This month, the US District Court for Massachusetts rejected an inequitable conduct claim in a patent infringement case involving voice recognition technology. While US District Judge Patti B. Saris denied Nuance's inequitable conduct claim, she also rejected SynKloud's motion for sanctions against Nuance for initially bringing an allegedly baseless inequitable conduct claim.
In March 2020, SynKloud Technologies sued Nuance Communications, Inc. for patent infringement of voice recognition technology. Nuance counterclaimed for inequitable conduct alleging that the named inventor on SynKloud's involved patent intended to deceive the Patent Office when he failed to disclose two relevant prior art references during the prosecution of the patent. SynKloud denied the inequitable conduct claims and moved for partial summary judgment, claiming there was no evidence of an intent to deceive the Patent Office because the inventor did not know of the undisclosed references and the undisclosed references were not material.
The court held that Nuance failed to present sufficient evidence to meet its burden to prove that the named inventor made a deliberate decision to withhold the two references; indeed, the evidence did not support that the inventor even knew about the references, much less that there was a deliberate decision to withhold them. Further, the court held that sanctions for filing the inequitable conduct claim were unwarranted.
This holding reinforces the high burden required to prove the requisite intent to deceive the Patent Office for inequitable conduct claims.
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