Did Therasense bury burying?

In my reading of post-Therasense cases to update our Ethics in Patent Prosecution book (buy yours soon!), the only clear trend I’ve seen so far is that district courts are lining up behind the proposition that “burying” important information can no longer lead to inequitable conduct.

For courts finding inequitable conduct based upon burying (at least arguably), see Costar Realty Info., Inc. v. LoopNet, Inc., 946 F. Supp.2d 766 (N.D. Ill. 2013) (refusing to decide whether burying is never inequitable conduct and finding additional allegations sufficient to state a defense); Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co., Inc., 837 F. Supp. 1444, 1477, 24 U.S.P.Q.2d (BNA) 1801 (N.D. Ind. 1992) (finding inequitable conduct where attorney listed reference but discussed less relevant aspects of it); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 U.S.P.Q. (BNA) 260 (S.D. Fla. 1972) (finding inequitable conduct where 13 references were listed in letter stating that they had been found in prefiling search, but in fact 13th reference was a patent that had issued afterward).

For courts finding no inequitable conduct, see Molins, 48 F.3d at 1184 (finding that attorneys’ mere submission of long list of references soon after they were discovered did not evidence intent to deceive); Seaboard Int’l, Inc. v. Cameron Int’l Corp., 2013 WL 3936889 (E.D. Cal. July 13, 2013) (no inequitable conduct despite allegedly burying art within hundreds of thousands of submitted pages of litigation materials); Parkervision, Inc. v. Qualcomm Inc., 2013 U.S. Dist. LEXIS 8467 (M.D. Fla. Jan. 22, 2013); Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 749 F. Supp.2d 892 (W.D. Wis. 2010); Symbol Techs., Inc. v. Aruba Networks, Inc., 609 F. SUpp.2d 353 (D. Del. 2009); Semiconductor LabSunrise Med. HHG, 95 F. Supp. 2d at 460–61 (finding no inequitable conduct based on lack of materiality of buried reference); Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 68 F. Supp. 2d 508 (D.N.J. 1999) (finding accused infringer unlikely to prevail on claim of “burying references” because of lack of evidence of intent to mislead); C&F Packing Co. v. IBP, Inc., 916 F. Supp. 735, 750 (N.D. Ill. 1995) (“An examination of the IDS at issue … does not support a finding that the applicants buried” the prior art).

I’ve got to say that I don’t agree with the proposition that burying should never be inequitable conduct. I was involved in one case, for example, where a critical, single piece of paper was submitted in weird places (not on an IDS, but truly random places, including, once, as a Figure to the patent application).  I’ve also seen cases where, it seemed to me, the practitioner in fact put the key information on an IDS with a bunch of junk.

Further, given that the narrower “materiality” standard from Therasense should mean less “junk” is being cited, there should be little need to file as much information as before, leaving submission of lots of marginally relevant information, along with something known to have been key information, more, not less, suspect.  It will be interesting to see how this doctrine develops.


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.

31 thoughts on “Did Therasense bury burying?

    1. 7.1

      Posing the trolley problem in English to two sorts of people, those who have English as their first language, and those for whom English is not their native tongue. Emotional answers from the first language folks, less emotional from the EFL people. Well, well, who would have thunk it?

      Brilliant idea, and a result which, intuitively, I readily accept.

      Very relevant to all those Examiners at various Patent Offices, busy throwing applications, as opposed to fat men, into oblivion for the greater good of application-kind.

      In particular those cold-hearted emotionless Examiners at the EPO, where three quarters of all applications are in English but less than 5% of EPO Examiners have English as their first language. Thanks anon for a splendid link. I suggest you now read Steven Pinker on The Better Angels of Our Nature.

      1. 7.1.1

        Thanks for the recommendation.

        From my (admittedly incomplete) cliff’s notes version review, I would say that Steven Pinker is out of touch with reality. While it is ‘noble’ and a bit pollyanna to engage in such wishful thinking, man’s ability to be atrocious to his fellow man is nowhere near where Mr. Pinker would have us be.

        You only have to look at these very threads as a microcosm and see that deceit runs rampant. In the name of an end goal, any means are used. Intellectual honesty is said “not to be needed,” and spin is the order of the day. Denigration and mischaracterizations – while surely not on the order of personal harm, do need to be compared in light of what is possible on the forum. In this modern social media tool, one cannot physically assault another. But one can assault another’s philosophy and viewpoints. When those assaults are carried out without any ethical regards, with facts and views being purposefully misrepresented and law knowingly misapplied, the state of the human spirit is shown to fall far short of where Mr. Pinker hopes for. With this in mind, the tools he envisions for good become the atom bombs of the evil within us all.

        Although philosophically different, this ‘hopefulness’ is cut from the same cloth as Jane Fonda’s hope for communism. By this I mean that when examined in the mind, the ideal of communism would be a wonderful thing. It is just that that thing has no real hope of being applied in the real world because its execution is impossible. Reality intrudes. Human nature is just not that evolved.


          It is often said that innovation is amoral.

          It is only what man does with that innovation that imbues a moral sense.

          Contemplate Einstein and nuclear energy (the bomb). Contemplate the entire genre of science fiction, in which recurrent themes abound that either portray man’s malignant use of innovation, or the more subtle “innovation-is-bad” theme that man cannot control what man may innovate in certain fields (the man should not play God theme).

          Bringing up one particular author’s viewpoint opens up a whole Pandora’s box of viewpoints.

      2. 7.1.2

        Challenge a person’s beliefs, and you challenge his dignity, standing, and power. And when those beliefs are based on nothing but faith, they are chronically fragile

        Do you recognize in this statement of Pinker the position of Malcolm?

        Why do you think that I so often enjoy a dominant position in our debates?

        I have law and I pound that law.

        I have facts and I pound those facts.

        Malcolm only has the table of belief – that his mere ‘opinion’ and ‘policy’ are enough.

        That is why he lives in a world of spin, why he engages as he does and why he refuses to adhere to any sense of intellectual honesty. For him to comply with ethics (treating arguments on blogs as a form of legal advocacy, requiring full compliance with the directive not to be misleading), would mute him far far far more than the number of posts already removed by the blog moderator for being offensive.

        Pinker, like Lincoln, from whom he borrowed the sub-title is not operating in the now, but is operating in the hopefulness of better times, in the hopefulness that reason and intellectual honesty are a given in man’s interactions with his fellow man. I do hope that you see that this hope is the same hope that I have consistently called for on these many threads. But the realist in me seriously doubts that you will let yourself see that. You, who have made no bones about your unwillingness to engage me fully in conversation, you who run at the slightest threat to your views, and who on more than one occasion have attempted a Cry-Baby Veto and whined that you were “under attack” just because your views are (legitimately ) questioned.

        One can always hope for understanding, but must be ready when such is not forthcoming. I am prepared for both.

  1. 6

    Not sure that “bury” conveys exactly the right concept. If you want deliberately to hide a leaf, there’s nowhere that comes within a million miles as effective as in the middle of a forest. No burying required.

  2. 5

    There should be an upper limit on what can be submitted absent a statement that it’s particularly relevant (Was cited in foreign search, Attorney believes paragraph x is relevant to claim 3, etc).

    “Burying” requires malintent but the process is just as corrupted when there’s a ton of references that aren’t thoroughly read.

    1. 5.1

      Random, I would suggest the following:

      Limit references to 10 on filing.

      We have rule today that references of record in a parent are of record in the continuation. Extend that rule to references made of record in foreign prosecution provided 1) that that foreign prosecution claim priority to the US application, and the applicant notifies the office of the filing of such cases.

      I presume office has access to the files of foreign search results?

      1. 5.1.1


        Short of requiring an applicant to engage in examination herself, what earthly reason could you give to place an artificial limit on the number of references that the Office is given in order for the Office to do its job?

    2. 5.2

      Random Examiner,

      Sorry (for you), but the “thoroughly reading” portion of the equation is still your job.

      You are the one paid to examine the application. You get the benefit of the list of extra resources that may (and importantly, may not, as the applicant is not tasked to actually do any examination – See Tafas) help you out.

      Stop whining and get busy doing your Fn job.

  3. 4

    There should be an upper limit on what can be submitted absent a statement that it’s particularly relevant (Was cited in foreign search, Attorney believes paragraph x is relevant to claim 3, etc).

    “Burying” requires malintent but the process is just as corrupted when there’s a ton of references that aren’t thoroughly read.

    1. 4.1

      just as corrupted” lol -says you.

      Wah – it is your side asking for this.

      Deal with it.

    2. 4.2

      Harry Moatz, then director of the OED, wrote publicly that by submitting anything, you’re swearing you’ve read the whole thing…

  4. 3

    “there should be little need to file as much information as before”

    But see Microsoft v. i4i (2011) (“Simply put, if the PTO did not have all material facts before it, its considered judgment may lose significant force. And, concomitantly, the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain.”)

    Submit more = invalidity less.

    1. 3.1

      B-b-b-but wanting a stronger patent with more references submitted is just “corrupt” (per Random Examiner)

    2. 3.2

      Yup. I’ve seen IDS’s with thousands of pages of materials initialed as if they were “considered” in a day.

      1. 3.2.1

        Part of the problem here is that “considered” is not formerly defined, and can include – on equal footing – the examiner’s perusal of a structured EAST search results of thousands of hits, of which the examiner ‘considers’ by running his eye over the length of the list and selecting any particular arbitrary reference in a (completely random) sampling technique – even if that sampling technique selection number is “1” of even “0.”

  5. 2

    Well, courts have to interpret statutes. Marbury, I think, said courts say what the law is.

    All of this statutory interpretation stuff raises a ton of issues about many things, but in the rare case that a court changes its interpretation — not interprets it or makes it clear or clarifies it or applies it to new facts, but changes it — it should be only proactive. I’ve got a fun book on stat law, available at fine bookstores everywhere. (Get the 2d edition.)

    101 makes me barf, so…

    1. 2.1

      all fine and good, but nonetheless, reading a map is not the same as writing a map.

  6. 1

    A couple of thoughts….

    I disagree with “given that the narrower “materiality” standard from Therasense should mean less “junk” is being cited.”

    The future remains far too uncertain and the ability to simply throw everything into a cite is just too easy to stop doing so.

    “Burying” should never ever ever come up. A purely objective manner of listing items should ALWAYS be followed so that no charge of ‘burying’ would be considered. Our policy is to always provide the list of materials in alphabetical order. This was in place before Therasense and we saw no reason whatsoever to change the policy after Therasense.

    1. 1.1

      Fair enough, on your first point, in that I too tell people when in doubt to cite it, but there is less doubt now. And I agree that objective, bland is the best way.

      But, more fun: your question about uncertainty raises up something everyone overlooked, or has overlooked, about whether Therasense, which interpreted a statute, is retroactive. Normally a change in interpretation of a statute is NOT retroactive. (The fiction in the common law is that the “law” was always out there, and the court’s just saying it; so too if a court simply says what a statute has “always” meant; but if it changes its interpretation, the general rule is that the change is only prospective.)

      So, let me have fun: You decide that Therasense is good law and will remain so, so you don’t submit “non-but-for-but-still-material-under-the-old-standard” art. Ten years from now, the Federal Circuit reverses Therasense’s approach and says that the old standard is what the statute means.

      Is your patent enforceable? I’d say it is, since the change should be only prospective.

      So, why isn’t Therasense only prospective? I would love for someone to do this.

      1. 1.1.1

        The entire “prospective-only” thing is a bit odd.

        Either the law always was what it was (and is only now ‘correctly interpreted”) – and thus should apply universally, prospectively and otherwise; or

        The law was NOT always was what it was (the new ‘interpretation’ is in fact a change in the law). While such would be (and should be) considered to be properly applied only prospectively, the fact that patent law by its nature is constitutionally allocated ONLY to the legislature would dictate that any such ‘change’ in law that meets the “OK to be applied only prospectively” requirement also necessarily fails the separation of powers doctrine.

        (and yes, this very much is reflected in the 101 quagmire that Alice brings front and center)


          I don’t disagree with what you wrote, but courts do sometimes say they got it wrong/change. Read Therasense: there is no ambiguity about the fact that they admit they are changing their interpretation.

          In those circumstances, the law’s pretty clear that it should be only prospective. Why? If the legislature had done the same thing, they’d have a hard time making it retroactive (retroactive statutes can create lots of constitutional issues).

          Somewhere I have a short piece I wrote on this fun issue…

          And, yes, it’s tangentially implicated by CLS… Lord knows they won’t confront that fact, though, because I suspect the Supremes would say “this has always been there…” Right.


            But David, the point I am making is (that in at least patent law), the courts SHOULD NOT BE making law – that they do is in violation of the separation of powers doctrine.

            Patent law happens to be one area of law that our constitution expressly designates a specific branch of the government the authority to write law.

            101 is not handled directly because to do so would necessarily reveal that even implicit writing of law is still writing law. Thus, my buzzphrase “how deep the rabbit hole of implicit?”


              I like your middle point — an even stronger reason why the Court should stop this judicial law-making. Maybe it’s unconstitutional for that additional wrinkle!

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