Full opinion text
AMENDED ORDER RE AFFIRMATIVE DEFENSE OF INEQUITABLE CONDUCT AGUILAR, District Judge. I. INTRODUCTION. This action went to trial on April 5, 1988. The case involves a suit by plaintiff Hewlett-Packard Company (“HP”) for a judicial declaration that it has not infringed defendant Bausch & Lomb, Inc.’s (“B & L”) United States Reissue Patent No’. 31,684 (the “Yeiser reissue patent”). B & L has counterclaimed for infringement. In support of its position, HP has raised the affirmative defense of inequitable conduct. Specifically, HP contends that B & L committed inequitable conduct before the patent office in procuring the Yeiser reissue patent. This alleged inequitable conduct primarily consisted of the submission of two declarations and two affidavits in support of the reissue application which B & L knew (or absent grossly negligent conduct, should have known) contained blatantly false information. Shortly before trial, HP filed a motion for summary judgment arguing that because the two affidavits submitted by B & L in obtaining the Yeiser reissue patent were false and were essential to the patent examiner’s ruling, the reissue patent is invalid. The motion was granted from the bench on March 18, 1988. The Court ruled that Yeiser reissue. patent claims 10-12 were invalid due to the falsity of the affidavits, but the Court refused at that point to nullify claims 1-9 of the reissue patent which were carried over substantially unchanged from the original and untainted patent application. On that same day, the Court sua sponte asked the parties to brief the issue of whether and under what circumstances a district court could nullify all the claims of a reissue patent in light of egregious misrepresentations contained in materials supporting an application for a reissue patent. After a two week briefing schedule, on April 1, 1988, the Court heard oral argument on the motion for summary judgment as against claims 1-9 of the reissue patent. At the conclusion of the argument, the Court denied the motion for summary judgment finding that there remained a triable issue of material fact. Specifically, there remained a factual question whether B & L intentionally deceived the United States Patent and Trademark Office (“PTO”) or was grossly negligent in seeking and gaining the Yeiser reissue patent. Subsequently, on the morning of the opening day of trial, April 5, 1988, the Court issued a brief order stating its rulings on the various motions raised by the parties and setting forth the schedule for trial. In the order, the Court stated that a fuller explanation of the bases of its rulings would issue at the conclusion of the trial of HP’s affirmative defense of inequitable conduct by B & L in obtaining the Yeiser reissue patent. In the sections that follow, the Court will set forth its findings and analysis in connection with its prior rulings; will describe the legal issues presented by HP’s affirmative defense of inequitable conduct vis-a-vis the reissue application; and will make findings of fact and state conclusions of law with respect to the merits of HP’s assertion of inequitable conduct against B & L. As explained below, the Court will declare unenforceable all remaining claims of the Yeiser reissue patent because of B & L’s inequitable conduct before the PTO. II. HP’S MOTION FOR SUMMARY JUDGMENT BASED ON B & L’S FAILURE TO COMPLY WITH THE “REISSUE OATH OR DECLARATION” REQUIREMENT. (A) Preface: In this motion, HP seeks a judicial declaration that the Yeiser reissue patent is invalid. The alleged basis for invalidity is that B & L made factually incorrect representations to the patent examiner when seeking a reissue of its original patent. Because the representations were incorrect, as proved by later evidence which was submitted to the Court in connection with this motion, HP contends that the representations should be ignored. Absent the representations, B & L cannot be said to have complied with the regulations regarding reissue applications because B & L did not present evidence to the patent examiner explaining why and how the original patent application was flawed. Without such evidence, the patent examiner could not have authorized the reissue application and, therefore, the Yeiser reissue patent is invalid as a matter of law. B & L’s defense to this motion is twofold. First, B & L argues that as a matter of law the nine claims of the original patent which are identical to and not affected by the reissue application should not be nullified. Second, B & L contends that there are material issues of fact regarding the alleged misrepresentations as they affect the three claims added by the reissue patent application. (B) An Overview of the Reissue Process: Reissue is one of four ways that a defective patent may be remedied. The other three ways are (1) by the issuance of a certificate of correction, (2) by disclaimer, and (3) by reexamination. See Manual of Patent Examining Procedure (5th ed. 1983) at 1400-1. The most common grounds for seeking to reissue a patent are (1) claims are too narrow or too broad; (2) the disclosure contains inaccuracies; (3) applicant failed to or incorrectly claimed foreign priority; and (4) applicant failed to make reference to or incorrectly made reference to prior co-pending applications. Id. The framework and procedure for the reissue of patents such as the Yeiser reissue patent in this case is governed by statute. The key patent reissue statute is 35 U.S.C. § 251 which provides in relevant part: Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. The concept employed in the reissue statute is that the inventor takes his patent to the patent examiner for a second look to clarify and amend any deficiencies. See In Re Weiler, 790 F.2d 1576, 1579 (Fed.Cir.1986) (“Congress provided a statutory basis for correction of ‘error’ ”). A clear explanation of this process is provided in the following passage from Bally Mfg. Corp. v. Diamond, 629 F.2d 955, 957 (4th Cir.1980): The reissue process traditionally has provided a mechanism whereby an inventor who, through error and without any deceptive intention, has been granted a defective patent, may obtain a valid patent conforming to the true scope of his invention. Ordinarily, the patentee submits his previously issued patent, 37 CFR § 1.178, and files an affidavit stating the reason he believes it to be wholly or partly invalid, 37 CFR § 1.175. He also is required to file a reissue application containing the entire specification and claims of the original patent, with proposed deletions bracketed and proposed additions underlined, 37 CFR § 1.173. A patent examiner reexamines all claims included in the reissue application as if they were presented in an original application, 37 CFR § 1.176. If he finds the previously issued patent “wholly or partly inoperative or invalid”, 35 USC § 251, the examiner determines whether the applicant is entitled to a patent under the reissue claims. If a reissue is refused, whether because the previously issued patent is entirely valid or because the reissue claims do not describe a patentable invention, the original patent will be returned to the applicant upon his request, 37 CFR § 1.178. Reissue patents are entitled to the same presumption of validity as original patents, [citations omitted] See also 4 Lipscomb’s Walker on Patents (3d ed. 1985) § 14.1. The actual procedure used in reissuing patents is contained in the Code of Federal Regulations. See 37 C.F.R. §§ 1.171-1.179 (July 1987). The current regulations are slightly different than those in effect at the time that B & L made its reissue application. As suggested above in the case of Bally Mfg. Corp., 629 F.2d 955 (4th Cir.1980), in seeking a reissue patent the inventor is basically initiating anew the patent process, starting with his original patent, indicating its errors, and applying to make specific corrections. One aspect of the reissue process that is unique, however, is the inclusion of a reissue oath or declaration by the applicant stating specific details regarding the grounds for seeking a reissue. At the time of B & L’s application, the regulations regarding the oath or declaration read as follows: § 1.175 Reissue oath or declaration. (a) Applicants for reissue, in addition to complying with the requirements of the first sentence of § 1.65, must also file with their applications a statement under oath or declaration as follows: (1) When the applicant verily believes the original patent to be wholly or partly inoperative or invalid, stating such belief and the reasons why. (2) When it is claimed that such patent is so inoperative or invalid “by reason of a defective specification or drawing,” particularly specifying such defects. (3) When it is claimed that such patent is inoperative or invalid “by reason of the patentee claiming more or less than he had the right to claim in the patent,” distinctly specifying the excess or insufficiency in the claims. (4) [Reserved] (5) Particularly specifying the errors relied upon, and how they arose or occurred. (6) Stating that said errors arose “without any deceptive intention” on the part of the applicant. (7) Acknowledging a duty to disclose information applicant is aware of which is material to the examination of the application. (b) Corroborating affidavits or declarations of others may be filed and the examiner may, in any ease, require additional information or affidavits or declarations concerning the application for reissue and its object. (C) The Legal Authority to Invalidate a Reissue Patent For Failure to Comply With Regulatory Standards: HP’s argument in this motion is that the Yeiser reissue patent is invalid because it was based on factual misstatements or misrepresentations made in the statements provided in satisfaction of 37 C.F.R. § 1.175. The critical statements provided to the patent examiner in support of the reissue application were two affidavits of the original patent agent, Lawrence Fleming. The patent examiner relied on these affidavits to reissue the patent. However, HP now contends that discovery has disclosed that all material statements made in the Fleming affidavits were erroneous. Absent these factual misstatements, B & L had nothing of substance to report to the patent examiner. Without evidence explaining how the asserted error arose or occurred, B & L failed to satisfy the reissue oath regulations. HP succinctly stated this logic in one section of its moving brief: To decide the present motion, this Court need investigate only the limited issue of whether the Fleming affidavits misstated material facts as to how the error arose or occurred. An affirmative finding on that issue means that there were no facts in the PTO record in support of the defective reissue Declaration upon which the examiner could have made the mandated determination that the Yeiser reissue application was proper. Consequently, under the applicable rule of law, the PTO was without authority to grant the reissue, and the Yeiser reissue patent is void. HP Moving Brief at 4 (emphasis in original). B & L counters this argument with several contentions of its own. First, B & L asserts that there is no precedential support for judicial nullification of a reissue patent for lack of satisfaction of the oath/declaration requirement. This assertion is wrong, as demonstrated by the eases cited by HP. In Application of Wit-try, 489 F.2d 1299,1303 (C.C.P.A.1974), the predecessor of the Federal Circuit affirmed the denial of a reissue patent on the ground of “insufficiency of the reissue declarations.” HP also cites five other cases in support of the proposition that a court may declare a reissue patent void for failure to comply with the' requirements attendant to the reissue statute or regulations. Union Switch & Signal Co. v. Louisville Frog, Switch & Signal Co., 73 F.2d 550 (6th Cir.1934); Firestone Tire & Rubber Co. v. United, States Rubber Co:, 79 F.2d 948 (6th Cir.1935), cert. denied, 298 U.S. 679, 56 S.Ct. 945, 56 S.Ct. 946, 80 L.Ed. 1399 (1936); General Radio Co. v. Allen B. DuMont Laboratories, Inc., 129 F.2d 608 (3d Cir.1942), cert. denied, 317 U.S. 654, 63 S.Ct. 50, 87 L.Ed. 526 (1942); Dill Mfg. Co. v. J. W. Speaker Corp., 83 F.Supp. 21 (E.D.Wis.1949), aff'd., 179 F.2d 278 (7th Cir.), cert. denied, 340 U.S. 818, 71 S.Ct. 48, 95 L.Ed. 601 (1950). These cases are not particularly recent, but they do support HP’s position. Aside from the litany of cases discussing the particular problem, it makes sense that a court should be able to invalidate a reissue patent if it was improvidently granted. This is certainly true when an original patent is found to be procured as a result of fraud or inequitable conduct, or when the patent was issued despite a failure to satisfy the statutory requirements, such as non-obviousness. See, e.g., Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); State Industries, Inc. v. Rheem Mfg. Co., 769 F.2d 762, 764 (Fed.Cir.1985). The same must be true with respect to reissue patents. Inequitable conduct implicating a material aspect of a reissue application is grounds for nullification of a patent. See, e.g., Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 54 S.Ct. 146, 78 L.Ed. 293 (1933); State Industries, Inc. v. Rheem Mfg. Co., 769 F.2d 762, 764 (Fed.Cir.1985). Similarly, if the standards of the statute or implementing regulations are not met, “section 251 stands as a statutory bar to reissuance of claims, just as sections 102 and 103 might stand as a bar to the issuance of claims.” Digital Equipment Corp. v. Diamond, 653 F.2d 701, 710 (1st Cir.1981). On review, a district court must have the authority to enforce the statutory bar of § 251 in the same degree as it enforces the bars to patent validity articulated in § 102 (dealing with novelty and loss of right to patent) and § 103 (dealing with non-obviousness of subject matter). Thus, this Court has the authority to review a reissue patent for purposes of determining its validity in light of alleged deficiencies or improprieties in its procurement. The next question is the character of the district court’s review of the validity of the reissue patent. As quoted earlier, HP’s argument is that once the Court finds that Mr. Fleming’s affidavits are factually erroneous, and concludes that there was no basis in the record before the patent examiner for granting the reissue application, the Yeiser reissue patent should be declared invalid. B & L offers a clever rejoinder. B & L contends that the very cases cited by HP establish that the district court must determine on the merits whether there was reissuable error. In other words, even if the reissue application itself was deficient, are there facts going to show that there was an error that formed a legitimate basis for a reissue application? In support of its assertion, B & L relies on a passage from the Third Circuit’s opinion in General Radio Co.: Whether the error relied upon in support of an application for reissue was due to inadvertence, accident or mistake is of course a question of fact for determination by the commissioner, [footnote omitted] By granting the reissue patent the commissioner must be deemed to have found the fact in favor of the applicant. However, where there is an entire absence of evidence, it is the duty of the court to review and correct the error. 129 F.2d at 612, citing Union Switch, 73 F.2d .550 (6th Cir.1934). Upon first glance, this quotation seems to support B & L’s position that even if the Fleming affidavits are eliminated as erroneous or false, the Court still must make an independent determination now of whether there were grounds for a reissue error under 35 U.S.C. § 251. However, B & L is incorrect for reasons that it itself has pointed out. B & L has argued that all of the cases cited by HP, including General Radio, involve “reissue oaths or declarations [that] literally were bald assertions of reissuable ‘error.’ ” B & L Opposition Brief at 16. (emphasis in original). In contrast, the patent examiner in this case did not have “an entire absence of evidence” to determine whether a reissue error existed — he had the affidavits of Mr. Fleming which were not devoid of specifics. Indeed, B & L vociferously argues this point late in its brief. See Opposition Brief at 28 (section entitled “The Fleming Affidavits Would Have Been Adequate With Far Less Detail”). Thus, unlike the oath in General Radio, the affidavits in this case did contain some specifics and the above language in General Radio is not applicable to this case. In addition, the court in General Radio was reviewing a reissue patent that had been granted despite “an entire absence of evidence.” 129 F.2d at 612. Yet by granting the reissue, “the commissioner must be deemed to have found the facts in favor of the applicant.” Id. In such circumstances, the court stated that it had the duty of attempting to ascertain what those facts were that presumably supported the applicant and formed the basis of the reissue approval. In essence, this is an expression of deference to the Commissioner of Patents and Trademarks, i.e., the court will not strike down a reissue patent until it has scrutinized the evidentiary basis for the patent examiner’s decision. In this case, there is no mystery about the nature of the evidence that formed the basis of the patent examiner’s decision. It is clear that Mr. Fleming’s affidavits were crucial evidence upon which the patent examiner relied in making his determination. In reviewing the reissue patent, a court need only consider the evidence that was before the patent examiner. In this case, that evidence consists primarily of Fleming’s affidavits. Hence, B & L’s reliance on General Radio is misplaced, for the decision' squarely supports HP’s position. Aside from its'case-law argument, B & L offers one other point of resistance to HP’s logic. B & L contends the cases cited by HP are distinguishable from and their logic inapplicable to this case because none of the cases involve a situation wherein the reissue oaths or declarations appeared adequate on their face. Although not spelled out clearly, B & L appears to argue that once a prima facie case of a valid oath is established, then the patent examiner had the authority to grant the reissue application. According to B & L, in litigation contesting the validity of the reissue patent, the challenger has the burden of showing that on the true state of facts, a reissuable error did not exist. Thus, HP would have the burden here of establishing that as a matter of fact there were no grounds for the patent examiner’s conclusion to grant the reissue patent. Despite its sophistication, there are two major problems with B & L’s argument. First, there is no case law or clear statutory law supporting this position. This silence speaks for itself. Second, B & L has confused the allocation of the burden of proof relative to the issue of invalidity. As the regulations make clear and as expressed in the cases, the applicant “who wishes to obtain the benefits of the reissue statute must make a specific showing of the circumstances” that led to the error. General Radio, 129 F.2d at 612; see also 35 G.F.R. § 1.171 (“An application for reissue must ... comply with the requirements of the rules relating to reissue applications.”) The burden in the first instance is on the applicant properly to obtain a reissue patent, the same as it is was on the applicant in originally procuring a patent. Once a patent is issued, the burden is on the challenger to establish invalidity by “clear and convincing evidence.” Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1555 (Fed.Cir.1985); 35 U.S.C. § 282. The same standard applies with respect to reissue patents except the standard for showing invalidity is heightened by the quantum of weight given to a second examination and approval by the PTO. See Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139 (Fed.Cir.1985). In a reissue case as in any patent case, it is not necessary for the party seeking to prove invalidity to revisit the entire patent application process and show that there is no way on earth that a patent could have issued. Rather, it is enough to show that with respect to the specific patent, or reissue patent, any one statutory requirement has not been satisfied. In the case of a patent, for example, invalidity naturally flows from a showing that the patented invention was obvious, or was previously disclosed. To make this determination, the district court would examine all the information presented to the patent examiner plus any additional information that has come to light on the subject of obviousness. There is no need to unearth and examine all the other potential grounds for invalidity. Similarly, in this case, to demonstrate invalidity it is enough for HP to show, by clear and convincing evidence, that B & L failed to satisfy the legal oath or declaration requirement. The Court can make the determination whether HP is correct by reviewing the evidence presented to the patent examiner. B & L has the burden of establishing grounds, upon which an error could be found as the cause of its failure to frame properly its original patent application. See In Re Weiler, 790 F.2d 1576, 1582-83 (Fed.Cir.1986). To sum up, B & L has the burden of showing reissuable error. In view of the patent examiner’s finding of reissuable error, the burden is on HP to show that the patent examiner was wrong. However, that is not the end of the process. B & L is correct that normally it is not enough to simply look at the affidavits, find them lacking, and declare the reissue patent invalid. B & L must be given an opportunity to prove reissuable error by other evidence presented to the PTO during the original application. This is little solace to B & L because no other evidence was presented to the patent examiner showing reissuable error. (D) Was B & L’s Reissue Application Obtained Improperly? The Yeiser reissue application process is discussed in more elaborate detail below in connection with the topic of inequitable conduct. For purposes of HP’s motion, only one issue is relevant: were the oaths or affidavits submitted by B & L to the PTO in support of the reissue application insufficient or false? In support of its reissue application, on November 15, 1982, B & L submitted the declaration of its. Vice President, George More. The More declaration stated that the defect in the original patent application was a failure to include claims dependent on claim 1. The alleged basis for the error was simply “oversight” by Mr. Yeiser or his attorney. More provided no other explanation for the omission. Quite properly, the patent examiner rejected the More declaration as insufficient because it failed “to specify the errors relied upon” or to “specify how the error arose or occurred.” Exh. 44, PX 19, Tab 7. In particular, the patent examiner stated: The declaration is ... insufficient because it does not specify how the error arose or occurred. The statement that the alleged errors occurred or arose because of oversight on the part of the inventor or his attorney does not specify in detail how and why such an oversight occurred. A declaration from the original attorney may be in order. Thus, the patent examiner clearly and properly stated that the declaration of Mr. More submitted to satisfy the oath requirement was insufficient under 37 C.F.R. § 1.175(a)(5). In response to patent examiner’s rejection, on September 14, 1983, B & L submitted the affidavit of Lawrence Fleming, the patent agent responsible for procuring the original patent. Relevant portions of the first Fleming affidavit follow: 3. During the preparation and prosecution of [the original] Patent Application ..., his [Fleming’s] contacts and ability to communicate with the inventor, Mr. Yeiser, were significantly limited by Mr. Yeiser’s activities ... His contacts with Mr. Yeiser during the prosecution of the application were at best infrequent. 4. The only guidance given the undersigned by Mr. Yeiser during the preparation and prosecution of [the original Yeiser application] was a memorandum dated July 7, 1970____ [T]he memorandum is silent as to what scope and breadth of claims should or could be obtained. 5. His only contact with L.D.C. Inc, [the assignee of the application and Yeiser’s employer], was Mr. R.J. Tarantino, its President, ... but ... Mr. Tarantino [did not provide] any substantive help or guidance to him during the prosecution of the patent application ... 6. The aforesaid business and personal activities of the inventor, Mr. Yeiser, and his assignee worked, inadvertently, to substantially cut off intercommunication with the undersigned. Had further communications and guidance been received, it is his belief that claims which further define and distinguish the invention from the prior art could have been drafted and allowed, [emphasis added] After consideration of B & L’s second submission, the patent examiner again properly rejected B & L’s application. Again, the patent examiner found that B & L had not specified “a reissuable error.” Exh. 44, PX 19, Tab 17. For purposes of this motion, the crucial finding, however, was that: The reissue oath or declaration filed with this application is objected to because it fails to particularly specify how the errors relied upon arose or occurred, as required by 37 CFR § 1.175(a)(5). The declaration states the errors occurred because of oversight on the part of the inventor or his attorney in connection with the preparation and prosecution of the application. The declaration is considered deficient because it does not particularly specify how the errors arose. How and when did the errors arise? For example, who determined the scope of the original claims to be submitted with the patent application? Who determined the final scope of the patent claims? When were these determinations performed? The declaration is also considered deficient as to how and when the errors were discovered. For example, by whom and when was it determined that an error had occurred, (emphasis added) It is clear that the patent examiner had a valid and proper basis for rejecting the first Fleming affidavit. Under 37 C.F.R. § 1.175(a)(5), Fleming had not explained how the error arose. Absent a specific explanation, the affidavit was insufficient as a matter of law. On November 22, 1983, one of B & L’s attorneys, Howard Robbins, interviewed the patent examiner to clarify the basis for the rejection of the first Fleming affidavit. Subsequently, on March 27, 1984, B & L submitted the second (“supplemental”) affidavit of Lawrence Fleming. The relevant text of the affidavit stated: 4. The inventor, Mr. Yeiser, had made one crude model of the invention and this model was made available for him to review, on only one occasion for about two hours, to effect disclosure of the invention. 5. The scope of the claims for U.S. Patent No. 3,761,950 was determined solely by him, based upon this brief disclosure and his knowledge and experience as an engineer and patent practitioner. In making this determination concerning the scope of the claims no discussions were had with Mr. Yeiser as a result of the events explained in his Affidavit of September 14, 1983. 6.He was well acquainted with Mr. Yeiser at the time the application for U.S. Patent No. 3,761,950 was written and prosecuted, having previously drafted and prosecuted several patent applications for inventions by Mr. Yeiser. Based upon this close acquaintanceship, he believes Mr. Yeiser was not cognizant of the significance of several aspects of the invention embodied in U.S. Patent No. 3,761,950, because only one crude model existed from which all aspects of the invention could not be appreciated, and because Mr. Yeiser, having just sold his business, no longer had a commercial interest in plotters and ... was left to and did himself determine what scope and breath [sic] of claims should and could be obtained, (emphasis added) Finally, on April 17, 1984, in response to B & L’s final submission, the patent examiner withdrew his prior objections to the application for reissue of the ’950 patent. The patent examiner stated that the “original Declaration has been reconsidered together with the Supplemental Fleming Affidavit. They are [now] considered sufficient Declaration under 37 CFR [§] 1.175.” Exh. 44, PX 19, Tab 26. Thus, it was the second Fleming affidavit which overcame the patent examiner’s objections and was found to satisfy the oath requirement of the regulations. The question raised here is whether that affidavit was accurate. (E) The Truth Regarding Fleming’s Contacts With Yeiser and the Other Points in Support ofReissuable Error Raised in the Fleming Affidavits: HP points out several discrepancies in Fleming’s affidavits which essentially void them as a basis for the patent examiner’s finding of reissuable error. HP’s premise, which is amply supported by the facts, is that these affidavits were the keys to the grant of the reissue patent. There is no question that these affidavits secured the reissue patent for B & L. Thus, if HP can refute the Fleming affidavits, in particular the second one, B & L will be left without reissue claims because the patent examiner had no other basis to grant a reissue patent. The four main points made by HP are that: (1) Fleming had numerous contacts with Yeiser during the pendency of the reissue application; (2) Yeiser was aware of the importance of the “friction drive” and provided material help and guidance in formulating the scope of the reissue claims; (3) LDC executive Tarantino was consulted on numerous occasions during the pendency of the application; and (4) Yeiser spent a significant amount of time during the critical period in personally developing the commercial version of his device. HP has obtained Fleming’s notebooks kept during the time period in question. Although ostensibly undecipherable to this Court’s eye, the parties agree that these records show that Fleming and Yeiser met in person, spoke on the phone, or exchanged correspondence sixty seven (67) times during the period of preparation and prosecution of the original patent application. B & L does not deny these contacts. This revelation destroys Fleming’s claim in his affidavit that he and Yeiser, the inventor, had limited contacts during the creation of the patent application. In addition, there are several pieces of evidence showing that Yeiser and Fleming had discussions about the patent application beyond the July 7, 1970 memorandum which the Fleming affidavit reported to be the “only guidance” given by Yeiser. Fleming and Yeiser spoke on the phone (PX 368, Fleming deposition at 356-57), Yeiser read the patent application in Fleming’s presence (PX 368, Fleming deposition at 453), and the two men discussed prior art as well as claim strategies prior to prosecution of the original patent (PX 368, Fleming deposition at 244). All these contacts contradict and destroy the validity of Fleming’s statement regarding his contacts with Yeiser and his wholly unaided hand in fashioning the scope of the claims. Also, in contradiction of both of his affidavits but especially the first, Fleming had substantial contacts with R.J. Tarantino, the President of LDC, during the relevant time period. Once again, LDC employed Yeiser and was the assignee of the application. Fleming’s notebooks show fifty three (53) contacts between himself and Tarantino in the relevant time period. Thus, rather than having his communications with Tarantino and Yeiser “cut off” as he suggests in his first affidavit, Fleming had substantial and consistent contacts with both individuals. In short, Fleming’s first affidavit is not only technically deficient, but substantively inaccurate. Fleming’s second and decisive affidavit is no more accurate than the first submission to the PTO. For example, Fleming stated that Yeiser had only a crude model upon which to analyze his patent and therefore made unintentional errors in preparing his original patent application. However, deposition testimony establishes that the Yeiser plotter which was the subject of the patent was delivered to potential customers for testing some three months before the patent application was filed (PX 374, McKaughan deposition at 12, 14, 22). An operative prototype of the plotter was exhibited at a trade show the month of the filing of the patent application (PX 383, West deposition 125-26). The patent file history itself contains reference to existing commercial models. The fact that not only a model, but an actual working device was available, in addition to the contacts between Fleming, Yeiser, and Tarantino, belies the second affidavit’s assertion that Fleming himself determined the scope of the claims. In his deposition, Fleming stated that most laymen are not interested and are not able to read patent claims. However, it is Fleming's practice to ask inventors what they consider significant about their invention — a lay person’s approach to the issue of what should be included in the claims. Fleming stated: I did ask Yeiser, as I always asked inventors, which features and elements they consider the more significant and which the less significant and which one they feel should be covered in the claims, and to indicate some sort of a priority list or list of relative importance or significance, which he did. (emphasis added) See PX 368, Deposition of Lawrence Fleming at 634. This admission, in conjunction with other deposition testimony and other facts highlighted by HP, makes it clear that Fleming’s second affidavit was flatly wrong in stating that Yeiser had no role in formulating the patent application. Yeiser was aware that “[o]ne of the main advantages of this type of X-Y is that the friction drive permits the use of easily available unperforated graph paper in a moving chart X-Y.” PX 19, Tab 14, July 7, 1970 Memorandum from Jack Yeiser to Larry Fleming. Furthermore, Yeiser aggressively played a role in developing the plotter for commercial use, see PX 383 Deposition of John L. West, and had repeated contact with Fleming during the preparation and prosecution of the original patent application. Consequently, it is clear that Fleming’s second affidavit, like his first, is riddled with errors and misstatements, providing no basis to support a showing of reissuable error. (E) B & L’s Counter Argument: B & L raises ten different arguments in support of the position that there remain triable issues of material fact regarding the validity and accuracy of the Fleming affidavits. None of the arguments is convincing enough to warrant discussion. B & L is groping for straws suggesting that Fleming misunderstood the situation or that despite the numerous contacts and other evidence, Yeiser really had nothing or virtually nothing to do with the original patent application. No reasonable jury could find in B & L’s favor on these arguments. See Anderson v. Liberty Lobby, 477 U.S. 242, 255, 106 S.Ct. 2505, 2514, 91 L.Ed.2d 202 (1986). Consequently, the Court rejects them all. Finally, B & L argues that the Fleming affidavits were sufficient to show reissuable error even without the erroneous information. This is a throw-away argument, because it is clear that the patent examiner found at least the first affidavit itself inadequate for the task of showing error. The second affidavit merely bolstered the same arguments for reissuable error that were present in the first affidavit. All of these bases were erroneous as explained above. To wit, contrary to paragraph 4 of the second affidavit, Yeiser had more than a crude model, on one occasion, for two hours, to effect disclosure of the invention. Contrary to paragraph 5, Fleming did not alone determine the scope of claims of the patent based upon the “brief disclosure” of two hours referenced in paragraph 4. Moreover, Fleming has since admitted that he had discussions with Yeiser in flat contradiction to his statement in paragraph 5. Finally, the last paragraph of the second Fleming affidavit, paragraph 6, merely repeats the false information described earlier and adds the erroneous statement that Yeiser “no longer had a commercial interest in plotters and was not focussing on such matters.” In fact, the West deposition testimony establishes that Yeiser was the chief engineer responsible for overseeing the commercial development of the plotter, that Yeiser had an active hand in developing the plotter for commercial purposes, and that no development of the product took place after Yeiser left Florida in 1974. (G) Summary of the Factual Issues Re HP’s Summary Judgment Motion: HP has established clearly that the Fleming affidavits which were the basis for the grant of the reissue patent are replete with false or erroneous statements. B & L has raised no triable issue of fact which contradicts HP’s showing. Further, B & L has not and can not point to any evidence supporting its position that the reissue application was properly granted because of reissuable error in the original patent application. Accordingly, the Court grants HP’s motion for summary judgment and declares the Yeiser reissue patent invalid. III. THE EFFECT OF GRANTING SUMMARY JUDGMENT DECLARING THE YEISER REISSUE PATENT INVALID. Having concluded that the reissue patent must be declared invalid, there remains the question of the effect of such a ruling. The reissue patent contains 12 claims, but claims 1-9 are identical to the claims in the original patent. Only claims 10-12 were added through the reissue process. HP is charged with infringing five claims: claims 1, 2, and 10-12. HP contends that once the reissue patent is invalidated, all claims are extinguished. B & L argues in response that, at worst, only claims 10-12 should be extinguished with the nullification of the reissue patent and claims 1-9 should remain. When a reissue patent is denied, under the regulations “the original patent will be returned to [the] applicant upon his request.” 35 C.F.R. § 1.179. On the other hand, if the reissue patent is granted, the original patent is surrendered. The statute spells out the effect of reissue as follows: The surrender of the original patent shall take effect upon the issue of the reissue patent, and every reissued patent shall have the same effect and operation in law ... as if the same had been originally granted in such amended form ... to the extent that [the reissue patent’s] claims are identical to the original patent, [it] shall constitute a continuation thereof and have effect continuously from the date of the original patent. 35 U.S.C. § 252. Thus, in this case the original patent has ceased to exist. Although part of the original patent not affected in the reissue process, claims 1-9 only exist as part of the Yeiser reissue patent. If the reissue patent is entirely voided as HP contends, then those claims also will cease to exist. The effect would be particularly draconian for B & L, for its reissue application never questioned the correctness of claims 1-9. In addressing the status of the “carryover” original nine claims, the parties offer conflicting legal authority. Arguing that all twelve claims should be nullified, HP offers, inter alia, the cases of Riley v. Broadway-Hale Stores, Inc., 114 F.Supp. 884 (S.D.Cal.1953), aff'd, 217 F.2d 530 (9th Cir.1954), and General Radio Co. v. Allen B. Dumont Laboratories, Inc., 129 F.2d 608 (3d Cir.1942), cert. denied, 317 U.S. 654, 63 S.Ct. 50, 87 L.Ed. 526 (1942). B & L counters seeking the preservation of the original nine claims citing the Supreme Court case of Gage v. Herring, 107 U.S. 640, 2 S.Ct. 819, 27 L.Ed. 601 (1883), and the opinion of Judge Learned Hand in Foxboro Co. v. Taylor Instrument Companies, 157 F.2d 226 (2d Cir.1946), cert. denied, 329 U.S. 800, 67 S.Ct. 494, 91 L.Ed. 684. The most interesting aspect of the legal analysis is the apparent conflict or inconsistency among three Supreme Court cases decided at the end of the Nineteenth Century. In Gage v. Herring, 107 U.S. 640, 2 S.Ct. 819, 27 L.Ed. 601 (1883), the Supreme Court clearly expressed the view that the invalidity of claims added by reissue does not “impair the validity of the original claim which is repeated and separately stated in the reissued patent.” Id. at 646, 2 S.Ct. at 824. Subsequently, in the case of Eby v. King, 158 U.S. 366, 15 S.Ct. 972, 39 L.Ed. 1018 (1895), the Supreme Court revisited the issue and, although citing Gage, ignored the ruling of Gage, treating the question as one of first impression. As phrased in Eby, the issue is the effect of the surrender of the reissue patent and whether a patentee wagers all or nothing with his original claims when he seeks a reissue patent. The Court in Eby merely raises the question and then deliberately avoids resolving it by deciding the ease on a different ground. Two years later, in Allen v. Culp, 166 U.S. 501, 17 S.Ct. 644, 41 L.Ed. 1093 (1897), the Court confirmed that Eby had raised but not answered the question “[w]hether, if the reissue be void, the patentee may fall back on his original patent.” Id. at 505, 17 S.Ct. at 645. Stating that the question “has never been decided by this court,” id., the Court in Allen then offered the suggestion that a patent surrendered after the grant of a reissue “might be inoperative and invalid as against certain persons who pirated the underlying principle of the patent, and avoided infringing the exact language of the claims, and yet be perfectly valid as against others, who were making machines clearly covered by their language.” Id. As in Eby, the Court in Allen ignored the ruling in Gage. Indeed, Gage is not even cited in the Allen opinion. The analytical question posed by these three cases relates to the proper approach to the carryover claims. Eby and Allen suggest that in light of invalidated reissue claims, the carryover claims should be examined as part of a surrendered patent. Gage suggests that carryover claims should be examined as part of the reissue patent, notwithstanding the invalidity of the reissue claims. The statutes and regulations support the Gage analysis. To begin with, 35 U.S.C. § 252 evinces the intent that the “surrender” of the original patent acts to extinguish that patent and replace it with an amended edition. The reissued patent constitutes a “continuation” of the original and has “effect continuously from the date of the original patent.” It would be a redundancy to permit the original patent to continue to exist because it has been completely replaced by the reissue. Furthermore, the timing prescribed in the statute is such that the surrender takes effect only “upon the issue of the reissued patent.” In essence, the timing avoids creating an interference because it mandates surrender of the old only upon issuance of the new so that two patents covering the same invention do not exist simultaneously. The foregoing assessment of § 252 is consistent with the pertinent PTO regulations on reissue procedures. Under the relevant regulations, the denial of a reissue application does not affect the original patent claims. Hence, under 37 C.F.R. § 1.178 if a reissue application is refused, “the original patent will be returned to [the] applicant upon his request.” By analogy, when a district court strikes down a reissue patent after the reissue application has been granted, those claims that are carried over from the original patent which were not implicated in the reissue application should remain valid despite the surrender and extinction of the original patent. While analytically it may appear odd to retain claims without a valid patent, the anomaly is merely one of semantics which Congress itself has adopted. In' 35 U.S.C. § 253, Congress provides that “[wjhenever, without any deceptive intention, a claim of a patent is invalid the remaining claims shall not thereby rendered invalid.” A similar provision allows for the maintenance of infringement suits based on such remaining claims. Thus Congress, like the Court in Gage, has chosen to assess carryover claims in the context of problematic reissue patents in terms of the effect of the invalidated claims. There is no statutory support for Eby and Allen’s resurrection of the surrendered patent. A close examination of the case law confirms this assessment. Although the cases cited above and argued by HP do have some punch, the Court concludes that the proper result here is that the original patent claims should remain valid because the reissue application only added or amended claims 10-12. Beyond the Supreme Court’s decision in Gage v. Herring, 107 U.S. 640, 646, 2 S.Ct. 819, 824, 27 L.Ed. 601 (1883) (“The invalidity of the new claim in the reissue does not indeed impair the validity of the original claim which is repeated and separately stated in the reissued patent.”), the most potent precedent is Foxboro Co. v. Taylor Instrument Cos., 157 F.2d 226 (2d Cir.1946), cert. denied, 329 U.S. 800, 67 S.Ct. 494, 91 L.Ed. 684. One particular passage from Judge Learned Hand’s ruling in Foxboro is particularly relevant: All these [claims] were in the original patent in substantially the same form that they appear when reissued; and the same indeed applies to all the first sixteen claims of the reissued patent. As to these we need not consider whether Mason showed adequate excuse for any reissue whatever, because, even though he did not, the surrender of the original patent, resulting from the acceptance of the reissue, did not invalidate any claims which he carried over into the reissue. For a time this was in some doubt [citing Eby v. King ], but the amendment to [35 U.S.C. § 252] has set the question at rest. 157 F.2d at 228. Hence, the surrender of the original patent did not invalidate the claims which were carried over by B & L into the reissue patent application. The patent statutes, the regulations, and the more persuasive case law all point to the conclusion that the original patent claims which B & L carried over without substantial amendment or alteration in the reissue application should not be affected by the Court’s rejection of the affidavits which were the necessary predicate for approval of the reissue application. Good cause appearing therefor, the Yeiser reissue patent claims 10-12 are declared invalid. The carry-over claims 1-9 from the original patent remain valid. IV. TRIAL ON THE ISSUE OF INEQUITABLE CONDUCT. (A) Introduction: Originally, the trial in this case was to begin with B & L’s presentation of its case for infringement of the Yeiser reissue patent by HP. In view of the Court’s ruling that claims 10-12 of the Yeiser reissue patent are invalid, B & L was prepared to proceed in enforcing the remaining nine claims of its reissue patent. However, under 35 U.S.C. § 288, B & L could only enforce those nine claims if the other claims were nullified not because of any “deceptive intention.” The evidence presented in HP’s motion for summary judgment raised a serious question whether the entire reissue patent was procured with a fraudulent intent or in such a manner as to have constituted inequitable conduct before the PTO. Consequently, the Court changed the order of the presentation of the case, directing HP to initiate the trial with the presentation of its affirmative defense of inequitable conduct. (B) The Applicable Legal Principles: The doctrine of inequitable conduct “derived from the doctrine of unclean hands and is purely equitable in nature.” Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed Cir.1987), citing Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 65 S.Ct. 993, 89 L.Ed. 1381 (1945). Although it should not be a “magical incantation to be asserted against every patentee,” FMC Corporation v. Manitowoc Co., Inc., 835 F.2d 1411, 1415 (Fed.Cir.1987), the inequitable conduct defense does play a significant role in preserving the integrity of the patent application process. Due to the predominantly ex parte nature of PTO proceedings, patent examiners must be able to rely on patent attorneys’ candor and good faith in prosecuting patents. The oath or affidavit requirement of the reissue application process serves to underscore this reliance. Inequitable conduct is a broader concept than common law fraud, encompassing the “failure to disclose material information, or submission of false material information, with an intent to mislead.” J.P. Stevens & Co., Inc. v. Lex Tex Ltd., Inc., 747 F.2d 1553, 1559 (Fed.Cir.1984), cert. denied, 474 U.S. 822, 106 S.Ct. 73, 88 L.Ed.2d 60 (1985). In order to prove inequitable conduct,. a party must establish by clear and convincing evidence a threshold degree of materiality of the false or undisclosed evidence. Id. Although four distinct standards are available to test materiality, the Federal Circuit has expressed a clear preference for PTO Rule 1.56 as the best starting point for analysis. See id.; 37 C.F.R. § 1.56 (1987). The test is whether “there is a substantial likelihood that a reasonable examiner would have considered the omitted reference or false information important in deciding whether to allow the application to issue as a patent.” J.P. Stevens, 747 F.2d at 1559; see also Gardco Mfg., Inc., v. Herst Lighting Co., 820 F.2d 1209, 1214 (Fed.Cir.1987). A finding that material information has been withheld or falsely presented to an examiner in itself does not establish inequitable conduct. “To be guilty of inequitable conduct, one must have intended to act inequitably.” FMC Corp., 835 F.2d at 1415. Proof of intent may be made by indirect evidence. J.P. Stevens, 747 F.2d at 1560; Hycor Corp. v. The Schlueter Co., 740.F.2d 1529, 1539 (Fed.Cir.1984). In other words, inequitable intent may be inferred from actions the natural consequence of which would be to mislead or misinform the PTO. In J.P. Stevens Co., Inc. v. Lex Tex Ltd., Inc., 747 F.2d 1553 (Fed.Cir.1984), the court provided significant guidance on the principles relating to inequitable conduct. The case involved the yarn treating industry and, in particular, patents useful in producing desirable qualities in yarn. The court found that certain omissions by the applicants were highly material. Moreover, ah though there was no deliberate scheming, “there was clearly reckless or grossly negligent activity.” Id. at 1567. Balancing materiality and intent, the court was “compelled to conclude that ‘inequitable conduct’ occurred.” Id. The important analytical point evinced in J.P. Stevens is that, when coupled with a high degree of materiality, gross negíigénce is sufficient to establish inequitable conduct. The court ruled that gross negligence is shown “when the actor, judged as a reasonable person in his position, should have known of the materiality of a withheld reference.” Id. at 1560 (citations omitted). However, simple negligence, oversight, or an error in judgment made in good faith is not sufficient to show gross negligence. Id.; Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1383 (Fed. Cir.1983). In a case decided after J.P. Stevens, the author of the decision, Chief Judge Mar-key, was at pains to point out that a finding of gross negligence alone does not mandate a finding of inequitable conduct. In FMC Corp. v. Manitowoc Co., Inc., 835 F.2d 1411 (Fed.Cir.1987), writing for the panel, Chief Judge Markey noted that in J.P. Stevens no evidence was adduced to offset gross negligence by showing subjective good faith. 835 F.2d at 1415-16 n. 9. The court further observed that district courts must heed the reality that intent is a fact question and that in the face of an assertion of inequitable conduct, an objective gross negligence standard should not be applied harshly. Specifically, a patentee must be afforded an opportunity to testify as to his subjective good faith: [A]n applicant who knew or should have known of the art or information, and of its materiality, is not automatically precluded thereby from an effort to convince the fact finder that the failure to disclose was nonetheless not due to an intent to mislead the PTO; i.e., that, in light of all the circumstances of the case, an inference of intent to mislead is not warranted. 835 F.2d at 1416 (footnote omitted). Taken together, the decisions in J.P. Stevens, FMC Corp., and KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571 (Fed.Cir.1985), suggest that the proper approach to inequitable conduct entails a balancing of materiality and intent. No single factor or combination of factors is dispositive. Instead, even in the face of objectively damnable gross negligence or recklessness, the patentee must be provided an opportunity to raise a counter defense of subjective good faith. It is then up to the finder of fact to assess credibility in light of the evidence. The Federal Circuit does concede, however, that in a case where materiality is high and gross negligence is apparent, “mere denial of intent to mislead (which would defeat every effort to establish inequitable conduct) will not suffice.” FMC Corp., 835 F.2d at 1416. (C) The Potential Effect of Inequitable Conduct on the Carryover Nine Claims of the Yeiser Reissue Patent: B & L properly concedes that the allegation that it committed inequitable conduct before the PTO raises a direct challenge to the original nine claims of the Yeiser patent. “Once a court concludes that inequitable conduct occurred, all the claims— not just the particular claims to which the inequitable conduct is directly connected— are unenforceable.” J.P. Stevens, 747 F.2d at 1561 (citations omitted). This is no less true in the instance of a reissue patent. An example of the ramifications of inequitable conduct in the procurement of a reissue patent is provided in Kearney & Trecker Corp. v. Giddings & Lewis, Inc., 452 F.2d 579 (7th Cir. 1971), cert. denied, 405 U.S. 1066, 92 S.Ct. 1500, 31 L.Ed.2d 796 (1972). Then Seventh Circuit Judge John Paul Stevens authored the opinion for a divided court. The case involved plaintiff patentee’s use of the services of a former patent examiner named Beall in procuring the reissue of a patent whose original application had been examined by Beall. Ignoring a rule against such a cross over from the role of an examiner to the role of an advocate, Beall’s efforts were instrumental in garnering his client a reissue. Finding the plaintiff’s tactics were a “gross abuse of the statutory privilege of reissue,” Judge Stevens invalidated all claims that were added to the patent through reissue. The second question faced by the court in Kearney was the proper disposition of the balance of the patent claims. As in this case, several claims of the reissue patent were carried over without substantial change from the original patent. Citing 35 U.S.C. §§ 253 and 288, the court noted that suits to enforce patents containing invalid claims are authorized by Congress provided the invalidated claims were not due to “any deceptive intention.” The court then concluded that “deceptive intention” means actual fraud or other forms of inequitable conduct, and, therefore, the conduct of plaintiff in using the services of Beall was sufficient to create a bar to the enforcement of the carryover claims on the basis of inequitable conduct. Although the alleged form of inequitable conduct in Kearney differs from this case, the legal analysis is precisely on point. If the conduct of B & L in obtaining the Yeiser reissue patent was fraudulent or otherwise inequitable, then even the carryover claims from the original patent will be unenforceable because they will be tainted by the claims that were procured with “deceptive intention.” With these legal standards in mind, the Court now makes the following findings of fact and conclusions of law. (D) Findings of Fact: Before describing the details of the reissue application process, an introduction to the cast of characters is helpful. John 0. (“Jack”) Yeiser was the inventor of the ’950 patent. Yeiser was a talented inventor for some two decades prior to the creation of his X-Y plotter. Yeiser had developed a highly successful strip chart recorder for Varían Associates in the 1950s. In the 1960s, Yeiser founded his own company called Y-Labs in Costa Mesa, California. In approximately April 1970, Yeiser sold his business to Laboratory Data Control (“LDC”) and went to work for LDC. Yeiser was an employee of LDC at the time the application for the '950 patent was filed in August 1970. He assigned the application to LDC. Sometime between 1972-73, Milton Roy Company (“Milton Roy”) acquired LDC and with it obtained the rights to the pending Yeiser ’950 application. When the patent was finally issued on September 25, 1973, Milton Roy was the owner by assignment from Yeiser through LDC. After several years of less than satisfactory sales of strip chart recorders and X-Y plotters, Milton Roy discontinued production of those products to focus on its primary business as a manufacturer of high performance chromatography detectors. After he sold his business to LDC, Yeiser apparently intended to remain in California, but LDC relocated to Florida. Drawn by what he considered to be a fine job opportunity as Director of Engineering at LDC, Yeiser attempted to relocate to Florida. B & L Exhibits Vol. II (Deposition of John West at 24). When his wife objected, Yeiser undertook to maintain a Florida-California commute. According to a fellow employee of Yeiser at LDC, this commute proved too difficult for Yeiser, severely straining his personal life, and he eventually had to leave LDC and return to the West Coast.- See HP Exhibit 316 (deposition of John West). For reasons that only Yeiser himself will ever know, Jack Yeiser committed suicide in 1974. Lawrence Fleming is a private patent agent residing in Pasadena, California. Fleming graduated from the California Institute of Technology in 1937 earning a B.S. in mechanical engineering. B & L Exhibits Vol. I (Fleming deposition at 7). Fleming is not an attorney, although he has been licensed to practice before the PTO since 1954 and has himself earned over twenty patents as an inventor. B & L Exhibits Vol. I (Fleming deposition at 17, 8). Fleming was a friend of Jack Yeiser from 1959 to Yeiser’s death in 1974 and he did all of Yeiser's patent work. Fleming worked as outside counsel for LDC and then Milton Roy in the procurement of the ’950 patent. Fleming was approximately seventy years old at the time of the reissue application and was recounting events that transpired over a decade before. Bernard D. Bogdon was B & L’s in-house counsel responsible for overseeing the reissue application of the ’950 patent. Throughout 1981 and 1982, Bogdon had primary responsibility for the legal needs of B & L’s Houston Instrument Division. Howard Robbins was a subordinate to Bogdon who joined the company in late 1982. Robbins assumed responsibility for the legal needs of the Houston Instrument Division early in 1983 and through the relevant time period of the reissue process. William Hyer was outside patent counsel for B & L on the ’950 reissue application. Hyer ran his own firm in Houston, T