Saved by Therasense: Deliberate decision to withhold references not found where art was cited in foreign counterpart and domestic co-pending applications
| October 10, 2012
1st Media v. Electronic Arts et al.
Decided September 13, 2012
Panel: Rader, Linn and Wallach. Opinion by Rader.
Summary
This case demonstrates how Therasense has changed the inequitable conduct analysis. Although the individual inventor and sole practitioner knew of references which were probably material, and did not submit the references, this is now insufficient to demonstrate inequitable conduct. It must additionally be shown that there was a specific decision to withhold the documents from the USPTO, in order to show an intent to deceive. This can be demonstrated, for example, by selective disclosure. However, no such evidence was presented, and thus an intent to deceive, the first part of the inequitable conduct analysis, was not found.
Tags: IDS > inequitable conduct > information disclosure statement > intent to deceive > Supplemental Examination
Revisiting Therasense, CAFC finds that an inventor’s subjective belief that submission of documents was unnecessary may not be sufficient to avoid a showing of intent to deceive
| April 18, 2012
Therasense判決に基づくCAFC判決；書類のIDS提出は必要ではないとする発明者の主観だけでは欺瞞の意図の立証を避けるのには十分ではないかもしれない。
Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Hospira Inc. and Apotex Inc.
April 9, 2012
Panel: Linn, Dyk, and Prost; Opinion by Prost
Summary:
The court found that the patents were invalid over withheld references, and unenforceable for inequitable conduct.
If the patentee did not narrow the ordinary meaning of a claim term by either acting as its own lexicographer or disclaiming claim scope either in the specification or during prosecution, that claim term cannot be interpreted more narrowly than its ordinary meaning.
If the claims at issue are found invalid over a withheld reference under the clear and convincing evidence standard, then the withheld reference is found but-for material under the preponderance of evidence in Therasense; in this case, the materiality requirement was met since the patents were invalid based on the withheld references.
The witness’ explanation that that he believed he did not need to disclose the references to the PTO may not be sufficient to show that there was no specific intent to deceive the PTO because that finding was not the single most reasonable inference that could be drawn, unless the testimony is credible and the evidence presented is supported. The reference disclosing the information that shaped the inventive thinking should be cited, and there is no justification for telling the PTO about the prior art disclosing the problem an inventor examined while concealing key prior art disclosing the solution he chose.
