By T. Leigh Anennson & Gideon Mark | 62 Am. U. L. Rev. 1441 (2013)

There are critical challenges facing patent rights and remedies. The defense of inequitable conduct in the patent process is a controversial and prominent concern. It is one of the most significant judicially-created doctrines in patent jurisprudence and has been the subject of intense interest in the patent community. The United States Supreme Court’s ruling in eBay Inc. v. MercExchange, L.L.C. instructs that patent law is not an island, but rather is part of the broader law of equity and its remedies. Initially heeding that instruction, the Federal Circuit in Therasense, Inc. v. Becton, Dickinson & Co. unanimously decided to rehear en banc the issue of inequitable conduct in light of its origins in equity and unclean hands. Regrettably, the majority ultimately enounced the doctrine’s heritage and reinvented the defense purely on policy grounds. Although the majority still called cheating in obtaining a patent monopoly inequitable conduct, there is little equity left. 

The Therasense majority rewrote the rules of ancient equity without resorting to history or guiding legal theory. By revisiting the equitable doctrine of unclean hands, this Article provides critical guidance in the future adjudication of inequitable conduct. It evaluates what the defense could—and should—mean within the context of equity principles and patent remedy policies. In doing so, it shows how patent law may meaningfully join equity in substance and procedure in a manner also consonant with the legislature’s interests. The suggestions build upon theoretical developments in patent rights and remedies. The analysis also unites a series of Supreme Court decisions on unclean hands, remedies, and patent law. Examining inequitable conduct from the perspective of equity jurisprudence as a whole exposes trends and themes that a narrower lens might have omitted and traces critical lines that have been ignored. While the literature on inequitable conduct is extensive, no one has examined inequitable conduct from its equitable tradition. Therefore, this article fills an essential gap in the scholarship on an issue of systemic importance.

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