Ideas

Intellectual Property Report: September 2017

Firm Thought Leadership

Inequitable Conduct: But-For Materiality and an Adverse Inference of Intent to Deceive
David Dyer
In 2011, the Federal Circuit provided a two prong framework for determining when inequitable conduct during prosecution renders a patent unenforceable. The Circuit characterized a finding of inequitable conduct as “the ‘atomic bomb’ of patent law” because the finding renders all claims of the patent unenforceable, the conduct cannot be cured by reexamination or reissue, and the finding may render other related patents unenforceable as well. Given the severity of the remedy, the Federal Circuit “tighten[ed] the standards for finding both intent and materiality” — the two elements of inequitable conduct.

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The USPTO’s Section 101 Report Shows Strong Support from the Life Sciences Industry in Favor of Legislative Reform to Redefine the Proper Scope of Patent Eligibility
Dr. Amy Song
In the past seven years, the United States Supreme Court has issued four decisions that significantly changed patent eligibility law, and prompted substantial public debate. In the wake of these decisions, the USPTO held two roundtables in 2016: one focused on the examination guidance developed by the USPTO to implement the recent case law; and a second focused on the impact of the decisions and recommendations on what measures should be taken to address that impact. Over 250 participants from industry, private practice, and academia attended roundtable 2, which was held in December 2016, at Stanford University. In July 2017, the USPTO published, Roundtable 2 ―Exploring the Legal Contours of Patent Eligible Subject Matter, a 48-page report ( “the Report”) summarizing the views presented at the second roundtable and views submitted through written comments. The Report focuses on two technology areas that are particularly affected by the recent development of law, life sciences and computer technologies.

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Be Sure You Have a Rational Basis: Federal Circuit Addresses Attorney Fees*
Robert C. Scheinfeld
The U.S. Court of Appeals for the Federal Circuit has recently reviewed multiple cases related to the award of attorney fees. In a series of three precedential decisions, the Federal Circuit examined whether each case was exceptional under 35 U.S.C. §285, such that an award of attorney fees was merited, in the wake of the U.S. Supreme Court’s decision in Octane Fitness v. ICON Health & Fitness, ___ U.S. ___, 134 S. Ct. 2134 (2014). In Octane Fitness, the Supreme Court found that the Federal Circuit’s standard for an exceptional case was too rigorous and that an exceptional case “is simply one that stands out from others with respect to the substantive strength of a party’s litigating positions (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” This article addresses each of these decisions.

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*This article first appeared in New York Law Journal, July 26, 2017.

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