The opinion of the court was delivered by: JOHN DARRAH, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff, Para Gear Equipment Co., Inc., filed a Complaint for
Declaratory Judgment against Defendants, Square One Parachutes,
Inc. and Anthony J. Domenico. The Complaint contains three
counts, alleging the patent at issue is unenforceable (Count I)
and invalid (Count II) and alleging lack of infringement by Para
Gear (Count III). Presently before the Court is Para Gear's
Motion for Summary Judgment.
In December 2003 and January 2004, Square One, through letters
from its attorney, charged Para Gear with infringement of U.S.
Patent No. Des. 381,886 ("`886 Patent"). (Plaint.'s 56.1(a)(3)
Statement ¶ B-2).*fn1 The '886 patent was issued on August
5, 1997, to the inventor, Anthony J. Domenico, who assigned the
patent to Square One. (Id., ¶ C-1). The '886 patent's sole claim
is for "[t]he ornamental design for a rescue knife, as shown."
(Id., ¶ C-3). The December 1992, January 1993, February 1993, March 1993,
April 1993, May 1993, and June 1993 issues of Parachutist
magazine contain an advertisement by Square One Sales & Service,
stating, in part: "New color catalogue available February, 1993.
Call today to receive your copy." (Plaint.'s 56.1(a)(3) Statement
¶¶ C-10-C-16). The July 1993 issue of Parachutist contains an
advertisement by Square One, stating, in part: "New 150 Page
Color Catalog Now Shipping Just $5.00." (Id., ¶ C-17).
The Square One 1993/94 Catalog contains photographs of other
hook knives sold by Square One, including a hook knife identified
as "Deluxe Metal Knife Item No. 20200" and a hook knife
identified as "Jack The Ripper Hook Knife Item No. 2023."
(Plaint.'s 56.1(a)(3) Statement ¶¶ C-21-22). A portion of the
1993/94 Catalog page containing photographs of the hook knives
appeared in an advertisement of the August 1993 issue of
Parachutist. (Id., ¶ C-23).
Square One sold 128 Square One Item No. 20200 hook knives in
1993 and 166 in 1994. (Plaint.'s 56.1(a)(3) Statement ¶¶
C-24-25). Domenico knew that Square One commenced selling Item
No. 20200 in mid to late 1992. (Id., ¶ C-26). Domenico also knew
that the 1993/94 Catalog was most likely printed in 1993. (Id., ¶
Para Gear received a Square One 1993/94 catalog in the summer
of 1993. (Plaint.'s 56.1(a)(3) Statement ¶ C-27). Para Gear
purchased a hook knife identified as Item No. 20200 that same
summer. (Id., ¶ C-28). The hook knife identified as Item No.
20200 in the 1993/94 Catalog purchased by Para Gear in 1993 has
the similar outside shape of Figure 2 of the '886 patent, except
that Figure 2 of the patent shows a double blade, whereas, Item
20200 has a single blade. (Id., ¶ C-33). The Jack the Ripper Hook Knife Item No. 2023 of the 1993/94
Catalog is shown with double blades. (Id., ¶ C-34). Aeroplay is
another hook knife that was offered for sale in the United States
prior to November 24, 1994. (Id., ¶ C-56).
On December 19, 1995, Domenico signed a patent application
containing the following language: "I acknowledge the duty to
disclose information which is material to the examination of this
application in accordance with Section 1.56(a) of Title 37 of the
Code of Federal Regulations." (Plaint.'s 56.1(a)(3) Statement ¶
C-35). The patent application, which matured into the '886
patent, was filed in the Patent and Trademark Office ("PTO") on
December 22, 1995. (Id., ¶ C-37). On March 21, 1996, Domenico's
attorney filed the '886 patent application and an Information
Disclosure Statement ("IDS") in the PTO. (Id., ¶ C-38). The March
21, 1996 Information Disclosure Statement was the only IDS filed
in the '886 patent application. The IDS lists the following U.S.
Patents: 1,472,826; 3,370,163; 4,783,867; 4,918,775; 4,944,392,
and 5,313,376. No other prior art was listed. (Id., ¶ C-39).
None of the patents cited in Domenico's IDS disclose a hook
knife. (Plaint.'s 56.1(a)(3) Statement ¶ C-40). Domenico's IDS
does not disclose any part of the 1993/94 Catalog, Item 20200, or
any knife offered for sale by Square One prior to December 22,
1994. (Id., ¶¶ C-41-45).
On June 10, 1996, the patent examiner issued an Examiner's
Action in the '886 application wherein he cited eleven United
States patents. (Plaint.'s 56.1(a)(3) Statement ¶ C-48). On
December 23, 1996, Domenico filed a Supplemental Declaration in
the '886 patent application. (Id., ¶ C-50). Domenico did not
disclose any additional prior art outside that already disclosed
in the previously filed IDS. (Id., ¶ C-51). The application
underlying the '886 patent was Domenico's first effort at
patenting one of his designs. (Def.'s 56.1(B)(3) Statement ¶ 4). ANALYSIS
Summary judgment is proper if "the pleadings, depositions,
answers to interrogatories, and admissions on file, together with
affidavits, if any, show that there is no genuine issue as to any
material fact." Fed.R.Civ.P. 56(c); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 322-23 (1986). All the evidence and the
reasonable inferences that may be drawn from the evidence are
viewed in the light most favorable to the nonmovant. Miller v.
American Family Mutual Ins. Co., 203 F.3d 997, 1003 (7th Cir.
2000). Summary judgment may be granted when no "reasonable jury
could return a verdict for the nonmoving party". Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Para Gear argues that the '886 patent is unenforceable because
Domenico engaged in inequitable conduct by failing to disclose
the 20200 hook knife and the 1993/94 Catalog that depicted this
and other hook knives.
Failure to prosecute a patent application with candor, good
faith, and honesty constitutes inequitable conduct. See Molins
PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995)
(Molins). The court undertakes a two-step analysis in
determining whether inequitable conduct occurred. GFI, Inc. v.
Franklin Corp., 265 F.3d 1268, 1273 (Fed. Cir. 2001) (GFI).
First, the court determines whether there has been an affirmative
misrepresentation of material fact a failure to disclose
material information or a submission of false material
information, coupled with an intent to deceive. See
Semiconductor Energy Lab. Co. v. Samsung Elect. Co.,
204 F.3d 1368, 1373 (Fed. Cir. 2000) (Samsung). The party asserting the
defense must demonstrate by clear and convincing evidence that
the information was both material and that the conduct was
intended to deceive. See Samsung, 204 F.3d at 1373. Second, the
court weighs the materiality and intent to deceive in light of
all the circumstances to determine whether the patent applicant's conduct
is so culpable to render the patent unenforceable. See GFI,
265 F.3d at 1273.
Because the presently disputed patent was filed after March 16,
1992, materiality is determined by the current version of PTO
Rule 56, rather than the pre-1992 version of the rule. See
Purdue Pharma L.P. v. Endo Pharmaceuticals Inc., 410 F.3d 690,
696 (Fed. Cir. 2005) (Purdue); Bruno Indep. Living Aids,
Inc., 394 F.3d 1348, 1352-53 (Fed. Cir. 2005) (Bruno).
Information is "material" if:
[I]t is not cumulative to information already of
record or being made of record in the application,
(1) It establishes, by itself or in combination with
other information, a prima facie case of
unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position
the applicant takes in:
(i) Opposing an argument of unpatentability relied
upon by the Office, or
(ii) Asserting an argument of patentability.
37 C.F.R. § 1.56(b)(2004). "Materiality is not limited to prior
art but instead embraces any information that a reasonable
examiner would be substantially likely to consider important in
deciding whether to allow ...