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A mortal wounding of McKesson January 31, 2013

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.

After the McKesson decision, many patent attorneys, including myself, thought the IDS armageddon would soon arrive.  McKesson arguably required the applicant to submit in a particular application references from all related applications, as well as office actions from those cases if the claims therein were sufficiently similar to those in the particular application.   At a minimum, related applications would include any case (US or foreign) that claims priority to the particular application at issue.

As time progressed, I was surprised to find that this particular rationale for finding inequitable conduct – failure to submit office actions from related applications – was not applied routinely by the Federal Circuit.  My position evolved to one in which McKesson was limited to its facts.

Now, post-Therasense, last fall’s precedential Federal Circuit decision in 1st Media v. Electronic Arts may have slain McKesson without mentioning it by name.  In 1st Media, the applicant’s attorney failed to submit art in a US application that had been cited as “Y” art (that is, obviousness art) in the corresponding application pending at the European Patent Office.  The attorney also failed to cross-cite art among different pending US applications in the same family.  The reason given was that the attorney had recently set up a solo practice out of his home, which was “very active,” and the citations were missed.

The Federal Circuit assumed that the art that was not cross-cited within the family was material.  (p. 14).  Turning to the second prong of Therasense, the Court then stated:

Knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive. Moreover, it is not enough to argue careless-ness, lack of attention, poor docketing or cross-referencing, or anything else that might be considered negligent or even grossly negligent. To sustain a charge of inequitable conduct, ‘clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.'”  (pp. 12-13).

Thus, even under facts very similar to those of McKesson, absent proof of a deliberate decision to withhold a known material reference, the failure to cross-cite references and office actions within a family is not inequitable conduct.

While the Federal Circuit did not even mention McKesson, by addressing the second, intent prong of Therasense1st Media has declawed the fierce beast that McKesson used to be.


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