2016 Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims
A finding of “fraud,” “inequitable conduct,” or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid. See Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp. 1084, 162 USPQ 141 (N.D. Ga. 1969), aff’d, 434 F.2d 1042, 168 USPQ 8 (5th Cir. 1970), cert. denied, 403 U.S. 906 (1971). In J. P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 1561, 223 USPQ 1089, 1093-94 (Fed. Cir. 1984), the court stated:
Once a court concludes that inequitable conduct occurred, all the claims __ not just the particular claims in which the inequitable conduct is directly connected __ are unenforceable. See generally, cases collected in 4 Chisum, PATENTS, paragraph 19.03 at 19-85 n. 10 (1984). Inequitable conduct “goes to the patent right as a whole, independently of particular claims.” In re Clark 522 F.2d 623, 626, 187 USPQ 209, 212 (CCPA).
The court noted in footnote 8 of Stevens:
In In re Multiple Litigation Involving Frost Patent, 540 F.2d 601, 611, 191 USPQ 241, 249 (3rd. Cir. 1976), some claims were upheld despite nondisclosure with respect to others. The case is not precedent in this court.
As stated in Gemveto Jewelry Co.v. Lambert Bros., Inc., 542 F. Supp. 933, 943, 216 USPQ 976, 984 (S. D. N. Y. 1984) (quoting Patent Law Perspectives, 1977 Developments, § G.1 -189):
The gravamen of the fraud defense is that the patentee has failed to discharge his duty of dealing with the examiner in a manner free from the taint of “fraud or other inequitable conduct.” If such conduct is established in connection with the prosecution of a patent, the fact that the lack of candor did not directly affect all the claims in the patent has never been the governing principle. It is the inequitable conduct that generates the unenforceability of the patent and we cannot think of cases where a patentee partially escaped the consequences of his wrongful acts by arguing that he only committed acts of omission or commission with respect to a limited number of claims. It is an all or nothing proposition. [Emphasis in original.]
2022.05 Determination of “Error Without Any Deceptive Intention” [R-2]
If the application is a reissue application, the action by the examiner may extend to a determination as to whether at least one “error” required by 35 U.S.C. 251 has been alleged, i.e., identified. Further, the examiner should determine whether applicant has averred in the reissue oath or declaration, as required by 37 CFR 1.175(a)(2), (b)(1), and (b)(2), that all “errors” arose “without any deceptive intention.” However, the examiner should not normally comment or question as to whether ** the averred statement as to lack of deceptive intention appears correct or true. See MPEP § 1414.