Exergen as the Guidepost for Findings to Support Inequitable Conduct

As everyone knows, Therasense changed the substantive law of inequitable conduct, requiring but-for materiality (with the "affirmative egregious misconduct") exception, and intent to deceive the office.  (Debates rage on some aspects of this, but that's the core.)  Exergen, of course, held that Rule 9(b) applies to inequitable conduct allegations, requiring that the "who, what, when, where, and why" be pled.

Yet, I have seen examples of district court opinions finding inequitable conduct that do not, themselves, meet the pleading requirements.  It cannot be that findings that would not satisfy Exergen can, nonetheless, support inequitable conduct.

I'm surprised that no one has, as yet, made this argument (that I know of).  Exergen provides a roadmap for district court findings and conclusions, and also the means to attack findings of nequitable conduct on appeal when they fail to meet that standard.

Am I missing something?

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.

6 thoughts on “Exergen as the Guidepost for Findings to Support Inequitable Conduct

  1. 4

    Oh, Gotcha. Nope, in fact, my knowledge about statutory interpretation leads me to exactly the opposite conclusion: Congress knew how to get rid of intent as an element, did in some places, but left 282 alone. To the extent that these tea leaves go either way, based on having written a book in the field and my gut, I’d say it cuts against that argument, not for it!

  2. 3

    Why did the AIA remove the provision of ‘intent to deceive’ from throughout the act?

    What does this widespread action portend to other areas of the act (if at all)? Can an argument be made that the but-for aspect of case law is silently (but thoroughly) imbued throughout all patent law based on the AIA’s universal actions, or do those actions only speak to those sections that previously had an explicit ‘intent to deceive’ element?

  3. 1

    Prof. Hricik,

    Any thoughts on how the AIA wholesale removal of ‘intent to deceive’ affects this issue?

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