ABA Filed Amicus Brief in Patent Case Over Inequitable Conduct Defense

CHICAGO, June 18, 2010—The American Bar Association filed an amicus brief late yesterday with the U.S. Court of Appeals for the Federal Circuit in litigation contesting the standard to use in defending patent infringement claims by asserting patent holders engaged in inequitable conduct.  The ABA asked the court to replace a vague balancing test for assessing whether conduct was inequitable.  The test measures whether a patent applicant intentionally misrepresented or omitted material information, but at least five standards of measurement have been used, according to the brief.  The association asks the court to adopt instead a standard incorporating common law principles of detrimental reliance and specific intent.  The new test would require the infringement defendant to show by clear and convincing evidence that the patent applicant, having a duty of candor and good faith to the Patent and Trademark Office, misrepresented or omitted material information, and that absent the misrepresentation or omission the office would not reasonably have granted or maintained a patent claim.  The defendant would also be required to show that the misrepresentation or omission was made specifically to deceive the PTO.  The case, on appeal from the U.S. District Court for the Northern District of California, is Therasense, Inc., (now known as Abbott Diabetes Care, Inc.) and Abbot Laboratories v. Becton, Dickinson and Company, and Nova Biomedical Corporation, and Bayer Healthcare LLC.

With nearly 400,000 members, the American Bar Association is the largest voluntary professional membership organization in the world.  As the national voice of the legal profession, the ABA works to improve the administration of justice, promotes programs that assist lawyers and judges in their work, accredits law schools, provides continuing legal education, and works to build public understanding around the world of the importance of the rule of law.

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