Therasense Inc. v. Becton, Dickinson and Co., No. 08-1511 (April 26, 2010, order)
During proseuction before the USPTO, the patentee made certain representations to the examiner regarding the patent claims and the prior art. At the same time, the patentee made representations to the EPO that were clearly inconsistent with the USPTO proceedings. The Federal Circuit found that the patentee's actions rose to the level of inequitable conduct (for more details, see here).
On petition for en banc rehearing, the court granted the request and vacated the earlier opinion, requesting that the parties file new briefs addressing the following issues:
1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29. The USPTO is invited to participate as amicus curiae.
2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
3. What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?
4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
5. Should the balancing inquiry (balancing materiality and intent) be abandoned?
6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.
Read the order here (link)