Ann Pokalsky, a member of AIPLA’s Online Programs Committee, has coordinated a webinar entitled “Inequitable Conduct after Regeneron” to take place Thursday, June 7, 2018, at 12:30-2:00 p.m., ET. The webinar will be presented by Tom Irving, of Finnegan Henderson Farabow Garret & Dunner, LLP and David Hricik, of Mercer University School of Law, Macon, Georgia. The following is a synopsis of the webinar:
Inequitable conduct during patent prosecution can result in a court’s finding of patent unenforceability, which of course can have devastating effects for both the patent owner and prosecuting patent attorney. Unlike an invalidity finding, which may leave some claims valid, inequitable conduct surrounding a single claim renders all claims of a patent unenforceable. Under Regeneron v. Merus, a finding of inequitable conduct, retrospectively imposed during litigation and without a showing of deceptive intent before the USPTO, has become a reality. This webinar will look at whether the results of Regeneron throw out years of precedent (see e.g., Therasense) or whether the results are specific to the facts of that case. Regeneron has now been followed by Gilead v. Merck, in which the two Merck patents in suit were held unenforceable for unclean hands (not inequitable conduct). Are we now seeing the resurgence of unclean hands from the famous Supreme Court trilogy of cases in the 1930’s and 1940’s? Gilead was followed by the Federal Circuit’ decision in Heat-on-the-Fly, concluding, in the course of a finding of inequitable conduct, intent to deceive by a non-legal person. But can non-legal persons truly satisfy the Therasense intent standard? It should also be noted that the MPEP has recently been beefed up regarding disclosure issues relating to enforceability. Finally, how do the AIA procedures of Supplemental Examination and Derivation fit into all this? Through this webinar, prosecutors and litigators alike will learn how to avoid or obtain similar outcomes, depending on the individual facts and circumstances of their clients.