Is TheraSense Retroactive?

I'm at the beach and so will point you to this paper that I wrote a while back, addressing whether TheraSense's changed interpretation of the Patent Act should be retroactive, or not (the paper includes several other topics).

If you're litigating inequitable conduct, and the conduct occurred before TheraSense was decided, think about it.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

5 thoughts on “Is TheraSense Retroactive?

  1. 5

    Professor, your note has me puzzled. You refer to a statute? What are you talking about. IC is and has always been court made. It flows from the doctrine of unclean hands and is equitable in nature. “One must do equity to receive equity.” IC is an equitable defense, although, statutorily recognized in Section 282.

  2. 4

    Short answer is that buyer beware, settled expectations, and so on aren’t controlling on this question of statutory interpretation. Where a court changes its interpretation of a statute — as TheraSense clearly did in some respects — the usual rule is that to that extent the interpretation is prospective only. Even a question of first impression gets retroactive effect, but not changes.

    I don’t have enough of a historical grasp of the other decisions to really have a view.

  3. 3

    Do Myriad and Prometheus and KSR and Fisher and JEM Ag all apply retroacticely? If they do, don’t they also have a great effect on settled expectations, and isn’t it always buyer beware?

  4. 1

    Prof. Hricik, I think it is. It would be inconceivable if a current case could find IC for actions or inactions that Therasense now says are not IC. One if its declared purposes was to end, or at least reduce, allegations of IC that had no affect on patentability.

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