McKesson Information Solutions, Inc. v. Bridge Medical, Inc.

United States Court of Appeals for the Federal Circuit

2006-1517

MCKESSON INFORMATION SOLUTIONS, INC.,

Plaintiff-Appellant,

v.

BRIDGE MEDICAL, INC.,

Defendant-Appellee.

Daniel Johnson, Jr., Morgan Lewis & Bockius LLP, of San Francisco, California,
argued for plaintiff-appellant. With him on the brief was Mark K. Dickson, Winston &
Strawn LLP, of San Francisco, California. Of counsel on the brief was Marcus T. Hall.

Jose L. Patiño, Morrison & Foerster LLP, of San Diego, California, argued for
defendant-appellee. With him on the brief were Eric M. Acker and Katherine L. Parker.

Appealed from: United States District Court for the Eastern District of California

Judge Frank C. Damrell, Jr.
 United States Court of Appeals for the Federal Circuit

2006-1517

MCKESSON INFORMATION SOLUTIONS, INC.,

Plaintiff-Appellant,

v.

BRIDGE MEDICAL, INC.,

Defendant-Appellee.

___________________________

DECIDED: May 18, 2007
___________________________

Before NEWMAN, Circuit Judge, CLEVENGER, Senior Circuit Judge, and BRYSON,
Circuit Judge.

Opinion for the court filed by Circuit Judge CLEVENGER. Dissenting opinion filed by
Circuit Judge NEWMAN.

CLEVENGER, Senior Circuit Judge.

Plaintiff McKesson Information Solutions, Inc. ("McKesson") appeals the final

decision of the United States District Court for the Eastern District of California

dismissing McKesson's infringement suit against defendant Bridge Medical, Inc.

("Bridge") after the court found the only patent at issue, U.S. Patent No. 4,857,716 ("the

'716 patent"), unenforceable due to inequitable conduct.

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.

I

A

The '716 patent provides "a patient identification system for relating items with

patients and ensuring that an identified item corresponds to an identified patient." '716

patent, at [57]. This 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

2006-1517 2
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) that communicates via modem with a system computer capable of

"processing and storing patient data." Id. col.30 l.23 – col.31 l.17. Thus, among the

handheld patient terminal, the base station, and the system computer, the '716 patent

teaches a "three node approach to communications." J.A. at 366. Moreover, because

the handheld patient terminals are portable, it is desirable to prevent one such terminal

from wirelessly communicating with a base station in, say, an adjacent room. The base

stations of the '716 patent therefore include "a programmable unique identifier" that

"only allow[s] communication with a portable handheld patient terminal . . . having a

corresponding program identifier." '716 patent col.31 ll.2-7.

The only independent claim of the '716 patent incorporates both of these

features—i.e., three-node communications and a programmable unique identifier—as

limitations. Claim 1 thus provides:

1. A patient identification and verification system comprising:

(a) programmed system computer means for processing and storing
patient data;

(b) input means operatively interconnected to the programmed system
computer means for input of data to the programmed system computer
means;

(c) output means operatively interconnected to the programmed system
computer means for output of data from the programmed system
computer means;

(d) first bar code identifier means adapted for attachment to a patient for
identification of the patient, the bar code identifier means including a
patient unique code;

2006-1517 3
 (e) a plurality of second bar code identifier means for identifying patient
care related items, such as medication, etc.;

(f) the input means and output means including:

(i) microprocessor controlled portable handheld patient terminal means
having bar code reader means for scanning the first bar code identifier
means to identify the patient and for scanning the second bar code
identifier means for relating various items to a specific patient, the portable
handheld patient terminal means further including keyboard means for
data entry and display means for display of information, the portable
handheld patient terminal means including electromagnetic wave
transceiver means including means for transmission of patient and item
data as an electromagnetic wave which is representative of the first and
second bar code identifier means scanned by the bar code reader means
and including means for receipt of data as an electromagnetic wave;

(ii) microprocessor controlled base station means including
electromagnetic wave transceiver means for receipt of and transmission of
the patient and item data as an electromagnetic wave to the
electromagnetic wave transceiver means of the portable handheld patient
terminal means, the base station means being interconnected to the
programmed system computer means at least in part by electrical lines for
receipt and transmission of the patient and item data on the electrical lines
to the programmed system computer means, the base station means
includes a programmable unique identifier, the base station means
including means for only allowing communication with a portable handheld
patent [sic] terminal means having a corresponding program identifier, the
patient system including means for programming the portable handheld
patient terminal means with the corresponding identifier ["programmable
unique identifier" limitation]; and

(iii) the programmed system computer means including program means
for verifying the patient and item data properly correspond and
transmitting an alarm signal if improper correspondence noted.

Id. col.30 l.23 – col.31 l.17 (emphasis added).

On October 6, 1987, claim 1 was submitted in substantially this form—except

that the "programmable unique identifier" limitation was separated as a limitation in

dependent claim 6—as part of parent Application No. 06/862,278 ("the '278 application")

(subsequently abandoned) in response to an April 6, 1987, rejection by Examiner David

2006-1517 4
Trafton of the United States Patent and Trademark Office ("PTO"). Accompanying this

submission were the remarks of prosecuting attorney Michael Schumann:

None of the references either singularly or in combination teach or
suggest the claimed invention. In addition to numerous other differences,
none of the references teach the three node approach to communications
as provided in the claimed invention. In the present invention, the first
node of communication is a main or central computer which may have its
own terminals for entry/display of information. The second node of
communication are [sic] the base stations which are wired to the main
computer. The base stations are preferably located in the various patient
rooms and other suitable locations. The third node of communication in
the present invention is the portable handheld patient terminal which
cooperates with the base stations to provide for wireless transmission of
data between the base station and the patient terminal. This approach
provides a system which allows for maximum portability of the patient
terminals and yet allows access to the main computer in an inexpensive
manner by use of the base stations which provide wired communication to
the main computer. Many of the references such as Koenig do disclose
the use of wireless transmission which has long been in use, and many of
the systems do disclose the use of bar code readers to scan bar codes to
see if they correspond. However, none of the references disclose the real
time, interactive three node communication system of the present
invention as claimed.

J.A. at 366-67 (emphasis added).

In a December 8, 1987, office action, Examiner Trafton maintained his rejection

of amended claim 1, albeit based upon a different combination of prior art references—

patents to Blum and Pejas. However, Examiner Trafton also explained that dependent

claim 6 would be allowable if rewritten in independent form. J.A. at 371. Schumann

accepted this offer on June 8, 1988, by abandoning the '278 application and filing a

continuation application (Application No. 07/205,527) with the only independent claim

rewritten in the manner suggested by Examiner Trafton. The claims in their current

form were allowed on February 27, 1989, and the '716 patent issued on August 15,

1989.

2006-1517 5
 B

During this same time period, Schumann was simultaneously prosecuting

another application—Application No. 06/862,149 ("the '149 application")—before

another PTO examiner, Robert Lev. The invention of this simultaneous application was

similar to the invention of the '716 patent—so similar, in fact, that Schumann initially

disclosed the same body of prior art with both applications. J.A. at 2400. The first

submitted version of the '149 application included application claims 15 and 16, which

together teach three-node communication:

15. A portable handheld terminal, including:
(a) a portable handheld terminal, including:
(i) a housing having first and second spaced apart, opposing major
surfaces extending longitudinally of the housing between first and second
end portions;
(ii) keyboard means disposed on the first surface for entering data;
(iii) display means disposed on the first surface for displaying data;
(iv) optical sensor means disposed in the housing for sensing bar
code indicia;
(v) RF transceiver means contained in the housing for transmitting
and receiving RF signals;
(vi) control means contained in the housing and operatively
interconnected to the keyboard means, display means, optical sensor
means, and RF transceiver means for controlling operation of the portable
handheld terminal; and
(vii) power supply means for powering the portable handheld
terminal; and
(b) base station means including RF transceiver means for communication
with the portable handheld terminal.

16. A system in accordance with claim 15, wherein the base station
means includes:
(a) programmed microprocessor and memory means for controlling
communication between the portable handheld terminal and a central
computer system electrically wired to the base station means;
(b) power supply means for powering the base station means;
(c) charger assembly means for charging the power supply means
of the portable handheld terminal;

2006-1517 6
 (d) data over voice (DOV) means for communication with the
central computer by telephone wires using data over voice techniques;
and
(e) RF transceiver means for wireless communication with the
portable handheld terminal.

See J.A. at 645-46 (emphasis added).

In a February 26, 1987, office action, Examiner Lev rejected these claims as

obvious over a combination of prior art references including the patents to Blum and

Pejas. J.A. at 636. Although both of these prior art references were in front of

Examiner Trafton prior to his April 6, 1987, rejection of the three-node communication

system of the '278 application, see J.A. at 347, 355, Examiner Trafton did not cite the

combination of Blum and Pejas in that rejection, see J.A. at 354. And, although

Schumann disclosed the existence of the co-pending '149 application to Examiner

Trafton on or about August 12, 1986, J.A. at 339, Schumann did not bring Examiner

Lev's rejection of application claims 15 and 16 to Examiner Trafton's attention.

Schumann responded on August 26, 1987, to Examiner Lev's rejection by

narrowing claim 15 to encompass only "real time data communication." See J.A. at

649. Schumann also added new application claims 19 through 24. Of those, claims 19

and 21 through 23 are the most relevant:

19. A portable terminal, comprising:
(a) a handheld housing;
(b) keyboard means disposed on the housing for entry of data, said
keyboard means including separate numeric and special function key
means for user input to the terminal;
(c) display means disposed on the housing for display of data;
(d) optical sensor means interconnected to the housing for sensing
bar code indicia on an object;
(e) electromagnetic transceiver means in the housing for
transmitting and receiving electromagnetic signals representing the
exchange of data between the portable handheld terminal and a remote
location while the portable handheld terminal is in use;

2006-1517 7
 (f) control means contained in the housing operatively
interconnected to the keyboard means, display means, optical sensor
means, and electromagnetic transceiver means for controlling operation of
the portable handheld terminal; and
(g) power supply means for powering the portable handheld
terminal.

Id. at 646-47 (emphasis added).

21. A method of receiving and transmitting patient information to a central
computer location at a location remote from the central computer system,
comprising the steps:
(a) sensing patient related information contained in bar code indicia
by use of an optical scanner of a handheld terminal, the terminal including
a keyboard for entry of additional patient related information;
(b) electromagnetically transmitting from the handheld terminal to a
base station patient related information;
(c) transmitting patient related information from the base station to
the central computer location by use of data over voice techniques;
(d) receiving at the base station patient related information from the
central computer location by use of data over voice techniques; and
(e) electromagnetically receiving at the handheld terminal patient
related information from the base station.

22. A method in accordance with claim 21, wherein the step of transmitting
patient related information to the base station from the handheld terminal
includes transmission of a unique address recognizable by a base station
programmed to accept patient related information containing the unique
address.

23. A method in accordance with claim 22, further including the step of
programming with the base station, the portable handheld terminal to
transmit the unique address.

Id. at 647-48 (emphasis added). Thus, claim 19 teaches two-node communication,

claim 21 teaches three-node communication, claim 22 teaches the addition of a "unique

address" limitation, and claim 23 teaches a programmable unique address.

On October 23, 1987—seventeen days after Schumann had argued to Examiner

Trafton in the course of prosecuting the '278 application that "[n]one of the references

either singularly or in combination teach or suggest . . . the three node approach to

2006-1517 8
communications as provided in the claimed invention"—Schumann had a telephonic

interview with Examiner Lev to discuss his discovery of a previously-undisclosed prior

art reference, U.S. Patent No. 4,456,793 ("the '793 patent") to Baker. J.A. at 653.

Baker teaches a cordless telephone system in which a portable telephone handset (or

station) communicates via optical transceivers with one of possibly several "subsystem

controllers," which in turn communicate with a central controller. '793 patent col.2 ll.40-

61. Baker also teaches the use of "unique codes for each subsystem and station within

the subsystem." Id. col.3 ll.6-7. In light of these teachings, Examiner Lev suggested to

Schumann that he cancel the newly added claims. J.A. at 653. Schumann neither

agreed with Examiner Lev, nor disclosed the existence of Baker to Examiner Trafton.

In a December 1, 1987, office action, Examiner Lev again rejected all claims

pending in the '149 application. Claim 19 was rejected as anticipated by U.S. Patent

No. 4,569,421 ("the '421 patent") to Sunstedt, and claims 15, 16, and 21 through 23

were rejected as obvious in light of several new combinations of prior art references,

including Blum and Sunstedt. J.A. at 656-58. Sunstedt teaches a vending system for

use in restaurants in which a waiter wirelessly transmits a customer's order from a

portable handheld terminal to an "input station" subject to intermittent polling by a

polling station. '421 patent col.2 ll.64-67; id. col.3 ll.40-44. Once the information at the

input station is detected by the polling station, the order is then transmitted to a local

data processor which calculates the customer's bill. Id. col.3 ll.10-20. Thus, in

Examiner Lev's opinion, Sunstedt's three-node communication system in combination

with other prior art references, including Blum, rendered claims 15, 16, and 21 obvious.

J.A. at 656-57. Examiner Lev was of the further opinion that the addition of Baker's

2006-1517 9
unique address also rendered claims 22 and 23 obvious. J.A. at 657-58. Examiner

Trafton had not considered these combinations of references during prosecution of the

'278 application, and Schumann did not disclose any of these rejections to Examiner

Trafton.

On June 17, 1988, Schumann responded to Examiner Lev's rejection by further

narrowing application claim 15 to encompass only handheld terminals capable of

initiating communication themselves, as opposed to the system taught by Sunstedt

requiring intermittent polling to initiate communication. J.A. at 669. In that same

response, Schumann cancelled application claims 19-24. On December 19, 1988,

Examiner Lev issued a notice of allowance for the eighteen remaining claims. The

claims issued on July 18, 1989, as U.S. Patent No. 4,850,009 ("the '009 patent").

C

On July 24, 1987, Schumann filed Application No. 07/078,195—a continuation in

part of the '278 application. As with the '278, Examiner Trafton was the examiner

assigned to the '195 application. Examiner Trafton allowed nine application claims on

December 16, 1988, and the patent thereafter issued as U.S. Patent No. 4,835,372

("the '372 patent"). The only independent claim of the '372 patent provides:

1. A patient identification and verification system for relating items to
specific patients and for ensuring that an identified item corresponds to an
identified patient, comprising:
(a) programmed system computer means for processing and
storing patient data;
(b) input means operatively interconnected to the programmed
system computer means for input of data to the programmed system
computer means;
(c) output means operatively interconnected to the programmed
system computer means for output of data from the programmed system
computer means;

2006-1517 10
 (d) first bar code identifier means adapted for attachment to a
patient for identification of the patient, the bar code identifier means
including a patient unique code;
(e) a plurality of second bar code identifier means for identifying
items, the second bar code identifier means including a code different
from that of the first bar code identifier means so as to differentiate
between the first and second bar code identifier means;
(f) the input means and output means including:
(i) microprocessor controlled portable handheld patient
terminal means having bar code reader means for scanning the second
bar code identifier means for relating various items to a specific patient,
the portable handheld patient terminal means further including keyboard
and display means, the portable handheld patient terminal means
including electromagnetic wave transceiver means including means for
transmission of data as an electromagnetic wave which is representative
of the first and second bar code identifier means scanned by the bar code
reader means and including means for receipt of data as an
electromagnetic wave;
(ii) microprocessor controlled base station means including
electromagnetic wave transceiver means for receipt of and transmission of
data as an electromagnetic wave to the patient terminal means, the base
station means being interconnected to the programmed system computer
means at least in part by telephone lines for receipt and transmission of
data on the telephone lines to the programmed system computer means;
and
(iii) a plurality of stationary terminal means located at various
stations remote from the programmed system computer means and
interconnected to the programmed system computer means at least in
part by telephone lines for transmitting data to the programmed system
computer means and for receipt of data from the programmed system
computer means; and
(g) terminal support means for interconnecting a bar code reading
device, at least one printer device and a terminal having a display and
keyboard to the system computer, the terminal support means including
DOV modem means for transmission of data to the system computer at
least in part by telephone wiring.

'372 patent col.44 l.39 – col.45 l.33 (emphasis added). As with the '716 patent, claim 1

of the '372 patent encompasses three-node communication. Prior to the issuance of the

'716 patent, Schumann did not notify Examiner Trafton that the claims of the '372 patent

had been allowed.

2006-1517 11
 II

McKesson initiated the present suit for infringement against Bridge on

December 13, 2002, in the United States District Court for the Eastern District of

California. Bridge answered McKesson's complaint by pleading the affirmative

defenses of unenforceability due to inequitable conduct, equitable estoppel, and

unclean hands. Bridge also brought counterclaims against McKesson for declaratory

judgment. The district court bifurcated the trial into two phases, with the first phase

being a bench trial on the inequitable conduct affirmative defense and the second phase

being a jury trial on the remainder of the claims, counterclaims, and affirmative

defenses. A four-day bench trial of the first phase resulted in an unenforceability

judgment in favor of Bridge, thereby rendering the second phase unnecessary.

The court issued its findings of fact and conclusions of law on June 13, 2006.

McKesson Info. Solutions, Inc. v. Bridge Med., Inc., No. 02-2669 (E.D. Cal. June 13,

2006) ("Findings and Conclusions"). In particular, the court found by clear and

convincing evidence that, in the course of prosecuting the '716 patent, Schumann's

failures to disclose (1) the existence of the Baker patent, (2) Examiner Lev's rejections

of the initially broad claims in the '149 application (which issued as the '009 patent), and

(3) the allowance of claims in the '372 patent were material omissions done with an

intent to deceive. Findings and Conclusions, slip op. at 16-48.

A

With respect to Schumann's failure to disclose the Baker patent to Examiner

Trafton, the court first noted that until Examiner Lev brought Baker to Schumann's

attention, "the same 38 prior art references [had been cited] in the '716 and '009

2006-1517 12
prosecutions [i.e., the '278 and '149 applications, respectively]." Id., slip op. at 21. The

court found this fact supportive of a finding of materiality because, as Schumann

testified, "[i]f the same art had been before the examiners and the claims are

substantially similar, [that is] probably a pretty good indication that the reference would

be pretty material." Id. Another fact the court deemed significant was Examiner Lev's

finding "that the Baker patent rendered the address code in the portable handheld [of

the '149 application] obvious," id., because, as Schumann admitted, the address code

of the '149 application was the same as the "programmable unique identifier" limitation

of the '278 application, see id., slip op. at 21-22. Taken together, these two

observations led the court to conclude that "the Baker patent meets the 'reasonable

examiner' materiality standard and should have been disclosed to Examiner Trafton."

Id., slip op. at 22.

The court buttressed its materiality conclusion with the further observation that

the Baker patent also includes three-node communication—the very type of

communication Schumann used to differentiate the claims of the '716 patent from the

prior art. See id., slip op. at 23-24. The court explained, in accordance with expert

testimony elicited at trial, that "Schumann could not have made this patentability

argument if Examiner Trafton had the opportunity to consider the Baker patent." Id., slip

op. at 24. Given this further observation, the court found the Baker patent to be not

merely material, but "highly material." Id.

McKesson offered several reasons why, in its view, Baker would not have been

material to Examiner Trafton. First, McKesson contended to the district court that

disclosure of the Baker patent would have been cumulative of other prior art because

2006-1517 13
"one could find all of its [Baker's] elements by combining two other prior art references,

the Blum and Hawkins patents." Id. The Blum reference, U.S. Patent No. 4,628,193

("the '193 patent"), describes a portable handheld device useful in a hospital setting.

The user of Blum's handheld device first plugs it into a central computer in order to

download patient data. The user then unplugs the device and carries it from bed to bed,

and uses the downloaded data to ensure that each patient receives the correct

treatment and/or medication. '193 patent col.3 l.63-col.4 l.36. The Hawkins reference,

U.S. Patent No. 4,593,155 ("the '155 patent"), describes a "portable ID code transfer

system in which the portable unit learns its associated ID code from the base

communication unit thereby eliminating any requirement for manually coding the

portable unit with an ID code to match the base unit," '155 patent col.1 l.66-col.2 l.4,

useful for "portable telephone systems, garage door openers and remote computer

terminals which communicate with a master computer," id. col.1 ll.13-16. In the context

of a portable telephone system, the Hawkins reference also describes communication

between the base unit and an outside telephone network in the event that the portable

unit and base unit have matching IDs. Id. at [57].

The district court found this argument unpersuasive in part because "Lev, who

already had both the Blum and Hawkins patents before him . . . , added the Baker

patent to the mix of prior art in the '009 prosecution, and then relied on it in rejecting

claims to a portable handheld terminal." Findings and Conclusions, slip op. at 25.

"Clearly," the court continued, "Examiner Lev did not view Baker as cumulative, but

rather treated it as an important addition to the prior art previously cited by

Mr. Schumann." Id. (emphasis in original); cf. Molins PLC v. Textron, Inc., 48 F.3d

2006-1517 14
1172, 1180 (Fed. Cir. 1995) (holding that a district court did not clearly err in finding

materiality where the prior art reference at issue had been considered material by

examiners in related foreign patent applications). The court also viewed the Baker

patent as "more explicitly and clearly disclos[ing] a three-node wireless communications

system than either the Blum or Hawkins patents." Findings and Conclusions, slip op. at

25. Reasoning that the Baker patent need not invalidate the claims of the '716 patent in

order to be material, the district court thus found that a "reasonable examiner would

have been substantially likely to consider the Baker patent important to the evaluation of

the ['278] application" given "the similarity of the core features of the Baker patent to the

subject matter of the '716 patent." Id. Ultimately, then, the district court found Baker

"highly material and not cumulative." Id., slip op. at 27.

The court next evaluated intent and found that Schumann did in fact intend to

deceive Examiner Trafton by failing to disclose the Baker patent. The court first

explained that intent was inferable because "Schumann was informed of the Baker

patent's materiality by the PTO itself when Examiner Lev brought the patent to

[Schumann's] attention, suggested cancellation of certain claims, and then rejected

claims as obvious in light of Baker—including claim elements that were present in the

['278] application." Id., slip op. at 28. The court also reasoned that given the mere

seventeen-day gap between Schumann's "representation to Examiner Trafton that the

prior art does not disclose the three-node approach to communications as provided in

the claimed invention" and his telephonic discussion with Examiner Lev, "Schumann

could not have (or certainly should not have) missed Baker's significance [since] it

2006-1517 15
rendered his recent statement to Examiner Trafton untrue, further confirming that intent

to deceive should be inferred." Id., slip op. at 28-29.

The court found additional evidence of deceptive intent in Schumann's admission

at trial that he knew his duty to disclose material information continued for at least 22

months after he learned of the Baker patent, and yet Schumann did nothing to bring

Baker to Examiner Trafton's attention. Id., slip op. at 29. Moreover, the court explained,

"Schumann himself evidenced his realization of the strength of the Baker patent when

he chose not to even attempt to overcome Examiner Lev's rejection based on Baker

and cancelled the claims in the ['149] application that were rejected due to Baker." Id.

And because the cancelled claims "included, according to Mr. Schumann's own

admission, aspects of the invention under review [by Examiner Trafton], Mr. Schumann

either knew or should have known that the Baker patent was material in the '716 case."

Id., slip op. at 30.

The court recognized Schumann's testimony that although "he has no

recollection whatsoever of prosecuting the '716 patent," he believes, "looking at the

Baker reference now, [that] it is cumulative." Id. However, the court found this

explanation incredible both because it would have been unreasonable, in the court's

opinion, to conclude that Baker is cumulative, and because no contemporaneous

evidence (e.g., notes, records, files, etc.) was adduced at trial to show that Schumann

actually analyzed Baker and arrived at such a conclusion. Id., slip op at 31. The court

further rejected Schumann's explanation as "strain[ing] credulity" in light of the

sequence of events surrounding the Baker patent:

(1) Examiner Lev located the Baker patent on his own; (2) he brought it to
Mr. Schumann's attention in a telephone interview; (3) he suggested the

2006-1517 16
 cancellation of certain '009 claims, and then issued a rejection of those
claims based in part on Baker; (4) shortly thereafter, Mr. Schumann found
that the rejection based on Baker could not be overcome, requiring him to
cancel the claims (regarding a handheld patient terminal system
communicating wirelessly with base stations and via wires with a remote
central computer) in order to continue with the '009 prosecution; (5) finally,
even though Mr. Schumann had disclosed the same prior art in both the
'009 and '716 prosecutions through that point in time, he concluded that
the Baker patent had no bearing on the '716 prosecution (which involved
the same three-node wireless system rejected in the '009 prosecution).

Id., slip op. at 31-32. The court also discredited the testimony as inconsistent with

Schumann's assertion on the witness stand that it was his practice to be "over inclusive"

and to "bend[] over backwards to make sure [he] got everything into the case." Id., slip

op. at 32. The totality of this evidence, according to the court, "overwhelmingly

establishe[d]" that Schumann, by withholding the Baker patent from Examiner Trafton,

acted with an intent to deceive. Id., slip op at 33-34.

B

As to Schumann's failure to disclose Examiner Lev's rejections of the claims in

the '149 application, the court began its analysis by rejecting McKesson's argument that

our decision in Dayco Products, Inc. v. Total Containment, Inc., 329 F.3d 1358, 1367

(Fed. Cir. 2003), "created a new disclosure requirement that [did] not apply to

Mr. Schumann's prosecution of the '716 patent in the 1980s." Findings and

Conclusions, slip op. at 34 (emphasis in original). Using Dayco as a guide, the court

continued its analysis by explaining that Examiner Lev's "rejections are material if the

rejected claims were 'substantially similar' to the claims pending before Examiner

Trafton." Findings and Conclusions, slip op. at 36 (quoting Dayco, 329 F.3d at 1368).

Based on this standard, the court found that Examiner Lev's February 26, 1987,

rejection of claims 15 and 16 in the '149 application would have been important to

2006-1517 17
Examiner Trafton's examination because those claims, which "disclosed all three nodes

of the '716's patient identification system, with the identical means of communication

among the core structures," "substantially overlapped with the limitations of Claim 1 of

the '716 patent." Findings and Conclusions, slip op. at 37. Moreover, the court

explained, this rejection would have been of additional importance to Examiner Trafton

because it contradicts the argument for patentability Schumann made to Examiner

Trafton on October 6, 1987. Id., slip op. at 38. The court further found materiality in

Examiner Lev's December 1, 1987, rejection of claims 15, 16, 19, and 21 through 23 of

the '149 application both because of the substantial similarity between those claims and

claim 1 of the '716 patent, and because Examiner Lev "relied on the Baker patent,

which had not been disclosed in the '716 prosecution, to reject the 'unique address'

limitation of [claims 22 and 23], which was also a limitation of the '716 patent." Id., slip

op. at 37. This finding was buttressed by the court's observation that Schumann

"acquiesced" to Examiner Lev's rejection by canceling claims 19 through 24. Id., slip

op. at 38. Here, too, the court reasoned that the rejection would have been of additional

importance to Examiner Trafton because it contradicts Schumann's October 6 argument

for patentability. Id., slip op. at 38.

McKesson also argued, relying on our opinion in Akron Polymer Container

Corp. v. Exxel Container, Inc., 148 F.3d 1380, 1382 (Fed. Cir. 1998), that Schumann

effectively disclosed Examiner Lev's rejections by disclosing the existence of the '149

application to Examiner Trafton. The district court rejected this argument by

distinguishing Akron Polymer on its facts and by explaining that section 2001.06(b) of

the Manual of Patent Examination and Procedure ("MPEP") as well as our decision in Li

2006-1517 18
Second Family LP v. Toshiba Corp., 231 F.3d 1373, 1380 (Fed. Cir. 2000), "plainly

impose[] a duty of disclosure beyond citation of the co-pending application." Findings

and Conclusions, slip op. at 39-40.

Regarding intent, Schumann's testimony at trial, according to the court, was that

although he did not recall prosecuting the '278 application, he explained that "he

probably did not believe activity in the ['149] application was material to the '716

prosecution because the ['149] case involved only a terminal, while the '716 involved an

entire 'system.'" Id., slip op. at 41. The court discounted this explanation as

"contradicted by the actual wording of the claims rejected by Examiner Lev, which . . .

included all of the elements of a three-node wireless system." Id. Moreover, the court

continued, "Schumann admitted on cross examination that his terminal/system

argument was a distinction without a difference." Id. The court also discounted as not

credible and the "product of newly developed hindsight," Schumann's testimony that his

firm at the time did not have procedures in place for citing office actions in co-pending

applications. Id., slip op. at 42. Schumann's trial testimony in this regard was further

undermined, in the court's estimation, by his deposition testimony that a rejection in a

co-pending application ought to be disclosed "if it was deemed to be relevant." Id. And

even if Schumann's former firm did have such procedures in place (a matter not decided

in fact), the court held that our decision in Brasseler, U.S.A. I, L.P. v. Stryker Sales

Corp., 267 F.3d 1370 (Fed. Cir. 2001), prevents firms from "insulat[ing] [their attorneys]

against charges of inequitable conduct by instituting policies that prevent [the attorneys]

from complying with the law," Findings and Conclusions, slip op. at 43. Thus, the court

concluded that "while Mr. Schumann's disclosure of the co-pendency of the ['149

2006-1517 19
application] to Examiner Trafton is some evidence of a lack of intent to deceive under

Akron Polymer, weighing all the evidence here, as the court must, said disclosure does

not overcome the inference of an intent to deceive established [on these facts]."

Findings and Conclusions, slip op. at 44 (emphasis in original) (footnote omitted).

C

The district court next addressed Schumann's failure to disclose the allowance of

the claims of the '372 patent. Again the court looked to Dayco and MPEP § 2001.06(b),

and held that a notice of allowance in a co-pending application is material if the allowed

claims could conceivably have given rise to a double patenting rejection. Findings and

Conclusions, slip op. at 45-46. McKesson argued that, even so, the claims of the '716

patent are not sufficiently similar to the claims of the '372 patent to render the allowance

of those claims material. The district court disagreed, finding that although the claims of

the '372 patent do not have a comparable "programmable unique identifier" limitation,

"Examiner Trafton should have been given the opportunity to consider whether the

added limitations in the '716 were non-obvious." Id., slip op. at 47. "Indeed," the court

continued, "given that Examiner Lev had rejected the 'unique identifier' as obvious . . . ,

it is certainly conceivable that the '716 could have been rejected under the doctrine of

obviousness-type double patenting." Id. Thus, the court concluded that the allowance

of the '372 claims was material and should have been disclosed.

As to intent, the court discounted Schumann's explanation as "implausible" that

"the two patents did not raise a double patenting issue because 'the claims were

different in those cases.'" Id., slip op. at 48. Specifically, the court explained that

because the structure of means-plus-function limitations are defined by the

2006-1517 20
specification, and because "the entire '716 specification . . . is included in the '372

specification," "Schumann certainly should have known, if he did not know, that an

allowance of identical claims might have been important to make of record." Id. Even

giving Schumann credit for disclosing the existence of the co-pending application that

led to the '372 patent, the court nevertheless found that Schumann withheld the

allowance of the '372 claims with deceptive intent.

D

As a final step, the court engaged in equitable balancing and concluded that the

"pattern of material nondisclosures, such as present here, weighs firmly in favor of

unenforceability," id., because "the showings of materiality and intent are high" with

respect to each identified nondisclosure, id., slip op. at 50. The court thus entered

judgment against McKesson on infringement and dismissed Bridge's pending

counterclaims as moot and without prejudice. McKesson subsequently appealed to this

court. Because the district court disposed of all claims and counterclaims, its judgment

is final and we have appellate jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). See Int'l

Elec. Tech. Corp. v. Hughes Aircraft Co., No. 06-1368, 2007 U.S. App. LEXIS 1715, at

*3-*5 (Fed. Cir. 2007).

III

"A patent may be rendered unenforceable for inequitable conduct if an applicant,

with intent to mislead or deceive the examiner, fails to disclose material information or

submits materially false information to the PTO during prosecution." Digital Control

Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006); see also 37 C.F.R.

§ 1.56(a) ("Each individual associated with the filing and prosecution of a patent

2006-1517 21
application has a duty of candor and good faith in dealing with the Office, which includes

a duty to disclose to the Office all information known to that individual to be material to

patentability as defined in this section.").

The materiality of information withheld during prosecution may be judged by the

"reasonable examiner" standard. See id. at 1316. That is, "[m]ateriality . . . embraces

any information that a reasonable examiner would substantially likely consider important

in deciding whether to allow an application to issue as a patent." Akron Polymer,

148 F.3d at 1382 (citations omitted). Moreover, "[i]nformation concealed from the PTO

may be material even though it would not invalidate the patent." Li Second Family,

231 F.3d at 1380. "However, a withheld otherwise material [piece of information] is not

material for the purposes of inequitable conduct if it is merely cumulative to that

information considered by the examiner." Digital Control, 437 F.3d at 1319. "As this

court has previously noted, the scope and content of prior art and what the prior art

teaches are questions of fact." Id.

"The intent element of the offense is . . . in the main proven by inferences drawn

from facts, with the collection of inferences permitting a confident judgment that deceit

has occurred." Akron Polymer, 148 F.3d at 1385. "However, inequitable conduct

requires not intent to withhold, but rather intent to deceive. Intent to deceive cannot be

inferred simply from the decision to withhold [information] where the reasons given for

the withholding are plausible." Dayco, 329 F.3d at 1367. In addition, "a finding that

particular conduct amounts to 'gross negligence' does not of itself justify an inference of

intent to deceive; the involved conduct, viewed in light of all the evidence, including

evidence indicative of good faith, must indicate sufficient culpability to require a finding

2006-1517 22
of intent to deceive." Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867,

876 (Fed. Cir. 1988) (en banc in relevant part).

"The party asserting inequitable conduct must prove a threshold level of

materiality and intent by clear and convincing evidence." Digital Control, 437 F.3d at

1313. "The court must then determine whether the questioned conduct amounts to

inequitable conduct by balancing the levels of materiality and intent, 'with a greater

showing of one factor allowing a lesser showing of the other.'" Id. (quoting Union Pac.

Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 693 (Fed. Cir. 2001)). "When,

after a trial, the court has made factual findings as to materiality and deceptive intent,

those factual findings are reviewed for clear error, and the decision of the ultimate issue

of inequitable conduct is reviewed for abuse of discretion." Digital Control, 437 F.3d at

1313.

A

We first discuss Schumann's failure to disclose the Baker patent to Examiner

Trafton during prosecution of the applications leading to the '716 patent. McKesson first

points out that Examiner Lev cited Baker "solely for its disclosure of a unique address

code," and that Hawkins, which was before Examiner Trafton, also discloses that same

feature. Moreover, according to McKesson, "Hawkins is a better and more relevant

reference with regard to the '716 prosecution because Hawkins further teaches a

programmable unique identifier for wireless communications between a portable

terminal and base station, as claimed in the '716," unlike Baker, which allegedly "does

not teach that critical feature of programming." Appellant's Br. at 56 (emphasis in

2006-1517 23
original). Therefore, McKesson contends, "Baker's disclosure of a unique address code

was merely cumulative to Hawkins." Id. at 57.

Even if McKesson is correct that Hawkins discloses a programmable unique

identifier limitation more clearly than Baker, the importance of Baker to a reasonable

examiner is not limited to the disclosure of that limitation. One of Schumann's primary

arguments for the patentability of the claims of the '716 patent was the use of three-

node communication. Accordingly, the three-node communication system disclosed in

Baker—consisting of portable handsets, one or more subsystem controllers, and a

central controller—could be material quite apart from the disclosure of anything

analogous to a programmable unique identifier limitation.

Insofar as both patents disclose three-node communication, McKesson

characterizes Hawkins as being on equal footing as Baker. We disagree. The Hawkins

specification, which contemplates communication between a garage door opener and a

remote control in one embodiment, leaves no doubt that the invention described therein

is a two-node communication system consisting of a base station and a portable unit.

Admittedly, in the wireless telephone embodiment, this system is capable of connecting

to a third communication node, i.e., a telephone system network. '155 patent col.21 ll.6-

9 (claim 25). However, unlike the Baker patent, only two nodes are described in any

significant detail in the Hawkins patent.

Moreover, the telephone system network node of the Hawkins patent is not the

analogue to the central controller node in the Baker patent because the central

controller node is an internal node entirely separate from any outside network node. In

other words, the base station node in the wireless telephone embodiment of the

2006-1517 24
Hawkins patent directly connects to the telephone system network node, but the

analogous subsystem controller node in the Baker patent only indirectly connects with

an outside network node via the central controller node. See, e.g., '793 patent col.6

ll.28-38 (explaining that the "central controller 101 controls incoming and outgoing calls

to a telephone central office"); id. fig. 3. Thus, we find no clear error in the district

court's conclusion that Baker discloses three-node communication more clearly than

Hawkins.

McKesson further argues that "the art of record showed at least twelve three-

node systems" in order to demonstrate that Baker is cumulative. Appellant's Reply Br.

at 10. However, aside from Hawkins (in combination with Blum), the only two such

systems specifically pointed to by McKesson are U.S. Patent No. 4,588,881 ("the '881

patent") to Pejas, and U.S. Patent No. 4,180,204 ("the '204 patent") to Koenig.

Appellant's Reply Br. at 10.

Pejas relates to an inventory-monitoring system in which one or more bar code

"reading pens" are each connected to their own portable terminal. '881 patent col.2

ll.20-24. The portable terminals communicate wirelessly with "converters" which, in

turn, communicate with a "control centre." Id. col.2 ll.24-37. The system facilitates

communication between the control center and a particular terminal by associating an

address with each terminal. Id. col.3 ll.15-27. Thus, Pejas appears to disclose both

three-node communication (pen/terminal to converter to control center), as well as a

unique addressing scheme analogous to the programmable unique identifier limitation

of the '716 patent. Importantly, however, the description of the preferred embodiment in

Baker spans over eleven columns and provides a highly technical discussion of the

2006-1517 25
implementation of the three-node communication system with unique addressing,

whereas the same description in Pejas is just under two columns and provides only

cursory implementation details. Compare '793 patent col.4 l.33 – col.15 l.46, with '881

patent col.2 l.15 – col.4 l.12. Therefore, we find no clear error in the district court's

failure to find that Pejas renders Baker cumulative.

Koenig, the other reference identified by McKesson, discloses a similar pen-type

reader, or "wand," attached to a portable terminal for reading bar codes. '204 patent

fig.1. When the wand successfully reads a bar code, the data is transmitted from the

terminal to a remote computer via a modem. Id. col.3 ll.52-56. As a threshold matter,

we question whether Koenig actually discloses a three-node communication system

because it appears from the claims that the modem is not a distinct node. See id. col.6

ll.30-32 (stating that "said computer means comprises a minicomputer and a modem

interface" (emphasis added)). In addition, Koenig does not disclose anything analogous

to the programmable unique identifier limitation of the '716 patent. Accordingly, we hold

that the district court did not clearly err by finding Baker noncumulative.

McKesson advances another assignment of clear error by contending that the

district court, in concluding that Baker undermines Schumann's argument to Examiner

Trafton on October 6, 1987, that "none of the references [either singularly or in

combination] teach the three node approach to communications as provided in the

claimed invention," J.A. at 366, misinterpreted Schumann's statement by focusing

"solely on a comparison of the similarities of Baker and the '716 claims and not their

differences," Appellant's Br. at 60. According to McKesson, Schumann was not

referring to three-node communication generally, but rather to three-node

2006-1517 26
communication with all of the limitations present in the claims, i.e., "as provided in the

claimed invention." In particular, McKesson points out:

Bridge adduced no evidence that (a) the "central controller" of Baker "may
have its own terminals for entry/display of information;" (b) the "subsystem
controller" of Baker is "preferably located in the patient rooms and other
suitable locations;" or (c) the cordless phone of Baker constitutes a
"portable handheld patient terminal" including all the limitations thereof
contained in the claims of the '716 patent.

Appellant's Reply Br. at 6.

We are not persuaded by this argument. Reading Schumann's statement to

Examiner Trafton in context, Schumann was plainly referring to the differences between

the three-node communication system of the '716 claims and non-three-node

communication systems of the prior art, exclusive of any other differences between the

claims and the prior art. See J.A. at 366 ("In addition to numerous other differences,

none of the references teach the three node approach to communications as provided

in the claimed invention." (emphasis added)). Moreover, the existence of differences

between Baker and the '716 claims does not, standing alone, render Baker immaterial.

See Li Second Family, 231 F.3d at 1380 ("Information concealed from the PTO may be

material even though it would not invalidate the patent."). Thus, the district court did not

clearly err in this regard.

McKesson contends that, irrespective of Baker's materiality, the district court

clearly erred in finding that Schumann intended to deceive Examiner Trafton. In the

proceedings below, the district court relied in part upon our decision in Bruno

Independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394 F.3d 1348 (Fed. Cir.

2005), to infer an intent to deceive. See Findings and Conclusions, slip op. at 27-28. In

Bruno, we upheld a district court's finding of intent where prior art was withheld from the

2006-1517 27
PTO but was nevertheless submitted to the FDA as part of that agency's product

approval process. 394 F.3d at 1354. The high materiality of the withheld prior art

coupled with the lack of "a credible explanation for the nondisclosure" led us to

conclude that the district court had not committed clear error by inferring an intent to

deceive. Id., at 1354-55. In this case, the district court rejected as incredible

Schumann's explanation for nondisclosure of the highly-material Baker reference.

McKesson believes Bruno is distinguishable from the present case for three

reasons. First, McKesson argues, "the device disclosed to the FDA included a more

relevant feature than any art of record in the patent-in-issue," whereas in this case "the

features disclosed in Baker were already present in the art of record." Appellant's Br. at

61. We reject this argument because it is nothing more than an attempt to rehash an

argument rejected above, namely, that Baker is cumulative of the prior art that was

already in front of Examiner Trafton.

The second distinction raised by McKesson is that "in Bruno, the patentee

affirmatively disclosed the device to the FDA while simultaneously withholding it from

the PTO," but here, "Schumann made no comparable disclosure outside the PTO."

Appellant's Br. at 61. To begin with, we see no meaningful distinction between

disclosure outside the PTO as opposed to disclosure within the PTO. With that in mind,

we find Bruno to be on point because, as in that case, Schumann had closely related

co-pending applications (the '278 application and the '149 application) in which a

noncumulative, material prior art reference (Baker) was withheld from one examiner

(Trafton) but was simultaneously in front of the other examiner (Lev).

2006-1517 28
 Finally, McKesson points out that "the device disclosed to the FDA in Bruno was

a 'substantial equivalent' of the product containing the patented technology," but in this

case, there is no such substantial equivalence because the Baker patent relates to a

cordless telephone system and the '716 patent relates to a patient identification and

verification system. Appellant's Br. at 61. McKesson reads too much into Bruno. We

did not hold in that case that substantial equivalence is necessary to support a finding of

inequitable conduct; we merely found that substantial equivalence is sufficient. In other

words, we did not hold that a prior art reference must be substantially equivalent to the

claimed invention in order to be material.

McKesson also attempts to seek refuge from Bruno by looking to our holding in

Akron Polymer. In Akron Polymer, co-pending applications were being prosecuted by

the same attorney to different examiners. The prosecuting attorney disclosed the first-

filed application to the examiner of the second-filed application, but did not disclose the

filing of the second application to the examiner of the first-filed application. In the first

trial of the case, the district court held that the second application was not material to

the prosecution of the first-filed application. The district court also found no culpable

intent on behalf of the common applicant and thus no inequitable conduct. On appeal,

we disagreed, holding that the second-filed application was highly material to the

prosecution of the first-filed application, because "it could have conceivably served as

the basis of a double patenting rejection." Akron Polymer, 148 F.3d at 1382. We thus

remanded for further adjudication of the inequitable conduct issue. Id.

On remand, the district court found deceptive intent with regard to nondisclosure

of the second application to the examiner of the first-filed application. The patentee

2006-1517 29
appealed the judgment of inequitable conduct, arguing error in the finding of deceptive

intent. We noted that "[w]hen examining intent to deceive, a court must weigh all the

evidence, including evidence of good faith." Id. at 1384. Because the district court had

given no weight at all to the inference of good faith that had to be drawn from disclosure

of the second application, we found clear error in the district court's assessment of

culpable intent. Consequently, we reversed the judgment of unenforceability.

Akron Polymer stands for no more than the unsurprising proposition that all

evidence of intent, including all inferences, favorable and unfavorable, must be weighed

when assessing culpable intent. In that case, the district court overlooked a favorable

inference that should have been drawn in favor of the patentee. That error undermined

the judgment of unenforceability.

We agree with McKesson's assertion that Akron Polymer earns it some credit for

the fact that Schumann did disclose the co-pendency of the '149 application to

Examiner Trafton in the assessment of the overall inferences to be drawn from all the

facts in the case. The district court did in fact credit McKesson with "some evidence of

a lack of intent to deceive under Akron Polymer." Findings and Conclusions, slip op. at

44; see also id., slip op. at 48 (giving Schumann credit for disclosing the co-pendency of

the application that issued as the '372 patent). But the district court weighed all the

evidence, as discussed above in this opinion, and held that the favorable inference

drawn from disclosure of the second application "does not overcome the inference of an

intent to deceive established by the [other] facts." Id., slip op. at 44.

McKesson continues by contending that Schumann did not know and should not

have known of Baker's materiality because Examiner Lev cited it during prosecution of

2006-1517 30
the '009 patent "only . . . for its unique addressing feature that was already before

Examiner Trafton in the better disclosure of Hawkins." Appellant's Br. at 62. Moreover,

McKesson states, the seventeen-day gap between Schumann's October 6 assertion to

Examiner Trafton that none of the prior art teaches three-node communication and

Schumann's October 23 interview with Examiner Lev regarding Baker "cannot be

evidence of intent," given that the assertion to Examiner Trafton was before the

interview with Baker. Id.

These two arguments are unconvincing. As to the former, simply because

Examiner Lev cited Baker for its unique addressing feature did not release Schumann

from the relevance of Baker's other teachings. Although McKesson's argument might

have some merit if Examiner Lev had cited one small section of a much larger work,

citation to the eighteen-column Baker patent put Schumann on notice of the content of

the whole document. And as to the second argument, Schumann's duty to disclose

material information to the PTO extended well beyond October 23, 1997. See, e.g., Fox

Indus., Inc. v. Structural Preservation Sys., Inc., 922 F.2d 801, 803 (Fed. Cir. 1991)

("The duty of candor extends throughout the patent's entire prosecution history.");

MPEP § 2001.06 (5th ed. rev. 3, 1986) ("The duty to disclose material information

extends to information [individuals covered by 37 C.F.R. § 1.56] are aware of prior to or

at the time of filing the application or become aware of during the prosecution thereof.").

Therefore, the fact that Schumann learned of Baker after his October 6 assertion to

Examiner Trafton is of no consequence. The mere seventeen-day gap is important,

however, because it bolsters the district court's inferences that Schumann knew or

2006-1517 31
should have known of Baker's materiality to the '278 application, and that he

intentionally withheld Baker from Examiner Trafton with deceptive intent.

We also reject McKesson's attempt to downplay the significance of Schumann's

cancellation of claim 22 of the '149 application subsequent to Examiner Lev's citation to

Baker. Irrespective of Schumann's disagreement with Examiner Lev's conclusion that

claim 22—which incorporated both three-node communication and a unique address

limitation—was obvious in light of a combination involving Baker, Schumann's

cancellation of that claim fairly gives rise to an inference that he recognized Baker

would also present a significant obstacle to the patentability of dependent claim 6 of the

'278 application. Yet, in spite of the advice provided to prosecuting attorneys in the

1986 version of the MPEP that "information . . . specifically considered and discarded as

not material" ought to be "recorded in [the] attorney's file or applicant's file, including the

reason for discarding it," MPEP § 2004(18) (5th ed. rev. 3, 1986), 1 Schumann offered

no such recorded reason; he was only able to give speculative testimony about the

conclusions he must have drawn at the time with respect to Baker's materiality. The

district court, as it was free to do, found this testimony incredible. Findings and

1
The full text reads:

18. Finally, if information was specifically considered and discarded as not
material, this fact might be recorded in an attorney's file or applicant's file,
including the reason for discarding it. If judgment might have been bad or
something might have been overlooked inadvertently, a note made at the
time of evaluation might be an invaluable aid in explaining that the mistake
was honest and excusable. Though such records are not required, they
could be helpful in recalling and explaining actions in the event of a
question of "fraud" or "inequitable conduct" raised at a later time.

MPEP § 2004(18) (5th ed. rev. 3, 1986).

2006-1517 32
Conclusions, slip op. at 31-32. Accordingly, we see no clear error in the district court's

inference of intent from Schumann's cancellation of claim 22.

Finally, McKesson asserts that Critikon, Inc. v. Becton Dickinson Vascular

Access, Inc., 120 F.3d 1253 (Fed. Cir. 1997), is distinguishable. In that case, we found

an intent to deceive where an applicant knowingly failed to disclose a prior art patent

during prosecution that recited a limitation corresponding to "a point of novelty the

examiner relied upon during the course of prosecution." Id., 120 F.3d at 1256.

McKesson primarily distinguishes the case at hand by stating that Baker does not

disclose a "point of novelty" of the '716 claims, and that the evidence does not show that

Schumann understood Baker to disclose any such point of novelty. Both of these points

of distinction are incorrect. As we explained above, Baker discloses two of the '716

patent's points of novelty: three-node communication and unique addressing. In

addition, the evidence unquestionably shows that Schumann understood Baker to

disclose at least unique addressing, and that Schumann should have understood Baker

to disclose three-node communication. Therefore, the district court did not clearly err by

further inferring deceptive intent from Schumann's subsequent failure to disclose Baker

to Examiner Trafton. As the district court held, the overwhelming circumstantial

evidence, coupled with the lack of any credible explanation for nondisclosure of Baker,

supports the finding of deceptive intent. Findings and Conclusions, slip op. at 27.

B

We now turn to Schumann's failure to disclose Examiner Lev's rejections in the

'149 application ('009 patent). This court addressed the failure to disclose rejections in

co-pending applications for the first time in Dayco. We held that:

2006-1517 33
 [A] contrary decision of another examiner reviewing a substantially similar
claim meets the Akron Polymer "reasonable examiner" threshold
materiality test of "any information that a reasonable examiner would
substantially likely consider important in deciding whether to allow an
application to issue as a patent." 148 F.3d at 1382, 47 USPQ2d at 1534
(emphasis in original). Patent disclosures are often very complicated, and
different examiners with different technical backgrounds and levels of
understanding may often differ when interpreting such documents.
Although examiners are not bound to follow other examiners'
interpretations, knowledge of a potentially different interpretation is clearly
information that an examiner could consider important when examining an
application.

Dayco, 329 F.3d at 1368 (first emphasis added).

In the proceedings below, McKesson urged the district court to hold that a

"substantially similar" claim is a claim having substantial similarity "in content and

scope" to the claim at issue. The court declined, explaining first that the phrase "in

content and scope" was not used by this court in Dayco, and second that "McKesson

has not provided any persuasive explanation for how this language substantively alters

the result here." Findings and Conclusions, slip op. at 36 n.7. Instead, the court

announced that it would apply a "substantially similar" test in determining whether "there

is a substantial likelihood that a reasonable examiner would have considered the

[rejections] important in deciding whether to issue the application as a patent." Id. at 17,

36 n.7. The court further noted that we found substantial similarity in Dayco among

claims that "were in some respects substantially identical." See Dayco, 329 F.3d at

1361 (emphasis added). McKesson argues on appeal that the district court misapplied

Dayco because it used a lesser "in some respects identical" test which failed to account

for differences between the compared sets of claims.

As we explained in Digital Control, materiality may be proven in numerous ways,

including via the so-called "reasonable examiner" standard. 437 F.3d at 1316. Under

2006-1517 34
Dayco, that standard is satisfied in the rejected-claims setting if the rejected claims are

substantially similar to the claims at issue. 329 F.3d at 1368. In other words, a showing

of substantial similarity is sufficient to prove materiality. It does not necessarily follow,

however, that a showing of substantial similarity is necessary to prove materiality.

Indeed, in the same way that prior art need not be substantially similar in order to be

material (e.g., the telephone system of Baker, though not substantially similar to the

'716 claims, is nevertheless material), rejected claims in a co-pending application also

need not be substantially similar in order to be material. Therefore, to the extent there

is a difference among "in some respects identical," "substantially similar," and

substantial similarity "in content and scope," that difference is inconsequential so long

as the evidence clearly and convincingly proves materiality in one of the accepted ways.

See Digital Control, 437 F.3d at 1316. Here, the district court found under the accepted

"reasonable examiner" standard that Examiner Lev's rejection of certain '149 claims was

in fact material to the prosecution of the '278 application before Examiner Trafton. Our

role on appeal is to determine whether that finding is clearly erroneous.

As to the district court's finding of materiality with respect to Examiner Lev's

rejection of claims 15 and 16 in the '149 application on February 26, 1987, McKesson

points to four differences between those claims and the claims of the '716 patent which

McKesson argues were ignored by the district court:

[T]he portable handheld terminal system of claims 15-16 [1] lacks a first
and second bar code identifier means, [2] lacks the base station limitations
of a programmable unique identifier, a means for allowing communication
with a portable terminal having a corresponding unique identifier and a
means for programming the portable terminal with the unique identifier,
[3] lacks any patient identification or verification limitations, and [4] lacks
any means for an alarm signal if the patient-item verification does not
correspond.

2006-1517 35
Appellant's Br. at 26-27. According to McKesson, these differences, combined with the

fact (alleged by McKesson) that the three-node communication system disclosed in

claims 15 and 16 is cumulative of prior art already before Examiner Trafton,

demonstrates that Examiner Lev's rejection of those claims would not have been of "any

particular relevance to Examiner Trafton in the '716 prosecution." Id. at 27.

We find this argument unpersuasive. We note as an initial matter that the district

court did not ignore the differences cited above; rather, the court explicitly mentioned

McKesson's "'redline' comparisons of the various claims to demonstrate that there are

wording differences, and even some differences in claim limitations," and then explained

the rationale for rejecting those differences as insufficient to undermine a finding of

materiality. Findings and Conclusions, slip op. at 36. Moreover, even if the district

court's opinion had not adequately addressed the differences pointed to by McKesson,

we would not be inclined to find clear error as a result. Both the version of claims 15

and 16 rejected by Examiner Lev on February 26, 1987, as well as the version of the

'278 application claims rejected by Examiner Trafton on April 6, 1987, unquestionably

disclose three-node communication, the existence of which, as Schumann's subsequent

statements to Examiner Trafton reveal, was crucial to Schumann's patentability

argument. It is therefore evident that prior to Examiner Trafton's April 6 rejection,

Examiner Lev's rejection of three-node communication would have been considered

important by any reasonable examiner in Examiner Trafton's position. And after April 6,

when Examiner Trafton did not cite any combination of Blum and Pejas—as he would in

the subsequent December 8 office action—the materiality of Examiner Lev's rejection

was arguably magnified. Lest there be any doubt as to the materiality of Examiner Lev's

2006-1517 36
rejection, we note that on August 26, 1987, Schumann responded to Examiner Lev by

limiting the three-node system of the '149 application to "real time" communication, see

J.A. at 649, and on October 6, 1987—just over one month later—he sought to

overcome Examiner Trafton's rejection with a nearly identical argument limiting the

three-node system of the '278 application to "real time, interactive three node

communication," id. at 367 (emphasis added). Moreover, any differences between the

three-node, bar code reading systems of the '278 application and the related '149

application are plainly less significant than the obvious differences between the three-

node bar code reading systems of either application and the three-node telephone

system of Baker. Yet, in spite of the obvious differences presented by the latter system,

we held above that Baker is material. It must be the case, then, that the four differences

pointed to by McKesson are insufficient to deprive Examiner Lev's February 26 rejection

of materiality. Along those same lines, and in light of our holding above that Baker is

not cumulative, we must likewise hold here that any citation to Examiner Trafton

regarding Examiner Lev's February 26 rejection would not have been cumulative.

We arrive at the same conclusion with respect to Examiner Lev's rejection of

claims 15 and 16 on December 1, 1987, in view of a combination of Blum and Sunstedt.

As we stated above, Schumann sought to overcome this rejection by further limiting the

three-node system of the '149 application to handheld terminals that do not require the

polling taught by Sunstedt, but rather are capable of initiating communication

themselves. It is at best unclear whether the claims of the '716 patent are similarly

limited, or whether the initiation of communication by the handheld terminal which

seems to be described in the specification is merely part of a preferred embodiment.

2006-1517 37
See, e.g., '716 patent col.15 ll.12-18 ("Next, the nurse will read the patient identifier bar

code on the patient's identification bracelet and the item identifier bar code on the items

to be administered and press a 'SEND' key on the bar code reading device 48 while in

the patient's room. This activates the transmission of data via the telephone wiring to

the computer system 42."). Suffice it to say, it is substantially likely that Examiner Lev's

rejection of the closely-related three-node system in the '149 application in view of Blum

and Sunstedt would have been considered important to a reasonable examiner

confronting the claims of the '278 application. And as before, the materiality of this

rejection was arguably magnified by the fact that Examiner Trafton never cited any

combination of Blum and Sunstedt before deciding to issue a notice of allowance.

With respect to Examiner Lev's rejection of claims 19 and 21 through 23 in the

same December 1 office action, McKesson raises a few additional materiality

arguments we have not yet addressed. The first of those is McKesson's argument that

Examiner Lev's rejection of claims 21 through 23 is immaterial because those claims

recite a method of three-node communication, whereas claim 1 of the '716 patent

recites a system for three-node communication. However, McKesson merely asserts in

conclusory fashion that the method of claims 21 through 23 in the '149 application is

"very different" from the system of claim 1 in the '716 patent. Appellant's Br. at 29.

Because we disagree with this characterization, we conclude that this argument is

simply a distinction without a difference. See Li Second Family, 231 F.3d at 1376

(affirming a finding of inequitable conduct where an applicant for semiconductor

structure claims misrepresented the PTO's previous disposition with respect to related

method of manufacture claims in another application pending before a different

2006-1517 38
examiner). McKesson also argues that Schumann's cancellation of these claims in the

face of Examiner Lev's rejection is not evidence of materiality because such

cancellation is "a legitimate and acceptable practice to obtain an early issuance of a

patent," and because Schumann "explicitly stated that he was not acquiescing in the

rejection but reserving the right to bring the claims in a further application." Appellant's

Br. at 30 (emphasis in original). While these facts may be evidence that Schumann

disagreed with Examiner Lev, Schumann's cancellation of the claims remains evidence

that Examiner Lev's rejections could not be easily overcome. As such, we see no error

with the district court's conclusion that Schumann's cancellation—whether it is

characterized as "acquiescence" or "legitimate and acceptable practice"—is evidence of

materiality. Finally, McKesson points out that because rejected claim 19 discloses two-

node communication, instead of three-node communication, Examiner Lev's rejection of

that claim is not material. At most, this distinction demonstrates that Examiner Lev's

rejection of claim 19 is cumulative because two-node communication was well known in

the prior art, e.g., the Hawkins patent. Nevertheless, we do not believe that the

possibility of one small piece of evidence being cumulative is sufficient to undermine the

legitimacy of the district court's otherwise error-free finding of materiality.

As to intent, McKesson first argues that the district court mischaracterized the

"terminal/system" distinction to which Schumann testified at trial. In fleshing this

argument out, McKesson states that "[e]vidence that [Schumann] acted in concert with a

belief that the '149 claims pertained to a portable terminal, or even a portable terminal

system, and not the patient identification and verification system of the '716, shows a

lack of deceptive intent that the court should not have ignored." Appellant's Br. at 35-36

2006-1517 39
(emphasis in original). Based on this explanation, we are unable to comprehend exactly

how the district court mischaracterized Schumann's testimony. As best we are able to

discern, McKesson's explanation makes exactly the same distinction between terminal

claims and system claims. In any event, a comparison of the rejected claims to the '716

claims reveals that both sets of claims relate to the use of three-node communication

and a unique address in the context of bar code reading. Therefore, we conclude that

the district court did not err in rejecting this distinction. Cf. Li Second Family, 231 F.3d

at 1376.

McKesson contends that the district court erred by failing to account for evidence

of Schumann's good faith, namely, his two separate disclosures of the existence of the

'149 application to Examiner Trafton in the course of prosecuting the '716 patent.

According to McKesson, given the state of the law in the mid-1980s, "there was no

awareness" that the further disclosure of rejections in co-pending applications was

necessary. Appellant's Br. at 39. It was not until this court's 2003 decision in Dayco,

McKesson argues, that the patent bar was put on notice that rejection disclosures are in

fact necessary.

This argument is untenable in light of not only the facts of Dayco itself—where

we applied this "new" law to patents claiming a priority date of 1989, see 329 F.3d at

1360—but also the then-current Fifth Edition of the MPEP, which explains the breadth

of "information" as used in 37 U.S.C. § 1.56(a):

The term "information" as used in § 1.56 means all of the kinds of
information required to be disclosed and includes any information which is
"material to the examination of the application."
...
The term "information" is intended to be all encompassing . . . .
[Section 1.56(a)] is not limited to information which would render the

2006-1517 40
 claims unpatentable, but extends to any information "where there is a
substantial likelihood that a reasonable examiner would consider it
important in deciding whether to allow the application to issue as a
patent."

MPEP § 2001.04 (5th ed. rev. 3, 1986) (emphasis altered). And in explaining the

various sources of information subject to the duty to disclose, the MPEP further

provides:

All individuals covered by § 1.56 . . . have a duty to disclose to the
Patent and Trademark Office all material information they are aware of, or
reasonably should have been aware of . . . , regardless of the source of or
how they became aware of the information. Materiality controls whether
information must be disclosed to the Office, not the circumstances under
which or the source from which the information is obtained. If material, the
information must be disclosed to the Office. The duty to disclose material
information extends to information such individuals are aware of prior to or
at the time of filing the application or become aware of during the
prosecution thereof.

Such individuals may be or become aware of material information
from various sources such as, for example, co-workers, tradeshows,
communications from or with competitors, potential infringers or other third
parties, related foreign applications . . . , prior or copending United States
patent applications . . . , related litigation . . . and preliminary examination
searches.

MPEP § 2001.06 (5th ed. rev. 3, 1986) (emphasis altered). The MPEP also makes

clear that the above explanations apply with full force to information obtained with

respect to co-pending applications:

The individuals covered by 37 C.F.R. 1.56(a) have a duty to bring
to the attention of the examiner . . . information within their knowledge as
to other copending United States applications which are "material to the
examination" of the application in question.

2006-1517 41
MPEP § 2001.06(b) (5th ed. rev. 3, 1986) (emphasis added). Thus, the MPEP to which

Schumann would have referred 2 while the '278 application was pending leaves no

doubt that material rejections in co-pending applications fall squarely within the duty of

candor.

McKesson also attempts to distinguish the present facts from those found in Li

Second Family. That case involved a complicated family of applications, all relating to

semiconductors, dating as far back as 1965. Li Second Family, 231 F.3d at 1375-76.

During prosecution of one application in the family, the examiner rejected the claims in

light of three prior art references. Id. at 1376. The applicant responded by claiming that

he was entitled to a priority date predating that of any of the references. Id. In

September 1979, the examiner determined that the applicant was not entitled to the

earlier priority date, and again rejected the claims. Id. The then-existing PTO Board of

Appeals affirmed in 1981. Id. However, in 1984 during prosecution of another

application in the family, the applicant presented the same priority date argument to a

different examiner in order to overcome a rejection based on a set of prior art

references that overlapped with the set of references that served as the basis for the

rejection in the prior application. Id. at 1377. In so arguing, the applicant "made

reference to the [prior] application only in a genealogy chart of the related applications

that he attached to the last supplemental amendment he filed," but made "no written

record of a disclosure to the PTO . . . of the Board's 1981 decision regarding priority

dates in the [prior] application." Id. Unlike the examiner in 1979, the examiner in this

2
"[A]lthough [the MPEP] does not have the force of law, [it] is well known to
those registered to practice in the PTO and reflects the presumptions under which the
PTO operates." Critikon, 120 F.3d. at 1257.

2006-1517 42
later application accepted the applicant's argument and allowed the claims with the

earlier priority date. Id. After the patent issued, the applicant-turned-patentee filed an

infringement suit against a competitor. Id. The competitor-defendant pled

unenforceability due to inequitable conduct. Id. The district court agreed, finding that

the patentee had "not adequately disclose[d] the [1981] decision to the [later] examiner

and that [the patentee] further committed inequitable conduct by affirmatively and

repeatedly arguing to the examiner that his claims were entitled to the benefit of the

earlier filing date[]." Id.

On appeal, we stated that "[a]lthough the genealogy chart filed [with the last

supplemental amendment] shows the chain of parent applications and related

applications, including the [prior application subject to rejected priority dates], we agree

with [the defendant] and the district court that the chart does not adequately disclose the

relevant information—the Board's decision regarding the priority dates." Id. at 1378.

We explained that "[u]nlike an applicant's disclosure of a prior art reference, the content

of which is presumed to be before the examiner, . . . submission of the genealogy chart,

with reference to the [prior] application only in the context of prior art cited in that

application and with no mention of the Board's decision, was not sufficient to disclose

the Board's decision to [the examiner]." Id. at 1379. "Moreover," we continued, "in the

same supplemental amendment to which [the then-applicant] attached the genealogy

chart, [he] reiterated his assertions that the claims were entitled to filing dates of parent

applications, a statement inconsistent with the Board's decision that [he] purportedly

disclosed." Id. After we then held that the district court had not clearly erred in finding

that the Board's decision in the prior application was material, id. at 1379-81, we

2006-1517 43
proceeded to analyze the district court's finding of intent. We first explained that the

numerous statements during prosecution contrary to the Board's decision supported a

finding of intent to deceive. Id. at 1381. We next explained that the submission of the

genealogy chart without disclosing the Board's decision was not evidence of good faith.

Id. Consequently, we affirmed the district court's finding of intent. Id.

McKesson believes the present case is significantly different from Li Second

Family because that case involved affirmative misrepresentation of the Board decision,

"which is far different than Schumann's facts." Appellant's Br. at 40. We disagree.

Here, as in Li Second Family, we are presented with a situation in which (1) the

examiner of one application (Trafton) was not apprised of the adverse decisions by

another examiner (Lev) in a closely-related application; (2) the applicant disclosed the

closely-related application only in the context of prior art cited in that application, but

failed to mention the adverse decisions; and (3) the applicant made statements to the

examiner inconsistent with the other examiner's decisions, i.e., that nothing in the prior

art disclosed three-node communication. Given such a tight correlation between the

facts at hand and those in Li Second Family, we must reject McKesson's attempt to

distinguish that case. Accordingly, we hold that the district court did not clearly err in

finding that Schumann intended to deceive the PTO by not disclosing the two rejections

in the '149 application to Examiner Trafton.

C

With respect to Schumann's failure to notify Examiner Trafton of the allowance of

the '372 patent claims, McKesson contends that the district court erred in its materiality

analysis by failing to determine whether the differences between the allowed claims of

2006-1517 44
the '372 patent and the claims of the '716 patent are "so inconsequential [that] there

was a substantial likelihood a reasonable examiner would have issued a double

patenting rejection." Appellant's Br. at 45. McKesson thus proposes that the allowance

of the '372 patent could only be material to Examiner Trafton if he would have been

likely to reject the '716 patent for double patenting. We disagree. Material information

is not limited to information that would invalidate the claims under examination. Li

Second Family, 231 F.3d at 1380. "As stated, the test for materiality is whether a

reasonable examiner would have considered the information important, not whether the

information would conclusively decide the issue of patentability." Id. With that test for

materiality in mind, the district court's stated basis for finding materiality—the

conceivability of a double patenting rejection—is not incorrect because allowance of the

three-node system of the '372 patent claims plainly gives rise to a conceivable double

patenting rejection, particularly in light of Examiner Lev's conclusion during examination

of the '149 application that the addition of Baker's unique address limitation to the three-

node system of Sunstedt was obvious. J.A. at 657-58. Under the correct test for

materiality, the allowance of claims to a three-node communication system is material.

Another perceived error pointed to by McKesson is the district court's alleged

failure to consider the fact that Examiner Trafton was the examiner who allowed the

'372 claims, and that he did so within a few months of allowing the '716 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. Compare Appellant's Br. at 48

(materiality), with Appellant's Reply Br. at 30-31 (intent). If this argument goes to

materiality, it must fail because, as stated above, the allowance of the '372 claims is

2006-1517 45
material. The most McKesson can argue is that the allowance is cumulative by virtue of

the fact that Examiner Trafton, as the '278 examiner, probably remembered allowing the

'372 claims and then realized the materiality of such allowance to the '278 application

claims. However, because the record is devoid of any evidence in this regard, we

cannot conclude that the allowance is cumulative. J.P. Stevens & Co. v. Lex Tex, Ltd.,

747 F.2d 1553, 1564 (Fed. Cir. 1984) ("[T]he district court did not find actual knowledge

by the primary examiner—it merely noted possibilities and, where inequitable conduct is

at issue, mere possibilities are insufficient.") (emphasis in original). Moreover, 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," MPEP § 2001.06(b) (5th ed. rev. 3, 1986) (quoting Armour & Co.

v. Swift & Co., 466 F.2d 767, 779 (7th Cir. 1972)), and PTO regulations required all

disclosures to be in writing, 37 C.F.R. § 1.2; see also MPEP § 2002.02 (5th ed. rev. 3,

1986). Schumann thus was not entitled to assume that Examiner Trafton would recall

his decision to grant the claims of the '372 patent when he was examining the '278

application in the absence of a written disclosure to that effect. If, on the other hand,

McKesson makes this argument to undermine intent, the argument fails as a factual

matter because Schumann specifically testified that he did not consider the identity of

the examiner in deciding whether to disclose information about co-pending applications.

J.A. at 2329-30.

As to the remainder of McKesson's arguments respecting the '347 patent, we find

them duplicative of arguments we have already rejected in the context of the Baker

2006-1517 46
patent and Examiner Lev's rejections in the course of examining the '149 application.

Accordingly, we find no clear error in the district court's finding of materiality and intent.

D

As to the final step of balancing of materiality and intent undertaken by the district

court, it appears that McKesson does not charge the court with abusing its discretion,

and in any case, we find no such abuse.

It is not necessary to decide whether any one of the three nondisclosures,

standing alone, would have been sufficient to justify a judgment of unenforceability; in

light of the district court's finding that there was inequitable conduct in all three

instances, we hold that the court did not abuse its discretion in holding the patent

unenforceable.

IV

Having found no clear error in any of the district court's findings with respect to

materiality or intent, or in its balancing thereof, we must therefore affirm the court's

ultimate finding that the '716 patent is unenforceable due to inequitable conduct before

the PTO.

AFFIRMED

2006-1517 47
United States Court of Appeals for the Federal Circuit

2006-1517

MCKESSON INFORMATION SOLUTIONS, INC.,

Plaintiff-Appellant,

v.

BRIDGE MEDICAL, INC.,

Defendant-Appellee.

NEWMAN, Circuit Judge, dissenting.

I respectfully dissent. 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.

Whether or not the examination was perfect, invalidation based on the charge of

withholding material information for purposes of deception requires more than was here

shown. To avoid the inequity resulting from litigation-driven distortion of the complex
procedures of patent prosecution, precedent firmly requires that the intent element of

inequitable conduct must be established by clear and convincing evidence of deceptive

intent -- not of mistake, if there were such, but of culpable intent. See Kingsdown Medical

Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 872 (Fed. Cir. 1988) (en banc) (both

materiality and intent to deceive must be proven); Molins PLC v. Textron, Inc., 48 F.3d

1172, 1181 (Fed. Cir. 1995) (proof of "clear and convincing" is necessary to establish intent

to mislead or deceive the PTO). In Kingsdown, we observed that, "To be guilty of

inequitable conduct, one must have intended to act inequitably." 863 F.2d at 872 (quoting

FMC Corp. v. Manitowoc Co., Inc., 835 F.2d 1411, 1415 (Fed. Cir. 1987)). 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.

2006-1517 2