Federal Circuit Affirms Inequitable Conduct Ruling in McKesson Information Solutions Suit

Holding:

In this appeal, the U.S. Court of Appeals for the Federal Circuit held that a patent directed toward a patient identification system was unenforceable for inequitable conduct. According to the court, plaintiff patentee’s failure to disclose three items of information pertaining to its co-pending applications was “individually and collectively material to prosecution of the application that led to the patent” in issue. In so stating, the Federal Circuit found that such material non-disclosures were committed under circumstances that give rise to an inference of an intent to deceive. Disclosure of material prior art made of record before one examiner of the U.S. Patent and Trademark Office (USPTO) while withholding it from another (within the same office) could serve as circumstantial evidence of such deceptive intent. The Federal Circuit thus affirmed the trial court’s dismissal of patentee’s infringement suit.

Detailed Summary:

The patent in issue (“’716 patent”) provides “a patient identification system for relating items with patients and ensuring that an identified item corresponds to an identified patient.” This system is accomplished first by providing a set of bar codes associated with a given patient such that one bar code from the set is physically attached to the patient and the other bar codes from the set are physically attached to, for example, the patient’s medications; and second by providing a portable handheld bar code reader (or patient terminal) wirelessly connected to a base station unit (typically located in the patient’s room)…

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