35 USC 282

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.

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.

32 thoughts on “35 USC 282

  1. 4

    Well, David, unenforceability is not set by rule.

    Rule 56 is hardly consistent with the statute to the extent it seeks to impose on applicants any duty of conduct that is greater than that required by statute and seeks to enforce that duty by having courts hold the patent unenforceable.

    1. 4.1

      As you know from my other post, Ned, rule 56 in my view has zero to do with inequitable conduct. By that I mean: the PTO could eliminate any duty of disclosure, or make it ridiculously demanding, and that doesn’t say what the statutory defense to infringement means or requires.

      1. 4.1.1

        Two lines of thought:


        Is “conduct before the Office” controllable at all?

        If so, then what are the parameters of enforcing that conduct?

        (note, that I too would make the distinction between Rule 56 and what the courts discussed as inequitable conduct – just as in Therasense, the courts differentiated the two; but the questions remain, as does the fact that the two both still exist)


        a court’s job in determining what a statute means is very (very, very, very) different than when it’s making up common law.

        This concept keeps on recurring.

        Perhaps a larger, more encompassing viewpoint is needed: where (if anywhere) is common law appropriate within patent law?

        Arguably, Congress still permits common law development in the realm of remedies (the whole “as equitable” angle).

        Also (forcibly) arguable, Congress stripped common law development of the word “invention” from 101 – and as I have indicated with the Cornell link’s historical note, likewise stripped common law development of “obviousness” from 103 (one does not strip power due to misuse and immediately give it right back).

        But that is not the only interactions between the different branches of the government, is it? There are many judicial doctrines, and what of these various encroachments?

        The patent community (read that as pundits and academics alike) seem quite adverse to turning a critical eye on the judiciary. In fact, it appears that many in academia desire the judiciary (or the executive branch in the case of anti-“Troll” and “ownership transparency” measures) to shortcut the constitution and grab the power to effectively write patent law in the first instance.

        As I mentioned, I can see that cases like eBay do reach patent law (since Congress has not removed common law development from reaching patent law in cases of equitable remedy), and certain concepts (such as standing) reach ALL law – even patent law with its particular designation of authority to Congress, but a keen eye and a clarification between interpretation and (even implicit) writing should be kept firmly in mind with patent law and especially those areas of patent law that have NOT been relinquished by the designated branch of government.

        Yes, I am aware of the simple government appointment case that holds that the judiciary reserves the role of interpreting what the written law means. They are the monitors, so to speak. And the Supreme Court has anointed itself as the monitors of the monitors (grabbing Final Say over a Congress-created “lessor” specialty court), but (and yes, this is another Will Smith movie quote): who is monitoring the monitors of the monitors?

        The Royal Nine are like the Kings, and their clothes are just not there.

        How long do we pretend that they are made of the finest clothes?

        link to en.wikipedia.org


          The so-called Royal Nine are the guardians of liberty. Those that attack them are the people we need to keep a close eye on.


            You quite miss the point Ned, that just by calling themselves “the guardians” does not make it so – at least in the sense of who is monitoring the monitors of the monitors.

            They do not have carte blanche and there is a very good reason the Founding Fathers did not allocate authority to write patent law with an unaccountable judiciary.

            It is more than telling that you refuse to acknowledge the primary source of so much trouble in 101 jurisprudence.

            The problem you will have (that we all will have) is that if we do not first acknowledge the addiction to nose of wax law writing, then we will not, cannot, break that addiction.

            Just ask Alice.

  2. 3

    David – like the 101 issue – this point strikes me as academic and having a low likelihood of success at the SCOTUS. But you’re much, much more experienced and knowledgeable than I am.

    That said:

    1. I agree with you that the CAFC seems to be making stuff up as it goes along, on IC claims. Therasense tried to return to first principles of original SCOTUS cases on IC/fraud. But it still crafted a new rule, essentially out of whole cloth. This is one reason why I prefer O’Malley’s minority opinion there.

    2. Here’s one issue where I would like to see more focus on the statute: the broadest reasonable interpretation rule for claim construction in the Patent Office. I can’t find anything like this in the statute. It seems to be a common law rule dating backing to the early 20th century (or earlier). It’s arguably anti-patentee, because it makes it more likely that a patent application (or patent in postgrant trial) will be ensnared by prior art. I wonder if this is a case where “acquiescence” comes into play – as it did in i4i.

    1. 3.1


      This one is much cleaner than 101. I *think* everyone would agree that, to be a defense, inequitable conduct has to be in 282 and, if they read the statute and legislative history would agree that “inequitable conduct” fits in “unenforceability.” (If you don’t agree with the first point, move on; if you disagree with the second point, review Federico’s commentary and also confront the AIA issue with best mode you’re creating).

      So, whatever the merits of 101, it is a statutory defense.

      What hasn’t happened, yet, is people raising the consequences to the courts.


          Derek, it is observations like these that make one pause when considering the proposition that violation of 101 is not a grounds for invalidity, and that things like “new” and “useful” and “invention” are given meaning in 102/103/112 so that there is no separate 101 grounds of invalidity available.

          Then we come to double patenting. That is found nowhere in 102/103/112.

          Can we really patent music, math, products of nature, laws of nature, the training of cats, and business methods simply because there is nothing in 102/103/112 that forbids it?

          The AIA repealed 102(f). Kappos opinined, “No problem.” We can use 101.


          So one employee learns of an invention from another employee and files on an obvious variant. Are we to think that patent is invalid over the invention of another employee on the basis of 101?

          Such is loose talk by Kappos without thinking things through. Today, there is no statutory basis for having a patent declared invalid if the inventorship is bad — and that seems to be an intended feature, not a defect.

          But back to the topic at hand, the courts cannot constitutionally allow patents on things that have no use, on inventions that are not within the Useful Arts, on products of nature that are not new. So what is a Supreme Court to do?

          Apparently what they are doing, treating the statute as if 101 were still a good grounds for holding a patent invalid.


            Ned – point blank, business methods are within the useful arts.

            All three branches of the government have indicated so.

            Please stop with your baseless agenda.



              Anon, do you support Kappos’ use of 101 to fill in the blanks left by the new AIA? Why did we repeal 102(f)? There must have been a reason, a good reason.

              Even though I disagree with its repeal, we still must not try instantly to defeat congress’s will by resort to 101 like Kappos did. Do you agree?



              You do realize that Kappos had nothing to do with the revisions to patent law that the America Invents Act unleashed, right?

              You keep on doing that “aim at the wrong targets” thing…


              anon, It was my understanding that the AIA was the joint work primarily of Armitage and Kappos.


          You raised this before. The older I get, the more sloppiness I see. But here is the question:

          Why couldn’t the courts have said “OTDP is an equitable defense; the patent is valid but may not be enforced beyond the underlying term….”

          I wonder how the doctrine really began?


            The recent Gilead v. Natco decision has a summary of the origins. You can also look at Miller v. Eagle Mfg. Co., 151 U.S. 186, 197-98 (1894). Frankly, it’s a little sloppy. Some of the older decisions were arguably applying the reference patent as prior art rather than an OTDP reference.

            I think the equitable approach is interesting.


            David, OTDP is simply a variant on DP. DP goes back to England and scire facias. One could not have two patents on the same thing. The second to issue was invalid.


              Whether or not it goes back to England, we have requirements for presentment and enactment of laws. This matters, a lot!

              Y’all should read Guido Calabresi’s book (sp):

              Centered upon the relationship between courts and legislatures, upon the interweaving of statutes and judge-made law, its perspective necessarily reaches so broadly as to inquire into modern theories of majoritarianism and the justification in a representative democracy for judicial lawmaking by the common law method.

              A Common Law for the Age of Statutes is surely required reading for anyone seriously concerned with the nature of the judicial process and, I think, for any political scientist concerned with modern legislative processes who recognizes that the law brought to bear upon individuals and organizations often is a mixture of legislation and judge-made law. The readership ought to be much broader. Every member of the profession — judges, lawyers, and law students — should enjoy and admire its creativity and bright insights, not least because he or she will often be provoked to question or disagree. Professor Calabresi’s aim is exploratory rather than definitive. His direct and easy style, encouraged perhaps by the circumstance that the book grew out of the Holmes Lectures, 2 avoids density and complexity of expression even while achieving subtlety of thought.


              Derek, it is always good to know where a proposition came from and why it is in the law.

              The basic law has for 400+ years been that the second to issue patent is invalid — ’til the recent panel opinion by new Judge Linn that opined that the first to issue patent can be invalidate by subsequent events — the issue of a second-to-issue patent on the same invention.

              This kind of decision making would not happen if the judges were more careful in understanding the origins of the law as it is, and why it is extremely important not to radically and carelessly change it, as did Linn, without resort to the legislature, who themselves should be reluctant.

              During the run up to the AIA, a radical change from anyone’s view, I had just such a discussion with a Senator who shall be unnamed. One does not make radical changes. Never, ever.

              And, Federal Circuit panels?


              anon, the Supreme Court is chary of overruling cases. Brown v. Board is a shining example of an overrule. Ditto, Citizens United.

              A rarity.

              On DP, the law had firmly been established for 400 years that the second to issue on the same invention is invalid. Now this guy Chen has a better idea, that the first is invalid if the second claims the same invention but expires first?

              This is a radical change. It will have collateral effects far and wide, and was completely unnecessary.


              You again miss the point of the Supreme Court’s malfeasance.

              It is most definitely NOT only in overruling cases.

              Their problem (especially in patent law) is in WRITING law that they lack authority to write in the first place.

              You still evidence a lack of appreciation for what happened – at the hands of Congress – in 1952.


          Interesting piece, but I don’t buy the argument that IC is a statutory defense. Patent misuse renders the patent unenforceable. And they added 271(d) during the 1952 Patent Act to address the scope of misuse. Federico’s commentary discusses it. He also seems to equate laches and estoppel (and unclean hands) with unenforceability. So I think 282 is simply recognizing the result–unenforceability–from various common law defenses.


            Does the entire gamut of equitable remedies (including any drivers of unenforceability) enter into the equation through the combination of 35 USC 282(b)(4) and the fact that Congress has granted the judiciary access to all equitable remedies?

            See link to patentlyo.com

            I ask again, this time to all: what exactly is covered in the scope of 35 USC 282(b)(4)?

    2. 3.2

      ON the BRC or BRI issue, Kip, that’s a total mess. We’re only beginning to see the tip of the iceberg with Fresenius, Versata, and others I’m sure to come.

      One thing that troubles me about Fresenius is that it didn’t follow regional circuit law on the meaning of a judgment, though it said it was…

      1. 3.2.1

        There are lots of cases that pretend to pay “lip service” to following something, and turning around and doing the opposite.

        (I am sure that you are more than aware that the 101 cases are primary examples of this – and exactly why the Alice case portends to have such a large impact – one can only hope that the Court does not totally ignore what the CAFC said in its massive addendum to the paragraph per curiam decision and the desperate plea for the Supremes to finally take responsibility for the mess that they have created)

  3. 1

    So, is inequitable conduct a statutory defense, or is it just made up?

    …”or is it just made up?”

    Reminds me of a quote from the movie, “I Robot”:

    I’m sorry. My responses are limited. You must ask the right questions.

    (said in the best Dr. Lanning tones)

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