What a Mess: Inequitable Conduct Based on Failure to Submit

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.

112 thoughts on “What a Mess: Inequitable Conduct Based on Failure to Submit

  1. 112

    I just listened to the oral argument.

    Counsel for the defendant argued that the trial court could have properly found the patent practitioner was not a credible witness based upon the patent practitioner’s testimony regarding the materiality of the information. Lesson #1: Don’t try to be your own expert on materiality because it may taint your testimony on the intent issue.

    The Feds also noted that this was not a case of negligence because the patent practitioner testified that he was sure that an assessment of materiality was done. Lesson #2: Be willing to bite the bullet regarding negligence because it may still save the enforceability of the patent.

  2. 111

    “Yesterday, a representative from the USPTO disciplinary office gave a talk that made it crystal clear that failure to read every part of every reference submitted in an IDS is an ethical violation. ”

    Does Mr Ethical Office know that at least some of the Examiners never read the patent(s) they allow/prosecute?

    There is some quote about glass houses that goes here…

  3. 110

    “Yesterday, a representative from the USPTO disciplinary office gave a talk that made it crystal clear that failure to read every part of every reference submitted in an IDS is an ethical violation. ”

    LOL. Is it an ethical violation to read every part and then forget what I just read? Because last time I checked most prosecutors are (drum roll…) human beings.

  4. 109

    Yesterday, a representative from the USPTO disciplinary office gave a talk that made it crystal clear that failure to read every part of every reference submitted in an IDS is an ethical violation. He even suggested that there may be a duty to obtain and read the full translation of foreign references, even though you only need to submit english abstracts thereof.

  5. 108

    May we have some clarificationn of that last contribution? Am I to understand that 1) it is “unethical” to file at the USPTO with more than one multiple-dependent claim (but only when one does it deliberately, to increase pendency, and 2) that’s what is responsible for the backlog?? My own take (from outside the USA) is that most every US attorney does his conscientious best to get effective rights for his client, and it is the law on inequitable conduct that stymies the USPTO in its drive to “churn out” patents. The words of the song come to mind “I fought the law, and the law won”. How can the USPTO seriously expect “ethical” attorneys to fight with the law?

  6. 107

    I heard the lead attorney for the USPTO OED speak about the latest trends and activities down in his office at an AIPLA conference last year. Based on that talk I came to the conclusion that what is happening is a combination of the immense pressure placed on the USPTO to churn out patents and the unethical practices of the unprincipled few who deems us brothers and sisters-in-arms. When you file a patent with multiple, multiple-dependent claims just as a stall for your client there is going to be brush back. Reap what ye sow.

  7. 106

    “admitting that information was material (and thus admitting it was a mistake not to submit it) probably gives rise to a malpractice claim for the attorneys’ fees and costs spent litigating the inequitable conduct issue”

    Anybody got numbers on how many lawsuits were filed in the past five years against patent prosecutors whose “errors” were “discovered,” then “admitted,” during the course of litigation?

    Also, is the finding of a prosecutor’s inequitable conduct by two courts less or more likely to lead to a lawsuit against the attorney versus an admission of a mistake which is not accompanied by a finding on non-enforceability?

  8. 105

    Dr. X:

    Even if inequitable conduct is not found, admitting that information was material (and thus admitting it was a mistake not to submit it) probably gives rise to a malpractice claim for the attorneys’ fees and costs spent litigating the inequitable conduct issue.

    If the practitioner believed the information was not material and still does, the practitioner should be careful not to be baited into saying that he or she would do the same thing today. That’s a HORRIBLE sound bite. The practitioner should say something like: “In hindsight, I would submit the non-material information. Not because there was a duty. Only because this litigation has been a pain.” Sadly, given the ongoing plague of inequitable conduct allegations, submitting non-material information is the general rule for the patent bar.

  9. 104

    I am curious for litigators to weigh in on mistake vs. I’d do the same thing again.

    I’ve heard it argued that admitting a mistake in such a situation is admitting malpractice.

    On the other hand, walking into a judgment of inequitable conduct doesn’t seem like such a good idea, either.

    As I understand it, there are no interesting background or unpublished facts that would lead three judges to want to pound on Attorney Schumann

  10. 103

    Now someone said that Mr. Schumann is one of the most honest people one could meet. It seems to me the very fact that he has been in business over 30 years attests to this fact. I do question, however, why one would completely deny that a mistake was made. I mean me, personally, I am always up to admitting a mistake. The way the case reads is screwy. I mean if one does not have proof that one analyzed the cases at the time and made a determination of non-materiality, then with the court ruling it is material, one is left only with a mistake. In short, there is something wrong with this opinion. Some facts to which the trial court was privy are not before us? I cannot imagine a judge willy nilly ruling off-the-cuff that a seasoned patent attorney with a clean record would intentionally withhold a reference. I simply cannot believe that such vermin could attain a position on the bench . . . may be an attorney general spot, but not the bench . . . then again Gonzales was the Chief judge of the Texas Supreme Court . . . could I be wrong?!;)

  11. 102

    “only a liberal arts beatnik would use such a pseudonym”

    Is this better?

  12. 100

    To: a bit confused

    From Wikipedia – Malcolm Mooney is an African-American singer, poet, and artist, probably best known as the original vocalist for German krautrock band Can.

    With all due respect and courtesy, only a liberal arts beatnik would use such a pseudonym…

  13. 99

    No crystal ball needed Mooney, you just don’t talk the prosecutorial talk. Like your comment about re-exam above – clearly the wrong approach. And I really dislike getting caught up in the whole “you’re wrong/I’m right” dualism that will clearly have you bogged down for the better part of your life.

  14. 98

    “The litigators will have a field day with inequitable conduct once patents subject to the new IDS rules get into court…..”

    Why wait? Litigators are having a field day already.

    As someone who’s been on both sides I can assure you that nothing is more fun than taking pot shots at a prosecution history full of holes, missteps and just plain fabrication. And nothing is less fun than asserting such a patent, except maybe losing the case (which is far from guaranteed when you’ve got a good team and client willing to shell out the $$$ for a fullcourt press).

    “Mooney *might* be a liberal arts major that stumbled into patent litigation, or is an academic.”

    What are using to polish your crystal ball, Caveman?

  15. 97

    I have worked with Attorney Schumann. You’d have to look far and wide to find a more honest person. I can’t imagine he would have acted with intent to deceive.

    I’m surprised that so much of the commentary focuses on the reference. Missing a reference seems clearly to be a mistake.

    I’m shocked to learn that we’ve had since 1989 a requirement to disclose office actions and notices of allowance in somewhat related cases. Clearly a decision by a person who has never prosecuted or examined an application. They’ve just created a blizzard of irrelevant documents at the PTO.

    How about sending well reasoned letters (including claim charts) to competitors describing the ways in which their pending/allowed claims are invalid? When they fail to disclose this to the PTO, by the McKesson standard, that should be inequitable conduct.

  16. 95

    metoo wrote:
    “My favorite Judge Newman dissent was in Senmed v. Richard-Allan – she was, to put it mildly, a bit perturbed with the two other judges on the panel in that case.”

    If convenient, I’d like a link to that case:
    Senmed, Inc. v. Richard-Allan Med. Indus., Inc., 888 F.2d 815, 819 n.8, 12 USPQ2d 1508, 1512 n.8 (Fed. Cir. 1989)

  17. 93

    We have many times withdrawn cases from issue in order to have an IDS considered. Our serious clients understand the need for this.

    We have, at other times, advised third parties under jdev agreements with our clients to withdraw their cases from issue in order to address IDS issues/irregularities and to have references considered that should have been presented during prosecution. The howls and screams were deafening. It is amazing how careless some prosecutors can be when it comes to proper IDS practice.

    BTW, the “we” in Mooney’s post is a wishful “we” at best. Mooney doesn’t prosecute. Mooney *might* be a liberal arts major that stumbled into patent litigation, or is an academic. Mooney has most accurately been described herein by many (not counting me) as a snarky “troll.” Like the huge green maggot fly at the picnic – difficult to ignore, especially when it lands on your pulled pork sandwich.

  18. 92

    “There is no record in the PTO patent attorney/agent database of a Malcolm Mooney.”

    Really? Interesting…Can you check if a “Gil Scott-Heron” is registered?

  19. 91

    anon, I do not regularly submit OAs from related cases, however, I have been known to cite art from 892s in closely related cases.

  20. 90

    the proposed IDS rules are fine: you can explain the office actions you are submitting in an IDS as “material to patentability according to McKesson, Fed Cir, 2007”.

  21. 89

    This case has some very troubling language, speaking as a biotech patent attorney. There are usually a large number of citations that an examiner might consider to be “material.” Further, the examiners don’t always understand the inventions and have been known to give out 102 and 103 rejections based articles that use the same words from 30 years ago, but those words meant something very different then to the person of ordinary skill in the art. Personally, it never even crossed my mind to include an office action for a related cases in an IDS – did I just accidentally commit inequitable conduct?

    What worries me most about this case is how it will change how much patent prosecution costs when the PTO rolls out those shiny new IDS rules. This case implies that we had better cite everything, even if it really isn’t relevant, and the new rules will require that we go through every line of every reference and explain how and where they are relevant to each and every element of each and every claim. Who is going to sign off on these new IDS forms, if your bar number is at stake if you overlooked something or if reasonable minds differ on how material page 87 of reference 42 is to the fifth element of claim 13? And if you amend the claims, you get to go back through and file a new IDS explaining everything again. I’m glad I’m an in-house attorney and have outside counsel to sign them for me.

    The litigators will have a field day with inequitable conduct once patents subject to the new IDS rules get into court…..

    As an aside, Malcolm Mooney (5:28) wrote “The point is that for almost all of the applications we prosecute….” There is no record in the PTO patent attorney/agent database of a Malcolm Mooney. Is the “we” in that sentence supposed to be “you” or is Malcolm just a pseudonym?

  22. 88

    “Whether or not the case issues as a patent, whether it is enforced, whether it goes to court etc etc is neither here nor there is it?”

    You tell me.

    Are you going to hustle to have every one of your clients’ issued patents reexamined in light of the file histories of every related application “just in case”?

    Or are you going to “assume the risk” that they won’t be found unenforceable or invalid down the road?

  23. 87

    there is no troubling conundrum – the IDSs will still need to be filed. Whether or not the case issues as a patent, whether it is enforced, whether it goes to court etc etc is neither here nor there is it? It still needs to be done and it needs only one important unenforeceable patent to screw it all up for you.

    Are you engaging in subterfuge or are you just confused?

  24. 86

    “I tend to guess beforehand which patents will turn out to be the valuable ones and hedge my bets on the malpractice.”

    You’re missing the point. The point is that for almost all of the applications we prosecute, the issues in McKesson will — as a matter of fact — never be addressed by anyone. If someone wanted to bother, he/she could probably quickly find in the PTO database some related patents with apparent “IDS problems.” In some cases, the owners of the patent may be aware of the problems. And yet … they don’t do anything about it. Do you suppose it’s because the owners are dead or insane? Or might there be some other reason?

    I am so sorry to bring this troubling conundrum to your attention. It is the mystery of the quotient …

  25. 85

    My favorite Judge Newman dissent was in Senmed v. Richard-Allan – she was, to put it mildly, a bit perturbed with the two other judges on the panel in that case.

  26. 84

    Malcom you are such a tough guy, so invunerable to any decisions from above, oo I admire you so. What a devil-may-care attitude you have – just the best quality for a prosecutor.

  27. 83

    Oh yes Malcom (4.27) – I only worry about my patents being found unenforceable if they are for wealthy clients. I tend to guess beforehand which patents will turn out to be the valuable ones and hedge my bets on the malpractice.

  28. 82

    CaveMan

    “The key aspect of McKesson is the extraordinarily close relation of the cases both in terms of parentage and claimed subject matter.”

    Those who admire CaveMan (in spite of his strange obsession with yours truly) should take note of his observation here, particualarly before they spend Memorial Day weekend assembling reams of paper or megafiles for submission to the PTO in a misguided effort to save the entirety of the world’s patent portfolios.

  29. 81

    “Mooney – of course I believe it – ”

    Let’s be clear: you believe that “everyone with multiple cases from the same specification has now committed inequitable conduct (even if only for failure to bring an Office Action to the Examiner’s attention).”

    Just so there is no mistake, let me be clear: you are wrong. Flat out dead wrong.

    When you’ve finished hyperventilating and you’re ready to have a reasonable discussion about the relevance of McKesson to inequitable conduct case law, let me know.

  30. 80

    “I will now, to be on the safe side, submit the complete file wrapper of all previous and related cases.”

    That seems very silly and a likely waste of money, time, and paper. But maybe you only meant that you were going to do this for your wealthiest client’s most important patents or the ones your client intends to chase alleged infringers with.

    Again, it’s worth reading the case (or at least this comment thread) to understand the various factors which led to the decision. On the other hand, if every prosecutor here insists on filling his/her diaper every time Judge Newman writes a misleading dissent, I’m investing in Pampers bigtime.

  31. 79

    caveman, have you routinely submitted copies of US office actions in related US cases?

  32. 78

    Lionel Hutz, “One problem is, the PTO actively discourages attorneys for submitting too many references as the attorneys are then accused of playing hide the salami.”

    “Hiding the Ball” generally refers to hiding something from view.

    “Hiding the Salami” generally refers to something else.

  33. 77

    Lionel,

    We began submitting office actions from foriegn offices (even when no references are cited) recently to supplement our existing practice of submitting references cited in the foriegn office actions in U.S. National Stage PCT applications. We decided that the opinions expressed in those actions might be material and, from an abundance of caution, worth citing.

    I don’t see how McKesson is much different. The key aspect of McKesson is the extraordinarily close relation of the cases both in terms of parentage and claimed subject matter.

    One further item to note in McKesson is the telephonic discussion of the Baker reference, which was never of record or made of record subsequent to the interview. The applicant’s argument (by counsel) was that Baker would be cumulative. Personally, I would NEVER discuss a document/reference that was not already of record. Such behavior by counsel hints at a level of carelessness that might have been at the root of this case.

    sidebar – clearly Mooney doesn’t prosecute cases or it would be abundantly clear how such situations can easily arise without drama, and we all know Mooney LOVES drama, and white wine.

  34. 76

    (As a biotech practitioner) I will now, to be on the safe side, submit the complete file wrapper of all previous and related cases. Advisory Actions, Examiner interview summaries, etc etc – its not just Office Actions you know. Its the prudent thing to do.

  35. 75

    Malcolm wrote “”Fraudster, apparently” said: “I’m sure everyone with multiple cases from the same specification has now committed inequitable conduct”

    Of course, you don’t really believe this. Nobody does.”

    Malcolm, I have on numerous occasions filed patents cited in one application in another assuming they were sufficiently related, sufficiently proximate in time, and had different Examiners. However, I have never submitted, and I have never heard of anyone ever submitting, an office action from a related case. The closest I have come to that is the X-Y coversheet analysis of EPO search reports along with the EPO references.

    I have not read this case, so I am not sure how the prosecutor responded to questions, but if I were th prosecutor and I still believed the patent was not material, I would probably say as much. My tone would be “Your honor, I did not believe then, nor do I believe now the patent was material to prosecution. I had no intent to deceive the office. If I had known the office would consider it material, I would have submitted it.”

    One problem is, the PTO actively discourages attorneys for submitting too many references as the attorneys are then accused of playing hide the salami.

    For me, personally, as long as I am under 20 references, which is almost always, I submit anything that I have seen that arguably relates to the invention in any way shape or manner to avoid the inequitable conduct accusation. I figure the PTO is more concerned about the Bio-tech guys submitting 100s of a references.

  36. 74

    Mooney – of course I believe it – and the fact that you don’t indicates to me that you (a) don’t have extensive cases, but lines of separable applications instead, or (b) you are talking about some theoretical prosecution, not actual.

    There is no way things cannot fall through the cracks. And if you think I’m making it up then just check the IDSs in the big patent families and see how many of them cite all the OAs in the related cases.

    KSR was a case of chicken little perhaps, but if this case does not affect your practice then I suspect your practice is not prosecution.

  37. 73

    Inquring Mind,

    And here I thought I was the only one who noticed the shuffling off of a whole corps of Air Traffic Controllers to usher in a newer (less costly) breed who could operate the newer (and hugely more costly) machinery.

    The difference is however, that while the PTO can do that sort of thing with Examiners, I doubt it could do that sort of thing with a class of private practitioners.

    BTW, Mooney might well not be the best candidate for identifying characteristics of self important asses – on the other hand Mooney might be the absolute best candidate.

  38. 72

    Malcolm Mooney asked, “[W]ould you puff yourself up: ‘I’m Big Prosecutor and I’d do it the same all over again I don’t care what anybody thinks!’? Before you answer, you might want to consider the pitfalls of such a strategy, in light of this case.”

    Well said.

    If you admit that you made a mistake (and thus admit materiality), you’re left with decpetive intent. Consequently, the knee-jerk response to an inequitable conduct allegation is to argue that the information was not material at least in the alternative (that is, no deceptive intent and/or no materiality).

    But testifying that it wasn’t a mistake can backfire. Such testimony, as Malcolm notes, may make you seem like a self-important ass. More importantly, if the finder of fact believes the information is material, such testimony may undermine your credibility, which is critical when the court assess deceptive intent.

    Of course, if you admit the mistake, you’re in a tough situation with only deceptive intent left to consider. You basically have to show that you failed to submit the reference because you (1) negligently allowed the reference to fall through the cracks or (2) you negligently failed to understand the materiality. Good luck trying to argue the latter — after all, if a judge or jury believes the information is material, they’ll surely hold a patent practioner to a higher standard.

  39. 71

    anon wrote

    ” I think [Newman] was wrong once on In re Wright, but that was a long time ago, and it was just once).”

    LOL! I think the moon is made of green cheese.

    Obviously she was wrong on more than In re Wright and somebody even went through the trouble of listing a few instances where she was plainly wrong. Are any of the Newman worshippers here using the term “consisting” and “comprising” interchangeably?

    [crickets]

  40. 70

    IDEA! I am tired of the Federal Circuit screwin us. Lobby Congress for a court to hear all patent appeals where the judges are selected by popular vote from stakeholders in the patent system:)

  41. 69

    “Fraudster, apparently” said: “I’m sure everyone with multiple cases from the same specification has now committed inequitable conduct”

    Of course, you don’t really believe this. Nobody does.

    But the more time I spend here the more I discover that certain habits are very hard to break. Mainly I’m referring to the patent prosecutorial habit of weeping that Patents Are Dead immediately after the Federal Circuit finds for the defendant.

    If we were to believe certain commenters here, all patents are now invalid as non-enabled, obvious, and unenforceable, based on three or four decisions in the past six months.

    And of course, anyone who disagrees is not a “true” prosecutor. The elites have spoken!

  42. 68

    whats the downside of filing every single continuation as a CIP?

    that puts the related application ids tracking burden upon the USPTO.

  43. 67

    “Fraudster, apparently” said: “I’m sure everyone with multiple cases from the same specification has now committed inequitable conduct (even if only for failure to bring an Office Action to the Examiner’s attention).”

    Good point–maybe that’s the plan–under McKesson, the PTO will potentially be able to disbar all current prosecutors from practicing before the PTO due to inequitable conduct. The patent field (after a brief lull, during which new prosecutors will be trained) can start fresh with a new batch of prosecutors who will be educated to believe that all the problems with the “old” applications were due to poor drafting and prosecution practices perpetrated by pernicious prosecutors. I guess it worked for air traffic controllers–why not patent prosecution.

    (P.S. Thanks, Fraudster, for the reminder about 1.97/1.98)

  44. 66

    Peter Zura’s blog here:
    link to 271patent.blogspot.com
    includes a link to getting a PDF of the District Court ruling.

    I suspect that one of the un-articulated reasons so many prosecutors are deeply disturbed by this ruling is that a District Court level judge would generally have no way of becoming sufficiently educated in the ways of the US Patent Office so as to know what weight to attach to a secondary reference in a 103 rejection. The DC judge in this case made no finding of the fact that the USPTO routinely brings in irrelevant secondary references in an attempt to make up for defficincies in the primary reference. The DC judge in this case made no finding of the fact that patent documents are often complex, difficult to read, and that it is unfair to demand that a prosecutor with limited time to finish a response (due to cost constraints) know every detail in every secondary or tertiary reference even when focusing on a different application.

    Of course a skilled litigator can blow up way out of proportion any minor slip up desired of a prosecutor in not successfully dotting every “i” and crossing every “t” during the prosecution process. It is amazing how no mention was made regarding the PTO’s track record at dotting every “i”. When was the last time you got a “perfect” Office action?

  45. 65

    At my firm, we have a full-time IDS-only position, we use Excel spreadsheets for large families, and we have a sophisticated database program that tracks all relationships, including “similar subject matter” relationships, between all cases. The database program can generate IDS family reports starting at any case, to any specified “degree of separation”.

    With all this, I’m still sure that things fall between the cracks.

  46. 64

    How about this – what if an applicant could identify related applications once in an IDS for application X. Then, once this information is entered into the PTO’s database for application X, all future office actions and prior art cited by the examiner in those related cases would be automatically forwarded to the examiner handling application X.

  47. 63

    Whatever happened in the US to the question of whether there is a patentable invention worthy of a patent? Allow third parties to file observations and prior art during prosecution, have an effective post grant opposition proceeding. Ditch inequitable conduct.

  48. 62

    “Just because I’m a prosecutor…”

    Mooney, you are not a prosecutor. You are, at best, a liberal arts major…

  49. 61

    I’m sure everyone with multiple cases from the same specification has now committed inequitable conduct (even if only for failure to bring an Office Action to the Examiner’s attention). IDSs (mine are already 3ft high) are about to get a lot more frequent and bigger.

    Inq Mind: – 1.56 says the duty of disclosure can be fulfilled by submitting stuff in accordance with 1.97/1.98. Though it doesn’t exclude the idea that you can fulfill the duty in other ways (like you have suggested – in the Remarks section) it also doesn’t say you can. So put them on the 1449 anyway.

    I’m now worried I have to disclose things to the Examiner that they Examiner may have forgotten becuase my case has been in prosecution for so long. I’ll re-submit early IDSs just to be sure…..

  50. 60

    Mr. Mooney wrote (of using Excel charts to keep track of references cited in various applications):
    “That is sooooo 1998!!!!”

    Perhaps this is true, but I think it’s the way many of us do it, and it seems to work pretty well. Do you have a different and better way? Perhaps a commercially available software package, call now and get it for only $19,998.00 from Ronco along with a set of Ginsu knives?? ;) Are there commercial patent service companies, like annuity companies, that will handle your IDSs for you? That might be worth something if this holding sticks.

    Like johng, I feel sympathy for the prosecuting attorney in this case, because I also had an administrative assistant who was hostile to IDSs, and we had a fixed amount of time we were allowed to bill for IDSs (which meant the time often got written off or down–fun).

    Also, I think it’s still not clear how one is supposed to bring copending applications to the attention of the examiner, because I remember having lots of discussions about how they should be cited on an IDS and we eventually came up with a format for a 1449 form, but as others have pointed out, the examiner will just cross them out most of the time. I guess the best way is to mention them in the remarks section of a response–then you won’t take up one of the limited spots under the new IDS rules, and at least you will have mentioned them in writing. Perhaps the PTO could issue some guidance in view of this case.

  51. 58

    “My suggestion to Congress: pass a law that says all CAFC panels must rule in accordance with Judge Newman. She’s never wrong. And US patent practice would be a lot saner if all CAFC judges followed her lead.”

    I agree completely (well, if I remember correctly, I think she was wrong once on In re Wright, but that was a long time ago, and it was just once). In my opinion she has been the best judge we have.

  52. 57

    “We design various Excel charts and try to update as needed. ”

    That is sooooo 1998!!!!

  53. 56

    “2. Forgot to get a copy of that art and add it to the box of disclosures common to all apps in that family.”

    That would be an oversight, ruled out by the prosecutor’s own testimony that he would make the same non-disclosure decisions again if he was doing it over today.

  54. 55

    Here’s what I beleive actually happened all those years ago:

    Known Facts:

    1. The Examiner was the one who found the piece of prior art (the Baker patent) during the prosecution of the 278 app. (abandoned) that was later not disclosed in the the 527 continuation, or the 195 c-i-p.

    2. The only communication between the examiner and the attorney was a phone call from the examiner where he told the attorney about the Baker Patent.

    3. The 278 app was abandoned within days of the phone call from the Examiner.

    4. Other than the Baker Patent, the exact same disclosures were made by the attorney in all 3 applications.

    So what REALLY Happened?

    Summary of his ACTUAL conduct:

    1.Got a phone call about a piece of art he’d never heard of related to an app he already was going to abandoned.

    2. Forgot to get a copy of that art and add it to the box of disclosures common to all apps in that family.

    THAT’S ALL – and no “Intent to Deceive” in there that I can see…

  55. 54

    Maybe so MM. Do you have one? We design various Excel charts and try to update as needed. (I’m not sure if you meant that to be rhetorical or cute (my nice way of saying smart ass, based on your previous comments).)

  56. 53

    “It is very difficult to keep track of these things”

    Perhaps a computer could be programmed to assist us.

  57. 52

    anon, I have a very similar practice: many, many copending and related applications. It is an examiner’s wet dream – so many RCEs.

    What I find frustrating, and you guys are scaring the crap out of me, is the need to file an increasing number of IDS’s because of PTO delayed prosecution and simultaneous world-wide prosecution of corresponding applications. It is very difficult to keep track of these things, especially when your shared secretary understands practically nothing about them and provides very little help. (Despite her having over 15 years in the business and having explained these things numerous times! She hates IDS’s. Sometimes I think she tries to sabotage me.)

    I have reviewed some examiner complaints and gripes about IDS’s. Twice, examiners attempted to force us to provide explanations and citations for each citation in a way similar to what is required in the proposed IDS rules. In each these cases, they had actually examined the parent cases and previously signed off on all the references in those parents. Petitions were filed in both cases.

    I have trouble remembering what I was doing last week, let alone 20 years ago. I feel bad for that guy.

  58. 51

    Having very extensive co-pending applications I’ll doubt I’ll ever get anything issued, I keep needing to pull things to file an RCE to get another Office Action etc considered, the damn things never get to issue. Really, IDSs now take up more time than any other process (other than writing the application).

    I suppose this is ok for those prosecutors with just 2 or three co-pending apps from the same or similar specs, but for the rest of us it grinds everything to a halt. I’ve become a specialist in peition to withdraw from issue.

  59. 50

    FYI – here are some tidbits from the OA that I referred to in my earlier post. Granted, the “threat” is implicit rather than overt. However, the message is clear.

    “It is impractical for the examiner to review the referenses thoroughly with the number of references cited in this case. By initializing each of the cited references on the accompanying 1449 forms, the examiner is merely acknowledging the submission of the cited references and merely indicating that only a cursory review has been made of the cited references”

    “It should be noted that an applicant’s duty of disclosure of material and information is NOT SATISFIED by presenting a patent examiner with ‘a mountain of largely irrelevant [material] from which he is presumed to have been able, with his experience and with adequate time, to have found the critical [material’. It ignores the real world conditions under which examiners work.'” (emphasis added)

    “Patent applicant has a DUTY not just to disclose pertinent prior art references but to make a disclosure in such a way as not to ‘bury’ it within other disclosures of less relevant prior art.” (emphasis added)

    Note: in this case the applicant did no more than cross-file references that were cited in related cases (of which there were about five).

  60. 49

    Re Elan v. Mayo, “really” wrote

    “I believe that this was a rehearing, not an en banc. And Newman wrote the new opinion as well.”

    Thank you for the correction. I regret the error and cede one half brownie point to Judge Newman.

  61. 48

    Is it fair to take away the inventor’s right to his invention just because his attorney screwed up? Aren’t we punishing the wrong guy? I guess this is what insurance is for…

  62. 47

    “Malcolm – do you think the outcome would have been different if the prosecuting attorney had responded – “Well, clearly I made a mistake, as those items should have been submitted”?”

    A better response might be, “In retrospect, the best practice is to disclose everything that that has the remotest chance of being considered relevant, particularly when the references relate to an application in the same family. The ball got dropped in this case.”

    The court’s focus can then be shifted to whether the failure to disclose is so material that an intent to hide the ball can be inferred. I think it’s certainly possible, and maybe likely, that a sincerely apologetic prosecutor (and decent witness) can affect the outcome of a case like this.

    Clients should consider this aspect of the IP battlefield: prosecutors who melt on the stand because they are borderline autistic or who get extremely prickly and sensitive when poked a little bit about their practices may be a liability at the end of the road.

  63. 46

    Clive – The case was bufurcated “At the parties’ request.” While not the norm, it is also not all that unusual. Often the patent owner will want the issue of inequitable conduct bifurcated so that any testimony on that issue will not “taint” a jury which decides the other issues in the case. And even if the trial is not bifurcated, I believe that a finding of invalidity as to some, but not all, claims will not moot the issue of inequitable conduct. Also, a finding of inequitable conduct does NOT require that the withheld information would, alone or in combination with other information, invalidate any claim of the patent. A piece of prior art can be material, yet the patent still valid over that prior art.

  64. 45

    The court describes, with apparent approval, that “…the [district] court reasoned that the rejection would have been of additional importance to Examiner Trafton because it contradicts Schumann’s October 6 argument for patentability.”.

    Also, the CAFC states that if the examiner cites a reference for only a subset of what it actually contains, the attorney is put “on notice of the content of the whole document.” To me, that is not surprising.

  65. 44

    Me wrote: “The question for me is why not just wait and invalidate the patent on the uncited art, using the other patent for support, instead of doing it the back way through inequitable conduct.”

    My guess: to support an exceptional case finding and award of attorney’s fees.

  66. 43

    Alfred E. Neuman said:
    “So I think the lesson of this case is to submit references that are actually used by examiners in related cases. Not a particularly high standard of inequitable conduct.”

    I would agree, if that is where the court had stopped (and I think they should have), but they did not. The opinion faults the prosecuting attorney, among other things, for failing to notify Examiner Trafton that the claims of the ‘372 patent had been allowed by said Examiner Trafton and when the ‘372 patent and the patent in question both claimed priority to the same ‘278 application. Not doing so constituted inequitable conduct.

    Moreover, the opinion states that not just material references in copending cases but also rejections in copending cases should be brought to the attention of the examiner–it was not enough here that the attorney notified the examiner that there was a copending case; he was apparently also supposed to notify the examiner of rejections in that copending case. Not doing so constituted inequitable conduct.

    I thought the earlier rule (of thumb) was to submit all material references in each case, which of course would include references used in a rejection of substantially similar claims. I thought the rule after Dayco was to make sure the examiner knew about copending cases so that they could track what another examiner might be thinking about other claims in a similar subject area if they felt it pertinent. After this case, apparently the rule is that an Examiner must be explicitly informed, in writing, of: all applications in the same patent family as the pending application; all copending applications that have “similar” subject matter; the status of claims in all of those cases (rejected or allowed), presumably to be updated at unspecified intervals during prosecution; and of course any references that have been cited in those cases.

    At least that’s what it says–hopefully this will be appealed or reheard, or severely limited on its facts, very quickly.

  67. 42

    Peter: Since this was a bench trial directed solely to the affirmative defense of inequitable conduct, I am certain that it was the accused infringer who first put the prosecuting attorney on the stand (since the accused infringer would have gone first at this bench trial). They would need his testimony as part of their case.

  68. 41

    Question: who put the prosecuting attorney on the stand, and why? If the appellants knew that he would testify that he didn’t have any recollection of the 716 prosecution, then, given his testimony as revealed in the CAFC decision, he was to be used effectively only as an expert on things he would have been likely to have done, believed, or thought in the past.

    Presumably he is qualified as an expert on himself, but for me it raises a whole host of issues–especially relating to the fact that he was not disinterested, as he did have a significant interest in the factual findings of the litigation as they relate to his possible malpractice.

  69. 40

    Some information:

    278 app (abandoned) spawned 527 continuation, which issued as 716 patent (examiner Trafton)

    278 app (abandoned) spawned 195 continuation-in-part, which issued as 372 patent(examiner Trafton)

    149 app issued as 009 patent (examiner Lev)

    Prosecuting attorney testifies that he has NO RECOLLECTION WHATSOEVER OF THE 716 PROSECUTION.

    Same attorney also testifies that he in fact DOES RECOLLECT his decision to not consider the identity of the examiner in deciding not to disclose during the examination of the 278 app (i.e. DURING THE 716 PROSECUTION) information about examiner Trafton’s decision to grant the claims of the 195 app.

    Nice.

  70. 39

    Having actually read through and highlighted the case, I can confirm that it was as pleasant as wading through knee-deep mud in hip waders. No wonder it will take Dennis until June to generate another post on this case.

    Henry’s comment that “By testifying in court that he would take the same non-disclosure action, the patent prosecutor (attorney) establishing intent and ruled out mistake.” needs to be considered in light of the court’s position that the required intent is an intent to deceive, not an intent to withhold, citing Dayco: “However, inequitable conduct requires not intent to withhold, but rather intent to deceive.”

  71. 38

    Henry – After reading the decision and skimming through the decision of the trial court (located here: link to mediafire.com), I suspect that the outcome would have been the same even if the prosecuting attorney had simply said “I made a mistake.”

  72. 37

    I tried to plod though the opinion at link to fedcir.gov , but couldn’t. I’m looking for some quick factual circumstances to take away from this case. Here is what I got:

    1. Same inventor/assignee for two pending cases
    2. Similar subject matter in the two pending cases
    3. Different examiners for two pending cases
    4. prior-art patent is public; offices-action becomes public; and first case grant becomes public. As each of the documents from the first case became public, they should have been disclosed in the second case.
    5. By testifying in court that he would take the same non-disclosure action, the patent prosecutor (attorney) establishing intent and ruled out mistake.

    I believe that all five of the above factual circumstances are needed for this case to be relevant to a situation. Also, I think the key here is that you may mess up during patent prosecution, but a patent prosecutor can save himself from a malpractice lawsuit during patent litigation if he testifies (truthfully) that his actions were a mistake in view all that has transpired since patent grant rather than intentionally done.

  73. 36

    Any litigators out there reading this?

    Peanut gallery–I have not (yet) received any such threatening form paragraph. I am curious–exactly what future action does it threaten?

    The way the case appears to have been argued, I would go with the majority here. The legal conclusion of inequitable conduct reached by the district court was not even appealed, “…it appears that McKesson does not charge the court with abusing its discretion…”, therefore the court’s statement that “…we find no such abuse.” is mere dicta, and it is doubtful that they gave the issue any serious thought.

    Maybe the defendants should have made a different argument, and the prosecuting attorney should have presented different evidence. The argument should have been that the attorney honestly believed that the examiner would independently monitor and keep abreast of developments in the other application, and the evidence presented should have contained facts that evidenced the reasonableness of this belief. The reasonableness of any such belief would then have been rebutted by the fact that “the MPEP at the time explained that a prosecuting attorney should not “assume that [a PTO examiner] retains details of every pending file in his mind when he is reviewing a particular application…”. But at least there would have been an issue, and the evidence from the prosecuting attorney would have made more difficult a “clear and convincing” finding. That is, if there was any such evidence in the first place, which there probably wasn’t.

    Another apparent shortcoming of the appellant’s litigation strategy was not clearly articulating and developing its arguments, and confusing materiality and intent especially when arguing “…the district court’s alleged failure to consider the fact that Examiner Trafton was the examiner who allowed the ‘372 claims…”, “It is unclear whether McKesson is arguing that this alleged failure undermines the district court’s finding of materiality or its finding of intent.” Even though the CAFC determined that the argument failed on both materiality and intent, it did so on the apparently insufficiently developed and confusing arguments presented to it by the appellant.

    And one final thing: the prosecuting attorney testified that he had “…no recollection whatsoever of prosecuting the ‘716 patent…”, but later in the decision it states that he …”specifically testified that he did not consider the identity of the examiner in deciding whether to disclose information about co-pending applications.”. Because I haven’t yet sorted out the apps and the patents in the case, I’m not sure if that testimony referred to ‘716–if it did, it undermines the believability that he didn’t remember anything about the ‘716 prosecution. Even if it referred to something else, it would be unusual for him to remember something contemporaneous, but not remember anything about the ‘716 prosecution.

    The whole decision paints for me the picture of a confused and confusing prosecuting attorney and litigation strategy.

    Any litigators out there reading this?

  74. 35

    Malcolm – do you think the outcome would have been different if the prosecuting attorney had responded – “Well, clearly I made a mistake, as those items should have been submitted”? I suspect not. We should also keep in mind that this patent was prosecuted in 1988/9 – nearly 20 years ago. Yet, the enforceability of the patent, and perhaps someone’s career in the patent profession, hinges on the attorney’s recollection of what he was thinking almost 20 years ago. Since he had no decent explanation, the trial court concluded that he CLEARLY intended to deceive the examiner (to succeed on an inequitable conduct defense, the accused infringer must prove, by clear and convincing evidence, that the attorney/inventor intended to deceive the examiner).

  75. 34

    Did any of the vaunted prosecutors on this board actually read the case? The facts are not that complex, though the majority does go through them in excruciating detail. Two applications with very similar subject matter are submitted, and examined by two different examiners (oddly enough, who are named and discussed in the decision). Both examiners apply the same two references in an initial rejection. One examiner is persuaded to allow the case over a particular limitation (three nodes). When the same limitation is placed in the other case, the second examiner rejects the claims over a third reference (presumably in an obviousness rejection). The third reference is never sent to the first examiner, even when a continuation is filed on the same subject matter. Further, the time factor was very short, only several weeks, which I think played a role since if the cases had been prosecuted many years apart, it might be argued that the prosecuting attorney simply forgot about the other case.

    This is not a case where the reference was one of a pile of equivalents.

    The majority relies upon the best evidence that a reasonable examiner would have considered the information relevant, which is that a different examiner (presumably reasonable) considered the reference important enough to cite in an obviousness rejection. I doubt the case would have come out the same way without that fact.

    So I think the lesson of this case is to submit references that are actually used by examiners in related cases. Not a particularly high standard of inequitable conduct.

  76. 33

    “Except for Elan v. Mayo (tossed out en banc in two seconds flat)”

    I believe that this was a rehearing, not an en banc. And Newman wrote the new opinion as well.

  77. 32

    “Maclcolm, that line you keep quoting (he would do the same thing again) is hardly evidence of any intent to deceive.”

    You’re right but I never said it was evidence of intent to deceive. It is, however, an incontrovertible admission that what occurred was NOT an accident or oversight. It was intentional.

    And thus we have a situation where instead of a mea culpa we have a stubborn prosecutor sitting in a chair while MegaFirm IP litigators ask him to explain his rather strange conduct before the Examiner in these cases. It appears our prosecutor friend did not fare well. Is that really surprising?

  78. 31

    To peanut gallery:

    I recently saw an office action where the examiner complained of excessive references submitted, but it did not come across as a threat. Do you have an example of one of those “threatening form paragraphs”?

  79. 30

    Me – As the panel noted in the decision, information can still be material even though it would not invalidate a claim of the patent. Also, it seems to me that the CAFC has drifted away from a strict materiality standard in the past couple of years.

  80. 29

    Great point metoo.

    The question for me is why not just wait and invalidate the patent on the uncited art, using the other patent for support, instead of doing it the back way through inequitable conduct. I guess the ruling implies that, but…

  81. 28

    Maclcolm, that line you keep quoting (he would do the same thing again) is hardly evidence of any intent to deceive. Your logic on that one is sophomoric, at best. In fact, you all but admit that when you suggest that the prosecuting attorney made that statement because he was unwilling to admit that he made a mistake. Well, if it was a simple mistake by the prosecuting attorney, then there certainly was no intent to deceive.

    Having said that, it is important to note that the finding of inequitable conduct in this case did NOT result from a summary judgment motion. Rather, the district court held a FOUR DAY BENCH TRIAL on the affirmative defense of inequitable conduct (bifurcated trial). I think this is important, and certainly factored into the CAFC’s decision. The trial court had the opportunity to consider four days of testimony (I suspect that the prosecuting attorney was on the stand for a good part of those 4 days), and evaluate the credibility of the witnesses.

  82. 27

    “It begs the question everyone is inclined to ask but already knows the answer to: “you’re not a prosecutor are you?””

    Oh yeah, I forgot. Because I prosecute patents, I’m supposed to loudly boo every case which reminds me that my job requires great concentration and candor. And I’m supposed to cheer every case in which a patent is found valid, regardless of how crappy the patent is.

    Otherwise, I’m some sort of traitor to the class. Whatever, man.

  83. 26

    “I would bet that the prosecuting attorney also said that he believed that the information was not material today, just like before.”

    And evidently this prosecutor was, shall we say, not a compelling witness.

    Maybe it was all the sweat pouring down his face during the deposition, or the cheetos in his beard. The district court judge was apparently close enough to catch a strong whiff of something more than vaguely amiss. What happened to Judge Newman’s deference?

  84. 25

    “In fact, the [PTO] are now sending Office Actions that include threatening form paragraphs when the number of references submitted in a case exceeds some threshold.”

    Was the number of references in this particular case anywhere near that threshold? Just asking.

  85. 24

    “This case appears to be an example of the potential consequences of perilously close and an all-too-common oversight of not cross-citing art from familial co-pending applications.”

    Oversight? Maybe you missed the part about the prosecuting attorney saying “He wouldn’t do anything differently.”

    Or maybe you chose to ignore that fact like Judge Newman.

    It’s worth thinking about that admission and why the attorney made it. Under the circumstances, where this “all-too-common oversight” had been identified and was about to be shoved in your face in front of the client and the world, what would you do? Would you admit that just maybe you made a mistake?

    Or would you puff yourself up: “I’m Big Prosecutor and I’d do it the same all over again I don’t care what anybody thinks!”?

    Before you answer, you might want to consider the pitfalls of such a strategy, in light of this case.

  86. 23

    not only that peanut gallery, I have seen a number of examiners line through office actions from related applications on the 1449 – i.e., indicating that they did not consider those office actions.

  87. 22

    “Although it is good practice to just disclose everything in related cases, …”

    Yes, that is the current conventional wisdom. Also, since Dayco, “everything” means EVERYTHING, office actions included.

    Unfortunately, this goes against everything that the PTO is currently saying. They do NOT want to see everything. In fact, they are now sending Office Actions that include threatening form paragraphs when the number of references submitted in a case exceeds some threshold.

    I have received such a threat. Anybody else? I think they will start becoming more common.

    Ironic… the judges of this case think that they are helping examiners, yet examiners will suffer the most from its consequences. (For prosecutors, it increases risk but also creates more “billable events”).

  88. 21

    I think, I sayz, I think the court took issue with the interview between the attorney and the examiner in case 2 concerning the newly discovered reference and the fact that case 2 was amended in response thereto and the fact that the new reference was not cited in case 1 even though case 1 was allowed within a few months of the interview. Additionally, there was, I believe, an assertion in case 1 that no reference taught certain features; yet, it was these features that were discussed in case 2. I just have this one overriding question: Why did file an FWC of case 1 in view of allowed claims and not provide all the prior art of case 2? This really puzzles me. Why did he not simply file an after final amendment placing the claims in condition for allowance?

  89. 20

    Two questions.

    Is the holding in this case limited to “related cases” that do not include a cross-cite to the related case?

    Does this case require that Office Actions be submitted for related cases? If OAs for related cases must be submitted to the PTO, then (1) costs will increase significantly as chances are these IDSs will have to be submitted after a first action is received, and (2) For cases in which a final action has been mailed, an RCE will have to be filed to have the PTO consider the IDS.

  90. 19

    The court observed that the “prosecuting attorney testified that he would make all the same nondisclosure decisions again if prosecuting the same applications today.”

    I would bet that the prosecuting attorney also said that he believed that the information was not material today, just like before. If so, the court’s observation is relevant only if you believe that the attorney is telling the truth when he says that he would make the same decisions today, but believe that the attorney is *not* telling the truth when he said he believed that the information was not material. Cherry-picking snippets of testimony doesn’t serve justice.

  91. 18

    The only really new or controversial part of this decision appears to be the fact that it came on summary judgment. It calls to mind the Ferring v. Barr case from about a year ago.

    Inequitable conduct is a bit of a fuzzy standard, and some judges differ among themselves in its application.

    Judge Newman seems to be actively hostile to claims of inequitable conduct, and thinks that it’s something often fabricated by infringement defendants, as she says in this dissent and as she’s said many times before. One of her best-known statements of this is probably in Burlington Indus. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988)(Newman, J., writing for the court):

    —begin quote
    We add one final word: the habit of charging inequitable conduct in almost every major patent case has become an absolute plague. Reputable lawyers seem to feel compelled to make the charge against other reputable lawyers on the slenderest grounds, to represent their client’s interests adequately, perhaps. They get anywhere with the accusation in but a small percentage of the cases, but such charges are not inconsequential on that account. They destroy the respect for one another’s integrity, for being fellow members of an honorable profession, that used to make the bar a valuable help to the courts in making a sound disposition of their cases, and to sustain the good name of the bar itself. A patent litigant should be made to feel, therefore, that an unsupported charge of “inequitable conduct in the Patent Office” is a negative contribution to the rightful administration of justice. The charge was formerly known as “fraud on the Patent Office,” a more pejorative term, but the change of name does not make the thing itself smell any sweeter. Even after complete testimony the court should find inequitable conduct only if shown by clear and convincing evidence. A summary judgment that a reputable attorney has been guilty of inequitable conduct, over his denials, ought to be, and can properly be, rare indeed. We cannot improve on the discussion of this in KangaROOS, Inc., supra [a 1985 opinion by Judge Newman], and incorporate what is there said by reference herein.
    —-end quote

    Others might argue (though I haven’t seen an opinion directly responding to her policy arguments) that the PTO depends on the good faith of prosecuting attorneys, and that one of the causes of bad patents is dishonest attorneys sitting on damaging evidence and treating patent prosecution as too much of an adversarial process.

    The only empirical study of which I’m aware is Katherine Nolan-Stevaux’s student note in Berkeley’s IP-specific journal, 20 Berkeley Tech L.J. 147 (2005), which tries to figure out if there’s actually a “plague” and whether the system deals with it well.

  92. 17

    Ouch…. That is probably going to leave a mark.

    Now lets get the patent reform legislation through requiring prior art searches to be exhaustive, and in its current form without any safe harbor provisions for inequitable conduct. (which even the PTO favors separating intent from materiality see Sullivan letter to House sub-committee). That will make litigators our of the rest of us prosecutors.

  93. 16

    Just a thought – but does the Patent Examiner need to do some work? Shouldn’t the Examiner be familiar with related cases in the same family that are being prosecuted before the Office?

  94. 15

    And the PTO is wondering why prosecutors submit such huge continual IDSs all the time. This case beggars belief. Its not about “inequitable conduct”, its about obsessive-compulsive conduct.

  95. 14

    Warning to Random Agent | May 22, 2007 at 09:10 AM – you CANNOT and MUST NOT rely on “safe harbors” in the MPEP. The Federal Circuit ahs repeatedly declined to accept any such excuse. You have to give the PTO everything.

    PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1322, 56 USPQ2d 1001, 1006 (Fed. Cir. 2000) (finding inequitable conduct, even though the misrepresentation had been rendered moot by cancellation of the relevant claims), contrast Judge Newman’s dissent, PerSeptive, 225 F.3d at 1330-31, 56 USPQ2d at 1013; Dayco Products Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365, 66 USPQ2d 1801, 1806 (Fed. Cir. 2003) (rejecting Rule 56 as a binding standard for inequitable conduct, and refusing to recognize a safe harbor in MPEP 2001.06(b)); Semiconductor Energy Laboratory Co. v. Samsung Electronics, Inc., 46 USPQ2d 1874, 1877-78 (E.D. Va. 1998), aff’d 204 F.3d 1368, 1376, 54 USPQ2d 1001, 1006-07 (Fed. Cir. 2000).

    The real problem here arises in the tension between these Federal Circuit cases and the IDS rule pending at the PTO, which essentially requires applicants to withhold information.

  96. 13

    “have all the fun you want during prosecution playing hide the ball. Do whatever it takes to get that gosh darn patent allowed. Then feel free to gently ask folks in the community if they want to license your beautiful patent. Or just hang it on your wall. Or wave it around to customers as “proof” that your product is the greatest thing since the edible Q-tip.”

    What gobbeldygook, Mooney. It begs the question everyone is inclined to ask but already knows the answer to: “you’re not a prosecutor are you?” What exactly are you?

    This case appears to be an example of the potential consequences of perilously close and an all-too-common oversight of not cross-citing art from familial co-pending applications.

  97. 12

    Newman gets it right yet again, while the rest of the court stews in their lack of actual practical knowledge.

  98. 11

    How good is your insurance because if this standard holds a whole bunch of patents are unenforceable!

    An amazingly poor holding, showing yet again why we need people who have actually practiced prep and pros AND ltigation on the court, and at the PTO.

  99. 10

    If the two applications at issue would have been CIPs, this would be a moot point. If you claim priority, it’s not inequitable conduct.

    MPEP 609.02
    “When filing a continuing application that claims benefit under 35 U.S.C. 120 to a parent application (other than an international application that designated the U.S.), it will not be necessary for the applicant to submit an information disclosure statement in the continuing application that lists the prior art cited by the examiner in the parent application unless the applicant desires the information to be printed on the patent issuing from the continuing application (for continued prosecution applications filed under 37 CFR 1.53(d), see subsection A.1. below). The examiner of the continuing application will consider information which has been considered by the Office in the parent application.”

  100. 9

    Malcolm Mooney said: “I wonder what was in that prior art patent that was so damaging that the applicant decided not to disclose it in an IDS.”

    What I am wondering is how completely irrelevant that earlier piece of art might have been to the current case? Although it is good practice to just disclose everything in related cases, I don’t think it is evidence of inequitable conduct if the reference is not relevant to the current case because of the difference between the two inventions. Why should we have a rule that forces us to disclose irrelevant art to the PTO? Doesn’t the relevance of the art form a fact question that must be decided in order to determine inequitable intent?

  101. 8

    All we need now is a nifty case where the prosecuting attorney is guilty of inequitable conduct for IDS spamming the Examiner, and we’ll have all the bases covered.

  102. 7

    Judge Newman writes:

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

    Spawing opportunistic litigation? Yeah, right. I’m sure the defense looked carefully for a patent to infringe just so they could invalidate it.

  103. 6

    From the introductory paragraphs of the Opinion:

    “As the district court noted, this was not a case of mistake or negligence—the prosecuting attorney testified that he would make all the same nondisclosure decisions again if prosecuting the same applications today.”

    Funny that Judge Newman didn’t bother to address this fact in her dissent. Actually, it’s not funny. It’s sad.

    This case drives home the fundamental lesson for prosecutors: have all the fun you want during prosecution playing hide the ball. Do whatever it takes to get that gosh darn patent allowed. Then feel free to gently ask folks in the community if they want to license your beautiful patent. Or just hang it on your wall. Or wave it around to customers as “proof” that your product is the greatest thing since the edible Q-tip.

    But when you feel obliged to take someone to court and beat them over the head with your beautiful patent, be prepared to have all of your word games and “strategies” analyzed in excruciating detail by trial lawyers who are probably a billion times better at telling stories than you are.

  104. 5

    “pass a law that says all CAFC panels must rule in accordance with Judge Newman. She’s never wrong.”

    Except for Elan v. Mayo (tossed out en banc in two seconds flat), Norian v. Stryker (“consisting of” doesn’t apply to kit claims), her unintelligible product-by-process jurisprudence, and probably this case once I get around to reading it.

  105. 4

    “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.”

    I wonder what was in that prior art patent that was so damaging that the applicant decided not to disclose it in an IDS.

  106. 3

    Unbelievable. Tons of debate going on about inequitable conduct, with consensus that this is a plague, and instead of reversing the district court for the reasons set forth by Judge Newman – viz., there’s not clear and convincing evidence of deceptive intent here – Judges Clevenger and Bryson screw it up royally with this decision.

    Wait, I know – they *deliberately* got it wrong, egregiously wrong, so wrong that Congress will have no choice but to step in and remedy the situation with legislation. Yeah, that’s the ticket.

    My suggestion to Congress: pass a law that says all CAFC panels must rule in accordance with Judge Newman. She’s never wrong. And US patent practice would be a lot saner if all CAFC judges followed her lead.

  107. 2

    Well, looking in from the outside, in wonderment, I see the CAFC’s agenda as either 1) to test to destruction the law as it is now, by a reductio ad absurdum process, or 2) to augment the minefield of legal traps awaiting owners of US patents, on the logic that, the denser the minefield, the more the skew that gives US-owned patents an advantage relative to foreign-owned US patents. Quite how much all of this promotes the progress, I couldn’t say.

    Dennis, you write of an “earlier” app and Newman writes of a “related” case, but were they linked (as by continuation) or unlinked? How much is a poor harrassed PTO Exr supposed to remember, of an earlier case with no numerical link to it on his file. It occurs to me to commend the European system, that your own earlier filings (all of them) are novelty-destroyers of your later filings. That would take away any temptation to put in a stream of apps, hoping that, even if the front-runners don’t get through, some of the hedge-creepers following up behind will sneak through to issue.

  108. 1

    I wonder how this will ultimately relate (if at all?) to Apple Inc. and its eagerly anticipated iPhone?

    There have been allegations in the “rumour press” and tech blogs about core aspects of the iPhone having been stolen. Although I am not a journalist and therefore haven’t had occasion to interview anybody in the know about this, I have expended the energy to track down some of the patent references that were mentioned, and there does appear to be some degree of corroboration.

    If Apple’s iPhone related patent portfolio are ruled unenforceable, that would be in my opinion, to borrow Professor Crouch’s words, quite “a mess” for Apple.

    P.S. I plan to buy one during the first week. :-)

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