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  • Orange Book Blog is published for informational purposes only; it contains no legal advice whatsoever. Publication of Orange Book Blog does not create an attorney-client relationship. Orange Book Blog is Aaron Barkoff's personal website and it is intended for other attorneys. Orange Book Blog is not edited by McAndrews, Held & Malloy, Ltd. ("MHM") or its clients. No part of Orange Book Blog--whether information, commentary, or other--may be attributed to MHM or its clients. MHM represents many companies in the pharmaceutical and biotechnology industries, and therefore Orange Book Blog may occasionally report on news that relates to MHM clients. Orange Book Blog will always strive to be unbiased. All information on Orange Book Blog should be double-checked for its accuracy and current applicability. -- © Aaron F. Barkoff 2006-2014

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May 14, 2008

Comments

Sean

It's funny that Rader has to even characterize the holding as a "mechanical application" of recent decisions, when the principle is one of equity. While there is considerable discretion given to the trial court, the steep burden of showing both prongs clearly and convincingly should nevertheless be adhered to, followed by an equitable determination of whether the conduct merits finding the patent to be unenforceable. If there was any doubt in this case about either prong OR about the remedy, then the patent should not be unenforceable.

Not that anyone is asking, but I personally think that the early indications are that Judge Moore is taking the court in some bad directions with the decisions on which she participates.

Robert Dailey

Sean:

Thanks for your comment. The phrase "mechanical application" is my phrase. Judge Rader did not use those words in his dissent.

I tried to interpret what Judge Rader is doing in his dissent. In many dissents, the dissenter picks apart the reasoning used by the majority to arrive at the holding. Judge Rader did not do that in this case. Instead, he seems to take more of a bird's-eye view of how the facts of this case mesh with the policy rationales for having an inequitable conduct doctrine.

The majority took a narrow approach: They looked at the limited question of whether the district court's fact-finding was clearly erroneous. When the question is circumscribed in this manner, it is difficult to impugn the majority's reasoning. In my estimation, Judge Rader seems to be asking a different question: When sitting in equity, need the court take such a circumscribed approach?

anne smith

Any updated thoughts? Court decsion posted Oct 2nd, still nothing from the FDA. Did the 180clock start or not, this was a pre MMA application.

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