Distilling a Rule for Inferring Intent to Deceive the Patent Office
Volume 83, No. 2, Winter 2011
By Derek J. Brader

A patent applicant owes a duty of candor to the Patent Office. If the applicant breaches this duty, the courts may hold the procured patent unenforceable due to inequitable conduct. In Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., the U.S. Court of Appeals for the Federal Circuit sitting en banc sought to resolve a conflict in its precedent, holding that gross negligence is not sufficient to establish the required intent to deceive. After Kingsdown, however, a negligence-like rule for inferring intent has reemerged, and tension is once again apparent in the Federal Circuit case law concerning the requisite level of intent to support a finding of inequitable conduct. While the Federal Circuit’s recent en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. tightened the standard for intent, it did not fully resolve this tension.

After presenting a brief overview of the patent system, Part II of this Comment discusses Kingsdown and the reemergence of the negligence-like rule. This rule, which most recently appeared in Praxair, Inc. v. ATMI, Inc., has been met with criticism, and is in tension with the principles articulated in other recent cases such as Therasense and Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. The rule, which is referred to here as the “Praxair rule,” allows an inference of intent where the applicant (1) failed to disclose highly material information, (2) knew of the information and knew or should have known of its materiality, and (3) failed to provide a credible explanation for the withholding. Part II shows that although Therasense adjusted the standard for intent, it did not overrule Praxair or reject the Praxair rule.

Part II continues with a close look at the Praxair rule, its criticism, and its origins. The most pointed criticism of the Praxair rule is that it is, at least in part, it is “bad law” because it ultimately derives from Driscoll v. Cebalo, a case the Federal Circuit explicitly overruled en banc in Kingsdown. In examining the origins of the Praxair rule, Part II explains that it derives partly, but not solely, from overruled precedent. The rule can also be traced to FMC Corp. v. Manitowoc Co., which Kingsdown identified as requiring more than gross negligence. Part II concludes with a presentation of some proposals other commentators have made for improving the inequitable conduct doctrine.

Part III argues that the negligence-like Praxair rule should be changed. It argues that the Praxair rule can be harmonized with its origins, with the weight of authority, and with the policy considerations underlying the inequitable conduct doctrine, by explicitly incorporating two limitations that are arguably already inherent in the case law applying the rule. As recast, the rule would not allow an inference of intent unless: (1) material information was withheld amidst some related, aggravating conduct of the applicant; (2) the applicant actually knew of the information; (3) the applicant actually knew of, or deliberately avoided learning of, the information’s materiality; and (4) the applicant failed to provide a credible explanation of the withholding. Part III concludes by presenting the benefits and addressing some limitations of the proposed rule.

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