Intellect Wireless, Inc. v. HTC Corp., No. 09 C 2945, Slip Op. (N.D. Ill. Sep. 6, 2012) (Hart, Sen. J.).
Judge Hart entered findings of fact and conclusions of law after a patent bench trial related to cell phones with caller ID, text messaging, pictures or video. The Court dismissed with prejudice plaintiff Intellect Wireless’s patents because they were unenforceable due to inequitable conduct. Of particular interest, the Court held the following:
- Several declarations submitted to the PTO during prosecution of the patents in suit contained false statements regarding inventions, reduction to practice and diligence.
- The declarations were necessary to procure the patents in suit.
- None of the false statements were withdrawn, corrected or identified to the patent examiner.
- The clear and convincing evidence “strongly support[ed]” that the false statements were made with an intent to deceive, not just by mistake.
Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).
Judge Dow issued his opinion, findings of fact and conclusions of law following a bench trial conducted during October and November 2010 on the issues of validity and enforceability of plaintiffs’ patent for Hectorol, an injectable drug for treating hyperparathyroidism secondary to end-stage renal disease. The Court held the patent valid and enforceable. Of particular note:
- Per the parties’ stipulation, defendants infringed claim 7 of the patent.
- Plaintiffs were entitled to a 1988 priority date.
- The articles and evidence offered by defendants did not meet the burden of showing that plaintiffs’ invention was inoperable.
- There was no showing that plaintiffs’ invention was obvious in 1988, although it was a “good candidate for further study.”
- The references that plaintiffs allegedly failed to disclose to the Patent Office were irrelevant because they all published after the 1988 priority date.
Intellect Wireless, Inc. v. HTC Corp., No. 09 C 2945, Slip Op. (N.D. Ill. Mar. 2, 2012) (Hart, Sen. J.).
Judge Hart denied defendant’s (collectively “HTC”) motion for summary judgment of inequitable conduct based upon the submission to the Patent Office of allegedly false and misleading declarations. The Court held that there were disputed questions of fact preventing summary judgment, without elaborating upon what facts were disputed. And based upon the parties’ papers, the Court reversed the inequitable conduct claims for an early bench trial.
The Court then ordered that, within four weeks, the parties file:
- Statements of undisputed facts;
- Proposed conclusions of law;
- Exhibit lists; and
- Witness lists.
This appears to be another example in the growing trend of Northern District judges looking for ways, like mini-Markmans and early Rule 30(b)(6) depositions, to streamline patent cases.