Inequitable Conduct Post-Therasense: Two Important Recent Rulings

Inequitable conduct is a highly potent defense to patent infringement in the United States.  As the Court of Appeals for the Federal Circuit has pointed out, the defense has the effect of an "atomic bomb" and can "endanger a substantial portion of a company's patent portfolio."  Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1288-89 (Fed. Cir. 2011).  Unlike invalidity defenses, which pertain to particular claims of a patent, a finding of inequitable conduct renders the entire patent invalid and unenforceable, and may knock out continuations and divisionals of that patent as well.  A finding of inequitable conduct in a patent protecting an important commercial product can also lead to antitrust and unfair-competition claims against the patent holder in subsequent suits, which are not only costly to litigate but can expose the patent holder to punitive damages.  See id. at 1289.  A significant risk of unenforceability can also severely diminish the value of