TheraSense, Inc. (Abbott Labs.) v. Becton, Dickinson and Co. (Fed. Cir. 2010)(En Banc Rehearing)
In TheraSense v. BD, an en banc Federal Circuit is reconsidering the doctrinal structure that it has created to handle allegations of inequitable conduct. Abbott (the patent holder) has filed its opening merits brief arguing that the current law of inequitable conduct over-extends its proper bounds. In an eloquent opening statement, Abbott writes:
The question in this case is not whether to reform the doctrine of inequitable conduct, but whether to restore it—to its origins in Supreme Court precedent; to the confines Congress intended in the 1952 Patent Act; to the standards this Court articulated en banc in Kingsdown Medical Consultants v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988); and to the standards that govern in other areas of law. This Court has expanded the inequitable conduct doctrine well beyond those boundaries, and the result has been an “ongoing pandemic” of inequitable conduct charges. Taltech Ltd. v. Esquel Enters. Ltd., 604 F.3d 1324, 1335 (Fed. Cir. 2010) (Gajarsa, J., dissenting). The expansion has rendered valuable patents unenforceable based on minor omissions far afield from the doctrine’s purposes. And it has converted the federal courts into roving commissions to enforce standards of conduct before the PTO without regard to whether the alleged infractions had any impact. . . .
Supreme Court precedent and the legal principles embodied in the Patent Act reserve those extreme consequences for the most egregious circumstances—cases where a party “obtained its patent by fraud.” Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 175, 176 (1965). As this Court has recognized, the Supreme Court has held patents unenforceable “only in cases of ‘fraud on the Patent Office.’” Star Scientific, 537 F.3d at 1365-66 (quoting Hazel–Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 250-51 (1944)); see Larson Mfg. Co. of S.D., Inc. v. Aluminart Prods. Ltd., 559 F.3d 1317, 1343 (Fed. Cir. 2009) (Linn, J., concurring). A party seeking to invalidate a trademark or copyright based on misconduct before the agency must prove it was the product of fraud. The standard should be no less stringent here.
Briefs Filed Thus Far:
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Abbott Brief on the Merits — File Attachment: TS.EnBanc.TheraSense.pdf (608 KB) (discussed above).
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ABA Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.ABA.pdf (1501 KB) (Arguing that the standard should resemble requirements for common law fraud).
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Dolby Labs. Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.Dolby.pdf (128 KB) (intent to deceive should not be found where a proper prior art search by the examiner could have uncovered a withheld the reference).
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Professor Hricik Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.Hricik.pdf (222 KB) (arguing, inter alia, that the Patent Act provides important guidance for the law of inequitable conduct and unenforceability).
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Verizon Amicus Brief in Support of Neither Party — File Attachment: TS.EnBanc.Verizon.pdf (151 KB) (arguing that judges should be free to consider equitable remedies that are less severe than holding the entire patent unenforceable).
It’s nice to see that someone’s trying to get this under control. The overuse of inequitable conduct charges has gotten pretty out of hand, and has even tended to make much recent patent litigation … well, inequitable.
IANAE – you are my hero – but you be deead wrong when it comes to guns, gun rights and the big C.
Don’t get me wrong – I’ll still fight for your right to believe that guns are not necessary, heck Ida even shot someone if that be needed – just be respecting my rights too.
IANAE, well the intention of the South was to keep the black man separate and deny them full equality. Part of their means for implementing this was the KKK who would come in the night to the uppity black’s home. They could not do this if they had guns. Guns were denied the black folk, who were then denied rights. This went on for a very long time. The Supremes acted with the very intention of keeping guns out of the hands of the black folks as was made clear in the case to follow in a few years where that was its holding: blacks had no right to keep and bear arms.
In modern society, there are areas of America ruled by violence. Gangs operate with impunity. Now, you might say packing a gun would make no difference to the mugger or a burgler, but I suggest you are wrong.
Sorry for attributing smashmouth’s point to Ned.
Ned: “Doesn’t your argument really call into question file wrapper estoppel?”
Doesn’t call it into question, exactly. There’s nothing wrong with holding the patentee to the statements he made to obtain the patent in the first place. File wrapper estoppel might be a bit aggressive these days, but the concept is sound.
Ned: “But I still think it a large stretch to hold a valid patent unenforceable for not disclosing a reference that might have been used to reject the claims.”
But surely you agree that as long as file wrapper estoppel is good law, there is an advantage to be gained by having your claims allowed with fewer rejections and fewer arguments in response.
Even without file wrapper estoppel, fewer rejections still means you get your patent sooner. But that’s not quite as striking an advantage as getting a broader claim.
Ned: “But there is something else there reveals just why the Supremes in the 1870s did not want to give blacks full civil rights.”
It’s the slavery thing, right? Black people needed their right to own guns protected, which the Constitution already said they had, because nobody was protecting their rights to free speech, peaceable assembly, life, liberty, property, due process, and all those other good things the Constitution already said they had? Isn’t that reasoning just a little bit backward?
I highly doubt a crazed racist white mob in the 1870s that was probably armed (the opinion mentions “militias”) would have thought twice about doing horrible things to a lone unsuspecting black guy if the guy had a gun. Heck, if a black guy in 1870 shot someone in self-defense that’d be one more excuse to pass out torches and pitchforks.
Guns are not the answer to any of the problems people insist are the reason they need guns. Guns won’t keep you safe from the government. Guns won’t keep you safe from angry mobs. What keeps you safe from the government is all the other stuff in the Constitution, and if you’re not enjoying any of those rights you shouldn’t expect to have an easy time getting a gun permit either.
IANAE, your argument really is about BRI and how it is used to help define claim clearly. But I still think it a large stretch to hold a valid patent unenforceable for not disclosing a reference that might have been used to reject the claims.
IANAE–Doesn’t your argument really call into question file wrapper estoppel? I know SCOTUS breathed new life into it fairly recently (Justice Thomas wrote the opinion, maybe it was Festo?), but maybe that opinion should be revisited.
IANAE, read the entire opinion. It is of fundamental importance far beyond the issue of gun control. It bears on the “privileges and immunities” clause of the 14th Amendment and how it should automatically incorporate the whole of the Bill of Rights and make them applicable to the states because that was the major purpose of the amendment: overturn Dred Scott give blacks civil rights: the same privileges and immunities enjoyed by all citizens of the US, but most importantly, those enumerated in the Bill of Right. The Supremes in the Slaughter House case had severely limited the clause so that the Bill of Rights was not incorporated. It took a very long time to undo that decision using the “Due Process” clause instead.
Justice Thomas’s opinion now appears to be mainstream on this issue. But there is something else there reveals just why the Supremes in the 1870s did not want to give blacks full civil rights. Thomas’s opinion is very powerful on this point. Read it.
From Wikipedia,
Criticism
Harvard law professor Laurence Tribe writes that “the Slaughter-House Cases incorrectly gutted the Privileges or Immunities Clause.” Similarly, Yale law professor Akhil Amar has written “Virtually no serious modern scholar—left, right, and center—thinks that Slaughter-House is a plausible reading of the Fourteenth Amendment.”[13]
Ned: “unfairly reject a claim”
Not every rejection that the applicant eventually overcomes is unfair. Remember, it has to be a reasonable examiner. A reasonable examiner would not make an unfair rejection, but might well make a perfectly fair rejection that is later equally fairly withdrawn in response to the applicant’s arguments.
Having those arguments on the record can limit the scope of the claims, even if the claims are identical in wording. Not having those arguments on the record results in the patentee gaining advantage.
IANAE,
Unclean hands does not punish, but prevents one from gaining an advantage. You do not disagree.
But you still contend that a VALID patent should be held unenforceable for failure to disclose a reference that might have been used to unfairly reject a claim so that the applicant would have had to clarify his claim language on the record.
This goes too far by any measure. It is almost like saying that my land deed is unenforceable if I paid the original subdivider to survey my land faster because he was taking far too long. The deed and survey are valid, but I gained an unfair advantage because I bribed the surveyor to do his job properly? If he was doing his job properly, the bribe would not have been necessary.
But you say, the examiner could have unfairly rejected the claims over a reference forcing me to clarify my claims. The operative assumption here is that the claims are both patentable and valid over the reference and that the rejection was improper.
What a joke.
Sacre Bleu!
Ned: “IANAE, have you read Thomas’ concurring opinion in McDonald?”
I haven’t. What part of it do you have in mind?
Ned: “The brief includes this very important passage:
One expected result of the objective “but for” standard in litigation [..] would properly limit the inequitable conduct defense to those circumstances where the applicant has actually “gained an [unfair] advantage” […]”
Getting an invalid claim allowed is not the only form of unfair advantage to be gained by withholding a reference. As I have pointed out more than once, keeping the file wrapper clean is an advantage we pursue far more often and far more diligently than getting invalid claims allowed, and one that materially affects the patentee’s rights. It’s naive to think that we shouldn’t concern ourselves with the conduct of applicants in prosecuting patents that happen to not be invalid.
The IPO has filed its brief. link to ipo.org
It advocates a “but for” standard for materiality and and “intent” standard that requires proof of intent to receive an “invalid” patent. [Note the major departure from Avid, where the court ruled the intent was to receive a patent — which could include an intent to receive a valid patent.]
The brief includes this very important passage:
One expected result of the objective “but for” standard in litigation is that inequitable conduct most commonly will be bifurcated and tried only after the judge or jury finds a claim of the asserted patent to be invalid. If the invalidity
finding is based on the same facts as the equitable conduct charges, then objective “but for” materiality is likely established and the court can proceed on the issue of deceptive intent. This would properly limit the inequitable conduct defense to those circumstances where the applicant has actually “gained an [unfair]
advantage”, to use the Supreme Court’s phrase in Keystone Driller, 290 U.S. at 245.
Indeed!
The corollary should be that if the patent is held valid over non disclosed art there logically can be no finding of IC for intentionally failing to disclose it.
It would also stop speculation as to materiality. How does one KNOW that a patent would not have issued BUT FOR the non disclosure of art? Until the claims are held invalid over the art, we can only guess. If we choose to “guess,” rather than “know,” we are back into the quagmire of the current plague.
IANAE, have you read Thomas’ concurring opinion in McDonald?
“Ha! I have a better record Malcolm. I have received a Notice of Allowance within 5 weeks of an invention disclosure hitting my desk.”
How’d it even get through OIPE in 5 weeks?
KB Ha! I have a better record Malcolm. I have received a Notice of Allowance within 5 weeks of an invention disclosure hitting my desk.
That’s a tough one to beat, Ken. Wow!
6: “The thing that keeps America out of things like that is our mind-set.”
True. But that’s also what keeps guns within easy reach of everybody. There’s a mind-set that predisposes people to gun ownership and violence, and it’s completely possible to be free, patriotic, and safe without it.
6: “The only way to change the peons in the military’s mindset into one that would allow for the suppression of the people is to introduce a grave external or internal threat TO THE PEOPLE.”
I bet you could easily convince government peons to suppress people in certain localized places, like airports, if you introduced just such a grave threat. But you might still have to take away their guns in those places.
“If the US government wanted to oppress the people by force, they’d be doing it already. ”
Thing is though, I doubt they could do it, if not only because the simple-minded peons of the military can even understand that it would be the wrong thing to do. The thing that keeps America out of things like that is our mind-set. Not laws or other bs. Well, a smattering of what is realistically possible also factors in.
The only way to change the peons in the military’s mindset into one that would allow for the suppression of the people is to introduce a grave external or internal threat TO THE PEOPLE. Like they did in Germany.
Or at least, so it has been said by people who study these things.
“I cannot think of a more clean cut example of anti-american elitism. That is why the Federal Government keeps our troops occupied in those conflicts in Afghanistan and Iraq. That last think that Wall Street wants is a bunch of highly trained individuals skilled in death and destruction back here in the states watching the bankers take their families’ homes away. That is a recipe for regime change.”
Pretty sure I brought up similar just the other day. But those highly skilled individuals are nothing without great leadership.
Kenneth–
You just reminded me of a suggestion I read in a law school article that the PTO consider going to a patent registration system (akin, I guess, to copyright) and leaving validity to be determined later, presumably during litigation for infringement. Doubt it would ever happen–talk about disharmony with ROW. Probably also ignores other purposes of patents, such as ostensibly giving fair notice to the public about what is claimed, and by inference, what is not claimed, hence still public domain.
Ha! I have a better record Malcolm. I have received a Notice of Allowance within 5 weeks of an invention disclosure hitting my desk. The examiner recongized the application as being drafted by me, took it out of sequence, because he said he knew I was a straight shooter (his words) and allowed it. I never try to hide anything from an Examiner, because it behooves me to have the Examiner know the best art out there.
“In short I was placed in a position of having to perform my own examination and prosecution
I’ve done that. In return, I got a granted patent five months after I filed the application.
Posted by: Malcolm Mooney | Jul 30, 2010 at 12:10 PM”
LOL Now if it were only worthy of the presumption of validity….
Ned: “jury nullification”
Jury nullification apparently isn’t what you think it is. It’s when the jury ignores the law to achieve the result it wants, pretty much in the same way that bothers you about the “rough justice” of courts.
Ned: “the black homeowner,”
Does that make me a racist now if I think gun rights are silly?
Clearly, if someone is repeatedly besieged by armed home invaders who inexplicably have easy access to guns, the problem is that there are not enough guns involved. If we make sure everybody has a gun, everybody will be safe from gun violence.
I don’t find it comforting at all that “when law and order breaks down” the Second Amendment gives one the right to be the most powerful vigilante. Normal people would complain about the police, or move, but crazy people get it in their heads that they’ll magically be safe from gangs of still-younger and still-better-armed other crazy people as long as they can shoot back.
Also, while I admire your appeal to sympathy for this particular homeowner, I note that the Supreme Court’s decision spends almost no time (I hesitate to say “no time at all” only because the decision is so long and I haven’t pored over every word) on the specifics of the case. Even McDonald’s lawyer didn’t mention the facts in his argument. If he didn’t think sympathy for his client should sway this case that apparently rests on an arcane point of pure constitutional law, I’m not going to question him on that point.
In short I was placed in a position of having to perform my own examination and prosecution
I’ve done that. In return, I got a granted patent five months after I filed the application.
IANAE, what about the use of guns in a city like Chicago where the black homeowner, McDonald, was under siege, repeatedly having his home invaded with no police protection. He asked for a gun and was denied it. Thus the suit.
I can only home you read Thomas’s concurrence in McDonald to see the value of guns when law and order breaks down.
Speaking of judicial arrogance and jury nullification, even some on the Fed. Cir. itself are concluding that this is a problem:
In yesterdays Becton v. Tyco descision, the dissent ended exactly that accusation in a case where the jury verdict of infringement was overturned on JMOL.
Ned–
I graduated law school in 2008. In my 1L civil procedure class, we read both cases, although at the time I didn’t understand their full import. And they were in a widely used casebook, the title of which escapes me at the moment (it was published by Thompson/West and was in something like its 9th edition), which we used in that class.
smashmouth, thanks.
On Beacon Theaters and Dairy Queen, with the requirement of materiality not directly linked to invalidity, I am not surprised no one thought of it.
Perhaps these two cases are no longer discussed in law school as well, as the template appear to be that juries are bad, especially in patent law. I have heard that my entire career. Having seen enough rough justice in my time from courts, I have come to appreciate the value of juries.
Ned: “IANAE, square that with (previous statement).”
There’s the dripping sarcasm, for one thing, and also the fact that every time we see video from the region everybody seems to be holding an AK.
And also the more general point that private gun ownership isn’t generally much of a deterrent against a government that routinely attacks foreign countries that have defensive bunkers and standing armies, based primarily on a desire to kill/imprison the locals and award no-bid contracts for rebuilding the country. That’s more or less what the gun-owners stateside are supposedly protecting themselves from, isn’t it?
What? Or at least if everybody there had an AK-47. The US government wouldn’t have stood a chance.
IANAE, square that with And having a gun for self-defense against the government would be a very meaningful right indeed, if the government didn’t have way bigger guns, including armored guns on wheels and tracks, and flying guns, that the government won’t let you have.>
BTW, having looked at the Jan. 25 panel opinion again, I think Judge Linn was right. This looks like a textbook case of a court conflating materiality and intent to deceive.
Remember “weapons of mass destruction” allegedly in Iraq?
Yeah, what a fiasco.
At least if they actually had weapons of mass destruction, they could have defended themselves against the oppressive might of the US government. Just like they did in 1990.
Or at least if everybody there had an AK-47. The US government wouldn’t have stood a chance.
“If the US government wanted to oppress the people by force, they’d be doing it already. A concealed handgun wouldn’t even slow them down, no matter how well-regulated your militia is.”
I think it’s in the government’s interest to use fraud as well as force. If you can get people voluntarily to go along it’s a lot easier. Just think of the IRS and its Orwellian phrase “voluntary compliance.”
Anyway, we’ll just have to agree to disagree on this. As to judge/jury, I can’t quote the research, but I think it’s well known that decisions tend to be different in character when unanimity of a group is required. Even federal appellate courts require 2 out 3 judges. In any case, to me the right to jury trial has more to do with my belief in populism and distrust of elites. I may not be able to prove my opinion, but I think we have seen a lot of evidence just in the last 10 years that should make us all distrust the elites who rule the U.S. Remember “weapons of mass destruction” allegedly in Iraq? the PATRIOT Act? TARP?
the right to self-defense against armed criminals (including especially the government) is the most fundamental right of all.
And having a gun for self-defense against the government would be a very meaningful right indeed, if the government didn’t have way bigger guns, including armored guns on wheels and tracks, and flying guns, that the government won’t let you have.
Sure, when Americans had muskets and the British army had muskets, a well-regulated militia could keep King George out of your face. But that era is long gone.
If the US government wanted to oppress the people by force, they’d be doing it already. A concealed handgun wouldn’t even slow them down, no matter how well-regulated your militia is.
IANAE said, “Have you ever tried to get a jury trial for patent infringement in, say, Canada?
Jury trials are like guns. We only think we’re supposed to have them because it says in the Constitution that we’re allowed to. The original compelling basis for that fundamental-at-the-time right has long ago passed into obsolescence.”
This is wrong on so many levels I don’t know where to begin. I’ll just say this–the right to self-defense against armed criminals (including especially the government) is the most fundamental right of all. If you and your ilk succeed in abolishing it, we serfs will suffer the fate of Ukrainians during the state-imposed famine of the Soviet era.
I remember Malcolm chortling that we should be pleased with this result because it furthered “judicial economy.”
Well, did it? Did the outcome of the case depend on any disputed claim construction issues? It certainly didn’t depend on validity, since the patent was unenforceable in any event. Why bother with meaningless formality, when you have enough information to dispose of a case?
I suppose it would further judicial economy if we abolished jury trials altogether, but to me that’s not adequate justification.
Have you ever tried to get a jury trial for patent infringement in, say, Canada?
Jury trials are like guns. We only think we’re supposed to have them because it says in the Constitution that we’re allowed to. The original compelling basis for that fundamental-at-the-time right has long ago passed into obsolescence.
How many judges do you really need to decide whether a fact is more likely than not? For that matter, how many judges do you need to change a light bulb?
Ned said in part, “It appears the task at hand for the Therasense court lies open and clear: Overrule JP Stevens.”
That is not a ridiculous hope, because JP Stevens already is suspect in some respects–especially where it states that gross negligence is sufficient to prove IC:
“Proof of deliberate scheming is not needed; gross negligence is sufficient. Hycor, 740 F.2d at 1540, 222 USPQ at 561. Gross negligence is present when the actor, judged as a reasonable person in his position, should have known of the materiality of a withheld reference.”
JP Stevens, Paragraph 26. Notice also that what the opinion states is gross negligence really is simple ordinary negligence. Permitting conflation of materiality and intent, combined with (old) Rule 56, guarantees this result, despite subsequent opinions, e.g., Kingsdown, where the Federal Circuit purports to abolish this lax standard..
I think it’s also interesting, to say the least, that by redefining fraud as “inequitable conduct,” the courts have seriously diminished the 7th Amendment, as you have pointed out in another post. Common law fraud was triable to a jury; “inequitable conduct” purports to be equitable, thus triable only by the court. It surprises me that nobody has litigated this under the authority of Beacon Theaters v. Westover, 359 U.S. 500 (1959), and Dairy Queen v. Wood, 369 U.S. 469 (1962).
Links:link to supreme.justia.com
link to supreme.justia.com
I seem to recall a case filed roughly two years ago where a U.S. District Court Judge, I think it was Mariana Pfaelzer from California, held a bench trial on IC, ruled against the patentee, and disposed of the case, without ever bothering with claim construction, let alone validity. On appeal, one of the Federal Circuit judges complained about this, but nothing became of it, and so far as I recall, nobody specifically mentioned the Seventh Amendment or Beacon Theaters. I remember Malcolm chortling that we should be pleased with this result because it furthered “judicial economy.” I suppose it would further judicial economy if we abolished jury trials altogether, but to me that’s not adequate justification.
So long as the Federal Circuit keeps excusing Federal Agents from having to act reasonably with the public, as happened in the McKesson case, there will never be an accountability. Without accountability, the system will continue to be disfunctional. Dayco Products is not a much better opinion either. However, that McKesson decision is a catastrophe.
Now if I can fix my multiple postings, itta be awesome.
“making the Examiner actually do their difficult job in the first place.”
Fixed.
“making the Examiner actually do their difficult job in the first place.”
Fixed.
The Tea leaves have been there for the reading since Kappos first came in and said:
“Quality don’t equal Rejection”
“making the [ ] Examiner actually do their difficult job in the first place.”
fixed.
The tea leaves were there with Kappos’s first directives to the examiners. I be too lazy to get the actual quote, but it went something like this:
Quality does not equal rejection
OK here it goes. Professor Hricik’s position will win the day and he will be quoted in the court’s majority opinion. This means that the USPTO will have to start humpin it when it comes to searching and examination, making the job of the Examiner much more difficult. I would suspect that this will justify a fee increase or, alternatively, allowing the USPTO to keep more of the money it takes it . . . wait a minute that has already happened. Tea leaves gentlmen, read the tea leaves.
6 just look at this malfeasance. The Federal Government conspired with Goldman Sachs to give my money and the money of my children and my children’s children to foreigners. link to weaselzippers.us
I cannot think of a more clean cut example of anti-american elitism. That is why the Federal Government keeps our troops occupied in those conflicts in Afghanistan and Iraq. That last think that Wall Street wants is a bunch of highly trained individuals skilled in death and destruction back here in the states watching the bankers take their families’ homes away. That is a recipe for regime change.
Not cry 6. I demand a government that is responsible and responsive to its bosses, the citizens of the United States.
Smash, the ABA brief was better; but the killer brief is that of professor Hricik. While JP Stevens, link to ftp.resource.org,
did some analysis of the origins of Sections 288 and 287(1), it was cursory at best.
BTW, here is link to the Report of the House Judiciary Committee concerning the 1952 Act. link to google.com
It briefly discusses 253 and 288 as companions, not 288 and 282(1).
Returning to JP Stevens, a glaring weakness in the case was its categorization of the prior cases into two classes: 1) those that were “fraud” and those that were 2) “inequitable conduct.” In the case of “fraud,” the court said the claims were “invalid.” In the case of “IC,” they were unenforceable. Thus, was born IC which could hold a patent unenforceable where there was no fraud.
Of course, this is nonsense. To be invalid, a claim must not meet the requirements of “patentability” set by the statute in Part II, or 112 or 251. See, Section 282(2) and (3). Fraud has nothing to do Section 282(2) or (3).
It appears the task at hand for the Therasense court lies open and clear: Overrule JP Stevens.
Forgot to say, without having recently read the case, not sure whether Therasense falls under this rule. To put it another way, unlike Malcolm, IANAE, and 6, I actually thought Abbott’s brief was pretty persuasive, notwithstanding its sloppy quote of that copyright case. (Aside–appellant’s briefs do things like this all the time–it does hurt their credibility and could tip the scales in a close case. But I don’t think it’s Rule 11 sanctionable.) But I’m not sure of the facts, so I’ll read it again tonight. In any case, I agree with the argument that IC should be restored to its roots of “fraud on the Patent Office,” regardless of whether Abbott should win or lose in this case.
“Mooney your assertion is based upon a flawed presupposition that is is the failure to provide material art that is the reason bad patents are issued.”
I think MM is well aware that such a presumption is incomplete as that reason is only one of many.
” In short I was placed in a position of having to perform my own examination and prosecution”
Cry for me a little bit. Go ahead, cry for me a little.
Malcolm–I guess to me it’s better to protect the innocents you rightly mention (without sneer quotes b/c they really are innocent) through invalidity.
You are forgetting to include in your calculation the “innocents” who are accused of infringing patents that should never have been granted. You know, companies like Therasense.
Mooney your assertion is based upon a flawed presupposition that is is the failure to provide material art that is the reason bad patents are issued. I have had countless situations in my career in which the best reference cited by an Examiner was never applied to the claims. I find myself having to quickly dismiss the reference asserted to be the anticipating reference only to argue agaisnt some other reference identified in the Office action and never applied. In short I was placed in a position of having to perform my own examination and prosecution. All the Examiner did was to search the art.
making it easier to prove IC probably means fewer patentees who “really” deserve punishment will escape, but at the cost that more “innocents” also will be penalized.
You are forgetting to include in your calculation the “innocents” who are accused of infringing patents that should never have been granted. You know, companies like Therasense.
Between the currently high bar for finding IC and the Federal Circuit’s disciplined enforcement of that high bar, the number of “innocent” patent owners who are “unfairly” denied enforceability due to an erroneous IC filing is miniscule compared to the number of patents that are granted in spite of a lack of Rule 56 compliance by the applicants. Can I prove it? No. But I’m 100% sure of it.
Just to bring this discussion a little closer to reality, I think you have to recognize there is a trade-off between how broad the applicant’s duty of disclosure is, and how much stuff she/he will puke up to the examiner. With a greater duty, on average, applicants are more likely to disclose more wheat and more chaff.
I (and some others, but obviously not all reading this) think the uncertainties attending IC and the relatively lax standard of bad intent required currently also affects this trade-off, and tends to induce at least some applicants to “over-disclose/defensively disclose.” And (with apologies if I mischaracterize your position) those in favor of the current IC rules probably are looking at a different trade-off–making it easier to prove IC probably means fewer patentees who “really” deserve punishment will escape, but at the cost that more “innocents” also will be penalized.
Anyone who believes that they are doing this has a very small imagination.
And, more importantly, will inevitably get dragged into court by a litigator who is paid to have a bigger imagination.
Filing every possible reference to protect yourself from inequitable conduct charges is akin to curling up under your desk to protect yourself from a direct nuclear attack. It doesn’t prevent or mitigate the attack. All it does is make you feel better during the period of time when you’d have been safe anyway no matter what you did.
Malcolm–I’m probably guilty of a little hyperbole, but thanks for the reasoned reply.
Dear Smashmouth,
Nobody files “every conceivable reference”. Anyone who tries to do this will fail. Anyone who believes that they are doing this has a very small imagination.
The best strategy for avoiding IC is to provide the USPTO with all the non-cumulative information that you are aware of and which is material to the validity of the claims. I don’t find this terribly difficult, frankly. Nor do I lay awake nights worrying about some alleged infringer raising an IC defense of a patent I prosecuted. If I found myself doing so, I would find a new career or at least cut down on the coffee.
“What’s the tricky part? Is it that obviousness under section 103 is too confusing for a mere patent attorney to figure out”
The tricky part is figuring out the mythical “reasonable Examiner”.
“Nope, but it is my habit to explode the lazy “file every conceivable reference or else” mythology every time it’s raised.
Posted by: Malcolm Mooney | Jul 29, 2010 at 03:19 PM” (emphasis added).
Why do you always have to impugn the motives of people you disagree with? Maybe sometimes people are just uncomfortable with uncertainty and want to cover their a–es. Doesn’t mean necessarily they’re lazy (or wicked or dishonest).
Hey Malcolm, does Kappos plan to file a brief?
“re inequitable conduct and inventorship. this is a bit off the post, but close enough. if inventorship errors, that were known but not corrected, were discovered during an infringement litigation; what COA would defense bring? 35 USC 256 or inequitable conduct = statutorily invalid or judicially unenforceable?
Posted by: para4 | Jul 29, 2010 at 02:49 PM”
This one is easy:
Both
if inventorship errors, that were known but not corrected, were discovered during an infringement litigation; what COA would defense bring? 35 USC 256 or inequitable conduct = statutorily invalid or judicially unenforceable?
Depends.
Ken Brooks MacKesson is a glaring example of why 1.56 never works. There you had a prosecutor state his reason for not providing art. He made an argument, which seemed good to me, and the court disagreed with it.
ROTFLMAO
TJ wrote, “‘Only the ‘knowing failure to advise the Copyright Office of facts’ that would have ‘occasioned a rejection of the application constitutes reason for holding the registration invalid'”…. [but] “The real quote is: “…facts which might have occasioned …”
Given the placement of the internal quotations and snippet, does anyone think there isn’t a pretty clear inference of deliberateness here?
So how does the sanction ball get rolling on something like this? Does BD have to complain about it, or does the CAFC go for a sua sponte smackdown?
smashmouth Malcolm–I guess it’s just in your nature always to have a smart-a– remark about anything.
Nope, but it is my habit to explode the lazy “file every conceivable reference or else” mythology every time it’s raised.
IANAE–“They [materiality and intent] can never be truly independent elements, because the deception can only be by keeping material information from the examiner.”
But the same problem comes up in common law fraud, and courts seem to do a better job of separating the two in that context.
touche. the end game is the same, but if one were to inquire academically…
IANAE wrote, “What’s the tricky part? [of figuring out what is “actually relevant” and must be disclosed] Is it that obviousness under section 103 is too confusing…?”
Um, do you prosecute patent applications? And if so, have one of your grants been litigated?
what COA would defense bring?
Trick question. Defense is not limited to a single defense or counterclaim.
Materiality and intent to deceive the PTO are supposed to be independent elements,
They can never be truly independent elements, because the deception can only be by keeping material information from the examiner.
If you know a reference is material and you make a decision not to disclose it, that suggests intent to deceive, because that can be the only result of your conduct.
If you make a decision not to disclose a reference with intent to deceive, that suggests materiality, because that can be the only motive for your conduct.
When your defense is that you were not fraudulent but “merely negligent”, you should expect that once in a while the court will decide that you couldn’t possibly have innocently been that negligent. That seems to be what happened in McKesson.
re inequitable conduct and inventorship. this is a bit off the post, but close enough. if inventorship errors, that were known but not corrected, were discovered during an infringement litigation; what COA would defense bring? 35 USC 256 or inequitable conduct = statutorily invalid or judicially unenforceable?
Mr. Brooks–I think we agree in substance on this. I just don’t like the terminology “accidental fraud.” It’s really a form of negligence we’re talking about.
Malcolm–I guess it’s just in your nature always to have a smart-a– remark about anything. I still think it’s unrealistic to expect patent attorneys not to be a little paranoid about IC so long as the Federal Circuit permits unenforceability under the current regime, which presumes intent just on the basis of materiality, no matter what they say elsewhere. Materiality and intent to deceive the PTO are supposed to be independent elements, not factors.
Ping asks, “And Moody’s is related to patents…how? Malcolm, are you feeling…”
Why, that’s as easy as 6°OfKevinBacon.
Moody shares many letters and rhymes with Mooney.
Mooney posts a lot on a blog related to patents, despite not relating to patents himself.
See?
Hey, it’s even easier than 6°OfKevinBacon, seeing as we only have about 4° of separation.
Smashmouth football. most of the new IC cases are accidental fraud. MacKesson is a glaring example of why 1.56 never works. There you had a prosecutor state his reason for not providing art. He made an argument, which seemed good to me, and the court disagreed with it. Basically the court said we don’t believe your rationale for not disclosing a reference, i.e., he was negligent in his reasoning for the reference not being material, e.g., accidental fraud. So in MacKesson you are faced with either there is strict liability for not disclosing a reference or negligently failing to provide a reference and you have commited fraud. In other words, fraud no longer requires any intent. Here is the beauty of MacKesson, had the court not found equitable fraud (mind you this is not legal fraud) then 1.56 would have been meaningless. So what MacKesson really makes clear is that being negligent in prosecution can result in an invalid patent even if all the requirements of Title 35 United States Code has been satisfied.
Rule 1.56 does not work. MacKesson makes that very, very clear. Just analyze the case and ponder the implications of the case had no inequitable conduct been found.
KB Other cultures and/or countries do not have these requirements.
The Balinese Patent Office figured this stuff out back in the 1920s.
smashmouth a patent attorney who didn’t flood the examiner with every conceivable reference could set himself up for legal malpractice.
I can conceive of more references than smashmouth could submit in an IDS. Could someone please file the malpractice suit today? Thanks.
but that’s not the test for materiality under IC jurisprudence is it?
How should I know? I simply take every patent number, phone number, and other seven-digit number I’ve ever seen and jumble them all together into a big list.
It’s the examiner’s job to figure out which ones are important, amirite?
IANAE: What’s the tricky part? Is it that obviousness under section 103 is too confusing for a mere patent attorney to figure out
No, section 103 is not confusing, but that’s not the test for materiality under IC jurisprudence is it?
Kenneth C. Brooks said in part, “As a result, it is much more likely that fraud (intentional as well as accidental) . . .”
This genuinely confuses me. What is “accidental” fraud? Fraud requires scienter. In fact, part of the problem with IC as it currently exists is precisely because blending materiality and intent leads in practice to a relaxation of the scienter requirement.
Has anyone considered the disparate impact on U.S. inventive institutions compared with their foreign counterparts? Specifically, U.S. companies are required to maintain certain data for purposes of eDiscovery and Sarbanes Oxley, tax purposes and the like. Other cultures and/or countries do not have these requirements. As a result, it is much more likely that fraud (intentional as well as accidental) may perpetrated by applicants in the aforementioned cultures. It would seem to me if one really wanted to game the system you would have an inventor in Madagascar or some other remote region of the planet file a patent application and then sell it to a mainstream company for enforcement in an industrial nation.
For example, say a large non-U.S. international petroleum company has a subsidiary in Somalia and a small domestic company develops a multi-billion dollar drill head. Well the non-U.S. international petroleum company could manipulate facts to its benefit within the Somalia, e.g., say to show earlier priority, and wipe out the U.S. company’s claim to be the first to invent.
I am not saying the multi-billion dollar companies manipulate facts and political processes to get beneficial business arrangements, say strong arming a government o release terrorists to get drilling rights, but I am saying that the international aspects of the Duty of Disclosure must be entertained so that U.S. institutions are not disadvantaged with respect to the non-U.S. institutions.
it sounds so easy when you say it like that.
What’s the tricky part? Is it that obviousness under section 103 is too confusing for a mere patent attorney to figure out, or is it that your client doesn’t want to pay you to be aware of the prior art to his own patent and your billables will come up short as a result?
IANAE: you can get down to the pragmatic business of disclosing the art that is actually relevant and getting your client a well-examined and enforceable patent
Just disclose what’s “actually relevant” – it sounds so easy when you say it like that.
Perhaps not, but what of intentionally withholding a reference so you don’t have to make statements about it in the file history, when you are well aware that statements in the file history can limit the scope of even unamended claims? Hypothetically, you would have gotten a patent identical in wording but narrower in real scope. Does that not cause the issuance of a patent that would not otherwise have issued?
First of all IANAE the duty of disclosure does not require providing a reference. The duty of disclosure requires providing information. If a reference could be found by an examiner with reasonable diligence, why should not the knowledge of the information of that reference be imputed on the Examiner? If one thinks about it, it differs only to degree of what occurs when an IDS is filed. Does an examiner actually read all the information contained in the references cited in an IDS? Whether the references are, in fact, read and considered by the Examiner, the Examiner is not only imputed with the knowledge contained therein but that all of the information contained therein had been considered.
By not filing a reference that could be discovered with resonable diligence by an examiner (which by the way is what is paid for by the applicant) the knowledge should be imputed upon the Examiner; however, we still miss that crucial presumption of validity in view of the reference being considered, because the reference has not been provided in an IDS.
Were this the way things are done, the public would be much better protected, because it would be less likely that IDS would be filed with an extraordinary number of references each of which would be deemed to have been considered by the Examiner. Rather, the validity of patents would be upheld and without an inordiante number of references being filed that would deemed considered by the Examiner.
It matters what a slick-talking litigator can do to persuade a U.S. District Court judge who is probably predisposed to look favorably at IC as a way to get rid of the case.
Yes, but that slick-talking litigator isn’t going away no matter how you conduct your patent prosecution. You can be the most diligent possible person, and meticulously follow the most specific and unambiguous possible rule, and he’ll still go after you in the exact same way and cost your client exactly the same amount in litigation expenses, because his job is to win at all costs and he’s kind of a sociopath.
Once you realize that fear of the slick-talking litigator is not actually protecting you or your client from anything, you can get down to the pragmatic business of disclosing the art that is actually relevant and getting your client a well-examined and enforceable patent.