Over on the main page, Dennis has mentioned the Regeneron cert petition. The CAFC found a patent unenforceable because of a sanction for litigation misconduct.

Maybe, but what I find troubling about the case is that the Federal Circuit’s opinion — which is literally in many respects a cut-and-paste job of the district court’s opinion — makes factual statements about specific lawyers and their intent.  But, as part of the sanction for litigation misconduct, the trial court precluded those lawyers from testifying about why they had not disclosed certain information to the USPTO.

Think about that.

There is a published opinion stating a lawyer had bad intent, knew certain things, etc., when the trial court denied them the right to testify because lawyers — who did not represent them — did bad things years after they had prosecuted the applications to issuance.

Regeneron is a horrible opinion. I don’t know if the result is correct, or not, but I do know that the opinion makes false statements of fact about real people that will have real consequences for their careers.

And the consequences for prosecution attorneys are enormous:  if you are deposed in a case, you may need your own lawyer. You may need to make clear that you do not agree with any claim interpretation put forward by either party. You may need to condemn the patentee’s trial lawyers if asked about misconduct or make it clear that you have no control over them.

Horrible decision with grave consequences if left unchecked.

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.

2 thoughts on “Regeneron

  1. 2

    Or, Mr. Ram, to decide whether to waive privilege which would allow lawyer to protect himself. What horrific case.

  2. 1

    I agree. To often the attorney who prosecuted the patent may not be involved in the subsequent litigation. If that attorney is deposed he/she is deposed as a fact witness and does not, cannot or is prevent from providing opinion regarding the facts at issue and does not have the opportunity to address litigation counsel legal premises for claim meaning or scope of claims.

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