APTIX CORPORATION v. QUICKTURN DESIGN SYSTEMS, INC.
269 F.3d 1369 (2001)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
The doctrine of unclean hands, when applied to a patentee's fraudulent misconduct during litigation, serves as a personal bar to that litigant's ability to obtain relief in that lawsuit, but it does not render the underlying patent itself permanently unenforceable.
Facts:
- Dr. Amr Mohsen, the founder and CEO of Aptix Corporation, was the sole inventor of U.S. Patent No. 5,544,069 ('069 patent).
- Aptix licensed the '069 patent to Meta Systems, Inc., granting Meta the right to sue for infringement.
- In a patent infringement suit against Quickturn Design Systems, Aptix submitted Dr. Mohsen's engineering notebooks from 1988 and 1989 as evidence of the invention's conception date to avoid invalidating prior art.
- During discovery, it was revealed that Dr. Mohsen had significantly altered and added material to the notebooks long after they were originally created and signed.
- Forensic evidence showed that an "Ink-On-Photocopy" version of a notebook was used as a template for the forgeries.
- After Quickturn moved to compel production of the original notebooks for testing, Dr. Mohsen reported them stolen from his car under suspicious circumstances.
- Dr. Mohsen later claimed fragments of the notebooks were anonymously mailed back to him, but evidence suggested Mohsen staged the event.
- Further evidence, including a 1989 Daytimer with entries written in ink not manufactured until 1994, supported the conclusion that Dr. Mohsen had engaged in a sustained campaign of forgery.
Procedural Posture:
- Aptix Corporation and Meta Systems, Inc. jointly sued Quickturn Design Systems, Inc. for patent infringement in the U.S. District Court for the Northern District of California.
- Quickturn asserted counterclaims and added Mentor Graphics Corporation as a counterclaim defendant.
- During discovery, Quickturn uncovered evidence that Aptix, through its CEO, had fabricated evidence related to the patent's conception date.
- The district court held an evidentiary hearing and found that Aptix had engaged in a 'premeditated and sustained campaign of lies and forgery.'
- Invoking the unclean hands doctrine, the district court dismissed the complaint, ordered Aptix to pay Quickturn's attorney fees, and declared Aptix's '069 patent to be permanently unenforceable.
- Aptix Corporation and Meta Systems, Inc., as appellants, appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit, with Quickturn as appellee.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a patentee's fraudulent litigation misconduct, such as fabricating evidence to prove an invention's conception date, render the patent itself permanently unenforceable under the doctrine of unclean hands?
Opinions:
Majority - Judge Rader
No. A patentee's fraudulent litigation misconduct does not render the patent itself permanently unenforceable. The court distinguishes between the equitable doctrines of inequitable conduct and unclean hands. Inequitable conduct, which involves fraud on the Patent and Trademark Office (PTO) during patent procurement, taints the patent from its inception and renders it unenforceable by anyone. In contrast, the doctrine of unclean hands applies to misconduct during litigation and serves as a personal bar that prevents only the wrongful litigant from obtaining relief in that specific case, without extinguishing the underlying property right. The court cited the Keystone cases, which showed that the Supreme Court barred a fraudulent litigant from relief but did not invalidate the patents, as the same patents were adjudicated on the merits in a later case. Therefore, while dismissing Aptix's complaint and awarding attorney fees was a proper sanction, declaring the '069 patent unenforceable exceeded the district court's discretion.
Dissenting-in-part - Chief Judge Mayer
Yes. Fraud upon a court is as grave as fraud on the PTO, and the doctrine of unclean hands is a flexible equitable tool sufficient to render the patent unenforceable. The dissent argues that the distinction between misconduct before the court and before the PTO is artificial, as the inequitable conduct doctrine is merely an application of unclean hands principles. Given that Dr. Mohsen's forgery was pervasive and went to the heart of the patent's validity (the conception date), it tainted the patent itself. Simply dismissing the suit would be an insufficient deterrent, as Aptix could refile in another court, forcing the judicial system to continually deal with the 'muddy morass' of forged evidence. To protect the integrity of the judicial process, the district court was well within its discretion to declare the patent unenforceable as a complete denial of relief.
Analysis:
This case establishes a critical distinction between the remedies for misconduct during patent prosecution versus misconduct during patent litigation. It clarifies that the severe penalty of rendering a patent permanently unenforceable is reserved for 'inequitable conduct' before the PTO, which taints the property right at its origin. Litigation misconduct, while sanctionable under the 'unclean hands' doctrine, results in remedies personal to the wrongdoer, such as dismissal of the case and attorney's fees. This decision limits the power of district courts to extinguish patent rights based on post-issuance litigation behavior, preserving the patent as a property right separate from the conduct of a particular litigant in a specific case.
Unlock the full brief for APTIX CORPORATION v. QUICKTURN DESIGN SYSTEMS, INC.