Whether something is material has been addressed in various ways over time – in both case law and PTO Rule 56. As explained by the Federal Circuit, at least three different tests of materiality have been spawned in the courts. One, is the objective "but for" standard, “where the misrepresentation was so material that the patent should not have issued.” Two, is the subjective "but for" test, “where the misrepresentation actually caused the examiner to approve the patent application when he would not otherwise have done so.” Three, is the "but it may have" standard, “where the misrepresentation may have influenced the patent examiner in the course of prosecution.” The Federal Circuit pointed out that Rule 56 was a fourth test of materiality, and that this PTO standard was "’an appropriate starting point for any discussion of materiality, for it appears to be the broadest, thus encompassing the others and because that materiality boundary most closely aligns with how one ought to conduct business with the PTO.’"

1. LOS ANGELES INTELLECTUAL PROPERTY LAW ASSOCIATION PAGE 3
Article: Defining the Undefinable - Intentional, by: Michael A. Shimokaji
Shimokaji & Associates, P.C., Irvine
Material Misstatements and Omissions
Before the Patent Office
The views and opinions expressed in this article are those solely of the author(s) and are not of the Los Angeles
Intellectual Property Law Association or its members.
The Federal Circuit recently has sought to provide us with further definitions of perhaps the undefinable –
intentional, material misstatements and omissions before the patent office. In Digital Control, Inc. v. The Charles
Machine, 437 F.3d 1309 (Fed. Cir. 2006), following summary judgment, the Federal Circuit found that there were
genuine issues of material fact concerning the materiality of withheld prior art but none as to the materiality of
misstatements in an inventor’s declaration.
The patent-in-suit related to monitoring the orientation of an underground boring tool. In response to a prior art
rejection by the patent office, the inventor submitted a declaration stating that the inventor had reduced his invention
to practice before the prior art reference. The patent office then withdrew the rejection. Also, during the prosecution
of a separate and unrelated patent application, the inventor submitted as prior art a particular patent. But the inventor
did not submit that same patent in the prosecution of the patent-in-suit.
The Federal Circuit explained that a “patent may be rendered unenforceable for inequitable conduct if an
applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially
false information to the PTO during prosecution.” A “court must then determine whether the questioned conduct
amounts to inequitable conduct by balancing the levels of materiality and intent, ‘with a greater showing of one factor
allowing a lesser showing of the other.’” Id. at 1313.
At least three different tests of materiality have been spawned in the courts. One, is the objective “but for”
standard, “where the misrepresentation was so material that the patent should not have issued.” Two, is the subjective
“but for” test, “where the misrepresentation actually caused the examiner to approve the patent application when he
would not otherwise have done so.” Three, is the “but it may have” standard, “where the misrepresentation may have
influenced the patent examiner in the course of prosecution.” Id. at 1315.
Rule 56 is a fourth test of materiality, and that this PTO standard is “’an appropriate starting point for any discus-
sion of materiality, for it appears to be the broadest, thus encompassing the others and because that materiality
boundary most closely aligns with how one ought to conduct business with the PTO.’” Id. at 1315.
Interestingly, the Federal Circuit emphasized that there was “’no reason to be bound by any single standard,’ as
a finding of inequitable conduct requires a balancing of materiality and intent.” “Thus, where ‘a reasonable examiner
would merely have considered particular information to be important but not crucial to his decision’ the requisite
finding of intent must be high. Conversely, where an objective ‘but for’ standard of materiality is shown, ‘a lesser showing
of facts from which intent can be inferred may be sufficient.’” In other words, “to the extent that one standard requires
a higher showing of materiality than another standard, the requisite finding of intent may be lower.” Id. at 1315-16.
The Federal Circuit agreed that there was “no genuine issue of material fact as to the materiality of the misstate-
ments in the Rule 131 declaration.” Id. at 1317. The declaration stated that the inventor demonstrated his system
underground and that a sensor was within the boring tool. But in deposition, the inventor admitted that he did not
demonstrate his invention underground and that the sensor was not within the boring tool. Id.
The Federal Circuit determined that “a reasonable examiner would have considered the true nature of Dr.
Mercer’s reduction of the invention to practice to be important in deciding whether to allow the patent. Under the
‘reasonable examiner’ standard, a misstatement or omission may be material even if disclosure of that misstatement or
omission would not have rendered the invention unpatentable.” Id at 1318.
Turning to the intent behind the misstatements, the Federal Circuit said that “‘the involved conduct, viewed in
light of all the evidence, including evidence of good faith, must indicate sufficient culpability to require a finding of
intent to deceive.’” “Intent need not be shown by direct evidence, but may be inferred from the totality of the
evidence.” Id. In that regard, the patentee was “’an extremely experienced inventor’”, had applied for “numerous
patents”, and served “as an expert witness in patent litigation.” “ Id. at 1319-20.
Continued on page 7

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Article: Defining the Undefinable Continued from page 3
In contrast to misstatements, such as in an inventor’s declaration, if there is alleged withholding of information,
‘there must be clear and convincing evidence that the applicant made a deliberate decision to withhold a known
material reference.’ . . . Thus, the reference must be material . . . and the patentee must have actual knowledge of the
prior art reference.” “However, a withheld otherwise material prior art reference is not material for the purposes of
inequitable conduct if it is merely cumulative to that information considered by the examiner.” Id. at 1318-19.
The Federal Circuit regarded “the scope and content of prior art and what the prior art teaches [as] questions
of fact.” In the case at hand, “[b]ecause there are genuine issues of material fact as to what the [alleged cumulative]
reference teaches, and thus whether the [withheld] patent is cumulative of the [alleged cumulative] patent, the issue
of whether the failure to disclose the [withheld] patent was a material omission was not properly decided at summary
judgment.” Id at 1319.
The Federal Circuit noted that, “in this case, the district court did not parse its analysis of the misstatements in
the Rule 131 declaration from its analysis of the failure to disclose the [withheld] patent. As a result, we are unable to
tell how heavily the district court’s finding of inequitable conduct relied on its proper grant of summary judgment on
the materiality of the misstatements in the Rule 131 declaration and how heavily it relied on its improper grant of
summary judgment on the materiality of the failure to disclose the [withheld] patent.” Id. at 1321.
So where does the patent practitioner go from here?
In the area of misstatements, the following may minimize the potential for misstatements to occur:
1. avoid submitting inventor declarations when possible;
2. do not create an atmosphere of an inventor rubber-stamping the declaration you drafted;
3. in a response to an office action or an inventor declaration, say less rather than more
4. in both office action responses and declarations, say more about what prior art references, test data,
and the like explicitly state, and less about how you or the inventor interpret what they mean;
5. if you are not sure about something (e.g., foreign patent abstract), say so.
In the area of withholding information, the following can be considered:
1. when in doubt, disclose it (however, proposed rule changes may require additional reporting if more
than 20 references)
2. if a prior art search is performed (particularly by a professional search firm), disclose all results;
3. throughout prosecution (not just at the beginning or end), remind the inventor of the duty to disclose;
4. determine if art cited in related cases (e.g., CIP, divisional) needs to be cited in the case at hand;
5. avoid documenting each reference you “considered” or “thought about” for possible disclosure.
The bottom line recommendation is to exercise good faith in disclosing/not disclosing information – as it will likely carry
significant weight in the balance of intent versus materiality. In other words, in the eyes of a judge, good faith is
probably going to be the deciding point, irrespective of materiality.
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