District Court Concludes Therasense Patent Unenforceable On Remand

By Jason Rantanen

Therasense, Inc. v. Becton, Dickinson and Company (N.D. Cal. 2012) Download 2012-03-28 Therasense v Becton Dickinson

Following the Federal Circuit's remand in Therasense v. Becton Dickinson, the district court has concluded that Patent No. 5,820,551 is unenforceable due to inequitable conduct under the higher standards for intent and materiality articulated by the en banc court.  Specifically, the judge found that the withheld briefs were material under the "but for" test for materaliality, that the Abbot attorney and scientist knew of that but-for materiality, and that they possessed specific intent to deceive the patent office. 

While all of the district judge's intepretations of Therasense are worth discussing, I find the characterization of Therasense as a whole to be the most interesting:

"Under the new standard, therefore, an applicant or attorney may knowingly and deliberately withhold from the PTO any reference known to be inconsistent with a position takeny by him or her before the PTO so long as the withholder does not know that the reference itself would lead to a rejection.  It would not be enough to prove that the applicant or attorney expected that the concealment would help win an allowance or expected that, if revealed to the examiner, the reference would cause the examiner to merely question patentability.  Rather, the applicant or attorney must know – and it must be later proven that he or she knew, that the item, if revealed, would lead to a rejection."

Slip Op. at 3. 

 

27 thoughts on “District Court Concludes Therasense Patent Unenforceable On Remand

  1. It would not be enough to prove that the applicant or attorney expected that the concealment would help win an allowance or expected that, if revealed to the examiner, the reference would cause the examiner to merely question patentability.

  2. Infrequent poster says it is unlikely many posters here are working patent attorneys, but if they are, it is unlikely they have much work.

  3. None of us can meaningfully criticise his judgment because we were not in court at the time and did not see and hear the testimony in quest

    It’s entirely possible that some readers of this blog were in court at the time. Anyone?

  4. Max, there is no right to a jury trial for equitable defenses in the US. See, 7th Amendment. It is the normal practice for the courts to decide equitable defenses after the jury trial is over.

    See, e.g., Beacon Theaters, Dairy Queen (two SC cases discussing why).

  5. Paul, I suppose it fell to the judge to decide the facts because this is part of a “bench trial”.

    These days, a bench trial is unusual, isn’t it? In the more usual case of a jury trial, will it fall to the jury to decide whether the witness has an economical relationship with the truth, and whether the allegedly inequitable conduct was deliberate and knowing?

    And if so, will there be less criticism of the fact-finding process?

  6. At this point you have the specific oral testimony before the court and the demeanour of the witnesses. The judge made it clear that he did not like to have to make the finding that he did. None of us can meaningfully criticise his judgment because we were not in court at the time and did not see and hear the testimony in question.

  7. If it’s purely subjective, then the patentee can always escape specific intent to deceive by playing dumb at trial and testifying that he/she did not appreciate the materiality of the reference. given that inequitable conduct is meant to punish liars, wouldn’t a purely subjective test then allow liars to benefit from their lies if they repeat them at trial?

    I’m pretty sure the whole point of desposition and cross-examination in court is to identify the liars.

    Great liars do get away with stuff. Great liars are relatively rare, particularly among inventors and patent prosecution counsel. Among litigators and CEO types? Almost essential for the job.

  8. One problem with the new standard is that it tends to damage the reputation of practitioners, and unnecessarily so. Specifically, the prior standard did not require specific intent to deceive; but, however, the very same conduct that previously resulted in a conclusion of less than affirmative dishonesty will now fully suffice to constitute a specific intent to deceive. Given the allegedly increased standard of “clear and convincing evidence”, will fewer accusations of “specific intent to deceive” now be brought? Please! When persons are convicted of murder under the “beyond a reasonable doubt standard” and without any physical evidence whatsoever, but based instead upon the fact that the trier of the fact believed that they didn’t “act right” when told of the death, does anyone think that the “clear and convincing” standard has any real meaning? And trial of the inequitable conduct issue as a matter sounding in equity will make no difference.

  9. MM,

    If Stunning Jurisprudence is lying in the curb, you are down the sewer.

    For once, do more than stroke yourself.

  10. ??

    And your expression of your questioning to the applicant is achieved how?

    R E A D I N G
    C O M P R E H E N S I O N

  11. That’s what I’d like to know. If it’s purely subjective, then the patentee can always escape specific intent to deceive by playing dumb at trial and testifying that he/she did not appreciate the materiality of the reference. given that inequitable conduct is meant to punish liars, wouldn’t a purely subjective test then allow liars to benefit from their lies if they repeat them at trial?

  12. Take another shot at it MM.

    You’re lying in the curb and you want me to kick you in the head? Sorry, bro’.

  13. Take another shot at it MM.

    How (as in provide a manner) else does an examiner “question patentability”?

    The manner given is through rejection.

    Your response at 12:34 is unintelligible.

  14. Nice. Resort to third grade tactics. You weren’t allowed to play with other children, were you?

  15. Nice. Not only does that not answer the question

    Yes, it does, sockie. Of course, if you’re a mxrxn you won’t appreciate that. Hence your comment.

  16. Professor Rantanen– assuming you can speak in detail about the case, what’s your take on the court’s holding that the patentee’s arguments, made in litigation, that it would have been able to distinguish the omitted reference are irrelevant to the initial finding of materiality? At least, I think that’s what the court held.

  17. Nice. Not only does that not answer the question, it shows a complete lack of reading comprehension.

    Why do you bother posting?

  18. sockie Other than with a rejection, how else does an examiner “question patentability?”

    Because Examiners never ask themselves if a claim is patentable unless they already know they are going to reject it.

    Man, this blog has the dxmbest trolls.

  19. It would not be enough to prove that the applicant or attorney expected that the concealment would help win an allowance or expected that, if revealed to the examiner, the reference would cause the examiner to merely question patentability. Rather, the applicant or attorney must know – and it must be later proven that he or she knew, that the item, if revealed, would lead to a rejection.”

    Yes, it’s “interesting”. Also accurate.

  20. “It would not be enough to prove that the applicant or attorney expected that the concealment would help win an allowance…the applicant or attorney must know…that the item, if revealed, would lead to a rejection.”

    Where to begin?

Comments are closed.