By Jason Rantanen
Professor Lee Petherbridge, Ali Mojibi and myself are circulating a draft of our paper Inequitable Conduct and the Federal Circuit: An Empirical Analysis for comment. The underlying study examines the content of the entire body of Federal Circuit inequitable conduct jurisprudence, and the paper offers several interpretations of the reported data.
Among the most interesting are: that the Federal Circuit seems to apply a stricter standard for inequitable conduct than a substantial number of the tribunals it reviews; that the Federal Circuit’s inequitable conduct standard is applied primarily through the intent to deceive component of the analysis; and that while the apparent lack of clarity in the inequitable conduct standard may be a result of judicial variation on the court, it may also represent a preference by the Federal Circuit to effect a jurisprudential design, the purpose of which is to encourage good faith behavior on the part of patent applicants while only rarely finding inequitable conduct.
The abstract reads as follows:
Inequitable conduct is unique judicially created doctrine designed to punish patent applicants who behave inequitably toward the public in the course of patent acquisition. Its name alone strikes fear into the hearts of patent prosecutors, and justly so – for when successfully asserted, inequitable conduct can have devastating consequences that reach far beyond a patentee’s case. The need for a systematic empirical study of inequitable conduct jurisprudence has become especially pressing now that the Federal Circuit is reviewing inequitable conduct en banc – in terms so broad as to be unprecedented in the history of the doctrine. This Article reports such a study.
The study reported here provides evidence, inter alia, that the Federal Circuit applies an inequitable conduct standard stricter than that applied by a substantial number of the tribunals it reviews. The Federal Circuit’s stricter standard manifests primarily through the intent to deceive component of inequitable conduct doctrine. For all intents and purposes the Federal Circuit has no substantive jurisprudence around the balancing component, and the materiality component is comparatively less impactful then intent to deceive. The court appears to have trouble communicating its stricter standard to lower tribunals. We offer some explanations for why this might be so, and offer some modest suggestions that might advance inequitable conduct doctrine.
The complete Article can be downloaded here. As this is a work in progress, we are particularly interested in any comments, including alternate explanations for the results we discuss. In addition to responding below, comments can be sent to us directly or to prm.icpaper@gmail.com.
Its one of my favorite post. Its also helpful topic for newbie.
It would be interesting to see if the amount in controversy raises the likelihood of inequitable conduct being asserted.
Probably just as much as it raises the likelihood of invalidity or non-infringement being asserted.
It would be interesting to see if the amount in controversy raises the likelihood of inequitable conduct being asserted. I would expect it raises the likelihood, but decreases the chance of success, as defendants get more motivated by the higher amount of money at stake.
“Inequitable conduct is unique judicially created doctrine designed to punish patent applicants…”
here’s the quid pro quo for the C&C invalidity standard. they should sink or swim together.
Ain’t it annoying how some folks, particularly 6, when they have absolutely nothing to say in a thread cannot resist the impulse to hijack it with totally irrelevant drivel?
That be 6 – clapping his one hand again.
It’s is a startup, and thus is likely to fail. On the other hand, it has my uncle at the helm now and he’s pretty bad as s at business (I’m not making that one up). At the same time the whole situation reeks of nepotism.
I’m pretty sure those are all on the same hand. In fact, it doesn’t sound like there is an “other hand.”
“my uncle at the helm now and he’s pretty bad as s at business”
Yep – same guy that wants you out there, right?
6, ya trying to write me outa a job, insulting yourself? What’s up with that?
Bwa – hah hah,
I lost my train of thought after writing the opening above.
“They want to hire me for my expertise in my field, but all of us know they’re going to end up consulting me heavily about patent matters even though I’m not a lawyer or an agent (although I’ll probably get my agent’s license right fast …”
UPL exposure. better be the invisible man to the other side(s). don’t sign any legal docs and don’t show up for any depositions, unless, of course, you get the subpoena, and hopefully it’s not from the CA state bar.
6,
I’m assuming your request is genuine. Here are 10 steps to take to heart:
First, list your liabilities, including any conflicts at your current job (I do not know your employment contract or your obligations). It may be possible that there are some restrictions that would prevent you from taking the job.
Second, LED lighting is a bad field for long term growth (trust me, the Chinese competition is huge and growing at an unbelievable rate). If you think the business will do well short term and then IPO, go for it. However, there is a huge chance that if it is LED related, you are late to the game and will be on the receiving end of a market correction.
Third, forget about nepotism. Face it, that’s the only way you’re going to get a good job. If the 43rd president can do it, so can you.
Forth, get paid upfront if it is contract work.
Fifth, make sure you can give whatever advice they need. If it is legal advice and they will use it as such, you are setting yourself up for some nasty consequences.
Sixth, agree to a salary and not a “bonus” if it is a perm position. Get company stock if it will IPO.
Seventh, charge market rate. If you don’t know how to find the market rate, then you are going to fail at patent searching anyways.
Eighth, take the job.
Ninth, post on this board when the company goes belly up and you can’t get your ole PTO job back.
Tenth, go drink your sorrows away with Ping and MM.
HTH
6: Obviously you are doing the standard things, an EPO search (if not already done) and a search by the Swedish Patent Office.
Frankly LED technology is not so esoteric. So a standard chemical/electrical arts patent searcher should be able to do a competent job on the English/European language literature.
Then if you want extended coverage you run into language and cultural issues. It is difficult to see how you could avoid conducting searches in Japan using a local searcher or attorney – the English language abstracts are simply not an adequate tool if you need to find everything relevant. The same for China, Korea and Taiwan. There is so much going on in these countries that the best art is likely to be located there.
Finally, it would be worth cultivating academic contacts. Good academics/retired researchers in any of these countries could prove invaluable.
That is assuming you are concerned with a patent for an important invention and wish to leave no stone unturned in your validity investigation. Such things do not come cheap.
Also, does anyone know have a recommendation as to where I should go for the best LED lighting art searcher there is (not including me)?
Hey guys, check this out. I was just offered a job in a new small to mid sized startup company because of my field and because of my patent savvy. Now, the question I have for you guys is, in your opinion, should I take the job? It’s is a startup, and thus is likely to fail. On the other hand, it has my uncle at the helm now and he’s pretty bad as s at business (I’m not making that one up). At the same time the whole situation reeks of nepotism.
Consider:
They’re facing their first patent threat, or hint of a patent threat anyway. (one of the threating patents just so happens to have been issued by an acquaintance of mine at the office)
They want to hire me for my expertise in my field, but all of us know they’re going to end up consulting me heavily about patent matters even though I’m not a lawyer or an agent (although I’ll probably get my agent’s license right fast to draft and prosecute patents for them). So essentially I’m going to be fulfilling a dual role for the price of the lesser one (maybe, we haven’t discussed $$$)
The job is in CA.
In any event it might get me out of ur office, and into the real work force.
So what’s your advice? And if I should take the job, then what do you think I should charge them in terms of $$$?
Jason,
The results are very useful. I think few litigators would be surprised by the bottom line results you describe, but it is always very helpful to have empirical backing for anecdotal experience.
My biggest critique is that your main normative suggestion (i.e. Kingsdown is right) does not follow much if at all from your data. There is not much “glue” between Parts III and IV.
Re: The key suggestion here of a return to “the mental state standard for intent to deceive articulated [en banc] in Kingsdown [as] probably the right one.”
Isn’t what this is really disclosing is that too many Federal Circuit panel decisions lack sufficient respect for stare decisis to even follow en banc decisions of their own Court intended to bring legal clairification to an issue? In which case, will this latest [pending] en banc decision on inequitable conduct be consistently followed by all subsequent panels any better than Kingsdown was? [Or, the actual claim construction holding in In re Philips, or long-prior and supposedly-controlling “best mode” decisions, etc?]
This paper makes some interesting suggestions for a much more factual and objective determination of “materiality.”
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