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Lessons from Purdue: Patent Practitioner Tips for Avoiding Inequitable Conduct Claims
'It has now been surprisingly discovered ' '
With these words in Purdue Pharma's U.S. Patent Nos. 5,656,295, 5,508,042 and 5,549,912, Endo Pharmaceuticals asserted a basis to challenge the enforceability of Purdue's controlled-release oxycodone formulations due to inequitable conduct. Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123 (Fed. Cir. 2006).
Inequitable conduct is a showing that applicants for a patent have failed in their duty to prosecute their patent application before the U.S. Patent and Trademark Office ('PTO') with candor and in good faith. 37 C.F.R. '1.56(a). A breach of this duty includes affirmative misrepresentations of a material fact (or submission of false material information) or failure to disclose material information, coupled with an intent to deceive or mislead the PTO. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995). A showing of inequitable conduct as to a single claim or a single applicant can render the entire patent unenforceable. See, e.g., Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556 (Fed. Cir. 1989) (inequitable conduct as to one claim extends to all others) and see, e.g., Syntex (U.S.A) L.L.C. v. Apotex, Inc., 407 F.3d 1371 (Fed. Cir. 2005) (inequitable conduct by improperly named inventors applied to unnamed, actual inventors).
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.