Before you read this post, please read or re-read my post of March 9, 2020, that summarized the panel decision in some detail. The case involves the district court’s finding of inequitable conduct by both CleanTech and their attorneys via a bench trial, following its summary judgment ruling that the patents-in-suit were invalid because they were offered for sale prior to the one year grace period of s. 102(b). The patents were directed to a process for recovering oil from “thin silage”, that is a by-product of ethanol production, by evaporating the silage to yield a “syrup” and centrifuging the syrup. Here are the last two paragraphs of my earlier post:
On May 21 at 11 a.m. Central, four senior members of Schwegman Lundberg & Woessner’s Chem/Biotech Group will present a new webinar. Drs. Warren D. Woessner, Janet E. Embretson, Monique Perdok and Robin A. Chadwick will review patenting opportunities and obstacles presented by the massive research effort to develop a vaccine against deadly viruses such as MERS, SARS and COVID-19.
Have findings of inequitable conduct due to egregious misconduct become more common post-Therasense or can a simple failure to disclose material prior art still lead to a finding of inequitable conduct? What are the possible consequences to both litigators and patent prosecutors? I will be a panelist on this program, with William Covey, Director of the USPTO’s Office of Enrollment and Discipline and Prof. David Hricik, Mercer University Law School. The webinar will be on April 23rd at 2 PM Eastern Time. (I spoke on Therasense and its progeny at two Annual AIPLA Meetings and have been engaged as an expert witness several times since.) For more info on IP Chat Channel webinars, please go to https://webinars.ipo.org/. Hope you will join us.
This decision, Appeal No. 2019-1149 (Fed. Cir. April 17th 2020) should have required about 13 pages and could have ended after the first paragraph under Section A. Instead, a split panel required a 23 page majority decision and a 10 page dissent, largely discussing whether or not extrinsic evidence that the claimed invention has been in “longstanding practice” can be used to establish that the claimed invention is directed to an abstract idea. The majority argued that intrinsic evidence was sufficient in this case, but, as the dissent argued “the majority [improperly] concludes that “there is no basis for requiring, as a matter of law, consideration of the prior art in the step one [Alice/Mayo] analysis in every case….Limiting the use of extrinsic evidence to establish that a practice is longstanding would be inconsistent with authority.”