My partners Steve Jedlinski and Anthony Fuga recently wrote a valuable article about a new Federal Circuit decision dealing with functionality and exhaustion issues for design patents. It is republished below with permission.

In a relatively rare opinion regarding design patents, the U.S. Court of Appeals for the Federal Circuit weighed in recently on the

The Medicines Co. v. Mylan Inc., No. 11 C 1285, Slip Op. (N.D. Ill. Oct. 30, 2017) (St. Eve, J.).

Judge St. Eve granted in part defendants’ bill of costs awarding $217k in this ANDA patent dispute.

Defendants were the prevailing party because they were determined not to infringe either of plaintiff’s patents. In

Last month, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) finding that Emporium Arcade Bar could not register the mark shown below without disclaiming EMPORIUM.

Emporium Arcade Bar

The TTAB found that the word EMPORIUM is descriptive of “video and amusement arcade services,” “bar services,” and “bar services featuring snacks.” The TTAB further found that

I attended the 14th annual Rocky Mountain IP & Technology Institute at the beginning of June. An interesting addition to this year’s Institute was the panel of PTAB personnel, including the following:

  • Nathan Kelley, PTO Solicitor and former Acting Chief Administrative Patent Judge
  • Patrick Bucher, Administrative Patent Judge
  • Melissa Haapala, Administrative Patent Judge
  • K

Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill.) (Coleman, J.).

Judge Coleman granted plaintiff Trading Technologies’ (“TT”) motion to terminate Markman proceedings in this patent case involving commodities trading software — click here for much more on this case in the Blog’s archives).  Defendants (collectively “CQG”) sought

On September 26, Chicago-Kent is hosting its fourth annual U.S. Supreme Court Intellectual Property Review.  Seventh Circuit Judge Diane P. Wood will deliver the keynote address, titled “Is It Time to Abolish the Federal Circuit’s Exclusive Jurisdiction in Patent Cases?”  It promises to be a very interesting discussion.

The one-day conference will be held at

Yesterday, the Federal Circuit handed down its anticipated en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., increasing the standards for inequitable conduct. The 6-5 majority held that:
an omitted reference is material only if the claim or patent would not have issued, but for omission of the reference;
specific intent to deceive must be shown by clear and convincing evidence;
courts can no longer employ a “sliding scale” of intent and materiality, both must be showng by clear and convincing evidence; and
courts should apply equity to ensure that the remedy is not based upon conduct “immaterial to the issuance of the patent.”
Patent Docs has an excellent explanation of the opinion and the case background. And there is plenty of commentary about the opinion (see links below). My initial reaction was that the heightened standards will not actually reduce the number of inequitable conduct claims that are filed, although it may reduce the number of inequitable conduct findings.
So, while the overall outcomes may change, the general cost and complexity of patent litigation will likely remain the same. But when I said as much on Twitter (@rdd), I got an interesting reaction from what appears to be an anonymous patent lawyer. This anonymous person suggested that the heightened standard would actually embolden inventors and patent prosecutors to omit references and hide information from the Patent Office because they are now less likely to be charged with inequitable conduct. My inclination is to dismiss this theory based upon my operating presumption that most patent prosecutors, and most inventors, are, or at least intend to, zealously advocate for their clients, or themselves, within the Patent Office’s rules and the relevant ethics standards. Of course, I have seen exceptions, and they can be severe. But my experience is that those are the exceptions, not the rule. I am curious to hear what others think about this. Am I wrong?
Here is a round up of some of the blog posts about the decision:
Peter Zura’s 271 Patent Blog “rejoices” that the heightened standards give prosecutors added protection;
Life Sciences Law;
Orange Book Blog;
Patently-O ;
PharmaPatents; and
PLI Blog.

Continue Reading Federal Circuit Heightens Inequitable Conduct Standards, But Does it Increase Unethical Behavior?