IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Tag Archives: Inequitable Conduct

Resuscitating Therasense? CD Cal Court Finds Inequitable Conduct by Patentee

Posted in Patent
IP practitioners have witnessed the dearth of inequitable conduct findings in the wake of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). There, the Federal Circuit reiterated en banc that to establish unenforceability for inequitable conduct before the United States Patent and Trademark Office ("PTO"), a party must prove by clear and convincing evidence that (1) information material to patentability was withheld from the PTO, or material misinformation was provided to the PTO, and that such act was done (2) with the intent to deceive or mislead. A few months ago, we reported on a case that continued to signal the death knell of this formerly ubiquitous defense, and thus begging the present question: is inequitable conduct even alive anymore? Of course it is… Continue Reading

2011: The Year Inequitable Conduct Changed

Posted in Patent
2011 was a significant year for the "atomic bomb" of patent defenses, inequitable conduct. Inequitable conduct is a defense to patent infringement that potentially renders a patent, and its family, unenforceable when a patent applicant breaches its duty of candor and good faith to the USPTO. Two traditional hurdles for succeeding on an inequitable conduct defense were showing that withheld information or falsely disclosed information was material and the patent applicant intended to deceive the … Continue Reading

Therasense and Microsoft v. i4i: A View From the Bench

Posted in Patent
On October 25, 2011, The Gibbons Institute of Law, Science & Technology and the New Jersey Intellectual Property Law Association are proud to present "The Ninth Annual Fall Lecture Series" featuring the Honorable Joel Pisano who will present his observations from the bench on two recent, much-awaited intellectual property law decisions: Therasense v. Becton Dickson and Microsoft v. i4i. In Therasense, the Federal Circuit finally resolved key inequitable conduct issues that had been in a state of vacillation for decades. In Microsoft, Justice Sotomayor presented the majority opinion on the standard of proof required for patent invalidity, a key consideration for all practitioners… Continue Reading
Lexblog