Therasense, Inc. v. Becton, Dickinson and Co.

Federal Circuit Decision in Therasense, Inc. v. Becton, Dickinson and Co.

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The Federal Circuit took Therasense en banc to clarify the state of the law on inequitable conduct in patent procurement. The Federal Circuit's decision makes it much harder to prevail on an inequitable conduct defense. Some salient points from the opinion:

pg. 24 "In other words, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it."

ppg. 27-28 "This court holds that, as a general matter, the materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction."

pg. 33: "This court declines to adopt the current version of Rule 56 in defining inequitable conduct because reliance on this standard has resulted in the very problems this court sought to address by taking this case en banc."

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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.

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