Intellect Wireless, Inc. V HTC Corp.

Applicant must inform PTO of the precise claim location of a misstatement when correcting a misstatement during prosecution.

Opinion (Moore): Intellect Wireless, Inc. ("Intellect") v HTC Corp. ("HTC"). HTC appealed the district court's finding of inequitable conduct making its patents unenforceable. Intellect originally brought suit against HTC for infringement regarding patents which protected methods of displaying wirelessly transmitted caller identification information. The district court held that Intellect’s patents were unenforceable due to inequitable conduct. Inequitable conduct requires: (1) misrepresentation or omitted information material to patentability, and (2) that the party did so with intent to deceive. The findings of the district court showed that Henderson, the sole inventor, filed multiple unmistakably false declarations during prosecution, including that the inventor was relying on constructive reduction. Intellect argued that the prosecuting attorney corrected the mistakes when he informed the Patent and Trademark Office ("PTO") of the misrepresentations during prosecution. However, one is required to expressly advise the PTO of the misrepresentation, stating wherein it specifically resides, which the prosecuting attorney failed to disclose. Furthermore, the district court found sufficient evidence to show that Mr. Henderson had made statements regarding the reduction to actual practice during prosecution to overcome prior art, including misleading press releases stating a donation of the technology to the Smithsonian, when in fact all that had been given were plastic and wood replicas incapable of performing the task. Accordingly the court AFFIRMED the district court's judgment.