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3M Co. v. Moldex-Metric, Inc.: US District Court : PATENT - summary judgment of no inequitable conduct

Civil File No. 03‐5292 (MJD/AJB)
J. Derek Vandenburgh, Carlson Caspers Vandenburgh & Lindquist, Counsel for
Victor deGyarfas and William J. Robinson, Foley & Lardner, LLP, Counsel for
This matter is before the Court on Plaintiffs, 3M Company and 3M
Innovative Properties Company (collectively 3M), motion for summary
judgment of no inequitable conduct.
I. Background
3M contends that Defendant Moldex‐ Metric, Inc. (Moldex) is infringing
four 3M patents directed to valved respirator masks: U.S. Patent Nos. 6,854,463
(the 463 patent) and 6,843,248 (the 248 patent), U.S. Reissue Patent No. RE
37,974 (the 974 patent) and U.S. Patent No. 7,117,868 (the 868 patent).
The patents in suit all relate to respirator masks having exhalation
valves, which are used to prevent inhalation of particulates suspended in the air
and typically employ some sort of filter that the air must pass through during
The 463, 248 and 868 patents, also referred to as the Japuntich patents, are
related to one another through common ancestor applications, and as a result
include the same patent disclosure. In the 248 and 463 patents, the valves
include a cantilevered flexible flap with a spring‐like curvature which causes the
flap to press against the valve in the absence of exhalation. The 868 patent uses
an exhalation valve that has some means for preventing the flap from sticking to
the inside surface of the valve cover (e.g. a ribbed or course ceiling).
The 974 patent, also referred to as the Bowers patent, is unrelated to the
Japuntich patents. John Bowers obtained this patent while working for Racal
Health & Safety Ltd. (Racal). While the Japuntich patents disclose a valve with
a cantilevered flap that is curved in the longitudinal direction, the Bowers 974
patent discloses a valve whose flap biases toward the sealing surface by bending
1The same allegations are included in the February 1, 2007 Answers and Counterclaims
in Civil No. 06‐4044 [Doc. 370], which action was consolidated with this action.
the stationary end of the cantilevered flap in the transverse direction.
The 974 patent is a reissue of Patent No. 5,687,767. The 767 patent issued
on November 18, 1997. No one at 3M was involved in the prosecution of the
Bowers 767 patent. 3M patent attorney Karl Hanson was involved in the reissue
application through his management of outside counsel. The reissue application
sought to broaden the 767 patent. Those efforts were successful and the 974
issued on February 4, 2003.
II. Alleged Inequitable Conduct
On December 4, 2006, Moldex filed its Second Amended Answer to the
Third Amended Complaint. [Doc. No. 362].1 In this pleading, Moldex asserted
that the patents in suit are unenforceable because each patent was obtained
through inequitable conduct practiced by 3M through its attorney Karl Hanson.
The alleged inequitable conduct referenced in this pleading was placed into nine
categories: misrepresentations about the Cover prior art; misrepresentations
about the Braun prior art; misrepresentations about the general state of the prior
art; suppression of the Horda publication; affidavit/declaration misconduct;
misleading characterization of the invention; false statements about allegedly
nonanalogous art; misrepresentations about the Moldex Ventex valve; and
general violations of the duty of disclosure. At this time, 3M moves for summary
judgment as to the allegations of inequitable conduct.
III. Standard
Summary judgment is appropriate if, viewing all facts in the light most
favorable to the non‐moving party, there is no genuine issue as to any material
fact, and the moving party is entitled to judgment as a matter of law. Fed. R. Civ.
P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322‐23 (1986). The party seeking
summary judgment bears the burden of showing that there is no disputed issue
of material fact. Celotex, 477 U.S. at 323. This burden can be met by showing ‐
that is, pointing out to the district court ‐ that there is an absence of evidence to
support the nonmoving partys case. Id. at 325. The party opposing summary
judgment may not rest upon mere allegations or denials, but must set forth
specific facts showing that there is a genuine issue for trial. Krenik v. County of
Le Sueur, 47 F.3d 953, 957 (8th Cir.1995).
3M argues that it is entitled to summary judgment as Moldex cannot
demonstrate, by clear and convincing evidence, each element of its inequitable
conduct claims. Moldex responds that as the movant, 3M bears the burden of
demonstrating that no reasonable fact finder could find that 3M committed
inequitable conduct, and that summary judgment is not appropriate if there is a
genuine issue of material fact as to any aspect of its inequitable conduct claim.
While true, Moldex nonetheless has the burden to demonstrate, that is put forth
evidence, the existence of genuine issues of material fact as to each element of its
claims in order to survive summary judgment.
A. Inequitable Conduct ‐ Elements
Patent applicants and their legal representatives have a duty to prosecute
patent applications with candor, good faith and honestly. Life Techs., Inc. v.
Clontech Labs., Inc., 224 F.3d 1320, 1324 (Fed. Cir. 2000). If that duty is breached,
the party breaching that duty has committed inequitable conduct and the patent
subsequently issued is unenforceable. Id.
There are two elements to an inequitable conduct claim that may render a
patent invalid or unenforceable ‐ materiality and intent to deceive. A patent
applicant commits inequitable conduct when, during prosecution of the
application, he makes an affirmative representation of a material fact, fails to
disclose material information, or submits false material information, and does so
with the intent to deceive. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1358 (Fed. Cir. 2003) (citing Refac Intʹl, Ltd. v. Lotus Dev. Corp., 81 F.3d
1576, 1581 (Fed. Cir.1996)).
[A] lesser quantum of evidence of intent is necessary when the omission or
misrepresentation is highly material, and vice versa. At the same time,
however, there must be some threshold showing of intent to be balanced;
we will not find inequitable conduct on an evidentiary record that is
completely devoid of evidence of the patenteeʹs intent to deceive the PTO.
Id. (citations omitted).
Information is material if a reasonable examiner would have considered
such [information] important in deciding whether to allow the parent
application. Digital Control Inc. v. Charles Mach. Works, 437 F.3d 1309, 1314
(Fed. Cir. 2006) (quoting Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d
1358, 1363 (Fed. Cir. 2003)). Information is also considered material if it is not
cumulative, and establishes, by itself or in combination with other information,
a prima facie case of unpatentability of a claim; or [] refutes, or is inconsistent
with, a position the applicant takes in: (i) opposing an argument of
unpatentability relied on by the Office, or (ii) asserting an argument of
patentability. Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229, 1237 (Fed.
Cir. 2008) (citing 37 C.F.R. 1.56).
Claims of inequitable conduct have rarely been established.
Even after complete testimony the court should find inequitable conduct
only if shown by clear and convincing evidence. A summary judgment that
a reputable attorney has been guilty of inequitable conduct, over his
denials, ought to be, and can properly be, rare indeed.
Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988). See
also, KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1573 (Fed. Cir. 1985);
Multiform Desicants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1482 ( Fed. Cir. 1998)
(noting that charges of inequitable conduct before the patent office have come to
be attached to every patent prosecution, diverting the court from genuine issues
and simply spawning satellite litigation).
Moldex argues that based on the Burlington decision, this Court should
take heed before granting 3Ms motion for summary judgment. However, the
court in Burlington was concerned about finding inequitable conduct where the
issue of intent was reasonably disputed. In this case, the movant is the party
against whom the claim of inequitable conduct has been lodged. Rather than
standing for the general proposition that summary judgments on inequitable
conduct claims should be rare, the cases stand for the proposition that judgments
finding, rather than dismissing, inequitable conduct should be rare when the
2Also referenced as Soderberg, who is the inventor, in the prosecution history.
evidence supports a reasonable dispute.
IV. Analysis
A. Allegations Concerning the Horda Prior Art
1. Materiality ‐ the 974 Patent.
With respect to the 974 patent, Moldex has alleged that Hanson
intentionally concealed European Patent Publication No. 0 251 890 (Horda)2
during prosecution. Vandenburgh Decl., Ex. 13. 3M asserts that Horda is not
material to the claims of the 974 patent. 3M further asserts that even if the Court
were to find Horda material, there is no evidence that Hanson intentionally
withheld this reference with the intent to deceive the patent office.
The 974 patent discloses a cantilevered flap that biases toward the sealing
surface by bending the stationary end of the cantilevered flap in the transverse
direction. The Horda reference was included in two European Search Reports
that were issued during the prosecution of two foreign applications related to the
974 patent. Horda describes a valve device for protective masks, the valve
consisting of a valve seat, with a valve membrane of compression‐moulded
rubber cooperating with the valve seat, the membrane being secured to the valve
seat close to its edge and opens initially at the edge portion of the member
located opposite the attachment, resulting in low opening resistance, directional
influence on the air flowing through and reduced suppression and distortion of
speech. Vandenburgh Decl., Ex. 13, p. 1.
European Search Reports classify references using the letter designations
X, Y or A. Vandenburgh Decl., Exs. 14‐15. An X designation refers to a
reference that is particularly relevant if taken alone, Y refers to a reference that
is particularly relevant if combined with another document of the same category
and A refers to a reference that provides technological background. Id. Horda
was designated as an A reference. Id. Given its A designation, 3M argues
that Horda should not be considered material. See Young v. Lumenis, Inc., 341 F.
Supp. 2d 925, 938‐39 (S.D. Ohio 2004) rev on other grounds 492 F.3d 1336 (Fed.
Cir. 2007) (finding that a reference defined as providing only technical
background in an international search report not material).
Moldex responds that Horda is material, and that Hanson admitted as
much in his deposition. Prange Decl., Ex. 7 (Hanson Dep. p. 260). The deposition
testimony cited, however, does not support Moldexs contention. Rather,
Hanson stated that with respect to the Japuntich patents, not the 974 patent,
3Hanson clarified this statement, testifying that a reference cannot be material if it is
cumulative, and if he testified that Horda was material albeit cumulative he did not intend to
say that. Id. 261‐262; 265.
4Claim 12 reads:
A uni‐directional fluid valve comprising:
a cantilevered flexible flap and a cooperating valve seat surrounding a valve
the cantilevered flexible flap having a planform defining a root end and a free
end at opposite ends of a longitudinal axis of the flap;
the valve seat having sealing surfaces that contact the flap at said root end and
the when the fluid valve is closed;
the cantilevered flexible flap being mounted in contact with the respective
sealing surface of the valve seat at said root end and being freely movable to flex away
from the respective sealing surfaces of the valve seat at said free end when fluid flows
through the fluid valve and the fluid valve is open; and
said root end of the cantilevered flexible flap and the respective sealing surface
that contacts the cantilevered flexible flap at said root end having a transverse
configuration extending in a direction transverse to said longitudinal axis, said
transverse configuration resulting in maintaining the flap substantially in contact with
said sealing surfaces of the valve seat in the absence of an opening pressure differential
across the flap, in any orientation of the valve.
Horda was material albeit cumulative. Id. p. 260‐61.3 When asked if Horda
was material to the 974 patent, Hanson said that based on his quick reading,
Horda contained all the elements of claim 12 of the 974 patent, except those in
the last clause.4 Prange Decl., Ex. 5, (Hanson Dep. p. 23‐34).
Moldex asserts that Horda does, in fact, disclose the last clause of claim 12,
which requires that the transverse configuration at the root end of the flap and
sealing surface cause the flap to press against the seal surface. In support,
Moldex has submitted an expert declaration from Erik Antonsson. In his expert
declaration, Antonsson opined that based on Hansons testimony regarding the
974 patent, Horda is relevant to the issue of whether the subject matter of claim
12 of the 974 patent was patentable and is likely to have been important to a
reasonable patent examiner in deciding whether to allow claim 12 of the 974
patent to issue. Antonsson Decl. 59. He further opined that Horda does
disclose the last clause in claim 12 ‐ that is a transverse configuration extending
in a direction transverse to said longitudinal axis. Id. 62. In support, he cites
to the following language in the Horda specification:
In the embodiment shown the attached portion 13 of the valve membrane
11 has been given increased thickness to allow attachment in the form of
studs 14 to be moulded on, see Figure 3. Even if the valve membrane is
provided with holes through which studs on the attachment portion of the
valve seat shall be passed, the valve member may be made thicker at the
attachment portion to strengthen the attachment area of the membrane.
Antonsson Decl. 63 (citing Horda, p. 4, lines 24‐32). Antonsson then goes on to
state that this transverse configuration maintains the flap in contact with the seal
surface. Id. 65. To support this opinion, Antonsson cites to additional
language of the Horda specification, specifically:
In compression‐moulded state the rubber material is resilient and if the
membrane is given a bevelled edge 12 it will seal against the border 3 of the valve
5See Vandenburgh Decl., Ex. 4, 974 patent, p. 1 (citing Foreign Patent Document GB 2
072 516, Simpson patent).
seat in closed position . . .
Id. (citing Horda p. 4, lines 17‐23) (emphasis added). Finally, Moldex asserts that
the PTO has similarly described Horda in an office action rejecting a later
Japuntich application. Prange Decl., Ex. 415.
Nothing in the specification or claims of Horda expressly addresses the
limitation at issue here: the transverse configuration at the root end of the flap
and sealing surface cause the flap to press against the seal surface. See
Vandenburgh Decl., Ex. 13. Contrary to Antonssons opinion, the specification
provides, focusing on the above italicized language, that the bevelled edge, not a
transverse configuration, causes the flap to seal against the seal surface. Id. p. 4,
lines 17‐23.
Furthermore, even though Horda may recite the first four elements of
claim 12, it appears that those elements are also disclosed in U.K. Patent
Application No. 2, 075, 516 (Simpson). Vandenburgh Decl., Ex. 6. Simpson is
prior art that was disclosed during prosecution5, and it describes a protective face
mask, with an exhalation valve that:
comprises a flexible circular flap member 15 of, for example, plastics
material, which is arranged to cover and closed valve openings 16 during
inhalation and to flex away from those openings during exhalation. To
allow flexing of the flap member 15 a part of its peripheral portion, a
segment of the flap member, is fixed in position, the remaining part of the
flap member being left free. The valve is fitted in an aperture in the mask
and is held in place by a retaining ring 17 which engages the edge portion
of that opening to provide an effective seal.
Id. 2:37‐50. Similarly, there is no mention, either in the specification or claim
language, in Simpson that addresses the limitation in the 974 patent that the
transverse configuration at the root end of the flap and sealing surface cause the
flap to press against the seal surface.
As noted above, it is not a material omission to fail to submit cumulative
prior art. Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565,
1582 (Fed. Cir. 1991) (a reference that is simply cumulative to other references
does not meet the threshold of materiality that is predicate to a holding of
inequitable conduct.) Because Horda and Simpson are cumulative, and Simpson
was disclosed during prosecution, Horda would not be considered material.
Based on this record, the Court finds that Moldex has not met its burden of
demonstrating, by clear and convincing evidence, a genuine issue of fact that
Horda was material to the 974 patent.
2. Materiality ‐ the Japuntich Patents
Horda is listed as a prior art reference in the 868 patent, thus with respect
to Moldexs claims of inequitable conduct, the issue is whether Horda is material
to the 248 and 463 patents. Moldex argues that Horda is material to these
patents, and that Hanson admitted as much during his deposition when he
testified that Horda discloses virtually all of the features of the Japuntich
patents. When asked if he cited Horda to the patent office during the prosecution
of the Japuntich patents, Hanson stated:
A: The reference was cited in the Japuntich patent applications. Albeit, I
think it was material, in view of the art that was already of record, to err on
the side of caution and have the reference before the examiner.
Vandenburgh Decl., Ex. 19 (Hanson Dep. p. 260). After this statement was made,
discussion was had as to whether Hanson misspoke, and his testimony was read
back. Id. p. 260‐261. Hanson then stated:
A: Yeah, I think what I said was albeit cumulative to art that was already
of record.
Q: So you believed it was material, albeit cumulative of art of record so
we get a clear answer.
6This is consistent with testimony of Hanson earlier in the same deposition in which he
stated: And my review of the document led me to believe that Horda was cumulative in view
of references that were already of record, but I asked for a second opinion on the subject from
attorneys at Carlson, Caspers. Id. p. 246.
A: No, I dont think there was any admission that was made as to whether
or not it was or was not material. It was being cited to the patent office to
Q: Did you just use the words material? Ill read you back your previous
You said, it was material, albeit cumulative. Isnt that what you said?
A: I dont know. Did I say that? If I said that , thats not what I intended to
Q: Lets see what he first said.
A: If its cumulative, it cant be material.
Id. p. 261‐62.6
Thus, contrary to Moldexs assertions, Hanson did not admit during his
deposition that Horda was material to the Japuntich patents.
Moldexs expert also provided an opinion as to the materiality of Horda
with respect to the 248 and 463 patents. To illustrate, Antonsson prepared
charts listing the elements of claim 1 of the 463 patent, with corresponding
listings of Hanson deposition testimony in which he concedes an element is
disclosed in Horda. Antonsson Decl. 47 and 52. Moldex argues that these
charts demonstrate how important Horda is to the Japuntich patents. Antonsson
further opines that Horda, together with Simpson and Braun, another prior art
reference, disclose all of the claim limitations in claim 1 of the 463 patent. Id.
53. He also offered the opinion that Horda is not cumulative to other references.
Id. 68.
With respect to the charts, the Court notes that the charts only show that
five of the ten elements of claim 1 of the 463 patent are present in Horda. See Id.
47 and 52. In addition, these same five elements appear in the Simpson prior
art. See Vandenburgh Decl., Ex. 6 (showing a single stationary flap, with a
stationary portion and a free portion, the free segment of the circumferential edge
associated with the free portion of the flap, and secured non‐centrally). See also,
Prange Decl., Ex. 415 at 3M0096164‐65 (PTO description of the Simpson reference
in Office Action dated April 11, 2006). As Horda and Simpson are cumulative,
Horda would not be considered material.
Moldex also argues the materiality of Horda is demonstrated by the fact
that the examiner rejected another Japuntich application based on Horda. Id. at
3M0096165. No evidence was presented to the Court, however, as to which
claims were rejected in that application. See Id. The relevance of the comments
made by the examiner in the rejection can only be demonstrated by referring to
the claims asserted. This is especially true given the fact that the 868 patent
issued in October 2006, despite the Horda disclosure in February 2005.
Vandenburgh Decl., Ex. 3 (868 patent). Nonetheless, the PTOs discussion of
Horda does not clearly demonstrate Hordas materiality.
To the extent, if any, that the flap of Simpson et al. may not be pressed
towards the seal surface in an abutting relationship therewith when the
fluid is not passing through the orifice resort is had to Soderberg [Horda]
in a face mask having an exhalation valve that is pressed towards the valve
seal surface in an abutting relationship therewith, when fluid is not passing
through the orifice for the purpose of ensuring and maintaining a seal
between the exhalation valve and the valve seat.
Id. Use of the words if any indicates the PTOs determination that Simpson
arguably does contain this limitation, lending support to the argument that
Horda is cumulative to Simpson. Accordingly, the PTOs discussion of Simpson
and Horda does not establish, by clear and convincing evidence, that Horda is
Finally, another Moldex expert, James T. Carmichael, also opined that
Horda and Simpson are not cumulative. The Court notes that Carmichaels
opinion is based solely on the affidavit of Antonsson. Carmichael Decl. 53. As
discussed above, however, Antonssons opinion is contrary to the claim language
and specifications of both Horda and Simpson, and other evidence in the record.
Accordingly, Carmichaels opinion does not constitute clear and convincing
evidence as to the materiality of Horda.
Based on the evidence submitted, the Court finds that Moldex has failed in
its burden of producing sufficient evidence demonstrating, by clear and
convincing evidence, a genuine issue of material fact that Horda is a material
reference with respect to the 248 and 463 patents.
3. Intent
Even if the Court were to find that a genuine issue of material fact exists as
to whether Horda was material to either the Bowers or the Japuntich patents,
Moldex can prevail on its inequitable conduct claim only if it demonstrates, by
clear and convincing evidence, that Hanson intentionally withheld the Horda
reference, with the intent to deceive the patent office. See Allen Organ Co. v.
Kimball Intʹl, Inc., 839 F.2d 1556, 1567 (Fed. Cir.1988) (Materiality does not
presume intent, which is a separate and essential component of inequitable
As noted above, Horda was first revealed in a European Search Report
issued during the prosecution of two foreign applications related to the 974
patent. The first report was issued on January 16, 1998, and at that time, the
original Bowers patent had already issued. Vandenburgh Decl., Ex. 7 and 14. In
addition, 3M purchased Racal on January 29, 1998, two weeks after the report
issued and after the patent issued. Id., Ex. 8. Under these circumstances, there
would have been little incentive for Hanson, or anyone at 3M, to read the Horda
The same is true with respect to the second European Search Report that
was issued in December 2002. Id., Ex. 15. At that time, the Bowers reissue
application had already been approved, although not officially issued. Id., Ex. 17.
Under these circumstances, Hanson again would not have had much incentive to
read Horda. In any event, Horda was disclosed as technological background in
both Reports, and would thus not be considered highly relevant prior art. See
Tivo Inc v. Echostar Commcns. Corp.,, No.2:04‐CV‐1‐DF, 2006 U.S. Dist. LEXIS
64292 at *10 (E.D. Tex. Aug. 17, 2006) (noting that it was not uncommon for
patent attorneys not to read A references). In addition, Hanson testified that he
was unaware of the alleged materiality of Horda during that period. Id., Ex. 12
(Hanson Dep. p. 242‐243).
Moldex argues that notice should nonetheless be imputed to Hanson as
early as 1998, because he would have reviewed the European Search Report as
part of due diligence when 3M purchased Racal in 1998. Moldex also asks that
an adverse inference be drawn from the fact that Hanson destroyed the notes he
took concerning due diligence. In his deposition, Hanson testified that he took
notes during the due diligence related to 3Ms purchase of Racal, but that he no
longer has them. Prange Decl., Ex. 5 (Hanson Dep. p. 25).
First, it is not enough that Hanson had notice of Horda. There must be
clear and convincing evidence that Hanson knew of Horda, knew of Hordas
materiality and had an intent to deceive the patent office by withholding such known
reference. FMC Corp. v. Manitowoc Co., Inc., 835 F.2d 1411, 1415 (Fed. Cir. 1987).
Based on the fact that Horda was designated as an A reference, Hansons
testimony that he was not aware of Horda until February 2005, and the timing of
the Reports and the issuance of the Bowers patent, the record does not establish a
genuine issue as to the requisite intent. Second, absent additional evidence, the
fact that Hanson no longer has notes he took during due diligence does not
support an inference of intentional destruction of relevant evidence.
The same is true with respect to whether Hanson intended to deceive the
patent office by withholding Horda during the prosecution of the Japuntich
patents. Because the Bowers and Japuntich patents are not related, it is certainly
plausible that during the prosecution of the Japuntich patents, Hanson would not
have thought it necessary to consult the European Search Reports issued with
respect to foreign applications of an unrelated patent.
The 243 patent issued in January 2005, and the 463 issued in February
2005. Vandenburgh Decl., Ex. 1 and 2. Hanson testified that Horda came to his
attention with respect to the Japuntich patents in February 2005, when he
received a letter dated February 1, 2005 from Robert Kahn, counsel representing a
separate company responding to claims of infringement of the same patents at
issue here. Id. Ex. 18; Ex. 19 (Hanson Dep. p. 245‐246). After receiving the letter,
Hanson asked for advice from outside counsel as to whether Horda should be
disclosed with respect to the then pending 463 patent application, despite his
conclusion that Horda was cumulative. Hanson and outside counsel determined
that Horda should be disclosed to the patent office in order to err on the side of
caution. Id. p. 246.
On or about February 11, 2005, 3M filed a Petition for Withdrawal from
Issue with respect to the 463 patent application in order to allow the examiner to
consider an Information Disclosure Statement, which included the Horda
reference. Vandenburgh Decl., Ex. 20. The 463 patent issued before the Petition
to Withdraw could be acted upon by the examiner. See Id. (Petition posted
received by patent office on February 16, 2005) and Ex. 2 (463 Patent issued on
February 15, 2005).
Moldex argues that the Bowers and Japuntich patents are related because
both involve valves with curved seats and flexible flaps and Hanson supervised
the prosecution of both. Thus, at a minimum, Hanson knew or should have
known of the Horda reference as early as 1998. In addition, there is evidence that
Hanson was put on notice of the Horda reference in October 2004, through a
letter forwarded to him by David Duguid, the addressee of said letter. Moldex
Exs. 620 and 621. In this letter, a company marketing a FastFlow Valve
responded to 3Ms assertions of infringement by arguing that the Horda
publication would invalidate 3Ms Australian patent covering the valve at issue.
Moldex Ex. 621, p. 3. Thus, Hansons failure to disclose Horda prior to 2005
creates a genuine issue on the intent question. The Court disagrees.
References disclosed in connection with the prosecution of the foreign
counterpart to the Bowers patent have a tenuous connection to the prosecution of
the Japuntich patents, and evidence of such a tenuous connection are not
sufficient to prove an intentional deception for purposes of proving an
inequitable conduct claim. See CFMT, Inc. v. Yieldup Intl Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) (evidence of gross negligence not sufficient to establish
intent); Dayco Prods, 329 F.3d at 1367 (intent to deceive cannot be inferred from
the decision to withhold a reference where the reasons given for withholding are
plausible.) This is especially true for references that have been designated as
providing only technical background. See Tivo Inc., No.2:04‐CV‐1‐DF, 2006 U.S.
Dist. LEXIS 64292 at *10 (finding most patent attorneys do not read technical
references). Based on the evidence in the record, it is thus plausible that Hanson
did not consider Horda to be material given its A designation on a European
Search Report, and that the results of such Report would not need to be
considered in the prosecution of an unrelated patent.
With respect to the October 2004 letter forwarded to Hanson, Hanson
testified at his deposition that he recalled receiving the letter, that it concerned an
Australian patent, but that he could not recall if it was the corresponding patent
7On page two of the letter, there is argument concerning the transverse curvature
limitation in the 3M patent. Only the Bowers patent includes such a limitation. Therefore, it is
likely that the Australian patent corresponded to the Bowers patent.
to the Bowers or Japuntich patents.7 Vandenburgh Decl., Ex. 19 (Hanson Dep. p.
242). He also testified that he recalled reading the first two pages and coming to
the conclusion that the arguments asserted were weak. Id. He then set the letter
aside, and did not read it further until February 2005, after he received the letter
from Kahn. Id., p. 242‐43.
Although no evidence has been submitted discrediting this testimony,
assuming Hanson had read entire letter, specifically that portion addressing
Horda, the record does not contain any clear and convincing evidence that
Hanson was aware of the materiality of Horda, and that he intentionally
withheld Horda in order to deceive the PTO. See FMC Corp., 835 F.2d at 1415.
The Court thus finds, after reviewing the entire record, that Moldex has
not demonstrated that genuine issues of material fact exist as to whether, by clear
and convincing evidence, Hanson intended to deceive the patent office by
withholding Horda during the prosecution of the Japuntich patents. Summary
judgment with respect to allegations concerning Horda is appropriate.
B. Allegations that Hanson Misrepresented Prior Art and Other Acts of
The remainder of the inequitable conduct claims are largely based on
alleged false or misleading statements made by Hanson regarding the prior art
during the prosecution of the Japuntich patents. In addressing these allegations,
the Court must keep in mind that advocating a particular interpretation of a prior
art reference, to which the examiner is free to accept or reject, is permissible as
long as the interpretation did not involve factual assertions that could give rise to
a misrepresentation claim. Life Techs., 224 F.3d at 1326 (reversing district court
judgment of inequitable conduct); CFMT, Inc., 349 F.3d at 1341‐42.
An example of inequitable conduct is addressed in the decision of
Monsanto Co., 514 F.3d 1229. In Monsanto, the court found that the patent
holder, Bayer, had taken a certain position before the PTO, and had failed to
disclose notes it had obtained from a prior inventor and Bayer employee that
directly contradicted such position. The court further found that Bayer had
made a deliberate decision to withhold the known highly material reference with
the specific intent to deceive or mislead the PTO examiner. Id. at 1237. It is
3Ms position that Moldex has not identified any statements or omissions, like
83M asserts that Moldex is asserting that Hanson made misrepresentations concerning
U.S. Patent 2, 105,183 (Cover 183ʺ). However, Hanson testified that he was not aware of the
Cover 183 reference until July 2005. Vandenburgh Decl., Ex. 12, Hanson Dep. p. 244‐45. Any
that found in Monsanto, to support an inequitable conduct claim.
3M asserts that the Japuntich patents were prosecuted for over ten years,
involving only two patent examiners. The length of the prosecution undermines
Moldexs theory that Hanson misled the PTO by advocating certain
interpretations of the prior art. In addition, the prior art that Hanson is alleged to
have made misrepresentations about was the subject of extensive debate ‐ in
particular U.S. Patent Nos. 2,320,770 (Cover 770ʺ) and 4,934,362 (Braun). In
fact, examiners Asher and Lewis rejected claims in the Japuntich applications in
view of Cover 770 and Braun twelve times. In response to each rejection,
Hanson debated the relevancy of those references, and such advocacy cannot
form the basis of an inequitable conduct claim, absent factual assertions that are
made with the intention to deceive.
Moldex argues that genuine issues of material fact exist with respect to its
claims of misrepresentation concerning disclosed prior art. For example, Moldex
asserts that Hanson repeatedly misrepresented the structure disclosed in the
Cover prior art8 when he described Cover as having a centrally mounted,
statements made by Hanson concerning Cover were related to U.S. Patent 2,320,770 (Cover
770ʺ). Moldex has not submitted any evidence to the contrary. For example, Moldex cites to
Ex. 393 at 3M0024899 to demonstrate that Hanson made false statements about Cover, but this
exhibit refers only to Cover 770. The same is true with respect to Exhibits 384, 385, and 401.
Therefore, in addressing these claims, the Court will only focus on Cover 770.
hemispherically formed flap [that] opens only on one side, leaving the other
closed by the rocking of the flap across the center mount when he knew or
should have known that statement to be false as both sides of the flap could
open. See Antonsson Decl. 27. Hanson further stated that Cover 770 would
cause a pressure drop when air is passed at a velocity of 0.8 m/s, but later
testified that he did not do any testing to confirm this statement. Prange Decl.,
Ex. 7 (Hanson Dep. p. 175).
Moldex also asserts that Hanson made a number of misrepresentations
concerning the Braun prior art. For example, Hanson is alleged to have
misrepresented Braun to the European and U.S. patent offices by stating that
Braun did not teach or suggest placing an exhalation valve on the filtering face
mask where the exhalation valve had a flexible flap secured to the valve outside
the region encompassed by the orifice, when he knew or should have known
upon, even a causal reading of Braun, that one embodiment had such a
configuration. Antonsson Decl., 36. Hanson also argued that Braun did not
9This review includes allegations that Hanson misrepresented the supposed advantages
of Japuntich, misrepresentations as to what had been commercialized in the prior art,
misrepresentations concerning the motivation to combine prior art, characterizations that prior
art was non‐analogous and misrepresentations as to the Ventex valve.
teach a person of ordinary skill in the art how to make a valve seat with a
concave curvature that corresponds to certain deformation curves, when he knew
or should have known that Braun taught a parabolic seat that did, in fact,
correspond to a specific curvature. Id. 37‐38.
Moldex further complains that Hanson misrepresented the advantages of
the Japuntich invention over the prior art. For example, Hanson stated that the
advantages of the invention were accomplished by securing the flexible flap to a
region outside the orifice, when he knew or should have known that Braun and
Cover showed the same construction. Prange Decl., Ex. 393 at 3M0024899.
The Court has reviewed each alleged misrepresentation9, and has reviewed
the context in which each misrepresentation was allegedly made and finds that
all of the statements by Hanson highlighted in this case were merely arguments
or interpretations of the prior art of which the patent examiner was free to accept
or reject. None included factual assertions that would give rise to an inequitable
conduct claim.
For example, Hansons comments that Cover 770 shows a valve having
mounting hardware located inside the orifice was a reasonable argument and
consistent with his position that Cover 770 discloses a single orifice that is
divided into two openings. Further, the allegations that Hanson had not done
any testing to support his statement that Cover 770 would cause a pressure drop
when air is passed at a velocity of 0.8 m/s, does not support an inequitable
conduct claim as Hanson testified that he had test data for a similar valve, the
Braun valve, and that it was reasonable to expect that one would get the same
performance from similar valves. Prange Decl, Ex. 7, Hanson Dep. p. 175‐76.
More importantly, Moldex has not demonstrated that any of the alleged
misrepresentations were material; that such misrepresentations likely effected the
outcome of the patent prosecution. See McGinley v. Franklin Sports, Inc., 92 F.
Supp.2d 1216, 1222 (D. Kan. 2000) (mischaracterization of prior art was not
inequitable conduct as there was evidence that the patent examiner noted the
mischaracterization and disregarded it).
Given the lengthy prosecution history of the Japuntich patents, the record
is replete with evidence that the patent examiners had the opportunity to view
and study the prior art cited, and to address Hansons arguments in view of the
prior art. 3M is thus entitled to summary judgment as to these claims as well.
IT IS HEREBY ORDERED the Plaintiffs Motion for Summary Judgment
of No Inequitable Conduct [Doc. No. 428] is GRANTED in its entirety.
Date: August 08, 2008
s / Michael J. Davis
Michael J. Davis
Chief Judge
United States District Court
Civil No. 03‐5292


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