Carpenter Tech. Corp. v. Allegheny Techs., Inc.

  • Court: Intellectual Property Archives
  • Area(s) of Law: Patents
  • Date Filed: 05-22-2013
  • Case #: 08-2907
  • Judge(s)/Court Below: United States District Court for the Eastern District of Pennsylvania
  • Full Text Opinion

To show that a patent is unenforceable because of inequitable conduct, the alleged infringer must show that the patentee intentionally withheld, or misrepresented, material information from the patent examiner. The intent and materiality elements must be shown independently, and each must be proven by clear and convincing evidence.

Opinion (Stengel): Carpenter Tech Corp. ("Carpenter") alleged that Alleghney Techs, Inc. ("Alleghney") committed inequitable conduct in the prosecution of its patent, related to the manufacturing of nickel-based alloys, by misrepresenting the prior sale of a similar alloy a year before it filed its patent application and by failing to disclose a journal article related to the subject of its patent claims. Alleghney moved for summary judgment on Carpenter's claims. To establish that a patent is unenforceable due to inequitable conduct before the Patent and Trademark Office, the claimant must show that information material to patentability was withheld from the PTO, or that material misinformation was provided to the PTO, with the intent to deceive or mislead the patent examiner into granting the patent. Both materiality and intent must be shown, and each is a separate requirement that must be demonstrated independently by clear and convincing evidence. To show materiality, the accused infringer must show that the PTO would have rejected the claim if it had had accurate information. The intent element requires showing that the patentee knowingly and deliberately defrauded the PTO. In this context, the patentee must actually have known the information was material and deliberately omitted or misrepresented it, merely showing that the patentee should have known is insufficient. For purposes of the motion, the court assumed that both the sale and the article were sufficiently material to support Carpenter's claims. However, Carpenter did not present evidence that clearly and convincing demonstrated that Alleghney knowingly and intentionally acted to deceive the PTO. Because Carpenter did not present sufficient evidence to support the intent element of its inequitable conduct claims, the District Court GRANTED Alleghney's motion for summary judgment.

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