HTC Beats Wireless Device Patent Claims Due To Inequitable Conduct

September 10, 2012, by Mandour & Associates, APC

 Orange County — An Illinois federal judge on Thursday handed phone manufacturer HTC Corp. a victory over an inventor asserting it infringed his patents for communication methods over wireless devices, ruling that the two patents are unenforceable due to false statements the inventor made.

Intellect Wireless founder Daniel Henderson sued HTC and other phone makers in 2009 alleging infringement of U.S. Patent Numbers 7,266,186 and 7,310,416, respectively titled “Method and apparatus for improved pager receiving and system” and “Method and apparatus for improved personalcommunication devices and system.”

HTC infringed by making and selling wireless portable communication devices that receive and displayeither caller ID information, pictures, videos or multimedia, Henderson claimed.

The phone maker struck back against Henderson’s allegations with claims that the patents in suit are unenforceable due to inequitable conduct.

Judge William T. Hart agreed, saying Henderson submitted several declarations containing false statements to the U.S. Patent and Trademark Office in response to several prior art references. The false statements concerned Henderson’s invention, demonstration, reduction to practice and diligence, he said. The declarations and their contents were clearly intended to overcome the prior art references, the judge said.

None of the false statements in the declarations was ever withdrawn, corrected, or specifically called to the attention of the PTO’s examiners before the patents issued, according to the judge.

“Clear and convincing evidence strongly supports an intent to deceive, rather than mere mistake, as the single most reasonable inference to be drawn from the facts,” Judge Hart said.

The statements that caller ID information and pictures or images were transmitted by wireless or any telephone network at all were false, he said.

“A declaration of invalidity based on inequitable conduct is and should be a rare remedy in a patent infringement action, especially in cases involving only omissions,” the judge said. “However, in this case of affirmative misrepresentations, no countervailing facts exist to excuse or overlook repeated false statements or to withhold the relief sought.”