not prove that David took irreconcilable and inconsistent positions. Whether or not the respective
positions are irreconcilable and inconsistent depends on a variety of factual considerations. These
include, but are not necessarily limited to: (1) the standards of patentability in the foreign
jurisdictions, including applicable standards for “obviousness”; (2) the prerequisites for a reference
to be considered prior art in the foreign jurisdictions; (3) the principles of claim construction in the
foreign jurisdiction, including the impact of statements in the specification on the scope of the claim;
(4) the prosecution history of the foreign applications including the rejections made, the references
relied upon against patentability, and the arguments made in response to the rejections; (5) the
procedures available in the foreign patent offices to overcome initial determinations of unpatentability;
and (6) the similarity between the rejections made in the PTO and in the foreign patent offices.
Without this factual background it is not possible to determine if inconsistent and irreconcilable
positions were taken. For example, amendments and arguments made in a U.S. application to secure
allowance of the claims may not be necessary where the principal reference relied upon in the U.S.
is not prior art in the foreign jurisdiction. Thus, narrowing amendments, arguments, or evidence
showing that a particular limitation was critical would not be necessary in the foreign jurisdiction.
Under these circumstances, as well as many others, the fact that claims without a “critical limitation”
were pursued and secured in the foreign jurisdiction is not inconsistent or irreconcilable with the
position taken in the United States.
Here, Engvall has provided neither the necessary background information and evidence nor
explained how the positions taken in the foreign patent offices and in the PTO are irreconcilable and
inconsistent. We are unwilling to find that inconsistent positions were taken based solely on the fact
that broad claims lacking a “critical” limitation were pursued and obtained in foreign jurisdictions.
We find that Engvall has not proved that David’s assertion of broader claims in foreign patent
offices is inconsistent and irreconcilable with the assertions of criticality of the affinity constant made
in the proceedings in the PTO. Accordingly, we hold that on the record before us, David has not
violated the duty of disclosure to the PTO.
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