Patent Law

Changing the Law of Inequitable Conduct: Abbot Briefs its Case

By Dennis Crouch

TheraSense, Inc. (Abbott Labs.) v. Becton, Dickinson and Co. (Fed. Cir. 2010)(En Banc Rehearing)

In TheraSense v. BD, an en banc Federal Circuit is reconsidering the doctrinal structure that it has created to handle allegations of inequitable conduct. Abbott (the patent holder) has filed its opening merits brief arguing that the current law of inequitable conduct over-extends its proper bounds.  In an eloquent opening statement, Abbott writes:

The question in this case is not whether to reform the doctrine of inequitable conduct, but whether to restore it—to its origins in Supreme Court precedent; to the confines Congress intended in the 1952 Patent Act; to the standards this Court articulated en banc in Kingsdown Medical Consultants v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988); and to the standards that govern in other areas of law. This Court has expanded the inequitable conduct doctrine well beyond those boundaries, and the result has been an 'ongoing pandemic' of inequitable conduct charges. Taltech Ltd. v. Esquel Enters. Ltd., 604 F.3d 1324, 1335 (Fed. Cir. 2010) (Gajarsa, J., dissenting). The expansion has rendered valuable patents unenforceable based on minor omissions far afield from the doctrine's purposes. And it has converted the federal courts into roving commissions to enforce standards of conduct before the PTO without regard to whether the alleged infractions had any impact. . . .

Supreme Court precedent and the legal principles embodied in the Patent Act reserve those extreme consequences for the most egregious circumstances—cases where a party 'obtained its patent by fraud.' Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 175, 176 (1965). As this Court has recognized, the Supreme Court has held patents unenforceable 'only in cases of ‘fraud on the Patent Office.'' Star Scientific, 537 F.3d at 1365-66 (quoting Hazel–Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 250-51 (1944)); see Larson Mfg. Co. of S.D., Inc. v. Aluminart Prods. Ltd., 559 F.3d 1317, 1343 (Fed. Cir. 2009) (Linn, J., concurring). A party seeking to invalidate a trademark or copyright based on misconduct before the agency must prove it was the product of fraud. The standard should be no less stringent here.

Briefs Filed Thus Far:

• Abbott Brief on the Merits — File Attachment: TS.EnBanc.TheraSense.pdf (608 KB) (discussed above).
• ABA Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.ABA.pdf (1501 KB) (Arguing that the standard should resemble requirements for common law fraud).
• Dolby Labs. Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.Dolby.pdf (128 KB) (intent to deceive should not be found where a proper prior art search by the examiner could have uncovered a withheld the reference).
• Professor Hricik Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.Hricik.pdf (222 KB) (arguing, inter alia, that the Patent Act provides important guidance for the law of inequitable conduct and unenforceability).
• Verizon Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.Verizon.pdf (151 KB) (arguing that judges should be free to consider equitable remedies that are less severe than holding the entire patent unenforceable).

Full post as published by Patently Obvious on July 28, 2010 (boomark / email).