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« Aventis Pharma S.A. v. Amphastar Pharmaceuticals (Fed. Cir. 2008) | Main | Maybe It's Finally Time They Went Home »

May 27, 2008


What can I say? Nuclear seems good to me. Do. Not. Deceive. The. Office.

All clear?

Dear e6k:

Your point is clear. The point of the piece, however, is that applicants rarely deceive the Office. Inequitable conduct is always plead, and almost never shown. And as a result, you get inefficiencies in the process. Without the fear of inequitable conduct, no one would submit an IDS with hundreds of references. Without inequitable conduct, litigation would not be Russian roulette. The CAFC finally resolved the willfulness issue, which had made patent plaintiffs into lottery ticket holders - get the court to decide infringement was willful, and you get treble damages. Bingo!

If there is actual proof of deceit, then I'm with you. But that is rare (it does happen; see Molins). In so many other areas we trust the discovery process in litigation to ferret out these types of shennanigans, and then for IC we give defendant's their version of a get-out-of-jail-free card. Doesn't make sense.

So, my proposal is not to eliminate the duty of candor. Far from it - I'm not willing to risk my livelihood by lying for a client, and I don't want to be disadvantaged by the few who would. I just think we need to determine the best way to balance the legitimate needs of the many - avoiding harassing second guessing that turns innocent mistakes into culpable conduct - to prevent the few who would take advantage from doing so, i.e. Deceiving. The. Office.

Thanks for the comment.

IC reform is not an easy issue.

Loser pays both side's fees on the IC issue is a reasonable idea I've seen proposed elsewhere.

Another thought is that allegations of IC that end up having no factual basis could be made the basis of a state bar disciplinary inquiry. I imagine most bars have rules against making baseless allegations to smear the opposition.

The fact that the resources brought to bear during litigation are about 100x the resources brought to bear during prosecution has to be kept in mind. Something is wrong when thousands of hours are spent going over a file wrapper (that was created in tens of hours) looking for anything that can be characterized as IC, or an admission, etc.

I think the present state of IC law in the US is that the entire doctrine is doing more harm than good. If it can't be fixed, it should be eliminated. The ROW doesn't appear to need it.

Dear Agent:

Since the IC doctrine is right in the Supreme Court's wheelhouse (patents are a limited exception to the general prohibition against monopoly, as wrongheaded as that 19th century idea may be), there is little likelihood it will be eliminated any time soon. (The Federal Circuit has spent a decade trying to get rid of the doctrine of equivalents with only passing success.) Under the circumstances, the best course is to ameliorate the worst of IC's deleterious effects, while retaining whatever prophylactic benefits it may have.

Loser pays just ups the stakes and will drive even more aggressive behavior in litigation. Preventing IC from being plead without evidentiary basis will help (if only by raising Rule 11 concerns), but will in large part also merely delay matters rather than make things better.

Minimizing the incentives would at least make IC less appealing, especially if a defendant was required to attack a patent claim by claim.

Thanks for the comment.

By loser pays on IC, what I had in mind is that whoever loses on the IC issue pays both sides fees on that issue, independent of the overall outcome of the case. However, this approach will not work in cases where the IC issue is not reached in trial, even though the expenses are incurred.

Applying IC on a claim by claim basis would seem to be difficult under current law, because IC is a equity doctrine having to do with unclean hands. If the CAFC tried to create some kind of claim by claim legal analysis for IC, a reversal by the SC would seem likely.

Substantive reform (or elimination) of the IC defense could occur by congressional action. I suspect that little reform can be accomplished judicially (the SC could reform, but won't, and the CAFC doesn't have sufficient authority).

Noon I feel you pain about there "just being too much IC allegations, most of which are unfounded". I see it as a direct result of how complicated modern cases are in terms of subject matter and the desire to overclaim. Eliminate the desire to overclaim and put in subject matter that is known to be old in order to have fall back positions to make more and more art be cited in any type of rejection or defense and you get rid of most allegations because there will be less prosecution history to throw around etc., the cases will be: file, get patent: file, get patent. This stands in sharp contrast to the norm today of: file, talk about stuff, squeeze past the nearest prior art (yet discovered), get patent.

Imo we need to address the source of the problem (situations ripe for litigators to pick apart) rather than the inefficiencies of the cure.

Dear e:

The problem isn't overclaiming, which goes to the substantive question of whether a claim is valid over the art. The question is whether the patentee or her attorney intentionally withheld material prior art. My point is that the case law suggests this is a rare event, but it is an allegation contained in every patent lawsuit. No doubt the complexity issues help this trend, but the allegations could be made over the simplest, most parsimoniously claimed invention. All it requires is the identification of material prior art, and a "knew or should have known" mentality on the part of the CAFC. Which was my point, echoing Judge Rader: would Dr. Uzan intentionally misrepresent the scientific facts, is that plausible? Or would it (should it) matter if an expert is paid for her opinion (which happens in lawsuits all the time) for an Examiner to consider a Rule 132 Declaration? Or that the applicant paid small entity maintenance fes by accident?

I feel your pain if the norm for your the applications you examine is "file, talk about stuff, squeeze past the nearest prior art (yet discovered), get patent". Not my experience.

Thanks for the comment.


Thanks for taking the time to pull this story together. Although it is clear that variable and inconsistent FC standards for finding IC are not helpful, is there any evidence that allegations of IC track FC case law to any significant degree?

I.e., do allegations of IC tend to decrease (as a percentage of litigated patent cases) after FC cases setting forth a strict standard for finding IC and increase after FC cases setting forth an easier standard for finding IC?

My instinct is that allegations of IC have been made in 90+% of patent cases consistently over at least the past 20 years, despite opinions referring to this "plague on the system", and that FC case law has in fact had no significant impact on the fraction of patent cases in which IC is alleged.

Dear agent:

I haven't done a detailed analysis, but I think the way the remedy is structured, defendants will (almost) always assert the IC defense, absent a clear "thou shalt not" from the CAFC. That's why I think the changes have to be either in making a requirement for a factual basis for pleading (with liberal opportunities to amend pleadings once such facts have been adduced), or a change in the scope of the remedy. Changes in the definition of materiality, I think, are only chimerical solutions, since this relates to what art/information is cited, not whether a defendant will find something that can be categorized as material prior art whatever the definition. Another idea would be to preclude assertion of the defense against art cited to the office absent affirmative misrepresentation of the content of the cited art; but that might just exacerbate my friend e6k's problem of having mountains of (mostly irrelevant) art cited to the Examiner.

Thanks for the comment.

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