Not So Sure: Federal Circuit Vacates Summary Judgment of Inequitable Conduct Despite Inventor's 'Smoking Gun' Statement

"During patent prosecution, an inventor wrote to his attorney in the margin of a draft declaration: 'I am not sure it is a good idea to disclose this document.' The district court called this 'a rare example of direct evidence of an intent to defraud.' A magistrate judge agreed. The patent was declared unenforceable for inequitable conduct on summary judgment."

"In Global Tubing LLC v. Tenaris Coiled Tubes LLC, No. 23-1882 (Fed. Cir. Feb. 26, 2026), the Federal Circuit vacated the district court's summary judgment of inequitable conduct and also vacated summary judgment on a related Walker Process antitrust claim, finding genuine disputes of material fact on both."

During patent prosecution, an inventor wrote a marginal note on a draft declaration expressing uncertainty about disclosing a document. The district court characterized this as direct evidence of intent to defraud and declared the patent unenforceable for inequitable conduct via summary judgment. In Global Tubing LLC v. Tenaris Coiled Tubes LLC, the Federal Circuit reversed this decision, vacating the summary judgment on inequitable conduct. The court also vacated a related Walker Process antitrust claim summary judgment. The Federal Circuit determined that genuine disputes of material fact existed regarding both claims, preventing summary judgment resolution.

Read at Patently-O