Patent Law Practice Center

En Banc Oral Argument In Two Important Patent Cases: Therasense Inequitable Conduct Standard and TiVo Contempt for Attempted Design Around

The following alert was written by our friends at Foley & Lardner.

On November 9, 2010, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, heard oral argument in two important patent cases. The first, Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al., concerns whether the current materiality-intent balancing framework for determining inequitable conduct should be modified and, if so, how. The second case, TiVo, Inc. v. EchoStar Corp., No. 09-1374, concerns the circumstances under which a district court, following a finding of infringement at trial, might then use a contempt proceeding, instead of a new trial, to determine whether a newly accused device infringes.

Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al. — Inequitable Conduct

Under the current standard, patent unenforceability based on inequitable conduct — whether a patent applicant somehow breached his duty of candor and good faith to the USPTO during prosecution — is frequently asserted by accused patent infringers as a defense to infringement. The Federal Circuit has previously expressed concerns that inequitable conduct is invoked too often. In Therasense, the court could make it more difficult to assert the defense in future cases. (more…)

Patent Reexamination As A Form Of Litigation Damage Control

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Threat of Injunction Dissolves in Flexiteek Litigation

The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation inspired applications of patent reexamination can be thought of as falling into one of two categories, namely, pre-trial maneuvers or post-trial, damage control.

Pre-trial Maneuvers are those patent reexaminations initiated to potentially enhance a defendant’s battle in the district court.  For example, patent reexamination may be sought as an avenue to establish objectively reasonable behavior for use in preventing a willfulness finding. (see e.g., the yesterday’s Fairchild Semiconductor press release). Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional fodder for claim construction, or to demonstrate the materiality of a reference subject to an inequitable conduct defense.

Post-trial (damage control) on the other hand, is a litigation inspired use of patent reexamination that seeks to undo the damage inflicted by the ruling of the district court. One of the more well known uses of a patent reexamination filed after a district court judgment was illustrated in In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Translogic had secured an earlier verdict for significant damages against Hitachi, the appeal reached the CAFC at the same time as the appeal rejecting all claims in reexamination, as a result, the infringement verdict was vacated. (more…)

Baker & Daniels on the Ring Plus v. Cingular Wireless Federal Circuit Decision

Baker & Daniels’ Trevor Carter, a Practice Center Contributor, recently passed along this article that he co-authored with colleague Andrew McCoy on the August 6^th Federal Circuit decision, Ring Plus, Inc. v. Cingular Wireless Corp., 09-1537.

In Ring Plus, Inc. v. Cingular Wireless Corp., No. 2009-1537 (Fed. Cir. Aug. 6, 2010), the Federal Circuit reversed a final judgment of inequitable conduct and found that the prosecuting attorney of U.S. Patent No. 7,006,608 (“the ‘608 Patent”) did not intend to deceive the PTO.

While we do not believe this article is biased, we note that we are counsel in a pending Federal Circuit appeal involving inequitable conduct.  See, Joovy LLC v. Target Corp., No. 2010-1323 (Fed. Cir.)  We represent Target and were successful in obtaining a final judgment of unenforceability due to inequitable conduct at the district court. (more…)

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…)

On the Record with Former PTO Director Nick Godici – Part 1

Written by Gene Quinn (of IPWatchdog.com and Practice Center Contributor)

On Tuesday, June 29, 2010, I had the opportunity to sit down on the record with Nick Godici, the former Acting Director of the United States Patent and Trademark Office and Former Acting Undersecretary of Commerce for Intellectual Property. Godici is one of only a small handful of individuals to have seen the Patent Office on every level, from newest patent examiner to SPE to Group Director, Commissioner for Patents and ultimately to Director of the USPTO.  I have wanted to sit down with him for some time now, and some mutual friends of ours, who are mentioned in the interview in passing, made introductions.  I was put in touch with Godici and now the rest is history, as they say.

I thoroughly enjoyed my time with Godici, and we managed to get into a wide variety of issues that ranged from his early days as a patent examiner, his patent examination philosophy and approach, the role of the USPTO, the Patent Granting Authority versus the Patent Denial Authority, examiner training, building relationships between patent examiners and the patent bar, the PTO work from home initiative, inequitable conduct, the Bilski decision and what the USPTO is now likely doing to address that, the parallels between the Reagan Administration and the Obama Administration in terms of patent and innovation policy and exactly what it is like to be the Commissioner of Patents and the Director of the Patent Office, and much more. Oh yes, we also talked about his getting a call from Secretary of Commerce Gary Locke last summer and returning to the Patent Office for a few months as a special adviser at the request of the Obama Administration. (more…)