Disparate Times Call for Disparate Measures




Litigation or Prosecution


Dayco Products v. Total Containment, 329 F.3d 1358 (Fed. Cir. 2003)


Judges Mayer, Michel, and Dyk


Failure to cite office action from prosecution of application “A” to PTO in prosecution of related application “B”. 


Court noted “[t]his court has never addressed whether the prior rejection of a substantially similar claim in a copending United States application is material under the reasonable examiner standard.


Remand to District Court to determine intent and possible loss of patent for inequitable conduct

In re Violation of Rule 28(c), 388 F.3d 1383 (Fed. Cir. 2004)


Judges Michel, Clevenger, and Dyk

Inadvertent violation of Federal Rule 28(c) by raising unpermitted issues on 20 of the 23 pages of a cross-appeal reply brief.   


Court noted that “[s]o far as we have been able to determine, this court has not in the past exercised its authority to impose sanctions for ‘inadvertent’ violations of applicable court rules.  Under these circumstances, we conclude that the imposition of sanctions in this case is not appropriate.”


No sanction

McKesson Information Solutions v. Bridge Medical, 487 F.3d 897 (Fed. Cir. 2007)


Judges Clevenger and Bryson


Judge Newman in dissent.

Failure to cite a notice of allowance from application “A” to PTO in related patent application “B” where both “A” and “B” were being prosecuted before the same examiner.


Loss of patent for inequitable conduct

In re Violation of Rule 28(d), M-976, (Fed. Cir. March 29, 2011)


Judges Dyk, Prost, and Moore


Violation of rule 28(d) in briefs submitted to the Federal Circuit. 

Court’s opinion referred to it as a “severe” violation.


$1000 fine


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