Impax Labs., Inc. v. Aventis Pharm., Inc., 468 F.3d 1366 (Fed. Cir. 2006). · Go Syfert
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Impax Labs., Inc. v. Aventis Pharm., Inc., 468 F.3d 1366 (Fed. Cir. 2006). Cases Citing This Book View Copy Cite
176 citation events (176 in the last 25 years) across 24 distinct courts.
Strongest positive: Sanofi-Synthelabo v. Apotex Inc., 492 F. Supp. 2d 353 (S.D.N.Y. 2007)
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At page 1374 Determining materiality of misstatements under rule 5617 citing casesaddressing legal standard of inequitable conduct1 citing court put it this way
  • S.O.I.TEC Silicon on Insulator Tech. v. MEMC Elec. Materials, Inc., 745 F. Supp. 2d 489 (D. Del. 2010).published 2 cites
    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 “…
  • Tesco Corp. v. Weatherford Int'l, Inc., 750 F. Supp. 2d 780 (S.D. Tex. 2010).published
    “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 su…
  • Cancer Rsch. Tech. v. Barr Labs., Inc., 679 F. Supp. 2d 560 (D. Del. 2010).published 2 cites
    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-f…
  • Pall Corp. v. Cuno Inc., 681 F. Supp. 2d 258 (E.D.N.Y. 2010).published 4 cites
    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 pa…
  • Semiconductor Energy Lab'y Co. v. Samsung Elec. Co., 749 F. Supp. 2d 892 (W.D. Wis. 2010).published
    Cir.2008); Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 468 F.3d 1366, 1374 (Fed.Cir.2006).
  • Leviton Mfg. Co. v. Shanghai Meihao Elec., Inc., 613 F. Supp. 2d 670 (D. Md. 2009).published 7 cites
    Impax, 468 F.3d at 1374-75.
  • Rentrop v. Spectranetics Corp., 550 F.3d 1112 (Fed. Cir. 2008).published 2 cites
    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.3…
  • New Medium LLC v. Barco N.V., 582 F. Supp. 2d 991 (N.D. Ill. 2008).published
    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 (Fe…
  • Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008).published
    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 inf…
  • Takeda Pharm. Co. v. Teva Pharm. USA Inc., 542 F. Supp. 2d 342 (D. Del. 2008).published
    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-f…
Show 7 more citing cases
  • Bayer AG v. Dr. Reddy's Labs., Ltd., 518 F. Supp. 2d 617 (D. Del. 2007).published 2 cites
    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-f…
  • Use Techno Corp. v. Kenko USA, Inc., 515 F. Supp. 2d 1086 (N.D. Cal. 2007).published
    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)).
  • Rentrop v. Spectranetics Corp., 514 F. Supp. 2d 511 (S.D.N.Y. 2007).published
    Impax Laboratories, 468 F.3d at 1374.
  • Informatica Corp. v. Bus. Objects Data Integration, Inc., 489 F. Supp. 2d 1060 (N.D. Cal. 2007).published
    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).
  • Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed. Cir. 2007).published 4 cites
    Impax Labs., 468 F.3d at 1375.
  • Imx, Inc. v. Lendingtree, LLC, 469 F. Supp. 2d 194 (D. Del. 2007).published
    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-f…
  • Bose Corp. v. Lightspeed Aviation, Inc., 691 F. Supp. 2d 275 (D. Mass. 2010).published 3 cites
    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 o…
At page 1375 Determining sufficient culpability to prove intent to deceive11 citing cases10 listed here
  • Exergen Corp. v. Brooklands Inc., No. 1:12-cv-12243 (D. Mass. Feb. 20, 2018). 2 cites
    Inc., 468 F.3d 1366 , 1375 (Fed. Cir. 2006) (“If inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.”).
  • Exergen Corp. v. Brooklands Inc., No. 1:12-cv-12243 (D. Mass. Feb. 13, 2018). 2 cites
    Inc., 468 F.3d 1366 , 1375 (Fed. Cir. 2006) (“If inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.”).
  • ORION IP, LLC v. Hyundai Motor Am., 605 F.3d 967 (Fed. Cir. 2010).published
    Id. at 1375.
  • Pall Corp. v. Cuno Inc., 681 F. Supp. 2d 258 (E.D.N.Y. 2010).published 4 cites
    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 pa…
  • Akamai Tech., Inc. v. Limelight Networks, Inc., 614 F. Supp. 2d 90 (D. Mass. 2009).published 2 cites
    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 deceiv…
  • Rentrop v. Spectranetics Corp., 550 F.3d 1112 (Fed. Cir. 2008).published 2 cites
    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.3…
  • Abbott Labs. v. Sandoz, Inc., 529 F. Supp. 2d 893 (N.D. Ill. 2007).published
    Impax Labs., Inc., 468 F.3d at 1375 (citation omitted).
  • United States Gypsum Co. v. Lafarge North Am., Inc., 508 F. Supp. 2d 601 (N.D. Ill. 2007).published
    “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.3…
  • Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed. Cir. 2007).published 4 cites
    Impax Labs., 468 F.3d at 1375.
  • Tube-Mac Indus., Inc. v. Campbell, No. 22-2170 (Fed. Cir. Mar. 15, 2024).unpublished 2 cites
    See Impax Lab’ys, 468 F.3d at 1375.
If inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.no pin page on record · 3 citing cases listed
  • Exergen Corp. v. Brooklands Inc., 290 F. Supp. 3d 113 (D.D.C. 2018).published
    (If inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.)
  • Exergen Corp. v. Brooklands Inc., No. 1:12-cv-12243 (D. Mass. Feb. 20, 2018). 2 cites
    (If inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.)
  • Exergen Corp. v. Brooklands Inc., No. 1:12-cv-12243 (D. Mass. Feb. 13, 2018). 2 cites
    (If inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.)
At page 1383 Envisaging members of a disclosed class for enablement3 citing casesWhen 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[e] ... class for the individual corn- *387 pounds, i.e. species, to be enabled.1 citing court put it this way
  • Sanofi-Synthelabo v. Apotex Inc., 492 F. Supp. 2d 353 (S.D.N.Y. 2007).published
    (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[e] ... class for the individual corn- *387 pounds, i.e. species…)
  • Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012).published 3 cites
    Inc., 468 F.3d 1366, 1383 (Fed.
  • Perricone v. Medicis Pharm. Corp., 539 F. Supp. 2d 571 (D. Conn. 2008).published
    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, a…
When the prior art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.no pin page on record · 2 citing cases listed
  • Eli Lilly & Co. v. Teva Pharm. USA, 657 F. Supp. 2d 967 (S.D. Ind. 2009).published
    (When the prior art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.)
  • Eli Lilly & Co. v. Teva Pharm. USA, Inc., 609 F. Supp. 2d 786 (S.D. Ind. 2009).published
    (When the pri- or art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.)
At page 1378 Determining the scope of the plain view doctrine2 citing casesWhen the prior art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.1 citing court put it this way
  • Zimmer Tech., Inc. v. Howmedica Osteonics Corp., 476 F. Supp. 2d 1024 (N.D. Ind. 2007).published
    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).
  • Eli Lilly & Co. v. Sicor Pharm., Inc., 705 F. Supp. 2d 971 (S.D. Ind. 2010).published
    (When the prior art was before the examiner during prosecution of the application, there is a particularly heavy burden in establishing invalidity.)
At page 1381 Establishing single prior art reference limitations2 citing casesIn 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.1 citing court put it this way
  • Black & Decker Inc. v. Robert Bosch Tool Corp., 476 F. Supp. 2d 887 (N.D. Ill. 2007).published
    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.
  • Intellectual Ventures I LLC v. Canon Inc., 36 F. Supp. 3d 449 (D. Del. 2014).published
    (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.)
At page 1380 Determining whether a patent is enabling1 citing case
  • Carefirst of Maryland, Inc. v. Johnson & Johnson & Janssen Biotech, Inc., No. 2:23-cv-00629 (E.D. Va. Dec. 23, 2025).
    Cryer Report J] 369-70, ECF No. 456, attach. 1 at 149, As the Federal Circuit pointed out in Jmpax, regardless of any efficacy considerations, “the 19 proper issue is whether the [] patent is enabling in the sense that it described the cla…
At page 1382 cited at this page1 citing case
At page 1384 cited at this page1 citing case
Quoted next to this citation, but not language from this opinion
“if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.”quoted beside the cite; not in this opinion · 3 citing cases listed
  • Exergen Corp. v. Brooklands Inc., 290 F. Supp. 3d 113 (D.D.C. 2018).published
    “if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.”
  • Exergen Corp. v. Brooklands Inc., No. 1:12-cv-12243 (D. Mass. Feb. 20, 2018). 2 cites
    “if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.”
  • Exergen Corp. v. Brooklands Inc., No. 1:12-cv-12243 (D. Mass. Feb. 13, 2018). 2 cites
    “if inequitable conduct occurred with respect to one or more claims of an application, the entire patent is unenforceable.”
Other citing cases7 with no pin cite or quoted language on record
Retrieving the full opinion text from the archive…
Impax Laboratories, Inc.
v.
Aventis Pharmaceuticals, Inc.
2005-1313.
Docket on CourtListener (RECAP)
Court of Appeals for the Federal Circuit.
Nov 21, 2006.
Published opinion
468 F.3d 1366
Published
4 passages pin-cited by 6 cases
Pinpoint authority: #30,462 of 633,719
Citer courts: D. Massachusetts (3) · N.D. California (1) · District of Columbia (1) · D. Oregon (1)

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)”