Proving and Avoiding Inequitable Conduct in Patent Prosecution and Litigation

Leveraging Court Treatment Post-Therasense and the AIA's Answer to Inequitable Conduct Issues

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

Conducted on Tuesday, January 31, 2017
Recorded event now available

This CLE webinar will provide guidance to patent counsel on understanding the types of activity that may lead to a finding of inequitable conduct and practical tactics to reduce the risk of a finding of inequitable content in litigation. The panel will also examine arguments that have worked to avoid a finding of inequitable conduct and those that haven’t.


Efforts to eliminate inequitable conduct during the latest round of U.S. patent law reform have effectively failed. Some thought the 2011 en banc Therasense Federal Circuit decision ended inequitable conduct, but that has not happened, as inequitable conduct holdings continue.

So where exactly are we on inequitable conduct? Patent owners seek to obtain enforceable patents, as alleged infringers utilize the doctrine to render unenforceable patents asserted against them.

In Oct. 2016 the USPTO revived its proposed Rule 56 changes. Not surprisingly, they deal only with materiality in view of Therasense, which remains the controlling guide. However, with Chief Judge Rader’s departure from the court, the Therasense votes now are split 5-5 among the remaining judges from that decision.

Listen as our authoritative panel of patent attorneys examines post-Therasense judicial decisions regarding inequitable conduct and the revived proposed PTO rules as examples of the type of activity that can lead to a finding of inequitable conduct. The panel will offer examples of arguments that have worked to avoid a finding of inequitable conduct and those that haven’t. The panel will offer practical suggestions to patent owners for trying to avoid committing inequitable conduct in patent prosecution with the equal and opposite message to alleged infringers: trying to prove unenforceability in the post-Therasense world.


  1. Post-Therasense Federal Circuit decisions finding inequitable conduct or remanding on the issue
  2. Exemplary post-Therasense Federal Circuit decisions finding no inequitable conduct
  3. Post-Therasense district court decisions
  4. AIA’s answer to possible inequitable conduct issues
    1. The sparingly used supplemental examination: pre-litigation “car wash”?
    2. Impact of change in AIA to best mode?
    3. Relationship to reexam/IPR/PGR?
    4. AIA reissue
    5. USPTO proposed Rule 56 rules
  5. Best practices
    1. Avoiding inequitable conduct
    2. Proving inequitable conduct


The panel will review these and other key issues:

  • What are the most common assertions defendants make when raising the inequitable conduct defense?
  • What are best practices prosecutors and litigators should employ when pursuing and defending inequitable conduct allegations?
  • What guidance do post-Therasense decisions and the USPTO proposed rules provide on how inequitable conduct will be treated?


Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Amanda K. Murphy, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.

Margaret J. Sampson, Partner
Baker Botts, Austin, Tex.

Ms. Sampson has a global, strategic intellectual property transaction and patent counseling practice focused in the areas of life sciences, pharmaceuticals, research tools, and medical devices. She advises clients in evaluating patent portfolio positions; analyzes freedom-to-operate issues; identifies and evaluates targets for potential investment, mergers, or acquisitions; and assists with joint development and licensing agreements. Her experience also includes Hatch-Waxman patent litigation, patent term extensions and adjustments, clinical and manufacturing agreements and royalty acquisitions.


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Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Irah H. Donner



Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



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