Tag Archives: defense

Federal Circuit Affirms Specific Intent to Deceive Based on Discovery Misconduct

Author: Alexander J. Zajac
Editor: Lily Robinson

In Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 2016-1346 (Fed. Cir. July 27, 2017), the Federal Circuit affirmed the district court’s decision that the claims of U.S. Patent No. 8,502,018 were unenforceable due to Regeneron’s inequitable conduct during prosecution.

The parties agreed that there were four references known to Regeneron during prosecution that were not cited to the Patent and Trademark Office (PTO).  Regeneron, however, argued that these references were neither material nor were withheld with specific intent to deceive the PTO. Continue reading

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Foreign Litigation Alone Does Not Provide Intent to Sue in the United States to Rebut Presumption of Laches

Author: Ashley M. Winkler
Editor: Aaron Gleaton Clay

In Lismont v. Alexander Binzel Corp., No. 14-1846 (Fed. Cir. Feb. 16, 2016), the Federal Circuit affirmed the district court’s determination that a claim of inventorship was barred by laches where the plaintiff initiated suit ten years after the patent issued.

The Court noted that a laches defense requires two showings: (1) the plaintiff’s delay in filing the suit was unreasonable and inexcusable, and (2) the defendant suffered material prejudice attributable to the delay. A rebuttable presumption of laches arises six years after the inventor knew or should have known of the patent.

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Federal Circuit Affirms Inequitable Conduct for Withholding Evidence and Failing to Correct Representations to PTO

Author: Kristi L. McIntyre
Editor: Lauren J. Dreyer

In Ohio Willow Wood v. Alps South, Nos. 2015-1132, -1133 (Fed. Cir. Feb. 19, 2016), the Federal Circuit affirmed a finding of inequitable conduct.

OWW asserted infringement against Alps South, who sought reexamination of the claims. Appealing a rejection from the reexamination, OWW argued before the Board that certain testimony the examiner relied upon in making his rejection was uncorroborated. The Board agreed, reversing the examiner’s rejection and explaining that the examiner erred in crediting uncorroborated testimony, and the claims were confirmed.

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