Scott Daniels | July 8, 2011
In January we reported on the case Tele-Publishing, Inc. v. Facebook, Inc., et al., No. 1:09-cv-11686-DPW, in which Facebook is accused of infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.” Facebook defended by requesting 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, 2010, and a final rejection issued in August of that year. An appeal is currently pending at the PTO Board.
What will interest reexamination lawyers, however, is Facebook’s allegation that the ‘216 patent is unenforceable because of applicant’s inequitable conduct during the prosecution of that patent. Facebook asserts that the ‘216 applicant was aware of the de Hond patent because that reference was cited and distinguished in several related applications, and that the applicant intentionally withheld de Hond in the ‘216 prosecution.
How does Facebook’s inequitable conduct defense stand up in light of the but-for standard for materiality now required by Therasense? Pretty well, actually. The CAFC described the materiality standard in Therasense as calling for a court to “determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.” The CAFC seemed almost to have reexamination in mind when it added that “the court should apply the preponderance of the evidence standard and give the claims their broadest reasonable construction” (emphasis added). The closest answer to the CAFC’s hypothetical question – what would the PTO have done with the undisclosed reference – might be found in reexamination.
Facebook jumped on this point by filing a brief in June, citing the results of the ‘216 reexamination to-date as proof of materiality: “but for the withholding of de Hond, none of the claims of the ‘216 patent would have issued” (emphasis in original). Facebook argued as well that the “but-for materiality of de Hond is also confirmed by the fact that the PTO relied on it to repeatedly reject claims in co-pending applications, forcing [the applicant] to make substantial claim amendments to overcome those rejections.”
The final rejection in the ‘216 reexamination has been briefed and is scheduled for oral argument before the PTO Board in early August; so there is certainly the possibility of a reverse of fortunes in which the Board reverses the rejection and Facebook’s defense goes flat.
In the meantime, other accused infringers who hope to prove inequitable conduct, but who are also mindful of the higher standards required by Therasense, might consider following Facebook’s example by establishing materiality through reexamination.