Jeanne Curtis, a Partner at Ropes & Gray, sent in this article she wrote with her colleagues discussing the defense of inequitable conduct and the recent Federal Circuit holdings pertaining to the doctrine. Curtis will speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011. The following is an excerpt from the article:
I. INTRODUCTION
All patent applicants have a duty to prosecute their applications with “candor and good faith.” This duty of candor also extends beyond mere applicants, further covering individuals who are “substantively involved in preparation or prosecution of the application,” including named inventors and attorneys or agents who help prepare or prosecute the application. The duty does not, however, apply to corporations or institutions unless an individual within the corporation or institution was substantively involved in prosecuting the application.
Compliance with the duty of candor is of paramount importance during prosecution of an application. Any failure to comply with the duty exposes an applicant to a potential finding of inequitable conduct, which carries with it a host of undesirable and potentially expensive consequences. The Federal Circuit has articulated that “[a] patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution.” The finding of unenforceability is not necessarily limited to the particular patent at issue, and can be extended to other related patents and applications. Additionally, a patent attorney or agent may be sanctioned by the Patent Office, including suspension, for violating his/her duty of candor and good faith. The consequences may also extend to prospective plaintiffs in patent infringement actions, who, in the event that a patent in suit is found unenforceable for inequitable conduct, can be ordered to pay the attorney fees of the opposing party.
An inequitable conduct analysis requires a court to weigh two separate elements in determining whether an applicant breached his duty of candor and good faith: (1) materiality of the information omitted or falsified; and (2) intent to deceive on the part of the applicant. , After a court finds sufficient evidence of materiality and intent, “the court must then determine whether the questioned conduct amounts to inequitable conduct by balancing the levels of materiality and intent, ‘with a greater showing of one factor allowing a lesser showing of the other.’” Further, materiality and intent must be weighed “in light of all the circumstances to determine whether the applicant’s conduct is so culpable that the patent should be held unenforceable.” Where an allegation of inequitable conduct is tied to a particular claim of a patent, a court performing a full analysis must not limit its analysis only to that claim, but must also look at other claims, the specification and drawings, the prior art, attorney remarks during prosecution (both before the USPTO as well as in connection with foreign counterparts), co-pending and continuing applications, and invalidity, “[w]hen a court has finally determined that inequitable conduct occurred in relation to one or more claims during prosecution of the patent application, the entire patent is rendered unenforceable.”
II. BURDEN OF PROOF AND STANDARD OF REVIEW
The defendant that charges a patentee with inequitable conduct before the PTO must prove it by clear and convincing evidence. The “clear and convincing” standard applies equally to the elements of materiality and intent. With respect to the intent element, the Federal Circuit has stated that this stringent burden of proof is necessary because of “the ease with which a relatively routine act of patent prosecution can be portrayed as intended to mislead or deceive.” Despite this high standard, intent is often inferred from circumstantial evidence. Recently however, some members of the Federal Circuit have stated their belief that there exists a need for more stringent application of the deceptive intent standard. Senator Orrin Hatch, who has been active over the years in promoting new patent legislation, has also expressed a similar view.
On appeal, the ultimate conclusion of inequitable conduct is reviewed for an abuse of discretion. The standard of review for the underlying factual findings of materiality and intent depends, however, on whether those findings were made at trial or on summary judgment disposition. If the underlying findings of fact are made at trial by the judge or the jury, the Federal Circuit reviews them for clear error. On the other hand, if those findings are made in the context of summary judgment, they are reviewed de novo.
Click here for the full article Litigation Issues Relevant To Patent Prosecution — The Defense of Inequitable Conduct .
Tags: inequitable conduct, Patent Prosecution, Therasense en banc
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