In Larson Mfg, Judge Linn revived the call to rebuild the ramparts protecting patent applicants against charges of inequitable conduct. For some sense of history, I used Westlaw to pull-up the past twenty-five years of Federal Circuit decisions and counted the number of decisions that at least mention “inequitable conduct.” The result is a clear increase in the number of decisions discussing inequitable conduct. Although the absolute number of Federal Circuit patent decisions has also risen somewhat, the growth rate of IC decisions greater.
The graph below shows the number of Federal Circuit decisions that at least mention “inequitable conduct” for each year 1984-2008.
2009 may buck the trend. As of March 19, 2009, only two decisions mentioned inequitable conduct (Larson Mfg., and Rothman). At that rate, we might project only nine or ten decisions for the entire year.
I use the ‘mention’ of inequitable conduct here because the stated ‘plague’ primarily focuses on the allegations of inequitable conduct. The mere allegations of inequitable conduct are certainly harmful to the patentee. However – more than that – they are harmful to the profession and to the patent system as a whole by continually suggesting that patent attorneys and patent agents are facilitating fraudulent activities.
1
I am concerned with your graph and whether it means anything at all. The data points are all over the place. Have you done the quick and dirty stats to look for significance?
I think your ideas are good. IC is definitely increasing and we can all point to several key cases that invite IC allegations. However, unless the graph means something, I wouldn’t use it because it detracts from your credibility.
Doesn’t the fact that an issued patent carries with it a presumption of validity (albeit recently questioned by the Supreme Court) affect this whole inequitable conduct issue? If a patent applicant can obtain a patent while withholding the strongest prior art, and later claim he did not know about such prior art and succeed in defending against an inequitable conduct charge, then he has in effect bought himself the advantage of presumption of validity at a cost to the public. Doesn’t this at least somewhat warrant an easier-to-prove inequitable conduct defense?
Also, regarding number of references: if a patent applicant discloses 100 references in an IDS, why should this throw the Examiner into a tailspin? What is so unfair about making the Exmainer do his job? The examiner is in an art unit in which he supposedly has expertise. And even if he doesn’t, his very working in the art unit for a given number of months or years should expose him to a sufficiently large amount of patents that he should be able to sift the wheat from the chaff.
From this March 19th one page thread:
link to patentlyo.com
Good Day Leo,
By a similar token, if an infringer infringes after a trial that upholds a patent, are you going to let him continue infringing even if the patent owner does not agree to let him continue using the invention?
Posted by: Just an ordinary inventor(TM) | Mar 21, 2009 at 12:58 PM
Hello, just(tm). I’m not sure that’s exactly a similar token. But for what it’s worth, I think an injuction should issue in most cases. That’s how it will be when I ascend to the bench. And even where it doesn’t, the infringement case should be really easy to prove the second time around. And those triple damages ought to be pretty nice.
Posted by: Leopold Bloom | Mar 21, 2009 at 06:36 PM
* * * * *
Good Morning Leo,
Re:
“That’s how it will be when I ascend to the bench.”
For many good reasons, I deeply admire Attorneys who aspire to the bench – and my gut tells me that attorneys who realize their goal would take their Oath of Office to heart.
Re:
“I think an injunction should issue in most cases.”
I agree. And may I add, injunctions need to be limited according to anti-trust Commerce law, when providing for the common defense, and to promote the general Welfare (I’d suggest, limitations regarding general Welfare should be sparingly adjudicated – the key word being “general”).
Hello Leo, and thanks for dissolving my puzzlement. Harking back to Paul Cole’s thoughts though, a trial under US patent law seems to me like a boxing match played out before points-counting judges who are not competent to judge the bout on (classic) points, so decide it on the (much easier for the layman to judge) basis of what the corner men were shouting out to their man in the ring before and during the bout. If we detect any “below the belt” exhortations, we will disqualify your man. It’s all a bit puzzling, to impartial observers from other jurisdictions.
Trouble is, the noble art will continue to be respected only so long as contests are decided, on points, by those competent to be appointed as scorers. If the rational decision for a litigant is to commit 90% of the defence budget to the search for inequitable conduct, and only 10% to searches for grounds of invalidity, it seems to me that you have a 10 lb dog wagging a 90 lb tail.
“Also don’t be surprised if there is a poster or meeting abstract out there disclosing the invention around the same time or before the paper was submitted to the journal.”
Yes, I ALWAYS find enabling prior art disclosures in posters and meeting abstracts.
Hello, just(tm). I’m not sure that’s exactly a similar token. But for what it’s worth, I think an injuction should issue in most cases. That’s how it will be when I ascend to the bench. And even where it doesn’t, the infringement case should be really easy to prove the second time around. And those triple damages ought to be pretty nice.
Good Day Leo,
By a similar token, if an infringer infringes after a trial that upholds a patent, are you going to let him continue infringing even if the patent owner does not agree to let him continue using the invention?
“Now I want to know, Inviting, whether IC can be run, relative to a claim not asserted, with the aim of disabling the narrower (evidently new and not obvious)claim that is being asserted. If so, one would think that the risk of finding one’s good claim unenforceable rises to unacceptable levels, if one knowingly goes to issue with at least one other claim of dubious validity. But, it seems not. I’m puzzled…”
What’s so puzzling, Max? Yes, inequitable conduct with regards to a single claim renders the entire patent unenforceable. Inequitable conduct is related to the doctrine of unclean hands, which is simply the court saying “we’re not going to assist a cheater in enforcing his rights, regardless of whether the claim might be legally valid.” It would puzzle me if the court sad instead, “Yes, you clearly procured claim 1 dishonestly, but it turns out you were entitled to claim 3 – so you win.” And this after you’ve been waving around your presumed valid patent document, signing license agreements, etc.
Not just rambling. Now I want to know, Inviting, whether IC can be run, relative to a claim not asserted, with the aim of disabling the narrower (evidently new and not obvious)claim that is being asserted. If so, one would think that the risk of finding one’s good claim unenforceable rises to unacceptable levels, if one knowingly goes to issue with at least one other claim of dubious validity. But, it seems not. I’m puzzled about the rationality of prosecutors. Shouldn’t they be more careful what they ask for, on behalf of their clients? (Only a puzzled observer from Europe).
Max’s post highlights something important to IC–
INDIVIDUAL CLAIMS are ruled to be invalid, but
ENTIRE PATENTS are ruled unenforceable.
This represents another way to arrive at the “valid but unenforceable” destination.
The more I think about IC, the weaker I find its legal underpinnings.
From 37 CFR 1.56: “The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned.”
The fact that the duty runs with “each” claim (as opposed to “all claims”) suggests that it runs with each claim individually.
Shouldn’t any associated sanction then run with each claim individually?
Just rambling
I’m in cloud cuckoo land, I imagine, but would the IC plague be eradicated by the following measures:
1. The presence of even just one invalid claim is enough to invalidate the patent; and
2. permission to the owner to amend, by excision of the invalid claim, is an equitable discretionary relief.
Would not owners then police themselves? Would not then the number of dubious broad claims rapidly go down to vanishingly small levels. And, where’s the harm? Patent owners with clean hands would not suffer.
Leopold–
Alas, I have no such example to give. Anybody else?
But I believe that such a piece of art would be within the IC scope of inquiry.
One possible reason for the sanction being unenforceability rather than invalidity could be to capture just this case–where the patent would still otherwise be valid.
Paul and Dennis–
What might be interesting to find out is:
1) in how many cases both invalidity and IC are raised as defenses,
2) in how many of the cases in (1) the court invalidates, without reaching the IC inquiry,
3) in how many of the cases in (1) the court both invalidates and rules unenforceability
4) in how many of the cases in (1) the court rules unenforceability after a finding of validity,
5) who was awarded what costs,
etc..
This might be a way to test Paul’s idea–invalid AND unenforceable, and a way to get other data–valid but unenforceable.
“You may not be done yet. The list of authors on a paper is not the same as the inventive entity on a patent. If the publication isn’t a 102(b), then perhaps you’ve simply found the inventors own work. Yes, it is appropriate to make the rejection, but don’t be surprised if you end up allowing the case.”
Also don’t be surprised if there is a poster or meeting abstract out there disclosing the invention around the same time or before the paper was submitted to the journal.
With reference to the post from Inviting body punches, when I started looking into inequitable conduct I rapidly came to the same conclusion – it is often a back-door way of a court awarding costs where the allegation is of infringement of a clearly invalid patent which should never have been litigated in a system where costs are not normally awarded.
“Consider art that could be used in a Markman hearing that could inform the spec to limit claim scope. Maybe a precise definition of a term, value, or concept as used in the spec, where the spec, read in the absence of the prior art and combined with the POSITA’s knowledge, gave a definition sufficient to satisfy 112 requirements, but not as precisely as the prior art could.”
inviting, that’s an interesting thought, but the duty to disclose extends only to information related to patentability, right? Can you give an example of an IC finding where the material art was useful only as extrinsic evidence in claim construction?
When I look at this graph I see an upward trend, but what is not here is something to bring it into context. I think to properly present this data it really should be a graph of “number of decisions per 1000 applications” or something similar on the vertical axis. When the number of patents attorneys increases and the number of patents filed increases you would expect an increase in the inequitable conduct but you cannot determine if the data is doe snto have some sort of context.
TJ–
TJ: “The only point of IC doctrine is to invalidate patents that are otherwise valid”
I think your analysis misses this subtlety: not all art that could lead to IC is necessarily invalidating.
Consider art that could be used in a Markman hearing that could inform the spec to limit claim scope. Maybe a precise definition of a term, value, or concept as used in the spec, where the spec, read in the absence of the prior art and combined with the POSITA’s knowledge, gave a definition sufficient to satisfy 112 requirements, but not as precisely as the prior art could.
Not necessarily invalidating, but very important.
I do believe that there is an important public policy issue at work, and that “invalidating otherwise valid patents” is certainly not the only point of IC doctrine.
“The inventive entity is one person different”
You may not be done yet. The list of authors on a paper is not the same as the inventive entity on a patent. If the publication isn’t a 102(b), then perhaps you’ve simply found the inventors own work. Yes, it is appropriate to make the rejection, but don’t be surprised if you end up allowing the case.
Paul–
That is certainly an important point, but hardly the only one.
Once somebody has a valid and enforceable patent, they can occasion a defendant to incur huge costs in defending a charge of infringement–discovery, etc.. Sure, a defendant can, at their own expense, search for and maybe find the “invalidating” art–but even if it is later proved that patentee was in possession of prior art before grant, costs will be difficult to recover.
Defending such a suit is economically wasteful and a poor use of both public and private resources.
The important point is whether the patent is valid or invalid having regard to the cited art. Investigation of the patentee’s conduct in supplying or failure to supply references is an exercise in navel-gazing whose attractiveness to the US profession is inexplicable to those of us who practice before the EPO which manages perfectly well without all this nonsense (and incidentally in oral proceedings reaches its decision on the day of the hearing, to the astonishment of many visiting US practitioners).
UK law used to have similar provisions regarding amendment of a partially valid patent. Their effect was to add at least 33% and perhaps as much as 50% to litgation cost. Nice business if you are a litigation lawyer. But if you are a patentee or prosecution attorney interested in the efficient working of the system and enforceability of patents even for SMEs, an utter disaster.
Has anyone looked to see how much USPTO time is wasted by the resulting flood of marginal references that attorneys are forced to supply and that examiners cannot possibly have time to read, especially in the chemical, pharmaceutical and biotech arts where more references get cited? On a cost-benefit analysis the case for abolition of the requirement is surely overwhelming. If the patent is invalid over new art, or if the patent was obtained on representations that are untrue, why not plead that straightforwardly and if the facts are proved hold the patent invalid without all this subjective investigation? Is this not something for the new Commissioner to investigate in the hope of decongesting the USPTO and returning it to the quick and world-leading Office that we all knew and respected?
Let me give you a smoking gun.
Applicant first rejected 102b over his own publication (which he did not disclose), he amends a dep up to make it a 103, gets finalled. Turns around, has an interview to figure out how to get around his own work, I tell him, and send him a copy of how to do it. He does half of what I say, gets 103’d. Complies, I go to allow the case, get permission, but that all too familiar bug bits me. I go to the NPL, backwards citation. Literally 1 minute later, bada bam bada bing, paper disclosing in minute detail the exact same invention all throughout the spec in slightly different words (so that a google didn’t hit it long ago) with the exact same figures showing the exact same method and product. Oh, but what’s this? The inventive entity is one person different and the pub date beats his prov. O O Ooooo ne o 2 a.
So, at first I’m like, oh, I feel bad for the guy 102ing himself. Then I’m like ok man, get down to biz n get around your own 102b. Finally I’m like alright, this guy is ready to get his patent. OH BUT WAIT! He still hasn’t told me everything!
Btch at me all you like for not having found one NPL out of the eleventy million out there (that wasn’t published in one of the “big” journals) the first 3 go arounds, but COME ON IT IS SITTING ON HIS SHELF. This guy COULD be stupd enough to not know when he 103a’d himself, but surely he would tell the attorney that he published the work and the attorney should know. You’re trying to tell me there is no intent here? I should mention this particular guy is at a Harvard league school and looks VERY established I doubt this is his first run through the patent game or 102a.
I have 0 pity for a person who does something like the above being accused of IC.
0.
Mooney also reads the prior art on claims and gives validity opinions…
“smoking guns are encountered in every other prosecution history I’m asked to opine on.”
RFLMAO
Did this include your usual sniff test?
Note to self: NEVER ask Mooney to “opine” on a prosecution history.
Malcolm, your position on this subject has an inherent tension (as does your opponents, in fairness) that lies in IC doctrine.
If the IC doctrine only applies to patents that are otherwise invalid, then IC doctrine is pointless. Once we find out about the withheld reference in litigation, we just invalidate the patent on substantive grounds of invalidity. IC becomes completely redundant.
The only point of IC doctrine is to invalidate patents that are otherwise valid; in order to deter withholding references to the PTO in cases where the patent is invalid. Now, this punitive effect is necessary to deter the withhold-I-get-patent-disclose-I-don’t calculus that otherwise would obtain, but you can’t defend inequitable conduct by saying that few valid patents get struck down by it. If no valid patents get struck down by IC, then IC has no deterrence effect.
Malcolm,
I understood your answer.
Qualifiers are the way to go.
Publius: “Well? Answer the question.”
Malcolm Mooney: “I did.”
No, you didn’t. The question calls for a yes or no answer.
Yes or no. And then you can add all the rest of the qualifying BS if you must.
“Well? Answer the question.”
I did.
“Or just maybe you don’t have the guts to be so definite in your opinions.”
No, it’s not about guts. It’s about the fact that, contrary to the impression given by certain whining parties and Judges, it’s more difficult to prove inequitable conduct than, e.g., obviousness. Moreover, in the context of drafting an opinion relating to inequitable conduct, one typically doesn’t possess the sort of “slam dunk,” publicly available evidence that one has when opining on obviousness or anticipation. I believe I did use the phrase “smoking gun”? Yes, I did.
JohnDarling: “Serious question for you: have you ever given a client a written opinion that a patent would be unenforceable for inequitable conduct?”
Malcolm Mooney: “Would be? More like “could be” or “should be”, with all the usual disclaimers.”
Well? Answer the question. Of course, with “all the usual disclaimers” as you say.
Or maybe you have never actually rendered an opinion in writing? Or just maybe you don’t have the guts to be so definite in your opinions.
JohnDarling: “Serious question for you: have you ever given a client a written opinion that a patent would be unenforceable for inequitable conduct?”
Would be? More like “could be” or “should be”, with all the usual disclaimers.
Court Report: 2,875 patent lawsuits were terminated in the year ending Sept 30, 2008. Of those, only 3.8% (109) reached trial. – From another thread.
Does this mean that the approximately 44 cases for 2008 are from a population of 109 that reached trial?
“…this is essentially the present state of the law and accounts for the indisputable fact that findings of inequitable conduct are exceedingly rare in spite of the fact that smoking guns are encountered in every other prosecution history I’m asked to opine on.”
Malcolm,
Serious question for you: have you ever given a client a written opinion that a patent would be unenforceable for inequitable conduct?
“Malcolm, give us some general examples of those “smoking guns”.”
Sure. How about the addition late in prosecution of dependent claims in a CIP of a CIP with zero support in the priority document accompanied by a bare unsupported statement that the claims are supported by “the original specification”? Said statement made after the same attorney had been handling the prosecution for years and knew that the earliest priority date was essential for the independent claim to be valid.
Or how about the filing of declarations that implicitly assume a narrower definition of a key claim term versus the broad definition plainly set forth in the specification, but make no reference to the broad definition (but do swear to familiarity with the patent)?
Or how about characterizing the teaching of a composition in a reference as “having nothing to do” with the claim at issue when in fact the reference teaches a composition that has 7 out of 8 identical components to the claimed composition?
These are not trivial patents by the way. These patents were prosecuted to be golden from the beginning and they earned a great deal of money for the owners.
As a defendant, why wouldn’t I want to take discovery of the people involved in putting such misrepresentations before the US government? The typical excuse given by those who are prone to giving such excuses is that such behavior is “just” “zealous advocacy” and “the Examiner saw it so there can be no intent to deceive.” That excuse is merely another convenient lie on behalf of the patent bar.
Witness the elites in our society right now pretending that “nobody could have predicted” what the bankers and financiers were doing to our economy while they lined their pockets. Patents (unfortunately) became instruments for a similarly compromised, if somewhat less endowed, group of well-heeled manipulators (see, e.g., recent quote re “Filing a patent application was a way to achieve fame and fortune off the Inernet.”)
It’s still impossible to believe Rader’s expression last year that a scientist wouldn’t put his reputation on the line to achieve a patent, therefore inequitable conduct allegations are rude or overblown. Again: on what planet? When it became possible to leverage a mere patent *application* into serious venture capital bucks, with the possibility of a jackpot should the application manage to land in front of a deeply or easily confused Examiner, then all expectations of full disclosure should vanish. The expectation is simply that people will file more and more applications with increasingly ridiculous claims in hopes of creating an impressive portfolio to lure more suckers to the table. And that’s exactly what happened. The glorious results are just beginning to reach the Federal Circuit.
Malcolm, give us some general examples of those “smoking guns”.
“The mere allegations of inequitable conduct … are harmful to the profession and to the patent system as a whole by continually suggesting that patent attorneys and patent agents are facilitating fraudulent activities.”
I fully agree.
Dennis, has the number of Federal Circuit patent decisions increased over time? Is the graph adjusted for that?
“Your “rational motivation” argument doesn’t hold water unless you also completely ignore the “motivation” of avoiding getting slapped with a malpractice suit for deliberately ignoring art that you know should be cited.”
Can you tell me how to get to your planet where nobody ever breaks any laws because everybody knows that they are going to caught immediately and punished severely?
It sounds like an awesome place. I bet patent prosecutors on your planet are treated like gods because they set such awesome examples of righteous behavior.
“without proof of intent, there should be no IE”
Again, chicken little and handwaving arguments notwithstanding, this is essentially the present state of the law and accounts for the indisputable fact that findings of inequitable conduct are exceedingly rare in spite of the fact that smoking guns are encountered in every other prosecution history I’m asked to opine on.
MM,
Your “rational motivation” argument doesn’t hold water unless you also completely ignore the “motivation” of avoiding getting slapped with a malpractice suit for deliberately ignoring art that you know should be cited.
Furthermore, it seems much more likely that if a reference was omitted, this omission was inadvertant (especially if you have multiple citations from multiple sources – divisionals, foreign actions that are being cited at the same time – or the attorney is merely reviewing the work of an assistant). Negligence, however, does not rise to the level of IE. This is one of Lynn’s points: because IE has dramatic consequences, the barrier to successful assertion should be relatively high – without proof of intent, there should be no IE.
TJen: “I doubt it.”
Do you doubt that human beings regularly buy goods that they suspect might be stolen? I hope not. That would be incredibly naive.
“clients want valid patents, not invalid patents.”
All patents are presumed valid. All patents are presumed valid. All patents are presumed valid. All patents are presumed valid. All patents are presumed valid.
While the value of a patent that might be invalid can be debated, there is no debate about the value of a claim that the PTO has indicated that it will not grant.
All the “rational motivation” that anybody needs to misrepresent or hide information to or from the PTO is present in this comment.
“Result: instead of idsing stuff we know is relevant, and providing the examiner with useful comments on the content of the docs, we ids EVERYTHING without checking it. Examiners get deluged with tons of irrelevant stuff, most of which they don’t look at.”
I really hope the CAFC *does* come out with better guidelines for IC. I haven’t gone to submitting “everything” but I am starting to think perhaps I should. I can submit stuff by PDF now, so perhaps I need to submit the file history of every vaguely related patent I have ever pursued. Perhaps I should ask inventors for all references they know of instead of relevant ones. Perhaps I need to submit everything on all my previous IDS’s in the same field. Any of that stuff *might* be relevant.
“First of all, there can be no doubt that at this moment, somewhere, a patent attorney or agent is intentionally withholding information from the USPTO that is material to claims. Why are they doing this? Because the client/employer wants the patent.”
I doubt it. I suppose it happens sometimes, but there really isn’t a rational motivation for withholding a reference. Leaving aside ethical requirements, clients want valid patents, not invalid patents.
The surprise to me in this Larson Mfg. “storm door patent storm” was that athis CAFC panel held that NO material [merely cumulative] REFERENCES had been witheld in the reexamination, yet held that two uncited OFFICE ACTIONS from a related application MIGHT be material, and required re-trying the issue.
If the issue is genuinely inconsistent and material statements by the same attorney or client as to the same art and claim elements, that is one thing, but I hope we have not reached a point that some judges actually think that what an examiner says about a reference is more important than what the reference actually teaches?
But Democrat, are the fears of the uncommunicative delugers well-founded? In other words, if I’m not (yet) a deluger, should I be morphing into one. Up to now, I have put my faith in the judges, to recognise honesty when they see it. Also, I have assumed that IC will be run at my client, just as vigorously, no matter how much volume I deluge.
So, I naturally suspect the delugers of latching on to the “deluge” IC standard, as one more way to milk the client. Is my suspicion unfounded?
All these (presumably) smart people (guess that comment doesn’t apply to Mooney) and so many missing the boat. Go back to basic law and economics: you want to set up the rule to encourage the optimal amount of behavior. You don’t want to create a situation in which people are either careless (e.g. drivers don’t bother to look for pedestrians) or in which they’re inhibited from acting (drivers don’t want to drive b/c there’s strict liability if they hit a pedestrian).
With IDSing, we want applicants and attorneys to be honest and operate in good faith. But current i.c. doctrine is overkill – as mentioned above and in the thread on the previous post, the remedy (unenforcability/invalidity) is way too severe in all but the most egregious cases (i.e. too severe except in those cases of outright fraud). Out of fear of i.c., patent prosecution attorneys want to IDS everything, even those docs they think are of marginal relevance, for fear of being accused of having concealed if they don’t. But they don’t want to say anything about the contents of those docs, lest they be accused of having mis-characterized the docs and thus having mis-leading the examiner, another no-no. Result: instead of idsing stuff we know is relevant, and providing the examiner with useful comments on the content of the docs, we ids EVERYTHING without checking it. Examiners get deluged with tons of irrelevant stuff, most of which they don’t look at. This is not the efficient way to be doing things. When all is said and done, I want my client to get the patent he deserves, no more and no less. Current i.c. jurispridence hinders rather than furthers that goal.
“Mooney”–
The necessary implication from your post is that you do know “How many otherwise valid patents were held unenforceable for inequitable conduct in the last five years”.
How many is it?
And why restrict the inquiry to just the last 5 years?
From the perspective of an applicant who can be denied the benefits of a patent, notwithstanding his/her reasonable good faith efforts to comply with 37 CFR 1.56 by hiring a registered patent attorney, even one such case is too much.
This provision smells unlawful, either constitutionally or under fairness/natural justice, APA, etc..
IBP “Sure, a malpractice action may lie against the attorney, but wouldn’t it be far better for the applicant to get the patent instead of the malpractice damages?”
Again, you seem to be assuming some significant problem that doesn’t actually exist. How many otherwise valid patents were held unenforceable for inequitable conduct in the last five years?
“Mooney”–
First, the sanction for the breach of duty of good faith and candor in 37 CFR 1.56 reads:
“However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.”
This sanction has been extended, sort of, to granted, valid patents through the current “IC” system.
The term “inequitable” is misleading and unhelpful–it should be “unlawful” conduct, pursuant to 37 CFR 1.56–or have there been any IC findings for any acts/omissions outside the purview of 1.56?
I still don’t see how it can be fair to visit the sins of the attorney on an applicant who has done their best to ensure that the attorney has the PTO’s seal of approval as a practitioner.
Sure, a malpractice action may lie against the attorney, but wouldn’t it be far better for the applicant to get the patent instead of the malpractice damages?
“Okay, this strikes me as incredibly silly.”
MM,
The only thing “silly” is your continued oxymoronic statements that show no deepth of thought, comprehension of reality, or understanding of the subject. In short, you’re once again showing your cluelessness. And refrain from “clogging up” this blogosphere.
I incorrectly referred to “a gradual 15% increase in inequitable conduct pleadings over the past 25 years.” Should be “a gradual doubling”!
Still, only a minor fraction of the total number of cases.
What would that graph look like if the “outlier” at 2008 were omitted?
link to abajournal.com
A federal judge has held that an Abbott Laboratories patent is unenforceable because of the “inequitable conduct” of an in-house lawyer.
Attorney Lawrence Pope withheld important information when applying for the so-called ‘551 patent, the judge found, concerning a position Abbott had previously taken on the so-called ‘381 patent, reports the Recorder. Applications for the ‘551 patent had previously been rejected more than a dozen times by the U.S. Patent and Trademark Office, citing the ‘382 patent.
Although Pope testified that he didn’t intend to conceal any material information when making the patent application, Judge William Alsup of the Northern District of California described him as unconvincing witness in a written opinion in the case, the legal publication recounts.
“The withheld evidence here was richly material,” Alsup writes in the 54-page opinion. “And, intent to deceive, not just to withhold, was clearly in the mind of attorney Pope, hard as it is to so conclude as to a professional.”
Pope, who is now counsel at Mayer Brown in Chicago, declined to comment, referring the Recorder to Illinois-based Abbott. A company representative did not respond to its requests for comment.
—————————-
Anyone who’s ever practiced before Judge Alsup will tell you he does not reach such decisions lightly.
The law of inequitable conduct *works*. There is no “problem” although it might certainly seem like a problem to a patentee who is taking a precarious, overly nuanced position with respect to the prior art. But that patentee’s REAL problem is with the art (or its claims), not with inequitable conduct jurisprudence.
Dennis: “The mere allegations of inequitable conduct are certainly harmful to the patentee. However – more than that – they are harmful to the profession and to the patent system as a whole by continually suggesting that patent attorneys and patent agents are facilitating fraudulent activities.”
Okay, this strikes me as incredibly silly.
First of all, there can be no doubt that at this moment, somewhere, a patent attorney or agent is intentionally withholding information from the USPTO that is material to claims. Why are they doing this? Because the client/employer wants the patent.
Likewise, a doctor somewhere is operating on a patient while drunk and a dentist is feeling up his patient. These things happen. We want to encourage people to expose all nonsense of this sort.
Second of all, I have no idea how one would measure any harm done to the “the profession” or “the system” by inequitable conduct pleadings. I can tell you this, however: the harm done to “the profession” or “the system” by trolls like Fergusen et al. and other infamous entities is far, far, far worse than a gradual 15% increase in inequitable conduct pleadings over the past 25 years.
Here’s a re-post of my response to Max in the previous thread, asking me if I believe IC has any place.
I do believe that IC should always be able to be addressed, but only according to the principles of equity–akin to the equitable remedy of an injunction being adjudged according to the appropriate equitable princples.
Equity is all about fairness, and I think it manifestly unfair that an otherwise valid patent can be held unenforceable with any finding of IC under the current confused regime.
As I understand it, IC as currently conceptualized is a defense to an allegation of patent infringement. A litigant effectively steps into the shoes of society and makes the charge in the first instance.
I think that is wrong. If current law allows, IC allegations should require separate proceedings. Conduct should be brought to the attention of the PTO, investigated by the PTO, and charges brought by the PTO in an appropriate forum.
Also, EQUITY IS A TWO-WAY STREET: 3 of the “maxims of equity” are: 1) one who seeks equity must do equity, 2)one who comes into equity must come with clean hands, and 3) between equal equities the law will prevail.
Since the PTO acts as the “people’s representative” in such a matter, they would have a burden to demonstrate the equitability of their own conduct–no ridiculous OA’s, no new ground of rejection in final OA before ground of rejection in non-final OA is resolved, no action illegal on its face, no official notice without substantial evidence, the list goes on and on.
Some suggestions for various outcomes:
If IC found, and solely the doing of the practitioner, appropriate disciplinary action should be taken.
If IC found, and solely the doing of the patentee, 2 outcomes–1) patent is still valid–should still be enforceable after PTO levies a fine against the patentee, on behalf of the public; 2) patent is invalid–speaks for itself, and PTO could levy a fine to recover costs associated with the conduct, plus maybe something punitive.
If patentee and attorney in active collusion, both of the above.
If patentee actively inequitable and attorney negligent, both of the above, with lower discipline against attorney.
If patentee negligently inequitable and attorney either negligent or actively inequitable, no fine against patentee, appropriate sanctions against attorney, and private action by patentee against attorney if patent rights disappear or are lessened as a result.
Please be kind.
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