I was reading an article that suggested that the AIA was unclear whether a patent could be held unenforceable due to inequitable conduct based upon the failure to disclose the best mode. To me, the AIA amendment to 282 answers that question pretty clearly: no. See the language below.
But that directly implicates a pet issue of mine: that inequitable conduct is not based in the statute. I think it is. 35 USC 282 provides:
Defenses.— The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement or unenforceability.(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.(3) Invalidity of the patent or any claim in suit for failure to comply with—(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or(B) any requirement of section 251.(4) Any other fact or act made a defense by this title.
My own view, based on reading Federico’s Commentary and the legislative history of the 1952 Act is that “inequitable conduct” is authorized as a defense by the phrase “or unenforceability” in subsection (1).
The reason this is significant is that a court’s job in determining what a statute means is very (very, very, very) different than when it’s making up common law. Octane is a good example of that. Courts look at ordinary meaning, purpose, legislative history (in varying degrees, depending on judicial philosophy), not their own personal policy perspectives.
This has other repercussions. Foremost, the substance of the inequitable conduct defense is not something that any court should “change” (as the Federal Circuit has, most recently in Therasense). That’s not a court’s job: it’s for Congress. Further, if it’s going to “change” its interpretation, various doctrines like congressional acquiescence come into play. (I.e., Congress didn’t mess with the interpretation of the CAFC for decades; doesn’t that (remotely) suggest that the court was right, and so any change, improper? (Don’t misunderstand me, that’s a narrow, narrow doctrine.)) Further, as a general principle when in the rare case courts have acknowledged that they are changing an interpretation, their interpretation is (often) only prospective: thus, for pre-Therasense inequitable conduct, pre-Therasense standards should apply.
So, is inequitable conduct a statutory defense, or is it just made up? If it’s statutory… there are repercussions… only a few of which are listed here.