Likely Survives Therasense

  • Beyond Inventors And Prosecutors Who Has Duty Of Candor? One has “substantive[] involve[ment] in the preparation or prosecution” of an application, and thus a duty of candor under 37 CFR § 1.56(c)(3), if “the involvement relates to the content of the application or decisions related thereto, and … is not wholly administrative or secretarial in nature.” “The district court may properly consider a variety of factors, such as an individual’s position within the company, role in developing or marketing the patented idea, contact with the inventors or prosecutors, and representations to the PTO in deciding whether that individual is ‘substantively involved’ ….” Avid (Fed. Cir. 04/27/10).
  • Material: Relationship Of Declarants To Patent Applicant: Ferring (Fed. Cir. 02/15/06): Summ. J. affirmed because of breach of duty to disclose declarants’ relationship to patentee.
  • Tie Goes To The Applicant: Scanner Tech. (Fed. Cir. 06/19/08): “All reasonable inferences must be drawn from the evidence, and a judgment then rendered on the evidence as informed by the range of reasonable inferences.” Rev’g inequitable conduct finding based on allegedly false statements in petition to make special, where favorable inference on meaning of challenged statements to PTO is as equally reasonable as the trial court’s unfavorable inference on its meaning. Accord Ariad Pharm. (Fed. Cir. 04/03/09) (failure to prove that deceptive intent was the better explanation for the withholding of material information).
  • Deceptive Misnaming Of Inventors May Constitute Inequitable Conduct: Aff’g inequitable conduct, where applicant knew he was not the inventor and fabricated evidence at trial. Advanced Magnetic (Fed. Cir. 06/11/10).
  • Cautioning Trial Courts Against Lightly Finding Inequitable Conduct: Star Sci. (Fed. Cir. 08/25/08); Pressure Prod. (Fed. Cir. 03/24/10).
  • TIPS: