The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge
MEMORANDUM OPINION AND ORDER
Plaintiffs Black & Decker Inc. and Black & Decker (U.S.) Inc. (collectively "Black & Decker") bring this lawsuit against Defendant Robert Bosch Tool Corporation ("Bosch") alleging infringement of various claims of U.S. Patent Nos. 6,308,059 (the "'059 patent") and 6,788,925 (the "'925 patent"). Before the Court is Black & Decker's Motion for Summary Judgment on Bosch's Defense of Inequitable Conduct. Because material issues of fact exist, the Court denies Black & Decker's motion.
Black and Decker (U.S.) Inc. is the exclusive licensee of the '059 and '925 patents. (R. 169-1, Pl.'s Rule 56.1 Stmt. Facts ¶ 5.) Both of the patents cover a jobsite radio. (Id. ¶¶ 9, 11.) On December 8, 2004, Black & Decker brought this lawsuit against Bosch for infringement of these patents. (Id. ¶ 16.) In its Answer to the Complaint, Bosch raised the affirmative defense "that one or more of the patents in suit are invalid and unenforceable for failure to comply with the provisions of 35 U.S.C. §§ 101, 102, 103, 112 or inequitable conduct." (Id. ¶ 18.)
Joseph Domes ("Domes") is the inventor of both the '059 patent and the '925 patent. (Id. ¶¶ 9, 11, Ex. A & B.) Domes testified that he conceived of his inventions in December 1996 and began working on his patent applications with his attorney in January 1997. (Id. ¶¶ 47, 48.) On December 12, 1997, Domes filed a patent application, serial number 60/069,372. (R. 235-1, Def.'s Rule 56.1 Stmt. Add'l Facts ¶ 84.) Domes filed the '059 application on December 11, 1998. (Id. ¶ 85.) The '059 patent claims priority to the '372 patent application. (Id.) The '059 patent entitled "Ruggedized Tradesworker Radio" issued on October 23, 2001. (Id.; Pl.'s Rule 56.1 Stmt. Facts ¶ 9.) Meanwhile, Black & Decker prosecuted the '925 patent which was filed on August 10, 2002. (Def.'s Rule 56.1 Stmt. Add'l Facts ¶ 86.) The '925 patent entitled "Ruggedized Tradesworker Radio" issued on September 7, 2004. (Pl.'s Rule 56.1 Stmt. Facts ¶ 11.)
During the prosecution of the Domes patents, the Patent Office Examiner identified and considered the Toops patent and the Eggering patent. (Id. ¶ 79.) The Smith patent applications for a rugged radio were not disclosed to the Examiner. (Def.'s Rule 56.1 Stmt. Add'l Facts ¶ 85.) Specifically, they did not disclose patent application serial number 09/153,621 ("Smith I"), the patent application that ultimately issued as U.S. Patent No. 6,427,070 ("Smith II" or the "'070 patent"), or the Smith II patent to the Patent and Trademark Office ("PTO") during the prosecution of the '059 patent. (Id.) In addition, nobody disclosed the Smith I patent application, the Smith II patent application or patent, or the patent application that ultimately issued as U.S. Patent No. 6,496,688 ("Smith III" or the "'688 patent") during the prosecution of the '925 patent. (Id. ¶ 86.)
Black & Decker prosecuted the Smith patents that were the basis of the "DeWalt" jobsite radio. (Pl.'s Rule 56.1 Stmt. Facts ¶ 14; Def.'s Rule 56.1 Stmt. Add'l Facts ¶¶ 95-99.) By April 3, 1997, Black & Decker was actively developing the DeWalt jobsite radio and by June 21, 1997, Black & Decker had proposed electrical specifications for this radio. (Def.'s Rule 56.1 Stmt. Add'l Facts ¶¶ 89, 90.) By September 11, 1997, Black & Decker had completed the following for the DeWalt jobsite radio: (a) a preliminary industrial design configuration; (b) a definition of its product features; and (c) preliminary market research. (Id. ¶ 92.)
On September 15, 1998, Black & Decker filed the first patent application relating to the DeWalt jobsite radio with named inventor Roger Q. Smith that had serial number 09/153,621 ("Smith I"). (Id. ¶ 95.) The '070 patent is a continuation of the Smith I application, which was filed on March 4, 1999 and issued on July 30, 2002, containing the same specification and drawings as Smith I. (Id. ¶ 96.) Patent '688 is a continuation of the Smith II application, which was filed on May 6, 2002 and issued on December 17, 2002, containing the same specification and drawings as Smith II. (Id. ¶ 97.) United States Patent No. 6,977,481 ("Smith IV" or the "'481 patent") is a continuation of the Smith III application, which was filed on October 15, 2002 and issued on December 20, 2005, containing the same specification and drawings as Smith III. (Id. ¶ 98.)
On March 13, 2001, Black & Decker filed a Disclosure Statement identifying the Domes patent applications in the prosecution of '070 (Smith II) patent application, but failed to include these references on its Information Disclosure Statement. (Id. ¶ 108.) In addition, the Domes patent applications are not listed as references considered on the face of either Smith patents '070 and '688. (Id. ¶ 110.) During the prosecution of the '481 patent (Smith IV), the patent examiner found the '059 patent on his own and rejected the Smith claims based on the '059 patent. (Id. ¶ 112.)
Both the Smith '070 and '688 patents issued over the Domes applications. (Pl.'s Rule 56.1 Stmt. Facts ¶ 67.) The Patent Office Examiner did not declare an interference when Black & Decker disclosed the Domes applications during the Smith prosecution. (Id. ¶ 66.) Likewise, the Examiner did not issue an unpatentability ...