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A rare U.S. Court of Appeals for the Federal Circuit decision that declared a patent unenforceable because of the patent attorney’s inequitable conduct during the patent application process is likely to increase lawyers’ disclosures to the patent office. On May 18, the court upheld a California federal court decision that declared a McKesson Information Solutions August 1989 patent involving bar-coding technology for hospitals unenforceable. McKesson Information Solutions Inc. v. Bridge Medical Inc., No. 06-1517 (Fed. Cir.). The Federal Circuit agreed with the lower court that patent lawyer Michael Schumann acted with deceptive intent by withholding three key items of information from the U.S. Patent and Trademark Office, including details about prior art and a rejected co-pending patent application. Schumann, who is now with Minneapolis-based intellectual property firm Hamre, Schumann, Mueller & Larson, declined to comment. Jose L. Pati�o, a Morrison & Foerster partner in San Diego who argued the appeals case for Bridge Medical Inc., said the McKesson decision builds on the 2003 Federal Circuit decision in a case involving Dayco Products Inc. That case said that patent prosecutors must disclose adverse decisions on co-pending cases in which the claims in the pending applications are substantially similar. Dayco Products Inc. v. Total Containment Inc., 329 F.3d 1358, 1367 (Fed. Cir. 2003). “The circuit clarified what it meant by Dayco,” Pati�o said. “If there’s anything a patent examiner could consider important, it must be disclosed. There’s now going to be no debate about the breadth of disclosure.” The McKesson decision shows how diligent patent lawyers need to be in referencing similar or related patent cases when making an application, said John Wetherell, a San Diego partner in Pillsbury Winthrop Shaw Pittman. “Rather than try to second-guess the standard, it’s better to give the reference to the examiner, so you can’t be accused later of withholding something,” Wetherell said. Attorneys for McKesson referred the matter to the company, which declined to comment.

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