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55 Brake, LLC v. Audi of America

June 2, 2011

55 BRAKE, LLC, PLAINTIFF,
v.
AUDI OF AMERICA, ET AL.,
(INEQUITABLE CONDUCT ISSUE) DEFENDANTS.



The opinion of the court was delivered by: B. Lynn Winmill Chief Judge United States District Court

FINDINGS OF FACT AND CONCLUSIONS OF LAW

INTRODUCTION

The Court held a bench trial on the single issue of whether plaintiff 55 Brake obtained the '587 patent through inequitable conduct before the United States Patent Office. Following the bench trial, the parties submitted further briefing that was completed on May 2, 2011. The matter is now at issue. In these Findings of Fact and Conclusions of Law the Court finds that plaintiff 55 Brake did not obtain the '587 patent through inequitable conduct.*fn1

FINDINGS OF FACT

Background

1. Plaintiff 55 Brake, L.L.C. is an Idaho limited liability company.

2. Defendant Volkswagen Group of America, Inc. (VGA) is a corporation organized and existing under the laws of the State of New Jersey.

3. The patent at issue -- U.S. Patent No. 6,450,587 to MacGregor et al. (the '587 patent) -- is entitled "Vehicle Brake Safety System Apparatus and Methods" and issued on September 17, 2002.

4. The '587 patent describes an automatic brake control system for cars that detects unsafe conditions through sensors and automatically applies (or maintains) the brake.

5. The unsafe conditions that trigger the brake include (1) a driver exiting the vehicle without applying the parking brake or turning off the vehicle, (2) a wheelchair lift being extended, (3) seat belts disengaged, (4) low tire pressure, and (5) a door which is ajar.

6. The system was originally invented by David MacGregor, Noble Hamilton, and Dale Maslonka, and later assigned to 55 Brake.

7. In this lawsuit, 55 Brake claims that defendants, including VGA, are infringing the '587 patent.

8. VGA raised the defense that the '587 patent is unenforceable for 55 Brake's alleged inequitable conduct for the following two reasons:

a. "(i) after the '587 patent had expired on September 18, 2006 due to an intentional failure to pay the required maintenance fee, 55 Brake, through its attorney Robert H. Epstein, filed a 'Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent' with the Patent and Trademark Office on August 14, 2007, making the false or un-investigated statement that '[t]he delay in payment of the maintenance fee to this patent was unintentional,' which led to the reinstatement of the '587 patent"; and

b. "(ii) during prosecution of the application leading to the issuance of the '587 patent, at least the inventors, G. David MacGregor, Noble Hamilton, and Dale Maslonka, or their attorneys or agents who prepared or prosecuted the application, Ken J. Pedersen and Barbara S. Pedersen, breached their duty of candor and good faith in dealing with the Patent and Trademark Office, and misled the Patent and Trademark Office, by failing to disclose to the Patent and Trademark Office all information known to those individuals to be material to patentability of the claims of the patents, for example the information related to the Deitchman patent and the Semmler patent application, as described." See Amended Answer (docket no. 121).

9. The Court will set forth the facts relating to each of these two claims. Prosecution of the '587 Patent

10. The '587 patent was prosecuted by patent agent, Barbara S. Pedersen.

11. On November 28, 2000, Pedersen filed the '587 patent application.

12. On December 4, 2000, just a few days after filing the '587 application, Pedersen filed an international application under the Patent Cooperation Treaty (PCT).

13. The Court will refer to the PCT international application as the '931 PCT application.

14. The '931 PCT application corresponded to the U.S. '587 patent application, and was filed on behalf of the same inventors as are listed on the '587 patent.

15. International applications submitted under the PCT have two phases.

16. In the first phase, the International Search Authority (ISA) conducts a search for prior art, and issues a written report on its findings -- the International Search Result (ISR) -- including an opinion on whether the matter is patentable. If a more detailed report is desired, the applicant can request an examination by the International Preliminary Examination Authority (IPEA). The IPEA Report lists the prior art and contains a more detailed analysis of patentability than the ISR.

17. In the second phase -- or national phase -- the signatory countries to the PCT -- including the United States -- consider the ISR or IPEA Report, and make the final determination whether to actually issue a patent.

18. The claims filed in the '931 PCT application were identical to the original claims filed in the '587 patent application, including respective claims 1 and 27 in both applications.

19. On December 15, 2000, Pedersen submitted an Information Disclosure Statement (the "First IDS") to the U.S. Patent Office in connection with the '587 patent application.

20. The First IDS disclosed 36 patent documents as relevant to the '587 patent application, including U.S. Patent No. 4,838,617 to Deitchman.

21. On April 27, 2001, the ISA issued its ISR on the '931 PCT application. See Exhibit 2117.

22. The ISR listed a number of existing patents "considered to be relevant," and assigned each patent to a certain category of relevance.

23. For example, a patent assigned to Category X was defined as a "document of particular relevance. The claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone."

24. The ISR at issue here assigned the Deitchman patent and the Semmler patent application to Category X, indicating that the inventions described in these two filings rendered the brake system described in the '931 PCT patent application unpatentable because it was not novel.

25. The ISR contains no further analysis, and does not explain why the two references received an "X" designation.

26. Once she received the ISR, Pedersen requested an IPEA Report.

27. When Pedersen received the ISR, she had not previously disclosed the Semmler patent to the U.S. Patent Office in connection with the '587 patent prosecution.

28. On July 25, 2001, after receiving the ISR, Pedersen submitted a second Information Disclosure Statement (Second IDS) to the U.S. Patent Office in connection with her prosecution of the '587 patent.

29. In the Second IDS, Pedersen informed the U.S. Patent Office of the Semmler patent application, written in German, and submitted a letter, written by Sven Evers, an engineer, translating a portion of the application, and rendering his opinion on its relevance.

30. In the letter, Evers translates into English a detailed description of the braking control system set forth in the Semmler patent application and also provides his opinion that the application has "little bearing on what 55 Brake Company does, mainly because this patent focus ...


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