"Reasonable Examiner" Standard for Determining Materiality Is Alive and Well

In its second major inequitable conduct opinion in a week, the U.S. Court of Appeals for the Federal Circuit has determined the U.S. Patent and Trademark Office (USPTO) rule 56, as amended in 1992, in no way supplemented or replaced the case law precedent in determining the threshold of materiality. This rule merely "provides an additional test of materiality" along with the "but for" tests and the "but it may have" and "reasonable examiner" standards. Digital Control Inc. v. The Charles Machine Works, Case No. 05-1128 (Fed. Cir., Feb. 8, 2006) (Clevenger, S. J.).

Digital appealed a decision of the district court, which found two patents to be unenforceable for inequitable conduct due to inventor misrepresentations made in a rule 131 affidavit and his failure to cite prior art cited in another, unrelated patent application to the examiner. After a bench trial on the issue of intent, the district court determined on summary judgment that the misstatements and omission were material