UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Marine Polymer Technologies, Inc.

v. Civil No. 06-cv-100-JD

Opinion No. 2010 DNH 133

HemCon, Inc.

O R D E R

Marine Polymer Technologies, Inc. accused HemCon, Inc. of

infringing United States Patent 6,864,245 (“the ‘245 patent”),

and summary judgment was entered in Marine Polymer’s favor on

infringement. A bifurcated trial was held in late April of 2010,

which resulted in a verdict in Marine Polymer’s favor on HemCon’s

invalidity defenses of anticipation and obviousness and an award

of $29,410,246 as a reasonable royalty for infringement damages. 

HemCon’s inequitable conduct defense and counterclaim were

reserved for consideration by the court. Marine Polymer moves

for summary judgment that no inequitable conduct occurred, and

HemCon objects.

Standard of Review

Summary judgment is appropriate when “the pleadings, the

discovery and disclosure materials on file, and any affidavits

show that there is no genuine issue as to any material fact and

Case 1:06-cv-00100-JD Document 416 Filed 08/03/10 Page 1 of 17
that the movant is entitled to judgment as a matter of law.” 

Fed. R. Civ. P. 56(c). The moving party is entitled to summary

judgment when “the nonmoving party has failed to make a

sufficient showing on an essential element of her case with

respect to which she has the burden of proof.” Celotex Corp. v.

Catrett, 477 U.S. 317, 323 (1986). All reasonable inferences are

taken in the light most favorable to the nonmoving party. 

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). 

“Inequitable conduct resides in failure to disclose material

information, or submission of false material information, with an

intent to mislead or deceive the examiner, and those two

elements, materiality and intent, must be proven by clear and

convincing evidence.” Optium Corp. v. Emcore Corp., 603 F.3d

1313, 1320 (Fed. Cir. 2010). “[S]ummary judgment may be granted

[on inequitable conduct] when, drawing all reasonable factual

inferences in favor of the non-movant, the evidence is such that

the nonmovant cannot prevail.”1 Id. at 1319; Astrazeneca Pharms.

1HemCon relies on Mack v. Cape Elizabeth Sch. Bd., 553 F.2d

720, 722 (1st Cir. 1977), for the proposition that Marine Polymer

has an affirmative duty to show an absence of disputed material

facts to succeed on its motion. Since Mack, the Supreme Court

has explained that “a complete failure of proof concerning an

essential element of the nonmoving party’s case necessarily

renders all other facts immaterial.” Celotex, 477 U.S. at 323;

see also Sensing v. Outback Steakhouse of Fla., LLC, 575 F.3d

145, 152-53 (1st Cir. 2009). Therefore, a moving party can meet

its burden under Rule 56(c) if the nonmoving party is unable to

2

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LP v. Teva Pharms. USA, Inc., 583 F.3d 766, 770 (Fed. Cir. 2009)

(same). 

Discussion

Marine Polymer seeks summary judgment in its favor on

HemCon’s defense and counterclaim that the ‘245 patent is invalid

due to inequitable conduct that occurred during the patent

prosecution. HemCon contends that Marine Polymer withheld

material information from the Patent and Trademark Office

(“PTO”), withheld prior inconsistent statements made during the

prosecution of United States Patent No. 6,743,783 (the ‘783

patent), misrepresented to the PTO that no new matter was added

in an amendment to the application that became the ‘245 patent,

and withheld communications with the FDA. HemCon also contends

that Marine Polymer intended to deceive the PTO patent examiners.

Marine Polymer asserts that HemCon cannot prove inequitable

conduct.2

provide proof of an essential element of its claim. Celotex, 477

U.S. at 323.

2Marine Polymer also argues that HemCon failed to plead

inequitable conduct with particularity as required by Federal

Rule of Civil Procedure 9(b). To the extent that Marine Polymer

asserts a pleading deficiency as a ground for summary judgment,

that theory is too late. Marine Polymer filed an answer to

HemCon’s counterclaims on May 15, 2006, but failed to challenge

the sufficiency of HemCon’s pleadings until the current motion

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“To successfully prove inequitable conduct, the accused

infringer must present evidence 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 PTO.” Pressure

Prods. Med. Supplies, Inc. v. Greatbatch, Ltd., 599 F.3d 1308,

1320 (Fed. Cir. 2010) (internal quotation marks omitted). Both

materiality and intent to deceive must be proven by clear and

convincing evidence. Orion IP, LLC v. Hyundai Motor Am., 605

F.3d 967, 978 (Fed. Cir. 2010). “If the materiality and intent

requirements are met, the court must then determine whether the

cited conduct amounts to inequitable conduct by balancing the

levels of materiality and intent; a greater showing of one allows

a lesser showing of the other.” Taltech Ltd. v. Esquel Enters.

Ltd., 604 F.3d 1324, 1328 (Fed. Cir. 2010).

 Information is material “if there is a substantial

likelihood that a reasonable examiner would consider it important

in deciding whether to allow the application to issue as a

patent,” although information may be material even if it would

not invalidate the patent. Leviton Mfg. Co., Inc. v. Universal

Sec. Instruments, Inc., 606 F.3d 1353, 1359 (Fed. Cir. 2010)

for summary judgment, more than four years later.

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(internal quotation marks omitted). An intent to deceive is

rarely proven by direct evidence and instead is “generally

inferred from the facts and circumstances surrounding the

applicant’s overall conduct.” Id. at 1362 (internal quotation

marks omitted). Even when the nondisclosed material is highly

material, intent to deceive cannot be inferred if the applicant

provides a “plausible, good faith explanation” for not disclosing

the material, although the absence of an explanation does not

prove intent. Id. at 1362-63.

I. Nondisclosure

HemCon contends that Marine Polymer engaged in inequitable

conduct by failing to disclose certain materials and information

to the PTO. In particular, HemCon argues that Marine Polymer

should have, but did not, disclose an article written by Paul

Sandford that was published in a book in 1989, the Sandford

Article. See Paul A. Sandford, “Chitosan: Commercial Uses and

Potential Applications,” published in Chitin and Chitosan: 

Sources, Chemistry, Biochemistry, Physical Properties and

Applications, 51 - 59 (1989). HemCon also argues that certain

statements Marine Polymer made during the prosecution of the ‘783

patent were inconsistent with statements made to the PTO examiner

during the prosecution of the ‘245 patent and should have been

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disclosed. In addition, HemCon lists in its statement of facts

that Marine Polymer’s communications with the FDA, including

Marine Polymer’s § 510 submissions, were withheld from the PTO.

A. Sandford Article

The Sandford Article discusses chitin and chitosan derived

from crustacean shells. The Article explained the manufacturing

process, noted the biological and chemical properties, and

addressed its commercial uses. The Article suggests uses of

chitin and chitosan in the clarification and purification of

water, pharmacology, wound healing, cosmetics and personal care,

agriculture, and biotechnology. 

1. Materiality

In its motion, Marine Polymer contends that the Sandford

Article was not material to the ‘245 patent application. Marine

Polymer cites the opinion and testimony of its expert witness,

Dr. Langer, that the Sandford Article does not meet the

limitations of the ‘245 patent as the claims were construed by

the court in this case. In addition, Marine Polymer cites Dr.

Langer’s opinion that the Sandford Article was no more material

than other prior art that was cited during prosecution of the

‘245 patent and the opinion of another expert, Stephen Kunin,

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that the Sandford Article was merely cumulative of other cited

references. Marine Polymer also notes that the jury found that

the Sandford Article did not disclose the elements of the

asserted claims of the ‘245 patent for purposes of anticipation

and obviousness.

HemCon asserts that the Sandford Article was highly material

based on the PTO’s communication in the reexamination proceeding

and Sergio Finkielsztein’s testimony at trial. In March of this

year, the PTO examiner issued a nonfinal communication, rejecting

all of the claims of the ‘245 patent as obvious in light of the

Sandford Article.3 HemCon also cites Sergio Finkielsztein’s

trial testimony that he would have disclosed the Sandford Article

if he had been aware of it during patent prosecution.

In its reply, Marine Polymer does not pursue the issue of

the materiality of the Sandford Article. Instead, Marine Polymer

focuses on the intent requirement. For purposes of summary

3The PTO examiner agreed with the court’s claim construction

except to further define “biocompatibility tests” as

“cytotoxicity elution assays having a test score of 0, 1, or 2.”

The court construed “biocompatible poly-ß-164-N-acetylglucosamine

or biocompatible poly-ß-164-glucosamine” to mean:

polymers with their stated compositions (poly-ß-164-Nacetylglucosamine and poly-ß-164-glucosamine) and with

low variability, high purity, and no detectable

biological reactivity as determined by biocompatibility

tests. 

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judgment, therefore, it appears that there is at least a factual

dispute as to whether the Sandford Article was material.

2. Intent to Deceive

“[T]he ‘intent’ element of inequitable conduct is not simply

intent to take the action or omission complained of, but intent

to deceive or mislead the patent examiner into granting the

patent.” Optium, 603 F.3d at 1320. When a charge of inequitable

conduct is based on the applicant’s “nondisclosure of information

rather than affirmative misrepresentation, clear and convincing

evidence must show that the applicant made a deliberate decision

to withhold a known material reference.” Id. (internal quotation

marks omitted). In addition, deceptive intent cannot be inferred

merely because the nondisclosed information was highly material. 

Id. at 1321-22.

HemCon argues that intent to deceive can be inferred from

the materiality of the Sandford Article and because one of the

‘245 patent inventors, Dr. Ernest Pariser, had the Chitin and

Chitosan book, where the Sandford Article is published, and

because other articles from the book were cited to the PTO. 

Because Dr. Pariser had the book in his possession, HemCon

surmises that Dr. Pariser reviewed the book to choose the other

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cited articles. HemCon further surmises that to choose the 

other cited articles, Dr. Pariser necessarily saw the Sandford

Article and decided not to cite it either because he thought it

was not material, due to the crustacean source, or because he did

not want the PTO examiner to consider the Sandford Article.

In its reply, Marine Polymer responds that it is not

reasonable to infer that Dr. Pariser intentionally withheld the

Sandford Article or even knew that the article existed. Marine

Polymer points out that the Chitin and Chitosan book includes

eighty-seven articles and that the articles Dr. Pariser cited to

the PTO pertained to “derivatization”.4 Marine Polymer also

contends that HemCon cannot show that Dr. Pariser thought the

Sandford Article was material.

An infringer “must prove by clear and convincing evidence a

specific intent to deceive the PTO.” Larson Mft. Co. of S.D. v.

Aluminart Prods. Ltd., 559 F.3d 1317, 1340 (Fed. Cir. 2009). The

absence of an explanation for failing to disclose a reference, by

4The parties did not identify which articles from the Chitin

and Chitosan book were cited to the PTO, referring only to “two

articles.” The ‘245 patent, however, lists three articles from 

Chitin and Chitosan as references cited: “Production and

application of chitin and chitosan in Japan,” by S. Hirano;

“Preparation of iodo-chitins and graft copolymerization onto the

derivatives,” by K. Kurita and S. Inoue; and “Hydroxypropylation

of chitosan,” by G. Maresch, T. Clausen, and G. Lang. Sergio

Finkielsztein testified in his deposition that two or three

references from the book were cited to the PTO examiner.

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itself, does not prove an intent to deceive. Id. at 1341. An

inference of “deceptive intent [may be] based on a showing that a

patentee withheld references with which it was intimately

familiar and which were inconsistent with its own patentability

arguments to the PTO.” Agfa Corp. v. Creo Prods. Inc., 451 F.3d

1366, 1378 (Fed. Cir. 2006). In addition, deceptive intent may

be inferred if the applicant knew of withheld material

information, knew or should have known that the information was

material, and failed to provide a credible explanation for

failing to cite the information. Ferring B.V. v. Barr Labs.,

Inc., 437 F.3d 1181, 1191 (Fed. Cir. 2006). 

Neither party has presented evidence from Dr. Pariser.5

HemCon urges the court to infer intent to deceive. HemCon’s

inferential theory, however, is missing several links.

HemCon provides no direct evidence that Dr. Pariser was

aware of the Sandford Article when he cited other articles to the

PTO examiner. Instead, HemCon speculates that Dr. Pariser would

have read through Chitin and Chitosan, or at least through the

article titles, to choose the cited articles. Based on that

5Marine Polymer faults HemCon for failing to depose Dr.

Pariser on the question of intent to deceive, and HemCon faults

Marine Polymer for failing to provide an affidavit from Dr.

Pariser on the issue. Because HemCon bears the burden of proving

inequitable conduct, Marine Polymer need not provide evidence

negating intent to support its motion for summary judgment.

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assumption, HemCon speculates that Dr. Pariser would have seen

the Sandford Article during the selection process, would have

known and appreciated the subject matter of the article, and 

chose not to cite the Sandford Article to the PTO. 

HemCon’s unsupported speculation cannot prove that Dr.

Pariser withheld the Sandford Article for the purpose of

deceiving the PTO examiner. Marine Polymer is not obligated to

explain Dr. Pariser’s choices. In the absence of evidence of

intent to deceive, an essential element to prove inequitable

conduct, HemCon cannot succeed on that claim based on Marine

Polymer’s failure to cite the Sandford Article to the PTO

examiner.

B. Arguments Made During Prosecution of the ‘783 Patent

HemCon contends that Marine Polymer made statements during

the prosecution of the ‘783 patent that were inconsistent with

statements made during the ‘245 patent prosecution and failed to

disclose the prior inconsistent statements. HemCon’s

inconsistent statements theory is difficult to understand.

The ‘245 patent and the ‘783 patent are part of a family of

patents that shares a common specification and descends from

United States Patent No. 6,610,668. HemCon contends that during

prosecution of the ‘783 patent, Marine Polymer or its

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representatives distinguished microalgal chitin from crustacean

chitin. HemCon states: “The claims of the ‘245 patent were

obvious in view of the claims of [the ‘783 patent], which means

that the claims of the ‘245 patent had similar scope as the

claims of [the ‘783 patent].” In support, HemCon cites an

exhibit filed in support of a motion for summary judgment.6 The

cited page merely shows approval of “Terminal Disclaimer” with a

handwritten list of numbers. HemCon concludes: “As such,

arguments made in the prosecution of [the ‘783 patent] are

material to the prosecution of the ‘245 patent.” Def. Mem. at 6,

¶ 10. 

HemCon contends that the arguments made distinguishing the

sources of chitin during prosecution of the ‘783 patent were

inconsistent with Marine Polymer’s arguments made in support of

the ‘245 patent, which did not distinguish the invention based on

the chitin source. HemCon states that Marine Polymer did not

disclose the arguments made in support of the ‘783 patent

application and withheld that information with the intent to

deceive the PTO. Marine Polymer points out that the statements

6Specifically, HemCon cites “Dkt. 31, Exhibit 5D at 14." 

Document number 31 refers to HemCon’s motion for summary

judgment, filed on June 28, 2007, which was later terminated due

to subsequent claim construction. Exhibit 5D is part of the

prosecution history of the ‘245 patent submitted in support of

the motion.

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HemCon challenges are not inconsistent because the two patents

claim different inventions. 

The ‘783 patent is directed to microalgal p-GlcNAc while the

‘245 patent claims biocompatible p-GlcNAc without a source

limitation. Marine Polymer cites its expert witness’s opinion

that the representative during the ‘783 patent prosecution did

not argue patentability by distinguishing microalgal source

chitin from animal source chitin but instead argued that prior

art would not have provided motivation to make microalgal pGlcNAc that was effective for hemostasis. HemCon has not

provided sufficient evidence of materiality to raise even a

disputed fact as to whether statements made during prosecution of

the ‘783 patent should have been disclosed during the ‘245 patent

prosecution. 

Even if materiality were established, HemCon offers no

evidence of intent to deceive. HemCon does not identify who on

behalf of Marine Polymer withheld the allegedly inconsistent

statements or any reason to suspect an intent to deceive. 

HemCon’s inequitable conduct theory based on Marine Polymer’s

failure to disclose allegedly inconsistent statements during

prosecution of the ‘245 patent is not based on sufficient

evidence to raise a factual dispute. 

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C. Communications with the FDA

HemCon merely states that Marine Polymer withheld its

communications with the FDA from the PTO. In the absence of any

evidence that the communications were material and that Marine

Polymer intended to deceive the PTO by withholding the

communications, HemCon cannot prove inequitable conduct based on

the FDA communications. HemCon has not shown a factual dispute

sufficient to avoid summary judgment on its inequitable conduct

defense and counterclaim, based on its claims that Marine Polymer

failed to disclose material information to the PTO.

II. Misrepresentations

HemCon argues that Marine Polymer misled the PTO when Marine

Polymer amended certain pending claims of the ‘245 patent, during

patent prosecution, to eliminate the lower limit of a range of

monosaccharides claimed. As amended, the claims retained the

upper limit on the number of monosaccharides but lacked a lower

limit. HemCon represents that Marine Polymer misled the PTO by

stating to the PTO that support for the amendment could be found

in certain cited parts of the specification and that no new

matter had been introduced. HemCon contends that, contrary to

Marine Polymer’s statement, the amendment broadened the scope of

the claims, by eliminating the lower limit on the number of

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monosaccharides, and that the specification does not support a

molecular weight below the limits originally included in the

claims.

A patent examiner is free to accept or reject the

applicant’s arguments or interpretations provided in support of

patentability of the invention. Innogenetics, N.V. v. Abbott

Labs., 512 F.3d 1363, 1379 (Fed. Cir. 2008); Life Techs., Inc. v.

Clontech Labs., Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000). 

Therefore, an applicant’s statements do not constitute a material

misrepresentation when the patent examiner has the information

before him to reach his own conclusion. Akzo N.V. v. Int’l Trade

Comm’n, 808 F.2d 1471, 1482 (Fed. Cir. 1986). 

HemCon does not dispute that the patent examiner had the

specification to check Marine Polymer’s argument that the

specification supported the amendment. In addition, the examiner

was free to decide for himself whether the elimination of the

lower limit in the amendment broadened the amended claims. In

these circumstances, any misrepresentation was not material. 

Further, HemCon offers no basis to infer that Marine Polymer

intended to deceive the patent examiner in its representations

about the amendment.

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III. Summary

HemCon offered four bases for its defense and counterclaim

of inequitable conduct: that Marine Polymer withheld the

Sandford Article, that Marine Polymer made inconsistent

statements during the ‘783 patent prosecution, that Marine

Polymer failed to disclose its communications with the FDA, and

that Marine Polymer misled the patent examiner with respect to

amendment of claims. As is explained above, HemCon failed to

provide clear and convincing evidence that the cited information

was material, in some cases, and that Marine Polymer intended to

deceive the PTO. In the absence of evidence sufficient to

establish a triable issue on HemCon’s inequitable conduct defense

and counterclaim, Marine Polymer is entitled to summary judgment.

Conclusion

For the foregoing reasons, the plaintiff’s motion for

summary judgment (document no. 339) is granted. Summary judgment

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in favor of the plaintiff is granted on the defendant’s

counterclaim and defense of inequitable conduct.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

August 3, 2010

cc: Julie M. Baher, Esquire

Celine Jimenez Crowson, Esquire

Garet K. Galster, Esquire

Daniel R. Johnson, Esquire

Heather E. Krans, Esquire

Joseph A. Kromholz, Esquire

Raymond A. Kurz, Esquire

Lynda Q. Nguyen, Esquire

Keith B. O’Doherty, Esquire

Rebekah L. Osborn, Esquire

Brian M. Poissant, Esquire

Daniel D. Ryan, Esquire

Ognian V. Shentov, Esquire

Jonathan M. Shirley, Esquire

Daniel E. Will, Esquire

Leigh S. Willey, Esquire

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