Denial of Institution Sinks Materiality Allegation

Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. The standard for inequitable conduct was recalibrated in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011).  To prevail on the defense of inequitable conduct, an alleged infringer must demonstrate two elements—materiality and intent.  That is, demonstrate that the patent applicant misrepresented or omitted material information with the specific intent to deceive the PTO.  Materiality of information changed from the previous “reasonable examiner” standard to “but-for” materiality in Therasense.

Of course, the best way to prove such materiality is to demonstrate that the PTO is in the process of reconsidering its earlier decision based on this same prior art.
Continue Reading Therasense “But For” Materiality Mooted by IPR Loss