Inequitable Conduct from Failure to Provide Details of Prosecution of Similar Applications

McKesson Information Solutions, Inc., v. Bridge Medical, Inc., [06-1517](May 18, 2007)[CLEVENGER, Bryson, Newman] The Federal Circuit affirmed a finding on unenforceability due to inequitable conduct.
SIGNIFICANCE: While inequitable conduct require materiality and deceptive intent, the Courts with unrealistic expectations of prosecutors command of a full prosecution docket, are willing to infer deceptive intent, and the Federal Circuit will readily affirm.
BRIEF: Schulman was prosecuting at least two related applications. Seventeen days after making an argument in one application, a reference that refuted the argument was cited in the other application (arguably for a different teaching). Although Schulman disclosed the existence of the two applications, he did not disclose the reference from the other application, claiming he believe it was cumulative, but because of the materiality of the reference and its close timing, the trial court inferred intent, and the Federal Circuit agreed. While Schulman did disclose the existence of the two cases, he did not disclose the rejections received in one in the other application. The trial court also found deceptive intent in this conduct. Finally, Schulman failed to disclose the allowance of one application in the other, claiming that since the claims were different there was not double patenting issue, and thus no reason to disclose. Again the trial court found deceptive intent, and the Federal Circuit affirmed.
LESSON: I. When prosecuting “related” applications: (1) cross-cite prior art from each application in the other; (2) disclose all rejections in each application in the other; and (3) disclose final disposition (including allowance) of each application in the other. II. If you determine a reference is cumulative, you better have “contemporaneous evidence (e.g. notes, records, files, etc.) or you will be second guessed – particularly where the reference on its face appears to be non-cumulative.