Tuesday, June 28, 2011

Therasense discussed in American Calcar

Therasense is mentioned as to inequitable conduct:

We have recently clarified the standards for determin-
ing materiality and intent that district courts should
apply in resolving issues of inequitable conduct. See
Therasense, slip op. at 24-35. To prove inequitable con-
duct, the accused infringer must provide evidence that the
applicant (1) misrepresented or omitted material informa-
tion, and (2) did so with specific intent to deceive the PTO.
Id. at 19 (citing Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008)). Under
Therasense, the materiality required to establish inequi-
table conduct is, in general, but-for materiality. Id. at 27.
When an applicant fails to disclose prior art to the PTO,
that prior art is but-for material if the PTO would not
have allowed a claim had it been aware of the undisclosed
prior art. Id.


“In a case involving nondisclosure
of information, clear and convincing evidence must show
that the applicant made a deliberate decision to withhold
a known material reference.” Therasense, slip op. at 24
(citing Molins PLC v. Textron, Inc., 48 F.3d 1172, 1181 (Fed. Cir. 1995)).


Under Therasense, “the
accused infringer must prove by clear and convincing
evidence that the applicant knew of the reference, knew
that it was material, and made a deliberate decision to
withhold it.” Id. at 24. Although the court performed a
detailed analysis of the facts withheld, it made no holding
that any of the inventors knew that the withheld informa-
tion was in fact material and made a deliberate decision
to withhold it. Instead, it relied on the sliding scale
standard that we have rejected en banc in Therasense, id.,
basing its finding of intent significantly on the materiality
of the 96RL system to the claimed invention.


Post a Comment

<< Home