Inventor Faked Drawing For PTO: Patent Unenforceable

Posted on | April 17, 2008 | No Comments

2008-1291 to 1298 Armament Systems v. IQ Hong Kong
ED/WI 00-C-1257 (lead case)

Plaintiff Armament Systems (ASP) appeals Judge William Griesbach’s orders finding its patent unenforceable for inequitable conduct and then awarding attorneys’ fees under § 285.  ASP’s patent, 6,190,018, is directed to a miniature LED flashlight. 

The patent issued in February 2001, and plaintiff quickly filed about 7 infringement lawsuits against over 23 defendants.  In April 2001, the patent went into reexam in light of numerous patents, including the ’631 to Padden.  Although the PTO  indicated that the ’631 would invalidate the ’018, the inventor fortuitously recalled an early sketch of the invention (called the Q1 sketch) that allowed him to overcome Padden by establishing an earlier invention date.

In 2007 the Court held a bench trial on inequitable conduct:  apparently, forensic document examiners using and ElectroStatic Detection Apparatus discovered impressions of other sketches on Q1 that suggested it was drafted in 2002 rather than 1997.  Much of the opinion discusses which sketches are imprinted on others, but ultimately Judge Griesbach concludes that defendants theory–that all drawings were part of the same pad of paper and Q1 was drafted in 2002–was substantially more plausible than plaintiffs–that the inventor randomly used old drawings as "backing sheets" but happened to repeatedly use the same old drawings in the same order at various points over 5 years.  The fact that plaintiff changed theories, testimonies, and experts didn’t help.

As the awarding attorneys’ fees, ASP raised various objections and complaints about the award.  However, ASP refused to make its own attorneys’ bills available, so the Court used this refusal to make reasonable inferences against ASP.  Ultimately the Court awarded what defendants sought, including time for travel, block or low detailed billing, and attorney conferences.  On this last point, ASP complained that the various defendants’ respective attorneys billed for talking to each other:

[ASP] ignores that such is the risk one takes when one sues many defendants.  Moreover, [ASP] fails to account for the fact that the defendants could have billed much more than they did had they not coordinated their efforts.

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