Facebook Advances Inequitable Conduct Allegation Through Reexamination Request

Scott Daniels | January 3, 2011

A company accused of patent infringement requests reexamination with the obvious goal of invalidating the patent.  But requesting reexamination may produce certain collateral benefits, such as establishing the “materiality” of a prior art reference for an inequitable conduct defense.  Facebook has demonstrated the possibility of this collateral benefit in the pending case, Tele-Publishing, Inc. v. Facebook, Inc., et al., (Case No. 1:09-cv-11686-DPW (D. Mass.)). 

There, Tele-Publishing (TPI) sued Facebook in October 2009 for infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.”  The invention claimed is for a method and apparatus for providing a personal page over a computer network, so that users may securely display personal information to other computer network users.  In December 2009, Facebook requested reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond.  The PTO granted reexamination.  An initial rejection of all claims issued in April, and a final rejection issued in August. 

Facebook now relies upon the results to-date from the reexamination for a motion for summary judgment that the ‘216 patent is unenforceable because of applicants’ inequitable conduct during the original prosecution.  To show materiality, Facebook argues that the “reexamination proceedings and the PTO’s conclusions confirm that de Hond would have been important (and therefore material) during the original prosecution.” 

With respect to the “intent requirement,” Facebook points out that the ‘216 applicants pursued five related applications, including the ‘216 application.  The examiner in three of the applications cited de Hond and relied upon it in six Office Actions to reject pending claims.  The applicants cited de Hond in the fourth application, but not in the ‘216 application.  Facebook further asserts that the ‘216 applicants presented arguments to the PTO that it could not have made if de Hond had been disclosed.  According to Facebook, the “only reasonable conclusion is that TPI withheld de Hond because it knew it would not have obtained the ‘216 patent had it disclosed the art.”  Perhaps.

PTI has now filed its brief  with the PTO Board appealing the rejection of its ‘216 claims.  Though it is always difficult for lawyers not involved in a case to predict the outcome of an appeal, it does seem possible that the examiner has not correctly interpreted the ‘216 claims under 35 U.S.C. § 112, ¶ 6, and that the Board could reverse the prior art rejection of at least some of the claims.  Nonetheless, Facebook’s argument for materiality in its motion for summary judgment – that the reexamination establishes that a reasonable examiner would have found de Hond to be important – would remain.

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