Golden Hour Data Systems, Inc. v emsCharts, Inc.

Clear and convincing evidence cannot be established upon successful claim reexamination when material is not deemed "but-for" material.

Opinion (Gilstrap): Golden Hour Data Systems, Inc. (GH) appealed a trial court judgment ruling that it engaged in inequitable conduct in its application to the PTO. The Federal Circuit had remanded this case back to this District Court after its en banc decision that fundamentally altered the standard for inequitable conduct, requiring clear and convincing evidence. GH manufactured an in-transit medical charting system similar to emsChart, Inc.’s (EMS) AeroMed system, differing in its ability to collate patient history, treatment in-transit, and flight information to appropriately bill the patient. After the initial verdict, GH was granted re-examination after submitting an AeroMed brochure that described the product and pointed interested parties to the EMS website. The PTO determined that the undated brochure and website were not but-for material, because they did not indicate prior use of AeroMed equipment for the purposes stated in GH’s claim. As a result the court determined that EMS had failed to meet the clear and convincing standard to establish inequitable conduct, thus making the patent claims of GH enforceable. Judgment was in GH’s favor.