January 11, 2000, the PTO received the national
fee for the U.S. national stage of Aristocrat's PCT Application. Tr. Exh. 35.

20
21

12. The PTO assigned Application No. 09/462,717 ("the '717 application") to Aristocrat's
PCT Application. The '717 application was given a filing date of January 11, 2000. Id.
13. In a letter dated January 13, 2000, Mr. Owens was notified by Mr. Islam that the papers

22
23

necessary to enter the national stage had been filed in the PTO on January 10, 2000.

Tr. Exh. 10.

24
25
26
27
28

1

All citations to the MPEP, unless otherwise noted, are to the 8th edition, August 2001.

No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
3

1

C. Islam's Actions Following Receipt of Notice of Missing Parts

2

14. On March 21, 2000, the PTO mailed a Notice of Missing Requirements under 35 U.S.C.

3

§ 371, pointing out the items that had been received and those still required for acceptance under §

4

371. Tr. Exh. 25.

5
6

15. A Notice of Missing Requirements under 25 U.S.C. § 371 is not mailed in an application
that the PTO recognizes as being abandoned. Tr. Exh. 6 (MPEP 7th ed. at 1893.01(b)(1)).

7

16. On April 6, 2000, Mr. Islam filed with the PTO a reply to the Notice of Missing

8

Requirements, an information disclosure statement (IDS), a signed inventor and power of attorney

9

form, and an assignment from named inventor Scott Olive to Aristocrat Leisure Industries Pty Ltd.

United States District Court
For the Northern District of California

10
11
12
13
14
15
16

Tr. Exh. 26.
17. The April 6, 2000 reply included the inventor's declaration and power of attorney to
several attorneys, including Mr. Islam (Reg. No. 32,507). Id.
18. The April 6, 2000 reply to the Notice of Missing Requirements prepared by Mr. Islam
listed the date of the national stage commencement as January 10, 2000. Id.
19. In April 2000, Mr. Islam left the Friedman Siegelbaum firm because it was being
disbanded. (Stipulated).

17

20. In April 2000, Mr. Islam joined the firm of Rosenman & Colin LLP. (Stipulated).

18

21. On April 19, 2000, Mr. Owens sent Cinzia Ascani of Aristocrat a letter reporting that the

19
20
21
22

reply to the notice of missing parts was mailed to the PTO on April 6, 2000. Tr. Exh. 31.
22. On May 10, 2000, Mr. Islam sent a fax letter to Mr. Owens asking for prior art
references for an information disclosure statement. Tr. Exh. 32.
23. On May 11, 2000, Irene Haberbusch (Mr. Owens' assistant) sent an email to Mr. Islam

23

stating that Mr. Islam had already submitted prior art references to the PTO as part of an information

24

disclosure statement. Tr. Exh. 34.

25
26
27
28

24. On June 13, 2000, the PCT Legal Office in the PTO mailed a Notice of Abandonment to
Mr. Islam. Tr. Exh. 35.
25. The June 13, 2000 Notice of Abandonment was mailed to Mr. Islam at his former
address at the now-disbanded firm of Friedman Siegelbaum. Id.
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
4

1

26. The Notice of Abandonment indicated that the '717 application was abandoned on

2

January 11, 2000 for failure to pay the basic national fee within 30 months of the earliest priority

3

date, or by January 10, 2000. Id.

4

27. Neither Aristocrat nor FB Rice was notified of the Notice of Abandonment at any time

5

before Mr. Islam successfully submitted a petition to revive in July 2002. See Tr. Exhs. 18, 31, 70,

6

99.

7
8
9
United States District Court
For the Northern District of California

10
11

28. On September 19, 2000, Mr. Islam filed a "Petition Under 37 CFR 1.10(c) or (d) to
Correct 'Date-In' and Remove Notice of Abandonment" (the "Petition to Correct"). Tr. Exh. 38.
29. The Petition to Correct contended that the papers were entitled to the Express Mail date
of January 10, 2000. Id.
30. The Petition to Correct sought to satisfy Sections 1.10(c) and (d), which would have

12

corrected the date and withdrawn the holding of abandonment, even though Mr. Islam was unable to

13

satisfy Section 1.10(c) because he was not in possession of the Express Mail mailing label. Id.

14

31. In the absence of the mailing label, Mr. Islam submitted his client letter dated January

15

13, 2000 to the PTO to advocate the January 10, 2000 date of mailing via Express Mail, along with

16

other evidence which he argued corroborated the date of mailing under Section 1.10(d). Id.

17

32. In the Petition to Correct, Mr. Islam expressed regret that he no longer was in possession

18

of the Express Mail mailing label, as he had moved firms since the mailing and the file no longer

19

contained the Express Mail mailing label, and he was unable to obtain a copy from the USPS despite

20

contacting the USPS since his prior firm had used pre-printed Express Mail labels that were not

21

purchased at the USPS. Id.

22

33. Aristocrat had been informed by Mr. Owens, who himself was informed by Mr. Islam, of

23

developments (such as the filing of the missing parts by Mr. Islam) that indicated that the '717

24

application was proceeding through prosecution at the PTO in communications sent to Aristocrat in

25

January and April 2000. Tr. Exhs. 18, 31.

26

D. Mr. Islam's Actions After the PTO's Decision on Petition to Correct Date-In

27

34. The PTO mailed a decision on the Petition to Correct on June 5, 2001 to Shahan Islam at

28

Rosenman & Colin LLP (the "June 2001 Decision"). Tr. Exh. 41.
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
5

1

35. The June 2001 Decision confirmed that the Petition to Correct was being treated as a

2

petition to withdraw the holding of abandonment and request that the national stage application

3

papers be accepted as being filed on January 10, 2000. Id.

4
5

36. The June 2001 Decision dismissed the relief requested in the Petition to Correct and
indicated that the application remained abandoned as of January 11, 2000. Id.

6

37. The difference between a denial and a dismissal in the petition process is that the

7

dismissal means the practitioner is free to ask for reconsideration or review of the dismissed petition,

8

which may include submitting additional evidence to address points raised in the PTO decision

9

dismissing the petition. Id.

United States District Court
For the Northern District of California

10
11
12

38. The June 2001 Decision stated that the Express Mail provisions of 37 C.F.R. § 1.10 had
not been satisfied in order to obtain the date of deposit as the date of receipt at the PTO. Id.
39. The June 2001 Decision stated that the Petition to Correct did not include a copy of the

13

Express Mail mailing label showing some official notation by the USPS of the date of deposit as

14

required under Section 1.10(c), and that sufficient corroborative evidence had not been provided

15

under Section 1.10(d). Id.

16

40. The June 2001 Decision stated that a request for reconsideration of the Decision needed

17

to be filed within 2 months of the date of the Decision, but that extensions of time could be obtained

18

under 37 C.F.R. § 1.136(a). Id.

19
20

41. Mr. Islam testified that he does not remember receiving the June 2001 Decision in June
of 2001. See, e.g., Islam 5/24/07, Tr. at 159-160, 162; Islam 1/7/11, Tr. at 93.

21

42. The '717 Application remained abandoned after June 2001. Tr. Exh. 71.

22

43. On November 28, 2001, FB Rice sent an e-mail inquiry to Cheryl Bajana, Mr. Islam's

23

secretary, inquiring about the status of the '717 application, and indicating an interest in expediting

24

the examination and making some amendments to the application. Tr. Exh. 49.

25
26
27
28

44. On December 10, 2001, FB Rice made a further request for a status report on the '717
application in an email addressed to Mr. Islam. Tr. Exh. 50.
45. On December 17, 2001, Mr. Islam responded by email to inquiries from Mr. Owens
about the '717 application. Tr. Exh. 51.
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
6

1

46. Mr. Islam wrote the following in his December 17, 2001 email to Mr. Owens:

2

I gravely apologize for the delay – I should have mentioned that it has been very
difficult to obtain the status on this application.

3
Last Friday we have learned that the application won't be examined for at least
another nine months(!) so in view of the backlog in the art unit which will handle
this.

4
5
Id.
6

47. Mr. Islam's December 17, 2001 email did not mention that the '717 application was
7
abandoned. Id.
8
48. In his December 17, 2001 email, Mr. Islam wrote to Mr. Owens that "[t]hings are crazy
9
here and we are involved in a merger situation too." Id.
United States District Court
For the Northern District of California

10
49. In his December 17, 2001 email, Mr. Islam suggested that a petition for accelerated
11
examination of the '717 application be filed. Id.
12
50. On December 20, 2001, Mr. Owens sent Mr. Islam the amended set of claims for the
13
'717 application in an email. Tr. Exh. 54.
14
51. In his December 20, 2001 email, Mr. Owens attached a complete amended set of claims
15
for the '717 application for Mr. Islam to file. Id.
16
52. In a December 20, 2001 email, Mr. Islam told Mr. Owens that he had briefly reviewed
17
the amended claims, and that a petition for accelerated examination for the '717 application as well
18
as a preliminary amendment for the '717 application would be prepared and filed by the end of the
19
year. Tr. Exh. 55.
20
53. On December 27, 2001, Mr. Islam forwarded his December 20, 2001 email to Mr.
21
Owens to another prosecutor at his firm, Serle Mosoff, saying "Let's discuss." Id.
22
54. Mr. Mosoff was not listed as a prosecuting attorney in the '717 application.
23
55. On January 23, 2002, Anthony Smith of the PTO Petitions Office faxed a copy of the
24
Decision to the attention of Mr. Mosoff. Mr. Islam thinks he saw this fax, but thinks it is possible it
25
could have been some weeks or months after January 23, 2002 when he did so. Tr. Exh. 17.
26
27
28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
7

1

56. Mr. Islam probably saw the June 2001 Decision sometime between June 2001 and

2

January 2002. However, due to his disorganize practice (described below), he did not respond to the

3

PTO until July 18, 2002.

4

E. Mr. Islam's Petition to Revive the '717 Application for Unintentional Abandonment

5

57. On July 18, 2002, a petition for revival of the '717 application for unintentional

6

abandonment was filed in the PTO, entitled "Petition for Revival Of An Applicatio[n] For Patent

7

Abandoned Unintentionally Under 37 CFR 1.137(b)" ("Petition to Revive") Tr. Exh. 71.

8
9
United States District Court
For the Northern District of California

10
11

58. The Petition to Revive was in the form of a copy of Form PTO/SB/64 (10-00) provided
by the PTO for the purpose of petitioning for revival of an abandoned patent application under 37
C.F.R. § 1.137(b). Id.
59. Mr. Islam's Petition to Revive the '717 Application included the statement that "the

12

entire delay in filing the required reply from the due date for the reply until the filing of a grantable

13

petition under 37 CFR 1.137(b) was unintentional." Id.

14

60. Mr. Islam signed the Certificate of Mailing at the bottom of the Petition to Revive, but

15

did not sign below the "Statement," although Mr. Islam's name was printed and his signature was

16

below. Id.

17

61. On July 18, 2002, a petition for accelerated examination for the '717 application

18

("Petition for Accelerated Examination") and Mr. Islam's declaration in support were filed in the

19

PTO. Tr. Exh. 153.

20
21
22
23
24
25
26

62. On July 18, 2002, the Second Preliminary Amendment for the '717 application ("Second
Preliminary Amendment") was filed in the PTO. Id.
63. Mr. Islam reported the filing of the Petition for Accelerated Examination and Second
Preliminary Amendment to Mr. Owens in a letter dated July 19, 2002. Tr. Exh. 68.
64. Mr. Islam, however, did not mention the Petition to Revive in his July 19, 2002 letter to
Mr. Owens. Id.
65. Further, the copy of the Second Preliminary Amendment that Mr. Islam sent to Mr.

27

Owens on July 19, 2002 incorrectly stated that it was deposited in Express Mail on January 3, 2002,

28

was addressed from the Rosenman law firm prior to its merger with KMZ in February 2002, and had
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
8

1

an Express Mail mailing label number that was slightly different from the Second Preliminary

2

Amendment filed with the PTO on July 18, 2002. Tr. Exh. 69.

3

66. The Second Preliminary Amendment that Mr. Islam sent to Mr. Owens was never filed

4

in the PTO. Aristocrat's Second Amended Answer at ¶ 268. The Second Preliminary Amendment

5

that Mr. Islam filed in the PTO was never sent to Mr. Owens. Id. at ¶ 269.

6

F. Facts Suggesting that Neither Islam Nor Aristocrat Intentionally Delayed

7

67. Until June 2001, Mr. Islam had attempted to appropriately respond to the PTO's Notice

8

of Abandonment by filing the Petition to Correct.

9
United States District Court
For the Northern District of California

10

68. Mr. Islam had no benefit to gain by allowing the '717 application to become abandoned
and remain abandoned.

11
12

69. Aristocrat always wanted to diligently prosecute the '717 application, and in late 2001
asked to expedite the '717 application, not knowing it was in an abandoned status at that time.

13

70. Aristocrat never instructed any of its outside patent prosecutors, including Mr. Owens

14

and Mr. Islam, to abandon the '717 application or allow the '717 application to remain abandoned.

15
16

71. Aristocrat had no benefit to gain by allowing the '717 application to become abandoned
and remain abandoned.

17

72. Based upon information received from Mr. Islam, through FB Rice and Mr. Owens,

18

Aristocrat believed that the '717 application was proceeding through the PTO examination process at

19

all times between January 10, 2000 and January 2004. Such information included letters and email

20

sent by FB Rice to Aristocrat in January 2000, April 2000, December 2001, August 2002, and

21

January 2004.

22
23

73. Aristocrat was unaware prior to 2004 that the '717 application had gone abandoned as of
January 11, 2000 and was unaware that a petition to revive had been filed and granted in 2002.

24

F. Condition of Islam's Practice

25

74. When Mr. Islam joined Rosenman in April 2000, Rosenman did not have an intellectual

26

property department. See Tr. Exh. 89; Testimony of Harris Wolin, Tr. at 352; Islam 1/7/11, Tr. at

27

271.

28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
9

1
2

75. While at Rosenman, Mr. Islam had little support for his practice. Testimony of Harris
Wolin, Tr. at 355, 357.

3
4

76. While at Rosenman, Mr. Islam set up a paper calendar for tracking patent prosecution
matters which consisted of entering deadlines by hand. Id. at 355-356, 358.

5
6

77. While at Rosenman, Mr. Islam did not personally enter any deadlines in the paper
calendar for tracking patent prosecution matters. Islam 1/7/11, Tr. at 273, 279-281.

7
8

78. While at Rosenman, Mr. Islam's secretary was responsible for pulling the files for Mr.
Islam's review as due dates approached for responses to Office Actions for patent applications. Id.

9
United States District Court
For the Northern District of California

10

79. In October 2000, Mr. Islam began working with a new secretary, Cheryl Bajana. Id. at
280-281.

11
12

80. Ms. Bajana had no intellectual property training prior to working with Mr. Islam at
Rosenman. Id.

13
14

81. While at Rosenman, Ms. Bajana's duties included entering deadlines by hand in the paper
calendar for Mr. Islam's patent prosecution matters. Id. at 281.

15
16

82. While at Rosenman, Ms. Bajana was required to review the paper calendar on a regular
basis for upcoming due dates. Id. at 280-281.

17

83. While at Rosenman, for any upcoming deadlines, Ms. Bajana was required to bring the

18

relevant file to Mr. Islam for preparation of the response to a particular Office Action. Id. at 281-

19

283.

20
21
22

84. In February-March 2002, Rosenman merged with Katten Muchin Zavis to become the law
firm of Katten Muchin Zavis Rosenman ("KMZR"). (Stipulated).
85. Eight other Aristocrat applications went abandoned while being prosecuted by Mr. Islam

23

at Rosenman in addition to the abandonment of the '717 application (referred to as the "nine

24

abandoned applications") – 09/308,005, 09/462,717 (application at issue), 09/701,168, 09/720,042,

25

09/720,046, 09/720,570, 09/743,950, 09/856,869, 09/857,040. Tr. Exhs. 153, 156, 158-164.

26
27
28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
10

1

86. All nine abandoned applications were abandoned, or in the case of the '717 application,

2

remained abandoned for failure to respond to PTO communications sent to Mr. Islam between

3

January 10 and June 27, 2001. Id.

4

87. Mr. Islam filed petitions to revive six Aristocrat applications between July 18 and 23,

5

2002 – application nos. 09/462,717 (application at issue), 09/701,168, 09/720,042, 09/720,046,

6

09/720,570, and 09/743,950. Id.

7

88. Mr. Islam left KMZR on April 11, 2003. Testimony of Harris Wolin, Tr. at 353.

8

89. Mr. Islam did not inform Aristocrat of the abandonment of the nine abandoned Aristocrat

9
United States District Court
For the Northern District of California

10
11
12
13

applications before he left KMZR in April 2003. (Stipulated).
90. Due to his disorganized practice (see testimony of Harris Wolin, Tr. at 354-55), Mr. Islam
carelessly and unintentionally failed to diligently prosecute the '717 application.
91. Mr. Islam attempted to cover-up his failure to diligently prosecute the '717 application
because he knew his actions contradicted Aristocrat's express interests.

14

G. PTO Grants Petition

15

92. The PTO granted the Petition to Revive the '717 application in a decision mailed

16
17

September 3, 2002 and signed by Mr. Anthony Smith. Tr. Exh. 77.
93. The PTO stated that "applicant's statement that 'the entire delay in filing the required reply

18

from the due date for the reply until the filing of a grantable petition under 37 CFR 1.137(b) was

19

unintentional' meets the requirements of 37 CFR 1.137(b)(3)." Id.

20

94. Even though the PTO could have done so, it did not seek more information as to the

21

unintentional delay in its decision granting the Petition to Revive. Id.; see also MPEP

22

711.03(c)(III)(D).

23

95. On October 1, 2002, the PTO mailed a Notice of Acceptance of Application Under 35

24

U.S.C. § 371, indicating that the date of receipt of all § 371 requirements was April 10, 2000, the

25

date the missing parts had been filed. Tr. Exh. 80.

26
27
28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
11

1

96. Further, the PTO decision granting the Petition to Revive the '717 application expressly

2

acknowledged the unsuccessful Petition to Correct and the 13 months that had passed between the

3

June 2001 Decision and the Petition to Revive. Tr. Exh. 77.

4

H. Aristocrat Learns of Abandonment and Islam's Delay and Deception

5

97. The PTO took no action on the '717 Application between its revival on October 1, 2002

6

and June 7, 2004. Tr. Exhs. 118, 122.

7

98. In May 2003, KMZR sent a filing receipt for the '717 application to Mr. Owens,

8

indicating that the application was now complete and would enter prosecution on the merits. Tr.

9

Exh. 82.

United States District Court
For the Northern District of California

10
11
12

99. In January 2004, Aristocrat instructed Mr. Owens to ask KMZR to expedite the
prosecution of the '717 application. Tr. Exh. 95.
100. On January 27, 2004, Harris Wolin, an attorney at KMZR who had taken over the '717

13

application, informed Mr. Owens that the PTO had never removed the '717 application from the

14

abandonment section of the PTO in September 2002 when the Petition to Revive had been granted.

15

Tr. Exh. 100.

16

101. On January 27, 2004, Mr. Wolin told Mr. Owens that, in 2001-2002, Mr. Islam had

17

allowed the '717 application to go abandoned based on the same failure to meet administrative

18

deadlines that had led to the abandonment of the NuGame applications. Tr. Exh. 99. Mr. Wolin

19

apologized for any inconvenience this caused, but said that the '717 application had already been

20

revived. Id.

21

102. In or about April 2003, Aristocrat learned of five Aristocrat applications that were

22

currently abandoned, which were related to inventions developed by a company that Aristocrat had

23

previously acquired called NuGame (patent applications 09/701,168, 09/720,042, 09/720,046,

24

09/720,570, 09/743,950) (the "NuGame applications"). Tr. Exh. 158-162.

25
26

103. In April 2003, Aristocrat hired Kendall Thiessen of Gibson, Dunn & Crutcher to revive
the NuGame applications. Testimony of David Greenslade, Tr. at 310-311.

27
28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
12

1

104. As a result of Mr. Thiessen's efforts to revive the NuGame applications, Aristocrat

2

learned that Mr. Islam had let the NuGame applications go abandoned and remain abandoned

3

between 2001-2002. Id. at 310-311.

4

105. In light of the problems with the NuGame applications, Aristocrat moved its patent

5

prosecution files from KMZR to the firm of McAndrews, Held & Malloy ("McAndrews") in early

6

March, 2004. Tr. Exh. 127.

7

106. Aristocrat and McAndrews did not take any further action concerning Mr. Islam or the

8

'717 application because Aristocrat was informed at all times that Mr. Islam's many abandonments

9

and the subsequent revivals were due to failures to meet administrative deadlines and not any

United States District Court
For the Northern District of California

10

intentional delay or misrepresentations to the PTO. See Tr. Exh. 99; Testimony of David

11

Greenslade, Tr. at 319.

12

107. Aristocrat, FB Rice and McAndrews were all unaware that Mr. Islam had sent Mr.

13

Owens an incorrectly dated Second Preliminary Amendment until years after the patents had issued

14

and this litigation had commenced. Owens 2/16/11, Tr. at 166-168.

15
16
17
18

108. Upon timely payment of the issue fee, the '717 application issued as U.S. Patent No.
7,056,215 on June 6, 2006. Tr. Exh. 153.
109. A request for a certificate of correction was filed June 9, 2006, to correct certain
typographical errors in the patent. Id.

19

110. A certificate of correction issued on August 15, 2006. Id.

20

111. The '717 application is the parent of the application that issued as U.S. Patent No.

21

7,108,603 (the '603 patent). See '603 patent at pg. 1.

22

112. The '603 patent issued on September 19, 2006. Id.

23

II. Conclusions of Law

24
25
26
27

A. Applicable Law
1. Inequitable Conduct
"[C]ourts must ensure that an accused infringer asserting inequitable conduct has met his
burden on materiality and deceptive intent with clear and convincing evidence before exercising its

28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
13

1

discretion on whether to render a patent unenforceable." Star Sci., Inc. v. R. J. Reynolds Tobacco

2

Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). The Federal Circuit has also noted that "the charge of

3

inequitable conduct in every major patent case 'has become an absolute plague.'" Multiform

4

Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1482 (Fed. Cir. 1999) (quoting Burlington Indus.,

5

Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988)). "The need to strictly enforce the burden

6

of proof and elevated standard of proof in the inequitable conduct context is paramount because the

7

penalty for inequitable conduct is so severe, the loss of the entire patent even where every claim

8

clearly meets every requirement of patentability." Star Sci., 537 F.3d at 1366.
Notable here, inequitable conduct "early in the prosecution may render unenforceable all

10
United States District Court
For the Northern District of California

9

claims which eventually issue from the same or a related application." Fox Indus., Inc. v. Structural

11

Preservation Systems, Inc., 922 F.2d 801, 804 (Fed. Cir. 1990).

12

To prevail on a claim of inequitable conduct, the accused infringer must present "evidence that

13

the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material

14

information or submitted false material information; and (2) intended to deceive the PTO." Star Sci.,

15

537 F.3d at 1365. The party asserting inequitable conduct must prove a threshold level of

16

materiality and intent. Thereafter, the court must determine whether the questioned conduct

17

amounts to inequitable conduct by balancing the levels of materiality and intent, "with a greater

18

showing of one factor allowing a lesser showing of the other." Digital Control, Inc. v. Charles

19

Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006) (citation omitted).2

20

Information is material when a reasonable examiner would consider it important in deciding

21

whether to allow an application to issue as a patent. Star Sci., Inc., 537 F.3d at 1367. Moreover, the

22

PTO's own Rule 56 sets forth a duty to disclose all material information: "[e]ach individual

23

associated with the filing and prosecution of a patent application has a duty of candor and good faith

24

in dealing with the Office, which includes a duty to disclose to the Office all information known to

25

that individual to the material to patentability as defined in this section." 37 C.F.R. § 1.56.

26
27
28

2

On April 26, 2010, the Federal Circuit granted rehearing en banc in Therasense, Inc. v. Becton,
Dickinson & Co., 2010 WL 1655391 (Fed. Cir. 2010) to consider several detailed questions
regarding inequitable conduct.
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
14

1

The intent required for inequitable conduct is a specific intent to deceive the PTO. Star Sci.,

2

Inc., 537 F.3d at 1366. However, the intent to deceive is generally proven by indirect and

3

circumstantial evidence, not direct evidence. Id. That said, the inference of intent to deceive the

4

PTO must be "the single most reasonable inference able to be drawn from the evidence to meet the

5

clear and convincing standard." Id.

6

But even if the factual threshold showings of materiality and intent are made by clear and

7

convincing evidence, the court "must still balance the equities to determine whether the applicant's

8

conduct warrants holding the entire patent unenforceable." Star Sci., Inc., 537 F.3d at 1365. "It is

9

also inequitable to strike down an entire patent where the patentee only committed minor missteps or

United States District Court
For the Northern District of California

10

acted with minimal culpability or in good faith." Id.

11

2. Petition to Revive

12

Where there is no dispute that an application is abandoned, a petition to revive under 37

13

C.F.R. § 1.137 is necessary to reinstate the application to a pending status. A petition to revive

14

requires (1) a fee, (2) the filing of any response which the failure to file had given rise to the

15

abandonment, and (3) a showing that the delay in filing a timely reply was either unavoidable or a

16

statement the entire delay was unintentional. 37 C.F.R. § 1.137(a) and (b), respectively; see also

17

MPEP 711.03(c)(III)(C)(1) and (2).

18
19

MPEP 711.03(c)(III)(D) explains that there are three periods to be considered during the
evaluation of a petition under 37 CFR § 1.137:

20

(A) the delay in reply that originally resulted in the abandonment;

21

(B) the delay in filing an initial petition pursuant to 37 CFR 1.137 to revive the
application; and

22
23
24
25
26
27
28

(C) the delay in filing a grantable petition pursuant to 37 CFR 1.137 to revive the
application.
The MPEP goes on to explain the PTO's standard for evaluating delay:
[T]he abandonment of an application is considered to be a deliberately chosen course of
action, and the resulting delay cannot be considered as "unintentional" within the
meaning of 37 CFR 1.137(b), where the applicant deliberately permits the application to
become abandoned. Likewise, where the applicant deliberately chooses not to seek or
persist in seeking the revival of an abandoned application, or where the applicant
deliberately chooses to delay seeking revival of the abandoned application, the resulting
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
15

1

delay in seeking revival of the abandoned application cannot be considered as
"unintentional" within the meaning of 37 CFR 1.137(b).

2
MPEP 711.03(c)(III)(D).
3
Unavoidable Delay
4
When determining whether a delay should be considered unavoidable, the PTO follows a
5
"reasonably prudent person standard" that requires no more or greater care or diligence than is
6
generally employed by prudent and careful individuals in relation to their most important business.
7
MPEP 711.03(c)(III)(C)(2). A petition to revive for unavoidable delay requires a showing to the
8
9
United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20

satisfaction of the Director that the entire delay was unavoidable in spite of the exercise of due care
and diligence expected of a reasonably prudent person under the circumstances. 37 C.F.R. §
1.137(a)(3).
Unintentional Delay
Particularly important here is that the unintentional delay standard is less strict. Congress
created this standard in 1982 when it enacted the unintentional delay standard of 35 U.S.C. §
41(a)(7), implemented in 37 C.F.R. § 1.137(b) and MPEP 711.03(c)(III)(C).
The PTO has provided examples of situations where a delay resulting from a deliberately
chosen course of action on the part of an applicant is not "unintentional" delay within the meaning of
37 C.F.R. § 1.137(b):
(A)

the applicant does not consider the claims to be patentable over the references
relied upon in an outstanding Office action;

(B)

the applicant does not consider the allowed or patentable claims to be of
sufficient breadth or scope to justify the financial expense of obtaining a patent;

(C)

the applicant does not consider any patent to be of sufficient value to justify the
financial expense of obtaining the patent;

(D)

the applicant does not consider any patent to be of sufficient value to maintain
an interest in obtaining the patent; or

(E)

the applicant remains interested in eventually obtaining a patent, but simply
seeks to defer patent fees and patent prosecution expenses.

21
22
23
24
25
26

MPEP 711.03(c)(III)(C)(1). Each of these examples shows either (1) a conscious decision to

27

abandon the application; or (2) a conscious decision to deliberately delay prosecuting to avoid or at

28

least postpone any additional expenses.
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
16

1

Petitions to revive based on unintentional delay are based upon statements, rather than a

2

showing accompanied by documentary evidence as required for showing unavoidable delay. MPEP

3

711.03(c). In fact, the PTO does not generally question whether there has been an intentional delay

4

or otherwise impermissible delay in filing an initial petition to revive if the petition is filed: (A)

5

within 3 months of the date the applicant is first notified that the application is abandoned, and (2)

6

within 1 year of the date of abandonment of the application. MPEP 711.03(c)(III)(D). When a

7

petition pursuant to 37 C.F.R. § 1.137(b) is not filed within 3 months of the date the applicant is first

8

notified that the application is abandoned, the PTO may require further information as to the cause

9

of delay between the date the applicant was first notified that the application was abandoned and the

United States District Court
For the Northern District of California

10

date a 37 C.F.R. § 1.137(b) petition was filed, and how such a delay was "unintentional." MPEP

11

711.03(c)(III)(D). And when a petition pursuant to 37 C.F.R. § 1.137(b) is not filed within 1 year of

12

the date of abandonment of the application, the PTO will typically, but not always, require further

13

information as to how the delay in discovering the abandoned status occurred. MPEP

14

711.03(c)(III)(D).

15

Several responses to comments in the Federal Register are helpful in determining whether a

16

delay is in fact "unintentional." See Changes to Patent Practice and Procedure, 62 Fed. Reg. 53131

17

(Oct. 10, 1997). One response makes clear that an "'unintentional' delay does not require that the

18

delay have occurred despite the exercise of due care and diligence (as does 'unavoidable' delay)." Id.

19

at 53161. Another response notes that "[a]ny applicant obtaining revival based upon a misleading

20

statement that the delay was unintentional may find the achievement short-lived as a result of the

21

question of intentional delay being raised by third parties challenging any patent issuing from the

22

application." Id. at 53162. Finally, one response warns that "an applicant who fails to file a petition

23

under § 1.137 . . . (b) 'promptly' upon becoming notified, or otherwise becoming aware of

24

abandonment of the application . . . will probably not even be able to make an appropriate statement

25

that 'the entire delay in filing the required reply from the due date for the reply until the filing of the

26

a grantable petition was unintentional.'" Id. at 53163.

27
28

The parties both had experts on the subject of inequitable conduct and more specifically,
intentional delay within the meaning of 37 C.F.R. § 1.137(b) (Charles Van Horn for Aristocrat and
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
17

1

Paul Gardner for IGT). The court expressed reluctance to allow such experts to testify, but both

2

sides expressed a desire to offer the experts, pointing out that some of the rules at issue were obscure

3

or complex. The court found the expert testimony helpful in explaining the prosecution of PCT

4

applications before the PTO, but the majority of the testimony reflected legal conclusions and

5

blatant advocacy for a respective party's position. At bottom, the experts' legal conclusions were not

6

helpful, and the court has drawn its own conclusions as to what the facts show.

7

B. Mr. Islam's Delay Was Unintentional

8

IGT has failed to show by clear and convincing evidence that at any time, Mr. Islam's delay in

9
United States District Court
For the Northern District of California

10

prosecuting the '717 application was intentional.
Considering the period of delay that initially led to the notice of abandonment, Mr. Islam's

11

filing of the national stage application one day late does not show intentional delay. Moreover, Mr.

12

Islam's filing of the Petition to Correct on September 19, 2000 is inconsistent with an intent to delay

13

prosecution or revival. While Mr. Islam could have simultaneously filed a petition to revive with the

14

Petition to Correct, his failure to do so is not enough to make the delay "deliberate." See MPEP

15

711.03(c)(I) ("Where an applicant contends that the application is not in fact abandoned (e.g., there

16

is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition [to the

17

Director] under 37 C.F.R. 1.181(a) requesting withdrawal of the holding of abandonment is the

18

appropriate course of action . . . ."). Rather, Mr. Islam's decision to file the Petition to Correct

19

demonstrates, like many of his actions do, a desire to avoid telling Aristocrat of his mistakes.

20

Despite its procedural shortcoming, Mr. Islam's decision to file a Petition to Correct shows that there

21

was no deliberate course of action to delay prosecuting the '717 application. Up to the June 2001

22

Decision on the Petition to Correct, Mr. Islam's actions were not consistent with a deliberate

23

delay–he filed the national stage application and a preliminary amendment, he filed a reply to the

24

Notice of Missing Parts, and he filed a Petition to Correct.

25

There is also no clear and convincing evidence that Mr. Islam deliberately delayed during the

26

period from the June 2001 Decision up to the July 2002 Petition to Revive. Notably, there is no

27

evidence to suggest that Mr. Islam had anything to gain from deliberate delay. Indeed, IGT does

28

not suggest that prosecution was delayed due to prior art considerations, the financial worth of the
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
18

1

patent, or the scope of the claims. To the contrary, the evidence shows that Aristocrat consistently

2

instructed Mr. Islam (through Mr. Owens) to diligently prosecute the '717 application.

3

Mr. Islam testified that he did not recall the June 2001 Decision. Considering that it was

4

correctly addressed and was also faxed to Mr. Mosoff, it is likely that Mr. Islam saw the June 2001

5

decision at some point shortly after it was mailed. In fact, Mr. Islam's testimony was disturbingly

6

vague and his lack of memory difficult to believe. However, the evidence does not suggest that Mr.

7

Islam deliberately decided to defy Aristocrat and Mr. Owens and intentionally delay prosecuting the

8

'717 application. Rather, the evidence shows that Mr. Islam's practice was so disorganized that he

9

failed to properly docket or schedule further action on the June 2001 decision and failed to keep

United States District Court
For the Northern District of California

10

track of what he needed to do for his clients. As described by Mr. Wolin, Mr. Islam was

11

overwhelmed and his practice was out of control and susceptible to error. Mr. Islam also relied on

12

an inefficient notebook docketing system. During this same time period, eight other Aristocrat

13

applications become abandoned. Even if Mr. Islam failed to properly prosecute the '717 application,

14

"unintentional" delay does not require that the delay have occurred despite the exercise of due care

15

and diligence (as does "unavoidable" delay). See Changes to Patent Practice and Procedure, 62 Fed.

16

Reg. 53131, 53161 (Oct. 10, 1997).

17

Mr. Islam's failure to disclose developments regarding the abandonment of the '717

18

application to Mr. Owens actually suggests that the delay was unintentional. Specifically, it shows

19

that Mr. Islam did not want to disclose his errors because he was likely embarrassed by his failure to

20

act in accordance with his client's instruction. Had it been granted, Mr. Islam's Petition to Correct

21

would have avoided abandonment altogether. Mr. Islam's deflections in December 2001 show that

22

he was fully aware that Aristocrat wished to proceed with the '717 application. Mr. Islam's

23

comments to Mr. Owen's regarding the PTO backlog at the time further avoided acknowledging any

24

personal responsibility for delay but it may have been correct, especially considering that the '717

25

application remained in an abandoned state even after the PTO had officially revived it. Still further,

26

Mr. Islam's incorrectly dated Second Preliminary Amendment is further evidence that Mr. Islam's

27

chief motive was to hide his failures from Aristocrat. Once the June 2001 Decision was sent, a

28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
19

1

decision to deliberately delay reviving the '717 application would not have helped to hide his errors

2

from Aristocrat.

3

Accordingly, the court finds that the entire delay from January 10, 2000 to July 18, 2002 in

4

filing the Petition to Revive the '717 application, although reflective of substandard practice, was

5

"unintentional" within the meaning of 37 C.F.R. § 1.137(b).

6

C. There Was No Material Information Withheld From The PTO With An Intent To
Deceive

7
Because Mr. Islam did not intentionally delay prosecuting the '717 application, his statement
8
9
United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

in the Petition to Revive the '717 application that "[t]he entire delay in filing the required reply until
the filing of a grantable petition under 37 C.F.R. 1.137(b) was unintentional" was not false when
filed on July 18, 2002. Therefore, Mr. Islam's statement in the Petition to Revive was not a material
misrepresentation and was not made with an intent to deceive.
Moreover, there was no material information that wasn't already before the PTO when Mr.
Islam filed the Petition to Revive. Anthony Smith of the PTO Petitions Office faxed a copy of the
June 2001 Decision and was thus aware of Mr. Islam's delay in responding. The PTO could have
asked for more information, but did not do so. See 711.03(c)(III)(D). To be sure, the PTO may rely
on the good faith and candor of practitioners in evaluating petitions to revive, recognizing that future
litigation might uncover intentional delay at a future date. See Changes to Patent Practice and
Procedure, 62 Fed. Reg. 53131, 53163 (Oct. 10, 1997). But here, the evidence that IGT principally
relies on was squarely before the PTO, namely the Petition to Correct and the passage of time before
the Petition to Revive was filed.
Furthermore, Aristocrat did not fail to disclose material information to the PTO. Aristocrat,
through Mr. Owens, did not find out that the '717 application had been previously abandoned until
2004. Tr. Exh. 99. By that time, the PTO had already granted the Petition to Revive. As a result,
neither Aristocrat nor its outside prosecution counsel had reason to believe that the abandonment
and subsequent prosecution delay (information which was already before the PTO) was material to
patentability. Similarly, the concealment of the abandonment from Aristocrat was not material to
the revival of the '717 application because it did not involve a misrepresentation to the PTO.
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
20

1

Therefore, the court concludes that Aristocrat (including its patent prosecutors) did not intend to

2

deceive the Patent Office in the Petition to Revive the '717 application. Moreover, Aristocrat and its

3

patent prosecutors did not violate any applicable duty of candor and good faith by not disclosing Mr.

4

Islam's mismanagement, concealment of abandonment from his client, and subsequent revival of the

5

'717 application because it was not material to patentability.

6

Because there is no clear and convincing evidence of inequitable conduct, the '215 patent and

7

all patents that are derived from or claim priority to it are not unenforceable due to inequitable

8

conduct. Moreover, the '603 patent and all patents that are derived from or claim priority to it are

9

not unenforceable due to inequitable conduct.

United States District Court
For the Northern District of California

10

D. Balancing Equities

11

Even if IGT had shown by clear and convincing evidence that Mr. Islam intentionally

12

delayed pursuit of the Petition to Revive and withheld that information from the PTO with the

13

specific intent to deceive, the court "must still balance the equities to determine whether the

14

applicant's conduct warrants holding the entire patent unenforceable." Star Sci., Inc., 537 F.3d at

15

1365. Here, Aristocrat at all times unequivocally wanted the prosecution of the '717 application to

16

proceed without delay. Although any failures by Mr. Islam to carry out his client's instructions are

17

attributable to Aristocrat as his client vis-a-vis third parties such as the PTO (see Link v. Wabash R.

18

Co., 370 U.S. 626, 633-634 (1962), but see In re Lonardo, 17 U.S.P.Q. 2d 1455, 1459 (Comm'r Pat.

19

1990)), in balancing the equities, consideration must be given to the fact that Mr. Islam's inaction

20

was in direct conflict with Aristocrat's directions. In addition, any inequitable conduct was not

21

related to substantive patentability, but rather, to a procedural irregularity caused by the prosecuting

22

attorney's failure to diligently prosecute in direct conflict with his client's instructions and without its

23

knowledge. Although for the reasons explained in a prior appeal in this case, a procedural

24

irregularity that involves misrepresentation and deception may render a patent unenforceable

25

(Aristocrat Tech. Australia Pty. Ltd. v. Intern. Game, 543 F.3d 657, 663-64 (Fed. Cir. 2008)), to

26

invalidate Aristocrat's entire family of patents when Aristocrat reasonably believed it was complying

27

with the PTO's requirements would not be equitable. On balance, a finding of inequitable conduct

28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
21

1

would be unwarranted even if Mr. Islam's statement of unintentional delay was a material

2

misrepresentation intended to deceive the PTO.

3
4
5
6
7
8
9

Dated:

5/6/2011
RONALD M. WHYTE
United States District Judge

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
No. C-06-003717FINDINGS OF FACT AND CONCLUSIONS OF LAW (Claim of Inequitable Conduct with Respect to Petition to
Revive Abandoned Patent Application)
C-06-003717
22