TEN YEARS POST-THERASENSE: CLOSING THE GAP BETWEEN WALKER PROCESS FRAUD AND INEQUITABLE CONDUCT

By Anne Y. Brody and Elisabeth Ponce¹

I. INTRODUCTION

Prior to 2011, inequitable conduct (a defense to a patent infringement claim) was considered and analyzed as a lesser charge than Walker Process fraud—an antitrust claim alleging unlawful monopolization through the enforcement of a patent obtained by fraud on the Patent Office. That distinction began to change, in practice, in 2011, when the Federal Circuit responded to an "absolute plague" of "charging inequitable conduct in almost every major patent case" by issuing Therasense, Inc. v. Becton, Dickinson & Co.² The post-Therasense decade has crystallized that, although minor differences remain in the application of the two charges, the showing required for proving inequitable conduct and the fraud component of Walker Process liability "seems to be ‘nearly identical.’"³ Indeed, today’s courts largely treat Walker Process and inequitable conduct claims equivalently. The continual harmonization of these two charges recently culminated in Complete Genomics, Inc. v. Illumina, Inc., where the court suggested that a finding of inequitable conduct in an earlier patent case may have preclusive effect and may narrow or focus the issues in a later, separate antitrust Walker Process case.⁴ This emerging trend will likely have a significant impact in future patent and antitrust cases.

This article discusses recent case developments that illustrate the continual harmonization of the inequitable conduct and Walker Process fraud charges, and it analyzes both parties’ arguments and the courts’ opinions. Lastly, it examines whether the doctrine of infectious unenforceability has any role to play in proving Walker Process fraud and other antitrust theories.