On April 9, 2012, a Federal Circuit panel of judges —
Linn, Dyk, and Prost — upheld a finding of inequitable
conduct from Chief Judge Sleet in the District of Delaware.
Aventis Pharma S.A. et al. v. Hospira, Inc. et al., Fed.
Cir., No. 2011-1018, 4/9/12. The court upheld the district
court's finding of inequitable conduct, concluding it was
consistent with the Federal Circuit's recent
Therasense decision, even though the decision issued after
the district court's finding. See Therasense, Inc. v.
Becton, Dickinson & Co., 649 F.3d 1276,1290 (Fed. Cir.
2011) (en banc).
Therasense rejected the "sliding scale" approach
to proving inequitable conduct, required separate materiality and
intent inquiries, and set out a "but-for" materiality
standard. The Aventis court concluded that because the
withheld references rendered the patents invalid, they were
necessarily material to patentability under the Therasense
standard.
As for the intent inquiry, the court upheld the district
court's rejection of the inventor's rationale for
withholding certain references. The court explained that
Therasense "confirmed that inequitable conduct
requires clear and convincing evidence of a specific intent to
deceive the PTO and that 'the specific intent to deceive must
be the single most reasonable inference able to be drawn from the
evidence.'" See Aventis Slip Op. at 16-17. But
while the inventor had testified that he withheld the references
because they described only "failed experiments," the
court noted the contrary evidence in the record and the district
court's finding that the inventor's testimony lacked
credibility, and held that the court's finding of specific
intent to deceive the PTO was not clearly erroneous.
What This Means for You
Therasense did not kill the doctrine of inequitable conduct in patent litigation. Despite the heightened standard, the Federal Circuit is still willing to affirm well-reasoned findings of inequitable conduct grounded in an inventor's failure to disclose prior art references. Thus, litigants should not take the doctrine lightly, particularly in the face of a prior art reference that invalidates at least one patent claim and an excuse for non-disclosure that seems suspicious and fails to square with other evidence.
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