Leviton Manufacturing Co. v. Shanghai Meihao Electric, Inc. (613 F. Supp. 2d 670, 2009)

MEMORANDUM AND ORDER ADOPTING REPORT AND RECOMMENDATION OF MAGISTRATE JUDGE SUR ATTORNEYS’ FEES AND COSTS

ANDRE M. DAVIS, District Judge.

In this consolidated patent infringement action, now pending are the objections of plaintiff Levitón Manufacturing Co., Inc. (“Levitón”), to the Report and Recommendation of Magistrate Judge Susan K. Gauvey, who has recommended that defendant Shanghai Meihao Electric, Inc. (“Meihao”), be awarded attorneys’ fees and costs. For the reasons set forth by Judge Gauvey and stated herein, the court overrules Levi-ton’s objections and awards fees and costs.

I.

On March 31, 2005, Levitón filed suit against Universal Security Instruments, Inc., and USI Electric, Inc., for infringement of U.S. Patent No. 6,864,766 (’766 Patent), claiming a ground fault circuit interrupter (“GFCI”). On May 5, 2005, Meihao, which manufactured and supplied the products alleged by Levitón to be infringing, sought a declaratory judgment that the '766 Patent is (1) not infringed; (2) invalid; and/or (3) unenforceable. In due course, the two cases were consolidated.

Discovery on the issue of patent enforceability, i.e., inequitable conduct, proved contentious and protracted; consequently, by order entered on May 24, 2007, the court referred the case to Magistrate Judge Gauvey pursuant to 28 U.S.C. § 636(b)(1)(A) for the management of discovery. Judge Gauvey promptly turned her attention to that task, issuing several orders and holding a hearing on various motions to compel and/or for protective order.

Somewhat abruptly, on November 28, 2007, just as Judge Gauvey was prepared to issue a comprehensive opinion rejecting Levitón’s motion for a protective order and requiring Levitón to produce documentary and testimonial evidence regarding inequitable conduct, Levitón sought leave to dismiss voluntarily all its claims. Meihao responded that, provided its right to seek an award of fees and costs was preserved, it (and the other defendants) would have no objection to the dismissal of the claims for infringement. Thereafter, the court dismissed all claims while preserving Meihao’s right to seek fees and costs. Meihao timely filed its motion. As Judge Gauvey had become intimately familiar with the case through her extensive work on discovery issues, I referred the motion for fees and costs to her on February 25, 2008, for a report and recommendation.

Judge Gauvey reviewed the parties’ voluminous briefing on the motion for fees and costs and held a hearing on September 3, 2008. In an extraordinarily thorough and meticulous 128-page Report and Recommendation (which I adopt and attach hereto) issued pursuant to Fed.R.Civ.P. 72(b), she found and concluded that the case presented exceptional circumstances under 35 U.S.C. § 285 (i.e., that Levitón had been shown to have engaged in (1) inequitable conduct before the United States Patent and Trademark Office (“PTO”) and (2) vexatious litigation tactics in this case). Ultimately, Judge Gauvey also found and concluded that an award of fees and costs was necessary to avoid gross injustice. Thus, she recommended an award to Meihao in the amount of $84,080.20 in costs and $726,579.15 in attorneys’ fees. (She has also recommended that Meihao be awarded its reasonable costs and fees incurred in litigating the motion for fees and costs). Levitón timely filed its objections and the issues have been fully briefed by the parties. No hearing is necessary.

II.

The role of the district judge in these circumstances is clear and well-settled. See Rule 72(b)(3) (“The district judge must determine de novo any part of the magistrate judge’s disposition that has been properly objected to. The district judge may accept, reject, or modify the recommended disposition; receive further evidence; or return the matter to the magistrate judge with instructions.”); see Segal v. L.C. Hohne Contractors, Inc., 303 F.Supp.2d 790, 792-95 (S.D.W.Va.2004). After a searching, de novo review of Judge Gauvey’s Report and Recommendation, in light of Leviton’s objections, and the exhaustive briefing by the parties, the court is satisfied that Judge Gauvey committed no error of fact or law. To the contrary, her findings and conclusions reflect that she correctly identified controlling legal principles, she cogently identified and marshaled the undisputed facts bearing on the issues presented, and she faithfully applied those principles to those undisputed facts. I adopt her findings and conclusions as the opinion of this court.

III.

A.

Under 35 U.S.C. § 285 and Fed.R.Civ.P. 54(d), attorneys’ fees and costs may be awarded to a prevailing party. Inland Steel Co. v. LTV Steel Co., 364 F.3d 1318, 1319-20 (Fed.Cir.2004). Here, Meihao is the prevailing party because Levitón voluntarily dismissed all of its claims with prejudice. See Power Mosfet Technologies, LLC v. Siemens AG, 378 F.3d 1396, 1415 (Fed.Cir.2004) (“The dismissal of a claim with prejudice ... is a judgment on the merits under the law of the Federal Circuit.”). As the prevailing party, Meihao is eligible for an award of attorneys’ fees upon proving the existence of an “exceptional case.” As relevant here, an exceptional case is one in which one party has (1) committed inequitable conduct before the PTO or (2) engaged in litigation misconduct (through vexatious litigation tactics) in the district court. See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed.Cir.2002). Judge Gauvey properly focused on, and found that fees and costs were appropriately to be awarded, under each of these rubrics.

B.

Leviton’s objections to the Report and Recommendation comprise in the main a jumble of miscitations to legal standards; blatant ignoring of other, controlling standards; reliance on arguments that are waived (because they were not presented to the Magistrate Judge) or utterly irrelevant to the issues presented; and a veritable sea of red herrings. Most striking of all, it makes the curious assertion, which it repeatedly and vigorously advances, that “no evidence” supported the subsidiary factual findings arrived at by Judge Gauvey. None of these plaints, either singly or in the aggregate, provide a basis for rejecting the Report and Recommendation. As a concession to the shortness of life, the court here simply identifies (and rejects) the most plausible and earnestly urged challenges Levitón has mounted.

1.

Levitón objects that Judge Gauvey erred in ruling without a factual basis for her conclusions and that, in any event, in opposing the motion for fees and costs, it demonstrated the existence of genuine disputes of fact, thus precluding the resolution of the request for fees and costs absent a full-blown evidentiary hearing. Indeed, Levitón asserts that Judge Gauvey’s adjudication of the motion for fees and costs deprived it of due process. These contentions wholly lack merit.

It is well-established that, under Federal Circuit law, a court may decide a claim for attorneys’ fees under § 285 after a dismissal with prejudice. Highway Equip. Co., Inc. v. FECO, Ltd., 469 F.3d 1027, 1035 (Fed.Cir.2006); see also Tenax Corp. v. Tensar Corp., 22 U.S.P.Q.2d 1264, 1267 (D.Md.1991) (collecting cases). Judge Gauvey’s determination of inequitable conduct (one way of establishing an exceptional case under § 285) was procedurally and substantively proper. In particular, as is clear in her detailed, lengthy analysis of the issues, she relied on undisputed facts and sound interpretations of controlling legal principles. Digital Control, Inc. v. Charles Machine Works, 437 F.3d 1309, 1313 (Fed.Cir.2006) (courts may make a ruling on inequitable conduct as a matter of law). To the extent Levitón complains of the absence of an adversary evidentiary hearing, it suffices to observe that a litigant cannot be deprived of that which it never sought. Wilson v. Bd. of Trustees, 333 F.Supp.2d 392, 396 (D.Md.2004) (“It is difficult to see how one can be unconstitutionally deprived of that which one never desired or sought in the first instance.”).

2.

As previously stated, an exceptional case is one, inter alia, in which one party has committed (1) inequitable conduct before the PTO or (2) litigation misconduct (e.g., vexatious litigation tactics). See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed.Cir.2002). The gravamen of Leviton’s objections is that inequitable conduct before the PTO has not been proven. Levitón is wrong.

Inequitable conduct results from an applicant’s failure to comply with his duty of candor in all dealings with the PTO. Cf. 37 C.F.R. § 1.56; Molina P.L.C. v. Textron, Inc., 48 F.3d 1172, 1178 (Fed.Cir.1995). Actions of a patent applicant’s attorney are chargeable to the applicant. See, e.g., id. An issued patent may be deemed unenforceable due to inequitable conduct where it is shown by clear and convincing evidence that (1) the patentee (or his agent/attorney) withheld or misrepresented material information and (2) did so with the intent to deceive the PTO examiner into granting the patent. See, e.g., Impax Labs., Inc. v. Aventis Pharmaceuticals, Inc., 468 F.3d 1366, 1374 (Fed.Cir.2006). Under one of several equally applicable tests, information is “material” if a reasonable examiner “would have considered such [information] important in deciding whether to allow” the application. Id. (citing Digital Control Inc., 437 F.3d at 1314; Agfa Corp. v. Creo Prods., Inc., 451 F.3d 1366, 1373 (Fed.Cir.2006)). Furthermore, an intent to deceive may be “inferred from the facts and circumstances surrounding the applicant’s overall conduct” and need not be proven, indeed, can rarely be proven, by direct evidence. Impax, 468 F.3d at 1374-75. Once materiality and intent have been established, courts must conduct a balancing test in order to determine whether to adopt the mixed factual/legal conclusion that inequitable conduct has been established by the requisite evidentiary standard. Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1128-29 (Fed.Cir.2006).

In addition, “[l]itigation misconduct and unprofessional behavior are relevant to the award of attorney fees, and may suffice to make a case exceptional under § 285.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1574 (Fed.Cir.1996); see also Rambus Inc. v. Infineon Tech. AG, 318 F.3d 1081, 1106 (Fed.Cir.2003); Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed.Cir.2002). Judge Gauvey correctly concluded that Levitón was guilty of inequitable conduct and, as well, that it had engaged in litigation misconduct in its prosecution of this case. (She acknowledged that an award on the latter ground alone would justify only a smaller award, but that it was unnecessary to conduct such an analysis in light of the determination reached on the former ground.)

3.

In challenging the determination that it was guilty of inequitable conduct, Levitón argues that the Germain application (another Levitón patent application claiming GFCI technology prepared and prosecuted by its longtime counsel, which it hid from the PTO examiner) was not material to the patentability of the '766 Patent. Levitón points to the fact that the effective filing date of the '766 is August 20, 1999, which predates the filing of the Germain application (February 3, 2003). Moreover, the Germain application and the '766 have different inventors. Therefore, according to Levitón, the Germain application “could not possibly qualify as material ‘prior art’ to the '766 Patent.” Leviton’s Objections at 23.

These arguments are largely inapposite and, in any event, as the Magistrate Judge concluded, unavailing. Levitón was required to inform the PTO of the existence of the Germain application under any reasonable understanding of the overarching “duty of candor” and specifically under 37 C.F.R. § 1.604(b), which provides, “[w]hen an applicant presents a claim known to the applicant to define the same patentable invention claimed in a pending application of another, the applicant shall identify that pending application, unless the claim is presented in response to a suggestion by the examiner.” As a matter of law, Levitón should have disclosed the Germain application to the examiner. It is undisputed that the '766 Patent and the Germain application have many claims that are either identical (word-for-word) or very nearly so. As a matter of law, the claims in the '766 Patent and the Germain application therefore claim the same subject matter. Manifestly, as Judge Gauvey found and concluded by clear and convincing evidence, the claims in the '766 Patent were copied from the Germain application.

Any reasonable examiner would have found the Germain application “important in deciding whether to allow” the '766 Patent. Impax, 468 F.3d at 1374. Aside from identical claim language, it is also undisputed that the '766 and the Germain application were both filed by Levitón and were drafted and prosecuted by the same attorney, Claude Narcisse, Esq.; however, they list different inventors. These facts led Judge Gauvey to find and conclude— rightly so — that a reasonable examiner would have thought the Germain application important in allowing the '766. As a matter of law, the Germain application would have raised in the mind of any reasonable examiner questions about (1) the '766’s inventorship, (2) whether the '766’s specification supports its claims, and (3) the possibility of double patenting. In short, the existence of the Germain application was material as a matter of law.

Levitón devotes many pages in its submission to its arguments that there is “no evidence” that: (1) the inventors of the Germain application are the inventors of the '766; (2) the specification of the '766 does not support the claims; or (3) an examiner would have issued a double patenting rejection in light of the Germain application. However, Judge Gauvey did not need to make rulings on these specific issues. For example, Judge Gauvey was not required to determine whether the specifications of either the Germain application or the '766 Patent support their respective claims. See 35 U.S.C. § 112. This determination was wholly unnecessary. Judge Gauvey found and concluded that the Germain application was material to the '766 Patent because the Germain application and the '766 patent contain the same claims and are written by the same patent prosecutor but have different specifications. In light of the Germain application, a reasonable examiner would have, at the very least, questioned whether the specification of the '766 properly supports the claims.

Notably, both the Germain application and the '766 Patent use the term “movable bridge.” This term appears no fewer than 46 times in the Germain application, including its specification. This term appears in the claims of the '766 Patent but is nowhere to be found in the '766’s specification. Judge Gauvey did not find that the absence of the term “movable bridge” in the specification of the '766 necessarily meant that the claim was unsupported, i.e., ran afoul of § 112 ¶ 1. Nor did she need to do so. What Judge Gauvey properly found and concluded was that the disclosure of the Germain application would have led a reasonable examiner to question the '766’s compliance with § 112. Thus, the Germain application is information that a reasonable examiner would have considered important in deciding whether to allow the '766 Patent. See Impax, 468 F.3d at 1374.

The same analysis applies to inventor-ship and double patenting. Judge Gauvey did not err in finding that the Germain application was indeed material (and therefore should have been disclosed to the PTO) because it puts inventorship, § 112, and double patenting into question. Contrary to Leviton’s view, Judge Gauvey did not have to rule on the ultimate issues of proper inventorship, validity under § 112, or double patenting in order to find the Germain application material. See, e.g., PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1322 (Fed.Cir.2000) (“[W]hether the inventorship of the patents as issued is correct does not determine the materiality of the statements in this case.”).

Levitón also strenuously argues that only prior art is material to an inequitable conduct analysis. This argument directly contravenes Federal Circuit law. See, e.g., Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234 (Fed.Cir.2003) (“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.”) (citing GFI Inc. v. Franklin Corp., 265 F.3d 1268, 1274 (Fed.Cir.2001)); accord Dayco Products, Inc. v. Total Containment Inc., 329 F.3d 1358, 1363 (Fed.Cir.2003) (citing Akron Polymer Container Corp. v. Exxel Container, Inc., 148 F.3d 1380, 1382 (Fed.Cir.1998) (“Information did not need to be prior art in order to be material, but ‘instead embrace[d] any information that a reasonable examiner would substantially likely consider important in deciding whether to allow an application to issue as a patent.’ ”)). Leviton’s desire to have the court blink at these authorities, is scant reason for the court to do so.

Plainly, the Germain application is material even though it was filed subsequent to the effective filing date of the '766 Patent. Patent examiners are required to “search all applications based on the actual U.S. filing date of the application rather than on the filing date of any parent U.S. application for which benefit is claimed. Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application but before the actual filing date of the application being examined.” Manual of Patent Examination Procedure § 700.05, Examiner Note (emphasis added). The '766 application’s effective filing date is August 20, 1999 because it claims priority to its parent application’s filing date. The '766 application was actually filed on April 19, 2004, after the Germain application was filed. The Germain application was material prior art because its effective filing date is after the filing date of the '766’s parent application but before the '766’s actual filing date.

Judge Gauvey also properly found and concluded that the Germain application was withheld with the intent to deceive the PTO. Intent to deceive must be “viewed in light of all the evidence.... Intent need not, and can rarely be, proven by direct evidence. Rather, intent to deceive is generally inferred from the facts and circumstances surrounding the applicant’s overall conduct.” Impax, 468 F.3d at 1374-75. Levitón points to the lack of direct evidence of its intent to deceive, see Leviton’s Objections at 37-41 (“Meihao never submitted evidence that attorney Narcisse made any affirmative [misjrepresentation to the PTO.”) But direct evidence, as the Federal Circuit has noted, is rarely available and is unnecessary to sustain a finding by clear and convincing evidence of an intent to deceive. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1364 (Fed.Cir.2007) (“[B]ecause direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence”). “An inference of intent to deceive is generally appropriate ... when (1) highly material information is withheld; (2) the applicant knew of the information [and] ... knew or should have known of the materiality of the information; and (3) the applicant has not provided a credible explanation for the withholding.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1313-14 (Fed.Cir.2008) (internal citations omitted).

Here, Narcisse withheld highly material information in the form of the Germain application. He knew of the materiality of this information. In fact, he drafted the '766 Patent and the Germain application within a relatively short time period of one another. And, he has not offered any credible explanation as to why the information was withheld. Narcisse’s bare denials of his subjective belief that disclosure was not required contradict his own testimony that he not only was familiar with MPEP requirements and PTO regulations, but that he was also aware of 37 C.F.R. § 10.23, which prohibits copying of claims, and 37 C.F.R. § 1.604(b), which requires disclosure of material information. Having conducted a plenary de novo review of the evidence of record, the court has no hesitation in finding and concluding, as did Judge Gauvey, by clear and convincing evidence, that Levitón acted with the specific intent to deceive the PTO in prosecuting the '766 Patent.

Judge Gauvey did not err in finding inequitable conduct, where the materiality of the undisclosed prior art is extremely high and the circumstantial and indirect evidence of intent to deceive is strong. See Purdue Pharma, 438 F.3d at 1128-29 (“This requires a careful balancing: when the misrepresentation or withheld information is highly material, a lesser quantum of proof is needed to establish the requisite intent. In contrast, the less material the information, the greater the proof must be.”).

4.

Levitón complains that there is no evidence that the accused Meihao GFCIs do not infringe the '766 Patent. This statement is true; however, it has no relevance to the issue at hand. It is a non sequitur. Levitón moved to dismiss its infringement claims with prejudice, thereby making Meihao the prevailing party and therefore entitled to attorneys’ fees if this was an exceptional case. This is an exceptional case. Leviton’s strategic decision to abandon the litigation in order to avoid adjudication of the inequitable conduct defense fall short for the reasons identified herein and in the Report and Recommendation.

5.

Levitón argues that there is no evidence that the '766 Patent is invalid over prior art. But the absence of a finding of invalidity has no bearing on whether a piece of prior art, such as the Germain application, should have been disclosed to the patent examiner. The Federal Circuit is clear that “materiality of prior art is distinct from validity issues.” Agfa Corp., 451 F.3d at 1373. A finding of validity may not shield a patentee from unenforceability due to inequitable conduct. Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1213 (Fed.Cir.1987) (“a patent may be valid and yet be rendered unenforceable for misuse or inequitable conduct”).

6.

Levitón objects to Judge Gauvey’s characterization of its suit as “frivolous.” Leviton’s Objections at 42. Levitón argues that the suit cannot be deemed “frivolous” because there has not been any finding of non-infringement or invalidity. Leviton’s Objections at 42. Levitón also maintains that it did not engage in vexatious litigation tactics. Leviton’s Objections at 43. Although I do not agree with Judge Gauvey’s conclusion that Levitón should never have asserted the '766 Patent in the first place, I embrace entirely her conclusion that Levitón committed egregious misconduct during litigation. Because she managed discovery in this case, Judge Gauvey was intimately familiar with all of Levi-ton’s (1) refusals to cooperate with discovery requests; (2) filing of baseless motions and objections; and (3) failure to respond to properly issued subpoenas. The following facts found by Judge Gauvey exemplify Leviton’s vexatious litigation tactics:

Leviton’s patent prosecutor, who at the time served as trial counsel, failed to appear at depositions, without proper excuse.

When Leviton’s patent prosecutors finally appeared for depositions, Levitón peppered Meihao with numerous objections based on work product immunity and attorney-client privilege, all of which Judge Gauvey found to be strategic, unsupported, baseless, and designed to hinder discovery.

When Meihao moved to compel, Levitón still failed to provide any good faith defense for its objections.

Before receiving an imminent unfavorable ruling on Meihao’s motion to compel, Levitón dismissed the case with prejudice.

Levitón made the same baseless objections to requests for documents.

Judge Gauvey found Leviton’s filings and objections to be “measured to maximize delay and costs and to thwart discovery on the key inequitable conduct defense.”

I fully adopt Judge Gauvey’s findings of fact and conclusions of law in respect to litigation misconduct. The inference is inescapable that the misguided efforts by Leviton’s counsel to resist discovery on inequitable conduct arose in significant part because it was members of that firm that had engaged in such conduct. Under the circumstances, this case played out quite predictably. Cf. ABS MB Inv. Ltd. Partnership v. Ivax Corp., 1996 WL 173131 (D.Md. April 10, 1996) (“[TJhere is good reason why many law firms whose transactional advice forms the basis for both damage claims asserted against the client-recipient of that advice, and of defenses to those claims, do not undertake the litigation of such cases on behalf of such clients.”).

IV.

For the reasons set forth herein and in the following Memorandum Opinion issued by Magistrate Judge Susan K. Gauvey, which the court adopts as its own, the motion for an award of attorneys’ fees and costs is GRANTED. (The court will soon review the briefing on the request for fees and costs incurred in connection with the motion for fees and costs).

Movant shall promptly submit a judgment order embodying the rulings set forth herein.

MEMORANDUM OPINION

SUSAN K. GAUVEY, United States Magistrate Judge.

This case is currently before the Court on Shanghai Meihao Electric, Inc.’s (“Meihao”) motion to recover costs and attorneys’ fees. (Paper No. 145.) By Order dated May 24, 2007, Judge Andre M. Davis referred to the undersigned the determination of discovery disputes. (Paper No. 111.) On December 17, 2007, Judge Davis issued an order granting Leviton’s motion to dismiss the entire case with prejudice, but granted leave to Meihao to file this application for attorneys’ fees. (Paper No. 137.) By Order dated February 25, 2008, Judge Andre M. Davis referred to the undersigned the resolution of the motion for attorneys’ fees. (Paper No. 157.) Since the motion for attorneys’ fees is a case dispositive motion, See Fed.R.Civ.P. 72(b) and 54(d)(2)(D) and Local Rule 301(5)(b), this memorandum opinion is in effect a “report and recommendation” to the referring district judge, with proposed findings of fact. A hearing was held on September 3, 2008.

For the reasons set forth below, the Court recommends that Meihao’s motion be granted, having found exceptional circumstances under 35 U.S.C. § 285, having further found an award of fees and costs necessary to avoid a gross injustice and finally having found that Meihao is entitled to costs in the amount of $84,080.02 and fees in the amount of $726,579.15.

Background

The '766 Patent

Shanghai Meihao Electric, Inc. (“Meihao”) manufactures electrical devices, including ground-fault circuit interrupters (“GFCIs”) equipped with reverse wiring protection (“RW-GFCIs”) — the products at issue in this litigation. Meihao sells these devices throughout the United States, including to Universal Security Instruments, Inc., and USI Electric, Inc. (collectively “USI”).

Levitón Manufacturing Co., Inc. is a corporation and owner of multiple patents issued by the United States Patent and Trademark Office (“PTO”), including the subject of this litigation, U.S. Patent No. 6,864,766 (“'766 patent”), which involves GFCI technology. The '766 patent is the sixth in a series of related Levitón patent applications covering similar inventions developed by the same two inventors over an extended period of time. All of these patents were prosecuted by Leviton’s patent counsel, Greenberg Traurig. Barry Magi-doff, Claude Narcisse and Paul Sutton were the Greenberg Traurig attorneys involved with the patents at issue in this litigation. The first patent in this series was filed on August 24, 1998 and issued as U.S. Patent No. 6,040,967. The second, filed as a continuation-in-part application to '967, was filed on August 6, 1999 and issued as U.S. Patent No. 6,282,070. The third, filed as a continuation-in-part to both '967 and '070, was filed on September 20, 1999 and issued as U.S. Patent No. 6,246,558. Magidoff worked on this third application, but Narcisse did not, as he was not yet employed by Greenberg Traurig.

On April 19, 2004, Levitón filed the continuation application that issued as the '766 patent. This patent claims priority from the '558 and '953 patents. It has the exact same written description as the '558 patent and lists the same two inventors, DiSalvo and Ziegler, but includes new claims not in either the '558 or '953 patents. These claims were drafted by Narcisse. Also in April 2004, Leviton’s counsel filed a Petition to Make Special, along with a supporting declaration by Magidoff, requesting expedited prosecution of the '766 application in light of infringing activity. The '766 patent issued on March 8, 2005.

The Current Litigation

On March 31, 2005, Levitón filed suit against USI for infringement of the '766 patent, alleging that USI made, used, offered for sale or sold, and/or induced the sale of GFCI products manufactured by Meihao that embodied the invention protected by the '766 patent. (Case No. 05-889). On May 5, 2005, Meihao filed a declaratory judgement action, seeking a judgment that the '766 patent is not infringed by Meihao’s products, is invalid, and is unenforceable due to Leviton’s inequitable conduct (Case No. 05-1243).

Specifically, Meihao alleges that Levi-ton’s counsel committed inequitable conduct by withholding material information — the already pending U.S. Patent Application Serial No. 10/690, 776 (“Germain application”) — from the PTO during the prosecution of the '766 patent. (Paper No. 145, 3.) The Germain application was filed on October 22, 2003 and claims priority to February 3, 2003. It was filed and prosecuted by Greenberg Traurig attorneys Paul J. Sutton, Barry Magidoff, and Claude Narcisse. Its claims, like those in '766, were drafted by Narcisse. It lists Frantz Germain and five others as co-inventors. It is undisputed that the '766 patent and the Germain application have no common inventors. It is also undisputed that the '766 patent and the Germain application have many claims that are identical or very nearly so. Related to this fact, is Meihao’s allegation that Narcisse copied Germain claims into the '766 application, without so informing the PTO in direct contravention of PTO regulation. 37 C.F.R. § 10.23(c)(7)(‘Tt is misconduct for a patentee to “[kjnowingly withhold[] from the [PTO] information identifying a patent or patent application of another from which one or more claims have been copied.””). USI and Meihao also allege that Leviton’s counsel withheld from the PTO information about related litigation involving the '766 patent. (Paper No. 149, 11-12.)

Governing Law

A patentee commits inequitable conduct anytime he breaches his duty to the PTO of “candor, good faith, and honesty.” Eli Lilly and Company v. Zenith Goldline Pharmaceuticals, Inc., 471 F.3d 1369, 1381 (Fed.Cir.2006). Breaches of this duty include “affirmative misrepresentations of material facts, non-disclosure of material information, or submission of false material information, coupled with an intent to deceive.” Id. Because inequitable conduct may render a patent unenforceable, the defense serves as a shield to liability against infringement claims. See Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1070 (Fed.Cir.1998); Korody-Colyer Corp. v. General Motors Corp., 828 F.2d 1572, 1578 (Fed.Cir.1987).

After dismissal of the litigation, Meihao filed this motion to recover attorneys’ fees and costs as provided by Federal Rule of Civil Procedure 54(d)(1) and 35 U.S.C. § 285. Section 285 of the Patent Act provides: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. Levitón does not dispute Meihao’s “prevailing party” status, which is clear under Power Mosfet Technologies, LLC v. Siemens AG, 378 F.3d 1396, 1416 (Fed.Cir.2004). Moreover, neither the early stage of the litigation nor the dismissal with prejudice prevents an award of fees. See Highway Equip. Co., Inc. v. FECO, Ltd., 469 F.3d 1027, 1035 (Fed.Cir.2006) (concluding that as a matter of patent law, a court may decide a claim for attorneys’ fees under § 285 after a dismissal with prejudice); see also Tenax Corp. v. Tensar Corp., 22 U.S.P.Q.2d 1264, 1267 (D.Md.1991) (collecting cases in which courts recognized a right to recovery of attorney’s fees under § 285 where patent claims were dismissed with prejudice prior to trial). Furthermore, this Court need not reopen diseovery nor conduct a bench trial in order to rule on the motion; if there are no genuine disputes as to material fact, this Court may rule on the issue of attorneys’ fees as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (finding that judgment as a matter of law is appropriate when there is no genuine issue as to any material fact); Digital Control, Inc. v. Charles Machine Works, 437 F.3d 1309, 1313 (Fed.Cir.2006) (finding that courts may make a ruling on inequitable conduct as a matter of law).

The determination to award fees is strictly in the discretion of the district court. The determination has two steps: first, the court determines whether there is clear and convincing evidence that the case is exceptional; and second, the court determines in its discretion whether to award fees to the prevailing party, in an exceptional case. Digeo, Inc. v. Audible, Inc., 505 F.3d 1362, 1366-67 (Fed.Cir.2007); see also Century Wrecker Corp. v. E.R. Buske Manufacturing Co., 913 F.Supp. 1256, 1292 (N.D.Iowa 1996).

The prevailing party seeking the fee award bears the burden of showing by clear and convincing evidence that the case is exceptional. It may do so by demonstrating one of two types of misconduct: first, misconduct of a party during the litigation, such as vexatious discovery tactics, continued pursuit of unjustified litigation, or conduct that violates Federal Rule of Civil Procedure 11; or second, misconduct giving rise to the litigation, such as inequitable conduct. See Brooks Furniture Mfg., Inc. v. Dutailier Intern., Inc., 393 F.3d 1378, 1381 (Fed.Cir.2005); Reactive Metals & Alloys Corp. v. ESM Inc., 769 F.2d 1578, 1582 (Fed.Cir.1985); Mach. Corp. of America v. Gullfiber AB, 774 F.2d 467, 470-72 (Fed.Cir.1985); Tenax, 22 U.S.P.Q.2d at 1266-68. Such a demonstration may not rely on unproven factual allegations and assertions, but must present evidence of misconduct to show that the case is exceptional. See Stephens v. Tech International, Inc., 393 F.3d 1269, 1276 (Fed.Cir.2004) (“[A]n exceptional case finding is not to be based on speculation or conjecture but upon clear and convincing evidence.”). Moreover, “it is incumbent on the trial court not only to make the ultimate finding that the case is exceptional, but also to articulate the more particular factual findings from which the finding of ‘exceptional circumstances’ follows.” Reactive Metals, 769 F.2d at 1582.

The standards governing fee awards under § 285 apply equally to patentees and infringers who engage in misconduct. See Eltech Systems Corp. v. PPG Industries, Inc., 903 F.2d 805, 811 (Fed.Cir.1990)(“The balance is not tipped in favor of either side when each is required to prove the other guilty of bad faith litigation by clear and convincing evidence in light of the totality of the circumstances.”). An award of attorneys’ fees against a plaintiff (in favor of an alleged infringer) is appropriate when the plaintiff brings the suit without a good faith belief that his patent has been infringed. Insituform of North America, Inc. v. Midwest Pipeliners, Inc., 26 U.S.P.Q.2d 1125, 1126-27 (S.D.Ohio 1992). In such situations, bad faith can be inferred from the facts and circumstances. See Digeo, 505 F.3d at 1367 (“[I]f there is clear and convincing evidence that a plaintiff has brought a baseless or frivolous suit against an accused infringer, that is a sufficient basis to require a district court to deem the case exceptional under § 285.”); Eltech, 903 F.2d at 810 (“Where, as here, the patentee is manifestly unreasonable in assessing infringement, while continuing to assert infringement in court, an inference is proper of bad faith, whether grounded in or denominated wrongful intent, recklessness, or gross negligence.”).

A finding that the plaintiff engaged in inequitable conduct in procuring the patent can be sufficient to make a case exceptional. See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1034 (Fed.Cir.2002); Beckman Instrum., Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.Cir.1989); Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 713 (Fed.Cir.1983); Century Wrecker, 913 F.Supp. at 1292; Tenax, 22 U.S.P.Q.2d at 1268-69. There is a presumption, however, that patents issued by the PTO are valid and assertions of infringement are made in good faith. Springs Window Fashions LP v. Novo Ind., 323 F.3d 989, 999 (Fed.Cir.2003).

As stated previously, a determination that the case is exceptional does not mandate an award of fees. Both the Federal Circuit and Congress have made clear that such awards under § 285 are appropriate only where necessary to prevent a gross injustice. See J.P. Stevens Co., Inc. v. Lex Tex Ltd., Inc., 822 F.2d 1047, 1052 (Fed.Cir.1987) (citing S.Rep. No. 1503, 79th Cong.2d Sess. (1946), reprinted in 1946 U.S.C.C.A.N. 1386, 1387); Forest Labs. v. Abbott Labs., Inc. 339 F.3d 1324, 1329 (Fed.Cir.2003); Insituform, 26 U.S.P.Q.2d at 1126. In determining whether to award attorneys’ fees in an exceptional case, the Federal Circuit advises trial judges “[who] are in the best positions] to weigh considerations, such as the closeness of the case, tactics of counsel, the conduct of the parties and any other factors that may contribute to a fairer allocation of the burdens of litigation as between winner and loser.” J.P. Stevens, 822 F.2d at 1051.

Discussion

This Court must first decide whether Meihao has demonstrated by clear and convincing evidence that this case is exceptional. If exceptional, the Court then will determine whether to grant Meihao an award of attorney fees and costs, and if so, the amount.

Meihao asserts that it can demonstrate exceptionality on three bases: first, Leviton’s inequitable conduct in procuring the '766 patent; second, Leviton’s pursuit of frivolous infringement claims for months; and third, Leviton’s vexatious litigation conduct, including its protracted and unreasonable efforts to resist inequitable conduct discovery. (Paper No. 147, 1.) All bases are recognized as supporting a finding of exceptionality. See Tenax, at 1266-68; Reactive Metals, 769 F.2d at 1582; Machinery Corp. of America v. Gullfiber AB, 774 F.2d 467, 470-72 (Fed.Cir.1985). Meihao seeks attorney fees and costs under § 285 on each of these bases.

Inequitable Conduct: Failure of the Duty of Candor and Disclosure

This Court must make a determination regarding Meihao’s allegations of inequitable conduct prior to determining whether the case is exceptional. See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1380 (Fed.Cir.1999). As the docket reflects, this case was dismissed during the early stages of the litigation. However, neither the early stage of the litigation nor the dismissal with prejudice prevents an award of fees. See Highway Equip. Co., Inc. v. FECO, Ltd., 469 F.3d 1027, 1035 (Fed.Cir.2006); Tenax, 22 U.S.P.Q.2d at 1267. Furthermore, no trial or evidentiary hearing is needed if the Court can make factual findings on the evidence in the record. Of course, if there are genuine disputes as to material facts, which prevent the judge as factfinder from determining the facts without the taking of further evidence or assessing the credibility of the witnesses, the motion should be denied. See Digital Control, 437 F.3d at 1313. However, “[a] genuine issue of material fact is not raised by the submission of ‘merely conclusory statements or completely insupportable, specious, or conflicting explanations or excuses.’ ” Id. (quoting Monsanto Co. v. Bayer BioScience N.V., 363 F.3d 1235, 1240 (Fed.Cir.2004) (quoting Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1191-92 (Fed.Cir.1993))). Similarly, affidavits containing “bare declaration[s] of lack of intent to mislead,” supplemented by nonresponsive or unsupported explanations are insufficient. Paragon Podiatry, 984 F.2d at 1191. “The affiant must at least state facts supporting a plausible justification or excuse ...” Id.

As stated above, a finding that the plaintiff engaged in inequitable conduct in procuring the patent is sufficient to make a case exceptional for the purposes of § 285. See Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 713 (Fed.Cir.1983); Tenax Corp., 22 U.S.P.Q.2d at 1268-69. Meihao alleges that Leviton’s counsel committed inequitable conduct before the PTO in two ways:

(1) by withholding material information-the already pending U.S. Patent Application Serial No. 10/690, 776 (“Germain application”)-from the PTO during the prosecution of the '766 patent, (Paper No. 145, 3); and

(2) withholding information about related litigation involving the '766 patent.

(Paper No. 149, 11-12).

Related to the first basis is Meihao’s assertion that Levitón also failed to advise the PTO that it had copied claims from the Germain application into the '766 application. To prevail on its first claim of inequitable conduct, Meihao must provide clear and convincing evidence (1) that the Ger-main application was material to patentability of the '766 patent, (2) that Levitón failed to disclose evidence of the Germain application during the prosecution of the '766 patent, and (3) that it did so with an intent to deceive the PTO. To prevail on the second claim of inequitable conduct, Meihao similarly must provide clear and convincing evidence (1) that information about related litigation was material to the patentability of -the '766 patent, (2) that Levitón failed to disclose this evidence during the prosecution of the '766 patent, and (3) that it did so with an intent to deceive the PTO. Levitón does not assert that it disclosed either the Germain application or the related litigation in the prosecution of the '766 patent. Moreover, while Narcisse denies he “copied” the claims as a matter of law, he does not deny the similarity — indeed the identical or substantially identical language of many of the claims in both the Germain and '766 applications. More to the point, he does not claim to have advised the PTO of his “copying.” Accordingly, this Court does not have to resolve any disputes as to fact as to what was disclosed, but only whether what was not disclosed was “material” and withheld with an intent to deceive the PTO. Similarly, this Court does not have to resolve any dispute as to whether Narcisse informed the PTO of the “copying” of claims. He admits he did not. In answer to Meihao’s charge of inequitable conduct, Levitón asserts only that it was under no obligation to disclose either the Germain application or the related litigation in the prosecution of the '766 patent, as neither was material to the patentability of '766. (See Paper No. 147, 3, 5-10, 22-23.)

In making its determination, the Court must first make a determination as to whether Leviton’s admitted nondisclosure of the Germain application (and related “copying”) and related litigation rises to threshold levels of both materiality and intent. See Eli Lilly, 471 F.3d at 1381; Li Second Family L.P. v. Toshiba Corp., 231 F.3d 1373, 1378 (Fed.Cir.2000). If the facts indicate that the nondisclosure — the misconduct — meets these threshold levels, the Court then moves to the second stage of the inquiry, the balancing test, which requires that the Court weigh materiality and intent and make an equitable determination regarding inequitable conduct. Li, 231 F.3d at 1378; see also Digital, 437 F.3d at 1315-16. The more material the non-disclosure, the less intent will be required to make such a determination, and vice versa. Li, 231 F.3d at 1378; see also Digital, 437 F.3d at 1315.

Before discussing the materiality of the failure to disclose the Germain application (and related failure to report copying of Germain claims) and the related litigation, the Court shall review the broad and specific provisions of the PTO law relevant to these questions. These provide the framework for evaluating Leviton’s conduct in light of PTO expectations.

Governing PTO Regulations and Manual Provisions

All persons associated with the prosecution of a patent application are bound by a duty of disclosure, candor, and good faith in dealing with the PTO. See 37 C.F.R. § 1.56 (2000)(“Each individual associated 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.”). This duty is obviously imposed to facilitate the PTO doing its job. See Id. (“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.”). Additionally, Title 37, § 1.604(b) of the C.F.R. states that “[w]hen an applicant presents a claim known to the applicant to define the same patentable invention claimed in a pending application of another, the applicant shall identify that pending application, unless the claim is presented in response to a suggestion by the examiner.”. Finally, Title 37, § 10.23(c)(7) of the C.F.R. states that it is misconduct to “[k]nowingly withhold[ ] from the [PTO] information identifying a patent or patent application of another from which one or more claims have been copied.” An individual who does so may be subject to reprimand, suspension, or exclusion (either generally or in a specific case). See 37 C.F.R. § 10.130(a)(2000).

Chapter 2000 of the Manual of Patent Examining and Procedure (“MPEP”) interprets and explains “the duties owed toward the [PTO] by the inventor and every other individual who is substantively involved in the preparation or prosecution of the application.” MPEP § 2000.01. The duty of disclosure, candor, and good faith includes “a duty to disclose to the Office all information known to that individual to be material to patentability.” MPEP § 2001. The duty of disclosure requires that applicants disclose all information material to patentability, including:

—information on inventorship, see MPEP § 2001.04 (“pri- or invention by another inventorship conflicts”)

—known information regarding other significant copending United States applications, see MPEP § 2001.06(b) (“information within their knowledge as to other co-pending United States applications which are “material to patent-ability” of the application in question”), and

—information regarding litigation on the subject matter for which a patent is being sought, see MPEP § 2001.06(c). (“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 arising therefrom must be brought to the attention of the [PTO] ... such [as] ... questions of inventorship ... “inequitable conduct,” and “violation of duty of disclosure”)

The Manual also admonishes patent attorneys:

not rely on the examiner of a particular application to be aware of other applications belonging to the same applicant or assignee. It is desirable to call such applications to the attention of the examiner even if there is only a question that they might be ‘material to patentability’ of the application the examiner is considering.

See MPEP § 2004 ¶ 9. (emphasis added). Moreover, the Manual counsels attorneys to disclose information if the question of materiality is close. See MPEP § 2004 ¶ 10. (“When in doubt, it is desirable and safest to submit information. Even though the attorney, agent, or applicant doesn’t consider it necessarily material, someone else may see it differently and embarrassing questions can be avoided.”). Thus, the PTO discourages patent attorneys from arrogating to themselves decisions on materiality.

Accordingly, patent regulations and manual provisions set out a comprehensive description of the duty to disclose. It is Meihao’s position that Levitón did not fulfill its duty to disclose and in so failing deprived the patent examiner of information material to the issue of patentability of the '766 application.

Leviton’s Fulfillment of its Duty to Disclose

A review of the record demonstrates that there is no dispute as to material fact as to what Levitón disclosed to the PTO in its prosecution of the '766 patent. Levitón neither disclosed the Germain application nor any of the litigation involving the parent patents to '766, not his “copying” of claim language. There is, however, a dispute as to what Levitón was required to disclose as a matter of law and whether the information Levitón failed to disclose was “material,” satisfying the first prong of the inequitable conduct doctrine. For the reasons set forth below, the Court has concluded that Levitón failed to make disclosure of information mandated by patent law, regulation, manual provisions and case law and that the undisclosed information was information that a reasonable patent examiner would have found important to the patentability of the '766 application. Accordingly, this Court finds that Meihao has satisfied the first prong of the inequitable conduct doctrine.

Failure to Disclose the Germain Application Materiality

Meihao argues that Leviton’s failure to disclose the Germain application was “material” stating in essence that a reasonable patent examiner would have considered the information important in deciding whether to allow the application to issue as a patent.

There are several tests which have been used to evaluate materiality. See Digital, 437 F.3d at 1315-16 (noting the objective “but for” test, the subjective “but for” test, the “but it may have” test, the “reasonable examiner” test, and the new Rule 56 test). However, because a party seeking to prove inequitable conduct must establish only a threshold level of materiality in order to proceed to the balancing stage of the inquiry, the Federal Circuit has adopted the reasonable examiner test, arguably the broadest of the tests as applicable. Under the reasonable examiner standard, omissions or misstatements are considered material if “a reasonable examiner would have considered such [information] important in deciding whether to allow the ... application.” Id. at 1314 (quoting Dayco Products Inc. v. Total Containment, Inc., 329 F.3d 1358, 1363 (Fed.Cir.2003)).

The other tests remain; some, of course, seen as establishing a narrower — or higher — standard of materiality. See Digital, 437 F.3d at 1314 (“[I]n 1992, the PTO amended Rule 56, creating an arguably narrower standard of materiality.”) However, the “reasonable examiner” standard remains the “gateway” standard, testing whether withheld information meets the threshold level of materiality required for a finding of inequitable conduct. Despite this clear holding of Digital, and other precedent that materiality does not rest on whether or not the withheld information would invalidate the patent, see Li, 231 F.3d at 1383, Levitón relies solely on the “but for” test in arguing that the information it failed to disclose was not material. (See Paper No. 147, 20-23.) The PTO explicitly and firmly rejected application of such a “but for” test, as have the courts, as indicated above.

The suggested ‘but for’ standard would not cause the Office to obtain the information it needs to evaluate patentability so that its decisions may be presumed correct by the courts. If the Office does not have needed information, meaningful examination of patent applications will take place for the first time in an infringement case before a district court. Courts will become increasingly less confident of the Office’s product if they get the impression that practitioners and inventors can routinely withhold information from the Office, or that practitioners and inventors can make up their own minds about what is patentable.

See Duty of Disclosure, 57 Fed.Reg. 2021, 2024 (Jan. 17, 1992). The “but for” test is plainly a result-oriented standard, with the patent attorney pre-determining the conclusion of the PTO.

In its argument for that standard, Levitón is essentially saying “no harm, no foul”, that is, a patent examiner even with information regarding Germain application (and related litigation) would have granted the '766 patent. As stated above, this is clearly not the preferred standard under PTO guidance and case law. This Court therefore rejects Leviton’s position that the “but for” test controls and that under that test the information withheld was not “material,” in favor of the reasonable examiner standard.

Copying of Claim Language

Before discussing how the Germain application might be material to the various determinations that a patent examiner necessarily must make, the Court has concluded that information on “copying” of claims is essentially material per se under the PTO regulations. Title 37, § 10.23(c)(7) declares that it is misconduct to “[k]nowingly withhold[ ] from the PTO information identifying a patent or patent application of another from which one or more claims have been copied.” It is an absolute, unqualified duty, not dependent on applicant judgment of materiality or relevancy or anything else. If an applicant copies language from claims from one application to another, the PTO wants to know, under pain of disciplinary action. Levitón offers no legal argument, excusing Narcisse from the duty under 37 C.F.R. § 10.23(c)(7), but merely tries to change the subject in its opposition. In its attempt to address what it characterized as “Meihao’s Improperly Copied Claims Theory,” Levitón said there was “nothing presumptively wrong with having the same or similar claims in two different patent applications owned by the same company,” that the patent examiners did not reject the '766 and Germain applications under Section 112, first paragraph and that there is “no credible evidence that any Greenberg Traurig attorney intended to deceive the PTO.” (Paper No. 147, 20-21.) While Leviton’s patent counsel, Narcisse refused to admit to “copying” claims, no other inference can be drawn from his deposition testimony than that he lifted the claim language from the Germain application and used it in the '766 application. There could be no clearer, no more unequivocal statement of the duty to disclose than § 10.23(c)(7). Levitón offers no satisfactory explanation for the failure to advise the PTO of de facto copying in light of the declarative, unqualified language of § 10.23(c)(7), except that it did not choose to. Without any further discussion, the high materiality of the information on the copying of the claim language Germain application into the '766 application is established.

The Importance of the Germain Application to a Reasonable Patent Examiner

Meihao proffers several reasons under patent law why a patent examiner would find the withheld information important to the patentability of '766. Specifically, Meihao argues that the Germain application raises questions about (1) the inventorship of the '766 patent, (2) whether the '766 patent specification supports the claims, and (3) whether the Germain application could have been the basis of a double patenting rejection of the '766 patent. (Paper No. 145, 19-20.) Moreover, the Rules of the PTO, Meihao argues, expressly required disclosure of the Germain application. (See Id. (citing 37 C.F.R. § 1.56; 37 C.F.R. § 1.604(b); 37 C.F.R. § 10.23; MPEP § 2001.06(b))).

While conceding that some of the claim language of the Germain and '766 applications is nearly identical (see Paper No. 147, 19 (“There is nothing improper or unusual about two applications having common textual language and similar claims, particularly when the applications originate from the same company/assignee.”)), Levitón dismisses each of Meihao’s arguments. Levitón primarily argues that the Germain application cannot be material to the patentability of the '766 patent because Germain is not prior art to '766, as '766’s priority date predates Germain’s by three years. (Paper No. 147, 16-18.) As Meihao notes, Leviton’s argument assumes the answer to precisely the disputed issues:

“[whether] the copying of the claims from the Germain application into the '766 patent is evidence that the latter is not entitled to an earlier priority date [because the inventors of '766 predecessor patent are not the inventors of the new Germain claims or the inventors of the Germain predecessor patent had already received a patent on this subject or because the specifications do not support the new claims.]”

(Paper No. 149, 5.) These are the-issues that the patent examiner would be expected to sort out if given information about the German application. Moreover, Levi-ton’s “prior art” argument does not address what can only be said to be a PTO imperative that a patent applicant reveal any copying of claims from patent applications. 37 C.F.R. § 10.23(c)(7). This Court is convinced that Levitón did have such a duty, if on no other basis than the regulations explicitly require disclose of the Ger-main application, as it contains “copied” claims.

Levitón then contends that Meihao’s arguments regarding inventorship and double patenting rely on misinterpretations of patent law. (Paper No. 147, 19-20.) On close analysis, Leviton’s arguments can all be rejected as a matter of law. The Court has concluded that the Germain application could conceivably have raised questions (1) about the inventorship of the '766 patent, (2) whether the '766 patent specification supports the claims, and (3) whether there would have been a double patenting rejection of the '766 patent-all making the Ger-main application highly material. But, even if the legal merit of the inventorship, specifications and double patenting questions are debatable, not conclusive, the information should not be withheld but presented to the patent examiner, who can decide, as the case law and MPEP make strikingly clear.

Inventorship

The law is clear that a person is only entitled tó a patent if he himself invented the subject matter sought to be patented. 35 U.S.C. § 102(f); see also Chisum, supra, at § 2.01 (“Only a true and original inventor may obtain a patent ... The requirement bars a patent even if the true inventor does not complain or if the true inventor is not known.”). Furthermore, an inventor is only considered to have invented the features of his invention that he appreciates at the time of its conception. See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1063 (Fed.Cir.2005) (“[C]onception requires that the inventor appreciate that which he has invented.”); Hitzeman v. Rutter, 243 F.3d 1345, 1358-59 (Fed.Cir.2001) (“[A]n inventor who failed to appreciate the claimed inventive features of a device at the time of alleged conception cannot use his later recognition of those features to retroactively cure his imperfect conception.”). “As a critical requirement for obtaining a patent, inventorship is material.” PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1321 (Fed.Cir.2000); see also MPEP § 2001.04 (“Materiality is defined in 37 C.F.R. § 1.56(b) ... [and] includes, for example, information on ... prior invention by another,