New York partner Richard Lehrer authored an article, "Overuse of the Inequitable Conduct Defense," which was published in the September 18, 2009, edition of the Bureau of National Affairs' Patent, Trademark & Copyright Journal.
According to Lehrer, "The inequitable conduct defense was not meant to serve as a boilerplate defense to every charge of infringement. While courts may have perpetuated its misuse, attorneys who habitually allege the defense are ultimately responsible for its exploitation . . . Inequitable conduct, a charge that is tantamount to being accused of an ethics violation or receiving a Rule 11 sanctions motion, has become an all too commonplace defense in patent litigation. However, unlike the defense of invalidity, which attacks the patent in suit, inequitable conduct attacks, typically, the attorney(s) who wrote and/or prosecuted the underlying patent application. While there is no denying that as lawyers we are supposed to be zealous advocates for our clients, there must be limits."
Lehrer's article goes on to provide the background of inequitable conduct, including a detailed description of the issues of "materiality" and "intent to deceive," as well as the consequences of "routinely" charging inequitable conduct, including that a "finding of inequitable conduct regarding just one claim can lead to the entire patent being unenforceable, and a finding regarding one patent may affect all related patents."
Lehrer concludes: "While the courts' handling of this doctrine may have perpetuated its misuse, attorneys who habitually allege inequitable conduct as a defense to every patent litigation are ultimately responsible for its exploitation. Perhaps if there were consequences for the lawyers who improperly allege inequitable conduct with little more than a shred of proof there would be fewer improper charges. The inequitable conduct defense is not meant to serve as a boilerplate defense to every charge of patent infringement. Litigators need to consider the ramifications of this assertion in the same way they consider them before bringing a Rule 11 motion for sanctions."
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