Therasense, Inc. v. Becton, Dickinson and Company

Now There is Much Less Chance of Invalidating a Patent by Charging Inequitable Conduct


On May 25, 2011 a sharply divided Federal Circuit overturned decades of practice and announced a new test for materiality when evaluating inequitable conduct by the patentee during prosecution. If a patent claim would not have issued but for the inequitable conduct, then the omission was an omission of material information and the claim is unenforceable.

Typically, a finding that the patentee engaged in inequitable conduct during prosecuting the patent application before the patent office doesn't result in finding the patent invalid, but does make the patent unenforceable. Thus, the remedy available to the accused infringer is in the nature of equitable relief.

The old way of evaluating inequitable conduct was a balancing of materiality with intent. For instance, if some piece of withheld information was not that important to the patentability of the claims in the patent, a strong showing of intent to mislead the patent office was necessary before a court would decline to enforce a patent due to the patentee's improper conduct.

Now, if the omission does not meet a certain threshold then the omission is not material---unless the conduct is so egregious that the intent to mislead the patent office is undeniable. So, the Federal Circuit wasn't willing to completely jettison the equitable underpinnings of inequitable conduct.

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Reference Info:Decision | Federal, Federal Circuit, Patent | United States

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.

© Charles Runyan, KEYTLaw | Attorney Advertising

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