Emery Newsletters- Intellectual Property Update Vol. Co. v. Samsung Elec. SEL filed suit alleging infringement of its patent by Samsung's active matrix display units. In response, Samsung asserted inequitable conduct by SEL in its acquisition of the patent at issue as well as two other patents.
All applicants have a duty to prosecute patent applications with candor, honesty, and good faith.
To find inequitable conduct, it must be shown that the withheld references were material and were intentionally withheld in order to deceive. The reference may also be material if it is inconsistent with the applicant's patentability arguments during prosecution. Although cumulative information is not material under Rule 56, an undisclosed reference is material if it discloses a more complete combination of relevant features than other disclosed references. The court found that an undisclosed reference that contained more of the combined elements than the disclosed reference was not cumulative simply because various elements of the patented invention appear in other disclosed references. The fully translated application, together with other materials, rendered some of the claims obvious, and therefore the undisclosed information was highly material, according to the court.