Full opinion text
OPINION, FINDINGS OF FACT AND CONCLUSIONS OF LAW PAUL L. FRIEDMAN, District Judge. PART ONE: BACKGROUND AND FACTUAL FINDINGS I. BACKGROUND This is a complex patent case involving parties who have either been doing business together or litigating against each other for the last sixteen years. The patent rights and technology at issue relate generally to computer hard disk drives (“HDDs”) and hard disk drive motors. In 1990, the parties entered into a joint venture to engage in the design, manufacture, and sale of improved hard disk drive motors, and thereby to compete effectively in the highly competitive market for such components. The joint venture terminated in 1993. In creating the joint venture, dissolving it, and attempting to resolve various conflicts that arose during and after the joint venture, the parties entered into numerous written agreements, the proper interpretation of which is central to this lawsuit. A. The Joint Venture Plaintiff Minebea Co., Ltd. (“Minebea”) is a Japanese concern that supplies hard disk drive spindle motors to hard disk drive manufacturers. These customers incorporate Minebea’s spindle motors into hard disk drives which they sell to computer manufacturers, the final end product being computers. Hard disk drives store information on rigid magnetic storage disks inside computers. According to the commands of the computer user, information is written to and retrieved from discrete locations on the storage disks by a read/write head that accesses information on the disk, while a spindle motor spins the disk in a precise fashion to move the relevant storage locations into position near the read/write head. The patents and patent rights at issue in this case belong to defendant Papst Licensing GmbH (“Papst Licensing”), a German company holding a substantial portfolio of patents relating to hard disk drives and hard disk drive spindle motors. In general, the patents in Papst Licensing’s portfolio were developed by Papst Moto-ren GmbH & Co. (“Papst Motoren”) and were assigned to Papst Licensing in 1993. Papst Motoren is not a party to this litigation. Minebea and Papst Motoren combined forces in 1990 to form a joint venture, Papst Minebea Deutsche Motoren (“PMDM” or “Joint Venture”), for the design, manufacture and sale of HDD motors. Mr. Georg Papst, whose father had founded Papst Motoren in 1952, was appointed the Managing Director of the Joint Venture. Papst Motoren granted licenses to Minebea and, through Minebea, to the Joint Venture, to those Papst patents “required and necessary” for the Joint Venture’s and (later) Minebea’s participation in the HDD motor business. The Joint Venture sold its motors to hard disk drive manufacturers who incorporated those motors into finished hard disk drives. In 1992, Papst Motoren was sold to a company not involved in this litigation, Electrobau Mulfingen GmbH & Co. (“EBM”). On January 1, 1993, Georg Papst founded Papst Licensing, which purchased Papst Motoren’s entire portfolio of patents in May 1993. Papst Licensing does not manufacture motors, but owns and licenses patents concerning small electric motors and devices in which electric motors are used. In May of 1993, the joint operation of the Joint Venture was terminated and Papst Motoren sold its share of the Joint Venture to Minebea. 7/28/05 (p.m.) Trial Tr. at 25:22-27:4 (G. Papst testim.). On June 19, 1995, Georg Papst, Papst Licensing and Minebea entered into a Settlement Agreement.to resolve disputes between them arising from the Joint Venture and its termination. See PTX 771, Settlement Agreement- (June 19, 1995) (“1995 Settlement Agreement”). One of the central questions in this litigation is what rights in Papst’s patents Minebea acquired for itself and, importantly, for its customers during the Joint Venture, and what rights it had when the Joint Venture was terminated in 1993, and after the parties entered into the Settlement Agreement in 1995. B. Minebea’s Claims Against Papst In 1997, plaintiffs Minebea Co., Ltd., Precision Motors Deutsche Minebea, GmbH, and Nippon Miniature Bearing Corporation (collectively “Minebea”) filed their complaint against Georg Papst, Papst Licensing GmbH, and Papst Licensing Verwaltungsgesellschaft Mit Beschrankter Haftung (collectively “the Papst defendants”) in this Court. On October 12, 1999, the case was consolidated with other similar actions and transferred by the Mul-tidistrict Litigation Panel (“MDL”) to Judge Morey Sear of the United States District Court for the Eastern District of Louisiana. See In re Papst Licensing, GmbH, Patent Litigation, MDL No. 99-1298 (E.D.La.1999); Minebea Co. Ltd. v. Georg Papst, Civil No. 99-3118 (E.D.La.1999). Minebea’s Second Amended and Supplemental Complaint (“Second Amended Complaint”), filed on February 22, 2000, in the Eastern District- of Louisiana, included sixteen counts: (I) Declaratory Judgment of Exhaustion of Patent Rights; (II) Fraudulent Concealment; (III) Negligent Misrepresentation; (IV) Breach of Fiduciary Duty; (V) Conversion, Unjust Enrichment and for an Accounting; (VI) Contract Reformation; (VII) Violation of Section 43(A) of the Lanham Act; (X) Declaratory Judgment of License Rights; (XI) Declaratory Judgment of Invalidity and Non-Infringement of the '010 Patent, '665 Patent, '373 Patent, and '406 Patent; (XII) Declaratory - Judgment of Invalidity and Non Infringement; (XIII) Declaratory Judgment of Equitable Estoppel; (XIV) Declaratory Judgment of Patent Misuse; (XV) ’ Sherman Act, -Section 2 (15 U.S.C. § 2); (XVI) Sherman Act, Section 2 (15 U.S.C. § 2); (XVII) Sherman Act, Section 1 (15 U.S.C. § 1); and (XVIII) Inequitable Conduct. Nine of the sixteen counts in the MDL litigation were remanded to this Court on April 19, 2002. See In re Papst Licensing, GmbH, Patent Litigation, MDL No. 99-1298, Separation of Claims and Remand Order (E.D.La. Apr. 19, 2002). The remanded Counts were: (I) Declaratory Judgment of Exhaustion of Patent Rights; (II) Fraudulent Concealment; (III) Negligent Misrepresentation; (IV) Breach of Fiduciary Duty; (V) Conversion, Unjust Enrichment and for an Accounting; (VI) Contract Reformation; (X) Declaratory Judgment of License Rights; (XIII) Declaratory Judgment of Equitable Estoppel; and (XIV) Declaratory Judgment of Patent Misuse. The remaining counts, still pending in the United States District Court for the Eastern District of Louisiana, have been stayed pending this Court’s resolution of the claims before it. After extensive and intensive discovery in the United States and abroad, managed for the Court by Special Master David Plant, and many disputes that had to be resolved by the Special Master or by the Court, the remanded counts were all scheduled for trial during the summer of 2005. On June 27, 2005, nearly the eve of trial and shortly after this Court issued its Opinion on patent exhaustion on June 24, 2005, see Minebea Co. v. Papst, 374 F.Supp.2d 202 (D.D.C.2005), denying the parties’ cross-motions for summary judgment on the Patent Exhaustion claim (Count I), Minebea withdrew with prejudice its claims for Fraudulent Concealment (Count II), Negligent Misrepresentation (Count III), Breach of Fiduciary Duty (Count IV), and Contract Reformation (Count VI). Finally, after a lengthy jury selection process and the actual selection of a jury, Papst withdrew its jury demand on June 28, 2005. The trial thus proceeded as a bench trial, which began on July 5, 2005. The central question raised by several of Minebea’s claims (there are others) is whether Papst, which holds patents on hard disk drives in addition to hard disk drive motors, may enforce those “drive patents,” not against Minebea but against companies that purchase spindle motors from Minebea and integrate those motors into hard disk drives that infringe Papst’s patents. Minebea claims in Count I that under the terms of the Joint Venture agreement and all subsequent agreements (including the 1995 Settlement Agreement), Minebea was fully authorized by Papst to design, manufacture and sell HDD motors under all Papst patents (including the so-called drive patents) without restriction and that Minebea’s authorized and unrestricted sale of HDD motors occurs under the Papst U.S. patents. Accordingly, Minebea contends, the Papst U.S. patents are exhausted, and Papst is precluded from enforcing its patents against (and from obtaining or attempting to obtain a second royalty from) Minebea customers who purchase fully authorized HDD motors from Minebea and incorporate them into hard disk drives. Minebea contends in Count V that pursuant to the terms of the 1990 Agreement for the Sale of Intangible Assets, any patents applied for during the period of the Joint Venture that related to HDD motors were to be owned by the Joint Venture, and that Georg Papst as Managing Director of the Joint Venture had a duty to ensure that all such patents were properly assigned to the Joint Venture. Minebea argues that Papst failed to comply with this contractual obligation and converted to its own use valuable patent rights that properly belonged to the Joint Venture. Accordingly, Minebea maintains, Papst’s registration in its own name of U.S. Patents relating to HDD motors, based on inventions arising during the Joint Venture and corresponding to German patents registered (improperly, Minebea argues) to Papst, gives rise to various claims under German law, which Minebea characterizes as “the German equivalent to conversion and unjust enrichment.” Minebea’s Summary of its Conversion Claims (Count V) (July 1, 2005) (Docket No. 1204) at 2. In Count X, Minebea claims that by suing and threatening to sue Minebea’s customers for their use of Minebea-sup-plied HDD motors in hard disk drives, Papst breached the 1995 Settlement Agreement between the parties and the covenant of good faith and fair dealing that is implied thereunder. Minebea contends in Count XIII of its Second Amended Complaint that Papst’s actions misled Minebea and its customers to believe that Papst would not enforce its so-called drive patents against Minebea’s customers for their use of Minebea-sup-plied HDD motors in hard disk drives. See 2d Am. Compl. ¶ 217. Minebea claims that because it and its customers detrimentally relied on Papst’s misleading actions, Papst should be equitably estopped from enforcing its drive patent rights against Minebea’s customers. See id. ¶¶ 218-20. Alternatively, Minebea claims under Count XIII that Papst is legally estopped from enforcing its drive patents against Minebea’s customers for their use of Minebea-supplied HDD motors in hard disk drives. Minebea argues that because Papst, in the 1995 Settlement Agreement, licensed or assigned Minebea the right to sell HDD motors for use in hard disk drives, and because Papst received consideration for that right, it cannot now take steps to derogate from the right it has granted. See Minebea Br. at 18-21; Mi-nebea’s Prop. Concl. of Law ¶¶ 5.1, 5.6. Under Minebea’s theory of legal estoppel, Papst has granted Minebea’s customers an implied sublicense which bars Papst from suing them for infringement of the drive patents. See Minebea Br. at 21; Mine-bea’s Prop. Concl. of Law ¶ 5.6. Finally, Minebea claims in Count XIV, its patent misuse claim, that under the 1995 Settlement Agreement and prior agreements, Minebea paid Papst a first royalty in order to design, manufacture and sell without restriction HDD motors under all Papst patents (including the drive patents). Minebea’s customers also paid Papst a royalty under Papst’s drive patents in order to use Minebea-supplied HDD motors in hard disk drives. Mine-bea claims that by collecting, or attempting to collect, a second royalty from Mine-bea’s customers for their use of Minebea-supplied HDD motors in hard disk drives, Papst misused its drive patents, rendering them unenforceable. It also claims that Papst misused its patents by engaging in illegal, anticompetitive package licensing. II. THE TRIAL At trial, which began on July 5, 2005 and ended on August 5, 2005, each side was allotted 60 in-court hours to present its case, and the Court sat five days a week from 9:00 a.m. until (usually) 5:30 p.m. Eighteen witnesses were called to present live testimony during the trial. Of these 18 live witnesses, seven were expert witnesses. Each expert witness’s direct testimony was submitted in writing in advance, either through written expert statements and rebuttal reports and/or through written testimony. The testimony of more than 20 witnesses was presented through deposition testimony, including some Hague Convention examination transcripts. Only five of these witnesses also testified in person at trial. In total, the Court considered the testimony (including trial and/or deposition testimony) of some three dozen witnesses, ten of whom were experts. In addition to the testimony of the witnesses, the Court considered hundreds of exhibits, mostly patents, agreements, letters, memoranda and other correspondence. Minebea also offered in evidence 12 physical exhibits, and Papst offered 10 physical exhibits. A. Minebea’s Witnesses 1. Minebea’s Testifying Fact Witnesses Rex Bergsma was an employee of NMB USA, a United States subsidiary of Mine-bea, from roughly April of 1991 through July of 2003. 7/8/05 (p.m.) Trial Tr. at 23-24, 15:2-3, 15:15-16 (Bergsma testim.). He was a sales engineer for ball bearings and ball bearing value added products when he was hired, then was promoted to division manager for NMB’s spindle motor business. Id. at 16:16-20. In the Fall of 1994, Mr. Bergsma was promoted to product manager, overseeing all of NMB’s motor business in the United States. Id. at 16:21-22. Two years later, in Fall of 1996, he became director, overseeing all of NMB’s products and a group of managers running those business units. Id. at 16:23-25. He became director of business development in 1999 or 2000. Id. at 17:1-5. Mr. Bergsma testified about the role of NMB in selling and facilitating the sale of HDD spindle motors in the United States. Koichi Dosho began working for Mine-bea in 1973. He was employed by PMDM from 1990 to 1995. See 3/2/04 Dosho Dep. Tr. at 95:13-15; 7/7/05 (p.m.) Trial Tr. at 66:24-68:4 (Dosho testim.). Mr. Dosho is the managing director in charge of worldwide sales for Minebea and is a member of the board of directors of Minebea. He testified about worldwide sales for Mine-bea’s HDD motors. Kenji Fukunaga is an engineer who has worked for Minebea for 29 years. 7/14/05 (p.m.) Trial Tr. at 7:22 (Fukunaga testim.). From 1991 until 1996 or 1997, he was a manager for spindle motor production for Minebea in Thailand. Id. at 8:19-25. From 1996 or 1997 until 2005, he was General Manager of Minebea’s spindle motor department, and was responsible for manufacturing and production, including the technological aspects. Id. at 8:15-18. In July 2005, he became the Deputy Division Manager of the DC brush motor department. Id. at 8:1-6. Douglas Hymas was associate general counsel of Minebea from the Fall of 1993 through June of 1995. 8/1/05 (p.m.) Trial Tr. at 24:22-25:5 (Hymas testim.). During the time Mr. Hymas held this position at Minebea, he reported to Minebea’s General Counsel, Takuya Naka. Id. at 25:10-17. Mr. Hymas is an attorney licensed to practice law in California. Id. at 24:3-6. He prepared the initial draft of the 1995 Settlement Agreement and was responsible for the negotiation and drafting of the Agreement on behalf of the Minebea side. Id. at 25:18-22, 32:25-33:6. Yoshihisa Kainuma is an employee and member of the board of directors of Mine-bea, currently holding the title of Senior Managing Executive Officer. 7/8/05 (a.m.) Trial Tr. at 48:21-49:6 (Kainuma testim.). He started working full-time for Minebea around 1989, briefly in the legal department before joining management. Id. at 53:19-23. Mr. Kainuma holds a law degree from Keio University in Tokyo and an L.L.M. from Harvard Law School. He is licensed to practice law in Japan and New York. Id. at 53:10-18. Mr. Kainuma negotiated agreements in connection with the Joint Venture between Minebea and Papst in 1990. Oswald Kuwert retired from PMDM on April 30, 2005. He had been employed there for 14 years. See 7/5/05 (p.m.) Trial Tr. at 15:11-14 (Kuwert testim.). Mr. Ku-wert succeeded Georg Papst as Managing Director of PMDM, and held that position for almost 12 years before his retirement. See id. at 15:18-24. Ryusuke Mizukami, probably the key fact witness for Minebea with respect to the Joint Venture, is currently a director and Senior Managing Director of Minebea. He has worked for Minebea for 38 years. For the past 23 years he has been the Senior Managing Executive Officer in charge of corporate planning and production. He is one of the seven inside directors of Minebea. 7/6/05 (a.m.) Trial Tr. at 54:18-55:16 (Mizukami testim.). He was involved in the formation of the joint venture between Minebea and Papst, Mi-nebea’s purchase of Papst Motoren’s interest in the joint venture, and the 1995 Settlement Agreement. Junichi Taino began working for Mine-bea in 1985, handling sales of ball bearings, cooling fan motors, step motors, and other components. 7/11/05 (a.m.) Trial Tr. at 41:3-10 (Taino testim.). He transferred to Minebea-Thailand in 1987 to become Sales Coordinator, where his duties included organizing visits to factories for overseas customers. Id. at 41:19-24. In 1989, he became Sales Coordinator for Minebea-Singapore. Id. at 42:3-16. In 1990, he began working as Sales Coordinator for NMB Technologies in the United States. Id. at 42:20-43:23. His duties for NMB included supporting sales activities between customers in the United States and sales people in regard to cooling fan motors and keyboards. Id. at 43:20-23. In 1994, he became responsible for HDD spindle motors. Id. at 44:1-8. In 1997 he became Assistant Product Manager at NMB, where his duties included supporting HDD sales activities and coordinating between sales members and the HDD customers and overseas operations. Id. at 44:14-23. In 2002, he became Manager of the Storage Components Division. Mr. Taino testified for several days about the role of NMB in selling and facilitating the sale of HDD spindle motors and about certain specific Minebea motor projects. In addition to these witnesses, Minebea called Jerold Schnayer and Richard Smith as adverse witnesses. 2. Minebea’s Expert Witnesses Martin J. Adelman is Minebea’s patent law expert. Professor Adelman teaches at the George Washington University Law School. Adelman Expert Report (Apr. 4, 2005) ¶ 2. He previously taught patent law for 24 years at Wayne State University Law School. Id. Before that, Professor Adelman practiced patent law for many years and was a partner at Barnard, McGlynn & Reising in Michigan. Id. Professor Adelman is the sole author of a continuously updated, eight-volume treatise on patent law. Id. ¶ 3. Dr. Christopher Ann is a German lawyer who holds a German doctorate degree in law and an LL.M. from Duke University School of Law. Dr. Ann is a tenured law professor at Munich Technical University. He provided an expert opinion on German law issues, primarily relevant to Minebea’s conversion and unjust enrichment claim. Warren L. Dalziel is Minebea’s technical expert on hard disk drives. Mr. Dalziel has a master’s degree in Mechanical Engineering and 42 years of experience as an electro-mechanical design engineer, including 18 years in the computer peripheral industry and 24 years as an independent contractor-consultant. Written Direct Testimony of Warren L. Dalziel (July 10, 2005) (Docket No. 1300) ¶2. He has worked on designing major mechanical and electromechanical components of disk drives including hubs, spindles, disk clamping components, read/write head arms and actuators, base-castings, top covers, seals and filters. Id. Thomas E. Gardner is one of Minebea’s damages experts. He is an expert in the hard disk drive industry, including engineering, marketing and operations. Gardner Expert Report (Apr. 4, 2005) ¶ 1. Mr. Gardner is a principal at Regent Pacific Management Corporation in California. Id. at Exhibit 1. He holds master’s degrees in Management and Engineering Science and a Bachelors degree in Electronics Engineering. Id. He has extensive experience with the technical and business aspects of the computer industry. Id. Jerry A. Hausman is Minebea’s economics/damages expert. He is a professor of economics at the Massachusetts Institute of Technology. Written Direct Testimony of Jerry A. Hausman (July 6, 2005) (Docket No. 1269) ¶ 1. He received a Ph.D. in economics from Oxford University. Id. His academic specialties include econometrics, the application of statistical methods to economic data, and applied microeconomics, the study of behavior by firms and by consumers. Id. Professor Hausman has published over 130 academic research papers in leading economic journals. Id. at ¶ 2. James E. Malackowski is one of Mine-bea’s damages experts. He is President and CEO of ICMB Ocean Tomo, an Intellectual Capital Bank providing expert services, among other things. Malackowski Expert Report (Apr. 4, 2005) at 4. Prior to forming Ocean Tomo, he spent two years at a private equity firm and 15 years as a management consultant and forensic accountant focused on intangible assets. Id. Mr. Malackowski holds a Bachelors degree in Accountancy and is a Certified Public Accountant in Illinois. Id. He has written many articles and given numerous presentations related to his profession. Id. B. Papst’s Witnesses 1. Papst’s Testifying Fact Witnesses Georg Papst is the President of Papst Licensing and a named defendant in this case. See 7/29/05 (p.m.) Trial Tr. at 33:11— 13 (G. Papst testim.). He is one of the sons of Herman Papst, the founder of Papst Motoren. See 7/27/05 (p.m.) Trial Tr. at 6:6-24 (G. Papst testim.). Georg Papst began his employment with Papst Motoren in 1958, and became Papst Moto-ren’s technical manager in 1965. See id. at 7:7-24. He was the Managing Director of PMDM, the Joint Venture between Mine-bea and Papst, until August 5, 1993, three months after the May 1993 termination of the Joint Venture. See 5/8/03 G. Papst Dep. Tr. at 383:12-15, 385:19-386:9. Mr. Papst testified about the events and agreements relevant to the Joint Venture, its termination in 1993, the formation of Papst Licensing, and the negotiation and execution of the 1995 Settlement Agreement with Minebea. Richard H. Smith, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, is a patent attorney who started representing Papst Motoren around 1989. See 7/28/05 (a.m.) Trial Tr. at 75:23-76:76 (Smith testim.). Mr. Smith has been involved in representing Papst Licensing since its creation in 1993. See id. at 76:5-7. Jerold B. Schnayer, a partner in the law firm of Welsh & Katz, is a patent attorney who represented Papst Motoren beginning in the early 1990s. See 7/21/05 (p.m.) Trial Tr. at 6:13-7:8 (Schnayer testim.). At first, he represented Papst Motoren only in the negotiation of certain contracts and with respect to patent prosecution issues. See id. at 7:7-11. He was not involved in negotiating the Joint Venture Agreement on behalf of Papst. See id. at 72:9-13. He was involved in advising with respect to the overall business relationship between Papst and Minebea beginning in late 1993, and in the disputes that developed between them. He has been closely involved in the present litigation by representing Papst at depositions and many appearances in Court. See 7/21/05 (p.m.) Trial Tr. at 15:16-20:1 (Schnayer testim.). 2. Papst’s Expert Witnesses Bruce G. Dubinsky is Papst’s damages expert. Mr. Dubinsky is a principal at the public accounting firm of Klausner, Dubin-sky & Associates. 8/4/05 (a.m.) Trial Tr. at 43:13-14 (Dubinsky testim.). He holds a bachelor’s degree in accounting and a master’s degree in taxation. Id. at 43:17-25. Mr. Dubinsky has over 22 years of practical experience in forensic accounting and fraud examinations, commercial damage analyses, income tax and accounting matters, business valuations and investment matters. Dubinsky Rebuttal Report (Apr. 25, 2005) at 33. George H. Gerstman is Papst’s patent law expert. He is a partner at the law firm of Seyfarth Shaw LLP in Chicago. Gerstman Expert Report (Mar. 16, 2005) ¶ 1. Mr. Gerstman is a former United States Patent Examiner and has over 40 years of experience as an attorney in the field of patent law. Id. ¶ 2. Andreas Junius is Papst’s German law expert. Dr. Junius has an LL.M. from Columbia University School of Law and a doctor of jurisprudence (J.S.D.) equivalent from a German university. He is admitted to practice law in both New York and Germany and is currently an attorney with Clifford Chance in New York. His opinions were considered by the Court primarily in connection with Count V, conversion and unjust enrichment. • Chera M. Sayers is Papst’s economics expert. Dr. Sayers holds a doctoral degree in economics and works for the firm of Klausner Dubinsky & Associates. 8/3/05 (p.m.) Trial Tr. at 33:10-18 (Sayers tes-tim.). She testified about the relative market positions of Minebea and Nippon Den-san (“Nidec”), the market leader in the HDD spindle motor market. See id. at 35:19-39:11. C. Hague Convention Witnesses and Deposition Testimony Takao Anzai began working at Minebea in 1977 and is currently employed there. 5/13/05 Anzai De Bene Esse Dep. Tr. at 9:4-7, 9:23-10:1; 5/16/05 Anzai De Bene Esse Dep. Tr. at 83:20-22. He worked as an engineer, engineering HDD spindle motors from 1980 through 1995. He was stationed at PMDM beginning in December of 1990, where his title was Senior Project Manager. 5/13/05 Anzai De Bene Esse Dep. Tr. at 10:12-14, 11:13-15, 14:7-15:2, 15:25-16:3. At his deposition, Mr. Anzai discussed the formation of the joint venture and conversations he had with Georg Papst and Georg Papst’s brother (and Papst executive) Hans Dieter Papst, although his recollection of specific events and conversations was vague and limited. Heinrich Cap worked for Papst Motoren until leaving the company on December 31, 1990. 2/23/05 Cap Hague Tr. at 1. He was department head of the cassette drive department and then head of the motor construction department, which he led for four years. Id. He invented one or more of the inventions underlying a number of the patents at issue. Dieter Elsasser is a precision engineer and was team leader of the design division of Papst Motoren. 2/15/05 Elsasser Hague Tr. at 1. Mr. Elsasser was employed by Papst Motoren until September 30, 1990, and began working for EBM Papst in 1999. Id He invented one or more of the inventions underlying a number of the patents at issue here. Michael Hermann worked in the patent department of Papst Motoren from mid-1989 until March 31, 1993, doing general patent-related administrative work including preparing patent applications, cooperating with outside patent attorneys, testing outside products for patent infringement and patent research. 2/14/05 Hermann Hague Tr. at 2-3. He occasionally advises Papst Licensing on patent issues, especially with regard to patent matters pending before German courts. Id at 3. He invented one or more of the inventions underlying a number of the patents at issue here. Tobias Kessler began working for Papst Licensing in September or October of 1998. 4/10/03 Kessler Dep. Tr. at 37:6-9. He is in-house general counsel for Papst Licensing. Id. at 22:2-3. He also is Georg Papst’s personal lawyer. Ulrich Koletzki is a certified engineer specializing in mechanical engineering. 12/16/04 Koletzki Hague Tr. at 1. He was President of Sales and Marketing for the joint venture. Prior to working for PMDM, he worked for Papst Motoren as technical support for fans. Id. He has been working in HDD motors since the early 1980s when at Papst Motoren. Id. He invented one or more of the inventions underlying a number of the patents at issue. Klaus Lenz has a master’s degree in engineering. 2/11/05 Lenz Hague Tr. at 2. He worked in the Papst Motoren patent department for Hans Dieter Papst. Id. at 3. His work focused on research of foreign patents, evaluation of foreign patents, the preparation of patent rights, and the maintenance of patents. Id. Dr. Rolf Müller was an engineer working at Papst Motoren until he left in 1987. 4/27/05 Müller Hague Tr. at 2-3. Thereafter, he continued to do some freelance work for Papst Motoren and then for Papst Licensing. Id. He invented one or more of the inventions underlying a number of the patents at issue. Takuya Naka is Minebea’s General Counsel. He began working for Minebea in late 1990. 7/6/05 (p.m.) Trial Tr. at 21:7-10 (Mizukami testim.). He holds a Master’s of law degree from Columbia University School of Law and is licensed to practice law in both California and New York. 4/22/03 Naka Dep. Tr. at 6:4-24. He was involved in the purchase of Papst’s interest in the joint venture in 1993. Hans Dieter Papst is Georg Papst’s brother. He was head of the Papst Moto-ren patent department from 1968 through the end of 1992. 3/15/05 H.D. Papst Dep. Tr. at 21:10-19. He worked full-time as head of the patent department for Papst Licensing from the time the company was created in 1993 until 1995 or 1996. Id. at 14:24-15:11. Manfred Reuter works for Papst Licensing. 2/2/05 Reuter Dep. Tr. at 10:20-22. His job responsibilities involve disassembling hard disk drives and PC peripherals, to look for certain characteristics, including possibly infringing characteristics. Id. at 41:4, 8-9,14-17; 42:1-4. Jeffrey Salmon is a patent attorney and a partner at Welsh & Katz, where he has been since 1995. 2/18/05 Salmon Dep Tr. at 7:19-8:5. Mr. Salmon’s representation of Papst Licensing has included: patent prosecution, assisting in licensing efforts and involvement in litigation. Id. at 9:16-22. He has prosecuted applications for Papst Licensing that concern various aspects and applications of brushless DC motor technology. Id. at 12:1-4. Dr. Gerhard Schatzle was one of the three directors of Papst Motoren in 1990. 2/21/05 Schatzle Hague Tr. at 3. He was responsible for controlling, human resources, purchasing, and information technology. Id. At that time, the other two directors were two of the Papst brothers, Georg, responsible for product development and motor sales, and Gunter, responsible for the sale of ventilators and for public relations. Id. Dr. Schatzle worked there at the time of the sale of Papst Motoren and for a period of time thereafter. Bernhard Schuh is a graduate engineer whose last position at Papst Motoren was as section head of DC Systems. 4/19/05 Schuh Hague Tr. at 4. He began in the Papst Motoren sales department in 1972 as a sales engineer and he advanced to team leader' for the sale of motors within the United States and Europe. Id. He worked on various ideas while at Papst Motoren, including having an operating system without belts and sealing relating to the hard disk drive and motor. Id. at' 5. He invented one or more of the inventions underlying a number of the patents at issue. Johann Von der Heide is a professional engineer who worked for Papst Motoren from 1971 through 1991. 4/25/05 Von der Heide Hague Tr. at 3-4. He was director of motor development, which included motors for hard disk drives. Id. at 4. He worked only oh technical issues. Id. Papst Motoren filed patent applications on the improvements he made to motors for hard disk drives. Id. He began working for the joint venture, PMDM, on January 1, 1992. Id. at 8. He invented one or more of the inventions underlying a number of the patents at issue. III. FINDINGS OF FACT A. Introduction Despite the dozens of witnesses who were deposed in this case, many of whose deposition excerpts were introduced at trial, the lay witnesses who were presented live at trial, and the expert witnesses who presented expert reports and/or written direct testimony and were cross-examined at trial, this case turns largely on issues of law and the meaning and significance of certain written agreements — that is, binding contracts between the parties, as well as on correspondence they exchanged over the years and other documentary evidence. Much of the testimony presented at trial and through depositions sought to explain the agreements or to put them in context — -or, in some cases, to explain away what the contents of the documents appear clearly to mean. As the Court held in its two rulings (one oral and one written) denying the parties’ motions for partial summary judgment on patent exhaustion, and reiterates here, however, the key provisions of the 1995 Settlement Agreement (and many provisions of other relevant agreements) are clear and unambiguous. See 10/19/04 Tr. at 46-56 (Court’s oral ruling); Minebea Co. v. Papst, 374 F.Supp.2d at 205-12. The testimony at trial also sought to explain the realities of the hard disk drive and HDD spindle motor industries, Mine-bea’s sales in the United States, and the course of dealing between the parties. The parties offered expert testimony to aid the Court in understanding some of these matters, as well as certain technical areas of both patent law and the industry, German law, and damages. All the expert witnesses were helpful and credible, although the opinions of some (particularly Warren Dalziel) were not fully supported in certain particulars, and much of the testimony of both parties’ experts on German law did not explicate the relevant principles of German law, but simply sought to apply it (in an often partisan and unhelpful manner) to the facts of the case. For reasons that were expressed by the Court during the trial — and, as necessary or appropriate, as are elucidated here— the Court did not find credible certain aspects of the testimony of Douglas Hy~ mas and Ryuske Mizukami for Minebea, and Jerold Schnayer for Papst. Mr. Hy-mas’ performance at his deposition totally undermined his credibility at trial and the Court simply cannot rely on it except where corroborated by documentary evidence. Mr. Mizukami’s insistence throughout days of testimony that he always thought Minebea obtained all rights to all Papst patents cannot be credited when there were no documents to support it and when every relevant document that was offered in evidence leads to the opposite conclusion. Mr. Schnayer was such an advocate for his client during discovery and pretrial proceedings that his objectivity as a fact witness was dubious from the start. His testimony about events in which he was not a direct participant, his thought processes, his understanding of the meaning of terms such as “drive patents,” and his statements that he brought that understanding to various meetings, discussions and negotiations over the years must be discounted either as post-hoc rationalizations, advocacy or wishful thinking. With regard to events in which he was directly involved and information that representatives of Minebea acknowledge that he conveyed — and particularly when his testimony is corroborated by documentary evidence — the Court (insofar as noted below) does rely on his testimony as to what was said and done. Georg Papst was a much more credible witness than Mr. Schnayer on many of the same matters, however, and the documentary evidence introduced at trial largely supported what he said. There is too much testimony and there are too many documents to permit a full statement of the facts as shown by the evidence. The findings of fact included in this section are of necessity abbreviated and not inclusive. For the most part, they state only the factual findings that are essential to the decision in this case. Additional “findings of fact” are found later in this Opinion as they are important to the particular claim or count of the complaint then being discussed. B. Creation of the Joint Venture, its Termination, the 1995 Settlement, and Beyond 1. The Inception of the Joint Venture 1. Mr. Ryusuke Mizukami of Minebea met Mr. Georg Papst in or about 1976, soon after Mr. Mizukami began his European assignment for Minebea. Mr. Mizu-kami was introduced to Papst-Motoren and to Georg Papst by Mr. Koiehi Dosho of Minebea. Mr. Dosho had been working for Minebea in Europe for a number of years, was stationed in Germany, and knew Mr. Papst. 7/6/05 (a.m.) Trial Tr. at 65:7-24, 66:8-21, 72:2-4 (Mizukami tes-tim.). 2. Georg Papst was Gescháftsführer, or Managing Director, of Papst Motoren. 7/5/05 (p.m.) Trial Tr. at 69:25-70:4 (Ku-wert testim.); 7/6/05 (p.m.) Trial Tr. at 37:2-38:24 (Mizukami testim.); 5/8/03 G. Papst Dep. Tr. at 385:21-23. 3. In 1990, Georg Papst and Mr. Dosho of Minebea discussed the possibility of the two companies joining forces to go into the hard disk drive spindle motor business together, to combine Papst’s patent portfolio and technological expertise in the design and development of HDD motors with Minebea’s mass production and sales capabilities. There was a meeting between them and other Minebea representatives in early 1990 in Tokyo. 7/28/05 (a.m.) Trial Tr. at 20:3-24 (G. Papst testim.). The business of the proposed joint venture was, among other things, to engage in the research, development, manufacture and sales of HDD spindle motors. 7/6/05 (a.m.) Trial Tr. at 72:4-11 (Mizukami testim.); 7/28/05 (a.m.) Trial Tr. at 51:23-52:4 (G. Papst testim.). 4. From its experience manufacturing HDD motors for HDD manufacturer Sea-gate, Minebea believed that there were promising growth opportunities in the HDD motor market. See 7/6/05 (a.m.) Trial Tr. at 75:3-11 (Mizukami testim.). 5. At that time, Nidec was the dominant supplier of HDD spindle motors, possessing approximately 80 to 90 percent of the market. See 7/6/05 (a.m.) Trial Tr. at 75:13-24-76:14-17 (Mizukami testim.); 7/28/05 (a.m.) Trial Tr. at 21:2-11 (G. Papst testim.). Minebea believed that hard disk drive manufacturers did not like being so dependent on a single supplier of HDD motors, and believed that hard disk drive manufacturers would welcome and seek to do business with a new supplier of HDD motors. See 7/6/05 (a.m.) Trial Tr. at 75:19-24 (Mizukami testim.). 6. It was understood that Minebea and Papst-Motoren had complementary strengths that, in combination, might enable them to create an effective and competitive new supplier in the HDD motor market. See 7/6/05 (a.m.) Trial Tr. at 73:2-14 (Mizukami testim.). 7. Minebea had expertise in the large-scale manufacture of precision parts and components, but did not have the technology or engineering expertise to design and develop HDD motors on its own. See 7/6/05 (a.m.) Trial Tr. at 73:13-20, 74:6-10, 79:7-10 (Mizukami testim.). 8. Minebea understood that Papst-Mo-toren already was in the business of designing HDD motors, and possessed many technologies and patents that would be useful in a joint enterprise. 7/6/05 (a.m.) Trial Tr. at 74:12-22, 76-3-10, 79:7-12 (Mi-zukami testim.). 9. During the discussions between Mi-nebea and Papst, Georg Papst told several representatives of Minebea that Seagate had been infringing Papst patents and that Papst was considering suing Seagate. See 7/28/05 (a.m.) Trial Tr. at 38:12-39:6, 40:4-41:25 (G. Papst testim.). 10. On August 14, 1990, Georg Papst sent a letter to Mr. Mizukami with respect to the Papst patents that would be available to the Joint Venture. See PTX 138, Letter from G. Papst to R. Mizukami (Aug. 14, 1990). Among other things, he stated: “The Joint Venture is entitled to take a non-exclusive, not-transferable license on all patent matters, as long as they will be used for spindle motors for hard disk drives and be manufactured and distributed by the Joint Venture.” Id. at 2. 11. Prior to entering into the joint venture, Minebea requested and received copies of Papst Motoren patents. In a letter to Georg Papst dated July 31, 1990, Mr. Dosho of Minebea advised Mr. Papst that Minebea “would like to check the contents of these patents [Papst patents concerning the future joint venture] before signing an agreement.” DTX 44, Letter from K. Dosho to G. Papst re: joint venture negotiations (July 31, 1990). The letter describes these as “patents for disk memory motor.” Id. 12. On August 16,1990, Ms. Uta Simon of Papst sent Mr. Mizukami three packages which together included 45 U.S. patents related to hard disk drives. See PTX 147, Letter from Uta Simon, to R. Mizuka-mi (enclosing “45 granted U.S. patent specifications relevant to hard disk drives”) (one of three packages) (Aug. 16, 1990); PTX 148 (same, one of three packages); PTX 149 (same, one of three packages); see also PTX 143, Letter from G. Papst to R. Mizukami (Aug. 14, 1990) (enclosing “126 pages of our German first applications of patents”); DTX 44, Fax from K. Dosho to G. Papst (July 31, 1990); 7/6/05 (a.m.) Trial Tr. at 84:10-87:22 (Mizu-kami testim.); 7/6/05 (p.m.) Trial Tr. at 51:20-55:7 (Mizukami testim.). 13. On August 17, 1990, Hans Dieter Papst, the head of Papst Motoren’s patent department, wrote to Mr. Mizukami concerning events leading up tó the creation of the joint venture between Minebea and Papst Motoren. Referring to the 45 U.S. Patents, Hans Dieter Papst stated: Yesterday, we sent you by courier letter in three envelopes copies of 45 US-Patents, which are listed in the following enclosure. These patents reflect somehow Papst’s activities in developing spindle motors. We want to point out, that the bigger part of these patents are typical for use in spindle motors, whereas a smaller part can or may be used or have been used in this field. Yet, there may be further patents of Papst which could be applicable in spindle motors. In an [sic] US-patent there are sometimes several different independent claims, i.e. it is like several patents — and therefore one can have a mixed situation with regard to application in one and the same patent. So, these things are sometimes complex. In any event, it is clear, as already expressed, that any spindle motor of the envisaged project would be free from any charge based on Papst-patents. PTX 152, Letter from H.D. Papst to R. Mizukami (Aug. 17,1990), 14. On August 24, 1990, the parties entered into a letter of intent signed by the President of Minebea and Georg Papst. PTX 157, Letter of Intent (Aug. 24, 1990); see also 7/6/05 (a.m.) Trial Tr. at 91:8-92:19 (Mizukami testim.). They agreed in the letter to create a joint venture in which Papsb-Motoren and Minebea would be equal partners. See PTX 157, Letter of Intent (Aug. 24, 1990) at 1. Each partner agreed to “transfer into the joint venture all activities and assets including the right to use patents related to HDD motors.” Id. Minebea was to pay Papst-Motoren for the joint venture between 22 million and 28 million Deutsche Marks. Id. at 2; see also 7/6/05 (a.m.) Trial Tr. at 90:20-91:13, 92:24-93:8 (Mizukami testim.). 15. The letter of intent concluded: “It is further understood that this letter is not intended to constitute a contract or create any legal obligation by either Papst-Moto-ren or Minebea, but only serves to establish those broad areas of agreement leading to a formal contract which reflect the matters described in this letter.” PTX 157, Letter of Intent (Aug. 24, 1990) at 3. 16. Among the series of faxes between the parties concerning the drafting of agreements between Minebea and Papst was an October 30, 1990, fax from Mr. Mizukami and Yoshihisa Kainuma to Papst Motoren. DTX 75, fax from R. Mizukami and Y. Kainuma to G. Papst re: joint venture negotiations (Oct. 30, 1990); 7/8/05 (p.m.) Trial Tr. at 4:5-6:10 (Kainuma tes-tim.). In the fax, Minebea expressed its view that the phrase “required and necessary,” to be included in the proposed Intangible Assets Agreement, was ambiguous: Minor deletions and assertions were made for the sake of clarity. The words “required and necessary” were deleted because at this time neither party knows what information is actually necessary or required for the research, development and manufacture of HDD motors. In addition, for tax purposes the listing of as many intangible assets as possible is advantageous to us. Therefore, the transfer of all technical information related to Papst’s HDD Motor Division is reasonable. DTX 75, fax from R. Mizukami and Y. Kainuma to G. Papst and G. Schátzle, re: Comments Regarding Agreement for the Sale of Intangible Assets (Oct. 30, 1990) at 3. 17. Despite these concerns, the phrase “required and necessary” was included in the final version of the 1990 Agreement for the Sale of Intangible Assets, signed by both parties six days later. See PTX 195, Agreement for the Sale of Intangible Assets (Nov. 5,1990) ¶¶ 4(a), 4(d). 18. Mr. Mizukami testified that he believed Papst represented to Minebea that Papst Motoren would make its patent portfolio fully available to the Joint Venture. 7/6/05 (a.m.) Trial Tr. at 76:18-77:6, 79:7-25, 80:13-17 (Mizukami testim.). He also testified that the Joint Venture would have the right to use any Papst patents that were necessary for the HDD motor business: “[W]e can use all his patent, everything, if it is necessary and for making, manufacturing and distributing ... he has a lot of patent[s] and everything is available when we get together, if that is necessary for doing this HDD motor business.” Id. at 80:24-81:12. Georg Papst testified that he never intended to license all Papst Motoren patents to Minebea, only the spindle motor patents. 7/28/05 (a.m.) Trial Tr. at 51:23-25 (G. Papst tes-tim.). 2. The Agreements Founding the Joint Venture 19. PMDM was founded on November 5, 1990, officially as a joint venture between Papst Motoren and Minebea, Ltd. See PTX 193, Joint Venture Agreement (Nov. 5,1990). 20. In establishing the Joint Venture, Papst Motoren and Minebea entered into a number of agreements, including: (a) a General Business Agreement, entered into on October 2, 1990, establishing the joint venture relationship between Papst-Motoren and Minebea, see PTX 169; (b) two Joint Venture Agreements, one to establish a German joint venture entity, see PTX 193 (Nov. 5, 1990), and the other to establish a Thai joint venture entity; (c) an Agreement for the Sale of Intangible Assets (or “Intangible Assets Agreement”), entered into on November 5, 1990, see PTX 195, for Papsh-Motoren to transfer to Minebea various “intangible assets” of Papst’s motor division (including manufacturing know-how and patents on HDD motors) which were “required and necessary” for Minebea’s participation in the HDD motor business; and (d) a License Agreement Regarding Intangible Assets, entered into on March 15, 1991, see PTX 264, for Minebea to license the patent rights acquired from Papst Mo-toren to the joint venture entities, a. The General Business Agreement 21. On October 2, 1990, Minebea and Papst-Motoren entered into the General Business Agreement to establish the parties’ joint venture. Georg Papst signed the General Business Agreement on behalf of Papsh-Motoren. Mr. Goro Ogino signed it on behalf of Minebea. PTX 169, General Business Agreement (Oct. 2, 1990); Jul. 6, 2005 (p.m.) Trial Tr. at 8:4-21 (Mizukami testim.). 22. The “Whereas” clauses of the General Business Agreement noted the following: Papst has been — amongst various operations in other fields of business — engaged for years, and has gained extensive experience, patents, know-how, etc. in research and development (R + D), manufacturing, and sale of Hard Disc Drive Spindle Motors ... and in related fields; ... Minebea has been — also amongst various operations in other fields of business — engaged in manufacturing precision parts and components for HDD Motors and so possesses favorable conditions and local advantage for manufacturing HDD Motors;.... [Bjoth parties to this Agreement intend to closely cooperate in the field of HDD Motors by the establishment of Joint Ventures for R + D, engineering, manufacturing and sale of HDD Motors[.] PTX 169, General Business Agreement (Oct. 2,1990) at 1-2. ■23. The General Business Agreement provided that Minebea and Papst-Motoren “shall jointly incorporate” a joint venture company in Germany (the “GJV”) and a joint venture company in Thailand (the “TJV”), each “on an equal 50/50% basis.” “[T]he purpose” of each joint venture company “shall be to conduct R + D and to develop, manufacture and sell HDD Motors.” PTX 169, General Business Agreement (Oct. 2, 1990) ¶¶ 2-3; see 7/6/05 (p.m.) Trial Tr. at 9:11-14 (Mizukami tes-tim.). 24. The General Business Agreement also provided that: Papst agrees to spin off [its] HDD motor division, including machinery, tools, materials, works in process (the ‘Tangible Assets’), technical information and data, drawings of the HDD motors developed and/or being developed, know-how, the right to use all relevant patents, and the current order balance as of the date of transfer from Papst (the ‘Intangible Assets’) which are all required and necessary for the operation and business of GJV [the German joint venture] and TJV [the Thai joint venture], Papst shall sell the Intangible Assets for the consideration specified in Article 5 hereunder, and shall sell the Tangible Assets to GJV and TJV principally on the book value basis which shall be agreed by the parties hereto. PTX 169, General Business Agreement (Oct. 2, 1990) ¶ 4; see also 7/6/05 (p.m.) Trial Tr. at 8:22-9:19 (Mizukami testim.). b. The Joint Venture Agreement 25. On November 5,1990, Minebea and Papst+Motoren entered into a Joint Venture Agreement to establish their German joint venture. See PTX 193, Joint Venture Agreement (Nov. 5, 1990); 7/6/05 (p.m.) Trial Tr. at 10:7-14 (Mizukami testim.). The Joint Venture Agreement was signed by Georg Papst for Papsi+Motoren and Goro Ogino for Minebea. See id. 26. The Joint Venture Agreement stated that the name of the parties’ new joint venture company would be “Papsh-Mine-bea-Disc-Motor-GmbH” (“PMDM”). PTX 193, Joint Venture Agreement (Nov. 5, 1990) ¶ 3(a). Management responsibilities were divided between Papst-Motoren and Minebea. See id. ¶ 7(c)-(d); 7/6/05 (p.m.) Trial Tr. at 15:24-17:9 (Mizukami testim.). 27. The Joint Venture Agreement stated that “Minebea and Papst ... desire to establish a joint venture company ... in which they will jointly invest, to conduct research and development (‘R & D’), manufacture, and sell hard disc drive spindle motors[.]” PTX 193, Joint Venture Agreement (Nov. 5,1990). 28. The Joint Venture Agreement stated that the scope of PMDM’s activities would include: (a) to conduct R & D, manufacture, market and sell HDD Motors; (b) to establish and organize a facility located in Spaichingen to develop and to manufacture the HDD Motors; (c) to lease the premises and/or space for the Company from Papst; (d) to develop HDD Motors manufacturing technology and other related technologies; (e) to license to use such developed technology to a third party as the Parties [i.e., Papst and Minebea] deem appropriate; (f) to market and sell the HDD Motors to the worldwide market; (g) to provide engineering and technical support to various sales companies to enhance and support sales activities. PTX 193, Joint Venture Agreement (Nov. 5,1990) ¶ 2. 29. The Joint Venture Agreement required that Minebea — having agreed in the October 2, 1990 General Business Agreement to purchase Papst-Motoren’s Intangible Assets for 22 to 28 million Deutsche Marks — would grant to the German Joint Venture “a license with a sublicensing right to TJV [the Thai Joint Venture]” to “use the Intangible Assets in order to support R & D, manufacturing and sales of HDD Motors.” PTX 193, Joint Venture Agreement (Nov. 5, 1990) ¶ 3(e); see also PTX 169, General Business Agreement (Oct. 2,1990) ¶ 5(a). 30. The Joint Venture Agreement further provided that “[n]ew patents, patent applications and petty patents required and necessary for the R + D, manufacturing, use and sale of HDD motors, which arise by Minebea or Papst during the life of the General Business Agreement and this Agreement, shall be made available by Minebea or Papst to GJV [the German Joint Venture] by way of a cost-free, non exclusive and non-assignable license.” PTX 193, Joint Venture Agreement (Nov. 5,1990) ¶ 3(f). c. The Agreement for the Sale of Intangible Assets 31. On November 5,1990, Minebea and Papst Motoren also entered into an Agreement for the Sale of Intangible Assets, signed by Georg Papst on behalf of Papst Motoren and Goro Ogino on behalf of Mi-nebea. PTX 195, Agreement for the Sale of Intangible Assets (Nov. 5,1990). 32. Under this Agreement, Papst was to give up its HDD Motor Division and “convince its customers to transfer current orders and contracts respecting its HDD Motor Division to GJV.” PTX 195, Agreement for the Sale of Intangible Assets (Nov. 5,1990) ¶ 7(c). 33. Under the Agreement, Minebea was granted a license to patents and patent applications “required and necessary for research and development (R + D), manufacturing, 32 engineering, use and sale of HDD motors.” PTX 195, Agreement for the Sale of Intangible Assets (Nov. 5, 1990) ¶ 4(a); see 8/1/05 (p.m.) Trial Tr. at 9:10-10:3 (G. Papst testim.). 34. More specifically, Paragraph 4(a) of the 1990 Intangible Assets Agreement states: Papst as the holder of patents (for the purposes of this agreement the term “patent” is defined as patents, and patent applications) grants to Minebea the right to use all of its patents; especially the predominant German patents and the corresponding international patents, enumerated in Exhibit B[C] attached hereto, world-wide as far as they are required and necessary for research and development (R + D), manufacturing, engineering, use and sale of HDD motors. Minebea as licensee is not entitled to use the patents in other fields. PTX 195, Agreement for the Sale of Intangible Assets (Nov. 5,1990) ¶ 4(a). 35. Paragraph 4(d) of the Intangible Assets Agreement states: Patents which arise or are acquired by Papst during the life of this agreement and which may be required and necessary for research and development (R + D), manufacturing, engineering, use and sale of HDD Motors shall be made available by Papst by granting licenses to Minebea with the provisions of this Article 4(a)-(c) without additional royalties. PTX 195, Agreement for the Sale of Intangible Assets (Nov. 5,1990) ¶ 4(d). 36. On December 10, 1990, Papsfc-Mo-toren and Minebea jointly issued a press release announcing the formation of Papsh-Motoren’s and Minebea’s joint venture and the formation of PMDM. The press release stated in part: The combination of development know-how, engineering expertise and patents of Papst with Minebea’s large scale production capabilities and manufacturing components in cost competitive locations is expected to create synergy effects ensuring competitiveness of the new joint venture companies which will enable them to obtain a leading position in the HDD Motor market. PTX 204, Press release (Dec. 10,1990). 3. Operation of the Joint Venture 37. Following the execution of the several agreements establishing the Joint Venture, Papst-Motoren and Minebea engaged jointly in the business activities contemplated by their several related agreements. 7/6/05 (p.m.) Trial Tr. at 11:20-15:22 (Mizukami testim.). 38. Georg Papst was appointed Ges-chaftsführer, or Managing Director, of PMDM. See 7/6/05 (p.m.) Trial Tr. at 36:12-37:19 (Mizukami testim.); 7/29/05 (p.m.) Trial Tr. at 33:17-20 (G. Papst tes-tim.). He resigned as Managing Director of PMDM on August 5, 1993. See 5/8/03 G. Papst Dep. Tr. at 383:12-15, 385:19-386:9; 7/29/05 (p.m.) Trial Tr. at 33:17-20 (G. Papst testim.). 39. Georg Papst testified that during the existence of the Joint Venture Papst normally did not enforce its patents against motor customers of the Joint Venture or Minebea, on the theory that “as long as we could make business with people, we have normally not asserted our customers for those products where we have sold, shipped them or provided them with motors.” PTX 695, 5/11/95 G. Papst Dep. Tr. (Western Digital litig.) at 155-57. 40. After the formation of the Joint Venture, representatives of Papst-Moto-ren and Minebea jointly visited customers and potential customers in the United States and other countries to promote the Joint Venture’s HDD motors. Georg Papst participated in some of these visits. PTX 209, Letter from G. Papst to R. Mizu-kami (Dec. 19, 1990); 7/6/05 (p.m.) Trial Tr. at 34:24-36:8 (Mizukami testim.). 41. On June 25, 1991, Georg Papst, in his capacity as Managing Director of Papst Motoren, sent a letter to the president of Minebea, Mr. Ogino, offering to sell Mine-bea a license to the Papst Motoren drive patents. DTX 141, Letter from G. Papst to G. Ogino (June 25,1991). The following day, a copy of this letter also was sent by Georg Papst to Mr. Mizukami. DTX 142, Letter from G. Papst to Mizukami (June 26, 1991). In this letter, Mr. Papst advised Mr. Ogino that, pursuant to the current license agreement in place between the parties, neither Minebea nor the Joint Venture had rights under Papst Motoren drive patents. 7/28/05 (a.m.) Trial Tr. at 54:19-59:24 (G. Papst testim.). 42. Georg Papst’s June 25, 1991 letter to Mr. Ogino (with a copy to Mr. Mizuka-mi) stated in part: As you know, Papst owns a large number of international patent rights, which are related to hard disk drives per se, so-called “drive patents” and, also especially to spindle motors, so-called “HDD motor patents.” One drive patent in particular (U.S. RE 32,702) has gained extraordinary importance since not only the market leader Seagate but also numerous other drive manufacturers are or have been using this significant U.S. patent. As you can surely easily imagine, we are more and more confronted with the question of what our position is towards such disk drive manufacturers who, on the one hand, desire to be supplied by PMDM and, on the other hand, have largely used the above mentioned patent in the past or may do so still in the future. Not only have these questions been raised towards your sales people by Toshiba but also, recently, by IBM-Fujisawa. These questions have, of course, resulted in basic considerations on our side. First, we may recall that the patent policy of Papst towards PMDM principally differentiates between such rights with disk drives per se or with HDD spindle motors. For the future use of HDD spindle motor patents such customers can be released by Papst without their having to pay any extra license fee. * * * * ifi * As you know, in the framework of our present agreement, PMDM can make use of all patents of Papst applicable to HDD spindle motors. Drive patents, however, are reserved solely for exploitation directly with the drive manufacturers. It is therefore my proposal to grant to PMDM the right to convey licenses under Papst’s drive patents directly to the drive manufacturers. ****** In return for granting these rights to PMDM, Papst believes that it would be entitled to a fair compensation from Mi-nebea, which, of course, would be a matter of further discussion between us. DTX 141, Letter from G. Papst to G. Ogino (June 25, 1991); see 7/6/05 (p.m.) Trial Tr. at 66:7-72:20 (Mizukami testimony); 7/28/05 (a.m.) Trial Tr. at 54:19-59:24 (G. Papst testim.). 43.Georg Papst testified that he never received a letter from anybody at Minebea in response to his June 26, 1991 letter to Minebea president Ogino, which letter also was sent to Mr. Mizukami. See 7/28/05 (a.m.) Trial Tr. at 59:25-60:5 (G. Papst testim.). Mr. Mizukami testified that he does not recall whether, after he received a copy of Georg Papst’s June 25, 1991 letter to President Ogino, he sent any response to Georg Papst asserting that Mi-nebea already had rights to the drive patents. See 7/6/05 (p.m.) Trial Tr. at 78:9-15 (Mizukami testim.). Other than this asserted lack of recollection at trial, Minebea offered no testimony and no exhibit to contradict anything stated in the letter, or to contradict Mr. Papst’s testi