The Latest Fed. Circ. Approach To 'Inference Of Intent'

By Francis C. Lynch (January 11, 2018, 12:46 PM EST) -- Whether an inference of wrongful intent can properly be drawn is a key issue in most inequitable conduct cases. The Federal Circuit's en banc majority in Therasense recognized that a district court "may infer" a specific intent to deceive the U.S. Patent and Trademark Office from indirect and circumstantial evidence in a nondisclosure case and observed that such an inference is a factual finding subject to review for clear error.[1] The threshold requirements for such a finding are (1) knowledge of the withheld information; (2) knowledge of its materiality; (3) a deliberate decision not to disclose; and (4) that wrongful intent is the single most reasonable inference.[2] Most Federal Circuit panels have considered carefully the strength of the evidence of those predicate facts and any explanation for the nondisclosure before deciding whether it was clear error for a district court to infer or not infer intent to deceive the PTO.[3] This article first describes the use of that review approach in recent decisions and then examines the impact on inequitable conduct law of the panel majority decision in Regeneron Pharmaceuticals Inc. v. Merus NV, which held that an adverse inference of wrongful intent imposed as a sanction for litigation misconduct was not an abuse of discretion.[4] A petition for further review was denied on Dec. 26, 2017.[5]...

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