Federal Circuit Ruling Marks Sea Change in Patent Cases

In a case that marks a sea change in how patent cases are litigated, Munger, Tolles & Olson attorneys won a landmark en banc U.S. appeals court ruling May 25 that fundamentally changes the standards in determining inequitable conduct before the U.S. Patent and Trademark Office. 

Early last year, our team — consisting of Rohit K. Singla and Andrew W. Song — persuaded the Federal Circuit to rehear en banc, the inequitable conduct findings against our client Abbott Laboratories. The court had not addressed the inequitable conduct doctrine en banc in 22 years and had denied numerous prominent en banc petitions during the last decade. The court agreed, moreover, to reconsider every aspect of the inequitable conduct doctrine as part of its consideration.

At the en banc stage, the briefing was prepared by Jeffrey I. Weinberger, Peter A. Detre, Mr. Singla and Miriam L. Seifter, along with co-counsel from the firm of MoloLamken. John Whealen, former Solicitor of the PTO, was retained to argue the en banc appeal. Our brief argued for radical changes to the inequitable conduct doctrine, including the adoption of a “but for” standard of materiality, tightening the standards for finding intent, and eliminating the Federal Circuit’s long standing “sliding scale” under which a higher finding of materiality or intent lowered the evidentiary standard for the other element. 

The Federal Circuit agreed with our brief on almost every point, concluding that patents should be unenforceable only if information withheld would have affected whether the invention was approved, i.e., that the withheld information was the “but for” cause of the patent issuing. The court also agreed with Abbott that inequitable conduct requires rigorous proof of an actual intent to deceive the patent office and that intent to deceive cannot be inferred merely from the materiality of the information withheld. Finally, the court agreed that intent and materiality had to be evaluated separately, not on a “sliding scale.”

As many as 80 percent of patent infringement cases include inequitable conduct allegations, according to the ruling. The case drew an almost unprecedented number of amicus briefs and attention from the entire patent bar.