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Category: Inequitable Conduct
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Further Adventures in Obviousness and Inequitable Conduct By Kevin E. Noonan — In Purdue Pharma Products L.P. v. Par Pharmaceutical, Inc., the Federal Circuit exercised its prerogative to illustrate its fractured jurisprudence on two issues, obviousness and inequitable conduct, in a (fortunately) nonprecedential decision. Contrary to its Congressional mandate to bring jurisprudential consistency to…
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By Donald Zuhn — Last month, the Court of Appeals for the Federal Circuit decided that the appeal in Therasense, Inc. v. Becton, Dickinson & Co. warranted en banc consideration, and asked the parties to brief ten questions concerning the issue of inequitable conduct (see "Federal Circuit Grants En Banc Review in Therasense v.…
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On April 28, the Court of Appeals for the Federal Circuit granted the petition for rehearing en banc submitted by Plaintiffs-Appellants Abbott Diabetes Care, Inc. (formerly Therasense, Inc.) and Abbott Laboratories in Therasense, Inc. v. Becton, Dickinson & Co. (see "Federal Circuit Grants En Banc Review in Therasense v. Becton Dickinson"). In response to requests…
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By Kevin E. Noonan — Last week, the Court of Appeals for the Federal Circuit in Therasense Inc. v. Becton Dickinson & Co. issued an order granting plaintiffs' motion for rehearing en banc on the Court's previous affirmance that the patents-in-suit were unenforceable for inequitable conduct. In its order, the Court certified six questions…
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By Donald Zuhn — On Monday, the Court of Appeals for the Federal Circuit decided that the appeal in Therasense, Inc. v. Becton, Dickinson & Co. warrants en banc consideration. In the Court's per curiam order, it noted that the panel that heard the appeal considered the petition for rehearing submitted by Plaintiffs-Appellants Abbott…
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By Suresh Pillai — Last week, the Federal Circuit affirmed a determination by the International Trade Commission ("ITC") that: (1) the asserted claims of U.S. Patent Nos. 5,827,698 and 6,040,160 were invalid for failure to comply with the best mode requirement, and (2) the '698 patent was unenforceable due to inequitable conduct. Both the…
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By Donald Zuhn — Earlier this month, Donald Chisum (at right), who for the past 31 years has authored the patent treatise Chisum on Patents, was in Chicago to give a luncheon presentation on recent patent law developments to a group of local practitioners. Mr. Chisum, who was professor of law at the University…
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Sometimes, Sins of Omission Are Not Inequitable Conduct By Kevin E. Noonan — St. Thomas Aquinas recognized two types of sin: those of omission and those of commission. In patent law, inequitable conduct comes closest to this concept of sin, where frequently the accused behavior is the failure to submit to a patent examiner…
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Has Inequitable Conduct Met Its Match? By Kevin E. Noonan — There have been clear indications for some time that certain members of the Federal Circuit believe that the Court's inequitable conduct jurisprudence has gone astray from the "a high bar" Judge Rader (at right) believes the Court's earlier case law requires for establishing…
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By Kevin E. Noonan — The Supreme Court was petitioned today to grant certiorari in two cases important to biotechnology patenting: In re Bilski, involving the standard for determining that method claims are patentable subject matter; and Aventis Pharma S.A. v. Amphastar Pharmaceuticals, regarding the standard for finding inequitable conduct. And in each case,…
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