Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 2088437 (N.D. Ill. July 24, 2006) (St. Eve, J.).
Judge St. Eve denied plaintiff, Black & Decker’s (“B&D”) summary judgment motion on defendant Bosch’s inequitable conduct defense. While prosecuting various applications related to a rugged jobsite radio and charger (the “Smith patents”), B&D became aware of inventor Joseph Domes’s similar applications, which later matured into the patents-in-suit. To avoid a possible interference, B&D licensed Domes’s applications (the “Domes patents”) and ultimately became the exclusive licensee of the two Domes patents.
During prosecution, B&D identified the Domes patents to the Examiner of the Smith patents. B&D failed, however, to raise the Smith patents with the Examiner of the Domes patents, despite having the right to suggest changes to or comment upon documents filed with the PTO during prosecution of the Domes patents.
B&D argued that the Smith patents were not material to patentability because the Examiner of the Smith patents did not rely upon the Domes patents. But the Court found a question of material fact as to whether the Domes and Smith patents shared subject matter. B&D also argued that there was no intent to deceive the PTO because Domes prosecuted the patents and was not aware of the Smith patents. The Court found a question of fact on this point also because B&D had the ability to comment on filings during Domes’s prosecution of his patents and because the license agreement between Domes and B&D may have put him on notice of the Smith patents. Finally, the Court found a question of fact as to whether B&D intended to deceive the PTO because B&D purchased exclusive rights to the Domes patents more than one year before the last of the Domes patents issued, and could have disclosed the Smith patents during that year.
On another procedural note, make sure to know the time limits set forth in the Federal Rules. The Court struck B&D’s motion to strike Bosch’s inequitable conduct defense for failure to state a claim because B&D failed to file the motion within twenty days of receiving the Answer, as required by Fed. R. Civ. P. 12(f).