SIG Sauer, Inc. v. Jeffery S. Bagnell, Esq., LLC et al. (D. N.H. 22-cv-00078).

Following the jury trial, Judge Young released his findings of fact and conclusions of law in connection with General Electric’s assertions of inequitable conduct.  They asserted that Siemens had knowledge of a set of relevant patents due to one of the inventors of the asserted patents having been named as an inventor on the prior art set and the prior art patents had been identified during prosecution of other Siemens’ patents by the PTO to Siemens’ patent agent, but that Siemens had deliberately withheld the references to deceive the patent office into allowing the claims.  They further asserted that Siemens made false statements regarding conception and inventorship on one of the asserted patents, asserting that the three named inventors had never actually collaborated on the inventions.

After a three-day bench trial on these issues, Judge Young determined that GE had not met the clear and convincing standard of proving inequitable conduct.  As to the inventorship issue, he noted that 35 U.S.C. 116 provides that people can be joint inventors even though they did not physically work together or at the same time, did not make the same amount or type of contributions to the invention, or did not contribute to each claim of a patent – even minimal contacts between parties can suffice to establish joint inventorship.  The three inventors in this case had independently created similar inventions which were disclosed to Siemens, who then put them in touch with one another.  The ultimate application included drawings made solely by one inventor and others by the remaining two, and included claims to which one or more of the inventors made no contribution, but that this standing alone is insufficient to show incorrect inventorship.  Indeed, GE’s technical expert seemed to suggest that each of the three contributed a key part to the final, claimed invention.  Further, GE provided no evidence that the inventorship attestation was filed with the specific intent to deceive the patent office. 

With respect to the alleged failure to disclose prior art, Judge Young again found that GE had not proven the specific intent to deceive the patent office.  To prove intent, more must be shown than knowledge of a reference, knowledge of its materiality, and failure to submit the reference – the challenger must show that the applicant made a deliberate decision to withhold a known material reference.  Here, the inventor was a named inventor on around forty-five patents, and may have believed in good faith that the specified references were not material or were cumulative to information actually provided to the PTO.  As to the patent agent, Judge Young agreed with the agent that references identified, but not actually used by the examiner in a rejection, are often not reviewed, and that knowledge of materiality could not reasonably be inferred.  In both cases, the inference of improper conduct was not the most logical or best-supported inference.