Firm Authors Amicus Brief Asking Supreme Court to Address Evidence Required for Inequitable Conduct in Biotech Case

July 5, 2018

The firm authored an amicus curiae brief for the New York Intellectual Property Law Association urging the Supreme Court to provide guidance on the evidence required for a court to hold a patent unenforceable for inequitable conduct before the PTO.  Because a finding of inequitable conduct leads to revocation of the patent (making the patent unenforceable for purposes of any future proceeding) and can also lead to serious personal and professional consequences for prosecuting attorneys, the case raises important issues for the patent system and its many stakeholders.

In the decision below, the Federal Circuit affirmed a judgment nullifying a biotech patent under the inequitable conduct doctrine based on an adverse inference that prosecuting attorneys intended to deceive the PTO during patent prosecution.  The inference was drawn as a sanction for litigation misconduct by other lawyers, trial counsel, in enforcing the patent years later.  The amicus brief asks the Supreme Court to clarify that, under the Court’s precedent, alleged discovery misconduct by litigation counsel in an infringement suit years after the patent issued may provide a ground to dismiss the patentee’s lawsuit, but cannot provide a basis to nullify the patent itself.  The Supreme Court case is captioned Regeneron Pharmaceuticals, Inc. v. Merus N.V., 17-1616.

To read the full amicus curiae brief, please click here.