In a battle between medical device makers, Nevro Corp. v. Boston Scientific Corp., 16cv6830-VC (N.D.Ca.), Plaintiff Nevro moved to strike Boston Scientific’s affirmative defense of Inequitable Conduct. The defense was based on an allegation that Nevro failed to inform the patent examiner that he had an incorrect understanding of the prior art. In its motion, Nevro argued that no such duty exists, but at the hearing on the motion, Judge Chhabria called that argument “sleazy.” Patent prosecutors had reason to be alarmed since it appeared the judge was taking the position that the duty of disclosure included not only the duty to disclose prior art, but also the duty to tell an examiner when he or she has a misunderstanding of the prior art.
A mere five (5) days later, on October 4, 2017, Judge Chhabria issued an order granting the motion to strike, much to the relief of Nevro, and likely, patent prosecutors everywhere. As a cautionary note, Judge Chhabria left the door open to replead the defense, if it were later alleged that Nevro misrepresented facts, or concealed information that the examiner could not have discovered on his own.
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For more information on inequitable conduct, please contact your Intellectual Property counsel at Smith, Gambrell & Russell, LLP.