Federal Judiciary

Court declines to find inequitable conduct in Laserdynamics v. Asus

By Michael C. Smith

The jury in LaserDynamics v. Asus Computer International, 2:06cv348 found for the plaintiff back on July 6 in Judge Ward's court in Marshall.  Specifically, it found that the defendant contributed or induced infringement of one claim of the patent, that such infringement was willful, and that the defendant had failed to show by clear and convincing evidence that the patent was invalid as not enabled.  Damages were set at $52 million.

Today Judge Ward ruled on the inequitable conduct claims, which were presented to him in a bench trial on August 10.  After reviewing the applicable standards for such claims (which I would note in passing Judge Ward has found to be present in two or three cases in recent months) Judge Ward concluded that inequitable conduct (here claimed to be failure to disclose by a nonlawyer inventor) was not shown in this case.  The Court wrote:

Based on the evidence of record, the arguments of counsel, and the testimony of the
witnesses, the court does not find that the evidence is clear and convincing to prove that Mr. Kamatani intended to deceive the PTO by not disclosing the ?875 Rosen patent to the Examiner of the ?981 patent application. The Court has read the office actions and responses thereto relied upon by Quanta, and the Court does not believe that they show in their entirety the high level of deceptive intent by Mr. Kamatani that Quanta alleges. Further, the Court has considered the prior deposition of Mr. Kamatani and finds that, taken as a whole, it does not show an intent to deceive by Mr. Kamatani. Rather, it offers support for Mr. Kamatani?s explanation as to why he did not disclose the ?875 Rosen patent to the Examiner of the ?981 patent application. Because the Court has found that Quanta has not satisfied its burden of proving deceptive intent by clear and convincing evidence, inequitable conduct cannot be found in this instance.

Full post as published by Eastern District of Texas Federal Court Practice on August 17, 2009 (boomark / email).