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July 28, 2017

Comments

Absurd decision. You infer intent to deceive on the part of the prosecution attorneys because of the behavior of independent litigation counsel years later? Wow. Even an L1 - no, even a 5-year-old - knows better than to blame X for what Y did. Score another one for Judge Prost. And unlike some recent poor Fed Cir decisions, you can't attribute this one to the Pavlovian response to being overturned by the Supremes so many times.

Do the attorneys who prosecuted the patent have procedural way to challenge the finding here? I suppose if the OED or state bar were to take action against them on the basis of this decision, they'd have a good 14th amendment argument. But that won't save Regeneron's patent.

Link to the Amicus Curiae brief...?

One of the problems with this case is that an adverse inference, even if properly drawn, typically gives rise to a rebuttable presumption that a fact (or an element) has been established. The Second Circuit case the majority here relies on dealt with that form of adverse inference. In this case, however, the form of adverse inference the district court apparently used was in the nature of an irrebuttable or conclusive presumption. The latter is rare and akin to a terminating sanction, and therefore often requires proof of some elevated mental state - like bad faith. Unfortunately, the panel majority completely missed that distinction. Relatedly, the panel also missed the point that an adverse inference is normally something that is drawn during trial, but here there was no trial on the intent prong.

Tarring application prosecution attorneys with misrepresentations by others is certainly unfair and could be professionally damaging. But is not the patent owner itself, and its patent's enforceability, stuck with any inconsistent representations between any of the various attorneys that the patent owner has hired as its agents [and thus should be coordinating and supervising]?

Have a look at Judge Newman's opinion and in particular at her discussion at the end of that opinion about the European opposition proceedings. To say that references are in the "but for" category when they were disclosed to the EPO and the European patent was nevertheless maintained has a certain illogic to it.


Mr. Morgan,

The point is not whether or not the entity in charge of its various agents has coordinated anything. The point is that an earlier in-process entity is (impossibly) being implicated by actions of a later in-process entity.

En banc? Or Supremes?

Skeptical: I have added a link to our amicus brief.

As a 50+ year patent practitioner and patent trial counsel, Regeneron is a breath of reality and an important check on Therasense. It is about time courts say "enough already" with prosecution hiding and misrepresentation of references and litigation counsel protecting the prosecution counsel's misconduct by claiming attorney-client privilege extending to prosecution counsel. It would be nice if Rule 56 were as rigidly enforced as marijuana laws, we would clean up a lot of questionable patents, a stain on the patent profession. Since this was a discretion issue, I predict the S. Ct. will deny cert.

Paul,

I agree, it makes little sense to tarnish PH with inequitable conduct because of discovery tactics of litigation counsel. However,if we forget about the inference for a moment, and just ask why the decision was made not to provide the four references after allowance, and then follow that up by seeking an outside patent consultant to determine the materiality of the references makes little sense to me. If you go to all this trouble because your not certain, why not just submit them?

Joe Barrera

Paul - in response, the lit counsel were aiding and abetting prosecution counsel's misrepresentation/hiding of the references during PH, and are equally guilty of IEC. The court's inference was reasonable. Nor was it rebutted by Regeneron. This case is a warning to counsel at all stages. Joe is right; why were the references not just submitted, even if in a re-examination? Were lit counsel worried that late submission is effectively an admission of conduct violation?
Jacques Dulin

The problem is always the ex post facto nature of the materiality determination - there was evidence (that the district court refused to consider) that the prosecuting attorneys considered the references to be cumulative. Of course, that conclusion could be wrong but it isn't necessarily nefarious. If the district court had considered the evidence instead of drawing the adverse inference, she could still have decided that intent to deceive was the most reasonable conclusion to be drawn, and then the reviewing court would be able to determine whether she was right (and whether intent was supported by clear and convincing evidence). The inference was a shortcut, justified by litigation misconduct or not, and for that reason alone the decision should have been reversed.

As for the question of why didn't the lawyers just submit the references, that is the conventional approach (and can lead to charges of burying references when taken to extremes). But the reasonableness of not submitting them hinges critically on claim interpretation, and here the materiality of the references was dependent on whether the term "comprising" was interpreted so that only reverse chimeric antibodies were within the scope of the claim or that other species were encompassed. Under such circumstances intent is even more important for a court to consider, and neither justifiable umbrage or mere judicial pique is sufficient justification to deny the prosecutors the opportunity to explain themselves.

The invention was reverse chimeric antibodies, and it was reasonable to conclude that the references were irrelevant to that invention. It's disturbing to me that the prosecuting attorney was expected to anticipate that a District Court, peering through their "comprising" lens, might someday read into the claims what the references disclosed.
I have withdrawn an allowed application when pertinent prior art made a late appearance, but I doubt that I'd have done so in this case. I might take the small precaution of a late IDS, which at least puts the references on record, but I don't think that doing so would have helped Regeneron.

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