In Therasense, the Federal Circuit Breathes Some Sense into Inequitable Conduct

The Federal Circuit has made it substantially more difficult for an accused infringer to successfully assert a defense of inequitable conduct based upon the Patentee’s failure to disclose information to the United States Patent and Trademark Office (USPTO or “the Office”) during prosecution. Therasense, Inc. v. Becton, Dickinson & Co. (Fed. Cir. May 25, 2011). Sitting en banc, the court noted that inequitable conduct had become “a plague” not only on the courts, where it was “routinely brought on the slenderest of grounds” by reputable attorneys against other reputable attorneys, but also on the “entire patent system.” Slip op. at 23. Unlike the doctrine of unclean hands on which it was based, inequitable conduct had not been limited to egregious affirmative acts of misconduct intended to deceive the USPTO and the courts. Instead, it had been broadened to include even “the mere nondisclosure of information to the PTO.” Id. at 19. The remedy, too, had become more drastic. Instead of the mere dismissal of the suit warranted by a finding of unclean hands, the remedy for inequitable conduct had become “the atomic bomb” of patent law— rendering the entire patent, and sometimes entire patent families, unenforceable. Id. at 21.

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