Kingsdown Medical Consultants, Ltd. v. Hollister Inc.
Court of Appeals for the Federal Circuit
863 F.2d 867 (1988)
Kingsdown (plaintiff) sued Hollister (defendant) for infringement of the ‘363 patent, which claimed a medical device used to release waste in patients with openings in their abdominal walls. The patent prosecution took several years, and included numerous claims, amendments, prior art references, correspondence and other documents. Finally, Kingsdown reached a point in prosecution where the patent examiner indicated that certain claim language would be allowable, specifically original claim 50. Claim 50 as originally filed was rejected for being indefinite, an error readily corrected through an amendment by Kingsdown’s patent counsel at the time. After this news from the examiner, Kingsdown learned of a Hollister medical device that was believed to infringe the claims. Kingsdown filed a continuation application in an effort to obtain as much allowable subject matter as possible in short order to pursue Hollister. In so doing, the Kingsdown patent attorney submitted a new set of claims to the patent examiner, including a listing of new claims that corresponded to earlier claims deemed allowable by the examiner. However, an error was made, and the patent attorney included rejected claim 50 as originally filed instead of amended claim 50, which was later filed as claim 43, and indicated that it had been allowed. This error escaped everyone and the patent issued. Hollister alleged that the entire patent was invalid for inequitable conduct before the patent office, based on the gross negligence of the patent attorney and the looming threat of the Hollister device. The district court, reasoning that the examiner could have relied on the representation that new claim 43 was amended claim 50, instead of the original rejected claim 50, held the patent invalid. Specifically, the district court held that, because Kingsdown filed amended claims only after reviewing the Hollister accused product, deceptive intent could be inferred. Kingsdown appealed.
Rule of Law
Holding and Reasoning (Markey, J.)
What to do next…
Unlock this case brief with a free (no-commitment) trial membership of Quimbee.
You’ll be in good company: Quimbee is one of the most widely used and trusted sites for law students, serving more than 97,000 law students since 2011. Some law schools—such as Yale, Vanderbilt, Berkeley, and the University of Illinois—even subscribe directly to Quimbee for all their law students. Read our student testimonials.
Learn more about Quimbee’s unique (and proven) approach to achieving great grades at law school.
Quimbee is a company hell-bent on one thing: helping you get an “A” in every course you take in law school, so you can graduate at the top of your class and get a high-paying law job. We’re not just a study aid for law students; we’re the study aid for law students. Read more about Quimbee.
Here's why 168,000 law students have relied on our case briefs:
- Written by law professors and practitioners, not other law students. 13,800 briefs, keyed to 187 casebooks. Top-notch customer support.
- The right amount of information, includes the facts, issues, rule of law, holding and reasoning, and any concurrences and dissents.
- Access in your classes, works on your mobile and tablet. Massive library of related video lessons and high quality multiple-choice questions.
- Easy to use, uniform format for every case brief. Written in plain English, not in legalese. Our briefs summarize and simplify; they don’t just repeat the court’s language.