United States Court of Appeals 

for the Federal Circuit 

__________________________ 

GOLDEN HOUR DATA SYSTEMS, INC., 

Plaintiff-Appellant, 

v. 

EMSCHARTS, INC., 

Defendant-Cross Appellant, 

AND

SOFTTECH, LLC, 

Defendant-Appellee. 

__________________________ 

2009-1306, -1396 

__________________________ 

Appeals from the United States District Court for the 

Eastern District of Texas in case no. 2:06-CV-381, Judge 

T. John Ward. 

___________________________ 

Decided: August 9, 2010 

___________________________ 

CARTER G. PHILLIPS, Sidley Austin LLP, of Washington, DC, argued for plaintiff-appellant. With him on the 

brief were ERIC A. SHUMSKY and RACHEL H. TOWNSEND; 

and TACY F. FLINT, of Chicago, Illinois. Of counsel was 

PANKAJ VENUGOPAL, of Washington, DC. 
GOLDEN HOUR DATA v. EMSCHARTS 2

ERIC H. WEISBLATT, Wiley Rein LLP, of Washington, 

DC, argued for defendant-cross appellant and defendantappellee. With him on the brief was SUSAN M. DADIO, 

Buchanan Ingersoll & Rooney PC, of Alexandria, Virginia. 

Of counsel was MARTIN A. BRUEHS. ERIC H. FINDLAY and 

ROGER BRIAN CRAFT, Findlay Craft LLP, of Tyler, Texas, 

for defendant-appellee. 

__________________________ 

Before NEWMAN, FRIEDMAN, and DYK, Circuit Judges. 

Opinion for the court filed by Circuit Judge DYK. 

Dissenting opinion filed by Circuit Judge NEWMAN. 

DYK, Circuit Judge. 

Golden Hour Data Systems, Inc. (“Golden Hour”) appeals from a judgment of the United States District Court 

for the Eastern District of Texas. After trial, a jury 

rendered a verdict of infringement of various claims of 

United States Patent No. 6,117,073 (“the ’073 patent”) in 

favor of Golden Hour against defendants emsCharts, Inc. 

(“emsCharts”) and Softtech, LLC (“Softtech”). However, 

the district court subsequently granted Judgment as a 

Matter of Law (“JMOL”) of no joint infringement of claims 

1, 6-8, 10, and 12-22 of the ’073 patent and held the ’073 

patent unenforceable due to inequitable conduct. Golden 

Hour Data Systems, Inc. v. emsCharts, Inc., et al., No. 

2:06-CV-381 (E.D. Tex. Apr. 3, 2009) (“Infringement 

Order”); Golden Hour Data Systems, Inc. v. emsCharts, 

Inc., et al., No. 2:06 CV 381 (E.D. Tex. Mar. 23, 2009) 

(“Inequitable Conduct Order”). We affirm the district 

court’s finding of no joint infringement. However, we 

conclude that the district court must make additional fact 

findings with respect to the intent prong of inequitable 

conduct. We therefore vacate the district court’s inequi-
3 GOLDEN HOUR DATA v. EMSCHARTS

table conduct determination and remand for further 

proceedings consistent with this opinion. 

BACKGROUND

I 

Golden Hour’s ’073 patent, entitled “Integrated Emergency Medical Transportation Database System” is directed to computerized systems and methods for 

information management services in connection with 

emergency medical transport, which is often performed by 

helicopter. Providers of such emergency medical transportation must collect and track large amounts of data for 

the purposes of dispatching transport, treating patients 

(clinical services), and also for billing. The systems of the 

’073 patent provide for the integration of dispatch, clinical 

services, and billing data. The ’073 patent discloses a 

dispatch module, a clinical module, an administration 

module, and a billing module. By integrating recordkeeping, these systems seek to avoid the inefficiency, inaccuracy and potential adverse clinical results that come with 

redundancy in recordkeeping.

The final sentence of the “Background of the Invention” section of the ’073 patent summarizes the basic 

concept of the invention: “what is needed is a comprehensive system that includes modules for dispatching emergency medical teams, tracking their movement to and 

from the accident scene, managing a clinical diagnosis 

and treatment and accurately billing the patient for the 

services rendered.” ’073 patent col.1 l.66-col.2 l.3. Claims 

1, 6-8, 10, and 12-14 are apparatus claims and claims 15-

22 are method claims. Claims 1, 10, and 15 are independent claims. Claim 1 requires integrating dispatch and 

billing data. It provides: 
GOLDEN HOUR DATA v. EMSCHARTS 4

 1. A computerized integrated data management system for tracking a patient incident, comprising: 

 a first module capable of dispatching an 

emergency transport crew specific to a patient incident requiring emergency medical care by the 

emergency transport crew, wherein transportation tracking information relating to the dispatch 

is recorded; and 

 a second module capable of receiving information from the first module and billing the patient 

appropriately for costs indicative of the patient incident, including transportation costs. 

Id. col.20 l.61-col.21 l.4 (emphasis added). Claim 15 

requires integrating dispatch and clinical services data. 

It provides: 

 15. A computerized method of generating a 

patient encounter record, comprising the steps of: 

 collecting flight information relating to an 

emergency transport crew dispatch; 

 collecting patient information from a clinical 

encounter associated with a patient incident requiring emergency medical care by the emergency 

transport crew; and 

 integrating the patient information with the 

flight information to produce an encounter record 

indicative of the patient’s clinical encounter. 

Id. col.21 l.54-col.22 l.6. 

In February of 1997, Dr. Kevin Hutton (“Hutton”) and 

Dr. Scott Jones (“Jones”) formed Golden Hour in order to 

commercialize the invention ultimately covered by the 

’073 patent. Hutton acted as Golden Hour’s chief executive officer. Hutton and Jones engaged the Knobbe Martens Olson & Bear LLP law firm (“Knobbe Martens”) to 
5 GOLDEN HOUR DATA v. EMSCHARTS

assist in the prosecution of the patent application. The 

application leading to the ’073 patent was filed on March 

2, 1998. Hutton and Jones were the named inventors. 

Michael Fuller (“Fuller”), a senior patent agent, and John 

M. Carson (“Carson”), a partner who supervised his work, 

prepared, filed, and prosecuted the patent application 

with the knowledge and assistance of Hutton. 

At the time of the filing of the application, Hutton believed that Air Medical Software (“the AeroMed system”) 

was the system most similar to the subject matter of the 

application. The “Description of the Related Technology” 

section of the ’073 patent specification discusses the 

AeroMed system. The specification provides:

Current documentation procedures in the air 

medical transport industry are based on an inefficient paper and pencil technology. . . . 

. . . . 

The fragmentation throughout the medical 

transport environment is also evident in the myriad of entities throughout the country practicing 

different standards of care and documentation. . . 

. This is especially evident when certain aspects 

of the system (such as computerized clinical laboratory result displays) have been upgraded with a 

uniquely tailored computerized system, while the 

remaining functions are still performed in an archaic manner. While the upgraded system may be 

effective for one singular aspect, such as dispatching, lab reporting, or chart dictating, the remainder of the system does not improve its 

effectiveness due to the other archaic components. 

Although others have attempted to remedy 

this conflict, no fully integrated medical systems 

have been developed. For example, the Air Medical 
GOLDEN HOUR DATA v. EMSCHARTS 6

Software (Innovative Engineering of Lebanon, 

N.H.) provides computer software for dispatching 

emergency crews to accident scenes and managing 

flight information. However, it does not provide 

comprehensive integration of the flight information with a clinical diagnosis, billing system and 

administration system.

’073 patent col.1 ll.11-57 (emphasis added). 

On August, 4, 1998, during prosecution of the ’073 

patent, Fuller submitted an Information Disclosure 

Statement (“IDS”) further describing the AeroMed system. In the IDS, Fuller stated: “Applicants are aware of 

AeroMed Software, computer software for Air Medical 

Dispatch, Flight Program Management, Medical Charting, Continuing Education Tracking, Transfer Center, 

Physician’s Referral Lines, and Custom Applications. 

AeroMed Software is a product of Innovative Engineering 

of Lebanon, New Hampshire.” J.A. 4944-45. 

The patent application included 27 claims. During 

prosecution, the Patent and Trademark Office (“PTO”) 

issued a first office action on February 18, 1999. In this 

office action, the examiner rejected claims 1-5, 8-14, and 

23-27 as anticipated by U.S. Patent No. 5,619,991 

(“Sloane”). Certain of these claims were directed to the 

integration of billing information with dispatch data alone 

and the integration of both billing and dispatch data with 

clinical data. The examiner’s anticipation rejection noted 

that the system of Sloane “is configured to generate 

billing information.” J.A. 4940. The examiner allowed 

original claims 15-22, which did not relate to the integration of billing information, but which related to the integration of dispatch and clinical data. The examiner noted 

that though “[t]he prior art teaches systems and methods 
7 GOLDEN HOUR DATA v. EMSCHARTS

of computerized integrated data management,” it “does 

not teach or suggest a computerized method that includes 

collecting and integrating patient information with flight 

information to produce an encounter record.” J.A. 4940-

41. In response to the rejection, Golden Hour amended 

claims 1, 7, 10, 23, 26, and 27 in respects not relevant 

here. Golden Hour also traversed the rejections based on 

Sloane. Golden Hour overcame the rejections based on 

Sloane by arguing, in part, that Sloane’s disclosure of 

billing information 

is based solely on the charge of the encounter between Sloane’s system and the patient. Such billing would be based solely on the amount of time 

spent counseling the patient as to what the appropriate treatment would be. It does not consider billing for any actual treatment such as 

medications, interventions, or procedures. . . . 

[T]his billing is for virtual services rendered. Applicant’s system tracks actual services rendered 

and bills for such. 

J.A. 4951-52. In light of Golden Hour’s response, all 

claims were allowed and the ’073 patent issued on September 12, 2000.

II 

The accused infringers are emsCharts and Softtech. 

emsCharts produces a web-based medical charting program called emsCharts. The emsCharts program charts 

patient information and provides integrated billing. 

Softtech produces computer-aided flight dispatch software 

called Flight Vector, which coordinates flight information, 

such as patient pickup and delivery, and flight tracking. 

The two companies formed a strategic partnership, en-
GOLDEN HOUR DATA v. EMSCHARTS 8

abled their two programs to work together, and collaborated to sell the two programs as a unit. 

In September of 2006, Golden Hour sued emsCharts 

and Softtech for infringement of the ’073 patent. Golden 

Hour accused emsCharts of directly infringing claims 10 

and 12-14 of the ’073 patent by making, using, offering to 

sell, and selling its emsCharts.com system. Golden Hour 

also accused emsCharts and Softtech together of jointly 

infringing claims 1, 6-8, and 15-22. Most of the asserted 

claims involve the integration of billing data. The jury 

returned a verdict for Golden Hour. It found that an 

AeroMed brochure describing the system did not anticipate the ’073 patent. It found that emsCharts had directly infringed claims 10 and 12-14, that emsCharts and 

Softtech had jointly infringed claims 1, 6-8, and 15-22, 

and that emsCharts had induced infringement of all of 

these claims. It then determined that emsCharts’ infringement was willful and awarded $3,500,000 to Golden 

Hour.

After the jury verdict in favor of Golden Hour, the district court held a bench trial to consider the issue of 

inequitable conduct. The brochure that the jury had 

found not to anticipate was a central feature of the inequitable conduct trial. The brochure was undated and 

described the AeroMed system (“the AeroMed brochure”). 

Hutton testified that he did not have the brochure at the 

time that the application was filed on March 2, 1998, but 

that he received it about three weeks after at the 

AeroMedical Services Midyear Conference. Hutton gave 

prosecution counsel the AeroMed brochure sometime 

before August 4, 1998.

The inside of the AeroMed brochure described the 

AeroMed system as an integrated system with a dispatch 
9 GOLDEN HOUR DATA v. EMSCHARTS

module combined with medical charting and billing. It 

stated that “[t]he AMS Dispatch Module can be used with 

the Flight Management Module . . . . It is an integrated 

real-time flight dispatching program . . . .” J.A. 10848. It 

advertised “[a] fast, easy way to create flight plans, cost 

quotes, track aircraft. No-nonsense medical charting. 

Billing.” Id. at 10847. It noted that “[t]he Flight Management Module is a companion to the Dispatch Module. 

All information entered by the Dispatch Module is combined into Flight Management so that duplicate data 

entry is eliminated.” Id. at 10848. It assured that, with 

the Flight Management Module, “[b]illing becomes a 

breeze with the user definable reports.” Id. The parties 

do not dispute that the brochure would have been anticipatory of some of the claims of the ’073 patent if it had 

been prior art, that is, if it had existed before the date of 

invention or more than a year before filing. See 35 U.S.C. 

§ 102. 

Based on the brochure, prosecution counsel prepared 

the IDS and filed it on August 4, 1998. The description of 

the AeroMed system in the IDS is identical (with the 

exception of “Centers” being plural in the brochure) with 

what is set forth on the front cover of the brochure. The 

IDS did not disclose the integrated billing system described in the brochure. At no time during prosecution of 

the application was the brochure or the billing system 

information provided to the examiner. 

The defendants argued that prosecution counsel 

committed inequitable conduct by intentionally failing to 

disclose the brochure or the information contained in the 

brochure because it contradicted the statement in the 

specification that AeroMed “does not provide comprehensive integration of the flight information with a clinical 

diagnosis, billing system and administration system.” ’073 
GOLDEN HOUR DATA v. EMSCHARTS 10

patent col.1 ll.54-57. Defendants also argued that the act 

of selectively disclosing material recited on the front of 

the brochure but not disclosing the recitation of “integrated” “billing” on the inside of the brochure also constituted inequitable conduct. 

With respect to materiality, the district court found 

that the AeroMed brochure disclosed “integration” and 

“billing.” Inequitable Conduct Order, slip op. at 13. The 

district court then observed that “the inventive feature of 

the ’073 patent was billing integration” and that the 

brochure’s disclosure of integration between the Dispatch 

Module and the Flight Management module (which 

includes billing) “clearly contradicts what both Dr. Hutton 

and prosecution counsel had represented to the PTO 

[about the AeroMed system] in the application.” Id. at 8, 

11. The court found that the information inside of the 

brochure “was inconsistent [with] the disclosure in the 

IDS, and inconsistent with how [Hutton and prosecution 

counsel] had described the AeroMed system in the original application.” Id. at 10. Therefore because “Fuller 

selected that part of the brochure to disclose that did not 

threaten patentability” and “excluded . . . the entire 

teaching that would have been a serious obstacle to 

patentability,” the district court found that “[t]here can be 

no question” that the withheld information is “highly 

material.” Id. at 15. 

With respect to intent, the court found that Golden 

Hour’s nondisclosure of the brochure and selective disclosure of the contents of the brochure evidenced intent to 

deceive the PTO. The court concluded that Fuller must 

have been aware of the contents of the brochure. Id. at 

12-13. The court reiterated that “Golden Hour and its 

counsel selected the one part of the AeroMed brochure to 

disclose [that] was consistent with how it had described 
11 GOLDEN HOUR DATA v. EMSCHARTS

AeroMed to the PTO” and found that “[s]uch selectivity is 

strong evidence of intent to mislead the patent office 

about the relevant prior art system as described by its 

competitor.” Id. at 13. The court therefore concluded that 

“the single most reasonable inference to be drawn is that 

Golden Hour intended to deceive the patent office.” Id. at 

14. The court then balanced the high level of materiality 

with the evidence of deceptive intent and concluded that 

Golden Hour committed inequitable conduct, rendering 

the ’073 patent unenforceable. 

The court also granted emsCharts’ motion for JMOL 

with respect to the jury verdict of joint infringement. The 

court found that there was insufficient evidence of “control” or “direction” by emsCharts or Softtech (or vice 

versa) to find joint infringement of any of the claims 1, 6-

8, 10, and 12-22. Golden Hour timely appealed to this 

court, and we have jurisdiction over this appeal under 28 

U.S.C. § 1295(a)(1). 

DISCUSSION

I Inequitable Conduct 

On appeal, Golden Hour first argues that the district 

court improperly held the ’073 patent unenforceable due 

to inequitable conduct. “A patent may be rendered unenforceable due to inequitable conduct if an applicant, with 

intent to mislead or deceive the examiner, fails to disclose 

material information or submits materially false information to the PTO during prosecution.” Digital Control, Inc. 

v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 

2006). The party seeking to render a patent unenforceable due to inequitable conduct must prove both materiality and intent by clear and convincing evidence. Id. The 

court must then weigh the levels of materiality and intent 
GOLDEN HOUR DATA v. EMSCHARTS 12

to determine whether the conduct at issue amounts to 

inequitable conduct. Id. We review the district court’s 

factual findings as to materiality and deceptive intent for 

clear error and the ultimate decision on inequitable 

conduct for abuse of discretion. Star Scientific, Inc. v. 

R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 

2008); Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 

863 F.2d 867, 876 (Fed. Cir. 1988) (en banc in relevant 

part). 

Golden Hour argues on appeal that the district court 

erred with respect to its factual findings concerning both 

materiality and intent, and that therefore, the ultimate 

determination of inequitable conduct cannot stand. 

A Materiality 

“[W]e have held that information is material when a 

reasonable examiner would consider it important in 

deciding whether to allow the application to issue as a 

patent.” Star Scientific, 537 F.3d at 1367 (citations 

omitted). The PTO Rules also aid in the definition of 

materiality. Rule 56 provides that an applicant has a 

duty to disclose information that is material to patentability and states that 

(b) Under this section, information is material to 

patentability when it is not cumulative to information already of record or being made of record 

in the application, and 

(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: 
13 GOLDEN HOUR DATA v. EMSCHARTS

(i) Opposing an argument of unpatentability relied on by the 

[PTO], or 

(ii) Asserting an argument of patentability. 

37 C.F.R. § 1.56(b). The PTO rules clearly require the 

submission of known information that contradicts material information already submitted to the PTO. See

Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229, 

1239-40 (Fed. Cir. 2008); Pharmacia Corp. v. Par Pharm., 

Inc., 417 F.3d 1369, 1373 (Fed. Cir. 2005). If a misstatement or omission is material under the Rule 56 standard, 

it is material for the purposes of inequitable conduct. 

Digital Control, 437 F.3d at 1316. 

The district court found the brochure and the undisclosed information contained in the brochure to be material because it contradicted the representations about the 

AeroMed system in the specification, and that the brochure was also material in view of the partial disclosure 

of the brochure’s contents in the IDS. Golden Hour 

argues that the PTO Rules and the Manual of Patent 

Examining Procedure (“MPEP”) would have precluded an 

examiner from considering the undated AeroMed brochure, and therefore it cannot be material. MPEP section 

609 instructs examiners not to consider references included in an IDS which do not comply with 37 C.F.R. § 

1.98. Section 1.98(b)(5) requires that “[e]ach publication . 

. . must be identified by publisher, author (if any), title, 

relevant pages of the publication, date, and place of 

publication.” (emphasis added). Golden Hour therefore 

maintains that a reasonable examiner could not have 

considered the brochure material to patentability because 

the rules would prohibit the examiner from considering 

the brochure because it was not known to be prior art. In 
GOLDEN HOUR DATA v. EMSCHARTS 14

other words, Golden Hour maintains that a reference is 

not material unless the prior art status of the reference is 

established on the face of the reference. 

The MPEP itself contradicts this reading. The sections on which Golden Hour relies do not limit an IDS to 

the submission of prior art references, and the MPEP 

states that “[t]here is no requirement that the information [identified in an IDS] must be prior art references in 

order to be considered by the examiner.” MPEP § 609 

(2008). Further, our prior cases make clear that information may be material even if it does not qualify as prior 

art. As we held in Duro-Last, Inc. v. Custom Seal, Inc., 

321 F.3d 1098, 1107 (Fed. Cir. 2003), 

[t]his court has long held that whether a prior reference is material, i.e., whether there is a substantial likelihood that a reasonable examiner 

would have considered the reference important in 

deciding whether to allow the application to issue 

as a patent, is not controlled by whether that reference actually anticipates the claimed invention 

or would have rendered it obvious. 

See also Digital Control, 437 F.3d at 1318 (“[A] misstatement or omission may be material even if disclosure of 

that misstatement or omission would not have rendered 

the invention unpatentable.”); Li Second Family Ltd. 

P’ship v. Toshiba Corp., 231 F.3d 1373, 1380 (Fed. Cir. 

2000). The information in the brochure here was clearly 

material. 

First, the brochure may well have been prior art. 

While the district court made no finding as to the prior 

art status of the brochure, we note that there is substantial evidence in the record that the brochure is indeed 
15 GOLDEN HOUR DATA v. EMSCHARTS

prior art. Charles Freeman, AeroMed’s software developer and the brochure’s author, testified that he had the 

brochure with him at the 1996 AMTC Conference.1 If the 

brochure had been in existence in 1996, that would make 

the brochure prior art; further the system it described 

would have been prior art, given the application date of 

March 2, 1998. See 35 U.S.C. § 102(b).2 A reasonable 

examiner would likely wish to inquire into the prior art 

status of the system disclosed in the brochure in light of 

the representations as to the system appearing in the 

specification. Indeed Golden Hour itself admits that an 

examiner “might have been curious about the brochure 

because it related to the same subject matter as the 

earlier recitation of prior art.” Pl.-Appellant’s Br. 25. 

 1 His testimony was as follows: 

Q. . . . . So you said this brochure was from 1996? 

A. Uh-huh. 

Q. And you displayed it—you had it at the AMTC 

show in 1996? 

A. That is correct. 

Q. Are you sure about that? 

A. Uh-huh. 

Q. Really? 

A. Uh-huh. 

J.A. 4033. 

2 Golden Hour seems to suggest that the brochure 

cannot be material because the jury found it not to be 

prior art. However, the jury did not find that the brochure was not prior art, only that none of the claims of the 

’073 patent was anticipated. The jury could have concluded that the brochure was prior art, but that it did not 

anticipate. Therefore there is no jury finding that the 

brochure is not prior art. 
GOLDEN HOUR DATA v. EMSCHARTS 16

Second, the brochure and the information contained 

therein were material because they contradicted other 

representations to the PTO, even if the brochure was not 

itself prior art. In the specification, applicants described 

the AeroMed system in existence as of the time of the 

application. See Pl.-Appellant’s Br. 23 (“In the ‘Background of the Invention’ section of the ’073 application, 

which was filed on March 2, 1998, Golden Hour identified 

the AeroMed software that existed at that time.”). The 

specification of the ’073 patent describes the AeroMed 

brochure, stating that “the [AeroMed system] provides

computer software for dispatching emergency crews to 

accident scenes and managing flight information. However, it does not provide comprehensive integration of the 

flight information with a clinical diagnosis, billing system 

and administration system.” ’073 patent col.1 ll.52-57 

(emphases added). The present-tense representation that 

the AeroMed system “does not provide comprehensive 

integration . . . with . . . billing” continued unchanged 

throughout the pendency of the application. In direct 

contradiction to that statement, the AeroMed brochure, 

received mere weeks after filing, states that with the 

Flight Management module, “[b]illing becomes a breeze 

with the user definable reports. Patient charges can be 

calculated and printed any number of ways to include 

transport time and itemizing of medical supplies.” J.A. 

10848.3 By not correcting the statement in the specification, applicants continued to maintain its truth in direct 

contradiction to what is disclosed in the AeroMed bro-

 3 The brochure also states that “[t]he Flight Management Module is a companion to the Dispatch Module” 

and that “[a]ll information entered by the Dispatch Module is combined into Flight Management so that duplicate 

data entry is eliminated.” J.A. 10848. 
17 GOLDEN HOUR DATA v. EMSCHARTS

chure. Given the importance of integrated billing to the 

patentability of the invention, information inconsistent 

with or contrary to the application’s representation of the 

capabilities of AeroMed’s billing system in the specification would have been important to a reasonable examiner.4

Further, after receipt of the brochure, applicants filed 

the IDS describing the AeroMed brochure. The IDS was 

also worded in the present tense. In the IDS, prosecution 

counsel stated that “[a]pplicants are aware of AeroMed 

Software” and listed the attributes of the software found 

on the front of the brochure, but did not disclose the 

integrated billing found on the inside of the brochure. 

J.A. 4944-45 (emphasis added). Given the significance of 

 4 See Larson Mfg. Co. v. Aluminart Prods. Ltd., 559 

F.3d 1317, 1338-39 (Fed. Cir. 2009) (finding material a 

withheld adverse decision by an examiner in a substantially similar application because it “refuted, or was 

inconsistent with, the position that claim limitations of 

the [patent in suit] were patentable over the Johnson 

patent”); Monsanto, 514 F.3d at 1239 (finding materiality 

of the Mariani notes “in light of . . . discrepancies between 

the interpretation of the Barnes Abstract Bayer advocated 

and the information contained in the Mariani notes”);

Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 

1132 (Fed. Cir. 2006) (holding that “[i]nformation that 

Purdue’s assertion of a four-fold dosage range was based 

only on [the inventor’s] insight and not on experimental 

results was material because it was inconsistent with 

Purdue’s statements suggesting otherwise”); Agfa Corp. v. 

Creo Prods. Inc., 451 F.3d 1366, 1377-78 (Fed Cir. 2006) 

(affirming a finding of materiality where “undisclosed 

prior art . . . was inconsistent with [applicant’s] misleading statements to the examiner during prosecution”); 

Pharmacia Corp., 417 F.3d at 1373 (affirming a finding of 

inequitable conduct where a prior article by a declarant 

contradicted his declaration to the PTO). 
GOLDEN HOUR DATA v. EMSCHARTS 18

integrated billing to patentability, the failure to disclose 

the billing characteristics of the AeroMed system in the 

IDS was also highly material. The failure to disclose the 

integrated billing would lead one to believe that the 

AeroMed system did not provide comprehensive integration with billing. The brochure’s recitation of integrated 

billing, which applicants failed to disclose, would undoubtedly have been material to a reasonable examiner.5 

For example, the existence of an AeroMed system with 

integrated billing would raise the possibility of public use 

or on-sale bars even if the brochure itself was not prior 

art.6

 5 See Semiconductor Energy Lab. Co. v. Samsung 

Elecs. Co., 204 F.3d 1368, 1376-77 (Fed. Cir. 2000) (noting 

that an inventor must “provide the PTO with sufficient 

information for a reasonable examiner to consider the 

[submission] in context, not with a selective and misleading disclosure” and that “[b]y submitting the entire untranslated . . . reference to the PTO along with a onepage, partial translation focusing on less material portions and a concise statement directed to these less material portions, [applicant] left the examiner with the 

impression that the examiner did not need to conduct any 

further translation or investigation. Thus, [applicant] 

deliberately deceived the examiner into thinking that the 

. . . reference was less relevant than it really was, and 

constructively withheld the reference from the PTO”). 

6 Moreover, in the one office action issued by the 

examiner, the examiner noted that “[t]he prior art teaches 

systems and methods of computerized integrated data 

management, but does not teach or suggest a computerized method that includes collecting and integrating 

patient information with flight information to produce an 

encounter record, as set forth in the claims.” J.A. 4940-

41. The examiner then pronounced independent claim 15 

allowable. This claim is, and was during prosecution, 

directed to a method of integrating dispatch and charting. 

The withheld AeroMed brochure discloses integrated 
19 GOLDEN HOUR DATA v. EMSCHARTS

We therefore affirm the district court’s finding that 

the information in the brochure not produced to the PTO 

was highly material. 

B Intent 

The intent element is a separate component of an inequitable conduct determination. Star Scientific, 537 

F.3d at 1366. To prove intent, “the involved conduct, 

viewed in light of all the evidence, including evidence of 

good faith, must indicate sufficient culpability to require a 

finding of intent to deceive.” Digital Control, 437 F.3d at 

1319 (citations omitted). Intent need not be proven by 

direct evidence; it can be inferred from indirect and 

circumstantial evidence. Star Scientific, 537 F.3d at 1366 

(citing Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 

1364 (Fed. Cir. 2007)); Merck & Co. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1422 (Fed. Cir. 1989). An 

inference of intent “must not only be based on sufficient 

evidence and be reasonable in light of that evidence, but it 

must also be the single most reasonable inference able to 

be drawn from the evidence to meet the clear and convincing standard.” Star Scientific, 537 F.3d at 1366. 

The contention is that Fuller, Hutton, or both, intended to deceive the PTO by failing to fully disclose the 

capabilities of the AeroMed system described in the 

brochure. The district court appears to have inferred 

intent to deceive from the high materiality of the 

AeroMed brochure, from the selective disclosure in the 

 

dispatch and charting. The brochure would also have 

been material to the examiner’s consideration of claim 15. 

See Monsanto, 514 F.3d at 1240 (affirming a finding of 

high materiality of withheld information where “[Applicant] was attempting to claim a nearly identical invention”). 
GOLDEN HOUR DATA v. EMSCHARTS 20

IDS, and from the lack of a credible explanation on the 

part of Hutton and prosecution counsel for the selective 

disclosure.7 

We agree that the district court could find the explanation for not submitting the brochure or its undisclosed 

contents not to be credible (if its contents were known). 

The explanation was that it was Fuller’s practice not to 

submit undated materials. But Fuller testified that he 

knew that other practitioners at Knobbe Martins submitted undated brochures to the PTO and that the PTO 

considers those brochures. But most importantly, even if 

Fuller believed that the PTO’s rules would not have 

permitted the examiner to consider the undated brochure, 

there is no suggestion that Fuller thought that the information in the brochure was off-limits—indeed Fuller 

submitted information from the brochure in the IDS. See

Semiconductor Energy, 204 F.3d at 1375, 1376 (holding 

that “[i]t was incumbent upon [the inventor] to provide 

the PTO with sufficient information for a reasonable 

examiner to consider the [submission] in context, not with 

a selective and misleading disclosure” and because “[t]he 

inventor[] failed to do that” he “cannot post facto hide 

behind the MPEP guidelines”). In sum, prosecution 

counsel failed to provide any explanation for withholding 

 7 With respect to both Fuller and Hutton, the district court also observed that “although the evidence 

emsCharts presents to prove that Dr. Hutton and prosecution counsel knew they were making false statements 

to the PTO at the time of filing the patent application

[March 2] is persuasive, it does not rise to the level of 

clear and convincing evidence needed to find inequitable 

conduct.” Inequitable Conduct Order, slip op. at 4. 
21 GOLDEN HOUR DATA v. EMSCHARTS

the missing information from the brochure, assuming he 

was aware of the brochure’s contents. 

The district court also did not err in finding that 

“[e]ven the most cursory of reviews would have revealed 

the description of AeroMed’s billing and integration—the 

only thing described in the center column of the one page 

brochure,” i.e., that it was inconsistent with the representations in the specification. See Inequitable Conduct 

Order, slip op. at 13. 

The key question then is whether Fuller and/or 

Hutton in fact read the brochure. Fuller testified that he 

did not remember the circumstances regarding the brochure and the preparation of the IDS. He testified as 

follows: 

I probably just looked at the front [of the brochure] and said, oh that’s AeroMed Software. 

May have been—and I wrote that down. 

I don’t recall Your Honor. I really don’t. And 

so, but likely, I just looked at the front of the brochure trying to describe the software that was 

available and just wrote down those things that 

were—that were on the front of the brochure. 

J.A. 4673. Fuller never testified definitively that he did 

not read the brochure in full. Here, there are two possible 

explanations for the failure to advise the PTO about the 

integrated billing disclosed in the brochure: (1) that 

Fuller and Hutton failed to read the brochure, and (2) 

that one or both read it and deliberately withheld the 

information. The distinction between these two explanations is important. If one or both read the brochure and 

deliberately did not disclose the damaging information on 

the inside, their actions would give rise to an inference of 

intent to deceive. However, if they did not read the 
GOLDEN HOUR DATA v. EMSCHARTS 22

brochure (and did not do so to avoid learning of damaging 

information), those actions regarding the failure to disclose the information on the inside of the brochure would 

at most, amount to gross negligence. Gross negligence is 

not inequitable conduct. See Kingsdown, 863 F.3d at 876. 

The district court appears to have discredited Fuller’s 

testimony that he did not read the brochure because of its 

inconsistency with his statement that he did not disclose 

the brochure because it was undated, stating that 

Fuller claims ignorance of what was in the brochure. Counsel testified he does not recall reading 

the description of AeroMed’s billing in the brochure. . . . That testimony is inconsistent. Counsel testified the only explanation for exact replica 

of the language from the brochure was that he 

only looked at the front of the brochure and not 

the inside. If counsel did not submit the brochure 

because it was undated, he must have at least done 

a cursory review of the brochure to determine there 

was no date. 

Inequitable Conduct Order, slip op. at 12-13 (citations 

omitted). However, Fuller never actually testified that he 

did not disclose the AeroMed brochure because it was 

undated.8 Fuller only testified that it was his practice in 

 8 His relevant testimony was as follows: 

Q: Was it your practice at the time 

the patent application that became the 

’073 patent was filed to submit undated 

materials to the PTO? 

A: No. There’s no reason to submit 

undated materials. They’re not even prior 

art; they’re not material. The Examiner 

won’t even consider them. 
23 GOLDEN HOUR DATA v. EMSCHARTS

1998 not to submit undated materials. A fair reading of 

Fuller’s testimony is that he testified that he did not 

remember reading the inside of the brochure, but that 

even if he had, he would not have submitted it because it 

was his practice not to submit undated materials. The 

district court indicated that it found aspects of Fuller’s 

testimony to be “inconsistent” and unhelpful. Id. at 13, 

15. With respect to inventor Hutton, the district court 

also indicated that it generally found his testimony to be 

incredible. Id. at 12 (“Dr. Hutton can not claim he did not 

find the brochure material.”); id. at 8 n.3 (“Dr. Hutton’s 

testimony in the jury trial about his understanding of 

AeroMed’s limitations is inconsistent with other evidence 

in the record, and with his testimony in the bench trial on 

inequitable conduct.”); id. at 8-9 (discussing the inconsistencies in Hutton’s testimony regarding when he received 

the brochure and whether he was aware AeroMed had 

billing).9 But the district court did not actually find that 

 

Q: And was that practice based on 

your understanding of the PTO’s rules 

concerning the IDS? 

A: Yes. That’s what the rules say. 

J.A. 4662. 

9 In particular, the district court stated that: 

Dr. Hutton’s testimony in the jury trial about his 

understanding of AeroMed's limitations is inconsistent with other evidence in the record, and with 

his testimony in the bench trial on inequitable 

conduct. For example, Dr. Hutton proffered evidence in both the jury trial and bench trial to 

prove that he did not understand AeroMed to 

have electronic billing at all. In the bench trial, 

however, he testified that he knew there was billing, but that it was not integrated. Dr. Hutton 

further testified in the bench trial that because of 

the way AeroMed did billing, it was clear to him 

that Freeman (the inventor of AeroMed) did not 
GOLDEN HOUR DATA v. EMSCHARTS 24

either Fuller or Hutton was aware of the inside contents 

of the brochure. As findings of intent so often turn on a 

district court’s credibility determinations, see, e.g., Monon 

Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1263-64 

(Fed. Cir. 2001), it is essential that the court provide 

detailed factual findings with respect to crucial facts—

such as whether Fuller and/or Hutton read the entire 

brochure; whether, knowing the information to be material, they deliberately withheld it; or whether they deliberately refused to read the entire brochure in order to 

avoid learning damaging information. 

Golden Hour argues that no remand is necessary because the record evidence could not, in any event, support 

a finding of intent. We disagree. Quite apart from the 

highly material nature of the withheld reference, the 

suspicious late production of the brochure, and the district court’s findings as to witness credibility, there is 

ample evidence that could support finding that Fuller or 

Hutton or both actually read the brochure and determined to withhold its contents from the PTO, knowing it 

to be material. First, Hutton regarded AeroMed as his 

 

understand billing. A system which lacks billing 

is very different from a system having billing that 

does not function properly. 

Inequitable Conduct Order, slip op. at 8 n.3 (emphasis in 

original) (citation omitted). The district court also noted 

that “[u]ntil the eve of the bench trial, Dr. Hutton maintained he could not recall when he received the brochure. 

At the bench trial, however, Dr. Hutton recalled getting 

the brochure in late March of 1998 at the AeroMedical 

Services Midyear Conference.” Id. at 8-9 (footnote omitted). Also, the district court observed that the inventor of 

AeroMed testified that Dr. Hutton must have gotten the 

brochure at a 1996 conference. Id. at 8 n.4. 
25 GOLDEN HOUR DATA v. EMSCHARTS

primary competitor. In a December 1996 business plan, 

Hutton told potential investors that “[t]he only similar 

information management product in the air medical 

transport market is a software product called Air Medical 

Software (AMS), (Innovative Engineering, Lebanon NH).” 

J.A. 7277. He repeated this statement in a proposal 

seeking financing from the UCSD CONNECT Technology 

Financial Forum. J.A. 10,211. And in an August 1997 

“Business Overview” document, Hutton stated that 

“Golden Hour has one major software competitor in our 

initial market segment, called Aero Medical Software 

(AMS) (Innovative Engineering). . . . The AMS software 

does not comprehensively integrate information . . . The 

AMS software cannot electronically bill or track inventory.” J.A. 8262 (emphasis in original). It is likely that 

Hutton would have been quite interested in a brochure 

that described the competitor’s system. 

Second, the information that Hutton originally received about the AeroMed system was based on hearsay. 

Hutton testified at the jury trial that his knowledge of the 

AeroMed system at the time of filing the patent application was from a colleague who told him that “there was no 

integration with the billing system and billing was very 

difficult from them.” Inequitable Conduct Order, slip op. 

at 8. Hutton testified at the inequitable conduct bench 

trial that prior to the filing date of the patent application, 

his understanding of the AeroMed system “came from 

physicians, and . . . program directors who had used the 

system.” J.A. 4727. He also testified that it was his 

understanding that the AeroMed system “had a pretty 

good dispatch system[,] . . . it had some integration . . . 

with a clinical system[,]” and it had billing, though the 

system “had problems with [its] billing.” J.A. 4727-28. 

During the preparation of the application, Hutton conveyed this knowledge of the AeroMed system to prosecu-
GOLDEN HOUR DATA v. EMSCHARTS 26

tion counsel and was “pretty involved in the process of 

drafting and prosecuting” the application. J.A. 4726. The 

imprecise nature of the earlier information received by 

Hutton might suggest that Hutton and/or Fuller would 

carefully review the Aero brochure. 

Third, representations as to the AeroMed system were 

central to the claim of patentability in the original application. This centrality was demonstrated by the filing of 

an IDS based on the brochure. This again suggests that 

Fuller and/or Hutton would be interested in reading the 

brochure. 

Fourth, it might seem unlikely that a patent practitioner would make representations as to the brochure in 

an IDS without reading the entire brochure and would 

not be interested in reading the entire brochure to determine whether there was anything in it that might disclose 

its prior art status. 

But this also is not a situation in which a finding of 

deceptive intent is compelled. It is not our task to make 

factual findings. Therefore we must remand to the district court for it to make detailed factual findings in the 

first instance. See Dennison Mfg. Co. v. Panduit Corp., 

475 U.S. 809, 811 (1986); see Gechter v. Davidson, 116 

F.3d 1454, 1457 (Fed. Cir. 1997) (“When the opinion 

explaining the decision lacks adequate fact findings, 

meaningful review is not possible . . . .”); O’Neill v. United 

States, 411 F.2d 139, 146 (3d Cir. 1969) (remanding to the 

district court for further factual findings where factual 

findings were conclusory and the reviewing court could 

not determine what evidence the lower court accepted as 

credible and what it rejected). In particular, the district 

court must determine, in the first instance, whether 

Hutton or Fuller in fact read the brochure and deliber-
27 GOLDEN HOUR DATA v. EMSCHARTS

ately decided to withhold damaging information from the 

PTO. 

II Joint Infringement 

With respect to joint infringement, this court reviews 

the grant of JMOL de novo. Novartis Pharms. Corp. v. 

Abbott Labs., 375 F.3d 1328, 1332 (Fed. Cir. 2004). JMOL 

is appropriate when “a party has been fully heard on an 

issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” Fed. R. 

Civ. P. 50(a)(1). We first consider the method claims, that 

is, claims 15-22. Where the combined actions of multiple 

parties are alleged to infringe process claims, the patent 

holder must prove that one party exercised “control or 

direction” over the entire process such that all steps of the 

process can be attributed to the controlling party, i.e., the 

“mastermind.” Muniauction, Inc. v. Thomson Corp., 532 

F.3d 1318, 1329 (Fed. Cir. 2008) (citing BMC Res., Inc. v. 

Paymentech, L.P., 498 F.3d 1373, 180-81 (Fed. Cir. 2007)). 

Here, the district court concluded that the evidence of 

control or direction was insufficient as a matter of law to 

uphold a finding of joint infringement. We agree with the 

district court that the evidence here was insufficient for 

jury to infer control or direction. We see no need for 

extended discussion of this issue and we affirm the district court’s grant of JMOL as to the process claims the 

jury found to be jointly infringed (claims 15-22). 

The district court also granted JMOL as to systems 

claims 1 and 6-8. On appeal Golden Hour apparently 

argues that emsCharts was liable for infringement of 

those claims because emsCharts sold its emsCharts.com 

program and Softtech’s Flight Vector software together, 

and together these systems comprised the systems of the 
GOLDEN HOUR DATA v. EMSCHARTS 28

asserted claims. Such a sale might well create liability on 

the part of emsCharts for the sale of the patented system, 

whether or not emsCharts controlled Softtech. The 

problem is that by agreement, claims 1 and 6-8 were 

submitted to the jury only on a joint infringement theory. 

Such a verdict can only be sustained if there was control 

or direction of Softtech by emsCharts. Under these 

circumstances, JMOL was properly granted as to the 

systems claims as well as to the process claims.10 

AFFIRMED-IN-PART, VACATED-IN-PART, and 

REMANDED 

COSTS

No costs. 

 10 Contrary to the dissent’s suggestions, (1) the majority does not hold that even if there were new findings, 

“intent to deceive was not established by clear and convincing evidence,” see Dissenting Op. 1, and (2) the majority does not sustain the district court’s JMOL ruling on 

infringement of claims 1, 6-8, and 15-22 because “infringement cannot be found as a matter of law,” see id. at 

6, even with proper instructions. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

GOLDEN HOUR DATA SYSTEMS, INC., 

Plaintiff-Appellant, 

v. 

EMSCHARTS, INC., 

Defendant-Cross Appellant, 

AND

SOFTTECH, LLC, 

Defendant-Appellee. 

__________________________ 

2009-1306, -1396 

__________________________ 

Appeals from the United States District Court for the 

Eastern District of Texas in Case No. 2:06-CV-381, Judge 

T. John Ward. 

__________________________ 

NEWMAN, Circuit Judge, dissenting; stay requested. 

I. INEQUITABLE CONDUCT

The district court held the patent in suit unenforceable on the ground of “inequitable conduct.” The panel 

majority holds, and I agree, that on the evidence that was 

adduced before the district court, intent to deceive was 

not established by clear and convincing evidence; however, if deceptive intent was not established at the trial of 

this issue, by the party with the burden to do so, it is 
GOLDEN HOUR DATA v. EMSCHARTS 2

inappropriate for this court to remand for another shot at 

it. 

As for materiality, I do not share the conclusion that 

the undated AeroMed brochure, obtained at a trade show 

(the Association of Aeromedical Services) a few weeks 

after this patent application was filed, and found not to be 

invalidating prior art, was so clearly and convincingly 

“material to patentability” that failure to provide a copy of 

the brochure while quoting its front page, invalidates the 

patent that was found valid over the entire content of the 

brochure. The record does not show that the brochure 

was published before the Golden Hour patent application 

was filed. The defendants provided no documentary 

evidence of any publication date, and the district court did 

not find the brochure to be prior art; their only evidence 

was the “uh-huh’s” of the brochure’s author, quoted at 

footnote 1 of the majority opinion. 

The record showed that when the brochure came into 

Golden Hour’s possession at the trade show, it was given 

to Golden Hour’s patent attorney, who referred to it in the 

Invention Disclosure Statement filed with the PTO, 

including quotation of the cover page but not the inner 

page. At the trial, the full brochure was in evidence, and 

stressed by the defendants, and the jury found that it was 

not invalidating. In view of the majority’s ruling that 

deceptive intent was not established in the district court, 

and the jury’s verdict of validity despite the brochure, the 

charge of inequitable conduct should be laid to rest. At 

most, this charge was deemed viable only because of 

inconsistencies in the law, inconsistencies that this court 

has presented for resolution in the pending en banc case 

of Therasense, Inc. v. Becton, Dickinson & Co., Nos. 2008-

1511, -1512, -1513, -1514, -1595. The court’s Order, 

reported at 2010 WL 1655391 (Fed. Cir. Apr. 26, 2010), 

presents six detailed questions for en banc review, and 
3 GOLDEN HOUR DATA v. EMSCHARTS

has received extensive amicus curiae participation. 

Argument is scheduled for November 9, 2010. It is sufficiently likely that the reasoning applied in this case could 

be affected, that this appeal should be held pending 

completion of the en banc proceedings.1 The Supreme 

Court has long followed such a procedure, as explained in, 

e.g., Lawrence v. Chater, 516 U.S. 163, 181 (1996) (“We 

regularly hold cases that involve the same issue as a case 

on which certiorari has been granted and plenary review 

is being conducted in order that (if appropriate) they may 

be ‘GVR’d’ [grant of certiorari, vacatur, and remand] when 

the case is decided.”) (Scalia, J., dissenting on other 

grounds); see generally Eugene Gressman, et al., Supreme 

Court Practice 345-49 (9th ed. 2007) (discussing the 

Court’s practice whereby related cases are stayed while 

the Court is elsewhere considering an issue that may 

affect the related cases). It behooves this court to be 

equally fair. 

The charge of inequitable conduct carries high stakes 

for both the attorney, whose career it can threaten, and 

the applicant, who can lose a perfectly valid patent. In 

Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 

863 F.2d 867 (Fed. Cir. 1988), this court, recognizing the 

abuses that had arisen, held en banc that both materiality 

 1 For example, the panel majority relies on a case 

that applied the former version of PTO Rule 56 (the 

“reasonable examiner” subjective standard), while selectively referring to the current version of Rule 56, citing 

Digital Control, Inc. v. Charles Machine Works, 437 F.3d 

1309, 1316 (Fed. Cir. 2006) (“[I]f a misstatement or omission is material under the new Rule 56 standard, it is 

material [for inequitable conduct]. Similarly, if a misstatement or omission is material under the ‘reasonable 

examiner’ standard or under the older three tests, it is 

also material.”). This discrepancy with the PTO standard 

is subject to resolution in the pending en banc review. 
GOLDEN HOUR DATA v. EMSCHARTS 4

and culpable intent had to be established by clear and 

convincing evidence, that even gross negligence was 

insufficient to establish inequitable conduct, and that 

intent could not be inferred from materiality. For the 

Golden Hour patent, the question of patentability in view 

of the AeroMed brochure was before the jury, and the jury 

verdict of validity despite the AeroMed brochure is not 

challenged. Since intent to deceive was not established 

before the trial judge, and materiality is reasonably 

disputed, there is no basis for a second-bite ruling of 

inequitable conduct. I would lay the matter to rest or, at 

a minimum, stay the proceedings until conflicting precedent is clarified in accordance with the pending en banc

hearing of the Therasense appeal. Thus I must, respectfully, dissent from the court’s treatment of this issue. 

II. JOINT INFRINGEMENT

The court rules that when two entities collaborate to 

infringe a patent, such that one performs some steps of 

the claim and the other performs the other steps, there 

cannot be any infringement, on any theory, unless one 

entity “controls or directs” the activity of the other. As 

the majority opinion reports, here the defendants “formed 

a strategic partnership, enabled their two programs to 

work together, and collaborated to sell the two programs 

as a unit.” Maj. Op. at 8. The court now holds that such a 

relationship avoids all liability for infringement, even 

when the defendants collaborate to practice every limitation of the claims. That ruling is incorrect as a matter of 

law. 

The parties focused on the “control or direction” criterion as negating joint infringement, for this court has 

stated, for example in Muniauction, Inc. v. Thomson 

Corp., 532 F.3d 1318 (Fed. Cir. 2008), that there cannot 

be infringement when entities collaborate to practice a 
5 GOLDEN HOUR DATA v. EMSCHARTS

patented invention. Such a universal statement is incorrect. A collaborative effort as here, a “strategic partnership” to sell the infringing system as a unit, is not 

immune from infringement simply because the participating entities have a separate corporate status. The jury 

found that the defendants emsCharts and Softtech combined their procedures into an integrated system that met 

all of the limitations of claims 1, 6-8, and 15-22, thus 

finding joint infringement and inducement to infringe 

these claims. The panel majority acknowledges that the 

defendants in collaboration infringed the claims, but 

without discussion overturns the jury verdict. 

The evidence showed that emsCharts and Softtech integrated the functions of their software programs, and 

sold the ensuing system as a package. The jury was 

shown an October 2005 press release announcing “[t]his 

partnership,” and promoting their resultant integrated 

system in “seamless transition.” The press release states: 

This partnership allows emsCharts to combine 

their existing product line with Softtech’s CAD 

[Computer Aided Dispatch] technology, enabling 

them to deliver a complete pre-hospital data solution for Emergency Medical Services. 

. . . . Flight Vector integrates with the emsCharts web-based EMS management application, 

providing a seamless transition from CAD to 

medical reports to billing through a user-friendly 

web interface. 

“emsCharts strives to deliver best-of-breed 

products to our customers,” said Pete Goutmann, 

Vice President and founder of emsCharts. “We believe that this strategic partnership with Softtech 

will provide the air medical industry with a complete flight management solution – delivering the 

best of charting with the best of dispatch.” 
GOLDEN HOUR DATA v. EMSCHARTS 6

J.A.5030. On this and other evidence, a reasonable jury 

could have found that this collaborative activity infringed 

the various claims, as shown in the verdict form. My 

colleagues err in discarding this verdict on the ground 

that infringement cannot be found as a matter of law. 

From this ruling, I must again dissent.