Therasense v. Becton (2008-1511)

The patents in this case are in the area of disposable blood glucose test strips. (Another case between the same parties was decided on the same day.) The issues were decided on summary judgment and after a bench trial. Three issues involving obviousness, inequitable conduct, anticipation and noninfringement were addressed in this opinion. A couple of points of interest are mentioned below.

Obviousness: Commercial Success Nexus. The court concluded that there should be no presumption of a nexus between the patented features and commercial success because any success could not be attributed to a single patent. The accused device embodied at least two patents. (p. 16.)

Inequitable Conduct. “The penalty for inequitable conduct is severe, as an entire patent is rendered unenforceable. Therefore it is important that courts maintain a high standard.” (p. 18.) “This is one of those rare cases in which a finding of inequitable conduct is appropriate….” (p. 18.) Attorney argument about interpretation of claims and the teachings of prior art do not amount to inequitable conduct, but not disclosing contrary statements made to the EPO and “factual assertions as to the views of those skilled in the art, provided in affidavit form” are not attorney argument. (p. 27.) Intent was found based on the importance of the withheld statements to the PTO, the applicants knowledge of them, and the credibility of the witnesses that tried to explain why they were not disclosed.