Patent Law Practice Center

Facebook’s Inequitable Conduct Case After Therasense

Our friends at Reexamination Alert sent in this article discussing the Tele-Publishing, Inc. v. Facebook, Inc., et al..  Has Facebook figured out a way to successfuly prove inequitable conduct even in light of the but-for standard for materiality now required by Therasense?

In January, Reexamination Alert reported on the case Tele-Publishing, Inc. v. Facebook, Inc., et al., No. 1:09-cv-11686-DPW, in which Facebook is accused of infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.”  Facebook defended by requesting reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond.  The PTO granted reexamination.  An initial rejection of all claims issued in April, 2010, and a final rejection issued in August of that year. An appeal is currently pending at the PTO Board.

What will interest reexamination lawyers, however, is Facebook’s allegation that the ‘216 patent is unenforceable because of applicant’s inequitable conduct during the prosecution of that patent.  Facebook asserts that the ‘216 applicant was aware of the de Hond patent because that reference was cited and distinguished in several related applications, and that the applicant intentionally withheld de Hond in the ‘216 prosecution.

How does Facebook’s inequitable conduct defense stand up in light of the but-for standard for materiality now required by Therasense?  Pretty well, actually.   The CAFC described the materiality standard inTherasense as calling for a court to “determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.”  The CAFC seemed almost to have reexamination in mind when it added that “the court should apply the preponderance of the evidence standard and give the claims their broadest reasonable construction” (emphasis added).  The closest answer to the CAFC’s hypothetical question – what would the PTO have done with the undisclosed reference – might be found in reexamination. (more…)

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…)

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…)