The Catholic University of America



Professor Beth Winston (at podium) and Professor Megan La Belle (seated at right)
led the examination of potentially significant changes to U.S. patent law.


Catholic University Law School Forum Addresses Key Standard in Patent Law


What is the price of an error? Or at least, what should it be when it was made during the patent application process?
That question lay at the heart of “The Ethical Ramifications of Therasense,” a symposium sponsored by Catholic University’s law school as the first installment of its 2010-2011 series at the National Press Club in downtown Washington, D.C.
Presented and moderated by Professors Elizabeth Winston and Megan La Belle, the 90-minute program on Sept. 27 borrowed its name from a court case dealing with one of the hottest issues in patent law today.
Therasense, Inc. v. Becton, Dickinson & Co. will be heard en banc – by all ten judges – on Nov. 9, 2010 by the U.S. Court of Appeals for the Federal Circuit. The court is widely expected to redefine or make significant changes to the “inequitable conduct” doctrine, under which courts refuse to enforce otherwise valid patents based on findings that the patent owner engaged in inappropriate conduct during the patent application process.
Many feel that the inequitable conduct doctrine is being invoked far too frequently to strike down patents based on relatively trivial errors. The Therasense case provides a unique opportunity for the appeals court to reconsider it.
The Catholic University law professors assembled a powerhouse panel of experts to debate the merits of the case.
Panelists included Chief Judge Paul J. Luckern (below,left) administrative law judge of the United States International Trade Commission; Professor Lisa Dolak, the Angela S. Cooney Professor of Law at Syracuse University College of Law who researches and  teaches in the areas of patent law, Internet law, and practice and procedure in the federal courts; CUA Law alumnus James J. Kulbaski, 1992, a partner of Oblon Spivak McClelland Maier and Neustadt's electrical/mechanical practice group; and C. Edward Polk, Jr. a partner with Foley & Lardner LLP and a member of the firm's intellectual property litigation practice.
With millions of dollars and benefits to the public such as new products or medicines at stake in many patent cases, a re-visitation of the inequitable conduct doctrine by the court holds significant implications for society at large.
Professor Dolak noted that too many “baseless challenges” and onerous disclosure requirements build a case for change. “There is an issue with public confidence in our patent system,” she said.
Mr. Polk (above, right) did not think the doctrine should be scrapped, but noted that patent law in general sometimes fall outside of well-established legal principles. “We’ve made patent law ‘special’ sometimes when it shouldn’t be,” said Polk.  
The discussion was sometimes technical in nature, as the assembled intellectual property lawyers bandied about terms such as materiality, intent, unclean hands and art references.
Summing up, Professor La Belle (above) observed that “there seems to be agreement among all of the panelists that the inequitable conduct doctrine needs to be reformed.”
A member of the audience apparently agreed when he asked during the Q & A session, “The world has studied our patent system. Why hasn’t anyone else borrowed our ideas about inequitable conduct?”
Professors Winston and La Belle will revisit the issues raised by the Therasense case again on Nov. 9, when they host a probing post-argument debriefing at the law school that will be moderated by Hon. Paul Michel, retired chief judge of the U.S. Court of Appeals for the Federal Circuit. All arguing parties have agreed to participate.