McKesson Information Solutions v. Bridge Medical (Fed. Cir. 2007)
[UPDATED] McKesson lost at the district court — the judge found that its patent was unenforceable due to inequitable conduct during prosecution. The bad-deeds involved McKesson’s patent attorney who failed to submit three material pieces of information. On appeal, the CAFC affirmed.
The key facts in this case involved two similar applications pending before the PTO. The three documents from the first case that were not cited in the second included: a prior-art patent; offices-actions; and the grant of the first case. The court found no clear error in the finding of materiality of these omissions or intent to deceive.
Judge Newman dissented:
It 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.
In Kingsdown, we observed that, "To be guilty of inequitable conduct, one must have intended to act inequitably." 863 F.2d at 872. That standard was not met here. This court returns to the "plague" of encouraging unwarranted charges of inequitable conduct, spawning the opportunistic litigation that here succeeded despite consistently contrary precedent.
This is a major opinion for prosecutors. A further post will follow in June.