There is an inherent conflict between the patent law and antitrust law because the grant of a patent provides the patentee with a monopoly for a limited time. For the most part a patentee’s action to enforce its patent will not subject the patentee to antitrust liability unless “the asserted patent was obtained through knowing and willful fraud” or “the infringement suit was a mere sham to cover what is actually nothing more than an attempt to interfere directly with the business relationships of a competitor”.

Nobelpharma AB sued Implant Innovations Inc. for infringement of its patent for implants which could cover dental implants. Implant Innovations Inc. filed a counterclaim alleging, inter alia, that the Nobelpharma suit violated the antitrust laws. The basis of this counterclaim was that Nobelpharma was attempting to enforce a patent that it knew was invalid and unenforceable because of the intentional failure during prosecution of the application to bring to the attention of the U.S. Patent and Trademark Office a 1977 book written by one of the inventors.

The first draft of the patent application included reference to the 1977 book but the first application that was filed in Sweden and the application which was ultimately filed in the United States did not include a reference to this book. In finding that there was an antitrust violation, the trial court also relied on the deposition testimony of one of the inventors who could not explain why he deleted reference to the 1977 Book in the patent application; the testimony of a witness who calculated from the depictions of scanning electron microscopy (SEM) in the book that the book disclosed micropits within the range claimed in the patent; the testimony of one of the inventors that “it would not have been difficult to calculate the size of the micropits depicted in the 1977 Book, given the magnification factors provided in the captions to the SEMs” and the testimony of two of the officers of Nobelpharma AB that they were aware that the failure to cite the 1977 Book to the Patent Office would invalidate the patent.

On appeal, the Court of Appeals for the Federal Circuit affirmed the decision of the trial court and noted that “a fraudulent omission can be just as reprehensible as a fraudulent misrepresentation”, that “a misrepresentation is material if the patent would not have issued ‘but for’ the omission” and “if the evidence shows that the asserted patent was acquired by means of either a fraudulent misrepresentation or a fraudulent omission and that the party asserting the patent was aware of the fraud when bringing the suit, such conduct can expose a patentee to liability under the antitrust laws”.