Imposing Equity on Accusations of Inequitable Conduct.

Consider how proposed legislative reforms on the inequitable defense could impact current practice.  In Becton Dickinson & Co. v. Tyco Healthcare, Civ. 02-1694 (D. Del. 9/25/2006), the accused infringer pleaded, and went through jury trial on, the defenses of anticipation, and written description.  Notably, obviousness was not asserted.  The jury ruled the asserted claims were infringed, willfully, and valid.
A post-trial proceeding was needed for the inequitable conduct defense, despite the declaration of validity.  The inequitable conduct defense challenged one, non-asserted, dependent claim of the patent, with a theory that had the uncited art was material because it may have suggested an obvious combination.  This proceeding was consistent with, even compelled by, Federal Circuit precedent, which darn near prevents summary judgment on inequitable conduct, and recognizes the defense may go only against unasserted or non-infringed claims, and if the defense succeeds as to any claim then the entire patent is deemed unenforceable, even where the asserted patent claims were declared valid.
   Most proposed, statutory reform bills include a provision that will allow the inequitable conduct defense to proceed only after at least one claim is ruled invalid, and will limit unenforceablity to the asserted patent claims.   In the Becton D case, the defense was against one dependent claim, which was not alleged to be infringed.
    Also, the infringer in the Becton D case alleged nondisclosure by an inventor, and a set of separate facts against the in-house patent attorney.  As to that attorney, the allegations were that in licensing negotiations, he had become aware of prior art that allegedly would suggest a “motivation to combine” it with elements of the claimed invention.  This approach too would be cut off, or narrowed in most of the proposed legislative reform bills.  Either the attorney’s knowledge or nondisclosure would not be attributed to the inventor, or that attribution could occur upon a showing that the inventor had actual notice of the attorney’s omission.

If I ran the patent universe, then here are some legislative suggestions for reducing the use and cost of the inequitable conduct defense.  First, allow no discovery directed solely at inequitable conduct until after a ruling on infringement and validity.  Perhaps a jury deciding validity should be instructed to give an “advisory” finding {FRCvP 39(c)} on whether the uncited art was material.  If no invalidity is proven, then the Court may disallow the defense, and unless exceptional reasons are present, then the Court too may disallow discovery about inequitable conduct.

   The pox of the defense is the cost that it adds to the case, as well as the time devoted to thin theories.  Some merger of the inquiries as to patent validity and inequitable conduct materiality would tend to reduce use of the defense to bludgeon a patentee throughout infringement litigation.