Canon Seeks Judgment of Patent Unenforceability Claiming that Inventor Misled PTO

Japan’s Canon Inc. has asked the Western District of Texas to declare that a patent held by Optimum Imaging Technologies LLC (OIT) is unenforceable due to inequitable conduct during its prosecution. The patent-in-suit, U.S. Patent No. 10,873,685 (the ’685 patent ) was reportedly issued on Tuesday, December 22. Canon’s lawsuit comes after OIT sued it for infringement of two related patents concerning technology correcting video image aberrations. That action allegedly implicates Canon’s entire line of digital still and video cameras.

Canon’s complaint, filed on Tuesday, recounted the history of the ’685 patent in an effort to show why its claims should be rendered unenforceable. Reportedly, Neal Solomon, founder of OIT, filed the ’685 patent’s initial application with the U.S. Patent and Trademark Office (PTO) on Dec. 2, 2012, with the applicant listed as the sole inventor.  

The filing stated that on Jan. 3, 2013, the PTO notified Solomon that he had failed to pay his application fees and include a proper inventor’s declaration. Allegedly, the PTO’s notice set a two-month deadline for Solomon to make the payment and accompanying late fee.

Canon contended that Solomon timely received the notice and “made a conscious and deliberate decision not to respond,” thereby abandoning the application. More than five years later, the plaintiff claims, on Feb. 11, 2019, Solomon filed a “Petition for Revival of an Application for Patent Abandoned Unintentionally.”

The PTO allegedly granted Solomon’s revival request about five weeks later. Earlier this week, on December 22, the PTO issued the ’685 patent, titled “Digital Imaging System for Correcting Video Image Aberrations.”

Canon took issue with Solomon’s revival petition, arguing that he made knowing and deliberate affirmative misrepresentations to the PTO about “the entire delay being ‘unintentional’ and the non-payment being due to ‘economic constraints.’” The filing stated that, in reality, Solomon had the funds to pay the fees in 2013 when he received the notice. Canon explained that but for Solomon’s intentional misrepresentations, the PTO would neither have accepted his revival petition, nor have issued the ’685 patent.  

Because of the inequitable conduct during patent-in-suit’s prosecution, the plaintiff contended that all asserted claims are unenforceable. Canon seeks a declaratory judgment so stating.

The plaintiff is represented by Venable LLP and of counsel Ward, Smith & Hill, PLLC.