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cited 3× by 3 distinct cases · 2 courts ·
…if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.
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Top citers, strongest first. 45 distinct citers.
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examined
Cited as authority (verbatim quote)
Sanofi-Synthelabo v. Apotex Inc.
when a reference discloses a class of compounds, i.e., a genus, a person of ordinary skill in the art should be able to at once envisage each member of th ... class for the individual corn- 387 pounds, i.e. species, to be enabled.
discussed
Cited as authority (quoted)
ON24, Inc. v. webinar.net, Inc.
an issued patent is presumed to be valid, and the burden 2 of establishing invalidity as to any claim of a patent rests upon the party asserting such 3 invalidity.
discussed
Cited as authority (quoted)
Exergen Corporation v. Brooklands Inc.
(2×)
also: Cited as authority (rule)
if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.
discussed
Cited as authority (quoted)
Exergen Corp. v. Brooklands Inc.
if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.
discussed
Cited as authority (quoted)
Exergen Corporation v. Brooklands Inc.
(2×)
also: Cited as authority (rule)
if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.
discussed
Cited as authority (quoted)
Skedco, Inc. v. Strategic Operations, Inc.
information is material to patentability when it is not cumulative to information already of record or being made of record in the application
discussed
Cited as authority (quoted)
Arrow International, Inc. v. Spire Biomedical, Inc.
the pourchez patent
discussed
Cited as authority (rule)
Carefirst of Maryland, Inc., et al. v. Johnson & Johnson and Janssen Biotech, Inc.
While Jn Re Montgomery may be helpful in determining the correctness of Dr. Cryer’s opinions, at issue here is the admissibility of his opinions. 19 proper issue is whether the [] patent is enabling in the sense that it described the claimed invention sufficiently to enable a person of ordinary skill in the art to carry out the invention.” 468 F.3d at 1380-83 (Fed.
examined
Cited as authority (rule)
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC
(3×)
also: Cited "see"
Inc., 468 F.3d 1366, 1383 (Fed.
discussed
Cited as authority (rule)
S.O.I.TEC Silicon on Insulator Technologies v. MEMC Electronic Materials, Inc.
(2×)
also: Cited "see"
The applicable “older three tests” referenced in Digital Control include: (1) the objective “but-for” standard, in other *519 words, “where the misrepresentation was so material that the patent should not have issued;” (2) the subjective “but-for” test, in other words, “where the misrepresentation actually caused the examiner to approve the patent application when he would not otherwise have done so;” and (3) the “but it may have” standard, “where the misrepresentation may have influenced the patent examiner in the course of prosecution.” See Impax Labs., 468 F.3d a…
discussed
Cited as authority (rule)
Tesco Corp. v. Weatherford International, Inc.
“To prove that a patent is unenforceable due to inequitable conduct, the alleged infringer must provide clear and convincing evidence of (1) affirmative misrepresentations of a material fact, failure to disclose material information, or submission of false material information and (2) an intent to deceive.” Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., 468 F.3d 1366, 1374 (Fed.Cir.2006).
discussed
Cited as authority (rule)
Cancer Research Technology v. Barr Laboratories, Inc.
(2×)
The applicable “older three tests” referenced in Digital Control include: (1) the objective “but-for” standard, in other words, “where the misrepresentation was so material that the patent should not have issued;” (2) the subjective “but-for” test, in other words, “where the misrepresentation actually caused the examiner to approve the patent application when he would not otherwise have done so;” and (3) the “but it may have” standard, “where the misrepresentation may have influenced the patent examiner in the course of prosecution.” See Impax Labs., 468 F.3d at 137…
examined
Cited as authority (rule)
Pall Corporation v. Cuno Incorporated
(4×)
also: Cited "see"
If the court finds that the requisite two elements have been established by clear and convincing evidence, “it must then ‘balance the equities to determine whether the patentee has committed inequitable conduct that warrants holding the patent unenforceable.’ ” Cargill, 476 F.3d at 1364 (quoting Impax Labs., 468 F.3d at 1374-75) (additional citation omitted).
cited
Cited as authority (rule)
Semiconductor Energy Laboratory Co. v. Samsung Electronics Co.
Cir.2008); Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 468 F.3d 1366, 1374 (Fed.Cir.2006).
examined
Cited as authority (rule)
Leviton Manufacturing Co. v. Shanghai Meihao Electric, Inc.
(7×)
also: Cited "see", Cited "see, e.g."
Impax, 468 F.3d at 1374-75.
discussed
Cited as authority (rule)
Akamai Technologies, Inc. v. Limelight Networks, Inc.
(2×)
also: Cited "see"
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1356 (Fed.Cir.2008). “[T]he involved conduct, viewed in light of all the evidence, including evidence of good faith, must indicate sufficient culpability to require a finding of intent to deceive.” Impax Labs., 468 F.3d at 1375 (citation omitted).
discussed
Cited as authority (rule)
Rentrop v. Spectranetics Corp.
(2×)
The intent element requires that “the involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive.” Impax Labs., 468 F.3d at 1374-75.
discussed
Cited as authority (rule)
New Medium LLC v. Barco N.V.
But it would not warrant invalidating the patents, /to- *998 pax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., 468 F.3d 1366, 1374-78 (Fed.Cir.2006); Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1571 (Fed.Cir.1997); Molins PLC v. Textron, 48 F.3d 1172, 1178 (Fed.Cir.1995).
discussed
Cited as authority (rule)
Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc.
(2×)
also: Cited "see"
Inc., 468 F.3d 1366, 1384 (Fed.Cir.2006).
discussed
Cited as authority (rule)
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.
To successfully prove inequitable conduct, the accused infringer must present “evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO].” Cargill, 476 F.3d at 1363 (citing Impax Labs., 468 F.3d at 1374).
discussed
Cited as authority (rule)
Takeda Pharmaceutical Co. v. Teva Pharmaceuticals USA Inc.
The applicable “older three tests” referenced in Digital Control include: (1) the objective “but-for” standard, in other words, “where the misrepresentation was so material that the patent should not have issued;” (2) the subjective “but-for” test, in other words, “where the misrepresentation *364 actually caused the examiner to approve the patent application when he would not otherwise have done so,” and (3) the “but it may have” standard, “where the misrepresentation may have influenced the patent examiner in the course of prosecution.” See Impax Labs., 468 F.3d a…
discussed
Cited as authority (rule)
Perricone v. Medicis Pharmaceutical Corp.
If the members cannot be envisioned, the reference does not disclose the species and the reference is not enabling.” Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., 468 F.3d 1366, 1383 (Fed.Cir.2006) (internal citation omitted, alterations in original).
cited
Cited as authority (rule)
Abbott Laboratories v. Sandoz, Inc.
Impax Labs., Inc., 468 F.3d at 1375 (citation omitted).
discussed
Cited as authority (rule)
Bayer AG v. Dr. Reddy's Laboratories, Ltd.
(2×)
The applicable “older three tests” referenced in Digital Control include: (1) the objective “but-for” standard, in other words, “where the misrepresentation was so material that the patent should not have issued;” (2) the subjective “but-for” test, in other words, “where the misrepresentation actually caused the examiner to approve the patent application when he would not otherwise have done so;” and (3) the “but it may have” standard, “where the misrepresentation may have influenced the patent examiner in the course of prosecution.” *632 See Impax Labs., 468 F.3d a…
discussed
Cited as authority (rule)
Use Techno Corp. v. Kenko USA, Inc.
Instead, an intent to deceive is usually inferred from the facts and circumstances surrounding the conduct at issue.” Cargill, 476 F.3d at 1364 (quoting Impax Labs., 468 F.3d at 1374-75 (internal citation omitted)).
cited
Cited as authority (rule)
Rentrop v. Spectranetics Corp.
Impax Laboratories, 468 F.3d at 1374.
discussed
Cited as authority (rule)
Informatica Corp. v. Business Objects Data Integration, Inc.
Instead, an intent to deceive is usually inferred from the facts and circumstances surrounding the conduct at issue.” Cargill, 476 F.3d at 1364 , quoting Impax Labs., 468 F.3d at 1374-75 (internal citation omitted).
discussed
Cited as authority (rule)
United States Gypsum Co. v. Lafarge North America, Inc.
“Once threshold findings of materiality and intent are established, the court must weigh them to determine whether the equities warrant a conclusion that inequitable conduct occurred.” Dippin’ Dots, 476 F.3d at 1346 (quoting Molins, 48 F.3d at 1178 ); Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., 468 F.3d 1366, 1375 (Fed.Cir.2006) (quoting Monsanto Co. v. Bayer Bioscience N.V., 363 F.3d 1235, 1239 (Fed.Cir.2004)).
discussed
Cited as authority (rule)
Zimmer Technology, Inc. v. Howmedica Osteonics Corp.
Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 468 F.3d 1366, 1378 (Fed.Cir.2006); TypeRight Keyboard Corp., 374 F.3d at 1157 ; United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1563 (Fed.Cir.1997).
discussed
Cited as authority (rule)
Black & Decker Inc. v. Robert Bosch Tool Corp.
Furthermore, because Bosch is required to establish that a single prior art reference met all of the limitations of the claims at issue, see Impax Labs., -468 F.3d at 1381, Bosch cannot prove anticipation by combining references.
examined
Cited as authority (rule)
Cargill, Inc. v. Canbra Foods, Ltd.
(4×)
also: Cited "see", Cited "see, e.g."
Impax Labs., 468 F.3d at 1375.
discussed
Cited as authority (rule)
IMX, Inc. v. LENDINGTREE, LLC
The applicable “older three tests” referenced in Digital Control include: (1) the objective “but-for” standard, in other words, “where the misrepresentation was so material that the patent should not have issued;” (2) the subjective “but-for” test, in other words, “where the misrepresentation actually caused the examiner to approve the patent application when he would not otherwise have done so;” and (3) the “but it may have” standard, “where the misrepresentation may have influenced the patent examiner in the course of prosecution.” See Impax Labs., 468 F.3d at 137…
discussed
Cited "see"
Intellectual Ventures I LLC v. Canon Inc.
See Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., 468 F.3d 1366, 1381 (Fed.Cir.2006) (“In order to be anticipating, a prior art reference must be enabling so that the claimed subject matter may be made or used by one skilled in the art.”) (citations omitted).
examined
Cited "see"
Bose Corp. v. LIGHTSPEED AVIATION, INC.
(3×)
also: Cited "see, e.g."
See Akamai, 614 F.Supp.2d at 101 (citing Impax Labs., 468 F.3d at 1374) (describing legal standards for inequitable conduct); Perseptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1318 (Fed.Cir.2000) (discussing elements of inequitable conduct).
discussed
Cited "see"
Eli Lilly and Co. v. TEVA PHARMACEUTICALS USA
See Impax Labs., Inc. v. Aventis Pharms., Inc., 468 F.3d 1366 , 1378 (Fed.Cir.2006) (“When the prior art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.”) (citations omitted). *1007 For the foregoing reasons, we find that the known concerns regarding the bioavailablity issues associated with raloxifene precludes a finding that a person of ordinary skill in the art would have had a reasonable expectation based on the prior art relied upon by Teva that the drug could be used for postmenopausal osteoporosis in hum…
cited
Cited "see"
3M Co. v. MOLDEX-METRIC, INC.
See Impax Labs., Inc. v. Aventis Pharm., Inc., 468 F.3d 1366 , 1382 (Fed.Cir.2006).
discussed
Cited "see"
Eli Lilly & Co. v. Teva Pharmaceuticals USA, Inc.
See Impax Labs., Inc. v. Aventis Pharms., Inc., 468 F.3d 1366 , 1378 (Fed.Cir.2006) (“When the pri- or art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.”) (citations omitted).
discussed
Cited "see, e.g."
Abbott Laboratories v. Sandoz, Inc.
Corp., 81 F.3d 1576, 1582 (Fed.Cir.1996) (omissions in certain affidavits, while not themselves constituting inequitable conduct, heighted the effect of another material omission in a related affidavit and supported a finding of intent to deceive); see also eSpeed, Inc. v. BrokerTec USA, LLC, 480 F.3d 1129, 1138 (Fed.Cir.2007) (“Intent to deceive may be ‘inferred from the facts and circumstances surrounding the applicant’s overall conduct.’ ”) (quoting Impax Labs. v. Aventis Pharms., 468 F.3d 1366 , 1375 (Fed.Cir.2006)). b.
discussed
Cited "see, e.g."
Eli Lilly and Co. v. SICOR PHARMACEUTICALS, INC.
Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed.Cir.1984)); see also Impax Labs., Inc. v. Aventis Pharms., Inc., 468 F.3d 1366, 1378 (Fed.Cir.2006) (“When the prior art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.”) (citation omitted).
cited
Cited "see, e.g."
Nextec Applications v. BROOKWOOD COMPANIES, INC.
Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed.Cir.1984); see also Impax Labs., Inc. v. Aventis Pharms., Inc., 468 F.3d 1366 , 1378 (Fed.Cir.2006).
discussed
Cited "see, e.g."
In Re Gleave
See, e.g., Impax Labs., Inc. v. Aventis Pharms., Inc., 468 F.3d 1366 , 1381 (Fed.Cir.2006) (“[A] prior art reference must be enabling so that the claimed subject matter may be made or used by one skilled in the art.”); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 , 1374 (Fed.Cir.2001) (“To anticipate, the reference must also enable one of skill in the art to make and use the claimed invention.”).
Retrieving the full opinion text from the archive…
Impax Laboratories, Inc.
v.
Aventis Pharmaceuticals, Inc.
v.
Aventis Pharmaceuticals, Inc.
2005-1313.
Court of Appeals for the Federal Circuit.
Nov 21, 2006.
468 F.3d 1366
United States Court of Appeals for the Federal Circuit
ERRATA
November 21, 2006
Appeal No. 05-1313
Judge Rader’s Precedential Concurring in part opinion, Impax Laboratories v Aventis Pharm., No. 05-1313
Decided November 20, 2006
Page 1 of concurring in part opinion, lines 26 and 27:
Delete: “766 F.2d 531, 533 (Fed. Cir. 1985)”; insert in its place: “413 F.3d 1318, 1325- 26 (Fed. Cir. 2005)”