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** DISTRICT COURT ERRONEOUSLY DETERMINED INVENTOR ACTED WITH SPECIFIC INTENT TO DEFRAUD USPTO
Global Tubing LLC v. Tenaris Coiled Tubes LLC, 23-1882, 23-1883 — Yesterday in an opinion by Judge STARK, the Federal Circuit vacated-in-part a district court summary judgment that Tenaris had committed inequitable conduct in obtaining its patents for coiled tubing products. Tenaris argued the district court erred in determining there was no genuine issue of material fact as to whether one of its inventors had acted with specific intent to defraud the USPTO by failing to disclose prior art known to the inventor at the time of prosecution.
The Federal Circuit agreed. The district court determined a comment written by the inventor in the margins of the draft declaration that stated it may not be “a good idea to disclose” the prior art specification was “as close to an admission of fraudulent intent as one ever sees in patent litigation.” However, the district court failed to view the evidence in the light most favorable to Tenaris and did not consider, based on the inventor’s testimony, that he mistakenly believed the prior art’s carbon ranges were outside the scope of the claims and irrelevant. It was also reasonable for a jury to assume that the inventor did not submit the prior art documents because he had already disclosed an academic paper that detailed the manufacturing and testing processes for the prior art and believed the references were cumulative. This inference was further supported by the inventor providing the documents to the prosecuting attorney and drawing attention to them on the draft disclosure. Finally, the district court was not able to invoke an exception under Fifth Circuit law that allowed a judge in a bench trial to decide at summary judgment that “the same evidence, presented to him or her as trier of fact in a plenary trial, could not possibly lead to a different result,” because there was a dispute over evidentiary facts and witness credibility.
(1 to 4 stars rate impact of opinion on patent & trademark law)
LAST DAY TO BOOK YOUR HOTEL ROOM FOR IPOWNERS SPRING SUMMIT™
IPO has reserved a block of rooms at the Westin Downtown Hotel in Washington, DC at a rate of $349 + taxes per night. Today, February 27, is the last day to receive the group rate. Space is limited. Attendees can make their reservations online. IPOwners Spring Summit™ begins with a welcome reception on Wednesday, March 18 and ends with a closing reception on Thursday, March 19. For additional information about the Summit, visit www.ipo.org/spring2026.
IPO SUBMITS POST-HEARING STATEMENT TO SPECIAL 301 SUBCOMMITTEE
As reported, IPO recently testified at the United States Trade Representative’s 2026 Special 301 Public Hearing on countries with inadequate IP protection. On Wednesday, IPO filed a post-hearing statement with the Special 301 subcommittee that provided supplemental information in response to questions posed during IPO’s testimony. The statement addressed questions relating to the impact of the 2024 amendments to the Indonesian Patent Law, patent enforcement issues in Colombia, and anti-counterfeiting and anti-piracy training in Canada. Thank you to members of IPO’s Asian Practice, International Patent Law & Trade, Latin American Practice, and Canadian Practice Committees who assisted with preparing the statement. USTR is expected to publish the 2026 Special 301 Report on or about April 30, 2026.
USPTO LAUNCHES “LOOP” COLLABORATIVE TRAINING SERIES TO ENHANCE PATENT EXAMINATION QUALITY
This week USPTO announced the launch of a new monthly training series, “Learning from Outcomes to Optimize Patents” (LOOP), aimed at strengthening examination quality through enhanced collaboration between the Patents business unit and the Patent Trial and Appeal Board (PTAB). The series will bring together supervisory patent examiners and administrative patent judges to emphasize best practices and identify opportunities for improvement, highlighting use-case examples from PTAB proceedings that reflect both high-quality examination practices and areas where examination areas were identified. The goal is to create an additional feedback loop from PTAB outcomes to frontline examination with the goal of ensuring patents are “born strong.”
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BETTER IP AND LEGAL TERMINOLOGY
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