Tag Archives: Materiality

Federal Circuit Upholds Inequitable Conduct Post Therasense For Withheld Information

In American Calcar, Inc. v. American Honda Motor Co., the Federal Circuit upheld the district court’s finding that three Calcar patents are unenforceable due to inequitable conduct. Both courts reached this decision of inequitable conduct post Therasense despite the fact that the validity of the patents over the information at issue had been upheld, and despite the … Continue reading this entry

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 Finds Material Withholdings And Misrepresentations To Support Inequitable Conduct

In Ohio Willow Wood Co. v. Alps South, LLC, the Federal Circuit found that Ohio Willow Wood had both withheld material information and made material representations during proceedings before the USPTO. Because the district court had granted summary judgment of no inequitable conduct in Ohio Willow Wood’s favor, the Federal Circuit vacated and remanded for … Continue reading this entry

Federal Circuit Finds Inequitable Conduct In False Rule 131 Declaration

In Intellect Wireless, Inc. v. HTC Corp., the Federal Circuit affirmed the district court decision holding Intellect’s patents unenforceable due to inequitable conduct. This is a rare case where the applicant was found to have submitted a false declaration, and did not cure that misrepresentation. … 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

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

Two for Tuesday: En Banc Hearings in Therasense, Tivo

This week brings two en banc hearings at the Federal Circuit. Inequitable conduct issues will be addressed in Therasense, Inc. v. Becton, Dickinson & Co., and contempt proceedings issues will be addressed in Tivo Inc. v. Echostar Corp. Both hearings are scheduled for Tuesday, November 9, at 10:00 am, in courtroom 201. Therasense, Inc. v. … Continue reading this entry