Full opinion text
TABLE OF CONTENTS Page Introduction A. Background 752 B. General Comments about the Summary Judgment Motions ' 753 I.The Special Master’s Report A. The Destroyed Documents 756 B. Struthers’ Knowledge of Impending Litigation 758 C. Relationship of the Documents to the Issues 759 D. Present Availability of the Destroyed Documents 761 E. Sanctions to be Imposed 763 II. The Muller Patents A. Description of the Patents 767 1. Muller ’007 Patent 767 2. Muller’522 Patent 768 B. Prosecution of the Muller Applications 769 1. The Muller I Application (the ’007 Patent) 769 a. The Petition to Accelerate 769 b. The Examiner’s First Action 770 c. The Examiner’s Second Action 771 d. The Interview with the Examiner 772 2. The Muller II Application 773 a. The Examiner’s First Action 773 b. The Product-by-Process Claim 774 c. The Double Patenting Rejection 774 d. The Prior Art Rejection 774 e. Muller II - The Decision of the Board of Appeals 775 3. The Muller III Application (the ’522 Patent) 775 C. The CCPA Clinton Decision 776 D. Prior Sale - Nestle’s and Struthers’ Contentions 777 1. Facts Relied upon by Nestle 777 2. Facts Relied upon by Struthers 780 Page Invalidity over the Prior Art 781 H 1. Presumption of Validity 781 2. Summary Judgment Standards 784 3. ’007 Patent Prior Art 785 4. Differences between the Prior Art and the '007 Claims 786 5. The ’522 Patent 790 Invalidity by reason of Prior Sale 791 lx, Conclusion 793 Ü III.The Ganiaris ’295 and ’034 Patents A. Description of the Patents 794 1. The Ganiaris ’295 Patent 794 2. The Ganiaris ’034 Patent 795 Prosecution of the Ganiaris Applications 796 w 1. The Ganiaris I Application 796 2. The Ganiaris II Application 796 3. The Ganiaris III Application (the ’295 Patent) 798 4. The Ganiaris IV Application (the ’034 Patent) 799 C. Prior Sale-Nestle’s and Struthers’ Contentions 801 1. Facts Relied upon by Nestle 801 2. Facts Relied upon by Struthers 802 Abandonment of the ’295 Patent 802 Ü Invalidity of the ’295 Patent under § 112 804 H F. Invalidity of the ’295 Patent over the Prior Art - Obviousness 805 1. Applicable ’295 Filing Date 805 2. Prior Art 806 Invalidity of the ’295 Patent under § 102(d) 808 O H. Invalidity of the ’034 Patent over the Prior Art - Obviousness 810 1. Applicable Filing Date 810 a. Ganiaris I and II Filing Dates 810 b. The British Application Filing Date 812 2. Prior Art 812 I. Invalidity of the ’034 Patent under § 112 814 J. Conclusion 814 IV.The Reimus Patents A. Description of the Patents 815 1. Reimus ’302 Patent 815 2. Reimus ’129 Patent 816 3. Reimus ’353 Patent 817 4. Reimus ’723 Patent 818 Prosecution of the Reimus Applications 818 W 1. The Reimus I Application (the ’302 Patent) 818 2. The Reimus II Application (the ’129 Patent) 821 3. The Reimus III Application (the ’353 Patent) 822 4. The Reimus IV Application (the ’723 Patent) 824 Page C. Prior Sale-Nestle’s and Struthers’ Contentions 825 1. Facts Relied upon by Struthers 825 2. Facts Relied upon by Nestle 825 D. Abandonment of the Four Reimus Applications 827 E. Invalidity of the ’129 and ’353 Patents for Claiming Subject Matter Previously Given Up 827 F. Invalidity by Reason of Prior Sale 830 G. Invalidity under § 112 832 H. Invalidity of the Reimus Patents over Prior Art - Obviousness 833 I. Invalidity for Withholding Information 835 J. Conclusion 835 V.The ’126 and ’722 Patents A. Description of the Patents 836 1. The Howell ’126 Patent 836 2. The Ganiaris ’722 Patent 837 B. Prosecution of the Applications 838 1. The Howell Application (the ’126 Patent) 838 2. The Abandoned Ganiaris A Application (Serial No. 651,451) 838 3. The Ganiaris B Application (the ’722 Patent) 841 C. Prior Sale - Nestle’s and Struthers’ Contentions 843 1. Nestle’s Initial Submission 843 2. Struthers’ Initial Response 844 3. Nestle’s Reply 844 4. Struthers’ Surrebuttal 844 D. Invalidity of the ’126 Patent under § 112 845 E. Invalidity of the ’126 Patent over the Prior Art - Obviousness 846 F. Invalidity of the ’126 Patent by Reason of Prior Sale 848 G. Invalidity of ’722 Patent under § 112 849 H. Invalidity of the ’722 Patent over the Prior Art - Obviousness 850 1. Ganiaris A Filing Date 850 2. British Application Filing Date 852 3. Invalidity of the ’722 Patent under § 102(d) 852 4. Invalidity of the ’722 Patent under § 102(b) 853 I. Invalidity of the ’722 Patent by Reason of Prior Sale 853 J. Conclusion 853 Appendix A OPINION Introduction DEBEVOISE, District Judge. Plaintiff, Struthers Patent Corporation, filed its complaint on April 13, 1972, alleging that defendant, The Nestle Company, Inc., was infringing ten Struthers patents by its manufacture and sale of soluble coffee. Nestle denied infringement and asserts that each of the patents is invalid and unenforceable. Nestle filed a counterclaim seeking, in one Count, a declaratory judgment of invalidity and unenforceability of each of the ten patents and asserting, in a second Count, a claim alleging unfair competition. Nestle joined as defendants on the counterclaim two corporations which are affiliated with plaintiff — Struthers Wells Corporation and Struthers Scientific and International Corporation. The three affiliated corporations will be referred to collectively as “Struthers”. The case has had a protracted pretrial history. Two matters are now ripe for disposition: (i) Struthers’ motion to confirm the report and recommendation of a special master concerning sanctions to be imposed by reason of Struthers’ destruction of relevant documents prior to institution of this action, and (ii) Nestle’s motions for summary judgment of invalidity and/or unenforce-ability of the ten patents in suit. For the reasons which are set forth in Parts I through V of this opinion, the findings of the special master will be adopted in part, modified in part, and rejected in part, but his recommendation that no sanctions be imposed will be adopted; Nestle’s motions for summary judgment of invalidity of the ten patents will be granted. A. Background Struthers is in the business of licensing and selling technical information and know-how. It owns the ten patents in suit, which deal generally with freeze concentration in the manufacture of instant or soluble coffee and certain other food products. Nestle is the world’s largest seller of soluble coffee. In simple terms, freeze concentration of coffee extract (derived by brewing coffee from coffee beans) involves removing water from the extract by chilling the extract sufficiently to form ice particles and then removing the ice particles, leaving a more concentrated solution. After the concentration stage the concentrated solution may be dried by various means to form the powder or granules constituting the soluble coffee. Nestle uses a freeze drying process but denies that it freeze concentrates coffee. For the most part the patents in suit contemplate that the freeze concentration processes described therein either will be or may be followed by freeze drying. Events pertinent to the pending motion took place as early as the mid-1960s. At that time Struthers entered into a contractual relationship with General Foods Corporation to assist General Foods in developing equipment for the freeze concentration of coffee extract. During the course of that relationship Struthers disclosed and sold or offered to sell to General Foods various processes and items of equipment relating to freeze concentration. According to General Foods it did not find the processes or equipment useful in its business and it terminated its relationship with Struthers. Thereafter extensive litigation between General Foods and Struthers took place, most of which ultimately was consolidated in the United States District Court in Delaware. Struthers charged General Foods with infringement of six of the ten patents at issue in the present action. Each party charged the other with theft of trade secrets and know-how. After extensive discovery and other pretrial proceedings the parties settled, signing a settlement agreement on February 9, 1972. After February 9 and prior to April 13, 1972, when the present action was filed, Struthers collected and destroyed a very substantial part of the documents and depositions which it had assembled in the course of the General Foods case. This document destruction is the subject of Nestle’s motion for sanctions and the special master’s report and recommendation recommending against sanctions. Nestle filed four motions for summary judgment, each directed to two or more of the ten patents in issue. Four days of hearings on those motions were held. I ruled against Nestle from the bench on certain grounds which it advanced, and I reserved decision on the remaining grounds. Parts II through V of this opinion deal with the remaining grounds. B. General Comments about the Summary Judgment Motions Summary judgment of invalidity of a patent is not common. Nevertheless I have concluded that summary judgment of invalidity of each of the ten patents at suit is required in this case. Nestle filed in support of its summary judgment motions a very extensive record. This record consists of the file wrappers of the proceedings in the Patent Office relating to each of the ten patents in suit and to certain other applications pertinent to these patents. It consists of documents produced by Struthers to Nestle in this action. It consists of Struthers’ answers to interrogatories and deposition testimony of Struth-ers’ officers and employees in this case and in the Struthers/General Foods litigation. It consists of a vast array of prior art, including earlier patents, articles and texts. Each of the four summary judgment motions was accompanied by three volumes of exhibits, i.e., a volume containing the file wrapper of the patents which were the subject of the motion, a volume containing documents produced by Struthers to Nestle, and a volume of prior art documents. Exhibits referred to in Parts II through V of this opinion will be found in the pertinent volume relating to the particular motion under discussion. The factual data contained in this material can hardly be disputed, consisting as it does of official records of the Patent Office, Struthers’ own statements, and prior art which has not been challenged. In addition, each party filed affidavits. Struthers’ affidavits were designed to demonstrate that there are genuine issues of material fact which preclude summary judgment. So vast is the record submitted in support of the summary judgment motion that it is a temptation to conclude that, amidst it all, genuine issues of material fact must exist. However, the trial of this case would impose such a heavy burden upon the parties and upon the resources of the Court, particularly as a jury has been requested, that I concluded that every effort had to be made at this time to comb the record and to determine if such issues do, in fact, exist. This is what I attempted to do, and the necessity to describe for the record the results of this inquiry is the cause of this regrettably (but I think necessarily) long opinion. Each of Nestle’s motions advances six or more grounds why summary judgment of invalidity and/or unenforceability should be granted. I have ruled that as to certain of those grounds the motions should be denied as a matter of law, and that, as to certain others of those grounds, the motions should be denied because as to those grounds there are genuine issues of material facts. I have ruled that each of the ten patents is invalid as a matter of law on one or more grounds. As to each patent except one (the Ganiaris 3,636,722 patent) one ground of invalidity is obviousness over the prior art, 35 U.S.C. § 103. (The question of obviousness was not reached in the case of the ’722 patent, as I concluded that it is invalid on two other grounds.) I did not believe it necessary in the case of any of the patents to determine whether they were also invalid because they were previously described in a patent or other publication, 35 U.S.C. § 102(b), and there were certain other grounds advanced by Nestle upon which I did not rule. For the purpose of the § 103 contentions it was necessary to make the factual inquiries mandated by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966): (i) determining the scope and content of the prior art; (ii) ascertaining the differences between the prior art and the claims in the patents at issue; and (iii) determining if the differences are such that the claimed subject matter would have been obvious at the time the invention was made to a person having ordinary skill in the art. The scope and content of the prior art is set forth in great detail in the record and can hardly be disputed. Similarly, the differences between the prior art and the claims in the patents at issue can be readily ascertained by a simple comparison. Struthers has argued strenuously, however, that there is a factual issue as to what was the ordinary skill in the art and as to whether the differences between the prior art and the claims in the patents at issue would have been obvious to a person having such skill. Struthers contends that these questions cannot be resolved without the testimony of experts in the face of affidavits of Struthers’ employee, Neophytos Ganiaris, asserting an absence of obviousness. I will deal with this contention in more detail in Parts II through V of this opinion. Some general observations, however, might be helpful at this point. The subject matter of the art involved in the present case is freeze concentration and freeze drying in the manufacture of powdered soluble food products. Although coffee is the principal food product under discussion, the same principles and techniques apply to certain other food products as well. As an examination of the prior art record discloses, this subject matter is a well ploughed field. For decades patents have been filed, articles written, and research and development undertaken in every phase of freeze concentration processes and equipment. The same record discloses that the skill in the art by this late date is very high. Not only is the skill in the art high, the subject matter is relatively simple, easily understandable by a person having limited or no technical background in this field. After reviewing the entire record applicable to all ten patents I concluded that it can be determined that there is no genuine issue of fact that the various changes and alleged improvements which Struthers has introduced into the prior art either are no more than cosmetic differences without any patentable significance or else, if they can be seen as improvements, are such as would have been obvious to one skilled in the art. The basis for this conclusion is described in some detail in Parts II through V and should be apparent from a comparison of the prior art and the claims at issue. The situation here is similar to that which prevailed in C-Thra Products, Inc. v. Uniflex, Inc., 397 F.2d 952, 955 (2d Cir.1968). Appellant now stresses that in patent cases summary judgment is often inappropriate by reason of the necessity to inquire into the scope and content of the prior art, the differences between the pri- or art and the claims at issue, and the level of ordinary skill in the art ... In many cases involving a question of patent validity such inquiry involves consideration of technical questions which are often best understood with the aid of expert testimony. But in this case, as Judge Bartels pointed out (Appellants’ appendix, p. 6a), the prior art and the patent claims are not complex and are easily understandable without expert aid. This is one case where it truly would be ‘an absurd waste of time and effort’ to deny summary judgment. Three other matters should be mentioned by way of introduction. Nestle urges that by reason of Struthers’ misconduct in prosecuting various of the patents involved in this case, at the very least Struthers should be denied the benefit of the presumption of validity accorded by 35 U.S.C. § 282. As will be described in some detail in Parts II through V, Struthers persistently violated Patent Office rules when prosecuting the applications leading to these patents. This resulted in major voids in the Patent Office records, often making it impossible to determine why an examiner acted as he did. For example, often one cannot tell from the file wrapper why an examiner who had found a claim to be invalid over the prior art reversed himself. More disturbing, though less frequent, are the situations in which Struthers changed its factual position. From time to time, both in proceedings before the Patent Office and during the course of this litigation, Struthers simply changed its factual statements when expedient to do so. I deal with this more extensively, particularly in Part II. If this were the trial of the case, it might well be that the presumption of validity would be affected. However, for the purpose of the summary judgment motions I have assumed that Struthers is entitled to the full benefit of the presumption. Another point which might be noted preliminarily is the fact that I am being asked to grant a summary judgment of invalidity of ten patents which, prior to their issuance, were reviewed and ultimately approved by a number of different patent examiners, each an expert in the field of patents. I think, however, that after reviewing all the prior art relating to all ten of the patents, and after reviewing all of the patents themselves, I am in a better position to evaluate the validity issues than were the examiners. I have had the benefit of being able to review all of the patents, all of the file wrappers, and all of the prior art at the same time. These patents are intimately related to each other, and the prior art of one is frequently prior art of another. My conclusion of obviousness of one patent was fortified and confirmed as I moved on to each succeeding patent and its prior art. None of the patent examiners had the opportunity to view these patents and the prior art in a unified presentation. Much of the prior art was never before them. In the case of some of the applications a number of examiners were assigned, none seeing the application through from start to finish. A candid statement by William A. Drucker, patent counsel and an officer of Struthers, describes the pressures under which these patent examiners worked: What often happens — this is what I want to explain — examiners are under a production quota, and they are concerned with disposition of cases, and part of their system is to make proposals to patent attorneys saying, ‘If you will make the following changes, I think I can see my way to allowing this language and letting the case get off my desk.’ Sometimes the proposal of the examiner on its face is quite acceptable. Sometimes it requires some conversation before final version is agreed upon. This is, I might say, or usually it happens on a Friday or it used to at the time these cases we are concerned with because examiners had weekly quotas for disposal of cases. That was the normal natural working in the Patent Office, at least in the coffee arts. I can’t comment now on every single art, but in the part dealing with food and coffee a lot of the examiners at that time were under such high pressure from the Commissioner’s Office to get rid of cases, to avoid an appeal if at all possible. In fact were under positive instructions to issue patents as opposed to rejecting them. (Transcript of Hearing, June 16, 1981, at 18.) Given all this, it is neither surprising nor an adverse reflection on the examiners that in the unusual circumstances of this case I find myself in a better position to determine certain issues of validity than they were. There is one final point I wish to make before turning to the individual motions. I am more confident in my conclusions by reason of the fact that each party has been represented by extraordinarily able counsel. Each legal issue has been briefed and argued exhaustively. Each side has probed the record and has, I am sure, discovered and impressed upon me every fact or circumstance supporting its position. In writing this opinion I have drawn extensively upon the briefs of both sides. For example, I have treated Nestle’s accounts of the prosecution of the pertinent patent applications as proposed findings of undisputed facts and, after checking them against the record, have modified and (as modified) adopted them. I turn now to the five pending motions. I. The Special Master’s Report In December, 1975 Nestle filed a motion pursuant to Fed.R.Civ.P. 37 seeking sanctions against Struthers for an alleged destruction by Struthers just prior to the institution of this action of a very substantial quantity of documents relevant to the issues in this action. These documents were voluminous in nature and were assembled during the course of the litigation between Struthers and General Foods Corporation. In that action Struthers asserted against General Foods six of the ten patents which it now asserts against Nestle. Judge Meanor, to whom the case was then assigned, reviewed the papers which Nestle submitted in support of its motion for sanctions on account of the document destruction, and he heard argument on the motion. As set forth in his opinion filed September 15, 1976, he concluded that he was “[ujnable to determine from the written record what documents were destroyed or how they related to the issues in this action”. Further, on the record before him, he was unable to “determine the appropriateness of the many forms of sanctions sought by Nestle”. He reserved decision until a hearing could be conducted. In order that resolution of the document destruction issues would not delay prosecution of the other phases of this case I appointed The Honorable Harold R. Tyler, Jr., a former United States District Court Judge, Special Master to supervise discovery, conduct hearings, and file a report containing his findings of fact, conclusions of law, and recommendations with respect to the document destruction charge. Inquiry into the following factual and legal questions was to be made: (i) identification, with as much specificity as possible, of the documents which were destroyed; (ii) the relationship of those documents to the issues in the present action; (iii) the extent to which such documents can now be obtained from other sources; (iv) whether Struthers knew or should have known at the time it caused the destruction of the documents that litigation against Nestle on the patents at issue was a distinct possibility, and (v) whether, in the light of the circumstances disclosed by the factual inquiry, sanctions should be imposed upon Struthers and, if so, what the sanctions should be. By pretrial order # 2 Judge Tyler was appointed Special Master. Thereafter very extensive work was performed by the Special Master and the parties with respect to the document destruction phase of the case. Had it not been for the efforts of the Special Master, it would have been impossible for me to have proceeded with the discovery and summary judgment phases of the case. On June 8, 1981 the Special Master filed his report and recommendations, which concluded that no sanctions should be imposed upon Struthers. Struthers filed a motion to confirm the Special Master’s report and to deny Nestle’s motion for sanctions. Nestle filed objections to the report and recommendation. A hearing on the motion and objections was held on September 10, 1981. Most of the grounds of Nestle’s objections are addressed in this Part I. In view of my conclusions set forth below it is unnecessary to address the remaining grounds. A. The Destroyed Documents During the course of the General Foods litigation Mr. Drucker, patent counsel and an officer of Struthers, was in general charge of assembling and controlling documents. He arranged for all Struthers’ documents pertaining to freeze concentration to be assembled and sent, ultimately, to the Texas law firm representing Struthers in that litigation, Fulbright and Jaworski. Mr. Drucker retained in his own custody the files relating to the processing of the pertinent patent applications. Through the discovery process in the General Foods litigation depositions were acquired and thousands of documents produced. Struthers kept these documents in Houston and copies were kept by Mr. Drucker in New York City, by John G. Muller, a Vice President of one of the Struthers companies, in Washington, D.C., and by Struthers' Delaware counsel in Wilmington, Delaware. In addition, the Fulbright firm sent to Westheimer Transfer & Storage Co., Inc., for storage, certain documents which included those known as the Office of Saline Water (“OSW”) documents. These were documents relating to work carried out by Struthers for the Office of Saline Water, United States Department of the Interior. A protective order was entered in the Delaware federal district court in the General Foods litigation covering some, but by no means all, of the depositions and documents produced by General Foods. It provided, in part: 2.At the conclusion of this litigation, all information received by any party from an opposing party and designated as secret, or determined to be secret by Court order, shall be deposited by the party then in possession of it in a secure place, still subject to the terms of this order, protected from access by any person other than a person authorized to see it by the terms of this order, or the terms of some subsequent Court order. (Emphasis added.) On February 9, 1972 Struthers and General Foods signed an agreement terminating their litigation. At Mr. Drucker’s instructions, some OSW documents had been destroyed at the Westheimer warehouse on January 12,1972. Struthers can give no explanation of this destruction, which took place just prior to a court-ordered document inspection by General Foods of the OSW documents. The remaining documents stored at Westheimer were destroyed on March 7, 1972, pursuant to Mr. Drucker’s instructions. On February 14 or 15, 1972 (less than a week after the Struthers-General Foods settlement agreement was signed) Mr. Drucker ordered that all the General Foods litigation documents be shipped to Houston for destruction. The exact dates when the destruction of the documents in Houston took place (except for the documents destroyed on January 12 and March 7, 1972 in the Westheimer warehouse) is not known precisely. Many were probably destroyed in late February and early March, 1972. Some must have been destroyed in or after May, 1972, when Struthers’ Delaware attorneys shipped documents to Houston in response to Mr. Drucker’s instructions. On March 6, 1972, Mr. Muller burned the documents under his control in Washington, D.C. Struthers’ Delaware counsel destroyed certain of the documents in their control in February, 1972 and, as mentioned above, shipped others to Houston in May, 1972. Mr. Drucker’s files contained documents underlying or pertaining to the patents in suit in the present case or relating to freeze concentration. This included documents relating to the prosecution and the file history of abandoned, pending and issued applications. These were destroyed, according to Struthers, as a “routine housekeeping practice” and “began in the early 1960s and continued subsequent to April 13,1972” (the date when Struthers filed its complaint against Nestle). The Special Master found that this document destruction program resulted in the destruction of the following categories of documents: 1. Copies of transcripts of depositions of General Foods personnel. 2. Copies of exhibits marked during the depositions of General Foods personnel. 3. Copies of documents, which copies were produced to Struthers by General Foods in the course of discovery. 4. All copies of the OSW records except copies of government contracts and a North American Aviation contract. 5. Copies of Struthers’ correspondence and related materials pertaining to customers or potential customers of Struthers for a period during the mid-1960s. 6. Materials in the files of Struthers designated as “privileged” in relation to the litigation with General Foods. 7. Copies of documents in the files of Struthers relating to the prosecution and file history of some or all of the freeze concentration patents here in suit. This finding requires a modification to reflect two events which occurred during the proceedings before the Special Master. Shortly before the March 21, 1981 hearing before the Special Master, Struthers reported that “portions” of its customer correspondence in the mid-1960s had been discovered. Thus at least part of the customer records previously reported to have been destroyed evidently were not destroyed and, very belatedly, have been produced. The day before the hearing before the Special Master Nestle was informed that the original index cards of documents from the Struthers-General Foods litigation were in existence and in the possession of Struthers’ counsel. Early in this litigation Struthers denied the existence of such a list. With these modifications, the findings of the Special Master as to the documents which were destroyed are supported by the record and will be adopted. B. Struthers’ Knowledge of Impending Litigation The Special Master found that “[t]he record does not indicate when Struthers decided to institute suit against Nestle, nor does it establish who, acting on behalf of Struth-ers, made that decision. The complaint herein was filed April 13, 1972.” This is a correct finding. In addition, however, I believe it necessary to determine whether Struthers knew or should have known at the time it caused the destruction of the documents that litigation against Nestle on the patents at issue was a distinct possibility. The Special Master did not make a specific finding on this point, but the record leaves no question as to what the answer to this question must be. Struthers’ proposed Contentions of Fact filed with the Special Master conceded that “After the settlement of the General Foods litigation, Struthers knew or should have known that litigation against Nestle on the patents at issue in its present action against Nestle was contemplated.” A recital of Struthers’ position on this issue is pertinent, because it bears upon Struthers’ motives when destroying the documents and it bears upon its good faith in the present proceedings. In 1976, in opposition to Nestle’s motion for sanctions, Struthers filed an affidavit of Mr. Drucker which stated in part: 10. I also want to emphasize that at the time the documents were destroyed Struthers had not turned its attention to preparation for litigation with Nestle and indeed was not prepared for litigation with anyone. I was not at that time aware of any plan by Struthers to conduct further litigation nor have I subsequently become aware that such a plan was in existence at that time. 11. * * * Struthers has not concealed from Nestle any information appropriate to the matters in dispute in the present litigation. From the beginning of the present litigation until this time there has been absolutely no document destruction on behalf of Struthers. Indeedno document destruction occurred from the moment that litigation between Struthers and Nestle was contemplated by Struth-ers. [Emphasis in original.] In its Interrogatory 81(a)(C)(xii) Nestle had requested Struthers to identify “memo-randa of counsel, diary and timebook entries of counsel and employees of respondents, bills and statements of counsel”, etc. In its answers (which list William Drucker, James Weiler and Dudley Dobie (of the Fulbright firm) of counsel), Struthers responded: Objection is made to identification of memoranda of counsel, diary and time-book entries of counsel and bills and statements of counsel on the basis of privilege. However without waiving the foregoing objection, there are no such documents relating, pertaining, referring to or bearing upon the foregoing. In addition, there are no other documents of the nature requested. (Emphasis added.) Nestle also served further document requests (Nos. 7-9) relating to destruction, to which Struthers replied: “There are no documents relating to the solicitation or giving of advice concerning document destruction.” Discovery of the Fulbright firm’s time sheets in the proceedings before the Special Master disclosed that Mr. Drucker's statements and the answers to these interrogatories were not true. It will be recalled that the Struthers-Gen-eral Foods settlement agreement was signed on February 9, 1972 and that Mr. Drucker issued the document destruction orders on February 14 or 15, 1972. The Fulbright records show that on February 11, 1972, Mr. Drucker entered into discussions with the Fulbright firm regarding the disposition of documents and institution of new legal proceedings. The Fulbright and Jaworski time record of Dudley R. Dobie dated February 11, 1972, reads as follows: Conf. T. Clark re document retention; T/T W.A. Drucker re doc. disposition and new litigation; continue review of files for storage. (Chargeable Hours Card No. 000037; Tab. 18.) Mr. Dobie testified that the new litigation mentioned in his card referred to either Nestle or Coca-Cola (Dobie Tr., p. 192.) During February, 1972 letters proposing non-exclusive licenses were sent over the signature of Struthers’ litigation counsel,Mr. Weiler, to Nestle and several other companies in the soluble coffee industry. Those letters were dated February 15,1972, the very time when Mr. Drucker issued his instructions for the destruction of documents. Again, on February 22, 1972, Mr. Dobie had another telephone conversation with Mr. Drucker regarding the Nestle matter. His Time Card of that date reads as follows: T/T Drucker re Nestle matter and re storage of files. (Fulbright and Jaworski Chargeable Hours Card No. 000002, Tab. 19.) On February 23, 1972 — the same date on which the order of dismissal was filed in the Delaware District Court terminating the Struthers/General Foods litigation — Mr. Drucker had further discussions with the Fulbright lawyers regarding the Nestle litigation. Mr. Dobie’s Time Card for February 23, 1972 reads as follows: T/T Richards re entry of Order of Dismissal; T/T W.A. Drucker re Nestle litigation; review Rule 60 requirements re Court’s jurisdiction after judgment; investigate jurisdiction re Nestle litigation. (Fulbright and Jaworski Chargeable Hours Card No. 000001, Tab. 20; emphasis added.) On the same date Mr. Drucker also conferred with James F. Weiler, the partner in charge of the litigation. Weiler’s Time Card for February 23, 1972 reads: Confer Drucker re bringing suit against Nestle in Houston; drafting Complaint and venue questions; confer Dobie re same. (Fulbright and Jaworski Chargeable Hours Card No. 000161, Tab. 21; emphasis added.) Confronted with these records, Struthers had little choice but to concede that at the time it caused the destruction of the documents it knew or should have known that litigation against Nestle on the patents at issue was a distinct possibility. The Special Master’s report will be modified to include a finding to the effect that Struthers had actual knowledge that such litigation was a distinct possibility at the time of its destruction of documents in and after February, 1972. Further, there will be included a finding that during the course of the present litigation Struthers sought to conceal the fact that it had such knowledge until, during the proceedings before the Special Master, it was confronted with records from its former attorneys’ files — which demonstrated that Struthers’ original contentions in this regard were untrue. C. Relationship of the Documents to the Issues The Special Master did not make findings as to the relationship of the destroyed documents to the issues in the present action, perhaps because it is so obvious that each category of destroyed documents (with the possible exception of the OSW documents) was likely to contain relevant information or material which might lead to relevant information. The General Foods litigation in which the destroyed documents were assembled included a number of separate actions, the claims in which were eventually dealt with in the district court action in Delaware. Struthers filed actions in Texas charging that General Foods was infringing certain of Struthers’ patents. General Foods began a declaratory judgment action with respect to the patents in Delaware and thereafter the Texas actions were transferred there. As additional patents were issued to Struth-ers, additional infringement actions were filed by Struthers in Delaware. Ultimately, six patents (all in suit in the instant action) were in suit in Delaware. In addition, Struthers filed an action in the New York State courts alleging theft of trade secrets by General Foods. General Foods’ amended complaint in Delaware also contained a count alleging unfair competition by reason of Struthers’ wrongful misappropriation of General Foods’ confidential information and Struthers’ use of that information to obtain the Muller ’007 patent (see Part II of this opinion) and the Reimus ’302 dewaxing patent (see Part IY of this opinion). The relationship of the unfair competition and patent claims was discussed in General Foods Corp. v. Struthers Scientific and International Corp., 297 F.Supp. 271 (D.Del.1969). The six patents asserted against General Foods are among the ten patents which are the subject of this suit and of Nestle’s summary judgment motion. They are dealt with in this opinion as follows: Part II — Both patents in this group, viz., Muller 3,404,007 and Muller 3,495,522, were in suit in Delaware. Part III — Ganiaris 3,531,295 and Ganiaris 3,620,034 were not in suit in Delaware. Their disclosure of washing the ice to recover coffee solids is, however, included in the claims of other of the patents which were in suit. Part IY — Reimus 3,381,302, Reimus 3,449,129 and Reimus 3,474,723 were in suit in Delaware. The fourth Reimus patent (3,632,353) purports to derive from the same applications. Part V — Of the two hollow agitator shaft patents, Howell 3,367,126 was in suit in Delaware; Ganiaris 3,636,722 was not. In Documentary Requests Nos. 1-6 in the present action Nestle asked for all documents and other products of discovery in the General Foods-Struthers litigation. Concluding that this was a proper subject of discovery, Judge Lacey, who was then handling this case, entered an order on February 15, 1973 which provided, in part: That Defendant’s [Nestle’s] motion to compel Respondents [all three Struthers companies] to produce for inspection and copying all documents which are the subject of Defendant’s first documentary request (Nos. 1-6) is hereby GRANTED, except insofar as such documents have been produced or marked as Defendant’s Deposition Exhibits in this litigation. Having heard Nestle’s summary judgment motions before addressing the document destruction issues, I am able to evaluate the relationship between the destroyed documents and major issues in the case. There can be no question that Judge Lacey correctly concluded that the documents generated in the earlier litigation are pertinent to the present case. Given the fact that six of the ten patents involved in the present action were the subject of the earlier action, and that the present and former actions involve similar claims and defenses, transcripts of the depositions of General Foods personnel, copies of exhibits marked during those depositions, and copies of documents produced to Struthers by General Foods in the earlier litigation must be highly relevant in the present action. Among other things, they would bear upon the validity of Struthers’ patents under paragraphs (a), (b), (f) and (g) of 35 U.S.C. § 102 and under 35 U.S.C. § 103. There is a dispute between the parties as to the relevance of the OSW documents which involved a development program for freeze desalination of water which Struth-ers had undertaken for the United States government. Nestle contends that freeze concentration and desalination are essentially the same process and therefore Struthers’ work on desalination would bear upon its freeze concentration efforts. Struthers, on the other hand, urges that the processes are essentially different and that the OSW documents produced in the General Foods action related to issues unrelated to patent validity. There is insufficient evidence in the record to make a finding on the relevance of these documents in the present litigation, but, of course, destruction of the documents compounds the difficulty of making such a determination. The Special Master recited Struthers’ rationale for destroying its correspondence and related materials pertaining to customers or potential customers for the period during the mid-1960s: “Struthers made the decision to destroy these documents because of their age and because of the view of Struthers’ counsel, at the time of destruction, that such documents were wholly irrelevant to any litigation with Nestle or any other company.” The conclusion of Struthers’ counsel in this regard (if, indeed, he did so conclude) was unjustified. As the summary judgment motions in this case amply demonstrate, an important basis for attacking the validity of Struthers’ patents is that the subject matter claimed in the patents was offered for sale or sold more than one year prior to the applications therefor, 35 U.S.C. § 102(b). Correspondence with customers during the mid-1960s, a period one year or more prior to the applications for the patents now in litigation, had potential relevance to the on sale defense. It is inconceivable that Struthers’ counsel, an experienced patent attorney who had only recently wrestled with this issue in the General Foods litigation, would not have appreciated the significance of this kind of document. Whether or not the materials in the files of Struthers designated as “privileged” in the General Foods litigation is discoverable in the present action, they are in all likelihood relevant to the issues now before the Court. Given the substantial overlap of the patents involved in the present and former case and the similarity of the patent claims and defenses, much of the “privileged” materials, like the General Foods case deposition transcripts, exhibits and documents, must bear upon the issues in this case. The documents in Struthers’ files relating to the prosecution and file history of some or all of the freeze concentration patents now in suit also had a potential relevance in the present case. It became evident during the review of the papers in support of Nestle’s motions for summary judgment (papers which were not available to the Special Master) that there are major deficiencies and gaps in the Patent Office files of the prosecution of the pertinent patent applications. This will be developed more fully in Parts II through Y of this opinion. Suffice it to say at this point that it is quite likely that Struthers’ files would have filled these gaps and helped explain or amplify questions relating to the prosecution of the patents. Thus, the destroyed files were also potentially relevant to the issues in this ease. Inasmuch as the Special Master made no findings as to the relevance of the destroyed documents to the issues in the present case, his report and recommendation will be modified to include the factual findings contained in this section C. D. Present Availability of the Destroyed Documents The Special Master’s findings with respect to the present availability of the destroyed documents appear at different places in his report and recommendation, quite often in connection with his discussion of other issues. I shall discuss them as they apply to each category of documents destroyed. There is one general observation in the report which is incorrect. At page 11 of the report it is stated: “That deposition [of General Foods’ Delaware counsel] reveals that the Connolly firm has copies of all or virtually all of the materials destroyed by or at the direction of Struthers in 1972.” The following discussion of the present availability of the documents will show that that conclusion is too broad. Turning now to the present availability of the seven categories of documents: The Special Master found (at pp. 8, 9) that “Copies of the transcripts of depositions of General Foods personnel, together with the exhibits thereto, are still in existence and in the possession of Messrs. Connolly, Bove & Lodge of Wilmington, Delaware, attorneys for General Foods. The same law firm also is currently in possession of copies of documents which were produced by General Foods to Struthers in the course of the General Foods litigation.” This finding is amply supported by the deposition testimony of Paul Crawford taken during discovery undertaken in connection with the proceedings before the Special Master. The Special Master also found that “the originals of [the documents which were produced by General Foods to Struthers] appear to be still in the possession of General Foods”. This finding has some support in the record in the form of deposition testimony of Michael J. Quillinan, General Foods’ Manager of Patent Litigation, given in October, 1972. However, according to that testimony, the original documents, contained in five five-drawer filing cabinets, are not assembled in one place. The documents probably had been returned to the places from which they had come. In the words of Mr. Quillinan: “The simplest way would be to simply return to the corporate arms that provided these documents, the various haystacks thereof that existed. And I am not sure that even today [October, 1972] such haystacks exist. They may be in the form of hay. Where and what degree they are stacked, I' really cannot say.” Thus it is highly probable that the original documents were still in the possession of General Foods at the start of the Struthers litigation against Nestle. However, it also appears that they had been scattered throughout General Foods’ corporate departments. It had required strenuous discovery efforts on Struthers’ part to obtain production of those documents in the earlier litigation. That work, in all likelihood, would have had to have been repeated by Nestle if it sought to obtain the documents from General Foods. Its task would have been complicated by the fact that General Foods is not a party to the present litigation. However, it appears, as the Special Master found, that the first three categories of documents are available in that they are in the possession of General Foods’ Delaware counsel and that, at least in October, 1972, General Foods had the original category 3 documents scattered throughout the corporation’s offices. As to the availability of the remaining four categories of documents, the Special Master made the additional finding that the items referred to in categories 4, 5, 6 and 7 above “were in fact received from Struthers by General Foods”. From this it might be inferred that the documents were therefore available in the files of General Foods’ counsel. The finding on which this inference is based is clearly erroneous, at least as to categories 4, 6 and 7. The finding will not be adopted. As to category 4, some of the OSW records were destroyed on January 2, 1972 before General Foods’ inspection, and it is not known whether General Foods made copies of the balance of the OSW records which were inspected by General Foods and which Struthers subsequently destroyed. At page 9 of his report and recommendation the Special Master wrote: “I note that there is some evidence that the originals of the OSW records may still be in the possession of the United States Government.” This observation can only be applicable to OSW documents which were generated by or submitted to the United States government. It cannot be applicable to Struthers’ internal documents relating to the OSW project. Further, according to evidence submitted by Nestle long after the Special Master had filed his report and recommendation, the government’s copies of the OSW documents were disposed of even before Struthers destroyed its copies in 1972. As to category 5, it may well be that General Foods did receive copies of Struth-ers’ customer correspondence, although discovery in connection with the document destruction proceeding raises a question as to whether it received all such documents. It now seems likely that most of the customer records have finally been located through Nestle’s discovery efforts during the proceeding before the Special Master. As to category 6, pursuant to the order of the Delaware district court, General Foods received copies of a portion of the documents as to which Struthers claimed a privilege. It did not receive those which were not ordered to be produced. The Special Master recognized this fact and he may have intended to limit the overly broad language appearing on page 6 of his report by the observation appearing on page 9 to the effect that “[cjopies of some, at least, of the Struthers files designated ‘privileged’ in the litigation with General Foods are currently to be found in the offices of Messrs. Connolly, Bove and Lodge” (emphasis added). As to category 7, General Foods did not receive Mr. Drucker’s prosecution and file history. As found by the Special Master, it did receive very substantial documentation relating to freeze concentration, including laboratory notebooks, data sheets, weekly reports, etc., as listed in the footnote commencing on page 6 of the Special Master’s report. To the extent that General Foods’ counsel did not receive the Struthers’ “privileged” documents (category 6) and the documents in the Struthers prosecution files (category 7) these destroyed documents, were and remain unavailable in the present litigation. Therefore, the Special Master’s findings as to the present availability of copies or originals of the destroyed documents will be adopted, modified and rejected to the extent indicated in this section D. E. Sanctions to be Imposed The Special Master recommended that no sanctions be imposed upon Struthers for the destruction of the documents. His recommendation was based upon his findings concerning the matters discussed in sections A through D above, and it was based upon certain other factual findings. The Special Master found that Struthers’ motives for destroying the documents were proper, namely: 1.“... when the decision was made by Mr. Drucker on behalf of Struthers in February, 1972 to destroy documents, that decision was in large measure motivated by the existence of a protective order entered in the General Foods litigation on or about April 24, 1969 ...” (p. n 2. “Counsel for Struthers knew that originals or copies of some or all of the documents were in the possession or control of General Foods; they also believed that it would be impossible to reach an agreement with General Foods regarding the disposition of all these documents.” (p. 8). 3. “The proof indicates that Struthers and its counsel were motivated to destroy some of the OSW records because they perceived no need to continue storage, particularly since, in their view, copies or originals of all these documents were on file with the United States government.” (p. 8). 4. “As to the files of correspondence and related materials pertaining to Struthers’ potential customers in the mid-1960’s, Struthers made the decision to destroy these documents because of their age and because of the view of Struthers’ counsel, at the time of the destruction, that such documents were wholly irrelevant to any litigation or any other company.” Nestle urges rather substantial reasons to reject these findings. As to the finding that the destruction of the documents was occasioned by the existence of the protective order, Nestle notes: (i) Struthers’ action constituted a violation of that order, which required that upon termination of the litigation the documents subject thereto be kept “in a secure place”, (ii) Struthers’ destruction of its own documents could not possibly have been occasioned by the existence of the protective order which was designed to protect General Foods’ documents, and (iii) even as to the depositions of General Foods’ personnel and even as to the General Foods’ documents, only a portion were subject to the protective order. As to the finding that counsel for Struth-ers knew that some or all oí the documents were in the possession or control of General Foods, Nestle notes: (i) clearly not a11 the documents were in the possession or control of General Foods or its counsel (and I have so found in an earlier section of this opinion), and (ii) since Struthers had no discussions with General Foods concerning preservation of documents, Struthers had no basis for relying on General Foods to preserve indefinitely documents which might be relevant in a new litigation to which it was not a party. As to the finding that Struthers destroyed the OSW documents to avoid the burdens of storage and because copies or originals were on file with the government, Nestle notes: (i) the so-called “burden” of storing the OSW documents was a $7.50 per month storage bill of Westheimer Transfer & Storage Co., Inc. and (ii) internal Struth-ers OSW documents would not have been on file with the government (and I have so found in an earlier section of this opinion). As to the finding that Struthers destroyed its customer records because of their age and lack of relevance, Nestle notes the high degree of relevance of such documents in connection with the on-sale defense. (I have found, in Section C, that it is inconceivable that Struthers’ counsel would not have appreciated the significance of this kind of document.) Were I to make a finding on the evidence which was before the Special Master as to Struthers’ motives in destroying the documents, my finding would differ from his. The reasons Struthers advances smack to me of after-the-fact rationalizations. I note the significance of Struthers’ vigorous denials, early in this litigation, that suit against Nestle was contemplated when the documents were destroyed, and the reversal of this position only when confronted in the document destruction proceeding with records which demonstrated conclusively that Struthers and its attorneys were discussing document destruction and suit against Nestle at the very same time. This indicates to me that Struthers knew perfectly well that it should not have destroyed the documents when suit against Nestle was contemplated. Nevertheless, in some measure this finding rests upon credibility evaluations, and the Special Master heard certain pertinent testimony on this issue. I conclude, therefore, that the finding as to Struthers’ motivation is not clearly erroneous. Another finding on which the Special Master based his recommendation was that “the instant motion was filed in December 1975 but not brought on by Nestle for argument and decision by this Court until 1980”. This statement is clearly erroneous, but for understandable reasons. The Special Master could not be expected to have a familiarity with the involved procedural history of this case. Nestle brought on the sanctions motion in December, 1975, as the Special Master observed. It was heard and argued before Judge Meanor, who wrote an opinion disposing of that and other motions. He concluded that he could not decide the sanctions motion without an evidential hearing. Thereafter, the case was assigned to different judges and the delay in scheduling the evidential hearing and resolving the motion was attributable to the inability of the Court to reach the matter, not Nestle’s dilatoriness. The Special Master further found that “not until the spring of 1981 did counsel for Nestle make any effort to obtain existing copies of the documents in question from General Foods or its attorneys”. In October, 1972, Nestle took the deposition of General Foods’ Manager of Patent Litigation, Mr. Quillinan, and sought to ascertain the whereabouts of General Foods’ copies of all the documentation generated in its case against Struthers. At that time Mr. Quillinan testified, as noted above, that the haystacks of documents had been redistributed throughout the corporations and “may be in the form of hay”. Nestle’s attorney then asked if General Foods’ counsel had possession of the documents General Foods produced to Struthers. Mr. Quillinan said, “I really don’t know.” General Foods’ patent counsel, who were present, did not disclose that they had in their possession a complete set of such documents. Nestle did not learn of this fact until such counsel were deposed in connection with the proceeding before the Special Master. Again, I might have reached a different conclusion, but the Special Master’s finding that if Nestle really wanted the documents it would have gone after General Foods and its counsel more aggressively, is not clearly erroneous and will be adopted. The Special Master found that “the belated motion for sanctions was finally pressed in 1980 more to obtain some tactical advantage over Struthers than to achieve true discovery”. I have noted above that the motion was pressed in .1975 and that the five-year delay is attributable to problems which confronted the Court and not to Nestle’s inaction. It may well be that Nestle has been primarily interested in the tactical advantages which it could derive from the document destruction caper rather than in the wish to obtain additional discovery, and the Special Master’s finding in this regard will be adopted. On the basis of the findings of the Special Master as adopted, modified and rejected by me, I will adopt his sanctions recommendation, although for somewhat different reasons from those set forth in his report and recommendation. I do not think there is any basis for imposing sanctions for violating Judge Lacey’s order to produce. Long before he had entered that order Struthers had destroyed the documents. It was unable to comply and, therefore, cannot be held to have willfully violated the order. The issue is whether Struthers should be penalized for destroying the documents in 1972 under the circumstances of this case. I conclude that the destruction of the documents was clearly improper. It is immaterial, in arriving at this conclusion, that Struthers thought that the destruction was a convenient way to handle the Delaware district court’s protective order or that it sought relief from the burden of storing the documents or that it thought other parties or counsel or the government would have originals or copies of the documents. Similarly, it is immaterial, in arriving at this conclusion, that Nestle, once having learned of the event, exploited it to the full as a matter of litigation tactics, perhaps thereby seeking to divert the Court from the substantive issues in the case. All that may affect the ultimate relief to be accorded. It does not in any way cure the essential wrongness of what Struthers did. Struthers had in its possession a vast collection of documents which had been gathered through great effort in an earlier litigation. It was contemplating new litigation involving substantially the same subject matter and issues as were involved in the litigation in which the documents had been assembled. It knew that a substantial portion of the documents would be relevant in the litigation about to be instituted. Yet it nevertheless destroyed those documents. As a result, some became forever unavailable; many would have to be acquired once again through the long and difficult process of discovery, imposing on the Court and litigants unnecessary, heavy burdens, of which these sanction proceedings are