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[UVAgal4]

Hi.  I am hoping someone can help me with this question.
If a patent was granted a few years ago to company A, and now company B wants an exclusive license for the patent, but they have found some potentially patent-destroying/weakening prior art documents, if company A and/or B does not request reexamination of the patent with the USPTO in order to confirm/modify/annul the patent in light of the prior art documents, are there any consequences if for example another company C finds out that A and B knew about the prior art documents but did not request reexamination?
The prior art was NOT found before the patent was granted.
I know that duty of disclosure is only until the patent is granted, but what about afterwards?
Thanks.

[klaviernista]

I'm no expert in antitrust and patents, but I beleive that the Nobelpharma AB v. Implant Innovations, Inc. 141 F.3d 1059 (Fed. Cir. 1998) (available at http://www.ll.georgetown.edu/Federal/judicial/fed/opinions/96opinions/96-1463.html) contains the answers you seek.

In general, the Nobelpharma case says that a patentee who brings an infringement suit can be stripped of its immunity from the antitrust statues if "the alleged infringer (the antitrust plaintiff) proves (1) that the asserted patent was obtained through known and willful fraud within the meaning of Walker Process Equipment, Inc. v. Food Machinery and Chem. Corp., 382 U.S. 172, 177 (1965); or (2) that the infringement suit was "a mere sham to cover what is actually othing more than an attempt to interfere directly with the business relationships of a competitor," Eastern R.R. Presidents Conference v. Noerr Motor Frieght, Inc., 365 U.S. 127, 144 (1961)."

Regarding (1): the antitrust plaintiff must first prove that the patentee "obtained the patent by knowingly and willfully misrepresenting facts to the [PTO]," i.e., fraud.  382 U.S. at 177. The elements of Walker Process fraud are set forth in Norton v. Curtiss, 433 F.2d 779, 792-94 & n. 12 (CCPA 1970). 

Regarding (2): to prove a "sham" suit, the antitrust plaintiff must prove that the suit was (A) objectively baseless (no reasonable litigant could expect to win) and (B) motivated by a desire to impose anti-competitive injury, as opposed to obtaining a justifiable legal remedy. 

Note that proving fraud and/or a sham litigation only removes the patentee's immnuity from the antitrust statutes.  A substantive antitrust claim must still be proven.

In your case, it would seem that option (1) under the Nobelpharma case would not be available, because the patentee did not know of the prior art during prosecution of the underlying application. It also seems that a case under option (2) would be shakey, because you stated that the prior art potentially only "weakens" the patent.  Your best option would be to obtain a qualified opinion of counsel that finds the claims of the patent invalid as anticipated or obvious.  Once you have that in hand, you could negotiate with the patentee for a reduced or no royalty license.

As for the duty of disclosure, it is well settled that the duty to bring material information to the attention of the PTO ends once the patent issues.  There is also no requirement for a patentee to request reissue or reexamination of any patent they own.

[UVAgal4]

Thank you for this information.  It was very informative.

[daniel_basov@yahoo.com]

There is no duty of disclosure after the patent is granted.  However, if B has discovered some potentially invalidating prior art, it could have records and communications about that prior art and how it affects your patent.  As an exclusive licensee, if it sues C for infringement, those records would come up during litigation, and could present some problems. 

The antitrust claims are often raised in big-stake litigation, but hardly ever proven.  Most do not survive summary judgment phase of any litigation.   In this case, these claims are even weaker than usual. 

One possibly option is to have an independent patent counsel evaluate prior art at issue and render its opinion regarding invalidity.  This opinion could be potentially helpful against antitrust claims that the asserted patent was known to be invalid and was asserted to inflict an antitrust injury.

-Daniel
http://srblaw.net/content/blogcategory/15/20/