Addressing the duty of candor imposed on patentees, the U.S. Court of Appeals for the Federal Circuit upheld an inequitable conduct decision based on submission of misleading information to the U.S. Patent and Trademark Office (USPTO) during prosecution of a patent application. Frazier, et al. v. Roessel Cine Photo Tech, Inc., et al., Case Nos. 04-1060, -1092 (Fed. Cir. Aug. 2, 2005) (Linn, J.).

Photographer and filmmaker James Frazier invented a special trick photography lens, which he named "the ‘Z’ lens." Similar lenses known in the art included "AI" and "L-shaped" lenses. Frazier sought a patent for his "Z" lens on the basis it had superior depth-of-field characteristics.

The patent application encountered a series of rejections, which Frazier repeatedly addressed by arguing his "Z" lens increased the achievable depth of field. In response to the fourth such rejection, Frazier submitted a video "in the interests of demonstrating to the Examiner the features and uniqueness of the optical system of this patent application." However, many of the demonstrative scenes depicted on the video were shot with the "IA" or "L-shaped" lens, not with the claimed "Z" lens. The district court held the video submission constituted inequitable conduct and held the patent unenforceable.

A holding that a patent is unenforceable due to inequitable conduct requires underlying findings of materiality and intent to deceive the USTPO. On appeal, Frazier challenged both prongs. As for the district court’s finding of materiality, he argued there was insufficient proof to show the examiner was misled by the video since the claimed "Z" lens was capable of producing the shots on the video even though a different type of lens had been used to actually produce the video. The court held that mere submission of the video depicting footage shot with lenses other than the claimed invention constituted a sufficiently material misrepresentation without regard to whether the claimed "Z" lens could have created the same shots.

As for the district court’s finding of intent, even though Frazier had not disclosed that portions of the video were not shot with the claimed lens, he argued he could not have intended to deceive unless he believed the claimed lens was incapable of achieving the depth of field of prior art lenses. Since he believed the claimed invention could have produced the scenes shown in the video, he essentially believed his video submission was "good enough" and was not deceptive. In other words, Frazier argued that a finding of intent would require proof he subjectively believed the video submission was deceptive.

The Federal Circuit roundly rejected Frazier’s argument, pointing out it has "repeatedly said that direct evidence of intent is unavailable in most cases and unnecessary in any event." In this case, it was enough that Frazier allowed a video to be submitted to the USPTO in order to represent the capabilities of the claimed lens, knowing that portions of the video were shot with a different lens.

Importantly, the Court articulated that its holding does not embrace every instance of an erroneous submission of information to the USPTO with knowledge of the error. "Such conduct may sometimes be properly characterized as gross negligence, which ‘does not itself justify an inference of intent to deceive.’" However, where the false submission is made with knowledge and for the stated purpose of representing the capabilities of the claimed invention, the intent prong is satisfied.

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