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…)