Judge Sorokin sua sponte bifurcated Rolling Optic’s inequitable conduct defense from the impending jury trial, noting that submitting it to the jury would require consideration of evidence not relevant to anything else before the jury. Judge Sorokin apparently believes the jury will have more than enough on its hands in dealing with the remaining issues in the case, which involves patents covering micro-optic foils that produce a 3-D holographic image, as he also indicated that, while he would not automatically exclude jurors lacking a certain level of education, he would inquire as to potential jurors’ education and interest in learning about the technology. The bifurcation order is Judge Sorokin’s second sua sponte decision in this case; in January, he sua sponte granted summary judgment of definiteness in favor of Crane Security.
Judge Woodlock ruled in Exergen’s favor on the issue of inequitable conduct in connection with its 7,787,938 patent, which relates to measuring a person’s internal temperature externally via the temporal artery. Judge Woodlock had previously found the asserted claims invalid for claiming unpatentable subject matter; following this, both parties initially pressed the court to address inequitable conduct on summary judgment, although Exergen subsequently sought to have the inequitable conduct claims dismissed as moot. Judge Woodlock examined Federal Circuit caselaw on the issue of mootness of inequitable conduct counterclaims on patents that had already been deemed invalid, and determined that such claims are not moot where attorney’s fees are being sought based on the alleged inequitable conduct. Looking to the allegations of inequitable conduct, Judge Woodlock determined that Brooklands had failed to show by clear and convincing evidence that any of the alleged omissions or misrepresentations demonstrated an intent to deceive the PTO. He determined that any inequitable conduct relating to references that were not disclosed during prosecution of a parent application was cured by being affirmatively disclosed during the prosecution of the ‘938 patent. Also, with respect to allegations that the prosecuting attorney had misrepresented positions taken by Exergen as to the claim scope of other Exergen patents in a different litigation, Judge Woodlock found this to be mere attorney argument that did not raise to an intent to deceive because all of the litigation documents were put before the examiner, who is free to reach his own conclusions as to their import.