conjunction with American counsel. He is still alive but was not a witness.
Ms. Chang signed whatever papers she was asked to sign by Mr. Lin as requested. They were not translated for her and their nature was only summarily explained. She took no affirmative steps to determine the full nature of what her sworn signature implied. She was not in frequent consultation with Mr. Lin, leaving day-to-day responsibility in patent matters with a sales representative, one Larry Hwang, who spoke and understood English. Ms. Chang's deposition is in evidence. There is no proof that Ms. Chang failed to act in good faith.
As far as Mr. Lin is concerned, he must be charged with knowledge of what was set forth in the original application and must have known information was being withheld. It should be noted, however, that when U.S. counsel at a later date inquired at the examiner's request about Globe's patent protection and activity in other foreign countries, Mr. Lin sent him the full information in December, 1975. This included disclosure of the key Australian patent as well as other information which had not been disclosed up to that time.
At the times most material to this inquiry Globe was represented before the Patent Office by Anthony Davis, Esquire, then a member of the firm of Landas & Parry, patent attorneys specializing in foreign patent matters. Mr. Davis had been a patent agent and was a lawyer admitted to practice before the Patent Office. His marked deposition is an exhibit in evidence.
Mr. Davis's responsibility for prosecuting the patent commenced in June, 1973, and continued thereafter until February 1979. He was well aware that the examiner had a "feeling in his bones" that there probably were highly relevant foreign prior art references and other information not disclosed. Mr. Davis knew such references existed and that their materiality had been doubly established by the examiner's inquiries as well as statutory implications. See 35 U.S.C. § 102(d) (1982). The failure to disclose is apparent on the face of several papers filed by the firm in the prosecution of the '669 patent. In addition to nondisclosure of the specific foreign prior art counterparts, much other significant foreign patent activity of Globe known to Mr. Davis should have been disclosed. See 37 C.F.R. § 1.65(a)(1) (1971).
Mr. Davis's role was not solely one of an objective professional. By a personal contract he was to receive three percent of Globe's royalties from the '669 patent and ten percent of any damages recovered from infringers. Since no infringement suits were brought by Globe, Mr. Davis netted only $ 300 from the arrangement, but its existence is relevant to the issue of intent. It is also clear that he was well informed concerning Globe's efforts to develop tape sales and patent protection, for he visited Taiwan and was in touch by written communications and personal contact with Larry Hwang with whom he conferred both abroad and in this country. Mr. Hwang did not testify and his whereabouts is unknown to the parties.
Thus plaintiffs have established by clear, convincing and unequivocable evidence all elements of inequitable conduct before the Patent Office. There is unrefuted proof of Mr. Davis's gross negligence and the Court need not proceed beyond this finding to draw the requisite inferences of specific intent or knowledge as urged. Gross negligence is sufficient to establish the required intent on Mr. Davis's part. An attorney who knows, or should have known, that there are withheld references that would be material to an examiner's consideration, and fails to disclose them barring any explanation -- wholly lacking here -- evidences an intent to mislead the Patent Office. See Driscoll v. Cebalo, 731 F.2d 878, 885 (Fed. Cir. 1984); J.P. Stevens & Co., supra, 747 F.2d at 1560.
While such inequitable conduct vitiated patent '669, see J.P. Stevens & Co., supra, that issue is moot because the patent has been dedicated to the public. Plaintiffs' claim is, as indicated, now only for attorney fees under 35 U.S.C. § 285 (1982), which provides: "The Court in exceptional cases may award reasonable attorney fees to the prevailing party." In short, award of attorney fees is not automatic once inequitable conduct is shown in the course of patent litigation. The Court is still called on to exercise its discretion and may only award attorney fees in exceptional cases. See Rohm & Haas Co. v. Crystal Chemical Co., 736 F.2d 688, 690-93 (Fed. Cir. 1984).
What constitutes an exceptional case is far from precise, but in this instance plaintiffs have not shown the necessary ingredient of an exceptional case in any conceivable respect.
Neither the conduct itself nor its commercial effect warrants an award of the nature suggested here. In exercising its discretion to refuse any attorney fee award, the Court has considered the following factors and circumstances, each clearly established in the record:
(1) Validity of the '669 patent was not affected by nondisclosure.
(2) Plaintiffs were not contestants for the patent in the Patent Office.
(3) Plaintiffs were unable to establish any commercial injury from the alleged unfair competition fostered by Globe's publicizing its patent.
(4) Globe never sued plaintiffs alleging infringement in the years from 1979 until January, 1985, when suit was filed.
(5) Plaintiffs delayed bringing any action challenging the patent, although they must have known there had been a failure to disclose.
(6) This delay has left uncertainties as to where responsibility for the conduct primarily rests.
(7) There is no showing that the inventor withheld or that any withholding of information was with the inventor's knowledge or tacit approval.
(8) Plaintiffs emphasized at the outset other and more serious "inequitable conduct" that they failed to support at trial.
(9) The lump sum fee claimed is undifferentiated as between legal services relating to the prevailing inequitable conduct claim and the extensive time and effort of counsel on other patent and commercial claims which failed and were abandoned. Moreover, no proof of reasonableness was furnished to the Court.
Judgment shall be entered for defendants and the complaints dismissed with prejudice. Each party shall bear its own costs.