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Fresh From the Bench: Recent Patent Cases From the Federal Circuit

November 27, 2013


Every week or so we will continue to provide summaries of cases we think clients might find of interest and pertinent to their business. If you have any questions about the information provided in these case summaries or wish to discuss them further, please contact the Schwabe patent attorney with whom you currently work, or contact Peter Heuser at 503-796-2424 or

The Ohio Willow Wood Company v. Alps South, LLC, Fed. Cir. No. 2012-1642, 2013-1024, 11/15/2013

Collateral estoppel as to invalidity can apply to a second, different patent; summary judgment of no inequitable conduct can be overcome by alleging the presence of a false affidavit.

There are two significant take-aways from this case. First, if a patent is found invalid in a final judgment, it can constitute collateral estoppel as to invalidity of a second patent. The issue is whether the patentability issues are substantially the same, not whether the claim language is different. Here the patentability issues were very similar so the Federal Circuit affirmed a finding of collateral estoppel as to invalidity of many of the claims of the second patent.

The panel also examined whether a summary judgment of no inequitable conduct was appropriate. Applying all inferences in favor of the non-moving party, the panel determined that there were genuine issues of material fact that precluded summary judgment. Specifically, the panel determined that there were issues about whether declarations and arguments made by the patentee's counsel could be considered "false." Therasense held that a finding of inequitable conduct must be supported by "but for" materiality and a specific intent to mislead, unless there is something tantamount to a false affidavit being filed in support of patentability. If that is the basis of the allegation of inequitable conduct, then the "but for" materiality test does not need to be met. This case shows how easy it can be to create factual issues sufficient to preclude summary judgment by focusing argument on the "false affidavit" exception to the "but for" materiality test.


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