1st Media, LLC v. Electronic Arts, Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

1ST MEDIA, LLC,
Plaintiff-Appellant,

v.
ELECTRONIC ARTS, INC.,
HARMONIX MUSIC SYSTEMS, INC., AND VIACOM,
INC.,
Defendants-Appellees,

AND

SONY COMPUTER ENTERTAINMENT AMERICA,
INC.,
Defendant-Appellee.
__________________________

2010-1435
__________________________

Appeal from the United States District Court for the
District of Nevada in No. 07-CV-1589, Judge James C.
Mahan.
__________________________

Decided: September 13, 2012
__________________________

ROBERT P. GREENSPOON, Flachsbart & Greenspoon,
LLC, of Chicago, Illinois, argued for plaintiff-appellant.
Of counsel was WILLIAM W. FLACHSBART.
2 1ST MEDIA v. ELECTRONIC ARTS

ERIC A. BURESH, Erise IP, P.A., of Leawood, Kansas,
argued for all defendants-appellees. With him on the brief
for Sony Computer Entertainment America, Inc., was
ABRAN J. KEAN. Of counsel was B. TRENT WEBB, Shook,
Hardy & Bacon, L.L.P., of Kansas City, Missouri. On the
brief for Electronic Arts, Inc., et al., were RICHARD F.
ZIEGLER, Jenner & Block LLP, of New York, New York,
and BENJAMIN J. BRADFORD, of Chicago, Illinois. Of coun-
sel was JOHN JOSEF MOLENDA, of New York, New York.
__________________________

Before RADER, Chief Judge, LINN and WALLACH, Circuit
Judges.
LINN, Circuit Judge.

1st Media, LLC (“1st Media”) is the assignee of U.S.
Patent No. 5,464,946 (“’946 Patent”) and appeals from the
United States District Court for the District of Nevada’s
dismissal of 1st Media’s complaint alleging infringement of
the ’946 Patent by Electronic Arts, Inc., Harmonix Music
Systems, Inc., Viacom Inc., and Sony Computer Enter-
tainment America LLC (collectively “Appellees”). 1st
Media v. doPi Karaoke, Inc., No. 07-cv-1589 (Apr. 23,
2010) (“1st Media”). The court found that during prosecu-
tion of the ’946 Patent, the named inventor, Dr. Scott
Lewis (“Lewis”), and his attorney, Joseph Sawyer (“Saw-
yer”), withheld from the United States Patent and
Trademark Office (“PTO”) three material references and
information about PTO rejections in two related prosecu-
tions, thereby committing inequitable conduct and render-
ing the ’946 Patent unenforceable. Because the record
contains no evidence of a deliberate decision to withhold
those references from the PTO as required under
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
1276 (Fed. Cir. 2011) (en banc), and because Appellees
admit that the record is complete, this court reverses.
1ST MEDIA v. ELECTRONIC ARTS 3

I. BACKGROUND

The ’946 Patent is titled “System and Apparatus for
Interactive Multimedia Entertainment” and covers an
entertainment system for use in purchasing and storing
songs, videos, and multimedia karaoke information. On
Lewis’s behalf, Sawyer filed the application that led to the
’946 Patent (“’946 Application”) on November 13, 1992.
On September 14, 1994, the examiner rejected all claims
of the ’946 Application as anticipated or obvious in view of
five prior art references. To overcome the rejections,
Sawyer argued on February 21, 1995, that the claimed
entertainment system included a multimedia call process-
ing system, an element not found in the cited references.
He also amended current claim 16 to limit it to karaoke
devices. The examiner responded by issuing a Notice of
Allowance on May 2, 1992; Sawyer paid the issue fee on
August 1, 1995; and the PTO issued the ’946 Patent on
November 7, 1995.

While the ’946 Application was pending, Sawyer
prosecuted a number of other patent applications for
related inventions made by Lewis. The applications
relevant to this appeal are: (1) International Patent
Application No. PCT/US93/10930 (“PCT Application”); (2)
U.S. Patent Application No. 07/975,824, which became
U.S. Patent No. 5,325,423 (“’423 Patent”), and; (3) U.S.
Patent Application No. 08/265,391, which became U.S.
Patent No. 5,564,001 (“’001 Patent”).

The PCT Application, as filed on November 11, 1993,
was identical to the as filed ’946 Application, but was
never amended to add the karaoke limitation. In a June
25, 1995, supplemental search report, a European Patent
Office (“EPO”) examiner cited as prior art International
Publication WO 90/01243 (“Bush”), noting that Bush was
a category “Y” reference, meaning it was particularly
relevant if combined with another document of the same
4 1ST MEDIA v. ELECTRONIC ARTS

category. Sawyer received the supplemental European
report citing Bush on July 24, 1995, eight days before he
paid the issue fee for the ’946 Patent. Neither Lewis nor
Sawyer ever disclosed the Bush reference to the PTO and
Bush was not considered during the course of examina-
tion of the ’946 Application. The EPO ultimately rejected
the PCT Application on November 3, 1998, citing Bush as
the closest prior art document.

Lewis filed the application that led to the ’423 Patent
(“’423 Application”) on the same day as the ’946 Applica-
tion. Large portions of the ’423 Patent’s specification are
identical to the ’946 Patent. Those portions include
descriptions of terms Lewis coined—“interactive multi-
media mastering system” (“IMM”), a “multimedia call
processing system” (“MCPS”), and “interactive multime-
dia devices” (“IMD”). Compare ’946 Patent col. 4 l. 62-col.
11 l. 63, with ’423 Patent col. 6 l. 4-col. 13 l. 24. On July
16, 1993, an examiner rejected several claims of the ’423
Application as anticipated by U.S. Patent No. 5,027,400
(“Baji”), which discloses what the examiner considered to
be an IMM, MCPS, and IMD—the same components of
the karaoke device covered by claim 16 of the ’946 Patent.
On October 29, 1993, Sawyer responded to the rejection
by cancelling the rejected claims. The ’423 Patent issued
on June 28, 1994. Neither Lewis nor Sawyer ever dis-
closed Baji to the PTO, and the PTO did not consider the
reference during prosecution of the ’946 Patent.

On June 24, 1994, Lewis filed the application leading
to the ’001 Patent (“’001 Application”) as a continuation-
in-part of the ’423 Application. On June 12, 1995, an
examiner contended that the IMM, MCPS, and IMD
structures, to the extent claimed, were disclosed in U.S.
Patent No. 5,220,420 (“Hoarty”) and rejected independent
claim 1 of the ’001 Application as obvious in view of
Hoarty. On September 12, 1995, Sawyer replaced claim 1
with new claim 40, distinguishing Hoarty while retaining
1ST MEDIA v. ELECTRONIC ARTS 5
the IMM, MCPS, and IMD limitations. The ’001 Patent
ultimately issued on October 8, 1996. Neither Lewis nor
Sawyer ever disclosed Hoarty to the PTO, and the PTO
did not consider the reference during prosecution of the
’946 Patent.

On November 29, 2007, 1st Media filed a complaint in
the United States District Court for the District of Ne-
vada alleging infringement of at least claim 16 of the ’946
Patent. Appellees asserted an inequitable conduct de-
fense and also counterclaimed for declaratory judgment of
inequitable conduct. The court bifurcated the case, focus-
ing initial proceedings on the question of inequitable
conduct. 1st Media moved to put its evidence on first,
arguing that “[c]ommon sense dictates that a patentee
should inform the Court of the background circumstances
of patent procurement before an infringer steps in to
attack the patentee.” Pl.’s Mot. In Limine #1: To Confirm
the Normal Order of Proofs at 2, 1st Media (Aug. 21,
2009), ECF No. 204. Appellees opposed the motion,
arguing that because they had the burden to prove ineq-
uitable conduct, they should present their evidence first.
The court agreed with the Appellees and held a bench
trial on February 25 and 26, 2010, allowing Appellees to
begin with a direct examination of Lewis.

At trial, Appellees alleged five incidents of inequitable
conduct, three based on the failure to cite references, and
two based on the failure to disclose rejections in the ’423
and ’001 Patent prosecutions that respectively brought to
light two of those references. Because the Appellees do
not rely on appeal on the non-disclosure of the rejections
themselves as a basis for affirming the district court’s
decision, we consider those grounds conceded and address
only the allegations of inequitable conduct relating to the
three references noted. Appellee’s Br. 55 n.18.
6 1ST MEDIA v. ELECTRONIC ARTS

With respect to the three references, both Lewis and
Sawyer testified that they did not appreciate the materi-
ality of any of them. Lewis testified under direct exami-
nation by Appellees that nondisclosure of the Bush
reference was “an oversight that got lost in the cracks at
that time and wasn’t a conscious decision not to report
[it].” Tr. of Inequitable Conduct Hr’g, Day One at 183, 1st
Media (Feb. 25, 2010), ECF No. 267 (“Day One Tr.”).
Although Sawyer testified that he could not recall why he
did not disclose the Bush reference, Appellees pointed to
his previous declaration in which he claimed that “the
Bush publication itself never sparked an awareness or
belief in my mind that Bush should be disclosed.” Tr. of
Inequitable Conduct Hr’g, Day Two at 134, 1st Media (Feb.
26, 2010), ECF No. 270 (“Day Two Tr.”). Sawyer also
testified that he generally considered patentability issues
in a case only during what he termed “active prosecution,”
or the time between the first office action and the notice of
allowance. Id. at 149. During the time period that Saw-
yer was prosecuting the ’946 Patent, he had newly set up
a solo office out of his home and characterized his practice
as being at times “very active.” Id. at 153 (Sawyer’s
testimony that he was handling about 170 open prosecu-
tion files by the end of 1995). As for the Baji and Hoarty
references, Lewis and Sawyer each testified that the
technology in the co-pending ’423 and ’001 Applications
was so distinct from the ’946 Application that it did not
occur to them to disclose Baji or Hoarty during prosecu-
tion of the ’946 Patent.

The district court found their explanations not credi-
ble. Findings of Fact and Conclusions of Law Following
Trial on Inequitable Conduct at 4, 1st Media (Apr. 23,
2010), ECF No. 276 (“Findings”) (“Dr. Lewis and Mr.
Sawyer offered explanations for their failure to disclose
the material prior art . . . that were not credible. . . . Mr.
Sawyer’s explanation, like Dr. Lewis’ . . . was neither
factually nor legally sufficient to explain the failure to
1ST MEDIA v. ELECTRONIC ARTS 7
disclose the Bush Reference, which was highly material.”);
id. at 4-5 (“As to Baji [and] Hoarty . . . Dr. Lewis and Mr.
Sawyer suggested that they viewed the technology at
issue in their co-pending applications as so distinct from
that of the ’946 application . . . that ‘it did not occur to
them’ to make any disclosures about Baji [or]
Hoarty . . . . That explanation, which defied common
sense in light of the extensive overlap in the applications
and claims, was fully discredited at trial.”). The district
court found that Lewis and Sawyer knew the references
were material and concluded that because they failed to
provide a credible good faith explanation for non-
disclosure of the references, it was appropriate to infer
that they intended to deceive the PTO during prosecution
of the ’946 Patent. Id. The district court thus concluded
that Lewis and Sawyer committed inequitable conduct.
The court allowed Appellees to draft proposed findings of
fact and conclusions of law. The court adopted those
findings verbatim, granted Appellees’ requested declara-
tory judgment of inequitable conduct, held the ’946 Patent
unenforceable, and dismissed 1st Media’s complaint. 1st
Media appealed and we have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).

II. DISCUSSION

A. Standard of Review

“This court reviews a district court’s determination of
inequitable conduct under a two-tiered standard: we
review the underlying factual determinations of material-
ity and intent for clear error, and we review the ultimate
decision as to inequitable conduct for an abuse of discre-
tion.” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d
1318, 1334 (Fed. Cir. 2011) (citing Star Scientific, Inc. v.
R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir.
2008)). “A factual finding is clearly erroneous if, despite
some supporting evidence, ‘the reviewing court on the
8 1ST MEDIA v. ELECTRONIC ARTS

entire evidence is left with the definite and firm convic-
tion that a mistake has been committed.’” Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir. 2007) (quoting
United States v. U.S. Gypsum Co., 333 U.S. 364, 395
(1948)). Even when a party drafts proposed findings of
fact and conclusions of law, “[o]nce adopted, the findings
are those of the court and may be reversed only if clearly
erroneous.” Mathis v. Spears, 857 F.2d 749, 754 (Fed. Cir.
1988); see also Anderson v. City of Bessemer City, 470 U.S.
564, 572 (1985). “A district court abuses its discretion
when its decision is based on clearly erroneous findings of
fact, is based on erroneous interpretations of the law, or is
clearly unreasonable, arbitrary or fanciful.” Cybor Corp.
v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998)
(en banc).

B. Analysis

This court’s recent opinion in Therasense changed the
standard for proving inequitable conduct based on nondis-
closure of a reference to the PTO. 649 F.3d at 1290-91.
Under the Therasense standard, absent affirmative egre-
gious misconduct, a defendant must prove by clear and
convincing evidence both of the “separate requirements”
that: (1) “the patentee acted with the specific intent to
deceive the PTO”; and (2) the non-disclosed reference was
but-for material. Id. Therasense explained that in order
to show that the patentee acted with the specific intent to
deceive the PTO, a defendant must prove “that the appli-
cant knew of the reference, knew that it was material,
and made a deliberate decision to withhold it.” Id. at 1290
(emphasis added). A failure of proof on any element
precludes a finding of inequitable conduct. See id. (“Prov-
ing that the applicant knew of a reference, should have
known of its materiality, and decided not to submit it to
the PTO does not prove specific intent to deceive.” (em-
phasis added)). “[T]o meet the clear and convincing
evidence standard, the specific intent to deceive must be
1ST MEDIA v. ELECTRONIC ARTS 9
‘the single most reasonable inference able to be drawn
from the evidence.’” Id. (quoting Star Scientific, 537 F.3d
at 1366). A court can no longer infer intent to deceive
from non-disclosure of a reference solely because that
reference was known and material. Id. Moreover, a
patentee need not offer any good faith explanation for his
conduct unless and until an accused infringer has met his
burden to prove an intent to deceive by clear and convinc-
ing evidence. See id.; Star Scientific, 537 F.3d at 1368.

The district court issued its opinion in this case before
this court’s Therasense opinion, and this court must now
determine whether, under the standard set forth in
Therasense, the record here supports the district court’s
conclusion that Lewis and Sawyer committed inequitable
conduct.

1st Media argues that the district court’s finding of in-
equitable conduct cannot be sustained because the court
did not find that either Lewis or Sawyer made a deliber-
ate decision to withhold the three known material refer-
ences from the PTO. 1st Media accuses Appellees of
conflating the requirement to show intent to deceive with
the requirement to show materiality and argues that Star
Scientific’s single most reasonable inference standard
cannot substitute for Therasense’s requirement that the
defendant prove that the patentee made a deliberate
decision to withhold a known material reference in order
to deceive the PTO. Finally, 1st Media cites Bose Corp. v.
Consumers Union of United States, Inc., 466 U.S. 485, 512
(1984), to argue that the Appellees cannot satisfy their
burden to show a deliberate decision to withhold refer-
ences merely from the fact that the testimony of Lewis
and Sawyer was discredited.

Appellees admit that they have no direct evidence
that Lewis or Sawyer intended to deceive the PTO. See
Oral Arg. at 32:23, available at http://www.cafc.uscourts.
10 1ST MEDIA v. ELECTRONIC ARTS

gov/oral-argument-recordings/2010-1435/all. They con-
tend instead that the way in which Lewis and Sawyer
became aware of the references, coupled with statements
they made during prosecution of the ’946 Patent, demon-
strate the necessary mens rea from which the district
court permissibly could have inferred a deliberate decision
to withhold the references regardless of the exact words
the district court used. See Therasense, 649 F.3d at 1291.
Appellees also argue that by seeking to present its evi-
dence and explanations first at trial, 1st Media conceded
that Appellees had made a threshold showing of intent to
deceive. Finally, Appellees argue that the record ade-
quately supports the district court’s credibility determina-
tions and its determination that both Lewis and Sawyer
failed to provide a good faith explanation for their nondis-
closure of the references in question.

1. Order of Proof at Trial

As an initial matter, 1st Media’s motion to present its
proofs first did not concede that Appellees had met their
threshold burden of showing an intent to deceive by clear
and convincing evidence. See id. at 1290. Nothing in 1st
Media’s motion can be construed as a concession that
Appellees had met that burden. 1st Media’s motion was a
procedural request to implement what it believed would
be an orderly and efficient presentation of evidence.
Appellees’ request for this court to read something sub-
stantive into 1st Media’s procedural request lacks justifi-
cation. Thus, we turn to the merits of each alleged act of
inequitable conduct.

2. Bush

1st Media argues that the evidence fails to support an
inference of an intent to deceive the PTO by Lewis and
Sawyer’s failure to disclose the Bush reference. 1st Media
specifically points to Sawyer’s testimony that he did not
1ST MEDIA v. ELECTRONIC ARTS 11
learn of Bush until after he received the notice of allow-
ance of the ’946 Patent and at a time period when his
practice was “very active.” Moreover, 1st Media empha-
sizes that Bush was reported as being a category “Y”
reference and therefore of particular relevance only when
combined with some other reference. Finally, 1st Media
points out that Sawyer’s foreign patent counsel (“Wright”)
indicated that Bush was of limited relevance.

Appellees stress that the district court rejected
Lewis’s and Sawyer’s explanations. See Findings at 4-5,
16-18. They contend that the district court was free to
conclude that Sawyer made a deliberate decision to with-
hold Bush based on the fact that he received the EPO
search report identifying Bush and identifying “specific
page, line and figure numbers in Bush as particularly
relevant to as-filed claims 1-5 and 18 of the EPO counter-
part” eight days before he paid the issue fee for the ’946
Patent. Appellee’s Br. 13 (emphasis added). Finally,
Appellees disagree with 1st Media’s characterization of the
“Y” designation and 1st Media’s interpretation of Wright’s
comment. According to Appellees, Sawyer was already
aware of other references with which Bush might be
combined, and Wright’s comment meant that Bush was
only relevant to certain claims, specifically claim 16 of the
’946 Patent.

At trial, Appellees argued that they met their thresh-
old burden of showing Lewis and Sawyer’s intent to
deceive the PTO regarding Bush by demonstrating that
Lewis and Sawyer knew of its relevance but did not
disclose it to the PTO. Day One Tr. at 40 (“They knew
Bush was relevant to claim 18 [(current claim 16)] accord-
ing to the European patent office, but they didn’t disclose
it to [the examiner] who was also you [sic] looking at the
exact same claim. That’s a prima facie showing of inequi-
table conduct.” (emphasis added)). The district court
accepted this argument. See Findings at 7 (“Intent may
12 1ST MEDIA v. ELECTRONIC ARTS

be inferred where non-disclosed information is material
and where knowledge of the information and its material-
ity is chargeable to the applicant.”); id. at 16 (“The mate-
riality of the Bush Reference and the knowledge of that
materiality by Dr. Lewis and Mr. Sawyer have been
proven by clear and convincing evidence. Where the party
asserting inequitable conduct establishes a threshold
level of materiality and intent based on predicate facts,
the inquiry next turns to the . . . [patentee’s] explanation
that its conduct was in good faith.”).

As noted, supra, this court has now made clear that
“[t]o prevail on a claim of inequitable conduct, the accused
infringer must prove that the patentee acted with the
specific intent to deceive the PTO.” Therasense, 649 F.3d
at 1290. Moreover, “[a] finding that the misrepresenta-
tion or omission amounts to gross negligence or negli-
gence under a ‘should have known’ standard does not
satisfy this intent requirement.” Id. (citing Kingsdown
Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876
(1988)). “‘In a case involving nondisclosure of informa-
tion, clear and convincing evidence must show that the
applicant made a deliberate decision to withhold a known
material reference.’” Id. (quoting Molins PLC v. Textron,
Inc., 48 F.3d 1172, 1181 (1995)). The district court’s
“Intent To Deceive” analysis regarding Bush analyzed
only “1. Knowledge of Materiality,” and “2. Lewis and
Sawyer’s Explanations.” Findings at 15-18. Significantly,
however, the district court, following pre-Therasense
precedent, did not discuss or consider whether there was
any deliberate decision on either Lewis’s or Sawyer’s part
to withhold the Bush reference from the PTO.

This court cannot sustain the district court’s decision.
Knowledge of the reference and knowledge of materiality
alone are insufficient after Therasense to show an intent
to deceive. Moreover, it is not enough to argue careless-
ness, lack of attention, poor docketing or cross-
1ST MEDIA v. ELECTRONIC ARTS 13
referencing, or anything else that might be considered
negligent or even grossly negligent. To sustain a charge
of inequitable conduct, “clear and convincing evidence
must show that the applicant made a deliberate decision
to withhold a known material reference.” Molins, 48 F.3d
at 1181. Whatever one might conclude about Lewis’s and
Sawyer’s conduct and interactions relating to the Bush
reference, and the nature of Sawyer’s practice at the
relevant time, the record does not support the inference
that Lewis and Sawyer deliberately chose to withhold
Bush. See Therasense, 649 F.3d at 1290. Lewis did not
testify that he thought that Bush was relevant to the ’946
Patent’s prosecution in 1995; he only testified that he
knew of “some rejections related to a patent in Europe,
and it was the Bush patent.” Day One Tr. at 92. But the
PCT Application was not rejected based on Bush until
1998. Lewis could not recall whether he had reviewed the
EPO search report identifying Bush; he testified only that
the report is something that he would have reviewed if
Sawyer had sent it to him. Id. at 93. The record does not
contain any letter from Sawyer to Lewis at that time
informing Lewis of the EPO search report or Bush. Oral
Arg. at 19:45-20:25. Lewis then testified that “given the
details of the Bush [reference] that [he] know[s] now,” he
now thinks that Bush was “relevant.” Id. at 100.

While Sawyer testified that it was his standard prac-
tice to make sure he cited to the PTO prior art cited in
corresponding foreign applications if he knew that prior
art was material, Day Two Tr. at 129-30, Appellees point
to no evidence to suggest that Sawyer must have deliber-
ately withheld Bush from the PTO.

The record in this case is unlike that in Aventis
Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1335-36
(Fed. Cir. 2012), in which this court affirmed the district
court’s inequitable conduct determination. In that case
there was affirmative conduct by the applicants showing
14 1ST MEDIA v. ELECTRONIC ARTS

not only specific awareness of materiality, but careful and
selective manipulation of where, when, and how much of
the most material information to disclose. Id. at 1336.
Evidence of such selective disclosure is not present here.
With regard to Bush, the evidence shows, at best, that
Lewis and Sawyer knew Bush was material. An appli-
cant’s knowledge of a reference’s materiality, however,
cannot by itself prove, let alone clearly and convincingly
prove, that any subsequent non-disclosure was based on a
deliberate decision. Otherwise, the third element in
Therasense’s intent to deceive analysis would be satisfied
in any case in which the second element was satisfied.
This would effectively eviscerate Therasense’s test for
mens rea and reinflict the plague of patent unenforceabil-
ity based on the thinnest of speculation regarding the
applicant’s putative mental state. See Therasense, 649
F.3d at 1290.

The district court’s analysis in this case thus falls
short of what Therasense now requires. We need not
decide whether it was clear error for the district court to
infer that Lewis and Sawyer knew that the Bush refer-
ence was material because nowhere in the district court’s
analysis did it cite any evidence of a deliberate decision to
withhold Bush from the PTO, or anything that would
support such an inference. And the district court clearly
erred in relying on Lewis and Sawyer’s inability to offer a
good faith explanation as a basis to infer a deliberate
decision to withhold Bush. See Therasense, 649 F.3d at
1290; see also Am. CalCar, 651 F.3d at 1335 (“Although
the court found [the inventor’s] testimony to be lacking in
credibility, and we give considerable deference to that
finding, . . . that alone is insufficient to find specific intent
to deceive under the knowing and deliberate standard.”
(internal citation omitted)); Star Scientific, 537 F.3d at
1368 (“The patentee need not offer any good faith expla-
nation unless the accused infringer first carried his bur-
1ST MEDIA v. ELECTRONIC ARTS 15
den to prove a threshold level of intent to deceive by clear
and convincing evidence.”).

3. Baji

The district court’s intent to deceive analysis regard-
ing Baji is similarly flawed. Appellees argue that Lewis
and Sawyer were aware of Baji based on its citation in a
July 13, 1993, rejection of claims in the ’423 Application.
They further contend that Baji discloses an MCPS and
that Lewis and Sawyer’s February 21, 1995, argument to
the PTO that the five references cited by the examiner do
not have an MCPS is sufficient circumstantial evidence
from which the district court could infer a deliberate
decision to withhold Baji. 1st Media counters by pointing
to Lewis’s and Sawyer’s testimony that they did not
appreciate the materiality of the Baji reference and that
they each viewed the inventions claimed in the ’423 and
’946 Applications to relate to distinct technologies. More-
over, 1st Media contends that even if the district court did
not credit Lewis’s and Sawyer’s testimony, that fact
cannot be used as affirmative evidence of the opposite
conclusion.

We agree with 1st Media. Here, there is no evidence,
such as the evidence of a selective disclosure that oc-
curred in Aventis Pharma, suggesting that Lewis and
Sawyer must have deliberately withheld Baji. 675 F.3d at
1336. That Lewis’s and Sawyer’s testimony was not
credited by the district court does not overcome the short-
comings in Appellees’ proof. And the fact that Baji was
not mentioned in an argument dealing with a rejection
based on five other references nearly a year and a half
after Baji first came to Lewis’s and Sawyer’s attention
does not in and of itself suggest that the single most
reasonable inference is a deliberate decision to deceive.
The district court’s contrary finding is clearly erroneous.
16 1ST MEDIA v. ELECTRONIC ARTS

4. Hoarty

Finally, Appellees argue that Lewis and Sawyer in-
tended to deceive the PTO by not disclosing Hoarty, which
an examiner cited in a June 12, 1995, rejection of claims
in the ’001 Application. Appellees fault Lewis and Sawyer
for not disclosing Hoarty when the examiner’s rejection
clearly drew their attention to IMM, IMD, and MCPS
networks contended to be similar to networks disclosed in
the Hoarty reference. 1st Media counters by citing Lewis’s
and Sawyer’s testimony that they did not appreciate
Hoarty’s materiality and by arguing that Hoarty is not
analogous to the invention claimed in the ’946 Applica-
tion.

Appellees’ argument again falls short. Hoarty was
not brought to the attention of Lewis and Sawyer until
after they had made the argument during prosecution of
the ’946 Patent and received the Notice of Allowance,
albeit before they paid the issue fee. Moreover, the record
shows that the IMM, IMD, and MCPS limitations were
not determinative of patentability of the ’001 Patent,
meaning that there was nothing to single out Hoarty for
special attention. At bottom, there is simply no evidence
that Lewis and Sawyer deliberately withheld Hoarty from
the PTO, and there can be no inference that they intended
to deceive the PTO.

Ultimately, for all of the references, the evidence sup-
ports only that Lewis and Sawyer (1) knew of the refer-
ences, (2) may have known they were material (which this
court does not reach), and (3) did not inform the PTO of
them. But that is not enough. As Therasense made clear,
a defendant must prove that an applicant (1) “knew of the
reference,” (2) “knew it was material,” and (3) “made a
deliberate decision to withhold it.” 649 F.3d at 1290
(emphasis added). It is the last requirement that is
missing from the record developed in this case.
1ST MEDIA v. ELECTRONIC ARTS 17
At oral argument, Appellees admitted that they took
full discovery on inequitable conduct and informed this
court that the record is complete. Oral Arg. at 19:20-
20:50. Because Appellees cannot prove on this record that
either Lewis or Sawyer made a deliberate decision to
withhold references from the PTO and because Appellees
acknowledged that the record is complete, this court
reverses. We need not decide whether any of the refer-
ences were but-for material.

CONCLUSION

For the foregoing reasons, the judgment of the district
court is reversed.

REVERSED