The Federal Circuit upheld a district court decision that Apotex’s patent was unenforceable due to inequitable conduct. The patent related to a process for manufacturing tablets for high blood pressure treatment. The patent claimed a “reacting” step, which during prosecution, the inventor argued earlier processes did not include. The inventor submitted an expert declaration in support of this. The Federal Circuit found that clear and convincing evidence showed the inventor knew the earlier processes included the “reacting” step, concealed such knowledge from the patent office, and misrepresented the prior art through the expert declaration and arguments presented during prosecution. The court also found that the USPTO would not have issued the patent but-for the misrepresentation by the inventor. The court decided that an intent to deceive the USPTO was the most reasonable inference that could be drawn from the evidence. Based on the relevant facts and findings, the Federal Circuit ruled that the patent was unenforceable.
source: Maier & Maier, PLLC
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