Full opinion text
FARNAN, District Judge. I. BACKGROUND A. Procedural History This action was filed by Molins PLC (“Molins”) and John Coventry Smith, Jr. (“Smith”) alleging infringement of Plaintiffs’ related patents, United States Patent Nos. 4,369,563 (’563 patent) and 4,621,410 (’410 patent), against three sets of defendants. The first set of defendants is comprised of Textron, Inc., Kearney & Trecker Corporation, and Avco Corporation. The second defendant is Cincinnati Milacron, Inc., and the last group of defendants are collectively known as the West German defendants. As a result of motions to intervene, consolidate, and amend pleadings, all Defendants are charged with infringing Molins’ two patents in suit by making or using equipment embodying the patented invention within the United States. Defendants deny infringement and assert counterclaims alleging invalidity and unenforeeability of the patents based on alleged inequitable conduct in connection with the prosecution of the ’563 patent. The Court has jurisdiction over the parties and the subject matter of the claims pursuant to 28 U.S.C. § 1338(a). Further, Defendants’ claim for declaratory judgment alleging the patents are invalid, unenforceable and not infringed, confers jurisdiction on the Court pursuant to 28 U.S.C. § 2201. Neither venue nor jurisdiction is contested by the parties. The issues relating to inequitable conduct were separated from the other issues and tried separately to the Court. This Memorandum Opinion constitutes the Court’s Findings of Fact and Conclusions of Law on the inequitable conduct issues. B. Background Facts 1. The Parties Plaintiff Molins is a limited liability corporation of the United Kingdom with its principal office at Milton Keynes, England. Between 1963 and 1973, Molins operated a Machine Tool Division for the design, manufacture, and sale of machine tools used in the high speed machining of light alloys. All applications for patents from Molins’ Machine Tool Division were prepared by an in-house patent department which, during the mid-1960’s, was headed by Mr. F.W. Hacking. Molins is now the sole owner of all rights, titles and interests in the ’563 and ’410 patents. Plaintiff Smith was a member of the patent law firm of Watson, Cole, Grindle and Watson which served as the primary counsel to Molins for United States patent applications from 1966 through the relevant time period in this case. Stipulation 9.8. Smith has prosecuted many United States applications for foreign clients in his thirty years of experience as a patent attorney. Tr., pp. 346, 353. Beginning at least as early as March, 1967, Smith prosecuted all the patent applications leading to the issuance of the ’563 and ’410 patents. Stipulation 9.40. In addition to the prosecution of the patent applications, Smith and Molins had at least two other noteworthy business arrangements. Stipulations 9.13, 9.17 and 9.23. In 1975, Smith was retained when Molins attempted to sell its patent portfolio to United States machine tool manufacturers. Stipulations 9.17 and 9.23. Also, in January of 1980, Molins assigned a one-half interest in its United States applications relating to the patents in suit (“Williamson applications”) to Smith, in exchange for Smith’s agreement to undertake further prosecution at his own expense. Stipulation 9.34. Smith held a one-half interest in the patents in suit until July 1, 1988. On July 1, 1988, Plaintiff Smith assigned his interest in the patents in suit back to Molins. In exchange, Smith received a payment of 1.4 million dollars. Stipulations 10.127 and received a payment of 1.4 million dollars. Stipulations 10.127 and 10.128. As further consideration, Smith was to receive another one million dollars contingent upon Plaintiffs succeeding on a Motion for Summary Judgment attacking the validity or enforceability of the patents in suit. Stipulation 10.129. Smith is also to receive an additional 1.5 million dollars if Molins voluntarily dismisses the present lawsuit or fails to appeal an adverse verdict. Stipulation 10.130. Finally, Smith is entitled to one-half of all royalty income received by Molins from licenses on the patents in suit entered into prior to July 1,1988. Stipulation 10.132. Dennis Whitson (“Whitson”) became employed at Molins in 1967, and was one of several chartered patent agents working in Molins’ patent department. Stipulations 9.6 and 10.9. Whitson was the in-house patent agent responsible for the prosecution of patent applications covering the two machine tool systems that eventually led to the ’563 (“System 24”) and ’410 (“Batch Process”) patents. Stipulations 9.7, 10.9, and 10.11; Tr., pp. 31-33, 40. Whitson was viewed by his co-workers as a competent, very thorough and conscientious practitioner. Tr., p. 991. Whitson was aware of the duty of candor that requires United States patent applicants and their attorneys to disclose material information to the United States Patent and Trademark Office (“U.S. PTO”). Stipulations 10.13, 11.16 and 11.17; Tr., p. 65. When Whitson retired in 1981, Ivan Hirsh assumed the responsibilities and duties as manager of Molins patent department, and continues to serve in that capacity. Stipulations 9.35, 10.16 and 10.17. Hirsh joined the Molins Patent Department in 1968 and was aware of the duty of candor requiring United States patent applicants and their attorneys to disclose material information to the U.S. PTO. Stipulations 9.35 and 10.19. Prior to succeeding Whitson as manager in 1981, Hirsh had no involvement with the prosecution of the patents in suit. Tr., pp. 987-988. However, after becoming manager, Hirsh assumed responsibility for the patents in suit and the preparation and conduct of all litigation involving Molins’ patent rights with regard to them. Tr., p. 270; G-127. 2. The Patents The United States applications were just two of many counterpart applications filed by Molins throughout the world. The ’563 apparatus patent corresponds to the System 24 applications, whereas the ’410 method patent corresponds to the Batch Process applications. The ’563 patent discloses a system of controlled machine tools with the ability to transfer workpieces from a source to a machine tool for machining operations to be performed. The machine tools within any system are complementary so that different operations can be simultaneously performed on the workpieces. M-362; K-59A. The machine tools are numerically controlled to permit the automatic placement of a pallet with a workpiece in order for the machining operation to be performed. Workpieces are transferred by an automatic conveyor system with the capacity to monitor their locations. A workpiece may bypass a machine tool if that machine tool has not been selected for operation at that time. The workpieces are able to go to any machine in any order. Both the transfer of the workpieces and the machining operations are controlled by a central computer control. 3. The Patent Application Process The ’563 patent issued on January 25, 1983. It matured from the following series of applications, listed briefly here and explained in greater detail below: 1. CASE I: Williamson Application No. 578, 318, filed on September 9, 1966 (Batch Process). 2. CASE II: Williamson Application No. 636,993, filed on May 8, 1967 (System 24). 3. CASE III: Williamson Application No. 695,817, filed December 4, 1967 as a continuation-in-part combining Cases I and II (Case I and Case II abandoned). 4. CASE IV: Williamson Application No. 85,289, filed October 29, 1970 as a continuation of Case III (Case III abandoned). The ’410 patent issued on November 11, 1986. It matured from substantially the same series of applications as the ’563 patent. Shortly before the ’563 patent issued, Molins filed Williamson Application No. 429,918 as a divisional application of Case IV, which subsequently issued as the ’410 method patent. a. Case I In September, 1965, Molins filed Application 38937/65 in the United Kingdom. This application, based on an invention by Williamson, was directed to the Batch Process approach to machining. Stipulations 9.3 and 10.21. In September of 1966, corresponding patent applications were filed in many countries, including the United States. Stipulations 9.3, 10.23, and 10.29. The United States patent application covering the Batch Process was serial number 578,318 (hereinafter “Case I”), and relied on the United Kingdom application 38937/65 for its 1965 priority date. Stipulation 10.23. The Case I application contained claims 1 through 3 of the British Batch Process patent application. Stipulation 10.24. However, in March 1967, Smith filed an “Amendment before Action” wherein claims 1 and 3 were canceled and claim 4 was added. b. Case II In 1966 and 1967, Molins filed three successive applications covering the System 24 invention in the United Kingdom. The British applications were assigned numbers 21223/66, 12196/67 and 21109/67. In May of 1967, Molins filed United States patent application serial number 636,993 covering the System 24 invention (hereinafter, “Case II”), and relying on the three British applications for its priority date. Corresponding System 24 applications were filed in more than fifteen other countries. c. Case III In December of 1967, Molins filed application serial number 695,817 (hereinafter, “Case III”), a combined continuation of Case I (the United States Batch Process application) and Case II (the United States System 24 application). Thereafter, Molins abandoned further prosecution on the individual Case I and Case II applications. Tr., p. 56; K-28. The merged Case III application included Batch Process claims 66 and 67 (claims 2 and 4 from the original Case I application) as well as sixty-five claims from the System 24 patent application. Stipulation 10.42. On February 21, 1968, Smith and Whitson amended Case III to add claims 68 through 71. K-28, pp. 166-167. Case III then contained the following Batch Process Claims: claims 66 and 67 which were carried over from Case I, and new claims 68 and 69. Tr. p. 1027; Tr. p. 1035; K-28, p. 166. On June 6, 1969, the U.S. PTO issued a restriction requirement instructing Molins to make an election among four groups of claims contained in the Case III application. Under a fair reading of the restriction requirement, the U.S. PTO instructed Molins to make an election to prosecute either what it viewed- as the method (Batch Process) claims or the apparatus (System 24) claims. On July 7, 1969, Smith and Whitson filed a response to the restriction requirement. In their response, Whitson and Smith canceled claims 1, 2, and 3, and substituted claims 72, 73, and 74. In addition, Whitson and Smith argued that the restriction requirement was unwarranted but provisionally elected to proceed with the prosecution of claims designated as Group I, specifically claims 72-74, 4-54, and 68-71. K-28, pp. 171-173. Following this election, the U.S. PTO examined the elected claims and on October 3, 1969 rejected each one. Tr. p. 1035; K-28, pp. 174-180. The rejected Batch-type claims (independent claims 68 and 69) were found to be anticipated by the Lemelson ’014 patent. The independent System 24 claim (claim 72) was rejected as being anticipated by a combination of the Lemelson ’014 and ’510 patents. Tr., p. 1037 and K-28, p. 180. After contacting Whitson several times for advice, Smith filed a response to the October rejection on March 10, 1970. Tr., p. 1037; K-28, p. 190. In the March 10, 1970 response, Whitson and Smith substantially amended claims 68, 69 and 72. Tr., p. 1038-1039; K-28, p. 203. The amendments were designed to distinguish the claims over both of the Lemelson citations even though claims 68 and 69 had been formally rejected only on the basis of the Lemelson ’014 patent. Tr., pp. 1039-1040; K-28, pp. 209-212. On March 18, 1970, Smith amended the combined Case III application to change it from a continuation to a continuation-in-part (CIP). Stipulations 10.27, 10.46, 10.48 and 10.49; K-28, p. 216. Smith filed this amendment after the patent examiner pointed out to Smith that the Case III application should be amended to a CIP application because it was a combination of the Batch Process application (filed in September, 1966) and the System 24 application (filed in May, 1967). Stipulation 10.48. The March 18, 1970 amendment also included a CIP declaration signed by Williamson. K-28, pp. 271a-e. The declaration indicated that as far as Williamson knew the contents of the application did not disclose anything that was ever previously known or patented or “described in any printed publication in any country.” K-28, p. 217-c. d. Case IV (1) Case IV Application On October 29, 1970, Molins filed United States application serial number 85,289 (hereinafter, “Case IV”) as a continuation of the Case III application previously filed in December of 1967. The Batch Process claims (claims 79 and 80) that appeared in the Case IV application were identical to original Batch Process claims 2 and 4 which appeared in the September 1966 Batch Process patent application, and Batch Process claims 66 and 67 from the Case III application. K-59A, pp. 124-148; Stipulation 10.48. On December 29, 1971, the U.S. PTO issued an Office Action rejecting Batch claims 79 and 80. Tr., pp. 136-137; K-59B, pp 203-208. The claims were rejected because the examiner concluded that they were directed to an invention other than that disclosed in the Case III parent application. Whitson and Smith met in April of 1972 to respond to the December 1971 Office Action. Tr., pp. 137, 163-167. In their response, filed April 27, 1972, Whitson and Smith amended the application adding new claims 176 through 185. It is clear from a statement prepared by Whitson and Smith that the new claims were included to distinguish the invention over Lemelson Reissue patent RE 26,770. Whitson and Smith stated that “claims 176-185 have been added by the present amendment to further define applicant’s invention, and it is submitted that these claims clearly distinguish over the single prior art reference of record.” K-59B, p. 239. The single prior art reference referred to was Lemelson Reissue patent RE 26,770. K-59B, p. 205. In addition to adding claims 176 through 185, Molins copied claims from patent number 3,575,540 (“Fair patent”) which, by assignment, was held by the Sundstrand Corporation. The Fair patent disclosed a computer controlled machining system and contained features common to the Case IV application. The purpose of copying the claims was to provoke an interference with the Fair patent and determine which party was entitled to priority for the common claims. Claims 176 through 185 were in place to dominate the Fair patent if the U.S. PTO refused to initiate interference proceedings or, alternatively, to allow for priority of those claims in an interference proceeding. (2) Perry/Fair/Williamson Interference On January 31, 1973, the U.S. PTO declared an interference proceeding. At issue in the interference were the Case IV application (Williamson patent application), the Fair patent, and the Perry patent application, a patent directed to a computer controlled machining system which had been assigned to Defendant Cincinnati Milacron. On April 4, 1977, the U.S. PTO awarded Molins priority on all principal counts, finding that Williamson was the first to invent the claims that were common among the various applications. The continued prosecution of the Case IV application in the United States required an additional seven years before a patent was issued. During this time the patent office examiner and Smith exchanged several office actions and responses thereto. Eventually, on January 25, 1983, the Case IV application matured into the issuance of the ’563 apparatus patent. The corresponding ’410 method patent, was issued on November 11, 1986. e. Re-examination of ’563 On October 3, 1984, Cross & Trecker, the parent of Kearney & Trecker, filed a request for re-examination of the ’563 patent. Stipulation 4.1. The re-examination was a specific request to evaluate the ’563 patent in light of six or seven IBM references. Tr., pp. 618-619. The outcome of the re-examination was the issuance of Re-Examination Certificate B1 4,369,563 on May 13, 1986. The ReExamination Certificate deemed certain claims of the ’563 patent valid over the newly cited prior art, found certain claims patentable when amended as described, deemed certain claims that were dependent on the amended claims to be patentable, and found certain new claims patentable. 4. Abandonment of Foreign Applications As stated earlier, at about the time that Molins filed the Batch and System 24 applications in the United States, Molins also filed counterpart applications in some 20 other countries. But, in. 1968, Whitson concluded that the Batch Process invention was fully anticipated by an article, Wagenseil, W., “America’s First Tape-Controlled Production Line,” Metalworking Production Magazine (June 13, 1958). Stipulation 9.10. Thus, from early 1968 through August, 1969, Molins abandoned all pending foreign batch applications. The following actions were taken by Whit-son to cease prosecution of foreign Batch Process applications due to the Wagenseil reference: DATE ABANDONED COUNTRY_REFERENCE April 11. 1968_Austria_K-405_ 1968_West Germany_Tr. p.306_ June 26, 1968_Poland_TT 306/C-233_ October 21, 1968__Russia_K-406/C-230/Stip. 10.35 November 8, 1968_Japan_K-407/C-231/Stip. 10.37 January 29, 1969_Canada_K-344/C-233/Stip. 10.38 June 10, 1969_United Kingdom K-345/C-234/Stip. 10.39 July 3, 1969_Czechoslovakia_TT 96/C-235_ August 1969_ All Other Foreign Stipulation 9.12_ Eventually, Molins also abandoned all foreign System 24 applications. Both the German and the Japanese System 24 applications were abandoned because of Wagenseil. In April and May of 1975, six West German and one East German company filed oppositions to the German System 24 application, two of whom cited Wagenseil as relevant prior art. Stipulations 9.14 and 10.64. Then, in 1976, Benziger, under the guidance of Whitson, wrote to Molins’ German attorney, instructing the attorney not to file an opposition in order to allow the application to be abandoned. Stipulation 10.66. The Japanese System 24 application was finally abandoned in 1976 at which time it stood rejected over a combination of citations. Stipulation 9.28. One citation was to the Lemelson ’247 patent and the other citation was to a 1962 article from Metalworking Automation by George DeGroat which contained a copy of the Wagenseil diagram. Stipulation 9.28; K-141. At this time all foreign System 24 applications and issued patents were abandoned. Stipulation 9.27. The only remaining application was in the United States. Stipulation 9.27. C. PRIOR ART 1. Wagenseil According to Whitson, Wagenseil “disclosed the palletizing of workpieces and the adaptation of a group of complementary machine tools to accept and position such palletized workpieces automatically.” Stipulation 9.10. Further, Whitson concluded that: Wagenseil makes clear that workpieces go only to selected machines, It appears also that a workpiece can be recirculated past the machines so that it can be taken to selected machines in any order. Stipulation 10.36 and K-405. At trial, Paul Haas, Defendant’s expert in manufacturing systems described what the Wagenseil publication disclosed to an ordinary person skilled in the relevant art in 1966. Tr., pp. 726-728. Based on Mr. Haas’ testimony, the Court finds that the Wagenseil block diagram or flow chart discloses an automatic manufacturing system. The system is used to make multiple numbers of parts using a random part delivery system under the direction of a central control system. The central control system is represented by a digitape control disclosure in the drawing. The diagram provided in Wagenseil shows loading stations that are identified as “1” through “N”, 1 indicating the first of N number of loading stations required for any production run. The connotation N is used to indicate that the system can handle as many machines as required by the workpiece. A source of palletized workpieces is inherent in the 1 through N loading stations. Leading away from the loading stations, or source, following the direction of the arrows, is a conveyor that enables the workpieces to travel through the system. At the first machine, there is a bifurcated arrow which indicates that the workpiece could either bypass the machine or enter into the machining loop of that particular machine. Thus, at each machine in the material handling system, the workpiece would have the ability to either bypass the machine loop or enter the machining loop as required. If a machine is bypassed because it is busy or another series of operations is required, the workpiece can be recirculated through the system. The machine tools are complementary machine tools in that they perform different operations as required by the workpieces. Each machining tool loop may contain more than one machine tool. 2. Lemelson ’014 and ’501 Patents As stated above, a combination of the Lemelson ’014 and ’501 patents was used to reject the ’563 Case III application in 1969. Lemelson 3,119,501 discloses an automatic warehousing system where there exists “a storage and retrieval system which includes a programmed control apparatus for controlling an article carrier in delivering and retrieving a selected article.” K-28, p. 204. Lemelson 3,313,014, on the other hand, discloses an automatic production system where “a plurality of production machines with a programmable conveyor delivers and retrieves workpieces to and from selected production machines.” K-28, pp. 204-205. These patents individually represent two very different applications, one permitting storage and retrieval, the other permitting the transfer of a workpiece within a production line for work at a specified machine. The Court finds neither teaches the combination of the two, because there is no disclosure of a central control governing both of the systems. K-28, p. 206. II. DISCUSSION Defendants argue that the ’563 patent is unenforceable because Plaintiffs, through the actions of Whitson, Smith, and Hirsh, engaged in inequitable conduct before the U.S. PTO. Specifically, Defendants allege that (1) Whitson,. Smith, and Hirsh each engaged in inequitable conduct in failing to disclose Wagenseil to the U.S. PTO during the prosecution of the ’563 patent; (2) Whitson and Smith’s failure to disclose Lemelson Patents Nos. ’247, ’014 and Reissue No. 26,770 constituted inequitable conduct; and (3) Whitson’s submission of a false declaration to the U.S. PTO constituted inequitable conduct. Plaintiff does not deny having knowledge of the undisclosed Wagenseil reference and the Lemelson patents, but argues that the Wagenseil reference and the Lemelson patents were cumulative of the relevant prior art that was cited in the U.S. applications. Plaintiff further contends that Whitson, Smith, and Hirsh in any event, did not act with an intent to deceive the U.S. PTO. After a discussion of the applicable legal standards, the Court will address each of Defendants’ allegations of inequitable conduct, as well as Defendants’ claim that Hirsh’s destruction of records makes this an exceptional case. Applicable Legal Standards A. Applicants for patents and their attorneys owe the U.S. PTO a duty of candor, good faith, and honesty. FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 n. 8 (Fed.Cir.1987); Hycor Corp. v. Schlueter Co., 740 F.2d 1529, 1538 (Fed.Cir.1984); American Standard Inc. v. Pfizer Inc., 722 F.Supp. 86, 141 ,(D.Del.1989) (citing Precision Instrument Mfg. Co. v. Automotive Maintenance Mach. Co., 324 U.S. 806, 818, 65 S.Ct. 993, 999, 89 L.Ed. 1381 (1945)). A breach of this duty constitutes inequitable conduct. Inequitable conduct may consist of an affirmative misrepresentation, a misleading statement, or an omission of material information. Fox Industries, Inc. v. Structural Preservation Systems, Inc., 922 F.2d 801, 804 (Fed.Cir. 1990). Rule 56(a) of Title 37, Chapter 1 of the Code of Federal Regulations provides that applicants and their attorneys must “disclose to the [PTO] information they are aware of which is material to the examination of the application.” 37 C.F.R. 1.56(a) (1989). This duty has been held to be equally applicable to foreign practitioners who represent claims in the U.S. PTO through local firms. Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F.Supp. 933, 943 (S.D.N.Y. 1982). One who asserts a defense of inequitable conduct based on a failure to disclose material prior art must show by clear and convincing evidence: (a) materiality of the nondisclosed prior art (materiality); (b) knowledge chargeable to the applicant of the prior art or information and its materiality (knowledge); and (c) failure of the applicant to disclose the art or information resulting from an intent to mislead the U.S. PTO (intent to deceive). FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415 (Fed.Cir.1987). Thus, for the Court to conclude that inequitable conduct occurred, the Court must first find that certain thresholds of materiality and intent are present. Under Sea Indus., Inc. v. Dacor Corp., 833 F.2d 1551, 1559 (Fed.Cir.1987); J.P. Stevens & Co. v. Lex Tex, Ltd., 747 F.2d 1553, 1562 (Fed.Cir.1984) (citations omitted), cert. denied, 474 U.S. 822, 106 S.Ct. 73, 88 L.Ed.2d 60 (1985). Information is material if “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.” 37 C.F.R. § 1.56(a); Specialty Composites v. Cabot Corp., 845 F.2d 981, 992 (Fed.Cir.1988). Under this standard, an applicant need not disclose all relevant prior art. J.P. Stevens & Co., 747 F.2d at 1559. The applicant need not disclose prior art which is less material, or merely cumulative to that considered by the examiner. Rolls-Royce Ltd. v. GTE Valeron Corp., 800 F.2d 1101, 1107 (Fed.Cir.1986). Whether the requisite intent to deceive is present in a case must be determined in- light of all the evidence. Because direct evidence of an intent to deceive rarely exists, the Court may rely on circumstantial evidence leading to an inference of intent to mislead as the basis for a finding of inequitable conduct. Hewlett-Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556, 1562 (Fed.Cir. 1989). A finding of gross negligence, however, does not of itself justify an inference of intent to deceive. Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 876 (Fed.Cir.1988) (in banc). Instead, the Court must view the conduct in light of the totality of the circumstances, “including the nature and level of culpability of the conduct and the absence or presence of affirmative evidence of good faith.” Id.; see also Consolidated Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 809 (Fed.Cir.1990); RCA Corp. v. Data General Corp., 887 F.2d 1056, 1065 (Fed.Cir.1989). Once the thresholds of materiality and intent are established, the Court must balance them to determine whether the equities in the case warrant a conclusion that inequitable conduct occurred. J.P. Stevens & Co., 747 F.2d at 1559-60. In this regard, materiality and intent are inversely related; “the more material the omission, the less culpable the intent required, and vice versa.” Halliburton Co. v. Schlumberger Technology Corp., 925 F.2d 1435 (Fed.Cir.1991) (citing N.V. Akzo v. E.I. Dupont de Nemours, 810 F.2d 1148, 1153 (Fed.Cir.1987)). B. Whitson’s, Smith’s, and Hirsh’s Failure to Disclose Wagenseil 1. Materiality of Wagenseil As the parties agree that the Wagenseil article was highly material to the Batch Process Claims, the Court finds it unnecessary to engage in a lengthy discussion of the evidence leading to its conclusion that Wagenseil was material. The batch process invention was a very broad concept of a method for batch machining that involved a group of complementary, individual numerically controlled machine tools capable of accepting standardized pallets loaded with workpieces. The machine tools would have the capability to automatically position to the pallets for machining the workpieces. Wagenseil’s article describes a machining system in which pallets loaded with workpieces are transported to numerically controlled machine tools capable of automatically positioning the workpiece. In addition, Wagenseil disclosed a capability for workpieces to recirculate into the system, and for workpieces to bypass certain machine tools within the system. Thus, the Court concludes, and the parties concede, that the Wagenseil article discloses each of the significant elements of Williamson’s Batch Process invention. The Wagenseil reference completely anticipated Molins’ Batch Process claims, and was a prior art reference of the highest materiality with respect to any Batch Process claims in the various U.S. applications. With regard to the System 24 claims, Plaintiff contends that Wagenseil was not a material prior art reference. The Court disagrees. Wagenseil was a highly material prior art reference in the System 24 claims as evidenced by Molins’ disclosure of the reference in the foreign System 24 counterpart applications, and Molins’ attempt to claim patentability of the German System 24 invention by distinguishing it over Wagenseil. The Court is persuaded that the most telling evidence in the case on the issue of materiality of Wagenseil in the prosecution of the System 24 claims is Whitson’s response to a request from the German Patent Office for Whitson to disclose all prior art cited in other countries. The German request prompted Whitson to indicate that Wagenseil was the most relevant disclosure to the System 24 application of which he was aware. Benziger, Whitson’s subordinate, made a similar statement in 1975. In a letter to Whitson’s Japanese associate, Benziger stated that Wagenseil was the closest prior art of which Molins was aware out of all the art references appearing in all corresponding applications. At least two foreign patent examiners agreed with Whitson and Benziger that Wagenseil was highly material to the System 24 applications. On June 12, 1974, a Dutch patent examiner issued an Office Action which suggested that he regarded Wagenseil as the closest prior art to the System 24 application. Likewise, a Japanese patent examiner rejected the System 24 application because of disclosures taught by a combination of Wagenseil with Lemelson patent ’247. Although a court must exercise caution in relying on foreign patent prosecution due to differences in disclosure requirements, claims practice, forms of applications and standards of patentability, actions in foreign prosecution may prove relevant to domestic prosecution of a patent. J.P. Stevens & Co., 747 F.2d at 1566. With the J.P. Stevens admonition in mind, the Court concludes that in light of Whitson’s own admissions as to the materiality of Wagenseil in several forums, a reasonable examiner in the U.S. PTO would have considered Wagenseil important in deciding the prosecution of the then pending United States System 24 claims. Plaintiff contends that Wagenseil was not material because it was merely cumulative of prior art that was before the U.S. patent examiner. Plaintiff Molins argues that Wagenseil did not disclose features pertinent to the Case III application that were not disclosed by Lemelson patents ’014 and ’501— prior art references relied upon by the U.S. PTO to reject Molins’ System 24 claims. Lemelson ’501 discloses an automatic storage and retrieval system. Lemelson ’410 discloses an automatic transfer system. A person need not disclose a reference if it would be merely cumulative of other references before the patent examiner. Specialty Composites v. Cabot Corp., 845 F.2d 981, 992 (Fed.Cir.1988). While the Lemelson patents individually disclose two significant elements found in Wagenseil, neither teaches a combination of the two. Wagenseil, on the other hand, provides a visualization of the very combination missing in the Lemelson patents. See In re Jerabek, 789 F.2d 886, 890 (Fed.Cir.1986) (no cited prior art taught the combination present in the withheld reference, thus the reference was highly material). Moreover, none of the other prior art references taught the ability to bypass machines or to recirculate within the system. Wagenseil discloses the bypass feature with the bifurcated arrows at the machine locations. Wagenseil also discloses the ability to recirculate with the re-entry of a workpiece. Because Wagenseil discloses elements that went beyond those found in other cited art, but similar to the claims contained in the U.S. System 24 application, the Court is persuaded that it was not merely cumulative. Plaintiff also argues that Wagenseil was not material because it was disclosed in the re-examination proceedings of the ’563 patent, and the U.S. PTO still issued a reexamination certificate for the ’563 patent. The Court must consider all aspects of the patent prosecution to make a determination of a reference’s materiality. As discussed in J.P. Stevens, the starting point for determining the materiality of a reference is the PTO standard and actions taken at the PTO. J.P. Stevens & Co., 747 F.2d at 1562. In Stevens, the Court instructed: [T]he result of a PTO proceeding that assesses patentability in light of information not originally disclosed is of strong probative value in determining whether the non-disclosed information would have been material. Id. In this regard, the Stevens Court found the district court erred by not considering the reissue proceeding that had taken place where the prior art originally not disclosed was placed squarely before the PTO. Id. Although the Court recognizes that the PTO did not reject any claims based on the Wagenseil reference during the re-examination proceeding, the Court concludes that the PTO re-examination proceeding was not determinative of materiality for several reasons. First, the proceeding was undertaken for the- specific purpose of determining the patentability of the ’563 patent in light of several IBM patents, without consideration of Wagenseil. There is no evidence that the U.S. PTO actually considered the Wagenseil reference. Second, Wagenseil was only one of many references submitted to the U.S. PTO for the first time during the re-examination proceeding. Plaintiffs cannot be permitted to bury the Wagenseil reference in a disclosure of more than 80 references, and then argue against its materiality because claims were allowed in spite of it. Significantly, the examiner did not have the advantage during the re-examination proceeding, as does the Court, of having the development history of the patent before it. It is these factors that convince the Court that the examiner in the re-examination proceeding did not accord the Wagenseil reference serious consideration. Unlike Stevens, Wagenseil was not “squarely before” the examiner. Therefore, the Court concludes that the re-examination proceeding has no bearing on the materiality of Wagenseil. 2. Whitson’s, Smith’s, Hirsh’s Intent to Deceive U.S. PTO Next, the Court must consider whether Whitson, Smith, or Hirsh knew of the materiality of Wagenseil and acted with the intent required to establish a defense of inequitable conduct. a. Whitson’s Intent to Deceive U.S. PTO Defendants assert that Whitson, as the patent agent for Molins, concealed Wagenseil from the U.S. PTO in relation to the U.S. Batch claims. Defendants also argue that Whitson concealed Wagenseil in relation to the System 24 Claims. The Court agrees. Whitson was an experienced patent agent. By 1968, Whitson was a seasoned patent practitioner. He headed Molins’ patent department for 7 years, from 1974 to 1981. Whitson was knowledgeable not only regarding British patent practice, but United States patent practice as well. With all of this expertise, Whitson was certainly aware of the scope of the duty of candor that he owed to disclose material information to the U.S. PTO. Although Defendants have not produced direct evidence of Whitson’s intent to deceive, i.e. there are no “smoking memos” implicating bad faith on the part of Whitson, the overwhelming circumstantial evidence presented in this case leaves little doubt that Whitson intentionally concealed the Wagenseil reference from the U.S. PTO knowing that it was highly material to the U.S. applications. Whitson knew, as early as April 11, 1968, the day he abandoned the Austrian Batch Process application, that Wagenseil was not only material to the Batch Process claims, but actually anticipated them. At trial, Whitson testified that a claim which was highly material in one country would likely be considered material by any patent office where the same or similar claims were pending. Thus, from April 11, 1968 to August, 1969 at which time Whitson decided to abandon all foreign batch process claims, Whitson knew that Wagenseil would likely be considered important in the prosecution of the U.S. applications. Yet, Whitson never cited Wagenseil to the U.S. PTO in the 13 years (1968— 1981) in which he was involved in prosecuting the U.S. applications. Plaintiff Molins asserts that Whitson acted in good faith in not disclosing Wagenseil to the U.S. PTO. Plaintiff alleges that Wagenseil was overlooked because Whitson was overseeing so many patent applications in so many different countries. The Court finds such an assertion unbelievable. Whitson or his associates were focused on Wagenseil in the foreign applications for over ten years. The Wagenseil reference was brought to Whitson’s attention on numerous occasions. It is hard to believe under such circumstances that Wagenseil somehow slipped through the cracks. Further, Plaintiff Molins presented evidence that Whitson did consider the Wagenseil reference in regard to the U.S. Case III application at the time he made the decision to abandon the foreign applications. In a recommendation to W. Powley, Whitson’s superior, to abandon all “batch process” cases because of Wagenseil, Whitson made a notation clearly indicating that the U.S. application was not to be abandoned. The notation was made because the U.S. application, unlike the foreign application contained both Batch Process and System 24 claims. Whit-son was concerned that the systematic abandonment of the batch process cases would result in the accidental abandonment of the System 24 case. But, the significant fact here, is not whether the U.S. application should have been abandoned, but whether Wagenseil should have been disclosed. It is the Court’s view that this letter clearly negates Plaintiffs contention that Wagenseil just fell through the cracks in the U.S. prosecution. Plaintiff Molins presents a second “good faith” type argument. Molins alleges that Whitson did not disclose Wagenseil to the U.S. PTO because the Batch Process claims were abandoned in the U.S. leaving only System 24 claims. The Court is not persuaded by this argument either. First, the U.S. application contained Batch Process claims that were prosecuted by Whitson through the issuance of the ’563 patent. Second, as the Court concluded above, Wagenseil was highly material to the System 24 application, and Whitson knew of its materiality. In 1968, at the time Whitson abandoned the first foreign application because it was anticipated by Wagenseil, Case III was pending in the United States. Case III was a combination of the Batch Process (Case I) and the System 24 (Case II) applications. At that time, Case III contained four batch claims (claims 66, 67, 68 and 69). Following the restriction requirement in June 1969, two of the batch claims remained in the application but were not being prosecuted. The two other batch claims that were present in the application were being prosecuted by Whit-son as two of three independent claims. In 1970 a patent examiner required Case III to be amended to show that it was a continuation in part as opposed to a continuation because the application contained both Batch Process and System 24 claims. Thus, from December, 1967 to October, 1970 while the Case III application was pending, batch claims were present. Accordingly, Plaintiffs argument that Wagenseil was not material to the U.S. application because it contained only System 24 claims, is without merit.- Whitson was actively prosecuting batch claims in the U.S. PTO that he contemporaneously determined in foreign prosecutions were anticipated by Wagenseil. In addition, in October 1970, Case IV was filed by Whitson and Smith as a continuation of Case III. At that time, the non-elected batch claims from Case III were reinserted into Case IV as claims 79 and 80. Once again, Whitson was attempting to obtain a U.S. patent on claims that he had contemporaneously determined were unpatentable over Wagenseil, without giving the U.S. PTO the opportunity to consider Wagenseil. There is one more significant aspect of the U.S. prosecution that highlights the background of fraudulent intent on the part of Whitson. On June 6, 1969, the U.S. patent examiner required Molins to elect to prosecute one of four groups of claims. The claims were roughly separated into apparatus and method claims. Plaintiffs argument is that because Molins did not elect to prosecute the Batch Process claims at that time, there was no reason to disclose Wagenseil as a material prior art reference. However, the file wrapper shows that Whitson, through Smith, only provisionally elected to prosecute certain claims. In their response, Whitson and Smith argued that a restriction to one set of claims was inappropriate; an argument that they would not have been able to make had Wagenseil been before the U.S. PTO. Accordingly, even if the Wagenseil reference were not material to the System 24 claims, the Court finds that Whitson acted inequitably in not disclosing Wagenseil at the time he argued to keep the Batch Process claims in the application. Molins’ final argument is that Whitson did not act with an intent to deceive because Whitson viewed the U.S. System 24 application as being different from the foreign applications. This argument is likewise without merit. Whitson’s knowledge of the materiality of Wagenseil is demonstrated by his involvement in the prosecution of the German System 24 application. In the prosecution of the German application, Whitson stated that Wagenseil was the most material prior art reference. Moreover, Whitson distinguished the German System 24 claims over Wagenseil by reference to a storage means and a reverse movement feature; neither of which were present in the U.S. System 24 claims. During this same time period, Whitson assisted in the amendment of the United States application to include claim 180. Claim 180 was the same as or substantially similar to the preamble to the German application. Dr. Haas testified that Wagenseil completely anticipated Claim 180. Furthermore, no attempt was made by Molins to distinguish Claim 180 over Wagenseil using the storage means and reverse movement features. On the evidence presented here, the Court finds that the circumstantial evidence of intent in this case is abundant and substantial. Hewlett-Packard Co., 882 F.2d at 1562. Whitson knew of the materiality of the Wagenseil publication in foreign prosecutions, and still decided not to disclose it. As stated in J.P. Stevens: Whether [a reference] should have been disclosed under those rules in those lands has no controlling effect on whether it should have been disclosed to the PTO here. That [a reference] was cited and claims were rejected on [that reference] in applications corresponding to the [United States] applications should have caused a reasonable applicant to have so recognized its materiality in the PTO as to have led to its disclosure. No requirement exists to disclose to the PTO all references cited against foreign corresponding applications; •yet in the present circumstances the failure to cite [the reference] in light of its citation in foreign lands is strong evidence of intent to mislead. J.P. Stevens, 747 F.2d at 1561 (emphasis added). Thus, the Court concludes that the evidence supports a finding of an intent to mislead because Whitson was repeatedly reminded of the Wagenseil reference and its materiality and yet failed to disclose it to the U.S. PTO. Based on the totality of circumstances, the Court concludes that the Defendants have proven by clear and convincing evidence that Whitson’s failure to disclose Wagenseil was intentional. J.P. Stevens, 747 F.2d at 1560; Hewlett-Packard Co., 882 F.2d at 1562. b. Smith’s Intent to Deceive the U.S. PTO Defendants allege that the actions of Smith also constituted inequitable conduct because he intentionally concealed information from the U.S. PTO on at least two occasions. First, Defendants argue that Smith had knowledge of Wagenseil and a duty to disclose the reference during the prosecution of the Williamson patents. Second, Defendants argue that Smith had a duty to disclose Wagenseil during the re-examination of the ’563 patent. (1) Smith’s Failure to Disclose Wagenseil During Williamson Prosecution Smith denies that he ever heard of, saw, or obtained the Wagenseil reference prior to the issuance of the ’563 patent. Stipulation 10-68. Defendants, on the other hand, argue that given the close and continuing relationship between Smith and Whitson, and Whit-son’s involvement in the U.S. prosecution that Smith must have been aware of the Wagenseil article during the prosecution of the Williamson applications. After considering the evidence presented at trial, the Court concludes that the Defendants have not proven that Smith had actual knowledge of Wagenseil at the time of the Williamson prosecution. None of Defendants’ witnesses could recall actually disclosing Wagenseil to Smith. Smith testified that he had no knowledge of Wagenseil until after the ’563 patent issued. Although it seems unusual that during the time Smith and Whitson worked closely together, particularly in 1972, that the Wagenseil reference was never discussed, absent some reasonable evidence to the contrary the Court is compelled to conclude that Smith had no actual knowledge of Wagenseil prior to the patent issuing. Actual knowledge, however, is not the only basis for satisfying the knowledge requirement. The Federal Circuit has indicated that if a person has cultivated ignorance of a reference to avoid actual knowledge that too may be a basis for finding knowledge. FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n. 6 (Fed.Cir.1987). The Court finds that when Smith was informed of the German opposition citation to several literature references in 1975, he was put on notice that prior art might exist which had not been cited to the U.S. PTO. At that time, Smith was aware that only patents had been cited as prior art in the United States. It is reasonable to infer that the fact that literature references were cited as relevant prior art in Germany should have put Smith on notice of the need to investigate further. Smith contends he did not cultivate ignorance, but rather attempted on more than one occasion to obtain information regarding relevant prior art from Whitson. At trial, Smith testified he questioned Whitson at least three times regarding the existence of any prior art. Tr., p. 477. Smith testified that Whitson always responded that no prior art existed. Tr., p. 514. Specifically, Smith testified about a telephone conversation where he questioned Whitson about prior art after Smith learned of the 1975 German opposition. Tr., p. 514. Smith testified that he learned of the opposition through a letter from Whitson indicating an opposition had been filed and that prior art had been cited. Stipulation 10.65; C-122. Whitson’s letter stated: The German patent application corresponding to Williamson has recently been accepted and published and has resulted in oppositions from six German companies, including A.E.G. and Siemens. No patents have been cited but a large number of literature references. Until I have got copies of all these references I cannot establish the strength of our case. If it should turn out that we have to abandon the German case it would be pointless to try to get claims of similar scope in the U.S.A. For the present I would like the interference to proceed as slowly as possible, thereby minimizing expense. Stipulation 10.65; C-122. According to Smith, at that time no literature references were cited in the United States System 24 application, and the only prior art cited consisted of other patents. Tr., p. 513. The following colloquy took place during trial: Q. Mr. Smith, at that stage you did nothing to find out what those literature references were, did you? A. Yes, I did. I have had an opportunity to review some of the documents which are in your possession, and I believe I testified that I recalled a telephone conversation with Mr. Whitson, which is verified by subsequent correspondence—I can’t recall the document numbers—but in any event it was a late August 1975 letter to Mr. Blodgett, who was counsel for Cincinnati Milacron in the interference proceedings, in which I referred to the German opposition, in which there were seven opponents, six West German and one East German, which is not the information in that letter. And I have seen documents that have been produced by Molins which show that Mr. Whitson wasn’t aware of the East German opposition, or at least one of the oppositions. So I am confident that I learned that through this telephone conversation, and it was at that time that I asked questions about this prior art, and as I have testified before, in each instance, he informed me that there was no prior art of consequence, and I think this is verified by the fact, because there is a notation in one of those letters identifying a Lemelson patent that was already of record I believe, and Wagenseil, which he already knew about. Q. That Blodgett letter you referred to, Mr. Smith, in fact when that letter was presented to you at your deposition that is when you conceded that you must have known about the- German oppositions? A. I don’t recall which letter it was. Q. It is one letter which you wrote, isn’t it? A. Yes. Q. And it was a letter which has never been produced from your files? A. No, but it has been produced, I believe, if I am not mistaken—there are four documents in my files referring to this German opposition, and I don’t recall which ones they are. There are two telexes and two letters. Tr., pp. 513-516. The Court finds that Smith’s highly specific testimony regarding a telephone conversation with Whitson at the time of the German opposition lacks credibility. This finding is partly based on the fact that until presented with a document during a 1988 deposition proving Smith’s knowledge of the German opposition in 1975, Smith denied knowing of the opposition until after the ’563 patent had issued. Smith Deposition, Vol. 1, pp. 121-122; Vol. 3, pp. 21-22. Smith Deposition, Vol. 5, pp. 87 and 92; Vol. 6, p. 89; Vol. 8, pp. 35-36; Vol. 9, pp. 69-70, 97; Vol. 12, pp. 175-176; Vol. 15,.pp. 125-126. Smith Deposition, Vol. 16, p. 5; Tr., p. 511. In light of Smith’s inability to recall knowledge of the German opposition at all in 1988, and inability to recall receiving a letter until presented with the letter in 1990, the Court finds it highly unlikely that Smith would now be able to recall, with specificity, a telephone conversation sixteen years earlier relating to the materiality of prior art cited in the German opposition. Defendants also allege that Smith cultivated ignorance when he failed to inquire about prior art after learning that the German application had been abandoned. Many times the abandonment of an application normally does not indicate that material prior art existed. But, in this case Whitson wrote Smith a letter, dated June 6, 1975, informing Smith of the interference, and advising him that the defeat of the German application would adversely affect claims of similar scope in the United States. These warnings by Whitson to Smith must be examined in light of the circumstances at the time. Smith and Whitson had a long standing working relationship during which time Smith had become familial' with Whit-son’s practices and abilities. Although the Court does not find that Smith inquired as to the materiality of these references, the Court is persuaded that it would have been reasonable, under all the circumstances, for Whit-son to come forward with any material prior art references. Thus, although there were warnings that perhaps should have alerted Smith that references existed that were material, the Court concludes these were insufficient to show, by clear and convincing evidence, that Smith knew of or cultivated ignorance regarding the existence of Wagenseil. Absent actual knowledge or cultivated ignorance of Wagenseil, Smith was not under any duty to disclose Wagenseil to the U.S. PTO. Thus, the Court concludes that the Defendants failed to prove by clear and convincing evidence that Smith had knowledge of the Wagenseil publication or that a duty to inquire on Smith’s part arose with respect to the Williamson prosecution. (2) Failure to Disclose Wagenseil During the Re-examination Defendants argue that Smith’s failure to disclose Wagenseil during the Reexamination of the ’563 patent constituted inequitable conduct. On this issue, the Court finds that Smith had knowledge of Wagenseil, had knowledge of its high materiality, and intentionally deceived the U.S. PTO in failing to disclose Wagenseil to the U.S. PTO. Wagenseil was originally cited to the U.S. PTO during the re-examination of the ’563 patent. Notably, it was not Smith who first disclosed Wagenseil; rather it was first cited in Cross & Trecker’s reply brief to show the common practice of palletizing workpieces. Tr., p. 619. When Wagenseil was cited, it was cited along with 80 or 90 other references. Tr., p. 601. Smith made no efforts to highlight Wagenseil, and its potential materiality, nor did Smith inform the U.S. PTO of Whitson’s early knowledge of and reliance on Wagenseil in other countries. Tr., pp. 619-620. Based on Smith’s knowledge of Wagenseil, and of Wagenseil’s materiality in the foreign prosecutions, Smith owed a duty to bring Wagenseil to the attention of the re-examination examiner. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F.Supp. 948, 965 (S.D.Fla.1972), aff'd., 479 F.2d 1328 (5th Cir.), cert. denied, 414 U.S. 874, 94 S.Ct. 66, 38 L.Ed.2d 115 (1973). The Court finds that Smith acted intentionally because Wagenseil was initially withheld and later disclosed with a large number of other allegedly prior art references. Failing to highlight the Wagenseil reference in light of Smith’s knowledge regarding Whit-son’s actions in the foreign prosecutions, violated the duty of candor owed to the U.S. PTO. Penn Yan Boats, Inc., 359 F.Supp. at 964-965. c. Hirsh’s Intent to Deceive the U.S. PTO Defendants argue that Hirsh concealed material references from the U.S. PTO during the 1980s. Defendants assert that Hirsh did not adequately disclose Wagenseil or Whitson’s admissions regarding Wagenseil to the U.S. PTO. In addition, Defendants argue that Smith and Hirsh concealed Wagenseil and its high degree of materiality when they buried it in a large stack of documents submitted to the U.S. PTO. Finally, Defendants argue that Hirsh’s destruction of documents material to this litigation evidences his attempt to conceal information from the U.S. PTO. At trial, Hirsh admitted that he was aware of the Wagenseil article. He also admitted that he owed a duty to the U.S. PTO to extract from the foreign prosecution files all relevant prior art and provide references to the re-examination examiner. Hirsh further admitted that he possessed the ability to understand foreign languages sufficiently to extract and evaluate the prior art references. Due to his prior involvement in other United States patent litigation, Hirsh is aware of the American discovery process. Tr., pp. 233-235. Hirsh has been aware for several years of the need to preserve relevant documents and the impropriety of destroying relevant documents when litigation in the United States is contemplated. Tr., p. 235. Upon issuance of the ’563 patent in January, 1983, Hirsh undertook a review of the prosecution files from the corresponding foreign cases, all of which Molins had abandoned by 1976. Tr., pp. 237-238. The foreign files were reviewed to compare the claim coverage in foreign cases with that permitted to issue in the ’563 patent. Tr., pp. 237-238. Hirsh reviewed the German, Dutch and Japanese cases and became aware of a number of prior art references, including Wagenseil. Tr., pp. 237-238, 270-271. Hirsh notified Smith of his discovery and brought the information to the attention of E.F. McKie (“McKie”), a Washington, D.C. patent attorney. Tr., pp. 238-240; C-92. Hirsh and Smith were concerned about the validity and enforceability of the ’563 patent given that the prior art reference appearing in the foreign cases had never been cited in the United States. Tr., pp. 270-271. McKie requested information regarding the prosecution histories of the foreign applications where Wagenseil had been considered. Tr., pp. 238-239. Hirsh then sent McKie what he considered to be the relevant portions of those files. Tr., pp. 271-272; K-402. It was Hirsh’s responsibility to extract relevant documents from all of the foreign prosecution files, yet he knew no Japanese or Dutch and knew just a “little bit of German.” Tr., pp. 330-333. Following receipt of these extractions, McKie requested that Hirsh forward any documents from the foreign files showing Whitson’s knowledge of Wagenseil. Tr., pp. 240. In July of 1984, Hirsh, or someone under Hirsh’s direct supervision, complied with McKie’s request by sending additional extracts from all foreign files. Stipulation 10.98; Tr., pp. 241-242, 253, 271-272; and K-401. Again, it was Hirsh who decided what documents were relevant to the issue and thus would be extracted. Tr., p. 275. The documents provided showed the abandonment of the Austrian, Czechoslovakian, Dutch, Canadian, Russian, Japanese and British Batch applications. Tr., pp. 241-248; K-344; K-345; K-346, K-347; K-405; K-406; and K-407. During the review process, all of the prior art documents were removed from the foreign prosecution files, even though only portions were sent to McKie. Tr., pp. 248, 241-242. As a result of reviewing the files, Hirsh saw Whitson’s comments, actions, beliefs, and knowledge regarding Wagenseil. Tr., p. 302. Hirsh knew that Whitson had abandoned foreign Batch Process applications and that Whitson had brought Wagenseil to the attention of numerous patent offices, except the United States. Tr., p. 295; K-401; K-402. Hirsh also knew that Wagenseil had been used in some foreign applications as a starting reference. Tr., p. 295. Further, Hirsh knew that Whitson had amended System 24 claims in foreign offices due to the disclosures of Wagenseil. Tr., pp. 270-274, 295-296. Thus, Hirsh knew that Whitson was aware of Wagenseil, accounted for it, amended claims because of it, and used the reverse movement feature to distinguish the System 24 invention over it. Tr., p. 296, 300. Accordingly, the Court concludes that Hirsh knew of Whitson’s belief regarding the materiality of the Wagenseil reference, and the fact that it had not been disclosed to the U.S. PTO; yet Hirsh took no action to disclose Wagenseil nor Whitson’s prior knowledge of the reference. Tr., pp. 301, 1049. Given the totality of circumstances, the Court concludes that Hirsh intentionally withheld Wagenseil from the PTO. When Hirsh did disclose