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Keywords

litigationattorneyappealhearingsummary judgmentpatenttrademark
litigationattorneymotionsummary judgmentpatenttrademark

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Leviton Mfg. Co., Inc. v. Universal Sec. Instruments, Inc., 606 F.3d 1353, 95 U.S.P.Q.2d 1432

Facts

The patentee, Shanghai Meihao, Inc., brought an infringement action against Leviton Manufacturing Company, alleging infringement of patents related to ground-fault circuit interrupter technology. After voluntarily dismissing its claims, Leviton sought attorney fees and costs, claiming that Meihao had engaged in inequitable conduct by failing to disclose material information during the patent application process. The district court found in favor of Meihao, leading to an appeal by Leviton regarding the award of attorney fees.

The patentee, Shanghai Meihao, Inc., brought an infringement action against Leviton Manufacturing Company, alleging infringement of patents related to ground-fault circuit interrupter technology.

Issue

Did the patentee engage in inequitable conduct by failing to disclose material information to the Patent and Trademark Office (PTO), and was the award of attorney fees justified?

Did the patentee engage in inequitable conduct by failing to disclose material information to the Patent and Trademark Office (PTO), and was the award of attorney fees justified?

Rule

To prevail on inequitable conduct claim, an accused infringer must show that the applicant: (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the Patent and Trademark Office (PTO).

Analysis

The court analyzed whether the patentee's failure to disclose the Germain application and related litigation was material to the patentability of the claims. It concluded that the undisclosed information was indeed material, as it could have influenced the PTO's decision-making process. However, genuine issues of material fact regarding the patentee's intent to deceive precluded a summary judgment on the inequitable conduct claim.

Genuine issues of material fact existed as to whether patentee intended to deceive Patent and Trademark Office (PTO) by failing to disclose information regarding prior patent application and related litigation during its application for patent involving ground-fault circuit interrupter technology, precluding summary judgment for inequitable conduct on motion for prevailing party attorney fees award.

Conclusion

The court vacated the district court's award of attorney fees and remanded the case for further proceedings, emphasizing the need for an evidentiary hearing to resolve factual disputes regarding intent.

We vacate and remand for the reasons below.

Who won?

Shanghai Meihao, Inc. prevailed in the district court, as the court found that Leviton had committed inequitable conduct and engaged in vexatious litigation. The court awarded Meihao attorney fees and costs, concluding that Leviton's failure to disclose material information during the patent application process warranted such an award. The decision was based on the finding that the undisclosed information was material to the patentability of the claims.

Shanghai Meihao, Inc. prevailed in the district court, as the court found that Leviton had committed inequitable conduct and engaged in vexatious litigation.

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