The New Inequitable Conduct Standard in Patent Litigation

Asserting and Defending Inequitable Conduct Challenges After the Landmark Therasense Decision

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

Conducted on Tuesday, July 26, 2011

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will provide guidance to counsel for patent holders and challengers on the Federal Circuit's landmark en banc decision in Therasense v. Becton Dickinson, the new standard for inequitable conduct and its impact. The panel will offer best practices for operating under the new standard.


The Federal Circuit recently issued its long-awaited ruling in Therasense v. Becton Dickinson, significantly altering the inequitable conduct landscape. The decision changes a standard that, according to the court, had needlessly increased the complexity of patent litigation and hindered Patent Office exams.

Asserting an inequitable conduct defense has become a common tactic in patent litigation. The Federal Circuit has now raised the bar for proving inequitable conduct, tightening the standards for materiality and intent. The decision rejected the Patent Office's Rule 56 as a standard despite a strong dissent.

Counsel for patent holders and those challenging patents must understand the Therasense decision, how it changes the inequitable conduct standard and the impact of that change on patent litigation, as well as patent prosecution.

Listen as our authoritative panel of patent attorneys examines the Federal Circuit’s Therasense decision, how it changes the inequitable conduct standard, and how courts will apply the new standard, how the Patent Office has responded to the decision, and offers best practices for operating under the new standard.



  1. Therasense Inc. v. Becton Dickinson & Co.
    1. The majority decision
    2. The dissent
  2. The new inequitable conduct standard
    1. “But for” test for materiality
    2. Specific intent to deceive is test for intent
    3. Exception
  3. Court treatment and PTO response
  4. Best practices under the new standard
    1. Patent prosecution
    2. Asserting a charge of inequitable conduct
    3. Defending against a charge of inequitable conduct


The panel will review these and other key questions:

  • How does Therasense change the legal standard for materiality?
  • What exception to the new standard did the court create?
  • What will be the practical effect on patent litigation?
  • What impact will the new standard have on patent prosecution?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


James J. Foster
James J. Foster

Wolf Greenfield & Sacks

He is an experienced patent trial attorney with 35 years of trial practice. He specializes in patent, trademark,...  |  Read More

David P. Enzminger
David P. Enzminger

Winston & Strawn

He focuses his practice in technology litigation, emphasizing patent, trade secret, trademark, and antitrust matters.

 |  Read More
Dr. Sandra P. Thompson
Dr. Sandra P. Thompson

Buchalter Nemer

Dr. Thompson represents clients with respect to intellectual property issues and green technology/energy-related...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Audio