The Impact of Therasense On Patent Reform

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the practical impact of the “but for” standard of Therasense and why Supplemental Examination as proposed in the pending patent reform legislation is not necessarily the best procedure to cure inequitable conduct.


Did Therasense Moot Supplemental Examination?

Supplemental Examination, as currently proposed in the patent reform legislation, would enable Patentees to effectively cure inequitable conduct for all but the most offensive conduct. This reform provision was designed to combat the plague of inequitable conduct charges that existed prior to the Therasense decision.

Supplemental examination would enable the Patentee to have the USPTO consider, reconsider, or correct information believed to be relevant to its patent if the information presented a substantial new question of patentability (SNQ).  If an SNQ is found to exist, the supplemental examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices).  Once Supplemental Examination concludes, the issues brought before the Office in the second examination cannot serve as a basis for an inequitable conduct defense. (more…)

Facebook’s Inequitable Conduct Case After Therasense

Our friends at Reexamination Alert sent in this article discussing the Tele-Publishing, Inc. v. Facebook, Inc., et al..  Has Facebook figured out a way to successfuly prove inequitable conduct even in light of the but-for standard for materiality now required by Therasense?

In January, Reexamination Alert reported on the case Tele-Publishing, Inc. v. Facebook, Inc., et al., No. 1:09-cv-11686-DPW, in which Facebook is accused of infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.”  Facebook defended by requesting reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond.  The PTO granted reexamination.  An initial rejection of all claims issued in April, 2010, and a final rejection issued in August of that year. An appeal is currently pending at the PTO Board.

What will interest reexamination lawyers, however, is Facebook’s allegation that the ‘216 patent is unenforceable because of applicant’s inequitable conduct during the prosecution of that patent.  Facebook asserts that the ‘216 applicant was aware of the de Hond patent because that reference was cited and distinguished in several related applications, and that the applicant intentionally withheld de Hond in the ‘216 prosecution.

How does Facebook’s inequitable conduct defense stand up in light of the but-for standard for materiality now required by Therasense?  Pretty well, actually.   The CAFC described the materiality standard inTherasense as calling for a court to “determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.”  The CAFC seemed almost to have reexamination in mind when it added that “the court should apply the preponderance of the evidence standard and give the claims their broadest reasonable construction” (emphasis added).  The closest answer to the CAFC’s hypothetical question – what would the PTO have done with the undisclosed reference – might be found in reexamination. (more…)

Patentees Rejoice — But Will Therasense Stand?


The following post comes courtesy of Brandon Baum, of Baum Legal and Practice Center Contributor.

The Federal Circuit’s split decision in Therasense is being hailed by some as the end to the “absolute plague” of inequitable conduct claims in patent cases. After all, the decision raises the bar for proving inequitable conduct. But before the champagne goes flat and the confetti is swept away, the Therasense case may prove to have been exactly the wrong horse for patentees to ride.

The problem with the majority decision in Therasense is that it is long on policy, short on the facts. In the ivory towers of the Federal Circuit (which does not have the usual diet of criminal cases, fraud cases, and other bad conduct), the fact that patent prosecutors are frequently accused of acting inequitably to obtain patents is unseemly. To the rest of the world, of course, the news that lawyers and/or inventors might try to “game the system” for financial advantage is purely “dog bites man.” (more…)

Patent Community Weighs in On The Therasense Decision And It’s Implications

The Federal Circuit’s Therasense, Inc. v. Becton, Dickinson & Co., decision has certainly instigated a huge amount of commentary and debate amongst the patent community.  Will the heightened standards resolve the problems associated with practitioners “disclosing too much prior art of marginal relevance” or actually reduce the number of inequitable conduct claims that are filed?  R. David Donoghue, Partner at  Holland & Knight and Practice Center Contributor, sent in this article he wrote entitled Federal Circuit Heightens Inequitable Conduct Standards, But Does it Increase Unethical Behavior? where he weighs in on decision.

Yesterday, the Federal Circuit handed down its anticipated en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., increasing the standards for inequitable conduct.  The 6-5 majority held that:

  1. an omitted reference is material only if the claim or patent would not have issued, but for omission of the reference;
  2. specific intent to deceive must be shown by clear and convincing evidence;
  3. courts can no longer employ a “sliding scale” of intent and materiality, both must be showng by clear and convincing evidence; and
  4. courts should apply equity to ensure that the remedy is not based upon conduct “immaterial to the issuance of the patent.”  (more…)

Therasense Decision “Tightens The Standards” For Proving Inequitable Conduct

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent in this article she wrote with colleague Courtenay C. Brinckerhoff, discussing yesterday’s much anticipated Therasense, Inc. v. Becton, Dickinson & Co. decision.

On May 25, 2011, in a split decision, the U.S. Court of Appeals for the Federal Circuit decided Therasense, Inc. et al. v. Becton, Dickinson & Co. et al, Case No. 08-1511 et al., which it heard en banc to address the law of inequitable conduct, and to consider in particular whether the materiality-intent balancing framework should be modified and, if so, how.  The court’s decision “tightens the standards” for proving inequitable conduct, holding that evidence of intent should be considered independently from materiality, and that materiality generally must be proven by a “but-for” test, except in cases of “egregious misconduct, such as the filing of an unmistakably false affidavit.”

The court issued three decisions: (1) the opinion of the court, filed by Chief Judge Rader and joined by Judges Newman, Lourie, Linn, Moore, and Reyna in full, and O’Malley in Part V; (2) an opinion by Judge O’Malley, concurring-in-part and dissenting-in-part; and (3) a dissenting opinion by Judge Bryson, joined by Judges Gajarsa, Dyk, and Prost. (more…)