Archive for May, 2011

Therasense returns Common Sense to Law of Inequitable Conduct

Thursday, May 26th, 2011

Yesterday, in Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011) (en banc) (a copy is attached at the end of this post), the Federal Circuit handed down an historic and much needed update to the law of inequitable conduct.  The en banc (6-1-4) decision markedly increased the requirement for proof of inequitable conduct:  “This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.”  The court rejected the “sliding scale” approach that previously allowed intent to deceive to be inferred from strong materiality.  The new standard makes intent and materiality separate requirements, and forbids a court from inferring intent solely from a strong showing of materiality.   Now, evidence of deceitful intent must be weighed separately from materiality, and proven by clear and convincing evidence.  The clear and convincing standard requires that a finding of deceptive intent must be “single most reasonable inference able to be drawn from the evidence.”

In addition, the court raised the standards for proof of materiality, holding that “as a general matter, the materiality required to establish inequitable conduct is but-for materiality.”  But-for materiality requires that the PTO would not have allowed a claim had it been aware of the undisclosed prior art.

The following passages from majority opinion in Therasense set forth the heart of the decision:


Oracle Ordered to Reduce the Number of Patent Infringement Claims against Google

Thursday, May 5th, 2011

Judge William Alsup of the U.S. District Court in San Fransisco has ordered Oracle Corporation to reduce the number of patent infringement claims against Google, Inc., from 132 to three.  At the same time, Google has been told to narrow its prior art invalidity defenses as well, from hundreds to eight.

Back in August of last year, Oracle leveled seven Java-related patents against Google’s Android software development kit. The patents, owned by Oracle America, are: United States Patents Nos. 6,125,447; 6,192,476; 5,966,702; 7,426,720; RE38,104; 6,910,205; and 6,061,520, originally issued to Sun. The complaint alleges that Google has been aware of Sun’s patent portfolio, including the patents at issue, since the middle of this decade, when Google hired certain former Sun Java engineers.

See my original post on the suit:  Oracle vs. Google: The Times They are a-Changin’

Smart Phone War Matrix Makes for Interesting Reading

Wednesday, May 4th, 2011

For a great overview of all the suits in the ongoing smart phone wars, visit

This article has a great chart showing all the suits, countersuits, and partner suits in the phone industry.

Companies represented include:

Apple, Inc.

HTC, Inc.

Samsung, Inc.

Google, Inc.

Nokia, Inc.

RIM, Inc.

Sony, Inc.

Microsoft, Inc.