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ARTICLE · 08 NOVEMBER 2012

Federal Circuit Side-Steps Issue Of Whether False Affidavit Is Per Se Material Under Therasense

McDermott Will & Emery
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In a case assessing inequitable conduct after Therasense, the U.S. Court of Appeals for the Federal Circuit reversed a lower court’s decision holding a parent patent and its continuation unenforceable.

United StatesIntellectual Property
Christina Ondrick
Christina Ondrick
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In a case assessing inequitable conduct after Therasense, the U.S. Court of Appeals for the Federal Circuit reversed a lower court's decision holding a parent patent and its continuation unenforceable.  The Court found that pending litigation involving the parent was not material to the continuation where the parent's invalidity was not contested in the litigation and that it need not address the issue of whether an affidavit improperly claiming small entity status was material where there was no evidence of intent to deceive.  Outside the Box Innovations, LLC v. Travel Caddy, Inc., Case No. 09-1171 (Fed. Cir., Sept. 21, 2012) (per curiam) (Newman, J., dissenting). 

The case was a declaratory judgment suit filed by Outside the Box Innovations, which was seeking to invalidate two patents, a parent and a continuation thereof, owned by Travel Caddy.  The district court found that Travel Caddy's failure to disclose the existence of litigation involving a parent patent

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