Dr. Amr Mohsen is the bad guy in this case
possible that's what Healy was referring to?
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Unclean Hands in Litigation Does Not Invalidate Patent
[Reprinted from the "IP Litigator"]
A three judge panel of the U.S. Court of Appeals for the Federal Circuit recently affirmed that misconduct during litigation may be a basis for dismissing a particular suit for patent infringement but not for finding the patent unenforceable. Judge Rader wrote the opinion, Chief Judge Mayer agreed with dismissing the action, but would have gone further and barred all enforcement of the patent. Aptix Corp. v. Quickturn Design Systems, Inc., Fed. Cir., No. 00-1468, 60 USPQ2d 1705 (CA FC 2001).
Aptix licensed its U.S. Patent No. 5,544,069 ('069 patent) to Meta Systems, Inc. and Mentor Graphics Corporation. The founder, chairman and chief executive officer of Aptix Corp., Dr. Amr Mohsen, is the sole inventor of the '069 patent. The patent, directed to “field-programmable” circuit boards, was filed on September 20, 1989 and issued on August 6, 1996. Aptix and Meta jointly sued Quickturn Design Systems, Inc. for infringement of the '069 patent, and Quickturn added Mentor as a counterclaim defendant.
The Northern District of California's local rules require a patentee to disclose a date of conception for each asserted patent claim. N.D. Cal. Civ. L.R. 16-7(b)(3) (1998). Accordingly, Aptix first submitted to the court seventeen pages of an engineering notebook allegedly kept by Dr. Mohsen during 1989. Five days later, Dr. Mohsen advised Aptix's counsel that he had located another of his engineering notebooks, allegedly kept during 1988. The newly-discovered 1988 notebook established an earlier date of conception for the asserted claims than did the 1989 notebook. “Without this earlier notebook, Aptix later conceded, it would have a hard row to hoe to avoid invalidating prior art.” Id., at 1706 (citing Aptix Corp. v. Quickturn Design Sys., No. 98-00762, 2000 WL 852813, at 23 (N.D. Cal., June 14, 2000, internal quotations omitted). The version of the 1989 engineering notebook which Aptix first produced to the court included substantial and extensive additions which were not contained in a 1989 engineering notebook that Dr. Mohsen had provided to his patent counsel during prosecution of the '069 patent, a copy of which had been obtained by Quickturn during discovery. Dr. Mohsen conceded in his deposition that he had added material to the 1989 notebook after it had been signed. Aptix produced yet another version of the 1989 notebook that contained Dr. Mohsen's handwritten additions to photocopies of pages from an earlier version of the 1989 notebook. The trial court determined that this “Ink-On-Photocopy version” of the 1989 notebook was used as a copying template by Dr. Mohsen in fabricating the seventeen pages of the alleged 1989 engineering notebook that were produced to the trial court.
Thus, four different notebooks were submitted to the trial court: the seventeen originally-submitted pages from the purported 1989 notebook, a notebook allegedly started in 1988, an original copy of the 1989 notebook used to prosecute the '069 patent, and the “Ink-On-Photocopy” version of the 1989 notebook.
When the court compelled production of the original notebooks for forensic testing, Dr. Mohsen reported that the notebooks had been stolen from his car. Shortly before Aptix would have been required to demonstrate under Fed. R. Evid. 1004 that the original notebooks were not destroyed in bad faith, Dr. Mohsen purportedly received the notebooks in the mail. The trial court found that the circumstances of the “theft” and the return of the notebooks “strongly suggest that Amr Mohsen staged the incident.” Id., at 1707 (internal citations omitted). Further, the trial court concluded that the 1988 notebook was “a complete fraud . . . a notebook without a single genuine entry.” Id., (internal citations omitted). At an evidentiary hearing concerning the authenticity of the notebooks Dr. Mohsen asserted his Fifth Amendment privilege against self-incrimination. The trial court determined that Aptix had attempted to “defraud the Court and to strengthen its patent through a premeditated and sustained campaign of lies and forgery”. Id., (internal citations omitted). The trial court dismissed the complaint and held the '069 patent to be unenforceable, invoking the unclean hands doctrine as set forth in Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 19 USPQ 228 (1933), hereinafter referred to as Keystone I. On appeal, Aptix argued that the record did not support a finding of fraud and sought reversal of the court's application of the unclean hands doctrine. Moreover, Aptix and Meta challenged the determination that misconduct during the enforcement of a patent can render the patent unenforceable.
The Federal Circuit Court of Appeals found that “the record clearly and convincingly supports the district court's conclusion of extreme litigation misconduct.” The district court's finding of litigation misconduct “fully justified its decision to invoke the unclean hands doctrine and dismiss Aptix from suit.” Id., at 1708. However, the court held that “[l]itigation misconduct, while [properly] serving as a basis to dismiss the wrongful litigant, does not infect, or even affect, the original grant of the property right”. Id. “The doctrine of unclean hands does not reach out to extinguish a property right due to misconduct during litigation seeking to enforce that right.” Id. “The Supreme Court's decision in Keystone I, upon which the district court primarily relied, illustrates that litigation misconduct does not affect the viability of the property right itself.” Id. Thus, although properly invoking the doctrine of unclean hands to dismiss the complaint, the district court improperly applied the rationale of Keystone I in declaring the patent right itself unenforceable.
The remedy for litigation misconduct bars the party that committed the misconduct. The Supreme Court has repeatedly stressed that litigation misconduct bars the litigant yet leaves the patent right intact. (See, e.g., Keystone I, 290 U.S. at 244-45, and Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 61 USPQ 241 (1944)(overruled on other grounds)). In contrast, the doctrine of inequitable conduct renders the patent itself unenforceable. “Inequitable conduct in the process of procuring a patent taints the property right itself. Aptix Corp., 60 USPQ2d at 1709. “If inequitable conduct is shown during acquisition of the patent, courts declare the patent unenforceable because the property right is tainted ab initio.” Id. In his dissent Judge Mayer would have gone further and barred all future enforcement of the patent.
Thus, the remedies for litigation misconduct differ from the remedies for inequitable conduct. Inequitable conduct renders the patent itself unenforceable by any party, whereas the doctrine of unclean hands bars only the offending party from enforcing the patent in the present action. Although the doctrine of unclean hands bars recovery in the case at hand, it does not prejudice the offending party in subsequent actions. Since the record disclosed no misconduct in the acquisition of the '069 patent, the patent “remains a presumptively valid grant of personal property.” Id., at 1710. Although the district court's dismissal of the complaint was affirmed, the judgement of unenforceablity of the '069 patent was vacated
