Archive for the ‘but-for Therasense standard’ Category

Therasense on Remand: Inequitable Conduct Deja Vu?

Tuesday, April 3rd, 2012

In 2011, the Court of Appeals for the Federal Circuit en banc reheard the thorny issues of inequitable conduct and announced new intent and materiality standards.  Therasense, Inc v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011).  The majority held that a weak showing of intent can no longer be offset by a strong showing of materiality, and intent cannot be inferred solely from materiality.  The accused infringer must prove by clear and convincing  evidence that the patent applicant knew of an omitted reference, that it was “but for” material, and made a deliberate decision to withhold it.  Therefore, the test could be restated that but for the witholding of the reference, the application would have been rejected based on that reference.  The majority remanded the case to the issuing district court for new findings of fact based on the new standard.