Statutory Guidelines for Inequitable Conduct

In TheraSense, the en banc Federal Circuit is looking to rewrite the rules of inequitable conduct. By both its name and historic precedent, inequitable conduct appears to stem from non-statutory doctrines of equity. However, as with other equitable doctrines (such as injunctive relief), inequitable conduct could be somewhat tamed by the language of the Patent Act. In his TheraSense amicus brief, Professor Hricik is taking a useful approach by focusing on the statutory basis for holding claims unenforceable.

Two provisions of the Patent Act come to mind. One is general and the other specific. The general statute is 35 USC 282(1). That portion of Section 282 identifies "unenforceability" as a defense to patent infringement. In TheraSense, the court's first goal should be to interpret the meaning of unenforceability as found in that statute.

The more specific provision is Section 288. It is Section 288 that allows a patentee to assert infringement of remaining claims even after some of the claims are found invalid. Section 288 sets a specific limit on this separability principle. Namely, separability of claims does not apply when an invalidated claim was obtained through deceptive intent.

Whenever, without deceptive intention, a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. 35 U.S.C. §288.

Section 288 is not exhaustive in its approach. Rather, the statute is only explicit that the remaining claims of a patent can be asserted even after one of the claims was found invalid, so long as that invalid claim was not obtained with deceptive intent. The statute does not explicitly indicate the result when an invalid claim was obtained with deceptive intent or, for that matter, when a valid claim was obtained with deceptive intent. In his brief, however, Professor Hricik concludes that these statutes should be read to – at times – limit the Court’s ability to automatically render all claims of a patent unenforceable after a finding of inequitable conduct.

Contact Professor Hricik if you (or your firm / company) are interested in joining the brief.

51 thoughts on “Statutory Guidelines for Inequitable Conduct

  1. 50

    I like being called an academic, though I don’t feel that way, even after 8 years of teaching. I practiced law for 14 years before teaching, and spend way too much of my time helping practitioners defend themselves from malpractice claims, or assisting clients to prove the practitioner did muff it.

    If anyone wants the final, filed version, email me (you can find it at hricik.com) because I know my arguments morphed and refined themselves.

    But I do think I’m right. Put as simply (and non-academically!) as I can: at a time when Congress deliberately made it so that invalidity caused by even gross negligence could not affect the validity of other claims, what sign is there, anywhere, that it intended to create a doctrine — never recognized in the supreme court cases cited by the CAFC in its en banc request — that allows deceit that doesn’t cause invalidity of a claim to gut the whole patent? Where is there any indication — at all — that Congress thought the judiciary was better equipped to determine what the office needed to get, rather than the office?

    More basically, where is there a single case that stopped to analyze these foundational, fundamental issues?

    We’ll see. I’ve had the CAFC tell me I’m wrong before (see, e.g.,….).

  2. 49

    Ken, no. Violation of rules, even intentional violation of rules normally has no substantive effect. There is a recent case from Germany that I was involved in to the same effect relative to the EPO.

    The USPTO has no substantive authority. It can make rules of procedure. But it cannot impose duties on the public which have any substantive effect. It cannot impose a duty of disclosure not authorized by statute or required by the Supreme Court or the Federal Circuit.

    Ken, you also hit the nail on the head. It is one thing to require an oath and to not file claims known to be unpatentable, Section 115, or to commit fraud, US vs. Amer. Bell, and quite another to “fail to disclose art important to a reasonable examiner.” A claim either is valid or not over the art. If it is invalid, then the issue is did you know about it? If you did, the statutory violation is submitting the claim, not failing to submit the art.

    The 1940’s era Supreme Court cases are all of the “fraud” variety, consistent with US v. Amer. Bell. I

  3. 47

    “There is nothing in these provisions expressing an intention of limiting the power of the government of the United States to get rid of a patent obtained from it by fraud and deceit; and although the legislature may have given to private individuals a more limited form of relief, by way of defense to an action by the patentee, we think the argument that this was intended to supersede the affirmative relief to which the United States is entitled, to obtain a cancellation or vacation of an instrument obtained from it by fraud, an instrument which affects the whole public, whose protection from such a fraud is eminently the duty of the United States, is not sound.”
    This language is a far cry from what has been put in place by the Federal Circuit or its predecessor the CCPA. Firstly, the Supreme Court made clear that it is the government’s duty to protect the public from fraud. There is absolutely nothing in that language that requires the patentee to protect the public from fraud. Secondly, this makes salient that the USPTO has a duty to search its own records for potentially relevant information, including related patents: “protection from such a fraud is eminently the duty of the United States, is not sound”. However, the Federal Circuit, or its predecessor, has basically moved to establish rules in contravention to the Supreme Court by excusing patent examiners from thoroughly searching the patent database by squarely placing the onus on the one seeking to exercise a statutory right: grant of a patent. What must be understood is that 35 USC 102 mandates the grant of a patent unless certain disqualifying events have occurred. This is an affirmative statutory right. This is a right with very important international consequences.

    The Federal Circuit and the USPTO appear to have confused the duties of USPTO having to protect the public from fraud and the requirement that a patentee not commit fraud upon the USPTO. Requiring a patentee to protect the public from fraud runs afoul of the Thirteenth Amendment. Not committing a fraud upon the Federal Government means that one must be honest with it. Not committing a fraud upon the public would make a patentee the insurer for the public against malfeasance or negligence upon the part the USPTO not fulfilling their duties to undertake a thorough search, including related cases that may clearly be identified by the PALM system and ensure that the requisite prior art is cited in the case. If you take the Supreme Court’s language at face value one should be able to argue that the outcome in MacKesson was completely wrong, because the fact that the examiner was in charge of both cases and failed to cited the relevant art in both is evidence that the art that was not cited in one of the cases was not material to that case. Given that the USPTO has the duty to protect the public from fraud we must assume that the USPTO is performing its duty and, therefore, the absence of the same piece of prior art in two related cases is evidence that the same is not material in the case in which it was omitted. However, this is not the rule set forth by the Federal Circuit.

  4. 46

    Has the Supreme Court ever held a patent invalid or unenforceable due to inequitable conduct resulting from a violation of 37 CFR 1.56?

  5. 45

    Ken, I know of two statutory grounds for “unenforceability:” a violation of section 115, and we have the above quoted Supreme Court case in support, and the sundry Supreme Court cases and early 1900s where a violation of antitrust laws led to unenforceability due to patent misuse. Every case other than patent misuse involved deceit where the applicant clearly knew at the time of the misrepresentations that the patent was invalid. This is no more than a violation of section 115.

    I am unaware of any Supreme Court case that has found a patent unenforceable for anything less than a violation of section 115 or the antitrust laws. If there is one, I’d like to see it.

  6. 44

    Yes Ned and as I have always ssid the invalidity and unenforceability of a patent must be tied with the statute. If a statue does not provide grounds for invalidity or unenforceability it is ultra vires for the courts to create reasons for holding a patent invalid or unenforceable with in equity or Federal Common law.

  7. 43

    Ping,

    Let me retract that statement to the extent I believe an infringement defendant or non-infringement plaintiff should have the burden of proof. I just believe that standard should be preponderance of the evidence.

  8. 42

    I am OK with no presumption of validity.

    And that makes the US patent stronger how?

    Geesh, another let’s change the US patent to make it weaker statement.

  9. 41

    On topic,

    Most patent practitioner’s concerns with respect to IQ are due to disclosure requirements.

    Disclosure requirements should be eliminated. The US is the only country to require them. However, I am NOT for sealing the prosecution record. Also, I am OK with no presumption of validity.

  10. 40

    Hawkman,

    Someone else brought up Bell, but didn’t Tesla (and his estate) successfully sue Marconi and take ownership of the basic radio patents.

  11. 39

    All this shows, IMHO, is that the violation of “deceit” is rooted exclusively in Section 115.

  12. 38

    Actually, issue went to the US Supreme Court in United States vs. American Bell telephone company,128 U.S. 315 (1888). link to ftp.resource.org

    There Supreme Court held that the government had the power to sue in equity for revocation of a patent obtained by fraud and deceit.

    “The bill alleges that Bell, the patentee, knew at the time of filing his application for the patent of March 7, 1876, that he was not the original and first inventor, as the law required he should be, of all the improvements in telegraphy described and claimed in said specification; ‘that certain of the so-called improvements had been previously known to and used by others, as is hereinafter more fully and at large set forth; that the said Bell, on the 20th day of January, 1876, and at the time of filing the said application, did not verily believe himself to be the original and first inventor of all the so-called improvements in telegraphy described and claimed in the said specification; and that on the said 20th day of January, 1876, and at the time of filing the said application, the said Bell did know and did believe that certain of the so-called improvements in telegraphy described and claimed in the specification aforesaid had been previously known to and used by others, as is hereinafter more fully set forth.'”

    “There is nothing in these provisions expressing an intention of limiting the power of the government of the United States to get rid of a patent obtained from it by fraud and deceit; and although the legislature may have given to private individuals a more limited form of relief, by way of defense to an action by the patentee, we think the argument that this was intended to supersede the affirmative relief to which the United States is entitled, to obtain a cancellation or vacation of an instrument obtained from it by fraud, an instrument which affects the whole public, whose protection from such a fraud is eminently the duty of the United States, is not sound.”

  13. 37

    Ned:

    WHERE did Congress: Usually goes into the 102 bin. (F) is a popular one, but there are so many from which to chuse.

    2) Unenforceable.

    What do I win?

  14. 36

    ping, exactly WHERE did Congress legislate that a patent could be held unenforceable for failure to disclose a reference “important” to a reasonable examiner.

    Don’t fudge. Give me chapter and verse.

    Ken, Section 115 does require an oath. If one violates the oath, a statutory requirement, is the patent

    1) invalid; or

    2) unenforceable?

  15. 35

    Ken,

    Like my pal IANAE lectured you and Ned previously, Congress has indeed clearly spoken – they invited the Courts to apply the laws of equity. You are simply wrong about the ultra vires stance. You were wrong then. You are wrong now. Iza too lazy to look up the section with the invite, but Ima sure you remember it – let the good visiting professor know that section, ok?

  16. 34

    HawkMan,

    Aren’t the claims invalid under 102(f)? If less than a year since initial publication, he could have filed his own application and filed a 131 to swear behind the other patent.

  17. 33

    The policy should be simple: No IQ without sufficient evidence of deceptive intent. Such intent shall not be inferred from a failure to disclose, regardless of how material a prior art document may appear in hindsight.

  18. 32

    Like Ned Heller and I were aruging a few months back. This professor is exacly right. The entire Equitable Doctrine law as based on equity is ultra vires for the Courts, because Congress has clearly spoken on the issue of unenforceablity and invalidity in the statute.

  19. 31

    “LOL…where do you people come from!?

    Posted by: Asmodean | Jul 03, 2010 at 04:48 PM ”

    The United States.

    We work toward the reformation of Tories and Monarchists here. They are an incorrigible lot though.

  20. 29

    …making clear that the Patent Act creates no special rights divisible from the rest of equity law. Clearly, that is the takeaway from eBay.

    That might be too general a takeaway from eBay, since the statute at issue in that case expressly invokes the non-statutory principles of equity.

    But looking for limits on inequitable conduct in the statutory sections that Professor Hricik identifies seems a bit of a stretch.

  21. 28

    However, as with other equitable doctrines (such as injunctive relief), inequitable conduct could be somewhat tamed by the language of the Patent Act.

    I see quite the opposite – the judiciary has been pushing in the opposite direction making clear that the Patent Act creates no special rights divisible from the rest of equity law. Clearly, that is the takeaway from eBay.

  22. 27

    Hawk see Richardson v. Suzuki Motors in which IIRC the Fed Cir affirmed the DC’s ordered assingment of patents resulting from misappropriation of trade secrets.

  23. 26

    35 usc 251 calls for the reissue of defective patents “deemed wholly or partly inoperative or invalid” when the part of the entire patent made invalid or inoperative is not the result of “deceptive intent”.

    The professor is incorrect in stating that the law prescribes that the remaining patent contains enforceable claims; it is defective, with inoperative or invalid claims due to the deliberate misconduct of the patentees or their agents. The doors of the USPTO should be closed to such miscreants just as the doors of our courts should be foreclosed to these criminals in equity. Furthermore, this is consistent with the law as it is written, not as the professor’s clientèle would like it to be.

    “Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.”

    Here “new matter” would be the honesty of the patentee, which is not proven to be anything but an entirely novel invention, since they’d lied to the patent office in the past. Inequitable conduct findings don’t come out of the blue to humble, loveable inventors quietly in possession of valid claims that are enabling their industrial practices and their manufacture of wonderful products to advance our lives, you know.

  24. 23

    Given all of those ocnsiderations, the threshold for I.C. is actually very protective of patentees and their attorneys.

    Mike, you make too much sense for most of this crowd.

  25. 22

    Why would the power of any Judge that is lied to or being given wrong information however given, be any different from a scathing from Scalia? Doesn’t every Judge own his own space? Be it Traffic or Scotus?

  26. 20

    ping, you blockheadedness never ceases to amaze.

    If ig nor ance of the law were a virtue, you would be sainted.

    If common sense were required to be a lawyer, you would be a clerk.

    I would like to see you write an opinion for review by Scalia. His review would cringe the fur from a grizzly at a thousand miles.

  27. 19

    under the circumstances

    Unfortunately, this leads to the purposefully ignorant situation and defeat of the reason for having a patent system – culpability of reviewing prior art and what has been patented will be objectively avoided by not searching and reviewing prior art.

    …human nature, ya know.

  28. 18

    IANAE, “I know it when I see it” is not the kind of “bright line” rule we need.

    Absent misrepresentation, I would NOT hold unenforceble any patent. Mere non disclosure of anything is not a misrepresentation.

    This said, it is also clear that filing a patent application or any claim knowing the claim is unpatentable for any reason is a misrepresentation because one has a STATUTORY (Section 115, this is the pertinent statute, not 288) duty to swear that he believes the claims are patentable.

    Knowing. That is the key. One could also use the Seagate standard of objectivity. One knows if an objectively reasonable person under the circumstances would know.

    I would also require that a JURY preliminary find the involved claim actually BE invalid before the secondary inquiry is perused. Not only is this prudent, but, IMHO, it is REQUIRED under the 7th Amendment. Dairy Queen.

  29. 17

    How about claims that *should* have been granted but weren’t, due to Inequitable Conduct by the Patent Examiner and BPAI?

    If you don’t like their decision, there’s always the Federal Circuit.

  30. 16

    How about claims that *should* have been granted but weren’t, due to Inequitable Conduct by the Patent Examiner and BPAI?

    Oh, I forgot, Inequitable Conduct by the Patent Office goes away under Substantial Deference.

  31. 15

    the right answer for the Federal Circuit is to follow the current rule 56 as written.

    If someone does something otherwise inequitable or dishonest that happens not to violate Rule 56, should the Federal Circuit just let it slide?

  32. 14

    IANAE, above, has it right. The statutes provide little or no guidance as to the remedy for inequitable conduct. All we know from the statues is that if there is No inequitable conduct, finding one claim invalid will not render unenforceable other claims that are valid.

    I have previously expressed my views in other threads that the right answer for the Federal Circuit is to follow the current rule 56 as written. Everyone knows, and they themselves acknowledge, that they have yet to do this in any case.

  33. 13

    From my take of Professor Hricik’s issue, there appears to be an overlap between 282 and 288.

    Could somebody present two (short) fact patterns (or more, if needed) to illustrate the importance of the issue that Professor Hricik will raise? Perhaps illustrate how the outcomes would differ because of the issue?

  34. 12

    “I’m not really sure how this is an unenforceability issue anyway”

    There is a clear IC/unenforceability issue if the applicant knowingly signed a false oath or declaration alleging himself to be the true inventor.

  35. 11

    He got a patent granted and negotiated a license? How long was the original inventor sitting on his invention?

    He wasn’t necessarily sitting on the invention. He wasn’t sure that it was ready to patent. He was working on additional changes to the invention. The bad actor moved swiftly through the patent process and subsequent license agreement which also might be dirty- we aren’t sure.

    Surely there’s some procedure for removing as inventor a person who did not actually invent the claimed invention. I don’t know what implications that would have for the licensee, though.

    I only recently found one case which, in my early review, appears to do so: Yeda Research And Development Co. Ltd. v. Imclone Systems Inc.

    Also, if the true inventor is reasonably diligent in filing his own application, he can also swear behind the other application and get his own patent. Or provoke an interference.

    Part of the problem with this is that 1) the bad actor filed the application without first notifying the other party and 2) deceived the other party as to the breadth of application, which was unpublished. The whole thing wreaks of impropriety and inequitable conduct.

    I’m not really sure how this is an unenforceability issue anyway, or how it’s any issue affecting only some of the claims of a patent. If you’re not an inventor, you’re not entitled to the patent. That’s a question of validity.

    Yes, that is true. The reason it is an unenforcability issue is realted to how to get paid. The party not named in the patent is really screwed. He invented something, had it stolen, and he can’t get paid. If he alleges inequitable conduct then the entire patent will be unenforceable and he won’t be able to exercise his rights in the future. If he seeks a §256 amendment to be added, the license agreement still goes down and he doesn’t get paid.

    To me, and my opinion isn’t worth much, this rewards bad actors and encourages people to file patent applications for works they didn’t create and to conceal the applications for as long as possible because the original inventor has very little incentive at that time to do anything.

    Yes, I understand that the inventor could add himself to the invention (§256) and then threaten to the original licensor that he would then license to other people if the original licensor didn’t pay him something. Or, the inventor could bargain with the bad actor, his leverage being the invalidity claim, but this still appears to be unjust. I think you are stripping an inventor, or at least reducing, of his rights to his invention and encouraging bad actors to submit patents with disregard to correct inventorship.

    I would welcome any suggestions to remedy a problem of this nature. Surely this ‘slick rick’ can’t be the first person to pull the wool over the eyes of an inventor.

  36. 10

    Seal the file wrapper. Restrict the assumption of validity only to the references listed on the patent. IC issues basically go away.

    If some douche of an applicant was able to get the case allowed by hiding references, he does so knowing that those references can be found by any infringer doing due diligence, and then used against the patent in reexamination. Or, better, in a declaratory judgment action to find the patent invalid, where you can get discovery. If the discovered references only disclose 3 out of 10 claims, then 7 claims are still good.

    One objection to this plan raised in another thread is that without access to the file wrapper the applicant will argue to the examiner that white is gray to get the patent, and then argue to the court that black is gray to keep the patent.

    Nonsense. The courts can determine whether black or white is gray — that’s why we pay them. Makes no difference to the truth of the matter what the applicant originally argued.

  37. 9

    Ping,

    It’s OK for the academics to play here. We just have to view what they say with a big grain of salt.

  38. 8

    the person he employed to assist in a fab of the prototype took his design and submitted and was granted a patent on the material. He then went out and licensed a deal.

    He got a patent granted and negotiated a license? How long was the original inventor sitting on his invention?

    It appears that the true inventor is really left without recourse. Invalidate the patent and lose his rights in the future? Add himself as an inventor and still not have a remedy against the licensing agreement, since as we all know, both patent holders are eligible to do what they want?

    Surely there’s some procedure for removing as inventor a person who did not actually invent the claimed invention. I don’t know what implications that would have for the licensee, though.

    Also, if the true inventor is reasonably diligent in filing his own application, he can also swear behind the other application and get his own patent. Or provoke an interference.

    I’m not really sure how this is an unenforceability issue anyway, or how it’s any issue affecting only some of the claims of a patent. If you’re not an inventor, you’re not entitled to the patent. That’s a question of validity.

  39. 7

    I’ve always had a soft spot for charges of inequitable conduct, here’s why:

    Let’s start with the fact that the result of patent prosecution is a patent grant. The patent grant is obstensibly the result of two adversarial parties: the applicant and the PTO/examiner. The patent grant is only “fair” if the PTO/examiner has the ability to protect the public (and future defendants). The “upside” of this process is a grant of a patent with a presumption of validity.

    In this sense, the issue should be: why treat prosecution any differently than any other adversarial process (e.g., litigation, arbitration)? In the case of patent prosecution, the examiner/PTO does not have subpoena power, does not have the power to depose inventors or other interested individuals, cannot require huge numbers of documents be produced, cannot place a litigation hold on all relevant documents, etc. In litigation, tomfoolery regarding discovery is frequently grounds for sanctions, motions to compell, etc. I would wager there are more litigation motions than there are charges of inequitable conduct, but no one is calling those charges a “plague.”

    But since we do not really give the PTO those powers (nor would they have the time, money, resources, even if they did), the only way to a fair result (i.e., a grant of a patent) requires that the patent applicant produce everything that the other side needs to know.

    In fact, in view of this situation, the level of truthfulness and the amount of “deception” that should be tolerated by courts and the PTO should be much different than in a patent litigation. The applicant should be held to a VERY high standard. But this is frequently not the case in prosecution where willful ignorance is more often a blessing than a curse. One has to wonder whether the same attorney would enter into a litigation with the same level of knowledge about the client and the client’s “invention” as most patent attorney have when they enter into the patent prosecution process. I doubt it.

    There’s also the “time” factor. At the time of the application, there is much easier access to documents, records, sources, etc. than towards the end of the term of a patent. The fact that any evidence of misconduct turns up at the time of litigation is somewhat of a miracle.

    Given all of those ocnsiderations, the threshold for I.C. is actually very protective of patentees and their attorneys.

    Of course, there are other ways to adress these issues rather than through I.C.. One way would be to permit courts to remove the presumption of validity or to allow them to remove it upon a showing of evidence of something less than I.C.

  40. 6

    This presents an interesting distinction. We are currently facing a case where this could become applicable.

    I think a strong policy argument exists in favor of limiting the Court’s ability to automatically render all claims of a patent unenforcable after finding inequitbale conduct, or ‘naughtiness.’

    The problem we have encountered, and maybe there is another workaround that we haven’t discovered arose when we had a person steal and claim ownership of another’s work. The original inventor was making haste to reduce his concept and the person he employed to assist in a fab of the prototype took his design and submitted and was granted a patent on the material. He then went out and licensed a deal.

    It appears that the true inventor is really left without recourse. Invalidate the patent and lose his rights in the future? Add himself as an inventor and still not have a remedy against the licensing agreement, since as we all know, both patent holders are eligible to do what they want?

    Something needs to exist where a court can render the patent invalid as to the unclean or ‘naughty inventor’ while still saving the patent for the true inventor. I understand this appears to be a windfall, but it would surely discourage ‘naughtiness’ in the future.

    Please let me know if you have another remedy, but for now I’m on Hricik’s ship.

  41. 5

    IANAE is correct again – them academics keep muddling where they shouldn’t.

    You keep playin’ where you shouldn’t be playin
    and you keep thinkin’ that you´ll never get burnt.
    Ha! I just found me a brand new box of matches yeah and what he know you ain’t HAD time to learn.

  42. 4

    Professor Hricik concludes that these statutes should be read to – at times – limit the Court’s ability to automatically render all claims of a patent unenforceable after a finding of inequitable conduct.

    I’m not buying it.

    282 lists unenforceability and invalidity as distinct defenses, not even in the same paragraph of the section. 282 also presents the paragraph (1) defenses (noninfringement, absence of liability, unenforceability) as complete defenses, and the paragraph (2) defense (invalidity) as applying to “the patent or any claim in suit”. Doesn’t seem to leave the door open for claim-by-claim unenforceability.

    Also, 288 requires that a claim of the patent be invalid. Unenforceability does not render any claim invalid, and is virtually never even discussed in terms of individual claims.

    Also, whatever you count as “without deceptive intention”, it doesn’t include inequitable conduct. Inequitable conduct has a deceptive intention element.

  43. 3

    I think 288 was developed in response to the regional circuit doctirne of infectious invalidity, whereby invalidity of one claim rendered the whole patent invalid. I think deceptive intent did not arise from fraud on the patent office as then known but the general equitable considerations implied where it is used elsewhere in the Act (eg correction of inventorship).

    That said I think the only real workable solution to inequitable conduct is when the reference in question (or deceptive argument or evidence) invalidates one or more claims, and intent is proven as the single most reasonable inference, should the patent as a whole (all claims) be unenforceable.

    This allows some potentially sharp or nasty prosecution conduct to slide, but also removes a great deal of uncertainty from the IC defense and will remove the atmosphere of paranoia and multihundreds of dubious citations that most practioners (the vast majority of whom are honest) feel compelled to make.

  44. 2

    “inequitable conduct” is such an ugly phrase. Can’t we just agree to say “naughtiness”? The juries would love it: “Ladies and gentlemen, the evidence in this case will establish that the plaintiff’s attorney was quite naughty.”

  45. 1

    I just had to prepare an IDS for a series of ~6 cross cited cases that contained about 300 entries per IDS. Most of the entries were OAs and Responses that the PTO already has, many sent out by the same Examiner.
    Next time I may just cite the whole file wrapper on one line. But I am sure I’d then be accused of hiding “diamonds in the mud”.
    The law of Inequitable Conduct is a joke.
    A joke so bad it brings the entire Federal Circuit into disrepute and causes one to question their authority.
    .
    Doesn’t matter, by the time an of these cases are litigated the Fed Circuit will have redefined what you have to produce for Inequitable Conduct. And, I’ll be held to the new standard as opposed to the standard when I was filing the IDSes. I love the decisions where they get angry because the poor attorney pointed out that the Fed Circuit changes its mind all the time.
    .
    .
    Or we could clear up Inequitable Conduct by making it cut both ways. If you assert Inequitable Conduct and don’t prove it, you lose your law license for 6 months to a year.

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