Intellect Wireless, Inc. v. HTC Corp.
By Mary Schnoor – Edited by Kathleen McGuinness
Intellect Wireless, Inc. v. HTC Corp., No. 12-1658 (Fed. Cir. October 9, 2013)
On October 9th, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s judgment that two patents owned by Intellect Wireless, Inc. (“Intellect”) are unenforceable due to inequitable conduct. Intellect Wireless, Inc. v. HTC Corp., No. 12-1658, 1 (Fed. Cir. October 9, 2013). Intellect had claimed that HTC Corp., the Taiwanese smartphone maker, infringed patents covering technology allowing a wireless device to receive and display caller identification information. Id.
The Federal Circuit unanimously upheld the lower court’s decision, which found that Daniel Henderson, the founder of Intellect and inventor of the patents in question, intentionally submitted false statements as part of his Rule 131 declaration to the U.S. Patent and Trademark Office (“USPTO”) and that his actions satisfied the Therasense standard for inequitable conduct. Id. at 3. During the prosecution of the patents, Henderson made false statements to the USPTO, claiming that he had actually reduced his invention to practice and that he had demonstrated it at a meeting in 1993. Id. at 4. Although Henderson’s attorney attempted to cure this misconduct by submitting revised declarations, the court’s opinion emphasized that such efforts to cure misconduct will be unsuccessful unless they explicitly acknowledge the false declaration’s existence to the USPTO and clearly state what was false and what the actual facts are. Id. at 5-6.
IPFrontline explains the court’s ruling and the lessons it provides for patent attorneys seeking to correct false declarations. PharmaPatents also reviews the ruling, and PatentlyO provides a brief summary. (more…)