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Recent News in Intellectual Property


                                                                                                      May  2011   

In This Issue

·    In re Kao, Federal Circuit Provides Guidance Regarding Obviousness Determinations After KSR.  

·    Federal Circuit Makes Inequitable Conduct Defense  More Difficult

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In re Kao, (Federal Circuit Provides Guidance Regarding Obviousness Determinations After KSR Int’l Co. v. Teleflex Inc.

In In re Kao et al., (May 13, 2011), the Federal Circuit (“CAFC”) reversed the U.S. Patent Office Board of Patent Appeals and Interferences (”BPAI”) on one of its rulings that the claims in three patent applications were obvious in view of the prior art.

The three applications, all assigned to Endo Pharmaceuticals Inc., included claims directed to a controlled-release oxymorphone formulation with a claimed dissolution rate.  The BPAI found all claims obvious in view of PCT Pub. No. 10/01/08661 (“Maloney”).  The parties agreed that controlled-release oxycodone was taught by Maloney.  The BPAI found that one of skill in the art would arrive at the claimed invention by substituting oxymorphone for the oxycodone and formulation taught by Maloney.  The CAFC disagreed, however, finding that the dissolution rates reported in Maloney were measured differently from that described in the Endo applications and there was no factual evidence in the record that the dissolution rates overlap.  The application is remanded to the PTO for further prosecution. 

Notably, the CAFC instructed that, if evidence of secondary considerations is presented (to overcome an obviousness rejection), the BPAI must consider the same.  The CAFC emphasized, however, that there must be a nexus between the secondary consideration and the inventive or novel portion of the claim.    

Federal Circuit Makes Inequitable Conduct Defense More Difficult

On May 25, 2011, the Federal Circuit (“CAFC”) issued its ruling in the en banc rehearing of Therasense, Inc. v. Becton, Dickinson & Co.  The CAFC vacated its original ruling and asked the parties to supplement briefing on inequitable conduct.

In a 6-4-1 decision, the CAFC held that, to establish inequitable conduct, the accused infringer must prove, by clear and convincing evidence, that: (i) the patentee acted with specific intent to deceive the PTO; and (ii) “but for” materiality, meaning that had the withheld reference or information been provided to the PTO, the PTO, more likely than not, would not have granted the claim.   Further, the CAFC held that, even if the accused infringer proves both intent and materiality, the “district court must weigh the equities to determine whether the applicant’s conduct before the PTO warrants rendering the entire patent unenforceable.” Id., at p. 19.            

Notably, the CAFC rejected both the “sliding scale” approach that it had previously embraced, where a strong showing of either materiality or intent could lead to an inference of the other with a lesser showing and the “materiality” standard as set forth in Rule 56 of the Manual of Patent Examining Procedure. 


The NEWSLETTER is issued by GREENBLUM & BERNSTEIN, P.L.C., an intellectual property firm, to provide timely news in the field of intellectual property. The views and/or opinions expressed herein do not necessarily reflect those of GREENBLUM & BERNSTEIN, P.LC.  For more information, contact Jill M. Browning at GREENBLUM & BERNSTEIN, P.L.C., 1950 Roland Clarke Place, Reston, VA 20191.  Copyright 2011 GREENBLUM & BERNSTEIN, P.L.C.