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Archive for May, 2011

Therasense v B-D and Bayer The CAFC brings sense to the misused inequitable conduct law

27 May

This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.”

A wonderful decision recently issued, which has brought sense to inequitable conduct law, “the atomic bomb of patent litigation”. The decision raises the value of every patent. Killing a patent because of “Inequitable conduct” will now once again be limited to egregious conduct of high materiality, as it was in the beginning and as is fitting and proper. Read the majority opinion to see the details.  Henceforth on intent, “Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” Proof of intent must be by clear and convincing evidence. Henceforth on materiality, “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.” Proof of materiality is by a preponderance.