Archive for October, 2011

Cordis v. BSC – Therasense at Work

Monday, October 3rd, 2011

Last week the Fed. Cir. affirmed the district court’s finding of no inequitable conduct, due to the failure of the applicant or his attorney to cite a relevant prior art reference in a parent application that yielded the two patents-in-suit. Cordis Corp. v. Boston Scientific Corp., App. No. 2010-1311, -1316 (Fed. Cir. Sept. 28, 2011). (A copy of the decision is found at the end of this post.) In the earlier proceeding the district court, in a bench trial, found that BSC had proved the threshold levels of materiality of the reference and intent regarding nondisclosure by clear and convincing evidence. The court went on to hold that applicant had not purged the fraud (my term) by merely citing the reference in the “child application” in a “normal IDS” and that both patents were unenforceable due to IC (ed. note – remember “the fruit of the poisonous tree”).

On appeal, the Fed. Cir. agreed that the reference was material but remanded for additional, more specific findings on intent to deceive, e.g., whether or not the inventor in fact read the search report or the reference. Cordis Corp. v. Boston Scientific Corp., 188 F. App’x 984, 988 (Fed. Cir 2006). The district court, did not make these findings but, rather, reconsidered the evidence of record and found that the “clear and convincing standard” had not been satisfied regarding deceptive intent. The court based its new finding on its opinion that “the inferences argued by plaintiff are supported by evidence of record and are as reasonable as those inferences argued by defendants.” [641 F. Supp. At 359; citing Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365 (Fed. Cir. 2008)].

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