By Thomas J. Kowalski, Vicki G. Norton, Ph.D., Jarrad M. Gunther and Brandon A. Chan, Ph.D.
In defending against allegations of patent infringement, there are numerous avenues to invalidating an asserted patent or rendering it unenforceable. Invalidity contentions can include asserting that the claims are anticipated or rendered obvious over the prior art such that the patent should never have issued, or that the claims are indefinite, insufficiently described or not enabled by the specification. Inequitable conduct—asserting that the applicant breached its duty of candor and good faith before the United States Patent and Trademark Office with a specific intent to deceive through the omission of material information—may be used to render the asserted patent or family of patents unenforceable. Unlike invalidity contentions, which are analyzed and proven on a claim-by-claim basis, a finding of inequitable conduct can render the underlying patent or family of related patents unenforceable.