UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN SELF-CLEANING LITTER
`BOXES AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-625
`
`DENYING APPLICA CONSUMER PRODUCTS, INC.’S AND
`WATERS RESEARCH CORPORATION’S MOTION FOR
`SUMMARY DETERMINATION THAT U.S. PATENT NO. RE
`36,847 IS NOT UNENFORCEABLE DUE TO INEQUITABLE
`CONDUCT
`
`(August 1 1,2008)
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`On July 3,2008, respondents OurPet’s Company and Lucky Litter LLC (collectively
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`“Respondents”) moved for summary determination that U.S. Patent No. RE 36,847 (“the ‘847
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`patent”) is unenforceable due to inequitable conduct. (Motion Docket No. 625-054.) On July 3,
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`2008 complainants Applica Consumer Products, Inc. and Waters Research Corporation
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`(collectively “Complainants”) moved for summary determination that the ‘847 patent is not
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`unenforceable due to inequitable conduct. (Motion Docket No. 625-047.) Complainants filed a
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`response opposing Respondents’ motion, and Respondents filed a response opposing
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`Complainants, motion. The Commission Investigative Staff (“Staff ’) filed a response opposing
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`Complainants’ motion. For the reasons that follow, both motions are DENIED.
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`Pursuant to Commission Rule 2 10.18, summary determination “ ... shall be rendered if
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`pleadings and any depositions, answers to interrogatories, and admissions on file, together with
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`the affidavits, if any, show that there is no genuine issue as to any material fact and that the
`moving party is entitled to a summary determination as a matter of law.” 19 C.F.R. 6 2 10.1 8(b);
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`see also DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 13 14, 1322 (Fed. Cir. 2001); Wenger
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`Mfg., Inc. v. Coating Machinery Systems, Inc., 239 F.3d 1225, 1231 (Fed. Cir. 2001). The
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`evidence “must be viewed in the light most favorable to the party opposing the motion . . . with
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`doubt resolved in favor of the nonmovant.” Crown Operations Int ’I, Ltd. v. Solutia, Inc., 289
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`F.3d 1367, 1375 (Fed. Cir. 2002); see alsoXerox Corp. v. 3Com Corp., 267 F.3d 1361,1364
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`(Fed. Cir. 2001) (“When ruling on a motion for summary judgment, all of the nonmovant’s
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`evidence is to be credited, and all justifiable inferences are to be drawn in the nonmovant’s
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`favor.”). “Issues of fact are genuine only if the evidence is such that a reasonable [fact finder]
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`could return a verdict for the nonmoving party.” Id. at 1375 (quoting Anderson v. Liberty Lobby,
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`Inc., 477 U.S. 242,248 (1 986)). The trier of fact should “assure itself that there is no reasonable
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`version of the facts, on the summary judgment record, whereby the nonmovant could prevail,
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`recognizing that the purpose of summary judgment is not to deprive a litigant of a fair hearing,
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`but to avoid an unnecessary trial.” EMI Group North America, Inc. v. Intel Corp., 157 F.3d 887,
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`891 (Fed. Cir. 1998). “Where an issue as to a material fact cannot be resolved without
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`observation of the demeanor of witnesses in order to evaluate their credibility, summary
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`judgment is not appropriate.” Sandt Technology, Ltd. v. Resco Metal and Plastics Corp., 264
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`F.3d 1344, 1357 (Fed. Cir. 2001) (Dyk, C.J., concurring). “In other words, ‘[slummary judgment
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`is authorized when it is quite clear what the truth is,’ [citations omitted], and the law requires
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`judgment in favor of the movant based upon facts not in genuine dispute.” Paragon Podiatry
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`Laboratory, Inc. v. KLMLaboratories, Inc., 984 F.2d 1182, 1185 (Fed. Cir. 1993).
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`2
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`“Applicants for patents have a duty to prosecute patent applications in the Patent Office
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`with candor, good faith, and honesty. A breach of this du ty... constitutes inequitable conduct.”
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`Honeywell Int ’1 Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982,999 (Fed. Cir. 2007)
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`(citations omitted). In order to prove inequitable conduct, a party must establish that the patent
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`applicant “( 1) made an affirmative misrepresentation of material fact, failed to disclose material
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`information, or submitted false material information, and (2) intended to deceive the U.S. Patent
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`and Trademark Office (‘PTO’).” Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed.
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`Cir. 2007). “Both elements of a conclusion of inequitable conduct, intent and materiality, are
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`questions of fact and must be proven by clear and convincing evidence.” Young v. Lumenis, Inc.,
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`492 F.3d 1336, 1345 (Fed. Cir. 2007). Once threshold levels of materiality and intent are met, a
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`court must weigh the facts and determine whether the applicant’s actions amounted to
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`inequitable conduct:
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`The nondisclosure or misrepresentation must meet threshold levels of both
`materiality and intent. Once the threshold levels of materiality and intent have
`been established, the trial court must weigh materiality and intent to determine
`whether the equities warrant a conclusion that inequitable conduct occurred. The
`more material the information misrepresented or withheld by the applicant, the
`less evidence of intent will be required in order to find inequitable conduct.
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`Honeywell, 488 F.3d at 999 (citations omitted).
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`Because of the intensely factual nature of the inequitable conduct inquiry, the Federal
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`Circuit has warned that a finding of inequitable conduct on summary judgment’ should be rare:
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`Although the intent element of fraud or inequitable conduct may be proven by a
`showing of acts the natural consequences of which were presumably intended by
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`’ “Summary determination under Rule 210.180>) is analogous to summary judgment under Fed. R. Civ. P.
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`56(c).” Certain Endoscopic Probes For Use In Argon Plasma Coagulation Systems, 337-TA-569, Order No. 20
`(May 2 1,2007).
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`the actor, this requires the factfinder to evaluate all the facts and circumstances in
`each case. Such an evaluation is rarely enabled in summary proceedings.
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`KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1577 (Fed. Cir. 1985) (citation
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`omitted); see also Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988)
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`(“A summary judgment that a reputable attorney has been guilty of inequitable conduct, over his
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`denials, ought to be, and can properly be, rare indeed.”)
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`I.
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`Respondents’ Motion
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`Respondents’ inequitable conduct argument centers around the prosecution of the ‘847
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`patent and the prosecution of another Applica patent, U.S. Patent No. 6,082,302 (“the ‘302
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`patent”). Respondents argue that Applica failed to disclose the prosecution of the ‘302 patent to
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`the examiner during the prosecution of the ‘847 patent. Respondents assert that Applica took an
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`inconsistent position regarding the ‘847 patent during the ‘302 patent prosecution.
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`The statement on which OurPets focuses most relates to the “manual operation mode”
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`and “manual operation position” limitations of asserted claims 27 and 33, respectively. The
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`statement is as follows:
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`Unlike the prior art automated litter box disclosed in the Waters patent, the
`present Applicants have recognized that a mechanically-operated litter box should
`be both automated and capable of operation in response to human intervention.
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`(‘302 Patent File History, Feb. 8,2000 Response to Office Action at 4.)
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`OurPets argues that this statement demonstrates that Applica represented in the ‘302
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`patent prosecution that the ‘ 847 specification does not disclose a litter box capable of operation
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`in response to human intervention. According to OurPets, this is inconsistent with
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`Complainants’ position in the prosecution of the ‘847 patent in which they asserted that the
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`4
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`claims cover a litter box capable of operation in response to human intervention. OurPets argues
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`that the failure to inform the examiner about the ‘302 patent prosecution and the inconsistent
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`position taken in its prosecution was material, and was done with an intent to deceive. (See Mot.
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`at 18-22.)
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`In Order No. 27, I addressed the issue of whether or not the statements made during the
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`‘302 patent prosecution were inconsistent with the ‘847 patent specification. (See generally
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`Order No. 27.) I concluded that there was a genuine dispute of material facts, to wit: whether or
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`not the positions were “clearly inconsistent.” (Id. at 6.) I find, too, that there is a genuine dispute
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`of material fact as to whether or not such statements were material to the patentability of the ‘847
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`patent claims. See Symantec Corp. v. Computer Associates Int ’1, Inc., 522 F.3d 1279, 1297 (Fed.
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`Cir. 2008) (“Information is material when ‘a reasonable examiner would consider it important in
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`deciding whether to allow the application to issue as a patent.”’ (citation omitted)). Based on
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`the foregoing, Respondents’ motion for summary determination is denied.
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`11.
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`Complainants’ Motion
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`A. Materiality
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`Complainants raise several arguments asserting why the ‘302 patent prosecution was not
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`material to the ‘847 patent prosecution. Complainants argue that: (1) the ‘302 patent
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`prosecution can have no legal impact on the ‘847 patent claims; (2) the full ‘847 patent
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`disclosure was before the examiner; and (3) the statements made during the ‘302 patent
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`prosecution were not inconsistent with the ‘847 prosecution. (Mot. at 10-21 .) Respondents
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`argue that the failure to disclose the ‘302 patent prosecution was material. (Respondents’ Resp.
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`at 15-24.)
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`5
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`Complainants’ support for its first argument comes from case law relating to the use of
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`the prosecution history of an unrelated patent to construe the claims of another patent. (Mot. at
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`1 1-12.) Specifically, Complainants cite to cases finding that the prosecution history from an
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`unrelated patent cannot be used to construe patent claims. See Pfizer, Inc. v. Ranbaxy Labs, Ltd.,
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`457 F.3d 1284, 1290 (Fed. Cir. 2006) (“[Sltatements made during prosecution of the later,
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`unrelated ‘995 patent cannot be used to interpret claims of the ‘893 patent.”); Goldenberg v.
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`Cytogen, Inc., 373 F.3d 1 158, 1 168 (Fed. Cir. 2004) (“Absent a formal relationship or
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`incorporation during prosecution, the new-matter content of the ‘744 patent is not available to
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`construe the claims of the ‘559 patent, and the district court erred in relying on them.”)
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`Complainants argue that this case law demonstrates that the statements from the ‘302 patent
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`prosecution have no effect on the scope of the ‘847 patent claims, thus rendering the ‘302 patent
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`prosecution immaterial. (Mot. at 11-12.)
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`While Complainants’ legal argument may be relevant to my ultimate determination on the
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`issue of inequitable conduct, summary determination is still not appropriate due to the myriad
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`factual disputes left to be resolved. After those factual issues are resolved at hearing, I will
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`consider the relevant legal arguments while reaching a conclusion regarding whether or not the
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`‘847 patent is unenforceable due to inequitable conduct.
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`Complainants’ also allege that there can be no inequitable conduct because the examiner
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`had before him the full ‘847 patent disclosure. As Complainants state:
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`Here, arguments during the prosecution of the Applica ‘302 Patent about what the
`Waters ‘847 Patent discloses or does not disclose cannot give rise to an
`inequitable conduct claim regarding the Waters ‘847 Patent because the Waters
`‘847 Patent disclosure was obviously disclosed to and considered by the patent
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`6
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`examiner during the reissue proceedings that lead to the issuance of the Waters ‘847
`Patent.
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`(Mot. at 13 .)
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`Regarding the Complainants’ second argument, I find more persuasive the argument of
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`Respondents and Staff that the mere fact that the examiner had the ‘847 patent in front of him
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`does not entitle Complainants to summary determination. The Complainants’ argument misses
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`the real dispute between the parties, which is whether or not the statements from the ‘302 patent
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`prosecution were material to the patentability of the ‘847 patent claims. The fact that the
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`examiner had the ‘847 patent disclosure in front of him does not resolve the issue of whether or
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`not there was a duty to inform the examiner about the concurrent ‘302 patent prosecution and the
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`allegedly inconsistent statements made in connection with that prosecution.
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`I have already addressed the complainants’ third argument in Section I, supra, and in
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`Order No. 27. For all the same reasons, I find that there is a genuine dispute of material fact
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`regarding whether or not the positions taken by the Complainants in prosecuting the ‘302 patent
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`were inconsistent with the positions taken in prosecuting the ‘847 patent.*
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`B.
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`Intent
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`Complainants argue that no intent to deceive can be inferred from the failure to notify the
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`examiner of the ongoing ‘302 patent prosecution. Respondents dispute this fact, pointing to the
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`testimony of Applica’s Executive Vice President at that time as evidence of Applica’s alleged
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`motive to deceive the Patent Office. (See Respondents’ Resp. at 24-26.) Specifically,
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`2 I note that the Staff raises a factual issue regarding the ownership and control of the ‘847 patent. (See
`Staff Resp. at 3-4.) This is another factual issue that must be resolved at the hearing in order to for me to decide the
`issue of inequitable conduct.
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`7
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`Respondents contend that Applica’s motive was to have two opportunities to obtain broad patent
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`coverage on claims relating to manual operation. (Id. at 26.)
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`Intent need not be proven by direct evidence. Bruno Indep. Living Aids, Inc. v. Acorn
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`Mobility Sews., Ltd, 394 F.3d 1348, 1354 (Fed. Cir. 2005). “Rather, in the absence of a credible
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`explanation, intent to deceive is generally inferred from the facts and circumstances surrounding
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`a knowing failure to disclose material information.” Id. An intent to deceive may be inferred
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`from a failure to offer a credible explanation regarding a non-disclosure. Id.
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`Intent to deceive focuses on the state of mind of the persons involved, and is thus a highly
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`factual matter not suited for resolution by summary determination. See Copelands ’ Enter., Inc. v.
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`CNV, Inc., 945 F.2d 1563, 1567 (Fed. Cir. 1991) (“As a general rule, the factual question of
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`intent is particularly unsuited to disposition on summary judgment.”); KangaROOS, 778 F.2d at
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`1576 (“Intent to mislead or deceive is a factual issue that, if contested, is not readily determined
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`within the confines of Fed.R.Civ.Proc. 56.”)
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`Respondents dispute Complainants’ argument that the facts do not support the finding of
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`an intent to deceive. Respondents have asserted an intent on the part of Applica to deceive the
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`Patent Office, and support such assertion with deposition testimony. Because an intent to
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`deceive need not be proven through direct evidence, and because of the highly factual nature of
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`this inquiry, I find that Respondents have raised a genuine issue of material fact as to whether an
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`intent to deceive the Patent Office existed.
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`8
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`Motion Nos. 625-047 and 625-054 are both
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`ORDER
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`SO ORDERED.
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`9
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`

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`IN THE MATTER OF CERTAIN SELF-CLEANING
`LITTER BOXES AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-625
`
`CERTIFICATE OF SERVICE
`
`I, Marilyn R. Abbott, hereby certify that the attached ORDER was served upon Kevin G. Baer,
`Esq., Commission Investigative Attorneys, and the following parties via first class mail and air
`mail where necessary on August 11,
`2008.
`
`U.S. International Trade Commission
`500 E Street, SW, Room 112A
`Washington, D.C. 20436
`
`COMPLAINANTS APPLICA INCORPORATED, APPLICA
`CONSUMER PRODUCTS, INC,:
`
`Jeffrey D. Mills, Esq.
`BAKER BOTTS, LLP
`1500 San Jacinto Center
`98 San Jacinto Blvd.
`Austin, TX 7870 1-4078
`
`COMPLAINANT WATERS RESEARCH COMPANY:
`
`Vance L. Liebman, Esq.
`FUNKHOUSER VEGOSEN LIEBMAN & DUNN, LTD.
`55 West Monroe, Suite 2300
`Chicago, IL 60603
`
`RESPONDENT DOSKOCIL MANUFACTURING CO., INC.:
`
`Roy William Hardin, Esq.
`M. Scott Fuller, Esq.
`LOCKE LORD BISSELL & LIDDELL, LLP
`2200 Ross Avenue, Suite 2200
`Dallas, Texas 75201-6776
`
`

`
`IN THE MATTER OF CERTAIN SELF-CLEANING
`LITTER BOXES AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-625
`
`CERTIFICATE OF SERVICE - PAGE 2
`
`RESPONDENT OURPET’S COMPANY:
`
`Paul V. Storm, Esq.
`STORM LLP
`90 1 Main Street, Suite 7 100
`Dallas, Texas 75202
`
`RESPONDENT LUCKY LITTER, LLC.
`
`Eric C. Cohen, Esq.
`Carolyn M. Passen, Esq.
`Jeremy C Daniel, Esq.
`KATTEN MUCHIN ROSENMAN, LLP
`525 West Monroe Street
`Chicago, IL 60661
`
`David P. Sanders, Esq.
`Justin L. Krieger, Esq.
`KATTEN MUCHIN ROSENMAN, LLP
`1025 Thomas Jefferson St., NW
`East Lobby, Suite 700
`Washington, DC 20007-5201
`
`

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`IN THE MATTER OF CERTAIN SELF-CLEANING
`LITTER BOXES AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-625
`
`CERTIFICATE OF SERVICE - PAGE 3
`
`PUBLIC MAILING LIST
`
`Sherry Robinson
`LEXIS - NEXIS
`8891 Gander Creek Drive
`Miamisburg, OH 45342
`
`Kenneth Clair
`Thomson West
`1 100 Thirteen Street, NW, Suite 200
`Washington, D.C. 20005