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McKesson Information Solutions, Inc. v. Bridge Medical, Inc.

Posted in Opinion Commentary by Jake Ward on June 4, 2007

Failure to disclose material rejections and allowances in related applications was inequitable conduct. 

(Fed. Cir. 2007, 06-1517)

identmethod

McKesson appealed the final decision of the District Court (E.D. Cal.) that dismissed McKesson’s infringement suit against Bridge.  The District Court had found that the only patent at issue, McKesson’s U.S. Patent No. 4,857,716 (the ‘716 patent), was unenforceable due to inequitable conduct.  The CAFC affirmed.

The technology at issue pertains to a patient identification system for relating items with patients and ensuring that an identified item corresponds to an identified patient. 

During prosecution of the ‘716 patent application, the prosecuting attorney simultaneously prosecuted two related applications (the ‘149 application; and the ‘195 application). The prosecuting attorney failed to disclose a reference (“Baker”) brought to his attention in the ‘149 prosecution.  Also, the prosecuting attorney failed to disclose rejections and an allowance of claims in the related applications.

In affirming the holding of the District Court, the CAFC stated that the duty of candor extends throughout the patent’s entire prosecution history. The Baker patent described technology of the very type the prosecuting attorney used to differentiate the claims of the ‘716 patent from the prior art, and thus was material.  Additionally, the attorney’s cancellation of a claim in the ‘149 application when confronted with the Baker patent gives rise to an inference of an intent to deceive – he should have recognized Baker would also present a significant obstacle to the patentability of the ‘716 patent application. Thus, the overwhelming circumstantial evidence, coupled with the lack of any credible explanation for nondisclosure of Baker, supported the finding of inequitable conduct.

With respect to the rejections asserted in the related ‘149 application, the CAFC stated:

The term “information” is intended to be all encompassing . . . . [Section 1.56(a)] is not limited to information which would render the claims unpatentable, but extends to any information “where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.”

In light of this broad understanding of information, there is “no doubt that material rejections in co-pending applications fall squarely within the duty of candor.”

Finally, in relation to the allowed claims that were not disclosed, that CAFC further stated that “[m]aterial information is not limited to information that would invalidate the claims under examination.”  The appropriate test for materiality is “whether a reasonable examiner would have considered the information important, not whether the information would conclusively decide the issue of patentability.”  Thus, the allowance of claims in the related ‘195 application is material, and should have been disclosed. 

The failure to disclose the Baker patent, the rejections in the related application over the Baker patent, and the allowances support a finding of inequitable conduct.  AFFIRMED.

In dissent, J. Newman argued:

[I]t is not clear and convincing evidence of deceptive intent that the applicant did not inform the examiner of the examiner’s grant of a related case of common parentage a few months earlier, a case that was examined by the same examiner and whose existence has previously been explicitly pointed out by the same applicant. Nor is it clear and convincing evidence of deceptive intent that the applicant did not cite a reference that the applicant had cited in the same related case, and that had been explicitly discussed with the same examiner in the related case. . . .

This court returns to the “plague” of encouraging unwarranted charges of inequitable conduct, spawning the opportunistic litigation that here succeeded despite consistently contrary precedent.

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