Joy Lynn Bala


Inequitable conduct, which has been characterized as an “absolute plague” and an “atomic bomb,” allows an accused infringer to assert an affirmative defense against a patentee for violating the duty of candor and good faith in acquiring a patent. The consequences of this “atomic bomb” extend well beyond the litigation context and significantly impact the U.S. Patent and Trademark Office (PTO), patent agents, and patent attorneys. Such consequences include exorbitant litigation costs, overdisclosure to the PTO and thus decreased efficiency by PTO examiners, disciplinary action and potential disbarment of patent agents and attorneys, and even decreased innovation. The Federal Circuit’s recent en banc, 6–1–4 decision in Therasense, Inc. v. Becton, Dickinson & Co. attempted to reshape the doctrine. However, the decision also highlighted the court’s varying viewpoints, and the optimistic majority may not have cured the doctrine’s problems. Courts are responsive to the differing roles of patents in the myriad industries that patent law affects, and courts often turn to amicus briefs, which provide an important source of information regarding the role of patents within varying innovation contexts. Amicus briefs thus constitute key sources of empirical data that can be used in studying the patent system. As a result, these briefs can be particularly influential. Therefore, this Note’s analysis of the thirty-four amicus briefs in Therasense sheds light on the various commercial and societal concerns of patent law and, most importantly, on the impact that inequitable conduct has on these myriad interests. This Note discusses data that were gathered from the briefs and that center on the three doctrinal components of inequitable conduct: materiality, intent, and the balancing step. Furthermore, this Note proposes a solution that focuses on the three prongs in light of the different arguments that the amici proposed: (1) courts should adopt Rule 1.56 as the materiality standard, which the Federal Circuit can further clarify by establishing factors for lower courts to consider in evaluating this prong; (2) courts should require a specific intent to deceive to satisfy the intent prong; and (3) courts should eliminate a sliding scale approach to the balancing step and maintain the harsh penalty of unenforceability.

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