UniRAM Technology, Inc v. Taiwan Semiconductor Manufacturing Co. (PDF) Judge Walker UniRAM sued Taiwan Semiconductor (TSMC) for patent infringement. TSMC moved for summary judgment claiming the underlying patent was unenforceable due to inequitable conduct. Judge Walker did a thorough two step analysis for inequitable conduct, which looked for 1) a material misrepresentation and 2) intent to deceive. There is of course a balance:

The court then balances materiality and intent: the more material the omission, the less culpable the intent required, and vise versa.

TSMC argued a misrepresentation about the commercial nature of the patent was grounds for inequitable conduct. After analysis, Judge Walker concluded ââ?¬Å?the mere existence of a ââ?¬Ë?commercialââ?¬â?¢ productââ?¬Â? could not be considered commercial success by a reasonable examiner. As evidence of deceptive intent all TSMC could offer was this exchange at the deposition of the inventor:

TSMC: As of May 24th, 1996, did Telesis have any products at that point in time? I guess that was 24 days into its creation. [Inventor]: Can you define what is “product?” TSMC: Are you claiming that you had anything that you would call a product as of May 24th, 1996 at Telesis? [Inventor]: If patent is – patent application is a product, then I claim that I have a product. TSMC interprets this passage to mean that the grandparent patent itself was what [the inventor] referred to in the grandparent application as a “product” and “under production.” The court disagrees with TSMC’s odd interpretation of [the inventorââ?¬â?¢s] testimony.

Judge Walker noted ââ?¬Å?to circuit designers, intellectual property is the primary ââ?¬Å?product.ââ?¬Â? The high burden for proving inequitable conduct, especially on summary judgment, was not met.