Hewlett-Packard Co. v. Bausch & Lomb Inc.
Court of Appeals for the Federal Circuit
882 F.2d 1556 (1989)
Bausch & Lomb (B&L) (defendant) sought reissue of its '950 patent, fearing it was too broad, adding new narrower claims specifically drawn to target Hewlett-Packard's (HP) (plaintiff) competing X-Y Plotter product; to obtain reissue, B&L submitted a series of affidavits, each offering a different account of why the original patent attorney hadn't claimed the full available scope (inadvertent error, communication difficulties with the inventor, limited exposure to the prototype and inventor disinterest), the first two of which the patent office rejected as insufficient before finally accepting the reissue based on the third. After B&L threatened HP with infringement based on the reissued '684 patent, HP filed a declaratory judgment action arguing invalidity and non-infringement; the district court found the new reissued claims invalid.
Whether an original patent attorney's failure to include additional, narrower dependent claims constitutes the kind of error that justifies reissuing a patent with new claims targeting a specific competitor's product.