Patent Law Practice Center

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.”  (more…)

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…)

Litigation Issues Relevant To Patent Prosecution: The Defense of Inequitable Conduct

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.” (more…)

USPTO Proposes Overhaul To Patent Reexamination Proceedings

On Monday, April 25, 2011, the USPTO published a proposal in the Federal Register enumerating proposed changes being considered by the agency to streamline the proceedings governing ex parte and inter partes reexamination proceedings.  Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the proposals.

June Meeting to Consider Proposed Changes

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here). (more…)

Reissue & Reexam Live Blog: Ethical Considerations

The last panel of the day – Ethical Considerations in Reissues and Reexaminations. The panel includes Gerald Murphy, Jr., Partner at Birch Stewart Kolasch & Birch and Practice Center Contributor, and Barbara Mullin of Akin Gump Strauss Hauer & Feld.  Here are some highlights from the panel:

• Reissue and Reexam overlap where the error is overly broad claiming in view of prior art.  If patentee becomes aware of prior art that does not invalidate the claims but does raise a substantial new question of patentability and there are no other errors in the patent that render it wholly or partly inoperative or invalid, only option is ex parte reexam.  If patentee can identify another error in addition to new prior art, Reissue becomes available. 
• Both Reissue and Reexam can give rise to charges of inequitable conduct.
• Patents being reissued and reexamined may present unique issues because: they are often very important, the amount of available “information” potentially material to patentability might be much greater than the information available during the original prosecution, and/or parallel litigation is not unusual. (more…)