IP Update - The Federal Circuit’s En Banc Therasense Decision Tightens the Standard for Inequitable Conduct

more+
less-

On May 25, 2011, the en banc Federal Circuit heightened the test for inequitable conduct, changing the standard for materiality and clarifying the requirements for finding intent to deceive.

Writing for a six-judge majority and joined by Judges Newman, Lourie, Linn, Moore, and Reyna, Chief Judge Rader explained that inequitable conduct is an equitable defense that developed from a trio of Supreme Court cases applying the doctrine of unclean hands to patent cases. Citing fluctuating standards and “evolution of the doctrine” over time, the majority stated that “the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.” Slip op. at 23. Thus, the majority set out to “tighten [ ] the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public” with this en banc decision. Id. at 24. The Court explained that if an accused infringer proves both the intent and materiality elements by clear and convincing evidence, the district court must then weigh the equities to determine whether the applicant’s conduct warrants rendering the entire patent unenforceable.

Please see full article below for more information.

LOADING PDF: If there are any problems, click here to download the file.

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Finnegan | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »