Case 1:19-cv-11586-FDS Document 241-3 Filed 09/28/21 Page 1 of 15
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`Exhibit 3
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`

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`Case 1:19-cv-11586-FDS Document 241-3 Filed 09/28/21 Page 2 of 15
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`Chapter 2000 Duty of Disclosure
`
`2001.06(c)
`2001.06(d)
`
`Introduction
`2000.01
`2001 Duty of Disclosure, Candor, and Good Faith
`2001.01 Who Has Duty To Disclose
`2001.03
`To Whom Duty of Disclosure Is Owed
`2001.04
`Information Under 37 CFR 1.56(a)
`2001.05 Materiality Under 37 CFR 1.56(b)
`2001.06
`Sources of Information
`2001.06(a)
`Prior Art Cited in Related Foreign Applications
`2001.06(b)
`Information Relating to or From Copending United
`States Patent Applications
`Information From Related Litigation
`Information Relating to Claims Copied From a
`Patent
`2002 Disclosure — By Whom and How Made
`2002.01
`By Whom Made
`2002.02 Must be in Writing
`2003 Disclosure — When Made
`2003.01
`Disclosure After Patent Is Granted
`2004 Aids to Compliance With Duty of Disclosure
`2005 Comparison to Requirement for Information
`2010 Office Handling of Duty of Disclosure/Inequitable
`Conduct Issues
`2012 Reissue Applications Involving Issues of Fraud,
`Inequitable Conduct, and/or Violation of Duty of
`Disclosure
`2012.01
`Collateral Estoppel
`2013 Protests Involving Issues of Fraud, Inequitable
`Conduct, and/or Violation of Duty of Disclosure
`2014 Duty of Disclosure in Reexamination Proceedings
`2016 Fraud, Inequitable Conduct, or Violation of Duty of
`Disclosure Affects All Claims
`2022.05
`Determination of “Error Without Any Deceptive
`Intention”
`2000
`[No Text]
`2000.01 Introduction [R-2]
`This Chapter deals with the duties owed toward the
`U.S. Patent and Trademark Office by the inventor and
`every other individual who is substantively involved
`in the preparation or prosecution of the application
`and who is associated with the inventor or the inven-
`tor’s assignee. These duties, of candor and good faith
`and disclosure, have been codified in 37 CFR 1.56, as
`promulgated pursuant to carrying out the duties of the
`*>Director< under Sections 2, 3, 131, and 132 of Title
`35 of the United States Code.
`2001 Duty of Disclosure, Candor, and
`Good Faith
`37 CFR 1.56. Duty to disclose information material to
`patentability.
`(a) A patent by its very nature is affected with a public inter-
`est. The public interest is best served, and the most effective
`
`patent examination occurs when, at the time an application is
`being examined, the Office is aware of and evaluates the teachings
`of all information material to patentability. Each individual associ-
`ated with the filing and prosecution of a patent application has a
`duty of candor and good faith in dealing with the Office, which
`includes a duty to disclose to the Office all information known to
`that individual to be material to patentability as defined in this
`section. The duty to disclose information exists with respect to
`each pending claim until the claim is cancelled or withdrawn from
`consideration, or the application becomes abandoned. Information
`material to the patentability of a claim that is cancelled or with-
`drawn from consideration need not be submitted if the informa-
`tion is not material to the patentability of any claim remaining
`under consideration in the application. There is no duty to submit
`information which is not material to the patentability of any exist-
`ing claim. The duty to disclose all information known to be mate-
`rial to patentability is deemed to be satisfied if all information
`known to be material to patentability of any claim issued in a
`patent was cited by the Office or submitted to the Office in the
`manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent
`will be granted on an application in connection with which fraud
`on the Office was practiced or attempted or the duty of disclosure
`was violated through bad faith or intentional misconduct. The
`Office encourages applicants to carefully examine:
`(1) Prior art cited in search reports of a foreign patent
`office in a counterpart application, and
`(2) The closest information over which individuals asso-
`ciated with the filing or prosecution of a patent application believe
`any pending claim patentably defines, to make sure that any mate-
`rial information contained therein is disclosed to the Office.
`(b) Under this section, information is material to patentabil-
`ity when it is not cumulative to information already of record or
`being made of record in the application, and
`(1) It establishes, by itself or in combination with other
`information, a prima facie case of unpatentability of a claim; or
`(2) It refutes, or is inconsistent with, a position the appli-
`cant takes in:
`(i) Opposing an argument of unpatentability relied on
`by the Office, or
`(ii) Asserting an argument of patentability.
`A prima facie case of unpatentability is established when
`the information compels a conclusion that a claim is unpatentable
`under the preponderance of evidence, burden-of-proof standard,
`giving each term in the claim its broadest reasonable construction
`consistent with the specification, and before any consideration is
`given to evidence which may be submitted in an attempt to estab-
`lish a contrary conclusion of patentability.
`(c) Individuals associated with the filing or prosecution of a
`patent application within the meaning of this section are:
`(1) Each inventor named in the application;
`(2) Each attorney or agent who prepares or prosecutes the
`application; and
`(3) Every other person who is substantively involved in
`the preparation or prosecution of the application and who is asso-
`ciated with the inventor, with the assignee or with anyone to
`whom there is an obligation to assign the application.
`
`2000-1
`
`Rev. 2, May 2004
`
`

`

`Case 1:19-cv-11586-FDS Document 241-3 Filed 09/28/21 Page 3 of 15
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`2001.01
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`(d) Individuals other than the attorney, agent or inventor may
`comply with this section by disclosing information to the attorney,
`agent, or inventor.
`(e) In any continuation-in-part application, the duty under
`this section includes the duty to disclose to the Office all informa-
`tion known to the person to be material to patentability, as defined
`in paragraph (b) of this section, which became available between
`the filing date of the prior application and the national or PCT
`international filing date of the continuation-in-part application.
`37 CFR 1.56 defines the duty to disclose informa-
`tion to the Office.
`2001.01 Who Has Duty To Disclose
`37 CFR 1.56. Duty to disclose information material to
`patentability.
`
`*****
`
`(c) Individuals associated with the filing or prosecution of a
`patent application within the meaning of this section are:
`(1) Each inventor named in the application;
`(2) Each attorney or agent who prepares or prosecutes the
`application; and
`(3) Every other person who is substantively involved in
`the preparation or prosecution of the application and who is asso-
`ciated with the inventor, with the assignee or with anyone to
`whom there is an obligation to assign the application.
`*****
`Individuals having a duty of disclosure are limited
`to those who are “substantively involved in the prepa-
`ration or prosecution of the application.” This is
`intended to make clear that the duty does not extend
`to typists, clerks, and similar personnel who assist
`with an application.
`The word “with” appears before “the assignee” and
`“anyone to whom there is an obligation to assign” to
`make clear that the duty applies only to individuals,
`not to organizations. For instance, the duty of disclo-
`sure would not apply to a corporation or institution as
`such. However, it would apply to individuals within
`the corporation or institution who were substantively
`involved in the preparation or prosecution of the
`application, and actions by such individuals may
`affect the rights of the corporation or institution.
`2001.03 To Whom Duty of Disclosure Is
`Owed [R-2]
`37 CFR 1.56(a) states that the “duty of candor and
`good faith” is owed “in dealing with the Office” and
`that all associated with the filing and prosecution of a
`
`patent application have a “duty to disclose to the
`Office” material information. This duty “in dealing
`with” and “to” the Office extends, of course, to all
`dealings which such individuals have with the Office,
`and is not limited to representations to or dealings
`with the examiner. For example, the duty would
`extend to proceedings before the Board of Patent
`Appeals and Interferences and the Office of the *
`Commissioner for Patents.
`2001.04 Information Under 37 CFR
`1.56(a) [R-2]
`37 CFR 1.56. Duty to disclose information material to
`patentability.
`(a) A patent by its very nature is affected with a public
`interest. The public interest is best served, and the most effective
`patent examination occurs when, at the time an application is
`being examined, the Office is aware of and evaluates the teachings
`of all information material to patentability. Each individual associ-
`ated with the filing and prosecution of a patent application has a
`duty of candor and good faith in dealing with the Office, which
`includes a duty to disclose to the Office all information known to
`that individual to be material to patentability as defined in this
`section. The duty to disclose information exists with respect to
`each pending claim until the claim is cancelled or withdrawn from
`consideration, or the application becomes abandoned. Information
`material to the patentability of a claim that is cancelled or with-
`drawn from consideration need not be submitted if the informa-
`tion is not material to the patentability of any claim remaining
`under consideration in the application. There is no duty to submit
`information which is not material to the patentability of any exist-
`ing claim. The duty to disclose all information known to be mate-
`rial to patentability is deemed to be satisfied if all information
`known to be material to patentability of any claim issued in a
`patent was cited by the Office or submitted to the Office in the
`manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent
`will be granted on an application in connection with which fraud
`on the Office was practiced or attempted or the duty of disclosure
`was violated through bad faith or intentional misconduct. The
`Office encourages applicants to carefully examine:
`(1) Prior art cited in search reports of a foreign patent
`office in a counterpart application, and
`(2) The closest information over which individuals asso-
`ciated with the filing or prosecution of a patent application believe
`any pending claim patentably defines, to make sure that any mate-
`rial information contained therein is disclosed to the Office.
`*****
`The language of 37 CFR 1.56 (and 37 CFR 1.555)
`has been modified effective March 16, 1992 to
`emphasize that there is a duty of candor and good
`faith which is broader than the duty to disclose mate-
`rial information. 37 CFR 1.56 further states that “no
`
`Rev. 2, May 2004
`
`2000-2
`
`

`

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`DUTY OF DISCLOSURE
`
`2001.04
`
`patent will be granted on an application in connection
`with which fraud on the Office was practiced or
`attempted or the duty of disclosure was violated
`through bad faith or intentional misconduct.”
`The Office strives to issue valid patents. The Office
`has both an obligation not to unjustly issue patents
`and an obligation not to unjustly deny patents. Inno-
`vation and technological advancement are best served
`when an inventor is issued a patent with the scope of
`protection that is deserved. The rules as adopted serve
`to remind individuals associated with the preparation
`and prosecution of patent applications of their duty of
`candor and good faith in their dealings with the
`Office, and will aid the Office in receiving, in a timely
`manner, the information it needs to carry out effective
`and efficient examination of patent applications.
`The amendment to 37 CFR 1.56 was proposed to
`address criticism concerning a perceived lack of cer-
`tainty in the materiality standard. The rule as promul-
`gated will provide greater clarity and hopefully
`minimize the burden of litigation on the question of
`inequitable conduct before the Office, while provid-
`ing the Office with the information necessary for
`effective and efficient examination of patent applica-
`tions. 37 CFR 1.56 has been amended to present a
`clearer and more objective definition of what informa-
`tion the Office considers material to patentability. The
`rules do not define fraud or inequitable conduct which
`have elements both of materiality and of intent.
`The definition of materiality in 37 CFR 1.56 does
`not impose substantial new burdens on applicants, but
`is intended to provide the Office with the information
`it needs to make a proper and independent determina-
`tion on patentability. It is the patent examiner who
`should make the determination after considering all
`the facts involved in the particular case.
`37 CFR 1.56 states that each individual associated
`with the filing and prosecution of a patent application
`has a duty to disclose all information known to that
`individual to be material to patentability as defined in
`the section. Thus, the duty applies to contemporane-
`ously or presently known information. The fact that
`information was known years ago does not mean that
`it was recognized that the information is material to
`the present application.
`The term “information” as used in 37 CFR 1.56
`means all of the kinds of information required to be
`disclosed and includes any information which is
`
`“material to patentability.” Materiality is defined in
`37 CFR 1.56(b) and discussed herein at MPEP
`§ 2001.05. In addition to prior art such as patents and
`publications, 37 CFR 1.56 includes, for example,
`information on >enablement,< possible prior public
`uses, sales, offers to sell, derived knowledge, prior
`invention by another, inventorship conflicts, and the
`like. >“Materiality is not limited to prior art but
`embraces any information that a reasonable examiner
`would be substantially likely to consider important in
`deciding whether to allow an application to issue as a
`patent.” Bristol-Myers Squibb Co. v. Rhone-Poulenc
`Rorer, Inc., 326 F.3d 1226, 1234, 66 USPQ2d 1481,
`1486 (Fed. Cir. 2003) (emphasis in original) (finding
`article which was not prior art to be material to
`enablement issue).<
`The term “information” is intended to be all encom-
`passing, similar to the scope of the term as discussed
`with respect
`to 37 CFR 1.291(a) (see MPEP
`§ 1901.02). 37 CFR 1.56(a) also states: “The Office
`encourages applicants to carefully examine: (1) prior
`art cited in search reports of a foreign patent office in
`a counterpart application, and (2) the closest informa-
`tion over which individuals associated with the filing
`or prosecution of a patent application believe any
`pending claim patentably defines, to make sure that
`any material information contained therein is dis-
`closed to the Office.” The sentence does not create
`any new duty for applicants, but is placed in the text
`of the rule as helpful guidance to individuals who file
`and prosecute patent applications.
`It should be noted that the rules are not intended to
`require information favorable to patentability such as,
`for example, evidence of commercial success of the
`invention. Similarly, the rules are not intended to
`require, for example, disclosure of information con-
`cerning the level of skill in the art for purposes of
`determining obviousness.
`37 CFR 1.56(a) states that the duty to disclose
`information exists until the application becomes aban-
`doned. The duty to disclose information, however,
`does not end when an application becomes allowed
`but extends until a patent is granted on that applica-
`tion. The rules provide for information being consid-
`ered after a notice of allowance is mailed and before
`the issue fee is paid (37 CFR 1.97(d)) (see MPEP
`§ 609, paragraph B(3)). The rules also provide for an
`application to be withdrawn from issue
`
`2000-3
`
`Rev. 2, May 2004
`
`

`

`Case 1:19-cv-11586-FDS Document 241-3 Filed 09/28/21 Page 5 of 15
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`2001.05
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`(A) because one or more claims are unpatentable
`(37 CFR 1.313(c)(1));
`(B) for express abandonment so that information
`may be considered in a continuing application before
`a patent issues (37 CFR 1.313(c)(3)); or
`(C) for consideration of a request for continued
`examination (RCE) under 37 CFR 1.114 (37 CFR
`1.313(a) and (c)(2)). Note that RCE practice does
`not apply to utility or plant applications filed before
`June 8, 1995 or to design applications. See MPEP
`§ 706.07(h).
`See MPEP § 1308 for additional information per-
`taining to withdrawal of an application from issue.
`In a continuation-in-part application, individuals
`covered by 37 CFR 1.56 have a duty to disclose to the
`Office all information known to be material to patent-
`ability which became available between the filing date
`of the prior application and the national or PCT inter-
`national filing date of the continuation-in-part appli-
`cation. See 37 CFR 1.56(e).
`37 CFR 1.56 provides that the duty of disclosure
`can be met by submitting information to the Office in
`the manner prescribed by 37 CFR 1.97 and 1.98. See
`MPEP § 609. Applicants are provided certainty as to
`when information will be considered, and applicants
`will be informed when information is not considered.
`Note, however, that the Office may order or conduct
`reexamination proceedings based on prior art that was
`**>cited/considered< in any prior related Office pro-
`ceeding. See MPEP § 2242 >and MPEP § 2258.01<.
` The Office does not believe that courts should, or
`will, find violations of the duty of disclosure because
`of unintentional noncompliance with 37 CFR 1.97
`and 1.98. If the noncompliance is intentional, how-
`ever, the applicant will have assumed the risk that the
`failure to submit the information in a manner that will
`result in its being considered by the examiner may be
`held to be a violation.
`The Office does not anticipate any significant
`change in the quantity of information cited to the
`Office. Presumably, applicants will continue to submit
`information for consideration by the Office in applica-
`tions rather than making and relying on their own
`determinations of materiality. An incentive remains to
`submit the information to the Office because it will
`result in a strengthened patent and will avoid later
`questions of materiality and intent to deceive. In addi-
`tion, the new rules will actually facilitate the filing of
`
`information since the burden of submitting informa-
`tion to the Office has been reduced by eliminating, in
`most cases, the requirement for a concise statement of
`the relevance of each item of information listed in an
`information disclosure statement. It should also be
`noted that 37 CFR 1.97(h) states that the filing of an
`information disclosure statement shall not be consid-
`ered to be an admission that the information cited in
`the statement is, or is considered to be, material to
`patentability as defined in 37 CFR 1.56.
`2001.05 Materiality Under 37 CFR
`1.56(b)
`
`37 CFR 1.56. Duty to disclose information material to
`patent ability.
`
`*****
`
`(b) Under this section, information is material to patentabil-
`ity when it is not cumulative to information already of record or
`being made of record in the application, and
`(1) It establishes, by itself or in combination with other
`information, a prima facie case of unpatentability of a claim; or
`(2) It refutes, or is inconsistent with, a position the appli-
`cant takes in:
`(i) Opposing an argument of unpatentability relied on
`by the Office, or
`(ii) Asserting an argument of patentability.
`A prima facie case of unpatentability is established when the
`information compels a conclusion that a claim is unpatentable
`under the preponderance of evidence, burden-of-proof standard,
`giving each term in the claim its broadest reasonable construction
`consistent with the specification, and before any consideration is
`given to evidence which may be submitted in an attempt to estab-
`lish a contrary conclusion of patentability.
`
`*****
`Under the rule, information is not material unless it
`comes within the definition of 37 CFR 1.56(b)(1) or
`(2). If information is not material, there is no duty to
`disclose the information to the Office. Thus, it is the-
`oretically possible for applicants to draft claims and a
`specification to avoid a prima facie case of obvious-
`ness over a reference and then to be able to withhold
`the reference from the examiner. The Office believes
`that most applicants will wish to submit the informa-
`tion, however, even though they may not be required
`to do so, to strengthen the patent and avoid the risks of
`an incorrect judgment on their part on materiality or
`that it may be held that there was an intent to deceive
`the Office.
`
`Rev. 2, May 2004
`
`2000-4
`
`

`

`Case 1:19-cv-11586-FDS Document 241-3 Filed 09/28/21 Page 6 of 15
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`DUTY OF DISCLOSURE
`
`2001.06(b)
`
`2001.06 Sources of Information [R-2]
`All individuals covered by 37 CFR 1.56 (repro-
`duced in MPEP § 2001.01) have a duty to disclose to
`the U.S. Patent and Trademark Office all material
`information they are aware of regardless of the source
`of or how they become aware of the information.
`>See Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp.,
`267 F.3d 1370, 1383, 60 USPQ2d 1482, 1490 (Fed.
`Cir. 2001) (“Once an attorney, or an applicant has
`notice that information exists that appears material
`and questionable, that person cannot ignore that
`notice in an effort to avoid his or her duty to dis-
`close.”).< Materiality controls whether information
`must be disclosed to the Office, not the circumstances
`under which or the source from which the information
`is obtained. If material, the information must be dis-
`closed to the Office. The duty to disclose material
`information extends to information such individuals
`are aware of prior to or at the time of filing the appli-
`cation or become aware of during the prosecution
`thereof.
`Such individuals may be or become aware of mate-
`rial information from various sources such as, for
`example, co-workers, trade shows, communications
`from or with competitors, potential infringers, or
`other third parties, related foreign applications (see
`MPEP § 2001.06(a)), prior or copending United
`States patent applications (see MPEP § 2001.06(b)),
`related litigation (see MPEP § 2001.06(c)) and pre-
`liminary examination searches.
`in Related
`2001.06(a) Prior Art Cited
`Foreign Applications [R-2]
`Applicants and other individuals, as set forth in
`37 CFR 1.56, have a duty to bring to the attention of
`the Office any material prior art or other information
`cited or brought to their attention in any related for-
`eign application. The inference that such prior art or
`other information is material is especially strong **
`where it has been used in rejecting the same or similar
`claims in the foreign application >or where it has been
`identified in some manner as particularly relevant<.
`See Gemveto Jewelry Co. v. Lambert Bros., Inc., 542
`F. Supp. 933, 216 USPQ 976 (S.D. N.Y. 1982)
`wherein a patent was held invalid or unenforceable
`because patentee’s foreign counsel did not disclose to
`patentee’s United States counsel or to the Office prior
`
`art cited by the Dutch Patent Office in connection
`with the patentee’s corresponding Dutch application.
`The court stated, 542 F. Supp. at 943, 216 USPQ at
`985:
`
`Foreign patent attorneys representing applicants for
`U.S. patents through local correspondent firms surely
`must be held to the same standards of conduct which
`apply to their American counterparts; a double standard of
`accountability would allow foreign attorneys and their cli-
`ents to escape responsibility for fraud or inequitable con-
`duct merely by withholding from the local correspondent
`information unfavorable to patentability and claiming
`ignorance of United States disclosure requirements.
`to or
`2001.06(b) Information Relating
`From Copending United States
`Patent Applications [R-2]
`
`The individuals covered by 37 CFR 1.56 have a
`duty to bring to the attention of the examiner, or other
`Office official involved with the examination of a par-
`ticular application, information within their knowl-
`edge as to other copending United States applications
`which are “material to patentability” of the applica-
`tion in question. As set forth by the court in Armour &
`Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70,
`79 (7th Cir. 1972):
`
`[W]e think that it is unfair to the busy examiner, no
`matter how diligent and well informed he may be, to
`assume that he retains details of every pending file in his
`mind when he is reviewing a particular application . . .
`[T]he applicant has the burden of presenting the examiner
`with a complete and accurate record to support the allow-
`ance of letters patent.
`
`See also MPEP § 2004, paragraph 9.
`Accordingly, the individuals covered by 37 CFR
`1.56 cannot assume that the examiner of a particular
`application is necessarily aware of other applications
`which are “material to patentability” of the applica-
`tion in question, but must instead bring such other
`applications to the attention of the examiner. >See
`Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d
`1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir.
`2003).< For example, if a particular inventor has dif-
`ferent applications pending in which similar subject
`matter but patentably indistinct claims are present that
`fact must be disclosed to the examiner of each of the
`involved applications. Similarly, the prior art refer-
`ences from one application must be made of record in
`
`2000-5
`
`Rev. 2, May 2004
`
`

`

`Case 1:19-cv-11586-FDS Document 241-3 Filed 09/28/21 Page 7 of 15
`
`2001.06(c)
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`another subsequent application if such prior art refer-
`ences are “material to patentability” of the subsequent
`application.>See Dayco Prod., 329 F.3d at 1369, 66
`USPQ2d at 1808.<
`**>If< the application under examination is identi-
`fied as a continuation>, divisional,< or continuation-
`in-part of an earlier application, the examiner will
`consider the prior art cited in the earlier applica-
`tion.>See MPEP § 609.< The examiner must indicate
`in the first Office action whether the prior art in a
`related earlier application has been reviewed. Accord-
`ingly, no separate citation of the same prior art need
`be made in the later application.
`
`2001.06(c) Information From Related
`Litigation [R-2]
`
`Where the subject matter for which a patent is
`being sought is or has been involved in litigation, the
`existence of such litigation and any other material
`information arising therefrom must be brought to the
`attention of the U.S. Patent and Trademark Office.
`Examples of such material information include evi-
`dence of possible prior public use or sales, questions
`of inventorship, prior art, allegations of “fraud,”
`“inequitable conduct,” and “violation of duty of dis-
`closure.” Another example of such material informa-
`tion is any assertion that is made during litigation
`which is contradictory to assertions made to the
`examiner. Environ Prods., Inc. v. Total Containment,
`Inc., 43 USPQ2d 1288, 1291 (E.D. Pa. 1997). Such
`information might arise during litigation in, for exam-
`ple, pleadings, admissions, discovery including inter-
`rogatories, depositions, and other documents and
`testimony.
`Where a patent for which reissue is being sought is,
`or has been, involved in litigation which raised a
`question material to examination of the reissue appli-
`cation, such as the validity of the patent, or any alle-
`gation of “fraud,” “inequitable conduct,” or “violation
`of duty of disclosure,” the existence of such litigation
`must be brought to the attention of the Office by the
`applicant at the time of, or shortly after, filing the
`application, either in the reissue oath or declaration,
`or in a separate paper, preferably accompanying the
`application, as filed. Litigation begun after filing of
`the reissue application should be promptly brought to
`the attention of the Office. The details and documents
`
`from the litigation, insofar as they are “material to
`patentability” of the reissue application as defined in
`37 CFR 1.56, should accompany the application as
`filed, or be submitted as promptly thereafter as possi-
`ble. See Critikon, Inc. v. Becton Dickinson Vascular
`Access, Inc., 120 F.3d 1253, 1258, 1259, 43 USPQ2d
`1666, 1670-71 (Fed. Cir. 1997) (patent held unen-
`forceable due to inequitable conduct based on paten-
`tee's failure to disclose a relevant reference and for
`failing to disclose ongoing litigation).
`For example, the defenses raised against validity of
`the patent, or charges of “fraud” or “inequitable con-
`duct” in the litigation, would normally be “material to
`the examination” of the reissue application. It would,
`in most situations, be appropriate to bring such
`defenses to the attention of the Office by filing in the
`reissue application a copy of the court papers raising
`such defenses. At a minimum, the applicant should
`call the attention of the Office to the litigation, the
`existence and the nature of any allegations relating to
`validity and/or “fraud,” or “inequitable conduct”
`relating to the original patent, and the nature of litiga-
`tion materials relating to these issues. Enough infor-
`mation should be submitted to clearly inform the
`Office of the nature of these issues so that the Office
`can intelligently evaluate the need for asking for fur-
`ther materials in the litigation. See MPEP § 1442.04.
`>If litigation papers of a live litigation relating to a
`pending reissue application are filed with the Office,
`the litigation papers along with the reissue application
`file should be forwarded to the Solicitor’s Office for
`processing. If the litigation is not live, the litigation
`papers are processed by the Technology Center
`assigned the reissue application.<
`
`2001.06(d) Information Relating to Claims
`Copied From a Patent [R-2]
`
`Where claims are copied or substantially copied
`from a patent, 37 CFR 1.607(c) requires applicant
`shall, at the time he or she presents the claim(s), iden-
`tify the patent and the numbers of the patent claims.
`**Clearly, the information required by 37 CFR
`1.607(c) as to the source of copied claims is material
`information under 37 CFR 1.56 and failure to inform
`the USPTO of such information may violate the duty
`of disclosure.
`
`Rev. 2, May 2004
`
`2000-6
`
`

`

`Case 1:19-cv-11586-FDS Document 241-3 Filed 09/28/21 Page 8 of 15
`
`DUTY OF DISCLOSURE
`
`2003.01
`
`proceeding to which the disclosure pertains (37 CFR
`1.4(b)).
`2003 Disclosure __ When Made
`In reissue applications, applicants are encouraged
`to file information disclosure statements at the time of
`filing or within 2 months of filing, since reissue appli-
`cations are taken up “special” (see MPEP § 1442 and
`§ 1442.03). However, in a reissue where waiver of the
`normal 2 month delay period of 37 CFR 1.176 is
`being requested (see MPEP § 1441), the statement
`should be filed at the time of filing the application, or
`as soon thereafter as possible.
`The presumption of validity is generally strong
`when prior art was before and considered by the
`Office and weak when it was not. See Bolkcom v.
`Carborundum Co., 523 F.2d 492, 498, 186 USPQ
`466, 471 (6th Cir. 1975).
`2003.01 Disclosure After Patent
`Granted [R-2]
`
`Is
`
`> I
`
`.
`
`< BY CITATIONS OF PRIOR ART UNDER
`37 CFR 1.501
`Where a patentee or any member of the public
`(including private persons, corporate entities, and
`government agencies) has prior >art< patents or
`printed publications which the patentee or member of
`the public desires to have made of record in the patent
`file, patentee or such member of the public may file a
`citation of such prior art with the U.S. Patent and
`Trademark Office pursuant to >35 U.S.C. 301 and<
`37 CFR 1.501. Such citations and papers will be
`entered without comment by the Office. The Office
`>generally< does not ** consider the citation and
`papers but merely places them of record in the patent
`file. Information which may be filed under 37 CFR
`1.501 is limited to prior art patents and printed publi-
`cations. Any citations which include items other than
`patents and printed publications will not be entered in
`the patent file. See MPEP § 2202 through § 2208.
`
`> I
`
` < BY REEXAMINATION
`I.
`Where any person, including patentee, has prior art
`patents and/or printed publications which said person
`
`2002 Disclosur