Regeneron Pharmaceuticals, Inc., Petitioner v. Merus N.V., SCT Docket No. No. 17-1616 (On petition for writ of certiorari 2018).
Question presented:
Whether a patent right can be fully extinguished based on misconduct committed by the patentee’s counsel during federal district court litigation to enforce the patent right.
Petition. The patentee here argues that inequitable conduct should be limited to situations involving “misconduct before the Patent Office in obtaining a patent.”
In this case, however, a divided panel of the Federal Circuit dramatically expanded the inequitable conduct doctrine. Without ever finding that petitioner intended to deceive the Patent Office, the panel held petitioner’s patent unenforceable under the inequitable conduct doctrine based on purported misconduct by trial attorneys in district court litigation, years after the patent was granted.
When I originally wrote about the decision, I stated that “[t]he case may be a wake-up-call for some litigators who will read through the list of misconduct and see it as only business-as-usual.”
Inequitable Conduct and Regeneron Pharmaceuticals, Inc. v. Merus N.V.: Trouble Waiting to Happen
From the second link:
Before getting into the repercussions too much, one thing jumped out at me: a few days before receiving a notice of allowance for the ‘018 Patent, a third-party submitted the later-withheld references in the parent application of the ‘018 Patent. Rather than submit those references to the examiner (either by way of an RCE or otherwise), the patentee let the ‘018 Patent go to allowance, but then submitted those references in related applications that remained pending. That fact jumped out at me because this is a recurring problem — learning of art at the last minute. I know there are ways to at least submit the art, but it won’t be considered (not sure if that procedure was available when the ‘018 was prosecuted).
I’ve had applicants do this (submit after allowance), even calling me up to inform me they were submitting, to which I’ve told them I have no mechanism to review it, which they seemed okay with.
Why would an applicant want to submit something they know has passed the time for consideration? What’s the benefit to doing that?
Well, at least it makes that applicant-known art of record in the patent file for reexaminations, PGRs or IPRs by anyone, and to avoid being accused of miss-leading potential licensees.
DC “[t]he case may be a wake-up-call for some litigators who will read through the list of misconduct and see it as only business-as-usual.”
The types of litigators who play these games generally don’t “wake up” to anything short of criminal charges brought against them personally.
Some of the commentators make good points. The whole idea of adverse inference is that it is a punitive sanction, but usually the nature of the inference is left to the jury or, if made by the court, is less specific and less far-reaching than the one in Regeneron.
What also puzzles me is the “but for” logic. Here the court had earlier found the asserted claims invalid for indefiniteness, a question of law. It’s hard to see how the citation of more prior art would have changed anything.
Prof. Paul Janicke
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