Terminal Disclaimer Does Not Bind Two Patents For Purposes of Inequitable Conduct Unenforceability

Pharmacia v. Par Pharmaceuticals (Fed. Cir. 2005).

Inequitable conduct includes an intent to deceive coupled with either:

• Affirmative misrepresentation of a material fact
• Failure to disclose material information, or
• Submission of false material information.

In this case, the CAFC affirmed a district court’s finding of inequitable conduct based on the patentee’s failure to submit certain prior art articles to the PTO along with the filing of a declaration that contradicted the articles.  Intent was inferred by the materiality of the references and because one of the unsubmitted articles was co-authored by the declarant himself. 

Regarding a second patent in suit that was joined to the first by a terminal disclaimer, the CAFC found that the inequitable conduct during prosecution of in the first patent did not extend to the second.  Specifically, the appellate panel affirmed the conclusion that a terminal disclaimer alone does not bind two patents together for purposes of unenforceability due to inequitable conduct.