YOUNG v. LUMENIS, INC.
492 F.3d 1336 (2007)
United States Court of Appeals, Federal Circuit.
June 27, 2007.
Lumenis responds that the district court properly granted summary judgment because there were no undecided genuine issues of material fact. According to Lumenis, the Hedlund deposition testimony was material because it refuted and was inconsistent with an argument that Young made to the PTO. By not submitting that information to the PTO, Lumenis asserts that Young intended to mislead the PTO. Lumenis contends that Young failed to cure the misconduct in submitting the deposition testimony to the PTO because that submission occurred only after Lumenis filed its motion for summary judgment in the district court, not on Young's "own initiative," as required in Rohm & Haas. Lumenis also asserts that Young's statements made to the examiner in the October 2005 Response were affirmative misstatements of fact constituting inequitable conduct because they did not accurately describe the incision shown in the Fossum Reference.
We agree with Young that the district court erred in granting summary judgment of inequitable conduct. "Inequitable conduct includes affirmative misrepresentation of material fact, failure to disclose material information, or submission of false information, coupled with an intent to deceive." Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed.Cir.1995). In this case, the court determined that there was inequitable conduct arising from a "failure to disclose material information" and from an "affirmative misrepresentation of material fact." We conclude that there was no "failure to disclose material information" to the PTO because the alleged material information was disclosed to the PTO at a time when it could be considered by the examiner. We also conclude that no affirmative misrepresentations of material fact have been shown. We therefore conclude that the court erred in granting summary judgment of inequitable conduct.
We first consider whether the statements made in Young's October 2005 Response to the first Office Action constituted affirmative misrepresentations of material fact. The three statements in Young's October 2005 Response that the district court found to be affirmative misrepresentations of material fact are:
(1) "The only reference in Fossum to this illustration is at the end of the quoted sentence that discusses the first incision through the skin, not through tendons and ligaments. Thus, the only reasonable interpretation of this illustration and the reference to it when discussing the first incision is that it shows the location of the first incision: through the skin. Fossum teaches a skin incision at the joint between PII and PIII not near the edge of the ungual crest." (emphasis in original).
(2) "The prior art only teaches to cut though the joint in a single straight cutting path." (emphasis in original).
(3) "The Fossum reference also teaches a single cutting path incision starting with the skin at the PII-PIII joint."
Inequitable Conduct Order, slip op. at 26-27.