Astrazeneca v. Teva

The district court granted summary judgment that the defendant did not present sufficient evidence for a jury to find inequitable conduct and the Federal Circuit affirmed. The issue is summarized as follows: “The issue presented in this case relates to the extent to which the patent applicant, having fully disclosed the relevant prior art and having provided comparative data to the satisfaction of the patent examiner, must also present any additional unpublished information in the applicant’s possession concerning other less structurally similar compounds, and must also synthesize additional compounds for comparative testing.” (p. 4.) The court concluded that the applicant need not. At least not in this case. (See p. 12 (“Although there may be situations in which the failure to conduct specific tests of specific compounds can be criticized, in this case there was no evidence that the information gleaned, if such tests had been conducted, would have been material to patentability.”).)

Regarding deceptive intent, the court made clear that a showing of a high degree of materiality does not reduce the need to show deceptive intent at least at some threshold level. “While the court must, as the final step, weigh and balance the findings of materiality and intent, this presupposes that a threshold level of both of these elements has already been established by clear and convincing evidence.” (p. 16; p. 15; p. 4.)