Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 21
(b) Under this section, information is material to patentability when it is not
cumulative to information already of record or being made of record in the
application, and
(1) It establishes, by itself or in combination with other information, a
prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability,
In requiring both materiality and intent, United States Patent and Trademark
Office practice corresponds to the practice in Article III courts:
Inequitable conduct includes affirmative misrepresentation of a material
fact, failure to disclose material information, or submission of false
material information, coupled with an intent to deceive.
Board of Ed. v. Am. Bioscience, Inc., 333 F.3d 1330,1343, 67 USPQ2d 1252, 1261
(Fed. Cir. 2003). The standard methodology for determining inequitable conduct
involves three steps. First, find whether the conduct meets a threshold level of
materiality. Second, find whether the conduct meets a threshold level of intent. Finally,
if the threshold levels have been found, weigh them to determine whether the conduct
is so culpable that the patent should be held unenforceable. Id., 333 F.3d at 1343,
67 USPQ2d at 1261-62.
In proceedings before the United States Patent and Trademark Office, as in
Article III court proceedings, the facts of inequitable conduct must be established by
clear and convincing evidence for both applications and patents. See In re Harita,
847 F.2d 801, 808, 6 USPC12d 1930, 1935 (Fed. Cir. 1988) (ex parte application);
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