Patent Law Practice Center

Inequitable Conduct As An Affirmative Defense

Robert Faber, partner at Ostrolenk and Faber LLP and Practice Center Contributor, recently passed along a great article called Prosecution Ethics   he wrote for the upcoming PLI program: Advanced Patent Prosecution Workshop: Claim Drafting and Amendment Writing.  In the article, Faber discusses the Patent and Trademark Office Duty of Disclosure Rules and in partiuclar what types of failure to provide different forms of information to PTO Examiners have been found by Courts to be inequitable conduct.  Faber explains that the duty of candor and good faith is breached when an affirmative misrepresentation of material fact, faliure to disclose material information or submission of false information occurs.  He then discusses particular cases when the Court has found inequitable conduct.

I caught up with Faber and asked him about one particular inequitable conduct allegation that has recently been getting more attention – “Burying” (submitting information material to an Examiner’s examination of a patent application where that submission includes a large quantity of other less relevant material).   (more…)

Lawyers Acting Badly, or Not? Misconduct in IP Litigation: Recent Examples and the Questions They Raise

Guest Post by Lisa A. Dolak (Angela S. Cooney Professor of Law, Syracuse University College of Law and Practice Center Contributor)

Misconduct in civil litigation is not a new phenomenon.  Nor is it confined to particular types of cases.  Because of their characteristic intensity, however, intellectual property cases may be more likely to inspire bad behavior than other types of cases.  In patent cases, in particular, often much is at stake for both counsel and client.  The potential outcomes range from a judgment for the patent owner, potentially including trebled lost profits, a permanently enjoined infringer and even an attorneys’ fees award,  to a ruling that the asserted patent is partly or entirely invalid, or even unenforceable, with the patent owner ordered to pay the infringement defendant’s attorneys’ fees.  And the complexity and potential intensity only increase when multiple patents and/or multiple accused products are involved.  The associated pressures seem, on occasion, to lead litigants and trial lawyers to succumb to the temptation to step outside the bounds of vigorous advocacy.

Trial and appellate judges in a number of recent IP cases have wrestled with the issue of whether certain litigation tactics crossed the line between advocacy and abuse.  The decisions contend with a range of conduct, occurring at various phases of litigation.  In several, the trial courts’ decisions to sanction were reversed or modified on appeal or reconsideration.  Accordingly, these cases shed light on a question which challenges courts, litigants and trial counsel:  when it comes to zealous advocacy, how much zeal is too much zeal? (more…)