STC.UNM v. Intel Corporation

Filing 105

BRIEF re 102 Order on Motion for Leave to File, 103 Response, by STC. UNM (Pedersen, Steven)

Case 1:10-cv-01077-RB-WDS Document 101-1

Filed 06/03/11 Page 1 of 3

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
STC.UNM,
Plaintiff,
v.
INTEL CORPORATION,

Civil No. 10-CV-01077-RB-WDS

Defendant.

STC'S SUBMISSION OF SUPPLEMENTAL AUTHORITY
OF AN EN BANC FEDERAL CIRCUIT DECISION IN SUPPORT OF ITS
12(b)(6) MOTION TO DISMISS INTEL'S COUNTERCLAIM AND
AFFIRMATIVE DEFENSE FOR INEQUITABLE CONDUCT
On May 25, 2011, the Federal Circuit issued an en banc decision that changed
the standard for the materiality prong of an inequitable conduct charge – the prong
upon which STC's pending summary judgment motion is based. See Therasense,

Inc. v. Becton, Dickinson & Co., 2011 U.S. App. LEXIS 10590 (Fed. Cir. May 25,
2011). Preliminarily, the Federal Circuit noted the detrimental consequences
attendant to the inequitable conduct defense generally. The following are
representative:
-

'[T]he habit of charging inequitable conduct in almost every major
patent case has become an absolute plague' (id. (citation omitted));

-

Inequitable conduct 'has been overplayed, is appearing in nearly every
patent suit, and is cluttering up the patent system' (id. at 29 (citation
omitted));

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Case 1:10-cv-01077-RB-WDS Document 101-1

Filed 06/03/11 Page 2 of 3

-

Because the [inequitable conduct] doctrine focuses on the moral
turpitude of the patentee with ruinous consequences for the reputation
of his patent attorney, it discourages settlement and deflects attention
from the merits of validity and infringement issues (id. at *27); and

-

Inequitable conduct disputes also 'increas[e] the complexity, duration
and cost of patent infringement litigation that is already notorious for
its complexity and high cost' (id.).

The Federal Circuit noted that, historically, it had attempted to address the
afore-described proliferation of inequitable conduct charges "by raising the intent
standard alone." Id. at 35. In Therasense, the court examined the materiality prong
of inequitable conduct in an effort to stem further the tide of such charges, holding
that:
[A]s a general matter, the materiality required to establish inequitable
conduct is but-for materiality. When an applicant fails to disclose prior
art to the PTO, that prior art is but-for material if the PTO would not
have allowed a claim had it been aware of the undisclosed prior art.
Hence, in assessing the materiality of a withheld reference, the court
must determine whether the PTO would have allowed the claim if it
had been aware of the undisclosed reference.

Id. at 37.1
Therasense is instructive in assessing Intel's inequitable conduct charge. With
regard to the Zaidi reference, as noted in STC's motion papers, given the certificate
of correction that issued with regard to the '998 patent, that reference would have
failed to qualify as prior art at all, let alone as the "but for" prior art now required
under Therasense.

Intel submitted an amicus brief that argued that no change was necessary to the
materiality prong of the defense. Id. at 8. That argument was rejected by the en
banc decision.
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Case 1:10-cv-01077-RB-WDS Document 101-1

Filed 06/03/11 Page 3 of 3

As for the certificate of correction, as STC has explained, everything having to do
with that certificate, and STC's request therefor, was of record. It is difficult to
imagine how information of record could ever rise to the kind of "but for" materiality
now required. Thus, the Federal Circuit’s holding in Therasense further supports
granting STC's motion for summary judgment.

Dated: June 3, 2011

Respectfully submitted,

Deron B. Knoner
KELEHER & MCLEOD, P.A
201 Third Street NW, 12th Floor
PO Box AA
Albuquerque, New Mexico 87103
[phone]

/s/ Steven R. Pedersen
Rolf O. Stadheim
Joseph A. Grear
George C. Summerfield
Keith A. Vogt
Steven R. Pedersen
STADHEIM & GREAR, LTD.
400 N. Michigan Avenue, Suite 2200
Chicago, Illinois 60611
[phone]

Attorneys for Plaintiff STC.UNM

Certificate of Service: I hereby certify that on June 3, 2011, I caused the foregoing to
be electronically filed with the Clerk of the Court using the CM/ECF system which
will send notification of such filing via electronic mail to all counsel of record.
/s/ Steven R. Pedersen

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