MEMORANDUM AND ORDER

WILLIAM PAULEY, District Judge

Plaintiff ATT Corp. ("ATT") brings this patent infringement action against Microsoft Corporation ("Microsoft"), alleging that certain of Microsoft's products containing speech codecs infringe its United States Patent No. Reissue 32,580 (the "580 patent"). Microsoft denies infringement of the 580 patent and seeks dismissal of the complaint together with a declaratory judgment of noninfringment, invalidity and unenforceability of the 580 patent. See ATT Corp. v. Microsoft Corp., 01 Civ. 4872 (WHP), 2003 WL 21459573 (S.D.N.Y. June 24, 2003). Familiarity with this Court's prior Memoranda and Orders is presumed.

Currently before this Court is ATT's motion for partial summary judgment on Microsoft's affirmative defense and counterclaim of inequitable conduct. For the reasons set forth below, ATT's motion for partial summary judgment is granted.

BACKGROUND

Microsoft's inequitable conduct defense and counterclaim concerns whether the inventors of the 580 patent, Dr. Bishnu S. Atal and Mr. Joel R. Remde, and the in-house patent attorney who prosecuted that application, Jack S. Cubert, Esq., intentionally failed to disclose material prior art to the United States Patent and Trademark Office (the "PTO") during prosecution of the 580 patent. Specifically, Microsoft claims that ATT should have disclosed to the PTO a 1980 paper co-authored by Dr. Atal and Dr. Manfred R. Schroeder entitled "Improved Quantizer for Adaptive Coding of Speech Signals at Low Bit Rates" (the "1980 Paper"). (ATT Ex. 1, Ex. 3 at 35-36.) Microsoft contends that the 1980 Paper anticipated one or more of the 580 patent claims, making it material, and raising an inference of intent to deceive the PTO. The facts underlying this motion are not in dispute.

A. Prosecution History of ATT's 580 and 832 Patents

On September 18, 1986, ATT filed a reissue application, which was also prosecuted by Cubert and examined by Examiner Kemeny. (ATT Ex. 6 at ATT3-ID.) The 580 patent left the original 39 claims unaltered and added claims 40-43. See ATT, 2003 WL 21459573, at *1. ATT did not disclose, and the PTO did not cite to any additional references other than the ones disclosed during prosecution of the 832 patent. (ATT Ex. 6 at ATT 3-ID; ATT 56.1 Stmt. at ¶ 11.) The PTO issued the 580 patent on January 19, 1988. (ATT Ex. 6 at ATT 3-ID.)

B. The 1980 Paper and the 057 and 124 Patents

In 1980, Drs. Atal and Schroeder co-authored the 1980 Paper, which they presented at the Institute of Electrical and Electronics Engineers, Acoustics, Speech and Signal Society conference on April 9-11, 1980. (ATT Ex. 1 at MSATT 34539; Deposition of Bishnu S. Atal, Ph.D., dated March 5, 2003 ("Atal Dep.") at 226-28.) On April 8, 1980, one day before the conference, ATT filed a patent application on behalf of Dr. Atal based on the subject matter of the 1980 Paper. (ATT Exs. 1, 8; Atal Dep. at 226-28.) On October 12, 1982, the PTO approved this application and issued U.S. Patent No. 4,354,057 (the "057 patent"). Like the 832 and 580 patents, Cubert prosecuted the 057 patent for ATT and Examiner Kemeny examined the application for the PTO. (ATT Ex. 8.)

On October 12, 1984, ATT filed a reissue application for the 057 patent. That application was also prosecuted by Cubert and examined by Examiner Kemeny. The PTO issued U.S. Patent No. Reissue 32,124 (the "124 patent") on April 22, 1986, five months before ATT filed its 580 reissue application. The parties refer to the 124 and 057 patents as the "Center Clipping Patents."

Thus, Cubert shepherded all four of the ATT applications through prosecution on behalf of ATT and PTO Examiner Kemeny examined each of the patent applications on an ongoing basis from April 1980 through January 1988.

DISCUSSION

I. Summary Judgment Standard

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); accord Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). The burden of demonstrating the absence of any genuine dispute as to a material fact rests with the moving party. See, e.g., Adickes v. S.H. Kress Co., 398 U.S. 144, 157 (1970); Grady v. Affiliated Cent., Inc., 130 F.3d 553, 559 (2d Cir. 1997). The movant may meet this burden by demonstrating a lack of evidence to support the nonmovant's case on a material issue on which the nonmovant has the burden of proof. Celotex, 477 U.S. at 323.

To defeat a summary judgment motion, the nonmoving party must do "more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Indeed, the nonmoving party must "set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); accord Matsushita Elec., 475 U.S. at 587. In evaluating the record to determine whether there is a genuine issue as to any material fact, the "evidence of the nonmovant is to be believed and all justifiable inferences are to be drawn in his favor." Liberty Lobby, 477 U.S. at 255.

"Although the premises of inequitable conduct require findings based on all the evidence, a procedure that may preclude summary determination, a motion for summary judgment may be granted when, drawing all reasonable factual inferences in favor of the non-movant, the evidence is such that the non-movant can not prevail." ATD Corp. v. Lydall, Inc., 159 F.3d 534, 547 (Fed. Cir. 1998) (citation omitted); accord Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1189-90 (Fed. Cir. 1993) (noting that inequitable conduct defense is not amenable to summary judgment if "the facts of materiality or intent are reasonably disputed").

II. Applicable Legal Standards

Patent applicants are required to prosecute applications with "candor, good faith, and honesty." Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1233 (Fed. Cir. 2003); see also 37 C.F.R. § 1.175(a)(7) (1986) (duty of candor applies throughout the prosecution of the patent). An otherwise valid patent may be rendered unenforceable by virtue of inequitable conduct committed during the prosecution of the patent application before the PTO.Glaverbel Societe Anonyme v. Northlake Marketing Supply, Inc., 45 F.3d 1550, 1556 (Fed. Cir. 1995). To establish a defense of inequitable conduct, Microsoft must prove: (1) that the "applicant failed to disclose material information to the PTO"; and (2) that the applicant "intended thereby to mislead or deceive the patent examiner into granting the patent." ATD Corp., 159 F.3d at 546; accord Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 719 (Fed. Cir. 1998). The burden is on Microsoft to establish materiality and inequitable conduct by clear and convincing evidence. Life Techs v. Clontech Labs., Inc., 224 F.3d 1320, 1326-27 (Fed. Cir. 2000); see also Abbott Labs, v. TorPharm, Inc., 300 F.3d 1367, 1379 (Fed. Cir. 2002) (affirming district court's grant of summary judgment of no inequitable conduct where accused infringer could not prove materiality and intent by clear and convincing evidence). Inequitable conduct must be determined by this Court at trial, unless the parties otherwise consent to submit it to the jury. Kingsdown Med. Consultants v. Hollister Inc., 863 F.2d 867, 876 (Fed Cir. 1988) (en banc). ATT does not consent to submit this issue to the jury. (ATT Br. at 11.)

A document is material "if there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1327 (Fed. Cir. 1998) (internal quotations omitted). A document is immaterial when it is "merely cumulative of references that were already before the examiner."Mentor H/S, Inc. v. Med. Device Alliance, Inc., 224 F.3d 1365, 1378 (Fed. Cir. 2001); accord Baxter Int'l, 149 F.3d at 1327. Although the legal standard for determining whether a prior art reference is "material" was amended in 1992, the Federal Circuit continues to apply the "reasonable examiner" standard of 37 C.F.R. § 1.56, in effect from 1977 through 1992, to patent applications prosecuted within that time period. Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1363 (Fed. Cir. 2003); Li Second Family Ltd. Pshp. v. Toshiba Corp., 231 F.3d 1373, 1379-80, 1380 n. 4 (Fed. Cir. 2000); see also Purdue Pharma L.P. v. Endo Pharms. Inc., No. 00 Civ. 8029 (SHS), 2004 WL 26523, at *20 (S.D.N.Y. Jan. 5, 2004) (providing a comprehensive history of the materiality standard). This Court notes that the 1992 amendment "was not intended to constitute a significant substantive break with the previous standard." Hoffman La-Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1368 n. 2 (Fed. Cir. 2003).

"Materiality does not presume intent," however, and Microsoft must separately prove deceptive intent by clear and convincing evidence.Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 822 (Fed. Cir. 1992) (quotation omitted); accord Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1358 (Fed. Cir. 2003) (affirming finding of no inequitable conduct where record "was bereft of evidence of intentional deception"); Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1581-82 (Fed. Cir. 1997). Indeed, "a mere showing that references having some degree of materiality were not disclosed does not establish inequitable conduct." Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1442 (Fed. Cir. 1991). As direct evidence of intent is "rarely available in instances of inequitable conduct," intent may be inferred from circumstantial evidence. Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256 (Fed. Cir. 1997); accord LaBounty Mfg., Inc. v. United States Int'l Trade Comm'n, 958 F.2d 1066, 1076 (Fed. Cir. 1992). However, negligence in failing to disclose a reference "can support an inference of intent only when, `viewed in the light of all the evidence, including evidence of good faith,' the conduct is culpable enough `to require a finding of intent to deceive.'"Halliburton, 925 F.2d at 1443 (quoting Kincrsdown, 863 F.2d at 876).

Second, "[a]fter threshold findings of materiality and intent have been established by clear and convincing evidence, the court must weigh them to determine" "whether the applicant's conduct is so culpable that the patent should be held unenforceable." Ulead Sys., Inc. v. Lex Computer Mgm't Corp., 351 F.3d 1139, 1144 (Fed. Cir. 2003); Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1363 (Fed. Cir. 2003) (emphasis in original); accord Glaverbel Societe Anonyme, 45 F.3d at 1558 ("All of the evidence, including evidence tending to show good faith, must establish sufficient culpability to establish both materiality and intent."). "As a general principle, materiality and intent are balanced — a lesser quantum of evidence is necessary when the omission or misrepresentation is highly material, and vice versa. At the same time, however, there must be some showing of intent to be balanced." Amqen, 314 F.3d at 1358 (citing GFI, 265 F.3d at 1273). Indeed, a court cannot find "inequitable conduct on an evidentiary record that is completely devoid of evidence of the patentee's intent to deceive the PTO."Amcren, 314 F.3d at 1358 (citing Alien Eng' g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002)).

Finally, this Court notes that "[t]he Federal Circuit has long decried the use of charging inequitable conduct in patent litigation." TM Patents, L.P. v. Int'l Bus. Mach. Corp., 121 F. Supp.2d 349, 372 (S.D.N.Y. 2000); accord Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988) ("[T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague."); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 (Fed. Cir. 1987) ("Inequitable conduct is not, or should not be, a magic incantation to be asserted against every patentee."); Chiron Corp. v. Abbott Labs., 156 F.R.D. 219, 221 (N.D. Cal. 1994) (finding inequitable conduct is often used as a delay tactic, a tactic to obfuscate the issues before the court, or a settlement tactic).

III. Merits

ATT argues that it is entitled to partial summary judgment on Microsoft's inequitable conduct defense and counterclaim because Microsoft cannot prove by clear and convincing evidence that 1980 Paper was material or withheld from the PTO Examiner with intentional deception. This Court agrees.

Even if Microsoft could show that the 1980 Paper was material to the prosecution of the 580 patent, it cannot show an intent to deceive by clear and convincing evidence. See Amgen, 314 F.3d at 1358 (affirming finding of no inequitable conduct where defendant could not prove intent by clear and convincing evidence); GFI, 265 F.3d at 1273 ("[M]ateriality does not presume intent, which is a separate and essential component of inequitable conduct.");Halliburton, 925 F.2d at 1442 ("Materiality of an undisclosed reference does not presume an intent to deceive."). At most, Microsoft can show by clear and convincing evidence that Dr. Atal, the author of over forty articles at the time ATT prosecuted the 580 patent, was negligent in not disclosing the 1980 Paper to the Examiner. It is well-established, however, that negligence, and even gross negligence, is insufficient to support a finding of intent to deceive, especially when rebutted by evidence of good faith. See, e.g., Ulead Sys., 351 F.3d at 1145-46; CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1342-43 (Fed. Cir. 2003); Kingsdown, 863 F.2d at 876.

Microsoft relies solely on Dr. Atal's knowledge of his own article, the 1980 Paper, to establish his intent to deceive the PTO. Specifically, Microsoft argues that the 1980 Paper was so material that its nondisclosure justifies an inference of intent to deceive. (MS Opp. at 15.) The Federal Circuit has expressly rejected Microsoft's argument.See, e.g., Alien Eng'g, 299 F.3d at 1351-52; Braun, 975 F.2d at 822. Indeed, "[i]ntent to deceive can not be inferred solely from the fact that information was not disclosed; there must be a factual basis for a finding of deceptive intent." Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 694 (Fed. Cir. 2001) (affirming finding of no intent to deceive where defendant argued that inventors failed to disclose highly relevant prior art articles) (citingHebert v. Lisle Corp., 99 F.3d 1109, 1116 (Fed. Cir. 1996));accord Glaverbel Societe Anonvme, 45 F.3d at 1557-58 (Fed. Cir. 1995) (affirming finding of no intent to deceive where patentee failed to disclose allegedly material prior art, but believed such prior art related to a different process than the patent in suit);Halliburton, 925 F.2d at 1442 ("[A] mere showing that references having some degree of materiality were not disclosed does not establish inequitable conduct."). Indeed, the undisputed evidence shows that the patentees acted in good faith and unequivocally believed that the 1980 Paper was irrelevant to the prosecution of the 580 patent.See Halliburton, 925 F.2d at 1443 (holding that good faith must be taken into account in determining whether nondisclosure constitutes conduct culpable enough to require a finding of intent to deceive);Glaverbel Societe Anonyme, 45 F.3d at 1558 ("All of the evidence, including evidence tending to show good faith, must establish sufficient culpability to establish both materiality and intent."). Dr. Atal repeatedly testified at his deposition that he was aware of the 1980 Paper, but did not disclose it because it was "completely unconnected" and involved "an entirely different topic" than the 832 and 580 patents. (Atal Dep. at 268, 291-92.) Additionally, Remde testified that he was not aware of any relevant prior art to give to the PTO. (Deposition of Joel Remde, dated August 13, 2002 ("Remde Dep.") at 79 ("I was not aware of any relevant material, so I didn't produce any material").) Further, Cubert, who left ATT in 1990, also testified that he had no recollection of prosecuting the 580, 832, or the Center Clipping patents approximately two decades ago. (Deposition of Jack Cubert, Esq., dated October 29, 2003 ("Cubert Dep.") at 40-42, 53-54.) Cubert ceased working for ATT's speech processing group in 1987 and took on responsibilities involving a "completely different subject matter." (Cubert Dep. at 54.)

It is well-established that a patent applicant's mere awareness of nondisclosed prior art does not alone establish an intent to deceive.See, e.g., Halliburton, 925 F.2d at 1443 (finding patentee's assertion of no intent to deceive "objectively reasonable" despite awareness of the nondisclosed references, where patentee did not consider the references material); Glaverbel Societe Anonyme, 45 F.3d at 1557-58 (same); Braun, 975 F.2d at 822 (lack of knowledge of materiality can rebut an inequitable conduct allegation). Accordingly, Microsoft cannot establish an intent to deceive the PTO by clear and convincing evidence based solely on the patentee's awareness of the 1980 Paper.

Notably, the facts surrounding this dispute support the veracity of the patentee's belief of non-materiality, as well as the notion that ATT was not attempting to dupe the PTO. ATT prosecuted the 580 patent nearly contemporaneously with its prosecution of the Center Clipping patents, which are based on the subject matter of the 1980 Paper. ATT knew that PTO Examiner Kemeny was examining both the 580 and the Center Clipping patents. (ATT 56.1 Stmt. § 16.) Because the patentees knew that Examiner Kemeny had actual knowledge of the 1980 Paper's subject matter, there was a disincentive to deceive the PTO through nondisclosure during the prosecution of the 580 patent. "[A] patentee has no obligation to disclose an otherwise material reference if the reference is cumulative or less material than those already before the examiner." Halliburton, 925 F.2d at 1440 (reversing finding of inequitable conduct where patentee acknowledged that it was aware of withheld references but did not consider them material); accord Mentor H/S, 244 F.3d at 1365 ("[M]ere knowledge of [an undisclosed, cumulative] reference . . . is not an indication of an intent to deceive.")

Besides its argument that intent may be inferred from materiality, Microsoft submits no other basis or evidence supporting an inference that the patentees had an intent to deceive the PTO by nondisclosure of the 1980 Paper. (MS Opp. 13-16.)

Finally, Microsoft advances a meritless argument that ATT "continues to hide behind the attorney-client privilege with respect to communications between the inventor and his patent attorney." (MS Br. at 17.) On September 23, 2003, this Court denied Microsoft's request to discover privileged documents concerning Dr. Atal's 1986 reissue declaration, including certain documents that Microsoft contends might have "confirmed or refuted Dr. Atal's . . . good faith in failing to submit the 1980 paper." (MS Br. at 17; Transcript of Order, dated September 23, 2003 ("9/23 Tr.") at 1-7.) Microsoft attempts to use this Court's Order as a vehicle to argue that "the record is devoid of any evidence of good faith." (MS Br. at 17-18.) First, the burden is on Microsoft to prove deceptive intent by clear and convincing evidence, and not on ATT to prove good faith. See Mentor H/S, 244 F.3d at 1377 (noting that the burden is on the defendant to prove the defense of inequitable conduct by clear and convincing evidence); CMFT, 349 F.3d at 1342-43 (same, holding that the patentee's conduct must indicate sufficient culpability to require a finding of intent to deceive, even when taking into account all good faith evidence).

Second, Microsoft's argument implicitly suggests that ATT has asserted the attorney-client privilege to shield evidence of bad faith — an assertion that is completely devoid of any support. It is still the case today, as it was when this Court issued its September 23, 2003 ruling (9/23 Tr. at 6-7), that Microsoft has not submitted any evidence even hinting at the patentees' fraudulent intent.

In conclusion, based on the undisputed facts, Microsoft cannot establish inequitable conduct by clear and convincing evidence because it failed to show that the patentees withheld the 1980 Paper with an intent to deceive the PTO, or that their conduct was "so culpable" as to warrant application of the defense.

CONCLUSION

SO ORDERED.