Exergen Corporation v. Brooklands Inc.
Judge Douglas P. Woodlock: MEMORANDUM AND ORDER entered finding as moot 126 Motion for Entry of Judgment under Rule 54(b); granting 138 Motion to Dismiss; granting 156 Motion for Summary Judgment (Woodlock, Douglas)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO.
MEMORANDUM AND ORDER
February 13, 2018
The plaintiff Exergen’s initiative in bringing this patent
infringement litigation has proven counterproductive.
occasioned my decision to hold the asserted patent itself
Exergen v. Brooklands, Inc., 125 F. Supp. 3d 307 (D.
Exergen, nevertheless, undertook to continue the
litigation by seeking a determination that it did not commit
inequitable conduct with respect to obtaining the invalid patent
in the first place.
Before reaching the issue of inequitable conduct, I
consider it prudent to address the question whether the prior
determination of invalidity should foreclose further litigation.
After consideration of the parties’ submissions on that question
and analysis of answers found in Federal Circuit case law, I
have determined that the question of inequitable conduct is not
categorically moot in this case.
As a consequence, it seems the
better part of discretion to address the question of inequitable
Turning to the merits of the issue of inequitable conduct,
I conclude that plaintiff Exergen is entitled to summary
That determination now marks the conclusion of this
case in this court.
On December 4, 2012, Exergen Corporation initiated this
patent infringement action against Brooklands for alleged
infringement of claims 51 and 54 of U.S. Patent No. 7,787,938
Brooklands asserted affirmative defenses under:
35 U.S.C. § 101 (unpatentable subject matter), § 102
(anticipation), and § 103 (obviousness).
asserted a counterclaim against Exergen seeking declaratory
judgment that the ‘938 patent is invalid because of inequitable
Brooklands moved for summary judgment on its
affirmative defenses and on August 28, 2015, I granted
Brooklands summary judgment under § 101 finding that the ‘938
patent involved unpatentable subject matter.
Exergen, 125 F.
Supp. 3d at 312-17.
Although the core substantive question in the case — patent
infringement — was effectively resolved by the finding of
invalidity, Exergen pressed on in opposition to Brooklands’
inequitable conduct counterclaim by filing the motion for
summary judgment now before me.
After I raised the question of
mootness, Exergen reversed course and argued that the case
should be terminated without reaching the question of
Brooklands, for its part, continued to
maintain it was entitled to resolution of the inequitable
conduct question on the merits.
In order to put the issues in
context, an elaboration of the factual and procedural
development of this patent litigation is appropriate.
Dr. Francisco Pompei is the founder and CEO of Exergen and
has patented numerous products, in addition to being the named
inventor of the ‘938 patent.
I begin by discussing Exergen’s
related patents, of which the ‘938 patent was a continuation,
and then examine the facts surrounding prosecution of the ‘938
‘813 and ‘238 Patents
Exergen was issued U.S. Patent No. 5,012,813 (‘813 patent)
on May 7, 1991.
On August 5, 1997, Exergen was issued U.S.
Patent No. 5,653,238 (‘238 patent).
inventor on both of these patents.
Dr. Pompei was the named
Both patents describe a
“heat balance method” in the context of an ear thermometer
Both also include broader claims, such as Claim 7 of
the ‘813 patent:
A radiation detector comprising: a thermopile mounted
to view a target of biological surface tissue; a
temperature sensor for sensing ambient temperature; an
electronic circuit coupled to the thermopile and
temperature sensor and responsive to the voltage
across the thermopile and the temperature sensed by
the sensor to provide an indication of an internal
temperature within the biological tissue adjusted for
the ambient temperature to which the surface tissue is
exposed; and a display for providing an indication of
the internal temperature.
Claim 36 of the ‘238 patent is similarly broad:
A temperature detector comprising: a radiation sensor
mounted to view a target; a temperature sensor for
sensing ambient temperature; an electronic circuit
coupled to the radiation sensor and temperature sensor
and responsive to a signal from the radiation sensor
and the temperature sensed by the temperature sensor
to provide an indication of an internal temperature of
the target adjusted for the ambient temperature to
which the target is exposed; and an output for
providing an indication of the internal temperature.
On May 2, 2000, Dr. Pompei was issued U.S. Patent 6,056,435
The ‘435 patent, and the related family of
patents, claimed a device for detecting internal body
temperature in the armpit area.
This patent does not assert
temperature measurements in the forehead or temporal artery; it
recites some claims that extend more broadly.
claim 16 states:
A body temperature detector comprising: a radiation
sensor which views a target surface area of a body;
and electronics which compute an internal temperature
of the body as a function of an ambient temperature
and a sensed surface temperature, wherein the ambient
temperature within the function is an assumed ambient
Exergen previously brought suit against forehead
thermometer manufacturers in Exergen Corp. v. Wal-Mart Stores,
Inc., No. 01-cv-11306-RCL (D. Mass).
There, Exergen asserted
that defendants’ thermometers infringed the broad claims of the
‘813 patent, the ‘435 patent (within the ‘813 patent family),
the ‘238 patent, the ‘205 patent (within the ‘813 patent
family), and ‘685 patent (predecessor to the ‘938 patent). In
Wal-Mart, Judge Lindsay conducted a hearing on claim
construction of claim 7 of the ‘813 patent and construed the
terms “biological surface tissue” to mean “a living layer of
external human tissue having a temperature that can be
measured,” and “internal temperature” to mean “temperature of
the region existing beneath the surface of the biological tissue
targeted for measurement.”
Exergen Corp. v. Wal-Mart Stores,
Inc., No. 01-cv-11306-RCL at 5-10 (D. Mass filed Jul. 14, 2004).
At the conclusion of the Wal-Mart jury trial, the jury found
that Exergen had proved the defendants infringed the ‘813, ‘205,
and ‘685 patents which the jury considered valid.
Circuit, however, overturned the jury’s determinations that the
‘813 and ‘685 patents were infringed and that the ‘205 patent
was not invalid.
Exergen Corp. v. Wal-Mart Stores, Inc., 575
F.3d 1312, 1331 (2009).
More recently, in Exergen Corp. v. Kids-Med, Inc., No. 08CV-11416-DPW, 2016 WL 2993165 (D. Mass. May 23, 2016), Exergen
alleged that the defendant’s forehead thermometers violated the
broad claims of the ‘813 and ‘435 patents.
In Kids-Med, I
construed the term “target surface area” as used in the ‘435
patent to differ from the term “target of biological surface
area” used in the ‘813 patent.
Id. at *6.
I construed “target
surface area” to mean “an area of a surface within the viewing
range of the radiation sensor.” Id.
The ‘938 Patent
Dr. Pompei is the named patent holder of the ‘938 patent
and its predecessor, the ‘685 patent.
Both patents describe how
to obtain body temperature measurements on unprotected body
sites, such as the forehead.
the ‘938 patent.
Attorney James Smith prosecuted
Attorney Smith is an experienced patent
practitioner who was admitted to the U.S. Patent Bar in the
1970s and has spent his career performing patent prosecution
In prosecuting the ‘685 patent, Exergen submitted an
Information Disclosure Statement, which disclosed the ‘813, ‘238
In its January 8, 2008 submission that led to the ‘938
patent, Exergen disclosed in its Information Disclosure
Statement a lengthy list of patents, including the ‘813, ‘238,
‘435, and ‘685 patents.
During the ‘938 patent prosecution,
Attorney Smith argued that the ‘813 patent does not “teach or
suggest measuring temperature of a region of the forehead,”
and that “obtaining measurements of a region of skin of the
forehead is not an obvious extension” of the ‘813 patent.”
II. PROCEDURAL THRESHOLD – MOOTNESS CHALLENGE
Given my determination that the ‘938 patent is invalid
under 35 U.S.C. § 101, a threshold question to continuation of
the litigation is whether Brooklands’ remaining inequitable
conduct counterclaim is now moot.
“Under Article III of the
Constitution [a] Court may only adjudicate actual, ongoing
Honig v. Doe, 484 U.S. 305, 317 (1988); Aqua
Marine Supply v. AIM Machining, Inc., 247 F.3d 1216, 1219 (Fed.
Cir. 2001) (“[I]t is axiomatic that a federal court may not
address ‘the merits of a legal question not posed in an Article
III case or controversy,’ and that ‘a case must exist at all the
stages of appellate review.’”).
A case becomes moot when there
is a “material change in circumstances that entirely
terminate[s] the party’s controversy.”
See Cardinal Chemical
Co. v. Morton Int'l, Inc., 508 U.S. 83, 98 (1993).
While a case is moot when there is no longer an Article III
“case or controversy,” a court’s “common sense or equitable
considerations” may also serve as a justification for declining
to decide a case on the merits, even where dismissal solely on
Article III grounds would be improper.
In re AOV Indus., Inc.,
792 F.2d 1140, 1147 (D.C. Cir. 1986); In re Pub. Serv. Co. of
New Hampshire, 963 F.2d 469, 471 (1st Cir. 1992) (“The equitable
component in the mootness doctrine is rooted in the ‘court’s
discretion in matters of remedy and judicial administration’ not
to determine a case on its merits.”).
Exergen presses an equitable — judicial economy — and not a
constitutional argument for treating the case remaining before
me as moot.
Exergen contends that Brooklands’ inequitable
conduct counterclaim must be considered moot because the
asserted patent has been invalidated, rendering further
litigation a wasteful exercise.
Brooklands responds that a
finding of invalidity does not moot an unenforceability
counterclaim where there is a pending request for attorney fees
under 35 U.S.C. § 285.1
The Supreme Court has recently
instructed — because the question of attorney fees under § 285
is reserved for exceptional cases, and because “there is no
Brooklands specifically included a request for attorney fees in
its unenforceability counterclaim. However, no supported motion
for attorney fees has been submitted to this court. Rather, the
pendency of the underlying inequitable conduct claim and the
question of mootness that I raised sua sponte have apparently
forestalled a formal and fully supported application for
precise rule of formula for making these determinations,” Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749,
1756 (2014) (quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534
(1994) — that the matter of attorney fees in this context calls
for the exercise of equitable discretion.
then, it should be a matter of discretion whether even to
address the remedy of attorney fees under § 285 arising from
allegations of invalidity based on inequitable conduct once the
patent at issue has been found invalid on other grounds.
There is an extended array of Federal Circuit cases predating Octane Fitness discussing mootness in the context of
inequitable conduct claims.
I seek to chart a principled way to
navigate among them with a recognition that the principles
identified must be refracted through the light cast by Octane
In Monsanto Company v. Bayer Bioscience N.V., the Federal
The question facing this court is, thus, whether a
district court's jurisdiction under § 285 to determine
whether there was inequitable conduct in the
prosecution of patents that are otherwise no longer in
suit confers on that court the jurisdiction to hold
such patents unenforceable for inequitable conduct. We
hold that it does.
514 F.3d 1229, 1243 (Fed. Cir. 2008).
The infringement claims
under a number of patents were voluntarily dismissed in
Monsanto, but the Federal Circuit held that the District Court
“retained independent jurisdiction over Monsanto’s request for
attorney fees under 35 U.S.C. § 285” and that this “jurisdiction
to rule on attorney fees encompassed the jurisdiction to make
findings of inequitable conduct regarding all four patents.”
Id. at 1242.
Similarly, in Advanced Magnetic Closures, Inc. v. Rome
Fastener Corporation, the Federal Circuit stated that after
withdrawal of a patent invalidity counterclaim, the court
nevertheless “retains jurisdiction to consider a motion for
attorney's fees under 35 U.S.C. § 285 and to make findings of
inequitable conduct—even after a party has dismissed its
counterclaims as to that patent.”
Advanced Magnetic Closures,
Inc. v. Rome Fastener Corp., 607 F.3d 817, 827 (Fed. Cir. 2010)
(citing Monsanto Co., 514 F.3d at 1242-43).
In Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1345
(Fed. Cir. 2005), the Federal Circuit reviewed a decision in
which the District Court dismissed as moot an unenforceability
counterclaim “on the ground that there was no outstanding case
or controversy between the parties in light of” a covenant not
to sue following a jury verdict of non-infringement.
Federal Circuit in Fort James reversed because the counterclaim
raised issues not disposed of by the decision of noninfringement, namely the complete unenforceability of the patent
and the availability of attorney fees.
Id. at 1348.
has, however, sometimes been read to stand for the proposition
that unenforceability claims are moot unless a trial on
infringement has taken place or the parties have expended
considerable effort in preparing for trial.
See, e.g., Benitec
Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1347 (Fed.
Cir. 2007) (no outstanding request for attorney fees); Silicon
Graphics, Inc. v. ATI Techs., Inc., 573 F. Supp. 2d 1108, 1112
(W.D. Wis. 2008), aff'd, 607 F.3d 784 (Fed. Cir. 2010).
Exergen’s argument hinges on this narrow reading; it argues that
Brooklands’ counterclaim for declaratory judgment of
unenforceability of the ‘938 patent is moot because the patent
was deemed invalid through a motion for summary judgment
proceeding, in which the terminated claims were not fully
litigated and there was no meaningful progress toward trial.
Consequently, I turn now to focus more closely on cases
involving patents that were held invalid — as the ‘938 patent
was here — prior to the court’s consideration of inequitable
In 2001, the Federal Circuit affirmed the complete
invalidation of two patents and held — albeit without
substantial analysis — that a cross-appeal for inequitable
conduct was moot.
Mycogen Plant Sci. v. Monsanto Co., 243 F.3d
1316, 1337 (Fed. Cir. 2001).
Correspondingly, in 2007, after a
finding that all patent claims were invalid, the Federal Circuit
determined that an inequitable conduct counterclaim was moot
because the relief sought in rendering the entire patent
unenforceable was not meaningful.
The only relief available by
an inequitable conduct determination was attorney fees, for
which the party seeking inequitable conduct had not yet filed an
Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d
1371, 1383 (Fed. Cir. 2007).
The court concluded that the case
was “presently moot,” suggesting the possibility of a different
outcome had attorney fees been the subject of a formal
application when the inequitable conduct claim was pressed.
Brooklands concedes that the relief sought here is only based on
attorney fees, since the asserted claims have already been held
Thus, a further finding of inequitable conduct would
not render any additional claims unenforceable.
In Zenith Electronics Corp. v. PDI Communications Systems,
Inc., only one claim, among many claims in a particular patent,
was held invalid.
Zenith Elecs. Corp. v. PDI Commc'n Sys.,
Inc., 522 F.3d 1348, 1367 (Fed. Cir. 2008).
The Federal Circuit
held that the inequitable conduct claim there was not moot.
The Federal Circuit distinguished Zenith from Liebel-Flarsheim
by stating that “[t]his case is unlike Liebel–Flarsheim, where
we concluded that the defendant[‘s]  counterclaim for
inequitable conduct was moot in view of, inter alia, our
determination that all of the asserted claims were invalid.”
Id. at n. 11.
Furthermore, in Liebel-Flarsheim the party
seeking an inequitable conduct determination admitted “that a
ruling of unenforceability with respect to the entire patent was
not meaningful at the time,” while in Zenith “asserted claims 24 of the ‘301 patent ha[d] not been held invalid.”
Id. at n.
11; see also In re Omeprazole Patent Litig., 483 F.3d 1364, 1375
(Fed. Cir. 2007) (“The inequitable conduct claim was not
technically moot, because it would have rendered the entire ′281
patent unenforceable, rather than just the claims that [to that
point had been] held invalid.”).
Here, since all of the ‘938
patent claims were declared invalid, Zenith is not directly
The question remaining then is whether, even if Brooklands
cannot receive meaningful additional substantive relief because
the patent has already been declared invalid, the remaining
relief sought under 35 U.S.C. § 285 for attorney fees is
sufficient to prevent rendering the inequitable claim moot.
While there are some conflicting opinions, it appears the
Federal Circuit has generally declined to declare cases moot
where attorney fees under § 285 are still in the case.
e.g., Buildex Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1466
(Fed. Cir. 1988).
More specifically, the Federal Circuit has
stated that “although this issue may appear moot in view of our
holding that the  patent is invalid under § 102(b), the
question of . . . conduct in the procurement of the patent is
still relevant to [Defendant’s] request for attorney fees under
35 U.S.C. § 285, which was not decided by district court, as
bearing on the question whether the case is ‘exceptional.’”
at 1466; see also Paragon Podiatry Lab., Inc. v. KLM Labs.,
Inc., 984 F.2d 1182, 1188 n.6 (Fed. Cir. 1993) (per curiam)
(“This issue is not mooted by our decision holding the patent
invalid in view of KLM's motion for attorney fees.”); Ohio
Willow Wood Co. v. ALPS S., LLC, No. 2:04-CV-1223, 2012 WL
3283437, at *14 (S.D. Ohio Aug. 10, 2012), rev'd on other
grounds, 735 F.3d 1333 (Fed. Cir. 2013) (“In light of the fact
that ALPS includes a prayer for attorney fees in its
counterclaim for inequitable conduct . . . this Court declines
to dismiss the counterclaim as moot . . . .”).
I recognize that Buildex was distinguished by Judge
Arterton in Sony Electronics v. Soundview Technologies, Inc.,
because Buildex contained an inequitable conduct claim that was
“based on substantially the same set of facts as the invalidity
counterclaim on which the district court had granted summary
judgment and the Federal Circuit reversed.”
359 F. Supp. 2d
173, 177 (D. Conn.), adhered to on reconsideration, 375 F. Supp.
2d 99 (D. Conn. 2005).
The dispute in Sony was considered
different from that in Buildex because the attorney fees dispute
in Buildex was based on inequitable conduct “direct[ly]
relat[ed] to the already-litigated subject matter.”
Exergen presses the negative implications of Sony by making the
parallel argument here, contending that the inequitable conduct
claim should be mooted because it is not based on the same set
of facts as the successful invalidity claim.
The Federal Circuit, however, has not embraced Sony.
the Advanced Magnetic Closures litigation, the trial court had
refused to accept Sony as a basis for not retaining independent
jurisdiction over a request for attorney fees under 35 U.S.C. §
Advanced Magnetic Closures, Inc. v. Rome Fastener Corp.,
No. 98 CIV. 7766 (PAC), 2008 WL 2787981, at *3 (S.D.N.Y. July
17, 2008), aff'd in part, rev'd in part, 607 F.3d 817 (Fed. Cir.
The Advanced Magnetic Closures trial court distinguished
Sony because the patent at issue in Sony had actually expired,
mooting the claim for inequitable conduct.
2008 WL 2787981, at
And, on appeal, the Federal Circuit affirmed this portion
of the District Court’s Advanced Magnetic Closures opinion,
stating that “this court has held that a district court retains
jurisdiction to consider a motion for attorney fees under 35
U.S.C. § 285 and to make findings of inequitable conduct,” and
thus that the district court properly retained jurisdiction.
Advanced Magnetic Closures, Inc., 607 F.3d at 827.
To summarize the case law, I observe that the several cases
addressing the mootness of inequitable conduct claims have
declared such a claim moot when no trial on infringement has
taken place or when no considerable effort has been expended in
preparation for such a trial.
Benitec Australia, 495 F.3d at
The Federal Circuit has, nevertheless, generally
emphasized that when a question of attorney fees remains, even
if the asserted patent has been held invalid, a case or
controversy remains that can be resolved by the court.
In this connection, Liebel-Flarsheim may be distinguished
from the case before me.
While the parties have not yet made
formal submissions regarding fees here, see supra note 1, I
observe that in Ohio Willow, the Federal Circuit effectively
affirmed the decision that the case was not moot when a prayer
for relief for attorney fees had been pled.
Ohio Willow Wood
Co. v. Alps S., LLC, 735 F.3d 1333, 1344 (Fed. Cir. 2013).
There is no mention in Liebel-Flarsheim of a request in the
counterclaim for relief in the form of attorney fees.
Flarsheim Co., 481 F.3d at 1383.
By contrast, Brooklands has
framed a claim for attorney fees in the pleadings of this case.
Having explored various cases which contribute to framing
the question whether a case is moot when the patent at issue has
been declared invalid before an asserted claim of invalidity on
the basis of inequitable conduct has been reached, I distill the
various decisional streams to a problem of reasonable case
When, in sequencing the development of a case
raising invalidity, a claim of inequitable conduct does not loom
large in the critical path, resolving that claim can reasonably
be deferred while other grounds of invalidity are explored and
If that exploration leads to a resolution of
invalidity, further resources of the parties and the court need
not be expended in order to pursue an inchoate attorney fees
claim under 35 U.S.C. § 285.
Rather, treating the inequitable
conduct claim as moot and entering judgment would appear the
By contrast, if the inequitable claim is
given salience in sequencing and the parties have expended
substantial resources in developing the issue for resolution,
mootness may not be a preferred course even when an alternative
ground for invalidity is found.
In administering its case management responsibilities under
Fed. R. Civ. P. 16, a trial court should be alert to sequencing
the development of the case to serve the essential purposes of
the Rules of Civil Procedure as expressed in Fed. R. Civ. P. 1:
the securing of a “just, speedy and inexpensive determination of
every action and proceeding.”
The extended and redundant
consideration of multiple grounds for invalidity of a patent can
produce delayed and costly determination of a patent case when
the case has become moot before such alternate grounds are
In this case, I was not sufficiently alert to the problem
of delay and expense created when the parties heedlessly marched
on to explore alternate grounds for invalidity after invalidity
had been established.
A more effective case management would
have brought this case to final judgment without further
proceedings after invalidity had been established.
failed to recognize the need for aggressive management, I have
concluded that I should now, in deference to the parties’
initial choice to proceed to address inequitable conduct,
resolve that issue even though treating it as moot might be a
more appropriate exercise of my equitable discretion.
III. INEQUITABLE CONDUCT
Having satisfied myself that I should not treat this case
as moot because the question of attorney fees for inequitable
conduct had previously been framed in the pleadings and was
fully briefed in dispositive motion practice before the issue of
mootness was first raised by me, I turn to Exergen’s efforts to
resolve the inequitable conduct claim by summary judgment.
It is settled that “[s]ummary judgment is ‘as appropriate
in a patent case as in any other.’”
Arrow Int'l, Inc. v. Spire
Biomedical, Inc., 635 F. Supp. 2d 46, 56 (D. Mass. 2009)
(quoting Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd.,
731 F.2d 831, 835 (Fed.Cir.1984)).
However, “[u]nder Federal
Rule of Civil Procedure 56, summary judgment is appropriate only
if the record reveals that there is no genuine issue as to any
material fact and the moving party has demonstrated an
entitlement to a judgment as a matter of law.”
Deutschland GmbH v. Cobalt Pharm., Inc., 355 F. Supp. 2d 586,
593 (D. Mass. 2005) (internal quotation marks omitted) (quoting
Fed. R. Civ. P. 56(c)).
Disputed facts are material, and
preclude summary judgment, if the facts might “affect the
outcome of the suit under the governing law.”
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
A material fact
is “genuine,” and bars summary judgment, if the evidence is such
that a reasonable jury could return a verdict for the nonmoving
The motion for summary judgment before me as to inequitable
conduct concerns a counterclaim brought by Brooklands.
Brooklands thus bears the burden of proof on this counterclaim,
and Exergen may be successful on its motion for summary judgment
by showing that there is an absence of evidence to support
Brooklands’ inequitable conduct claim.
Arrow Int'l, Inc., 635
F. Supp. 2d at 56–57.
Brooklands presents several grounds to support its
inequitable conduct claim: (A) misrepresentation regarding
Exergen’s prior art ‘813 patent during the ‘983 patent
prosecution; (B) failure to disclose during the ’685 patent
prosecution, U.S. Patent Nos. 4,566,808, 4,318,998, 6,047,025,
5,325,863, 5,469,855, RE 355,554, 5,017,019, 4,626,686,
4,602,642, 4,784,149, and 4,797,840, The Physician’s Desk
Reference Handbook, and the Marybeth Pompei letters; and
(C) misrepresentations of the state of the art during the ’685
The legal standards framing the question of inequitable
conduct are relatively well settled.
An individual who files or
prosecutes a patent application has “a duty of candor and good
faith in dealing with the Office, which includes a duty to
disclose to the Office all information known to that individual
to be material to patentability.”
37 C.F.R. § 1.56; see also M.
Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d
1335, 1339 (Fed. Cir. 2006).
This duty extends not only to the
inventor, but to all other persons who are substantively
involved in the patent prosecution.
Smith & Nephew, Inc. v.
Interlace Med., Inc., 955 F. Supp. 2d 69, 72 (D. Mass. 2013).
breach of this duty may result in a finding of inequitable
conduct, which will invalidate the patent entirely, if the
undisclosed information is material to patentability and there
was an intent to deceive the PTO.
See M. Eagles Tool Warehouse,
Inc., 439 F.3d at 1339; Impax Labs., Inc. v. Aventis Pharm.
Inc., 468 F.3d 1366, 1375 (Fed. Cir. 2006) (“If inequitable
conduct occurred with respect to one or more claims of an
application, the entire patent is unenforceable.”).
of proving inequitable conduct lies with the accused infringer.”
Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357,
1365 (Fed. Cir. 2008).
The accused infringer must show by clear
and convincing evidence the applicant’s (1) affirmative
misrepresentation of a material fact, failure to disclose
material information, or submission of false material
information; and (2) intent to deceive the PTO.
Looking more closely at materiality and intent, I have
found information is considered material “where there is a
substantial likelihood that a reasonable examiner would consider
it important in deciding whether to allow the application to
issue as a patent.”
Arrow Int'l, Inc., 635 F. Supp. 2d at 58
(quoting Digital Control Inc. v. Charles Mach. Works, 437 F.3d
1309, 1315 (Fed. Cir. 2006)).
With respect to intent, there
must be a factual basis for finding that there was an intent to
deceive and this cannot “be inferred solely from the fact that
information was not disclosed.”
M. Eagles Tool Warehouse, Inc.,
439 F.3d at 1340; see also Cargill, Inc. v. Canbra Foods, Ltd.,
476 F.3d 1359, 1364 (Fed. Cir. 2007) (“[T]he involved conduct,
viewed in light of all the evidence, including evidence
indicative of good faith, must indicate sufficient culpability
to require a finding of intent to deceive.”).
asserting inequitable conduct must prove by clear and convincing
evidence that the patentee “acted with the specific intent to
deceive the PTO,” and this amounts to more than negligence or
Smith & Nephew, Inc., 955 F. Supp. 2d at 73
(quoting Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
1276, 1290 (2011)).
Intent, however, is rarely proven by direct
evidence, rather it is typically “inferred from the facts and
circumstances surrounding the conduct at issue.”
476 F.3d at 1364.
Thus, the more material the omission or
misrepresentation, the less burdensome the showing of intent for
purposes of a finding of inequitable conduct.
Inc., 468 F.3d at 1375.
Affirmative Misrepresentation Regarding Exergen’s Prior Art
‘813 Patent during ‘938 Patent Prosecution
Brooklands argues that Dr. Pompei and Attorney Smith
committed inequitable conduct through affirmative
misrepresentation in the ‘938 patent prosecution by arguing that
the ‘813 patent does not disclose, teach, or suggest “measuring
temperature of a region of the forehead.”
that this was necessarily a misrepresentation because during the
Wal-Mart and Kids-Med litigations, Exergen represented that the
‘813 patent discloses, teaches, and/or suggests forehead
thermometry methods through its broad claims, yet during the
‘938 patent application, Exergen inconsistently represented to
the PTO that the ‘813 patent does not disclose, teach, and/or
suggest forehead thermometry methods and apparatuses.
The manual of patent examining procedure provides that
“where the subject matter for which a patent is being sought is
or has been involved in litigation, the existence of such
litigation and any other material information arising therefrom
must be brought to the attention of the U.S. Patent and
MPEP § 2001.06(c).
In the ‘938 prosecution,
Exergen disclosed to the PTO numerous litigation documents
concerning the Wal-Mart and Kids-Med cases in a supplemental
disclosure statement to the PTO.
Additionally, both parties
agree that the ‘813 patent was explicitly discussed with the
Examiner, and the examiner stated that temperature measurements
of “a region of skin of the forehead” are not an obvious
extension of the ‘813 patent.
The examiner also distinguished
the ‘813 patent from the ‘938 patent by stating that the
“tympanic membrane is a protected area and as such is less
impacted by variations of temperature”; by contrast, he observed
that “the forehead has variable blood flow and is an exposed,
unprotected, and temperature dependent region.”
Exergen’s primary argument for summary judgment of no
inequitable conduct is that “characterizing the scope of these
patents was simply attorney argument that cannot constitute
There are several cases that support the
proposition that a “patent examiner [is] capable of
independently evaluating the material before him,” so, “the
representations as to how to interpret that material cannot be
the basis for a finding of inequitable conduct.”
Instruments Inc. v. LKB Produkter, AB, No. R-85-3133, 1987 WL
125109, at *2 (D. Md. Sept. 15, 1987); see also Gargoyles, Inc.
v. United States, 32 Fed. Cl. 157, 169 (1994) (“The fact that
plaintiffs attempted to distinguish the claimed invention from
prior art does not constitute a material omission or
misrepresentation where the patent examiner was free to reach
his own conclusion regarding the claimed invention on the art
before him.”); LifeScan, Inc. v. Home Diagnostics, Inc., 103 F.
Supp. 2d 379, 386 (D. Del. 2000), aff'd, 13 F. App'x 940 (Fed.
Cir. 2001) (“[E]ven if Plaintiff's characterization of the . . .
patents was inaccurate, the Court concludes that this
characterization would not rise to the level of a material
As the Federal Circuit has recognized, the
mere fact that a patent applicant attempts to distinguish its
patent from the prior art does not constitute a material
omission or misrepresentation where the patent examiner has the
prior art before him or her, and therefore, is free to make his
or her own conclusions regarding the claimed invention.”).
In the ‘938 patent prosecution, the ‘813, ‘238, and ‘435
patents were before the examiner, as were litigation documents
from Wal-Mart and Kids-Med; thus, prior art and material
information arising from prior related litigation was disclosed
to the examiner.
The dispute here is over attorney argument,
which lacks materiality in this setting because the examiner was
free to come to an independent conclusion with respect to the
‘938 patent with all of the disclosed information to inform the
The Federal Circuit has differentiated attorney arguments
attempting to distinguish prior art from “gross
mischaracterizations or unreasonable interpretations.”
Lumenis, Inc., 492 F.3d 1336, 1349 (Fed. Cir. 2007).
statement that the ‘813 patent does not disclose a device for
measuring body temperature on the forehead is not demonstrably
false, and merely demonstrates one interpretation of the ‘813
As Exergen points out, I previously stated that
Exergen’s legal position and prior statements on this matter “do
not foreclose a reasonable argument that the prior art patents
do not disclose or render obvious conducing measurements at the
skin of the forehead” and I have not previously found
“sufficiently clear and convincing evidence that this argument
Exergen Corp. v. Brooklands Inc., 125 F. Supp.
3d 307, 324 (D. Mass. 2015), appeal dismissed (Fed. Cir. No. 152087, Oct. 28, 2015).
I remain of the view that traditional
attorney argument is not a material misrepresentation.
Even if I were to assume materiality here and infer in
Brooklands’ favor that the ‘813 patent discloses temperature
measurement of the forehead, there can still be no inequitable
conduct without the requisite deceptive intent.
“To meet the
clear and convincing evidence standard, the specific intent to
deceive must be ‘the single most reasonable inference able to be
drawn from the evidence.’”
Therasense, Inc., 649 F.3d at 1290.
The “single most reasonable interference” standard applies at
Takeda Pharm. Co. v. TWi Pharm., Inc., 87 F.
Supp. 3d 1263, 1284 (N.D. Cal. 2015).
To be sure, Brooklands argues that there is a genuine issue
of material fact as to the intent prong of the inequitable
conduct inquiry, and that this issue is ill-suited for
resolution on summary judgment.
ICU Med., Inc. v. RyMed Techs.,
Inc., 752 F. Supp. 2d 486, 498 (D. Del. 2010).
In light of
developed Federal Circuit case law, I disagree.
The Federal Circuit, for example, upheld a grant of summary
judgment in a case where the inventor of a patent made a false
statement in distinguishing prior art. Vita-Mix Corp. v. Basic
Holding, Inc., 581 F.3d 1317, 1332 (Fed. Cir. 2009).
inventor stated that he believed his statement to be true at the
time he made it, and with no evidence of deceptive intent on the
record, the Federal Circuit determined that the district court
correctly granted summary judgment by finding that there was no
showing of deceptive intent.
The only evidence of deceptive intent offered by Brooklands
is that Attorney Smith contradicted Exergen’s litigation
positions and court decisions in the Wal-Mart case in attempting
to obtain the ‘938 patent.
Since the patent examiner had all of
the relevant information and could come to an independent
conclusion, it is not clear that the only inference that can be
drawn here points to deceptive intent, or even that a
misrepresentation as such was made.
Deceptive intent is not the
single most reasonable inference that can be drawn here,
especially because the complained of statements are attorneyargument and the examiner was provided all pertinent information
to make an independent decision regarding the ‘938 patent
Brooklands makes an independent stare decisis argument.
The doctrine of stare decisis holds that “determinations of law
are binding in future cases before the same court or another
court owing obedience to its decision.”
Boston Sci. Corp. v.
Schneider (Europe) AG, 983 F. Supp. 245, 255 (D. Mass. 1997),
dismissed sub nom. Boston Sci. Corp. v. Schneider (USA) Inc.,
152 F.3d 947 (Fed. Cir. 1998) (internal quotation marks omitted)
(quoting Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1570 (Fed.
Brooklands points to the Wal-Mart jury verdict,
which concluded that the ‘813 patent was valid, after Exergen
argued in that case and the jury found that the patent did not
apply to forehead thermometer measurements, a determination that
was not reversed on appeal.
The Federal Circuit has observed,
however, that stare decisis is generally inappropriate in the
posture of the litigation now before me, Stevenson v. Sears,
Roebuck & Co., 713 F.2d 705, 711 (Fed. Cir. 1983), where a prior
holding of validity does not encompass the complete record
regarding alleged inequitable conduct.
Cf. Nilssen v. General
Electric Co., 2008 WL 4921354 (N.D. Ill. No. 06-c-4155, Nov. 12,
Principles of stare decisis are not dispositive on the
outcome of this matter.
In sum, I conclude that Exergen has met its summary
judgment burden by showing that there is an absence of evidence
to support Brooklands’ case with respect to inequitable conduct
on a claim of affirmative misrepresentation in the ‘938 patent
prosecution by Exergen.
Celotex Corp. v. Catrett, 477 U.S. 317,
325 (1986) (“The burden on the moving party may be discharged by
‘showing’—that is, pointing out to the district court—that there
is an absence of evidence to support the nonmoving party's
Deliberate Withholding of Prior Art in the ‘685 Patent
Brooklands argues that Exergen committed inequitable
conduct by failing to disclose particular items to the PTO
during the ‘685 patent prosecution.
Brooklands asserts that
this invalidates the ‘938 patent through infectious
The doctrine of infectious unenforceability allows a trial
court to “look beyond the final claims to their antecedents,”
because “[c]laims are not born, and do not live, in isolation.”
Fox Indus., Inc. v. Structural Pres. Sys., Inc., 922 F.2d 801,
803–04 (Fed. Cir. 1990).
A unique feature of inequitable
conduct is that a finding of inequitable conduct renders the
entire patent unenforceable, and can also render related patents
Therasense, Inc., 649 F.3d at 1288–89 (“[T]he
remedy for inequitable conduct is the ‘atomic bomb’ of patent
A patent may render another patent unenforceable if
there is an “immediate and necessary” relationship between the
inequitable conduct and the patent-in-suit.
Energy Lab. Co. v. Samsung Elecs. Co., 749 F. Supp. 2d 892, 904
(W.D. Wis. 2010); see also Keystone Driller Co. v. Gen.
Excavator Co., 290 U.S. 240, 245 (1933) (unclean hands doctrine
only applies when there is an “immediate and necessary relation
to the equity that he seeks in respect of the matter in
As Brooklands states in its counterclaim, the
two patents share the same title, have similar specifications,
and relate to identical subject matters, and it is not disputed
that there is an immediate and necessary relation between the
‘635 and ‘938 patents.
Brooklands argues that Exergen committed inequitable
conduct in the ‘685 patent prosecution because it failed to
disclose U.S. Patent Nos. 4,566,808, 4,318,998, 6,047,025,
5,325,863, 5,469,855, RE 355,554, 5,017,019, 4,626,686,
4,602,642, 4,784,149, and 4,797,840, The Physician’s Desk
Reference Handbook, and the Marybeth Pompei Letters.
Exergen responds that since these patents were all
disclosed during the ‘938 patent prosecution there can be no
infectious inequitable conduct claim here.
The Federal Circuit
has held that an applicant who is aware of misrepresentations in
the prosecution of his application may cure this
misrepresentation by (1) expressly advising the PTO of its
existence, stating specifically where it resides, and (2) if the
misrepresentation is of facts, advising the PTO what the actual
facts are, with further examination by the PTO if any PTO action
has been based on this misrepresentation.
Rohm & Haas Co. v.
Crystal Chem. Co., 722 F.2d 1556, 1572 (Fed. Cir. 1983).
Earlier inequitable conduct in a chain of related patent
applications must be cured in accordance with Rohm & Haas or it
will continue to infect the process.
Semiconductor Energy Lab.,
Co. v. Samsung Elecs. Co., 24 F. Supp. 2d 537, 544 (E.D. Va.
1998), aff'd, 204 F.3d 1368 (Fed. Cir. 2000), amended (Apr. 5,
2000) (since no steps were taken to cure the directly related
inequitable conduct by identifying its previous omissions and
complying with the cure requirements to establish patentability
on a corrected record, the later patent is rendered
But see Applied Materials, Inc., 1994 WL
270714, at *3 (holding that failure to disclose prior art
reference in an abandoned application cannot be inequitable
conduct when the references were disclosed in a continuing
application); Grantley Patent Holdings, Ltd. v. Clear Channel
Commc'ns, Inc., 540 F. Supp. 2d 724, 733 (E.D. Tex. 2008) (“It
is difficult to imagine how any inequitable conduct with respect
to the . . . patent ‘infected’ the four later patents when those
patents explicitly incorporated the publication by reference
into their specifications.
Any potential defect was cured by
Where the alleged misconduct is the withholding of a
material prior art reference, district courts are split on
whether the Rohm & Haas requirements must be met.
v. Brokertec USA, L.L.C., 417 F. Supp. 2d 580, 596 (D. Del.
2006), aff'd, 480 F.3d 1129 (Fed. Cir. 2007).
In eSpeed, the
trial court distinguished the factual circumstances in that
case, when inequitable conduct was committed by withholding
prior art references during the prosecution of a patent
application leading to the issued patent, from Applied
Materials, Inc. v. Advanced Semiconductor Materials America, 30
U.S.P.Q. 2d 1967, 1969 (N.D. Cal. 1994), which dealt with
inequitable conduct in an abandoned patent application.
Instead, the eSpeed Court decided that its facts tracked more
closely with Semiconductor Energy Lab, which also involved
improper omissions in a successful patent application, and
determined that the patentee was obligated to satisfy the
requirements of Rohm & Haas to cure inequitable conduct.
eSpeed, Inc., 417 F. Supp. 2d at 596-97.
It is not settled
whether, or in what circumstances, subsequent disclosure alone
cures the prior withholding, but I need not come to a definitive
conclusion here because I grant Exergen’s motion for summary
judgment on other grounds.
In assuming that all of the omitted references were
material, Exergen focuses its argument as to these grounds on
the lack of evidence of deceitful intent.
In order to deny
summary judgment on no equitable conduct, I must find that
deceptive intent was the single most reasonable inference to be
drawn from the evidence at this stage of the proceedings.
Exergen Corp. v. Kaz USA, Inc., 120 F. Supp. 3d 1, 7 (D. Mass.
2015); Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1351
(Fed. Cir. 2013).
Neither the nondisclosure of prior art
references to the PTO nor failure to mention prior art
references in an affidavit amount to affirmative egregious
misconduct here, and inequitable conduct claims that are based
on such omissions require proof of but-for materiality.
Therasense, Inc., 649 F.3d at 1292–93.
Under the Therasense
standard, to prove specific intent the accused infringer “must
prove by clear and convincing evidence that the applicant knew
of the reference, knew it was material, and made a deliberate
decision to withhold it.”
Therasense, Inc., 649 F.3d at 1290;
see also Optium Corp. v. Emcore Corp., 603 F.3d 1313, 1320–21
(Fed. Cir. 2010) (“In situations of nondisclosure of information
rather than affirmative misrepresentation, ‘clear and convincing
evidence must show that the applicant made a deliberate decision
to withhold a known material reference.’”).
intent on materiality of omitted information is insufficient
under the Therasense standard because a district court may not
infer intent solely from materiality.
F.3d at 1290.
Therasense, Inc., 649
Additionally, a patentee is not required to
provide any good faith explanation for his conduct unless and
until an accused infringer has met his burden to prove intent to
deceive by clear and convincing evidence.
1st Media, LLC v.
Elec. Arts, Inc., 694 F.3d 1367, 1373 (Fed. Cir. 2012).
Brooklands argues that there is still a genuine question of
material fact concerning intent, but it has failed to adduce any
evidence that could make deceptive intent the single most
reasonable inference to be drawn from the evidence at this
Exergen argues, and Brooklands fails to rebut with any
evidence, that Dr. Pompei and Attorney Smith believed the prior
art to be immaterial or already adequately disclosed.
discussion of items that Brooklands claims that Exergen should
have disclosed puts the argument in focus.
patents that disclose measuring surface temperatures: U.S.
Patent No. 4,566,808 discloses heat loss and temperature
differences for buildings, plumbing, machinery, as well as
animals and humans to detect inflammation or lack of
circulation; 5,017,019 discloses a radiation detector that
provides differential temperature readings for animals and
humans, and describes scanning the leg of a horse to detect
injury; RE 35,554 discloses a radiation detector that detects
temperature across a surface with a temperature display and
discusses infrared inspection of electrical equipment; 4,626,686
discloses a “variable field of view heat scanner”; and 4,797,840
discloses an infrared thermometer for medical use and use on the
Exergen argues that there is no evidence that Dr.
Pompei or Attorney Smith considered these any more relevant than
other provided disclosures, which included U.S. Patent No.
4,636,091, a patent that describes a device used to measure the
surface temperature anywhere on the skin surface of a patient.
Under the circumstances, there is no evidence that the single
most reasonable inference to be drawn here is the intent to
Next, Exergen discusses the ear thermometer patents that
were not disclosed, including: U.S. Patent No. 6,047,205, which
discloses a method of detecting the temperature of biological
tissue; 5,325,863, which describes a radiation detector for body
temperature; 5,469,855, which discloses a continuous temperature
measurement device; and 4,602,642, which discloses an apparatus
for measuring body temperature utilizing infrared emissions by
taking measurements across a surface.
In addition, there are
two other patents that Brooklands claims Exergen should have
submitted in the ‘635 patent prosecution: U.S. Patent No.
4,317,998, which discloses a scanning radiation detecting
apparatus; and 4,784,149, which is an infrared thermometer
designed to measure the temperature of tissue of a body cavity.
Exergen argues that no intent can be established because
other patents — such as the U.S. Patent No. 4,428,382, which
discusses measuring skin temperature by scanning “across a
predetermined part of the body” — that address “scanning across
a surface” were before the PTO during the ‘685 prosecution.
Additionally, Exergen points to U.S. Patent 5,050,612, a
disclosed reference, which Exergen admitted teaches body
temperature at the forehead, but was able to distinguish this
patent during the ‘685 prosecution because “it does not teach
the computation of body temperature value as a variable
weighting or calibration function of ambient temperature and
sensed surface temperature.”
Brooklands offers no additional
evidence of intent, other than the failure to disclose the prior
Under these circumstances, I cannot conclude there is a
genuine issue whether deceptive intent is the single most
reasonable inference that can be made regarding the omitted
prior art references.
Brooklands also claims inequitable conduct for failure to
disclose the Physician’s Reference Handbook during the ‘685
prosecution, which discloses the use of heat-sensitive liquid
crystal strips affixed to the forehead to measure body
temperature and the use of infrared thermometers to detect body
temperatures across a surface.
Exergen argues that the
Physician’s Reference Handbook merely describes previously
disclosed inventions, including the ‘091 patent, which was
disclosed in the ‘685 prosecution and the ‘813 patent which
discloses temperature measurements in the inner ear.
again, Brooklands has failed to offer clear and convincing
evidence of deceptive intent, and there are other inferences
that can be drawn from the evidence, such as a good faith belief
that this information was not material.
See Exergen Corp. v.
Kaz USA, Inc., 120 F. Supp. 3d at 7 (holding that there was no
deceptive intent in Exergen’s failure to disclose the
Physician’s Reference Handbook].
Lastly, Brooklands argues specific intent to deceive by not
disclosing the Marybeth Pompei letters.
In these letters there
is a consideration of an “arterial thermometer” to measure body
temperature at the ear, but that approach had not yet been fully
As Exergen argues, it is not even clear that this is
prior art, but even if it is, Brooklands makes no showing of
deceptive intent in Exergen’s failure to submit this material
during the ‘685 patent prosecution.
Overall, there are multiple inferences that can be drawn
from each of the withheld pieces of information.
does not present evidence to make deceptive intent the single
most likely inference.
Indeed, deceptive intent seems the least
likely of inferences.
Even taking all inferences in Brooklands’
favor, I find no basis not to grant Exergen’s motion for summary
judgment as to this branch of the inequitable conduct claim.
Mischaracterizing the State of the Art During the ‘685
The last argument that Brooklands makes is that Exergen
mischaracterized the state of the art during the ‘685 patent
Brooklands bases its argument on the fact that
Exergen’s marketing materials state that “[t]he temporal artery
area has a long history of temperature measurement, dating back
to the early centuries before Christ,” which Brooklands views as
confirming the existence of prior art with the same claims as
the ‘685 patent that Dr. Pompei and Attorney Smith represented
as not being found in prior art.
Brooklands claims that if the
examiner had known of the statements on Exergen’s marketing
materials, the ‘685 patent would not have been issued.
however, responds that its brochure, which was disclosed during
the ‘685 patent prosecution, corresponds exactly to the text
from Exergen’s website marketing materials which the examiner
was able to consider while evaluating whether to issue the
Moreover, as Exergen argues, the identified statement
does not disclose actual forehead temperature measurement,
rather it merely discusses the historical practice of touching
the forehead to feel for warmth to gauge the status of a
In sum, there was no mischaracterization of
prior art in this regard.
For the foregoing reasons, I GRANT Exergen’s motion [#156]
for summary judgment as to inequitable conduct.2
/s/ Douglas P. Woodlock________
DOUGLAS P. WOODLOCK
UNITED STATES DISTRICT JUDGE
To bring this case definitively to a conclusion, I also GRANT
Brooklands’ motion [#138] to dismiss its antitrust counterclaims
thereby rendering MOOT Exergen’s motion [#126] for entry of a
Rule 54(b) judgment and a stay pending appeal.
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?