Before Mayer, Chief Judge, Rich and Michel, Circuit Judges.
The opinion of the court was delivered by: Per Curiam.
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.
Electronic Identification Devices, Ltd., InfoPet Identifications Systems, Inc., n/k/a TraceNet Technologies, Inc., Trovan, Ltd., and Edward Pechacek ("InfoPet") appeal the judgment of the United States District Court for the District of Colorado, Destron/IDI, Inc., v. InfoPet Identification Sys., Inc., Nos. 93-Z-2348 and 94-Z-819 (D. Col. Feb. 9, 1998), which held that misinformation provided by Destron/IDI, Inc. and Hughes Aircraft Co. ("Destron") to the United States Patent and Trademark Office ("PTO") did not result from an intent to deceive the PTO and, therefore, did not constitute inequitable conduct. We affirm.
"Inequitable conduct consists of an `affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.'" Micro Chem., Inc. v. Great Plains Chem. Co., 103 F.3d 1538, 1549, 41 USPQ2d 1238, 1247 (Fed. Cir. 1997) (quoting Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178, 33 USPQ2d 1823, 1826 (Fed. Cir. 1995)). The party "alleging inequitable conduct must prove . . . intent by clear and convincing evidence." Id. Such evidence can be inferred from the actor's conduct and surrounding circumstances. See Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256, 43 USPQ2d 1666, 1668 (Fed. Cir. 1997). The district court's determination of intent is reviewed under a clearly erroneous standard and "will not be disturbed on appeal unless this court has a definite and firm conviction that a mistake has been committed." Molins, 48 F.3d at 1178, 33 USPQ2d at 1827.
This court previously decided that information withheld by Destron from the PTO was material. See Destron/IDI, Inc. v. Electronic Identification Devices, Inc., Nos. 96-1382-1383, -1392-1395 (Fed. Cir. Jul. 24, 1997). We expressed concern with Destron's assertions to the PTO that all of its pre-critical date sales were experimental, as well as Destron's incorrect citation of Imi-Tech Corp. v. Gagliani, 691 F. Supp. 214, 6 USPQ2d 1241 (S.D. Cal. 1986), and remanded to the district court to determine whether these misrepresentations demonstrated an intent to deceive the PTO. After examining extensive testimony and evidence, the district court did not find sufficient proof of an intent to deceive. See Destron/IDI, Inc. v. InfoPet Identification Sys., Inc., Nos. 93-Z-2348 and 94-Z-819 (D. Col. Feb. 9, 1998).
The district court found that Destron's attorney, Earl Hancock, made a good faith effort to disclose pre-critical date sales information to the PTO. Of particular importance were his efforts, upon discovering that the original sales information was inaccurate, to investigate the sales and disclose his findings to the PTO. Although these amended disclosures were also incorrect, the district court found that Hancock divulged the facts to the PTO "as he understood them," (emphasis in original) and "[w]ith good faith and candor, [he] expressly advised the PTO of . . . conflicting evidence" that his investigation revealed. Moreover, the district court found Hancock's testimony to be credible and saw his willingness to abandon the experimental use defense once he became aware of additional pre-critical date sales as undermining an inference that the misinformation was meant to deceive the PTO. Finally, the evidence presented did not convince the district court that anyone else involved in the prosecution was aware of undisclosed sales.
The district court was also satisfied by Hancock's explanation for citing Imi-Tech, which was to provide the PTO with a factually similar citation, and found that InfoPet furnished insufficient evidence that the Imi-Tech citation was intended to deceive the PTO. Moreover, there was no showing that anyone prosecuting the patent was aware of test results revealing higher success rates that were not disclosed to the PTO; therefore, the district court concluded that "there is no clear and convincing evidence that test results were purposefully, willfully or knowingly withheld from the PTO . . . ."
Further, there is no evidence that clearly shows that agents of Destron not involved with the prosecution withheld information with the intent to deceive the PTO. Indeed, the district court specifically held that "[w]hile the evidence shows that Destron was disorganized and that there was poor communication among its agents, there has not been a showing by [InfoPet] by clear and convincing evidence that Destron intentionally attempted to deceive the PTO."
We see nothing to suggest that the finding was clearly erroneous. The district court conducted a thorough review of the facts and testimony related to the material misinformation cited by this court and InfoPet. The lack of evidence pointing to an intent to deceive and the credibility of Destron's witnesses provided the district court with ample justification for its finding. See Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1582, 38 USPQ2d 1665, 1669-70 (Fed. Cir. 1996) ("[D]etermining whether there was an intent to mislead the PTO involved credibility determinations. . . . The district court is best suited to make credibility determinations and we accord such determinations deference."). This is not a case where no explanation, or only self-serving or conclusory accounts, provided the only defense to inequitable conduct charges. Cf. Paragon Podiatry Lab., Inc. v. KLM Lab., Inc., 984 F.2d 1182, 1193, 25 USPQ2d 1561, 1569-70 ...