Full opinion text
ORDER BUA, District Judge. In the matter at bar, the plaintiff, the USM Corporation, has challenged, on a variety of grounds, the validity of a patent owned by the defendant, SPS Technologies, Inc. After certain of the issues raised by USM were resolved in pretrial judgments, a non-jury trial was held on the claims presented in Counts I and IV of the plaintiff’s complaint on October 24, 1978. With respect to those claims, after considering the testimony and evidence presented at trial, together with the various other materials submitted by the parties, the court makes the following Findings of Fact and Conclusions of Law. Rule 52(a), Fed.R. Civ.P. FINDINGS OF FACT I. THE PARTIES, JURISDICTION AND VENUE 1. The plaintiff, USM Corporation (hereinafter “USM”), is a New Jersey corporation, having its principal office and place of business in Farmington, Connecticut. 2. The defendant, SPS Technologies, Inc. (hereinafter “SPS”), is a Pennsylvania corporation having its principal office and place of business in Jenkintown, Pennsylvania. 3. The amount in controversy, exclusive of interest and costs, exceeds the sum of $10,000. 4. SPS has not contested the personal and subject matter jurisdiction of this court in respect to Counts I and IV-V of USM’s Amended and Supplemental Complaint, and the court finds that it has both personal and subject matter jurisdiction as to said Counts. Defendant SPS also does not contest, and the court further finds, that it has personal jurisdiction over SPS with respect to the claim made in Count III of USM’s complaint. 5. SPS, on motion prior to trial, challenged the subject matter jurisdiction of this court as to Count III. This court, in a Memorandum Order dated June 12, 1978, denied SPS’ motion. For the reasons set forth in that Order, the court finds that subject matter jurisdiction over Count III properly lies. 6. USM and SPS were parties to an earlier filed action in this court involving the same SPS patent at issue here, i. e. United States Patent No. 3,093,177, issued in the name of Joseph P. Villo (hereinafter “the Villo patent”). That action, styled Standard Pressed Steel Co. v. USM Corporation, et al., No. 69 C 2538, filed December 8, 1969, was settled in early 1971: (a) by USM acquiring non-exclusive license rights from SPS under the Villo patent; and (b) by the entry of a consent decree. 7. Venue over the matters at bar properly lies in this judicial district, and defendant SPS has not objected to the propriety of same. 8. The antitrust claim raised by USM in Count V of its Amended Supplemental Complaint was severed for separate and later trial in this court’s Order of April 12, 1976, and jurisdiction is hereby reserved as to said Count. On June 12, 1978 summary judgment was entered against USM as to Counts II and VI of its complaint. Those matters, because they are the subject of a separate appeal by USM, formed no part of the October 24, 1978 trial. II. THE PRIOR PROCEEDINGS AND THE ISSUES PRESENTED FOR TRIAL 9. To better clarify the issues presented in the case at bar, it is necessary to briefly trace the procedural history of the earlier suit in this court between USM and SPS. In that suit, USM included among its responses to SPS’ infringement claim the' contention that it [USM] held an irrevocable, royalty-free license under the Villo patent which was sufficient in scope to render any issue of validity moot. This license contention was severed from the validity and infringement questions, and tried separately on January 19-20, 1971. The USM license claim was based upon a “grant back” provision in an October, 1955 license agreement in effect between the parties. SPS, in replying to USM’s position, argued that it had conceived and reduced to practice the claimed invention of the Villo patent long prior to October, 1955, and thus that such claimed invention was not a later developed improvement, as contemplated by SPS’ interpretation of the license agreement’s grant back clause. As reported in 168 U.S.P.Q. 741 (N.D.Ill.1971), modified 170 U.S.P.Q. 83, USM’s license defense was defeated on the basis of evidence presented by SPS to show that its conception and reduction to practice of the Villo invention was commenced in August, 1953, continued “more or less steadily” through 1954 into 1955, and led directly to the filing of the “original” Villo patent application on January 30, 1956. After this issue was resolved, the suit was privately settled, with USM acquiesing in a license. As part of that settlement, a “Judgment Order of Consent” was entered by the court on May 3, 1971. That consent decree recited that the Villo patent was valid and infringed by certain USM patch-type self-locking bolts of a stated construction, regardless of whether or not certain methods were used by USM in the manufacture of said bolts. Because the matter was settled, no judicial hearing ever was held on validity or infringement of the Villo patent. 10. The present suit was commenced by USM in June, 1974, to challenge both the validity and its [USM’s] purported infringement of the Villo patent on the grounds that: (a) the policy of Lear v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969) and its progeny in this Circuit rendered consent decrees in patent cases unenforceable as a matter of law; and (b) the absence of an injunctive provision against infringement in the 1971 consent decree manifested a limitation on that decree to retrospective application only. Arguing primarily res judicata principles, SPS sought to preclude all discovery on the part of. USM. USM, though, ultimately was able to gain all of the discovery it required. Shortly before the trial in this cause, SPS renewed its motion for summary judgment on these issues, again contending that the 1971 consent decree must be given res judicata effect. On June 15,1978 this court, on the basis of the legal issue then before it, concluded that “while it is indeed a difficult assessment to make,” res judicata effect should be extended to the consent decree at issue. Memorandum Order, at 6-11. 11. Prior to this court’s June 12, 1978 holding, however, USM had filed an Amended Complaint based upon evidence uncovered through the discovery SPS had attempted unsuccessfully to foreclose. This Amended Complaint set forth the following further and independent grounds for vacating the 1971 consent decree: (a) that SPS was guilty of fraud and inequitable conduct as to both USM and the court in the prior suit, and in its inducements to USM to accept — and the court to sign — the consent decree; (b) that SPS was guilty of fraud and inequitable conduct in its Patent Office procurement of the Villo patent, evidence of which-was wrongfully suppressed by SPS in the prior suit with USM and in an even earlier suit with a third-party, Amerace Corporation; and (c) that on the record taken as a whole, it would be at the very least inequitable to enforce the consent decree from the date of filing of the present suit. 12. In addressing these charges of USM, this court recognizes that the concept of fraud in a context of the present kind does not lend itself to simple and precise definition, but rather must be measured against fundamental standards of honesty and fair play. The court, however, is not without substantial case authority to guide it in its determinations in this action. In this regard, the legal and equitable principles that govern claims of patent fraud, and of unclean hands and inequitable conduct in the Patent Office and the courts, are well-rooted in Supreme Court doctrine. See e. g., Kingsland v. Dorsey, 338 U.S. 318, 70 S.Ct. 123, 94 L.Ed. 123 (1949); Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 65 S.Ct. 993, 89 L.Ed. 1381 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 64 S.Ct. 997, 88 L.Ed. 1250 (1944); Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 54 S.Ct. 146, 78 L.Ed. 293 (1933). 13. A dispute also has arisen between the parties in respect to certain patch-type self-locking nuts produced by USM, which did not come into existence until at least one year after the 1971 consent decree was entered. As concerns this dispute, SPS, in the pretrial Order dated April 12, 1976 and in responses to formal requests for admissions, initially took the position that four variants of a USM-produced patch nut were within the compass of the Villo patent. On the eve of trial, two and one-half years later, however, SPS sought through its counsel to withdraw its infringement charges, and further contended that all questions of patent validity and infringement as to the USM patch nuts would be mooted by such action because no justiciable controversy would then exist between the parties on such issues. USM, in response, urged that, at the very least, it was entitled to a judgment of noninfringement of the Villo patent by the USM patch nuts. Based upon the judicial admissions by SPS’ counsel in open court to the effect that SPS would never again assert the Villo patent against the USM patch nuts at issue, or against future USM products of like design, judgment on this issue was summarily entered against SPS on October 27,1978, in order to permanently remove any cloud from USM’s right to make and sell such patch nuts, and from its licensees’ right to do likewise free from any renewed claims of infringement by SPS. 8 Wright & Miller, Federal Practice and Procedure § 2761, at 805-06. See Ortman-Miller Machine Co. v. International Corp., 138 U.S.P.Q. 108 (N.D.Ill.1963); International Minerals & Chemical Corp. v. Golding-Keene Co., 164 F.Supp. 101 (W.D.N.Y.1958); Wallace Products, Inc. v. Falco Products, Inc., 145 F.Supp. 629, 630 (E.D.Pa.1956). By virtue of that judgment, and as USM has paid no royalties in connection with said product, no justiciable controversy remains in respect to the USM patch nut infringement issue. See Drew Chemical Co. v. Hercules, Inc., 407 F.2d 360, 362-63 (2d Cir. 1969). 14. Apart from any issues of fraud or inequitable conduct, USM also has requested this court to reconsider its decision of June 12, 1978, attributing a res judicata effect to the 1971 consent decree. This request of USM, however, has been denied, on the ground that to grant the relief requested would be contrary to the law in this Circuit regarding the effect to be given consent decrees in patent actions. American Equipment Corp. v. Wikomi Mfg. Co., 630 F.2d 544, 547-49 (7th Cir. 1980). That being true, the 1971 consent decree has and will continue to be looked upon as having res judicata effect for all matters preceding the date of the filing of the action at bar. 15. Having resolved the scope of the issues now before the court for decision, the technical subject matter, the Villo patent and the accused USM products will be reviewed in prelude to this court’s analysis of the evidence presented on the contested issues. III. THE TECHNICAL SUBJECT MATTER 16. The technology involved in the matter at bar is relatively simple. Specifically, it is composed of “fasteners,” i. e. ordinary nuts and bolts, with but a single modification to render them “self-locking.” A “self-locking fastener” is one which, once installed, tends to resist loosening as eaused, for example, by vibration. An ordinary bolt and lock washer is an example of a familiar self-locking fastener. A number of self-locking fasteners are included among the prior art pertinent to the Villo patent. Prior to the Villo invention, for example, there were pellet or plug-type, strip-type and patch-type self-locking fasteners. The prior art pellet and strip-type fasteners were ordinary bolts into which a radial bore or slot had been made or struck to mechanically secure a pellet or strip of nylon or other resilient plastic. This plastic was mechanically secured into the deformed thread of the fastener so as to project a small distance above the crests of the threads. In the prior art patch type bolts, resilient plastic material was adhered to the unmodified threads of the bolt in' an amount sufficient to project above the thread crests. The structural difference between these prior self-locking fasteners, and between them and the Villo invention, was the manner of securing the plastic to the bolt, i. e. mechanical versus adhesive bonding. 17. Pellet, strip and patch-type self-locking bolts all function in an identical fashion to achieve an identical result. When the bolt is threaded into a mating member, e. g. a nut, the resilient plastic material is forcibly compressed between the bolt and the mating nut, resulting in a resilient, but secure, frictional engagement between the bolt and the nut. The engagement, being frictional, prevents loosening of the members even under substantial vibration. This result obtains regardless of the circumferential arc or axial length of the plastic; the dimensions of the plastic affect only the degree of locking action obtained. IV. THE VILLO PATENT A. The Disclosure of the Villo Patent Specification 18. The Villo patch bolt is a conventional bolt to which a solid block or “pellet” of conventional nylon, often shaped similarly to the nylon pellets or strips of the prior art pellet or strip-type bolts, has been adhered. In this regard, Villo himself has stated that “the pellet may be made of any desired shape and size” and that “the extent of the thread area covered by the pellet and the amount of material applied to the threads may vary with the degree of locking action required.” The thread area covered, both axial and circumferential, thus is simply a matter of routine design choice. 19. When Villo bolts are made, a simple hand-operated die is used to press the nylon block into engagement with a preheated bolt. This action purportedly causes the contiguous surface of the nylon to melt — or fuse — and stick to the bolt by a fusion bond. In the Villo process, the bolt is “heated to a temperature such that when the nylon pellet is forcibly pressed against it by the plunger” the temperature of the bolt “in the contact area will exceed the melting temperature of the nylon.” Specifically, the bolt is heated by a furnace or oven to a temperature 50-60° F. higher than the melting point of the nylon. The pressure exerted by the plunger “may to advantage be on the order of one hundred pounds per square inch” and this “pressure is maintained until the temperature in the pellet contact area, has dropped well below the [nylon’s] melting temperature.” On Villo bolts, the fusing of the nylon pellet to the threads thus is the sole means by which the components are bound together. In summary, Villo discloses only a single patch bolt product made by securing a solid block of nylon by heat and pressure directly to the threads of a bolt, without the use of a bonding agent or adhesive, to form a single fused juncture therebetween by means of a die which confines the pellet to preselected axial and circumferential dimensions. B. The Villo Patent Claims 20. In the six and one-half years before the patent finally issued, SPS’ Villo claims were repeatedly rejected by the Patent Office examiners. Many claims were can-celled and abandoned before the Villo patent issued in June, 1963, with the following independent claim: 1. A self-locking threaded fastener element wherein the self-locking characteristic is derived from a nylon plastic composition having fused juncture with a surface of the thread, said plastic being confined to a local circumferential and axial area of the thread, and being bound to the thread solely by said fused juncture. The Villo patent accordingly discloses only one kind of patch-type self-locking bolt. C. The Prior Art Relied Upon by the Patent Office 21. SPS, as was noted previously, encountered considerable difficulty before obtaining the single independent claim of the Villo patent. Concerning the defendant’s chances for success, a handwritten note from patent counsel to SPS’ management written on the eve of the Patent Office Board of Appeals’ Villo hearing provided: “No chance on process — practically none on product.” SPS thus clearly was aware that, based upon the prior art known to and relied upon by the Patent Office, the Villo claims presented very close questions of patentability. 22. After review by the Patent Office Board of Appeals, the five Villo claims pertaining to the method of making the product were rejected, as was one product claim somewhat broader in scope than Claim 1 (see # 20 above). Because they were abandoned by SPS, all of the rejected Villo claims, and . their subject matter, passed into the public domain as a matter of law. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976). 23. The Patent Office cited ten prior art patents of record during the prosecution of the Villo application, including several patents depicting the prior art pellet and strip-type bolts described earlier. Although these latter patents disclosed a basic combination of nylon, secured to a bolt to make it self-locking, which functioned in the same way and attained the same result as the Villo product, SPS urged that such prior art was not relevant because, among other reasons: (a) it required either a “departure from normal thread structure” or a “recess or cavity in the thread structure;” (b) such combinations resulted only in “premium” (i. e. expensive) fasteners; (c) the nylon was held in place “by mechanical interlock with the thread structure;” and (d) “in every application of nylon to threaded elements ... prior to the applicant’s invention, the application had involved a departure from normal thread structure.” SPS further represented that pellet-type bolts had “never gained wide commercial use,” and that they were “non-competitive” because of their “high cost,” while at the same time stating that the Villo patch bolt was “extremely effective and highly commercial.” Based upon these representations, the patent examiner next turned to a British patent; a patent which did not have a modified thread form, but which SPS discounted as not relevant because it “disclose[d] the use of a rubber or rubber-like material,” not the nylon material of Villo. This distinction was significant, SPS claimed, because rubber did not fuse readily to standard bolt threads. Also, SPS argued, “the history of the development of the nylon thread lock indicate[d] clearly that the disclosure of this patent was not considered to offer any significant contribution to the nylon thread lock art.” The patent examiner also acceded to these arguments of SPS, but ultimately rejected the Villo claims based primarily upon a Gill patent viewed in conjunction with a Brubaker patent, both of which depicted the nylon which was missing from the aforementioned British patent. In its appeal from that ruling, SPS represented to the Patent Office Appeals Board that the Brubaker patent, because it showed only a particular method for applying nylon cladding to a preheated metal plate, did not relate to self-locking fasteners. In respect to the Gill patent, which showed only a tire valve having a nylon material overlying the threaded valve stem, SPS represented that: (a) Gill “does not contemplate utilizing the thin nylon coating for the purpose of a thread lock;” (b) “the device of Gill is interested solely in obtaining an airtight seal between stem 22 and rivet member 21;” (c) “the entire length of the threads” of Gill are “covered so as to be airtight;” (d) Gill does not “suggest the depth [of coating] sufficient to interfere with the mating of the thread” essential to create a self-locking effect; (e) “nowhere in the Gill patent can there be found a statement that the nylon is fused, bonded or otherwise integrated with the threaded members;” and (f) “the nylon precoating could accordingly be in the nature of a sleeve” that could be slide-fitted over the valve stem. SPS, in conclusion, argued that “Gill [was] entirely different in purpose, construction and results” from the Villo invention. 24. The Patent Office Appeals Board, in reversing the patent examiner’s rejection of Villo claim 1, expressly relied upon SPS’ representation that “the strength of [the Villo] fusion bond permits a local application of the nylon material to the thread without requiring other means for retaining the nylon and thus results in a simpler and less expensive product.” 25. SPS’ technical expert, Mr. Donald Fisher, acknowledged at trial that, in the patent examiner’s final rejection of the Villo claims, the Gill and Brubaker patents were cited as the best prior art known to the Patent Office. He further conceded both that neither of those patents disclosed a self-locking fastener, and that the disclosures of Gill and the secondary Brubaker reference were as limited in their teaching as has been outlined above. V. THE ACCUSED USM PRODUCTS 26. SPS has asserted that six variants of a USM patch bolt come within the compass of the claims of the Villo patent. All of the accused bolts are made from the same constituent materials, and produced by the same processing steps. It is only the dimensions of the surface area covered by the patch (axial length and circumferential arc) that varies between the individual bolts. 27. The USM patch is formed on a conventional, clean bolt by use of a finely powdered mixture of plastic material composed of about 90% (by weight) nylon powder, known as nylon 11, and 10% (by weight) of another finely powdered material, known generally as an epoxy primer. This material is applied to the bolts by a particular USM process procedure. In simplified terms, the USM process involves first pre-heating the bolts to a temperature exceeding the melting point of the material mixture, then moving them along on a conveyor past a “spray station,” where an air stream carrying entrained particles of the nylon-epoxy mixture is directed at the hot bolts. Those particles in the air stream that strike the bolt melt and adhere to the threaded surface, and progressively buildup a layer of melted material on the bolt. As the coated bolts move beyond the spray station, they gradually cool and the plastic material solidifies into an adherent coating. A relatively thick layer of material is formed on the surface portion of the bolt squarely facing the spray, while the coating gradually tapers in thickness to the thin, irregular edge contours on either side of this mounded center portion. The irregular edge contours of the USM patches are readily distinguishable from the sharply defined edges of the SPS bolts, which are formed by the confining effect of the Villo die. The epoxy primer in the USM process forms a highly adhesive layer on the bolt surface, which serves to secure the overlying nylon layer to the bolt. Under the USM process, two distinct fused junctures in reality are formed — the bolt and the nylon-epoxy layers. This is in contrast to the single juncture disclosed in the Villo patent. Also, no meaningful pressure is used to form the USM patch, again in contrast to the teachings of the Villo patent. The above-described USM process is a simplification of the process used by the plaintiff at the time of the earlier [1969] suit. The epoxy and nylon powders were applied in successive airspray steps at that time, but formed the same two-layer coating on the subject bolt. 28. Despite the aforementioned distinctions between the USM patch bolts and the single patch bolt disclosed in the Villo patent, it is SPS’ position that these’ USM products are within the umbra of the Villo patent monopoly. In this regard, the 1971 consent decree provides in pertinent part that “the claims of the Villo patent cover, inter alia, the so-called “Nylok” self-locking fasteners heretofore sold by defendant in which the self-locking feature is provided by applying a powdered nylon composition to the undistorted thread surfaces of a heated bolt, regardless of whether extrinsic mechanical pressure is applied to the nylon composition and regardless of whether a primer material is applied to the thread surfaces prior to or concurrently with the application of the nylon composition.” Because SPS has attributed such a broad scope to its Villo patent claim, however, the prior art and the related facts which form the basis of USM’s allegations of fraud on the Patent Office and fraud on the court must be judged with reference to that same broad claim, and not with respect to some narrower or alternative construction of the claim which might be sufficient to allow for a defense to USM’s allegations. See White v. Dunbar, 119 U.S. 47, 51, 7 S.Ct. 72, 74, 30 L.Ed. 303 (1886) (a patent claim is not “like a nose of wax which may be turned and twisted in any direction”). VI. THE EVIDENCE SUPPORTING USM’S CLAIM THAT SPS’ CONDUCT CONSTITUTED FRAUD ON THE PATENT OFFICE A. Synopsis of USM’s Contentions 29. USM has contended in the matter at bar that SPS, in prosecuting its Villo patent application, knowingly withheld from the Patent Office prior art and material facts more pertinent to the patentability of the Villo patent claim than those already known by the patent examiners. In addition, USM argues that SPS made affirmative misrepresentations of material fact to the Patent Office, with respect both to the state of the prior art and to other matters pertinent to patentability, upon which the Patent Office relied to its detriment in issuing the Villo patent. USM urges that SPS’ acts before the Patent Office constituted a breach of that uncompromising legal duty owed by the defendant to the Patent Office, and indirectly to the public, and further contends that but for each such act on the part of SPS the Villo patent never would have issued. Even more pointedly, USM charges that the very features of the Villo claim which SPS successfully argued not to be disclosed by the prior art known to the Patent Office were in fact shown by the prior art known to SPS, but withheld by it from the patent examiners. This latter charge is, by definition, fraud in one of its most serious forms. Timely Products Corp. v. Arron, 523 F.2d 288 (2d Cir. 1975); University of Illinois Foundation v. Blonder-Tongue Lab., Inc., 422 F.2d 769, 777 (7th Cir. 1970). 30. USM’s claims of patent fraud are built on the following factual foundation: (a) the 1954 Villo application which SPS concedes was deliberately abandoned following the Patent Office’s initial rejection of all of its claims as unpatentable over a Parker patent; (b) that evidence of record which USM contends establishes a 35 U.S.C. § 102(c) abandonment, by January, 1955, of a critical portion, if not all, of the claimed subject matter of the Villo patent — thus precluding, as a matter of law, any later recapture of this subject matter in the Villo patent; (c) the disclosure of the Parker patent, as it was known to SPS, in light of the asserted SPS admissions embodied in the disclosure of the 1954 application and in a related internal SPS memorandum; (d) SPS’ asserted admissions of at least partial inoperability of the Villo patent, said by USM to be embodied in the Patent Office file history of another SPS patent (the “Epstein” patent) and in related internal SPS documents; and (e) that evidence of record which, USM argues, demonstrates that SPS made misrepresentations of material fact to the Patent Office on matters relevant to patentability, including those pertaining to the alleged commercial success of the Villo invention and the alleged lack of commercial acceptance of prior art self-locking bolts. B. The Competence and Relative Credibility of the Witnesses on the Contested Issues of Fact 31. In respect to SPS’ alleged fraud upon the Patent Office, the controversy between the parties centers essentially upon what was in fact disclosed by the Parker patent, the abandoned 1954 Villo application, the Epstein patent history, and the related events at SPS in respect of each of these items. As might be expected, the parties are at odds on these issues. The first aspect of this controversy was presented at the inception of the trial, when USM sought to have its expert witness, Mr. Albert Newton, a now retired USM engineer, explain the relevant technology, including the disclosures of the Parker and Epstein patents and the 1954 Villo application. SPS objected to this testimony on the ground that Mr. Newton was versed in adhesive technology, not simply in self-locking fasteners — which, SPS argued, was the only relevant technology. In this regard, SPS, while conceding that Mr. Newton was an adhesives expert, contended that a person versed in the self-locking fastener art in 1954 would have been ignorant of adhesive technology. Such a person, the defendant argued, in 1953 would have been lacking in any formal education beyond high school, would have “come up through the shop” and would have had no knowledge or understanding of the properties of plastics and adhesives as such were then known and described in the prior art literature. By contrast, USM claimed that the alleged invention of the Villo patent pertained precisely to the field of plastics and to the adhering of plastics to metals. USM supported its argument by directing attention to the state of the prior art at the time the alleged Villo invention was made. Such prior art showed a combination of nylon mechanically secured to a bolt to form a self-locking bolt; a bolt which functioned identically to and achieved the identical result as the Villo product. The prior art further disclosed processes for adhering soft metals and plastics to fastener threads, for use in the production of like functioning patch bolts. The record also reveals that SPS began its patch bolt development work with actual knowledge that patch fasteners per se were old, and that nylon was at least one preferred plastic for use in self-locking fastener applications. SPS’ express project objectives at the time it initiated its efforts in August, 1953 were to find suitable plastic materials, and to develop suitable methods for making self-locking bolts by adhering the plastic to the unmodified threads of bolts. In connection with these objectives, SPS in 1953 did substantial experimental work in the testing of various plastics for such application, and consulted prominent, knowledgeable plastics suppliers — including DuPont — in its search for suitable plastics and application methods. From the evidence, it thus is clear that SPS itself recognized its own development work as being in the fields of plastics and adhesion of plastics to metals. Under this state of knowledge, both at SPS and in the prior art generally, common sense mandates that these fields be considered the technical arts to which the subject matter of the alleged Villo invention “pertains.” 35 U.S.C. § 103. 32. As the court has concluded that USM’s definition of the technical arts pertinent to the claimed invention of the Villo patent is the correct one, and as the plaintiff’s expert, Albert Newton, clearly is qualified as an expert in these technical arts, he must be considered competent to offer opinions on interpretation of the prior art and on the level of ordinary skill in these arts at the time of the alleged Villo invention. 33. In making its determinations, the court also has had the benefit of hearing the live testimony of the parties’ witnesses and of observing their demeanor. In this regard, the court found Mr. Newton to be a highly credible and convincing witness. Until his retirement in 1976, Mr. Newton had worked continuously in the fields of plastics and plastic adhesives for more than thirty-five years. He had been aware of and had used self-locking bolts prior to 1954. He also was, prior to 1954, a reader of publications of the kind relied upon by USM as illustrating the level of prior art knowledge in the plastics and adhesives fields at that time. In contrast, Mr. Don Fischer, SPS’ technical expert, has had no working experience or educational expertise in the field of adhesive technology. As to this point, he conceded at trial that he had never represented himself as being an expert in chemical matters, and he declined to represent himself as being so qualified in this case. Indeed, on cross-examination SPS’ own counsel objected to any interrogation of Mr. Fischer regarding the disclosures in prior art relied upon by USM on the ground that “this witness has not been put on and qualified as a man in the plastics art.” Mr. Fischer himself then admitted that “I have no skill in the chemistry of plastic.” 34. USM also offered expert testimony on those matters of Patent Office practice and procedure relevant to the issues in this case. This testimony was given by Irving Kayton, a Professor of Law and Director of the Patent Law Program at the George Washington University School of Law. Professor Kayton clearly has the credentials of an expert in his field, and SPS did not object to his testimony in this regard. In explaining the practices and procedures pertinent to patents, Professor Kay-ton also offered opinion testimony which was directly relevant to the facts of this case, but in so doing he emphasized that he was relying upon the factual correctness of testimony given by Mr. Newton and others — testimony often phrased by USM counsel as the premise to the question being posed — and upon the undisputed documentary evidence then of record. Remembering that these caveats are necessary conditions to the value of his testimony, the court nonetheless notes that Professor Kay-ton was emphatic and unequivocal in stating that the postulated facts, when viewed together with the undisputed facts of record, established a number of independent instances of fraud on the Patent Office. 35. By comparison, SPS offered some expert testimony on certain Patent Office practices, primarily in respect to the patent classification system, but did not offer any significant opinion testimony in rebuttal to that offered by Professor Kayton. Nor was SPS able on cross-examination to diminish the force of Professor Kayton’s opinions. The SPS expert testimony on patent practice was given by Mr. Don D. Andrews, a now retired Patent Office official who served in a quasi-judicial capacity as a member of the Patent Office Appeals Board from 1961 through his retirement in 1973. Mr. Andrews was the author of the Appeals Board decision which reversed in part an earlier patent examiner’s rejection of the Villo claims, and thereby resulted in the issuance of the Villo patent. Mr. Andrews also was called by USM at trial. Testifying as an adverse fact witness, he was interrogated as to whether any of the prior art and other facts relied upon by USM, and allegedly withheld by SPS, might have altered his decision. In this respect, Mr. Andrews’ trial testimony concerning the obligations of patent applicants to the Patent Office, and in regard to reliance placed by the Patent Office on the candor of applicants, is in noticeable conflict with the less exacting standards suggested by SPS. C. The Abandoned 1954 Villo Application 36. On January 4, 1954 SPS filed a patent application, Serial No. 401,939, in the name of Mr. Villo for “Thread Lock.” This application was not for the Villo patent in suit, and neither its existence nor the contents of it were made of record during the Patent Office prosecution of the present Villo patent. 37. SPS contends that the 1954 Villo application, while obviously relating on its face to claimed inventions in patch fasteners and their methods of manufacture, is directed to a different invention than that disclosed and claimed in the present Villo patent. The defendant further states that the 1954 application, and its documented development history, had nothing whatever to do with the Villo patent, and accordingly that, for this reason, it [SPS] had no legal duty to call this application, its disclosure and/or the basis for its abandonment to the attention of the Patent Office. Resolution of this issue, however, will require review of the Patent Office prosecution history of the 1954 application, its developmental origins at SPS, its disclosures and its relationship, if any, to the Villo patent. 1. The Rise and Fall of the 1954 Application 38. From the record, it is clear that SPS began its original patch fastener development project in August, 1953, and that Messrs. Villo and Baumgartner were prime participants in it. The defendant appears to have pursued this project intensely through the end of 1953, and ail of the patch fastener product structures and manufacturing methods it then believed to be patentable seem to have been captured within the compass of the disclosure and claims made in the 1954 Villo application. 39. On July 15, 1954, the Patent Office issued an Office Action rejecting all twenty of the Villo claims as unpatentable over a Parker patent now relied upon by USM to support its claim of fraud. This rejection was characterized by Professor Kayton as an anticipation rejection, i. e. one in which the cited prior art reference is said to disclose to one of ordinary skill in the art all of the essential aspects of the claimed invention. The Office Action and cited Parker patent were forwarded to Mr. Baumgartner by SPS’ outside patent counsel with the covering comment that “the Parker patent seems to be highly pertinent.” The Parker patent was not discovered by SPS in the prior art search it conducted prior to the filing of the 1954 Villo application. SPS’ searcher did, however, discover another patent, also cited by the patent examiner (the Saylor patent, No. 2,507,892), which was located in the same Patent Office art class, 85-1C, as the Parker patent. Accordingly, because that occurred, it can reasonably be assumed that SPS’ search attorney either overlooked the Parker patent despite its relevance, or that it was not in the Patent Office search files at the time of his search. 40. SPS did not routinely accept the assessment of the Parker patent set forth in the Office Action and reported by the defendant’s patent counsel. This was so because, in Mr. Baumgartner’s words, the application was “important to the company.” By interoffice memo, Mr. Baumgartner, then SPS’ supervisor of product research, sought counsel from other members of SPS’ technical staff regarding the relevance of the cited Parker patent to the Villo application. This memorandum was directed to Mr. Robert Sproat, then SPS’ Chief Metallurgist and a holder of a Masters Degree in metallurgy, Mr. James MacDowall, SPS’ superintendent of operations, and the named inventor, Mr. Villo. In said memorandum, Mr. Baumgartner’s personal conclusions with respect to Parker, which he conceded also represented the advice of experienced patent counsel, were reported: This patent covers in general exactly what we were trying to do ... We might be able to go back on the basis of other materials, but I do not feel we would have much luck. On the face of the Baumgartner memorandum is the handwritten instruction “Drop it,” which SPS witnesses have conceded reflects both the corporation’s concurrence with the conclusions stated therein and the joint decision of the above-named individuals to abandon the 1954 application as unpatentable over Parker. 41. The 1954 Villo application was in fact abandoned by SPS when the defendant failed to respond within the statutory time limit to the patent examiner’s Office Action. The application became officially abandoned on January 15, 1955. 42. In his deposition, Mr. Baumgartner testified that, concurrently with the decision to abandon the 1954 Villo application, “we were told to drop the project,” that such action ended the work at SPS “on that approach” and that his personal association with any patch bolt development activities likewise ended at that time. From this, and the other facts noted above, it thus appears clear that SPS, before abandoning the 1954 application, carefully weighed the disclosure of the Parker patent which had unexpectedly surfaced during the prosecution of that application, concurred in the patent examiner’s conclusion that Parker fully anticipated all that was claimed or could have been claimed as invention therein and deliberately abandoned the application for that reason. 2. The History of the SPS Development Project Leading to the Filing of the 1954 Villo Application 43. The details of the SPS project activities which led to the filing of the 1954 Villo application have been well developed in the record, both by testimony and through the introduction of contemporaneous SPS documents, including several letter communications from Mr. Baumgartner to SPS’ outside patent counsel. A substantial portion of this developmental history, with the exception of that chapter which forms the basis for USM’s claim of fraud on the court, is embodied as well in the testimony given by Messrs. Villo and Baumgartner in the prior suit, and in the documentary exhibits marked of record during that prior trial. 44. The first document written in connection with the SPS patch-bolt project begun in August, 1953 was a letter from Mr. Villo to SPS’ patent counsel dated August 6, 1953. This letter, which had enclosed sample patch bolts made using “a liquid Neoprene rubber compound,” made reference to “some experimenting with liquid nylon.” In his testimony at the 1971 trial, Mr. Villo explained that the above letter referenced “our first attempt of the patch-type fasteners” in which we used neoprene, “a synthetic rubber compound.” He testified that in making these neoprene patch bolts “I melted the neoprene; and had it drop onto the bolt through a little vessel,” and we “found it had good adherence and gave us a certain amount of torque.” 45. An August 10,1953 document signed by Mr. Villo and witnessed by four co-signers was prepared for the purpose of having a “record of what we were-doing.” This document discussed the use of “other synthetics beside neoprene,” and noted that Villo had “conducted further tests on the bolts and checked the torque on them.” In Mr. Villo’s words, the first formally recorded tests, attached to an August 11, 1953 letter to patent counsel, were a “fairly satisfactory start,” that “we continued testing much more diligently because [our experiments] showed great promise,” that by early November, 1953, he had “conducted a very thorough test on at least twenty-two or twenty-three different synthetic materials including nylon” and that “nylon showed more stable results than any of them.” Mr. Villo’s written accounts concerning nylon patch bolts also parallel his earlier description of how he made neoprene patch bolts in August, 1953: Q Now, how was the nylon applied? Was it a patch only, or was it completely around the circumference? A This was in patch, sir. This was in patch. Q Well, how was the patch actually applied, the patch of nylon applied to the bolt? A In this case, a bolt was heated and a nylon rod was advanced against the threads and a certain amount of nylon melted onto the threads. Q And how did you view those test results on those nylon samples? A The nylon showed the best promise of the various materials tested. SPS contends that Mr. Villo, who died prior to the filing of the present action by USM, erred when he gave the above testimony in the 1971 trial. The defendant claims that no SPS patch bolts were made by melting, or fusing, nylon onto the bolt threads until over one year later, in December, 1954. Rather, SPS states only “liquid,” not melted, nylon was used in 1953. In the aforementioned August 6, 1953 letter, however, although “liquid neoprene” is discussed, such was said by Mr. Villo to mean melting the neoprene. Also, SPS has not charged that the Villo testimony with respect to melting neoprene onto the bolt threads in August, 1953 was in error. 46. In a letter dated November 10,1953, Mr. Baumgartner forwarded to SPS’ patent counsel the test results on “twenty-two or twenty-three different synthetic materials,” and an “Outline for Patent Application” which was the initial draft of the 1954 Villo patent application. 47. When asked the nature of the development described in the Outline for which SPS had asked patent counsel to obtain protection, Mr. Baumgartner replied: It was my understanding that what was unique was the application of a resilient coating to metallic threads where there would be a bond between the two not requiring any deformation or machining of the metallic threads. Baumgartner further testified that it was SPS’ intention to embrace within this new concept limited axial and both complete and partial circumferential coatings, the use of nylon, among other materials, and the use of nylon with an epoxy primer to secure the nylon to the threads. In describing the 1953 development work, Mr. Baumgartner testified that mixing an adhesive such as epoxy with a plastic such as nylon was then known by SPS to be an equivalent alternative to applying the adhesive and the plastic to the bolt in separate processing steps. The application “Outline,” as embellished by the defendant’s patent counsel working in conjunction with Mr. Baumgartner and others at SPS, ultimately matured into the 1954 Villo application. This 1954 application, in the words of Mr. Baumgartner, was intended to disclose not only what SPS had accomplished in its tests as of that time, but also “where [we envisioned] we might be in our development work at such time as this would have issued as a patent.” Continuing, he stated that: “I think the intent of our wording was to make it as broad a coverage as possible.” 3. The Disclosure of the 1954 Viilo Application 48. In many respects, the 1954 Villo application clearly disclosed to one of ordinary skill in the art in 1954 the very patch bolt product broadly claimed in the later issued Villo patent. The differences between the disclosures of the 1954 Villo application and the Villo patent, with the exceptions considered in findings 56 and 57, infra, are primarily in the method for making the claimed product. SPS’ own patent expert, Mr. Fischer, however, has conceded that the Villo patent claims purport to cover a patch bolt product regardless of manufacturing method, so long as such method is productive of a fused juncture between the plastic and metal. The broad language of the 1971 consent decree also confirms this conclusion. 49. The 1954 Villo application also disclosed that neoprene rubber was suitable for use in patch bolt applications. This representation, which was made under oath by Mr. Villo at the time of the filing of the 1954 application, was contradicted in part by the representations SPS made later to the Patent Office, during its prosecution of the Villo patent. The 1954 application further disclosed, again under the cover of Mr. Villo’s oath as an inventor, that Villo had found that nylon and the copolymers of vinyl chloride and vinyl acetate, when applied to the unmodified threads of a bolt, not only gave a locking action, but also functioned as alternatives suitable for commercial purposes. Vinyl acetate is essentially the same type of material disclosed by the Parker patent. 50. SPS has advanced a number of arguments in its effort to minimize the significance of the above-noted facts. Specifically, SPS has argued that the 1954 application: (a) did not disclose or claim fusion bonding because the particular words “fused juncture” were not found in the application; (b) disclosed only a full circumferential coating; (c) disclosed only an application of plastic in a liquid or paste state, rather than in a solid form; and (d) did not state that vinyl acetate was the full equal of nylon for a self-locking application. The court, however, has not found any of these arguments convincing. On the subject of the 1954 application the court believes that the testimony of SPS’ witnesses generally was unconvincing and, more often than not, was contrary to the specific contentions made by the defendant. 51. Regarding the defendant’s “fused juncture” argument, although SPS has always taken the position that a fused juncture is disclosed in the 1956 Villo application, this expression was not used by SPS until a continuation-in-part Villo application was filed in November, 1957. From there, it apparently found its way into the claims as a simple way to describe the product disclosed in the 1956 application. As to this point, Mr. Sproat, now the Vice-President of Manufacturing and Engineering for SPS, admitted that fusion is simply a synonym for melting and that fusion bonding is the juncture or “bond that’s created by heating one of two materials above its melting point and placing them in contact.” 52. In respect to SPS’ “full circumferential coating” argument, Mr. Newton testified that, although the drawing of the 1954 application illustrated a full circumferential coating, one of ordinary skill in 1954 would have, without question, also understood the application to disclose a partial circumferential coating. The wording of the 1954 application, i. e. “the extent of the thread area covered by the film may vary with the degree of locking action required,” also makes it clear that the area to be covered is simply a matter of choice. Mr. Baumgartner, in addition, testified that he viewed the 1954 application as embracing both partial and complete circumferential coatings. Finally, Mr. Andrews testified both that he considered this issue so insignificant that he would have taken “judicial notice” of the obviousness of using less than a full circumferential coating, and that the 1963 Appeals Board decision resulting in issuance of the Villo patent so held — “the area circumscribed is a matter for routine determination.” 53. SPS’ argument concerning the form or state of the plastic as initially applied to the bolt is a distinction without a difference where it is the end product and not the particular method being claimed. This is true because plastic in its end condition is in the same solid state in the products made according to the 1954 application, the Villo patent and the accused USM process. In each case the plastic has gone through the same melted or fused state enroute to the final product condition. The only difference between these three method techniques is whether the starting material is in liquid, paste, powder or solid form, and whether the material is applied by spraying, brushing, etc. or by a pressure applying die. The Villo claims, rather than drawing any distinctions based on these method concepts, require only that there be a fusing of the plastic. Mr. Fischer conceded that various methods may be employed to attain fusing consistent with the Villo claims, and the 1971 consent decree embraces a product with a fused juncture regardless of other method aspects of manufacture. 54. SPS sought to show at trial that the vinyl acetates, polyvinyl chlorides and other materials recited in the 1954 Villo application as being suitable for “commercial" thread locking applications were not as good as nylon for such use. Particularly, SPS sought to show that nylon was better suited because of its superior resiliency and the like for demanding commercial applications, like those of the aerospace industry, while presumably the other materials were only acceptable for less demanding commercial applications. There are a number of independent reasons, factual and legal, why this argument fails. First and foremost, however, is that SPS recognized in September, 1954, upon review of the patent examiner's rejection of the 1954 Villo application, that there was little or no difference of a patentable consequence between nylon and the vinyl acetate disclosed in the Parker patent. Although SPS considered the 1954 application “important to the company” and had the rejection studied by at least five skilled people, it reached the conclusion that Parker disclosed “exactly what we are trying to do.” 4. A Comparison of the 1954 Villo Application and the Villo Patent 55. USM submitted a chart at trial comparing the wording of the invention summary and invention objectives portions of the specifications of the Villo patent and the 1954 Villo application. This chart revealed some startling similarities and distinctions between the documents. Specifically, the chart showed that there were twenty-seven different phrases of identical wording between the specifications of the two documents, including phrases of up to thirty-seven words in length, and other phrases of twenty-nine, twenty-seven, twenty-two and twenty words in length. It is evident that this did not occur through coincidence. Rather, it is apparent that the author of the application for the Villo patent had at least reviewed the 1954 application before he drafted the former document. 56. The word identities also show that the alleged inventions of the Villo patent and the 1954 Villo application were based in large part upon the same “discovery,” and that the objects of both inventions were very similar. There are, however, two distinctions which warrant discussion by the court. First, in specifying the plastic materials that conform to the like “discovery” and objects, and which were said by Mr. Villo to meet the requirements for providing a thread lock adequate for commercial purposes, the specifications state: THE VILLO PATENT One materia] which meets the essential requirements and which when properly applied to a screw thread will provide a thread lock adequate for commercial purposes is polyamide [nylon type] resins. THE ABANDONED 1954 VILLO APPLICATION The following are samples of typical materials meeting the foregoing requirements in whole or in substantial part and which when properly applied to a screw thread will yield a thread locking film adequate for commercial purposes. The examples of typical plastic materials specified in the abandoned Villo application include nylon, the copolymers of vinyl chloride, vinyl acetate and neoprene mixed with a polyvinyl material. Only nylon is identified in the Villo patent as a material meeting the requirements adequate for a commercial thread lock. SPS thus, in preparing the application for the Villo patent, appears to have deleted reference to those other plastic materials, in addition to nylon, that its own research work had demonstrated also produced “a thread lock adequate for commercial purposes,” and which Mr. Villo had represented under oath to meet such requirements. 57. The second distinction relates to the manner of adhering the plastic to the thread surfaces of the bolt, described in the respective Villo specifications as follows: THE VILLO PATENT . . . the ability to adhere or bond strongly to the surface of the threads . . . without the use of any bonding or adhesive agent THE ABANDONED 1954 VILLO APPLICATION [the] ability to adhere or bond strongly to the surface of the threads . . . by suitable bonding or adhesive agents It is apparent from the above quotes, when read in light of the other phrase identities, that the author of the application for the Villo patent consciously and deliberately changed the wording of the 1954 Villo application to exclude the use of bonding agents and adhesives from the disclosure and claims of the Villo patent. This aspect of the Villo patent also is emphasized as another facet of the Villo invention “discovery:” “I have discovered that these resins [nylon type] may be adhered to the threaded surface of a bolt without use of any bonding or adhesive agent.” The Patent Office file history of SPS’ Epstein patent further confirms that SPS intended and understood the teaching of the Villo patent to be so limited. Specifically, only fifty-five days before SPS filed its first [the 1969] action against USM for infringement of the Villo patent, the defendant made the following representation to the Patent Office in the course of its successful effort to overcome a rejection of the Epstein claims on the Villo patent: The Villo patent in Column 1, lines 44 et seq. teaches that nylon resins may be adhered to the thread surface of á bolt without the use of any bonding or adhesive agent. In view of this teaching, there is no incentive to one skilled in the art to employ an adhesive like that shown in the Groves et al. reference to bond a thermoplastic element to a metal fastener. However, it is continually emphasized in the Villo patent that the locking elements therein are applied without the use of any adhesives, and are bonded to the fastener surface solely by a fused juncture. (emphasis in original.) 58. After the Patent Office, in its first Office Action [rejection] of the 1956 Villo application, failed to cite as prior art the Parker patent that had spelled the downfall of the 1954 Villo application, it appears that SPS’ claims in the application for the Villo patent were gradually expanded and tailored to meet and defeat the rejections of the Patent Office on the prior art actually cited. USM contends that the expanded claims of the Villo patent literally read on and found support in the 1954 application. Mr. Newton and Mr. Sproat also testified to this effect, as did Mr. Baumgartner — excepting for his reticence at trial to find one element, fusion bonding, in the 1954 application. SPS’ expert, Mr. Fisher, declined to answer questions on this subject on the ground that he had no skill in the chemistry of plastics. Professor Kayton, however, on the basis of the interpretation of the 1954 application given by Messrs. Newton and Sproat, was unequivocal in stating that the Villo patent claims read on and “found support” in the 1954 Villo application. From the testimony presented, the court thus concludes that the 1956 Villo patent claims did read on and find support in the disclosures of the 1954 Villo application. D. The Disclosure of the Parker Patent as Known to SPS 59. The SPS documents produced, and the testimony of several of the defendant’s present and former officials, together show a clear recognition by SPS that the Parker patent anticipated “exactly” what it [SPS] was trying to patent in the 1954 Villo application. Having already determined what the 1954 application disclosed, and that the claims of the Villo patent found support in the 1954 application disclosure, it appears to this court to follow a fortiori that the same conclusion reached in 58- above applies equally to the 1956 Villo claims, as measured against the Parker patent. SPS, however,, has urged strenuously both prior to and at trial that Parker did not in fact disclose fusion bonding, and that such would not result from an explicit following of the teachings of Parker. USM, in response to this argument, proposed to conduct inter partes tests for the purpose of scientifically establishing as a matter of fact whether a following of the explicit teachings of Parker would or would not result in fusion, i. e. the melting of the polyvinyl acetate. USM requested that SPS have its expert witnesses, Messrs. Andrews and Fischer, attend these tests, which were to be conducted by USM’s expert witness, Mr. Newton. SPS declined to have either of these individuals attend the tests, but sent in their stead Mr. John Benz, SPS’ Manager of Chemical Research and Development. At trial, Mr. Newton testified to the effect that the inter partes tests had shown conclusively that the Parker procedures resulted in fusion bonding. SPS did not offer any testimony through Mr. Benz criticizing in any respect the accuracy or fairness of the USM tests. Accordingly, from the evidence, including the inter partes tests, it must be assumed that a practice of the explicit teachings- of the Parker patent would result in a fusion bonding of vinyl acetate to the bolts. 60. The final question is whether SPS can be charged with knowledge that Parker disclosed fusion bonding. Mr. Newton testified that, in his opinion, one of ordinary skill in the field reading the Parker p