Full opinion text
ORDER MARY H. MURGUIA, District Judge. Following a jury verdict for Plaintiffs, Bard Peripheral Vascular and David Gold-farb, M.D. (“Plaintiffs”), in this patent infringement case involving United States Patent No. 6,436,135 (the “'135 patent”), W.L. Gore & Associates, Inc.’s (“Gore” or “Defendant”), inequitable conduct claims were tried to the Court during a bench trial that occurred on December 7, 11, and 12, 2007. Since that time, the parties have filed post-trial briefs, including proposed findings of fact and conclusions of law, and have presented oral argument. After considering the trial testimony, oral argument, and the papers submitted, the Court enters this Order addressing the merits of Defendant’s claims of inequitable conduct. Gore claims patent invalidity based on inequitable conduct. In support of its position, Gore asserts seven claims of alleged non-disclosure, misleading disclosure, and false statements during the patent application process that Gore argues support finding the patent unenforceable. Specifically, Gore asserts it can prove the following claims to establish inequitable conduct: 1. Plaintiffs and their attorneys failed to advise the Patent Office of Dr. Volder’s connections with Impra in his 1976 affidavit in which he expressed his opinion on the issue of obviousness as a presumably impartial person skilled in the art. 2. Plaintiffs and their attorneys failed to advise the Patent Office at any time prior to withdrawal of the rejection of Claims 1 to 10 of the Gold-farb patent application, that in 1978 Lenox Baker, M.D., withdrew and repudiated paragraph 6 of his 1976 affidavit filed with the Patent Office. 3. The filing of and reliance on two 1976 affidavits from D. Dan Detton, notwithstanding Mr. Detton’s repudiation of those affidavits before they were filed, and Plaintiffs’ subsequent failure to advise the Patent Office of Mr. Detton’s 1978 repudiation of his 1976 affidavits. 4. Plaintiffs’ reliance on an error that the Patent Office made in connection with the Matsumoto publication in Surgery, in which the Patent Office Examiner mistakenly interpreted the wall thickness in that publication to be 1 millimeter (“mm”) rather than 0.5 mm. 5. Plaintiffs and their attorneys failed to provide information to the Patent Office about Dr. Volder’s work and his possible role as an inventor or co-inventor, including the failure to disclose the existence of and the subsequent destruction of the Voider notebook. 6. Plaintiffs’ and their attorneys’ failed to comply with the Patent Office order requiring production of material information from the Goldfarb v. Impra litigation. 7. Plaintiffs and their attorneys failed to advise the Patent Office Examiner of the existence of the Gore shipping log, which contained information about prior art vascular graft wall thicknesses that was inconsistent with the 1976 affidavits of Harold Green and Mr. Detton, and inconsistent with the argument made by Dr. Goldfarb and Mr. Sutton in persuading the Patent Office Examiner to withdraw the November 1975 rejection of Claims 1 to 10. FINDINGS OF FACT I.PRE-INTERFERENCE EX PARTE PROSECUTION OF THE GOLD-FARB APPLICATION A. FORMATION OF IMPRA 1. In approximately May 1974, Dr. Goldfarb and others, who would later become associated with a company called International Medical Prosthetics Research Associates, Inc. (“Impra”), retained attorney Samuel J. Sutton to assist them in preparing a patent application. Trial Tr., 12/7/07, at pp. 3830-31 (Sutton). 2. One of the reasons Impra retained Mr. Sutton was to help it get a patent on the ePTFE graft. Trial Tr., 11/30/07, at p. 2598 (Sutton). Impra determined that such a patent was critical to its survival. Trial Tr., 12/5/07, at p. 3204 (Gall). 3. In the course of preparing the patent application, Mr. Sutton conducted a thorough investigation into inventorship, during which he met with J.G.R. Voider, M.D., several times between June and August 1974 for the purpose of investigating inventorship. Trial Tr., 11/30/07, at p. 2597 (Sutton). Mr. Sutton also met extensively with Dr. Goldfarb, who gave Mr. Sutton full access to his laboratory research. Trial Tr., 11/07/07, at pp. 416-17 (Goldfarb); Trial Tr., 11/30/07, at pp. 2601-04 (Sutton). 4. In September 1974, there were many claims and contenders for the position of inventor, including Dr. Goldfarb and Dr. Voider. Trial Tr., 12/7/07, at p. 3826 (Sutton); Trial Tr., 11/7/07, at pp. 415-16, 588 (Goldfarb); Trial Tr., 11/30/07, at pp. 2606-07 (Sutton). 5. Mr. Sutton and Impra were concerned in the summer of 1974 that the University of Utah might have an ownership claim to the ePTFE patent if Dr. Voider were the sole inventor or even a co-inventor. Trial Tr., 11/27/07, at pp. 1976-77 and 1983-85 (Baker); Trial Tr., 11/30/07, at pp. 2598-99 (Sutton). 6. At that same time, Mr. Sutton also was concerned about Dr. Goldfarb’s relationship with Arizona State University and the Arizona Heart Institute (“AHI”) and whether either entity may have an ownership claim to the patent application Mr. Sutton was preparing. Trial Tr., 11/30/07, at pp. 2598-99 (Sutton). 7. On September 4, 1974, Mr. Sutton received a letter from William H. Drummond, Dr. Volder’s personal attorney. DX3048. In that letter Mr. Drummond asserted that “Dr. Voider has kept some fairly accurate and complete records of conception, reduction to practice and diligence ... [which] leads me to the opinion that Dr. Voider is the sole inventor.” Id. 8. After receiving Mr. Drummond’s letter, on September 9, 1974, Mr. Sutton met with Drs. Voider and Goldfarb, as well as Don Gall, M.D., Mr. Harold Green, and Richard Mendenhall, to discuss the draft patent application and to investigate inventorship. Trial Tr., 11/07/07, at pp. 412-19 (Goldfarb); Trial Tr., 11/27/07 at pp. 2003-04 (H. Green); Trial Tr., 11/30/07, at p. 2604 (Sutton); Trial Tr., 12/05/07, at pp. 3191-92, 3197-99 (Gall). 9. At the conclusion of this meeting it was unanimously agreed by all attendees, without objection, that Dr. Goldfarb was the sole inventor. Trial Tr., 12/05/07, at pp. 3191-92, 3197-99 (Goldfarb); Trial Tr., 11/27/07, at pp. 2004-05 (H.Green); Trial Tr., 12/05/07, at 3199 (Gall). 10. The conclusion that Dr. Goldfarb was the inventor was reached solely on the scientific merits of Dr. Goldfarb’s work, and appears not to be based on an “election.” Trial Tr., 11/07/07, at pp. 418-19 (Gold-farb); Trial Tr., 11/27/07, at pp. 2004-05 (H. Green); Trial Tr., 12/05/07, at p.3200 (Gall). 11. Mr. Sutton summarized the outcome of this meeting in a September 10, 1974 memorandum that stated that it was “unanimously determined that Impra’s patent application should be filed in the name of Dr. Goldfarb.” PX2. 12. Dr. Voider signed Mr. Sutton’s memorandum affirming that it “accurately summariz[ed] the substance of [the] September 9, 1974 discussions.” PX2. There is no evidence to suggest that Dr. Voider has ever repudiated this signed acknowledgment. B. GORE’S ACTIVITIES IN RELATION TO ePTFE 13. In 1972, research began into the use of expanded polytetrafluoroe-thylene (“ePTFE”) as a vascular graft, when Gore and several surgeons experimented to determine the suitability of ePTFE as a vascular graft. Cooper v. Goldfarb, 154 F.3d 1321, 1324 (Fed.Cir.1998). 14. During 1972-73, Gore manufactured and sent these ePTFE vascular grafts to numerous surgeons to evaluate the material’s suitability for use as a vascular prosthesis. Cooper, 154 F.3d at p. 1324; Trial Tr., 11/8/07, at p. 633 (Goldfarb). 15. One of the surgeons to receive ePTFE vascular grafts from Gore was Dr. Voider, then at the University of Utah. Trial Tr., 11/8/07, at p. 633 (Goldfarb). Dr. Voider co-authored one article concerning his results with this material: Voider, et al, “A-V Shunts Created in New Ways,” Trans. Amer. Society for Artificial Organs, Vol. XIX, pp. 38-42 (published by Aug. 6, 1973) (“the Voider A-V Shunts Article”). PX115JJ at p. PX115.2667-71; DX3247. 16. Dr. Goldfarb also received ePTFE tubing from Gore. H. Green Dep., 7/12/88, at p. 265 (PX116.8867). 17. In 1973 Gore hired Mr. Detton as a “communicator” between the doctors to whom Gore was sending ePTFE tubing for testing and the engineers at Gore. Detton Dep., 6/19/75, at pp. 5-6 (PX115.874-75); Trial Tr., 11/27/07, at p. 1844 (Det-ton). Mr. Detton reported directly to Peter Cooper, the plant manager at Gore. Trial Tr., 11/27/07, at pp. 1844-45 (Detton). In April 1974 Mr. Detton was fired by Gore and, for a short time thereafter, had limited involvement with the formation of Impra until he went to Alaska in June 1974 and had no involvement. Detton Dep., 6/19/75, at p. 102 (PX115.971); Trial Tr., 11/27/07, at pp. 1890-93 (Detton). C. GORE SUES IMPRA 18. Shortly after its formation, Impra and certain individuals associated with Impra, were sued by Gore for allegedly misappropriating Gore’s trade secrets. Gore v. Impra, No. 74-778 PXH WEC (D.Ariz.1974) (PX115.341-61). During the course of this litigation, Mr. Detton and Mr. Harold Green were both deposed in 1975. Detton Dep., 6/19/75 (PX115.870-1005); H. Green Dep., 7/17 18/75 (PX115.1006-1227). 19. Mr. Sutton met with Mr. Detton for about an hour before his deposition. Trial Tr., 12/12/07, at p. 4314 (Detton). Mr. Sutton “did not ask [Mr. Detton] to lie or anything like that.” Id. at pp. 4314, 4317. 20. In his 1975 deposition, Mr. Detton testified that he received a specific request from Dr. Goldfarb in mid-June 1973 for an ePTFE graft with certain specifications. Detton Dep., 6/19/75, at p. 32 (PX115.901). Mr. Detton further testified that he and Mr. Harold Green (then the Gore employee responsible for fabricating ePTFE tubing) immediately started working on adjusting Gore’s production control variables in order to make the grafts specified by Dr. Goldfarb, and that grafts satisfying Dr. Goldfarb’s specifications were delivered to him in mid-July 1973. Detton Dep., 6/19/75, at pp. 21-32 (PX115.890-901). 21. Mr. Detton also testified that in February 1974, he completed and presented internally at Gore a memorandum that was a compilation of the research performed by the various medical researchers, including Drs. Goldfarb and Voider, who were receiving ePTFE tubing from Gore (the “1974 Detton Memorandum”). Detton Dep., 6/19/75, at pp. 42-47 (PX115.911-16). 22. Mr. Harold Green was deposed after Mr. Detton on July 17-18, 1975. H. Green Dep., 7/17-18/75 (PX115.1006-1227). Mr. Green stated that in either June or July 1973 Mr. Detton informed him of what came to be known at Gore as the “Goldfarb Structure.” H. Green Dep., 7/17-18/75, at pp. 54-58 (PX115.1061-68). He identified the “Goldfarb Structure” as that described in the claims of Dr. Gold-farb’s patent application. Id. Mr. Green independently confirmed the physical specifications received from Mr. Detton by calling Dr. Goldfarb directly because the requested grafts were so different then any of the ePTFE tubing that Gore had previously manufactured. PX1150 at p. PX115.280. This telephone conversation was corroborated by Dr. Goldfarb. Trial Tr., 11/07/07, at p. 399 (Goldfarb). Mr. Green then used Dr. Goldfarb’s specifications to prepare grafts for Dr. Goldfarb in the summer of 1973. H. Green Dep., 7/17-18/75, at p. 60 (PX115.1067); Trial Tr., 11/07/07, at pp. 399-400 (Goldfarb). D. PTO PATENT APPLICATION 23. On October 24, 1974, Mr. Sutton filed a patent application with the PTO in the name of Dr. Goldfarb entitled “Prosthetic Vascular Graft” (the “Goldfarb Application”). PX115A. Around the time the Goldfarb Application was filed, Dr. Goldfarb agreed to assign all of his rights in the Goldfarb Application to Impra, which agreement subsequently was memorialized in writing on January 9, 1976. PX1; PX3; PX115M; PX1356; Trial Tr., 11/07/07, at pp. 420-23, 421, 435-37 (Goldfarb). Mr. Sutton was the attorney-of-record for the application. PX115M at p. 115.1. 24. All original claims 1-10 of the T35 patent application were directed to ePTFE vascular grafts, and each required a wall thickness within a particular range. PX115A at p. 115.44-48. 25. On November 26, 1975, the Patent Office mailed its first Office Action in the Goldfarb Application to Mr. Sutton. PX115B at p. PX115.190-92. The Office Action was signed by Examiner R.L. Frinks — the same examiner assigned to the Cooper Application. {See I.K Cooper Patent Application infra.) (who, in fact, mailed an Office Action in the Cooper Application that same day based on three of the same references (PX117.119-23)). Examiner Frinks rejected the Goldfarb Application as being unpatentable as obvious in view of four articles: (i) Soyer, et al., “A New Venous Prosthesis,” Surgery, Vol. 72, page 864 (Dee.1972) (“the Soyer Article”); (ii) Matsumoto, et al., “A New Vascular Prosthesis for Small Caliber Artery,” Surgery, Vol. 74, page 519 (Oct.1973) (“the Matsumoto III Article”); (iii) the Voider A-V Shunts Article; and (iv) Poth, et al., “The Use of Plastic Fabrics as Arterial Prostheses,” Annals of Surgery, Vol. 142, No. 4, pp. 524-632, (Oct. 1955). DX3334, DX3247, DX3009. 26. Mr. Sutton had previously identified the Soyer and Matsumoto III Articles as prior art both in the specification of the Goldfarb Application (PX115A at p. PX115.31.), and in a “Pre-Examination Amendment and Citation of Prior Art,” received by the PTO on April 21, 1975. PX115RR at p. PX115.57. 27. In response to the PTO examiner’s rejection of the Goldfarb Application, Mr. Sutton submitted five affidavits to the PTO in 1976 — one by Mr. Harold Green, one by Dr. Baker, two by Mr. Detton, and one by Dr. Voider. PX115C and PX115Q. 28. Mr. Sutton, who drafted the Green, Baker, and Voider affidavits and submitted them to the Patent Office, testified that those affidavits formed a material portion of the Patent Office files relating to the '135 patent application, and if those affidavits were incorrect, that would be material to the prosecution of the Goldfarb patent application. Trial Tr., 12/7/07, 3854-3855, 3884 (Sutton). Dr. Goldfarb was familiar with these affidavits, he disagreed with at least some of their content, but they were still filed on his behalf in 1976. Trial Tr., 11/7/07, at pp. 537, 540 and 545-46 (Goldfarb). E. THE 1976 AFFIDAVITS 1. DR. VOLDER’S 1976 AFFIDAVIT 29. Dr. Volder’s 1976 Affidavit was executed on July 29, 1976. PX115Q at p. PX115.311. 30. In his affidavit, Dr. Voider stated that he was the author of the Void-er A-V Shunts Article relied on by the examiner and: That, as a result of his early work at the Division of Artificial Organ in the Department of Surgery of the University of Utah, reported in the 1973 ASAIO [Voider A-V Shunts Article], he was able to speculate ... that “It is believed that by increasing the average pore size of the material, at the moment 5, it will be possible to accelerate the process of tissue infiltration and development of capillaries.” PX115Q at p. PX115.308. 31. The 1976 Voider Affidavit further describes how, after the preparation of the Voider A V Shunts Article, Dr. Voider requested that Mr. Detton prepare “thick wall” tubing “including a large number of randomly spaced perforations produced by repeatedly running the tubular structure through a sewing machine ...” and that “his research efforts were, and continue to be, in the direction of vascular grafts having open superstructure, characterized by interstitial distances substantially greater than one hundred microns.” Id. at p. PX115.308-09. Dr. Voider also stated that he had reviewed the claims of the Goldfarb Application prior to its filing in an effort, inter alia, to “ascertain whether any technical overlap or conflict existed between the subject matter claimed ... [and] the work described in the 1973 ASAIO article [Voider A-V Shunts Article]” and that following such review: [H]e [was] of the unqualified opinion that the prosthetic vascular structure conceived and developed by the applicant, while seemingly apparent when viewed with the aid of hindsight, was by no means obvious to those actively conducting research on expanded PTFE vascular structures during 1972 and 1973. Id. at p. PX115.310. Dr. Voider never withdrew this affidavit after he signed it. 32. Dr. Voider was a founding director of Impra. DX3380 at pp. 100376-77; Trial Tr., 12/5/07, at pp. 3207-OS (Gall); PX116III at pp. 116:12853-54, 116:12933. Dr. Void-er also owned stock in Impra and was on its Medical Advisory Board. DX3379, DX3380 at p. 00381; Trial Tr., 12/5/07, at pp. 3200-01 (Gall); PX116III at pp. 12854-55, 116.12965-66. 33. Although Dr. Voider was a shareholder of Impra at the time he signed his affidavit, the 1976 Voider Affidavit does not discuss this affiliation with Impra. PX115Q. In contrast, Mr. Sutton disclosed both Mr. Harold Green’s and Mr. Baker’s affiliation with Impra. Trial Tr., 12/12/07, at pp. 4262-63 (Thesz). 34. However, there is no evidence that Dr. Voider was an officer of Impra at the time he signed his affidavit. Trial. Tr., 12/17/2007, at pp. 4135, 4137-38 (Bjorge). 35. Moreover, there is no evidence that Mr. Sutton, who drafted Dr. Volder’s affidavit, knew of Dr. Volder’s ownership interest in Impra at or before the time the affidavit was submitted, or at any time before 1996. Trial Tr., 12/12/07 at pp. 4263, 4306 (Thesz). Nor is there any evidence that either Dr. Voider or Dr. Goldfarb were aware that Dr. Volder’s ownership interest in Impra possibly should have been disclosed in Dr. Volder’s affidavit. 2. DR. BAKER’S 1976 AFFIDAVIT 36. Dr. Lenox Baker executed his affidavit in support of the Goldfarb Application on March 15, 1976. In his affidavit Dr. Baker stated: Under no conditions presently known to him would he use or recommend the use of a graft characterized by a wall thickness greater than approximately .75 mm, since “thick wall” grafts of this type are surgically unacceptable and accordingly subject the patient to an unreasonably high risk of clinical failure. PX115F at p. PX115.285. 37. Mr. Sutton disclosed in Dr. Baker’s affidavit that Dr. Baker was an officer of Impra. PX115F at p. PX115.283. 38. On April 22, 1976, Mr. Sutton argued to the Patent Office on behalf of Dr. Goldfarb that the 0.2 to 0.8 mm wall thickness range of the claims was an “extremely important” and non-obvious distinction over the prior art. That argument expressly quoted paragraph 6 of Dr. Baker’s affidavit to establish the criticality of a wall thickness range of 0.2 to 0.8 mm and asked the Patent Office to withdraw the pending obviousness rejection. PX115C at pp. 115.219-20; Trial Tr., 12/11/07, at pp. 3949-51 (Bjorge). 39. By February 1978, Dr. Baker believed that his April 1976 affidavit was untrue or inaccurate, and this was communicated to Dr. Goldfarb and his counsel. DX3055 at p. G-11106; Trial Tr., 12/7/07, at p. 3874 (Sutton); Trial Tr., 12/11/07, at pp. 3951-52 (Bjorge). 40. By at least July 1978, Mr. Cates, Dr. Goldfarb’s attorney, was aware of the inaccuracy of Dr. Baker’s April 1976 affidavit. Trial Tr., 12/11/07, at 3958-3959 (Bjorge); DX3481. 41. On November 9, 1978, Dr. Baker was deposed for a second time in the Goldfarb v. Impra litigation. Trial Tr., 11/27/07, at pp. 1978-85 (Baker). During that deposition, Dr. Baker indicated that he wanted to change all of Paragraph 6 of his 1976 Affidavit because he “now believed that our thinking at that time was not correct.” Trial Tr., 11/27/07, at pp. 1978-79 (Baker). Dr. Baker was advised the “most proper way” of describing the inaccuracy of paragraph 6 of his March 1976 affidavit would be “at this deposition” because he understood that it “would undoubtedly end up in the U.S. Patent Office in relation to [the '135] patent application.” Trial Tr., 11/27/07, at pp. 1980-81 (Baker). Dr. Goldfarb was present during that testimony and thereafter read the transcript. PX117 at p. 117.2994, DX3110; Trial Tr., 12/11/07, at p. 4043 (Bjorge). 42. Dr. Baker confirmed, however, that he did not hold these beliefs at the time he signed the affidavit in 1976 and that he believed the affidavit to be true and correct at the time he signed it. Trial Tr., 11/17/07, at p. 1978 (Baker). 3. THE 1976 DETTON AFFIDAVITS 43. Two affidavits, signed by Mr. Det-ton on January 23, 1976, also were filed in April 1976 by Mr. Sutton as part of the argument against the November 1975 Patent Office rejection of Dr. Goldfarb’s application. PX115N; PX115P. These affidavits stated what Dr. Goldfarb purportedly told Mr. Detton about the desirable properties of grafts and what Mr. Detton knew about the wall thickness of grafts purportedly manufactured by Gore before Dr. Goldfarb’s input. PX115P. However, Mr. Detton testified at trial that both such statements in his affidavit were false. Trial Tr., 11/27/07, at pp. 1895-97, 1897-98, 1919 (Detton). 44. On January 23, 1976, in the presence of Mr. Sutton, Mr. Harold Green and Mr. Detton’s then wife Joanie Prestís, Mr. Detton signed the two affidavits that were later submitted to the Patent Office by Mr. Sutton on behalf on Dr. Gold-farb. These affidavits were drafted by Mr. Sutton. Trial Tr., 12/7/07, at pp. 3853-54 (Sutton). 45. At first Mr. Detton refused to sign the affidavits. According to Mr. Detton, Mr. Harold Green pressured Mr. Detton to sign the affidavits. Trial Tr., 12/12/07, at p. 4311. Mr. Detton testified that on the drive home after signing the affidavits he decided that they should not be submitted to the Patent Office because they were “so fallacious.” Trial Tr., 11/27/07, at p. 1898 (Det-ton); Trial Tr., 12/12/07, at pp. 4311, 4317-18 (Detton). 46. On January 26, 1976, the following Monday, Mr. Detton claims to have contacted Mr. Sutton by telephone to request that the affidavits be withdrawn. Trial Tr., 11/27/07, at ■ p. 1898 (Detton). Mr. Detton testified that he told Mr. Sutton that the affidavits had been signed under duress, that he was sending him a letter to that effect, and that he highly objected to them being submitted to the Patent Office. Trial Tr., 12/12/07, at pp. 4311-12 (Detton). 47. Also on January 26, 1976, Mr. Det-ton sent a letter to Mr. Sutton requesting the withdrawal of the affidavits that he had executed on January 23, 1976 on the basis that he “signed them under duress and anger” and because “the claims contained within those affidavits ... are not totally true.” DX3084; Trial Tr., 11/27/07, at pp. 1898-99, 1899 (Detton). The letter was copied to Dr. Goldfarb. DX3084; Trial Tr., 11/27/07, at p. 1899 (Detton). 48. Mr. Sutton denies having received the letter, DX3084, from Mr. Det-ton. Trial Tr., 12/7/07, at p. 3859 (Sutton). 49. Mr. Sutton submitted the two Det-ton affidavits to the Patent Office in April 1976 and relied on them to overcome the 1975 rejection. PX115P. 50. In January or February of 1978 a meeting occurred at the Golden Eagle restaurant between Messrs. Detton, Sutton and Harold Green. H. Green Dep., 11/9/78, (PX115.1652-61). At this meeting, Mr. Detton purportedly indicated that he was “uncomfortable” with his 1976 Affidavits, and asked for the best way to repudiate them. Id. At this meeting, Mr. Detton did not specifically identify anything in his affidavits that he believed to be incorrect, false or otherwise improper. Id. Mr. Sutton told Mr. Detton that he was no longer involved in the prosecution of the Goldfarb Application and that he should retain a lawyer or submit a paper directly to the PTO if he wished to recant his affidavits. Trial Tr., 12/07/07, at pp. 3864-65 (Sutton). Mr. Detton never did so. 51. Impra disclosed this communication to Dr. Goldfarb in an interrogatory response in the Goldfarb v. Impra litigation, verified by Mr. Harold Green on September 11, 1978, which stated that: “During February of 1978, Mr. Detton clearly and unequivocally stated to Mr. Green and ... Samuel J. Sutton, that he (Detton) wishes to repudiate his affidavit and thereby purge the record of any statements that might be false, misleading or ambiguous.” DX3051. Despite repeated requests from Dr. Goldfarb’s attorneys, Impra never provided any details regarding what Mr. Detton believed to be incorrect, false or otherwise improper in his 1976 Affidavits. Trial Tr., 11/07/07, at pp. 444, 448 (Goldfarb). 52. Mr. Sutton recalled that this meeting took place in April, May, or June 1978, after Mr. Sutton’s February 1978 withdrawal as Dr. Gold-farb’s patent counsel. Trial Tr., 11/30/07, at p. 2618 (Sutton). 53. On November 9, 1978, Mr. Harold Green was deposed in Goldfarb v. Impra. Mr. Green testified that the Golden Eagle meeting occurred in January or February 1978. PX116 at p. 116.19059. Mr. Harold Green testified that Mr. Detton said with Mr. Sutton present that he wanted to repudiate his affidavit: [Detton] no longer felt comfortable with the affidavit that he had signed related to the [Goldfarb] patent application and was seeking advice on how best to repudiate that affidavit .... PX116 at pp. 116.19059-60. Mr. Green stated that if Mr. Detton withdrew his 1976 Affidavits this may cast a “shadow” over those paragraphs in the 1976 Green Affidavit referring to Mr. Green’s conversations with Mr. Detton. Id. at pp. PX115.1663-66,1671,1674. 54. Mr. Sutton’s secretary and business partner, Jane Shrum, confirmed that Mr. Sutton learned in or about 1978 that Mr. Detton wanted to change parts of his affidavits. Trial Tr., 12/12/07, at p. 4152 (Shrum). 55. In October of 1978, Dr. Goldfarb and his litigation counsel, Harold Swenson, met with Mr. Detton at the airport in Prescott. PX1308 at p. 1308.3; Trial Tr., 11/07/07, at p. 441 (Goldfarb). At this one-and-a-half to two hour meeting Mr. Det-ton told Mr. Swenson that he did not want to repudiate either of his 1976 Affidavits, and that he was upset that Impra had made such a claim. PX1308 at p. PX1308.3-4; Trial Tr., 11/07/07, at p. 441 (Gold-farb); Trial Tr., 12/12/07, at pp. 4109-12 (Swenson). 56. Mr. Harold Green testified that if Mr. Detton wished to repudiate his affidavits, paragraphs 3, 7, and 9 of Mr. Harold Green’s affidavit would no longer be correct because the information contained therein came from Mr. Detton. PX116 at pp. 116.19071-83. 57. In discussions with Dr. Baker and Mr. Harold Green at different times before Mr. Sutton withdrew as Goldfarb’s patent counsel, Mr. Sutton learned that they were worried about their affidavits because they had been based on Mr. Detton’s affidavits, and that if something was wrong with Det-ton’s affidavits it could have a “domino effect” on the other affidavits. Trial Tr., 12/7/07, at p. 3874 (Sutton). 58. Dr. Goldfarb was aware of Mr. Det-ton’s repudiation, because he was present during Mr. Harold Green’s deposition where it was discussed. PX116 at p. 116.19031; Trial Tr., 11/7/07, at p. 569 (Goldfarb). Dr. Goldfarb also read the transcript of Mr. Harold Green’s deposition by at least July 25, 1979. DX3110. 59. On September 11, 1978, Impra filed sworn Interrogatory responses stating that “Mr. Detton has on numerous occasions prior to February 1978 conveyed to Mr. Harold Green an uneasiness regarding the accuracy of [Detton’s] affidavit.” DX3051 at WGS000449. The sworn interrogatory answers further stated that “[d]uring February 1978, Mr. Detton clearly and unequivocally stated to Mr. Green and the corporate defendant’s patent counsel, Samuel J. Sutton, that [Detton] wished to repudiate his affidavit and thereby purge the record of any statements which might be construed to be false, misleading, or ambiguous.” DX3051 at p. WGS000449. The interrogatory answers were executed by Mr. Harold Green, then president of Im-pra. Trial Tr., 11/27/07, at pp. 1991-92 (H. Green). 60.On February 5, 1980, Mr. Detton executed an affidavit stating that “he questioned the correctness of [the] statements” of his 1976 affidavit and that he “was pressured into signing the affidavit.” PX115X at p. 115.615. That affidavit also confirms that Mr. Sutton was informed in January 1976 that the Detton affidavit “was not correct,” was signed “under duress” and “[Det-ton] wanted the Patent Office to be informed of this.” PX115X at p. 115.615; Trial Tr., 12/12/07, at pp. 4317-18 (Detton). Thus, the 1980 Detton Affidavit provides in its entirety as follows: The undersigned D. Dan Detton deposes and says: (1) That he is presently a resident of the State of Colorado residing at 10 Spruce Drive, Montrose, Colorado. (2) That he executed an affidavit entitled “Affidavit of D. Dan Detton Relating to Source and Origin of Material Comprising Specification of the Cooper Application” (copy attached) January 23, 1976, which he understands was filed in the patent application for David Goldfarb, Serial No. 517,415, filed October 24,1974. (3) That before execution, he questioned the correctness of statements included in said Affidavit, which had been prepared by representatives of IM-PRA, then assignee of the Goldfarb application, but was pressured into signing the Affidavit. (4) That he informed Mr. Sutten [sic], counsel for IMPRA, by telephone communication on January 26, 1976, (copy of text attached) that he felt that the Affidavit was not correct, that he had signed it under duress, and that he wanted the patent office to be informed of this. (5) That the vascular structures reported in his memorandum entitled “Gore-Tex® Medical Product Developments: A Summary of Current Research Findings” (February 1974) as being successful, and the specifications of those structures including wall thickness, density, fibril length and the like, were determined as a result of the investigations reported in the memorandum, and had not been predicted by any of the medical investigators prior to institution of the reported work, and specifically, that neither David Goldfarb nor Peter Cooper described to him prior to the investigation at Arizona Heart Institute which commenced during the Summer of 1973 those specifications such as wall thickness, density and fibril length of a vascular graft that would be successful. PX115X at p. PX115.615-16. 61.On September 13, 1985, Mr. Lawrence Green, one of Dr. Goldfarb’s patent attorneys, met with Mr. Detton. DX3209. After the meeting, Mr. Lawrence Green sent a letter to Mr. Detton requesting that Mr. Detton sign another affidavit in order to clarify his position with respect to the 1976 Affidavits. Id. Mr. Detton failed to respond to this letter. 4. HAROLD GREEN’S 1976 AFFIDAVIT 62. The 1976 Green Affidavit was executed on March 2, 1976 after Mr. Harold Green had left Gore’s employ. PX115C at p. PX115.279-282. There is no evidence that once Mr. Green left Gore, he had access to Gore’s internal documents, including any production or shipping logs that might have evidenced the work he did while at Gore. The 1976 Green Affidavit states: “based upon his personal knowledge of pri- or art efforts to achieve an operative prosthetic, he believes that all prior research was directed to and incorporated ‘thick wall’ tubes having wall thicknesses equal to or greater than approximately one milimeter [sic] (1mm).” PX115C at p. 115.281. 63. The 1976 Green Affidavit, also mirrored Mr. Harold Green’s 1975 Gore v. Impra testimony regarding Dr. Goldfarb’s inventorship stating, among other things, that: (i) Mr. Detton communicated the “Gold-farb Specifications” to him in the spring and early summary of 1973; (ii) Mr. Green independently verified the specifications by contacting Dr. Goldfarb directly because such structures “were at substantial variance with the structures previously used and requested by other cardiovascular researchers;” and (iii) having confirmed Dr. Goldfarb’s specifications Mr. Green immediately began making the requested grafts. PX1150 at p. 115.280. 64. Mr. Sutton disclosed in Mr. Green’s affidavit that Mr. Green was an officer of Impra, the assignee of the Goldfarb Application at the time he signed the affidavit. PX115C at p. PX115.279. F. PTO’S MISTAKE ABOUT MAT-SUMOTO WALL THICKNESS 65. The Matsumoto Surgery article shows a graft wall thickness of 0.5 mm. Trial Tr., 11/8/07, at p. 653 (Goldfarb); Trial Tr., 11/28/07, at pp. 2101-02 (Goldfarb). However, the Patent Examiner mistakenly believed that the Matsumoto III article disclosed a graft wall thickness of 1 mm. DX3055 at p. G-11106; Trial Tr., 12/4/07, at pp. 2893-94 (Bjorge). 66. In his remarks in the Office Action, Examiner Frinks noted the following: to further make wall thickness 1 mm or less for small diameters such as taught by [the Matsumoto III Article] would be obvious. Applicant’s specific wall thickness of 0.2-0.8 mm is not seen to be a patentable distinction over wall thickness of [the Matsumoto III Article] in the absence of proven criticality. PX115SS at p. PX115.191. Although Examiner Frinks had the Mat-sumoto III Article, from which a wall thickness of 0.5 mm could readily be calculated (Trial Tr., 11/08/08, at pp. 653-54 (Goldfarb); Trial Tr., 11/28/07, at p. 2174 (Wheeler); DX 3009 at p. 519), he apparently misinterpreted the Matsu-moto III Article as disclosing a wall thickness of 1.0 mm. Mr. Sutton testified as to the “substantial confusion” concerning the wall thickness disclosed in the Matsumoto III Article at the time he filed the Goldfarb Application. Trial Tr., 11/30/07, at p. 2612 (Sutton). 67. The Patent Office Examiner, in the November 1975 rejection, effectively asked for a showing that the claims range of 0.2 to 0.8 mm was “critical” compared to the prior art. Trial Tr., 12/4/07, at pp. 2893-94 (Bjorge). 68. Mr. Sutton acting for Dr. Goldfarb provided such a showing by relying on the 1976 Baker affidavit and Mr. Harold Green’s 1976 affidavit, asserting that all prior art vascular grafts “incorporated ‘thick wall’ tubes having wall thicknesses equal to or greater than approximately one millimeter.” PX1150. Summarizing, Mr. Sutton stated in his April 1976 response to the Patent Office that: “all prior art efforts (including those of Dr. Voider) were based upon the use of ‘thick-walled’ commercial PTFE tubing characterized by wall thicknesses greater than 1 mm.” PX115E at pp. 115.217. 69. After the Patent Office rejected Dr. Goldfarb’s patent application, Mr. Sutton sought to distinguish the Matsumoto III Article by arguing that: Applicant finds no teaching as to the importance of uniform distribution of nodes and no teaching of the important relationship between wall thickness and internodular distance. Matsumoto [III] refers to “porosity” for a definition of internodular distance; however, it is possible to have an eighty percent porous sample of PTFE which has either a few very large nodes or many small nodes per unit volume. PX115E at p. PX115.218. 70. Impra’s February 1978 letter to Dr. Goldfarb’s counsel acknowledged the Patent Office Examiner had made a mistake as to wall thickness. DX3055 at p. G-11106. Dr. Goldfarb’s counsel, Mr. Cates, conceded the error as well. PX1236 at p. 1236.3 (acknowledging that Matsumoto has a 0.5 mm wall thickness). 71. Dr. Goldfarb disclosed the correct wall thickness during the interference. PX116W at p. PX1116.2676. The PTO found wall thickness not to be a critical or material factor in the invention. See PX116 at p. 116.7300; PX116 at p. 116.4175-77. G. DR. VOLDER’S INVENTOR-SHIP CLAIMS AND NOTEBOOK 72. On September 4, 1974, Dr. Volder’s personal attorney, Mr. Drummond, wrote to Mr. Sutton asserting that, based on Volder’s “fairly accurate and complete records” (the “Voider Notebook”), Mr. Drummond believed Dr. Voider to be “the sole inventor” of “developments relating to the artificial blood vessel.” DX3048. 73. At some point, Dr. Voider provided Mr. Sutton with a copy of the Void-er Notebook which he asked Mr. Sutton to retain “in confidence.” Trial Tr.,12/07/07, at p. 3825 (Sutton). Mr. Sutton claims Dr. Voider provided the Notebook to him in approximately April 1977. Id. 74. Mr. Sutton — the only person apart from Dr. Voider and his attorney known to have personally reviewed these notes — described the Voider Notebook as reflecting Dr. Volder’s early work on ePTFE grafts, documenting “many failures,” and having a “delightful and close correlation” with the Voider A-V Shunts Article which was a “publication of [the] same data.” Trial Tr., 11/30/07, at pp. 2595-96 (Sutton); Trial Tr., 12/07/07, at p. 3739 (Sutton). 75. Dr. Goldfarb asserted under oath in 1979 that Mr. Sutton had possession of the actual Voider notebook in September 1974. DX3110. Mr. Sutton denies he had the notebook before April 1977, when he claims to have received it from Dr. Voider in confidence for safekeeping. DX3062; Trial Tr., 12/7/07, 3825 (Sutton). Mr. Sutton did not advise the Patent Office of the existence of the Voider notebook before he withdrew as Impra’s counsel in February 1978. 76.On January 18, 1982, Dr. Gold-farb’s attorney Mr. Cates sent a letter to Mr. Harold Green noting that neither Impra, nor Mr. Sutton, had provided a copy of the Voider Notebook and again asking for Im-pra, or Mr. Sutton, to provide the requested materials. DX3060. On January 22, 1982, Mr. Sutton responded to Mr. Cates’ letter stating that he had received a copy of the Voider Notebook “under conditions of confidentiality.” DX 3062. Mr. Sutton also told Mr. Cates that the Voider notebook contained “detailed, fully witnessed entries which evidenced Dr. Volder’s work on ePTFE structures dating back to the early 1970’s” and that the contents of the notebook was one of the factors that “precipitated Im-pra’s decision to cease further prosecution of the [Goldfarb] application.” DX3062. Further, Mr. Sutton informed Mr. Cates that he could not release his copy of the Voider Notebook “without Dr. Volder’s express consent” but that Mr. Cates was “free to contact Dr. Voider directly and seek his permission” to obtain the Voider Notebook. Id. Mr. Cates did not tell the Patent Office about the existence of the Voider notebook. 77. Mr. Sutton retired from the practice of law in the early 1990s. Trial Tr., 12/07/07, at pp. 3822-23 (Sutton). In the course of winding up his legal practice between 1990 and 1995 Mr. Sutton had hundreds of boxes of files sent to a paper mill for recycling. Id.; Trial Tr., 11/30/07, at p. 2627 (Sutton). The Voider Notebook in Mr. Sutton’s possession was likely included among these files. Trial Tr., 11/30/07, at pp. 2594-96 (Sutton); Trial Tr., 12/07/07, at p. 3825 (Sutton). 78. No one had requested the Voider Notebook from Mr. Sutton in over 15 years, and Dr. Voider had not given him permission to release it. Trial Tr., 11/30/07, at pp. 2627-28 (Sutton). Gore’s patent law expert, Mr. Bjorge, testified that as a matter of PTO practice and procedure, a presumption has emerged that an invention is “abandoned, suppressed or concealed,” and thus is not prior art, if it is kept secret for “a period of 18 months to two years.” Trial Tr., 12/04/07, at pp. 2954-55 (Bjorge). Mr. Thesz agreed with Mr. Bjorge that the so-called Voider Notebook would “satisfy the patent office definition of material that would be considered abandoned, suppressed or concealed,” and thus would not constitute prior art. Trial Tr., 12/05/07, at pp. 3311-12 (Thesz); Trial Tr., 12/12/07, at pp. 4261-62 (Thesz). 79. On August 26, 1996, immediately prior to Bard’s acquisition of Im-pra, James Polese, an attorney for Impra, wrote to Mr. Lawrence Green noting that he had been in touch with Dr. Voider and asking if Mr. Green would like the Voider Notebook which Dr. Voider had indicated he was “confident ... would confirm that Dr. Goldfarb is not the inventor of the Goldfarb invention.” DX 3864. At the time of writing his letter Mr. Polese had never seen the Voider Notebook and had no knowledge of its contents or its relevance to the Gold-farb Application. Trial Tr., 11/30/07, at p. 2640 (Polese). 80. Although Mr. Lawrence Green did not believe that Dr. Volder’s claim of inventorship was credible, because it was inconsistent with Peter Cooper’s representations that “he was quite familiar with all of the work of all of these doctors, including Dr. Voider, and that none of these doctors had done anything inventive and that none of them had made any contribution to his invention,” he asked to see a copy of the Voider Notebook. Trial Tr., 12/12/07, at p. 4221 (L. Green). Accordingly, in October of 1996, Mr. Polese wrote to Dr. Voider requesting that Dr. Voider send his notebook directly to Mr. Green, or to have Mr. Sutton or the “current holder” of the Voider Notebook (or a copy) send a copy. DX3160; Trial Tr., 11/30/07, at pp. 2632-36; 2641-42 (Polese). Dr. Voider did not send the notebook do so and maintained the confidentiality of the Voider Notebook. Trial Tr., 11/30/07, at pp. 2640-41 (Polese); Trial Tr., 12/12/07, at pp. 4221-22 (L. Green). 81. Mr. Lawrence Green never told the Patent Office of Dr. Volder’s claim and in 2001, when the Goldfarb Application was returned to the patent examiner following the resolution of the interference, Mr. Green testified he had forgotten about letter. Trial Tr., 12/12/07, at p. 4219 (L. Green). 82. In September 1996, after Dr. Void-er received payment from Bard for his shares of Impra, Dr. Voider contacted Mr. Sutton and sought his aid in using the content of the notebook he believed to be in Mr. Sutton’s possession to “KO” the Goldfarb patent. DX3095. Mr. Sutton declined to assist Dr. Void-er. DX3096. 83. Mr. Sutton was unable to produce the Voider notebook in this litigation. Mr. Sutton testified that he destroyed the notebook during his retirement from law practice at or about the time that C.R. Bard, Inc. (“Bard”) agreed to acquire Impra’s stock. Trial Tr., 11/30/07, at pp. 2628-29 (Sutton); Trial Tr., 12/7/07, at p. 3823 (Sutton); Trial Tr., 12/12/07, at pp. 4168-70 (Shrum). H. GOLDFARB SUES IMPRA 84. On September 20, 1977, Dr. Gold-farb sued Impra (then the exclusive licensee of the Goldfarb Application), and subsequently terminated Impra’s license to the Goldfarb Application in December 1977. Goldfarb v. Impra, No. C-3568330 (Ariz. Sup.Ct., Maricopa 1977) (PX3); Trial Tr., 11/07/07 at pp. 431-37 (Goldfarb). At that point in time, Dr. Goldfarb’s and Impra’s interests in the Goldfarb Application diverged and they became adverse to each other. Trial Tr., 12/12/07, at p. 4108 (Swenson). Dr. Goldfarb confirmed that the relationship between he and Impra deteriorated following the lawsuit and that “[t]here was no relationship. Basically a very bad one,” between he and Impra, and that “what IM-PRA [was] trying to do is undermine my patent application with me as the inventor.” Trial Tr., 11/07/07, at pp. 437, 440 (Goldfarb). 85. Because Mr. Sutton was Impra’s attorney and “appeared to be involved in the efforts to make things very difficult for me to pursue the patent prosecution,” (Id. at p. 439), Dr. Goldfarb revoked Mr. Sutton’s power of attorney to prosecute the Goldfarb Application on January 6, 1978, and granted power of attorney to Mr. Charles Cates in his place. PX115T. Mr. Sutton signed his withdrawal as Dr. Gold-farb’s counsel before the PTO on February 21, 1978. PX115.582. Mr. Sutton’s involvement in the prosecution of the Goldfarb Application effectively ceased in January when his power of attorney was revoked by Dr. Goldfarb. Trial Tr., 12/12/07, at pp. 4248-50 (Thesz). The relationship between Mr. Cates and Mr. Sutton was neither cooperative nor amicable and they did not collaborate on the prosecution of the Goldfarb Application. Trial Tr., 12/07/07, at pp. 3877, 3886 (Sutton). 86. Testimony during depositions in the Goldfarb v. Impra litigation established that, as of that time, Dr. Voider was still asserting his claim of inventorship. Trial Tr., 11/27/07, at pp. 1977-78 (Baker). 87. Interrogatory responses by Impra in that case established Dr. Volder’s claim of inventorship, the existence of Dr. Volder’s notebook and Impra’s belief in Dr. Volder’s claim. DX3051. 88. Dr. Goldfarb and Impra settled their lawsuit in 1979, and in an assignment dated May 21, 1979, Impra assigned to Dr. Goldfarb all rights in the Goldfarb Application. DX3475. Subsequent to the settlement of the Goldfarb v. Impra lawsuit, Mr. Cates wrote a letter to Dr. Goldfarb’s Australian patent counsel summarizing his understanding of the various allegations made by Impra in the Baker and Harold Green deposition testimony and the interrogatory responses provided in that lawsuit. DX3481. In that letter, Mr. Cates noted: From these documents, the evasiveness and lack of candor of IMPRA and the deponents emerges clearly. The witnesses’ motivations should also be clear: They are heavily interested in IMPRA which is a company that makes essentially one product, and the assignment of the patents and patent applications covering that product was cancelled. They are highly motivated to detract as much as they can from Dr. Goldfarb’s patent position. Id. at p. IVG6083138. I. VERMEIRE LETTER AND GOLDFARB’S DUTY TO THE PTO 89. On February 21, 1978, in conjunction with Dr. Goldfarb assuming responsibility for prosecution of the Goldfarb Application, Mr. Albert A. Vermiere, Impra’s litigation counsel in the Goldfarb v. Impra suit, sent all prosecution files to Mr. Swenson, Dr. Goldfarb’s litigation counsel. DX3055. 90. The Vermiere letter referred to Mr. Detton’s repudiation of both of his affidavits. The letter stated, “Mr. Detton has indicated to various persons, including Dr. Gold-farb, that he wishes to repudiate portions of his affidavits.” DX3055 at p. G-11106. 91. The Vermeire letter also stated that Impra had decided to file “expanded or correct affidavits from Messrs. Baker, Detton, Goldfarb, Green and Voider.” As to Dr. Baker, Impra’s attorney wrote: “Dr. Baker has indicated that certain statements in his affidavit relating to the criticality of wall thickness, although correct when made, are misleading if not totally incorrect in view of later information which has been developed on wall thickness.” DX3055 at p. G-11106. 92. In addition, the Vermeire letter stated that “the Matsumoto article as finally published includes reference to wall thicknesses of 0.5 mm, which is within the range of wall thicknesses claimed by IMPRA.” DX3055 at p. G-11106. Mr. Ver-meire stated that: “it seems appropriate to at least clear the record on this point by advising the examiner regarding the wall thickness reference in the later published Matsumoto reference.” DX3055 at p. G-11106. 93. The Vermeire letter further stated that “[tjhere appears to be a substantial claim to prior or concurrent inventorship by Dr. Voider. This is evidenced by certain entries in his log-book which purport to have been dated and witnessed in 1971.” DX3055 at p. G-11105. 94. The Vermeire letter concluded with a statement of the duty of disclosure to the Patent Office: “it is our strongest recommendation that the various Patent Offices be fully informed regarding the matters set forth above since failure to do so may irreversibly affect the validity or enforceability of any patent rights which IMPRA may ultimately obtain.” DX3055 at p. G-11107. 95. Dr. Goldfarb acknowledges that he was aware of the Vermeire letter and its allegations, as was his attorney, Mr. Cates, and as was Mr. Sutton. Trial Tr., 11/7/07, 438-439, 561-562 (Goldfarb); Trial Tr., 11/30/07, 2619-2620 (Sutton); Trial Tr., 12/7/07, 3885 (Sutton); Trial Tr., 12/12/07, 4109 (Swenson); PX1236. 96. Mr. Vermiere’s letter did not provide any details or evidence to support these allegations. Mr. Harold Green testified that this letter, and other disclosures provided by Im-pra in connection with the Goldfarb v. Impra litigation, were part of an effort by Impra to “torpedo” the Goldfarb Application in order to avoid potential litigation in the future. Trial Tr., 11/27/07, 2001 (H.Green); Trial Tr., 11/07/07, at p. 440 (Goldfarb). 97. Dr. Baker, the largest shareholder of Impra, with approximately 25 percent of the shares, as well as an officer of Impra and chairman of its board, was deposed the day after the date on the Vermiere letter (ie., February 22, 1978) in the Goldfarb v. Impra litigation. Trial Tr., 11/27/07, at pp. 1975-76 (Baker). During his deposition Dr. Baker stated that there were several claims to inventorship of the Goldfarb Application, including those of Dr. Voider, Dr. Campbell, Mr. Harold Green and Mr. Detton, but that Dr. Goldfarb had been “elected” inventor at the September 9,1974 meeting. Id. at p. 1977. Dr. Baker, however, admitted that he had no personal knowledge of anyone with a claim of inventorship to the Goldfarb Application other than Dr. Goldfarb, and that he was not present at the September 9, 1974 meeting when the so-called “election” occurred. Id. Dr. Baker also never testified that he believed that the determination of inventor-ship was false, or that there was a purposeful misstatement of inven-torship. Id. at pp. 1977, 1982-83. 98. Following receipt of Mr. Vermi-ere’s February 21, 1978 letter, Mr. Swenson wrote to Mr. Vermiere on March 10, 1978, noting that “[t]he opinions now expressed by your principals in this obtuse fashion are highly suspect, coming as they do from biased parties to a lawsuit.” PX1233; Trial Tr., 11/07/07, at pp. 442-45 (Goldfarb). In his letter, Mr. Swenson asked Impra: “[I]f you have facts to support your self-serving opinions and innuendos, please make them known to us.” PX1233 at p. PX1233.2 (emphasis original). In particular, Mr. Swen-son asked for Impra to “send a copy of the Voider notes” so that they could “draw our own conclusions.” Id. at p. PX1233.1. As Dr. Goldfarb explained, this letter was the start of a series of attempts “to get from IMPRA or Dr. Voider or both the objective evidence from them to support their allegations.” Trial Tr., 11/07/07, at pp. 447-49 (Goldfarb). However, Dr. Goldfarb and his attorneys were never able to get a clear understanding of Im-pra’s allegations. Id. at p. 449. 99. On July 19, 1978, having received no response from Mr. Vermeire, Mr. Cates sent a letter to Mr. Sutton requesting copies of the Voider Notebook. PX1236; Trial Tr., 11/07/07, at pp. 446-48 (Goldfarb). In his letter, Mr. Cates stated that if the Voider Notebook was indeed “confidential” and undisclosed, then it would not qualify as invalidating prior art. PX1236. Mr. Cates’ letter also requested that Mr. Sutton provide “candid and unequivocal answers” to the questions relating to the Baker, Green, Detton and Voider affidavits, and Dr. Volder’s claim to prior or concurrent inven-torship, raised in Mr. Vermiere’s letter. Id. Mr. Cates never received any substantive response to this letter. Trial Tr., 11/07/07, at p. 452 (Goldfarb). Mr. Sutton responded by saying that he could not provide any answers because he had not received the earlier letters between Mr. Vermeire and Mr. Swenson. Id.; PX1237. 100. On April 9, 1979, Mr. Cates sent a letter directly to Dr. Voider in the Netherlands requesting that Dr. Voider “waive confidentiality of [the Voider Notebook] and permit Mr. Sutton to let us make copies and inspect the original.” DX3058; Trial Tr., 11/07/07, at pp. 455-57 (Goldfarb). Neither Dr. Goldfarb nor his attorneys received a reply to this letter from Dr. Voider. Trial Tr., 11/07/07, at p. 456 (Goldfarb). On June 27, 1979, Mr. Sutton wrote to Mr. Cates directing him to “terminate all further direct communications with Dr. Voider,” and to contact Mr. Sutton if he wished to pursue further the matter of the Voider Notebook. PX1307; Trial Tr., 11/07/07, at pp. 456-58 (Goldfarb). Mr. Sutton re-emphasized that he had “received Dr. Volder’s logbook in confidence.” PX1307. J. CONTINUED EXAMINATION BY THE PTO 101. On September 23, 1980, Dr. Gold-farb licensed his rights in the Goldfarb Application to Bard (i.e. C.R. Bard). Trial Tr., 11/7/07, 461-462 (Goldfarb); PX4. On June 24, 1981, Mr. Arthur Bookstein, a patent attorney representing Bard, was appointed as an additional attorney in the Goldfarb patent application. PX.115.606. Mr. Bookstein assumed the lead responsibility for the prosecution of the Goldfarb Application and Mr. Cates’ involvement in the prosecution of the Goldfarb Application thereafter was “zero.” Trial Tr., 12/12/07, at p. 4252 (L.Green); Trial Tr., 12/12/07, at pp. 4251-52 (Thesz). As with Mr. Cates, Mr. Bookstein, never met with Impra’s lawyer, Mr. Sutton, while Impra was adverse to Dr. Goldfarb. Trial Tr., 12/07/07, at p. 3794 (Bookstein). 102.On July 16, 1979, Mr. Cates, acting as Dr. Goldfarb’s attorney, filed in the Patent Office a “Motion to Return File to Examiner for Determination of Patentability Issues,” disclosing the existence of the Goldfarb v. Impra litigation and requesting that the Goldfarb Application be returned to the Examiner for continued prosecution. PX115U at p. 115.585. In disclosing the existence of the Goldfarb v. Impra litigation, Mr. Cates specifically noted that “the record of [the lawsuit] is available to the Patent and Trademark Office” and that the “[a]pplicant desires that the record of those proceedings along with the records of the Gore case (in Federal District Court) and Cooper case (in Arizona State Court), both previously referred to in this application file, be made available to the Commission for consideration.” Id. 103. On December 11, 1979, the Assistant Commissioner for Patents granted Dr. Goldfarb’s motion to return the file to the Patent Office Examiner, PX115V, and stated that “[Goldfarb] and his attorney [were] required to submit portions of the record, including depositions, pleadings, etc. in connection with the [Goldfarb v. Impra ] litigation, and any other information that they were aware of which was material to the examination of the application.” PX115 at p. 115.593. 104. In the time between the December 11, 1979 Order of the Assistant Commissioner (PX115V), which required production of material from the Goldfarb v. Impra case, and the July 8, 1981 decision (PX115W), neither Dr. Goldfarb nor his attorney submitted the requested documentation from the Goldfarb v. Impra case. Trial Tr., 12/11/07, 3954, 4058-4060, 4061 (Bjorge). 105. PTO Examiner William Pieprz mailed the second Office Action twice: once on April 29, 1981 and again on July 8, 1981. PX115W. Examiner Pieprz — who also assumed responsibility for the Cooper Application (PX117.3699-714) — determined that “the record developed in this application, taken as a whole totally and fully supports the conclusion that Dr. Goldfarb is properly named as the inventor of this application,” thus withdrawing the November 1975 rejection of Goldfarb’s claims 1 to 10. PX115W at p. 115.603. 106. In that second Office Action relating to the Goldfarb Application, Examiner Pieprz withdrew his prior rejection of the claims over the Soyer, Voider A-V Shunts and Matsumoto III articles without explanation and instead rejected claims 1-6 as obvious over an article by Dr. Campbell, “Expanded Polytetrafluoro-Ethylene as a Small Artery Substitute,” dated 1974 (the “Campbell Article”). PX115.2589-93. Consistent with PTO practice and procedure, the examiner treated the Campbell article as prior art to the Goldfarb Application, even though it was dated 1974, and the burden was placed on Dr. Goldfarb to “go find the information and argue about whether it was a proper — proper prior art reference or not.” Trial Tr., 12/12/07, at p. 3286 (Thesz). 107.Mr. Bookstein responded to Examiner Pieprz’s Office Action on December 10, 1981, arguing that the Campbell Article was not pri- or art because it was not published until January 1975. PX115X at pp. 115.609-14. In addition, although noting that he had “some reasons to believe that the examiner already may be aware of this document because it may have been filed in connection with the ‘Cooper Application’,” Mr. Book-stein submitted a copy a the February 5,1980 Detton Affidavit that he had obtained from the Australian Patent Office. PX115X; PX116GGG at p. PX116.3718. In submitting the 1980 Detton Affidavit, Mr. Bookstein noted that “applicant submits it without vouching in any way for the authenticity of the document or for anything else concerning the document or any subject matter stated or suggested therein,” and further noted that the 1980 Detton Affidavit “does not appear to seek to contradict or vary the Second Det-ton affidavit or the Green affidavit PX115X at p. PX115.611. 108. Mr. Bookstein further disclosed to the PTO that there were deposition transcripts from the Gore v. Impra, Goldfarb v. Impra, and Goldfarb v. Gore litigations that were “potentially relevant” to the Goldfarb Application. PX115X at pp. 115.611-13. Noting that it was “applicant’s understanding that the examiner may have obtained and reviewed numerous volumes of deposition transcripts” already, Mr. Bookstein identified three lists of deposition transcripts in order “to confirm that the examiner has had an opportunity to review all potentially relevant deposition transcripts.” Id. at p. 115.611. 109. One list identified those transcripts from the Gore v. Impra litigation that were filed under seal which “it is believed that the examiner already may have reviewed ... and, therefore, it is unnecessary for applicant to make further efforts to duplicate them for the examiner.” PX115X at p. 115.612. A second list identified those transcripts which were not under seal and which were available to the examiner “although applicant’s undersigned counsel does not consider them to be particularly relevant or a variance with any conclusion which the examiner has come to.” PX115X at p. 115.613. This second list included the November 1978 Dr. Baker deposition and the November 1978 Harold Green deposition, which had already been provided to Examiner Pieprz in the Cooper Application. PX117.2992-3054; PX117.3544-630. 110. On May 18, 1982, Examiner Pieprz issued his third Office Action pertaining to the Goldfarb Application, in which he maintained his prior rejection over the Campbell Article based on his understanding that the substance of the article was presented orally in April 1974. PX115Y. Examiner Pieprz also stated his reliance on Mr. Bookstein’s representations concerning the depositions in the Goldfarb v. Impra litigation. He stated as follows: — Even though Mr. Bookstein had just provided the 1980 Detton Affidavit, it had “been considered in formulation of the prior Office Action” and that it “is not considered to have any effect on the status of [the Goldfarb Application]”; — He had reviewed all but two of the Gore v. Impra deposition transcripts, but did not need copies of these documents because they would not “yield any significant new, information relevant to the [Goldfarb Application]”; and, — He had not reviewed “most” of the Goldfarb v. Impra and Goldfarb v. Gore deposition transcripts and would accept Mr. Bookstein’s representation regarding their relevance “at face value.” — Mr. Bookstein, as counsel for the applicant, is the “final arbiter” of what documents from the Goldfarb v. Impra litigation must be submitted to the Patent and Trademark Office “in satisfaction of his ‘duty to disclose.’ ” PX115Y at pp. PX115.640-41. 111. Examiner Pieprz had, however, reviewed the 1978 deposition transcripts of Mr. Harold Green and Dr. Baker from the Goldfarb v. Impra litigation in connection with the Cooper Application. PX117.2992-3052; PX117.3055-283. 112. A telephonic interview was held on May 27, 1982, during which Mr. Bookstein argued that the Campbell Article was not prior art because Dr. Goldfarb invented the subject matter of the Goldfarb Application prior to the April 1974 disclosure. PX115.642. As support, Mr. Bookstein relied on the Second Detton Affidavit and the 1976 Green Affidavit. PX1150. 113. On August 27, 1982, Examiner Pieprz withdrew his previous rejections and accepted Mr. Book-stein’s argument. The prior rejection over the Campbell article was withdrawn due to the Detton Affidavits and the 1976 Green Affidavit, which “makes clear that applicant had already invented the claimed subject matter prior to the date of the above noted oral presentation.” PX115DD at p. 115.69