Terms and Concepts
Inequitable conduct is often based on an allegation that the patent owner attempted to deceive the PTO by failing to disclose a known piece of material prior art. A finding of inequitable conduct can render the patent unenforceable. Whether the alleged failure to disclose the prior art reference amounts to inequitable conduct rests on a sliding scale of materiality and intent. If the reference is deemed to be highly material, then the required intent showing is diminished. If the reference is deemed to be less material, then the required intent showing is heightened. Because it is difficult to prove intent, those attempting to prove inequitable conduct typically try to convince the court that the omitted reference is highly material.
Parties may attempt to use a reexamination proceeding to buttress the materiality prong of the inequitable conduct analysis. To do so, the omitted prior art reference is used as the basis for a SNQ in a reexamination request. If the examiner is persuaded that the omitted prior art reference forms a SNQ and then orders a reexamination, this will be taken as further evidence as to the materiality of the reference.
However, some reexamination practitioners have noted problems with this approach. First, there are no evidentiary standards associated with a reexamination request. There is no requirement that the attorney argument supporting the request be backed up by an expert declaration or other evidence. Second, discovery is not available in PTO proceedings. The patent owner is very limited in its ability to challenge an improvidently granted SNQ. Third, the use of a SNQ finding is a litigation tactic used by the defense bar to “create” an inequitable conduct charge. The PTO is becoming more aware of this issue as more reexaminations requests are being challenged as tools not for reexamination but for bolstering an inequitable conduct charge.