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…)

06.2.11 | Federal Circuit Cases, inequitable conduct, Patent Litigation, posts | Stefanie Levine

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…)

05.26.11 | CAFC, inequitable conduct | Stefanie Levine