Litigating Inequitable Conduct after Therasense, Exergen, and the AIA: Lessons for Litigants, Options for Owners

38 Pages Posted: 8 Aug 2013 Last revised: 27 Aug 2013

See all articles by Lisa A. Dolak

Lisa A. Dolak

Syracuse University - College of Law

Date Written: August 8, 2013

Abstract

Significant recent judicial and legislative developments have changed the way litigants and counsel need to plan for and litigate inequitable conduct allegations. Exergen and Therasense have heightened the standards for pleading and proving inequitable conduct, respectively, and Congress has expanded the patentee’s post-grant options for preempting or defeating inequitable conduct challenges. Without a doubt, the inequitable conduct litigation landscape has changed. Careful, thorough consideration of all of these developments and their implications is a must for any litigant or counsel faced with or considering asserting a charge of inequitable conduct.

This paper discusses these significant recent inequitable conduct-related developments and their combined impact on litigating the defense. It reviews the new judicial standards for pleading and proving inequitable conduct and illustrates their application in recent Federal Circuit and district court decisions. It identifies several areas of debate among the district courts regarding the impact of Therasense and Exergen on pleading inequitable conduct, and summarizes lessons for litigators from recent cases. It discusses the legislature’s recent contribution to the inequitable conduct landscape: the supplemental examination proceeding created by the Leahy-Smith America Invents Act (“AIA”), and considers the options, post-Therasense and the AIA, for patent owners faced with a potential inequitable conduct challenge.

Keywords: patent, inequitable conduct, litigation, Therasense, Exergen, supplemental examination

JEL Classification: K39, K41

Suggested Citation

Dolak, Lisa A., Litigating Inequitable Conduct after Therasense, Exergen, and the AIA: Lessons for Litigants, Options for Owners (August 8, 2013). Available at SSRN: https://ssrn.com/abstract=2307574 or http://dx.doi.org/10.2139/ssrn.2307574

Lisa A. Dolak (Contact Author)

Syracuse University - College of Law ( email )

Syracuse, NY 13244-1030
United States

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