Patent Infringement | "Applying New Inequitable Conduct Standard, Alsup Again Knocks Out Patent Claim"

By : Ginny LaRoe
Source : http://www.law.com
Category : Patent Infringement

An in-house lawyer's deception killed a patent infringement suit by Abbott Laboratories four years ago. And that lawyer's conduct continues to be the downfall of the suit under a new standard recently set forth by the Federal Circuit U.S. Court of Appeals.

U.S. District Judge William Alsup on Tuesday — revisiting the suit on remand — again sided against Abbott in its claims that other companies infringed on its patent pertaining to diabetic testing strips. As he did in 2008 at a bench trial, Alsup found the former Abbott lawyer's inequitable conduct — withholding certain information from the U.S. Patent and Trademark Office — rendered the patent invalid.

Alsup's order in Therasense v. Becton, 04-02123, marks one of the first interpretations of the Federal Circuit's ruling, which made it tougher for accused infringers to cite inequitable conduct as a defense.

The Federal Circuit took up the Abbott case en banc to address what it saw as an overuse of the inequitable conduct defense. In a split ruling authored by Chief Judge Randall Rader, the circuit overruled precedent by holding that a weak showing of intent could no longer be offset by a strong showing of materiality. The accused infringer, it said, must meet a so-called "but-for materiality" standard. That means in assessing the materiality of information withheld from the U.S. PTO, district courts must decide whether the patent office would have allowed the claim to the patent if it had been aware of the withheld information.

Alsup said his analysis under the new standard led him to the same conclusion: The patent was procured through inequitable conduct.

"No judge takes any satisfaction in finding fault in the conduct of a professional," Alsup wrote in reference to former Abbott in-house lawyer Lawrence Pope and a researcher who worked on the patent. "That is certainly true here."

The ruling marked a complete defense victory for New York Ropes & Gray IP partners Bradford Badke and Sona De, who represent accused infringers Becton, Dickinson & Co. and Nova Biomedical Corp. in the suit, filed in 2004.

Munger, Tolles & Olsen lawyers in San Francisco and Los Angeles represent Abbott.

Source : http://www.law.com/jsp/cc/PubArticleCC.jsp?id=1202547359176&Applying_New_Inequitable_Conduct_Standard_Alsup_Again_Knocks_Out_Patent_Claim