Inequitable Conduct and Walker Process Claims After Therasense and the America Invents Act

Abstract

This Article examines the dramatic constriction of the inequitable conduct defense to patent infringement accomplished in 2011 by the issuance of the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co. and the enactment of the America Invents Act (AIA). The Article argues that Therasense and the AIA have unduly narrowed the inequitable conduct defense and thus undermined core goals of United States patent law. The Article concludes that Therasense and specific features of the AIA, particularly its adoption of new post-issuance review proceedings and a new best mode amendment, will operate in tandem to sharply curtail the availability of the inequitable conduct defense and impair the operation of the U.S. patent system. Simultaneously, Therasense will operate to overly constrict the opportunity for parties to assert Walker Process antitrust claims. In short, the cure has been worse than the plague on the patent system that critics have commonly attributed to the inequitable conduct doctrine.