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International In-house Counsel Journal logoInternational In-house Counsel Journal logo

A Current Look at the State of Inequitable Conduct and Other Equitable Concerns

Abstract

Inequitable conduct is an “equitable defense to patent infringement that, if proved, bars enforcement of a patent. ” Therasense, Inc. v. Becton, Dickinson & Co. , 649 F. 3d 1276, 1285 (Fed. Cir. 2011) (en banc). “Unlike invalidity defenses, which are claim specific, . . . inequitable conduct regarding any single claim renders the entire patent unenforceable. ” Id. at 1288. Additionally, case law exists stating that inequitable conduct cannot be cured by reissue or reexamination. Id.

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Authors

Portrait image of Xiaoguang Michelle Gao
Xiaoguang Michelle Gao
Associate VP - Assistant General Patent Counsel , Eli Lilly and Company, USA

Dr. Gao is Assistant General Patent Counsel at Eli Lilly and Company, supporting biologics and genetic medicine assets. She obtained her Ph.D. in Molecular Biology from Northwestern University, and J.D. from the University of Illinois. Prior to joining Eli Lilly, she was a Patent Attorney at Novartis Institutes for BioMedical Research, where she supported ImmunoOncology and Neuroscience programs. She also worked for Fish & Richardson as an associate, focusing her practice on biopharma-related patent prosecution and litigation there.

Stacy Lewis
Law Clerk, Finnegan, USA

Stacy Lewis is called to the bar in New York and has worked as a law clerk at Finnegan since 1995. She focuses on research and writing, particularly in the life sciences. She is the coordinating editor of the books Global Patent Litigation: How and Where to Win and Design Patent Law, as well as the coursebook Chemical Patent Practice. Stacy sits on the AIPLA Quarterly Journal and IPO Law Journal editorial boards. She can be reached at stacy.lewis@finnegan.com.

Portrait image of Tom Irving
Tom Irving
Partner, Marbury Law Group, USA

Tom Irving has some 48 years of experience in intellectual property law. His U.S. pharma practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, reissue, and reexamination. In addition to advising on procuring strong U.S. patents, Tom counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability, supplemental examination, and validity analysis, including Obviousness-Type Double Patenting and Safe Harbor protection under 35 U.S.C. section 121.. He has served as lead counsel in numerous patent interferences, reissues, and reexaminations; as lead counsel in numerous AIA post-grant proceedings; and as an expert witness in patent litigation and patent procurement.

Companies

Eli Lilly and Company logo

Eli Lilly and Company

Lilly was founded in 1876 by Colonel Eli Lilly, a man committed to creating high-quality medicines that met real needs in an era of unreliable elixirs peddled by questionable characters. His charge to the generations of employees who have followed was this: "Take what you find here and make it better and better." More than 145 years later, we remain committed to his vision through every aspect of our business and the people we serve starting with those who take our medicines, and extending to health care professionals, employees and the communities in which we live.

Finnegan

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in Atlanta, Boston, London, Munich, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC, the firm practices European, German, UK, and U.S. IP law. In addition to services related to all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation, Finnegan provides counseling and litigation services in advertising, privacy, and a wide spectrum of additional IP-adjacent commercial matters, including trade secrets, international trade, the Internet, e-commerce, government contracts, antitrust, and unfair competition.

Finnegan

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in Atlanta, Boston, London, Munich, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC, the firm practices European, German, UK, and U.S. IP law. In addition to services related to all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation, Finnegan provides counseling and litigation services in advertising, privacy, and a wide spectrum of additional IP-adjacent commercial matters, including trade secrets, international trade, the Internet, e-commerce, government contracts, antitrust, and unfair competition.

Finnegan

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in Atlanta, Boston, London, Munich, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC, the firm practices European, German, UK, and U.S. IP law. In addition to services related to all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation, Finnegan provides counseling and litigation services in advertising, privacy, and a wide spectrum of additional IP-adjacent commercial matters, including trade secrets, international trade, the Internet, e-commerce, government contracts, antitrust, and unfair competition.

Marbury Law Group logo

Marbury Law Group

Marbury Law Group: STRATEGIC INTELLECTUAL PROPERTY COUNSELING Marbury attorneys transform your ideas and innovations into valuable IP assets. Our attorneys manage large, medium, and small patent portfolios, and recognize your need for prompt, high quality strategic advice. We help start-up and emerging technology companies leverage their intellectual assets to achieve their business goals. In fact, many of our team members have worked at start-ups, and understand the demands facing start-up and emerging technology companies. Our attorneys work with your technical personnel to harvest potential intellectual property from your innovative development work. We have the technical skills to understand your technology and how your innovations can provide you with competitive advantages. Our diverse technical backgrounds, graduate engineering degrees, former industry, and USPTO experience allow us to quickly grasp, describe, and claim the inventions in your patent applications. Our lower overhead allows us to offer flat fees and keep our billing rates significantly lower than those of “big-law” firms, which allows us to take the time to understand the technology behind each invention and to provide cost effective answers, strategies, and patent applications. Furthering your business is our priority. Your business plan becomes the focus of our IP counseling and strategic advice. Let us put our knowledge and experience to work for you.

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