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No Intent to Deceive, No Inequitable Conduct

The Federal Circuit has reversed a finding of inequitable conduct where “the record contains no evidence of a deliberate decision to withhold those references from the PTO as required under Therasense, Inc. v. Becton, Dickinson & Co.”  1st Media, LLC v. Electronic Arts, Inc., No. 2010-1435 (Fed. Cir. Dec; 13, 2012).  The opinion was authored […]

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Inequitable Conduct After Therasense: Definitely Harder to Prove

Specific intent to deceive the USPTO did not exist where an inventor removed mention of a reference from his patent application, and then testified that the “reference was cumulative or merely provided background information.”  Imura International U.S.A., Inc. v. HR Technology, Inc., No. 08-2220 (D. Kans. April 24, 2012).  The party asserting inequitable conduct also […]

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Impact of Therasense: Defendant Denied Motion to Plead Inequitable Conduct

In Pixion, Inc. v. Citrix Systems, Inc., No. C 09-03496 (N.D. Cal. April 16, 2012), the court denied Citrix’s motion for leave to amend its Answer to plead the affirmative defense of inequitable conduct because Citrix could not “show that the USPTO would have rejected the” patents-in-suit even if the allegedly withheld reference had been […]

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Inequitable Conduct After Therasense Does Not Always Require “But-for” Materiality

Even under the heightened “but-for” materiality standard for proving inequitable conduct in patent prosecution set forth by the Federal Circuit in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011) (en banc), a pleading would be sufficient that set forth “affirmative egregious misconduct, such as the filing of an unmistakably […]

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