The opinion of the court was delivered by: Diamond, J.
Arrow International, Inc. alleges that Medical Components, Inc. engaged in inequitable conduct during the prosecution of a patent application. Having held a non-jury trial, I enter judgment for Medcomp and offer my supporting factual findings and legal conclusions. Fed. R. Civ. P. 52.
Medcomp owns U.S. Patent No. 6,881,211, entitled "Multilumen Catheter Assembly and Methods For Making and Inserting the Same." (Stipulated Facts ¶¶ 1-2, Doc. No. 142.) Medcomp brought an infringement action on July 17, 2007, alleging that Arrow's manufacture of its "Cannon" and "Edge" Catheters infringes on Claim 19 of the '211 Patent. Arrow filed the instant Counterclaim charging Medcomp with inequitable conduct. (Doc. No. 73.) On April 27, 2009, I conducted a non-jury trial on the Counterclaim. See Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009) ("Inequitable conduct is an equitable defense to patent infringement most appropriately reserved for the court."). The Parties submitted Proposed Findings of Fact and Conclusions of Law on May 11, 2009. (Doc. Nos. 150, 151.)
Medcomp owns a family of patents related to multilumen catheters invented by Donald Schon, Timothy Schweikert, and Anthony Madison, including:
1. U.S. Patent No. 6,719,749 (the '749 Patent), filed on June 1, 2000 (Application No. 09,585,149) and issued on April 13, 2004;
2. U.S. Patent No. 6, 695,832 (the '832 Patent) -- a continuation-in-part application of the '749 Patent -- filed on November 21, 2002 (Application No. 10,300,999) and issued on February 24, 2004;
3. U.S. Patent Application No. 10,670,861 (the '861 Application) -- a divisional application of the '832 Patent -- filed on September 24, 2003; and
4. U.S. Patent No. 6,881,211 (the '211 Patent) -- a divisional application of the '749 Patent -- filed on October 8, 2003 (Application No. 10,681,394) and issued on April 19, 2005.
(Stipulated Facts ¶¶ 3-5, 10-11, 13; Def.'s Exs. 1-4, 6-7, 10-11.)
A. The '749 and '832 Applications
Medcomp's '749 Application (filed on June 1, 2000) contained thirty-five Claims: (1) 1 through 19 were "method" Claims directed to a method of making a split-tip multilumen catheter assembly; (2) 20 through 30 were "apparatus" Claims directed to a split-tip multilumen catheter assembly; and (3) 31 through 35 were "method" Claims directed to a method of inserting a split-tip multilumen catheter assembly into an area of the human body. (Def.'s Ex. 4 at 154.)
The Examiner assigned to the '749 Application determined that these three groups of Claims comprised distinct inventions and issued a Restriction Requirement to this effect on August 1, 2002. (Id. at 153-56.) Medcomp chose to pursue the apparatus Claims (Nos. 20-30) in the '749 Application. (Tr. Apr. 27, 2009 at 85.)
Medcomp filed the '832 Application on November 21, 2002 as a continuation-in-part Application of the '749 Application. The '832 Application included "new matter" -- i.e., Claims respecting a catheter with a splitable membrane and a method of manufacturing such a catheter --not present in the '749 Application. Tr. Apr. 27, 2009 at 94-95; see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1321 n.2 (Fed. Cir. 2008) ("[A] continuation-in-part [application] contains a portion or all of the disclosure of an earlier application together with added matter not present in the earlier application.").
B. The 2002 Transfer of Medcomp's Patent Portfolio to Attorney J.M.
In 2002 -- while the '749 and '832 Applications were pending -- Medcomp hired the law firm of M & M to take over prosecution of its patents. M & M's associate, J.M., had been admitted to the Pennsylvania bar in 1996, and the patent bar in 1998. (Tr. Apr. 27, 2009 at 27-28, 81.) He began work at the M & M law firm in August of 2002. (Id. at 29.) J.M.'s first assignment was to take over Medcomp's patent portfolio. (Id. at 81.) Before the Medcomp records were transferred to M & M, J.M. traveled to Medcomp's headquarters and reviewed its correspondence files. (Id. at 93.)
As J.M. came across different patents mentioned in Medcomp's correspondence files, he entered each matter into the docketing system he used to keep track of related patents and their corresponding deadlines. (Id. at 92-93.) J.M. assigned the '832 Application docket number "MED-0005" because it was the fifth patent matter mentioned during his review of Medcomp's correspondence. (Id. at 83, 93.) J.M. assigned the '749 Application docket number "MED-0062" because it was the sixty-second Medcomp matter mentioned during that initial review. (Id. at 83.)
When he initially docketed the Medcomp Applications, J.M. had reviewed only the correspondence files, not the Applications themselves. (Id. at 92-93.) J.M. did not indicate in his docket that the '832 Application was a continuation-in-part application of the '749 Application.
J.M. testified that he did not recognize the relationship between these Applications because Medcomp's correspondence indicated that the '832 Application included Claims respecting a method of manufacturing a catheter with a splitable membrane that were not included in the '749 Application. (Id. at 94-95.) J.M. further explained that Medcomp's correspondence files did not indicate that the '832 Application was a continuation-in-part application of another Application. (Id. at 96-97.) Accordingly, J.M. incorrectly "assumed that [the '832 Application] was the ultimate parent in the application family." (Id. at 97.)
C. The '861 and '211 Applications
1. The Prosecution History
The Claims of the '211 and '861 Applications, like the Claims of the '749 and '832 Applications, are directed to multilumen catheters. The '211 Patent is a divisional application of the '749 Application, and includes Claims directed to a method of making a split-tip multilumen catheter assembly (Claims 1 through 19) that the USPTO "restricted out" of the '749 Application. (Tr. Apr. 27, 2009 at 85.) The '861 Application is a divisional application of the '832 Application, and contains Claims directed to a method of making a multilumen catheter assembly with a splitable membrane that were originally pursued in the '832 Application. (Id. at 87.) Although the '861 and '211 Applications are directed toward different types of catheters, Claim 22 of the '861 Application claims a method for making a multilumen catheter assembly that is nearly identical to Claim 1 of the '211 Patent. (Id. at 134.) At trial, J.M. agreed that aside from certain "slight wording differences," there was no "difference in . . . scope" between these claims. (Id. at 41-42.)
J.M. assigned the '861 Application -- which he filed on September 24, 2003 -- docket number "MED-0005D1," indicating that it was a divisional application of the '832 Application ("MED-0005 "). (Id. at 85-86.) J.M. filed the '211 Application approximately two weeks later, on October 8, 2003. (Id. at 32, 38.) J.M. assigned the '211 Application docket number "MED-0062D1," indicating that it was a divisional application of the '749 Application ("MED-0062"). (Id. at 86.) J.M. failed to docket the '861 and '211 Applications to indicate that they shared the same parent application -- the '749 Application. (Id. at 96-97.)
The '861 Examiner rejected Claim 22, determining that it was anticipated by the "Ash" Patent (U.S. Patent No. 5,497,953). (Def.'s Ex. 11 at 102, 129, 195.) The '211 Examiner did not reject Claim 1, however, and issued a Notice of Allowance for the '211 Patent on December 21, 2004. (Stipulated Facts ¶ 27.) After the '211 Patent issued, Medcomp disclosed its existence to the ...