Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011) (en banc)
File Attachment: TherasenseFromPatentlyo.pdf (285 KB)
In a 6–1–4 decision, an en banc Federal Circuit has attempted to cure the “plague” of inequitable conduct pleadings by raising the standards for proving that the alleged bad act was material to patentability and that the patentee undertook the alleged bad act with intent to deceive the USPTO. The court has also rejected the sliding scale approach that previously allowed strong evidence of materiality to compensate for weak evidence of intent to deceive (and vice-versa). Finally, the the court held that a finding of inequitable conduct should not immediately render a patent unenforceable. Rather, the court must also “weigh the equities” to determine whether the inequitable conduct warrants the unenforceability remedy.
To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO. The accused infringer must prove both elements—intent and materiality—by clear and convincing evidence. If the accused infringer meets its burden, then the district court must weigh the equities to determine whether the applicant’s conduct before the PTO warrants rendering the entire patent unenforceable.
Intent: For the element of intent to deceive the USPTO, the Federal Circuit now demands evidence of a “deliberate decision” to deceive. Focusing on the failure to submit material prior art, the court held that the intent element requires “clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it. . . . Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” When circumstantial evidence is used, intent to deceive must be the “most reasonable inference.”
Materiality: For the element of materiality, the Federal Circuit now demands evidence of “but-for materiality.” In other words, the court must find that, but for the deception, the PTO would not [should not] have allowed the claim. “In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction.”
Exceptions: As a major exception, the court here held that in cases involving affirmative egregious misconduct, but-for material need not be proven.
Unenforceable: [UPDATED] Even when material and intent are proven, the court held that a patent should only be rendered unenforceable due to inequitable conduct “where the patentee’s misconduct resulted in the unfair benefit of receiving an unwarranted claim.” As in eBay v. MercExchange, this equitable analysis is intended to serve as a substantial requirement that limits the discretion of district courts.
“Ok, exactly how does: Proving that the applicant ‘knew of a reference, should have known of its materiality, and decided not to submit it to the PTO’ not meet the intent requirement”?
The key words here are “should have known”. This phrase has been used to infer intent when the art was cited in a related case. The logic is that the patentee knew about the other case and would have known it was material if they would have investigated. The court is saying that alone isn’t enough to prove intent.
I know I am late on this, having just read the post, but I can resist concerning the materiality. Here it goes I TOLD YOU SO!!!! I TOLD YOU SO! I TOLD YOU SO!!. Thanks Ned for all the support these past years.
Dennis,
Thank you for this very succinct summary of the Therasense case. I’m a European Patent Attorney and quite a substantial part of my practice involves the filing of US Patents in Europe. My initial thoughts are that even if the Court’s intention survives subsequent case law, it’s not going to have much impact on those patents subsequently prosecuted in Europe. Perhaps the whole process will become a little quicker.
What effect, if any, do you think Therasense will have on US patents that are subsequently filed in Europe?
Rosemary Eve
I agree. I just would like to know what additional proof has to be made to show that failure to disclose BM was deliberate .
Sent from iPhone
You’re right, Ned – I didn’t read your first element – “know that a matter is material” – I was thinking simply “know of the reference.” My mistake.
But we’re off the original point, I think. All I originally said was that a best mode violation doesn’t require a deliberate or intentional anything. IC requires a “bad actor” – BM does not. Do you disagree? Please take the last word, and I’ll let it rest.
From Therasense, Section V, quoted in full:
“To prevail on a claim of inequitable conduct, the ac-cused infringer must prove that the patentee acted with the specific intent to deceive the PTO. Star, 537 F.3d at 1366 (citing Kingsdown, 863 F.2d at 876). A finding that the misrepresentation or omission amounts to gross negligence or negligence under a “should have known” standard does not satisfy this intent requirement. Kingsdown, 863 F.2d at 876. “In a case involving nondis-closure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.” Molins, 48 F.3d at 1181 (emphases added). In other words, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.”
Now, what did I say above? Let me see:
“IC: 1) Know that a matter is material; and 2) deliberately fail to disclose it to the PTO.”
Now, Cy, you have several posts in a row accused me of misunderstanding the law, mistating the law, etc. I am being quite patient here with you. But, is it possible, even remotely, that the misunderstanding is not with me?
What is the difference Cy?
“Deliberately,” Ned. That’s one of the differences, anyway. With best mode, it is irrelevant whether the failure to disclose is deliberate.
In any case, you’ve mischaracterized the elements of inequitable conduct. You know very well that specific intent to deceive must be alleged and proved. And that’s not the same as intentionally failing to disclose.
Wasn’t there just a case on this?
Ned, I can’t really be bothered, to try hard to compare your hypo with Global. In yours, A is the only Defendant, and the only one to perform an infringing act (the sale to B). That A is the only one ordered to pay damages therefore seems to me OK.
I’m not an attorney at law, and not a litigator.
Change the facts just a bit to the facts of Global Tech.
Suppose that A sells B an infringing rice cooker. A is sued. A requests indemnity from B. B intervenes as an indemitor. B controls defense. A loses. Damages are awarded against A only? Why?
Someone has a screw loose.
Can anyone think of a situation where a party who would be liable in contract for breach by causing the direct infringer to infringe should not also be personally liable for infringement? They should be. But then we have Global Tech.
Hmm…
Intent?
IC: 1) Know that a matter is material; and 2) deliberately fail to disclose it to the PTO.
BM: 1) Know that there is a best mode (specific type of materiality); and 2) fail to disclose it in the specification (specific way of disclosing the information).
What is the difference Cy? What exactly does one have to prove that the failure to disclose was “deliberate” if there was knowledge of materiality and a failure to disclose. What does one have to allege and prove?
I think we would all like to know.
Harworking/ping, thanks for this post. You and I appear to be in full agreement on the bigger picture even if we do cross swords at times.
Big business will always try to feather their own nests. Today, they are anti-patent: They largely do not need patents, and are under assault by “trolls.”
But there are deeper concerns. Patents protect the startups whose products can and often do disrupt markets by introducing replacement technologies. Except for drug and chemical companies and selective other industries, they themselves do not need patents to protect markets. Software is a prime example. They exist in a world of cross-licensing, patenting for defensive purposes, and patent piling to be used to suppress direct competition from new market entrants. For the most part, the patent system is not working for them, but against them.
The current debate about the patent bill has focused our attention on who really needs the patent system: drug and chemical companies, startups, basic research entities such as universities, and even established companies whose business model includes new products that are easily copied.
But we still have the problem that the loudest voices generally prevail in the courts, in congress and in public opinion. The loudest voices are those fueled by cash. What is a congressman to do when he needs to get reelected. Look out for America or for himself?
That said, I was encouraged by Diane Feinstein and Barbara Boxer standing up against the patent bill in the interests of America. They were brave. I applaud them.
I was also encouraged by the recent briefs of the AIPLA in Global Tech and in Therasense. Those briefs were right, not only on the law, but on the policy. I had thought the AIPLA was corrupted: it is a member of one of the anti-patent coalitions. (Can you imagine that?) But, apparently, I was wrong.
But, overall, we are losing the war Hardworking.
How can you let this happen. And how can you allow them to trash my life? when you knew I sent that Notarized Statement to Him, and the USPTO! You knew!
And it only stands to reason why there was no one home at the field office. Now with the other one gone, the Tower is only one left that is responsible. who else could afford Lemley. And SAN FRANCISCO… BANG HAND ON HEAD…OF COURSE.SAN FRANCISCO SPEAKS VOLUMES.
No wonder Foley and Lardner don’t like Quinn.
It only stands to reason. Peter is all by himself. And that is why the BUCK stopped it there! And the reason why Extortion will only stick on one.
Bless the Buck!
Inanae.. I mean Dennis.. I mean Dennis
I have a screen even on Martindale Hubbell. Why doesn’t the Tower get a Life.
Ned,
“So, if C…why is he further immune from patent infringement by direct action against him?”
Because the Handbook of Infringers’ Rights calls for it to be so.
Why else do you think all those prodigious contributions from special interests have shaped the impending law to carve out the wide swath of “prior user rights”? Who needs to actually disclose anything if one is immune from those that do? Why else do you think the longstanding program to diminish the strength of patents has been such an active battleground?
There is no mistake here. There is a very real purpose for these actions. We both know what the purpose is, do we not? Some, like Gene Quinn, are only now seeing the Trojan Horse for what it is.
But please, pay attention to Cy Nical and only pay attention to the messenger, ignoring the message. But you at least amongst the “regular contributors” recognize and glimpse what is going on around us, do you not?
So while the sky is not falling, those klaxons going off are going off for a reason – a storm is coming.
Max,this is the “church” case. In the end, C paid 50%, B paid 50% in that case.
Now all of you will agree that A infringes by using, B by making. You will agree that C should respond in contract damages under default contract law and implied warranties.
I hope you will all agree that C would be liable for inducement if he knew of the patent under Global Tech.
So, this is how it would work, ordinarily. D sues A who impleads B. B requests indemnity from C, who intervenes. C runs the defense.
So, if C is liable under default law regardless, why is he further immune from patent infringement by direct action against him? There might be jurisdiction and venue problems regarding A and B after all.
You’re right on all counts, Max. But you’re wasting your time even responding to he who shall not be named.
Thank you. I did realise that it is no defence that no copying took place. Ned and I were in discussion over Global-Tech issues, where there was copying.
I had not realised that the act of designing a machine component, and then creating an engineering drawing of that component (anything but “menial” by the way), by itself and no more than that, is enough to constitute infringement of a claim to the machine.
The way I see it, the one who “makes” the modified machine, by installing in it the new component, cannot escape liability for patent infringement with the line that “I was not the one who designed the new component”.
Whether A or B has a claim against C might depend on what was the contractual relationship between them.
MaxDrei,
“But does C have any liability to D, or A, or B? I would say not. He copied nothing. What did he do wrong. Why should he have to pay anything at all, whether to A or to B?”
As you throw about tort terms, you should realize that direct patent infringement is a strict liability offense. You ask, why should C have to pay anything at all, but you should already know that answer. Surely. After all, “make” includes design (the menial steps fall under he master ones).
OK, Ned, now we’re talking.
Take the case of a machine, installed in the production line in a factory. It does not run faultlessly. Owner operator A procures an opinion from an out of house engineering practice B. B identifies the impediment, and suggests a tweak, that ought to solve the problem. What to do?
B puts it to A that self-employed engineering designer C has the skill and experience to design the modified machine part. His fee would be X. Should he design it?
A says yes. C reflects, then says to A and B that he can do it but has not the resources to perform a FTO opinion.
Design and build goes perfectly. Modified machine runs fast and true. BUT, later, D sues A for patent infringement and secures injunctive relief.
A suffers huge financial hit. Tries to mitigate its losses. Sues B and C. B retorts that it has no liability.
But does C have any liability to D, or A, or B? I would say not. He copied nothing. What did he do wrong. Why should he have to pay anything at all, whether to A or to B?
Would it have been different Ned, if C the designer had been an employee of B?
Any joint tortfeasor? A and B perhaps, but not C surely.
The acts of infringement include making, selling using. But not designing, surely.
As you say, debate about putting telescopes deliberately to one’s glass eye belong in the Global-Tech thread. But never mind, we can debate here if we choose.
Jo,
You are mistaken.
“why everyone stopped conversing with this chump when he was posting under his previous moniker”
You have confused Ping with IANAE. IANAE was the master at mischaracterization, to the point of purposefully NOT exploring issues. Ping idolized IANAE for this attribute.
BM requires willful failure to disclose.
That’s just wrong, Ned. A violation of the best mode requires that the (1) inventor knew of and appreciated a best mode, and (2) that it was not disclosed. The second element is an objective inquiry. There is no “intent” requirement at all, so willfulness isn’t in play.
In any case, the original question is off base from the outset. Disclosure of best mode is a statutory requirement – failure to disclose it means that the claims at issue are invalid under Section 112. It is not by itself a grounds for inequitable conduct, although the circumstances surrounding it could give rise to an IC holding.
Nothing at all. Actually, if the PTO knew that the best mode was not disclosed, they could and would reject the patent for that reason. So, I see no inherent inconsistency.
Max, true about the plane. But often it does related to bad design. Check the fate of the French airliner that crashed off Brazil due to badly designed air speed indicators.
I recall a case where a church was sued on a patent for stained glass windows. They impleaded the contractor, who impleaded the architect who specified the infringing design. In the end, the court awarded 50% of the damages to the architect and the other 50% against the contractor.
I think this judgment right regardless of whether or not the architect knew of the patent. Can you think of a reason or justification for the contractor or for the architect not to have be found to be joint tortfeasors and have their liability apportioned according to fault?
I think the patent infringement scenario is different from any of your other examples Ned. And anyway, if a plane crashes, while there might be a COA against the designer of the plane, it could all be down to a simple pilot error.
Right you are (and appreciate the response). But a best mode nondisclosure would never result in denial of a claim by the PTO, so how could it ever satisfy the “but for” test? Same thing could be said for nondisclosure of pending litigation. What am I missing?
Now that is a sense of humor.
Ned: Short answer: I don’t know enough about the equity/law divide to provide educated insight on that question. In law school, whenever I heard it being discussed, I started day dreaming about the much more titillating subject of inchoate crimes!
I have not noticed anyone raising a BFP defense to IC in the past. In a perfectly proven case under Therasense, with a smoking gun re omission and a but-for claim, plus a generous dose of egregious affirmative misconduct (perhaps a smoking gun instruction from the patent attorney to a scientist to cook the books to prove synergistic effect), I would love to see some BFP with the courage to argue the issue. In a milder case, an assignee might argue that it and its litigation team were innocent, so it should not suffer after its failed attempt to put the defendant out of business with the additional penalty of paying attorneys fees…. As I type the argument I think the proposition does survive it own utterance. The equity/law divide might be against me, if Iunderstood it better.
There is a certain appeal to refuting an argument by mischaracterizing the argument, but it is not very helpful in a forum for exploring issues.
Bingo. And it gets old really fast, which is why everyone stopped conversing with this chump when he was posting under his previous moniker. People seem to be catching on more quickly this time around, which is why his posts are getting more and more frantic.
Interesting question. BM requires willful failure to disclose. This is the pith and essence of IC as well.
This whole exchange belongs better in the Global Tech thread.
I find it amazing that you actually have not provided a legal basis to overcome the legal basis I provided.
I am still waiting for your explanation concerning the TIMING of submitting references.
And who is behind Lemley?
So?
Hard, think man. You file claims that you know are invalid? How does a later IDS going to change this fact? Are you hoping the PTO list the invalidating reference on the patent? What in the world are you saying but that you think it quite proper to commit fraud on the PTO?
A directly causes B damage. B has no COA against A? None? You got to be kidding me.
Assume A and B were cars. A slams into B. B slams into C. C sues B, but B cannot sue A?
Assume goods. A sells B a good. C sues B for infringement. B has no recourse against A?
Assume A designs plane and sells the plane to B. Plane crashes. C sues B. B has recourse against A?
Why is patent infringement any different? Why is patent infringement alone different?
And you call me
unbelievable.
And just who is behind this travesty? Lemley?
Thank you DC, it is good to see that at least one bird has come home to roost.
And to be clear, I agree with you that the patent issuing has remained in the hypothetical all along, but that end patent issuing has not been a factor, as the claims in that issued patent are proper (and have been properly treated with supporting IDS submissions), am I correct?
The fact that the patent issued has been the basis for my hypothetical all along. The goalposts have remained fixed. There is a certain appeal to refuting an argument by mischaracterizing the argument, but it is not very helpful in a forum for exploring issues. You raise a good issue, pointing out that the crime probably cannot be established so long as the application is pending, because the PTO will take an IDS at any time prior to payment of the issue fee. No need to go further.
I don’t know, IANAE. It’s never pleasant going to client and saying we need to file an RCE in one of their recently allowed applications because the safest thing to do is to file all of the office communications and art from another of their applications that we didn’t think, and still don’t really think, is related, but the Examiner in the other application cited some of the same art in a recent Office action.
Maybe the calculus will be changed enough to alter how strongly we urge caution in circumstances like that, and potentially alter the client’s decision.
There might even be some new policies from corporate clients regarding when to consider their cases related for filing IDSs to cross cite office communications and art. I think some in-house counsel may see an opportunity here to cut some costs for procedures that seem a bit more overcautious than they did previously.
Any thoughts on whether Therasense’s “but for” test eliminates best mode nondisclosure as grounds for inequitable conduct?
Ned,
Answer the question with an answer, not a non sequtiur question.
I find it amazing that you actually have not provided a legal basis to overcome the legal basis I provided.
I am still waiting for your explanation concerning the TIMING of submitting references.
Ned you cite Global-Tech. I’m only picking up on the ambiguity noted there by Alito at page 4, every time the salesman succeeds in inducing you to buy a “damaged” car. We don’t know whether the salesman knew about the damage. I thought your “infringing” was ambiguous in exactly the same way. Hence the request for clarification.
My answer is “unbelievable” to you. But for my part, I find your response unbelievable.
Unbelievable.
I find it amazing that you actually stand there an justify fraud.
Clarify please Ned. When A created those “plans”, was he copying? I assume not.
I am imagining that A is a single self-employed engineer working out of his garage, who does not copy, and does not keep himself informed of the content of every WO and A publication issued by the world’s Patent Offices.
I do not understand your concerns. Why should his motion not be granted immediately?
And Repeat:
Explain the sections that I provided and how the TIMING of compliance with the law actually unfolds.
A conclusory statement is not an explanation.
So, A sells B plans to build an infringing device. A does not know of the patent. B builds the device, is sued. B impleads A. A files a motion to dismiss or a summary judgment as the case may be on the basis that A did not know of the patent.
Court grants motion, citing Global Tech.
Is this justice?
What is wrong with you?
Repeat: One has a duty not to file or maintain a claim he knows to be invalid.
Ned,
I have moved no goalposts, as I have indicated above, my position has been steady. Neither 35 USC 115 (the contents of which that oath pertain to having been captured already on this thread) nor 18 USC 1001 have been overridden by my simple position that timing is not what you or DC believe it to be. Both are still there, rather, the actions of the applicant – and the timing os such actions – are still the focus of my comments.
Let’s focus on the timing, shall we?
Your answer is not an explanation as I asked you to provide.
Please provide an actual explanation.
Hard-working, now you really moving the goal posts – suggesting that PTO rules can override such statutory requirements as set forth in 35 USC 115, and 18 USC 1001 for example. How interesting.
As I learned the law way back before they were rules 1.97, one had a duty never to file a claim that one knew to be unpatentable over the prior art. Obviously you do not agree. In fact you seem to believe that that is perfectly proper to file such claims.
Then you are suggesting that IC is not equitable in nature, but legal — in fact, in rem, attaching to the property.
Tough question. Initially, I would suggest that the public interest in discouraging IC would override the private interests of a BFP. Allowance for a BFP would further encourage IC.
And you will have to explain how my answer moves the goal posts, please. As far as I know I have been very consistent at every turn on emphasizing the timing and the fact that information can be submitted after the initial filing.
Not sure if my consistency has any hallmark of goalpost moving whatsoever, so I hope your explanation is a dandy.
Here is a hint, Ned, look at 37 CFR 1.97 (c) and (d).
Look who's moving the goalposts now.
Ned,
Yes or no – an applicant does not have to submit every reference known at the time of filing?
It really is as simple as that.
Yes, or no.
Was IC even pled in the Global Tech case?
Hard, so, the claims that issue are patentable over the reference. But, with respect to non disclosure, is there anything in the opinion of the Federal Circuit that actually discussed this precise issue? That the duty to discloses changes with the claims. But, if at any stage the applicant acts with deliberate intention of obtaining invalid claims, and knowingly so, is that excused by the subsequent narrowing of the claims by force of independently discovered art?
One of the requirements wrt non disclosure is knowledge of the materiality of the non disclosed reference. How is this different from knowledge of the patent?
“particularly if the non disclosed art is not the kind of art that the PTO could discover on its own, one may be guilty of a violation of 18 USC 1001 at that point.”
Ned,
See above about timing of requirement to submit any material information and the fact that that timing is not at the time of filing and rethink your position.
How is that and why do yo believe it is so obvious?
Obviously, the Global Tech “willful blindness” is going to impact the “knowledge” requirement for IC.
dc, but the cases you cite did involve trespasses.
As you note, and I agree with you, that if you file a patent application knowing the claims to be invalid over non disclosed art, particularly if the non disclosed art is not the kind of art that the PTO could discover on its own, one may be guilty of a violation of 18 USC 1001 at that point.
Now, if the patent eventually issues with valid claims, and is perhaps sold to a BFP, is the patent itself tainted? Do the sins of the father taint the son?
What are your views?
One little, but oh so important difference, is that attempted murder has been legislated as a crime, even though inchoate (and thus your other examples of theft and illicit drug trafficking are likewise inapposite here).
No such luck here with IC, my friend, being as it is a strict judicial doctrine.
And again, I am compelled to point out to you rsuper sleuth faculties that not having everything shared at the time of filing is allowable. You are trying (too hard) to ignore this critical factor, that reality here. Obligations can be met any time during prosecution – that’s the “viable” part you keep overlooking.
“Allowing the patent to issue” is yet another goal post movement – let’s revisit your hypothetical to see why: that’s right, the claims have changed and the reference is no longer viable. There are explicit instructions not to submit non-viable references. You are trying to see a crime that isn’t there.
I am sorry but your hypothetical keeps working against you. Rather than laborously move the goalposts hither and yon, you might just accept the notion that you are incorrect. It would certainly save me some hard work.
Can’t find any case on point for you, but I did find Collins’s Case L. and C. 471, in which a man was acquitted of stealing his own umbrella, despite the fact that he had confused it with some one else’s umbrella which he coveted. But the umbrella case was directly overruled in Regina v. Brown (convicted of pick pocketing an empty pocket). Both are English cases, but famous and somewhat akin to stealing your own TV set. Hard to imagine “honest” mistake on that one, though. I am sure you will agree that it is no defense to bank robbery to point out that the vault was empty.
It happened in 1859, in Reg. v. Brown. That was before the Civil War and before you and I went to law school. It took a while to get incorporated into US law. The fact that impossibility was not a defense to inchoate crimes was hornbook law decades ago. That is how criminals get convicted for attempting to distribute oregano and powdered sugar in sting operations. So unless you went to law school before the first Roosevelt administration, you would not have witnessed a change.
18 USC 1001 does not, by its explicit language, require a lie. It makes concealing a material fact in any matter a crime. Thus, even without the obligation imposed by 37 CFR 1.56, the trying to get a patent while hiding a material reference meets the language of 18 USC 1001.
As to inchoate crimes, though they are inchoate, they are still crimes and perfectly support convictions on a routine basis. Attempted murder is an inchoate offense. The “ability to avert” that you mention is a defense if you actually take steps to avert before you’re caught. Filing an IDS, even after a complete attempt, would be a defense. Allowing the patent to issue would seem to defeat the defense of abandonment.
I agree. That is a major step in the RIGHT direction.
The question is why did they, out of the clear blue, with no one actually urging it that I know of, announce that the “but for” rule would be tied to BRI?
Were any prior cases decided using this standard?
What good news that the CAFC is finally making a concrete effort to, as Prof. Crouch put it, “cure the ‘plague’ of inequitable conduct pleadings” in patent litigation. It’s pretty major that a finding of inequitable conduct no longer automatically serves to invalidate a patent. That part of the ruling should itself prove quite effective in immediately reducing the number of IC pleadings. Bravo.
Hardwork, at times it is just plain impossible to understand what you are talking about.
Reminds me of someone else who used to post here under a different name.
Hardwork, at times it is just plain impossible to understand what you are talking about. It appears that most of the time you are having a conversation with yourself. Perhaps you ought to get together with anon, above, who also has a hard time with complexities.
But, as to your question itself, to the extent it can be understood, the point I am making here is that one trying to decide whether to disclose a reference or not is left on the horns of the dilemma. If the legal standard were “validaty,” one could determine whether a particular reference was material or not. But without knowing what the examiner might consider material, one necessarily has to choose to disclose, lest one be accused, and perhaps successfully accused, of IC. Just as Malcolm’s post suggests, people will not accept the notion that BRI is unknowable. They will assume that there is but one, and only one, BRI, and that that BRI can be determined. Based upon this assumption, which of course is false, one can make a case that failure to disclose a reference within a courts construction of BRI had to be “knowing” because there’s no other reasonable explanation.
Ned,
Are you then abandoning your own logic and the dependence of “knowing” from the material standard? Or is there some other reason why you would ignore your own premise in order to continue with the “sky is falling” charade?
I do not understand why you are so intent on chasing your tail.
And come to think of it, DC, 18 USC 1001 was not violated at all because there was no lie – harken back to that lovely concept of “inchoate.” You may be “stuck” on thinking that what happened at the initial portion in time and the lack of the applicant to actually supply the incriminating document prior to the change in claims locks in some type of transgression. But as I pointed out previously (and – my bad – rather sloppily missed reminding you in my post immediately above), the ability to submit information is NOT locked in at filing. The same concept of inchoate applies to your new tool as well, so…
Put simply, the applicant “could have been just about to (and thus fully meet the legal requirements of)” disclose the incriminating material, but the need to do so evaporated. Since no crime actually took place, and the ability to avert any such crime was still viable, you cannot bring the charge of violating 18 USC 1001.
I do admire your tenacity to find a crime here though.
DC,
Your answer here is called “moving the goalposts.” You have substituted a different crime than your first question, and I hope you found my (correct) answer to that question helpful, and the concept of “inchoate” illuminating.
You do realize of couse, that you are no longer asking about IC (or attmepted IC) based on the standard as we have been discussing here, right?
Now, let’s move to your new question.
Actually in your hypothetical, a different defintion of “material” comes into play:
“Though the falsehood must be “material” this requirement is met if the statement has the “natural tendency to influence or [is] capable of influencing, the decision of the decisionmaking body to which it is addressed.” ” – United States v. Gaudin , 515 U.S. 506, 510 (1995)
As the Examiner was not so influenced and rejected the inital claim anyway (at least in your hypothetical), you still do not have a crime – even under 18 USC 1001.
Actually, an actual crime took place in my hypothetical. 18 USC 1001 was violated in my hypo, and that carries a five year prison term. That fact that you failed to defraud the government is no excuse for attempting to do so. The fact that you might fess up is no defense either, especially after the patent issues.
Malcolm:
Ned “BRI is undeterminable
Of course this is false. Anybody who understands the basics of claim construction and has modest familiarity with the subject matter can determine what is BRI and what isn’t. What you really mean to say, Ned, is that determining BRI introduces an element of uncertainty into the analysis. That’s nothing new. And it’s nothing to be frightened of. Then again, I never understood what it was about the previous law of IC that made people fill their drawers. Honest people, I mean.”
I still beg to differ. Just re-read In re Morris to get a feel for the problem. The examiner’s rejection was off the wall, yet sustained. I defy anyone here to say the examiner’s interpretation was knowable.
Not only was it unknowable, it was unfathomable.
But it was sustained.
Thus, BRI will force one to submit all art that is even remotely related to the subject matter of the patent, just as now, lest one be successfully charged with IC.
Malcolm Mooney said…
Ned: The Section called for “validity,” not “patentability” to be the touchstone of IC. It is clear the ABA called for a finding of invalidity as a prerequiste of any subsequent consideration of IC.
It’s a terrible standard as it does nothing to deter an applicant from withholding material reference (however you define “material”). If the claims are invalid, who really cares if the patent is also unenforceable? Attorney fees for an exceptional case? Chump change. The “feelings” of the declarants whose testimony was judged to be fabricated? They’ll get over it. Time (=$$$) heals all wounds.
Malcolm,
the penalty of having the whole patent including valid claims and related patents held unenforceable is (more than) enough deterent.
One point regarding your post, not all claims are necessarily invalid.
Moreover, the kind of art the PTO deals with is published. One cannot hide that kind. No one has any reason to withhold such art, particularly if it can be used as the basis for a killer reexamination that will assuredly be brought if and when one begins to assert the patent.
That leaves us with false statements and known prior use prior art. The suppression of known prior use prior art is the very kind of active fraud that is the exception.
Which leaves one with false statements. The Supremes already held in Corona Cord that false statements that do not result in invalidity will not render a patent unenforceable.
So where does that leave us in the end?
The ABA proposal.
Well idk about that Ned, a lot has changed. But as they say, the more things change the more they stay the same.
Hard, then are you comfortable with the proposition that you cannot commit inequitable conduct if the claims do not read on the prior art given your understanding of what the claim construction is because the broadest reasonable interpretation is something one cannot know?
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