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Patricia O'Connell
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Wiley Rein IP Attorneys Comment on Therasense Decision

May 26, 2011

Intellectual Property Practice partners Eric H. Weisblatt, Floyd B. Chapman and Kevin P. Anderson provided analysis to Law360 on the Therasense Inc. v. Becton Dickinson & Co. case, after the U.S. Court of Appeals for the Federal Circuit's ruling "raised the bar for establishing inequitable conduct as a defense in patent infringement litigation."

Mr. Weisblatt commented that the ruling is "much ado about nothing. 'Deliberate decision' using circumstantial evidence? Not a high hurdle. With materiality, the district court is to teleport itself to the USPTO and consider the patentability of claims without any statutory presumption, under the preponderance of evidence standard and using the broadest possible claim interpretation? Not a wide river to cross. These rules will not slow down inequitable conduct allegations one whit. It is the Exergen pleading requirements that will cure the parade of horribles elaborated by the bare majority in Therasense; not these rules."

Mr. Chapman noted that "While winning an inequitable conduct defense will be more difficult in the future, this decision is unlikely to reduce the number of inequitable conduct claims. Moreover, given the criticism by the dissenting judges, namely that the majority adopted a standard that was previously considered and rejected by the patent office, this decision is likely to be appealed to the Supreme Court. Until then, the high incidence of inequitable conduct charges will continue."

Mr. Anderson said that "Judge Bryson and his three co-dissenters present a well-reasoned dissent which points out all of the problems resulting from the majority opinion, which essentially eliminates inequitable conduct. Patent applicants have no incentive to submit critical references to the PTO. As Judge Bryson states: even 'an open door may tempt a saint.' This dissent appears to give a number of valuable arguments for any petition to the Supreme Court."