Patent Law Practice Center

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.” Read the rest of this entry »

DLA Piper on Hargreaves’ Review of UK’s IP Policy

Back in November 2010, the Prime Minister commissioned a review of Britain’s intellectual property laws and their effect on economic growth.  Ian Hargreaves’ Review of UK’s IP policy,released last month, makes 10 recommendations covering patent, copyright and policy-making process.  Our friends at DLA Piper sent in this article discussing Hargreaves’ findings.

There was an audible buzz in the IP community [when] the findings of the latest UK IP policy review, led by Ian Hargreaves, were published in the report: ‘Digital Opportunity: A Review of Intellectual Property and Growth‘.

The exam question

The review was first announced by the UK government on 11 November 2010 (see our previous alert), following a speech made by the Prime Minister in which he set out his ‘vision’ for London’s East End to become a pre-eminent ‘Silicon Valley’-style technology centre. Interpreting Mr Cameron’s ‘exam question’ as being: ‘Could it be true that laws designed more than three centuries ago with the express purpose of creating economic incentives for innovation by protecting creators’ rights are today obstructing innovation and economic growth?’, Hargreaves’ answer is a firm yes. Read the rest of this entry »

Reexamination Requests Filed Weeks of 5/16/11 And 5/23/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Apple Attack On MONKEYmedia Audiovisual Patent, Among The Reexamination Requests Filed Week Of May 16, 2011

Last December, Apple defended itself against MONKEYmedia’s patent infringement allegations in the Western District of Texas, by requesting reexamination of two of MM’s streaming media patents-in-suit.  Applehas now sought reexamination of a third MM patent-in-suit (see inter partes Request No. (10)).

Reexamination was also requested by Xilinx for a circuits patent owned by Intellectual Ventures, but it is not clear from the PTO files whether the IV patent is the subject of any infringement litigation (see inter partes Request No. (8)).

And SemiLEDs Corporation has requested reexamination of a Group III nitride LED patent owned by Cree (see inter partes Request No. (7)). The companies are currently in litigation in the Middle District of North Carolina over that patent and four others. Read the rest of this entry »

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.”  Read the rest of this entry »

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. Read the rest of this entry »