Everlight Electronics Co., Ltd v. Nichia Corporation ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
EVERLIGHT ELECTRONICS CO., LTD,
Plaintiff-Cross-Appellant
EMCORE CORPORATION,
Plaintiff
EVERLIGHT AMERICAS, INC.,
Counterclaim Defendant-Cross-Appellant
v.
NICHIA CORPORATION, NICHIA AMERICA
CORPORATION,
Defendants-Appellants
______________________
2016-1577, 2016-1611
______________________
Appeals from the United States District Court for the
Eastern District of Michigan in No. 4:12-cv-11758-GAD-
MKM, Judge Gershwin A. Drain.
______________________
Decided: January 4, 2018
______________________
RAYMOND N. NIMROD, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for plaintiff-cross-
appellant and counterclaim defendant-cross-appellant.
2 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
Also represented by RICHARD WOLTER ERWINE, ANASTASIA
M. FERNANDS, MATTHEW A. TRAUPMAN.
KENNETH A. GALLO, Paul, Weiss, Rifkind, Wharton &
Garrison LLP, Washington, DC, argued for defendants-
appellants. Also represented by DIANE GAYLOR; DANIEL
KLEIN, CATHERINE NYARADY, PETER SANDEL, New York,
NY.
______________________
Before WALLACH, CHEN and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
Everlight brought a declaratory judgment suit against
Nichia seeking a determination of non-infringement,
invalidity, or unenforceability of U.S. Patent Nos.
5,998,925 (the ’925 patent) and 7,531,960 (the ’960 patent)
(together, the Patents-in-Suit). Nichia filed counterclaims
for infringement against Everlight. In April 2015, a jury
returned a verdict that claims 2, 3 and 5 of the ’925 pa-
tent and claims 2, 14, and 19 of the ’960 patent 1 were
invalid due to obviousness. In June 2015, the district
court held a bench trial and determined that Everlight
failed to establish its inequitable conduct claim. See
Everlight Elecs. Co. v. Nichia Corp., 143 F. Supp. 3d 644,
646 (E.D. Mi. 2015); J.A. 65−66 (Final Judgment). Fol-
lowing the trials, Nichia moved for judgment as a matter
of law (JMOL) of validity and/or a new trial, which the
district court denied, holding that substantial evidence
supported the jury verdict of invalidity. See Everlight
Elecs. Co. v. Nichia Corp., No. 12-cv-11758, 2016 WL
8232553, at *1 (E.D. Mi. Jan. 19, 2016); J.A. 34−35 (Final
Judgment). Nichia appeals this ruling. Everlight cross-
1Nichia does not appeal the verdict with respect to
claims 14 and 19 of the ’960 patent. See Appellant’s Br.
1–2.
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 3
appeals the ruling of no inequitable conduct. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Because
the jury verdict is supported by substantial evidence, and
because the district court did not err in denying Ever-
light’s inequitable conduct claim, we affirm on all
grounds.
DISCUSSION
I. The Jury Verdict of Invalidity
We review a denial of JMOL under the law of the re-
gional circuit. Comcast IP Holdings I LLC v. Sprint
Commc’ns Co., L.P., 850 F.3d 1302, 1309 (Fed. Cir. 2017).
“[The Sixth Circuit] review[s] de novo a district court’s
denial of a motion for judgment as a matter of law.”
Imwalle v. Reliance Med. Prod., Inc., 515 F.3d 531, 543
(6th Cir. 2008). “This court reviews a jury’s conclusions
on obviousness de novo, and the underlying findings of
fact, whether explicit or implicit in the verdict, for sub-
stantial evidence.” Pregis Corp. v. Kappos, 700 F.3d 1348,
1354 (Fed. Cir. 2012). Substantial evidence is “such
relevant evidence as a reasonable mind might accept as
adequate to support a conclusion.” Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938).
A patent claim is unpatentable when “the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a). 2 Obvi-
2 Congress amended § 103 when it passed the Leahy-
Smith America Invents Act (“AIA”). Pub. L. No. 112-29,
§ 3(c), 125 Stat. 284, 287 (2011). However, because the
application that led to the Patents-in-Suit never con-
tained (1) a claim having an effective filing date on or
after March 16, 2013 or (2) a reference under 35 U.S.C.
4 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
ousness “is a question of law based on underlying findings
of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). The underlying factual findings include (1) “the
scope and content of the prior art,” (2) “differences be-
tween the prior art and the claims at issue,” (3) “the level
of ordinary skill in the pertinent art,” and (4) the presence
of secondary considerations of nonobviousness such “as
commercial success, long felt but unsolved needs, failure
of others,” and unexpected results. Graham v. John Deere
Co. of Kan. City, 383 U.S. 1, 17 (1966); see United States v.
Adams, 383 U.S. 39, 50–52 (1966).
A. The ’925 Patent
Both Patents-in-Suit are directed to the combination
of a blue light-emitting diode (LED) and a blue-to-yellow
phosphor—a chemical which absorbs one color of light and
emits another—to produce a white LED. Claim 2 is
representative of the ’925 patent claims and can be writ-
ten in independent form as follows:
2. A light emitting device, comprising a light emit-
ting component and a phosphor capable of absorb-
ing a part of light emitted by the light emitting
component and emitting light of wavelength dif-
ferent from that of the absorbed light;
wherein said light emitting component comprises
a nitride compound semiconductor represented by
the formula: IniGajAlkN where 0≤i, 0≤j, 0≤k and
i+j+k=1; and
wherein the phosphor used contains an yttrium-
aluminum-garnet fluorescent material containing
Y and Al.
§§ 120, 121, or 365(c) to any patent or application that
ever contained such a claim, the pre-AIA § 103 applies.
See id. § 3(n)(1), 125 Stat. at 293.
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 5
’925 patent col. 31, ll. 25–40. At the jury trial, Everlight
presented Japanese Patent Application No. H05-152609
(Tadatsu) and U.S. Patent No. 6,600,175 (Baretz) to
demonstrate that the use of phosphors with blue LEDs to
alter the light profile emitted by the LED was known in
the art. Tadatsu discloses use of a phosphor with a galli-
um nitride blue LED to achieve “conversion of a light of a
number of wavelengths” or “color correction of blue LED.”
J.A. 19827–28. Baretz discloses a “monochromatic blue or
UV” LED which is “down-converted to white light by
packaging the diode with . . . inorganic fluorescers and
phosphors in a polymeric matrix.” J.A. 19759; see also
J.A. 19768 col. 9, ll. 9–29 (disclosing use of phosphors to
produce white light from a gallium nitride blue LED).
In conjunction, Everlight presented Mary V. Hoffman,
Improved color rendition in high pressure mercury vapor
lamps, 6 J. Illuminating Engineering Soc’y 89 (1977)
(Hoffman), and U.S. Patent No. 4,727,283 (Philips) to
demonstrate that the use of yttrium-aluminum-garnet
(YAG) phosphors to downconvert blue light to yellow light
was known in the context of mercury vapor lamps. Hoff-
man discloses use of a YAG phosphor to downconvert blue
light with a wavelength of 436nm to yellow light with a
wavelength of 560nm. J.A. 20408–09. Philips discloses
use of a YAG phosphor to absorb “radiation having a
wavelength between about 400 and 480 nm and convert it
into radiation in a wide emission band . . . with a maxi-
mum [wavelength] at about 560 nm.” J.A. 19785 col. 2, ll.
51–55. Based on the above references and expert testi-
mony from both parties, the jury rendered its verdict of
obviousness.
The district court determined that the jury verdict
was supported by substantial evidence because (1) the
prior art demonstrated that both gallium nitride blue
LEDs and YAG phosphors were known in the art;
(2) evidence was presented at trial that a person of ordi-
nary skill in the art would have desired to combine a blue-
6 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
to-yellow phosphor with a blue LED to produce a white
LED; and (3) a reasonable jury could have found second-
ary considerations to fail to weigh in favor of patentabil-
ity. See Everlight, 2016 WL 8232553, at *8−9. In
particular, the court noted evidence presented at trial
that blue LEDs were “well known in the art,” that “it was
known that blue LEDs could be combined with phosphors
to change the color of the light emitted by the LED,” that
“it has been known for over 300 years that mixing blue
and yellow light results in white light,” and that “YAG
was used in conjunction with blue light sources, including
cathode ray tubes, blue lasers and blue mercury vapor
lamps, to make white light.” Id. at *9. Thus, the court
concluded that substantial evidence supported the conclu-
sion that all of the elements of claims 2, 3, and 5 of the
’925 patent were present in the prior art.
As to motivation to combine, the district court noted
that evidence was presented to the jury that (1) there was
a large market demand for white LEDs; (2) the gallium
nitride blue LED was a revolutionary breakthrough which
was necessary to the development of a white LED;
(3) testimony from both parties indicated that the inven-
tion of the blue LED naturally led to the use of a blue-to-
yellow phosphor to produce a white LED; (4) there were a
limited number of blue-to-yellow phosphors; and
(5) YAG’s properties were well-known to skilled artisans
at the time of the alleged invention. Id. at *10. Thus, the
district court found that a reasonable jury could have
concluded that the alleged invention was no more than
the “combination of familiar elements according to known
methods” to “yield predictable results.” Id. (citing KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
On secondary considerations, the district court noted
that although Nichia had presented evidence of commer-
cial success, a reasonable jury could have found that
evidence to be undermined by credible doubts raised at
trial as to the nexus between the patented features and
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 7
the success. See Pregis, 700 F.3d at 1356 (“The lack of
nexus between the claimed subject matter and the com-
mercial success or purportedly copied features . . . renders
[] proffered objective evidence uninformative to the obvi-
ousness determination.”). Furthermore, the court noted,
Everlight had presented substantial evidence of simulta-
neous invention of the alleged invention by Osram, a
competitor of Nichia. Everlight, 2016 WL 8232553, at
*12−13 (citing Geo. M. Martin Co. v. All. Mach. Sys. Int’l
LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010)). Thus, a
reasonable jury could have found that secondary consid-
erations did not weigh in favor of nonobviousness.
We agree with the district court that substantial evi-
dence supports the jury verdict of invalidity. Every
element of the claimed invention was separately present
in the prior art, and the jury heard evidence that a person
of ordinary skill at the time of invention would have
desired to combine a blue-to-yellow phosphor with a blue
LED to produce white light, and would have been aware
of YAG as a useful blue-to-yellow phosphor. This evi-
dence is sufficient for a reasonable jury to conclude that
the asserted claims would have been obvious. As to
secondary considerations, the jury heard evidence which
weighed in both directions and evidence attacking the
credibility of the various asserted secondary considera-
tions. For example, the jury heard evidence of independ-
ent development by Osram of a white LED “within weeks
of Nichia.” Id. at *12; see J.A. 17817−19, 20353−55.
Furthermore, the jury heard evidence undermining
whether Nichia’s evidence of commercial success and
contemporary praise were actually due to the claimed
invention and whether Nichia’s expert was unbiased. See
Everlight, 2016 WL 8232553, at *12−13; see also J.A.
18019, 21808, 22447−49 (awards and licenses that cover
products beyond the inventions in the Patents-in-Suit). A
reasonable jury could have drawn a variety of conclusions
regarding the strength and credibility of the evidence. We
8 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
will not reweigh that evidence here. See In re Inland
Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001); cf. Roth-
man v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009)
(“Because the district court duly instructed the jury to
consider and weigh evidence of secondary considerations,
this court sees no reason to disturb the jury’s determina-
tion that this important factual evidence did not outweigh
its assessment of obviousness in light of the prior art.”).
Nichia argues before this court that a person of ordi-
nary skill would not have been motivated to combine a
blue LED with a YAG phosphor because (1) the disclosure
of blue LEDs in the prior art focused on a so-called “three-
color” solution in which multiple phosphors produced a
combination of red, green, and blue light to achieve white
light rather than the “two-color” solution of the ’925
patent (i.e. blue + yellow), Appellant’s Br. 30−33; (2) a
person of ordinary skill would not have recognized useful
properties of YAG phosphors such as moisture resistance,
id. at 30−33, 47−48; and (3) the prior art discouraged use
of YAG with a blue light source because of poor color
rendering, id. at 43−47. We disagree on all points.
First, it is not necessary that the prior art teach a
two-color solution in order for the jury verdict to be sup-
ported by substantial evidence. 3 It is sufficient that the
prior art recognize that blue LEDs can be combined with
phosphors to produce varying light profiles, 4 that combi-
3 Although we do not reach this point, we recognize
that both the district court and Everlight pointed to
statements in the prior art which suggest a two-color
solution. See, e.g., J.A. 18524−27; J.A. 19759 col. 9, ll.
45−50, col. 10, l. 66 − col. 11, l. 6; see also ’925 patent col.
1, l. 56 − col. 2, l. 7 (describing prior art).
4 We recognize that Everlight’s expert made arguably
inaccurate statements at trial regarding whether Baretz
and Tadatsu disclose a blue-to-yellow phosphor. See J.A.
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 9
nation with a blue-to-yellow phosphor would yield white
light, and that a strong market demand existed for a
white LED. See Everlight, 2016 WL 8232553, at *9 (“[I]t
was known that blue LEDs could be combined with phos-
phors to change the color of light emitted by the LED.”
(citing trial exhibits and transcript)), id. (“[I]t has been
known for over 300 years that mixing blue and yellow
light results in white light (citing trial transcript)), id. at
*10 (“[It was an] undisputed fact that there was a large
market demand for white LEDs. . . . Nichia’s expert
conceded [that] the development of a commercially viable
blue LED ‘gave everyone the inventive to move forward to
create a simple blue plus yellow LED that emits white
light.’” (quoting trial transcript)).
We further disagree that a person of ordinary skill
needed to be aware of the moisture-resistant properties of
YAG to satisfy the motivation to combine requirement. It
is sufficient to support the jury verdict that a person of
ordinary skill would desire to combine a blue-to-yellow
phosphor with a blue LED and that YAG was one of a
limited number of available blue-to-yellow phosphors. See
KSR, 550 U.S. at 421 (“When there is a design need . . . to
solve a problem and there are a finite number of identi-
fied, predictable solutions, a person of ordinary skill in
the art has good reason to pursue the known options
within his or her technical grasp.”). Given that signifi-
cant motivation to use a YAG phosphor, it does not matter
17581−82 (stating that Baretz discloses using blue light
and yellow phosphor to achieve white light); see also J.A.
17600−08 (making similar statements with respect to
Tadatsu). Because other evidence before the jury was
sufficient to support a finding of obviousness, and because
Nichia had the opportunity to cross-examine Everlight’s
expert, we decline to reweigh the evidence presented to
the jury.
10 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
that YAG may provide properties unappreciated at the
time of invention which are superior to other blue-to-
yellow phosphors; even if the prior art did not identify all
of the problems identified by Nichia in the ’925 patent’s
specification, we have never required a party to prove
that all possible problems solved by an invention were
known in the prior art. Proof of one motivation to com-
bine, as shown here, is sufficient. 5
We also disagree that the statements in the prior art
that YAG phosphors provided poor color rendering taught
away from the claimed invention. 6 See Appellant’s Br. 43
(quoting J.A. 19786 (stating YAG “is detrimental to the
colour rendition properties”), 20410 (“The emission con-
tribution of YAG . . . would definitely result in a lower
5Nichia also does not contest that Baretz sought to
solve the problem of general degradation by elements
such as heat and light, see Appellant’s Br. 30–31; see also
Baretz col. 5 ll. 2−8, col. 9 ll. 65−66 (discussing degrada-
tion), nor that YAG was known in the prior art to be
resistant to at least intense light degradation, see Appel-
lant’s Br. 12 (“YAG had previously been used in cathode
ray tubes but its resistance to light and moisture had not
been appreciated because, unlike LEDs, cathode ray tubes
are hermitically sealed against moisture.”). “[A]ny need or
problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a
reason for combining the elements in the manner
claimed.” KSR, 550 U.S. 398, 420 (2007) (emphasis
added).
6 Nichia makes the same arguments for color render-
ing with respect to lack of reasonable expectation of
success and unrecognized problem in the field as with the
moisture resistant properties of YAG. See Appellant’s Br.
47−48. For the reasons stated above, we find these argu-
ments unpersuasive.
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 11
CRI [color rendering index].”)). Teaching away is a ques-
tion of fact and requires a showing that a skilled artisan
“would be discouraged from following the path set out in
the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). A person of
ordinary skill desiring to create a white LED could plau-
sibly look to the cited prior art references despite their
statements on color rendition because they aided in the
creation of a white LED, which was a highly desired goal.
Without additional evidence, the jury could reasonably
have found that the color rendition properties of the prior
art would not have taught away from the creation of a
white LED.
B. The ’960 Patent
The ’960 patent is directed to a similar LED/phosphor
system as the ’925 patent without the YAG phosphor
limitation. Instead, the ’960 patent teaches that the
phosphor is concentrated near the surface of the LED chip
to minimize environmental degradation. Claim 2 of the
’960 patent, the only claim at issue in this appeal, can be
written in independent form as follows:
2. A light emitting device which comprises;
a light emitting component having a gallium ni-
tride based semiconductor; and
a resin containing at least one phosphor capable of
absorbing a part of a first light of blue color emit-
ting from the light emitting component and emit-
ting a second light of wavelength different from
that of the absorbed first light, said emission of
the second light emitted from at least one fluores-
cent material and a light of an unabsorbed first
light passes through said fluorescent material
from said light emitting component, said unab-
12 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
sorbed first light and said second light are capable
of overlapping each other to make white light;
wherein a concentration of the phosphor increases
from the surface of a resin that contains the phos-
phor toward the light emitting component.
’960 patent col. 30, l. 65 – col. 31, l. 19. In addition to
Baretz and Tadatsu, Everlight presented Japanese Patent
Publication No. 52-40959 (JP-959) to demonstrate that
the fabrication of resins with a phosphor gradient was
known in the prior art. JP-959 describes a process for
curing phosphor-infused resins in which gravity is al-
lowed to concentrate the phosphor. Figure 1C of that
reference shows that when the resin/chip combination is
placed with the chip below the resin, the phosphor con-
centrates on the surface of the chip. The reference further
teaches that the phosphor within the resin “settles down-
ward” and “is concentrated.” J.A. 19881–82. Based on
JP-959, Baretz, Tadatsu, and expert testimony from both
parties, the jury rendered its verdict of obviousness.
The district court determined that the jury verdict
was supported by substantial evidence because JP-959
disclosed a phosphor gradient in Figure 1C and taught
that the phosphor “settles downward” and “is concentrat-
ed.” With regard to motivation to combine, the district
court found that the jury had heard evidence that Baretz
discussed various configurations of the phosphor to avoid
degradation, and that there were a limited number of
ways to disperse the phosphor within the resin. See
Everlight, 2016 WL 8232553, at *13.
On appeal, Nichia argues that JP-959 did not in fact
disclose the gradient of claim 2 of the ’960 patent because
Figure 1C was only an intermediate step, and the goal of
JP-959 was to concentrate the phosphor on the outer
surface of the resin, rather than the inner surface. We
agree with Nichia that a person of ordinary skill following
the steps of the JP-959 reference to completion would not
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 13
produce the ’960 patent’s claimed gradient. However, we
conclude that a reasonable jury could find that an artisan
of ordinary creativity would be drawn to use the teachings
of the JP-959 patent, including that the phosphor “settles
downward” and “is concentrated,” and the teachings of
Baretz that the phosphor should be configured away from
the surface to avoid degradation to produce the phosphor
gradient of the ’960 patent.
Nichia also argues that a skilled artisan would not be
motivated to combine Baretz and JP-959 because Baretz’s
teachings to avoid “degradation” are insufficient guidance
and the specific problem which the phosphor gradient
solved, degradation due to moisture, was not identified in
the prior art. See Appellant’s Br. 57−59. We disagree.
Baretz teaches that the phosphor should be deployed
within the LED assembly in a way that it is “not subject
to abrasion, or degradation,” and gives several examples
of the ways in which it can be so deployed. J.A. 19768 col.
9, l. 51 – col. 10, l. 19. A reasonable jury could conclude
that an artisan of ordinary creativity would assess the
phosphor location according to the guidance of Baretz and
deploy it near the surface of the LED chip according to the
teachings of JP-959. 7
II. Inequitable Conduct
We review the district court’s factual findings regard-
ing inequitable conduct for clear error, and the ultimate
7 Nichia also reiterates its arguments regarding the
jury’s alleged failure to weigh its secondary consideration
evidence. We reject these arguments for the same reasons
stated above for the ’960 patent. Because we conclude
that the jury verdict of invalidity is supported by substan-
tial evidence, we decline to address Everlight’s argument
that the term “white light” in claim 2 of the ’960 patent is
indefinite.
14 EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION
decision as to inequitable conduct for abuse of discretion.
Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d
1357, 1365 (Fed. Cir. 2008). “If the district court’s inequi-
table conduct determination rests on a clearly erroneous
finding of materiality or intent, it constitutes an abuse of
discretion and must be reversed.” Am. Calcar, Inc. v. Am.
Honda Motor Co., 651 F.3d 1318, 1334 (Fed. Cir. 2011).
Generally, “[t]o prove inequitable conduct, the accused
infringer must provide evidence that the applicant
(1) misrepresented or omitted material information, and
(2) did so with specific intent to deceive the [U.S. Patent
and Trademark Office].” Id. Intent must be shown by
clear and convincing evidence, and must be “the single
most reasonable inference able to be drawn from the
evidence.” Therasense Inc. v. Becton, Dickinson & Co.,
649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc).
Everlight argued before the district court that state-
ments in the ’960 patent specification submitted to the
U.S. Patent and Trademark Office (USPTO) that the
inventors achieved an LED with peak wavelengths “near
600 nm” were intentionally false. J.A. 60–61. The district
court held that Everlight had not shown but-for materiali-
ty because it had not sufficiently questioned the inventors
to establish a record that their statements to the USPTO
were actually false. Everlight, 143 F. Supp. 3d at 658−59.
The district court additionally concluded that Everlight
had not shown specific intent to deceive the USPTO
because the single most reasonable inference to be drawn
from the evidence was that “the inventors should have
been more careful in keeping a record of this information
and documenting their findings.” Id. at 662 (emphasis in
original).
We see no reversible error in the district court’s find-
ing that a mere showing that documents should have been
submitted to the USPTO but have been lost, without a
showing of additional facts probative of intent to deceive,
does not rise to the level of specific intent under this
EVERLIGHT ELECTRONICS CO., LTD v. NICHIA CORPORATION 15
court’s precedent. See Therasense., 649 F.3d at 1290 (“In
a case involving nondisclosure of information, clear and
convincing evidence must show that the applicant made a
deliberate decision to withhold a known material refer-
ence.”) (emphasis in original). Because we agree that the
requisite showing of specific intent is lacking, we need not
reach the issue of but-for materiality. See id. (“To prevail
on a claim of inequitable conduct, the accused infringer
must prove that the patentee acted with the specific
intent to deceive the PTO.”).
CONCLUSION
We have considered all of the parties’ other argu-
ments and find them unconvincing. For the foregoing
reasons, the opinion of the district court is
AFFIRMED
COSTS
No costs.