United States
Court of Appeals for the Federal Circuit | [1] Case No.: 2006-1550 [2] Case Name: NILSSEN, ET AL. V. OSRAM SYLVANIA, INC., ET AL.. |
| [3] Date of Decision: October 10, 2007 |
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| [4] FEDERAL CIRCUIT AFFIRMED DISTRICT COURT HOLDING THAT 15 PATENTS THAT HAD BEEN ISSUED TO PLAINTIFF PATENT HOLDER WERE UNENFORCEABLE DUE TO INEQUITABLE CONDUCT. | [6] Key Words: Inequitable Conduct, unenforceable |
| [5] Patent No(s).: 4,857,806; 5,164,637; 5,233,270; 5,343,123; 5,402,043; 5,416,386; 5,432,409; 5,479,074; 5,481,160; 5,510,680; 5,510,681; 4,677,345; 5,047,690; 5,189,342; 5,341,067 | [7] Case Link:
http://www.cafc.uscourts.gov/opinions/06-1550.pdf |
Procedural Background: | Summary of the Case: |
Plaintiff-Appellants patent holder and licensee sued defendant manufacturer for infringing 11 of patent holder's patents in the United States District Court for the Northern District of Illinois. The District Court reviewed the 11 patents as well as four patents that had been withdrawn shortly before trial and found that all 15 patents were unenforceable because the patent holder had engaged in inequitable conduct. The Federal Circuit found that the District Court had not abused its discretion when it considered all 15 patents, and upheld the District Court's judgment that all 15 patents were unenforceable due to inequitable conduct. 
| The patents-in-suit related to electrical lighting products. After initially relying on attorneys to prosecute his patents, Plaintiff-Appellant began prosecuting his own patent applications, including those resulting in the patents-in-suit. Eventually, Plaintiffs patent holder and company-licensee sued defendant manufacturer for infringement of 15 of patent holders patents. Although the patent holder withdrew claims under four patents before trial the District Court reviewed all 15 of the patents. In affirming the District Court's finding of unenforceability due to inequitable conduct the Federal Circuit first concluded that the District Court had not abused its discretion in reviewing all 15 patents, including the four that had been withdrawn before trial. The Federal Circuit held that the four related patents were properly reviewable because inequitable conduct with respect to one or more patents in a family can infect related applications. Additionally the four patents were withdrawn from the suit only shortly before trial at the last minute and it was not an abuse of discretion for the District Court to hold these patents unenforceable when they had been maintained in the suit up until just before trial. Next, the Federal Circuit upheld the finding of inequitable conduct on several grounds, including the fact that the patent holder claimed small entity status after he transferred his interest in the patents to the licensee, patent holder misclaimed priority, patent holder failed to disclose litigation that would have been material to his claims for patentability, patent holder failed to disclose prior art, and patent holder failed to disclose a financial relationship he had with an expert who submitted affidavits supporting patent holder's claims. |