Inequitable conduct claims one year after Therasense
Frederick Frei and Sean Wooden analyse case law around inequitable conduct one year after the landmark decision in Therasense v Becton Dickinson, and find that the defence remains viable
In Therasense v Becton, Dickinson, the Federal Circuit
issued a significant split ruling on the elements necessary to establish
an inequitable conduct defence to patent enforceability. The six-judge
majority held that, in addition to a specific intent to deceive, in most
circumstances a so-called but-for showing of materiality was required
to support the defence; in other words, the party asserting the defence
must establish that but for the misrepresentation or omission, the
patent would not have issued. Further, materiality and intent were held
to be separate requirements and were no longer part of a sliding scale
where a greater showing of one permitted a lesser showing of the other.
In instances of egregious misconduct, a but-for showing would not be
required. One example of such egregious misconduct was explicitly stated
to be the filing of an unmistakably false affidavit. The Federal
Circuit pointed out that the egregious misconduct exception provided...
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