Intel Corp. v. VIA Technologies, Inc.

ORDER GRANTING PARTIAL SUMMARY JUDGMENT AND OTHERWISE DENYING CROSS-MOTIONS FOR SUMMARY JUDGMENT ON ENFORCEABILITY OF UNITED STATES PATENT NO. 5,926,651

INTRODUCTION

This patent-infringement action presents the important question of law whether patent applicants who knowingly and deceptively withhold material prior art from the Patent and Trademark Office during prosecution are immunized from the doctrine of patent unenforceability in the event the examiner eventually finds cumulative prior art without ever finding the withheld art. Two Federal Circuit decisions are close precedents but point in virtually opposite directions. In reconciling these precedents, this order holds that an applicant who suppresses prior art with the requisite intent will be immunized only if the reference found is the reference withheld and cannot invoke blanket immunity .merely because a cumulative reference was eventually discovered by the examiner on his or her own. For the reasons stated below, however, a fact issue remains on the issue of intent. Partial summary judgment is therefore GRANTED and the remaining fact issue shall be tried.

STATEMENT

The ’651 patent is entitled “Output Buffer with…