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


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.

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