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August 06, 2009


Lots of hullabaloo about this decision, but I wonder if it's really going to matter: all the CAFC did here was to identify the hoops that must be jumped through in order avoid having an inequitable conduct pleading thrown out. In this case, it would have been easy enough for SAAT to have identified the people involved in prosecution and to provide an analysis of the (non-disclosed) references and their relevance. More work for the defendant in preparing its answer, but I'm not sure it's insurmountable.


I do hope that Exergen is the coming trend from the Federal Circuit on how "particularly" inequitable conduct must plead and must also be factually proved, especially with regard to the "intent" prong. We might not even need legislation on this "plague." And if the Federal Circuit would add some FRCP 11 and 35 USC 285 bite when inequitable conduct is plead "friviously" the "plague" might even go back in the bottle where it belongs.

I am not sure how this opinion is in direct odds with McKesson. In McKesson, it was the same prosecuting attorney who prosecuted both the applications - therefore "should have known". Whereas, here, SAAT did not allege even remotely that there was a deceptive intent on any particular individual. So, it was the lack of sufficient meat in its allegations that the court finds fault with, not the proof to show inequitable conduct.


Perhaps the considerations involved in actually doing the work before lobbing the IC charges is what really matters.

We are not talking about abolishing the IC defense, just making sure that the now seemingly automatic accusations are not a plague. When the underlying work is done and IC is deemed appropriate, it can (and should) still be used. If all that the CAFC did here was limit the plague, I think all the hullabaloo is well worth it.

Kevin: "Indeed, the Court in McKesson appeared to impose a requirement that an applicant was under a Rule 56 obligation to disclose not only the existence but the course of prosecution of related applications."

While a few notoriously panicky and over-reacting patent prosecutors might have understood McKesson to stand for this proposition, most of us understood McKesson to be largely limited to its facts, like all inequitable conduct cases. This Exergen case changes nothing. It remains true that if a material reference or other fact (e.g.,, contradicting statements made in the corresponding European case) is concealed from a USPTO Examiner, your patent is compromised and you'll be litigating inequitable conduct like your patent's life depends on it.

NAL "just making sure that the now seemingly automatic accusations are not a plague"

There is no "plague" except in the imaginations of certain jurists who feel that their profession is diminished whenever an attorney points out that someone has behaved dishonestly. The fact is that doing the right thing can be difficult for clients when $$$ is on the line and the patent is close to an allowance or issuance.

Is a patent with a cloud on it worth more than no patent at all? We all know the answer to that question.


I will respectfully disagree in that "plague" and the "much hullabaloo" are definitely not limited to your "certain jurists".

I will reiterate that, where appropriate the IC defense is still very much alive, and that the meat of this decision is that the underlying activity to make sure it is appropriate removes the seemingly automatic and, as this particular case point out, meritless accusations.

Dear Dan:

I agree it isn't insurmountable, but do you think there would be a difference if SAAT had identified all of the prosecuting attorneys by name? What if the person responsible wasn an inventor who knew of an undisclosed reference? And there is certainly a requirement under this case to not only identify who was the malfeasor but to identify what was not disclose, what it said, what portions are relevant to what limitations in a claim, and so forth - like the recently unlamented ESD requirements.

I think this imposes greater evidence requirements not only to prevail in an inequitable conduct defense, but to plead it. Which may ultimately not change the outcome, but make it harder to get there.

Thanks for the comment.

Dear SKD:

The comment is related to what can be expected of prosecutors, in terms of their obligations to inform the office of not only the existence but the substance of prosecution of related cases. I agree that McKesson had the additional feature of the same attorney being involved. Here, since the malfeasor was not identified it could have been the same person who made the arguments and submitted the reference not submitted in the '685 reference.

Thanks for the comment.

Dear Keep:

I think Exergen changes a lot, by imposing greater pleadings requirements. We'll see how that translates in patent lawsuits, but is does disadvantage (even if temporarily) accused infringers. And that can affect settlement, since a CEO may not want to hear "we are going to have a great IC case, once we get that dep testimony of the prosecuting attorney."

Thanks for the comment

In a patent infringement action involving infrared thermometers, district court judgment is affirmed in part and reversed in part where: 1) the court erred in finding that the claims in plaintiff's '205 patent were not anticipated by an earlier patent, and thus defendant cannot be liable for infringement of this patent; 2) plaintiff failed to provide substantial evidence to support the jury's finding that defendant's device directly infringed on plaintiff's '813 patent and actively induced infringement plaintiff's '685 patent; and 3) the court did not abuse its discretion in denying defendant's motion for leave to add allegations of inequitable conduct to its original answer, as its proposed allegations failed to satisfy the heightened pleading requirement of Federal Rule of Civil Procedure.


Moury Roberts


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