Therasense: Background Documents For Those Preparing Amicus Filings

The Federal Circuit recently granted Abbott’s request for an en banc rehearing of its Therasense decision. The rehearing will focus on the fundamental elements of inequitable conduct.  Inequitable conduct is a non-statutory (i.e., judge-made) doctrine and the court is entertaining arguments on how it should re-structure the doctrine.

The following documents will be helpful to anyone planning to file an Amici brief in the case:

Court Opinions on Inequtiable Conduct:

Party Briefs Requesting Rehearing:

Amicus Briefs on Rehearing Request:

Arguments to the Original Panel:

Lawrence Pope’s Motion to Intervene:

Download all the documents in a big zip file. [Does not include POPE documents]

 

61 thoughts on “Therasense: Background Documents For Those Preparing Amicus Filings

  1. “Have you told your clients that you lack the ability to foresee what is likely to happen when their patents are litigated?”

    Malcolm,

    What do you mean by “forsee” and “likely”? Of course I advise clients as to what might happen, but that doesn’t mean it will. In other words “advice” isn’t the same as “certainty.” All I’m suggesting is I’m mortal. Are you suggesting you’re not?

  2. Malcolm has previously stated that he has never been on the receiving end of an IC charge and his naivety is understandable in that light.

    What percentage of registered prosecutors have been on the receiving end of an IC charge, ping?

  3. EG What you suggest about evaluating IC requires a clairvoyance which I and many others who deal with patent prosecution daily don’t have.

    Have you told your clients that you lack the ability to foresee what is likely to happen when their patents are litigated?

  4. EG,

    Cool your horses – Malcolm has previously stated that he has never been on the receiving end of an IC charge and his naivety is understandable in that light.

  5. “Reactionary and shallow-thinking prosecutors may tremble every time a federal circuit case finds a patent invalid (case in point: EG having a flip out about a case where a CEO admitted trying to deceive the PTO). Most of the rest of us just do the right thing.”

    Malcolm,

    I’m not simply “reacting” but pointing out the “reality” of being second-guessed (repeatedly) by judges and litigating attorneys who have never had to grapple with IC like us common folk have in the patent prosecution work place, especially in view of the muddled and contradictory precedent we have to deal with. Your statement is an oversimplification in the extreme and does not accurately portray the problem that IC has become. What you suggest about evaluating IC requires a clairvoyance which I and many others who deal with patent prosecution daily don’t have. In other words, we’re human, not all-knowing, all-seeing machines.

  6. Ned: Hobbes, my point about litigators is that they will do was is necessary and expedient to win for their client. They do not care how they do it, so long as what they do is not illegal.

    That was my point too. And you say I don’t understand litigators.

    Given the accepted nature of litigators, changing the substantive rule won’t decrease the frequency with which inequitable conduct is alleged. The rule could be that you have to withhold a reference published on an even-numbered day, with a patent number ending in 4, while wearing your underwear on your head, and it would still be alleged in 80% of cases. Because litigators prefer winning. Frankly, I’m surprised it’s not alleged 100% of the time.

  7. Hobbes, my point about litigators is that they will do was is necessary and expedient to win for their client. They do not care how they do it, so long as what they do is not illegal.

    So, if they want to smear a relatively honest inventor by making his innocent depo drawing into the equivalent of the 18-minute gap, they will do so. Every patent attorney who does anything but disclose all, or who makes a slight misstatement about the prior art or anything, is going to be made to look like the dark lord from the Lord of the Rings.

    There is no room for error, no margin of innocence. IC is being used for all its worth to win cases by destroying the innocent. IC is corrupting the system. Just like witch trials of yore, or the Reign of Terror of the French Revolution, it has to stopped.

    Where is Danton when you need him?

  8. Ned gots trounced on the other Therasense thread and repeats the nonsense here.

    This is like watching a rerun. Let’s check another channel…

  9. IANAE, you really do not understand litigation or litigators.

    impressive argument there, Ned. C’mon, surely you can do better than that. Do we need to get NAL in here yo straighten this out?

  10. 35 USC 2(b)(2)(D):
    [The PTO]..
    may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;

  11. 35 U.S.C. 32Suspension or exclusion from practice.

    The Director may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The Director shall have the discretion to designate any attorney who is an officer or employee of the United States Patent and Trademark Office to conduct the hearing required by this section. The United States District Court for the District of Columbia, under such conditions and upon such proceedings as it by its rules determines, may review the action of the Director upon the petition of the person so refused recognition or so suspended or excluded.

  12. @Ned:
    I would guess that the matter would be referred to OED for disciplinary action if it was the attorney. The party loses, of course. That would be the logical result – but I am not really sure.

    BTW, attorneys who are charged with IC in patent litigation are not parties to the action. I believe that that is why the statute gives the Director to make an independent investigation (taking into account the attorney’s evidence and arguments which may differ from his client’s) as to the attorney’s acts when found guilty of IC in patent litigation.

  13. anon, good point about interferences. They are contested proceedings.

    What is the remedy when a issued patent is found to be procured by fraud?

  14. I wonder what would happen if we instituted a new rule for expedited processing that amounted to this:

    If the applicant’s attorney swears out the following oath, in addition to the oath of the applicant, the examiner skips a search and examines an application only for Section 101, 111 and 112 compliance on an expedited basis.

    I, applicant’s representative, declare that I have conducted a search of the prior art as required by rule x (rule x specifies the standards for an adequate search); and hereby affirm in my professional judgment that the claims submitted are patentable over all prior art known to me.

    (The applicant already submits a similar oath.)

    The attorney would have to submit the references that form the basis of his opinion.

    If later, a patent is held invalid over such a reference, the patent attorney making the affidavit would automatically be placed on suspension for a mandatory term.

    Now, just how many patent attorneys would be willing to sign such a statement?

    None, I reckon. And what does that tell us about our patent system?

  15. @Heller:
    You said:
    “Jules, my amigo, slow down. The PTO has no authority to decide the issue of inequitable conduct. That is the exclusive province of an Art. III court.”

    Not true. Who disciplines the attorneys? The Director. Also, the Board decides IC in interferences.

  16. @6:
    You said: “Get rid of intent prong, make materiality the only prong. Additionally, only consider a reference material if it, or it in a combination, invalidates the patent.”

    As IANAE pointed out, what you are proposing is invalidity. I agree with you, though, that something should not be material unless it is a non-cumulative reference or document that invalidates a claim. But intent must still be shown.

    @figlin:
    You said: “Number 6 I agree that clear intent to withhold a reference should be inequitable conduct. Whether the reference was material or not. The intent to withhold says a lot”

    Suppose your claim is directed to a car. You search the prior art and find that cars are out there, along with bicycles and motorcycles. You only cite the car references and intentionally withhold the bicycle and motorcycle references.

    Under your theory, you can be found guilty of IC because you intentionally withheld the bike/motorbike references, even though bikes and motorbikes are less relevant than the car references.

  17. litigation expense has been multiplied

    So have attorney salaries and patent-related windfalls to NPEs. Any chance these things are related and have very little to do with the litigation of inequitable conduct?

  18. Paul: And you folks say you have a workable system that doesn’t need fixing???

    Don’t be fooled by Ned’s “constitutional” dust kicking.

    Terror and fear govern the duty of disclosure, litigation expense has been multiplied, and gross injustice is now mandated by the rules of equity.Terror and fear govern the duty of disclosure, litigation expense has been multiplied, and gross injustice is now mandated by the rules of equity; and, as noted by Lehman, examination has be all but crippled by mountains of cumulative references

    Blah blah blah blah blah. Reactionary and shallow-thinking prosecutors may tremble every time a federal circuit case finds a patent invalid (case in point: EG having a flip out about a case where a CEO admitted trying to deceive the PTO). Most of the rest of us just do the right thing.

    As for the “mountains of cumulative references”, how many references make a mountain? Last time I checked the number of references cited in the typical software patent IDS can be counted on one or two hands.

  19. “This case exemplifies the ongoing pandemic of baseless inequitable conduct charges that pervade our patent system.”

    Shorter Gajarsa: WAAAAAH!!!! WAAAAAH!!!! I’m in the minority!!!!!!

  20. The ’92 rule change has been largely ignored, and as IANAE has pointed out, purposefully so, by the Feds.

    When did I point that out?

    The most I ever said on the subject was that the rule change was pretty much a distinction without a difference, and if it was such a big change why has nobody mentioned it to a judge yet?

    EG points out that Rule 56 isn’t the only test for inequitable conduct anyway, and rightly so. It’s a question of equity. If you don’t disclose something you ought to have disclosed, no technical interpretation of the rule should save you.

    examination has be all but crippled by mountains of cumulative references that are disclosed because any filtering will result in a charge of inequitable conduct that more often than not will stick. See yesterday’s Taltech case.

    That would have been a good place to start if the Federal Circuit really wanted to address this issue. Yes, Taltech is a ridiculous decision. Those are bound to happen once in a while. That’s exactly why litigators always always always throw everything they can at a patent when their client is charged with infringement. That results in a lot of allegations of inequitable conduct, but also a lot of allegations of invalidity, non-infringement, and whatever else counsel thinks of. Even if you list all of patents 1 through the ones that issued this week in an IDS, a litigator will still find a way to plead inequitable conduct. It’s foolish to think that disclosing mountains of cumulative references will save you from being charged inequitable conduct. Life finds a way, and so do litigators.

  21. Paul Cole, the problems really started when the PTO came up with Rule 56 in ’77. Misguided. The vices it introduced were recognized. Manbeck attempted a course correction in the ’92 Rule. The ’92 rule change has been largely ignored, and as IANAE has pointed out, purposefully so, by the Feds.

    But the problems Manbeck tried to fix in ’92 have only gotten worse over time. Terror and fear govern the duty of disclosure, litigation expense has been multiplied, and gross injustice is now mandated by the rules of equity; and, as noted by Lehman, examination has be all but crippled by mountains of cumulative references that are disclosed because any filtering will result in a charge of inequitable conduct that more often than not will stick. See yesterday’s Taltech case.

  22. Ned: Dittos in spades.

    Disagree in no-trumps.

    The doctrine itself is fine. If people are pleading it when it shouldn’t be pleaded, and that practice is causing people distress, they should make sure people don’t plead it when it shouldn’t be pleaded. Hold them liable for costs, abuse of process, or whatever.

    I honestly don’t see how changing the standard for inequitable conduct will address the perceived problem that defendants staring down the business end of an injunction are making too frequent use of one of the tools available to them. No matter what the rule is, it will continue to be pleaded in 80% of cases. Like clockwork. That regularly goes cuckoo.

    The problem is purely procedural, and as Malcolm has pointed out there’s already a remedy for it that they’re not using.

    Paul: And you folks say you have a workable system that doesn’t need fixing???

    Just because the system disagrees with Ned, that by itself doesn’t make it unworkable.

  23. Jules, my amigo, slow down. The PTO has no authority to decide the issue of inequitable conduct. That is the exclusive province of an Art. III court.

  24. I like this quote from Nilssen’s brief:

    “[A] doctrine designed to promote equity has been transformed into an instrument for producing profound injustice, and in a manner which contravenes the constitutional mandate “(t)o promote the progress of.. .useful arts.” U.S. Const. art. I, § 8, cl. 8.”

    Dittos in spades.

  25. IANAE,

    You’re quite correct to caution Paul Cole about Rule 56 but for a different reason. The Federal Circuit in Digital Control said Rule 56 is a standard but not the (“court-approved”) standard for materiality.

  26. “Jules, my friend, show me anywhere where a court adopted BRI in deciding that a reference was material. It doesn’t happen.”

    Well, I’m not about to go do a search, but they absolutely should use BRI, since that is what is recited in rule 56:

    “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.”

    And who is best trained for that? The PTO. Who else?

  27. Next tell me that materiality does not involve a comparison of the claims to the reference.

    Obviously materiality involves a comparison of the claims to the reference. What simpleton ever told you it didn’t?

    It’s. Not. The. Same. Comparison. They. Do. For. Invalidity.

  28. Jules, my friend, show me anywhere where a court adopted BRI in deciding that a reference was material. It doesn’t happen.

    Show me anywhere where a court relied on the Markman claim construction (or any construction narrower than BRI) in deciding that a reference was not material, when it would have been material under a broader construction.

    “This case exemplifies the ongoing pandemic of baseless inequitable conduct charges that pervade our patent system.”

    Okay, then. Punish the baseless ones, and don’t punish the rational-but-happened-not-to-succeed ones. Changing the standard for inequitable conduct won’t fix the “pandemic”, litigators always go digging for anything they can find.

    No word from Gajarsa on the pandemic of baseless infringement charges? It’s alleged in 100% of cases, you know.

  29. IANAE, read Garjarsa’s dissent in Taltech on the issue of “cummulative.” Next tell me that materiality does not involve a comparison of the claims to the reference.

    Regarding your second point, you fail to appreciate the consequence of a holding of IC. It renders unenforceable other, valid claims and patents. Invalidity affects only the particular claims held invalid. Other valid claims may still be infringed. A finding of IC prevents their enforcement.

  30. Extremism in the defense of equity is no justice.

    Case in point: Taltech v. Esquel Enterprised decided May 12. link to cafc.uscourts.gov

    The dissent of Judge Gajarsa is worth a read. But he opens with

    “This case exemplifies the ongoing pandemic of baseless inequitable conduct charges that pervade our patent system. For the reasons stated below, I respectfully dissent from the majority opinion.”

  31. Jules, my friend, show me anywhere where a court adopted BRI in deciding that a reference was material. It doesn’t happen. This issue is a red herring if ever there was a red herring.

  32. Paul Cole, the current rule 56 defines materiality in a somewhat acceptable fashion: a material reference must render a claim unpatentable (invalid).

    Quit telling the alien incorrect things about US law. At best, rule 56 defines materiality such that the reference must make the claim appear at first glance to on balance be potentially invalid, to a probably-reasonable examiner in a hurry, possibly in combination with other references, and subject to arguments or facts the applicant might present in rebuttal.

    There is no defense of invalidity-plus-intent, and there shouldn’t be. Since, you may recall, invalidity is a defense all by itself.

  33. Ned, there are different rules of claim construction/interpretation between the USPTO and the courts. Therefore, you equating unpatentable to invalid is utterly wrong.

  34. Materiality includes a demonstration that a claim read on the references.

    I’m pretty sure I didn’t concede that. But let me put it another way.

    Suppose a reference is determined to be material to a claim at a bench trial on inequitable conduct. With all the underlying facts that need to be found to make that determination. Suppose further that the court finds no intent and the case proceeds to a trial on invalidity. The same reference is alleged as invalidating prior art.

    Are any of the facts from the inequitable conduct hearing relevant to the question of invalidity? Even a little? If not, then you don’t have a 7th Amendment problem, and you can stop whining about it whenever you like.

  35. Paul Cole, the current rule 56 defines materiality in a somewhat acceptable fashion: a material reference must render a claim unpatentable (invalid). The problem is, the Feds are not applying this standard. They are applying the standard of 1977 when the Rule was first introduced.

    “But for” is vague and indefinite as well unless it actually means invalid. “Invalidity” would also require a jury to decide the issue of materiality and would bind the court not to decide the issue differently.

    In contrast, “but for” might well apply to misrepresentation of material facts, which is a whole different kettle of fish from non disclosure of a reference.

  36. IANAE, IIRC, you, at one time, did concede this.

    However, to reiterate for the umpteenth time:

    Materiality includes a demonstration that a claim read on the references.

  37. “6, thinking the reference is material is pretty much the entire standard for disclosing it. ”

    I just redefined materiality above. It happens to be the redefinition that all kinda folks on here would love to have. I see no big issue with it changing. Compromise on that, and get a real IC system going that’s what I say.

    MM, your “incompetence” hypo works out just fine under my system. Court finds IC and the incompetent paralegal or whoever goes to jail for a year. Or the judge excuses it as appropriate.

    I still like my system better than yours. Especially if we combine it with a system of IDS rules that make you explain every reference beyond 20. Maybe that way she wouldn’t have missed those 2 refs.

    Hot da m, I might fix the entire patent system before dinner if I keep this up.

  38. Looking at the questions posed by the Court:

    1. Q. Should the materiality-intent balancing framework for inequitable conduct be modified or replaced? A. Yes – these are separate issues. A fool is not necessarily a rogue.

    2. Q. If so how? In particular should the standard be directly tied to fraud or unclean hands? If so what is the standard for fraud or unclean hands? A. A finding of inequitable conduct implies wrongdoing. The outcome may be that a patent is unenforceable despite the fact that it has not been proven invalid on conventional grounds so that a patentee may be deprived of an otherwise enforceable right. As I understand it there is also a risk of attorney sanctions. Such findings are of a penal nature and therefore require proof towards the criminal standard of beyond reasonable doubt and not simply to the civil standard of balance of probabilities. If this is a matter of quasi-fraud, then a very high standard of proof should be demanded.

    3. The question of materiality is difficult because the word does not have a single meaning. If it means relevant or significant, that is a matter of judgment, and it is in principle wrong to penalize patentees where materiality is a matter of judgment where views may differ. It is especially difficult in relation to unobviousness since that is an issue of mixed law and fact which is notoriously difficult to decide. Where does materiality end? A clear “but for” standard.

    4. Q. Under what circumstances is it proper to infer intent from materiality? A. In relation to a serious finding of this nature it is not appropriate to make inferences. The relevant facts should be put to the individuals concerned in oral testimony, the nature of their wrongdoing and what they ought to have done should be specifically and directly put to them and they should have an opportunity to answer the allegations. The issue should then be decided according to the evidence.

    5. Q. Should the balancing inquiry be abandoned? A. In a matter of this seriousness and in view of the penal nature of the sanction, yes.

    6. Q. Should standards for materiality and intent in other contexts be applied? A. It seems appropriate to review the issue in a wider context, and possibly having regard also to the law of deception. If what is under consideration is quasi-fraud it is clearly wrong to apply an unduly low standard created in a specialised and self-contained area of the law.

    Of course this is a set of answers given by an alien (UK), but perhaps the view of an interested outsider may inform the debate.

  39. My solution would be if a material reference is withheld irregardless of intent, the patent loses its strong presumption of validity under the clear and convincing standard and the standard under which the patent is judged becomes preponderence of the evidence.

    Isn’t that Microsoft’s argument in Lucent?

  40. In EP practice you don’t have to submit references while in the U.S. you do. However, the U.S. patent is stronger with clear and convincing evidence being needed to overcome the patent.

    My solution would be if a material reference is withheld irregardless of intent, the patent loses its strong presumption of validity under the clear and convincing standard and the standard under which the patent is judged becomes preponderence of the evidence.

  41. since there are common fact issues regarding materiality shared by the issue of invalidity and inequitable conduct

    You have yet to identify a single question of fact common to invalidity and inequitable conduct. And you’ve had ample opportunity to come up with one.

  42. If IC is alleged in over 80% of the litigated patent infringement suits, and proven in less than 5% of those suits,

    How does that compare to all the other defenses commonly raised by accused infringers?

    What about patent infringement? From what I can see, it’s alleged in 100% of patent cases, and only proven in about a third of them. We’re better off doing away with patent infringement altogether.

  43. 6, good post.

    IC:

    1. Non disclosure of an invalidating reference.

    2. Intentional misrepresentation of material facts.

    Re: 1, since there are common fact issues regarding materiality shared by the issue of invalidity and inequitable conduct, Dairy Queen applies. The 7th Amendment prevents a court deciding IC before a jury decides invalidity. The 7th amendment further prevents a court from deciding materiality differently after a jury has decided the issue in deciding invalidity.

  44. “There is no “plague” of inequitable conduct pleading by defendants.”

    Malcolm,

    You’re living in “Never, Never Land” gain to believe that statement. If IC is alleged in over 80% of the litigated patent infringement suits, and proven in less than 5% of those suits, you’ve got a “plague.” Unfortunately, much of the problem lies with the courts, including the Federal Circuit, in not holding defendants who make such unproven allegations of IC “feet to the fire” by imposing sanctions under FRCP 11 and 35 USC 285. Until that happens, the “plague” will continue, and will add a significant expense to patent infringement litigation.

    “Get rid of intent prong, make materiality the only prong.

    6,

    That’s an even worse thought than what Malcolm said. (Sorry Alan, as you and I know, we’re on different sides of the fence on this one.) Removing the “intent prong” makes IC a “strict liability” offense, and will punish the “ignorant” far more than the truly “knowing.”

    Bottom line: unless and until IC is dealt with sanely and true “equity” is applied in terms of the consequences when IC is proved under a “rational” and “consistent” standard (which the Federal Circuit has yet to do despite all its posturing to the contrary), we’re better off (like the ROW) dumping IC completely.

  45. it’s black letter law that the court has to find the ref material

    Funny thing, here’s what the rule says:

    “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”

    The applicant must know the reference to be material. Does that require actual materiality, or merely a “knowledge” (subjectively high epistemological confidence level, i.e. belief) that the reference is material?

    Materiality is always at least a little bit subjective, and it can be argued as extensively as validity. If you withhold a reference because you think that will give you an easier time obtaining a patent, you shouldn’t be able to later avail yourself of a defense of transient incompetence.

  46. Alan: As I’ve always said, if you withhold a material reference, per se unenforceability.

    The question is: what is meant by “withholding a material reference.”

    Let’s say I have a large portfolio of 200 related patents applications. The paralegal who has been handling the IDSs for this complicated family is diagnosed with cancer shortly before case X is filed. New paralegal steps in to take over for the sick paralegal. During the preparation of the IDS for case X, 392 references are cited which is all the relevant references except for references A and B. The same Examiner handling case X handles closely related case W, filed before the paralegal got sick, where A and B were cited. Case X issues as a patent. A and B are non-cumulative with the cited art and material to the issued claims.

    Let’s say as a matter of fact there was no intent to withhold these references. The patent is found invalid at trial (the references were disclosed during discovery and the plaintiff admitted on its own initiative that they should have been disclosed in the IDS but by mistake they were not). The patent is found invalid at trial as obvious in view of reference B and other references.

    Question: was there inequitable conduct?

    Answer: No.

    Question: would this be difficult to figure out?

    Answer: No.

    Question: should the plaintiff be forced to pay fees to the defendant for bringing a frivolous case?

    Answer: maybe, depends on facts that i haven’t provided here

    Question: should the defendant be sanctioned if it brought the inequitable conduct charge before it knew the details behind the omission of the references cited in case W?

    Answer: probably not, given these facts

  47. Malcolm, it’s black letter law that the court has to find the ref material (and you’re right, that does not mean but-for the patent would be invalid, as in WP fraud) AND intent to decieve separately- as in one does not presume the other.

  48. 6, thinking the reference is material is pretty much the entire standard for disclosing it. Shouldn’t it be the main criterion for determining whether non-disclosure was wrong?

    The consequences are a secondary discussion. First we need to make sure we’re penalizing/rewarding the right behavior.

  49. Oh and MM, the whole thing about them intending to defraud the US, but not actually doing it (aka they thought the ref material but it wasn’t) is meh, that could be a separate issue.

  50. Doesn’t reference have to, in fact, be material for a finding of IC Malcolm?

    Two points.

    First, “material” doesn’t mean “but for reference, patent is valid.” See Rule 56.

    Second, I am not aware of the fact pattern ever coming up, but I don’t see why an applicant who believed that she was deceiving the PTO by withholding a reference should be treated differently simply because the reference at issue was not, in fact, material. The scienter requirement is key.

  51. Guys guys guys, I didn’t talk about what the consequences could be if you were found guilty o IC. Invalidity is just gettin’ us warmed up!

    I mean, I’m just spitballin’ but a few suggestions might be:
    Loser pays all costs (attorney fees, court fees etc)
    Attorney is sanctioned
    And remember, this is fraud on the PTO, the US in general and the COURT, not just a civil matter, so:
    everyone involved is lashed 10 times
    a year? in jail for only the specific people responsible for the omission
    and giving judges the discretion to dole out the punishments as appropriate

    I could go on, there’s so much room for creativity!

  52. Number 6 I agree that clear intent to withhold a reference should be inequitable conduct. Whether the reference was material or not. The intent to withhold says a lot. Now there will be issues to ascertain whether it was intent to withhold.

  53. What Malcolm said.

    We already have a defense for withholding a reference that invalidates alone or in combination, without regard to intent. It’s called “invalidity”.

  54. I have to agree with 6.

    As I’ve always said, if you withhold a material reference, per se unenforceability.

  55. I feel sorry for the Federal Circuit and all the whining bullcrxp they are going to have to slog through.

    Here’s the main points:

    There is no “plague” of inequitable conduct pleading by defendants, at least not any more than there is a “plague” of anticipation pleading by defendants.

    If the Federal Circuit or any other court believes that frivolous pleading of inequitable conduct is out of hand, the solution is not to weaken the defense of inequitable conduct any more than it has been weakened. The solution is to sanction defendants who plead frivolously. The legal tools for bringing these sanctions are seldom used. That’s problem number 1.

    The oft-repeated claim that inequitable conduct pleading somehow diminishes the profession of lawyering or patent prosecution is a bunch of crxp. The fact remains that in high stakes patent prosecution just like high stakes litigation the culture is to push the ethical envelope to the limit. Anyone who denies this is naive or simply spinning a self-pleasing tale. Given the stakes and the culture, the frequency of broken envelopes is high. Again: the way to reduce the frequency is to maintain the viability of the inequitable conduct defense and to sanction attorneys who engage in frivolous pleading.

    The current formulation of Rule 56 should be used for materiality. The intent prong should be maintained, and any and all facts should be available for inferring intent.

    Note that none of this will affect the ultimate finding of inequitable conduct in the case at issue, which is one of more obvious examples of the intentional withholding of a material reference to be found in the case law.

    6: Get rid of intent prong, make materiality the only prong. Additionally, only consider a reference material if it, or it in a combination, invalidates the patent.

    Terrible idea on both counts. With respect to the latter, unless I’m missing something, this standard renders the effects of an inequitable conduct finding redundant, except possibly for awarding attorneys fees to the defendant. While there may be factual circumstances which allow for exceptions, in cases where there was a clear intent to withhold a reference believed to be material, that should constitute inequitable conduct whether or not the reference was, in fact, material.

  56. Get rid of intent prong, make materiality the only prong. Additionally, only consider a reference material if it, or it in a combination, invalidates the patent.

    How’s them apples?

    Pretty simple, withhold a material reference and you don’t get to keep your patent. Simple. Easy to understand, easy to enforce, and it only takes into account references that really matter.

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