Rule 56 was promulgated in 1948 to address inequitable conduct and fraud before the United States Patent Office in response to major Supreme Court decisions in the 1930’s and 1940’s. Further development of rule continued through decisions and amendments into the 1980’s. Judge Markey authored several decisions at the Federal Circuit addressing the standard of intent required to find inequitable conduct in the 1980’s. The impact of these decisions culminated in his Kingsdown Medical Consultants, Ltd v. Hollister, Inc. opinion resulting in a 1992 amendment to Rule 56. This article analyzes the development of Rule 56 and Judge Markey’s influence on the standard of intent.
Jim Carmichael & Cameron Weiffenbach, Inequitable Conduct, Gross Negligence and the Kingsdown Decision, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 18 (2009)