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March 19, 1997

MCGAW, INC., Defendant.

The opinion of the court was delivered by: LINDBERG

 Plaintiffs Baxter International and Baxter Healthcare International (Baxter) brought this patent infringement action against McGaw, Inc., (McGaw) asserting that McGaw's SafeLine needleless injection system infringed Baxter's U.S. patents 5,171,234 ('234 patent), 5,167,648 ('648 patent) and 5,158,554 ('554 patent). After a lengthy and contentious trial, the jury found that Baxter's patents were valid but that McGaw's products did not infringe any of the patents. In a written opinion, the court found that Baxter had committed inequitable conduct as to the '234 and '648 injection-site patents because the inventors intentionally withheld a piece of material prior art--the Borla PF0084 injection site--from the Patent and Trademark Office (PTO) during the application process. *fn1" Although McGaw had contended that the failure to disclose Baxter's own Nutrilock device to the PTO while prosecuting the '554 patent amounted to a separate occurrence of inequitable conduct, the court found that the Nutrilock device was cumulative of prior art that plaintiffs did disclose and that there was no evidence of intent to deceive the PTO. Therefore, it declined to find the '554 patent unenforceable.

 McGaw now moves the court to amend the final judgment to find the '554 patent unenforceable due to inequitable conduct. It contends that the inequitable conduct the court found as to the '234 and '648 patents also applies to the '554 patent because the three patents were originally filed as one parent application. After the PTO issued a restriction requirement asserting that the parent application contained four distinct inventions, Baxter filed divisional applications that ultimately led to the three patents-in-suit. McGaw argues that the failure to disclose the Borla PF0084, as well as the inventors' conduct the court relied on to reach its finding of inequitable conduct, occurred while the parent and amended parent applications were pending, tainting it as well as any divisional application descending from it. In addition, McGaw claims that the three patents-in-suit are so closely related that inequitable conduct as to one would render the other two unenforceable.

 Before the court can proceed to the merits of the motion, it must resolve the procedural issues Baxter has raised. First, Baxter claims that the motion, which McGaw termed a Motion to Supplement the Judgment, does not seek a clerical correction but rather requires the court to make new factual findings that were not raised below or included in the trial record. *fn2" As such, Baxter claims that the motion is inappropriate because the relief requested exceeds the scope of Rule 60, which is limited to corrections of clerical errors or oversight. Harcon Barge Co. v. D&G Boat Rentals, Inc., 784 F.2d 665, 668 (5th Cir. 1986). Baxter claims that the motion should instead be treated as a Rule 59(e) motion to alter or amend the judgment, but that even so such motions only serve to correct manifest errors of law or to present newly discovered evidence. Keene Corp. v. International Fidelity Insurance Co., 561 F. Supp. 656, 665 (N.D.Ill. 1976), affd, 736 F.2d 388 (7th Cir. 1984). Because it alleges that McGaw is seeking new factual findings, Baxter asserts that relief is inappropriate under Rule 59 as well as under Rule 60.

 McGaw responds that it has set forth at all appropriate times, including in the Final Pretrial Order and in its proposed findings of fact and contentions of law, the issue that the '554 patent is unenforceable based on the failure to disclose the PF0084 injection site in the parent application and on the close relationship among the three patents. McGaw also states that its motion is appropriately brought under either Rule 59 or Rule 60 and that supplementing the judgment is within the court's inherent powers. Zimmern v. United States, 298 U.S. 167, 169-70, 80 L. Ed. 1118, 56 S. Ct. 706 (1936).

 The court finds that McGaw's motion to supplement the judgment is most accurately characterized as a Rule 52(b) motion. Under this rule, "the court may amend its findings--or make additional findings--and may amend the judgment accordingly. Fed.R.Civ.P. 52(b). "Counsel should not simply ignore that rule and head off to the appellate court to seek a remand for the making of those same findings." Consolidated Aluminum Corp. v. Foseco International Ltd., 910 F.2d 804, 814 n. 9 (Fed.Cir. 1990). Therefore, McGaw's motion for additional findings is indeed appropriate and the court will turn to its merits. *fn3"

 McGaw requests the court to make the following additional findings: that the Borla PF0084 injection site, which the court held was material to the '234 and '648 patents, was also material to the parent application, which included the claims that evolved into the '554 patent; that the failure to disclose the PF0084 occurred while the parent application was pending; that the '554 patent descended from the parent application; and that all patents descending from the parent application are tainted by the inequitable conduct the court found as to the '234 and '648 patents.

 Baxter filed the original parent application on January 25, 1988, amending it in July of that year. Both the original and the amended application contained claims for the preslit-septum injection site and the inter-locking blunt cannula. Pursuant to the PTO's restriction requirement as to the original application, Baxter filed divisional applications in July 1990, abandoning the parent application and ultimately receiving the '234, '554 and '648 patents. The specifications and drawings of all three divisional patents describe the injection site and the blunt cannula as parts of a single system. The Borla PF0084 features in the '234 and '648 patents were included in the original and amended parent applications. The issued claims of the '554 patent were originally included in the amended parent application. A divisional application receives the benefit of the original application's filing date. 35 U.S.C. ยง 121.

 McGaw points out that the failure to disclose the PF0084 occurred before or during the pendency of the parent application and, therefore, the inequitable conduct tainted the parent application and all of the patents that evolved from it, including the divisional '554 patent. The behavior the court considered relevant to its finding that intent to deceive the PTO existed concerned (1) the knowledge of the inventors about highly material prior art during the research and development process and (2) inventor Jepson's visit to the Borla manufacturing facilities in Italy in August 1988. See Baxter Healthcare, 1996 U.S. Dist. LEXIS 3768, 1996 WL 145778, *7-8.

 "The law is well settled that a fraud in obtaining any claim renders the entire patent invalid." East Chicago Machine Tool Corp. v. Stone Container Corp., 181 U.S.P.Q. 744, 748 (N.D.Ill. 1974). See also Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 877, 9 U.S.P.Q.2D (BNA) 1384, 1392 (Fed.Cir. 1988). This finding of unenforceability as to claims that are not themselves obtained through inequitable conduct is termed "infectious unenforceability." Besides being applied to claims within a patent, it is also applied to patent applications, such as continuation, continuation-in-part or divisional applications, that are genealogically related to the original application as to which inequitable conduct is found. East Chicago, 181 U.S.P.Q. at 748 (patents obtained from one continuation and two divisional applications rendered unenforceable because of inequitable conduct as to the original application). The descendant patents in that case were rendered unenforceable even though they did not contain the claims from the original application that had been obtained by fraud. Id. McGaw maintains that because the Borla PF0084 was material to the claims in the original application that became claims in the '234 and '648 patents, the original application and all of its claims were tainted by inequitable conduct. Therefore, the divisional applications, which rely on the parent application, are also tainted by inequitable conduct because "the duty of candor extends throughout the patent's entire prosecution history." Fox Industries, Inc. v. Structural Preservation Systems, Inc., 922 F.2d 801, 803 (Fed.Cir. 1990) . "A breach of the duty of candor early in the prosecution may render unenforceable all claims which eventually issue from the same or a related application." Id. at 804.

 Baxter responds that the court cannot find inequitable conduct as to the parent application because the patent examiner did not examine on the merits the claims in the original application to which the PF0084 was relevant. To the contrary, it is quite clear that "the duty of candor extends throughout the patent's entire prosecution history. " Fox Industries, 922 F.2d at 803. In Fox Industries, the court found that the patentee intentionally failed to disclose a highly material sales brochure that taught almost every feature specified in the patent. Id. The patentee argued that the inequitable conduct occurred in the early stages of prosecution (an original and three continuing applications were filed) and related only to claims that the PTO ultimately rejected. Therefore, it took the position that the inequitable conduct did not relate to the claims in the patent that did issue and could not render them unenforceable. Id. The court firmly rejected this contention, stating that the brochure was material to the patent claims that did issue, making the entire patent unenforceable. "(The attorney) had an obligation to disclose the brochure to the PTO notwithstanding the fact that none of the claims issued in the form in which he drafted them. Id. at 804. "A fortuitous rejection does not cure a breach of the duty of candor." Id.

 As McGaw points out, this was not the first time the Federal Circuit held that determining if inequitable conduct occurred does not depend on whether the patent examiner relied on the fraud when examining the application. See Driscoll v. Cebalo, 731 F.2d 878 (Fed.Cir. 1984). "An applicant who, with gross negligence, has withheld from the PTO prior art material to a claim in a parent application should not be exculpated simply because, by fortuitous circumstances, the PTO has not reached the stage of allowing claims in a continuing application." Id. at 885. In the instant case, the PF0084 was material to claims in the original application that eventually issued in the '234 and '648 patents. The withholding of the PF0084 constituted inequitable conduct as to the original application, regardless of whether the PTO examined any of those claims on their merits. Id. Because inequitable conduct occurred during the pendency of the original application, all of its claims--examined or not--carry that taint. Kingsdown, 863 F.2d at 877.

 Baxter makes a second attempt to isolate the '554 patent from the rest of the original application. It claims that even if the PF0084 was material to the original application, it was not material to the claims in that application that became the '554 patent. Therefore, Baxter argues, inequitable conduct did not occur as to those claims. This attempt to segregate claims within a patent flies in the face of case law holding that inequitable conduct as to one claim in a patent renders the entire patent unenforceable. Id. If the inequitable conduct occurred during the pendency of the original and amended applications, and had that application not been split into separate divisional applications, all claims in the resultant patent would have been tainted regardless of whether the withheld prior art was material to each claim. Id. Baxter cannot avoid the results of its inequitable conduct as to the original application simply because that application was subsequently split into divisional applications. "When, as in this case, several patents stem from an original application which contained fraudulent claims ultimately allowed, the doctrine of unclean hands bars enforcement of any of the claims of any of the patents." East Chicago, 181 U.S.P.Q. at 748.

 Next, Baxter states that its withholding the Borla PF0084 was not an unconscionable act, which it asserts the court must find before it can render the '554 patent unenforceable. It claims that rendering patents unenforceable when they are merely related to another patent found unenforceable for inequitable conduct is appropriate only when a patentee commits egregious conduct such as bribery, perjury or deliberate disclosure of a fictitious best mode. See Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 54 S. Ct. 146, 78 L. Ed. 293 (1933); Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 65 S. Ct. 993, 89 L. Ed. 1381 (1945); Consolidated Aluminum Corp. v. Foseco International, Ltd., 910 F.2d 804 (Fed.Cir. 1990). Baxter claims that its failure to disclose the PF0084 to the PTO stands in "stark contrast" to the unconscionable acts committed in these cases. It ...

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