Did Therasense bury burying?

Ethics

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.

 

An Update on Therasense and Exergen

Ethics

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.

Biosimilars Ethics?

Ethics

All:

I’m giving a talk in a month on ethical issues in biosimilars/biologics.  I’ve spotted a number of ethical issues relating to best mode (sort of old news), the weird prosecution bar statute that the BPCIA has, and a few other things. But, anyone got any other things they’ve run into/thought about?  I know I’m asking if you’ve found a needle in a haystack, but…

Much appreciated.

The Order Dismissing for Lack of Subject Matter Jurisdiction the Texas Conflicts Case

Ethics

I stumbled across this order dismissing, for lack of subject matter jurisdiction, the claim against Baker Botts, which is now being tried in Texas state court.  (Hat tip to the ND Tex. blog.)   The judge, I think correctly, held that there was no subject matter jurisdiction over a conflict of interest claim arising during patent prosecution.  It is interesting because it gives some more detail about the alleged wrong-doing.

There’s an unaddressed choice of law issue lurking here, which, I assume, the parties have since addressed!  (Most courts and ethical rules recognize that a lawyer should be subject to one set of rules at a particular time; usually, if a matter is before a tribunal, the tribunal’s rules apply.)

Penn State’s Auction Fail

Ethics

Not sure how much to read into one anecdote, but Penn State tried to put constraints on who could purchase its patents.  Sale didn’t go well, as reported here.

On a professor listserv I’m on they’re reading a lot into it. I’m not sure that, without a whole lot of analysis, you could really conclude anything…

Expanded Disclosure Obligations for Inequitable Conduct Due to USPTO Rules?

Ethics

This is interesting.  The new USPTO Rules permit (but do not require) a lawyer to disclose confidences to the PTO “to prevent, mitigate or rectify substantial injury to the financial interests or property of another that is reasonably certain to result or has resulted from the client’s commission of a crime, fraud, or inequitable conduct before the Office in furtherance of which the client has used the lawyer’s services.”  37 C.F.R. 11.106(b)(3).  (Subsection (c) of that rule imposes a mandatory obligation to disclose when needed to comply with inequitable conduct law.)

So, suppose after issuance Client tells you he had engaged in acts that, had the PTO known, would have barred the claim.  Result?

Octane is Out

Ethics

The opinion is here, unanimous except Justice Scalia didn’t join three footnotes where the court relied upon legislative history and subsequent interpretations.  As predicted, it’s a totality of the circumstances test.  My post below pretty much nailed it, and, happily, they quoted Chief Judge Rader’s concurring opinion saying that the text mattered… hopefully the court will do the same thing with 101!  Ha.

 

The key passage:

District courts may determine whether a case is “exceptional” in the case-by-case exercise of their discretion,considering the totality of the circumstances. As in the comparable context of the Copyright Act, “‘[t]here is no precise rule or formula for making these determinations,’but instead equitable discretion should be exercised ‘in light of the considerations we have identified.’” Fogerty v. Fantasy, Inc., 510 U. S. 517, 534 (1994).

The related case, Highmark, held that review is for abuse of discretion, not de novo.  None of this is surprising.

ABA: Lawyers Can Look at Jurors’ Facebook Pages, But Not Try to Friend Them.

Ethics

ABA Opinion 466 is out.  It describes some social media features that I’m unaware of (maybe dating sites?) where the poster gets notice if someone views their page.  The opinion states that a lawyer can’t send a friend request or other communication needed to view non-public info and makes clear the lawyer has to report wrong-doing just like the real world.  Sort of an awkwardly worded opinion in some respects….

Naming Yourself as an Inventor

Ethics

Following up to comments and requests below…  I wrote an article about this a while ago, which you can find here (save a little room).  In addition, the case law and analysis is also updated and dealt with in our book on prosecution ethics).  Finally, then-Director Moatz’s paper is here (MoatzPTO Day), where he talks about it.  There is at least one subsequent disciplinary case, too, that I recall, but couldn’t find.

Here are two OED cases related to this issue:

 

http://e-foia.uspto.gov/Foia/ReterivePdf?system=OED&flNm=0697_DIS_2012-02-08

http://e-foia.uspto.gov/Foia/ReterivePdf?system=OED&flNm=0065_DIS_2004-10-20

 

And some more:

 

In re Watkins, (Dir. U.S. Pat. & Trademark Off. Proc. No. D06-04 June 18, 2008); Va. State B. v. Lynt, in the Circuit Court for the City of Alexandria, Va. (Chancery No. CH04001593, Sept. 15, 2004), related proceeding, In re Lynt (Dir. U.S. Pat. & Trademark Off. Proc. No. D05-05 undated).

CAFC Affirms Adverse Inference Instruction Due to Spoliation

Ethics

In Sanofi-Aventis Deutschland GMBH v. Abbott GMBH & Co., KG, (PN (auth); RL; EW), the court among other things affirmed a district court providing a permissive adverse inference instruction to the jury which allowed it to infer that email destroyed after litigation had reasonably been anticipated would have been unfavorable to the party destroying it.  Judge Newman and the panel held the district court had not abused its discretion in providing the permissive instruction in part because the evidence showed that (a) email had been used during the relevant period to communicate about the dispute; (b) litigation was anticipated at the time the emails were created; but (c) they were destroyed.

The case to me highlights the constant tension between claiming work product, which protects against disclosure of documents, and document retention, which must kick in at the same time.  Firms who have “teams” divided up may not appreciate the connection enough, and one team may fight for an early date to assert work product, not realizing that it thus implicates spoliation.  Not saying that’s what happened here, but I’ve seen that in practice…

Dicta about lawyers never being inventors on their clients’ applications

Ethics

Dennis has blogged about the Stoneeagle Serv., Inc. v.  Gillman decision  more fully on the main page, but I wanted to drill down on the passage a bit, as I think it’s a little too simplistic (all due respect to my former boss, Chief Judge Rader!).  Here is the observation:

This court has stated that assistance in reducing an invention to practice generally does not contribute to inventorship. E.g., Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460, 1465 (Fed. Cir. 1998). In this case, the most favorable inference from the record in favor of StoneEagle shows only that Gillman assisted in construc- tively reducing an invention to practice. See Solvay S.A. v. Honeywell Int’l, Inc., 622 F.3d 1367, 1376 (Fed. Cir. 2010). Those activities confer no more rights of inventor- ship than activities in furtherance of an actual reduction to practice. Otherwise, patent attorneys and patent agents would be co-inventors on nearly every patent. Of course, this proposition cannot be correct.

I agree that writing down an already-conceived invention does not make one an inventor, but I also know that sometimes patent agents and practitioners do far more than just that, sometimes in fact conceiving of patentable subject matter.  I wrote an article about whether and if so when a practitioner must name himself as an inventor (and if so, what he has to do) a while back, called “Save a Little Room for Me.”  If you want a copy email me at Mercer — I have it somewhere but couldn’t find it just now.

 

Over on the main page…

Ethics

They’re having a, um, heated discussion about whether academics, particularly Mark Lemley, is qualified to talk about patent law and policy.

My own view is that I think teaching doesn’t qualify you to do what your subject matter relates to.  I would never hire a professor to draft a patent simply because he’s taught patent law for years (even if he were registered).  I’d never hire a professor to represent me in a personal injury case simply because he’s taught torts.  I’d hire an experienced patent prosecutor and PI attorney, respectively, to do those things.

But the sniping over there on the main page seems to suggest that by teaching patent law or teaching torts, one does not gain knowledge and insight to the subject matter.  There, I have to disagree, and strongly.  I’ll give a personal example to explain why.  As a lawyer (litigated complex commercial litigation, etc., for 15 years before starting to teach 11 years ago) I knew about federal subject matter jurisdiction, and for example dealt with far too many efforts by plaintiffs to fraudulently join defendants, etc.  I was “good” at procedure.

But I have no doubt that, in the twelve years of teaching that subject (and writing a book on it; you should buy Mastering Civil Procedure or recommend it to law students everywhere so I can retire!), I’ve learned far more about procedure than I would have as a lawyer in that same time.  I get hired sometimes in cases to simply fix procedural problems, which confirms my belief.

I think I know more about civil procedure than the vast majority of lawyers with 25 years of experience, in other words.  To say that one only learns about procedure by doing it, in other words, is way wide of the mark.

It also in my view shows that the criticisms of Mark are also off the mark.  I honestly don’t read even half of what he writes (sorry, Mark), but to say that because he is not registered to file an application means he can’t write about and have a valued opinion about patent law is silly.

Finally, I think it is beyond absurd to suggest — as Mr. Wegner does — that clerking at the CAFC makes you qualified to teach patent law.  That in my opinion simply doesn’t jibe with my own actual experience there last year, clerking for Chief.

Anyhow, a Thursday afternoon rant over. I’m going to get a beer and some wings with a fellow Arizona Wildcat alum.  We’ll talk about “next year,” like UA fans always do.

The PTO’s Role (none) in Defining the Elements of Unenforceability.

Ethics,

In a comment below, someone asserted that the PTO has tried to define the elements of inequitable conduct.  I wrote an article about this issue, with my (now fellow lawyer) Seth Trimble.  It is here (I hope already available).  Here’s the intro:

 

In 1992, the patent office amended a federal regulation known as Rule 1.56.[1] The amendment require less disclosure of patent applicants than had been required by the federal courts’ interpretation of the prior version of Rule 1.56, as well as less than had been required by courts in determining enforceability of a patent.  Thus, since 1992, the PTO has required less disclosure under Rule 1.56 than courts have long required to obtain an enforceable patent. This article addresses the tremendous and unnecessary confusion that has arisen from that amendment.

Although our analysis turns on principles of statutory construction and separation of powers, the impact of our conclusion is practical and important.  Those who prosecute applications need to disclose more broadly than is required by Rule 1.56 to best serve their clients. Those who litigate inequitable conduct claims should not rely on the narrow definition of materiality in Rule 1.56.  The two definitions of “materiality” are distinct: one applies during patent examination, and the other during litigation.   A change in the meaning of one does not mandate a change in the other and, most pertinent here, a regulatory change by the PTO cannot mandate a change in the substantive standard applied to determine enforceability.


[1]     37 C.F.R. 1.56.