Saturday, September 16, 2017

Sausage war in ED Wisc gets into inequitable conduct

Defendant Klement Sausage argued that when Johnsonville Sausage withheld information about its utility patent application from Sipos, it breached its duty of candor and good faith in dealing with the PTO.

ED Wisc noted:

Klement fails to prove materiality. For the most part, it applies the wrong materiality standard, arguing that Johnsonville withheld information "material to patentability" as the PTO defines it. The PTO's definition of materiality does not apply in patent cases where inequitable conduct is raised, as it is "overly broad," "encompass[ing] anything that could be considered marginally relevant to patentability."

Id. [Therasense] at 1293-95. "[S]uch a low bar for materiality" does not reflect the seriousness and

"far-reaching consequences" of a finding of inequitable conduct. See id. at 1289, 1294. Rather, "the materiality required to establish inequitable conduct is but-for materiality," meaning that the accused infringer must show that "the PTO would not have allowed a claim" but for some nondisclosure by the applicant. Id. at 1291.
To the limited extent that Klement applies the right materiality standard, its arguments still fail. It first argues that Johnsonville's utility patent application is material because it would have shown Sipos that the curved walls of Johnsonville's tray are functional, not ornamental. This argument assumes that ornamentality [*4] and functionality are mutually exclusive. To the contrary, "[a]rticles of manufacture may possess both."

U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 1502.01 (9th ed. rev. Nov. 2015). In fact, "the design embodied in or applied to an article of manufacture (or portion thereof)" is distinct from "the article itself" and "cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional." Id. §§ 1502, 1504.01(c)(I).

Klement also argues that Gehman's rejection of Johnsonville's utility claims as anticipated and obvious and the prior art he cited are material because they would have shown Sipos that the curved walls of Johnsonville's sausage tray lack novelty and nonobviousness. But, Gehman only assessed the functional novelty and nonobviousness of Johnsonville's tray, not the ornamental novelty and nonobviousness of the design embodied in it. A design does not lack novelty or nonobviousness merely because the article in which it is embodied does. See generally id. § 1504. Further, Klement does not explain how the prior art that Gehman cited adds to the prior art that Johnsonville disclosed to Sipos. Compare U.S. Patent No. 5,820,904, and European Patent Application [*5] No. EP1997618, with '249 Patent, and '539 Patent. Prior art that

"teaches no more than . . . the prior art already before" the examiner is cumulative.

Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed. Cir. 1997)

Case cite: 2017 U.S. Dist. LEXIS 150011


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