Exception Case is Not Certainteed

Posted on | April 27, 2008 | No Comments

2008-1315 Knauf Fiber Glass v. CertainTeed Corp.
SD/IN 1:02-cv-1215

Defendant CertainTeed appeals from Judge David Hamilton’s Order finding that it failed to prove that the case should be declared exception based on plaintiff/patentee Knauf’s (1) inequitable conduct before the PTO and (2) pursuing baseless litigation.

Knauf sued Certainteed, asserting 6,270,865 relating to a fiberglass duct board with a smooth fiberglass may facing on the air-stream side of the board.  After claim construction, the parties stipulated that Certainteed’s product infringed, and the parties continues to litigate invalidity and unenforcability.  Certainteed filed for summary judgment and, in a reply brief, first asserted certain prior art: specifically, a product previously available in Europe.  Shortly afterwards, Knauf dismissed its patent infringement claim.

Certainteed continued to press its section 285 counterclaim.  After a bench trial, the court ruled in Knauf’s favor.  First, the court reviewed the testimony from the inventors and patent attorneys and concluded:

CertainTeed has shown that a more thorough search of the prior art
would have turned up prior art that would have prevented issuance of the ’865 patent. However, CertainTeed has failed to prove that the applicants made any false material statements to the PTO, let alone that they did so deliberately. With respect to failures to disclose, the court concludes that Knauf’s flexible Duct Liner M was material prior art but was cumulative, in view of the examiner’s approach to prior art, including the Hoffmann and Schroeder references. Even if that information were not cumulative, however, and even though Knauf and its attorneys probably should have recognized it as material, CertainTeed has not shown by clear and convincing evidence that anyone at Knauf or its attorneys (a) actually viewed Duct Liner M as material and then (b) made a deliberate decision not to tell the PTO about it. CertainTeed has not shown by clear and convincing evidence any other deliberate failure to provide material information to the PTO.

CertainTeed also asserted that the case was exceptional because Knauf knew or should have known about the invalidating prior art from the outset.  The court noted that while CertainTeed alluded to prior art sales in Europe in its Answer, it declined or refused to provide specifics of such products or sales until the summary judgment reply.  While the court acknowledged that Knauf (or its counsel) might have been able to piece the full argument together, its failure to do so was not litigation misconduct.  The court easily rejected the other alleged misconduct.

Documents:

2008-1315_Knauf_Order.pdf

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