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Patent Office, knowing that its performance was better than the plastic-coated fibers actually shown to the examiners. Finally, Norton urges that Curtiss fraudulently misrepresented the actual construction of the fibers employed to overcome the rejection. The Commissioner considered the first two charges in deciding the motion to strike. The board had before it all three.

We have found it helpful to approach the law to be applied here on an analytical basis, considering seriatim each one of the elements of “technical” fraud, as we listed them earlier, and determining in what manner it has been affected by the broadening of the concept of fraud" before the Patent Office. We will then evaluate Norton's charges in light of that determination.

[10] Our analysis first requires an evaluation of the representations made by Curtiss. It should be immediately apparent that the afidavit and the comments made by Curtiss's attorney regarding the comparison demonstration before the examiners are to be scrutinized for accuracy. We hasten to add, however, that the inquiry is not so narrow. Where, as here, an applicant attempts to overcome a rejection by submitting a comparative showing of properties, the very act of submitting that showing, apart from what is represented therein, must also be regarded as a representation. The most meaningful comparison, in such instances, would be that between the claimed invention and the best embodiment of the prior art available. Therefore, in submitting evidence of comparative tests, unless the circumstances indicate the contrary, an applicant must be held to be representing that his showing includes a fair and accurate demonstration of the closest prior art of which he is aware.13

[11] Of critical concern in analyzing the first element is the question of the scope to be accorded the concept of materiality. In technical fraud, to be “material”, the fact misrepresented must be “the efficient, inducing, and proximate cause, or the determining ground” of the action taken in reliance thereon. 37 C.J.S., Fraud, $ 18 (1943). In patent cases, "materiality” has generally been interpreted to mean that if the Patent Office had been aware of the complete or true facts, the challenged claims would not have been allowed. See e.g., Charles Pfizer & Co. v. FTC, 401 F. 2d 574, 159 USPQ 193 (6th Cir. 1968). However, the above test cannot be applied too narrowly if the relationship of confidence and trust between applicants and the Patent Office is to have any real meaning. Findings of materiality should not be limited only to those situations where there can be no dispute that the true facts, or the complete facts, if they had been known, would most likely have prevented the allowance of the particular claims at issue or alternatively, would provide a basis for holding those claims invalid. In such cases, the claims at issue would probably be invalid, in any event, because of the existence of those facts, in and of themselves. Whether the claims would also be unenforceable because a fraud was committed in misrepresenting the facts to the Patent Office would really be of secondary importance.14 It is our view that a proper interpretation of the "materiality” element of fraud in this context must include therein consideration of factors apart from the objective patentability of the claims at issue, particularly (where possible) the subjective considerations of the examiner and the applicant. Indications in the record that the claims at issue would not have been allowed but for the challenged misrepresentations must not be overlooked due to any certainty on the part of the reviewing tribunal that the claimed invention, viewed objectively, should have been patented. If it can be determined that the claims would not have been allowed but for the misrepresentation, then the facts were material regardless of their effect on the objective question of patentability.15 In the case before us, we feel that both the Commissioner and the board placed too much emphasis on the apparently conceded fact of superiority of the glass-coated fibers to plastic-coated fibers and, in doing so, discounted the obvious fact that the examiner had allowed the claims which became the counts at issue directly as a result of the representations made by Curtiss in the challenged demonstration.

13 In the case before us, then, Norton's charges that the plastic-coated fibers used in the comparison were not representative of the true state of the prior art, and that a better example of the prior art (exhibit 23) was knowingly withheld by Curtiss, are actually separate elements of an attempt to establish the same thing, i.e., that the comparison submitted was a misrepresentation. The situation is therefore not similar to that in which pertinent prior art is withheld when no facts are represented to the Patent Office. We express no opinion on that situation.

Whether the representations made to the Patent Office, either expressly or impliedly, were false, is simply a question of fact, to be decided on the evidence submitted. We will discuss that evidence, shortly.

14 It might be important, however, where used to justify an award of reasonable attorney's fees, see, e.g., Townsend Co. v. M.8.L. Industries, 143 USPQ 352 (N.D. III. 1964) af'd, 359 F. 2d 814, 149 USPQ 243 (7th Cir. 1966); and, of course, may be of crucial importance where such a patent is knowingly attempted to be enforced. Walker Proce88, supra. See also, Niro & Wigert, Jr., Patents, Fraud and the Antitrust Laws, 37 Geo. Wash. L. Rev. 169 (1968).

16 Witness, for example the following language of our late colleague, Judge Jackson, sitting as a trial judge in Abington Tertile Works v. Carding Specialists Ltd., 148 USPQ 33 (D.D.C. 1965) at 46 :

If it is established convincingly that a patentee made a deliberate, intentional misrepresentation to the Patent Office during prosecution of his application, then his patent may be declared invalid on that ground alone, even though the patent might otherwise be valid in every respect. (Emphasis added.)


[12] The state of mind of the one making the representations is probably the most important of the elements to be considered in determining the existence of “fraud”. Perhaps it is most of all in the traditional element of "scienter” that the existence of a fiduciary-like duty should have its effect. As we have already indicated, the procurement of a patent involves the public interest, not only in regard to the subject matter of the patent grant, but also in the system under which that grant is obtained. Conduct in this area necessarily must be judged with that interest always taken into account and objective standards applied. Good faith and subjective intent, while they are to be considered, should not necessarily be made controlling. Under ordinary circumstances, the fact of misrepresentation coupled with proof that the party making it had knowledge of its falsity is enough to warrant drawing the inference that there was a fraudulent intent. Where public policy demands a complete and accurate disclosure it may suffice to show nothing more than that the misrepresentations were made in an atmosphere of gross negligence as to their truth. The Commissioner and the board, by apparently giving controlling effect on this point to Curtiss's subjective belief that his invention was superior narrowed the requirement almost to that of proving actual intent. This was error.

Reliance and injury are the two remaining elements to be considered. In this case, of course, we have already pointed out the finding of the board that the Curtiss claims were allowed "in substantial measure" as a result of the representations made in the affidavit and demonstration. Reliance is thus not in issue here, nor can there be any doubt that the examiner's reliance was justified. With regard to the element of injury, we need only repeat the words of the Supreme Court: A patent by its very nature is affected with a public interest. * * * The far reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgroun free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope.

[13] Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 65 USPQ 133 (1945). Where fraud is committed, injury to the public through a weakening of the Patent System is manifest.

From our evaluation of the evidence which was before the Patent Office here, we are not convinced that the Commissioner erred in refusing to find "fraud" in regard to Norton's first charge. We note first that the statements made in the affidavits and in the discussions by Curtiss's attorney regarding the demonstration before the examiners appear to be accurate at least insofar as they apply to the actual plasticcoated fibers actually described and used by Curtiss. So viewed, there was no literal misrepresentation. However, as we indicated earlier, if the level of performance of the plastic-coated fibers actually employed in the comparison was below that of the best prior art known to Curtiss, then the statements made to the examiner, regardless of their literal truth, could still amount to misrepresentation by implication. Since the most relevant, meaningful comparison would necessarily have to have been between the claimed glass-coated fibers and the best plasticcoated fibers available to the prior art, Curtiss's statements must be considered as an implied representation that, as far as he knew, he was making such a comparison. On this point we note that the record is singularly unclear as to the actual state of the prior art with regard to the performance levels of plastic-coated fibers. It is true that the record includes a number of instances which tend to show that, prior to the subject comparison, Curtiss was aware of plastic-coated fibers possessing a better level of performance than the fibers of Exhibit 11, the fibers actually shown to the examiners. There is also mention in the testimony of Norton's witness Hicks that Norton's assignee possessed plastic-coated fibers which performed better than the fibers of Exhibit 11. Notwithstanding this, we can find no indication in the record, much less convincing proof, that the particular fibers referred to were in fact prior art fibers, i.e., that they were available to the art generally at the time Curtiss made his claimed invention. We find this deficiency fatal to Norton's case.

[14] Our coments above apply equally to the second prong of Norton's attack, i.e., that Curtiss withheld material evidence (Exhibit 23). Again we point out that it has not been proved that Exhibit 23 is representative of the prior art.16 The mere fact that Curtiss knew of its existence before he invented the glass-coated fibers does not negate this. One's own knowledge is not necessarily that to be attributed to the art generally. Norton failed to establish the falsity of Curtiss's representation to the Patent Office regarding the performance level of his claimed invention vis-a-vis that of the prior art.

[15] Finally, in connection with the charge that Curtiss fraudulently misrepresented the actual construction of the fibers demonstrated before the examiners, we are satisfied that there is substantial evidence in the record to support the board's conclusion that Curtiss was guilty of no more than simple negligence. We note, particularly, testimony supporting Curtiss's recollection that, during the time he was working on his project at the University of Michigan, he and his co-workers had never prepared fibers coated with plastic having a higher index of refraction than the core and the statements in the record indicating that the plastic coating deteriorates with age. Both of these points support the contention that Curtiss had some basis to believe that the plastic-coated fibers he showed to the examiners were, in fact, the same fibers he had prepared several years earlier. We therefore approve the board's holding that Curtiss's negligence in this respect was not enough, by itself, to warrant striking his application. If it had been shown satisfactorily that the performance of plasticcoated fibers available to the art generally at the time Curtiss made his invention was significantly higher than the fibers actually demonstrated, and that Curtiss was aware of that fact at the time of the demonstration, we would be disposed to consider proof of this one negligent act as an element in establishing the existence of a state of mind so grossly irresponsible as to justify a holding of fraudulent misconduct. Needless to say, such facts were not established, and thus Norton's charges must fail completely.

18 The board did make some statements which could be interpreted as indicating that they thought that Exhibit 23 was below the level of performance known to the art. No explicit finding regarding such level was made, however, and we decline to read one into the board's language.

[16] We must emphasize that while we have recognized the requirement that the provisions of Rule 56 be interpreted more broadly in this area of inequitable conduct, the rule as to burden of proof has not changed. Because of the importance of this issue, the courts have demanded that the quantum of proof as to fraud be substantial. The standard has been and still is that proof of fraud must be clear and convincing. Thus, the one asserting misconduct carries a heavy burden of persuasion. We have considered the evidence submitted by Norton in light of that burden, and are unable to hold that the Commissioner abused his discretion in refusing to strike the Curtiss application on the basis of such evidence. We now must consider the merits of the priority issue.

Norton's Priority Case [17] Norton, as junior party, has the burden of proving priority by a preponderance of the evidence. He contends that he has met that burden by proving that he conceived the invention before Curtiss and that he either actually reduced it to practice before Curtiss or was diligent in reducing it to practice from a time before Curtiss's conception until his own reduction to practice. While a motion to amend Norton's preliminary statement to advance certain dates is in issue, we will initially consider the Norton priority evidence without regard to any limitation which might be imposed on his proofs if the action of the board, which denied that motion, is sustained.

The evidence shows that Norton is an eminent physicist who has been a consultant to American Optical Company in the fields of optics and glass technology since about 1954. He performed his duties on an informal basis. Thus he made fairly regular visits to the AO laboratories observing the activities and talking to the employees and making suggestions as he saw fit.

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