I would like to thank the editors of Fordham's Intellectual Property, Media & Entertainment Law Journal for including the very important subject of inequitable conduct reform in this Symposium. And I'd particularly like to commend them for their impeccable timing; this Symposium is being held on the Friday before oral arguments in the Federal Circuit's en banc rehearing of the inequitable conduct issues in Therasense, Inc. v. Becton, Dickinson and Co.'
As many of you know, it has been over twenty years since the Federal Circuit last convened en banc to address the inequitable conduct doctrine in Kingsdown Medical Consultants, Ltd. v. HollisterInc.2 At that time, Judge Nichols had just uttered his now-famous rant, calling the doctrine an "absolute plague."3 Echoes of the cry of "plague" have been heard with increasing frequency in recent years, ultimately leading the Federal Circuit to agree to a wholesale en banc reconsideration of the doctrine of inequitable conduct.4 My remarks today will be divided into four main parts. First, I will provide a little background on the substantive requirements of the doctrine of inequitable conduct. Second, I will discuss some of the doctrinal incongruities that have led to the current cry for reform. Third, I will discuss the Federal Circuit's en banc questions in Therasense 6, and will discuss some of the positions taken by the nearly three dozen amici curiae who 7 filed briefs at the merits-rehearing stage of Therasense. Finally, I would like to briefly address one issue that has lurked at the periphery of the inequitable conduct doctrine-the place of patent prosecution counsel in litigation where inequitable conduct is alleged.
Revisiting the Doctrine of Inequitable Conduct Before the Patent and Trademark Office,
21 Fordham Intell. Prop. Media & Ent. L.J. 1007
Available at: https://ir.lawnet.fordham.edu/iplj/vol21/iss4/5