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CAFC Hears Oral Arguments Re: Inequitable Conduct in Patent Case
- 11/23/2010

The vast majority of defendants in patent infringement suits make claims of inequitable conduct in order to invalidate the patents that they allegedly infringe.  This defense charges that a patent in question was procured by committing fraud on the Patent Office, and should be invalid.  Oral arguments regarding whether the standards for determining inequitable conduct, particularly with regard to disclosure requirements, should be changed were recently held in the Court of Appeals for the Federal Circuit in Therasense v. Becton Dickinson ("Therasense").  A decision is due out by the end of the term.
During patent prosecution, applicants and their attorneys are under a duty to disclose to the Examiner any prior art which (1) either alone or in combination with other information, establishes a prima facie case of unpatentability, or (2) is inconsistent with any of the applicant's arguments in favor of patentability. Non-compliance with this duty can invalidate a patent and give rise to a charge of inequitable conduct.
In Therasense, representations were made to the European Patent Office that were in contradiction to representations made to the United States Patent and Trademark Office ("PTO"), in a related patent application. The contradictory statements were not disclosed to the PTO. The contradictions and lack of disclosure led to a finding of inequitable conduct, which invalidated the patent. Theresanse appealed.
At issue in Therasense is whether the doctrine of inequitable conduct has been expanded beyond its original application to cases of intentional fraud, and whether its abuse by defendants in patent infringement cases warrants revising the legal standards associated with the doctrine. The Federal Circuit is now considering the tests for proving materiality and intent, and whether a party’s intent should be determined based on a reference’s materiality.
Dozens of briefs were submitted to the Federal Circuit by interested parties, including the PTO. The threat of inequitable conduct causes patent applicants to deluge patent examiners with prior art references, even though such references may be only remotely connected to the subject matter of a patent application. The result is overwhelmed patent examiners and applicants alike.  The CAFC's decision may impact these and other related issues.
Check back with the Ostrolenk Faber web site for updates on this important case.