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…)