Inequitable Conduct: Merely Disclosing Documents that Contradict a Patentee’s Deceptive Declaration Does Not Obviate the Patentee its Duty of Candor

Therasense, Inc. v. Beckton, Dickinson and Co., No. 2008-1511, -1512, -1513, -1514, -1595 (Fed. Cir. Jan. 25, 2010)

Holding:

Merely disclosing documents that contradict the patentee’s deceptive declaration does not obviate the patentee its duty to avoid intentional deception in the declaration before the PTO. Slip op. at 31.

To render a claim obvious, the cited prior art as a whole must enable one skilled in the art to make and use the apparatus or method. For anticipation, however, an individual prior art reference need not be enabled and qualifies as a prior art for its disclosure. Id. at 12.

Relevant Facts:

The patents-in-suit are directed to disposable blood glucose test strips. The Federal Circuit affirmed the district court’s ruling that (1) that claims 1–4 of U.S. Patent No. 5,820,551 were invalid due to obviousness and that the entire ’551 patent was unenforceable due to inequitable conduct, (2) all asserted claims in U.S. Patent Nos. 6,143,164 and 6,592,745 were not infringed, and (3) nearly all of the asserted claims of the ’745 patent invalid due to anticipation. Slip op. at 2-3. Specifically with regard to inequitable conduct, the patentee made contradicting statements before the PTO and the EPO. Although the patentee submitted the EPO documents to the PTO, the patentee also submitted a deceptive declaration to the PTO. Id. at 31.

Comments:

It appears that the Federal Circuit is more likely to find inequitable conduct in two main situations: (1) failure to cross-cite material references in related pending applications, and (2) submitting a deceptive declaration. Other than these two situations, it is more difficult for the challenger to convince the Federal Circuit that the patentee committed inequitable conduct during prosecution.