Tag Archives: Prosecution

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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Federal Circuit Recognizes Patent-Agent Privilege

Author: Jennifer M. Vein
Editor: Aaron Gleaton Clay

In In re Queen’s University at Kingston, No. 2015-145 (Fed. Cir. March 7, 2016), the Federal Circuit acknowledged a patent-agent privilege covering client communications with non-attorney patent agents in the course of agents’ authorized practice before the USPTO.

During discovery in a patent infringement suit with Samsung, Queen’s University asserted privilege over communications with its patent agents. The district court granted Samsung’s motion to compel those documents because the agents were not attorneys and thus not protected by the attorney-client privilege. Queen’s University petitioned the Federal Circuit for a writ of mandamus, and the Court granted review on the issue of whether a patent-agent privilege existed.

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