U.S. Water Services, Inc. v. Novozymes A/S

United States Court of Appeals
for the Federal Circuit
______________________

U.S. WATER SERVICES, INC., ROY JOHNSON,
Plaintiffs-Appellants

v.

NOVOZYMES A/S, NOVOZYMES NORTH AMERICA,
INC.,
Defendants-Cross-Appellants
______________________

2015-1950, 2015-1967
______________________

Appeals from the United States District Court for the
Western District of Wisconsin in No. 3:13-cv-00864-JDP,
Judge James D. Peterson.
______________________

Decided: December 15, 2016
______________________

MICHELLE MARIE UMBERGER, Perkins Coie, LLP, Mad-
ison, WI, argued for plaintiffs-appellants. Also represent-
ed by JOHN SINGLETON SKILTON, AUTUMN N. NERO, DAVID
J. HARTH, BRANDON MICHAEL LEWIS; COLIN GENE
SANDERCOCK, Washington, DC.

DAVID KEITH TELLEKSON, Fenwick & West LLP, Seat-
tle, WA, argued for defendants-cross-appellants. Also
represented by EWA M. DAVISON, PHILLIP DECKER,
ELIZABETH B. HAGAN; VIRGINIA KAY DEMARCHI, MICHAEL
C. SAUNDERS, II, Mountain View, CA.
2 U.S. WATER SERVS., INC. v. NOVOZYMES A/S

______________________

Before WALLACH, HUGHES, and STOLL, Circuit Judges.
WALLACH, Circuit Judge.
U.S. Water Services, Inc. and Roy Johnson (together,
“U.S. Water”) sued Novozymes A/S and Novozymes North
America, Inc. (together, “Novozymes”) in the U.S. District
Court for the Western District of Wisconsin (“District
Court”), alleging indirect infringement of U.S. Patent Nos.
8,415,137 (“the ’137 patent”) and 8,609,399 (“the ’399
patent”) (together, “the Patents-in-Suit”). Novozymes
counterclaimed for declaratory judgment of noninfringe-
ment, invalidity, and inequitable conduct. The parties
later filed cross-motions for summary judgment. The
District Court granted Novozymes’s Motion in part,
finding claims 1, 6, and 12–13 of the ’137 patent and
claims 1–2, 5–12, 16–22, 25, 28–32, and 34–35 of the ’399
patent (collectively, “the Asserted Claims”) invalid as
inherently anticipated by various prior art references.
U.S. Water Servs., Inc. v. Novozymes A/S, 120 F. Supp. 3d
861, 868–82 (W.D. Wis. 2015). However, the District
Court denied Novozymes’s Motion as to inequitable con-
duct by U.S. Water. Id. at 882–83.
U.S. Water appeals the District Court’s anticipation
finding. Novozymes cross-appeals the District Court’s
finding of no inequitable conduct. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1) (2012). We vacate-in-
part, affirm-in-part, and remand for further proceedings
consistent with this opinion.
BACKGROUND
I. The Relevant Patents
The technology at issue relates to the production of
ethyl alcohol (i.e., ethanol) from a milled grain. Ethanol
production yields an insoluble byproduct that deposits on,
or “fouls,” the processing equipment. See, e.g., ’399 patent
U.S. WATER SERVS., INC. v. NOVOZYMES A/S 3

col. 1 ll. 34–38; J.A. 1376–90 (Confidential Material). The
Patents-in-Suit disclose methods for reducing or prevent-
ing fouling. See ’399 patent col. 3 ll. 21–24; ’137 patent
col. 1 ll. 50−53.
The Patents-in-Suit share a common specification and
are related to one another as continuations of the applica-
tion that also led to U.S. Patent No. 8,039,244 (“the ’244
patent”) (collectively, “the Patent Family”). 1 J.A. 135,
144. The Patent Family generally claims methods of
reducing fouling through the use of phytase. 2
Each patent discloses the addition of the enzyme
phytase at various points in the ethanol production pro-
cess. For example, the ’244 patent is entitled “Reducing
Insoluble Deposit Formation in Ethanol Production” and
discloses the addition of phytase after fermentation has
finished. See ’244 patent col. 12 ll. 9–13 (reciting “adding
phytase to . . . thin stillage, backset, or [a] mixture thereof
containing phytic acid or salts of phytic acid under condi-
tions suitable for converting the insoluble phytic acid or
phytic acid salts to soluble products”); id. col. 1 ll. 65–67
(“In an embodiment, the present method includes adding
an enzyme with phytase activity to the ethanol-processing
fluids after fermentation . . . .”). The ’399 patent is enti-

1 A continuing patent application is “an application
filed subsequently to another application, while the prior
application is pending, disclosing all or a substantial part
of the subject-matter of the prior application and contain-
ing claims to subject-matter common to both applications,
both applications being filed by the same inventor or his
legal representative.” In re Febrey, 135 F.2d 751, 757
(CCPA 1943) (internal quotation marks and citation
omitted).
2 “Phytase is an enzyme known to be capable of
breaking down the phytic acid found in plant material.”
’399 patent col. 5 ll. 39–40.
4 U.S. WATER SERVS., INC. v. NOVOZYMES A/S

tled “Reducing Insoluble Deposit Formation in Ethanol
Production” and the ’137 patent is entitled “Preventing
Phytate Salt Deposition in Polar Solvent Systems.” The
patents’ claims disclose the introduction of phytase into
the production process under certain conditions, but they
do not disclose precisely when the phytase should be
added and under what conditions. See, e.g., ’399 patent
col. 12 ll. 44–48 (reciting “providing . . . phytase in the
ethanol processing fluid” to reduce “the formation of
insoluble deposits of phytic acid and/or salts of phytic
acid”); ’137 patent col. 12 ll. 33–38 (reciting “adding
phytase to an ethanol processing fluid . . . under condi-
tions suitable for converting the insoluble phytic acid or
phytic acid salts to soluble products”). But see id. col. 1 ll.
58−60 (“The method can include: adding an agent to the
ethanol-processing fluids after fermentation . . . .” (em-
phasis added)).
II. The Prior Art
The District Court found that either International
Publication No. WO 01/62947 A1 (“Veit”), J.A. 1580–610,
or U.S. Patent No. 5,756,714 (“Antrim”) inherently antici-
pated the Asserted Claims. U.S. Water, 120 F. Supp. 3d
at 878–82. Veit is entitled “Fermentation with a Phytase”
and explains that ethanol production from whole grains
involves four steps: (1) milling, (2) liquefaction, 3
(3) saccharification, and (4) fermentation.
4 Veit p. 2
ll. 24–29. Veit discloses that adding phytase during the

3 Liquefaction is the process of breaking down (i.e.,
hydrolyzing) the milled grain material into sugars. “The
hydrolysis may be carried out . . . enzymatically by alpha-
amylase treatment [e.g., phytase].” Veit p. 3 ll. 9–11.
4 Saccharification is a process for “produc[ing] low
molecular sugars . . . [extracted during liquefaction] that
can be metabolized by yeast [after further hydrolysis].”
Veit. p. 3 ll. 28–30.
U.S. WATER SERVS., INC. v. NOVOZYMES A/S 5

saccharification and fermentation stages of ethanol pro-
duction can result in “increases [in] the fermentation and
ethanol yields.” Id. p. 5 l. 29; see id. p. 1 ll. 7–8, p. 2 ll.
15–19, p. 8 ll. 4–11 (further describing the process for
adding phytase at either step). Antrim is entitled “Meth-
od for Liquefying Starch” and discloses a method for
liquefying corn starch that “relates to the removal, and/or
inactivation of an enzyme inhibiting composition from a
granular starch prior to or during liquefaction.” Antrim
col. 1 ll. 14–16. The enzyme inhibiting composition is
“comprise[d of] a form of phytate” that “acts to inhibit
[alpha]-amylase hydrolysis of a starch solution during low
pH liquefaction.” Id. col. 5 ll. 30–36. Antrim is directed
at a more efficient liquefaction process through the use of
enzymes. See id. col. 4 ll. 6–21 (summarizing the objec-
tives of the invention).
DISCUSSION
U.S. Water argues that the District Court erred in
granting summary judgment of invalidity based on inher-
ent anticipation because the District Court expressly
acknowledged the existence of a disputed material fact.
Novozymes challenges the District Court’s inequitable
conduct finding. After discussing the applicable standard
of review, we address these arguments in turn.
I. Standard of Review
This court reviews the grant of summary judgment
under the law of the regional circuit in which the district
court sits. Classen Immunotherapies, Inc. v. Elan
Pharm., Inc., 786 F.3d 892, 896 (Fed. Cir. 2015). The
Seventh Circuit reviews a district court’s grant of sum-
mary judgment de novo. Greer v. Bd. of Educ., 267 F.3d
723, 726 (7th Cir. 2001). Summary judgment is proper
only “if the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(a); see
Celotex Corp. v. Catrett, 477 U.S. 317, 322–23 (1986). A
6 U.S. WATER SERVS., INC. v. NOVOZYMES A/S

genuine dispute exists when “the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986).
II. Anticipation
U.S. Water argues that the District Court erred in
granting summary judgment based on a finding that the
Patents-in-Suit are inherently anticipated by Veit and
Antrim. That is so, U.S. Water contends, because the
District Court acknowledged the existence of a genuine
dispute as to a material fact. Appellants’ Br. 35. We
agree with U.S. Water.
A. Legal Framework
Although “the anticipation inquiry first demands a
proper claim construction,” Trintec Indus., Inc. v. Top-
U.S.A. Corp., 295 F.3d 1292, 1294 (Fed. Cir. 2002), claim
construction is not an issue in this case, see Appellants’
Br. 29–52. Thus, we begin with the prior art. A reference
is anticipatory under 35 U.S.C. § 102(b) (2006) 5 if “the
prior art reference . . . disclose[s] each and every feature
of the claimed invention, either explicitly or inherently.”
Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d
1369, 1375 (Fed. Cir. 2006) (citation omitted).
Even if a prior art reference does not explicitly dis-
close all features of the claimed invention, we have found
that the reference inherently may do so. See Schering
Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed.

5 In passing the Leahy-Smith America Invents Act
(“AIA”), Congress amended § 102. See Pub. L. No. 112-29,
§ 3(b), 125 Stat. 284, 285–87 (2011). However, because
the applications that led to the Patents-in-Suit were filed
before March 16, 2013, the pre-AIA § 102(b) applies. See
id. § 3(n)(1), 125 Stat. at 293.
U.S. WATER SERVS., INC. v. NOVOZYMES A/S 7

Cir. 2003). “[A]nticipation by inherent disclosure is
appropriate only when the [single prior art] reference
discloses prior art that must necessarily include the
unstated limitation.” Transclean Corp. v. Bridgewood
Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation
omitted). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation
marks and citations omitted). Rather, “[t]he inherent
result must inevitably result from the disclosed
steps . . . .” In re Montgomery, 677 F.3d 1375, 1380 (Fed.
Cir. 2012).
B. The District Court’s Finding
The District Court analyzed the Asserted Claims of
the Patents-in-Suit and found seven common elements
shared by these claims. U.S. Water Servs., 120 F. Supp.
3d at 868. After comparing these common elements with
the disclosures in Veit and Antrim, the District Court
concluded that “[t]he evidence of record show[ed] beyond
genuine dispute that the expressly disclosed elements,
one through six, [were] disclosed in Veit and Antrim.” Id.
at 872; see id. at 868. As to the last element, “thereby
reducing the formation of insoluble deposits,” the District
Court determined that “the critical issue” was whether
Veit or Antrim inherently disclosed “adding phytase for
the purpose of reducing deposits.” Id. at 872.
In addressing this issue, the District Court explained
that “the critical facts that are relevant to the court’s
anticipation analysis are not in dispute.” Id. at 881. In
particular, the District Court observed that “[t]he
[P]atents-in-[S]uit describe a method for using phytase in
terms of ranges for dosage, temperature, and pH; Veit and
Antrim disclose the same method, using overlapping and
often narrower ranges.” Id. On this basis, the District
8 U.S. WATER SERVS., INC. v. NOVOZYMES A/S

Court determined that “summary judgment [was] appro-
priate because the evidence of record establishe[d] that
deposit reduction [was] a natural result of the methods for
adding phytase during ethanol production that Veit and
Antrim disclose.” Id. at 878. The District Court added
that, although “Veit and Antrim do not expressly identify
the benefit that U.S. Water’s patents identify, they never-
theless inherently disclose that benefit.” Id. at 879.
Thus, the District Court determined either Veit or Antrim
inherently disclose element seven.
C. A Genuine Dispute as to a Material Fact Bars Sum-
mary Judgment Based on Inherent Anticipation
We must determine whether the District Court over-
looked a genuine dispute about a material fact—whether
the reduction of “insoluble deposits of phytic acid or salts
of phytic acids” as recited in the Asserted Claims was
inherent in either Veit or Antrim through the use of
phytase. In reaching this conclusion, “we must view the
evidence and draw all inferences in a way most favorable
to the nonmoving party.” Bombard v. Fort Wayne News-
papers, Inc., 92 F.3d 560, 562 (7th Cir. 1996) (citation
omitted).
The District Court correctly identified that “[t]he is-
sue on which this case ultimately turns is whether Veit
[or] Antrim inherently disclose using phytase to reduce
deposits in ethanol production machinery.” U.S. Water
Servs., 120 F. Supp. 3d at 878. However, it erred in
finding no genuine dispute of material fact as to whether
the Patents-in-Suit are inherently anticipated because
“the prior art discloses the conditions that will necessarily
result in phytase reducing deposits.” Id. at 879. The
District Court erred in deeming irrelevant the fact that
“U.S. Water . . . adduced evidence[, including expert
testimony,] . . . that practicing Veit and Antrim will not
always result in deposit reduction.” Id. The District
Court recognized this was conflicting evidence that went
U.S. WATER SERVS., INC. v. NOVOZYMES A/S 9

to the core of an inherent anticipation analysis, but con-
cluded this evidence did not preclude summary judgment.
Id. at 879. By disregarding this evidence, the District
Court improperly made credibility determinations and
weighed conflicting evidence. See Anderson, 477 U.S. at
255 (“Credibility determinations, the weighing of the
evidence, and the drawing of legitimate inferences from
the facts are jury functions, not those of a judge, [when]
he is ruling on a motion for summary judgment . . . .”).
We find that the record evidence demonstrates that
“there is sufficient evidence favoring the nonmoving party
for a jury to return a verdict for that party,” id. at 249
(citation omitted), and that summary judgment was
therefore inappropriate. Specifically, the testimony of
U.S. Water’s experts (i.e., Eric Dorn, Dr. George Reed,
and Rodney Simms) demonstrates that there is a dispute
as to whether adding phytase in the manner disclosed in
Antrim or Veit will necessarily lead to a reduction of
insoluble organometallic salt deposits as claimed in the
Patents-in-Suit. For example, these experts testified that
there are numerous factors affecting the ultimate reduc-
tion of insoluble organometallic salt deposits. See J.A.
760 (Dr. Reed stating that “[n]umerous factors can impact
the ability of phytases to convert phytic acid to its hydrol-
ysis products during ethanol processing”), 854 (Mr. Dorn
stating that “if the treatment specifics and process condi-
tions are not correct, no process fouling reduction may be
observed in the plant” and that, if “the phytase dosage is
reduced below its critical dosage value or a process condi-
tion or parameter is changed and not corrected for appro-
priately,” the fouling can reappear as if no phytase had
been added), 855 (Mr. Dorn also stating that “one can
remove a large majority of the phytate and not have any
measureable effect on the rate of process fouling”), and
1025 (Mr. Simms stating that “one can employ phytase
enzyme according to Antrim . . . and Veit in ways that
could sufficiently affect the phytic acid and phytates
10 U.S. WATER SERVS., INC. v. NOVOZYMES A/S

present to improve liquefaction and fermentation, but
which would be insufficient to have any effect on the
formation of deposits . . . .”). The testimony from U.S.
Water’s experts demonstrates that a genuine dispute as to
a material fact remained and that, consequently, the
District Court improperly granted summary judgment on
inherent anticipation.
III. Inequitable Conduct
Novozymes argues that the District Court erred in
granting summary judgment of no inequitable conduct.
See Cross-Appellants’ Br. 56–68. In particular, Novo-
zymes contends that the District Court failed to recognize
a genuine dispute as to a fact material to the inequitable
conduct inquiry. Id. at 63–68. We disagree.
A. Legal Framework
“Inequitable conduct is an equitable defense to patent
infringement that, if proved, bars enforcement of a pa-
tent.” Therasense, Inc. v. Becton, Dickinson & Co., 649
F.3d 1276, 1285 (Fed. Cir. 2011) (en banc). A finding of
inequitable conduct as to “any single claim renders the
entire patent unenforceable” and may “render unenforce-
able other related patents and applications in the same
technology family.” Id. at 1288 (internal quotation marks
and citations omitted). “Inequitable conduct occurs when
a patentee breaches his or her duty to the [U.S. Patent
and Trademark Office (‘USPTO’)] of candor, good faith,
and honesty.” Ferring B.V. v. Barr Labs., Inc., 437 F.3d
1181, 1186 (Fed. Cir. 2006) (internal quotation marks and
citation omitted); see 37 C.F.R. § 1.56(a) (2015) (explain-
ing that a party appearing before the USPTO has “a duty
to disclose . . . all information known to that individual to
be material to patentability”).
“A party seeking to prove inequitable conduct must
show . . . that the patent applicant made misrepresenta-
tions or omissions material to patentability, that he did so
U.S. WATER SERVS., INC. v. NOVOZYMES A/S 11

with the specific intent to mislead or deceive the
[US]PTO, and that deceptive intent was the single most
reasonable inference to be drawn from the evidence.”
Ohio Willow Wood Co. v. Alps S., LLC, 813 F.3d 1350,
1357 (Fed. Cir. 2016) (citations omitted). “To prove the
element of materiality, a party claiming inequitable
conduct ordinarily must show that the patentee withheld
or misrepresented information that, in the absence of the
withholding or misrepresentation, would have prevented
a patent claim from issuing.” Id. (internal quotation
marks and citation omitted). “Specific intent to commit
acts constituting inequitable conduct may be inferred
from indirect and circumstantial evidence[,] . . . [b]ut
deceptive intent must be the single most reasonable
inference drawn from the evidence.” Id. at 1358 (internal
quotation marks and citations omitted).
B. Relevant Facts
Novozymes bases its inequitable conduct charge on
representations made by U.S. Water about the application
that led to the ’244 patent and, thus, the Patent Family.
Specifically, following the examiner’s rejection of certain
claims in the application as obvious over certain prior art
such as Veit, U.S. Water amended the proposed claims in
the application to change the stage at which phytase was
added. See J.A. 2222–30 (Amendments to the Claims),
2309–17 (further Amendments to the Claims). U.S.
Water narrowed its claims to add phytase specifically to
“the thin stillage, backset, or mixture thereof.” J.A.
2222−26. As a result, U.S. Water argued the amended
claims overcame Veit, where “phytase is added before
fermentation” to “release nutrients so that yeast are more
efficient at fermentation.” J.A. 2228, 2229. The ’244
patent subsequently issued in October 2011 with the
amended claim language. J.A. 1344.
Around the same time, U.S. Water was involved in lit-
igation against ChemTreat, Inc. (“ChemTreat”) for unre-
12 U.S. WATER SERVS., INC. v. NOVOZYMES A/S

lated claims. See, e.g., J.A. 4888−902 (Complaint, Order,
and Joint Motion for Dismissal). As part of the litigation,
ChemTreat moved for summary judgment of non-
infringement of the ’244 patent, arguing that the ’244
patent’s claims were limited to adding phytase after
fermentation while ChemTreat instructed its customers to
add phytase during fermentation. See J.A. 2941. U.S.
Water argued that adding phytase during fermentation
was equivalent to adding phytase to the backset, i.e., the
post-fermentation fluid, because it is recycled back into
fermentation. See J.A. 2941; see also J.A. 3285 (Declara-
tion). During a hearing, the presiding judge questioned
U.S. Water about the seemingly contradictory statements
it had made to the court in the Declaration and those it
made to the USPTO during prosecution of the ’244 patent.
See J.A. 2962 (The court: “It seemed to me that
you . . . repeatedly and very clearly kept saying our pro-
cess isn’t about adding phytase at the fermentation
stage.”), 2964 (similar), 2966 (similar). The court ulti-
mately found that ChemTreat did not infringe the ’244
patent because it taught its customers to add phytase
before or during fermentation. J.A. 4898.
While the litigation with ChemTreat remained ongo-
ing and after the court identified the apparent discrepan-
cy, U.S. Water amended the continuation application that
led to the ’137 patent. This amendment canceled all
pending claims and replaced them with new claims. J.A.
2540–53 (Amendment dated July 20, 2012). The new
claims broadly required “adding phytase to an ethanol
processing fluid in the plant.” J.A. 2541, 2545. The
amended claims also identified the differences with claim
1 of the ’244 patent, which sought to narrow the claimed
subject matter. See J.A. 2545.
A third-party later identified this purported distinc-
tion to the USPTO during the prosecution of the ’399
patent. See J.A. 5046–68, 5399–404. In particular, the
third-party asserted that the claims of the ’399 patent
U.S. WATER SERVS., INC. v. NOVOZYMES A/S 13

were not limited by where the phytase was added. See
J.A. 5051–52 (“The claims in the present application [i.e.,
the application that led to the ’399 patent] recite adding
phytase to ethanol processing fluids with no further
limitation to the type of fluid to which the phytase is
added.”). The examiner noted in the file history that she
reviewed the third-party’s submission along with Veit and
other prior art references. See J.A. 5399–404.
C. The District Court Did Not Err in Finding a Lack of
Materiality
The District Court determined that Novozymes failed
to demonstrate a genuine dispute over either materiality
or intent, and that the law did not require a finding of
inequitable conduct. U.S. Water Servs., 120 F. Supp. 3d
at 883. As to materiality, the District Court determined
that “Novozymes falls short of establishing the but-for
materiality” of the information disclosed in the
ChemTreat litigation. Id. Specifically, the District Court
observed that the amendment of the continuation applica-
tion that led to the ’137 patent “set out the amended claim
with differences with claim 1 of the ’244 patent highlight-
ed,” such that it “would have been amply clear to the
examiner that the patentees were seeking a claim that
was broader in the sense that the after-fermentation
limitation was removed.” Id. Furthermore, the District
Court determined that “th[e] third-party submission
provides one more reason that the examiner knew she
had to evaluate the allowability of the broader claims over
the prior art, particularly Veit . . . .” Id.
Novozymes argues that “[t]here is at least a genuine
issue of fact that the ChemTreat litigation documents
withheld by U.S. Water from the [USPTO] are material.”
Cross-Appellants’ Br. 63 (emphasis omitted). Novozymes
contends that the Patents-in-Suit would not have issued
had the examiner been aware of these documents and
disclosures. Id. at 64–65.
14 U.S. WATER SERVS., INC. v. NOVOZYMES A/S

There is no genuine dispute about this material fact.
The record contains no suggestion that, but-for the disclo-
sures made during the ChemTreat litigation, the examin-
er would not have issued the Patents-in-Suit. Instead,
the record shows that the examiner was aware of the
differences between the pending claims of the Patents-in-
Suit and the ’244 patent, whether as discussed in U.S.
Water’s Declaration or the third-party’s submission. See
J.A. 5399–404. The examiner reviewed the third-party’s
submission and the relevant prior art, see J.A. 5399–404,
but found that the evidence did not affect the ultimate
patentability determination. U.S. Water did not withhold
or misrepresent information to the USPTO. See Fiskars,
Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1327 (Fed. Cir.
2000) (“An applicant is not required to tell the [US]PTO
twice about the same prior art, on pain of loss of the
patent for inequitable conduct.”).
Finally, Novozymes also contests the District Court’s
finding of no intent to deceive the USPTO. Cross-
Appellants’ Br. 66–68. However, because we find no error
in the District Court’s determination under the materiali-
ty prong of the inequitable conduct analysis, we need not
address intent. See Ohio Willow Wood, 813 F.3d at 1357
(explaining that a party alleging inequitable conduct must
prove materiality and intent); Therasense, 649 F.3d at
1290 (same).
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Accordingly, the decision of
the U.S. District Court for the Western District of Wis-
consin is
VACATED–IN-PART, AFFIRMED-IN-PART, AND
REMANDED
COSTS
Each party shall bear its own costs.