Bayer Prevails Again, Despite Stricter Inequitable Conduct Standard


Wesley E. Overson

Patent Litigation and Appellate + Supreme Court

MoFo News Item

Turning back claims of infringement by Abbott Diabetes Care for the second time, a team of Morrison & Foerster litigators, led by San Francisco partners Rachel Krevans and Wes Overson, convinced a California federal court that Abbot's patent was unenforceable against Bayer HealthCare LLC due to inequitable conduct. The ruling by U.S. District Judge William Alsup of the Northern District came despite a higher standard for establishing inequitable conduct set in a landmark ruling by an en banc panel by the Federal Circuit.

The case began in 2005 when Abbott sued Bayer over claims that Bayer’s blood glucose test strips infringed two of its patents. MoFo won summary judgment on one of Abbott’s patents, and then, at trial, convinced Judge Alsup to find the other patent invalid and unenforceable due to inequitable conduct. On appeal, the Federal Circuit, affirming Judge Alsup’s findings, took up the inequitable conduct issue en banc and raised the bar for litigants attempting to use the controversial defense. The court vacated Judge Alsup’s prior inequitable conduct finding in the landmark Therasense decision, which, in his words, “worked a seismic shift in the law of inequitable conduct.” On remand, Judge Alsup confirmed that his prior inequitable conduct finding remained applicable under the new, stricter standard established by the circuit court.

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