Patent Law’s Falstaff: Inequitable Conduct, the Federal Circuit, and Therasense

Abstract:     
For decades, the relationship between the U.S. Court of Appeals for the Federal Circuit and patent law’s doctrine of inequitable conduct has resembled that between Shakespeare’s Prince Hal and John Falstaff. The former recognizes the excess, the deservedly ill repute, even the at least occasional wickedness of the latter, but cannot tear away from his close companion. Likewise, for decades, Federal Circuit judges have criticized the excesses of the defense of inequitable conduct, which can render a patent unenforceable as a result of misrepresentation or nondisclosure to the U.S. Patent and Trademark Office. Nevertheless, U.S. patent law remains wedded to the defense’s existence. Without a real option of repudiating the defense, the Federal Circuit has instead sought to guide and confine the defense’s application in hopes of advancing legitimate aims at acceptable social cost. In this effort, the opinion for the en banc Federal Circuit written by Chief Judge Randall Rader in Therasense, Inc. v. Becton, Dickinson & Co. figures prominently. The background, content, and prospects for the Federal Circuit’s legal rulings in Therasense are the focus of this article.

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