Attorney Argument to PTO May Constitute Inequitable Conduct

In a recent memorandum order, District Judge Sue L. Robinson summarily rejected a request to jettison a party’s inequitable conduct defense. Recognizing that “arguments made to the PTO can form the basis for inequitable conduct defenses under certain circumstances,” the court denied a motion to dismiss without prejudice to renew.

At least at the motion to dismiss stage, the defendant’s claim that attorney argument made to the examiner involved intentional falsehoods about a material reference must stand.

Elan Corp. v. Teva Pharma. USA Inc., C.A. No. 07-552-SLR (D. Del. March 7, 2008) (Robinson, J.).

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