Full opinion text
OWENS, Chief Judge: On June 1, 1984, Philip Morris, Inc. and the BOC Group, Inc. brought suit in this court against Brown and Williamson Tobacco Corporation alleging infringement of United States Patent Re. 32,013 entitled “Expanding Tobacco” and United States Patent 32,014 entitled “Process for Expanding Tobacco.” Plaintiffs also assert additional causes of action against defendant for breach of contract, unjust enrichment, and misappropriation of trade secrets. In answering plaintiffs’ complaint, Brown & Williamson denied infringement and raised the following affirmative defenses: invalidity under 35 U.S.C. §§ 102, 103, and 112; unenforceability due to inequitable conduct before the Patent and Trademark Office in procuring the patents; and numerous equitable defenses including laches, estoppel and unclean hands with respect to counts II, III and IV — the contract claims. In addition, Brown & Williamson has counterclaimed for antitrust violations specifically alleging violations of sections 1, 2 and 4 of the Sherman Act, 15 U.S.C. §§ 1, 2 and 4, and sections 3, 4 and 16 of the Clayton Act, 15 U.S.C. §§ 14, 15 and 26. An injunction, accounting, treble damages, costs and attorney fees are sought by plaintiffs. Defendant in turn seeks a declaratory judgment that the patents in suit are invalid, unenforceable, and not infringed, an injunction, treble damages under 15 U.S.C. § 15, costs and attorney fees. The case was tried before the court sitting without a jury on October 28 through November 8, 1985. This constitutes the court’s findings of fact and conclusions of law in accordance with Rule 52(a) of the Federal Rules of Civil Procedure. Findings of Fact The Parties 1. Plaintiff Philip Morris Incorporated (“Philip Morris”) is a Virginia corporation which is engaged in the business of processing, manufacturing and selling tobacco and tobacco products. Trial Vol. I at 74-75. In 1985, Philip Morris was the largest tobacco company in the United States. Trial Vol. II at 120. 2. Plaintiff the BOC Group, Inc. (“BOC”) is a Delaware Corporation which is engaged in the business of producing and selling industrial gases. BOC was formerly known as Aireo, Inc. and will be referred to herein by its present name unless the context or direct quotation dictates otherwise. 3. Defendant Brown & Williamson Tobacco Corporation (“B & W”) is a Delaware corporation which has a place of business in Macon, Georgia. B & W is engaged in the business of processing, manufacturing and selling tobacco and tobacco products. Trial Vol. VII at 622-24. B & W is presently a wholly owned subsidiary of B.A.T. Industries PLC (“Industries”), a British corporation. Defendant’s Exhibit 340C at 6; Trial Vol. VII at 664-65. Prior to June of 1979, B & W was a subsidiary of British-American Tobacco Company, Ltd. (“BAT-CO”) which is the world’s largest tobacco company. Defendant’s exhibit 340C at 1-3; Trial Vol. I at 4; Vol. VII at 689. Industries is the parent corporation of B & W and BATCO and has been so at all times relevant to this action. Trial Vol. VIII at 751-53; Defendant’s exhibit 340C. The Patents in Suit 4. United States Patent Re. 32,013 (hereinafter the “’013 patent”) entitled “Expanding Tobacco” was reissued by the United States Patent and Trademark Office (“PTO”) on October 29,1985, upon an application filed June 28, 1984. Plaintiffs’ exhibit 1. The ’013 patent is the invention of Roger Z. de la Burde and Patrick Aument and is assigned to Philip Morris, Inc. Id. The ’013 patent is a reissue of United States Patent No. 4,340,073 (the “ ’073 patent”) which issued on July 20, 1982, upon an application filed February 12, 1974. Plaintiffs’ exhibit 38. 5. United States Patent Re. 32,014 (hereinafter the “ ’014 patent”) entitled “Process for Expanding Tobacco” was reissued by the PTO on October 29,1985, upon an application filed June 28, 1984. Plaintiffs’ exhibit 1A. The ’014 patent is the invention of Larry M. Sykes, Ray G. Snow, Roger Z. de la Burde, and Patrick E. Aument and is assigned to Philip Morris, Inc. Id. The ’014 patent is a reissue of United States Patent No. 4,336,814 (the “ ’814 patent”) which issued on June 29, 1982, on an application filed September 5, 1979. Plaintiffs’ exhibit 39. The ’014 patent is an improvement patent related to the original ’073 patent and its reissued counterpart, the ’013 patent. Plaintiffs’ exhibit 1A, col. 3, lines 33-52. 6. When green tobacco is cured it necessarily loses some of its original moisture content resulting in a collapse of the leaf’s cell structures and a corresponding decrease in volume compared to the volume of the same batch of tobacco in its green state. Trial Vol. IV at 292-93; defendant’s exhibit 349 at 1. The purpose of the inventions embodied in the patents in suit is to treat tobacco so as to expand its volume and make up for weight lost in the curing process, i.e., “return the leaf back to much of the physical science it was in in the green state.” Trial Vol. Ill at 265; Vol. IV at 292-93; defendant’s exhibit 349 at 1-2; defendant’s exhibit 350 at 2, 118. Expanding the volume of tobacco is advantageous because it increases the filling power of tobacco enabling more cigarettes to be manufactured per pound of tobacco while achieving lower tar and nicotine levels than smoking product made of non-expanded tobacco. Trial Vol. IV at 293-94; plaintiffs’ exhibit 1, col. 1, lines 18-25; defendant’s exhibit 350 at 2, 118. 7. The invention of the ’013 patent is a process for expanding tobacco utilizing liquid carbon dioxide (CO2) as the expansion agent. Plaintiffs’ exhibit 1, col. 3, lines 57-58. The claims are directed toward a process, methods and apparatus for expanding tobacco using liquid carbon dioxide as the expansion agent. Id. at col. 12, line 48 — col. 16. Carbon dioxide is a heavy colorless gas that does not exist as a liquid at ambient or atmospheric pressure. Trial Vol. I at 83-85; Vol. II at 161-64; Vol. IV at 285; Vol. XI at 1126. Carbon dioxide is a natural constituent of tobacco. Trial Vol. I at 91. 8. Claim 1, the broadest process claim of the ’013 patent allegedly infringed, is representative and reads as follows: 1. A process for expanding tobacco comprising the steps of (1) contacting tobacco with liquid carbon dioxide under conditions such that the temperature of the tobacco is maintained at a level no lower than about —2° C. and such that substantially all of the liquid carbon dioxide is maintained in liquid form to impregnate the tobacco with the liquid carbon dioxide, (2) subjecting the liquid carbon dioxide-impregnated tobacco to conditions such that the liquid carbon dioxide is converted to solid carbon dioxide and (3) thereafter subjecting the solid carbon dioxide-containing tobacco to conditions whereby the solid carbon dioxide is vaporized to cause expansion of the tobacco. Plaintiffs’ exhibit 1, col. 12, lines 49-61. 9. Claims 1, 5, 16 and 17 of the ’013 reissue patent are identical to their corresponding claims in the ’073 patent. Compare plaintiffs’ exhibit 1, col. 12-14 with plaintiffs’ exhibit 38, col. 12-14. Claims 5 and 17 are directed toward apparatus for expanding tobacco, and claim 16 is directed toward a method of expanding tobacco. Plaintiffs’ exhibit 1, col. 12-14. 10. The ’014 reissue patent discloses and claims an improvement to the basic process of the ’013 patent. Plaintiffs’ exhibit 1A, col. 3, lines 33-52. One improvement consists of controlling the input moisture of the tobacco in the first step thereby enabling the process to operate at lower pressures than were originally considered optimal. Id. at col. 4, lines 44-68. An additional improvement consists of controlling the output moisture of the product recovered from the heating step so that the output moisture is preferably no higher than approximately 6%. Id. at col. 8, lines 59-68. 11. Claims 1 and 2 of the ’014 patent are allegedly infringed and read as follows: 1. In the method of expanding tobacco which comprises the steps of (1) impregnating the tobacco with liquid carbon dioxide under conditions such that substantially all of the liquid carbon dioxide is maintained in liquid form so [sic] impregnate the tobacco with the liquid carbon dioxide, (2) subjecting the liquid carbon dioxide-impregnated tobacco to conditions such that the liquid carbon dioxide is converted to solid carbon dioxide and (3) thereafter subjecting the solid carbon dioxide-containing tobacco to conditions whereby the solid carbon dioxide is vaporized to cause expansion of the tobacco, the improvement which comprises: (i) utilizing as the tobacco which is employed in step (1) a tobacco which has an OV content of from about 17 to about 30%, (ii), conducting the impregnation step under pressure in the range of from about 250 psia to about 450 psia, and (iii) conducting the third step in such a manner that the moisture content of the expanded tobacco obtained from the third step is no higher than about 6%. 2. The method of expanding tobacco of claim 1, wherein the impregnation step is conducted at a pressure of from about 350 psia to about 450 psia and the tobacco which is employed in step (1) has an initial OV content of from about 17 to about 25%. Id. at col. 12, lines 65-68 — col. 13, lines 1-20. Claims 1 and 2 of the ’014 reissue patent are identical to their corresponding claims in the original ’814 patent. Compare plaintiffs’ exhibit 1A, col. 12-13 with plaintiffs’ exhibit 39, col. 12-14. Claim 1 of the ’014 patent is essentially identical to claim 16 of the '013 patent until the language “the improvement which comprises ...” Compare plaintiffs’ exhibit 1A, col. 12, lines 65-68 — col. 13, line 8 with plaintiffs’ exhibit 1, col. 14, lines 31-41. 12. Mr. Sykes, one of the inventors of the ’014 patent, testified that the major advantages of the improved process were safety and economy. Trial Vol. Ill at 216. By combining higher input moisture levels for the tobacco with relatively lower output moisture levels, good expansion was achieved at significantly lower pressures— about 400 p.s.i.g. — which in turn enabled a simpler design with safer operating levels and less thermal stress on the apparatus. Trial Vol. Ill at 214-216; see also plaintiffs’ exhibit 1A, col. 4, lines 44-68 — col. 5, lines 1-31. 13. The ’013 and '014 patents-in-suit teach processes for expanding tobacco lamina or leaf as well as stems and reconstituted tobacco. Plaintiffs’ exhibit 1, col. 4, lines 40-44. Tobacco leaf is the most expensive component of a cigarette. Trial Vol. I at 80. Tobacco leaf and tobacco stems have different cell structures; therefore, expansion of tobacco leaf or lamina involves different technology than expansion of tobacco stems. Trial Vol. II at 143; Vol. Ill at 264-265; cf Sanford deposition at 654. 14. Tobacco men measure the moisture content of tobacco in terms of “O.V.” an abbreviation of “oven volatiles” which is expressed as “X % O.V.” Trial Vol. Ill at 220-26, Vol. IV at 325-26. The '014 patent discloses Philip Morris’ method of calculating O.V. as follows: “The sample of tobacco filler is weighed before and after exposure for 3 hours in a circulating air oven at 100° C. The weight loss as percentage of initial weight is oven-violatiles content.” Plaintiffs’ exhibit 1A, col. 5, lines 60-63. 15. B «fe W has its own, slightly different method of measuring moisture. Trial Vol. Ill at 247; Vol. VIII at 840. B & W’s method measures weight loss of a sample of tobacco before and after being placed in a forced air oven at 110° C. for three hours and fifteen minutes. Trial Vol. VIII at 839-40, Vol. X at 942-43. B «fe W’s method of measuring O.V. or tobacco’s moisture content gives a higher percentage reading than the Philip Morris method. Trial Vol. IV at 325, Vol. VII at 616; Vol. VIII at 840; Vol. X at 943. 16. Dr. Burde, a Philip Morris research scientist, began working with carbon dioxide to expand tobacco in late 1971. Trial Vol. II at 144. His initial work was with CO2 gas and equipment used in the cereal industry, puffing guns. Id. at 145. The gas work was disappointing from a commercial standpoint due to non-uniform expansion results; consequently in March, 1972, Dr. Burde conceived the idea of using “liquid C02 to increase penetration into tobacco.” Plaintiffs’ exhibit 598 at 2; trial Vol. II at 145-48. By March — April of 1972, Dr. Burde had visualized and described impregnating tobacco with liquid carbon dioxide or nitrogen, converting the liquid C02 to a solid, and feeding the “tobacco with dry ice in it ... into a tower to seek suitable expansion.” Plaintiffs’ exhibit 665 at 60-61, 63; trial Vol. II at 150. Dr. Burde contacted BOC and a few other companies in March, 1972, to discuss availability of equipment and facilities for conducting experiments exposing leafy materials to C02. Trial Vol. II at 148-50. Dr. Burde contacted outside companies because Philip Morris’ research labs did not have the high pressure equipment required to liquify C02. Trial Vol. I at 85-86; Vol. II at 148. Dr. Burde spoke to and met with Mr. Chester Michals at BOC regarding his need to experiment with high pressure equipment; however, they disagree as to who was the first to advise whom of the necessity of employing higher pressures. Trial Vol. II at 151-52, 156-57; cf. Michals deposition at 36-37, 50-52, 59. 17. On February 4, 1975, the PTO declared an interference between claims 16 and 17 of the Burde and Aument patent application (predecessor of the ’013 patent in suit), serial number 441,767, and claims 18 and 19 of Chester Michals’ patent application, serial number 439,804. Defendant’s exhibit 330 at 3002; see also defendant’s exhibit 54 at 42; defendant’s exhibit 333 at 41-43. Examiner Melvin Rein was the initial examiner of both applications; Vincent Millin later became the primary examiner for both applications and ultimately the ’013 and '014 patents in suit. Cf. defendant’s exhibit 54 at 1-2 and defendant’s exhibit 333 at 1; compare plaintiffs’ exhibits 1 and 1A with plaintiffs’ exhibits 38 and 39. 18. The Michals patent application, assigned to Aireo, Inc. (now The BOC Group), like the patents in suit discloses a method and apparatus for expanding tobacco using liquid carbon dioxide as the expansion agent. Defendant’s exhibit 54 at 2-3, 27. Mr. Michals’ interest in expanding tobacco with carbon dioxide began when he was contacted by Dr. Burde of Philip Morris; Mr. Michals had no prior experience or knowledge of using carbon dioxide in connection with tobacco. Michals deposition at 37. 19. In March, 1973, a series of tests were conducted at BOC in the presence of Mr. Aument, Dr. Burde (present at some of the tests) of Philip Morris and Mr. Victor Pietrucha of BOC. Trial Vol. II at 184-90; defendant’s exhibit 349 at 5,11. Nine tests were run of which only three were arguably successful. Defendant’s exhibit 349 at 10-12. Both BOC and Philip Morris filed patent applications in February, 1974, claiming the subject matter of these tests — a process for expanding tobacco with liquid carbon dioxide — and the PTO declared an interference. E.g., defendant’s exhibit 54; defendant’s exhibit 333; defendant’s exhibit 349; fact finding 15, supra. 20. The Board of Patent Interferences awarded priority of invention to Chester Michals of BOC based on its determination that Michals was first to conceive and reduce the invention to practice. Defendant’s exhibit 349 at 15. The Board also found that application of positive heat was not necessary to expand tobacco. Id. at 5-6, 14-15. However, the Board explicitly noted that Mr. Michals conceded his conception of the invention did not include the application of positive heat and stated, “If we were to require such an application of heat, we would find that Burde, et al., were the first to conceive and reduce the invention to practice.” Id. at 6. 21. Philip Morris appealed the decision of the Board of Patent Interferences to the United States District Court for the District of New Jersey, Judge Lacey presiding. Defendant’s exhibit 350. Judge Lacey reversed the Board and awarded priority of invention to Philip Morris, assignee of the Burde application, based on two series of inter partes tests that demonstrated the following: 50. The Richmond tests, which Aireo concedes were correct (Steinberg Tr. 255), establish as a matter of scientific fact that tobacco impregnated with solid carbon dioxide and allowed to degas at ambient temperature without the application of positive heat does not expand. Indeed, the Richmond tests establish that tobacco so treated experiences a measurable reduction in filling capacity, (citation to record omitted). 51. The Richmond tests also establish as a matter of scientific fact that tobacco impregnated with solid carbon dioxide and subsequently exposed to temperatures in excess of ambient temperature expands substantially, on the order of 100% or more, (citation to record omitted). Id. at 14, fact findings 50 and 51. 22. Judge Lacey concluded that the Board of Patent Interferences made a clear mistake in awarding priority to Michals because without the application of positive heat as the last step, there was no complete conception of the invention and no successful reduction to practice. Id. at 18, 22, 24-25. Judge Lacey characterized Michals’ conception of the invention as incomplete and a failure because it failed to produce expanded tobacco. Id. at 26, 28. There is no evidence of record in the present case indicating that the New Jersey District Court was in error. 23. While the interference proceedings and appeal to the New Jersey District Court were pending, BOC and Philip Morris entered into two license agreements with respect to the interference proceedings. Defendant’s exhibits 158 and 159. The first license agreement, dated December 1, 1975 (defendant’s exhibit 158) was superseded and replaced by a second agreement dated November 1,1977 (defendant’s exhibit 159). Among other things, this cross license agreement provided that no matter which party ultimately prevailed in the interference action, the company determined to own the patent rights at issue would have the right to set royalty rates for licensing the invention. Defendant’s exhibit 159 at 16, ¶ 6(d)(e) and 18,117(b). Additionally, each party agreed to grant the other a nonexclusive, irrevocable, royalty free license under its patent rights (in the event a patent issued) with Philip Morris also granting BOC the right to grant licenses to third parties under Philip Morris’ patent rights. Id. at 12-14; see also defendant’s exhibit 350 at 7, H 23. 24. Philip Morris’ attorney notified the PTO of the decision of the New Jersey District Court in the interference action and filed a copy of the judgment with the PTO. Defendant’s exhibit 333 at 61. Claims 1-17 of the Burde patent application were subsequently allowed by Examiner Millin and issued as United States Patent Number 4,340,073 (predecessor of the ’013 patent in suit) on July 20, 1982. Defendant’s exhibit 333 at 1, 65; plaintiff’s exhibit 38. 25. BOC withdrew the Michals patent application, serial number 439,804 from issue due to the decision of the New Jersey District Court awarding priority to Burde. Defendant’s exhibit 54 at 109-10. BOC attached a copy of Judge Lacey’s opinion to its petition for withdrawal. Id. at 122-49. Examiner Millin rejected BOC’s remaining active claims on April 22, 1982, as unpatentable over the issues in the interference in which BOC was the losing party. Id. at 155-57. Finally, Examiner Millin declared the Michals application abandoned on January 4, 1983. Id. at 165. Thus, the PTO was informed by the applicants of the facts of Philip Morris’ and BOC’s liquid CO2 tobacco expansion work in 1972 and 1973, the outcome of the interference proceeding, and the judgment and opinion of the United States District Court for the District of New Jersey awarding priority of invention to Philip Morris. See generally defendant’s exhibits 333 and 54; fact finding 24, supra. 26. Michals’ work, with the addition of a positive heat step, is the subject of BOC patents in some nine foreign countries. Plaintiffs’ exhibit 486 at 2; defendant’s exhibit 54 at 97-98; see also fact finding 52, infra. 27. Philip Morris has obtained patents based on Dr. Burde’s work in at least fifteen foreign countries. Plaintiffs’ exhibit 486 at 1. 28. The commercial embodiment of the inventions of the ’013 and ’014 patents in suit is known in the tobacco industry as the “DIET” process, an acronym for Dry Ice Expanded Tobacco. Trial Vol. I at 83; Vol. II at 114-115; Vol. Ill at 215. The DIET process was the first commercial high order expansion process to leave no discernible trace of its expansion agent, CO2, in the tobacco. Trial Vol. I at 91; Vol. II at 114-15. 29. High order tobacco expansion process refers to processes that achieve a significant increase in tobacco’s filling capacity as opposed to low order processes which obtain a relatively lower increase in filling capacity. Jewell deposition at 33-35; Willis deposition at 120-21. Filling power or filling capacity refers to the ability of tobacco to fill a cigarette tube. Jewell deposition at 17. 30. Philip Morris and BOC have developed and assembled a body of technical knowledge relating to the commercial practice of the DIET technology and process known as the DIET know-how or know-how. Trial Vol. V at 388-89; defendant’s exhibit 159 at 19-27. BOC offers a know-how license and a patent license package which includes the know-how to potential licensees interested in practicing the DIET process pursuant to its cross license agreement with Philip Morris. Trial Vol. V at 383, 388; defendant’s exhibit 159 at 24. The Graham Findings 31. The tobacco industry’s first commercial high order tobacco expansion process was developed by the R.J. Reynolds Tobacco Company and made public in 1969. Trial Vol. I at 80. The process is known as G-13 and uses trichloromonofluoromethane, a synthetic chemical marketed under the trademark freon, as the expansion agent. Trial Vol. I at 80, Vol. II at 112. Reynolds claims that the G-13 expansion process can double the volume of cured tobacco lamina thereby saving one percent of tobacco for each percentage of expanded tobacco used. Trial Vol. I at 80, Vol. II at 126. Tobacco expanded by the G-13 process has a detectable residue of freon left in it after treatment. Trial Vol. I at 82, Vol. II at 112, Vol. Ill at 273-74. 32. R.J. Reynolds’ G-13 process was made available to the tobacco industry for license; however, Philip Morris, after investigation of the process, decided not to take a G-13 license. Trial Vol. I at 112. Mr. Goldsmith, then Chief Executive Officer of Philip Morris, Inc., personally decided against the G-13 process because of the freon residue left in the tobacco and the potential negative public relations effects of freon usage. Id. at 112, 118. Instead Philip Morris set out to develop its own expansion process, and Joe Lloyd was appointed project leader of the development program. Trial Vol. I at 82, Vol. II at 113, Vol. Ill at 274-76. Philip Morris’ efforts resulted in development of two commercial processes: ammonium carbonate and the liquid CO2 DIET process. Trial Vol. I at 82-83, Vol. II at 113-114, Vol. Ill at 274-78. 33. Brown and Williamson took a license from Reynolds for a small scale G-13 expansion process known as G-13C that was capable of about 400 pounds per hour production. Trial Vol. VII at 659, 690. 34. B & W and its parent corporation, BATCO, were concerned about the negative public relations and environmental impact of freon-expanded tobacco. Willis deposition at 39-42, 75; Sanford deposition at 256-58; Gordon deposition at 30-31. B & W’s president, Dr. I.W. Hughes, told Mr. Goldsmith at Philip Morris “that he felt it was unconscionable for Reynolds to use freon in the expansion of tobacco.” Trial Vol. II at 116. BATCO’s Board of Directors recommended that its associate companies make no further investments in G-13 plants because of the environmental controversy over freon’s effect on the ozone layer and the residual freon left in the tobacco. Trial Vol. VIII at 721-22, 769. B & W has abandoned use of its G-13C facilities since the Macon expanded tobacco plant became operational. Trial Vol. VII at 690-91. In effect, B & W and BATCO compared the DIET process with the G-13 process and ultimately chose to use DIET. Trial Vol. VII at 691-93, Vol. VIII at 722-23, 735-38. 35. B & W identifies two South African patents assigned to R.J. Reynolds, Numbers 70/8291 and 70/8292, as the most pertinent prior art references. Trial Vol. IX at 931; defendant’s pre-trial proposed fact finding 120. 36. South African patent 70/8292 (Frederickson) published August 25, 1971, and assigned to R.J. Reynolds, is entitled “Process for Expanding Tobacco.” Defendant’s exhibit 254. It discloses impregnating tobacco “with carbonated water and thereafter rapidly heating or reducing the ambient pressure to release carbon dioxide within the impregnated tobacco and to expel by vaporization at least a portion of the water from the tobacco.” Id. at 1A, lines 3-6. Other gas-liquid solutions may be used. Id. at 1A, line 7; 5, 7-8. This patent was disclosed to the PTO during the prosecution of the applications of the patents in suit. Plaintiffs’ exhibit 1, col. 1, lines 39-45; col. 2, lines 57-62; plaintiff’s exhibit 1A, col. 1, lines 26-33; col. 2, lines 44-49; plaintiffs’ exhibits 38 and 39. 37. South African patent 70/8291 (Frederickson) published August 25, 1971, and assigned to R.J. Reynolds is entitled “Tobacco Expansion Process.” Defendant’s exhibit 253. It discloses (1) impregnating tobacco with a non-gaseous chemical compound that is heated to decompose the compound and form a gas that expands the tobacco or (2) contacting the compound impregnated tobacco with an extraneous gas releasing agent to liberate the gas causing expansion. Id. at 1A, 3-6, 11-12. The preferred compounds include the organic and inorganic carbonates, carbamates, peroxides, salts, and some acids. Id. at 5-6. This patent was disclosed to the PTO during prosecution of the applications for the patents in suit. Plaintiffs’ exhibit 1, col. 2, lines 57-62; plaintiffs’ exhibit 1A, col. 2, lines 44-49; plaintiffs’ exhibits 38 and 39. 38. Neither one of the South African patents teaches use of liquid carbon dioxide as the expansion agent, nor use of pressures sufficient to maintain CO2 as a liquid, nor reducing pressure to convert the liquid into a solid impregnant, nor heating tobacco impregnated with a solid impregnant. Trial Vol. IX at 929-31. Neither do these patents speak to formation of a hydrate inside the tobacco. Id. at 930. 39. United States Patent Number 1,789,435 (Hawkins) issued January 20, 1931, relates to expanding tobacco by subjecting or contacting cured tobacco with a suitable gas such as air, carbon dioxide or steam, under low pressure of about 20 pounds for some 45 minutes. Plaintiffs’ exhibit 299. It also teaches heating the gas to facilitate the process. Id. at col. 3, lines 40-44. The Hawkins patent was disclosed to the PTO during prosecution of the applications for the patents in suit. Plaintiffs’ exhibit 1, col. 1, lines 52-62; plaintiffs’ exhibit 1A, col. 1, lines 39-49; plaintiffs’ exhibits 38 and 39. The Hawkins patent does not teach the use of liquid carbon dioxide as an impregnant or the use of pressures sufficient to maintain CO2 in liquid form. Plaintiffs’ exhibit 299. 40. United States Patent Number 4,153,063, issued May 8,1979, is the American counterpart to German patent 2,142,-205. Defendant's exhibit 327. It teaches the use of liquid carbon dioxide as a solvent to extract nicotine from tobacco. Id. It also teaches the use of alternative solvents as extraction agents. Id. The German counterpart of this patent was disclosed to the PTO during prosecution of the applications for the patents in suit. Plaintiffs’ exhibit 1, col. 3, lines 48-54; plaintiffs’ exhibit 1A, col. 3, lines 26-32; plaintiffs’ exhibits 38 and 39. Examiner Millin, who examined the applications for the patents in suit, was the assistant examiner of United States patent 4,153,063. Defendant’s exhibit 327. This patent does not teach use of liquid CO2 to expand tobacco. Id. 41. United States Patent Number 3,771,533 (Armstrong), issued November 13, 1973, and is assigned to Philip Morris. Defendant’s exhibit 316. It discloses a tobacco expansion process that utilizes a combination of ammonia and carbon dioxide gases as in situ impregnants and thereafter heating to between 250° and 700° F to puff the impregnated tobacco. Id. Liquid ammonia, ammonium hydroxide, and ammonium carbonate or bicarbonate can also be utilized. Id. This patent was disclosed to the PTO during prosecution of the applications for the patents in suit. Plaintiffs’ exhibit 1, col. 2, lines 63-68; col. 3, lines 1-3; plaintiffs’ exhibit 1A, col. 2, lines BOSS; plaintiffs’ exhibits 38 and 39. 42. United States Patent Numbers 3,524,451 (Frederickson) and 3,524,452 (Moser), both issued August 18, 1970, and assigned to R.J. Reynolds Tobacco Company, relate to Reynolds’ G-13 process. Defendant’s exhibits 306 and 307. They teach impregnating tobacco with a volatile organic liquid such as freon or other halogen substituted hydrocarbons for a period of time and then heating with a stream of hot gas to volatize the liquid causing expansion. Id. Both of these patents were disclosed to the PTO during prosecution of the applications for the patents in suit. Plaintiffs’ exhibit 1, col. 2, lines 44-48; plaintiffs’ exhibit 1A, col. 2, lines 31-35; plaintiffs’ exhibits 38 and 39. 43. Canadian patent 971,067 (Madures), issued July 15, 1975, and is assigned to Philip Morris. Defendant’s exhibit 59. It teaches an expansion process that utilizes nitrous oxide or sulfur dioxide in either liquid or gaseous form as the impregnating agent and then subjecting the impregnated tobacco to heat or to microwave or radiant energy. Id. This patent was not only disclosed but a copy of it was given to the PTO during the prosecution of the reissue patents in suit. Plaintiffs’ exhibit 697 at 53, 56, 61-70; plaintiffs’ exhibit 698 at 50, 52, 58-67; plaintiffs’ exhibits 1 and 1A. The Madures patent does not teach the use of liquid carbon dioxide to expand tobacco. Defendant’s exhibit 59. 44. The prior art includes a number of patents that relate to expansion of tobacco stems. E.g., United States Patent 3,409,-022, invented by Dr. Burde and assigned to Philip Morris (defendant’s exhibit 303); United States Patent 3,409,023, invented by Dr. Burde and assigned to Philip Morris (defendant’s exhibit 304); United States Patent 3,409,027, invented by Dr. Burde and assigned to Philip Morris (defendant’s exhibit 305); United States Patent 3,734,-104, invented by William Buchanan, et al., and assigned to Philip Morris (defendant’s exhibit 314); and United States Patent 3,425,425, invented by John Hind and assigned to Philip Morris (defendant’s exhibit 326). These patents disclose various methods of treating stems such as treating with a solution containing a water soluble carbohydrate (defendant’s exhibit 326), moisturizing cut stems (defendant’s exhibits 314, 305, 304, 303) and then subjecting the stems to various energy sources including: microwave energy (defendant’s exhibit 304), radiant energy (defendant’s exhibit 303), heated spreading means utilizing opposing mechanical forces (defendant’s exhibit 305), hot gas (defendant’s exhibit 314), and hot air current (defendant’s exhibit 326). All of these patents relate to expansion of tobacco stems which have a different cellular structure than tobacco lamina or leaf. See fact finding 13, supra. All of these patents were disclosed to the PTO during prosecution of the applications for the patents in suit. Plaintiffs’ exhibit 1, col. 2, lines 8-24; col. 2, lines 49-52; plaintiffs’ exhibit 1A, col. 1, line 64 — col. 2, lines 1-12; col. 2, lines 36-39. 45. United States Patent 2,656,841 (Gurley), issued October 27, 1953, discloses a process for expanding reconstituted tobacco. Defendant’s exhibit 299. It teaches a method for forming a sheet or web from stems, tobacco scrap and dust prior to placing the sheet material on a flame resistant traveling support that is passed through or exposed to a source of intense heat. Id. It does not teach the use of liquid carbon dioxide to expand tobacco lamina. Id. 46. United States Patent 3,357,436 (Wright), issued December 12, 1967, and assigned to B & W, relates to apparatus for drying tobacco using a closed air drying system containing a high proportion of moisture or water vapor. Defendant’s exhibit 302. It does not disclose expansion of tobacco leaf using carbon dioxide. Id. Although the Wright patent was not specifically disclosed to the PTO during prosecution of the applications for the patents in suit, similar types of dryers were disclosed to the PTO as one means for accomplishing the expansion step of the patented process. Plaintiffs’ exhibit 1, col. 6, lines 11-23, 51-54; plaintiffs’ exhibit 1A, col. 8, lines 39-43; plaintiffs’ exhibits 38 and 39. 47. United States Patent 3,223,090 (Strubel), issued December 14, 1965, and assigned to B & W, relates to methods of making reconstituted tobacco products using freeze dry procedures. Defendant’s exhibit 325. Freeze drying does not involve use of liquid carbon dioxide. Id. See also Trial Vol. Ill at 270-71. This patent does not teach using heat to expand frozen tobacco. Id. Although this particular patent was not disclosed to the PTO, prior art relating to freeze drying tobacco was disclosed to the PTO during prosecution of the applications for the patents in suit. Plaintiffs’ exhibit 1, col. 2, lines 53-56; plaintiffs' exhibit 1A, col. 2, lines 40-43; plaintiffs’ exhibits 38 and 39. 48. United States Patent 2,759,858 (Baer), issued September 9, 1953, relates to expanding tobacco by means of steam heat in a pressure chamber at a pressure not greater than atmospheric. Defendant’s exhibit 329. This patent does not teach use of liquid carbon dioxide and pressures sufficient to maintain CO2 in its liquid form to expand tobacco. Id. 49. United States Patent 3,612,066 (Jones, et al.), issued October 12, 1971, and assigned to R.J. Reynolds, is a variation on the theme of the G-13 process that involves denicotinizing tobacco by use of an organic liquid solvent and then contacting with hot gas to cause expansion. Defendant’s exhibit 310. It does not each use of liquid CO2 to expand tobacco. Id. This particular patent was not disclosed to the PTO during prosecution of the patents in suit, although the basic G-13 patents were disclosed to the PTO. See fact finding 42, supra. 50. United States Patent 3,693,631 (Moore, et al.), issued April 28, 1971, and assigned to Reynolds Leasing Corporation, is another variation on the theme of the G-13 process. Defendant’s exhibit 313. This patent is an improvement of United States Patent 3,524,452 (defendant's exhibit 307) and teaches a process in which the organic impregnating fluid is applied to the tobacco in vapor state. Id. It teaches the use of nonoxygenated compounds, preferably hydrocarbons and halogenated hydrocarbons, as impregnants. Id., col. 3, lines 35-68. It does not teach the use of liquid carbon dioxide to expand tobacco. Id. While this particular patent was not disclosed to the PTO during prosecution of the applications for the patents in suit, the basic G-13 patents were disclosed to the PTO. See fact finding 42, supra. 51. United States Patent 3,529,606, invented by Dr. Burde and assigned to Philip Morris, issued on September 22, 1970. Defendant's exhibit 308. This patent discloses another process for expanding tobacco stems by exposing them to a current of hot air. Id. See also defendant’s exhibits 303, 304, 305, 314, and 326. It does not teach expansion of tobacco leaf with liquid carbon dioxide. Defendant’s exhibit 308. This particular patent was not disclosed to the PTO during prosecution of the applications for the patents in suit; however, several other patents relating to stem expansion were disclosed to the PTO. See fact finding 44, supra. 52. United Kingdom Patent 1,484,536 (Michals), issued January 29, 1975, and assigned to Aireo, is entitled “Method for Expanding Organic Substances.” Defendant’s exhibit 324. It is the United Kingdom counterpart to Michals’ American patent application that was abandoned after Philip Morris, was awarded priority of invention. See fact findings 16-25, supra. This patent does include a step calling for the application of positive heat. Defendant’s exhibit 324, claim 1, lines 99-101; claim 11. However, this patent is not prior art to the ’013 patent in suit. See fact findings 20-22, supra. This patent is prior art to the ’014 patent in suit, and it was considered and cited as a reference by the PTO during prosecution of the application for the ’014 patent and its predecessor. Plaintiffs’ exhibit 1A and 39. The PTO determined that the ’014 patent was patentable over this United Kingdom ’536 patent. Id. 53. Michals work is not prior art to the ’013 patent because it failed to expand tobacco and accordingly was not a successful conception and reduction to practice. E.g., defendant’s exhibit 350 at 14, 21-22, 24-28; fact findings 16-26, supra. The PTO had the information relating to Michals and Burde’s work before it when it allowed the claims of the original ’073 patent and its reissue, the ’013 patent, to issue. Cf. defendant’s exhibit 54 and defendant’s exhibit 333. There is simply no evidence of record suggesting that Examiner Millin, who handled both the Burde and Michals patent applications, was unaware of their competition for priority of invention and its ultimate resolution. 54. The ’013 patent is the most relevant prior art to the ’014 improvement patent. Plaintiffs’ exhibits 1, 1A, 38, 39. The Belgian counterpart to the ’013 patent and United Kingdom patent 1,484,536 (defendant’s exhibit 324, fact finding 52, supra), and BOC’s Belgian patent 825,133 were disclosed to the PTO during prosecution of the application for the ’014 improvement patent and its predecessor. Plaintiffs’ exhibit 1A, col. 3, lines 33-50; plaintiffs’ exhibit 39, col. 3, lines 27-46. 55. Defendant presented no evidence at trial regarding the scope and content of the prior art references discussed at fact findings 35-52, supra. Dr. Jewell testified on direct examination that he had read the Reynolds South African patents, but his thoughts on these patents were brought out on cross-examination. Compare Trial Vol. VIII at 836 with Vol. IX at 929-31. 56. The only prior art references developed into commercial processes for license in the marketplace are the Reynolds patents (defendant’s exhibits 306, 307, 310, 313) and their corresponding G-13 and G-13C processes. Trial vol. II at 123; see fact findings 31-33, supra. The Armstrong patent (defendant’s exhibit 316) was developed into a commercial process by Philip Morris and is still in use, but there is no evidence that this ammonium carbonate process is available for commercial license like DIET is. Trial. Vol. I at 82-83, 90; Vol. II at 113-14, 143-44; Vol. Ill at 261-62, 275-79. 57. None of the prior art references teach or suggest the use of liquid carbon dioxide in a tobacco expansion process other than United Kingdom patent 1,484,536 (which is not prior art to the ’013 patent). Fact findings 35-52, supra. 58. None of the prior art references teach or suggest the use of pressures sufficient to maintain carbon dioxide in its liquid form, i.e., pressures from about 230 to 915 p.s.i.g. Fact findings 35-51, supra. The Madures patent teaches the expansion of tobacco with nitrous oxide or sulfur dioxide in gaseous or liquid form, but high pressures are not emphasized, and this reference does not teach using liquid CO2 as an expansion agent. Defendant’s exhibit 59, fact finding 43, supra. 59. None of the prior art references teach or suggest reduction of pressure to convert the liquid CO2 impregnant into a solid CO2 impregnant. Fact findings 35-51, supra; cf. findings 52-53, supra. 60. None of the prior art references teach or suggest the formation of dry ice or solid CO2 in and on the tobacco as a step in an expansion process. Fact findings 35-51, supra; cf. findings 52-53, supra. 61. None of the prior art references teach or suggest the step of applying positive heat to frozen tobacco to achieve expansion. Fact findings 35-51, supra; cf. findings 52-53, supra. 62. None of the prior art references teach or suggest the process steps of the ’014 patent in suit, i.e., raising input moisture levels while reducing pressure levels to achieve good expansion results. Fact findings 9-12, 35-51, supra; cf. findings 52-53, supra. 63. Reynolds Leasing Corporation, a corporate affiliate of R.J. Reynolds Tobacco Company, filed suit (Civil Action No. C-81-1111R, E.D.Va.) (the “Reynolds litigation”) against Philip Morris and Aireo in 1981 alleging that the DIET process infringed their G-13 patents: United States patent 3,524,452 (defendant’s exhibit 307) and United States patent Re. 30,693, a reissue of United States Patent 3,524,451 (defendant’s exhibit 306). Plaintiffs’ exhibit 697 at 54 n. 2; plaintiffs’ exhibit 698 at 51 n: 2. This action ultimately settled with Reynolds conceding that the DIET process or any other process employing carbon dioxide as an impregnant did not infringe the G-13 patents in suit. Plaintiffs’ exhibit 30; trial Vol. II at 118-120. 64. During the course of discovery in the Reynolds action, plaintiffs learned that Reynolds scientists had done some in-house, experimental work with liquid carbon dioxide in 1971-72. E.g., plaintiffs’ exhibits 701-705, 707-711; plaintiffs’ exhibit 698 at 55; plaintiffs’ exhibit 697 at 59. 65. Philip Morris disclosed the fact of the Reynolds litigation and its settlement to the PTO in the prosecution of the applications for the reissue patents in suit. Plaintiffs’ exhibit 697 at 54 n. 2; plaintiffs’ exhibit 698 at 51 n. 2. Philip Morris also disclosed the fact that Reynolds had done some work with liquid CO2 stating that the work was not prior art because it had been abandoned, supressed and concealed. Plaintiffs’ exhibit 697 at 59; plaintiffs’ exhibit 698 at 55-56. 66. An examination of plaintiffs’ exhibits 701-705, 707-711 discloses that Mr. Rice, a Reynolds scientist, expanded tobacco using liquid carbon dioxide and high pressures in 1971-72. However, Reynolds’ internal feasibility studies concluded that using CO2 as an expansion agent was not commercially feasible when compared to the G-13 process because of the high pressures involved and substantial research and development work necessary to develop a working system. E.g., plaintiffs' exhibit 702 at 55; plaintiffs’ exhibit 703 at 109, 187-88; plaintiffs’ exhibit 704 at 43; plaintiffs’ exhibits 707, 710, 711. 67. The Reynolds work was abandoned, suppressed, and concealed since it was never commercialized, never publicized outside the company, and no patent applications were ever filed claiming this work as an invention. Plaintiffs’ exhibit 702 at 55, 57; plaintiffs’ exhibit 703 at 107; plaintiffs’ exhibit 704 at 47; plaintiffs’ exhibit 711. Therefore, this work is not prior art. Nor does this experimental, in-house liquid CO2 work bear any relationship to the Reynolds South African patents, since those patents were filed on December 8, 1970, before Mr. Rice began his experiments in early 1971. Compare plaintiffs’ exhibits 703, 705, 709 at RA03139, 710 with defendant’s exhibits 253 and 254. Mr. Frederickson, one of the inventors on the South African patents, stated on deposition in the Reynolds litigation that he did not work on Mr. Rice’s liquid CO2 project and knew nothing about Rice’s work until it was completed. Plaintiffs’ exhibit 701 at 1159-60. 68. The Reynolds work — using liquid carbon dioxide at high pressures to expand tobacco — would be material to a reasonable examiner. However, Philip Morris told the PTO during the reissue proceedings that the relevant Reynolds reports were not being submitted because they were still subject to a protective order and offered to seek to remove them from the protective order should the Examiner wish to see them. Plaintiffs’ exhibit 697 at 59; plaintiffs’ exhibit 698 at 56. This offer to procure the Reynolds reports should the Examiner wish to see them negates any finding of deceptive intent or intent to mislead the PTO with respect to Reynolds abandoned liquid CO2 work. 69. The person of ordinary skill in the art would be one skilled in the science of tobacco technology, having knowledge of and experience with the chemical and physical properties of tobacco. The person should have at least a bachelor’s degree in science and/or engineering, specifically chemistry, physics, and chemical engineering, as well as several years of practical experience. However, such person can acquire the necessary skills by means of actual, hands-on experience as Mr. Lloyd and Mr. Aument demonstrate. See, e.g., Trial Vol. I at 78; Vol. II at 139-40; Vol. Ill at 207, 252; Vol. IV at 301; Vol. VII at 620; Vol. VIII at 794; Vol. X at 935; Vol. XII at 1301-02; Korte deposition at 4; Aument deposition at 3; Strubel deposition at 12-13. 70. BOC has licensed the inventions of the patents in suit to BATCO, American Brands and Rothmans International in exchange for royalties. Trial Vol. I at 90; Vol. V at 442; plaintiffs’ exhibits 14, 652, 653. Philip Morris has DIET plants in the United States, Canada, Germany, Switzerland, and Holland. Trial Vol. I at 89. The BAT family of companies has DIET facilities in the United Kingdom, Germany, Malaysia, and the United States, and intends to have an operational plant in Brazil in 1987. Trial Vol. VIII at 780; Willis deposition at 192-93. 71. Philip Morris has received approximately $3 million dollars in patent royalties and another $1.5 million in know-how fees from licensing the DIET technology to other companies. Trial Vol. I at 90. 72. Philip Morris spent approximately $16 million dollars on research and development of the DIET technology and approximately $26 million dollars on its first commercial DIET plant in Richmond, Virginia. Trial Vol. I at 88. Philip Morris’ total expenditure on research and development including construction of its first DIET plant was approximately $42 million dollars. Id. 73. Philip Morris’ Richmond DIET plant has expanded roughly 200 million pounds of tobacco from 1979 to date of trial (November, 1985) at a cost savings of approximately $300 million dollars. Trial Vol. I at 91-92. 74. B & W first learned of the DIET expansion process when it was publicized in industry trade publications in October, 1976. Trial Vol. VII at 623; plaintiffs’ exhibit 47; Strubel deposition at 46. BAT-CO first became interested in the DIET process in 1976 as a result of BOC personnel contacting Dr. Greene, the Research Director at BATCO. Trial Vol. VIII at 721. 75. B & W was interested in expanding tobacco. Trial Vol. VII at 624. 76. B & W had done no work with liquid carbon dioxide tobacco expansion before learning of the DIET process from BOC. Trial Vol. Ill at 233-34, 245. B & W began some work using liquid CO2 as an extraction agent in November-December, 1976. Plaintiffs’ exhibit 46; Strubel deposition at 82-83. This liquid CO2 extraction work was never commercialized. Stubel deposition at 84. Dr. Jewell testified on deposition that he recalled no CO2 extraction or expansion work at B & W before B & W learned of the DIET process from BOC. Jewell deposition at 327-32. 77. B & W obtained copies of the British and German counterparts to Philip Morris’ and BOC’s United States patent applications by January, 1977. Plaintiffs’ exhibits 43, 44, 45; Strubel deposition at 56-57. Mr. Steiner of B & W was able to expand tobacco using liquid CO2 in early 1978 based on B & W’s knowledge at that time which included the foreign patents. Trial Vol. VIII at 812; Strubel deposition at 209-10. B & W was able to practice the invention of the patents in suit. Id. 78. B & W had a fairly good idea of what BOC and Philip Morris had filed in the United States Patent and Trademark Office. Strubel deposition at 56-57; fact finding 77, supra. 79. Dr. Jewell, B & W’s designated corporate representative, testified at trial that he did not think frozen tobacco could be expanded before learning of the DIET process. Trial Vol. Ill at 230-31. Other B & W workers shared Dr. Jewell’s belief. Korte deposition at 39. Dr. Jewell further testified that he had not thought of expanding tobacco with liquid CO2 before learning of DIET. Trial Vol. Ill at 233. 80. Normal pressures employed in the tobacco processing industry were about 25 to 30 p.s.i.g. before the DIET process. Trial Vol. Ill at 231; Jewell deposition at 731-32. 81. B & W had no in-house, high order expansion process of its own before learning of DIET. Trial Vol. Ill at 234, Vol. VII at 693. B & W looked at G-13, freeze drying, liquid nitrogen, and carbonated water expansion techniques and ultimately rejected them in favor of DIET. Trial Vol. VII at 691-93; Strubel deposition at 82-84. 82. B & W’s workers had knowledge of the elements of the DIET process such as use of pressure vessels, hot air ovens, and liquid CO2 but did not put these elements together to expand tobacco before learning of the DIET process from BOC. Jewell deposition at 334-36; Strubel deposition at 250; Korte deposition at 137. 83. Both B & W’s and Philip Morris’ witnesses testified that one of ordinary skill in the art reading the '013 patent in suit and following its steps would get expanded tobacco. Compare Trial Vol. IV at 310-11 with Korte deposition at 299. Likewise, one following the steps of the know-how package would get expanded tobacco. Korte deposition at 355. 84. Before learning of the improved process of the ’014 patent in suit, B & W’s workers thought that using low temperatures (liquid CO2 at 400 p.s.i.g. is below 32° F, the freezing point of water) would not result in good impregnation and was contra-indicated. Plaintiffs’ exhibit 535; Korte deposition at 156-61. 85. Before learning of the improved process of the ’014 patent in suit, B & W’s workers thought that raising tobacco’s input moisture would correspondingly diminish its ability to absorb liquid CO2 thereby decreasing expansion. Trial Vol. VIII at 835, Vol. IX at 848; plaintiffs’ exhibit 535; Korte deposition at 161. 86. The ’014 improvement process teaches raising input moisture levels of tobacco as well as using liquid CO2 at a temperature below 32° F to achieve good expansion. Plaintiffs’ exhibit 1A; fact finding 12, supra. 87. B & W saves approximately $18 million dollars a year through its use of a liquid carbon dioxide tobacco expansion process in its Macon, Georgia facility. Trial Vol. VII at 696; plaintiffs’ exhibit 688. 88. B & W had expanded approximately 26 million pounds of tobacco in its Macon, Georgia facility through July, 1985. Trial Vol. V at 483; plaintiffs’ exhibit 688. 89. B & W’s Macon liquid CO2 expanded tobacco process is a commercial success. Trial Vol. VII at 700. 90. Philip Morris’ liquid C02 tobacco expansion process is a commercial success. Fact findings 70-73, supra. 91. The DIET process satisfied a perceived need in the tobacco industry for a process that would expand tobacco lamina without leaving any discernible foreign residue in it. Fact findings 31-34, supra. Infringement 92. B & W’s liquid C02 tobacco expansion process was called DIET until Dr. Hughes, then B & W’s president, ordered the name changed in early 1984 to MET, an acronym for Macon Expanded Tobacco. Trial Vol. VII at 671-72. The notebooks in B & W’s control room are still marked DIET, but MET labels have been placed over the DIET labels. Trial Vol. IV at 308; Vol. VII at 617. 93. B & W’s MET process operates in the following manner: (a) cut tobacco is moisturized up to about 25% water and loaded into a wire basket in 400-450 pound batches; (b) the basket is placed on a trolley handling system which takes it into the impregnation area where a computerized turntable directs the basket to the proper impregnator or pressure vessel; (c) the basket is placed in the impregnator which is closed, locked, and sealed off from atmosphere; (d) all the air is purged out of the impregnator and replaced with CO2 gas; (e) the impregnator is pressurized with gaseous C02 to approximately 400 p.s.i.g. and holds for approximately 73 seconds; (f) liquid CO2 is then introduced until it covers or submerges the tobacco which takes approximately 83 seconds; (g) then, all the liquid C02 that is not somehow retained by the tobacco is pumped out of the impregnator (about 104 seconds) while the pressure remains at 400 p.s.i.g. and a 3 minute draining period is observed; (h) next, the pressure in the impregnator is reduced to atmosphere during which time the remaining liquid CO2 retained by the tobacco flashes off and is converted to dry ice; (i) the impregnator is then unlocked, and the basket with its mass of frozen tobacco is removed and the mass dumped into a device called a clumpbreaker which breaks it down into smaller lumps; (j) the smaller lumps of tobacco are fed across conveyors into the expander, a high velocity stream of hot gas, where the tobacco is expanded in approximately .05 seconds; (k) the tobacco is discharged from the expander through a separator at a moisture content of 9-10% and taken by convey- or to reordering where additional moisture is added as needed; (l) finally, the tobacco is placed in product storage coffers, and is available for manufacture. Trial Vol. IV at 322-23; Vol. VII at 562-81, 596-97; Vol. VIII at 802-05. 94. B & W’s apparatus for accomplishing the MET process consists of the following: (a) pressure vessels that serve as impregnators where tobacco is contacted with liquid and gaseous CO2 under pressure; (b) a trolley system and basket handling system that convey wire baskets loaded with tobacco through the process steps including introducing and withdrawing the baskets from the impregnators; (c) a CO2 handling system consisting of pipes, duct work, and valves that pump in liquid CO2 from large, outside holding tanks into a receiver vessel in the impregnation area; (d) additional pipes, valves, and duct work which introduce gaseous CO2 into the impregnator and pressurize it and thereafter introduce liquid CO2 at predetermined temperatures and pressures into the impregnator and later withdraw any excess liquid after the impregnation step; (e) a gas recovery system consisting of two compressors that recover CO2 gas after the impregnation cycle; (f) a device called a clump breaker that breaks the mass of frozen tobacco down into smaller lumps; (g) a device called an expander consisting of an enclosed, high velocity stream of hot gas (about 650° F) that expands the tobacco; (h) a reordering cylinder where additional moisture is added as a last step before storage. Trial Vol. IV at 313-14; Vol. VII at 562-81; Vol. VIII at 814, 816-17. 95. Plaintiffs’ expert in tobacco technology, Mr. W.G. Lloyd (Joe), testified that it was his opinion that B & W infringes claims 1, 16, 5, 17, 18, 20, 27, 30, 22, 23, 24 and 26 of the ’073 patent and '013 reissue patent in suit. Trial Vol. IV at 305-22. 96. Mr. Lloyd further testified that in his opinion B & W infringes claims 1, 2, 7 and 9 of the ’814 patent and the ’014 reissue patent in suit. Trial Vol. IV at 323-34. 97. Claim 1, the broad process claim of the ’013 patent is reproduced at fact finding 8, supra. Claim 5 is an apparatus claim and reads as follows: 5. Apparatus for expanding tobacco which comprises a pressure vessel, means for introducing and withdrawing tobacco from said pressure vessel, means for introducing liquid carbon dioxide into said pressure vessel to impregnate said tobacco therewith, means for withdrawing said liquid carbon dioxide from said pressure vessel, following impregnating of said tobacco, means for maintaining said carbon dioxide at predetermined temperature and pressure in said pressure vessel whereby it remains in liquid state, means for converting the liquid carbon dioxide impregnating said tobacco to solid carbon dioxide, and means for vaporizing the solid carbon dioxide impregnating said tobacco to effect expansion of said tobacco. Plaintiffs’ exhibit 1, col. 13, lines 32-51. 98. Claim 16 of the ’013 patent is a method claim and reads as follows: 16. The method of expanding tobacco which comprises the steps of (1) impregnating the tobacco with liquid carbon dioxide under conditions such that substantially all of the liquid carbon dioxide is maintained in liquid form to impregnate the tobacco with the liquid carbon dioxide, (2) subjecting the liquid carbon dioxide-impregnated tobacco to conditions such that the liquid carbon dioxide is converted to solid carbon dioxide and (3) thereafter subjecting the solid carbon dioxide-containing tobacco to conditions whereby the solid carbon dioxide is vaporized to cause expansion of the tobacco. Plaintiffs’ exhibit 1, col. 14, lines 31-41. 99. Claim 17 of the ’013 patent is an apparatus claim which specifies operational pressures and reads as follows: 17. Apparatus for expanding tobacco which comprises a pressure vessel, means for introducing and withdrawing tobacco- from said pressure vessel; means for introducing liquid carbon dioxide into said pressure vessel to impregnate said tobacco therewith, means for withdrawing said liquid carbon dioxide from said pressure vessel, following impregnating of said tobacco, means for maintaining said carbon dioxide at predetermined temperature and at a pressure approximately between 230 and 915 p.s.i.a. in said pressure vessel whereby it remains in liquid state; means for converting the liquid carbon dioxide impregnating said tobacco to solid carbon dioxide, and means for vaporizing the solid carbon dioxide impregnating said tobacco to effect expansion of said tobacco. Plaintiffs’ exhibit 1, col. 14, lines 42-61. 100. Claims 1 and 2 of the ’014 patent disclose an improved process and are reproduced at fact finding 11, supra. 101. Defendant’s expert, Dr. Dean Harper, has a Ph.D. in chemical engineering but no tobacco experience. Trial Vol. X at 935, 939. Dr. Harper testified that in his opinion the MET process does not infringe claims 16, 17, and 18 of the ’013 patent because the patent speaks in terms of liquid CO2 impregnation and conversion to solid C02, and it is his opinion that gaseous impregnation takes place in the MET process, not liquid. Id. at 995-1001. Dr. Harper also stated his opinion that claim 17 is not infringed because expansion in the MET process does not take place in the pressure vessel but rather in a separate piece of equipment. Id. at 998. 102. Dr. Harper further testified that in his opinion claim 1 of the ’014 patent is not practiced by B & W because no liquid CO2 impregnation and conversion to solid CO2 occurs, and MET tobacco has an exit moisture content level of 9-10% instead of the 6% specified by the claim. Trial Vol. X at 1001-02. 103. On January 22, 1985, Dr. John Jewell testified on deposition that B & W practices all three steps specified in claim 16 of the '013’s predecessor patent in its Macon expanded tobacco process. Jewell deposition at 221-22. 104. Dr. Jewell further testified that B & W’s Macon plant contained all the apparatus and means for expanding tobacco specified in claim 17 of the ’013’s predecessor patent. Id. at 222-23. 105. The next day Dr. Jewell testified that his understanding of the claimed language had changed since he gave his previous answers and essentially recanted his prior testimony. Id. at 392-98. Dr. Jewell admitted he had talked to his lawyers about his testimony in the interim. Id. at 393. 106. Dr. Jewell testified on deposition that he saw th