Kingsdown Medical Consultants, Ltd. v. Hollister Inc.
863 F.2d 867 (Fed. Cir. 1988)
Kingsdown filed a patent for a
medical device. They made a bunch of claims, some of which were allowed
by the patent examiner and some of which were rejected.
After they had filed the
patent, Kingsdown found a similar medical device being made by Hollister.
Kingsdown started amending their application to cover Hollister's
Kingsdown went back and forth
with the patent office for a while, amending claims to try to get them
approved (a continuation). They
also started renumbering claims and it started to get confusing.
At a certain point,
Kingsdown made a list for the patent examiner of all the claims that had
been previously approved and all the ones they were amending to try to
get approval for. One of the claims that had been rejected was placed on
the list of claims that had been approved.
The patent examiner didn't
notice that a previously rejected claim was on the list of approved
claims, and so it was never looked at. The patent was granted.
Kingsdown then sued Hollister
As part of discovery,
Hollister noticed that the rejected claim was in the granted patent.
They argued that Kingsdown's patent was thus invalid.
Kingsdown was specifically
asserting the rejected claim against Hollister.
The Trial Court found for
Hollister. Kingsdown appealed.
The Trial Court found that
Kingsdown's conduct met the intent
element of inequitable conduct
because of their gross negligence.
The Court found that
Kingsdown's acts indicate an intent to deceive the USPTO.
The Court found that it was
shady for Kingsdown to try to amend their patent to cover Hollister's
The Court struck down the
entire patent, because inequitable conduct invalidates the entire patent, not just the claim that was
The Appellate Court reversed.
The Appellate Court found
that gross negligence was not enough to justify a finding of intent to
deceive. Instead, the courts must
look at all the evidence that surround the conduct in order to make a
determination of culpability.
The Court found that the
error was just a ministerial error and was hard to catch.
The Court found that the
mistake must be material.
In this case, the claim had
been rejected for indefiniteness,
and in general that's not all that big of a deal. Claims that are
rejected for lack of definiteness can usually be approved by making a few minor changes.
The Court found that there
was nothing improper in Kingsdown trying to cover Hollister's device.