False declaration

About claimed invention date

Knocks out patent rights

clip_image001In a case involving caller ID technology, the Federal Circuit Court of Appeals has ruled that a district court did not err in finding that an inventor’s false statements about the date of invention rendered his patent unenforceable.

Intellect Wireless appealed from a judgment that its US Patents Nos. 7,266,186 and 7,310,416 were unenforceable.

The patents both disclosed providing caller ID information from a message center to a personal communications device, such as a cell phone, via a wireless network. The specification also included displaying the caller ID information on the cell phone screen.

The ‘186 patent was filed in 2001 with a priority date of 1994, and issued in 2007. The ‘416 patent was filed in 2005 with a priority date of 1994, and also issued in 2007.

Intellect sued HTC for infringement, and the district court found the patents unenforceable due to inequitable conduct by the inventor.

The district court found that the inventor, Henderson, had submitted to the Patent and Trademark Office a declaration containing false statements. To overcome a prior art defense, Henderson claimed that the invention was reduced to practice and demonstrated at a meeting in July of 1993.

However, the device that Henderson demonstrated was not an actually working model. It only contained pre-loaded images for the purposes of demonstrating what the display would look like if the device actually worked, but the device was not capable of wireless communication.

The Federal Circuit held that submissions of an affidavit containing fabricated examples of actual reduction to practice on order to overcome a prior art reference raised a strong inference of intent to deceive. It addition, the court found that Henderson engaged in a pattern of deceit in connection with later patent applications, making the inference stronger.