I was reading some random things this morning and read about this case, In re Skelaxin (Metaxalone) Litigation. I’d never much pondered the deeper downstream legal consequences to the owner of seeking to enforce an invalid/unenforceable (and, I suppose, non-infringed) patent (beyond 285, and the potential for Walker Process type claims), but this case illustrates some of the enormous ripple effects.
What I have thought about is the fact that the OED routinely opens investigations when a court finds that a patent is unenforceable. (Some of the comments below about the OED’s jurisdiction relate to that issue.) One thing that lawyers have told me is that often they’re deposed in a case where they prosecuted a patent, and then (if things go badly) the next thing they hear is that an order has been entered finding they acted with an intent to deceive and knowing of material information.
It has always struck me that a district court’s findings on those issues should not have any weight in the PTO because of the serious due process issues, and because normal rules of collateral estoppel shouldn’t permit it — the lawyer was not a party to the infringement suit, and he also wasn’t in privity with a party to it.
I only raise this because I’ve seen several times where this has happened, but the lawyer’s lawyer at the OED seemingly doesn’t raise this up. Granted, the original finding of inequitable conduct will likely hurt the lawyer’s career, but OED disbarment will have even more.