Siemens Gamesa Renewable Energy A/S v. General Electric Co.

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

)

SIEMENS GAMESA )

RENEWABLE ENERGY A/S, )

)

Plaintiff, )

)

v. ) CIVIL ACTION

) NO. 21-10216-WGY

GENERAL ELECTRIC CO., )

)

Defendant. )

YOUNG, D.J. July 27, 2022

AMENDED FINDINGS AND RULINGS OF LAW

I. INTRODUCTION

Siemens Gamesa Renewable Energy A/S (“SGRE”) –- owner of

United States Patent No. 9,279,413 (the “‘413 Patent”) and

United States Patent No. 8,575,776 (the “‘776 Patent”) -- sued

General Electric (“GE”) for infringement of each based on GE’s

Haliade-X wind turbines. First Am. Compl. Patent Infringement &

Jury Demand ¶¶ 1, 23, 32, ECF No. 95; see generally id. Ex. A,

U.S. Patent No. 8,575,776 (“‘776 Patent”), ECF No. 95-1; id. Ex.

B, U.S. Patent No. 9,279,413, ECF No. 95-2. GE raised several

counterclaims: (1) non-infringement of each patent; (2)

invalidity of each patent; and (3) unenforceability of each

patent based on inequitable conduct. See Def.’s Second Am.

Answer, Affirmative Defs. & Countercls. Pl.’s First Am. Compl.

19-31, ECF No. 98.

Specifically, counts V and VI of GE’s counterclaims allege

that the ‘776 and ‘413 Patents are unenforceable on the basis of

inequitable conduct by SGRE with the United States Patent and

Trademark Office (the “PTO”) under 27 C.F.R. § 1.56. See id.

24-31. As to the ‘776 Patent, GE claims: (1) Henrik Stiesdal

(“Stiesdal”), one of the named inventors of the ‘776 Patent, was

also an inventor, and thus had knowledge, of WO 2010/003868, WO

2010/003869, EP2143941A1 (the “‘941 reference”), EP2143942A1

(the “‘942 reference”), EP2143944A1 (the “‘944 reference”), and

in addition was aware of EP2182619A1; (2) all of these

references are clearly material to the prosecution of ‘776

patent or are prior art; (3) Stiesdal and others intentionally

withheld all of these references from the PTO Examiner who was

assessing the patentability of the ‘776 Patent with deliberate

intent to deceive; and (4) therefore, the ‘776 Patent is

unenforceable due to inequitable conduct. Id. As to the ‘413

Patent GE incorporates by reference all of the allegations made

regarding the ‘776 Patent and adds that SGRE also made false

statements regarding the conception and inventorship of the ‘413

Patent. See id.

Both parties moved for summary judgment on their respective

claims and counterclaims. See Def. GE’s Mot. Summ. J. Non-

Infringement Lack U.S. Infringing Act, ECF No. 148; Def. GE’s

Mot. Summ. J. Non-Infringement ‘776 Patent, ECF No. 157; Def.

GE’s Mot. Summ. J. Non-Infringement ‘413 Patent, ECF No. 169;

Pl.’s Mot. Summ. J. Certain References Do Not Constitute Prior

Art, ECF No. 146; Pl.’s Mot. Summ. J. No Inequitable Conduct,

ECF No. 141. This Court denied all the motions for summary

judgment. See Electronic Clerk’s Notes, ECF No. 305; April 4,

2022 Order, ECF No. 306. SGRE’s claims of infringement and GE’s

counterclaims of non-infringement and invalidity of the ‘413 and

‘776 Patent proceeded to jury trial. See Electronic Clerk’s

Notes, ECF Nos. 335, 336, 340, 342, 344, 347, 349-51, 359, 360,

362, 372, 374, 375.

This Court held a three-day bench trial on GE’s inequitable

conduct counterclaims. See Electronic Clerk’s Notes ECF Nos.

343, 350, 352. At the conclusion, this Court took the matter

under advisement.

The Court now rules that GE has failed to meet its burden

to prove inequitable conduct.

II. ANALYSIS

At trial and at the summary judgment stage, GE argued that

the three inventors named on the ‘413 Patent are not joint

inventors because there is no ascertainable collaboration among

them. Mem. Opp’n SGRE’s Mot. Summ. J. No Inequitable Conduct 1-

3, ECF No. 187. Essentially, GE asserted that SGRE relies on “a

single, after-the-fact phone call orchestrated by the [SGRE]

patent department, devoid of any collaboration, common

direction, or awareness of the earlier work performed by others”

to prove its representations of joint inventorship are proper.

Id. 4. GE also posited that both Janet Hood (“Hood”), the SGRE

patent agent involved in prosecuting the ‘776 patent, and

Stiesdal were aware of the alleged material references, as Hood

prosecuted other patents that cited these references and

Stiesdal invented the references; thus, both had knowledge of

their materiality to the ‘413 and ‘776 Patents and intentionally

failed to disclose them. Id. 16-17.

As to the ‘413 Patent, SGRE rebutted that invention

requires both conception and reduction to practice and that

sufficient interactions took place prior to the latter step in

the ‘413 Patent, so joint inventorship was properly represented

to the PTO. See Mem. Supp. Pl.’s Mot. Summ. J. No Inequitable

Conduct 7-8, ECF No. 142. As to both the ‘413 and ‘776 Patents,

SGRE argued that GE has no evidence that Hood or Stiesdal had

the specific intent to deceive in not disclosing the allegedly

material references, and that Hood was unaware of at least one

reference -- the ‘941 reference. Id. 11, 14-15. Furthermore,

SGRE asserted that GE lacked evidence that the PTO would not

have allowed the patents if provided with the allegedly relevant

references. Id. 12-13.

In concluding that GE has not met its burden on its

inequitable conduct counterclaim, this Court: (A) provides an

overview of the inequitable conduct doctrine; (B) assesses GE’s

claims as to joint inventorship of the ‘413 Patent; and (C)

considers GE’s arguments as to non-disclosure of material

references, relevant to both the ‘413 and ‘776 Patents.

A. Inequitable Conduct Generally

“Inequitable conduct is an equitable defense to patent

infringement that, if proved, bars enforcement of a patent.

This judge-made doctrine evolved from a trio of Supreme Court

cases that applied the doctrine of unclean hands to dismiss

patent cases involving egregious misconduct.” Therasense, Inc.

v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011)

(compiling cases). “The remedy for inequitable conduct is

[known as] the ‘atomic bomb’ of patent law,” because

“inequitable conduct as to any individual claim renders the

entire patent unenforceable.” Id. at 1288-89.1

1 As the Federal Circuit cautions, courts “must be vigilant

in not permitting the defense to be applied too lightly” because

“[j]ust as it is inequitable to permit a patentee who obtained

his patent through deliberate misrepresentations or omissions of

material information to enforce the patent against others, it is

also inequitable to strike down an entire patent where the

patentee only committed minor missteps or acted with minimal

culpability or in good faith.” Star Sci., Inc. v. R.J. Reynolds

Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008).

“Inequitable conduct includes affirmative misrepresentation

of a material fact, failure to disclose material information, or

submission of false material information, coupled with an intent

to deceive.” Board of Educ. ex rel. Bd. of Trustees of Fla.

State Univ. v. Am. Bioscience, Inc., 333 F.3d 1330, 1343 (Fed.

Cir. 2003). The standard for establishing inequitable conduct

is a demanding one:

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. The accused infringer

must prove both elements -- intent and materiality -- by

clear and convincing evidence.

Therasense, 649 F.3d at 1287 (internal citations omitted)

(emphasis added). Even if the accused infringer succeeds in

both respects the district court “must weigh the equities to

determine whether the applicant’s conduct before the PTO

warrants rendering the entire patent unenforceable.” Id. This

is often framed as a two-step inquiry assessing the threshold

levels of materiality and intent at step one and determining the

totality of the circumstances at step two. See PerSeptive

Biosystems, Inc. v. Pharmacia Biotech, 225 F.3d 1315, 1318-19

(Fed.Cir.2000).

“[T]he materiality required to establish inequitable

conduct is but-for materiality.” Therasense, 649 F.3d at 1291

(emphasis added). A reference is but-for material if the PTO

would not have allowed the claim had it been aware of the

undisclosed prior art; the Court is to use the preponderance of

the evidence standard and apply the broadest reading of the

claims possible in making this determination. Id. at 1292; see

also MONKEYmedia, Inc. v. Twentieth Century Fox Home Ent., LLC,

242 F. Supp. 3d 551, 554 (W.D. Tex. 2017) (“Information is

‘material’ for purposes of inequitable conduct ‘if there is a

substantial likelihood that a reasonable examiner would have

considered the information important in deciding whether to

allow the application to issue as a patent.’” (quoting Honeywell

Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 1000

(Fed. Cir. 2007))). “[M]ateriality does not presume intent,

which is a separate and essential component of inequitable

conduct.” GFI, Inc. v. Franklin Corp., 265 F.3d 1268, 1274

(Fed.Cir.2001). “[T]he fact that information later found

material was not disclosed cannot, by itself, satisfy the

deceptive intent element of inequitable conduct.” Star Sci.,

Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed.

Cir. 2008).

To successfully level an inequitable conduct defense the

accused infringer must also show the plaintiff had the “specific

intent to . . . mislead[] or deceiv[e] the PTO.” Molins PLC v.

Textron, Inc., 48 F.3d 1172, 1181 (Fed. Cir. 1995) (emphasis

added). In a misrepresentation or omission case, a “gross

negligence” or “should have known” standard does not satisfy the

requirement, instead an accused infringer must show the patentee

“made a deliberate decision to withhold a known material

reference.” Therasense, 649 F.3d at 1290 (quoting Molins, 48

F.3d at 1181). “Because direct evidence of deceptive intent is

rare, [the Court] may infer intent from indirect and

circumstantial evidence. However, to meet the clear and

convincing evidence standard, the specific intent to deceive

must be ‘the single most reasonable inference able to be drawn

from the evidence.’” Id. (emphasis added) (citations omitted)

(quoting Star Sci., Inc., 537 F.3d at 1366).

GE alleges the following two actions constitute inequitable

conduct: the representations of joint inventorship on the ‘413

Patent and the failure to disclose several references during the

prosecution of the both the ‘413 and ‘776 Patents. GE has

failed to meet its burden as to either claim.

B. Inventorship

Inventorship can be material because it is “a critical

requirement for obtaining a patent.” PerSeptive Biosystems, 225

F.3d at 1321. Therefore, the only remaining questions are: (1)

whether the joint inventorship here was improperly represented;

and (2) if so, whether those misrepresentations were made with

intent to deceive in the PTO.

1. Whether Inventorship was Improper and thus

Misrepresented to the PTO

“Inventorship is a mixed question of law and fact: The

overall inventorship determination is a question of law, but it

is premised on underlying questions of fact.” Eli Lilly & Co.

v. Aradigm Corp., 376 F.3d 1352, 1362 (Fed. Cir. 2004). “The

inventors named in an issued patent are presumed correct, and a

party alleging misjoinder of inventors must prove its case by

clear and convincing evidence.” Univ. of Pittsburgh of

Commonwealth Sys. of Higher Educ. v. Hedrick, 573 F.3d 1290,

1297 (Fed. Cir. 2009). Under 35 U.S.C. § 116 inventors may be

“joint inventors” even though:

(1) they did not physically work together or at the same

time, (2) each did not make the same type or amount of

contribution, or (3) each did not make a contribution to

the subject matter of every claim of the patent.

35 U.S.C. § 116.

“Conception is the touchstone of inventorship.” Hedrick,

573 F.3d at 1297. “The test for conception is whether the

inventor had an idea that was definite and permanent enough that

one skilled in the art could understand the invention.” Id.

Conception has also been described as “the ‘formation in the

mind of the inventor, of a definite and permanent idea of the

complete and operative invention, as it is hereafter to be

applied in practice.’” Hybritech, Inc. v. Monoclonal

Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (quoting

1 Robinson on Patents 532 (1890)). “If an inventor seeks the

input or advice of another in reducing an invention to practice

such input or advice does not automatically rise to the level of

joint inventorship. . . . The analysis turns on whether that

contribution contains the necessary element of ‘conception’ and

thereby rises beyond the simple reduction to practice of the

inventor’s previously conceived idea.” Murdock Webbing Co. v.

Dalloz Safety, Inc., 213 F. Supp. 2d 95, 100 (D.R.I. 2002). One

who simply reduce[s] the inventor’s idea to practice” or

“provides the inventor with well-known principles or explains

the state of the art” does not qualify as a joint inventor.

Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456,

1460 (Fed. Cir. 1998).

“Nevertheless, for the conception of a joint invention,

each of the joint inventors need not make the same type or

amount of contribution to the invention. Rather, each needs to

perform only a part of the task which produces the invention.”

Id. (internal quotations and citations omitted). “Furthermore,

a co-inventor need not make a contribution to every claim of a

patent. A contribution to one claim is enough.” Id. (internal

citations omitted). In fact, “the law of inventorship does not

hinge co-inventor status on whether a person contributed to the

conception of all the limitations in any one claim of the

patent. Rather, the law requires only that a co-inventor make a

contribution to the conception of the subject matter of a

claim.” Eli Lilly, 376 F.3d at 1361–62.

It is true that, in order to prove contribution to

“conception,” the purported inventors must engage in “at least

some quantum of collaboration or connection.” Kimberly–Clark

Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 917 (Fed.

Cir. 1992). “The interplay between conception and collaboration

requires that each co-inventor engage with the other co-

inventors to contribute to a joint conception.” Vanderbilt

Univ. v. ICOS Corp., 601 F.3d 1297, 1303 (Fed. Cir. 2010). For

there to be collaboration “the inventors [must] have some open

line of communication during or in temporal proximity to their

inventive efforts.” Eli Lilly, 376 F.3d at 1359.

At the same time, even minimal contacts have been deemed

sufficient to establish joint inventorship. Examples of joint

behavior include: “collaboration or working under common

direction, one inventor seeking a relevant report and building

upon it or hearing another’s suggestion at a meeting.” Id.

There is “no explicit lower limit on the quantum or quality of

inventive contribution required for a person to qualify as a

joint inventor.” Id. at 1358. Limited instances of

collaboration are enough. For example, another session of this

Court held that the following allegation, if true, would “meet

the requirements of joint inventorship”:

Dr. Bass published an article explaining [her

invention] . . . The named inventors read her article,

and incorporated her work. She also discussed her

conception with the named inventors at two conferences

and over dinner.

University of Utah v. Max-Planck-Gesellschaft zur Forderung der

Wissenschaften E.V., 881 F. Supp. 2d 151, 158 (D. Mass. 2012)

(Saris, J.). Another Court, in discussing inventorship at the

motion to dismiss stage explained:

The test [of joint inventorship] has been satisfied by such

tenuous collaborations as one inventor seeing the report of

another and building upon it, or merely hearing an

inventive suggestion at a meeting. Accordingly, the Court

will assume that Kiefl has sufficiently pled a quantum of

collaboration between him and the named inventors of the

‘276 Patent.

Arbitron, Inc. v. Kiefl, No. 09-CV-04013 PAC, 2010 WL 3239414,

at *6 (S.D.N.Y. Aug. 13, 2010) (internal citations omitted).

Here, GE has adduced insufficient evidence that

inventorship was improper and thus misrepresented to the PTO.

At trial the following relevant facts emerged from the testimony

of several witnesses, including the inventors of the ‘413

Patent. Thomsen and Pedersen, and Ebbesen, respectively,

created similar inventions that they disclosed to SGRE via

invention disclosure statements. See Jury Trial Tr. vol. II

119:12-120:3, June 2, 2022, ECF No. 386. Before submitting

these invention disclosure statements, Thomsen and Pedersen, and

Ebbesen did not communicate about their respective inventions or

the fluid film bearings project on which Thomsen and Pedersen

were staffed. Id. 120:7-17. After submission of these

statements, the SGRE Patent Office put the three inventors in

contact. See id. 120:18-121:9. The inventors had at least one

meeting at which they discussed their inventions, but they

remember little of this meeting or what took place afterwards.

See Bench Trial Tr. 79:16-19, June 8, 2022, ECF No. 397; Jury

Trial Tr. vol. II 121:2-9, June 2, 2022 (explaining that the

inventors likely discussed their inventions, once informally,

prior to the meeting and then at the meeting organized by the

SGRE Patent Office). The ‘413 Patent was submitted with

Thomsen, Pedersen, and Ebbesen listed as co-inventors. See

Bench Trial Tr. 71:25-72:1, June 8, 2022. The patent includes

some drawings solely created by Ebbesen and some solely created

by Thomsen and Pedersen. See Jury Trial Tr. vol. II 137:21-

138:25, June 6, 2022, ECF No. 391 (discussing which figures were

contributed by Ebbesen and which were contributed by Thomsen and

Pedersen to the ‘413 Patent). The ‘413 Patent also contains

certain claims contributed solely by Thomsen and Pedersen and

others solely by Ebbesen. See Bench Trial Tr. 73:21-74:4, June

8, 2022 (stating that Thomsen and Pedersen crafted Claim 4 and

clarifying that Ebbesen did not contribute to that claim).

GE produced no evidence of what took place after the

meeting between Thomsen, Ebbesen, and Pedersen, nor did it

provide evidence to dispel the notion that, taken together, all

of the claims of the ‘413 Patent are attributable to all of the

inventors’ conceptions and contributions. In fact, GE’s expert,

Professor Alexander Slocum, even seemed to suggest that there

are discernable differences between the work of the three

inventors -- that Ebbesen created a rolling element bearing part

whereas Thomsen and Pedersen formulated a single sliding bearing

positioned towards the center of the hollow chamber –- which, if

anything, indicates key contributions by each to the final

invention. See Bench Trial Tr. 22:3-24:12, June 8, 2022. These

facts do not establish by clear and convincing evidence that

inventorship was improper and thus misrepresented to the PTO.

At trial, GE argued that Kimberly–Clark Corp. v. Procter &

Gamble Distributing Co. constitutes a close parallel to the case

at bar. 973 F.2d at 911. Kimberly-Clark dealt with two patents

involving baby diaper technology: the first, conceived in 1982

and patented in 1987, was the Enloe Patent owned by Kimberly-

Clark; and the second, conceived in 1985 and patented in 1987,

was the Lawson Patent owned by Proctor & Gamble (“P&G”). Id. at

912-13. Kimberly-Clark accused P&G of infringing the Enloe

Patent and alleged that the Enloe Patent had priority over the

Lawson Patent. Id. at 913. P&G countered that the Enloe Patent

failed to disclose the Lawson Patent in its prosecution and thus

was invalid; it also requested that the district court order an

amendment in the Lawson Patent’s inventorship to name two

additional inventors, Buell and Blevins, who had independently

developed the technology in the Lawson Patent in 1979. Id. The

district court did not find the Enloe Patent invalid and held it

had priority over the Lawson Patent; it also found no

inequitable conduct in the procurement of the Enloe Patent. Id.

The issue of inventorship in Kimberly-Clark was relevant to the

issue of priority not inequitable conduct: essentially, if Buell

and Blevins had been credited with joint inventorship of the

Lawson Patent, the Lawson Patent would have had an earlier

priority date –- possibly 1979 -- and could have beaten the

Enloe Patent for priority. Id. at 915. On appeal, the Federal

Circuit upheld the district court’s holding that Buell and

Blevins were not joint inventors with Lawson. Id. In doing so,

it emphasized the district court’s consideration that “Lawson

worked alone,” “knew nothing” of Buell and Blevins’s work, and

that Buell and Blevins’s work was not made public or even part

of development records or patent applications at the company.

Id. It further noted that Buell had been unaware of Lawson’s

work “until 1988 or 1989, long after the Lawson Patent issued”

and that neither Buell and Blevins, nor Lawson, contributed

anything to each other’s work. Id. at 913, 915. The Federal

Circuit’s holding focused mostly on rejecting P&G’s broad and

incorrect claim that the 1984 amendment to 35 U.S.C. § 116

eliminated any collaboration requirement. Id.

The situation in Kimberly-Clark is clearly distinguishable

from the case at hand. First, P&G was seeking to add inventors,

who had never had any contact prior to the patent’s publication,

after the publication of the patent; furthermore, P&G only

sought to make this addition when it became useful to obtaining

priority of its patent against Kimberly-Clark’s. By contrast,

here, GE argues this Court ought remove an inventor, who was

introduced to and had definite contact with the named co-

inventors before the ‘413 Patent’s issuance, under the direction

of his employer, SGRE. Furthermore, GE has provided no

rationale for why the addition of Ebbesen (or Thomsen and

Pedersen) was a desirable goal, or how it could have provided an

outside benefit for SGRE or the inventors, that could motivate

the alleged inequitable conduct.

Both parties spent much time debating at what point the

invention was finalized. SGRE argued that both conception and

reduction to practice are required for invention –- and

therefore that the ‘413 Patent is the relevant inventive act for

the joint inventorship analysis. GE argued that the invention

disclosure statements -- independently provided by Ebbesen, and

Thomsen and Pedersen, before the ‘413 Patent was drafted, filed,

or issued -- are essentially the inventions of interest. This

Court has so far considered inventive contributions to the ‘413

Patent, because GE has not provided clear and convincing

evidence that the invention disclosure statements are identical

in terms of “conception” to one another or to the ‘413 Patent.

In fact, the inventors have provided compelling testimony to the

contrary that different functions, parts of the specification,

and elements of the claims were provided by each inventor.

While reduction to practice is not the cornerstone of invention

-- conception is -- GE has in no way made clear that the

relevant conception was not jointly created.

In short, the burden was on GE to establish that the

inventors here were mistakenly joined and it has simply failed

to meet it. See Am. Bioscience, 333 F.3d at 1339.

2. Intent

Even had GE provided clear and convincing evidence of

improper inventorship -- it has not -- GE would nevertheless

fail to establish inequitable conduct, as it has not presented

sufficient evidence of intent to deceive the PTO. In assessing

the intent prong with regard to “failure to correctly name

inventors,” courts look to whether “the named inventors acted in

bad faith or with deceptive intent.” Id. at 1344. In fact,

some courts have found inequitable conduct where they can

identify a “pattern of intentional conduct designed to deceive

the attorneys and patent office.” Frank’s Casing Crew & Rental

Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363, 1376 (Fed. Cir.

2002). The evidence of representing improper inventorship to

the PTO “must be sufficient to require a finding of deceitful

intent in the light of all the circumstances.” Therasense, 649

F.3d at 1290 (quotations omitted).

GE provided no evidence of improper intent except for

showing that Thomsen, Ebbesen, and Pedersen signed an

attestation affirming joint inventorship and claiming that this

attestation was false. As they testified at trial, Thomsen,

Ebbesen, and Pedersen are inventors who live abroad, work

abroad, and rely at least in part on the SGRE infrastructure to

facilitate acquiring patents in the United States. There are

many reasons why they may have signed such an attestation --

even taking for granted arguendo its falsehood -- ranging from

carelessness to good faith. It is simply not the “single most

reasonable inference able to be drawn from the evidence,” Star

Sci., 537 F.3d at 1366, that the attestation was signed in bad

faith, particularly where GE has not identified any potential

benefit the inventors would have obtained by misstating

inventorship. In fact, the common case of inequitable conduct

dealing with inventorship involves inventors excluding a joint

inventor to reap the spoils of the patent amongst fewer

benefactors. See, e.g., Frank’s Casing Crew, 292 F.3d at 1376.

Furthermore, the inequitable conduct analysis focuses not

only on the fact of inventorship itself, but also statements and

representations as to inventorship made to the PTO. See

PerSeptive Biosystems, 225 F.3d at 1322. Here, GE points to no

independent statements made to the PTO beyond the attestation of

joint inventorship attached to the patent. The inquiry

therefore rises and falls on whether GE has provided clear and

convincing evidence of improper inventorship. Here, it has

failed to do so.

C. Allegedly Material References

1. Materiality

Failure to disclose prior art can be material. See Ring

Plus, Inc. v. Cingular Wireless Corp., 614 F.3d 1354, 1360 (Fed.

Cir. 2010). A prior art reference is “but-for material if the

PTO would not have allowed a claim had it been aware of the

undisclosed prior art.” Therasense, 649 F.3d at 1291. “In

determining the materiality of a reference, the court applies

the preponderance of the evidence standard and gives claims

their broadest reasonable construction.” Regeneron Pharms.,

Inc. v. Merus N.V., 864 F.3d 1343, 1350–51 (Fed. Cir. 2017).

A reference is “not material for the purpose of inequitable

conduct if it is merely cumulative,” see Digital Control Inc. v.

Charles Mach. Works, 437 F.3d 1309, 1319 (Fed. Cir. 2006), and a

reference is cumulative if it “teaches no more than what a

reasonable examiner would consider to be taught by the prior art

already before the PTO,” Regents of the Univ. of Calif. v. Eli

Lilly & Co., 119 F.3d 1559, 1575 (Fed. Cir. 1997). It ought be

noted, “prior art need not be invalidating to be material.”

Informatica Corp. v. Bus. Objects Data Integration, Inc., 489 F.

Supp. 2d 1060, 1070 (N.D. Cal. 2007). “Information concealed

from the PTO ‘may be material even though it would not

invalidate the patent.’” Leviton Mfg. Co. v. Universal Sec.

Instruments, Inc., 606 F.3d 1353, 1359 (Fed. Cir. 2010) (quoting

Larson Mfg. Co. v. Aluminart Prods. Ltd., 559 F.3d 1317, 1327

(Fed. Cir. 2009)).

Here, GE has adduced some evidence that material references

were not provided to the PTO. This Court need not resolve if it

reaches the level of clear and convincing, however, because GE

has failed to establish clear and convincing evidence of the

specific intent to deceive.

2. Intent

As to the intent prong “[p]roving that the applicant knew

of a reference, should have known of its materiality, and

decided not to submit it to the PTO does not prove specific

intent to deceive.” Therasense, 649 F.3d at 1290. “[C]lear and

convincing evidence must show that the applicant made a

deliberate decision to withhold a known material reference.”

Id. (quoting Molins, 48 F.3d at 1181). A Court can infer intent

to deceive if presented with “a pattern of lack of candor.”

Apotex Inc. v. UCB, Inc., 763 F.3d 1354, 1362 (Fed. Cir. 2014).

“[A] failure to disclose a prior art device to the PTO, where

the only evidence of intent is a lack of a good faith

explanation for the nondisclosure,” however “cannot constitute

clear and convincing evidence sufficient to support a

determination of culpable intent.” M. Eagles Tool Warehouse,

Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1341 (Fed. Cir.

2006). Intent to deceive also cannot be de facto linked to an

individual being “experienced” in the field of patents and

making a mistake in filing. See Outside the Box Innovations,

LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1294 (Fed. Cir. 2012)

(overturning the district court’s ruling that an “experienced”

attorney had committed inequitable conduct by failing to

properly assert small entity status).

Here, GE has established, at most, what the Federal Circuit

has expressly deemed insufficient to prove intent. It has

attempted to show that Stiesdal and Hood knew of the references,

that the references were material, and that the references were

not submitted to the PTO. See Therasense, 649 F.3d at 1290. GE

did not establish a pattern of lack of candor, nor did it

identify sufficient evidence to indicate a specific intent to

deceive by either Stiesdal or Hood. It has attempted to

demonstrate intent via circumstantial evidence but failed in

that respect as well.

While a bad faith explanation for Stiesdal’s failure to

disclose the allegedly material references is plausible, many

other explanations are possible, and more likely. In light of

the fact that the ‘776 Patent is just one of the many (around

forty-five) patents Stiesdal has obtained for technology

pertinent to wind turbine generators, see Jury Trial Tr. vol. I

58:14-15, June 2, 2022, it is far more probable that he simply

forgot to cite the references or that he was aware of the

references and believed, in good faith, they were not material.

GE argues Hood’s intent is demonstrated by her expertise

and her awareness of several material references –- including

the ‘942 and ‘944 references. This argument fails for several

reasons. First, GE attempted to establish that Hood was aware

of several material references because patent examiners at the

PTO identified these references when she was prosecuting other

patents in the United States. See Jury Trial Tr. vol. III

147:4-20, June 9, 2022, ECF No. 400.2 Hood testified that these

identifications by the PTO are often glossed over unless they

materialize into an office action and require patent

modification by the prosecuting patent agent. See id. 147:13-

148:9; 165:12-25; 166:24-169:1. Given that fact, alongside the

volume of patents Hood prosecuted during the relevant period, it

is possible, if not likely, that she could have simply missed

2 Although titled “Jury Trial Day 8 Part 3” on the docket,

this document transcribes Day 3 of the Bench Trial on June 9,

2022.

either seeing or assessing the importance of certain references.

Second, GE argued Hood should have been aware of these

references given she prosecuted the United States counterparts

of some of them. See id. 141:10-146:6. Hood, however, provided

credible testimony that she did not intentionally withhold the

‘941, ‘942, and ‘944 references. Id. 178:10-179:3. Third, GE

argued that Hood’s decision to take the ‘776 Patent’s prior art

references, disclosed by the European inventors, at face value

and her failure to add any supplementary references shows intent

to deceive. See id. 159:2-24. Hood testified that her general

approach with foreign patent prosecution was to trust the

credible and often complete prior art cited by the foreign

inventors. See id. 176:12-178:4.

An individual’s failure to disclose a material reference,

alongside evidence of her “experience and knowledge” in the

field of patent prosecution, is not enough to support the

existence of inequitable conduct, without a further finding of

intent to deceive. See Leviton Mfg. Co., Inc., 606 F.3d at 363

(overturning a grant of summary judgment on the issue of

inequitable conduct, which had been based in part on a patent

attorney’s experience and knowledge). Here, there are many

other logical explanations for Hood’s failure to disclose the

relevant references, that are more likely than her possessing an

intent to deceive: (1) Hood saw the references and in good faith

did not believe them to be relevant; (2) Hood did not see the

references -- whether by negligence in her patent prosecution or

because it was common practice; or (3) Hood saw the references,

believed them to be relevant, but negligently left them off due

to the volume of patents she was processing. GE did not

sufficiently demonstrate why these patents would be so obviously

similar that Hood should immediately connect one to the other.

Furthermore, it identified no reason why Hood would be compelled

or even willing to make misrepresentations on a patent

application, risking her license as a patent agent and her

livelihood, when SGRE provided no incentive –- financial or

otherwise -– for her to secure more patents rather than fewer.

See Jury Trial Tr. vol. III 180:20-181:11, June 9, 2022.

III. CONCLUSION

Accordingly, this Court rules in favor of SGRE on the issue

of inequitable conduct (counts V and VI of GE’s counterclaims).

SO ORDERED.

/s/ William G. Young

WILLIAM G. YOUNG

JUDGE

of the

UNITED STATES3

3 This is how my predecessor, Peleg Sprague (D. Mass. 1841-

1865), would sign official documents. Now that I’m a Senior

District Judge I adopt this format in honor of all the judicial

colleagues, state and federal, with whom I have had the

privilege to serve over the past 44 years.