On January 25, 2010 a Federal Circuit Court of Appeals three judge panel affirmed a district court conclusion of inequitable conduct in the case Therasense, Inc. v. Becton Dickinson & Co. The conclusion was specifically that a patent related to disposable diabetes blood test strips was unenforceable because statements made in international patent prosecution were not disclosed to the US PTO in the corresponding US case.
- Should the materiality-intent balancing framework for inequitable conduct be modified or replaced?
- If so, how? In particular, should the standard be tied directly to fraud or unclean hands? If so, what is the appropriate standard for fraud or unclean hands?
- What is the proper standard for materiality? What role should the US PTO'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?
- Under what circumstances is it proper to infer intent from materiality?
- Should the balancing inquiry (balancing materiality and intent) be abandoned?
- 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.
On May 25, 2011, the Court of Appeals for the Federal Circuit issued a decision in Therasense v. Becton Dickinson.
On June 22, 2011, the lawyers of Banner & Witcoff, Syracuse University Law Professor Lisa Dolak, and Chief Intellectual Property Counsel for Johnson & Johnson, Philip Johnson, led a panel discussion that provided analysis and insight on the Federal Circuit’s decision in Therasense v. Becton, Dickinson.
Click here to view the 90-minute recorded program.
- May 25, 2011 -- CAFC Issues a Decision
- November 9, 2010 -- CAFC Oral Argument
- CAFC En Banc Decision (May 25, 2011)
- Transcripts of the CAFC oral argument
- Intellectual Property Law Association of Chicago Amicus Brief (Filed by Charles Shifley of Banner & Witcoff, August 2, 2010)
- En Banc Order (April 26, 2010 )
- Federal Circuit Court of Appeals Decision (January 25, 2010)
Banner & Witcoff attorneys are available to answer questions and discuss the Therasense v. Becton Dickinson & Co. case. Media inquiries should be directed to Colleen Strasser at (312) 463-5465 or firstname.lastname@example.org.