Today, the Supreme Court denied certiorari in Aventis v. Amphastar (Docket No. 08-937). Inequitable conduct was the sole issue presented in the cert petition, which Aventis filed on January 23, 2009. According to the procedural summary in Aventis’ cert petition, the Federal Circuit held the patent on Aventis’ $2 billion-per-year drug to be unenforceable due to inequitable conduct because of an omission in a non-inventor expert’s declaration, which the expert was deemed to have committed intentionally because he should have known of the materiality of the omitted information. The Aventis cert petition criticized three aspects of the current doctrine: (1) the weakened intent element, where “gross negligence” or “should have known,” in combination with high materiality, is accepted as proof of intent to deceive; (2) use of the sliding scale where high materiality can be combined with a lesser showing of intent, and vice versa; and (3) the single, “drastic remedy of unenforceability,” as inconsistent with equitable principles. Citing inconsistencies in the articulation and application of the doctrine in the lower courts, including within the Federal Circuit, Aventis concluded its petition with a plea for reform:
This issue will not benefit from further percolation in the circuits. The split in the lower courts and within the Federal Circuit itself is deep and mature, and the Federal Circuit has exhibited a steadfast unwillingness to revisit the issue en banc. Four decades of confusion are enough. The question presented is ripe – indeed overdue – for this Court’s review.
With the denial of certiorari, attention turns back to whether inequitable conduct reform will be achieved via Congress’ pending patent reform legislation or the possibility that the Federal Circuit will grant en banc review of an inequitable conduct case.
About the Author
With over a decade of experience as a patent litigator in San Francisco and Silicon Valley law firms, Dr. Christian E. Mammen maintains a solo practice in Berkeley, California. His article, “Controlling the ‘Plague’: Reforming the Doctrine of Inequitable Conduct,” is forthcoming in the Fall 2009 issue of the Berkeley Technology Law Journal. A pre-publication version of the article is available on SSRN.