Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct

Therasense Inc. (now Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010)

The Federal Circuit has granted Abbott’s request for an en banc rehearing on the issue of inequitable conduct.

The rehearing will focus on six questions of law:

  1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
  2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
  3. What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?
  4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
  5. Should the balancing inquiry (balancing materiality and intent) be abandoned?
  6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

Abbott’s en banc brief is due in 45 days from today. The response is due within 30 days of service of Abbot’s brief.  Briefs of amici curiae will be entertained and may be filed without leave of court. Under Fed. R. App. Proc. 29, the amicus curiae brief must be filed within 7–days of the filing of the principle brief of the party being supported. If the amicus curiae does not support either party then the brief must be field within 7–days of the petitioner’s principal brief.

En Banc Order

Comment: The correct answers to these questions depend upon the purposes of the inequitable conduct doctrine. Namely, is the doctrine intended to the behavior of patent prosecutors is is it intended to catch perpetrators. The major empirical issue is that the doctrine pushes patent prosecutors to over-compensate in ways that potentially harm the system and certainly raise the costs of patent protection.

324 thoughts on “Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct

  1. And this was when I was being handled by the Law firm that filed the quick and dirty provisional. thst I paid approx. 4,000.00 for in 1995.And they too knew about the ART. And that is why I contacted OED and fired the Atty.

  2. The timing aspect boils down to the fact that “§ 1.56 (b)(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim” is not about whether a jury is determining prima facie, but rather, whether the examiner has the chance to do so. Depriving the examiner of this chance is the foul.

    This does necessitate the unforeseen consequence of playing it safe and providing every single thing that a person might consider an examiner may want to see – and with the super (KSR) powered PHOSITA 103, thems a pretty big list.

    Not that the examiner will actually look at the stuff, but ya got to give it to the examiner.

  3. ping: You just don’t get the basket and one when the foul is so far ahead of the shot.

    This basket case makes a very good point.

  4. I suggest, therefor, that a required element of proof of IC based on non disclosure is that at least one claim is invalid over the non disclosed reference.

    More lol-IMHO-Ned law.

    If a determination of invalidity is so much as plausible, the reference is probably material whether or not invalidity was the ultimate conclusion.

    IANAE is right again, Ned.

    Ned, you keep on forgetting one tiny little thing – the activity in question and the point of the dilemma covered by the Rule – the violation – is at the time when the application is in front of the examiner, not when the patent is in front of the judge.

    You keep wanting a no-harm-no-foul type of holding and keep missing the point that the foul is four steps before the shot (for those basketball purists that cringe at the liberal interpretation of some NBA refs).

    Let me challenge your love of pulling quotes from case law to comment on quotes from the legislative law:
    The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined,

    and

    However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.”

    The second quote puts a little different spin on this. The penalty isn’t necessarily because the material art was invalidating or not, the whistle is on the foul of intentional misconduct. You keep wanting to focus on IC of a shot, but the shot never “really” happened. You just don’t get the basket and one when the foul is so far ahead of the shot.

  5. “All patent office rules are unconstitutional! I have a Constitutional right to a patent on my inventions!”

    /Actual Inventor off

    Whatever happened to that nitwit?

  6. What the Supremes were attempting to prevent is the willful acquisition by “fraud” of invalid patents.

    Are you okay with the willful acquisition by “fraud” of valid patents? If people want patents, I’d prefer they fairly demonstrate their entitlement to the PTO according to the law, not get what they can by any means and try to justify it in court after the fact.

    Regarding attempt in the criminal analogy, if the act attempted is in fact legal, there still is no crime.

    Granted, but if the act attempted is to withhold a material reference during the prosecution of a patent that one has an obligation to disclose (i.e. actively not-withhold), it doesn’t sound very legal to me.

  7. “Thomas Paine would have hated the doctrine of inequitable conduct!”

    Let’s just cut to the chase.

  8. IANAE, remedy in Keystone Driller was to render unenforceable perfectly valid claims in related patents. What the Supremes were attempting to prevent is the willful acquisition by “fraud” of invalid patents.

    Now, you say in a particular case that I committed IE by withholding a reference that does not invalidate any claim. I say to in you in rejoinder is that I have committed no illegal act, that I did not in fact obtain an invalid claim.

    Regarding attempt in the criminal analogy, if the act attempted is in fact legal, there still is no crime.

    Example. I am arrested for attempting to open a locked car on the street. My defense is that I own the car. Is that an adequate defense?

  9. IANAE, I put “invalid” in quotes for a reason.

    I know. It’s the same reason the rest of us use a word other than “invalid”. Because the patent is not being invalidated.

    I don’t understand your insistence that the standards for invalidity be applied to a process that does not invalidate the patent.

    It holds that equitable defenses having common issues of law and fact cannot be decided before a jury trial on the common issues, and that thereafter the court cannot decide the common issues differently.

    There aren’t as many issues in common as you think. Equity doesn’t care whether the patent is actually invalid. Equity doesn’t even get to look at the patent if it’s actually invalid. Equity cares whether the art is material, which is not the same question as whether the art is invalidating. Invalidity is a question of law anyway, so the 7th Amendment wouldn’t even apply, except perhaps to the facts underlying the determination of invalidity.

    If a determination of invalidity is so much as plausible, the reference is probably material whether or not invalidity was the ultimate conclusion.

    There is an analogy in the criminal law. If I intend to commit a crime, but the act I perform is in fact legal, I have not committed a crime at all regardless of my intent.

    You can still be convicted for attempt. In any case, the attempt to secure a patent by inequitable conduct is exactly what we’re trying to discourage here. If the patent turns out to be actually invalid, the court can invalidate it under the law. This is a whole other remedy for a whole other situation. People shouldn’t be able to conceal a borderline reference and then argue “no harm, no foul” later in court.

  10. I like the line of argument from Ned. But then I would, wouldn’t I, given that it fits with my understanding of how the patents courts in England manage the IC issue. Maybe some scholar can tell us how US law and English law on this issue came to diverge, after independence.

    I still remember SCOTUS opinions on Markman v Westview, and the depths they descended to, to find out whether 18th century England allowed jury trials in patent cases. So I look forward to reading similar legal history, when it comes to IC.

  11. IANAE, I put “invalid” in quotes for a reason. Rule 56 requires a reference be “invalidating” in order for it to be material. The Rule actually uses the PTO equivalent term, “unpatentable.”

    Lionel and IANAE, I suggest, therefor, that a required element of proof of IC based on non disclosure is that at least one claim is invalid over the non disclosed reference.

    Now assuming this, and I think this much is clearly established by the rule and by Supreme Court case law such as Keystone Driller, Dairy Queen comes front and center. It holds that equitable defenses having common issues of law and fact cannot be decided before a jury trial on the common issues, and that thereafter the court cannot decide the common issues differently.

    The ONLY reasonable conclusion from this is that it is required to find a patent claim invalid over a non disclosed reference before one can further decide the issue of IC. But, if the jury decides, as it apparently did in Avid, that the claims are valid over the non disclosed reference, it would be a direct violation of the 7th Amendment to decide the reference was “material” and that IC was committed by not disclosing it.

    There is an analogy in the criminal law. If I intend to commit a crime, but the act I perform is in fact legal, I have not committed a crime at all regardless of my intent. Here I willfully do not disclose a reference that a jury holds does not invalidate any claim. Regardless of the closeness of the issue, I have committed no illegal act. This should decide the issue.

  12. I am not trying to move the country into the trash, it is already there. I have something to say to the american people.about our (NON) rights. And how all they do is give special attention to nothing.
    It’s all about the quid. Imagine being free of the chains for a moment, and then allowed to file bankruptcy because you have been robbed of all you had. And the only connection to putting you back in chains has to come from Tennessee. And no matter who you fire you are still in chains. Well the only connection to PHK&K is AKIN GUMP. And I have just closed that hole. I alsways thought Krieger was kicked out like Lehman. But Krieger left because of it.

  13. The court of equity could not find, for example, a patent “invalid” over a reference where a jury had just found the patent valid.

    Right. A patent is never found invalid in equity, because all the grounds of invalidity are statutory.

    Equity finds a patent unenforceable, in much the same way the bank may hold legal title to your house but be prevented in equity from booting you out and moving its own stuff in.

  14. Ken: IANAE states (etc.)

    I was quoting Ned. Note the italics and my immediate subsequent contradiction of that statement.

    EG: Quite true. But equity is also a balancing act. The problem with inequitable conduct is that there is no balancing on the remedy (Star Scientific is the exception). There’s only the “death penalty.” That doesn’t sound at all like equity.

    That sounds completely like equity. Look at mortgages, constructive trusts, injunctions. Injunctions against enforcing common law court judgments, even. Equity is all about saying “it’s not fair to let you have that, so you can’t have that”. It’s not just haggling on price. A lot of the classic equitable remedies aren’t available in half-measures. The balancing act determines entitlement, but once you’re entitled you get the equitable remedy and that’s that.

  15. Ms. McPherson:
    If the bankers can get away with what they have done to the United States . . . do you think that any book about anything will move this culture in any direction? If I recall, George Washington abandoned the use of free speech to protest his lawful government’s oppression. However, I could be wrong on that point.

  16. Ken you oughta see what I got. I am writing a Book. And the good thing there is so much evidence for fill, that it may be a double series.
    And like Judge Judy says if it’s true they can’t do anything. And with the evidence I have to back it up, it will be awesome. and all I have to do is get it printed in book form. and buy a bunch of them to sell. Selling thwm won’t be a problem.

  17. Ping
    Did you earn a 1 million dollars to sink my case?
    What are you crying about? One of those Lexus’s on recall?

  18. MaxDrei:
    Frankly I am more interested in individuals acting under the color of government authority to follow the rules than to use the authority to oppress the rights of individual citizens in violation thereof.

  19. You must mean the shark with lasers, that I told to SUE me for the rest after I realised he was charging me for marketing.. nothing! And the worst part is the Examiner allowed a Patent application to be intertwined into the 2nd Patent, adding all kinds of words like device, and that application was not even supposed to be allowed. It was abandoned. so how was the Examiner legally able to do that? He wasn’t! I fired the shark with lasers along time earlier. So if you ask me the Examiner was already working for the shark with lasers. And I was out of the equasion! so why do i have the Patent Grant, even though it is in an aliens name,And more than likely others.
    Now the Examiner is gone! Or hiding under a rock. or in the basement with Malcolm.

  20. “Preventing the exercise of a legal right, or of a remedy granted by the courts of law, is a big part of what equity does.”

    IANAE,

    Quite true. But equity is also a balancing act. The problem with inequitable conduct is that there is no balancing on the remedy (Star Scientific is the exception). There’s only the “death penalty.” That doesn’t sound at all like equity. Even patent misuse allows that misuse to be “purged.” The Rohm & Haas case says that inequitable conduct (or as it has sometimes been called “fraud on the Patent Office”) can be “purged” but it’s really a canard as no one to my knowledge has ever been able to meet it.

  21. Malcolm,

    I checked my computer folder of cases on inequitable conduct and from what you describe, Scanner Tech looks like the one you’re talking about (it reversed an inequitable conduct ruling based on a false petition to make special). It’s definitely not Star Scientific.

  22. Wow- this post has certainly sparked some interesting debate! For someone who specialises in a different area of law as I do, it is interesting to hear about the complexities of other areas and compare the problems faced.

  23. Ned,

    I cannot believe you quoted that passage to support your argument

    From the language you quoted prior art only has to be prima facie evidence. Prima facie evidence does not equal invalidating evidence, (or have you never successfully rebutted prima facie evidence?).

    (2) non-cumulative

  24. Ned writes:

    “it might be time to put to rest the ill-conceived notion of invalidity based upon equitable principles”

    But I’m more interested in the use of those principles to deny to a patent owner relief from infringing acts (without even discussing whether or not the asserted claim is valid). May I ask, are you against that use, Mr Brooks?

  25. Let us be reminded that the grant of a patent brings with it powerful usurpation of streams of commerce. Coupled with the international implications of patent protection it comes as the single-most invasive act a non-United States entity can legally undertake in our nation. In short it is a surrender of a small part of our nation’s sovereignty by Congress. We freely allow foreign powers to control and exact taxes, i.e., royalty, from the citizens of the United States. Before the Courts decide to hold unenforceable, invalidate and or in any manner attenuates the presumption of validity of a patent the Courts should clearly consider the international consequences of such an act coupled with the limits on their powers for the reasons I discussed above. It is without question that the Executive Branch has plenary power in foreign affairs. A grant of a patent to a non-U.S. entity is definitely a foreign affair. Given the international implications of today’s patent protection it might be time to put to rest the ill-conceived notion of invalidity based upon equitable principles. This is not to say that a patent could not be held invalid by a Court. Were material information not provided to the Examiner during prosecution of the patent application and it demonstrated a lack of novelty or obviousness, then so be it, the patent may be invalidated based upon statutory grounds. Were the act upon the individual that failed to bring the reference sufficient egregious then statutory fraud charges may be brought, e.g., criminal fraud.

  26. IANAE states “Unclean hands traditionally should only be operable to deny a plaintiff an equitable remedy. It should not operate to deny a plaintiff a legal remedy; but the Supremes seem to sanction equitable defenses to legal remedies.”

    Firstly that is incorrect. Law has always trumpted equity. If a statue works unfairness equity must yield to the policies of the body politic. To further undermine the courts power here: Federal Tribunals are courts of very limited jurisdiction. Congress dictates the jurisdiction of the Federal Courts. They do not sit as state courst of general jurisdication. Having litigated in both Federal and State courts here in California I note that there is a marked difference between the two jurisdictions especially when dealing with the common law and, as we call equitable relief here in California, common counts.
    In short, a Federal Court would certainly avoid rendering equitable relief in violation of statutory or common law.

  27. “Malcolm’s point about the ARK”

    not to worry, faux news surely fact-checked that this artifact is made out of gopher wood before reporting.

    meanwhile, we all need to get back to the court decreed obligation to hound the ceo’s of our clients about their every move and whereabouts to avoid IE. hello, this is your patent attorney AGAIN and ….hello?…hello?

  28. Sarah,

    The only painting I wear is the paint you yourself have applied, or would like to apply.

    Did sarah say “Sharks“? Would that be Sharks with friggin lasers attached to their friggen heads?

  29. Sarah, you must know that I was referring to Malcolm’s point about the ARK when I brought up the matter of atheists and the French Revolution. It had nothing to do with you.

  30. IANAE, true to a degree. But since the trial on jury issues went first, facts found by the jury were binding on the courts of equity. The court of equity could not find, for example, a patent “invalid” over a reference where a jury had just found the patent valid.

    (I place the “invalid” in quotes, because the issue in equity is whether the reference would make the patent invalid as a necessary predicate to whether there was a duty to disclose.]

  31. The only thing that really gets me Ned.
    Is I have never been given the chance to show my evidence. I have never been allowed before the court to voice my side.
    So Ned without sounding like a really sore loser that never got a chance to voice, in a Court. Stick your million dollar head where the sun don’t shine. Ned, you scare me. You make me think back to the man that forced me from my home with his skin head mind set. You charge at me like a Shark that smells blood, no matter what I say. Get over yourself haven’t you been paid already?

  32. IANAE, check FN 3.

    Still only seeing the jury thing. Please quote the text from the case that you think supports your point that “a case in law ousted equitable jurisdiction entirely”.

    As opposed to the older-than-dirt practice of getting your case duly tried in a court of law, and then running to the court of Chancery to complain about the result, which practice was only reinforced by the constitutional right to a trial by jury.

  33. IANAE, according to Dairy Queen, until the merger of law and equity, a case in law ousted equitable jurisdiction entirely.

    Can you point out exactly where in Dairy Queen it says that? All I see is the narrow procedural point that common issues of fact between the legal and equitable cases are entitled to a jury trial.

    It’s absolutely trite that when law meets equity on a substantive point, equity always wins. Been that way for centuries.

  34. Sarah,

    Who is the painted whore, she asked?
    Who is the painted whore who danced?
    Who is the painted whore of yore? The one who danced in Notre Dame?
    Why, it is the Goddesses of Reason. She was the whore danced that day in Notre Dame.

  35. This is 2010, Ned. And paying people such as you, yourself, and Ping, to provoke me take on water, so that the provacatour remains unharmed and still able to rule those that rule… well then

    Ned who is the Painted Whore(s) if it is not you and Ping?
    Who is the painted Whore, that prefers to blame the king?
    Who is the painted Whore, that knows what he has done?
    He is the Whore the painted Whore that benefited no one.

  36. IANAE, according to Dairy Queen, until the merger of law and equity, a case in law ousted equitable jurisdiction entirely. link to supreme.justia.com

    So I am not so sure that historically that one could interpose an equitable defense to a legal action.

    But, since Beacon Theaters, link to supreme.justia.com
    equitable defenses that include common questions of law and fact with legal issues cannot be tried first, and the findings of fact found by the jury are binding on the court when considering the equitable defenses.

    What this suggests to me is that it is unconstitutional to decide that a patent is both valid over a reference and unenforceable for failure to disclose that reference to the PTO.

    I think the Feds ought to look into Avid en banc.

  37. EG Why do you find Star Scientific so offensive, Malcolm? All it says is that a finding of inequitable conduct doesn’t automatically mean patent unenforceability.

    I looked at the case again and I think it’s actually Scanner Tech and not Star Scientific that is the source, so I misspoke, although Linn cites both in his dissent. It’s the rule about the “single most reasonable explanation”, which Linn morphed into a rule that any “alternative credible explanation” is sufficient to defeat a finding of IC. This is the “get out of jail free” card I referred to upthread and, I believe, this is what Judge Linn relied on mainly in his dissent in the original Therasense decision.

    Taken to the limit, the rule is that if you can’t prove that applicants did not believe their own bullcrxp, then you can’t find IC. And if you are someone like Linn or possibly Rader that needs a video of the bullet coming out of the gun held by the patentee to find intent, then there is no way to prove IC because you can always come up with a “plausible” “alternative” explanation that is believable to *somebody* who really, really wants or needs to believe in that explanation. According to Linn: The question, thus, is not whether it is plausible that the information is immaterial—a question asked under the objective materiality prong—but rather, whether it is plausible that the individuals subjectively believed that the reference was immaterial at the time they withheld it—a question presented under the subjective intent prong.

    This, friends, is a ridiculous standard.

    The district court judge in Therasense, to his credit, did a great job of laying out the facts regarding the witness demeanor etc that informed his decision. Unfortunately, those facts were ignored by Judge Linn. Why? One “plausible” “alternative” explanation is that he simply liked the plaintiff’s shoes.

  38. The communards advocated violence against the enemies of the revolution, atheism, price controls, high progressive taxation, etc., etc., etc. In truth, they were the original far left, the original communists.

    The originals? In 1793, you say? It would seem the far right has a much longer pedigree. Not to mention ruthless efficiency and nice red uniforms.

  39. “Which practically begs for the re-rejoinder that Republicans would not be sufficiently entertained without a second dancer.”

    jimmy carter volunteered.

  40. Sarah, during the Reign of Terror, the followers of Hebert, leader of the communes, proclaimed atheism. They ransacked churches and killed priests on sight. On Nov. 20, 1793, they dressed up a prostitute and had her dance in Notre Dame as the Goddess of Reason.

    The followers of Herbert were known as “Communards.” They were more radical that the socialist Jacobins who followed Robespierre. They ruled Paris through the communes. The communes were districts of Paris. The communes were governed by committees elected by the proletariat who were actually paid to attend meetings.

    The communards advocated violence against the enemies of the revolution, atheism, price controls, high progressive taxation, etc., etc., etc. In truth, they were the original far left, the original communists.

  41. Can you point to any other area of law where equity mandates only one remedy that’s similar to unenforceability of the entire patent due to inequitable conduct?

    History is full of examples. Look at mortgages, where the mortgagee’s legal title was essentially completely unenforceable due to the mortgagor’s equitable right, and there really wasn’t any middle ground.

    Preventing the exercise of a legal right, or of a remedy granted by the courts of law, is a big part of what equity does.

  42. “A great opportunity to clean up the ridiculous mess left by the majority in Star Scientific.”

    Why do you find Star Scientific so offensive, Malcolm? All it says is that a finding of inequitable conduct doesn’t automatically mean patent unenforceability. Isn’t that consistent with inequitable conduct being part of “equity” (afterall it contains the root word)? Or do you believe inequitable conduct is part of some other branch of jurisprudence?

    I also thought “equity” meant there could be more than one remedy. Why should a finding of inequitable conduct have only one remedy (unenforceability of the entire patent)? Moreover, I thought SCOTUS in eBay said that equitable remedies (e.g., permnaent injuctions) shouldn’t be treated differently in patent law versus of other areas of law. If that’s true, then why is inequitable conduct in patent law treated differently from other equitable doctrines? Can you point to any other area of law where equity mandates only one remedy that’s similar to unenforceability of the entire patent due to inequitable conduct?

  43. I think you’re unfamiliar with the entire concept of courts of equity.

    6, Are you familliar with the entire concept of “in contempt”? The grand court is waiting for you.

  44. I could rejoin that Democrats would feel very comfortable during the French Revolution where a painted whore danced in Notre Dame

    Which practically begs for the re-rejoinder that Republicans would not be sufficiently entertained without a second dancer.

  45. “I could rejoin that Democrats would feel very comfortable during the French Revolution where a painted whore danced in Notre Dame and the mob tore priests limb from limb.”

    Have you ever worn a medieval smock? I assure you they would not be comfortable.

    “It should not operate to deny a plaintiff a legal remedy;”

    I think you’re unfamiliar with the entire concept of courts of equity.

    link to en.wikipedia.org

  46. Unclean hands traditionally should only be operable to deny a plaintiff an equitable remedy. It should not operate to deny a plaintiff a legal remedy; but the Supremes seem to sanction equitable defenses to legal remedies.

    Equity has always been in the business of standing in the way of legal remedies.

  47. Malcolm, re your ARK comment, I could rejoin that Democrats would feel very comfortable during the French Revolution where a painted whore danced in Notre Dame and the mob tore priests limb from limb. However, I will not say that as it would be bigoted and offense.

  48. And as for making a point (legal)in this country.
    There are none to be made. This is the United States of the pointless Forest.
    And if you don’t ride with Robin Hood and his merry men, with a twist. FAHHGETT ABOUT IT. YOU LOSE.

  49. Ken, while unenforceability is a statutory defense, I still wonder about the use by the Supremes in cases such as Keystone Driller of the unclean hands doctrine the way it did. Unclean hands traditionally should only be operable to deny a plaintiff an equitable remedy. It should not operate to deny a plaintiff a legal remedy; but the Supremes seem to sanction equitable defenses to legal remedies.

    I would be interested to see just when the Supreme Court began to recognize such defenses.

  50. Malcolm, for the sake of argument, how would a court demonstrate a “prima facie” case of unpatentability after a jury had found as a matter of fact that there is no such prima facie case.

    The court would have to find, for example, that each and every limitation was in the reference, if not, was in a second reference but obviously combined. Now, I would hope when IC is at issue that the court ask the jury specifically whether the reference has the all the limitations not in the secondary reference. If the jury so found, there is still the problem that they also found that combination with the other reference was not obvious.

    Now in face of all this, just how is it possible for a court to demonstrate that the non disclosed reference could be used to make a prima facie case of unpatentability when a jury has just held the opposite? Remember, we have a 7th amendment that forbids a court, any court, to reconsider facts found by the jury.

  51. Face it boys. When a Lawyer has the quid he can buy his way through it all. No matter what he does, says, or lies about! Nillhistic is correct about the quid.
    All you small firms don’t have chance in H@ll. The poor sucker will sell his Idea to the company that fits best his Idea. And he won’t need to wonder if the Lawyer or the PTO are being honest.
    As the Airlines and the Car companys shrink. So shall you. To bad you didn’t all file a class action, if that is possible against those that turn the cheek. But it’s way too late now.
    And to think I sent the Art from a catslog that showed my claims being sold right after it came out in Winter 1996. I literally gave it to OED at the PTO.
    And on my CIP I sent in another drawing of what I was told I couldn’t have and they just steal it! And because this one did this. And that one did that. hahahaaaa.
    How can you win being honest. You’d better get on that train going the other way. But even then you must be able to carry some of the little guys for income. But they will know what they are up against. And why bother taking that chance with Lawyers or the PTO.
    It’s all about the Quid Baby. Imagine They were charging me for marketing,WHAT?
    Well JD at least you have retirement.

  52. Ken I simply do not believe that the invalidity of patents based upon equity is constitutionally sound.

    Yo, Ken: patents aren’t invalidated by a finding of IC.

    More importantly, Fox News is reporting on its Science and Technology website that Noah’s Ark has been discovered!

    link to foxnews.com

    This is great news for Republicans.

  53. I find it absolutely mind boggling that a doctrine of equity could be used by an Article III tribunal (federal Courts) to invalidate an act undertaken by the combined efforts of Article I (Congress) and Article II (The Executive Branch) tribunals. Quite simply put, the Great Chief Justice stated the courts could say only what the law was and that laws could be held unconstitutional. In the patent world we have this anomaly in which the courts say that the combined act of Article I and Article II tribunals will be nullified based upon an equity. That makes absolutely no sense. Where do the courts get this power? It completely undermines the Separation of Powers framework of our Federal Government. There are much larger issues presented by inequitable conduct than simply allowing an individual to prosper from malfeasance-the very foundation upon which our nation is based. I know for many techies out there this appears arcane and confusing, but some of us still believe in the Republic and that it should be preserved.
    I believe that the Federal Courts have quite simply overstepped their authority. Can someone point me to the Supreme Court case or statue that authorizes the courts to invalidate any act of the Executive Branch or Congress by the courts that is based upon the Constitution or a statutory grant of authority? Look at the Steel Seizure cases for guidance. As Justice Jackson state “the president’s powers are at their zenith when exercised to execute a law that Congress has enacted”. That is exactly what is happening when a patent is issued. However, the Courts think nothing of invalidating that act, as if on a whim, for intentional and sometimes arguable negligent malfeasance of those involved in the prosecution of the application.
    Now look at 35 U.S.C. section 283. It pretty much limits the court’s ability to invalidating patents. In fact, it articulates specific defenses that may be asserted and even precludes some and requires specificity for others. Clearly this indicates a desire by Congress to control the defenses afforded to infringers.
    Now look at section 284. Injunctive relief based upon equity is allowed to secure patent rights . . . not to detract from them.
    I simply do not believe that the invalidity of patents based upon equity is constitutionally sound. It might be a manner by which to avoid having to decide the very difficult cognizable issues that are presented in patent cases. In summary, when the President grants a patent, the Executive Power is at its greatest; yet, the courts will strike that act of the President based upon the act of a single individual without recognizing that Congress has limited the defenses that could be asserted in any patent infringement action. I think the courts are on very tenuous grounds here.

  54. Ned Now consider that a court has determined that the particular reference, not cumulative, does not itself or in combination render a claim invalid.

    Rule 56 states that a prima facie case of obviousness is sufficient to find materiality.

    A finding of validity should operate as a legal bar to a finding of unenforceability due to non disclosure of prior art.

    Nah, I don’t think so. Certainly a fact that should be taken into account, but as a per se matter? No way.

    EG In fact, I can’t recall a case where “substantially involved” even remotely went this far up the “food chain.

    Huh? There are definitely cases which discuss CEOs and/or VPs and/or other board members being involved in prosecution. Don’t remember the names of the cases, but I certainly recall the issue arising.

  55. Ping, well let’s hope the Feds resolve this issue as well. It would be quite helpful to have a clear rule for the court to decide cases.

    Again, I would not even hold a hearing on IC for non disclosure issues until the issue of validity is determined. A finding of validity should operate as a legal bar to a finding of unenforceability due to non disclosure of prior art.

    Now the flip case should be easy. If the jury finds a claim invalid over a willfully non disclosed, non cumulative reference, IC should be found.

  56. Ned,

    You still miss the part about timing.

    The time of submission is when the application is before the examiner. The reason for this is for the examiner to be aware of the reference and for the examiner to make the call.

    Your standard of post-grant-in-litigation-the-judge-says-it’s-OK-”no harm no foul” is simply too late.

    Just an observation.

  57. Lionel, I am talking here now about how a judge is to decide the issue.

    Re your proposed standard, though, consider rule 56 itself:

      “b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

      (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim.”

    Now consider that a court has determined that the particular reference, not cumulative, does not itself or in combination render a claim invalid. I suggest that it is NOT legally possible to find IC for non disclosure of that reference.

    I should note that the current Rule 56 standard somewhat tracks Keystone Driller and is for that reason not ultra vires.

  58. Ned,

    I disagree with your standard. A finding that prior art does not invalidate a patent does not mean the prior art is not material. I believe the standard should be if it raises a nontrivial question of validity after issue, even if the ruling is eventually in the patentee’s favor.

  59. Such a finding is equivalent to a finding that the disclosure or non disclosure of the prior art to the examiner was not material to the patentability of the claims.

    Except for one little thing, Ned. Timing.

    You are asking (well, telling) that the decision point on materiality be put off until after grant, and if, after grant non-materiality is found, well then, no harm no foul.

    Except that’s not the way the rule works. You have to put it before the examiner and let him decide. You don’t get to roll the dice.

    The silly thing is, the same people who complain about applicants burying examiners with monster IDSs want to hang those who do not supply a particular item discovered after teh fact. With the level of unknowns concerning future business contexts and litigation, the only way to play it safe is to disclose everything, including the kitchen sink.

    Just an observation.

  60. Ned,

    You bring up a good point about the non-disclosed “trade show demo” being deemed “material”. That might be another reason why this case gets an en banc hearing.

    However, the big issue in Avid is who is in the “target zone” (as I call it) for owing the “duty of disclousre” under 37 CFR 1.56. Prost and Mayer said the president of the patentee was in the “target zone”, i.e., “substantially involved” within the meaning of 37 CFR 1.56(c)(3) and thus owed the “duty of disclosure” to the PTO regarding the “trade show demo.” That’s pretty high up the “food chain” (even in a small business), which is why Linn dissented, and which makes this case “ripe” for en banc consideration. In fact, I can’t recall a case where “substantially involved” even remotely went this far up the “food chain.”

  61. EG and Paul, that Avid case is a problem, not so much because it was about the president of the company, but because the non disclosure of the “trade show.” The Feds noted the trade show was “prior art” under 102(b), as if that made any difference whatsoever to the finding of IC. As Paul noted, the trade show was considered in the district court, and the patent’s validity there-over confirmed.

    Now, I have argued here before and I will argue again now: a finding of validity should decide the materiality question when non disclosure of prior art is the issue. Such a finding is equivalent to a finding that the disclosure or non disclosure of the prior art to the examiner was not material to the patentability of the claims.

    I do not know the particulars of the Avid case, but most patent attorneys aware of a prior public disclosure, will ascertain what was invented after the public disclosure and describe and the claim only the new matter. That is apparently what happened here based on the inferences.

    This case may present problems for many many patents in similar fact situations.

  62. Malcolm, I think the answer to Q1, where the statement to the PTO is false, is that the disclosure to the EPO should not act as a “cure” in any respect. However, I believe the Feds have held in the past that such disclosures are evidence of good faith and can, in some cases, weigh against a finding of IC.

    This is one of the reasons practitioners err on the side of disclosing everything.

    With respect to Q2, where the statement to the PTO is demonstratively true, failure to disclose contrary statements to a foreign jurisdiction should not result in a finding of IC. The same may not be true if the statement were made to the PTO in another proceeding or to a US court, because such a contrary admission of fact or argument may operate as an estoppel. Here failure to disclose the contrary statements may be material and rise to the level of fraud regardless of the truth of the statements made in the current proceedings.

  63. I forgot to give credit to Jim Demers above too.

    The fact that no one posted an answer (at least one that will not get you arrested here in the States) is veddy veddy interestink.

    As far as I know the USPTO code of ethics does not control (or even attempt to control) what anyone tells to a foreign patent office.

  64. Is the bizarro universe a matter of sovereignty?

    Let me take a stab at where I think Ned is going:

    Does it really matter to the United States Patent and Trademark Office what anything anybody says about anything in a foreign country (patent or not)?

    Why should I not be allowed to lie my _ss off to someone outside the U.S.? Does the sovereignty of the US extend to foreign patent offices? This is completely different than receiving a foreign search report which tells you of prior art, because you are required to report that type of information to the USPTO – and there is an express disavowal of “patentability” built into the IDS statement (rather conveniently, I might add). If you, on the other hand, completely fabricate something and tell that to someone outside the US, what the __ business is it of the US? That lie is affecting a foreign government’s patentability requirement, not the U.S.’s.

  65. Now I ask you this. Assuming that it was false, how does disclosing the EPO prosecution history of the reference “cure” the problem?

    One would expect (hope?) that the Examiner in this case would wake up from his/her slumber, disregard the self-serving declaration, and not allow the claims. Problem cured. Also, had it been disclosed, there would be one less piece of evidence in support of an effort to deceive the PTO into allowing the claims. In my personal opinion, the declaration and accompanying statement by the attorney was enough by itself to find IC, insofar as both were so plainly full of crxp.

    Assuming the statement was true and demonstratively so. For example, let us assume that Abbott produced a number of renowned experts that uniformly testified that it was believed that a membrane was required for blood of all types to prevent clogging. Would you still argue that IC was committed if the EPO prosecution history was not disclosed?

    Honestly, I’m having difficulty entering the bizarro universe here. If Abbott knew that the statements before the EPO were false but, on their face, it was not obvious that they were false and, on their face, the statements were material to the US case, then they should be disclosed and their falsity addressed during prosecution (sounds like an easy task, with all those Nobel laureates lining up to sign the declarations). Is it IC to fail to follow through like this? Maybe. Letting it slide seems to set up a slippery slope: “We didn’t disclose the reference because even though it looks like a killer, we knew we would be able to overcome the issue with a declaration if we had to.”

  66. MM: My proof is that the US is the most popular country for filing patents, by a long shot if I’m not mistaken. The conclusion about the higher stakes leading to increased temptation to engage in deceptive conduct follows from applying basic logic to the well-known shortcomings of the human condition.

    Could not agree more.

    Jim Demers: I have to agree with Ned Heller that the principal problem presented by this decision is the notion that something said by the applicant in another jurisdiction is in any way “material” to a US examiner. The only question should be, were the representations made to the US examiner factually true, or were they not?

    What was said before the EPO might be different for a variety of reasons, ranging from an outright lie to a different argument (made with respect to different legal and procedural standards) to different connotations attached to words (MaxDrei’s point re “optional”). But even an outright lie made in the EPO is not a fraud on the USPTO, does not cheat the US public, and does not lead to a US patent on the unpatentable. There’s a practical aspect to this (do we really want to be dropping complete patent family file histories from EP, JP, CN, KR, CA, AU, TW, etc. etc. etc. on our examiners?), but there’s a jurisdictional problem as well: can/should we be punishing sleazy applicants for deeds done abroad, if everything done before the USPTO was on the level? (I’m not saying that was the case here; just arguing the principle – I think it’s up to the EPO to tear up the applicant’s European patent.) And in the absence of jurisdiction, what is it about statements made abroad that could possibly be “relevant” to a US examiner?

    In this case, the statements were statements of fact about a reference, and no argument could be made that the laws in the U.S. or Europe warranted a different statement to the EPO from that to the USPTO. Jurisdiction is not the issue. The issue is what information material to patentability does the applicant know about. It does not matter how that knowledge comes about.

  67. Malcolm, next question: Assuming the statement was true and demonstratively so. For example, let us assume that Abbott produced a number of renowned experts that uniformly testified that it was believed that a membrane was required for blood of all types to prevent clogging. Would you still argue that IC was committed if the EPO prosecution history was not disclosed?

  68. OK, Malcolm. I will agree that there was IC here if the statement of fact made in the affidavit was false.

    Now I ask you this. Assuming that it was false, how does disclosing the EPO prosecution history of the reference “cure” the problem?

  69. Ned: The only statement of fact that I can find in this case is the statement by Abbott’s doctor-affiant that one of ordinary skill at the time of the patent believed that membranes were required and not optional for whole blood

    Right. Even though Applicants’ own application says that membranes are optional, the claims in that specification cover fluid generally and do not require membranes, and Applicant told the EPO that the specification was “unequivocably clear” that membranes were optional, even when used with live blood (which has erythrocytes, just like whole blood). In comes this Abbott scientist (not an inventor on the patent and not one skilled in the art at the time of the invention) with an utterly self-serving declaration that “based on his historical knowledge” one skilled would have understood that a protective membrane was necessary with whole blood.

    And then the attorney jumps in with his “mere phraseology” bullcrxp. Is that “argument” or a “misleading statement of fact”? Sounds like a misleading statement of fact to me. How can a statement be both “unequivocalably clear” and an example of “mere patent phraseology”? You can read the ridiculous response of the attorney to the judge’s question about this on page 29. That’s just a taste of what went down, as the Fed Cir opinion notes.

    We have nothing in the record that I know of that refutes this statement of fact as being false

    Is this an “argument” of yours, Ned, or just another “misleading statement of fact”? Pages 9-11 of the Fed. Cir. opinion summarize the evidence refuting the Abbott scientists’ declaration. In addition, one of the inventor’s on the patent testified that the Abbott scientist was “completely wrong” and if he had “been around in the field, working in the field in 1983, and he had seen our patent specification, I believe he, as a person skilled in the art, would have concluded that the membrane may not be necessary.” (page 30) Unlike the Abbott scientist, this guy was deemed credible on the stand.

    As noted by the Federal Circuit, this was not a close case, Ned. Apparently it’s a difficult case for you to read in its entirety (you seem to have stopped at page 8), but it was not a close case.

    let alone, knowingly false.

    The intent was inferred from indirect and circumstantial evidence, which is perfectly proper. Moreover, the district court judge was able to watch both the Abbott scientist and the prosecutor soil themselves on the witness stand as they attempted to justify their bizarre statements:

    “The district court judge had the opportunity to observe both Pope’s and Dr. Sanghera’s testimony during the bench trial and found their explanations neither plausible nor credible. In fact, the court explicitly noted that “Attorney Pope did not prove to be a convincing trial witness.” Trial Opinion, 565 F. Supp. 2d at 1113. The district court similarly found Dr. Sanghera’s testimony not to be credible, expressing twice in its opinion that his demeanor was unconvincing. See id. at 1115 (“As a trial witness, it must be said that Dr. Sanghera was impeached on substantive points with his prior inconsistent statements and exhibited an unconvincing demeanor.” (citation omitted)); id. at 1116 (“His unconvincing trial demeanor has been a factor in this determination.”).”

  70. “Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?”

    The answer to that question is a definite “no.” How could one possibly know that? Also, how could one possibly prove that?

  71. Mooney, if a lawyer makes an argument that a reference does or does not teach something, even if he is wrong to the extent most people of ordinary skill would not agree, is that a misstatement of fact? Can he prosecuted for perjury?

    Abbott’s own lawyers during litigation made arguments about what the ’382 reference taught. Are these arguments misstatements of fact just because their prior attorneys made contrary arguments? Can these attorneys be prosecuted for perjury?

    Making contrary arguments to two different tribunals goes to credibility. But it is not perjury. However, willful misrepresentation of facts is perjury. All the Supreme Court cases cited by the Feds in its en banc order are cases involving perjury.

    The only statement of fact that I can find in this case is the statement by Abbott’s doctor-affiant that one of ordinary skill at the time of the patent believed that membranes were required and not optional for whole blood. We have nothing in the record that I know of that refutes this statement of fact as being false, let alone, knowingly false.

    We seem to be mixing attorney argument with statements of fact in a loosey-goosey mishmash. But the law requires willful misstatements of material facts in order to amount to perjury, and perjury is required, not optional, for proof of fraud in the procurement of a patent so as to render it unenforceable under unclean hand according to the Supreme Court.

  72. JV That said, I agree with the dissent that the statements made to the EPO and the PTO were reconcilable.

    Anything is reconcilable if you really want to believe that it is reconcilable.

  73. Let’s use an analogy. Sometimes those help.

    Unless of course the analogy is from Malcolm.

    You misunderstand ping. Let me break it down: The claims are invalid. They were issued by mistake, with help from the applicant. Do you understand why the patentee requested only a rehearing with respect to the inequitable conduct issue?

    Well Malcolm, it seems that you misunderstand me.

    You said:
    You do understand that the claims at issue were found invalid, regardless of the IC findings? The patent was mistakenly granted, with help from the applicant.

    I said:
    If the patent was found invalid regardless of the IC findings, then the patent was mistakenly granted without help from the applicant.

    Let me break it down for you:

    When the item is found invalid regardless of the IC, that IC don’t matta – the patentee has lost the patent no matta what. In fact, your re-break makes less sense – the patentee should request a rehearing only on the item that can turn his patent around and avoid the IC matta if he can. What happen to the patentee if the IC matta is overturned. Great, his lawyer is not sanctioned – but his patent is still invalid.

  74. I’m replying to MM’s text:
    ,,,,,,,,,,,,,,,,,,,,,,
    MD “one could argue (credibly, in my opinion) that when D1 recites “preferably” it is actually speaking “necessarily” to the reading PHOSITA.”

    I’m not aware of such an argument ever being accepted by any patent court, anywhere. Are you?

    In this case, of course, it’s moot because the applicant admitted in proceedings before the EPO that it was “clear” and “unambiguous” that preferably did not mean “necessary”
    ,,,,,,,,,,,,,,

    Am I? No, MM, I’m not, but I don’t exclude the possibility of it happening sometime.

    Is there not tension between those who report that statements Applicant made to the EPO ought never to be of any interest in the USA and MM, who here reports that Applicant’s “admission” to the EPO ought to be held against him in US proceedings?

  75. JV

    Whether the statements were reconcilable is an issue of fact of no interest except to the parties. If the judges got it wrong, that is of no significance for subsequent cases.

    If they went wrong in principle, of course, that is another matter.

  76. “I have to agree with Ned Heller that the principal problem presented by this decision is the notion that something said by the applicant in another jurisdiction is in any way “material” to a US examiner.”

    I’d submit that Therasense is a case where what the applicant said in another jurisdiction does matter. The applicant made statements about what the disclosure in his own patent meant. I’d does seem a bit hokey to me that the applicant would say that the disclosure actually meant something else when it was that patent was applied against the applicant as a reference.

    That said, I agree with the dissent that the statements made to the EPO and the PTO were reconcilable.

  77. Ned: Money, is it your opinion, then, that the good doctor who filed the affidavit for Abbott could be successfully prosecuted for perjury for stating that one of ordinary skill at the time of the patent believed membranes were required for use with blood?

    Could be? I suppose it’s possible. Heck, a jury acquitted OJ.

    Is the goalpost heavy, Ned?

    Mooney, you list repeatedly uses the phrase “misleading statement.” Do you mean by this “misleading statement of fact.”

    I’m not sure. In your opinion, what is the difference between a “misleading statement” and a “misleading statement of fact”, Ned? You seem to believe there is one. Explain the difference to me.

  78. Ned, the case law (and the statute itself) requires the examiner to determine what is the level of one of ordinary skill in the art. If the examiner were a PHOSITA, then such a determination would not be necessary – what the examiner said/knew would be identical to what a PHOSITA said/knew. Further, if the examiner were a PHOSITA, then the legal construct of a PHOSITA would not be necessary, because, again, what the examiner said would be identical to what a PHOSITA said.

    Perhaps you should have said “the examiner is skilled in the art” instead. Be careful when you casually use specially defined terms like “ordinary skill.” I know it’s just a blog comment but it’s a bad habit to have in general.

  79. Mooney, you list repeatedly uses the phrase “misleading statement.” Do you mean by this “misleading statement of fact.” Or do you mean something different?

  80. Paul: As I tell my clients to illustrate the point, there is a blue flower pot just outside my office and no amount of legal argument will change that fact,

    I’m sorry, Paul. This lease proves that you merely rent the office and do not own it.

    In addition, one skilled in the art would understand that “just outside” means between 0 and 2 feet. The flower pot is 2 feet and 2 inches away which one skilled in the art would understand to be “nearby” but not “just outside.” I have here the sworn testimony of two office decorators to support this construction. They stake their reputations on the veracity of their statements. I pay them $750/hr, including travel time.

  81. Money, is it your opinion, then, that the good doctor who filed the affidavit for Abbott could be successfully prosecuted for perjury for stating that one of ordinary skill at the time of the patent believed membranes were required for use with blood?

  82. Chris, while it is theoretically possible to have patents examined by the completely uneducated, typically, examiners do have degrees in the very fields they are examining and typically they are people of ordinary skill in the art they are examining.

    We might have a debate on this issue at some time.

  83. The only interesting questions posed by the Federal Circuit are those in (3), IMHO.

    1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?

    No. But the Star Scientific “get out of jail free” card needs to be torn up and flushed down.

    2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands?

    See answer to (1).

    3.a What is the proper standard for materiality?

    A proper standard would be one that is very similiar to the present version of Rule 56, which is more specific but not really any different from the standard set forth more generally in the “old” Rule 56.

    3b. What role should the United States Patent and Trademark Office’s rules play in defining materiality?

    If the Federal Circuit is confused about what is material, it should look at what the USPTO considers to be material (i.e., the definition in Rule 56). The USPTO’s definition is reasonable.

    3.c Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?

    A better test would be “may not have issued if properly examined in light of the withheld information or in the absence of the misleading information”. Proving that claims “would not have issued” had the misconduct not taken place is nearly impossible given that the PTO, in the absence of any apparent misconduct, routinely issues claims that should not be issued.

    4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).

    It is never proper to infer intent solely from the materiality of an omitted dislcosure. With respect to an omitted reference, intent can be inferred from other evidence, e.g., evidence that there was knowledge of the reference/statement, evidence that the importance of the reference/statement was known, evidence that steps were taken to prevent knowledge of the reference/statement from being discovered (e.g., emails urging that discussion of the reference not be put in writing). With respect to an affirmatively misleading statement, intent can be inferred based on the degree to which the statement is shown to be contradictory with facts known to either the party making the affirmative statement or to those skilled in the art.

    5. Should the balancing inquiry (balancing materiality and intent) be abandoned?

    This is the same question as (1). See answer to (1).

    6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

    Of course they do.

  84. Ned Heller said, “The examiner is one of ordinary skill.”

    The examiner is a PHOSITA? Not according to any of the case law I’ve ever seen (Graham v. Deere, In re Wands, KSR, etc., etc.)

  85. “I have just seen the Avid case, though. A rational en banc discussion is clearly essential, and the “material” standard is clearly over-generous and should be reconsidered.”

    Paul,

    I just commented to another patent attorney that this would be a “ripe time” for the Federal Circuit to consider Avid en banc now that they’ve already got Therasense en banc on related or potentially overlapping issues. The moon is definitely full in the area of inequitable conduct.

  86. I agree with what I believe Malcolm is saying: there is objective reality and argument will not change it. As I tell my clients to illustrate the point, there is a blue flower pot just outside my office and no amount of legal argument will change that fact, though if sombody moves the flower pot, objective reality will have changed amnd I will have to say someting different. As Dick Feynman famously said, nature is not fooled.

    So if you tell the USPTO that a component is essential and it is not, and you get caught saying elsewhere that it is not, adverse consequences are likely to follow.

    I have just seen the Avid case, though. A rational en banc discussion is clearly essential, and the “material” standard is clearly over-generous and should be reconsidered

  87. ping If the patent was found invalid regardless of the IC findings, then the patent was mistakenly granted without help from the applicant.

    You misunderstand ping. Let me break it down: The claims are invalid. They were issued by mistake, with help from the applicant. Do you understand why the patentee requested only a rehearing with respect to the inequitable conduct issue?

  88. EG I’m not trying to be Chicken Little, but the sky may be falling as it relates to inequitable conduct.

    I never believed it was falling until this recent decision but now I see the blue shards raining down everywhere I look.

    I just called every employee, including the janitors and secretaries, of every company I prosecute for and demanded that they provide me with a minute-by-minute account of their whereabouts for the last twenty years. In light of this recent decision, this is the only way to avoid having a patent rendered unenforceable.

  89. Ned is the statement made to the PTO an argument or a statement of fact? We have a reference that the examiner can read for himself. The examiner is one of ordinary skill.

    The Examiner was rolled by the bo-gus declarations, Ned.

    Let’s use an analogy. Sometimes those help. Let’s say Reference A teaches a superplane and claims a superplane, without a heat shield, for general flying use. In the EPO, the Examiner says: “It seems like a rigid shield is necessary at least outer space travel using this superplane.”

    Applicant: “No, it’s not. Look at the statement in the spec. It’s clear that the rigid shield is optional, although preferred for space travel in order to keep debris from entering the capsule.”

    Then in the US, Applicant wants to claim a method of flying the same superplane in the sub-space atmosphere without a rigid shield. The Examiner cites Reference A as teaching that a superplane in the sub-atmosphere without a rigid shield is obvious.

    Applicant gets the Office Action and is very concerned. Several meetings are held to figure out what to do. The situation is tense because there is a lot of money on the line. At one of the meetings, someone shouts: “I’ve got it! Birds!”

    A declaration is prepared: “At the time of filing, one skilled in the art would understand that Reference A teaches that a rigid shield is necessary for sub-space travel because of the presence of birds in sub-space. In addition, the statement regarding “optional but preferable” is mere patent phraseology and would be understood by one skilled in the art — at the time — to mean that the shield is essential for space and sub-space travel.”

    The Applicants’ previous statements before the EPO are not disclosed to the Examiner. The Examiner sees the declaration and thinks, “Wow, this sounds like a pile of horseshxt but they signed it under oath. Would they really make something like this up? Really tired of this case, though … screw it, I’ll just allow and they can deal with it. Otherwise they’ll just run to the blogs and whine and complain about how I don’t have authority to question their declaration.”

    And the rest is history until some blog commenter who really has no idea what he’s talking about says that a statement about a rigid shield being optional for space travel is “inapplicable” to determining whether a rigid shield is required for sub-space travel.

  90. To all,

    Ironically, a decision just came out today from the Federal Circuit (Avid Identification Systems v The Crystal Import Corp.) holding that the president of the patentee was “substantially involved” within the meaning of 37 CFR 1.56(c)(3) and thus owed the “duty of disclosure” to the PTO regarding a potentail “public use” (trade show demo) that was deemed not invalidating under 102(b) but nonetheless “material” to support a finding of inequitable conduct. See link to cafc.uscourts.gov . Prost wrote the opinion with a dissent by Linn on the “substantial involvement” question. I’m not trying to be Chicken Little, but the sky may be falling as it relates to inequitable conduct.

  91. If the patent was found invalid regardless of the IC findings, then the patent was mistakenly granted without help from the applicant.

    Isn’t that what you meant to say Malcolm?

  92. MD one could argue (credibly, in my opinion) that when D1 recites “preferably” it is actually speaking “necessarily” to the reading PHOSITA.

    I’m not aware of such an argument ever being accepted by any patent court, anywhere. Are you?

    In this case, of course, it’s moot because the applicant admitted in proceedings before the EPO that it was “clear” and “unambiguous” that preferably did not mean “necessary.”

    Demers The only question should be, were the representations made to the US examiner factually true, or were they not?

    That issue was litigated extensively at trial and the conclusion of the trial court judge was that the representations made to the Examiner were incredible and unsupportable. Likewise, the testimony before the court during litigation was also deemed not credible.

    Ned: Malcolm, or anyone, is what was said to PTO, that the sentence in the reference concerning “live blood” not being applicable to “whole blood,” false?

    Correct, Ned. That was already explained to you. Again: not difficult. Also, the sentence refers not just to live blood but to other fluids. Remember, the membrane is preferred (not required) in live blood, but optional generally. That is clear and unambiguous.

    You do understand that the claims at issue were found invalid, regardless of the IC findings? The patent was mistakenly granted, with help from the applicant.

  93. Malcolm, or anyone, is what was said to PTO, that the sentence in the reference concerning “live blood” not being applicable to “whole blood,” false?

    Now, I’ve seen your explanation and do not buy it at all. The reference said it was talking about “live blood.” Why would the statement say that at all if it made no difference whatsoever whether the strip was in live blood or whole blood?

    Second, is the statement made to the PTO an argument or a statement of fact? We have a reference that the examiner can read for himself. The examiner is one of ordinary skill. When you talk to him about what a reference teaches, are you making statements of fact or are you arguing?

  94. Examiner: *punches attorney in face*. “Would you care to reconsider your position?”

    6, not only do you really really want the bailiff to come after you (the grand court is losing patience), now you want an arrest warrant for assault and battery?

  95. “However, unlike the UK courts the US courts do not normally award costs. So perhaps inequitable conduct is sometimes needed to do justice in particular cases and compensate defendants for costs to which they should not have been subjected.”

    Paul,

    You’ve hit on one of the key reasons why inequitable conduct allegations are a “plague” in patent litigation in the States. If there’s a case where an inequitable conduct allegation that wasn’t proven and was deemed “frivolous” resulting in sanctions under our FRCP 11 or an “exceptional case” under 35 USC 285, I don’t know of one (not to say they don’t exist, but if they do, they’re extremely rare). In other words, there’s almost no risk in making a “frivolous” inequitable conduct allegation that backfires during litigation in the States.

    Another huge contributor to the inequitable conduct morass is our almost open-ended discovery rules. You don’t have to win on the inequitable conduct allegation if you can bury the patentee in enough discovery “red tape” to make it so costly that the patentee says “uncle.” Also “fact slanting” is considered good advocacy here in the States, so you can turn even the most innocent circumstances into something more “sinister”. By contrast, I know that in the UK, a British barrister will be called on the carpet by a British judge if dare do this.

    Again, until the litigation climate changes in the States, inequitable conduct is a doctrine we simply can’t afford anymore.

  96. Examiner: “You’re telling me this reference teaches X.”
    Attorney: “Yes.”
    Examiner: “But you told the EPO that the reference teaches Y.”
    Attorney: “I lied. It teaches X.”
    Examiner: *punches attorney in face*. “Would you care to reconsider your position?”

    That assumes of course the examiner wants the ref to say Y as opposed to X.

  97. Of course, that assumes that examiners read specifications critically…

    wait a minute, you want me to actually work?

  98. Paul thanks. I often think that what keeps hands clean at the EPO is the prospect of litigation in an English law country (primarily the USA but also England). This is one very good reason why litigants choose England over Germany, despite the higher cost, and not just in blockbuster pharma cases. Take, for exampole, Chapman v McAnulty (camera dollies, 1995) and Michael Silverleaf’s classic cross-examination of the infringer’s CEO concerning the altered dates on the engineering drawings.

    I don’t like to think what bamboozlement might routinely go on at the EPO but for the encouragement not to cheat that the English common law system has provided for the last few hundred years. How many times does an Applicant at the EPO file comparative experimental data in order to get the patent to issue?

  99. Let’s kick the whole thing to the curb. Seems like every other patent office in the world can survive quite well without it. If examiners at the USPTO can’t do a complete and competent search (and I am not one who assumes they can’t), then that is the issue to address.

    Change it to a system wherein the applicant is asked to send in anything that might not be available in a publications database (e.g., sales brochures if made publicly available more than 1 year before a priority date). Applicants can also send in those documents that they want included on the front of the patent, and only those documents would have a presumption of full consideration by an examiner.

    Also, allow the public to send things into the USPTO for consideration within some time frame after publication. Maybe even have an opportunity for post-grant challenge.

    As a side note, the USPTO should not have the ability to act willfully blind. At a minimum, it should be enough to make an examiner aware of related applications by serial numbers only. What purpose does it serve for me to send an examiner a .pdf of an Office Action that he or she sent to me 3 months earlier in another case? Even if not the same examiner, is it any less likely that they’d sift through all the prosecution documents from a related case if they had to go on PAIR (or whatever the internal version is) than if I send these same documents in hardcopy (or better yet, send them the .pdf they sent me)? And references cited in the specification (where, incidentally, there are “in context”) should not need to be sent in via an IDS.

    Of course, that assumes that examiners read specifications critically…

    Or we can keep the system exactly the way it is and we will continue to send the USPTO boxes and boxes of documents for every case, none of which are ever going to be read (for obvious reasons).

  100. Max

    It suffices, I think, to catch the cheat and show in what manner he or she was cheating and what the result would have been if that had not happened.

    We have disclosure of documents and cross-examination of witnesses. It is unwise even to think of telling less than the whole truth to the court.

    However, it should not be necessary to prove cheating, simply to establish the correct facts, and the UK procedure has adequate tools for this purpose. Whether the EPO is so equipped could be a matter for lengthy debate – in my view the fact that a declarant may be subject to face-to-face questioning by a hostile opponent is a major factor in keeping any proceeding straightforward and honest.

    However, unlike the UK courts the US courts do not normally award costs. So perhaps inequitable conduct is sometimes needed to do justice in particular cases and compensate defendants for costs to which they should not have been subjected.

  101. ping, you say I’ve joined MM in his “corner”. That implies a boxing ring, in which your pugilistic form is what we see in the opposite corner.

    It’s only in your imagination that I’m in any corner. I’m not going to argue with you though, when you mail in to us that in a corner is where you envision yourself.

  102. EG, Paul Cole, put me straight will you. I had always naively supposed that the difference between English common law and the rest of the world is that English follows the maxim “Cheats should not prosper”. But, if you do away with penalties for conduct that is inequitable, then the cheats will more likely prosper, or (and this might be even worse) perceive that they ought to get on and cheat more professionally, because of the increased chances of prosperity that such conduct is likely to deliver. Can you afford that perception?

  103. In today’s age, where prosecution of each and every family member is available electronically, it should be sufficient to inform the examiner of other family members. There should be no requirement to update the examiner each and every time someone in the EPO changes their minds. Prosecution in the EPO and US are different because the laws are different, some of what is relevant in the EPO would not be relevant in the US. For example a reference less than 1 yr prior could be sworn behind in the US but would bar the EP patent.

  104. “there should be no general obligation to bombard the USPTO with EPO Office Actions and responses.”

    Paul,

    I wish that were true. Unfortunately, that’s not the reality. That’s how out of control the doctrine of “inequitable conduct” is in the US, and especially how even what are innocent statements in patent prosecution, be it the US or EPO, can be distorted completely out of context in patent litigation. That’s why my patent attorney brother and I feel this doctrine needs to be done away with, once and for all, in the US.

    As I noted above, we’re the only jurisdiction that has it. It’s also extremely costly for the benefit realized; I feel the same way about wasting so many resources on interferences here in the States (ironically, my dad who was a “master” of interference practice feels the same way I do, including during his patent law career when he figures he did around 400 interferences). If the EPO and the rest of the world can get along without the need of this doctrine, why can’t we in the States do likewise?

  105. I have to agree with Ned Heller that the principal problem presented by this decision is the notion that something said by the applicant in another jurisdiction is in any way “material” to a US examiner. The only question should be, were the representations made to the US examiner factually true, or were they not?

    What was said before the EPO might be different for a variety of reasons, ranging from an outright lie to a different argument (made with respect to different legal and procedural standards) to different connotations attached to words (MaxDrei’s point re “optional”). But even an outright lie made in the EPO is not a fraud on the USPTO, does not cheat the US public, and does not lead to a US patent on the unpatentable. There’s a practical aspect to this (do we really want to be dropping complete patent family file histories from EP, JP, CN, KR, CA, AU, TW, etc. etc. etc. on our examiners?), but there’s a jurisdictional problem as well: can/should we be punishing sleazy applicants for deeds done abroad, if everything done before the USPTO was on the level? (I’m not saying that was the case here; just arguing the principle – I think it’s up to the EPO to tear up the applicant’s European patent.) And in the absence of jurisdiction, what is it about statements made abroad that could possibly be “relevant” to a US examiner?

    Just for the fun of it, can someone (6, are you there?) please provide the Examiner with a closing remark in this imaginary interview – something that would render the disclosure of the EPO prosecution file “material” in the first place:

    Examiner: “You’re telling me this reference teaches X.”
    Applicant: “Yes.”
    Examiner: “But you told the EPO that the reference teaches Y.”
    Applicant: “I lied. It teaches X.”
    Examiner: __________

  106. EG,

    Maybe I’ve just become more cynical as I get older, but I’m tired of seeing cases like this one where a patent applicant tells the USPTO one thing and the EPO another or tells the PTO one thing and tries to argue the opposite in litigation and the patent bar supports upholding the patent.

    Just once I want to see the AIPLA file an amicus brief that says “this kind of prosecution stinks and the court should throw the patent out” instead of “well, the attorney can’t be held accountable for inconsistent statements over several years of prosecution or for not telling the USPTO about that reference he was fighting with the EPO examiner over”.

  107. Back to blockbusters for a second.

    If it is easier to get them in the US because “Perhaps the average Examiner in the EP is a bit more intelligent and creative than the average US Examiner? Or under less time pressure? Or less incentive to allow?“, then the impetus to cheat would be less, not more. Unless you are saying that you are more likely to get away with it here – but that doesn’t make sense either, since you do not have a reporting requirement there, do you?

    Malcolm, pandering to the blimey brits on this blog will get you a concurring post, but really, is it worth it? Having Maxie in your corner does not help the credibility of your position.

  108. For the IC point of this thread,

    When the court is sitting en banc to review the law, are they interpreting the law, or are they rewriting the law?

  109. Malcolm,

    Help me out please.

    Are blockbuster patents bad? Are they only obtained through deceit and malfeaseance, or through an examining body that cannot or does not do its job to a full rigor?

  110. To figure out the ratio decidendi of a case, it is helpful to focus on essentials.

    In Therasense, as I read the decision, the key point was that the patent issued because a particular feature was said to be essential for the relevant purpose. The patentees got caught when they argued in another case, in this instance before the EPO, that the feature was not essential for that purpose. In other words before the USPTO black = black and before the EPO black = white. [For the avoidance of doubt, no view is expressed as to whether black = black or white, or whether there was in fact inequitable condict in this case]

    There was all sorts of argument about discloure of EPO Office Actions to the US Examiner who might have been interested in them. However, the vice is making contradictory and untrue statements, and the EPO Office Actions were merely the vehicle by which the relevant situation was brought to light. That is why they ought to have been disclosed, and there should be no general obligation to bombard the USPTO with EPO Office Actions and responses. In any event, the USPTO examiners can find the whole EPO file wrapper on line, and probably look at in any event.

    On the issue of materiality in my submission the requiremment should be that but for the alleged misconduct, one or more claims would not have issued. Any lesser standard opens the door to lengthy arguments concerning trivia. To be fair to the US courts, most of the inequitable conduct cases I have read concern fairly gross behaviour.

    As readers will recall, I have argued at a meeting of the AIPLA that the inequitable conduct doctrine is redundant, wasteful and should be abolished. That argument met a chorus of disapproval from US practitioners. The present case provides an opportunity to review the doctrine and hopefully make it more workable.

    One issue that perturbs me is as to the level of disagreement as to the primary facts. It is hard to credit that Dyk and Friedman on the oner hand and Linn on the other hand were reading the same trial record, so great were the differences in their findings of fact and the conclusions to be drawn from them. There have been other cases on inequitable conduct where a similar level of differences arise – to one group of judges the patentee and his attorneys were people of shining integrity, whereas to the other group of judges they were rogues. If a decision of inequitable conduct is to be reached, it should be grounded very firmly in the relevant facts as established in the trial record.

  111. Good stuff Malcolm but I challenge your categorisation of one statement as buffonalicious (nice word though).

    Patent attorneys are inveterate writers (in specification D1) of “preferably” when what they mean is that feature X is “necessarily” present in the apparatus A that they are claiming. They have no idea whatsoever how they are going to get their A to work without an X in it, but they know that they do not want X in their independent claim, so they write “preferably” in their specification.

    The EPO uses Art 84 EPC (very effectively) to eliminate this mischief, during prosecution of D1.

    But what happens when D1 gets cited as a reference, for its disclosure of A without an X? In Europe, one would have to argue that D1 is non-enabling (and that’s hard when in the meantime an X-less A has been enabled, in the app against which D1 is a reference).

    Alternatively, one could argue (credibly, in my opinion) that when D1 recites “preferably” it is actually speaking “necessarily” to the reading PHOSITA.

  112. Ned: The claim under consideration is to a sensor strip without a membrane for use with whole blood. The reference discloses a sensor strip with a statement that reads “Optionally, but preferably when being used on live blood, a protective membrane surrounds….”

    In the EPO, the applicant quotes the statement itself. Says it is clear.

    With respect to the statement in the reference, “Optionally, but preferably when being used on live blood, a protective membrane surrounds both the enzyme and the mediator layers, permeable to water and glucose molecules.” it was said before the EPO that: “It is submitted that this disclosure is unequivocally clear. The protective membrane is optional, however, it is preferred when used on live blood in order to prevent the larger constituents of the blood, in particular erythrocytes from interfering with the electrode sensor.”

    Recall that this device is used for measuring blood glucose levels. I think nearly everyone on earth would understand the reference (the ’382 patent) and the applicants’ statement before the EPO to mean that the protective membrane is optional, period, for live blood and other fluids, but preferred (yet still optional) in live blood. As noted in the decision, the claims in the ’382 patent which do not include membranes do not exclude blood, live or whole.

    In the US, the applicant argues one of ordinary skill would understand the statement referred only to live blood [inside the body] and was inapplicable to whether a membrane could be used with whole blood (i.e., blood outside the body.)

    On its face, this statement is correct.

    Gosh, if you say so, Ned. Seems to me like it completely contradicts the reference and the statement before the EPO. And there were some skilled artisans testifying in court that were deemed far more credible than the patentee’s witnesses.

    Moreover, the “unambiguous” fact that a membrane was “optional” for a device used on live blood (in the body) seems to me to be extremely applicable to determining whether one skilled in the art would understand a membrane to be *required* for use on whole blood (outside the body). Could you explain to me why you believe the situation with respect to glucose detection in live blood is “inapplicable” to the detection of glucose levels in whole blood, using the dame device? Should be easy for you, Ned, since you claim that the statement is “correct” “on its face.” So go ahead and explain the “inapplicability” to me, Ned.

    Are you going to dredge up some ad hoc hoohaw about “fouling” in whole blood? Good luck with that. See the bolded text above (referred to in the Federal Circuit opinion) which explains why the membrane is preferred (but optional) and refers to a fact about live blood (the presence of erythrocytes) which is extremely *applicable* to whole blood. None of this is very complicated, frankly, but you can make it complicated, I suppose, if you try hard enough. Why do you want to make it complicated, Ned?

    Or are you going to argue that “the “optionally, but preferably” language” is not “a technical teaching but rather mere patent phraseology” as the prosecutor did before the USPTO (possibly the most laughable and buffonalicious statement in the entire record).

    The attempt to use a declaration to declare that “white is black” and “up is down” and “preferable means necessary” was a bit much by itself, but failing to disclose the statement before the EPO which clearly undercut the patentee’s position took the cake. It stinks of deceit and the district court judge smelled it. Give the guy some credit.

  113. Mooney, the case I am talking about is the case at bar.

    The claim under consideration is to a sensor strip without a membrane for use with whole blood. The reference discloses a sensor strip with a statement that reads “Optionally, but preferably when being used on live blood, a protective membrane surrounds….”

    In the EPO, the applicant quotes the statement itself. Says it is clear. In the US, the applicant argues that one of ordinary skill would understand the statement referred only to live blood [inside the body] and was inapplicable to whether a membrane could be used with whole blood (i.e., blood outside the body.)

    On its face, this statement is correct.

    As Linn says in his dissent, there is nothing inconsistent about the two statements whatsoever. The attorney making the argumet is speaking to an examiner who is a person of ordinary skill. He eligible to agree or to disagree. There can be no misrepresentation.

    This case does not involve any misrepresentation of any facts to the PTO. The reference speaks for itself. Arguments about what the reference discloses are just that: arguments.

    As a matter of law, there should be no possibility misrepresentation of facts here; but this case came out the opposite way. For what reason?

    Rule 56?

    Rule 56???!!!!!

    Really?

    This shows just why Rule 56 is an abomination.

  114. TJ How can describing those who are deterred as “paranoid maniac[s]” be understood as implying anything other than saying that the rational non-paranoid person should feel very little deterrence?

    Your strawmen are annoying, JT. I never said that those who are “deterred” are “paranoid maniacs.” You can continue arguing with your imaginary version of me if you choose.

    EG Blissful “ignorance” of such parallel prosecution could be considered pretty cavalier (and potentially lethal) in view of either McKesson or the panel decision in Therasense.

    Again, nobody is arguing that one should remain “blissfully ignorant” of parallel prosecution. On the contrary, I recommend that applicants do their utmost to maintain a consistent strategy and assume the same facts throughout the prosecution of *all* cases (not just legally related cases) on behalf of a given client. If you do this and you are reasonable (not psychotic) about disclosing non-cumulative material references, the risk of unenforceability due to IC is extremely low. An additional point is that if you nevertheless find yourself accused of IC by an alleged infringer, don’t behave like a prima donna with a persecution complex and a too-clever explanation for everything.

  115. Ned Malcolm, you speak broadly of “duty this and duty that.”

    Do I? I used the term “duty” once in this read, in reference to the PTO’s duty to provide Applicants with a minimal level of care in their docketing and examination of closely related cases. Doesn’t seem like a “broad” reference to “duty” …

    Ned So I say one thing to the EPO and a different thing to the USPTO. So what? if what I said to the PTO is not a misrepresentation of a material fact? Why is my patent being held unenforceable without ever deciding this question?

    I don’t have enough facts about your case to answer the question, Ned. Obviously there is no requirement in the US that your statements in other jurisdictions are identical to statements you make in the US.

    It appears from your hypo that you believe your statement to the PTO was accurate and your statement to the EPO was a mistake, inaccurate, or drafted so poorly that it could be construed by a reasonable person as a contradiction. If so, the proper course of action is to provide the EPO statement to the US Examiner and explain to the Examiner why the EPO statement was incorrect, inaccurate, or drafted so poorly as to appear contradictory. If you fail to do this, then you will likely have another chance to explain the mistake, inaccuracy or confusing statement in a deposition and/or on the witness stand before a judge or jury and your credibility will be assessed against the credibility of others.

    This is why one should take the time before submitting statements to the USPTO and not just flail away like it’s all some big game. If you are going to be put on the witness stand to defend a statement, better to defend a statement like “The ACLU has on occasion represented private citizens in actions against the excessive entanglement of religion and government” than a statement like “The ACLU has at times defended Nazis, but those are rare occasions. It more often attacks Christians, the family and property.”

    My rule of thumb is to keep things simple, accurate and consistent and to say no more than what is necessary to address the Examiner’s pending rejection/objection. And by all means the Responses should be respectful. No point in antagonizing an Examiner who is quite likely to be handling more of your client’s cases in the future.

  116. 6,

    Get your “Whatev” back to the grand court. Answers are to be had.

    You don’t want to be looking over your shoulder for the bailiff, now do ya?

  117. TJ,

    Point very well taken. Also, how does Malcolm explain that it isn’t prudent (as opposed to “paranoicd) to consider relevancy of what happens in parallel prosecution in the US (in view of McKesson) or in Europe (in view of the panel decision in Therasense)? Blissful “ignorance” of such parallel prosecution could be considered pretty cavalier (and potentially lethal) in view of either McKesson or the panel decision in Therasense. We can only hope that the en banc ruling in Therasense renders some sanity out of the current chaos that inequitable conduct case law currently is, including Digital Controls which noted there were at least 4 standards for judging inequitable conduct, but never tells us which one is the minimum “case law” standard.

  118. “That increase, however, is small provided that one does not behave like a paranoid maniac every time (once a year, on average?) a Federal Circuit case issues that upholds a finding of inequitable conduct.”

    How can describing those who are deterred as “paranoid maniac[s]” be understood as implying anything other than saying that the rational non-paranoid person should feel very little deterrence? And if rational people should feel very little deterrence, what is the point of IE again?

  119. Malcolm,

    Have it your way. But you still haven’t proven squat to me in support of the positions you’re taking.

  120. “Sorry, I’ve been doing patent prosecution for over 35 years.”

    Alan,

    I stand corrected. I’m also surprised that someone who is about as experienced (almost 33 years) as I am in patent prosecution would suggest as draconian a response as you suggest to questions 2 and 4. Most of your fellow patent prosecutors (like me) wouldn’t be very happy to be subjected to a “no deceptive intent” and “no materiality required” standard for inequitable conduct suggested by you.

  121. Malcolm, you speak broadly of “duty this and duty that.”

    Exactly, what is this “duty?”

    Not to deliberately and willfully misrepresent material facts?

    OK.

    So I say one thing to the EPO and a different thing to the USPTO. So what? if what I said to the PTO is not a misrepresentation of a material fact? Why is my patent being held unenforceable without ever deciding this question?

  122. Above, Mooney wrote:

    “With respect to Europe, my understanding is that it is simply more difficult to obtain the sort of blockbusting patents found in the EP relative to the United States. Perhaps the average Examiner in the EP is a bit more intelligent and creative than the average US Examiner? Or under less time pressure? Or less incentive to allow? And then there are the opposition proceedings and perhaps increased difficulty in enforcing the patents once obtained. In any case, I believe there is a diminished opportunity for deceptively-obtained patent windfalls in the EP. I welcome any concurring or dissenting thoughts from our friends in the EP.”

    My impression too, that in Europe:

    “there is a diminished opportunity for deceptively-obtained patent windfalls”

    Some on this blog would say, I know, that this only goes to prove that the USA has a “strong” patent system, whereas Europe doesn’t.

  123. “There is no such “requirement.” ”

    Whatev you think MM. Although yes, I do use “requirement” in quotes above.

  124. 6 After having done such a case myself, I have to support the requirement for citation of OA’s by the same examiner as there is simply too much potential for an examiner to forget one of 15 parents he’s done (in the event of 15 parents)

    There is no such “requirement.” There is, of course, a requirement to argue the facts consistently and not contradict previous assertions about the state of the art, etc. Provided that the prosecutor is able to remember the basic facts and underlying assumptions in the case and not merely “argue whatever you have to argue in order to get the case allowed,” there is no need to cite previous Office Actions.

    The real problem for applicants (as 6 is surely well-aware) is the tendency for different examiners in the same art unit who are examining closely related cases (problem #1) to reach different conclusions about obviousness. That type of contradiction is beyond an applicant’s control. For starters, it should never happen. But once the contradiction is identified and poined out to the Office, it seems to me it is the Office’s duty to make sure the contradiction is resolved so prosecution can move forward (or not). An easy solution would be to take the closely related cases and re-docket them so they are being handled by one of the two (or three) Examiners rather than being spread out.

  125. EG: You’ve just proven my point: sanctions under FRCP 11, as well as making a case “exceptional” under 35 USC 285, are applied only against patentees for which IC is proven (even though alleged far more often than proven), and basically not all against those who “frivolously” allege IC.

    I don’t think I’ve “proven” that. I do not know how often Rule 11 sanctions are brought sua sponte or requested by plaintiffs in litigation in response to a “frivolous” claim of IC.

    You’ve still not provided any proof to show that this “shortcoming” is confined to the US

    And I never will because the shortcoming I alluded to is not confined to the US, as human beings live in each of the world’s countries. As I explained, the US merely presents the greatest temptation for IC before a patent office, given the stakes involved, the known inadequacies of the PTO, etc (see 6′s comment above). I don’t see anything remotely extraordinary or controversial about my argument, so your request for “proof” seems to be an attempt at distraction.

  126. Malcolm, since you work for the PTO, do you have access to the original Fed. Reg. notice of proposed rule making for Rule 56. It would be interesting to see what they thought at the time and how it matches up with reality.

  127. “Why is the issue of the consequences of inequitable behaviour not being addressed. As long as the consequence is patent invalidation, then litigation will be encouraged.”

    Maybe because the Supreme Court has so held and, contrary to popular opinion, the Supreme Court’s precedent binds the Federal Circuit. Also, Congress has all but approved of this so-called “draconian” result so it’s not really the courts’ place to remove it.

  128. “That’s easy: Rule 11 is not enforced as often as it should be, although I do recall a recent District Ct. case where some patent trolls were sanctioned for frivolous pleading. I’m sure you read Quinn’s summary at IP Watchdog.”

    Malcolm,

    You’ve just proven my point: sanctions under FRCP 11, as well as making a case “exceptional” under 35 USC 285, are applied only against patentees for which IC is proven (even though alleged far more often than proven), and basically not all against those who “frivolously” allege IC.

    As far as why those in the US would be tempted more to hide references, versus those who might be tempted to hide them in Europe, telling me that is based on “the well-known shortcomings of the human condition” is about like a patent examiner telling me that something is “well-known in the art” when he/she can’t provide any references to show same. You’ve still not provided any proof to show that this “shortcoming” is confined to the US, versus anywhere else in the world, including Europe.

  129. You know Broje, I just did a case where the child cited the parent which I did before. I did happen to recognize the case and knew that I should have the parent on file somewhere. But, to be honest, if that case had issued it may very well have been quite a pain to find if it had been issued but not yet published. After having done such a case myself, I have to support the requirement for citation of OA’s by the same examiner as there is simply too much potential for an examiner to forget one of 15 parents he’s done (in the event of 15 parents) and also for random things to happen that result in the prior case’s history not being reviewed. The IDS in this situation functions as something to make sure everything is considered. It is kind of responsible to have it and would be kind of irresponsible to remove it.

    However, the office is apprently getting really picky about how we handle OA’s cited in IDS’s. My spe is making me cross through them and then say in the action that I considered them. Anybody else seeing something like that when they get OA’s in a case where OA’s are cited in an IDS?

  130. Mooney, you seem to imply that a rational prosecutor should have little fear of inequitable conduct since it is so rarely upheld. But that argument can easily be flipped. If inequitable conduct provides so little deterrence to misbehavior,

    I never said that IC provides “so little deterrence”. I said the opposite.

  131. is proven disproportinately less frequently than alleged, yet those who fail to prove “inequitable conduct” are rarely, if ever, sanctioned with paying attorneys fees/costs for “frivolous” allegationss of “inequitable conduct” versus those instances where “inequitable conduct” is proven?

    Defendants can’t know whether inequitable conduct has occurred until they’ve sifted through all of Plaintiff’s prosecution materials. You propose sanctions and attorney fees for diligence?

    Besides, the vast majority of patent cases settle, and the lion’s share of costs associated with investigating inequitable conduct fall on Defendants. If the information uncovered by such inquiries were immaterial and weren’t leading to efficient settlement, defendants would stop spending on it.

    Once no evidence has been found, IC counterclaims should be voluntarily dismissed more often than they are, but that’s an issue with litigation in general, not patent litigation or IC counterclaims specifically.

  132. EG Where’s your proof/evidence for this regarding the US versus any other region of the world, especially Europe?

    My proof is that the US is the most popular country for filing patents, by a long shot if I’m not mistaken. The conclusion about the higher stakes leading to increased temptation to engage in deceptive conduct follows from applying basic logic to the well-known shortcomings of the human condition.

    With respect to Europe, my understanding is that it is simply more difficult to obtain the sort of blockbusting patents found in the EP relative to the United States. Perhaps the average Examiner in the EP is a bit more intelligent and creative than the average US Examiner? Or under less time pressure? Or less incentive to allow? And then there are the opposition proceedings and perhaps increased difficulty in enforcing the patents once obtained. In any case, I believe there is a diminished opportunity for deceptively-obtained patent windfalls in the EP. I welcome any concurring or dissenting thoughts from our friends in the EP.

    EG: Also, why is it that the number of cases where “inequitable conduct” is alleged is so high (almost every patent infringement suit), is proven disproportinately less frequently than alleged, yet those who fail to prove “inequitable conduct” are rarely, if ever, sanctioned with paying attorneys fees/costs for “frivolous” allegationss of “inequitable conduct” versus those instances where “inequitable conduct” is proven?

    That’s easy: Rule 11 is not enforced as often as it should be, although I do recall a recent District Ct. case where some patent trolls were sanctioned for frivolous pleading. I’m sure you read Quinn’s summary at IP Watchdog.

  133. “provided that one does not behave like a paranoid maniac every time (once a year, on average?) a Federal Circuit case issues that upholds a finding of inequitable conduct”

    Mooney, you seem to imply that a rational prosecutor should have little fear of inequitable conduct since it is so rarely upheld. But that argument can easily be flipped. If inequitable conduct provides so little deterrence to misbehavior, why bother have the doctrine at all?

  134. “the temptation to deceive the PTO is also higher.”

    Malcolm,

    Where’s your proof/evidence for this regarding the US versus any other region of the world, especially Europe? Also, why is it that the number of cases where “inequitable conduct” is alleged is so high (almost every patent infringement suit), is proven disproportinately less frequently than alleged, yet those who fail to prove “inequitable conduct” are rarely, if ever, sanctioned with paying attorneys fees/costs for “frivolous” allegationss of “inequitable conduct” versus those instances where “inequitable conduct” is proven? Face it Malcolm, the existence “inequitable conduct” in the US is a gravy-train only for US patent litigators.

  135. EG All IC does is drive up the cost of patent litigation

    Since so few patents are ever litigated, this is is a trivial point. Much more salient is the increased cost of patent prosecution. That increase, however, is small provided that one does not behave like a paranoid maniac every time (once a year, on average?) a Federal Circuit case issues that upholds a finding of inequitable conduct.

  136. TINLA Is there any hope this decision might aleviate the present requirement to cite Office actions from a parent case in a child case, even if the Examiner in the child case was the Examiner in the parent case?

    There is no such requirement. There is not even a requirement to cite the *references* which were cited in a parent case in a child case, as the Examiner is required to look at those references.

    EG All IC does is drive up the cost of patent litigation. We remain the only jurisidiction that has it

    The current IP case law encourages many applicants to disclose material references that they would otherwise be inclined to not disclose. Rule 56 is otherwise toothless. The United States is different from nearly all other jurisdictions because the stakes are higher here and, as a result, the temptation to deceive the PTO is also higher.

  137. I choose 2.

    Go back to the basics. I have been arguing that here for some time.

    There is no duty to disclose except as provided by law the unclean hands in such cases as Keystone Driller. Rule 56 is not law. Never has been.

  138. Lionel,

    I concur with you on all points and certainly with respect to questions 1-5.

    Alan,

    I don’t agree with you at all on your response to question to the extent it would include: (1) a reference that it is withheld “without an intent to deceive”; and (2) a reference that is deemed “immaterial” such that the claim or claims would been deemed patentable anyway. I’ve seen you express this “draconian” view of inequitable conduct before (your response to question 4 confirms that) which suggests to me you’ve either never done much patent prosecution or if you have, you don’t care about this doctrine being applied “equitably.” Like Lionel, I view IC as a “plague” that cares little for whether the claimed invention (in the end) is meritorious or not. We remain the only jurisidiction that has it, and we would be better off it also disappeared in America. All IC does is drive up the cost of patent litigation. Also, and contrary to what you suggest, patentee aren’t the only “vilians’ when it comes to abusing the litigation process.

  139. Is there any hope this decision might aleviate the present requirement to cite Office actions from a parent case in a child case, even if the Examiner in the child case was the Examiner in the parent case?

  140. 1. Yes.
    2. Withholding a reference should be a per se violation resulting in unenforceability.
    3. If another PTO cited it, it is material. If you would rather the examiner not see it, it is material.
    4. No need to infer intent under the per se rule.
    5. Yes.
    6. No.

  141. David,

    If the patentee intentionally deceives the PTO, to get one or more claims allowed, I do not believe it is draconian to invalidate the patent.

    However,

    (1) I do not believe Applicants should have any disclosure requirements and prefer that those requirements be changed.

    (2) Regardless, the burden of proof required of the defense should be to show intentional deceit or actual fraud.

  142. David French writes:

    Why is the issue of the consequences of inequitable behaviour not being addressed. As long as the consequence is patent invalidation, then litigation will be encouraged.

    Surely Equity can provide other consequences that are less Draconian.

  143. (1) Yes

    We should abolish any disclosure requirements altogether, like every other patent system. However, assuming the US maintains any disclosure requirements (and I am):

    (2) The standard should be tied directly to fraud or unclean hands

    (3) A reasonable standard for materiality should raise a legitimate question of whether one or more claims would have been allowed if the undisclosed material had been disclosed.

    (4) None

    (5) Yes. Each should have its own bar.

    (6) Maybe.

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