Toro Company v. Scag Power Equipment, Inc.

From Bill Goodwine's Wiki
Jump to navigationJump to search

Toro Co. v. SCAG Power Equipment, Inc., No. 8:01-CV-279.

This case was tried in the United States District Court in Nebraska in 2003. The defendent, Scag, filed for summary judgment claiming that Toro engaged in inequitable conduct by purposefully withholding prior art from the Patent and Trademark Office (PTO) when applying for three of their patents ('863,'475, and '961). Both of these companies manufactured lawnmowers. For the '863 patent, Scag claimed Toro presented as prior art a brochure known as the "12/96" brochure for a Walker Manufacturing Company lawnmower, which does not count as prior art since the patent application was filed on Nov. 16, 1995. Toro claimed this brochure was only received in 12/96. The court held that the patent examiner is responsible for verifying the publication dates of prior art references, and the defendents did not sufficiently demonstrate intent by the plaintiff to deceive the patent examiner so the motion for summary judgement for the defendent was denied. For the '475 patent, Scag claims that Toro purposefully did not disclose a Scag lawnmower as prior art. Toro stated that they did present the Scag lawnmower as prior art, but it did not pertain to the '475 invention. The court held that Toro was not responsible for how much weight the patent examiner placed on the Scag lawnmower as prior art, and it held that the defendent once again failed to show intent by Toro to deceive the patent examiner, so Scag's motion for summary judgment was denied. For the '961 patent, Scag claimed Toro failed to disclose another Scag lawnmower as prior art and Toro's lawyer's refusal to submit a deposition about his disclosing of the prior art show an intent to deceive the patent examiner. Toro claimed they did disclose the Scag lawnmower in a drawing on the '961 patent. The court held that the lawyer did not have to submit a deposition because of lawyer-client confidentiality and that the drawing in the '961 patent was a sufficient disclosure of the Scag prior art. Once again, Scag's motion for summary judgement on Toro's inequitable conduct defenses was denied based on a failure to show intent by Toro to deceive the PTO.