An Update on Therasense and Exergen

Just sharing a casual observation, not empirical research. I’m plowing my way through a four-inch stack of cases decided since Therasense that cite both it and Exergen.  The intended effect of both was to reduce inequitable conduct claims.  No idea if they did that, or not, but of the cases where inequitable conduct was raised, so far in maybe 25% of the cases the defense is sticking, at least past the pleading stage.

So, despite the more difficult substantive barriers in Therasense, and the much higher pleading requirements of Exergen, folks are stating claims.  Of course, whether they’ll prove them, or whether the CAFC will affirm them, remains to be seen.

One more small data point.  I’m about to read, closely, the cases that past muster, and if there’s anything to learn, I’ll share it.

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 “An Update on Therasense and Exergen

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    Of course defendants are still stating claims. Inequitable conduct didn’t go away simple because the Federal Circut “raised the standard.”

    Many attorneys and their clients continue to lie to the UPSTO in order to obtain patents. And they’ll never stop doing that as long as the huge rewards and the low risk of getting caught or seriously punished make it worthwhile to engage in that behavior.

    1. 2.1

      Malcolm, I think the real problem is that there is very little risk to the patent attorney for stretching the truth, making inconsistent arguments, or filing misleading affidavits such as apparently occurred in the Nautilus case currently on appeal to the Supreme Court. The sanctions around the client in the form of holding his patent unenforceable, but there is essentially no ability for the client to sue the patent attorney for malpractice, in the patent office systematically does not disbar attorneys for playing loose and fast with the truth.

      There is no real downside for the patent attorney to skate as close to the edge as possible at all times. So what do you expect — that the prosecution bar behave differently from litigation attorneys who have their opponents to make the point that the argument or evidence is misleading?

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        I wonder why the irony escape you Ned of just who it is that you are talking with.

        Must be because that swagger more often than less aligns with your agenda (in the “6 is a legal genius” manner).

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      Malcolm’c comment says more about him than I think that he is aware of.

      Gee, I wonder why he does not see a problem with intellectual dishonesty because “this is just a blog and not a court,” and why he seems to disappear when I note that this is a form of advocacy with the modern tool of social media, and that ethics (like intellectual honesty) are very much required.

  2. 1

    I still wish the PTO would repeal 1.56, and limit the number of references that one may disclose all time to 10. Foreign prosecution can be accommodate by simply listing the foreign application numbers. The examiner should be able to electronically access such cases at will and see what was cited, and why.

    1. 1.1

      Same question as to the arbitrariness of “10” as on the other thread, Ned…

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