Therasense, Inc. v. Becton, Dickinson and Co.

649 F.3d 1276 (2011)

From our private database of 45,900+ case briefs, written and edited by humans—never with AI.

Therasense, Inc. v. Becton, Dickinson and Co.

United States Court of Appeals for the Federal Circuit
649 F.3d 1276 (2011)

SC
Play video

Facts

Abbott Laboratories, which came to include Therasense, Inc. (collectively, Abbott) (defendant) held patents for disposable diabetes-test strips. The’551 patent covered a strip for testing whole blood without the use of a protective membrane on the sensor. Another Abbott patent, the ’382 patent, covered a similar test strip and stated that the use of a protective membrane was preferable but optional. The U.S. Patent and Trademark Office (PTO) originally rejected the application for the ’551 patent for anticipation, determining that every element of the claimed invention existed in prior art. To overcome that hurdle, Abbott submitted declarations to the PTO stating that a person skilled in the art would not read the ’382 patent to mean that use of a protective membrane was truly optional if testing whole blood, and the ’551 patent therefore covered a new invention. Abbott did not disclose to the PTO that years earlier, when obtaining the European counterpart to the ’382 patent, Abbott provided briefs to the European Patent Office (EPO) stating that the use of a protective membrane was unequivocally optional. After the PTO issued the ’551 patent, Becton, Dickinson and Co. (Becton) (plaintiff) sued Abbott, challenging the validity of certain patents. Abbott counterclaimed, alleging that Becton infringed the ’551 patent. Regarding that claim, the district court deemed the ’551 patent unenforceable for inequitable conduct because of Abbott’s failure to disclose the EPO briefs to the PTO. The court of appeals originally affirmed but then granted rehearing en banc.

Rule of Law

Issue

Holding and Reasoning (Rader, C.J.)

Concurrence/Dissent (O’Malley, J.)

Dissent (Bryson, J.)

What to do next…

  1. Unlock this case brief with a free (no-commitment) trial membership of Quimbee.

    You’ll be in good company: Quimbee is one of the most widely used and trusted sites for law students, serving more than 736,000 law students since 2011. Some law schools—such as Yale, Berkeley, and Northwestern—even subscribe directly to Quimbee for all their law students.

    Unlock this case briefRead our student testimonials
  2. Learn more about Quimbee’s unique (and proven) approach to achieving great grades at law school.

    Quimbee is a company hell-bent on one thing: helping you get an “A” in every course you take in law school, so you can graduate at the top of your class and get a high-paying law job. We’re not just a study aid for law students; we’re the study aid for law students.

    Learn about our approachRead more about Quimbee

Here's why 736,000 law students have relied on our case briefs:

  • Written by law professors and practitioners, not other law students. 45,900 briefs, keyed to 984 casebooks. Top-notch customer support.
  • The right amount of information, includes the facts, issues, rule of law, holding and reasoning, and any concurrences and dissents.
  • Access in your classes, works on your mobile and tablet. Massive library of related video lessons and high quality multiple-choice questions.
  • Easy to use, uniform format for every case brief. Written in plain English, not in legalese. Our briefs summarize and simplify; they don’t just repeat the court’s language.

Access this case brief for FREE

With a 7-day free trial membership
Here's why 736,000 law students have relied on our case briefs:
  • Reliable - written by law professors and practitioners, not other law students
  • The right length and amount of information - includes the facts, issue, rule of law, holding and reasoning, and any concurrences and dissents
  • Access in your class - works on your mobile and tablet
  • 45,900 briefs - keyed to 984 casebooks
  • Uniform format for every case brief
  • Written in plain English - not in legalese and not just repeating the court's language
  • Massive library of related video lessons - and practice questions
  • Top-notch customer support

Access this case brief for FREE

With a 7-day free trial membership