Full opinion text
MEMORANDUM OPINION DAVIDSON, District Judge. The three corporate plaintiffs in this action invoke the court’s jurisdiction pursuant to 28 U.S.C. § 1338 and 28 U.S.C. §§ 2201 and 2202, and bring this action relating to a certain design patent issued by the United States Patent and Trademark Office. The plaintiffs challenge the validity of the subject patent and seek to have it declared invalid. The defendant has countersued, claiming patent infringement by the three plaintiffs. Following entry of a pretrial order, this action was tried before the undersigned United States District Judge, sitting without a jury, in Oxford, Mississippi. Having considered the oral and documentary proof submitted at trial, the parties’ pretrial memoranda, proposed findings of fact and conclusions of law, and supplementations thereto, the court now sets forth its findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a). FINDINGS OF FACT I. BACKGROUND A. The Parties Plaintiff Benchcraft, Inc. (“Benchcraft”) is a Delaware corporation having its principal place of business at Blue Mountain, Mississippi. Benchcraft’s business involves the manufacture of upholstered furniture, including a suite or piece designated as style 4560. Plaintiff Riverside Furniture Corp. (“Riverside”) is an Arkansas corporation, having a place of business at Fort Smith, Arkansas. Riverside also manufactures upholstered furniture, including a suite or piece designated as style 9553. Plaintiff Hickory Hill Furniture Company, a/k/a Crestline Furniture Company (“Crestline”), is a North Carolina corporation, having a place of business at Fulton, Mississippi. Crestline manufactures upholstered furniture, including a suite or piece designated as style 54737 and one designated as style 1201. Benchcraft, Riverside and Crestline have continuously, since July 3, 1984, manufactured and sold the above-referenced styles of furniture. The three plaintiffs are each named as counter-defendants in the defendant’s counterclaim. Defendant/counterplaintiff Broyhill Furniture Industries, Inc. (“Broyhill”), is a North Carolina corporation, having its principal place of business at Lenoir, North Carolina. Broyhill is the owner of the patent in suit, United States Patent Des. No. 274,485. Broyhill manufactures both upholstered furniture and occasional furniture or “case goods” (end tables, coffee tables, bookcases), including a suite or piece designated as style 7663. B. The Patent in Suit This action relates to the validity of United States Patent No. Des. 274,485 (the ’485 patent or the “patent in suit”). The application for the patent in suit was filed on May 19, 1983 and subsequently issued on July 3,1984. Gary A. Huffstetler (“Huffs-tetler”), an employee of Broyhill, is the named inventor of the patent in suit (Plaintiff’s Trial Exhibit 1 or “PTX-1”). Huffs-tetler assigned his rights in the patent to the defendant Broyhill. The patent in suit discloses an ornamental design for a suite of upholstered furniture which is depicted in Figures 1 and 2 of the patent in the form of a sofa and loveseat. PTX-1. The claim of the patent is: “The ornamental design for a seat, as shown and described.” PTX-1. C. Origin of the Patent in Suit This lawsuit and the patent had their genesis in certain acts which occurred in mid-1982. In May 1982, two corporate officials of Broyhill, namely its president Mr. Carl E. Gunter (“Gunter”) and vice-president Mr. Ken Kepley (“Kepley”), made a trip to London, England to attend the Earls Court Furniture Show. At this show, Gunter and Kepley observed a Victorian style furniture suite manufactured in Italy by a Mr. Zampa Bruno (“Zampa”). The suite, referred to as a “Venezia suite”, was purchased by Mr. Joseph Alfred Spicer (“Spicer”) of Ideal Furniture Co., Ltd., sometime in late 1980. Spicer testified by deposition that he displayed the piece at the Earls Court Show in 1982. Zampa testified by deposition that he had circulated photographs of the Vene-zia suite to prospective customers probably as early as 1977 or 1978, although he could not recall the exact date. Mr. Gunter testified that when he first saw the Venezia suite he realized that it was not appropriate for the United States market. He was interested, however, in certain aspects of the Venezia piece, including the height of its back, the general shape of the back of the piece, and the “aesthetic flow” of the back, which “triggered an interest” on Gunter’s part. Accordingly, Gunter photographed the Vene-zia suite with a Minox brand miniature camera which he often carried along with him to furniture shows. In London, Gunter also instructed an employee of Broyhill, U.K., a marketing entity of Broyhill in England, to acquire a piece of the Venezia suite for shipment to Broyhill’s United States plant. Gunter testified that he believed that certain features of the Venezia suite might be translated into a new upholstered furniture design that could be successfully marketed in the United States. Immediately upon their return to Broy-hill’s plant in North Carolina, Gunter and Kepley met with Mr. Gary Huffstetler and Mr. Eric Stuenkel, both of whom were furniture designers employed in Broyhill’s design department, to describe what they had seen at the Earls Court Show. Gunter testified that he informed Huffstetler that Gunter and Kepley had seen a product at the Earls Court Show which would be a desirable and probably successful product for Broyhill to begin manufacturing. Gun-ter and Kepley described the Venezia suite to Huffstetler and Stuenkel in general terms, relating to the shape and height of the Venezia sofa. They also meticulously pointed out such features as the outline of exposed wood on the back, the “T-eush-ions” on the seat, and used such phrases as “barrel back,” “pub back”, and “hand-tufted back” to recreate in words the back treatment on the Venezia sofa. After he and Kepley had described the Venezia sofa from memory, Gunter testified that he then suggested with some urgency that Huffs-tetler apply himself toward developing a design incorporating the features which had been described to him. Huffstetler testified at trial that he had no idea in 1982 what was meant by the term “barrel back”, but that he clearly understood that he was to produce a “version” of the sofa which had been described to him and Stuenkel by Gunter and Kepley. Huffstetler commenced immediately to create a design as requested and, as was his usual practice, made sketches of different parts of an upholstered sofa as he visualized how that part would appear in the finished design. Huffstetler and Stuenkel showed their preliminary sketches to both Gunter and Kepley, who critiqued their efforts and suggested changes. These unsatisfactory early sketches were later discarded by Huffstetler and Stuenkel. Huffstetler and Stuenkel continued their design efforts while the Gunter photographs were away in New York for developing. Both Gunter and Huffstetler teti-fied that Huffstetler’s design was essentially complete before the Gunter photographs were returned from New York and seen for the first time by Huffstetler. However, before he saw the photographs, Huffstetler had not been able to complete a sketch which Gunter or Kepley found totally satisfactory. Rather, Huffstetler testified that he used the Gunter photographs to verify or clarify his earlier rough sketches, especially some problems with the wings on his piece “drooping” and not being as “crisp” as Kepley desired them to be. Huffstetler testified that he added from the photographs a nail trim around the exposed wood stub panels on the arms of his sofa and two rows of thirteen buttons, identical in number to those seen on the Venezia sofa. PTX-5. Huffstetler showed his completed sketch, PTX-4, to Kepley, who indicated that Huffstetler had finally captured the essence of the piece desired by Gunter and had in fact “hit it on the nose.” Huffstet-ler’s completed design sketch was next rendered by Stuenkel into a full-sized engineering frame drawing which was sent to Broyhill’s sample shop for the construction of a sample. Huffstetler’s original design, designated by Broyhill as Model No. H-40, was a somewhat formal piece of furniture having tufts in the kidney roll and a plain or straight skirt with box pleats. The piece also had a dark wood trim and was covered in a heavy jacquard fabric. When the sample was delivered from Broyhill’s sample shop on July 30, 1982, the Model H-40 sofa piece was assigned Style No. 7503 (“the 7503”) by Broyhill. The 7503 was first offered for sale in the fall of 1982 in the traditional category. Mr. Larry Waggoner, a regional sales manager for Broyhill in 1982, testified at trial that he and other sales personnel were dissatisfied with the look of the 7503 sofa. Waggoner was of the opinion that the piece was too formal and the jacquard fabric application raised the price beyond Broy-hill’s usual price range. Thus, Waggoner, Kepley and Gunter suggested that a “country” version of the 7503 be developed, since the country look was at that time and presently continues to be a very popular style in the furniture industry. Huffstetler worked up some sketches giving what he considered to be a “country” look to the 7503 and necessary changes were then directed to be incorporated into a second sample. This country version of the 7503 was designated as Model No. H-40A and assigned Style No. 7663 (“the 7663”). As distinguished from the 7503, the 7663 sofa was covered in a “ditsy” country print fabric (PTX-78); the exposed wood was changed from gum to light oak with a lighter finish; a gathered or shirred skirt and kidney roll effect treatment replaced the more traditional box pleat skirt; and ruffled bolster pillows were added. While Huffstetler and/or Stuenkel drafted the design of the 7663, PTX-44 and PTX-45, neither had any part in the selection of the wood species or the type of fabric used to cover the 7663. The Broyhill 7663 sofa and its accompanying loveseat and chair (Style Nos. 7661 and 7660) were introduced to the pre-mar-ket in August 1982 and were met with almost immediate acceptance by Broyhill’s customers. As Mr. Gunter testified, when sales of the 7663 sofa “took off”, Broyhill officials then considered the possibility of obtaining a patent on the design because of its popularity and the fact that it apparently had “caught everyone’s eye.” In contrast, the sales of the 7503 were unremarkable and this style was eventually dropped by Broyhill. A catalog sheet having a photograph depicting the 7660 group (the sofa and loveseat) was sent to Mr. Donald J. Fitzpatrick (“Fitzpatrick”), the in-house patent and trademark attorney for Broyhill’s parent corporation, Interco. PTX-46 and PTX-48. These photographs were provided to a patent draftsman who substantially reproduced the design depicted in the catalog sheet as Figures 1 and 2 in the patent application. PTX-2. II. PROSECUTION OF THE PATENT A. Actions of the Patent Attorney Mr. Fitzpatrick testified at trial that he is responsible for all patent and trademark work for Interco and all its subsidiaries and has been since approximately 1980. He maintains a liaison person with each subsidiary of Interco, including Broyhill, from whom patent questions or problems are referred to Fitzpatrick. The liaison for Broyhill is Mr. E.D. Beach, vice-president of finance for Broyhill. Mr. Beach testified by deposition that he was the first Broyhill official to contact Fitzpatrick regarding a patent on the 7663 design and that the first contact made with Fitzpatrick was sometime in the fall of 1982. Fitzpatrick testified that in 1982 he had developed no formalized procedure for becoming aware of an inventor’s knowledge of the prior art relevant 'to his invention. In practice, Fitzpatrick would merely communicate with his liaison person or the actual inventor to collect the pertinent disclosure documentation necessary for preparation of the patent application. Since 1982, Fitzpatrick has developed a procedure for collection of such information, including a detailed disclosure form for prior art. Fitzpatrick testified that his experience with trademark and patent law began almost immediately upon his graduation from law school in 1967, when he was employed with Bethlehem Steel Corporation as a patent trainee. In 1970 he went to work for Aireo, Inc. as a patent attorney, where he remained employed until June of 1974. From June 1974 until 1979 or 1980, Fitzpatrick was employed as a patent and trademark attorney with Monsanto Company. In February 1980, Fitzpatrick became employed as a trademark and patent attorney with Interco. During his 15 years of patent experience prior to 1982, Fitzpatrick testified that he had never prepared a design patent application. When Fitzpatrick received certain disclosure information relative to the desired 7663 design patent in late 1982, he forwarded same to Ms. Edna Bloch to obtain patent drawings. PTX-54. These drawings were provided to Fitzpatrick in February or March of 1983. Once he obtained the patent sketches, Fitzpatrick sent the prepared patent application to Beach at Broyhill, requesting that Beach have the inventor, Huffstetler, read and sign the application. Fitzpatrick testified that he did nothing to ascertain whether either Beach or Huffs-tetler knew the meaning of the various oaths contained in the patent application or whether they understood the legal effect of the matters contained in the application. In point of fact, Fitzpatrick did not meet directly with or otherwise consult with the inventor, Huffstetler, about the application or the declarations contained therein at any time prior to the filing of the application except for one telephone conversation. Huffstetler testified that the patent in suit was his first experience with a patent application. He also testified that he had no prior knowledge of patent procedures and that, although he signed the oaths in the patent application, he did not fully understand either their meaning or their legal significance. Fitzpatrick testified that when Interco acquired Broyhill in approximately 1981 he did visit Broyhill’s previous patent attorney, a Mr. Rhodes, in Greensboro, North Carolina, where Fitzpatrick reviewed some 40 files of issued design patents and pending patents for case goods. Based on his review of this outside counsel’s files, Fitzpatrick made the assumption that Broyhill personnel were experienced in design patent matters and that it was unnecessary for him to inquire of Huffstetler whether he understood the patent application and declaration or whether there was prior art which should be disclosed. Fitzpatrick never in fact ascertained that any official or employee at Broyhill had the level of knowledge or experience which he imputed to and assumed them to possess. Fitzpatrick did not discuss either with Huffs-tetler or Beach any information concerning the prior art relative to the 7663 design. Thus, Fitzpatrick did not learn about the Gunter photographs or any other prior art from Huffstetler before filing the application on May 19, 1983. By the time of the Fall Market in October 1983, several other manufacturers, including Benchcraft and Riverside, were showing and selling groups of upholstered furniture which closely resembled the design of Broyhill’s 7663 style. Defendant’s Exhibits 7, 10 and 14 (“DX-7, DX-10 and DX-14”). Apparently, no other manufacturer offered for sale any group resembling the Broyhill 7503 sofa style, which was also displayed at that market. Fitzpatrick notified these manufacturers by letter of Broyhill’s pending patent application and stated that Broyhill considered these copies a “blatant act of infringement”, as well as an act of unfair competition. PTX-55 and PTX-56. By December 1, 1983, Broyhill had also become aware of a Crestline group which closely resembled the 7663 style. Thus, Fitzpatrick also notified Crestline of Broyhill’s pending application and restated his claim of infringement. Fitzpatrick also noted that Crestline’s sale of its Style No. 1201 sofa to J.C. Penney & Company, to whom Broyhill had previously sold a version of its 7663, was considered an act of unfair competition. PTX-57. The only response Broyhill received to its notification of the pending patent application was from Crestline, which argued in effect that there could be no infringement of a pending patent application until the patent issued. PTX-58. After he was notified of these alleged infringing acts, Fitzpatrick prepared a Petition to Make Special for the patent in suit. A Petition to Make Special requests that the Patent and Trademark Office (“PTO”) give a patent accelerated consideration for any of several reasons. Generally, patents are reviewed in chronological order based on their filing date. 37 C.F.R. § 1.101 (1986). One basis for a Petition to Make Special, as set forth in the Manual of Patent Examining Procedure (“MPEP”) utilized by PTO examiners, is an allegation of infringement against the pending application. MPEP, § 708.02, II. (1983). Although the MPEP is neither binding law nor regulation of the PTO, it is utilized almost universally by both PTO examiners and patent attorneys in their everyday practice, according to the testimony of plaintiffs’ patent law expert Professor Donald Chisum, a recognized scholar and author of a treatise in the field of patent law. The MPEP is updated annually to reflect changes in interpretation of the patent law made by the PTO. Professor Chisum testified that annual updates of the MPEP are available at a nominal cost. In preparing his Petition to Make Special for the patent in suit in November 1983, Fitzpatrick admitted at trial that he may have relied upon a 1973 edition of the MPEP. As a result of Fitzpatrick's apparent lack of knowledge of the prevailing rules before the PTO, his Petition to Make Special was initially denied on January 3, 1984 because he failed to include the necessary fee required for such special consideration. PTX-2. Upon reconsideration, the Petition to Make Special was granted on March 1, 1984. PTX-2. In filing his Petition to Make Special, Fitzpatrick engaged the services of Mr. Howard E. Russell to conduct a search of the prior art pertinent to the 7663 design sought to be patented. Russell provided his search results to Fitzpatrick on or about October 18, 1983. PTX-52. Fitzpatrick prepared and signed as attorney for Huffstetler an affidavit which set forth that the novel elements of Huffstet-ler’s design, namely the combination of an exposed wood portion and the hand tufted back, were not suggested by the prior art. PTX-2. Fitzpatrick testified at trial that the representations he made in this affidavit filed in support of his Petition to Make Special were not based on any interview or direct communication with the inventor, Huffstetler. Thus, Fitzpatrick was not made aware of any prior art references which Huffstetler himself may have relied upon either for inspiration or derivation of his design. Also, included in the alleged prior art about which Fitzpatrick did not inquire during his prosecution of the patent in suit are the Gunter photographs, which Huffstetler admittedly used to “verify and clarify” his supposedly novel design. Huffstetler testified in his deposition that he considered the Gunter photographs material to the development of his design. Huffstetler testified at trial that Fitzpatrick never explained to him either the extent of his duty of disclosure or the meaning and effect of the oath which Huffstetler signed both on the original patent application and on the Petition to Make Special. Huffstetler also testified that Fitzpatrick did not provide him with a copy of the document styled “Amendment A” in the prosecution history of the patent in suit, PTX-2, which includes the prior art references in the form of patents which were asserted to be the most relevant to the 7663 design. Had Huffstetler seen Amendment A before it was filed with the PTO, he might easily have added the Gun-ter photographs and any other prior art he deemed material, assuming Fitzpatrick had at that time explained to Huffstetler the legal interpretation of “material”. B. The Present Litigation The patent in suit issued on July 3, 1984. Each of the manufacturers known to Broy-hill to be selling groups of furniture similar to or embodying the patented design, including the three plaintiffs, were notified on or about July 9, 1984 of the issuance of the patent and Broyhill’s continuing claim of infringement. The Broyhill design depicted in the patent in suit has been imitated or copied by at least eighteen manufacturers in addition to the three plaintiffs. Mr. Gunter testified that Broyhill has settled its claims against many of these manufacturers, with the manufacturers agreeing to discontinue production of the accused furniture groups and paying damages to Broyhill for alleged past infringement. Broyhill has to date granted no licenses for continuing manufacture of the patented design to any furniture manufacturer. The three plaintiffs filed this declaratory judgment action on July 17, 1984, contending that the ’485 patent is invalid and unenforceable and therefore not infringed by them. The three plaintiffs continued to sell their accused groups of furniture up to and through the time of trial of this case. Broyhill timely filed its counterclaim asserting willful infringement by the three plaintiffs. The plaintiffs contend that the patent in suit is invalid and unenforceable on several grounds: 1) based on the prior art, the patent is invalid due to obviousness; 2) based on his derivation of the patented design from prior art references, Huffstet-ler did not himself “invent” the patented design; and, 3) based on inequitable conduct committed in the prosecution of the patent in suit before the PTO, the patent should be deemed invalid and/or unenforceable. III. PRIOR ART AND DERIVATION OF THE PATENT IN SUIT The court must make factual findings in order to rule upon the allegations set forth by the plaintiffs. As the United States Supreme Court held in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the analysis of the obviousness issue under 35 U.S.C. § 103 requires a determination of the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Id. at 17, 86 S.Ct. at 693, 15 L.Ed.2d at 556. These are factual findings which will enable the court to ultimately reach its legal conclusion on the question of obviousness and validity of the patent in suit. A. Prior Art Before determining the scope and content of the prior art, the court must first determine what items in fact constitute the prior art. The parties placed before the court at trial several articles of alleged prior art which were not presented to nor considered by the PTO in its examination of the patent in suit. In considering the status of these matters as prior art relevant to the patent in suit, the court adopts the view that prior art is properly construed as anything in tangible form that may properly be relied upon by the PTO in patent cases in support of its rejection of the patent. See Borden, Inc. v. Occidental Petroleum Corp., 381 F.Supp. 1178 (S.D.Tex.1974). Prior art may thus take the form of other patents, printed publications, and actual pieces of furniture that were in the public knowledge or in public use or sale more than one year prior to the filing date of the application. 35 U.S.C. § 102. The court finds that the following are relevant and pertinent prior art in relation to the patent in suit: 1. The Zampa Venezia Ad Slick Photograph The plaintiffs argue that the ad slick photograph of the Zampa Venezia photograph, PTX-9, qualifies as prior art under 35 U.S.C. § 102(a), § 102(b), or both. None of the testimony on this issue offered at trial came from live witnesses. In fact, the only testimony the three plaintiffs offered in support of their assertion that PTX-9 qualifies as a printed publication under § 102(b) was the deposition testimony of Joseph Spicer (“Spicer”) and Zampa Bruno (“Zampa”). Broyhill argues that this oral testimony, unsupported by relevant, contemporaneous, corroborating documentary evidence, cannot meet the clear and convincing burden of proof which plaintiffs must bear. The court notes that while oral deposition testimony is probably not the most favored means of proving the existence and prior art status of a printed publication under Section 102(a) and 102(b), such testimony can be sufficient if it is strong, clear and convincing and corroborated by contemporaneous correspondence or other dated records. See Galland-Henning Mfg. Co. v. Dempster Brothers, Inc., 315 F.Supp. 68, 81-82 (E.D.Tenn.1970). Zampa testified that he distributed copies of PTX-9 to prospective customers in England, Germany and Australia prior to 1982, probably as early as 1977 or 1979. Spicer testified by deposition that he had ordered the Venezia suite from Zampa probably as early as 1980, and he offered invoices as evidence of his purchase from Zampa of the Venezia suite. Spicer also testified that the Venezia suite which he purchased from Zampa was in fact the suite which he displayed on behalf of Ideal Furniture at the Earls Court Show in May 1982, and which was photographed by Mr. Gunter. These facts, considered in their entirety, persuade the court that plaintiffs have met their burden of showing by clear and convincing evidence that the Zampa Venezia ad slick photograph, PTX-9, qualifies as a printed publication under the requirements of 35 U.S.C. §§ 102(a) and 102(b). 2. The Zampa Venezia Sofa It is undisputed that Gunter and Kepley viewed the Venezia suite at the Earls Court Show in London some time in May 1982. Gunter photographed the sofa and both Gunter and Kepley later described the sofa in detail to Huffstetler so that Huffstetler might create a “version” of the sofa. The sofa which Gunter and Kepley viewed was clearly and convincingly the same sofa depicted in PTX-9. Thus, the court finds that the Zampa Venezia sofa, a copy of which was reproduced for trial as PTX-101, was in existence for more than one year prior to Huffstetler’s alleged invention of the patented design and qualifies as prior art to the patented design. 3. The Gunter Photographs There was much dispute at trial over whether the Gunter photographs could properly be characterized as a “printed publication” form of prior art. Broyhill argued strenuously at trial that the photographs do not meet the general and usual definition of a printed publication, apparently suggesting that a printed publication must be something in writing or depicting at least a modicum of information. The court is of the opinion that photographs of a certain furniture design, given that overall external ornamental appearance comprises the essence of the design, are sufficient to constitute printed publications in the furniture design field. Accordingly, the court finds that the Gunter photographs, which Huffstetler admittedly required as a necessary reference to complete his design of the patent in suit, are printed publications meeting the qualification of prior art as to Huffstetler. As Mr. Eric Stuenkel, the draftsman who worked closely with Huffstetler in developing the design of the patent in suit, testified at trial, it was the Gunter photographs which allowed Huffstetler to do what he had been unable to do before seeing the photographs: to create a sketch acceptable to Messrs. Gunter and Kepley which incorporated the design of the sofa they had seen at the Earls Court Show in London. 4. The Benchcraft 4540 Broyhill admits that the Benchcraft style 4540 sofa, PTX-15, was manufactured and offered for sale as early as April 1982, more than one year prior to the filing date of the application for the patent in suit. See PTX-18 and PTX-19. Thus, the court finds that the 4540 is prior art under 35 U.S.C. Section 102(b). 5. Miscellaneous Prior Art In addition to the above items, Huffstetler admitted at trial that it was well known in the furniture industry that alternate skirt treatments, such as those shown in the Conover Colonial Catalog, at page 8, PTX-20, could be readily interchanged as desired to achieve different “looks” on furniture, including traditional and country looks as depicted between the 7503 style and the 7663 style. Additional items of prior art include Broyhill furniture styles 7233 (PTX-26), 7253 (PTX-28) and 3973 (PTX-33), each of which illustrates the use of ruffled or shirred skirts and ruffled-edge bolster pillows. Further, the prior art also includes the various patents and publications cited to the PTO during the prosecution of the patent in suit which include: Des. 76,534 Graham Des. 76,862 Faris Des. 86,820 Anderson Des. 89,728 Tavis Des. 97,253 Berth Des. 237,435 Kaplan Des. 238,634 Winrow Des. 249,754 Nash, Et Al. Des. 250,864 Eisen Des. 253,262 Brooks Des. 256,634 Nash Crestline Catalog, Vol. 20, 1976, Page 5, Loveseat No. 38815 K-Chair Company Catalog, 1973, Page 9, Loveseat No. 740 B. Scope and Content of Prior Art and Derivation of Patent in Suit The scope and content of the prior art relevant to the patent in suit includes various sofas of different designs, each incorporating one or two of the design features of the patented design. The prior art must be viewed from the perspective of what it alone would teach, suggest or render apparent (i.e., “obvious”) to a mythical person of ordinary skill in the art to which the subject matter of the patent pertains. 35 U.S.C. § 103. The relevant inquiry in the case sub judice is whether the prior art would render the patented design obvious to the furniture designer of ordinary skill. This determination requires the court to consider the differences between the patented design and the prior art as well as the level of skill of the fictional “person having ordinary skill in the art”, 35 U.S.C. § 103, and also whether what the person of ordinary skill would learn from the prior art references noted above would render the patented design obvious. 1. Differences Between Prior Art and Patented Design The patented design incorporates various design features of elements in a combination comprising a blend of Victorian and country elements. Among these are included the high back of the 7663 design, the curved wing treatment on the arms of the sofa, the shirred skirt and bolster pillows, the application of lightweight “ditsy” print cotton fabric, exposed wood arm stumps and exposed wood back rail, and a semi-attached back. Each of these design elements or features, was known in the furniture design field prior to the alleged invention of the patented design. Broyhill argues that one distinctive feature of the patented design which was not known in the furniture design field prior to Huffstetler’s invention was the use of a shirred kidney roll on a piece of country style furniture. Plaintiffs contend that while a shirred kidney roll may not have appeared on a country piece before Huffs-tetler’s design, shirred kidney rolls were known in the industry and did appear on contemporary or traditional pieces prior to Huffstetler's invention. Huffstetler himself testified that he had never seen a shirred kidney roll on any style of furniture. The court finds that Huffstetler did invent this one aspect of the patented design (i.e., a shirred kidney roll). Accepting that all the above-mentioned features or elements of the patented design except for the shirred kidney roll were known in the industry prior to the application for the patent in suit, the only crucial and novel feature of the patented design was the combination of these elements and the use of a shirred kidney roll on a country style piece. Nowhere in the prosecution history of the patent is the shirred kidney roll suggested as a distinguishing feature which sets the patented design apart from the prior art. Mr. Fitzpatrick sets forth in his Amendment A, filed in support of the Petition to Make Special, that the combination of the exposed wood portion and hand tufted back is a feature not suggested by the prior art. Fitzpatrick also asserts that the design “represents an advance in the design field for such articles by presenting a new and ornamental appearance not suggested, even remotely, by the prior art.” PTX-2. Even though Broyhill’s trial witnesses focused on the shirred kidney roll as a novel and distinctive feature of the patented design, this feature was not pointed out to the PTO examiner in Amendment A as a key feature of Huffstetler’s design. As Broyhill’s own patent law expert Mr. Dal-bert Shefte testified, Fitzpatrick could have asked the PTO to include a “characterized by” clause in his description of the patented design to make clear that the shirred kidney roll was identified as the novel feature of the patented design distinguishing it from the prior art. 2. Level of Skill of Person of Ordinary Skill in the Art. Based on the testimony of the two expert witnesses who testified in the area of furniture design — Mr. Roland Carter for plaintiffs and Professor Vincent Foote for defendant — the court finds that a person of ordinary skill in the art of furniture design would have at least a high school education and some minimal training or experience in the art of designing generally, coupled with some basic artistic sensitivity or artistic ability. Professor Foote, who teaches in the School of Design at North Carolina State University, testified that the person of ordinary skill would also have undergone some form of apprenticeship either through additional education beyond high school or through intensive on-the-job training. Mr. Carter, who identified himself as a freelance furniture designer with over 36 years experience in the field of furniture design, testified that the person of ordinary skill in the area of furniture design would likely also possess some ability to ascertain whether a particular piece of furniture is aesthetically pleasing and why it is pleasing. Carter also testified that the goal of the designer of ordinary skill is to create a “saleable” item, i.e., something unlike what is already on the market but which is of interest to the consuming public. 3. Obviousness of the Design to Person of Ordinary Skill The plaintiffs suggest that when the pri- or art references noted above are combined, particularly the Zampa Venezia design and the Benchcraft 4540 along with the “country look” of the Broyhill 7233 and 7253, the differences between the patented subject matter of the '485 patent and the prior art are such that the subject matter as a whole would have been obvious at the time of invention to the person of ordinary skill in the art of furniture design. Mr. Carter testified that in his opinion the patented design is obvious when one considers what is taught by the prior art. To illustrate his opinion, Carter prepared a set of “overlay” drawings showing a direct progression from the Venezia sofa and the Benchcraft 4540 to the patented design and depicting an alleged inherent suggestion of combining the back of the Venezia sofa with the Benchcraft 4540. As Carter noted, it would have been obvious to a person of ordinary skill to lengthen the Venezia sofa for the American market, to replace the exposed legs of the Venezia sofa with some kind of skirt treatment, and to have replaced the intricate carved back rail on the Venezia with an appliqué. Carter also suggested that the wood carving appliqué on an exposed wood rail is also suggested by Broyhill’s own style 7233 (PTX-26). These changes illustrated by Carter would, he testified, lead one to a “natural evolution” of the patented design. Plaintiffs also argue that Huffstetler’s comment when he first viewed the Bench-craft 4540 in October or November of 1982 that someone had “knocked off” his design of the 7663 is evidence of the inventor’s recognition of the similarity between his design and the 4540 style. Professor Foote took a somewhat different tack in explaining his opinion that the design of the patent in suit would not be obvious to one of ordinary skill in the art of furniture design. Foote testified that there is no suggestion in the prior art for combining the various design features or elements comprising the patented design, especially the combination of Victorian and country style furniture elements. Foote further testified that he found no “flaws” in the prior art and that, in his opinion, nothing in the prior art would suggest to any designer of ordinary skill that any of the prior art designs should be changed, modified, or combined in order to create a new or different design. In his opinion, Foote stated, the patented design incorporates elements which make it a totally and completely different design from any of the prior art references and a design which would not be obvious to the designer of ordinary skill in the art of furniture design. In determining whether a design would have been obvious to a designer of ordinary skill in the art, the relevant time period is the time at which the invention is made. The court should not and may not utilize hindsight to hold that because a design is obvious now, it must have been obvious at the time of invention. See Application of Oelrich, 579 F.2d 86 (C.C.P.A.1978); Clopay Corp. v. Blessings Corp., 422 F.Supp. 1312, 1321-1322 (D.Dela.1976). The court must ascertain whether any non-obvious differences exist in the patented design which did not exist in the prior art at the time of Huffstetler’s alleged invention. The court is of the opinion, as set forth more fully in its conclusions of law below, that the unique combination of country and Victorian elements in one piece of furniture render the patented design, considered as a whole, non-obvious. Cf. Peterson Mfg. Co., Inc. v. Central Purchasing, Inc., 740 F.2d 1541, 1548 (Fed.Cir.1984). Only by use of impermissible hindsight with the teachings of the patented design in hand could one find that the patented design is obvious when considered alongside the prior art. See FMC Corp. v. Manitowoc Co., Inc., 654 F.Supp. 915, aff'd, 835 F.2d 1411 (Fed.Cir.1987). The distinct characteristics of country style furniture as compared to Victorian style furniture do not suggest any obvious combination of the two styles. C. Secondary Considerations (Objective Indicia of Non-Obviousness) 1. Commercial Success The undisputed testimony from Broy-hill’s witnesses was to the effect that when the 7663 sofa was introduced, it met with almost immediate commercial success. As Mr. Gunter testified, a “good” selling furniture frame may sell some 200 to 250 units per week in the sofa, loveseat and chair. At its peak, the 7663 frame was selling approximately 500-550 total units per week, and about 250 sofas per week. Additionally, both Broyhill’s witnesses and the plaintiffs’ witnesses testified that the average “life” of a furniture design is only two to three years. That is, a style generally reaches its peak and then drops off to the point of becoming commercially unproductive in a period of two to three years. The patented design has continued to enjoy commercial success from its introduction in October 1982 through the present. Gunter estimated that the 7663 was probably one of Broyhill’s largest selling frames, if not in fact the most successful frame design ever for Broyhill. In gross sales, Broyhill has sold more than $30 million of the 7660 group embodying the patented design. Plaintiffs have sold some $27 million of the accused infringing groups between July 3, 1984 and December 31, 1986. Mr. Gunter testified that according to recent sales figures, the 7660 group was still selling an average of 401 total units per week for the period of September-October 1987. Gunter pointed out that Broyhill only requires sales of some 25 units per week to maintain a frame design in its product line. Plaintiffs argue that the commercial success of the patented design is attributable to wood stain color, fabric material, fabric print, and other non-design factors such as price. Broyhill counters that the commercial success of the 7660 group is directly attributable to the merits of the patented design and the overall shape and pleasing appearance projected by the design, not to these other factors urged by the plaintiffs. The testimony adduced at trial indicates that several factors may influence a consumer’s decision to purchase a particular piece of furniture. Among these factors, according to the testimony of Mr. Gunter for the defendants and Messrs. Hugh McLarty, Keith Franklin, Lee Corson, and Norman Waxman for the plaintiffs, are included: 1) Fabric Application (i.e., the kind and color of fabric applied to the internal frame) Mr. Waxman, who stated that he has worked for 28 years in the furniture industry and was at the time of trial employed as Chief Operating Officer for Corson Furniture Industries (the parent of Crestline), testified that in his opinion, fabric is the “number one item driving sales of furniture.” Explaining his testimony, Mr. Wax-man stated that companies or designers who are able to “wed” fabric with frames successfully are the most successful in the furniture business. Mr. Corson testified that fabric is the first and foremost motivator of the buyer, adding that a good fabric can sell a weak frame and a strong frame design can be “killed” by a bad fabric. The patented design, as sold by Broyhill and as copied or imitated by the plaintiffs, sold most successfully in the pattern known as “Memories Blue”, PTX-78, a cotton “ditsy” print fabric which was also very popular on many other country style frames. Mr. Corson testified that according to a Crestline study, blue and natural blue cotton print fabric accounted for some 63% of the fabric on its sales on country style pieces. 2) Wood Treatment (i.e., wood species and stain used on the frame) Mr. Gunter testified that in his opinion, the different wood utilized between the 7503 and the 7663 was in some respect responsible for the success of the 7663. Mr. Carter also testified that lighter wood stains and lighter wood species (e.g., oak instead of gum) are characteristic of country styles. Broyhill admits that the 7503, which utilized a darker wood stain and darker wood species, had little commercial success in comparison to the patented design, which utilizes oak wood and a light stain. The court thus finds that wood treatment was at least partially responsible for the success of the 7663 sofa. 3) Price Mr. Gunter and Mr. Corson testified that the furniture industry is “price-sensitive” and that the price of a particular piece or group of furniture will have some effect on its overall success. Mr. Corson noted that the furniture industry is very price competitive and it is difficult for a company to lower its prices and remain economically viable because of the high percentage of fixed costs in the production of furniture. Mr. Gunter testified that Broyhill’s 7660 group sold in what he would characterize as the “low-side of the upper quadrant” in price range, or at the lowest end of the highest-priced products. Gunter explained that $1,000 would be considered the high-end or highest price for a sofa and that the 7663 retailed for $799-$899. Mr. Corson testified that Crestline’s Style No. 54737, PTX-67 and DX-11, the accused copy of the 7663, retailed for approximately $699. Corson also stated that for mass merchandisers (e.g., J.C. Penney & Company, Montgomery Ward, and others), the marketable price range for pieces of furniture is normally $399-$699, with $599 being about the average. Corson expressed his opinion that at $799, Broyhill’s 7663 would “really slow down” in sales and that Broyhill could not have captured all the sales made by the plaintiffs because of Broyhill’s higher price. The court agrees and accepts this as preponderating proof that price had some effect on the commercial success of the 7660 group. 4) Frame Design Mr. Gunter testified that it was his opinion that the overall design of the 7663 was primarily responsible for its commercial success. He also stated, as did Professor Foote, that he considered fabric application as a part of the overall design of the patent in suit. To explain this opinion, Gunter stated that fabric application is to some extent determined by or dictated by the frame design. Thus, some fabrics are not suitable for the shirring effect seen on the skirt and kidney roll of the patented design. The lightweight cotton print fabric applied to the commercial embodiment of the patented design was necessary to achieve the shirring effect. Gunter also stated that the heavy jacquard fabric which was used on the 7503 would not have been suitable or adaptable to the country look sought in the 7663. Thus, Gunter suggested that fabric was a necessary and integral part of the design of the patent in suit because only a certain type of fabric would achieve the desired aesthetic effect of the patented design. Professor Foote testified on cross examination that he agreed with the opinion that fabric is a part of the design of the patent in suit and that, in his opinion, the fabric application does contribute to the commercial success of a furniture piece. The plaintiffs argue that fabric material, fabric print, fabric color or color of wood trim are not a part of the patented design and that these elements, even if they were responsible to some extent for the success of the 7663, cannot be considered by the court. Having considered all the testimony and evidence, the court finds that all of these various factors noted above (fabric application, wood applications, price, frame design) had some effect on the commercial success of the patented design. Neither party has shown by a preponderance of the evidence that any one of these factors, singularly, was directly and solely responsible for the enormous commercial success enjoyed by the patented design. Nor has Broyhill convinced the court that the merits of the overall design, standing alone, are the complete explanation for the commercial success of the 7660 group. In this connection, the court concedes that while it may in fact be true that some aspects of the fabric application are part of the design, this does not mean that color of fabric is part of the design. In the opinion of the court, the type of lightweight cotton print fabric necessary to achieve the shirred kidney roll effect and the shirred skirt effect on the patented design is dictated by the design and may perhaps be considered a part of the overall design. In contrast, the court finds that color of fabric is not so dictated. It is undisputed that the “Memories Blue” fabric pattern sold very successfully not only in the patented design but also in several other country style pieces of furniture. Additionally, the court finds nothing within the claim of the patent itself, PTX-1, which would even suggest that a particular fabric pattern or color is necessary to achieve the patented design. The claim reads: “The ornamental design for a seat, as shown and described.” PTX-1. Fabric application is nowhere implicated or inferable from the patent claim. Accordingly, the court finds that there has been no showing that commercial success was due solely to the design of the patent in suit. As one court has stated: “[T]he sweet smell of success, without more, is an uncertain indicator [of non-obviousness]; to be determinative, the aroma must waft proximately from the design_” A. & H. Mfg. Co. v. Contempo Card Co., Inc., 576 F.Supp. 894, 900 (D.R.I.1983). Furthermore, it has been held that color cannot be appropriated as part of a design. Funnelcap, Inc. v. Orion Industries, Inc., 421 F.Supp. 700 (D.Del.1976). 2. Long-Felt but Unresolved Need and Failure of Others In the context of this design patent, the court is of the opinion that the factor of long-felt and unresolved need is not a proper matter for consideration. This factor is more properly addressed to utility patents or mechanical patents which serve some functional purpose, where the court may more easily make an objective determination on this factor. See Plantronics, Inc. v. Roanwell Corp., 403 F.Supp. 138 (S.D.N.Y.1975), aff'd, 535 F.2d 1397 (2d Cir.1976). Similarly, the court finds that failure of others is a difficult if not meaningless inquiry in the contemplation of a design patent because “evaluation of the patentability of a design is essentially subjective and personal artistic tastes are unpredictable and inexplicable—one viewer’s mural is another's graffiti.” Id. at 160. 3. Copying by Others Broyhill asserts that the acts of the plaintiffs and at least eighteen other furniture manufacturers in copying the patented design is further evidence of the non-obviousness of the design. The evidence on this point is quite persuasive. Having made a close inspection of the plaintiffs’ alleged copies of the patented design, the court finds that both the Bench-craft and the Crestline pieces, DX-5 and DX-11, respectively, are essential and almost identical copies of the commercial embodiment of the patented design. The distinguishing characteristics related to slight differences in wood stain, numbers of buttons and length or continuous nature of the back rail are, in the opinion of the court, no more than de minimis and insignificant distinctions. The proximity in time and in appearance of the Benchcraft and Crestline pieces to the design of the patent in suit is persuasive proof that the design had some degree of novelty. As to the Riverside piece, DX-8, the court finds that the overall aesthetic appearance of this piece is sufficiently different from the patented design such that the Riverside piece cannot be characterized as a copy of the patented design. The court is also impressed by the evidence of apparent contemporaneous independent development of the Riverside piece before any Riverside employees viewed the patented design. In fact, the design drawing for the Riverside Style No. 9553, DX-8 was done by outside design personnel. PTX-63. Additionally, the court notes that the Riverside piece is somewhat smaller than the Bench-craft and Crestline pieces and the back of the Riverside piece does not have the high, Victorian “flair” seen in the patented design and the Benchcraft and Crestline copies. Mr. Jerry Orler (“Orler”), vice-president of upholstery sales for Riverside, testified that Riverside commissioned the design group Otto & Moore to create the 9553 design so that Riverside would have a sofa to put into its existing case goods line known as the “Great Hill Road” collection. The ornamental designs both on the back rail and the wood arm stumps of the 9553, Orler testified, were intended to match the motif of the Great Hill Road collection. The wood finish on the 9553 matches that already on the various tables and other pieces in the Great Hill Road collection. Thus, as to the plaintiff Riverside, the court finds that Riverside did not copy the design of the patent in suit. On the other hand, the court is convinced that plaintiffs Benchcraft and Crestline did copy the- patented design. Particularly persuasive on this point is the fact that Benchcraft and Crestline admittedly had available prior art designs or alleged non-infringing substitutes which were not actively marketed while these plaintiffs continued to market their copies of the patented design. IV. INVALIDITY OR UNENFORCEABILITY OF THE PATENT Plaintiffs argue that, even assuming the patent in suit was valid when issued, it should be invalidated and/or deemed unenforceable because Broyhill committed “inequitable conduct” before the PTO by withholding or failing to disclose material prior art during the prosecution of the '485 patent. A claim of inequitable conduct sounds in fraud, but the term is given somewhat broader interpretation before the PTO. Inequitable conduct encompasses both affirmative acts of commission as well as acts of omission. J.P. Stevens & Co., Inc. v. Lex Tex, Ltd., 747 F.2d 1553, 1559 (Fed.Cir.1984), cert. denied, 474 U.S. 822, 106 S.Ct. 73, 88 L.Ed.2d 60 (1985). As recently clarified by the Federal Circuit Court of Appeals: [0]ne who alleges a “failure to disclose” form of inequitable conduct must offer clear and convincing proof of: (1) prior art or information that is material; (2) knowledge chargeable to applicant of that prior art or information and of its materiality; and (3) failure of the applicant to disclose the art or information resulting from an intent to mislead the PTO. FMC Corp. v. Manitowoc Co., Inc., supra, 835 F.2d at 1415. Having found already that there are certain items of prior art which were in fact not disclosed to the PTO, the court must now consider whether Broyhill’s non-disclosure rises to the level of inequitable conduct. A. Materiality of the Non-Disclosed Prior Art An inventor and his patent attorney have a duty to disclose to the PTO during an application’s pendency ail information and prior art of which they are aware and which is material to the examination of the patent. 37 C.F.R. § 1.56(a). “Material” means all information where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent. Id. There are also more restrictive interpretations of “material”, including an objective “but for” and a subjective “but for” test. The court elects here to apply the PTO’s Rule 1.56(a) definition because it is the broadest test and is most closely aligned with how one applying for a patent should conduct business before the PTO. J.P. Stephens & Co., supra, at 1559. The court finds that Fitzpatrick, as a registered patent attorney with more than 15 years of prior experience in filing and prosecuting patent applications, should have been well aware of his obligations of good faith and candor in dealing with the PTO as legal representative of his clients. Fitzpatrick himself testified that he has prosecuted several utility patents for his former employers, Bethlehem Steel, Aireo, and Monsanto, and that he has been involved in three or four patent infringement lawsuits. 1. The Gunter Photographs The inventor, Huffstetler, admitted on his deposition that during the pendency of his ’485 patent application, he considered the Zampa Venezia photographs supplied to him by Gunter to be material. Although he testified at trial that he “messed up” on his deposition in stating his opinion that the photographs were material to his design, Huffstetler’s actions with regard to the photographs, PTX-5, indicate his realization of the relevance of the photographs to his design. One indication of Huffstetler’s appreciation of the pertinence of the Gunter photograph is seen in the letter from Huffstetler to Fitzpatrick, dated August 28, 1984, with which Huffstetler sent the Gunter photographs to Fitzpatrick and indicated that they were “the photos of the sofa Mr. Gunter saw in Europe from which the inspiration for the 7663 was taken.” PTX-8. It is curious that this letter, which Huffs-tetler indicates as including “the paperwork involved in the development of the 7663 sofa group”, PTX-8, was not sent to Fitzpatrick until almost two months after the patent in suit had already issued. In his deposition, Huffstetler explained his interpretation of “material” to mean that if he had seen anything that would have given him an idea of a design element, he should present it. This definition, although admittedly not given with a complete legal understanding of the term, does in the court’s estimation closely approximate the PTO’s interpretation of “material.” There was considerable confusion at trial as to when Fitzpatrick himself actually became aware of the Gunter photographs. Plaintiffs argue that Fitzpatrick discussed the issuance of the patent with Gunter shortly before the issuance of the patent, at which time Fitzpatrick was advised of the existence of the photographs. Fitzpatrick himself testified that he did not learn of the photographs until some time after the patent had issued. Nevertheless, Fitzpatrick made no attempt once he learned of the photographs to seek a reexamination or to halt the issuance of the patent in suit so that the PTO examiner could consider the Gunter photographs. The only explanation for his actions Fitzpatrick offers is that he did not consider the photographs to be prior art or material prior art. Since Huffstetler himself testified that the Gunter photographs depict the “inspiration” for his patented design and he also testified that he required the photographs to “verify and clarify” his design, the court finds that these photographs are material prior art which should have been disclosed to the PTO. 2. The Benchcraft 4540 Huffstetler testified that he and others at Broyhill were aware of the Benchcraft 4540 sofa as early as October or November 1982, long before the patent application was filed in October of 1983. Huffstetler testified that he viewed the 4540 in a Fingers Furniture catalog in late 1982, and after viewing the overall silhouette of the 4540, he thought that someone had “knocked off” his design of the 7663. Huffstetler testified that he was unaware that the Benchcraft 4540 had in fact predated his invention and could be considered prior art. Inasmuch as the inventor himself considered the Benchcraft 4540 a “knockoff” of his design, the court finds that the 4540 is material prior art. As the plaintiffs assert, Fitzpatrick failed to make a thorough investigation of the prior art in connection with his prosecution of the patent. In connection with his filing of the Petition to Make Special, Fitzpatrick himself admitted that he conducted no independent search of his own, nor did he request Huffstetler or any other Broyhill representative to do a search of the prior art. Rather, Fitzpatrick relied on a minimum search performed by a patent searcher, Mr. Russell, which was limited to materials that are available in the PTO. The plaintiffs contend, and Huffstetler conceded, that if an adequate search of Broyhill’s own files containing catalogs of other manufacturers’ pieces had been made, the Fingers Furniture circular in which Huffstetler viewed the 4540 could have been discovered and the approximate introduction date of the 4540 ascertained. Had such a search been made, plaintiffs assert that Fitzpatrick would have learned that the Benchcraft 4540 had been on the market for more than one year prior to the filing of the patent application. Plaintiffs contend and the court finds that the search conducted by Fitzpatrick was not the “thorough” search which Fitzpatrick represented had been made in his Petition to Make Special. The court is of the opinion that a search of relevant prior art which does not include a search of the inventor’s own files and possible references in developing his invention could rarely meet the attorney’s obligation, as suggested in the MPEP, to show “that he or she has made or caused to be made a careful and thorough search of the prior art or has a good knowledge of the pertinent prior art ...” MPEP, § 708.02, 11.(5) (1983). Additionally, the court notes that since the patented design is in essence a novel combination of the Zampa Venezia and the 4540, materiality of these references can hardly be denied. B. Intent Inequitable conduct also requires proof of a threshold intent, however, that intent need not be proven with direct evidence. J.P. Stevens, supra, 747 F.2d at 1560. The threshold intent may be proven by showing acts the natural consequence of which are presumably intended by the actor. Id. Proof of deliberate scheming by the patent applicant or his agent or representative is not require