Inequitable Conduct in Retrospective: Understanding Unclean Hands in Patent Remedies

96 Pages Posted: 24 Apr 2013 Last revised: 12 Nov 2018

See all articles by T. Leigh Anenson

T. Leigh Anenson

University of Maryland - Robert H. Smith School of Business

Gideon Mark

University of Maryland - Robert H. Smith School of Business

Date Written: March 19, 2013

Abstract

This article critiques the Federal Circuit’s en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. on the issue of inequitable conduct in light of its origins in equity and unclean hands. It finds that the Therasense majority renounced the doctrine's heritage and reinvented the defense purely on policy grounds. Although the majority still called cheating in obtaining a patent monopoly inequitable conduct, there is little equity left. By revisiting the equitable doctrine of unclean hands, this Article provides critical guidance in the future adjudication of inequitable conduct. It evaluates what the defense could--and should--mean within the context of equity principles and patent remedy policies.

In particular, we criticize the Therasense majority for deviating from the tradition of equity by, among other things, relying on common law as opposed to equitable (constructive) fraud. The court justified its restriction of inequitable conduct because it claimed that the defense’s equitable nature had caused controversy. Yet we discover that the court of appeals had departed from historic equitable principles and constraints before that decision. In fact, the Federal Circuit would have likely never been in its current predicament with the defense had it followed the tradition of equity.

We show that the court had long ago uprooted the defense from its equitable foundation. This occurred in various ways, from adding unnecessary complexity to the inequitable conduct inquiry by multiplying its tests and failing for a time to use an abuse of discretion standard and other inconsistencies with appellate review, to expanding the defense beyond its frontiers to bar all cases and patent claims. We also advise that the unclean hands defense traditionally applies only to equitable relief.

While the literature on inequitable conduct is extensive, no one has examined inequitable conduct from its equitable tradition. Therefore, this article fills an essential gap in the scholarship on an issue of systemic importance.

Keywords: inequitable conduct doctrine, patent law, unclean hands, clean hands doctrine, equitable defenses, equity, equitable remedies

JEL Classification: K11, K39, K40

Suggested Citation

Anenson, T. Leigh and Mark, Gideon, Inequitable Conduct in Retrospective: Understanding Unclean Hands in Patent Remedies (March 19, 2013). American University Law Review, Vol. 62, 2013. Available at SSRN: https://ssrn.com/abstract=2254915

T. Leigh Anenson (Contact Author)

University of Maryland - Robert H. Smith School of Business ( email )

College Park, MD 20742-1815
United States
440-336-4468 (Phone)

Gideon Mark

University of Maryland - Robert H. Smith School of Business ( email )

College Park, MD 20742-1815
United States

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