United States District Court, E.D. Wisconsin
DECISION AND ORDER
ADELMAN, District Judge
Sausage LLC brings this action against Klement Sausage Co.
Inc. alleging infringement of its patent on “[t]he
ornamental design for a sausage tray.” U.S. Patent No.
D633, 754. Klement moves for summary judgment.
January 2010, Johnsonville applied for a utility patent and a
design patent on a sausage tray with curved end walls, which
looks as follows:
utility patent application claimed that a sausage tray with
curved end walls keeps nested sausages from shifting and
eliminates empty space. See U.S. Patent Application
No. 12/685, 717. Patent examiner Bryon Gehman rejected
Johnsonville's utility claims as anticipated by and
obvious in light of prior art disclosing sausage trays with
similar features that achieve the same purposes. See
U.S. Patent Nos. 5, 770, 249 & 5, 393, 539. Johnsonville
later abandoned its utility patent application.
design patent application claimed the appearance of a sausage
tray with curved end walls extending up and out from its
base, as shown ("[t]he broken line[s]. . . are for
purposes of illustration only, and form no part of the
Patent Application No. 29/353, 610. Patent examiner Dana
Sipos allowed Johnsonville's design claim, and the U.S.
Patent and Trademark Office (PTO) granted its design patent.
Johnsonville never disclosed to Sipos its utility patent
application, Gehman's rejection of its utility claims, or
the specific prior art that Gehman cited.
argues that when Johnsonville withheld information about its
utility patent application from Sipos, it breached its duty
of candor and good faith in dealing with the PTO, "which
includes a duty to disclose ... all information known ... to
be material to patentability.” See 37 C.F.R.
§ 1.56(a). According to Klement, Johnsonville's
breach amounts to inequitable conduct, rendering
Johnsonville's design patent unenforceable and entitling
Klement to judgment as a matter of law.
conduct is an equitable defense to patent infringement that,
if proved, bars enforcement of a patent.”
Therasense, Inc. v. Becton, Dickinson & Co., 649
F.3d 1276, 1285 (Fed. Cir. 2011) (en banc). “To prevail
on the defense of inequitable conduct, the accused infringer
must prove that the applicant misrepresented or omitted
material information with the specific intent to deceive the
PTO.” Id. at 1287. Because the remedy for
inequitable conduct is unenforceability, the “atomic
bomb” of patent law, “[t]he accused infringer
must prove both elements-intent and materiality- by clear and
convincing evidence.” Id. at 1287-88 (quoting
Aventis Pharma S.A. v. Amphastar Pharm., Inc., 525
F.3d 1334, 1349 (Fed. Cir. 2008) (Rader, J., dissenting)).
fails to prove materiality. For the most part, it applies the
wrong materiality standard, arguing that Johnsonville
withheld information “material to patentability”
as the PTO defines it. The PTO's definition of
materiality does not apply in patent cases where inequitable
conduct is raised, as it is “overly broad, ”
“encompass[ing] anything that could be considered
marginally relevant to patentability.” Id. at
1293-95. “[S]uch a low bar for materiality” does
not reflect the seriousness and “far-reaching
consequences” of a finding of inequitable conduct.
See Id. at 1289, 1294. Rather, “the
materiality required to establish inequitable conduct is