United States Court of Appeals
for the Federal Circuit
__________________________
LEVITON MANUFACTURING COMPANY, INC.,
Plaintiff,
v.
UNIVERSAL SECURITY INSTRUMENTS, INC.,
AND USI ELECTRIC, INC.,
Defendants.
-----------------------------------------------------------------
SHANGHAI MEIHAO ELECTRIC INC.,
Plaintiff-Appellee,
v.
LEVITON MANUFACTURING COMPANY, INC.,
Defendant-Appellant.
__________________________
2009-1421
__________________________
Appeal from the United States District Court for the
District of Maryland in consolidated case no. 05-CV-889,
Judge Andre M. Davis.
__________________________
Decided: May 28, 2010
__________________________
SUSAN B. MANNING, Bingham McCutchen LLP, of
Washington, DC, argued for plaintiff-appellee. Of counsel
LEVITON MFG v. UNIVERSAL SECURITY 2
on the brief was GARY M. HNATH, Mayer Brown LLP, of
Washington, DC.
J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
defendant-appellant. With him on the brief were EDWARD
J. NAIDICH; and BETH Z. SHAW, of Reston, Virginia. Of
counsel on the brief was JAMES T. HOSMER, Nixon &
Vanderhye, P.C., of Arlington, Virginia.
__________________________
Before MICHEL, Chief Judge, PROST and MOORE, Circuit
Judges.
Opinion for the court filed by Chief Judge MICHEL.
Dissenting opinion filed by Circuit
Judge PROST.
MICHEL, Chief Judge.
Defendant-Appellant Leviton Manufacturing Com-
pany, Inc. (“Leviton”) appeals the district court’s award of
attorney fees and costs to Plaintiff-Appellee Shanghai
Meihao, Inc. (“Meihao”) based on inequitable conduct and
vexatious litigation. We vacate and remand for the rea-
sons below.
I. BACKGROUND
On October 22, 2003, Leviton filed U.S. Patent Appli-
cation No. 10/690,776 (“Germain application”), which
claims priority to a February 3, 2003 provisional applica-
tion. Greenberg Traurig attorneys Paul Sutton, Barry
Magidoff, and Claude Narcisse filed and prosecuted the
Germain application. It lists Franz Germain and five
others as co-inventors. Each of these inventors submitted
to the U.S. Patent and Trademark Office (“PTO”) a sworn
3 LEVITON MFG v. UNIVERSAL SECURITY
declaration that he was an original inventor of the subject
matter which was claimed.
Six months later, on April 19, 2004, Leviton filed U.S.
Patent Application No. 10/827,093, which later issued as
U.S. Patent No. 6,864,766 (“the ’766 patent”). The ’766 is
a third-generation continuation of U.S. Patent No.
6,246,558 (“the ’558 patent”). The application for the ’558
patent was filed on August 20, 1999, and Leviton has
claimed that the ’766 patent is entitled to this priority
date. Nicholas DiSalvo and William Ziegler are named as
the inventors of the ’766 patent. Both of these inventors
also submitted to the PTO a sworn declaration that he
was an original inventor of the subject matter which was
claimed.
The ’766 patent and the Germain application have no
common inventors, and neither claims priority to the
other. The ’766 patent’s claimed 1999 priority date is
three and a half years before Germain’s claimed 2003
priority date. The ’766 patent and Germain have many
claims that are nearly identical. For example, the only
difference between claim 1 of the ’766 patent and claim 31
of the Germain application is that claim 1 recites “at least
one moveable bridge” whereas claim 31 recites “a movable
bridge.” And dependent claims 3, 4, 13 and 14 of the ’766
patent are identical to Germain claims 32, 31, 43 and 44.
Meihao and Leviton offer different explanations as to
the similarity of the claims. Meihao contends that Nar-
cisse “copied” the claims from the Germain application
into the application that matured into the ’766 patent.
Leviton explains the similarity by stating that several
months after Narcisse filed the Germain application, he
met with several Leviton engineers, including William
Ziegler, one of the inventors of the ’558 patent. At that
meeting, Narcisse learned that the broad reverse-wiring
protection concept he claimed in the Germain application
had actually been described in the ’558 patent over three
LEVITON MFG v. UNIVERSAL SECURITY 4
years earlier, having already been invented by Ziegler and
DiSalvo. Afterwards, Narcisse prepared a continuation of
the ’558 patent with claims directed to that feature.
During the prosecution of the ’766 patent, Leviton did
not disclose the Germain application or the fact that
certain claims had been copied from Germain into the
application for the ’766 patent. Moreover, Leviton did not
inform the PTO that it had previously submitted a sworn
declaration in which other individuals (the Germain
inventors) claimed to be inventors of subject matter very
similar to that which was now recited in the application
for the ’766 patent.
In June 3, 2005, two months after the ’766 patent is-
sued, Leviton disclosed the ’766 patent, the ’558 patent,
and thirty other references during the prosecution of the
Germain application. In September 2005, having learned
of the substantively identical claims, the PTO issued a
double-patenting rejection of the Germain application in
light of the ’766 patent. Leviton cancelled the similar
claims.
A reexamination of the ’766 patent was requested on
June 6, 2005. Leviton did not disclose the Germain
application or the related litigation to the PTO during the
seven months in which the examiner reconsidered the
patentability of the ’766 patent. On February 17, 2006,
the examiner confirmed all claims of the ’766 patent, and
the reexamination requestor appealed. Leviton filed its
appeal brief on June 16, 2006, but did not disclose the
Germain application or related litigations to the PTO,
though it had been aware of inequitable conduct allega-
tions for over a year.
Narcisse first referenced the Germain application and
asserted that it was not material information in a memo-
randum to the PTO dated August 7, 2007. Although
Narcisse titled his memorandum “Information Disclosure
5 LEVITON MFG v. UNIVERSAL SECURITY
Statement” (“IDS”), it is not formally an IDS because it
does not meet any of the requirements for an IDS. Nar-
cisse also submitted several standard PTO forms titled
“Information Disclosure Statement by Applicant” that
comply with PTO rules, but these IDS forms did not list
the Germain application.
During the district court case, Meihao sought discov-
ery of the facts related to the inequitable conduct defense.
Meihao argued that Leviton’s counsel unreasonably and
self-servingly tried to avoid discovery of Leviton’s own
misconduct. When Meihao issued subpoenas to Sutton,
Magidoff, and Narcisse, the witnesses did not object, did
not produce documents, and did not appear for their
scheduled depositions. Leviton belatedly moved to quash
primarily on the ground that the witnesses were acting as
Leviton’s litigation counsel. In March 2007, Greenberg
Traurig withdrew and was replaced by Nixon Vanderhye.
Narcisse and Magidoff subsequently appeared for
depositions, and Leviton’s new counsel made numerous
privileged advice and work product objections and repeat-
edly instructed the witnesses not to answer. During
Narcisse’s deposition, counsel made 96 privileged advice
and work product objections, and over a third of the time
explicitly instructed Narcisse not to answer. Many of
these questions were about the relationship between the
Germain application and claim 1 of the ‘766 patent, or
Narcisse’s rationale for failing to disclose the Germain
application to the PTO. For example, Narcisse declined to
answer the following questions claiming the work-product
exception:
• Can you tell me with respect to Claim 1 where you
got the language for Claim 1?
• So isn’t it a fact that Claim 1 of the ’766 application
was copied from Claim 31 of the Germain applica-
tion?
LEVITON MFG v. UNIVERSAL SECURITY 6
• Can you tell me where you got the phrase, “move-
able bridge”?
• Did you consider disclosing the Germain applica-
tion to the PTO?
• How do you explain the similarity in claim lan-
guage?
Magidoff refused to answer similar questions, also on
advice and objection by counsel. The district court found
that these objections were baseless.
Another round of briefing ensued, with Meihao seek-
ing an order compelling Narcisse and Magidoff to appear
for further deposition and to fully answer Meihao’s ques-
tions, and also compelling Sutton to appear for deposition.
The matter was argued and submitted to Magistrate
Judge Gauvey on September 17, 2007. Meihao’s motions
to compel were still pending when Leviton moved to
dismiss the case in November 2007, but the magistrate
judge noted that he was about to grant them.
On November 28, 2007, Leviton moved to dismiss the
case. Leviton asserts that it dismissed the case because it
succeeded in forcing Meihao to stop selling older-model,
allegedly infringing products. Meihao alleges the real
reason Leviton moved to dismiss its case was that it
wanted to avoid a finding that the ’766 patent is unen-
forceable. Leviton has more than 30 different issued
patents and patent applications that relate to the ’766
patent, and Leviton’s counsel of record on the ’766 patent
was also counsel of record in the PTO on several hundred
Leviton patents. The district court dismissed the case
with prejudice on December 17, 2007 and gave Meihao
leave to file a motion for fees and costs.
The magistrate judge held a hearing on the motion for
fees and costs on September 3, 2008 and issued a 128
page Memorandum Opinion on December 23, 2008 in
which she found that Leviton had committed inequitable
7 LEVITON MFG v. UNIVERSAL SECURITY
conduct, had engaged in a strategy of vexatious litigation,
and that an award of fees to Meihao was proper. District
Judge Andre M. Davis issued an opinion on May 12, 2009
accepting Magistrate Judge Gauvey’s report and recom-
mendations. The district court entered two money judg-
ments in favor of Meihao together totaling $1,046,353.10
in costs and reasonable attorney fees.
II. DISCUSSION
A. Attorney Fees
The Patent Act provides, “The court in exceptional
cases may award reasonable attorney fees to the prevail-
ing party.” 35 U.S.C. § 285. “The prevailing party may
prove the existence of an exceptional case by showing:
inequitable conduct before the PTO; litigation misconduct;
vexatious, unjustified, and otherwise bad faith litigation;
a frivolous suit or willful infringement.” Epcon Gas Sys.,
Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed.
Cir. 2002). We review a district court’s finding that a case
is “exceptional” within the meaning of § 285 for clear
error. Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324,
1328 (Fed. Cir. 2003). Once a case is determined to be
exceptional, we review the district court’s decision to
award attorney fees under an abuse of discretion stan-
dard. Id.
The district court based its grant of attorney fees on
both (1) inequitable conduct and (2) vexatious litigation.
Leviton challenges each of these holdings, as we discuss
below.
B. Inequitable Conduct
We review the district court’s decision to grant sum-
mary judgment for inequitable conduct de novo. See Eisai
Co. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed.
Cir. 2008). Summary judgment may only be granted
LEVITON MFG v. UNIVERSAL SECURITY 8
where there are no genuine issues of material fact.
Anderson v. Liberty Lobby, Inc., 447 U.S. 242, 248 (1986).
To prevail on inequitable conduct, an accused infringer
must show that the applicant: “(1) made an affirmative
misrepresentation of material fact, failed to disclose
material information, or submitted false material infor-
mation, and (2) intended to deceive the [PTO]." Cargill,
Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir.
2007).
1. Materiality
Under our scattered precedents, information may be
considered material if there is a “substantial likelihood
that a reasonable examiner would consider it important
in deciding whether to allow the application to issue as a
patent.” PerSeptive Biosystems, Inc. v. Pharmacia Biotech,
Inc., 225 F.3d 1315, 1321 (Fed. Cir. 2000); see also Digital
Control, Inc. v. Charles Machine Works, 437 F.3d 1309,
1314 (Fed. Cir. 2006) (holding that omissions and mis-
statements are material if “a reasonable examiner would
have considered such [information] important in deciding
whether to allow the . . . application”). Information
concealed from the PTO “may be material even though it
would not invalidate the patent.” Larson Mfg. Co. v.
Aluminart Prods. Ltd., 559 F.3d 1317, 1327 (Fed. Cir.
2009) (quoting Li Second Family Ltd. V. Toshiba Corp.,
231 F.3d 1373, 1380 (Fed. Cir. 2000)). However, “a with-
held otherwise material reference is not material if it is
merely cumulative to, or less relevant than, information
already considered by the examiner.” Larson, 559 F.3d at
1327.
a. Germain Application
We agree with Meihao and the district court that
Leviton’s failure to disclose the Germain application was
material. Leviton argues that its failure to disclose
Germain was not material for any of the reasons cited by
9 LEVITON MFG v. UNIVERSAL SECURITY
the district court, contending that: (1) Leviton did not
“copy” claims under 37 C.F.R. § 10.23(c)(7); (2) the disclo-
sure of Germain would not be material to inventorship;
(3) the disclosure of Germain would not be material to
double patenting; and (4) the disclosure of Germain would
not be material to written description. We consider each
of these arguments below.
Leviton first challenges the district court statement
that “information on ‘copying’ of claims is essentially
material per se under the PTO regulations,” citing 37
C.F.R. § 10.23(c)(7) (2004). 1 Section 10.23(c)(7) requires
identifying to the PTO “a patent or patent application of
another from which one or more claims have been copied.”
Leviton alleges that § 10.23(c)(7)’s reference to “copying”
is only directed to the interference context because it
refers to provisions that address a request for an interfer-
ence. In this context, Narcisse’s interpretation “of an-
other” meant another patent owner, and not another
inventive entity. Leviton further argues the concept of
“copying” is a term of art used exclusively in the interfer-
ence context.
Meihao responds that “copying” means “copying” and
there is no language that limits it to the interference
context. Moreover, Meihao responds that the rules do not
apply solely to interferences involving different patent
owners, but also explicitly apply to interferences involving
different patent applicants. See 37 C.F.R. § 1.41(a)
(“Unless the contrary is indicated the word ‘applicant’
when used in these sections refers to the inventor or joint
inventors who are applying for a patent.”).
1 Leviton suggests that the district court found that
Meihao committed inequitable conduct per se based on
“copying” the claims. This is incorrect. The district court
concluded that the copying of claims is “essentially mate-
rial per se” but not inequitable conduct per se.
LEVITON MFG v. UNIVERSAL SECURITY 10
We agree with Leviton that § 10.23(c)(7) is primarily
directed to the interference context. Section 10.23(c)(7)
specifically refers to § 1.604(b) and § 1.604(7)(c), both of
which address a request for an interference. Leviton did
not request declaration of an interference in this case.
Indeed, an interference generally cannot be declared
between applications by a single party. Thus, we agree
with Leviton that § 10.23(c)(7)’s express prohibition on
the “copying” of claims is not applicable to the instant
situation.
Second, Leviton argues that the Germain application
was not material to inventorship. Leviton contends that
if the ’766 claims are supported by the common specifica-
tion of the ’766 and ’558 patents, then Germain and his
coinventors could not have conceived the inventions in the
’766 claims, because those inventions were described
several years earlier in the ’558 patent.
Meihao responds that a reasonable examiner would
want to know if two different applications had two differ-
ent sets of inventors that both claimed to make the same
invention. Meihao contends that an examiner would not
automatically discount the Germain application in deter-
mining inventorship simply because it had a later priority
date because no person may patent an invention that “he
did not himself invent.” 35 U.S.C. § 102(f).
We agree with Meihao that the Germain application
was material to inventorship. Even if one application had
an earlier priority date, the examiner would have to
evaluate which set of inventors actually conceived of the
invention. See Invitrogen Corp. v. Clontech Labs, Inc.,
429 F.3d 1052, 1063 (Fed. Cir. 2005) (Conception of an
invention is the “formation in the mind of the inventor, of
a definite and permanent idea of the complete and opera-
tive invention, as it is hereafter to be applied in prac-
tice.”); Hitzeman v. Rutter, 243 F.3d 1345, 1358-59 (Fed.
Cir. 2001) (“[A]n inventor who failed to appreciate the
11 LEVITON MFG v. UNIVERSAL SECURITY
claimed inventive features of a device at the time of
alleged conception cannot use his later recognition of
those features to retroactively cure his imperfect concep-
tion.”). It is not enough for Leviton to claim that the
earlier specification does in fact support the claims.
Neither an inventor nor his counsel may graft claims onto
an earlier specification if those claims do not reflect what
the inventor actually invented at the time of the earlier
application.
The copying of certain claims from the Germain appli-
cation with one set of named inventors into the ’766
patent application with another set of inventors suggests
that the named inventors may not have, in fact, invented
the claimed subject matter. Here, Leviton submitted
patent applications and sworn inventorship declarations
from two different sets of inventors, both attesting that
they were inventors of the claimed subject matter. Had
the examiner been aware that different Leviton employ-
ees each claimed to be first inventors of the same subject
matter recited in the same claims, it would have raised
serious questions regarding inventorship–an issue that is
clearly material to patentability. Moreover, as we have
acknowledged, “whether the inventorship of the patents
as issued is correct does not determine the materiality of
the statements in this case, just as whether concealed
prior art would actually invalidate the patent is irrelevant
to materiality.” See PerSeptive, 225 F.3d at 1322; Larson,
559 F.3d at 1327. Even if the examiner might have
ultimately concluded that DiSalvo and Zeigler invented
the claimed subject matter, the nearly identical claims
raise a substantial inventorship question that would have
required additional investigation by the examiner. Thus,
we hold that Leviton’s failure to disclose the Germain
application during the prosecution of the ’766 patent was
material.
LEVITON MFG v. UNIVERSAL SECURITY 12
Third, Leviton argues that the district court erred by
considering the Germain patent material to double pat-
enting. According to Leviton, the intent of the double-
patenting rule is to allow the PTO to prevent two patents
from issuing at different times with the same claims.
Leviton contends that Narcisse gave the PTO the infor-
mation to evaluate the double-patenting issue during the
prosecution of the later-priority (but earlier-filed) Ger-
main application. Moreover, Leviton contends that the
PTO could not use the Germain application to make a
double-patenting rejection in the ’766 patent prosecution
because the examiner would have allowed the earlier
priority patent to issue if there were no other rejections
remaining.
Meihao responds that a reasonable examiner would
consider Germain material to double patenting. More-
over, Meihao points out that, under Manual of Patent
Examining Procedure (“MPEP”) Section 804, the PTO
examiner would first issue a provisional double patenting
rejection to both the application for the ’766 patent and
the Germain application before withdrawing one of those
rejections.
We hold that the copying of claims would be material
to the issue of double-patenting because a reasonable
examiner would want to consider both applications.
Although it is unlikely that the examiner would ulti-
mately apply the double patenting rejection to the appli-
cation with an earlier priority date, the double patenting
issue would typically lead to an immediate provisional
rejection as to each application. See MPEP Section 804.
Once all other rejections are resolved, the provisional
rejection can be withdrawn to one application, which will
then issue as a patent. While the rejection may be with-
drawn as to the application with the earlier filing date, it
is not required by the MPEP Guidelines. Thus, the PTO
could have rejected the ’766 patent for double-patenting.
13 LEVITON MFG v. UNIVERSAL SECURITY
Accordingly, we conclude that knowledge of the Germain
application during the ’766 patent prosecution would be
material.
Finally, Leviton argues that the disclosure of the
Germain application during the ’766 prosecution would
not have affected the examiner’s conclusion that the
claims were supported by the specification. Leviton notes
that the examiner stated (in the context of the double-
patenting issue) that the ’766 patent “disclose[s] every-
thing claimed [in Germain] except the use of a latched
reset lockout with the interrupting device.” Leviton
argues that nobody has had trouble recognizing that the
claimed “movable bridge” is described in the ’766 specifi-
cation as the movable contact arms 50 and 70. Leviton
argues that the written description issue only concerns
whether the description would allow persons of ordinary
skill in the art to recognize that the inventor invented
that which is claimed.
Meihao responds that this is improper “but for” argu-
ment of what the examiner would have done. Meihao
argues that in not disclosing Germain, Leviton withheld
the very reference that would have caused any reasonable
examiner to question the ’766 patent application’s compli-
ance with the statute.
We agree with Leviton that the Germain application
is not material to the written description requirement.
Pursuant to 35 U.S.C. § 112, ¶ 1, the ’766 patent specifi-
cation must support its claims. The Germain application
does not affect whether the ’766 patent specification
supports its claims, and thus should not affect a reason-
able examiner’s assessment. Nevertheless, because a
reasonable examiner would want to consider the Germain
application with respect to inventorship and double
patenting, the district court correctly concluded that the
failure to disclose the Germain application during the ’766
patent prosecution was material.
LEVITON MFG v. UNIVERSAL SECURITY 14
b. Related Litigation
Leviton also challenges the district court’s conclusion
that Leviton’s failure to disclose related litigation during
the prosecution of the ’766 patent was material. Meihao
identified twelve cases filed before the ’766 patent issued
involving its parent patents that Meihao contends should
have been disclosed during the prosecution of the ’766
patent. Leviton does not dispute that the parent patents
of the ’766 patent were litigated in at least a dozen law-
suits filed before the ’766 patent issued. Leviton also does
not dispute that it was aware of those cases, as well as the
allegations of invalidity and unenforceability made in
many of them. Leviton instead argues that the fact that
Leviton succeeded on the validity of those patents shows
that those litigations were not material. We disagree.
Leviton violated the requirements of MPEP § 2001.06(c)
and this Court’s precedent by failing to bring these cases
to the PTO’s attention. See Nilssen v. Osram Sylvania,
Inc., 504 F.3d 1223, 1224 (Fed. Cir. 2007) (holding that
the existence of earlier related litigation itself was mate-
rial information). Leviton should have disclosed the
existence of the cases themselves and material informa-
tion from those cases, not just invalidating prior art.
MPEP § 2006(c) expressly notes that defenses raised
against validity or charges of inequitable conduct would
be material to patent examination:
For example, the defenses raised against validity
of the patent, or charges of "fraud" or "inequitable
conduct" in the litigation, would normally be "ma-
terial to the examination" of the reissue applica-
tion. It would, in most situations, be appropriate
to bring such defenses to the attention of the Of-
fice by filing in the reissue application a copy of
the court papers raising such defenses. At a
minimum, the applicant should call the attention
of the Office to the litigation, the existence and
15 LEVITON MFG v. UNIVERSAL SECURITY
the nature of any allegations relating to validity
and/or "fraud," or "inequitable conduct" relating to
the original patent, and the nature of litigation
materials relating to these issues.
Thus, Leviton should have disclosed these litigations,
not merely ones where a patent was invalidated. The
failure to disclose such litigations normally would be
material, and we conclude that they are material here.
2. Intent to Deceive
We next consider whether Leviton withheld the Ger-
main application and related litigation with an intent to
deceive the PTO. This Court has held that the intent to
deceive must be “viewed in light of all the evidence . . . .
Intent need not, and can rarely be, proven by direct
evidence. Rather, intent to deceive is generally inferred
from the facts and circumstances surrounding the appli-
cant’s overall conduct.” Impax Labs., Inc. v. Aventis
Pharmaceuticals, Inc., 468 F.3d 1366, 1374-75 (Fed. Cir.
2006); see also Cargill, Inc. v. Canbra Foods, Ltd., 476
F.3d 1359, 1364 (Fed. Cir. 2007) (“[B]ecause direct evi-
dence of deceptive intent is rarely available, such intent
can be inferred from indirect and circumstantial evi-
dence.”). Even if the nondisclosed information is of “rela-
tively high materiality,” however, inequitable conduct
cannot be found where “[the patentee] offer[s] a plausible,
good faith explanation for why [the nondisclosed informa-
tion] was not cited to the PTO.” Warner-Lambert Co. v.
Teva Pharms. USA, Inc., 418 F.3d 1326, 1348 (Fed. Cir.
2005). Moreover, “[a]n accused infringer cannot carry its
threshold burden simply by pointing to the absence of a
credible good faith explanation.” See Larson Mfg. Co. v.
Aluminart Prods. Ltd., 559 F.3d 1317, 1341 (Fed. Cir.
2009) (citing Star Scientific, Inc. v. R.J. Reynolds Tobacco
Co., 537 F.3d 1357, 1368 (Fed. Cir. 2008)). We rarely
affirm a grant of summary judgment of inequitable con-
duct, and in those cases where we have affirmed, the
LEVITON MFG v. UNIVERSAL SECURITY 16
applicants did something other than fail to disclose a
commonly owned application or related litigation. See,
e.g., Paragon Podiatry Lab, Inc. v. KLM Labs. Inc., 984
F.2d 1182 (Fed. Cir. 1993) (affirming inference of intent to
deceive “not simply from the materiality of the affidavits,
but from the affirmative acts of submitting them, their
misleading character, and the inability of the examiner to
investigate the facts”).
Meihao argues that the district court properly found
that Leviton intended to deceive the PTO. Meihao refers
to a number of findings by the magistrate judge that
support its conclusion: (1) Narcisse failed to provide a
credible explanation for why he did not notify the PTO
about the “copying” of claim language from the Germain
application; (2) Leviton had a strong motive to deceive
because moving the claims from the Germain application
to the ’766 patent would allow Leviton to avoid several
years of potentially invalidating art; (3) Narcisse’s experi-
ence and knowledge meant that he should have known
about his duty to disclose the Germain application; and
(4) there was no evidence of countervailing good faith in
Leviton’s dealings with the PTO.
Leviton counters that the magistrate judge improp-
erly inferred an intent to deceive. According to Leviton,
at the minimum, genuine issues of material fact preclude
summary judgment of inequitable conduct. Leviton
argues that Narcisse offered a reasonable explanation for
why he did not inform the PTO of the Germain applica-
tion: he did not believe that Germain was prior art be-
cause the priority date of the ’766 patent was at least
three years before Leviton filed the Germain application.
We hold that there are genuine issues of material fact
which preclude summary judgment for inequitable con-
duct, and we remand for an evidentiary hearing. The
district court inferred an intent to deceive based on Nar-
cisse’s failure to advise the PTO of the Germain applica-
17 LEVITON MFG v. UNIVERSAL SECURITY
tion and related litigation, which is an omission, not an
affirmative misrepresentation. We have not previously
affirmed a grant of summary judgment based on a failure
to disclose a commonly owned application or related
litigation, and we decline to do so on the facts of this case.
See, e.g., Paragon Podiatry, 984 F.2d 1182. While a
district court may make inferences based on the evidence,
the district court’s inference was not the only reasonable
one based on the record. See Star Scientific, 537 F.3d at
1366 (“Further, the inference must not only be based on
sufficient evidence and be reasonable in light of that
evidence, but it must also be the single most reasonable
inference able to be drawn from the evidence to meet the
clear and convincing standard.”). During his deposition,
Narcisse provided a plausible explanation for why he did
not disclose the Germain application: “[b]ecause the
Germain application is not a prior art reference to the
’766 application.” Narcisse further explained, “[The
Germain application] was not material to the patentabil-
ity of the ’766 application. . . . [I]t was clear that the ’766
application was prior art . . . to the Germain. And so the
Germain was not prior art to the ’766, and therefore the
Germain application didn’t come into the picture at all.”
While we conclude that Narcisse’s failure to disclose the
Germain application was material, we cannot agree that
Narcisse’s explanation of his thoughts at the time were
unreasonable as a matter of law. See Warner-Lambert,
418 F.3d at 1348. Thus, the district court could not find
Narcisse’s explanation to be implausible without an
evidentiary hearing.
Meihao correctly points out that Narcisse failed to
provide any explanation at his deposition for why he did
not disclose related litigation. However, the failure to
provide an explanation is not independently dispositive of
whether a patent prosecutor intended to deceive the PTO.
See Larson, 559 F.3d at 1341. In addition, Narcisse later
LEVITON MFG v. UNIVERSAL SECURITY 18
submitted a memorandum during ’766 reexamination
proceedings disclosing all of the related litigations, and he
summarized the inequitable conduct allegations that had
been made with respect to the Germain application.
While this does not necessarily demonstrate good faith, it
may be evidence of good faith. The district court could not
find that Leviton intended to deceive the PTO by failing to
notify the PTO of related litigations without an eviden-
tiary hearing, i.e., as a matter of law.
Meihao also contends that Leviton cannot now argue
that the magistrate judge erred by not hearing live testi-
mony from Narcisse because Leviton never sought to
present live testimony. See, e.g., Paterson-Leitch Co. v.
Mass. Mun. Wholesale Elec. Co., 840 F.2d 985, 990-91 (1st
Cir. 1988) (holding that “an unsuccessful party is not
entitled as of right to de novo review . . . of an argument
never seasonably raised before the magistrate [judge]”).
However, in its opposition to Meihao’s motion for costs
and attorney fees before the magistrate judge, Leviton
specifically noted, “[T]o rule on Meihao’s motion, the
Court would need to reopen discovery and conduct a
bench trial on inequitable conduct . . . .” 2 Leviton re-
peated this argument before the district judge in objecting
to the magistrate judge’s report and recommendation, and
specifically complained about the lack of live testimony.
Thus, Leviton is entitled to argue that it was denied an
evidentiary hearing.
Because we hold that genuine issues of material fact
exist that preclude summary judgment for inequitable
conduct, we vacate the determination of the district court
and remand for a bench trial.
2 Leviton argued that such a bench trial, while nec-
essary to resolve the inequitable conduct issue, would be
unjustified because the case was closed and for other
reasons stated in the opposition.
19 LEVITON MFG v. UNIVERSAL SECURITY
C. Vexatious Litigation
We also vacate and remand the district court’s deci-
sion and fee award with respect vexatious litigation. We
first note that the district judge and magistrate judge
expressly acknowledged that an attorney fees award on
litigation misconduct alone would justify only a smaller
award, and thus we must necessarily remand for a deter-
mination of fees. In addition, the district court’s vexa-
tious litigation determination appeared to depend at least
in part on the holding of inequitable conduct, which we
vacated. For example, the district judge reasoned, “The
inference is inescapable that the misguided efforts by
Leviton’s counsel to resist discovery on inequitable con-
duct arose in significant part because it was members of
that firm that had engaged in such conduct.” This ap-
pears to tie the analysis of Leviton’s discovery intent to
the court’s conclusion on inequitable conduct. Thus,
because we find that the inequitable conduct holding
must be vacated, we must also vacate the vexatious
litigation finding.
In addition, we are concerned with part of the district
court’s analysis related to the work product doctrine.
Pursuant to Rule 26(b)(3), “[o]rdinarily, a party may not
discover documents and tangible things that are prepared
in anticipation of litigation or for trial by another party or
its representative . . . .” Fed. R. Civ. Proc. 26(b)(3).
However, this is a qualified immunity and such materials
may be discovered if another party shows that it has
“substantial need for the materials to prepare its case and
cannot, without undue hardship, obtain their substantial
equivalent by other means.” Id. Opinion work product
generally remains immune from discovery unless the
requesting party demonstrated “substantial need” and
“undue hardship.” See Hickman v. Taylor, 329 U.S. 495,
510 (1947) (“Not even the most liberal of discovery theo-
ries can justify unwarranted inquiries into the files and
LEVITON MFG v. UNIVERSAL SECURITY 20
mental impressions of an attorney.”); Upjohn Co. v.
United States, 449 U.S. 383, 401-402 (1981) (“As Rule 26
and Hickman make clear, such work product cannot be
disclosed simply on a showing of substantial need . . . [A]
far stronger showing of necessity and unavailability by
other means would be required than is needed to justify
ordinary work product.”). As the magistrate judge ac-
knowledged, exceptions to the work product privilege are
“very rare” and exist only in “extraordinary circum-
stances.” See Chaudry v. Gallerizzo, 174 F.3d 394, 403
(4th Cir. 1999) (finding that appellant failed to present
the “very rare and extraordinary situation justifying
disclosure of opinion work product”); In re Allen, 106 F.3d
582, 607 (4th Cir. 1997) (“[O]pinion work product enjoys a
nearly absolute immunity and can be discovered only in
very rare and extraordinary circumstances.”). Here, the
magistrate judge appears to have found that the work
product doctrine would generally apply, but that Meihao
satisfied the rare “substantial need” and “undue hard-
ship” exceptions. While the magistrate judge may have
ultimately rejected Leviton’s work product arguments
based on these exceptions, we are not convinced that
Leviton’s arguments were frivolous. Leviton cannot be
required to concede that Meihao satisfied the “substantial
need” and “undue hardship” exceptions simply because a
defense of inequitable conduct was raised. Moreover,
Leviton could not possibly know in advance that the
magistrate judge was “mere days away” from releasing an
opinion granting Meihao’s motion to compel. Thus, we
conclude that the district court clearly erred by finding
that Leviton engaged in vexatious litigation by raising
frivolous work-product objections.
21 LEVITON MFG v. UNIVERSAL SECURITY
CONCLUSION
For the reasons provided above, the judgment of the
District Court is
VACATED AND REMANDED.
United States Court of Appeals
for the Federal Circuit
__________________________
LEVITON MANUFACTURING COMPANY, INC.,
Plaintiff,
v.
UNIVERSAL SECURITY INSTRUMENTS, INC.,
AND USI ELECTRIC, INC.,
Defendants.
------------------------------------------------------------------------
SHANGHAI MEIHAO ELECTRIC INC.,
Plaintiff-Appellee,
v.
LEVITON MANUFACTURING COMPANY, INC.,
Defendant-Appellant.
__________________________
2009-1421
__________________________
Appeal from the United States District Court for the
District of Maryland in consolidated case no. 05-CV-889,
Judge Andre M. Davis.
PROST, Circuit Judge, dissenting.
I respectfully dissent because the majority, in my
view, overlooks the compelling facts presented in this case
LEVITON MFG v. UNIVERSAL SECURITY 2
and suggests legal standards contrary to our precedent.
Although I am cognizant of this court’s rightful hesitance
to allow a finding of inequitable conduct on summary
judgment and agree with our precedent establishing that
such a finding is reserved for a rare case, I firmly believe
that this is that rare case. See M. Eagles Tool Warehouse,
Inc. v. Fisher Tooling Co., Inc., 439 F.3d 1335, 1339 (Fed.
Cir. 2006); Digital Control, Inc. v. Charles Mach. Works,
437 F.3d 1309, 1313 (Fed. Cir. 2006) (“Determining at
summary judgment that a patent is unenforceable for
inequitable conduct is permissible, but uncommon.”);
Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d
1182, 1190 (Fed. Cir. 1993) (“While our precedent urges
caution in the grant of summary judgment respecting a
defense of inequitable conduct, summary judgment is not
foreclosed.”).
On the facts of this case, I would uphold the district
court’s finding of inequitable conduct, including its find-
ing of deceptive intent, based on the conduct of one of
Leviton Manufacturing Company, Inc.’s (“Leviton’s”)
patent prosecutors, Claude Narcisse (“Narcisse”). Nar-
cisse, a veteran patent prosecutor, with twelve years of
patent prosecution experience, drafted claims for a patent
application, U.S. Patent Application No. 10/690,776 (“the
Germain application”), and filed it with the U.S. Patent
and Trademark Office (“PTO”) on behalf of Leviton.
Within six months, he drafted almost indistinguishable
claims for a different patent application, U.S. Patent
Application No. 10/827,093 (“the ’766 patent application”),
also owned by Leviton. Specifically, two independent
claims and six dependent claims in the ’766 patent appli-
cation were word-for-word identical to those in the Ger-
main application, with the exception of one insignificant
phrase. Although the ’766 patent application claimed the
same invention as the Germain application, Narcisse
attributed the ’766 patent application to a completely
3 LEVITON MFG v. UNIVERSAL SECURITY
different set of inventors. He proceeded to file the ’766
patent application with a priority date three-and-a-half
years earlier than the Germain application, expedite the
prosecution of the ’766 patent application, and prosecute
the ’766 patent application, through issuance as U.S.
Patent No. 6,864,766 (“the ’766 patent”), without inform-
ing the PTO about the co-pending Germain application.
Narcisse did not disclose the Germain application even
though, as he admitted in his deposition testimony, he
alone drafted both sets of claims, was aware of the near
identicality of the claims in the two applications, and was
familiar with double-patenting rejections, which inevita-
bly arise when different inventive groups submit indistin-
guishable claims in commonly-owned patent applications.
Narcisse’s best explanation for his failure to inform the
PTO about the Germain application is that he did not
think it was material because it was not prior art. This
purported justification is not only entirely incorrect but,
in my opinion and in that of the district court, incredulous
given the many reasons the Germain application should
have been disclosed, including its obvious importance to
inventorship and double-patenting issues.
In addition to withholding the Germain application,
Narcisse did not disclose that the parent patents of the
’766 patent were the subject of twelve litigations before
the ’766 patent issued (“the related litigation”), eight of
which had allegations of invalidity, unenforceability, or
inequitable conduct pending and unresolved during the
prosecution of the ’766 patent. At his deposition, Narcisse
admitted that he knew about the related litigation, that
he was aware that some of the litigations involved allega-
tions of invalidity or unenforceability, and that he was
actually involved in three of the litigations before the ’766
patent issued. He even admitted that, at the time he
prosecuted the ’766 patent, he was familiar with the
specific Manual of Patent Examining Procedure (“MPEP”)
LEVITON MFG v. UNIVERSAL SECURITY 4
provision, MPEP § 2001.06(c), that mandates disclosure of
litigation involving the subject matter of a patent applica-
tion, as well as allegations of inequitable conduct arising
in this litigation. Nevertheless, Narcisse provided abso-
lutely no explanation for failing to disclose the related
litigation. By admitting personal knowledge of the re-
lated litigation and familiarity with the MPEP provision
requiring its disclosure, without providing any justifica-
tion for withholding this information, Narcisse all but
admitted that he withheld the related litigation with
intent to deceive.
Under these facts, the district court, in my opinion,
properly found inequitable conduct on summary judg-
ment. The majority holds that both the Germain applica-
tion and the related litigation were material to the
prosecution of the ’766 patent but concludes that the
district court could not infer deceptive intent on summary
judgment. Even under the de novo standard of review
applicable to summary judgment, 1 I disagree with the
1 I would review the district court’s grounds for
its “exceptional” case finding, both inequitable conduct
and vexatious litigation, under the standard of review
applicable to an “exceptional case” finding under 35
U.S.C. § 285, rather than the de novo standard applicable
to summary judgment. Determining whether a case is
“exceptional” is the first step in deciding whether to
award attorney fees under 35 U.S.C. § 285. See Forest
Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1327-29 (Fed.
Cir. 2003). We review the “[district] court’s factual find-
ings, including whether the case is exceptional, for clear
error” but we “review de novo whether the court applied
the proper legal standard under [35 U.S.C.] § 285.” Id. at
1328; Waner v. Ford Motor Co., 331 F.3d 851, 857 (Fed.
Cir. 2003); see Reactive Metals & Alloys Corp. v. ESM,
Inc., 769 F.2d 1578, 1583 (Fed. Cir. 1985). As such, where
an inequitable conduct determination was made solely as
a predicate for finding the case “exceptional” under 35
U.S.C. § 285, we have reviewed the factual findings,
5 LEVITON MFG v. UNIVERSAL SECURITY
majority’s refusal to uphold the district court’s inference
of intent to deceive. I would affirm the district court’s
finding of intent because an inference of deceptive intent
is not merely the “single most reasonable inference,” Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d
1357, 1366 (Fed. Cir. 2008), but the only reasonable
including materiality and intent, for “clear error.” Bruno
Indep. Living Aids, Inc. v. Acorn Mobility Servs., Ltd., 394
F.3d 1348, 1352, 1354-55 (Fed. Cir. 2005); see Lighting
World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
1366-67 (Fed. Cir. 2004).
Here, the district court determined inequitable con-
duct, as well as vexatious litigation, as grounds for find-
ing the case “exceptional” in the context of Shanghai
Meihao Electric, Inc.’s (“Meihao’s”) motion for attorney
fees. Leviton Mfg. Co. v. Shanghai Meihao Elec., Inc., 613
F. Supp. 2d 670, 678 (D. Md. 2009) (order granting sum-
mary judgment) (“Summary Judgment Order”). Yet the
majority characterizes the district court’s inequitable
conduct determination as a summary judgment and
reviews this determination de novo. Majority Op. at 7, 18.
The majority proceeds to review the vexatious litigation
finding, the other grounds for the “exceptional case”
finding, for “clear error.” Id. at 20. In so doing, the
majority opinion is internally inconsistent and, as to the
standard of review applicable to the inequitable conduct
determination, incorrect. Given that Meihao filed this
motion after the entire consolidated case had been dis-
missed, there were no claims or counterclaims pending at
the time of the inequitable conduct determination. Thus,
the inequitable conduct determination was clearly not a
summary judgment decision and should not be reviewed
as such.
Nevertheless, my disagreement with the majority in
no way rests on the standard of review. Even under the
more rigorous de novo standard of review, I would affirm
the district court’s determination of inequitable conduct
in light of the particularly egregious facts of this case. As
such, I have treated the case under the majority’s premise
that the district court made its inequitable conduct de-
termination on summary judgment.
LEVITON MFG v. UNIVERSAL SECURITY 6
inference permitted under the circumstances presented in
this case.
I part ways with the majority for a number of reasons.
First, in holding the Germain application to be merely
“material,” the majority appears to sidestep our precedent
establishing that the Germain application was “highly
material” to the prosecution of the ’766 patent based on
the possibility that its disclosure could result in a double-
patenting rejection of the ’766 patent. Second, with
respect to deceptive intent, the majority seems to overlook
Narcisse’s most critical admissions regarding his recogni-
tion of the materiality of the withheld information.
Specifically, the majority is silent as to Narcisse’s aware-
ness that the PTO could issue a double-patenting rejec-
tion in a situation like the one presented by the
commonly-owned Germain application and ’766 patent
application, which claimed the identical invention to
different inventive groups. The majority is also silent
regarding Narcisse’s admission that he was familiar with
MPEP § 2001.06(c), which unambiguously required him to
disclose the related litigation, as well as the pending
inequitable conduct allegations in this litigation, to the
PTO.
The majority compounds these case-specific problems
by suggesting legal standards for which I believe there is
no basis in our precedent. In refusing to meaningfully
assess the plausibility of Narcisse’s purported explanation
for withholding the Germain application, the majority
diverges from our case law establishing that implausible
and specious justifications for withholding material
information do not raise a genuine issue of material fact
for summary judgment purposes. See Majority Op. at 17.
Further, the majority suggests that the belated disclo-
sure, in re-examination proceedings, of information
withheld during the prosecution of a patent may establish
7 LEVITON MFG v. UNIVERSAL SECURITY
good faith sufficient to avoid a finding of deceptive intent.
Id. at 18. This representation contradicts our precedent,
which properly recognizes that a delayed disclosure is
irrelevant to the inequitable conduct inquiry, an inquiry
that focuses exclusively on the patentee’s intent during
the initial prosecution of the patent. Quite simply, the
standards and reasoning put forward by the majority
seem to create an insurmountable burden for an inference
of deceptive intent.
I. ANALYSIS
A party asserting inequitable conduct must prove that
the patent applicant “(1) made an affirmative misrepre-
sentation of material fact, failed to disclose material
information, or submitted false material information, and
(2) intended to deceive the [PTO].” Star Scientific, 537
F.3d at 1365. Both elements, materiality and intent to
deceive, are questions of fact, and at least a threshold
level of each must be proven by clear and convincing
evidence. See id. If the party asserting inequitable
conduct establishes threshold levels of materiality and
intent, the court must then weigh the materiality and
intent, in light of all of the circumstances, to determine
whether the applicant’s conduct was egregious enough to
warrant a finding of inequitable conduct. Praxair, Inc. v.
ATMI, Inc., 543 F.3d 1306, 1313-14 (Fed. Cir. 2008);
Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1186 (Fed.
Cir. 2006). In making this determination, “[t]he more
material the omission or misrepresentation, the lower the
level of intent . . . required to establish inequitable con-
duct.” Star Scientific, 537 F.3d at 1367.
LEVITON MFG v. UNIVERSAL SECURITY 8
A. The Germain Application
1. Materiality
The majority “agree[s] with Meihao and the district
court that . . . the Germain application was material,”
specifically to inventorship and double-patenting, in the
prosecution of the ’766 patent. Majority Op. at 8, 10-13.
The district court, however, found that the Germain
application was not merely “material” but was “highly
material,” a significant distinction that the majority does
not acknowledge. 2 Summary Judgment Order at 699-700.
The district court found the application “highly material,”
because 37 C.F.R. § 10.23(c)(7) required its disclosure and
it could have raised concerns regarding inventorship,
double-patenting, and the written description require-
ment. Id. at 694-700. Based on the Germain application’s
importance to inventorship and double-patenting issues, I
would uphold the district court’s “high materiality” find-
ing.
As the district court concluded, the Germain applica-
tion was “highly material” because it “could have con-
ceivably served as the basis of a double patenting
rejection” of the ’766 patent. Dayco Prods., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1365 (Fed. Cir. 2003);
Akron Polymer Container Corp. v. Exxel Container, Inc.,
148 F.3d 1380, 1382 (Fed. Cir. 1998). The majority prop-
2 The degree of materiality plays a critical role
in the intent analysis. The more material the withheld
reference, the more likely that an inference of deceptive
intent is “the single most reasonable inference able to be
drawn from the evidence.” See Star Scientific, 537 F.3d at
1365; see also Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d
1359, 1366-67 (Fed. Cir. 2007) (quoting Critikon, Inc. v.
Becton Dickinson Vascular Access, Inc., 120 F.3d 1253,
1257 (Fed. Cir. 1997)); Purdue Pharma L.P. v. Endo
Pharms. Inc., 438 F.3d 1123, 1134-35 (Fed. Cir. 2006).
9 LEVITON MFG v. UNIVERSAL SECURITY
erly recognizes that, under MPEP § 804, disclosure of the
co-pending, commonly-owned Germain application, with
nearly identical claims to the earlier-priority ’766 patent
application, would have led to “an immediate provisional
[double-patenting] rejection” of each application. See
MPEP § 804; Majority Op. at 12 (emphasis added).
Furthermore, the PTO examiner would not have been
required to withdraw the rejection as to the earlier-
priority ’766 patent application, allowing the ’766 patent
to issue as opposed to the Germain application. See
MPEP § 804; Majority Op. at 12. Instead, “the PTO could
have rejected the ’766 patent for double-patenting.”
Majority Op. at 12; see Dayco Prods., 329 F.3d at 1365;
Akron Polymer, 148 F.3d at 1382.
Under our precedent in Akron Polymer and Dayco
Products, which the majority does not mention or distin-
guish, this potential for a double-patenting rejection is
sufficient to make the Germain application “highly mate-
rial.” In both cases, we concluded that a withheld later-
priority application was “highly material” to an earlier-
priority application claiming similar subject matter
because “it could have conceivably served as the basis for
a double patenting rejection.” Dayco Prods., 329 F.3d at
1365; Akron Polymer, 148 F.3d at 1382.
Further, under the “reasonable examiner” standard,
our main standard for materiality, “information is mate-
rial when a reasonable examiner would consider it impor-
tant in deciding whether to allow the application to issue
as a patent.” Star Scientific, 537 F.3d at 1367. Applying
this standard, the Germain application’s importance to
double-patenting would have made it critical to any
examiner’s evaluation of the ’766 patent. Accordingly, I
would uphold the district court’s determination that,
based on its importance to double-patenting concerns, the
Germain application was “highly material.”
LEVITON MFG v. UNIVERSAL SECURITY 10
In addition, the Germain application was “highly ma-
terial” to inventorship issues in the prosecution of the ’766
patent. “As a critical requirement for obtaining a patent,
inventorship is material.” Perseptive Biosystems, Inc. v.
Pharmacia Biotech, Inc., 225 F.3d 1315, 1321 (Fed. Cir.
2000). Where information is relevant to inventorship,
“whether the inventorship of the patents as issued is
correct does not determine the materiality of the [infor-
mation].” Id. at 1322. As such, regardless of whether the
inventorship of the ’766 patent is correct, the withheld
Germain application was “highly material.” A “reason-
able examiner” evaluating the ’766 patent application
would have found the co-pending Germain application,
which had several nearly identical claims attributed to an
entirely different set of inventors, critical in evaluating
patentability. The Germain application would have
raised serious concerns regarding whether the asserted
inventors actually conceived of the invention claimed in
the ’766 patent. Without the Germain application, how-
ever, the examiner had no reason to question the asserted
inventorship. Although the majority properly recognizes
that disclosure of the Germain application would have
raised “serious questions regarding inventorship” and “a
substantial inventorship question that would have re-
quired additional investigation by the examiner,” the
majority nonetheless holds that the Germain application
was only “material.” Majority Op. at 10-11. In my opin-
ion, given how critical the Germain application would
have been to triggering these significant inventorship
concerns, it was “highly material” to inventorship.
Thus, in light of the importance of the Germain appli-
cation to inventorship and double-patenting issues in the
prosecution of the ’766 patent, I would affirm the district
court’s finding that the Germain application was “highly
material.”
11 LEVITON MFG v. UNIVERSAL SECURITY
2. Intent
Because “direct evidence of deceptive intent is rarely
available,” Star Scientific, 537 F.3d at 1366, intent to
deceive must generally be inferred from circumstantial
evidence, M. Eagles, 439 F.3d at 1341. In other words,
“‘smoking gun’ evidence is not required . . . to establish an
intent to deceive.” Paragon Podiatry, 984 F.2d at 1189.
Nevertheless, the evidence establishing intent “must still
be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement.”
Star Scientific, 537 F.3d at 1366. Even gross negligence
is not sufficient. Kingsdown Med. Consultants, Ltd. v.
Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988).
Rather, to justify an inference of deceptive intent, “the
involved conduct, viewed in light of all the evidence,
including evidence indicative of good faith, must indicate
sufficient culpability to require a finding of intent to
deceive.” Astrazeneca Pharms. LP v. Teva Pharms. USA,
Inc., 583 F.3d 766, 776 (Fed. Cir. 2009). The inference of
deceptive intent “must not only be based on sufficient
evidence and be reasonable in light of that evidence, but it
must also be the single most reasonable inference able to
be drawn from the evidence to meet the clear and convinc-
ing standard.” Larson Mfg. Co. of S. Dakota, Inc. v.
Aluminart Prods. Ltd., 559 F.3d 1317, 1340 (Fed. Cir.
2009); Star Scientific, 537 F.3d at 1366.
Because an inference of deceptive intent is the only
reasonable inference to be drawn from the facts surround-
ing Narcisse’s withholding of the Germain application, I
disagree with the majority’s refusal to uphold the district
court’s finding of intent. At the time he prosecuted the
’766 patent, Narcisse was a seasoned patent attorney,
having practiced as a patent prosecutor for approximately
twelve years. See J.A. 1972-76; see also Molins PLC v.
LEVITON MFG v. UNIVERSAL SECURITY 12
Textron, Inc., 48 F.3d 1172, 1181 (Fed. Cir. 1995) (uphold-
ing finding of inequitable conduct where the district court
considered the experience of the patent prosecutor). Not
surprisingly, Narcisse admitted in his deposition testi-
mony that when he prosecuted the ’766 patent, he was
aware of his duty of disclosure and his understanding
that “in cases which are not entirely clear, it is better to
disclose the information to the [PTO] and let the [PTO]
decide what is material.” J.A. 2014. More specific to the
Germain application, Narcisse acknowledged that he was
familiar with the possibility of double-patenting rejections
in situations, like the one presented in this case, where
commonly-owned applications with different inventive
groups claim the same invention. J.A. 1991 (“Q. . . . [I]f
two different inventive groups tried to submit the same
claim in two different applications, but both were owned
by Leviton, that could give rise to a double patenting
rejection; is that right? . . . A. Yes. Q. And you were
aware of that when the ’766 patent was prosecuted? A.
Yes.”).
Narcisse alone drafted the claims in both the Germain
application and the ’766 patent application in the course
of just six months. J.A. 1983-84, 2001. Therefore, he
admittedly knew not only that both co-pending applica-
tions existed but also that they had what he described as
“very similar” claims. J.A. 1998, 2021. Despite his inti-
mate knowledge of the Germain application and his
familiarity with double-patenting rejections, Narcisse did
not disclose the Germain application to the PTO. J.A.
1998.
The district court properly noted that Leviton had a
motive to conceal the Germain application, with a priority
date three-and-a-half years later than the ’766 patent,
during the prosecution of the ’766 patent. See Summary
Judgment Order at 710. The PTO’s awareness of the
13 LEVITON MFG v. UNIVERSAL SECURITY
Germain application, at a minimum, would have delayed
the expedited prosecution of the ’766 patent application
arising out of the Petition to Make Special. At worst, the
Germain application could have prevented the ’766 patent
from issuing. Further, with such an earlier priority date,
the ’766 patent avoided a significant amount of prior art,
including the allegedly infringing product in this case,
which was manufactured after the priority date of the
’766 patent but before the priority date of the Germain
application. See id.
It seems to me that the circumstances surrounding
Leviton’s withholding of the Germain application are as
egregious as possible short of an explicit admission of
intent to deceive the PTO. An experienced patent prose-
cutor drafted the claims for two co-pending applications,
listing entirely different inventors, within months of one
another and thus was intimately familiar with their
nearly indistinguishable claims. He was also admittedly
aware of his duty of disclosure and the potential for a
double-patenting rejection in this situation, yet did not
disclose the Germain application. In my view, these facts
undoubtedly “indicate sufficient culpability to require a
finding of intent to deceive.” Kingsdown, 863 F.2d at 876.
As such, I believe Meihao met its burden to prove a
threshold level of intent to deceive by clear and convinc-
ing evidence.
Given that Meihao met its threshold burden to prove
intent, the district court correctly considered Leviton’s
purported good faith explanation for withholding the
Germain application. “The patentee need not offer any
good faith explanation unless the [party asserting inequi-
table conduct] first carries [its] burden to prove a thresh-
old level of intent to deceive by clear and convincing
evidence.” Star Scientific, 537 F.3d at 1368. Once the
party asserting inequitable conduct meets its threshold
LEVITON MFG v. UNIVERSAL SECURITY 14
burden, however, it is “incumbent upon the patentee to
rebut the evidence of deceptive intent with a good faith
explanation for the alleged misconduct.” Id.
Throughout Narcisse’s deposition, he refused to an-
swer many questions about the prosecution of the ’766
patent and his withholding of the Germain application.
Nevertheless, Narcisse did put forward two explanations
for his failure to disclose the Germain application. First,
Narcisse asserted that he did not disclose the Germain
application because it was not prior art. Second, Narcisse
claimed that he did not believe that 37 C.F.R. § 1.604(b)
required disclosure of the Germain application.
In considering a patentee’s good faith explanation for
withholding information from the PTO, “merely conclu-
sory statements or completely insupportable, specious, or
conflicting explanations or excuses” do not raise a genuine
issue of material fact for summary judgment purposes.
Digital Control, 437 F.3d at 1314 (emphasis added);
Paragon Podiatry, 984 F.2d at 1190 (emphasis added); see
Ferring, 437 F.3d at 1193. In other words, to create a
genuine issue of material fact, the patentee must put
forward a “plausible justification or excuse.” Digital
Control, 437 F.3d at 1314 (emphasis added); Paragon
Podiatry, 984 F.2d at 1191 (emphasis added). Leviton’s
contention at oral argument that “for summary judgment
purposes, [the district court] need[ed] to take [Narcisse]
at his word[;] . . . whether it’s a credible explanation or
not, it’s his explanation,” Oral Arg. at 19:45-20:01 avail-
able at http://oralarguments.cafc.uscourts.gov/mp3/2009-
1421.mp3, squarely contradicts this precedent and is
therefore wrong as a matter of law. In my opinion, the
district court properly rejected Narcisse’s justifications as
“implausible” and therefore insufficient to raise a genuine
issue of material fact. See Summary Judgment Order at
710.
15 LEVITON MFG v. UNIVERSAL SECURITY
First, Narcisse claimed that he did not disclose the
Germain application as a result of his belief that the
Germain application was not material because it “[wa]s
not a prior art reference to the ’766 [patent] application.”
J.A. 1998-99, 2001, 2021-22; see Oral Arg. at 7:24-29,
19:15-22, 22:25-33 (“[Narcisse’s] testimony is that he did
not believe [the Germain application] was material be-
cause . . . it was not prior art . . . .”), 60:24-59.
Our precedent makes clear that “[m]ateriality is not
limited to prior art but [instead] embraces any informa-
tion that a reasonable examiner would be substantially
likely to consider important in deciding whether to allow
an application to issue as a patent.” Liquid Dynamics
Corp. v. Vaughan Co., 449 F.3d 1209, 1226 (Fed. Cir.
2006) (emphasis added); Bristol-Myers Squibb Co. v.
Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234 (Fed. Cir.
2003); GFI, Inc. v. Franklin Corp., 265 F.3d 1268, 1274
(Fed. Cir. 2001); see Critikon, 120 F.3d at 1258. Thus, it
is indisputable that Narcisse’s supposed reasoning is
entirely incorrect.
More importantly, the district court correctly rejected
Narcisse’s explanation as implausible. It is implausible
that Narcisse, a veteran patent prosecutor and a member
of the patent bar for more than a decade, believed that the
only material information that must be brought to the
PTO’s attention is prior art. This purported justification
ignores the broad spectrum of information, with which
Narcisse was admittedly familiar, that the MPEP and the
Code of Federal Regulations require to be disclosed. The
most basic patent law treatises, in addition to our case
law, explain that materiality is not limited to prior art.
See, e.g., 4A-15 Donald S. Chisum, Chisum on Patents
§ 15.04 (2010) (“A patent applicant’s duty to disclose is
not limited to disclosing prior art. A patent applicant
must disclose any material information to the PTO.”);
LEVITON MFG v. UNIVERSAL SECURITY 16
Robert A. Matthews, Jr., Annotated Patent Digest § 27:47
(2010) (“Just because information may not qualify as prior
art does not necessarily mean it is not ‘material.’”); see
also 3-7 Donald S. Chisum, Chisum on Patents § 7.05; 4-
11 id. § 11.03.
The patent bar, an examination Narcisse passed ap-
proximately ten years before prosecuting the ’766 patent,
requires familiarity with the MPEP, which obligates
patent applicants to disclose to the PTO information other
than prior art. J.A. 1976 (“I became very familiar with
the MPEP, 37 CFR, and old or previous patent bar ex-
ams.”). In fact, Narcisse admitted his awareness of
MPEP provisions that require the disclosure of informa-
tion that is obviously not prior art, such as MPEP §
2001.06(c), which provides:
Where the subject matter for which a patent is be-
ing sought is or has been involved in litigation, the
existence of such litigation and any other material
information arising therefrom must be brought to
the attention of the [PTO]. Examples of such ma-
terial information, include evidence of possible
prior public use or sales, questions of inventor-
ship, prior art, allegations of ‘fraud,’ ‘inequitable
conduct,’ and ‘violation of duty of disclosure.’ An-
other example of such material information is any
assertion that is made during litigation which is
contradictory to assertions made to the examiner.
MPEP § 2001.06(c) (emphases added); J.A. 2008 (“Q.
Could you look at 2001.06(c). . . . Were you aware of that
rule or provision at the time you prosecuted the ’766
[P]atent [A]pplication? A. Yes I was.”). Not only does this
provision require disclosure of “the existence of . . . litiga-
tion” involving the subject matter of a patent application,
information that clearly falls outside the realm of prior
17 LEVITON MFG v. UNIVERSAL SECURITY
art, but also the listed examples of material information
show that materiality is not limited to prior art. Rather,
prior art is but one example in the list of “examples of
such material information.” See MPEP § 2001.06(c).
Narcisse’s rationale for failing to disclose the Germain
application is thus inconsistent with MPEP provisions
that he admits he was familiar with at the time he prose-
cuted the ’766 patent. This specific inconsistency, to-
gether with the fact that it is inconceivable that a patent
prosecutor with more than a decade of experience would
equate materiality solely with prior art, leads me to
firmly agree with the district court’s conclusion that
Narcisse’s purported justification is entirely implausible
and insufficient to create a genuine issue of material fact.
In my view, in light of our case law holding that specious
and implausible explanations for withholding material
information do not raise a genuine issue of material fact,
there is no basis in our precedent for the majority’s re-
fusal to allow the district court to reject Narcisse’s expla-
nation as “unreasonable” and “implausible” and therefore
insufficient to create a genuine issue of material fact on
summary judgment. See Majority Op. at 17.
Narcisse’s second explanation for his failure to dis-
close the Germain application is based on a technical
reading of the language “of another” in 37 C.F.R. §
1.604(b). 37 C.F.R. §1.604(b) provides that “[w]hen an
applicant presents a claim known to the applicant to
define the same patentable invention claimed in a pend-
ing application of another, the applicant shall identify
that pending application . . . .” 37 C.F.R. § 1.604(b) (em-
phasis added). In his deposition testimony, Narcisse
admitted that he was familiar with the provision at the
time he prosecuted the ’766 patent but claimed that he
“didn’t think,” “d[id]n’t know,” and was “not sure”
whether the provision would have applied to applications
“owned by the same entity.” J.A. 2013-14. Yet he never
LEVITON MFG v. UNIVERSAL SECURITY 18
discussed his understanding of the provision with anyone.
J.A. 2014. Even if, as the majority holds, Narcisse was
correct that 37 C.F.R. § 1.604(b) did not mandate disclo-
sure of the Germain application, this is a technical argu-
ment about a specific disclosure provision. See Majority
Op. at 9-10. This purported explanation does not affect
the other obvious reasons why the Germain application
should have been disclosed to the PTO during the prose-
cution of the ’766 patent.
As previously discussed, the Germain application
would have been critical to the prosecution of the ’766
patent, raising substantial inventorship and double-
patenting issues. Any patent practitioner, never mind
one with Narcisse’s level of experience, would realize that
the co-pending Germain application and the ’766 patent
application, claiming the same invention but attributing
it to different people, could not both issue as patents. It is
obvious that the PTO would want to be made aware of the
co-pending applications to investigate inventorship issues
and avoid double-patenting. Narcisse did not provide any
rationale for believing these concerns to be inapplicable to
his prosecution of the ’766 patent. Instead, he admitted
that he was aware that the situation that the commonly-
owned Germain application and ’766 patent application
presented “could give rise to a double[-]patenting rejec-
tion.” J.A. 1991.
Leviton’s proposed inference that Narcisse did not
disclose the Germain application because he did not
believe it was material prior art and did not think 37
C.F.R. § 1.604(b) required its disclosure is simply unrea-
sonable. Instead, given the obvious reasons the applica-
tion would have been highly important to the prosecution
of the ’766 patent, as well as Narcisse’s awareness of the
substantially similar claims and that such a situation
could lead to a double-patenting rejection, the overwhelm-
19 LEVITON MFG v. UNIVERSAL SECURITY
ing circumstantial evidence suggests that Narcisse pur-
posefully withheld the Germain application. In light of
these glaring facts, an inference of deceptive intent is the
only reasonable inference to be drawn from Narcisse’s
withholding of the Germain application. See Star Scien-
tific, 537 F.3d at 1366. I would therefore uphold the
district court’s inference of deceptive intent on summary
judgment. 3
B. Related Litigation
It is undisputed that the parent patents of the ’766
patent were involved in twelve litigations before the ’766
patent issued and that Leviton did not disclose any of
these litigations to the PTO during the prosecution of the
’766 patent. A review of the district court docket for each
litigation shows that of these twelve litigations, six were
filed, and four had been pending for almost a year, before
Leviton filed the ’766 patent application. Eight of these
litigations had allegations of invalidity, unenforceability,
or inequitable conduct pending before Leviton applied for
3 I am not sure what to make of the majority’s
statement that “[w]e rarely affirm a grant of summary
judgment of inequitable conduct, and in those cases where
we have affirmed, the applicants did something other
than fail to disclose a commonly owned application or
related litigation.” Majority Op. at 15-16; see id. at 17.
The majority appears to be resting, at least in part, on the
idea that we have never faced facts analogous to those
presented in this case. I agree with the majority that the
striking facts of this case are unusual, yet I cannot agree
that this is a reason not to affirm the district court’s
finding of inequitable conduct. We regularly decide cases
involving novel facts by applying our legal standards to
the new factual situation presented. In my view, the
novelty of the factual situation currently before the court
suggests only that the exceptional and egregious conduct
in this case is not common amongst practitioners before
the PTO.
LEVITON MFG v. UNIVERSAL SECURITY 20
the ’766 patent, four of which involved such allegations
for more than eight months before prosecution began.
1. Materiality
Like the majority, I would uphold the district court’s
finding that the withheld related litigation was material.
See Majority Op. at 14-15; Summary Judgment Order at
701. As the majority recognized, MPEP § 2001.06(c)
explicitly requires the disclosure of the “existence of . . .
litigation” involving “the subject matter for which a
patent is being sought,” as well as “any other material
information arising” from the litigation, including “allega-
tions of ‘fraud,’ ‘inequitable conduct,’ and ‘violation of duty
of disclosure.’” MPEP § 2001.06(c). We have held that
“[i]t is clear from the language of § 2001.06(c) that the
existence of the litigation itself is material information
that an examiner needs to have. It is important because
it signals the examiner that other material information
relevant to patentability may become available through
the litigation proceedings.” Nilssen v. Osram Slyvania,
Inc., 504 F.3d 1223, 1234 (Fed. Cir. 2007). Thus, the
existence of the related litigation, as well as the pending
allegations of inequitable conduct and unenforceability,
was material information that Leviton had a duty to
disclose. That Leviton ultimately avoided a finding of
invalidity or unenforceability in these litigations is irrele-
vant to whether a reasonable examiner, at the time the
’766 patent was being prosecuted, would have found the
pending litigations and their inequitable conduct allega-
tions important in assessing patentability.
2. Intent
As with the Germain application, I disagree with the
majority’s conclusion that the district court could not
infer, on summary judgment, that Narcisse withheld
21 LEVITON MFG v. UNIVERSAL SECURITY
information about the related litigation with deceptive
intent. See Majority Op. at 17-18. In light of Narcisse’s
critical admissions during his deposition, there is simply
no other inference to be drawn from the evidence.
First, Narcisse admitted that he was aware of the
pending related litigation and that he knew some of these
litigations raised allegations of invalidity and unenforce-
ability. J.A. 2008-10. He further acknowledged that he
was actively involved in three of these litigations before
the ’766 patent issued. J.A. 2008-10, 2020-21. As such,
there is no question that Narcisse knew of the related
litigation.
Narcisse also admitted that he was familiar with the
MPEP provision that mandates disclosure of the related
litigation. Specifically, Narcisse acknowledged his
awareness of MPEP § 2001.06(c), which requires disclo-
sure of the “existence of . . . litigation” involving the
subject matter of a patent application and any allegations
of inequitable conduct in these litigations. MPEP §
2001.06(c); J.A. 2008 (“Q. Could you look at 2001.06(c). . . .
Were you aware of that rule or provision at the time you
prosecuted the ’766 [P]atent [A]pplication? A. Yes I was.
Q. And you were aware that this was part of your duty of
disclosure? A. Yes.”). Narcisse also admitted that he
understood that this provision was part of his “duty of
disclosure.” J.A. 2008. Notably, the majority opinion
nowhere references this significant admission. 4
4 This is perhaps a result of the parties’ errors
at oral argument. In arguing that Narcisse admitted his
awareness of his duty to disclose the related litigation,
Meihao’s counsel cited the wrong page of Narcisse’s
deposition testimony. Meihao’s counsel cited to J.A. 1975,
but the proper citation is J.A. 2008. See Oral Arg. at
43:52-45:55; J.A. 2008. As such, Leviton’s counsel was
also incorrect in asserting his belief that there was not
LEVITON MFG v. UNIVERSAL SECURITY 22
Narcisse further admitted that he did not disclose the
existence of the related litigation. J.A. 2010. Narcisse’s
admissions as to his knowledge of the related litigation
and of his duty, yet failure, to disclose the information are
more than sufficient for Meihao to meet its threshold
burden to show deceptive intent.
Leviton has never attempted to rebut this showing by
providing a justification for Narcisse’s failure to disclose
the related litigation during the prosecution of the ’766
patent. The majority recognizes Narcisse’s “fail[ure] to
provide any explanation at his deposition for why he did
not disclose [the] related litigation” but goes on to cite
Larson Manufacturing for the proposition that “the fail-
ure to provide an explanation is not independently dispo-
sitive of whether a patent prosecutor intended to deceive
the PTO.” Majority Op. at 17. Larson Manufacturing,
however, states only the familiar rule that “an accused
infringer cannot carry its threshold burden simply by
pointing to the absence of a credible good faith explana-
tion.” 559 F.3d at 1341. In other words, “the patentee is
not required to offer evidence of good faith unless the
accused infringer first meets its burden to prove—by clear
and convincing evidence—the threshold level of deceptive
intent.” Id. Meihao does not rely on Narcisse’s failure to
provide a good faith explanation in order to meet its
threshold burden to establish deceptive intent. Narcisse’s
many critical admissions regarding his withholding of the
related litigation, despite knowing of the information and
his duty to disclose it, are more than sufficient to pass
this threshold. Once Meihao satisfied this burden, it
became “incumbent upon [Leviton] to rebut the evidence
of deceptive intent with a good faith explanation for the
alleged misconduct.” Star Scientific, 537 F.3d at 1368.
“any testimony that [Narcisse was] aware of this particu-
lar provision,” namely MPEP § 2001.06(c). Oral Arg. at
59:01-11.
23 LEVITON MFG v. UNIVERSAL SECURITY
Yet Narcisse has put forward no such explanation. The
fact that Narcisse has provided no excuse for his actions
is not, as the majority implies, Meihao’s only evidence of
intent. Rather, Narcisse’s failure to provide a good faith
explanation serves only to prevent Leviton from rebutting
Meihao’s strong showing of intent to deceive.
The majority proceeds to reason that Narcisse’s be-
lated disclosure of the related litigation in reexamination
proceedings, more than two years after the ’766 patent
had issued and Meihao had raised the inequitable conduct
allegations in this case, “may be evidence of good faith.”
Majority Op. at 18. This proposition, for which the major-
ity provides no citation, conflicts with our precedent. We
have held that a patentee’s disclosure of withheld infor-
mation in re-examination and re-issuance proceedings is
“irrelevant” to whether the patentee committed inequita-
ble conduct in acquiring the patent, an inquiry that
centers on the patentee’s “intent during the prosecution of
the original application.” Bristol-Myers Squibb Co., 326
F.3d at 1241; see Molins PLC, 48 F.3d at 1182 (“We rec-
ognize that [the withheld references] were cited eventu-
ally to the PTO and that the examiner . . . passed the
reexamination application to issue thereafter. However,
the references were not cited when they should have
been.”). Thus, the majority’s suggestion that Leviton may
be able to establish good faith in the prosecution of the
’766 patent by its disclosure of the related litigation years
after the patent issued, where Narcisse knew of the
related litigation and his duty to disclose it at the time of
the initial prosecution, is, in my view, contrary to our
precedent.
In sum, Narcisse all but admitted that he withheld
the related litigation with deceptive intent. If we do not
accept that an inference of deceptive intent is the “single
most reasonable inference,” Star Scientific, 537 F.3d at
LEVITON MFG v. UNIVERSAL SECURITY 24
1366, where a patent prosecutor provides absolutely no
explanation, good faith or otherwise, for his conduct and
admits (1) that he knew of and had personal involvement
with the withheld material information; (2) that he was
familiar with specific MPEP provision that, by its express,
unambiguous terms, mandates disclosure of the informa-
tion; (3) that he understood this provision to be part of his
duty of disclosure to the PTO; and (4) that he still did not
disclose the information, then I fail to see when an infer-
ence of intent on summary judgment will ever be permis-
sible. The only reasonable inference to be drawn from
Narcisse’s unexplained failure to disclose the related
litigation, despite his admitted knowledge of the pending
related litigation and the MPEP provision that requires
its disclosure, is that he deliberately withheld information
about the litigations from the PTO. Therefore, I would
uphold the district court’s inference of deceptive intent.
C. Lack of an Evidentiary Hearing
Leviton argues that the district court should have
held an evidentiary hearing where Narcisse could fully
explain his conduct and the court could assess his credi-
bility. Accepting the majority’s premise that this was a
summary judgment motion, see supra n.1, Leviton had
“ample opportunity” to create a genuine issue of material
fact to avoid summary judgment. Paragon Podiatry, 984
F.2d at 1192. Yet Leviton failed to do so.
Throughout Narcisse’s deposition, he was repeatedly
asked about his rationale for withholding both the Ger-
main application and the related litigation but refused to
answer numerous questions on these topics. Neverthe-
less, when Meihao filed a motion for summary judgment,
Leviton chose not to submit an affidavit from Narcisse to
further explain his decisions to withhold this information.
At the oral hearing on Meihao’s summary judgment
25 LEVITON MFG v. UNIVERSAL SECURITY
motion, the district court accepted new evidence from
Leviton, but Leviton still did not attempt to supplement
the record with oral testimony or affidavits from Narcisse
or any other witness.
“On summary judgment, in order to create a genuine
issue, [Leviton] bore the burden of submitting an affidavit
from [Narcisse] to contradict [Meihao’s] evidence of intent
if [it] believed that testimony from [Narcisse] would
establish credible evidence for the withholding.” Ferring,
437 F.3d at 1192. At oral argument, Leviton represented
that it did not submit any additional evidence, because it
thought it would win on summary judgment. Oral Arg. at
4:14-5:26. This, however, was a strategic decision for
which Leviton must suffer the consequences. Moreover,
Leviton has not indicated or even suggested that there is
additional evidence or explanation that might change the
result. See Paragon Podiatry, 984 F.2d at 1192. It merely
argues that, on the record before the court, it should have
survived summary judgment. Because Leviton failed to
put forward evidence raising a genuine issue of material
fact, Ferring, 437 F.3d at 1193, Leviton was not entitled
to avoid summary judgment and thus have an evidentiary
hearing. Accordingly, the district court properly granted
summary judgment of inequitable conduct against Levi-
ton.
II. CONCLUSION
As the district court recognized, Leviton’s arguments
“comprise in the main a jumble of miscitations to legal
standards; blatant ignoring of other, controlling stan-
dards; reliance on arguments that are . . . utterly irrele-
vant to the issues presented; and a veritable sea of red
herrings.” Summary Judgment Order at 679. By accept-
ing many of these arguments, the majority opinion argua-
bly creates troubling new standards for intent to deceive.
LEVITON MFG v. UNIVERSAL SECURITY 26
The majority overlooks the disturbing facts of this case in
which an experienced patent prosecutor withheld critical
information with which he was intimately familiar,
despite his awareness of reasons that the PTO would
want to be made aware of the information and lack of a
credible reason for the omissions. In overturning the
district court’s finding of deceptive intent on these facts,
the majority’s legal standards and reasoning take the
burden to establish deceptive intent to an unprecedented
level. I cannot agree with the majority’s analysis and
would affirm the district court’s inequitable conduct
determination, including its finding of deceptive intent.