## Facts

- Bausch & Lomb, Inc. (B&L) acquired U.S. Patent No. 3,761,950 and later sought a reissue, U.S. Patent No. Re. 31,684, covering aspects of X‑Y plotters.
- In the reissue proceeding, B&L added new claims 10–12 aimed at Hewlett‑Packard Company’s (HP) competing plotter products.
- To obtain reissue, B&L submitted affidavits (including from the original patent agent) asserting the original patent had not claimed the full scope available; the district court found the affidavits materially inaccurate.
- HP filed a declaratory judgment action seeking rulings of invalidity, unenforceability, and noninfringement as to the reissue patent.
- The district court held claims 10–12 invalid for noncompliance with the reissue oath requirements of 35 U.S.C. § 251 and 37 C.F.R. § 1.175, found claims 1–9 not invalid on that ground, and deemed the entire patent unenforceable for inequitable conduct.
- B&L appealed and HP cross-appealed.

## Issues

1. Whether newly added reissue claims 10–12 were invalid because the reissue application failed to satisfy the statutory and regulatory reissue oath requirements due to materially inaccurate affidavits.
2. Whether the same defect in the reissue oath and supporting affidavits also invalidated claims 1–9 that were carried over unchanged from the original patent.
3. Whether the conduct surrounding the inaccurate affidavits supported a finding of inequitable conduct rendering the entire reissue patent unenforceable, under the intent and materiality standards clarified in *Kingsdown*.
4. Whether the district judge was required to recuse under 28 U.S.C. § 455 based on the judge’s son’s employment with HP.

## Decision

- Affirmed that claims 10–12 were invalid because the reissue application was defective and failed to meet § 251 and implementing oath requirements.
- Affirmed that claims 1–9, unchanged from the original patent, were not invalidated on the same reissue-oath ground.
- Vacated the finding of inequitable conduct and the resulting determination that all claims were unenforceable, and remanded for reconsideration under *Kingsdown* standards.
- Affirmed denial of recusal, holding the facts did not support a reasonable question as to the trial judge’s impartiality.

## Legal Principles

- A reissue patent’s newly added claims may be held invalid when the reissue is supported by a defective reissue oath, including where supporting affidavits contain material inaccuracies that defeat compliance with 35 U.S.C. § 251 and 37 C.F.R. § 1.175.
- A defect in the reissue oath that undermines newly added reissue claims does not, without more, invalidate claims carried over unchanged from the original patent.
- Inequitable conduct requires proof of materiality and specific intent to deceive; gross negligence alone is insufficient, and intent must be established under the standards set out in *Kingsdown*.
- Recusal under 28 U.S.C. § 455 applies an objective standard; employment of a judge’s family member by a party does not require recusal absent facts showing a reasonable basis to question impartiality.

## Conclusion

The Federal Circuit upheld invalidation of claims added in reissue based on failure to satisfy reissue oath requirements, preserved unchanged original claims from that defect, required reconsideration of inequitable conduct under *Kingsdown*’s intent requirement, and rejected a recusal challenge under § 455.


Hewlett-Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556 (Fed. Cir. 1989)