Inequitable Conduct After Regeneron: What Litigators, Patent Prosecutors and Patent Owners Need to Know
Recorded On: 01/10/2019
A Federal Circuit decision in 2017 found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators. This widened the scope of possible inequitable conduct claims, which traditionally focused only on the prosecution of the patent before the USPTO.
Critics of the decision hoped first for an en banc rehearing by the Federal Circuit — and then that the Supreme Court would grant Regeneron’s petition for certiorari. Those hopes were dashed late last year.
This webinar features experts who will assess Regeneron’s significant ongoing impact on litigation and patent prosecution. The panel includes a patent prosecutor who urged the Supreme Court to grant cert. to Regeneron, a leading academic expert on legal ethics and IP, and a patent litigator who represented Therasense at the en banc Federal Circuit in Therasense v. Becton Dickenson (2011), a case that raised the bar for proving inequitable conduct. The panelists will discuss:
- Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron.
- Howmedica Osteonics v. Zimmer, in the District of New Jersey (2018), where the court granted the defendant’s motion for $13 million in attorney fees and costs in part because of plaintiff’s inequitable conduct before the USPTO
- The relationship between materiality under Therasense, the court’s claim construction, and the prosecutor’s judgment about what is cumulative
- Approaches that may be taken by defendants’ experts at trial
- The reinforced imperative for patent owners who are plaintiffs to closely oversee aggressive litigation counsel
- David Hricik, Mercer University School of Law
- Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
- Rohit Singla, Munger, Tolles & Olson LLP
Mercer University School of Law
is a professor at Mercer University School of Law, where he teaches legal ethics, patent law, and federal civil procedure. In 2012-13, he served as a law clerk to Chief Judge Randall Rader at the Federal Circuit. He also is counsel at Taylor English Duma, LLP, where represents clients in patent cases and other complex types of litigation. David has authored a treatise on ethical issues in patent litigation and co-authored a treatise on ethical issues in patent prosecution.
McDonnell Boehnen Hulbert & Berghoff LLP
is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and chair of its Biotechnology & Pharmaceuticals Practice Group. A Ph.D. in molecular biology, Kevin’s practice involves all aspects of patent prosecution and litigation. He is a founding author of the Patent Docs blog. Kevin authored an amicus brief in favor of Regeneron’s petition for certiorari to the U.S. Supreme Court.
Munger, Tolles & Olson LLP
is a litigation partner at Munger, Tolles & Olson LLP who focuses on antitrust and IP disputes in high tech industries. Rohit clerked for Judge Alfred Goodwin of the U.S. Court of Appeals for the Ninth Circuit. He has argued cases in the Ninth, Eleventh, and Federal Circuits. As lead appellate counsel for TheraSense, he persuaded the Federal Circuit to accept TheraSense v. Becton Dickinson for en banc review.