On July 19, 2012, I interviewed Bob Stoll, former Commissioner for Patents of the United States Patent and Trademark Office. The interview took place in a conference room at Drinker Biddle on K Street in Washington, D.C. After 29 years working for the USPTO and a total of 34 years working for the government, Stoll retired on December 31, 2011. He then started his new, second career as a private citizen and all-around patent specialist at Drinker Biddle in the firm’s Intellectual Property Group.
In his 29 years with the USPTO, Bob Stoll held several leadership posts, including training foreign officials on all aspects of intellectual property (IP), overseeing the Office of Enforcement, and directing federal legislative priorities for the Agency. In his tenure as Commissioner for Patents, Stoll was in charge of implementing initiatives to improve the speed and quality of the patent review process, was instrumental in reducing the patent application backlog, and undertook an initiative to clean out the oldest cases on the USPTO docket.
Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.
1) CAFC Blog: Revisiting Therasense, CAFC Finds That An Inventor’s Subjective Belief That Submission of Documents Was Unnecessary May Not be Sufficient to Avoid a Showing Of Intent to Deceive – This post discusses Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Hospira Inc. and Apotex Inc. and shares how the CAFC found that the patents were invalid over withheld references, and unenforceable for inequitable conduct.
2) IP Watchdog: Beware Twitter’s New Patent Agreement Scheme – This post highlights and critiques Twitter’s announcement that later this year it will implement what they are calling the “Innovators Patent Agreement,” which they claim will ensure that patents are only used for defensive purposes.
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…)
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…)
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:
- an omitted reference is material only if the claim or patent would not have issued, but for omission of the reference;
- specific intent to deceive must be shown by clear and convincing evidence;
- courts can no longer employ a “sliding scale” of intent and materiality, both must be showng by clear and convincing evidence; and
- courts should apply equity to ensure that the remedy is not based upon conduct “immaterial to the issuance of the patent.” (more…)