Life After Escobar – Recent Developments In False Claims Act Litigation
Inequitable Conduct CLE
1. Managing the Risk of Inequitable Conduct Understanding and Avoiding Allegations of Inequitable Conduct in Patent Prosecution
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25. James M. Francis Greenebaum Doll & McDonald, PLLC Co-Chair, Life Sciences Team Registered Patent Attorney 101 S 5 th St., Suite 3500 Louisville, KY 40202 502-587-3661 (Office) 502-540-2261 (Fax) [email_address]
Hinweis der Redaktion
Inequitable conduct resides in failure to disclose material information, or submission of false material information, with an intent to deceive. See Aspex Eyewear v. Clariti Eyewear, Inc. , 605 F.3d 1305 (Fed. Cir. 2010). The intent element can be shown by circumstantial evidence and is established by falsified data and concealed variations in experimental conditions relative to effectiveness of the product. See Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556 (Fed. Cir. 1983). Duty to disclose does not end until the patent issues.
Don’t rely on case law relating to patents when the issue is trademarks. McCarthy §31.62
Because TM rights exist at common law, the impact of a breach of the duty of candor is less severe than for patents.
Walker Process Equip., Inc. v. Food Mach. & Chem. Corp. , 382 U.S. 172, 177, 86 S. Ct. 347, 15 L. Ed. 2d 247 (1965). C.R. Bard v. M3 Sys ., 157 F.3d 1340 (Fed. Cir. 1998)
Hoffmann-La Roche, Inc. v. Promega Corp ., 323 F.3d 1354 (Fed. Cir. 2003)
Dayco Products, Inc. v. Total Containment, Inc. , 329 F.3d 1358 (Fed.Cir. 2003). Inequitable conduct found, so patents were invalid. The district court relied on three items that had not been cited to Arola: (1) the pendency of the ’196 application before Nicholson; (2) the Wilson reference; and (3) the rejection of substantially similar claims in the’196 application by Nicholson based on the Wilson reference. The Court of Appeals for the Federal Circuit addressed each of these three issues. It found that the applications for the patents-insuit and the ’196 application contained similar claims, and Arola could have issued a double-patenting rejection if he had been notified of the existence of the ’196 application. This could have resulted in the need to file a terminal disclaimer. The terminal disclaimer would have effectively limited the assignability of the patents because it would have required co-ownership of all of the patents throughout their term. Therefore, the Federal Circuit deemed that the pendency of the ’196 application was “material.” The court held that a contrary decision of another examiner reviewing a substantially similar claim meets the “reasonable examiner” threshold of materiality test of “any information that a reasonable examiner would substantially likely consider important in deciding whether to allow an application to issue as a patent.” The court also held that this information meets the threshold level of materiality under the materiality test of 37 C.F.R. § 1.56.
See Dippin' Dots, Inc. v. Mosey , 476 F.3d 1337 (Fed. Cir. 2007).
McKesson Information Solutions, Inc. v. Bridge Medical, Inc. , 487 F.3d 897 (Fed. Cir. 2007). MPEP 2004(18) - Finally, if information was specifically considered and discarded as not material, this fact might be recorded in an attorney's file or applicant's file, including the reason for discarding it. If judgment might have been bad or something might have been overlooked inadvertently, a note made at the time of evaluation might be an invaluable aid in explaining that the mistake was honest and excusable. Though such records are not required, they could be helpful in recalling and explaining actions in the event of a question of "fraud" or "inequitable conduct" raised at a later time.
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