Patent Litigation and Inequitable Conduct Defenses

Asserting and Defending Inequitable Conduct Challenges Amid Inconsistent Federal Circuit Standards

Federal Circuit's precedent-setting ruling on Aug. 4 makes inequitable conduct harder to prove

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Tuesday, September 1, 2009

Course Materials

This seminar will explain the impact that recent case law, budget crises affecting prosecutors, and pending federal legislation is having on the use of the inequitable conduct defense. The panel will provide best practices for arguing for and against the inequitable conduct defense in patent litigation.


Inequitable conduct is often raised as an affirmative defense in patent infringement litigation. It is a highly contentious defense because a court’s finding of inequitable conduct on the part of a patent holder could result in a patent being declared unenforceable.

The standard for proving inequitable conduct is high, requiring clear and convincing evidence of a patent applicant’s failure to disclose material prior acts and intent to deceive the Patent and Trademark Office. However, the Federal Circuit has applied the standard inconsistently over the years.

Listen as our panel of patent litigators examines the evolution of the inequitable conduct defense in patent litigation and explains how recent case law, the current budget crisis affecting prosecutors, and pending federal legislation are shaping the use of the defense. The panel will outline strategies for arguing for and against the inequitable conduct defense in patent litigation.



  1. Inequitable conduct defense
    1. Definition and history of defense
    2. Common assertions by defendants raising the defense
    3. Recent case law
  2. Litigation strategies
  3. Patent reform and the inequitable conduct defense


The panel will review these and other key questions:

  • What are the most common assertions defendants make when raising the inequitable conduct defense?
  • What are the primary risks associated with litigating the inequitable conduct defense?
  • What are some best practices for prosecutors and litigators when pursuing and defending inequitable conduct allegations?
  • What impact is pending legislative reform expected to have on the inequitable conduct standard?


John L. North
John L. North

Sutherland Asbill & Brennan

He is Chair of the firm’s Patent Litigation Team. He focuses on patent litigation and related antitrust...  |  Read More

Eric J. Lobenfeld
Eric J. Lobenfeld

Hogan & Hartson

He has more than 30 years of experience litigating cases involving patent, trademark, copyright, antitrust and complex...  |  Read More

K. T. (Sunny) Cherian
K. T. (Sunny) Cherian


He handles all areas of intellectual property litigation. Prior to becoming a lawyer, he was a program manager with the...  |  Read More

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