Tag Archives: Therasense

Federal Circuit Upholds Inequitable Conduct Defense Against Apotex Patent

In Apotex Inc. v. UCB, Inc., the Federal Circuit upheld the district court’s finding that Apotex’s patent is unenforceable due to inequitable conduct. While affirming on the ground of “but-for materiality,” the Federal Circuit noted that the inventor’s conduct “at a minimum, come[s] close to the type of affirmative misconduct” that can “justify finding inequitable … Continue reading this entry

Federal Circuit Invalidates Prandin Patent Claim As Obvious

In its third look at the Novo Nordisk A/S patent related to Prandin®, in Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories Ltd., the Federal Circuit affirmed the district court’s finding that claim 4 of U.S. Patent No. 6,677,358 is invalid as obvious, but reversed the district court’s finding that the patent is unenforceable due to … Continue reading this entry

Public Comments Criticize USPTO's Proposed Rules For "Routine Discovery," "Patentee Estoppel," and Amendments in Board Trial Proceedings

As I previously pointed out, there are three proposed rules in the USPTO’s patent trial proceedings rules package that raise concerns and should be dropped.  Public comments on these proposed rules were due April 9-10, 2012.  Now that the public has spoken, let’s take a look at what people had to say about these three specific … Continue reading this entry

USPTO Adapts To Therasense

The USPTO announced on July 21, 2011, that it plans to “revise the standard for materiality” for the duty of disclosure in view of the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co. In particular, the USPTO plans to “match” the materiality standard the court announced in the context of its inequitable … Continue reading this entry

Revisiting IDS Guidelines? While You're At It . . .

As I noted last week, the USPTO is revisiting its guidance on the Duty of Disclosure in the wake of the Federal Circuit’s en banc decision in Therasense. While the USPTO is reviewing the substantive requirements of the Duty of Disclosure, I hope that it also takes this opportunity to ease the procedural burdens associated with … Continue reading this entry

USPTO Will Issue Guidance On Therasense

On the heels of the Federal Circuit’s en banc decision in Therasense, the USPTO has announced that it will be issuing guidance “related to the prior art and information [applicants] must disclose to the Office in view of Therasense.” According to the USPTO’s press release: We are now studying the potential impact of Therasense . … Continue reading this entry

Therasense Decision "Tightens" Inequitable Conduct Standard

On May 25, 2011, the Federal Circuit issued its long-awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. After a panel affirmed the district court’s finding of inequitable conduct, the court agreed to rehear the appeal en banc in order to revisit the law of inequitable conduct. The court’s decision “tightens the standards” … Continue reading this entry

Will The Federal Circuit's Therasense Decision Solve The McKesson Problem?

This week the Federal Circuit heard oral arguments in its en banc rehearing of Therasense, Inc. v. Becton, Dickinson & Co. As reflected in the en banc order, the court took this case en banc in order to reconsider—and hopefully reform—the law of inequitable conduct. The court’s decision could solve the McKesson problem and rein … Continue reading this entry

Time to Run Background Checks?

Two recent decisions from the Federal Circuit warn that misstatements in the background section of a patent application can constitute “misrepresentations of material fact” that can support a finding of inequitable conduct. These cases may have practitioners reviewing the background sections of pending applications and reconsidering the type of information included in the background sections of future … Continue reading this entry