The Association for Patent Law Firms (APLF) asked Merchant & Gould to write a brief on its behalf as amicus curiae supporting a petition for rehearing en banc of the Federal Circuit's March 31, 2003 decision in Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 66 USPQ2d 1385 (Fed. Cir. 2003). The majority panel opinion in Hoffmann-La Roche affirmed the district court's decision finding inequitable conduct before the Patent Office and thereby rendering unenforceable all claims of the patent at issue. The Federal Circuit opinion addressed, among other issues, the proper standards to apply in assessing materiality and intent in connection with an inequitable conduct claim based on a patentee's affirmative misrepresentation during prosecution. Because potential shifts in the Federal Circuit's inequitable conduct jurisprudence have important implications for patent practitioners, clients, and society as a whole, the APLF as amicus curiae asked the Court to take the case en banc to allow the careful consideration these issues deserve. On the brief for Merchant & Gould were Daniel W. McDonald, Jon R. Trembath, Robert A. Kalinsky, Rachel K. Zimmerman, and Jodi L. Hartman.
A copy of the APLF brief is attached below in PDF format.
A copy of the Hoffman-La Roche opinion can be found at the Federal Circuit's web site at http://www.cafc.uscourts.gov/
Please contact Robert A. Kalinsky with any questions regarding the APLF brief.
Amicus Brief -APLF