United States Court of Appeals for the Federal Circuit
2006-1571, -1598
ADENTA GMBH, DR. WOLFGANG HEISER,
and CLAUS SCHENDELL,
Plaintiffs-Cross Appellants,
v.
ORTHOARM, INC.
Defendant-Appellant,
and
AMERICAN ORTHODONTICS CORPORATION,
Defendant.
John P. Fredrickson, Boyle Fredrickson Newholm Stein & Gratz, S.C., of New
York, New York, argued for plaintiffs-cross appellants.
Thomas S. Reynolds II, Michael Best & Friedrich LLP, of Milwaukee, Wisconsin,
argued for defendant-appellant. With him on the brief was Timothy M. Hansen.
Appealed from: United States District Court for the Eastern District of Wisconsin
Senior Judge Thomas J. Curran
United States Court of Appeals for the Federal Circuit
2006-1571, -1598
ADENTA GMBH, DR. WOLFGANG HEISER,
and CLAUS SCHENDELL,
Plaintiffs-Cross Appellants,
v.
ORTHOARM, INC.,
Defendant-Appellant,
and
AMERICAN ORTHODONTICS CORPORATION,
Defendant.
____________________
DECIDED: September 19, 2007
____________________
Before MICHEL, Chief Judge, LOURIE, Circuit Judge, and ROBERTSON, District
Judge. ∗
LOURIE, Circuit Judge.
OrthoArm, Inc. appeals from the decisions of the United States District Court for
the Eastern District of Wisconsin denying its motion to dismiss this case for lack of
subject matter jurisdiction and its motion, following a jury verdict, for judgment as a
∗
Honorable James Robertson, District Judge, United States District Court
for the District of Columbia, sitting by designation.
matter of law that claims 1-8 and 10-13 of U.S. Patent 6,257,883 (the “’883 patent”) are
not invalid. Adenta GmbH v. OrthoArm, No. 04-C-905 (E.D. Wis. Jan. 20, 2006)
(Jurisdiction Order); Adenta GmbH v. OrthoArm, No. 04-C-905 (E.D. Wis. July 11, 2006)
(JMOL Order). Adenta GmbH, Dr. Wolfgang Heiser, and Claus Schendell cross-appeal
from the decision of the district court denying their request for a declaratory judgment
that the case is exceptional. Because we determine that a case or controversy exists,
we affirm the decision of the district court denying the motion to dismiss for lack of
subject matter jurisdiction. Because we determine that substantial evidence exists in
the record supporting the jury’s verdict that the asserted claims of the ’883 patent are
invalid based on a public use or sale under 35 U.S.C. § 102(b), we affirm the decision of
the district court denying the motion for judgment as a matter of law. We affirm the
district court’s decision that no inequitable conduct was shown, and we also affirm the
decision of the district court denying Adenta’s motion to declare the case exceptional.
BACKGROUND
The ’883 patent is directed to an orthodontic bracket. Orthodontic brackets are
structures that adhere to the surface of a patient’s tooth and together with an archwire
comprise what is commonly referred to as “braces.” The patented bracket includes a
means for opening a clip that holds the archwire in place. The inventor of the ’883
patent is Dr. John Voudouris, who was the president of OrthoArm. Voudouris assigned
the patent to OrthoArm. In 2001, OrthoArm sued American Orthodontics Corporation
(“American”) for infringement of the patent based on American’s sale of brackets.
American manufactured and distributed brackets for Adenta GmbH (“Adenta”). Instead
of proceeding with the litigation, American and OrthoArm entered into a Mutual
2006-1571, -1598 2
Settlement Agreement (the “Settlement Agreement”), wherein OrthoArm assigned the
’883 patent to American, and American agreed to pay OrthoArm a four percent royalty
on its sales of a bracket, known as the Time bracket.
Thereafter, American asked Adenta to pay a part of the royalty obligation that it
owed to OrthoArm under the Settlement Agreement. American and Adenta accordingly
entered into a Royalty Sharing Agreement, wherein each party agreed to pay OrthoArm
half of the four percent royalty obligation on sales of the Time bracket. American and
Adenta also entered into a License Agreement that gave Adenta a license to sell
another version of a bracket, known as the Evolution bracket. Under the terms of the
License Agreement, Adenta owed American a four percent royalty on sales of the
Evolution bracket.
Adenta later advised American and OrthoArm that it believed that the ’883 patent
was invalid and that it would stop paying royalties on sales of both the Time and
Evolution brackets. American responded with a letter stating that a failure to pay
royalties would constitute a breach of the License Agreement, and that in the event of
such a breach, American would “pursue its available legal remedies to protect its rights”
(the “American Letter”). Adenta thereafter filed a complaint in the District Court for the
Eastern District of Wisconsin seeking a declaratory judgment that the ’883 patent is
invalid and unenforceable. Adenta alleged that the district court had subject matter
jurisdiction because the American Letter constituted a threat of an imminent patent
infringement suit. Adenta also alleged that the ’883 patent was invalid on the ground
that Wolfgang Heiser, an Austrian orthodontist, and Claus Schendell, Adenta’s
president, had publicly displayed or offered for sale a Time bracket at a Florida trade
2006-1571, -1598 3
show in 1994. Adenta also alleged that the ’883 patent was unenforceable based on
improper inventorship and that inventor Voudouris allegedly knew of the Time bracket,
but failed to disclose it to the United States Patent and Trademark Office (“PTO”) during
prosecution of the ’883 patent.
OrthoArm moved to dismiss the suit for lack of subject matter jurisdiction on the
ground that Adenta never had a reasonable apprehension that it would be sued by
American, and that Adenta and American conspired to contest the validity of the ’883
patent. The district court noted that it could not “resolve the suit” without more
documentation, but denied OrthoArm’s motion to dismiss. Thereafter, OrthoArm filed a
renewed motion to dismiss for lack of subject matter jurisdiction under Federal Rule of
Civil Procedure 12(b)(1). After further consideration of the jurisdictional issue, the court
denied the renewed motion. The case proceeded to trial on the invalidity and
unenforceability issues.
During trial, Adenta argued that the claims of the ’883 patent were invalid based
on the public use or sale of its orthodontic bracket in 1994 at the 84th Annual Session of
the American Association of Orthodontists in Orlando, Florida (the “Florida trade show”),
which was held more than one year before the priority date of the ’883 patent. The
parties agreed that Exhibit 61, which was a photo of a bracket, represented the type of
Time bracket that was allegedly shown at the trade show. Adenta presented testimony
from five witnesses to verify that the type of bracket as depicted in Exhibit 61 was in fact
displayed at the 1994 Florida trade show. Those witnesses were Schendell and Heiser,
who worked at Adenta; John Russell, who was a sales representative for Adenta’s
2006-1571, -1598 4
brackets in England; Lee Tuneberg, who was a vice president at American; and inventor
Voudouris.
Adenta also presented various documents to support its claim that the Time
bracket of the type shown in Exhibit 61 was displayed at the 1994 Florida trade show.
Those documents included: drawings of a bracket made by Heiser in 1992 and 1993
(Exhibit 23); a German patent application that disclosed the Time bracket filed March 3,
1994 (Exhibit 52); the Florida Conference Exhibitor Guide (Exhibit 77); a fax dated June
1994 from Russell to Schendell that asked if Heiser would come to Britain to discuss the
Time bracket (Exhibit 12); a German article that included photos of the Time bracket
(Exhibit 7); and a letter from Adenta’s German patent attorney to Adenta’s U.S. Patent
attorney instructing the U.S. attorney to file an application on the Time bracket within a
year of the 1994 Florida trade show (Exhibit 24).
The jury returned a verdict in favor of Adenta, finding that claims 1-8 and 10-13 of
the ’883 patent were invalidated by Adenta’s public use or sale of its bracket at the 1994
Florida trade show. The jury also found that there was no showing of inequitable
conduct because Voudouris did not withhold material information from the PTO.
OrthoArm filed a motion for judgment as a matter of law asserting that Adenta
had not met its clear and convincing burden to show that the asserted claims of the ’883
patent were invalid. OrthoArm contended that all the witnesses that Adenta presented
at trial were interested witnesses and that their oral testimony was not corroborated by
any documentary evidence. The district court denied OrthoArm’s motion for judgment
as a matter of law. The court noted that during trial Heiser and Schendell, who
developed Adenta’s bracket, testified that their bracket was on sale at the Florida trade
2006-1571, -1598 5
show. The court stated that they clearly were interested parties. The court found,
however, that their testimony was corroborated by the testimony of Voudouris, Russell,
and Tuneberg, who were not interested witnesses.
The district court observed that Voudouris was the president of OrthoArm and the
inventor of the ’883 patent, and that he testified that he attended the Florida trade show.
The court also noted that Russell was the sales representative for Adenta’s brackets in
England and testified that sales of Adenta products accounted for only three percent of
his company’s sales. The court determined that Russell’s interest in Adenta was thus
not sufficient to discredit his testimony that the Time bracket was displayed at the 1994
Florida trade show. The court next determined that Tuneberg, who was Vice President
of Research and Product Development at American, was not an interested witness, and
he had confirmed that Adenta’s bracket was on sale at the 1994 Florida trade show. In
fact, when asked during trial whether American would benefit from invalidating the ’883
patent, the court pointed out that Tuneberg responded that “it’s impossible to say that
we will benefit or not benefit.”
In addition to the oral testimony, the district court noted that the following
documents were offered to corroborate Adenta’s position: Exhibit 23 (Heiser drawings);
Exhibit 52 (German patent application); Exhibit 77 (Florida Conference Exhibitor Guide);
Exhibit 12 (Fax from John Russell to Adenta); Exhibit 7 (article); and Exhibit 24 (Koerner
Letter to U.S. patent attorney Charles Mueller). The court observed that although none
of those documents was strictly contemporaneous with the 1994 Florida trade show,
they were created shortly before or after the show. The court determined that given the
quality and quantity of the evidence, a reasonable fact finder could conclude that clear
2006-1571, -1598 6
and convincing evidence showed that Adenta’s Time bracket was publicly used or on
sale at the 1994 Florida trade show. Thus, the court concluded that it would not disturb
the jury’s verdict.
The district court thereafter denied Adenta’s request for a declaratory judgment
that the case was exceptional. The court determined that, even if the jury may have
erred in finding that no material information was withheld from the examiner during
prosecution of the ’883 patent, inequitable conduct was still not shown because there
was insufficient evidence of intent to deceive the PTO. The court thus concluded that
the case was not exceptional.
OrthoArm timely appealed, and Adenta timely cross-appealed. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review a denial of a motion to dismiss for lack of subject matter jurisdiction de
novo. Gen-Probe Inc. v. Vysis, Inc., 359 F.3d 1376, 1379 (Fed. Cir. 2004). “Whether
an actual case or controversy exists so that a district court may entertain an action for a
declaratory judgment of non-infringement and/or invalidity is governed by Federal
Circuit law.” MedImmune, Inc. v. Centocor, Inc., 409 F.3d 1376, 1378 (Fed. Cir. 2005)
(citations omitted), rev’d on other grounds, 127 S.Ct. 764 (2007).
Whether a patent is invalid for a public use or sale is a question of law, reviewed
de novo, based on underlying facts, reviewed for substantial evidence following a jury
verdict. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir.
2002). The determination whether a case is exceptional is a question of fact, reviewed
for clear error. Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1328 (Fed. Cir. 2003).
2006-1571, -1598 7
A. Subject Matter Jurisdiction
On appeal, OrthoArm argues that the district court lacked subject matter
jurisdiction to decide this case. OrthoArm notes that the court itself stated that it lacked
adequate information to decide the jurisdictional issue, but then proceeded to deny
OrthoArm’s motion, thereby improperly assuming jurisdiction. OrthoArm further argues
that the court lacked subject matter jurisdiction to decide the case because the
American Letter did not create in Adenta a reasonable apprehension of an imminent
infringement suit. According to OrthoArm, the American Letter only stated that
American would pursue its available legal remedies in the event of a breach of the
License Agreement, not that it would file an infringement suit. Moreover, OrthoArm
alleges that American and Adenta’s interests were aligned in attempting to invalidate
the ’883 patent. According to OrthoArm, the parties did not have adverse legal interests
because both parties would benefit from having the ’883 patent invalidated by not
having to make royalty payments to OrthoArm.
Adenta responds that after the initial motion to dismiss was denied, OrthoArm
filed a renewed motion to dismiss for lack of jurisdiction, which the court again denied
after further consideration. Adenta argues that the court properly considered the
evidence and denied the motion to dismiss, thereby correctly concluding that it did have
subject matter jurisdiction. Adenta further responds that it did have a reasonable
apprehension of an infringement suit. According to Adenta, the American Letter stated
that American would “pursue its available legal remedies” if Adenta stopped making
royalty payments. Adenta asserts that such a statement was sufficient to create an
apprehension of suit. Adenta further responds that even if OrthoArm did not intend to
2006-1571, -1598 8
assert an infringement claim, the letter still created a reasonable apprehension of an
imminent lawsuit.
We agree with Adenta that the district court did not err in denying the motion to
dismiss for lack of subject matter jurisdiction and concluding that declaratory judgment
jurisdiction existed in this case. The Declaratory Judgment Act, 28 U.S.C. § 2201,
provides that “[i]n a case or controversy within its jurisdiction . . . any court of the United
States . . . may declare the rights and other legal relations of any interested party
seeking such declaration, whether or not further relief is or could be sought.” The
Supreme Court recently reiterated that the phrase “‘case or actual controversy’ in the
Act refers to the type of ‘Cases’ and ‘Controversies’ that are justiciable under Article III.”
MedImmune, Inc. v. Genentech, Inc., 127 S. Ct 764, 771 (2007). The Court further
stated that “[b]asically, the question in each case is whether the facts alleged, under all
the circumstances, show that there is a substantial controversy, between parties having
adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
declaratory judgment.” Id. at 771 (quoting Md. Cas. Co. v. Pac. Coal & Oil Co., 312
U.S. 270, 273 (1941)). In a post-MedImmune decision, we explained that the “Supreme
Court’s opinion in MedImmune represents a rejection of our reasonable apprehension of
suit test.” SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1380 (Fed. Cir.
2007). We further explained that “where a patentee asserts rights under a patent based
on certain identified ongoing or planned activity of another party, and where that party
contends that it has the right to engage in the accused activity without a license under
the patent, an Article III case or controversy will arise and the party need not risk a suit
2006-1571, -1598 9
for infringement by engaging in the identified activity before seeking a declaration of its
legal rights.” Id. at 1381.
With the Supreme Court’s decision as our guide, and following MedImmune, we
conclude that Adenta established an Article III case or controversy that gave rise to
declaratory judgment jurisdiction. After obtaining legal advice, Adenta advised
American that it believed that the ’883 patent was invalid and that it would not pay any
further royalties on sales of the Time and Evolution brackets. American responded
indicating that if Adenta breached its license with Adenta by not paying royalties, it
would “pursue its available legal remedies.” Thus, American indicated its intent to
assert its rights under the ’883 patent in the event that Adenta failed to pay royalties
under the terms of the License Agreement, thereby creating a substantial controversy.
Adenta did in fact stop paying royalties to American on sales of the Evolution bracket.
See MedImmune, 127 S. Ct. at 772 (“There is no dispute that [the case-or-controversy
requirement of a declaratory judgment action] would have been satisfied if petitioner
had taken the final step of refusing to make royalty payments under the 1997 license
agreement.”). Moreover, Adenta identified that its Time bracket had been the subject of
a prior infringement lawsuit by OrthoArm against American. Contrary to what OrthoArm
argues, the failure of American to file an infringement counterclaim in response to the
declaratory judgment action did not deprive the court of jurisdiction. See Capo, Inc. v.
Dioptics Med. Prods., Inc., 387 F.3d 1352, 1356 (Fed. Cir. 2004). Moreover, the court
found that American and Adenta did not contrive to invalidate the ’887 patent; their
interests were adverse, and we do not see any reason to disturb that finding. Given the
facts alleged, it was proper for the court to deny the motion to dismiss for lack of
2006-1571, -1598 10
jurisdiction and to conclude that a case or controversy existed within the meaning of the
Declaratory Judgment Act.
B. Invalidity under § 102(b)
On the merits, OrthoArm argues that Adenta failed to present clear and
convincing evidence that the asserted claims of the ’883 patent were invalid because of
the public use or sale of Adenta’s bracket at the 1994 Florida trade show. OrthoArm
asserts that the oral testimony that the Time bracket was displayed at the trade show
came from four witnesses, all of whom were interested witnesses because they would
benefit from invalidation of the ’883 patent. According to OrthoArm, Schendell and
Heiser were interested witnesses because they were parties to the lawsuit, Russell was
an interested witness because he was Adenta’s exclusive representative, and Tuneberg
was an interested witness because he admitted that if Adenta won the lawsuit, his
company would no longer pay royalties. OrthoArm further argues that when all the
witnesses are interested, further corroborating documentary evidence is required to
invalidate a patent, and that there was no such evidence in this case. According to
OrthoArm, none of the documentary evidence produced at trial corroborated the
witnesses’ testimony that Adenta publicly used or sold a bracket at the 1994 Florida
trade show.
Adenta responds that there was ample evidence to support the jury’s verdict that
Adenta’s Time bracket was publicly used or on sale at the 1994 Florida trade show.
Adenta asserts that Heiser and Schendell testified that the Time bracket was displayed
at the 1994 Florida trade show and that Russell’s and Tuneberg’s testimony was
corroborating. Adenta asserts that the court correctly determined that Russell was not
2006-1571, -1598 11
an interested witness because he sold the Time bracket in England, not America, and
Tuneberg was not an interested witness because he was American’s Vice President
and he acknowledged that invalidating the patent would not benefit American. Even if
Russell or Tuneberg were interested witnesses, Adenta asserts that their testimony can
be used to corroborate the testimony of inventor Voudouris. Moreover, Adenta asserts
that sufficient documentary evidence corroborated the oral testimony.
We agree with Adenta that substantial evidence existed in the record to support
the jury’s verdict that a Time bracket was publicly used or on sale at the 1994 Florida
trade show. Patents are presumed valid by statute. See 35 U.S.C. § 282. “The burden
is on the party asserting invalidity to prove it with facts supported by clear and
convincing evidence.” SSIH Equip. S.A. v. U.S. Int’l Trade Comm’n, 718 F.2d 365, 375
(Fed. Cir. 1983). To sustain an invalidity determination under § 102(b) for a public use
or sale, “the record must show that an embodiment of the patented invention was in
public use [or on sale] as defined by the statute before the critical date.” Motionless
Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1383 (Fed. Cir. 2007). Moreover, a
public use includes “any [public] use of [the claimed invention] by a person other than
the inventor who is under no limitation, restriction or obligation of secrecy to the
inventor.” In re Smith, 714 F.2d 1127, 1134 (Fed. Cir. 1983).
OrthoArm does not challenge whether Adenta’s Time bracket contains all the
limitations of the claims of the ’883 patent. Nor does it challenge whether Adenta’s
bracket, if in fact shown at the 1994 Florida trade show, would constitute a public use or
offer for sale more than one year before the patent’s priority date. OrthoArm only takes
issue with whether there was clear and convincing evidence presented to the jury that
2006-1571, -1598 12
the type of bracket shown in Exhibit 61 was in fact displayed or on sale at the Florida
trade show.
We have held that a patent cannot be invalidated based on one person’s
testimony alone without corroborating evidence, particularly documentary evidence.
See Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir. 1999)
(“[C]orroboration is required of any witness whose testimony alone is asserted to
invalidate a patent, regardless of his or her level of interest.”). However, this is not a
case where one person makes a naked, unsupported assertion years after the fact that
he made an invention before a patentee. Such self-serving statements based only on
memory and susceptible to interpretations favorable to the witness are properly
discounted. Here there were a number of statements made by different witnesses, all
corroborating each other, accompanied by various supportive and consistent
documents. The testimony of the witnesses together with the documentary evidence
provided a coherent and convincing story.
Contrary to what OrthoArm argues, this case does not present the question of
the necessity of corroboration—there was both testimonial and documentary
corroborating evidence here. Rather, this case questions the sufficiency of the
corroborating evidence. Assessing the sufficiency of evidence which corroborates a
witness’s testimony concerning invalidating activities has been analyzed under the “rule
of reason” test, and it is a jury question. Woodland Trust v. Flowertree Nursery, Inc.,
148 F.3d 1368, 1371 (Fed. Cir. 1998). A “rule of reason” analysis involves an
assessment of the totality of the circumstances including an evaluation of all pertinent
evidence. Id. OrthoArm attempts to discredit each piece of evidence, one by one, to
2006-1571, -1598 13
show that clear and convincing evidence invalidating the patent was lacking. However,
the jury considered all the evidence. We cannot say that the court erred in concluding
that there was sufficient evidence corroborating Heiser’s and Schendell’s testimony to
enable the jury to find that the Time bracket was publicly used and/or on sale at the
1994 Florida trade show.
As the district court pointed out, Adenta presented testimony from five
witnesses—Heiser, Schendell, Voudouris, Russell, and Tuneberg—who testified that
they saw Adenta’s Time bracket displayed at the 1994 Florida trade show. While the
court determined that Heiser and Schendell were clearly interested parties, as they
were named parties to the suit, their testimony was corroborated by the testimony of
Voudouris, Russell, and Tuneberg. The court noted that Voudouris was the named
inventor of the ’883 patent and president of OrthoArm. He attended the 1994 trade
show and testified that it was his understanding that Adenta’s patent covers the
brackets displayed at the Florida trade show. The court further noted that Russell was
the sales representative for Adenta’s brackets in England and testified that at the trade
show, Schendell told him that “he was launching a new product, [a] self-ligating
bracket.” The court further determined that Tuneberg, who was a vice president at
American, was not an interested witness and that he confirmed that Adenta’s bracket
was on sale at the trade show. The court made credibility determinations as to those
witnesses, and we have no basis to disturb them.
The district court also noted that in addition to the oral testimony, Adenta offered
the following documents to corroborate its position: a fax transmitted in 1992 containing
drawings by Heiser of a bracket similar to the one displayed at the trade show; a
2006-1571, -1598 14
German patent application, filed March 3, 1994, that included an embodiment of the
bracket of the type alleged to have been shown at the trade show; a fax, dated June 25,
1994, from Russell to Schendell asking whether Heiser would be willing to come to
Britain to present his new Time bracket; an article authored by Heiser in 1998 that
showed the Time bracket with photos of that bracket being applied to a patient, dated in
1994; a letter, dated April 1995, from Adenta’s German lawyer informing Mueller, the
U.S. patent attorney, that a bracket had been shown in May 1994 at the Florida trade
show and instructing that a U.S. patent application must be filed within one year of that
date.
Considering all the evidence presented, we agree with the district court that a
reasonable fact finder could have concluded that clear and convincing evidence showed
that a public use or sale of the Time bracket occurred at the 1994 Florida trade show.
The letter from the German attorney to the U.S. patent attorney clearly stated that a
bracket was shown at an exhibition in May 1994, and thus that a patent application
should be filed within one year to avoid a public use or on sale bar. Although OrthoArm
attempts to discredit that letter, arguing that it does not make clear which bracket the
attorneys were referring to, we do not find the letter to be insufficient. The German
attorney must have thought that it was the same bracket that was shown at the 1994
Florida trade show that would be filed in a corresponding U.S. application. Otherwise,
there would have been no reason for the German attorney to have instructed Adenta’s
U.S. attorney to file the application within one year of the trade show. That application,
which was filed in April 1995 and ultimately issued to Adenta in October 1996 as U.S.
2006-1571, -1598 15
Patent 5,562,444 (the “’444 patent”), includes the same drawings contained in the
German patent application.
In sum, the district court correctly denied OrthoArm’s motion for judgment as a
matter of law, concluding that the evidence in its entirety was sufficient to enable the
jury to find that Adenta’s Time bracket was displayed at the 1994 trade show, thereby
sustaining the jury’s verdict of invalidity.
C. Exceptional Case
Adenta cross-appeals from the decision of the district court finding no inequitable
conduct and denying its request to declare the case exceptional. Adenta argues that
the court erred in finding no inequitable conduct when it found that Voudouris did not
have the requisite intent to deceive the PTO. According to Adenta, Voudouris did not
invent the “aperture” in the bracket slip as claimed in claims 47 and 48, which were
ultimately cancelled before the ’883 patent issued. Adenta also asserts that Voudouris
knew of but failed to disclose the Time bracket to the PTO, and that that omission
demonstrates that Voudouris intended to deceive the PTO. Because Adenta asserts
that the court erred in finding no inequitable conduct, Adenta also asserts that the court
erred in not finding the case to be exceptional.
OrthoArm responds that the district court correctly determined that no inequitable
conduct was shown and hence that this case was not exceptional. According to
OrthoArm, the aperture was only one limitation of claims 47 and 48, and, in any event,
Voudouris cancelled claims 47 and 48 before the ’883 patent issued. Thus, OrthoArm
asserts that there was no issue of incorrect inventorship. OrthoArm further responds
that it was reasonable for Voudouris not to submit the Time bracket to the PTO because
2006-1571, -1598 16
the ’444 patent was submitted to the PTO, and that patent describes the Time bracket.
Hence, OrthoArm asserts that there could have been no culpable intent resulting from
Voudouris’s failure to disclose the Time bracket to the PTO; it was merely cumulative to
what had already been submitted. Because no inequitable conduct was shown,
OrthoArm asserts that Adenta is not entitled to a judgment that this case be declared
exceptional.
We agree with OrthoArm that the district court did not abuse its discretion in
concluding that no inequitable conduct was shown and that the case was not
exceptional. The jury found that Voudouris did not withhold material information from
the PTO during the prosecution of the ’883 patent. Because of that finding, the jury did
not address whether Voudouris possessed the requisite intent to deceive the PTO. The
court questioned the jury’s finding on materiality, but still concluded that no inequitable
conduct was shown. The court considered Adenta’s allegations pertaining to
inventorship and the failure to disclose the Time bracket to the PTO and determined
that they did not amount to clear and convincing evidence of intent to deceive the PTO.
We conclude that the district court did not commit clear error in finding no intent
to deceive or that it abused its discretion in finding no inequitable conduct. As
OrthoArm indicates, claims 47 and 48 were cancelled before the patent issued and
Voudouris stated that the claims were cancelled not because he believed he was not
the inventor of those claims, but rather because he could not antedate the prior art
references that pertained to those claims. The court was entitled to believe Voudouris,
and we will not disturb that finding. Moreover, although Adenta argues that Voudouris
should have disclosed the Time bracket to the PTO, Voudouris did disclose the ’444
2006-1571, -1598 17
patent, which described the Time bracket. The court was entitled to assume that
Voudouris acted in good faith in not disclosing the Time bracket to the PTO because he
believed it was cumulative to the ’444 patent. We therefore affirm the court’s finding of
no inequitable conduct. Because we affirm the court’s finding of no inequitable conduct,
we also do not find that the court clearly erred in declining to find this case to be
exceptional.
CONCLUSION
For the foregoing reasons, we affirm the judgment of the district court.
AFFIRMED
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