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

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

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.

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.

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.