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« Court Report | Main | Therasense, Inc. v. Becton, Dickinson & Co. -- Briefing Schedule Update »

August 08, 2010


...so BIO thinks it is OK to blatantly lie and/or conceal a material item in order to obtain an otherwise valid claim?

Focusing as they do on whether a claim is actually valid and limiting the doctrine to only obtaining an otherwise invalid claim substantially limits my respect for this brief.

Deart Skeptical:

To be fair, several briefs have advocated a "but for" standard of materiality. The counter to your (implied) argument would be that even evil intent over something immaterial may not matter enough for the public interest to merit an inequitable conduct remedy. After all, these briefs are filed in the face of almost any misstep being characterized as material, and intent substituted with a "should have known unless you can rebut it" standard.

So the existence of black-hearted knaves who would benefit from the rule seems weak in comparison with instances where mere mortals whose mistakes or inattentiveness (or even inability to foresee how innocuous activities will be cast in a nefarious light) have been tarred with inequitable conduct over art that does not raise any patentability issues.

If BIO and others are putting one cart before the horse, it is because current CAFC jurisprudence has been doing the cart-horse two-step for the past ten years.

Thanks for the comment.

Here's my auto-da-fe: In my state, we have to give our weight and height when we renew our drivers licenses. Last time, I made myself ten pounds lighter and 2 inches taller. I confess.
So if some drunk-as-a-skunk dude rear-ends me at a stop sign, will he escape liability? After all, I did lie on that application form. I'm a little worried now.

"Auto-da-fe" - yikes, I'm having an SAT flashback.

In my state, if you commit a moving violation while drinking a Starbucks, you can get cited for DUI. Go figure.

Maybe traffic law is as inconsistent as inequitable conduct. Now I'm worried.

Thanks for the comment.


As other briefs besides BIO's have said, there is essentially no unformity, much less fairness, in how the standard for inequitable conduct is applied by the courts and especially what the correct standard is in the eyes of the Federal Circuit. As much as several Federal Circuit judges have lamented this "plague," those laments, with all due respect, sound hypocritical with the reality of how the Federal Circuit has applied and especially failed to enunciate (as well as apply) a consistent, logical, and rational standard for what is inequitable conduct. The fact remains that Federal Circuit's "fuzzy" approach to this question has created this jurisprudential mess, and only they can rectify that mess. We can only hope that the en banc ruling in Therasense will do that, once and for all time.

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