McKesson v. Bridge Medical - Dealing with Abuses of the Patent Law System

The recent May 18, 2007 Federal Circuit decision in McKesson v. Bridge Medical mirrors the trend found in information technology decisions ushered in by KSR v. Teleflex and followed in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc. and Perfect 10 v. Google and Amazon (A9.com).

That trend is that the courts are starting to come down hard on the various existing abuses of the patent and copyright system, something which the courts must do in order to keep that same patent, trademark and copyright system functioning viably.

As written by Kevin E. Noonan at Patent Docs regarding McKesson v. Bridge Medical:

"[T]he Federal Circuit significantly increased the extent to which the duty of candor extends to activities occurring during prosecution of related applications. At the same time, the Federal Circuit lowered the standard for deciding that activities during patent prosecution could be inferred to be intentional, making it easier for a patent to be found unenforceable due to inequitable conduct. The effects of this decision are likely to be felt disproportionately by biotech patent applicants, in view of the high frequency with which applications in this technology area are required to file divisional and continuation applications." [emphasis added by Biotechnology Pundit]

Patently-O cites hopefully - and, in our opinion, unfortunately - to the woeful dissent of Judge Pauline Newman (see picture here) in McKesson, a Judge who will turn 80 this month, June, 2007, and whose current lack of good judgment - in our opinion - is evidenced by the fact that she has not gone into a timely retirement, but selfishly continues to hold on to her position to the detriment of the court, the country and patent law. What is needed - soon - is a modernly-oriented successor.

The patent system consists of "cogs" and "clogs" and Judge Newman in recent years has become one of the main clogs in a patent system desperately in need of reform. Judge Newman has through her backward opinions opposed nearly every type of patent reform and has even campaigned actively against patent reform in Congress. See IPBiz and Judge Pauline Newman urges caution in patent reform.

Nothing sensible has been done in patent law reform for the last 20 years, thank you Judge Newman, and it is time to move forward with desperately necessary intellectual property law reform before the entire IP system collapses of its own ponderous antiquity and inertia.

Senior Circuit Judge Raymond C. Clevenger III delivered the opinion of the Court, writing:

"As set forth in considerable detail below, this case involves McKesson's nondisclosure of three items of information during prosecution of the '716 patent in a setting where the applicant had co-pending applications. The district court found each of the three nondisclosures individually and collectively material to prosecution of the application that led to the '716 patent. With regard to deceptive intent regarding each nondisclosure, the district court found circumstantial evidence strongly supports an inference of deceptive intent. After assessing all the facts, the district court held that McKesson failed to provide a credible explanation for the material nondisclosures. 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.

The district court's thorough written opinion documents the court's correct understanding and application of the relevant precedent. The issues of materiality and intent are fact-driven. With regard to the issue of intent, the law recognizes that deceptive intent is virtually never shown or disproved by direct evidence. Instead, the ultimate fact finding on the issue depends on assessment of all the inferences, favorable and unfavorable, that can be drawn from pertinent evidence. To prevail on appeal, McKesson must demonstrate that the district court's findings of fact are clearly erroneous. After careful review of the record, we conclude that McKesson has not met its burden, and we therefore affirm."

For more material on McKesson v. Bridge Medical, see:

The Focal Point LLC : Litigation Graphics and Strategy

Eric M. Acker, Jose L. Patiño and Katherine L. Parker, Morrison & Foerster LLP, United States: Patent Prosecutors Beware, Litigators Take Note: Federal Circuit Affirms Novel Inequitable Conduct Ruling, 25 May 2007

Gehrke Law

Peter Zura's 271 Patent Blog