Wednesday, November 13, 2013

Hewlett-Packard Co. v. Bausch & Lomb Inc. case brief

Hewlett-Packard Co. v. Bausch & Lomb Inc. case brief summary
882 F.2d 1556 (1989)

Appellant patent owner sought review of an order of the United States District Court for the Northern District of California, which declared appellant's patent unenforceable and partially invalid.

Appellant bought a patent from appellee competitor. Believing the claim was too narrow, appellant filed a reissue application, which contained new claims. The original claims of the patent were included in the reissue application. Appellant then charged the competitor with infringement. The competitor countered with a petition for reexamination. The United States Patent and Trademark Office (PTO) upheld the validity of all claims. The competitor then filed an action seeking a declaratory judgment that the patent was unenforceable based on appellant's inequitable conduct in the prosecution of the reissue application. The district court found the application for reissue was defective. After a separate trial on the issue, the court held all patent claims unenforceable.


  • On appeal, the court affirmed in all respects except one; the court held that appellant was improperly found guilty of inequitable conduct before the PTO. 
  • The court applied the wrong legal standard in failing to consider appellant's intent. 
  • The court remanded the case for consideration of whether appellant intended to mislead the PTO.
On appeal, the court affirmed the judgment declaring appellant's patent unenforceable but vacated the finding that appellant was guilty of inequitable conduct before the PTO and that its reissue patent was unenforceable. The court remanded for reconsideration of that issue.

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