Federal Circuit Ruling Cites Article by Resident Scholar Christian E. Mammen

The U.S. Court of Appeals for the Federal Circuit’s majority opinion in Therasense v. Becton, decided May 25, 2011, cites a 2010 article written by UC Hastings Resident Scholar Christian E. Mammen.

The Federal Circuit held in Therasense v. Becton that "inequitable conduct" could only be used to invalidate a patent if the withheld material was critical to whether a patent should have been granted. Per Reuters, this ruling will make it harder for patents to be declared invalid because of gaps or errors in patent applications.

Mammen’s article, Controlling the 'Plague': Reforming the Doctrine of Inequitable Conduct, asserts that: “Reform of the inequitable conduct doctrine is necessary to rein in the assertion of inequitable conduct as a litigation tactic, and to stem a growing tide of inequitable conduct cases and establish an appropriate and sensible role for the doctrine within patent litigation.” 

Mammen notes that this is the first time in twenty-three years that the Federal Circuit has addressed this defense en banc, and the majority opinion cites precisely one scholarly article. From the ruling:

With these far-reaching consequences, it is no wonder that charging inequitable conduct has become a common litigation tactic. One study estimated that eighty percent of patent infringement cases included allegations of inequitable conduct. Committee Position Paper at 75; see also Christian Mammen, Controlling the “Plague”: Re-forming the Doctrine of Inequitable Conduct, 24 Berkeley Tech. L.J. 1329, 1358 (2009).

Resources:

• Read the Federal Circuit’s full Therasense v. Becton (pdf) decision.
• Access Christian E. Mammen’s scholarly paper on SSRN: Controlling the 'Plague': Reforming the Doctrine of Inequitable Conduct.
• Read Reuters summary of the case.