Full opinion text
AMENDED OPINION DAVID S. PORTER, District Judge: These are consolidated actions in which plaintiff charges the defendant with infringement of patents on automatic tool changers important to automation in the machine tool industry. In such actions the defendant in its amended answer asserts the defense of collateral estoppel and in a counterclaim charges plaintiff with antitrust violations and seeks declaratory judgment that plaintiff’s patents in suit are invalid, not infringed, and unenforceable. The jurisdiction of the Court is not contested. Plaintiff, Kearney & Treeker Corporation (a Wisconsin corporation), is engaged primarily in the manufacture and sale of machine tools. The defendant, Cincinnati Milacron, Inc., and its wholly owned subsidiary Cincinnati Milacron Company (herein referred to collectively as defendant or as “Cincinnati”), are Ohio corporations, also engaged primarily in the manufacture and sale of machine tools. The patents charged to be infringed are Morgan Re. 25,812, and Brainard, et al., Re.-Re. 25,737. In its original complaint the plaintiff claimed that still another patent was infringed. In the course of discovery in this litigation and similar litigation involving the Brainard patent in the Eastern District of Wisconsin, it came to light that after issuance of the Brainard patent plaintiff had employed as a consultant Thomas Emmert Beall, formerly the Primary Examiner of the Division of the Patent Office to which the Brainard patent had been assigned. As such consultant for •Kearney & Trecker, Beall worked on the reissue and re-reissue of the Brainard patent, the prosecution of the shuttle patent (No. 3,099,873) and the acquisition and reissue of the Morgan patent. This raised a question of fraud on the Patent Office (conflict of interest) and, on the advice of its trial counsel, plaintiff disclaimed the shuttle patent and reduced its charge of infringement to certain claims in the reissued Morgan patent and the re-reissued Brainard patent which had been carried forward from the original patent. These curative efforts were temporarily successful. The .District Court for the Eastern District of Wisconsin found the Brainard patent valid, infringed, and, most importantly, enforceable. Kearney & Trecker Corporation v. Giddings & Lewis, Inc., 306 F.Supp. 189 (E.D.Wis.1969). The case before this Court (except the issue of damages) came on for trial in 1970 after five years of exhaustive discovery. After it was submitted this Court held up, pending the outcome of the appeal of the Giddings & Lewis case, supra. The Court of Appeals for the Seventh Circuit reversed, finding that the Brainard patent was unenforceable, that there was an antitrust violation on the plaintiff’s part, and that this was a proper case for attorney’s fees. Kearney & Trecker Corp. v. Giddings & Lewis, Inc., 452 F.2d 579 (7 Cir., 1971), cert. den. 405 U.S. 1066, 92 S.Ct. 1500, 31 L.Ed.2d 796 (1972). Thereafter defendant was permitted to amend its answer herein and assert the additional defense of estoppel by judgment. The record was made up on this, and the case was finally submitted late in 1972. The issues of estoppel and conflict of interest overshadow the others in the case and will therefore be considered first. In that connection there will be a description of the industry and the plaintiff’s machines. But before passing to that, a statement about the procedural background of this ease, the patents, their success, and the events leading up to this litigation is in order. This litigation began with the filing in this Court of Case No. 6019 by defendant on September 14, 1965, seeking a declaratory judgment that the patents in suit were invalid and not infringed by Cincinnati’s accused machine. Six days later the plaintiff, Kearney & Trecker, filed Case No. 65-C-1575 in the United States District Court for the Northern District of Illinois, Eastern Division, charging infringement of the patents in suit and one other. The latter proceeding was stayed and, after extensive proceedings, eventually transferred to this Court. Kearney & Trecker Corporation v. Cincinnati Milling Machine Company, 254 F.Supp. 130 (N.D. Ill., E.D., 1966). As to the patents still in suit, the Morgan patent was originally issued September 1, 1959, as U. S. Patent No. 2,901,927, on an application filed December 27, 1957. It was assigned by the inventor to his employer, IBM. Plaintiff purchased it from IBM under an agreement affective April 1, 1963, and since that time has been the record owner by assignment of the patent. On January 17, 1964, plaintiff filed an application for a reissue of the patent, and Reissue Patent Re. 25,812 was granted to it by the Patent Office on June 25,1965. The Morgan patent discloses a jig boring machine with an automatic tool changer under numerical control, the details and development of which will be gone into later. Suffice it to say here that the machine was the first with a fully automatic programmed selection of a tool from storage, means for positioning and securing the selected tool in the spindle, and removal of the tool from the spindle and return to storage. The application for the original Brainard patent was filed June 27, 1958, by Wallace E. Brainard and four others of the plaintiff’s employees as joint inventors. Patent No. 3,052,011, (containing claims 1 through 35), issued on this application on September 4, 1962. Application for reissue was filed September 23, 1963, and Patent Re. 25,583 issued thereon on May 26, 1964, (adding claims 36 through 47). Application to again reissue the patent was filed August 28, 1964, and patent Re.-Re. 25,737 was issued thereon on March 2, 1965, (adding claims 48 through 60). Plaintiff is and at all times’ has been the sole owner of Brainard Re.-Re. 25,-737, and was at all times total owner of patents Re. 25,583 and 3,052,011, prior to their surrender to the patent office at the time of re-reissue. Brainard disclosed a more sophisticated machine than Morgan and included several “firsts.” If not the first, it was the best machine to fill the need for a multi-purpose machine tool under numerical control with an automatic tool changer. It was the first to provide for bodily removal of a tool from storage, and the first to provide for simultaneous exchange of such selected tool with the tool in the spindle and placing the tool removed from the spindle in the place in the storage drum from which the new tool was just removed. It was also the first to enjoy commercial success. The defendant first became aware of such success in 1958-59 when it received a request from Westinghouse Electric Corporation in Pittsburgh — or an inquiry — as to what defendant had which compared to the Milwaukee-Matic line of Kearney & Trecker (r. 637, et seq.; px. 185, 186, 187, 188). Cincinnati, the largest manufacturer of machine tools in the United States, though not a giant corporation by modern standards, was caught short, as it was preoccupied with the development of other machines. As will be seen later in this opinion, as a result of this inquiry from Westinghouse, Cincinnati came under extreme pressure to come up with a machine or machines to compete with the Milwaukee-Matic machine. Their own reports showed the enthusiasm for Kearney & Trecker’s tool changing machine was almost “indescribable” (px. 76). A workpiece which had previously taken eleven hours to machine was being done in less than three on the Milwaukee-Matic, and the set-up time previously measured in hours was cut to minutes (r. 117). Cincinnati developed its “ATC” line to compete with Kearney & Trecker’s Milwaukee-Matics and first offered this line for sale in 1962 (r. 469-479; px. 152-161); its CIM-Xchanger line was offered in 1968 (r. 486-494; px. 167-175); and its Cintimatic tool changer line was first offered for sale in 1969 (r. 508-10, 517-522; px. 178-184). Cincinnati never took a license under the Brainard patent and was appropriately put on notice by Kearney & Trecker. When Cincinnati did not respond this lawsuit followed. I. COLLATERAL ESTOPPEL In support of its position that the plaintiff was estopped from asserting patent infringement by the Seventh Circuit decision in Giddings & Lewis, supra, defendant relies on Blonder-Tongue v. University Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971). In that case the Court overruled Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), and held that a defendant in a patent case could assert estoppel by judgment if the validity of the same patent had been previously litigated by the same plaintiff or one with whom he was in privity, and found invalid. The Supreme Court moved into this specific area of patent invalidity after a review of the entire doctrine of mutuality of estoppel, recognizing that: “Undeniably, the court-produced doctrine of mutuality of estoppel is undergoing fundamental change in the common-law tradition.” 402 U.S. at 327, 91 S.Ct. at 1442. The Court said: “Obviously, these mutations in estoppel doctrine are not before us for wholesale approval or rejection. But at the very least they counsel us to re-examine whether mutuality of estoppel is a viable rule where a patentee seeks to relitigate the validity of a patent once a federal court has declared it to be invalid.” Id. At the outset of our consideration of defendant’s. claim of collateral estoppel, we concluded a factual distinction exists between the present ease and that in Blonder-Tongue. Blonder-Tongue involved a prior adjudication of patent invalidity, whereas in the instant case, the prior adjudication was that plaintiff’s patent was unenforceable because of inequitable conduct. Plaintiff here urges that in such a situation Blonder-Tongue is inapplicable, citing Grantham v. Mc-Graw-Edison Company, 444 F.2d 210 (7 Cir., 1971). In Grantham the question was whether a patentee who had granted another an exclusive license to practice his invention could bring suit against an infringer. Plaintiff’s suit had been dismissed below on the ground that plaintiff lacked capacity to sue because he had assigned all his substantial rights. The same plaintiff had filed an earlier suit in another Circuit against a different infringer, and such action had been dismissed on the ground that he lacked capacity to sue. The defendant urged that the prior determination estopped plaintiff from suing again, but the Seventh Circuit rejected the argument, saying that estoppel by judgment must be mutual, relying on Triplett v. Lowell, supra. After Blonder-Tongue was decided the defendant in Grantham petitioned for a rehearing in view of the fact that Blonder-Tongue overruled Triplett, at least in part. In its opinion denying the rehearing petition, the Seventh Circuit did not change its position on estoppel by judgment. After noting the defendant failed to raise the defense in the District Court, the Court of Appeals stated that Blonder-Tongue overruled Triplett only to the extent that Triplett does not permit a plea of estoppel where there is a prior determination of invalidity. The Court went on to say: “ . . . That holding does not reach this case where there has never been a determination of the validity of the Granthams’ patents; and we do not believe that this is a proper case for the extension of Blonder-Tongue’s abrogation of the mutuality requirement to situations where there has not been a prior determination of patent invalidity.” 444 F.2d at 217. As we read Grantham we conclude that the Court’s sense of justice and equity governed the exercise of the discretion to which the estoppel by judgment question was addressed. In other words, we sense that the Court in Grantham may have felt that an injustice had been done to the plaintiff when he was found to be without standing and we feel that factor entered into the decision not to apply or extend the doctrine of Blonder-Tongue. In any event, since we were not bound by Grantham, we looked for a decision of the Court of Appeals for the Sixth Circuit on mutuality of estoppel. Finding none at the time of our decision on defendant’s motion to amend its answer (since that time Wahl v. Vibranetics, Inc., 474 F.2d 971 (6 Cir., 1973), was decided, about which we will have more to say presently), we went to the decisions of other Circuits and found a distinct federal posture antipathetic to the mutuality doctrine. Thus, while IB J. Moore, Federal Practice, § 0.412, p. 1806 (2d Ed.) favors retention of mutuality of estoppel, the author states in the 1973 Cumulative Supplement relating to that page: “Admittedly, the trend in the federal courts is away from the rigid requirements of mutuality advocated herein.” In Rachal v. Hill, 435 F.2d 59 (5 Cir., 1970) and Lynne Carol Fashions, Inc. v. Cranston Print Works, Co., 453 F.2d 1177 (3 Cir., 1972), both Courts recognize a distinct federal rule that the requirements of mutuality need not be met in order for collateral estoppel to be applied in an action presenting a federal question in a federal court. In light of all of the foregoing, we concluded that Grantham was not controlling here, and that defendant should be permitted to assert the defense of collateral estoppel. We found no laches in asserting such defense, since the motion was made promptly after denial of certiorari in Giddings & Lewis, supra. While we permitted assertion of the defense, it must be observed that collateral estoppel does not automatically bar plaintiff’s claim. Instead defendant must establish that the case is .one where the doctrine should be applied. We are brought back to Blonder-Tongue for enlightenment as to when federal courts will apply the doctrine. In Blonder-Tongue, supra, 402 U.S. at 323, 91 S.Ct. 1434, the Court pointed out that the beginning of the ond of mutuality of estoppel began in the California decision Bernhard v. Bank of America National Trust and Savings Association, 19 Cal.2d 807, 122 P.2d 892 (1942). In Bernhard, Justice Traynor rejected the doctrine of mutuality and listed three criteria for the application of res judicata: “Was the issue decided in the prior adjudication identical to the one presented in the action in question? Was there a final judgment on the merits? Was the party against whom the plea is asserted a party or in privity with a party to the prior adjudication?” Id., at 813, 122 P.2d 895. We conclude the Supreme Court in Blonder-Tongue approved these criteria. We noted above that since our decision to permit the assertion of the defense of collateral estoppel, the Court of Appeals for the Sixth Circuit decided Wahl v. Vibranetics, Inc., 474 F.2d 971 (1973). Wahl was a direct application of Blonder-Tongue in that the first trial was one in which the patent was held invalid because the invention was found to be anticipated and obvious. Even so, the Wahl Court, after quoting at length from Blonder-Tongue, said: “It is apparent from these quotations that there must be something more than proof of existence of prior litigation of the same patent, resulting in an adjudication of infringement, before a patentee may be foreclosed from trial of a subsequent action involving the same patent. Under the principles announced, necessarily, there must be a balancing of the equities on a case by case basis.” 474 F.2d, at 974. [Emphasis in original.] This holding is consistent with the Restatement criteria alluded to above, approved in Blonder-Tongue, and adds to our direction that in deciding whether collateral estoppel applies there must be a balancing of the equities on a case-by-case basis. We conclude this portion of ' our discussion with the following quotation from Blonder-Tongue, supra, 402 U.S. at 334, 91 S.Ct. at 1445: “ . . . [The] decision [as to estoppel by judgment] will necessarily rest on the trial courts’ sense of justice and equity.” In the exercise of the discretion to which the question is addressed and with the above criteria in mind, the Court concludes that plaintiff should not be estopped. There are several reasons. First and foremost, it would be manifestly unjust in this case after the extensive litigation and great expense to the plaintiff, to be estopped from relitigating the main patent in suit, Brainard, et al., Re.-Re. 25,737, because of the Seventh Circuit’s holding that it is unenforceable on grounds of fraud on the Patent Office. This lawsuit was already tried and submitted before the Seventh Circuit decision was announced. Hence, there would be no saving in judicial time which would result if the plaintiff was estopped, except for the relatively small amount of time it will take to decide the merits of the case. Next, Blonder-Tongue was based in part on the extreme desirability of avoiding relitigation of technical matters. The conflict of interest question is not technical in nature. In Blonder-Tongue the patent owner was estopped to assert validity. Giddings & Lewis involved enforceability. Next, the plaintiff has demonstrated that the Seventh Circuit decided the case in part on consideration of documents which were ruled inadmissible by the District Court and which the plaintiff therefore had no chance to rebut. We note the defendant’s contention that such documents related only to the Morgan patent. It is clear, however, that conduct in regard to that patent entered into the reasoning of the Seventh Circuit leading to its decision on the misconduct defense. Finally, the decision on the broad issue of enforceability of plaintiff’s Brainard patent was on a legal ground not raised by either party to the appeal nor briefed by either party, at least not in the briefs filed prior to the decision of the Seventh Circuit. ■ Neither were they argued by either party. The doctrine of collateral estoppel therefore loses its appeal in a ease such as this. In sum, we conclude that on balance it would simply be inequitable at this point in this lawsuit to say to the plaintiff that it cannot continue to attempt to enforce Re.-Re. 25,737. Plaintiff acknowledges that the record before this Court on the issue of fraud on the Patent Office is complete (plaintiff’s brief on collateral estoppel, p. 12). While plaintiff’s counsel indicates that issue is only one of many which must be decided by the Court, we view it as second in importance to the one next to be considered, whether the claims in suit, which were carried forward from the original Brainard patent into Re.-Re. 25,-737, are unenforceable against the defendant. Such claims were not found invalid by the Seventh Circuit and District Judge Gordon found them valid. This Court also finds them valid. The claims relate to the tool changer, and it is this which is central to the success of Kearney & Tr.ecker’s Milwaukee-Matic II which “put it all together” as far as such multi-purpose numerically controlled machine tools are concerned. While we conclude herein that such patent is valid, such holding will be of small comfort to the plaintiff if it is unenforceable because of fraud on the Patent Office. II. FRAUD ON THE PATENT OFFICE (CONFLICT OF INTEREST AND FRAUDULENT PROCUREMENT) Introduction In approximately half of the 600 patent suits filed each year, the defense of fraud on the Patent Office is asserted. 15 Idea: The Patent, Trademark & Copyright Journal of Research and Education 619, at 681 (1971). Such fraud can arise from a conflict of interest as well as from other sources, and there is a claim in this case that it does. There is a mass of material on this issue which, in order to get in perspective, needs to be viewed alone and in combination with certain facts which relate to other issues in the case. Conflict of Interest — Facts The facts on conflict of interest were fully developed, just as they were in Giddings & Lewis, supra, because in both cases the enforceability of the original Brainard patent claims in suit is an issue. We must fully recount these facts, as did the Court in Giddings & Lewis, including a description of the industry; the patents in suit; plaintiff’s machines; what defendant did when it learned about plaintiff’s machines; the prosecution of the original Brainard patent; Examiner Beall’s connection therewith; the nature of Beall’s services to plaintiff after his retirement from the Patent Office; and the corrective steps taken by plaintiff to cure any possible patent misuse. The industry is described by Judge Stevens in Giddings & Lewis, 452 F.2d at 581, as follows: “The parties manufacture automatic machine tools which can perform a variety of machining operations, such as milling, boring, drilling, threading and reaming. For each operation, the exact location, diameter and depth of the hole to be machined in the workpiece are predetermined and defined by a numerical code which can be translated into perforations on tape or cards. The operations are thus controlled ‘numerically.’ The concept of numerical control of machine tool operations became commercially important in the early 1950s. “The parties use numerical control, not merely to direct specific operations automatically, but also to control a sequence of operations and the selection of the specific tool needed for each operation. Their machines employ automatic tool changers .... “Since a sequence of operations normally requires the use of a variety of tools, the time required to effect a tool change has a direct and significant impact on costs; the efficiency of the tool changer is, therefore, of vital importance. Plaintiff’s automatic tool changer was not the first to be developed, but apparently it is the best. “Plaintiff’s ‘Milwaukee-Matic’ machines were introduced in 1958 and first sold in 1959; sales increased each year through 1967 when volume exceeded $36,000,000. During those years, plaintiff’s sales of MilwaukeeMatic exceeded $150,000,000 compared to competitors’ sales of between $75,-000,000 and $100,000,000. Moreover, in 1968 plaintiff received approximately $573,000 of royalty income from its Brainard patent. It was a commercial success. “Plaintiff’s machines were sold in different models and sizes at prices ranging from about $90,000 to over $350,000 each. Total sales of over 925 units through March, 1968, indicate an average per unit price of about $180,000. Plaintiff did not sell its automatic tool changer except as a part of the Milwaukee-Matic machine, and prior to 1969 was unwilling to discuss a separate license for the tool changer. “Plaintiff’s customers include practically all types of manufacturers in the metal cutting industry, including the United States and foreign governments. The precision multiple operating capabilities of plaintiff’s machines have contributed to the design and production of new products, especially in the aerospace industry. “Plaintiff’s principal competitor in the numerically controlled automatic tool changing field is one of its licensees; at least two competitors are engaged in patent litigation with plaintiff ; the total number of manufacturers is apparently about half a dozen. In 1967 plaintiff’s sales represented over one-third of the total market.” Plaintiff’s Machines — MORGAN (see sketch on page 1048). Later in this opinion (p. 1080) we hold claim 10 of the Morgan patent invalid and the rest of the Morgan claims in suit not infringed. The Morgan machine was developed at IBM as a result of interest in applying the concept of numerical control to an automatic tool changer. More about that later. The Morgan machine employed a vertical spindle which could be moved down to grasp a tool positioned beneath it. Tools were stored in a vertical position in notches around the edge of a disc-shaped magazine which had two paths of movement. It rotated until the position in which the desired tool was located was next to the spindle. The entire magazine then moved laterally to place that tool beneath the spindle on the machine, where it was grasped by a wrenching mechanism which held it un- • til the spindle descended and secured the tool. Thereupon the magazine withdrew by again moving laterally and after the operation was completed the magazine moved in to retrieve that tool, withdrew, rotated to a new position, moved back in to deliver the second tool to the wrenching mechanism, and then withdrew again to await completion of the second operation. As noted by Judge Stevens, 452 F.2d 583, the Morgan tool change sequence is more time-consuming than the Milwaukee-Matic’s. Nevertheless, the Morgan claims are much broader than the machine described in its specifications and read to cover the Milwaukee-Matic as well as the defendant’s machines, and claim 10 might, as pointed out by Judge Stevens, encompass any numerically controlled multi-purpose machine tool with an automatic tool changer. As noted by Judge Stevens, 452 F.2d at 583, Morgan was the principal obstacle to the allowance of plaintiff’s Brainard patent. Plaintiff never accepted a license under the Morgan patent, but seriously considered not only a possible license but also a challenge to the validity of the Morgan patent before ultimately acquiring it. Morgan was the first to use a selected tool entirely removed from the magazine but did not provide the means for bodily removing the selected tool from the magazine and transporting it to the spindle. Instead the magazine was indexed to select a tool and then the selected tool still in the magazine was moved by the magazine itself to place the tool between the jaws of the vice which gripped the tool. The magazine then retracted, leaving the tool in the grip of the jaws when the spindle was lowered and rotated to engage its threads with the threads on the tool. Plaintiff says a vice is in no sense a transfer member. We agree. The Morgan patent 2,901,927 matured from an application filed just prior to the patent application for the Brainard machine and was pending at the same time as the Brainard patent.' We pass to a description of the Brainard machine. Plaintiff’s Milwaukee-Matic Tool Changer This machine has a horizontal spindle and a storage drum for tools (not tool holders). It employs a two-handed arm. One hand withdraws the tool which has just completed an operation while the other grasps the next tool to be used from the storage magazine, which has been rotated into the desired position while the tool ahead of it was being used. The arm then rotates 180°, simultaneously delivering the new tool to the spindle and returning the old tool to storage. As the arm returns to a “park” position, the storage magazine rotates to place a third tool in position for selection after the sécond has done its job. The selection is controlled by coding the tools themselves, and this tool coding (as contrasted with “position coding”) makes it possible to place an old tool in the storage position from which the new tool has just been withdrawn without impairing the machine’s ability to find that tool (or any other) when it is next needed. Although this description may be oversimplified (see fn. 6 at 452 F.2d 582), it: “ . . . serves to identify two concepts which are of principal importance in this litigation: (1) the use of tool coding to identify the tool to be selected from the storage magazine ; and (2) the use of a two-handed arm to effect a simultaneous interchange between the magazine and the operating station.” 452 F.2d at 582. Neither of these concepts was expressly identified in the three Brainard claims in suit in Giddings & Lewis. Neither are they expressly identified in the four claims in suit before this Court (claims 19, 20, 24, and 33). Plaintiff relied on the concept of tool coding to distinguish the prior art — principally the Morgan patent — during the Patent Office prosecution. The two concepts do clearly differentiate plaintiff’s Milwaukee-Matie II from the Morgan machine, as pointed out by Judge Stevens. 452 F.2d 582. Though it has already been noted, we repeat here that the application for the original Brainard patent was filed in the Patent Office June 27, 1958. Of course it was assigned to Division 13 for which T. Emmert Beall was Primary Examiner and R. H. Eanes was Assistant Examiner. I see no reason to go into an account of its prosecution as Judge Stevens did (452 F.2d 585), because all that is important and relevant is that the original Brainard claims sprang from a background free of fraud. It is important, however, to a consideration of the conflict of interest question to recognize the genius and superiority (and commercial success) of the Milwaukee-Matic II, something that cannot be gained from a reading of the foregoing description. Thus, as Judge Pell noted in his dissent in Giddings & Lewis, 452 F.2d at 601— 602: “We have here in the original patent claims of an invention filling a much needed want, one entering into immediate use and one meeting with substantial commercial success. See England v. Deere & Co., 284 F.2d 460, 463 (7th Cir. 1960), cert. denied, 365 U.S. 870, 81 S.Ct. 904, 5 L.Ed.2d 860.” The need was long standing and arose in large part from a growing scarcity of skilled labor. Nevertheless, we accept the plaintiff’s statement (plaintiff’s main brief, p. 50) that the art of providing machine tools with tool changers was in its infancy. As will become abundantly clear in the discussion of plaintiff’s claim that the Brainard invention was derived from Hughes Aircraft Company, the level of ordinary skill in the art was extremely high. Also a lot of people possessing such skills were engaged in extensive projects, and the Brainard patent was an outgrowth of such projects. What we are trying to say is that, remarkable as it was, the Milwaukee-Matic II did not emerge out of thin air, but was the outgrowth of or was preceded by a vast and extensive project at Hughes Aircraft applying numerical control to machine tools. It helps to gain an understanding of plaintiff’s accomplishments in developing the Milwaukee-Matic II, and at the same time get the facts in perspective, to realize that after learning about the Milwaukee-Matic machine, it took Cincinnati, the largest manufacturer of machine tools in the United States, if not the world, over two-and-a-half years to come up with anything comparable. This was true even though for the entire two-and-one-half year period Cincinnati was under what its personnel call “extreme pressure” to come up with something. Part of this pressure arose from the occurrence of Cincinnati’s 75th anniversary in 1959. It finally made one machine for the Chicago Machine Tool Show, which was later, but never sold any. It also helps to recognize the truth of what one Kearney & Trecker customer said about the Milwaukee-Matic II, namely, that it opened up “a whole new world.” Small wonder then that even after obtaining the Brainard patent Kearney & Trecker continued study thereof under the heading of protecting its substantial investment, and therein lies the tale of this lawsuit, for, in so doing, they ran aground on the shoals of conflict of interest. For, after his retirement, soon after the issuance of the Brainard patent Beall came to work for Kearney & Trecker as a part-time consultant and worked on the acquisition of Morgan and the broadening reissue applications of Brainard and Morgan. This brings us to an account of Beall’s activities and the curative measures taken by plaintiff after it recognized its mistake in letting Beall work on applications to reissue the Brainard, et al., tool-changer patent and to work on other pending applications for which he had been responsible when employed by the Patent Office. Beall’s Activities Before and After Retirement and Curative Measures Beall was employed by the United States Patent Office as the Primary Examiner in Division 13 (milling machines) from approximately 1946 until June 22, 1962 (r. 10210). As Primary Examiner he was charged with overall responsibility for all matters in that Division, including the pending applications of the plaintiff. In addition, he was directly involved in the prosecution of the original applications which ultimately led to the Brainard patent in suit (and the disclaimed shuttle patent (dx. 10, 11, 1096, 1097). Mr. Richard H. Eanes, Jr., was the Assistant Examiner handling these applications under Mr. Beall’s direct supervision (r. 11084) and succeeded him as Primary Examiner when Beall retired. In December, 1959, during pendency of the original Brainard tool changer application and the Brainard shuttle patent application, Beall and Eanes visited the plaintiff’s plant to familiarize themselves with plaintiff’s machines which were disclosed in these two applications. Such trips to industrial plants are not uncommon. In fact they are encouraged by the Patent Office (px. 1049) to keep examiners informed. As Examiner Eanes testified (vol. 63, p. 11111): “A. I was invited — ordered out and invited — well, let’s clarify that. Ordered by the Patent Office and invited by Trecker to see the machine.” As to Mr. Beall’s involvement on behalf of the Patent Office with respect to the original Brainard tool changer application, he also approved and signed -Patent Office Actions (dx. 1096, tabs 22, 38, 49). During the pendency of the application he conferred with Assistant Examiner Eanes and with plaintiff’s attorneys with regard to consideration of interference questions and allowability of claims (dx. 678). Plaintiff’s representatives knew of Mr. Beall’s personal involvement and his responsibility for making important decisions concerning the application (dx. 1032; 1096, tabs 31, 32; 687). The notice of allowance of the application for the original Brainard tool changer patent was issued June 4, 1962, and showed Mr. Beall as the responsible examiner (dx. 1096, tab 50). Mr. Beall also had responsibility in connection with the Brainard shuttle pallet application, being involved in interviews relating to the application and the consideration and drafting of the claims of the application, and plaintiff’s representatives recognized this involvement or knew of it. (See, for example, dx. 1098, tab 19, p. 8; and dx. 1097; 1098, tab 21). On June 22, 1962, Beall voluntarily resigned from the Patent Office several years prior to reaching the mandatory age' of retirement (r. 10210), having service in the Patent Office for forty years. Plaintiff’s house counsel, Mr. Wutschel, along with many others who had dealt with Beall over the years, attended a retirement party for him, and, on the following day, June 25, 1962, met with Beall for lunch and explored the possibility of retaining him to work on patent matters for plaintiff (r. 10210, 10250-51). At the retirement party Mr. Wutschel had overheard somebody mention retaining Mr. Beall as a consultant (vol. 54, p. 9886). He made the same inquiry of Mr. Beall the following day but was advised that Beall had several hobbies to pursue and was looking forward to that (vol. 54, p. 9886). On his return to Milwaukee, Mr. Wutschel told Mr. Trecker what had happened, and Trecker, on one of his many trips to Washington, followed up the initial inquiry by contacting Mr. Beall by telephone (r. 10186-88, 10190). This call was followed by a visit to Beall’s home, and Beall finally agreed to serve plaintiff on a part-time basis which left him free to come and go as he pleased, but which was an exclusive employment arrangement (r. 10213; dx. 879; 1096, tab 55). After a proposed letter agreement was submitted to Mr. Beall by Mr. Trecker on June 24, 1962, a final agreement was concluded August 1, 1962 (dx. 1002; 1096, tab 57). The agreement provided for a retainer to Mr. Beall in the amount of $10,000 per year and was to run for five years. It called for Mr. Beall to perform exclusive advisory services for the plaintiff: “ . . . with respect to all matters relating to or affecting our patent applications and patents, including prior art and engineering matters relating thereto.” There was nothing secretive about the employment, e. g., Mr. Eanes knew of Beall’s employment immediately after his retirement (r. 11150). In that connection, as will appear herein, at no time did Mr. Beall attempt to, nor indeed could he, improperly influence Mr. Eanes or any other person in the Patent Office. As far as Mr. Eanes was concerned, the contrary seemed to be the case. That is, not only was no advantage obtained, but in a sense it was a handicap as far as Eanes was concerned, because he was hostile to Beall. We need make no conclusion as to whether or not Beall’s employment, as distinguished from his use, was improper. At the time of Beall’s employment plaintiff had a lot at stake, inasmuch as the Brainard patent was “ . probably the most important patent in the new machine development” (dx. 998). Also, Kearney & Trecker knew at the time of Beall’s employment, as it did at the time of the decision to apply for reissue, that competitors were searching the Patent Office files in an effort to uncover prior art (dx. 679). We have already noted the contract. It is in order also to note Mr. Trecker’s testimony concerning the association: “ . . .1 felt that in his capacity of having nothing to do and a desire to do as he pleased and yet still have some interest, that we had a very good grounds of associating with each other” (r. 10190). Elaborating on his concept of what Mr. Beall’s duties would be, Mr. Trecker testified: “And I said he specifically did not have any assignment in particular; and I expected that he would sometimes devote a solid 20 days at a time; sometimes he wouldn’t think about Kearney and Trecker for two months. It was that type of assignment with him, and that the men in the department would send him material for him to look over and comment upon, never for him to take any direct action on anything, as merely an advisor and sort of a fatherly eye watching what they were doing. And that was my complete assignment to him.” (r. 10190). Also, when Mr. Beall signed the contract (dx. 10002) there was a discussion between Beall and Mr. Wutschel concerning his duties: “During this same discussion that I had with him, I explained to him that there were certain restrictions on activities that he could possibly do for Kearney & Trecker and that since he had been with the Patent Office for something like 40 years, and since there weren’t any definite rules to pinpoint exactly what he could do, why, it was going to be left entirely to him to determine as to when he was doing such work whether he was in bounds or out of bounds, and that he was to inform me of such facts” (vol. 54, pp. 9910-11). As pointed out in the defendant's main brief at p. 15, following the contract Mr. Beall began his work as patent consultant and continued in that capacity for five years. The agreement was then renewed for an additional two years. On that occasion Mr. Beall was complimented for the work he had performed (dx. 1045). During his employment, of course, Mr. Beall gave advice to Kearney & Trecker on the two reissues of the Brainard tool changer patent and assisted in the prosecution of the Brainard shuttle patent, and gave advice in connection with the acquisition of Morgan and its reissue. Because of the importance and difficulty of the issue presented by their respective contentions of the parties on conflict of interest, it is in order to describe in detail Mr. Beall’s activities in regard to the reissues of Brainard and Morgan. In September, 1962, Mr. Hajewski (Kearney & Trecker’s second-in-command in the patent department) asked Mr. Beall “. . . to evaluate its [the original Brainard patent’s] strength,” and to “. . . determine whether the patent was vulnerable to an attack in any respect and what the prospects were for invalidation of any of the claims” (dx. 1096, tab 60). In response to this request Mr. Beall prepared a written report dated October 17, 1962, in which he set forth his recommedations (dx. 994; 1096, tab 62). Beall summarized the Brainard toolchanger invention (pp. 2 and 3) and concluded broader claims were justified based on the prior art (p. 4) and analyzed the claims of the patent, pointing out language which unnecessarily limited them or made them vulnerable in view of the prior art. A conference followed July 31, 1963 (dx. 909 in which Beall, Hajewski, Wutschel, Trecker, Randall and Hutchens discussed the pros and cons of refiling, and the decision was made to do so. As plaintiff points out, this decision was important, because, as noted earlier, Mr. Beall thought this was probably the most important patent in the new machine development (dx. 998). We agree with the plaintiff (plaintiff’s reply brief, p. 56) that it was therefore natural that a person skilled in the machine tool arts such as Mr. Beall should be asked to evaluate the limits of the Brainard invention before it was subjected to reexamination. When Mr. Eanes was interviewed by Hajewski on Beall’s advice, regarding the possibility of reissuing the patent, Eanes opposed any such effort (dx. 679; 1096, tab 67). That same day Hajewski .met with Beall to discuss his report on the original patent and the possibility of reissuing the patent (dx. 1015; 1096, tab 68; 872; 1096, tab 69). At that time Beall assisted in the drafting of claims for the reissue application and later reviewed and commented upon the claims that were actually submitted, and he also suggested additional claims (dx. 998; 1097, tab 73). It was subsequent to that that the meeting described earlier occurred (July 31, 1963), and at the same meeting there was also discussion regarding the first reissue of the Morgan patent (dx. 909; 1097, tab 75). The reissue patent application was subsequently filed and assigned to Examiner-Eanes. The first Office Action of November 4, 1963, was unfavorable (dx. 1097, tab 87). On November 26, 1963, Mr. Wutsehel wrote a letter to Beall requesting that Beall prepare an amendment and check the reissue application claims (dx. 1050; 1097, tab 88). Beall proposed an amendment by letter of December 14, 1963, and this was used in the subsequent prosecution (dx. 1016; 1097, tabs 89, 90). In such letter (dx. 1016) Mr. Beall requested (page 5); “Incidentally it would be helpful to me if my reports were temporarily removed from the file if and when the file is used at the Patent Office. Our friend [Examiner Eanes] might note the reports with great glee and attempt to inform a possible evasion of the two year rule. . . . Further, I do not see that any real evasion has been done and do not contemplate filing for register as a patent attorney anyway.” The “two year rule” refers to Patent Office Rule 341(g). There is no contention that in any of this activity Beall used inside information or that he had any influence over Eanes. As already noted, the testimony shovied some hostility between Beall and Eanes. Nevertheless, Beall called Eanes on March 25, 1964, and during this interview Eanes informed him that the reissue application would be allowed (dx. 1037; 1097, tab 97). A Notice of Allowance was issued on April 13, 1964, and the Brainard tool changer patent matured as Reissue Patent No. 25,583 on May 26, 1964 (dx. 765, 769). It became apparent immediately that the 47 claims did not adequately cover the machine in that they failed to include claims reciting the prehensile grip mounted on the tool transfer member and failed to recite a park or inoperative position for the tool transfer mechanism. These deficiencies came to light because of several interferences declared in other Kearney & Trecker applications (dx. 1097, tab 121). Also Mr. Hajewski discovered additional prior art (Bench and Myers) which he concluded were pertinent to the claims added in the reissue. Hajewski therefore asked Beall to make “an independent study of these claims [reissue claims 36-47] with respect to the . . . references [Bench and Myers] to determine how our reissue application and reissue patent are affected . . . [so that] we can compare notes to determine whether we are in agreement” (dx. 1097, tab 104). Beall rendered such an opinion June 3, 1964, and subsequently met with Hajewski and Wutsehel in Washington, D. C., to consider reissuing the reissue (dx. 1097, tab 106, 111). The Brainard re-reissue application was prepared by Kearney & Trecker and was ready for filing August 26,1964. The two-year limitation on the reissue application (35 U.S.C. § 251) was due to expire September 4, 1964. Beall was asked to hand-carry the reissue application to the Patent Office to insure that it was filed on time (dx. 1054). The second reissue application was filed August 28, 1964, and again assigned for examination by Examiner Eanes. Beall aided and assisted in the prosecution of the re-reissue application. Hajewski interviewed Eanes after the filing (dx. 1097, tab 128) requesting citation of Bench and Myers and an amendment of claims 39 to 46. Eanes did not consider these references pertinent (dx. 1097, tab 128) and issued a notice of allowance of the Brainard re-reissue application without entry of the amendment. At this point Hajewski asked Beall’s advice on the matter of obtaining entry of the amendment and particularly his “opinion as to the best course to follow in this reissue application in view of Eanes’ attitude” (dx. 1097, tab 129). As Beall noted in his reply (dx. 1097, tab 120, pp. 1 and 4): “One result of the proposed amendment is to make certain of the claims more specific than was previously desired and thus restrict the scope of protection . . .” [to distinguish the allowed re-reissue application from Bench]. «-***■* * “Since the proposed amendment will not remove any limitations from the claims but, in fact, render them more specific the applicants should have the amendment entered as a matter of right. Higher authority than Eanes would unquestionably support this right even if Eanes did not.” Beall offered to deliver the amendment to the Patent Office before the December 8, 1964, deadline, Mr. Hajewski being sick at the time and unable to do so himself (dx. 1051; dx. 1097, tab 131). The filing was more than two years after Beall had left the Patent Office. However, he had not yet registered as a Patent Attorney and Eanes was aware of this when Beall appeared to deliver the amendment (r. 11092). Beall had offered by letter to “take the amendment to him [Eanes] to find his reactions and pursue the matter to higher levels if adverse” (dx. 1097 tab 130, p. 4). Beall delivered that amendment and found Eanes hostile. Eanes refused entry of the amendment (dx. 1097, tab 134; dx. 1018). Beall’s instructions were not to surrender the reissue patent unless Mr. Eanes agreed to enter the amendment (dx. 1051; 1097, tab 131). On December 4, 7 and 9, 1964, Beall interviewed Eanes with regard to the proposed amendment, including conferences at the Patent Office, luncheons and telephone conversations from their respective homes (dx. 1018,1097, tab 134). Eanes concluded it was a proper amendment, so it was absolutely necessary that he do something. “So I looked it over and then I called Kearney and Trecker, and I recall time was running out, or something was imperative on it. I called Kearney and Trecker and advised them that I would enter the amendment, that it did restrict a claim . . .” (r. 11093). The patent was issued March 2, 1965, as Brainard Tool Changer Patent Re.Re. 25,737 (dx. 10). So much for Mr. Beall’s activities in connection with that patent. As to Beall’s activities in the acquisition and reissue of Morgan and Morgan Re. 25,812, we adopt what Judge Stevens said on that subject (452 F.2d at 588-589): “2. The Morgan Reissue. “The original application for the Morgan patent was filed on December 27, 1957, and the patent issued on September 1, 1959. A few months later, plaintiff’s patent counsel made a preliminary inquiry of I.B.M. about the possibility of taking a license under Morgan. Although the question whether the Milwaukee-Matic machine infringed the Morgan patent was the subject of study by both I.B.M. and plaintiff, no concrete action had been taken by either party before the original Brainard patent issued in September of 1962. They had a negotiating session in April of that year, however, in which the possibility of a license was discussed. In that meeting, plaintiff’s patent counsel took the position that only claim 10 of the Morgan patent was arguably infringed by the Milwaukee-Matic machine, and that the broad construction required to support a cliarge of infringement would render the claim invalid. I.B. M.’s position was that claim 10 was valid and infringed. “In an interview with plaintiff’s patent counsel during the prosecution of the Brainard application, Beall had commented on a possible conflict with claim 10 of Morgan. Shortly after Brainard issued and Beall had agreed to serve as a consultant, plaintiff requested him to make a thorough analysis of the possible infringement of Morgan by the Milwaukee-Matic machine. His conclusions confirmed the opinion already formed by plaintiff’s patent counsel that only claim 10 was infringed and that claim 10 was invalid. Promptly thereafter plain- ******* tiff reopened negotiations with I.B.M. “In March of 1963, plaintiff consulted Beall about the advantages of purchasing the Morgan patent from I.B.M. Among the advantages which they considered was the fact that Morgan taught ‘the broad concept of tape control of a tool change mechanism wherein a tool is bodily transferred from a storage member to a rotary spindle.’ [Footnote omitted.] Beall recognized that the concept had been disclosed but not claimed in Morgan and immediately suggested the possibility of obtaining a reissue of Morgan after its acquisition. “Plaintiff also recognized that the acquisition ‘of Morgan would put K & T in a dominating position relative to the tool change art.’ To this comment Beall responded: ‘Especially true [if] Morgan was reissued.’ They expressly noted that in a reissue; ‘Morgan claim 10 could be altered to make it valid.’ “In an agreement effective as of April 1, 1963, plaintiff purchased the Morgan patent for $350,000, plus a share of future royalties. Before recording the assignment, plaintiff requested Beall to draft a set of reissue claims for Morgan, to prepare an opinion on the justification for reissue, and to outline the proper approach to be followed in filing the reissue application and processing it in the Patent Office. “With Beall’s guidance and assistance, the application was filed on January 17, 1964, and the patent was ressued on June 29, 1965. In the Morgan reissue, claim 7 was narrowed by adding qualifying language and eleven new claims were added. Except for insignificant changes in punctuation, no amendment to claim 10 was made. “Before the Patent Office, unlike the position taken in its own appraisal during the negotiations with I.B.M., plaintiff contended that claim 10 was valid. It hedged the possibility of a finding of invalidity, however, by the addition of six new claims, each of which incorporated the language of claim 10, plus additional qualifying language. The reissue was allowed on the theory that it narrowed the claims of the original patent to avoid prior art which had been overlooked inadvertently by I.B.M. The inadvertence was reasonable since I.B.M., the original owner of the patent was a company that ‘manufactures electrical controls with very little, if any, experience in the machine tool field,’ ” Beall did assist or suggest courses of action as to the preparation and prosecution of other applications involved in Division 13 (r. 10069). Some of these applications were filed after Beall left the Patent Office (r. 10070). Defendants point out that Beall was involved in the prosecution of the disclaimed Brainard shuttle patent (dx. 11), pointing to documents in the annotated file history of such patent (defendant’s main brief, pp. 119, 120). Defendants point out that Beall was also actively involved in at least three other applications of plaintiff in Division 13 which had been pending under his direct supervision prior to the time he retired (defendant's main brief, p. 120). These activities were stipulated by plaintiff’s counsel (r. 9324-9326; 9961-9965; 10068-10071; dx. 871,1014). That pretty well covers the facts on conflict of interest and fraudulent procurement except a few miscellaneous ones which, according to defendant, tend to show concealment and thus guilty knowledge on the issue of intent. Under this heading is a letter from Mr. Wutschel to Mr. Beall dated May 4, 1965 (dx 913) telling Beall to make his own plane and hotel reservations in Chicago for the Machine Tool Show. “We naturally will want to know what hotel you are staying at so that we can communicate with you concerning patent matters. In registering at the show we would suggest that you register as a ‘visitor’ and not indicate your affiliations with K & T. Naturally, K & T will pick up the check for all expenses which you incur in connection with this assignment.” Along this line defendants also point to a letter from Wutschel to Beall dated September 2, 1965 (dx 915) in which Mr. Wutschel made the following observation : “Cy [Hajewski] is going to be in Washington next week. The Rt. Hon. Richard P. Eanes is going to hear Motions in three of the Interference Cases bn Tuesday, the seventh. Cy is hoping that everything goes well and that all of the holdings prove favorable to K&T. If it were not for the fact that the attorneys representing our competitors will also be present at the hearing, I would ask you to attend too. However, I don’t think this is feasible under the circumstances.” The defendants also point out in this connection what Mr. Wutschel testified to at the trial (which, of course, was long after his discharge) on direct examination. He said that when Beall signed his contract August 1, 1962, he, Wutschel, “specifically advised him of the prohibitions that are there reflected, for example, in Title 18 U.S.C. §§ 207(a) and 207(b)” (r. 9913). Wutschel was chief patent counsel at Kearney & Trecker at the time. Within a year from that Wutschel sent Beall numerous applications to work on for consulting purposes, matters that had been pending in Division 13 prior to the time Beall left the Patent Office (r. 9914). Defendants also point to the fact that eventually, to avoid any question, Mr. Beall applied for registration as a patent attorney, and in his application stated under oath : “I have not prosecuted or assisted in the prosecution, and I hereby further agree not to prosecute or aid in any manner in the prosecution of any application pending in any examining division or group, during my period of service in such division or group” (dx 1058). While Examiner Eanes knew that Beall was working with Kearney & Trecker, he testified (r. 11247-11248): “Q. I understand from your testimony that you were not aware of that situation, at least until Mr. Beall showed up with that proposed Amendment some two and a half years after he retired? “A. Well, at that time two and a • half years, he was open anyhow. “Q. Fine. “A. I was still not aware anything had gone on between. “Q. Had you had knowledge that Mr. Beall was aiding in the prosecution of the First Brainard Re-Issue, what action would you have taken? “A. No, I can’t answer such a question. That would be many years ago to begin with, and, second, I don’t know what I would do. “Q. Would you have continued prosecution to go forward knowing Mr. Beall was involved? “A. No, I think I would have gone to the patent office. For me to take direct action against any attorney, I don’t do that.” Defendants say there can be no doubt that the Patent Office not only would have terminated prosecution of the Brainard reissue applications, but certainly would have initiated disciplinary investigation of the attorneys involved, even before its present investigation (dx 691; defendant’s main brief, p. 129). There is no contention, however, that the Government would have invalidated the original claims. A number of companies took licenses under the Brainard tool changer patent. The defendant, however, did not. As a matter of fact it commenced its alleged infringement prior to Beall’s employment. As pointed out earlier in this opinion, litigation arose in this District and in the Northern District of Illinois, Eastern Division, as a result of said alleged infringement. Litigation also arose in the Eastern District of Wisconsin involving the Brainard patent. Kearney & Trecker employed outside counsel to represent it in such litigation, and when the foregoing facts came to light in the course of discovery apparently Kearney & Trecker realized for the first time that instead of bolstering its position by employing Mr. Beall, it had jeopardized it. Beall was terminated August 19, 1968 (r. 10229, 10230; dx. 1007). Mr. Wutschel was discharged in July, 1969 (r. 9879-9882) and Kearney & Trecker disclaimed the Brainard shuttle patent (dx 775; 1098, tab 53). Kearney & Trecker also gave up any right to enforce any of the reissue claims. Plaintiff limited the allegations of infringement in the Giddings & Lewis case to claims 15, 19 and 20, and in the instant case limited allegations of infringement of the Brainard patent to claims 19, 20, 24 and 33. It limited allegations of infringement of the Morgan patent to claims 10, 26, 27, 28, 29, 30, 31. Licensees were notified of the relinquishment of Kearney & Trecker to all claims obtained through the reissue and re-reissue of the Brainard patent (notwithstanding opinions of counsel that no advantage was obtained through the use of Beall’s services relating thereto). By letters plaintiff invited its existing licensees to discuss a separate license of a tool changer if they so desired. A revised form of Brainard license agreement was adopted and the plaintiff’s patent department was reorganized and thereafter reported to a newly employed attorney at law of substantial experience. But the curative action — attempts at purgation — was of no avail in Giddings & Lewis because on appeal the Seventh Circuit, in a landmark decision, held the reissue claims invalid and the original claims unenforceable. Kearney & Trecker v. Giddings & Lewis, supra. We turn to a consideration of this and other applicable law. III. FRAUD ON THE PATENT OFFICE (CONFLICT OF INTEREST AND FRAUDULENT PROCUREMENT) —CONCLUSIONS OF LAW Giddings & Lewis — Majority Opinion The decision of the majority in Giddings & Lewis, supra, is pointed to as exceptional in that while fraudulent procurement has met with remarkable success as a defense, efforts to assert it as a sword as well as a shield have been less successful. Frank B. Pugsley, “Fraudulent Procurement Today,” 1972 Patent Law Annual (Matthew Bender, 1972), p. 30. But what is of far-reaching effect on patent owners is the holding, on facts the same as those before this Court, that the Brainard applications for reissue should be regarded as something that had been pending before Beall retired and that any reissue relates back to the original applications for its justification. The Court held that Kearney & Trecker was responsible for Beall’s conduct. Such conduct was called “indefensible” and comparable to that condemned by the Supreme Court in Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 86 S.Ct. 347, 15 L.Ed.2d 247 (1965). The Court found Beall’s conduct “predatory” because of its wrongful. character and its potential for harm to the public. Since the reissue applications were held to be a continuation of the same matter pending before Beall retired, this meant that Beall was guilty of conduct subsequently condemned by the new conflict of interest statute, even though it was highly doubtful that Beall could actually be prosecuted under that statute since it was enacted after his conduct. The Court considered the nature of the patent grant and the reissue privilege, its potential for abuse, and in