Full opinion text
MEMORANDUM DECISION AND ORDER WILLIAM C. LEE, District Judge. This matter is before the court for a decision on the merits following a bench trial. On August 22,1988 Golden Valley Microwave Foods, Inc. (Golden Valley) commenced an action against Weaver Popcorn Company, Inc. (Weaver) for patent infringement. Weaver filed its answer, affirmative defenses, and counterclaims on November 2, 1988. Count I of Weaver’s counterclaim alleged, inter alia, fraud and/or inequitable conduct on the part of Golden Valley before the United States Patent and Trademark Office (the Patent Office). On August 9, 1989 the court granted the motion of Beatrice/Hunt Wesson, Inc. (Hunt-Wesson) and American Packaging Corp. (American Packaging) to intervene as defendants in this action. On November 21, 1989 Golden Valley filed an amended complaint against all three defendants for the purpose of adding a newly issued patent to its infringement charges against the defendants. On April 19, 1991 a stipulated order was entered in which Golden Valley’s amended complaint was dismissed with respect to Hunt-Wesson. By order entered July 9, 1991, this court granted the motion of defendant Weaver to bifurcate the case and try separately the issue of whether Golden Valley committed inequitable conduct before the Patent Office in the process of obtaining patents 4,735,513 (’513) and/or 4,878,765 (’765), the two patents in suit in this litigation. The trial of this issue commenced on January 21, 1992, with the defendants proceeding to present their case-in-chief first, and the court heard final arguments on February 5, 1992. The final post-trial filings were submitted to the court on May 15, 1992. The following Findings of Fact and Conclusions of Law are entered pursuant to Federal Rule of Civil Procedure 52(a), after having carefully studied the record and after having determined the credibility of the witnesses. Summary of Defendants’ Claims Defendants Weaver Popcorn Company, Inc. and American Packaging Corporation have claimed that Golden Valley committed several acts of inequitable conduct. With respect to the ’513 patent, defendants claim: (a) that Golden Valley failed to disclose a materially-related prior patent application, 612,723 (’723 application), which had been twice rejected by the Patent Office and which contained materially inconsistent representations and important prior art that was withheld during the prosecution of the ’513 and ’765 patents; (b) that Golden Valley filed a materially misleading affidavit in August, 1987 which caused the ’513 patent to issue; (c) that Golden Valley failed to disclose its litigation with James River Corporation; and (d) that Golden Valley failed to disclose material prior art. With respect to the second patent in suit, the ’765 patent, defendants claim that Golden Valley: (a) continued to conceal the ’723 application and its prosecution history; (b) failed to correct the August, 1987 affidavit and compounded the material misrepresentations in that affidavit; and (c) withheld material prior art. Findings of Fact I. Early Developments The inventors listed in the ’513 and ’765 patents, Mr. James Watkins, Mr. David An-dreas and Mr. David Cox, are or were employees of Golden Valley who, prior to their employment by Golden Valley, were employed by the Pillsbury Company where they were involved with the design, development and/or marketing of microwave popcorn. Lawrence Brandberg, who was involved with preparing various Affidavits and Declarations regarding “comparative testing” in the ’513 and ’765 applications, was also a former employee of the Pillsbury Company as was James Harmon, Golden Valley’s independent patent counsel. At Pillsbury, Mr. Harmon was an in-house patent counsel and worked with Messrs. Watkins, Andreas, Cox and Brandberg. Plaintiff’s expert witness, Charles Turpin, who is presently employed by Golden Valley, was also a former employee of the Pillsbury Company. In the early to mid 1970’s the Pillsbury Company introduced its microwave popcorn bag in which an inner ply of greaseproof paper was adhesively laminated (bonded) to an outer ply of kraft paper without any microwave interactive material. Golden Valley sold ready-to-pop popcorn in this bag during the 1970’s and early 1980’s and it enjoyed some commercial success. The construction of Golden Valley’s ready-to-pop popcorn bag corresponded to the structure disclosed in the Brandberg et al. 3,973,045 (’045) patent, of which Mr. Andreas was a co-inventor,. For example, under the heading “Summary of the Invention” the Brandberg ’045 patent states: The package includes a flexible and expandable body such as a gussetted bag formed from two plys of paper. The package has no openings or vents of any kind so that steam given off while heating will expand the bag. Further, under the heading “Preferred Embodiments” the Brandberg ’045 patent states: The package preferably consists of two layers of flexible sheet material. One preferred outer sheet material is bleached kraft paper. A suitable liner 24 consists of glasine paper. Col. 2, 1. 29-32. All of the former Pillsbury employees who later associated with Golden Valley (Messrs. Harmon, Andreas, Watkins, Cox, Brandberg, and Turpin) were thoroughly familiar with the Pillsbury nonsusceptor popcorn bag, and Messrs. Andreas, Harmon, and Brandberg were familiar with experimentation Pillsbury had conducted in the area of susceptor technology (the microwave interactive material that reacts in the presence of microwave energy to absorb and transfer heat). On March 22, 1982 Mr. Andreas had obtained copies of the Borek 4,219,573 (’573) and Winters 4,283,427 (’427) patents for “informational purposes” from Mr. Borek,. The Abstract of the Borek ’573 patent describes the invention as follows: A package for popping popcorn in a microwave oven is provided. The package includes an expandable container adapted to contain popcorn, oil and salt which when exposed to microwave radiation, the oil and popcorn will become heated and the popcorn will pop (steam produced by the heating will expand the container to accommodate the popped popcorn). The container has one wall with a thermal insulating pad associated therewith which improves the popping performance of the popcorn by preventing heat loss from the package to the oven floor. The Abstract of the Winters ’427 patent describes the invention as follows: A microwave heating package, and a method of microwave heating. Both the package and the method employ a lossy chemical susceptor which upon continued exposure to microwave radiation becomes substantially microwave transparent, thus building into the system a unique maximum temperature shut off at the point at which the chemical susceptor becomes microwave transparent. The chemical sus-ceptor is comprised of a combination of a solute, such as inorganic salts of Group IA and IIA, and a polar solvent for the solute, such as water. The chemical susceptor may be composed of a hydrated form of the inorganic salts. The package, method and chemical susceptor may be used for microwave heating of many products, including among others, food products. Golden Valley’s employees became familiar with Finsbury’s commercial pizza product, Totino’s Pizza, in approximately July of 1982. Totino’s Pizza was sold in a package in which susceptor material (which acts as a heat conductor) was adhesively attached to a sheet of paper and/or paperboard material for bonding to the top of a flat pizza tray insert. The function of the susceptor was to concentrate heat under the pizza and thereby prevent the pizza from becoming soggy when cooked in a microwave oven. One version of the Pillsbury pizza product comprised a tray in which the susceptor material was adhesively bonded directly to paperboard. Another version existed at the same time in which the susceptor material was first bonded to a paper backing, which was, in turn, bonded to a paperboard tray. Golden Valley immediately contacted James River Corporation (James River), the manufacturer of the package for Totino’s Pizza, to discuss obtaining James River’s “heater pad” (known as the Qwik Crisp technology). Golden Valley was informed that the Qwik Crisp technology would not be made available to them at that time. Later, in October of 1983, Golden Valley became aware of the Wyandot commercial popcorn container in which a susceptor material similar to the Pillsbury pizza susceptor was bonded to a preliminary piece of paper which, in turn, was bonded to the inside of the paperboard package. This susceptor was directly positioned under a charge of popcorn and oil. The Wyandot popcorn container was sold commercially and therefore Golden Valley assumed that the container was “commercially acceptable” . After seeing the Wyandot container on the market, Golden Valley again contacted James River and inquired about the availability of the Qwik Crisp product. Golden Valley finally obtained the Qwik Crisp susceptor-paper heater roll stock product from James River in March or April of 1984, enabling Golden Valley to experiment with the placement of such susceptor-paper constructions in various portions of their conventional popcorn bag. Golden Valley conducted tests on the placement of James River’s Qwik Crisp heater pad product on the inside of its popcorn bag, on the outside of its popcorn bag, and between the two plies of its popcorn bag. In October of 1984, Golden Valley publicly introduced its ACT II bag in which susceptor material was bonded between the plies of its conventional popcorn bag. II. The ’723 Application On May 21, 1984, Attorney Harmon filed U.S. Patent Application Serial No. 612,723 (’723 application). The ’723 application was Golden Valley’s first patent application filed with respect to the utilization of a susceptor patch in a food package. This application listed Mr. Watkins as the sole inventor. The ’723 application was entitled “Popcorn Package” and its stated field of invention was “packaged foods and more particularly a package for popping com in a microwave oven.” The preferred embodiment of the invention shown in the ’723 application is, in part, as follows: The embodiment of Figures 1 and 2 comprises a package 10 composed of a bag 12 formed from flexible sheet material such as paper.... ****** Positioned adjacent to the panel 26 which serves as the lower or bottom panel during the heating operation is a microwave pickup sheet 27. Sheet 27 is flexible and foldable and is composed of a plastic film having a microwave receptive metallic material 29 thereon (Figure 11). The microwave receptive material 29 is characterized by becoming hot when exposed to microwave energy. The sheet 27 and metallic layer 29 may, if desired, be bonded to a paper backing 31 which serves as a support and the entire laminate composed of the film, the metallic layer 29 and the backing 31 is secured preferably by adhesive bonding to the lower wall panel 26 of the bag as shown in Figures 2, 7, 8 and 9. The inductive sheet 27-29 is present at least in the portion of the bag where the charge of fat and corn 32 is located and is in heat transfer relationship therewith. The sheet 27-29 is bonded to the lower wall 26 of the bag and is supported thereby to remain in place and to substantially line the pool of hot fat in which the corn is suspended during the cooking operation. ****** The metal coating 29 is usually very thin, transparent or semitransparent but partially -reflective of light. It can be formed, for example, by vacuum metalizing a plastic film such as a polyester film. Various metals can be used such as aluminum, copper, gold and various ferrous materials. ****** While the inductive sheet has been shown laminated to a paper backing 31 in Figure 11, it should be understood that the paper backing is optional, provided, however, the plastic sheet 27 is in some way supported dimensionally, for example, by bonding it directly to the wall 26 of the bag. ****** As shown best in Figures 3 and 4, a package 40 is provided comprising a bag formed from flexible sheet materials such as paper preferably with a greaseproof paper liner of suitable known construction .... ****** Many variations of the invention within the scope of the appended claims will be apparent to those skilled in the art. For example, the term “metallic material” may include metal compounds such as iron oxide, tin oxide, etc. and the pickup sheet can be loose in the bag and held in by the weight of the product or bonded between plies or to the outside of the bag. Mr. Harmon acknowledged that, in view of the ’723 specification and claims, it would be apparent to one of ordinary skill to place the susceptor between the plies of a conventional popcorn bag. The ’723 application disclosed that Golden Valley had obtained the susceptor-backing sheet product from James River. The specific susceptor-paper laminate was stated to be “composed of metallized plastic sheet 0.5 mil bonded to paper backing, product from James River Corp. of Kalamazoo, Mich.” In the formation of Golden Valley’s popcorn bag, James River’s susceptor was “bonded to the inside of the lower surface of the bag.” During the prosecution of the ’723 application, Mr. Harmon argued that the invention that was disclosed, claimed, and tested therein, in both bonded and stripped susceptor embodiments, achieved increased pop volume without charring or shrinkage of the susceptor and with little or no burning, scorching, or shriveling of that inductive layer. Mr. Harmon carefully disclosed, in the ’723 application, the prior art ’045 Brandberg patent as being representative of the prior art. The ’723 application was assigned to and examined by Patent Examiner Steven L. Weinstein. Examiner Weinstein was knowledgeable concerning susceptor and bag technology, having examined a number of patents in this area. (E.g. Watkins U.S. Pat. No. 4,585,826; Watkins U.S. Pat. No. 4,450,-180; McHam U.S. Pat. No. 4,292,332; Borek U.S. Pat. No. 4,219,573; Brandberg U.S. Pat. No. 3,973,045). Examiner Weinstein rejected each and every one of the claims of the ’723 application in an Office Action dated November 14, 1984. Examiner Weinstein made detailed findings as to why the invention claimed in the ’723 application was not patentable, and he specifically rejected the patent application because the invention was obvious under 35 U.S.C. § 103. Examiner Weinstein’s rejection was based upon obviousness in light of a series of patents, including the McHam 4,292,332 patent, the Brand-berg ’045 patent, the Teich et al 4,156,806 patent, the Brastad et al 4,230,924 patent, the Brastad et al 4,267,420 patent, and the Bowen et al 4,158,760 patent. Examiner Weinstein also rejected all claims in the ’723 application as being obvious in view of Brastad, Teich, and Bowen, supra , and in view of Golden Valley’s own patent issued to Mr. Watkins, U.S. Pat. No. 4,450,180. The Watkins ’180 patent was titled “Package for Increasing the Volumetric Yield of Microwave Cooked Popcorn” and the Summary of the Invention is as follows: Briefly the invention provides a package and method for popping corn within a dual purpose shipping and popping container, e.g. a bag, with increased volumetric yields of popped corn. One aspect of the invention is the provision of a package formed from flexible sheet material of collateral tubular configuration, that is to say comprising two parallel longitudinally extending sections communicating together at the center of the package. Substantially all of the charge of popcorn and fat is placed within one tubular section and the other is maintained free of popcorn. The package filled in this manner is positioned with the charge lowermost in the microwave oven. During popping the upper tubular section is free to expand as it fills with popcorn while the lower tubular section continues to hold unpopped corn and liquefied fat. Another aspect of the invention is the provision of a package as just described wherein one of the tubular bag sections is of a smaller cross-sectional size than the other. The change [sic] of corn and fat is placed in the tubular section of the smallest diameter. In one practical embodiment of the invention the package comprises a gussetted bag including a pair of face panels and interconnecting centrally projecting side gussets thereby defining the two tubular sections. The first face panel is of greater width than the second face panel. Typically the area of the smaller face panel is about 18% to 50% less than the area of the larger face panel. The invention also discloses automated methods for filling packages in accordance with the invention in such a way as to properly locate the charge. It was Examiner Weinstein’s position that the addition of a microwave susceptor to the flexible bag described in the Watkins ’180 patent was obvious. On February 18, 1985 Mr. Harmon, on behalf of the applicants and Golden Valley, conceded the applicability of Examiner Wein-stein’s references and discussion of prior patents, but sought to amend the application. Mr. Harmon withdrew independent claims 1 and 13, and amended the application to include new independent claim 14. Claim 14 states, in pertinent part, that the invention consists of: a flexible and foldable microwave concentrating inductive pickup sheet [susceptor] only on the bottom of the compartment containing the charge, said inductive sheet being composed of a base material in sheet form having a flexible microwave inductor material thereon characterized by becoming hot to effect concentrated heating of a localized portion of the charge when exposed to microwave energy, the pickup sheet being substantially flat and being bonded to said paper sheet for dimensional support to prevent shriveling and scorching during localized heating of a food.... [emphasis supplied]. The thrust of this new claim 14 was to locate the susceptor at the bottom of the bag. On May 31, 1985, Examiner. Weinstein rejected the new claim 14, as well as claims 2-12, in a lengthy, detailed series of findings. Examiner Weinstein again concluded that prior art, particularly prior patents issued to McHam, to Brandberg, to Colman, to Teich, to Brastad (two patents), to Bowen, and to Turpin, made the claimed invention “obvious” to one of ordinary skill in the art. Examiner Weinstein found, for example, that: the Brastad references do teach bonding the energy absorber directly to the remainder of the package whereas [sic]. Turpin et al teaches a flexible support structure for the microwave energy absorbing material.... Examiner Weinstein carefully considered each of Golden Valley’s arguments in favor of patent protection, and found them to be unconvincing and without support. This rejection was made final and the final rejection was mailed to Golden Valley on June 10, 1985. Upon receipt of the second rejection of the ’723 application, Mr. Harmon abandoned further prosecution of the application . On January 17,1986 the Patent Office confirmed abandonment of the ’723 application as a result of the applicants’ failure to respond to the final Office Action rejecting that application . The second and final Office Action granted a three month shortened statutory period in which Mr. Harmon could have responded after the mailing date of June 10, 1985. Thus, the ’723 application became formally abandoned on September 11, 1985, even though an appropriate response to the Office Action could have obtained extensions of up to three months beyond that date, January 11, 1986. Applications on the subject matter of United States application Serial No. 612,723 were filed in Japan and Canada with the application being published in Japan on December II,1985, and issued as a patent in Canada on March 1, 1988 More than one year after the ’723 application had been abandoned and could not issue, Mr. Harmon deceptively represented to the Canadian examiner that, with respect to the ’723 U.S. application, “no patent has yet issued.” III. Concealment of the ’723 Application Golden Valley filed its application for the ’513 patent on June 3,1985. This patent, titled “Flexible Packaging Sheets”, issued on April 5, 1988 and lists Messrs. Watkins, An-dreas, and Cox as the inventors. For several months, from June 1985 to January 1986, the ’723 and ’513 applications were co-pending. The Abstract of the ’513 patent describes the invention as follows: A flexible sheet structure is described which comprises a base sheet having a microwave coupling layer, e.g. electrodepo-sited aluminum as an island covering a selected area of the sheet. The uncoated portions will not be heated and will not be damaged by microwave energy. The selectively located microwave coupling covered area transfers absorbed heat to a product by thermal conduction. In one form of the invention a flexible fibrous backing sheet such as paper is bonded to the base sheet to provide dimensional stability and prevent warping, shriveling, melting or other damage during microwave heating. The ’513 patent contains 23 claims. Several of the more pertinent claims are as follows: 1. A flexible sheet structure comprising a base sheet composed of microwave transparent flexible sheet material, a thin layer microwave coupling material as an island which becomes hot when exposed to microwave energy, said layer being selectively positioned on a portion of the base sheet to achieve heating of a product that is to be heated through conductive heating from the layer of microwave coupling material in the selected area where the coupling layer is located and other portions of the base sheet remaining unheated when exposed to microwave energy. 2. The flexible sheet structure of claim 1 wherein the base sheet is a plastic resinous film and the microwave coupling layer is a semiconductive metallic film applied to one surface of the base sheet. 3. The flexible sheet structure of claim 1 wherein the unheated portions of the base sheet are adapted to be folded, tucked and wrapped around said product and upon exposure to microwave energy the sheet will be free from damage due to shrinking, shriveling, warping or melting whether loose and unsupported or part of a seal. 7. The flexible sheet structure of claim 1 wherein a layer of paper is bonded to both the top and bottom surface of said base sheet to provide dimensional stability and thereby assist in preserving the integrity, shape and dimensions of the base sheet. 8. A laminate suited for wrapping, packaging and shipping articles comprising a backing composed of a flexible sheet of dimensionally stable fibrous organic non-thermoplastic material transparent to microwave energy and a base sheet bonded thereto of dimensionally unstable plastic film and a layer of microwave coupling material which becomes hot in a microwave oven when exposed to microwave energy and said backing sheet preserving the integrity, shape and dimensions of the base sheet and the coupling layer. 14. The laminate of claim 8 wherein said backing sheet comprises a sheet of stiff paper and said laminate is folded by the application of pressure to the form of a self-supporting dish. Even though the ’513 application was substantially related to the ’723 application, Golden Valley disguised this relationship. Mr. Harmon was aware that Examiner Wein-stein was a primary examiner in the art unit that examined microwave packaging for cooking, unlike Examiner Bell who examined the ’513 patent (as well as the later ’765 patent), who was in the art unit that examined sheet material laminates. Thus, rather than titling the ’513 application with the name “Popcorn Package” (and notwithstanding that the goal of the invention was to satisfactorily pop microwave popcorn), Mr. Harmon and the inventors titled the ’513 application “Flexible Packaging Sheets” which led to its being assigned to Examiner Bell. Clearly, however, the ’513 application, like the ’723 application, involved the incorporation of a susceptor into a microwave package for cooking food, particularly popcorn. However, the claims, as originally filed in the ’513 application, were framed such as to not claim a microwave cooking package, a popcorn package, or a microwave cooking article, but rather to claim a “flexible sheet structure” and a “laminate suited for wrapping, packaging and shipping articles.” Neither the abstract, the title, nor the claims in the ’513 application ever use the terms “food” or “cooking”, although the “Summary of the Invention” does disclose that the invention is suitable for heating food. After the application was directed to Examiner Bell, and examined, the very next claim added to the application, Claim 15, describes, for the first time, the application of the invention to the packaging and cooking of food products. Moreover, new terms or definitions for identical structures in the ’723 application were incorporated into the ’513 application. For example, in the ’723 application, the sus-ceptor material was termed a flexible folda-ble inductive microwave pickup sheet comprising, in the preferred embodiment, a vacuum metallized polyester film; while in the ’513 application, the susceptor was referred to as a base sheet with microwave coupling material which, in the preferred embodiment, comprised a vacuum metallized polyester film. Similar alterations were made in the name of the stabilizing paper, which was described as a “flexible sheet material” in the ’723 application, but was called a “dimensionally stable, flexible material transparent to microwaves” in the ’513 application . Also, the ’513 application specified that the “flexible sheet material” (stabilizing sheet) was preferably a cellulosic material, such as “paper, cardboard, paperboard or synthetic sheet.” Golden Valley, and particularly Mr. Harmon, categorized all such cellulosic materials including paper, cardboard and paperboard as comprising a “flexible ” sheet material. Claim 14 of the ’513 patent itself described the flexible sheet material as a stiff self-supporting paper dish, suggesting that the material used need not be as flexible as plain paper, but may vary depending on the particular application of the invention. Further, with regard to the similarities between the ’723 application and the ’513 application, Figure 5 of the ’513 patent shows essentially what Figure 1 of the abandoned ’723 application shows: a popcorn bag. Moreover, Claim 14 of the abandoned ’723 application corresponds almost identically to the language of Claim 11 of the ’513 patent in that both claims call for (a) a structure of a bag; (b) formed from flexible sheet material transparent to microwave energy; (c) a susceptor formed by a base sheet with a microwave inductive material thereon; (d) in which the susceptor becomes hot when exposed to microwave energy; (e) the sus-ceptor being bonded to the paper sheet; and (f) the bonding of the susceptor to the paper sheet supporting or stabilizing the susceptor. In sum, both applications deal with susceptors; both applications include a sus-ceptor comprising a flexible and foldable inductive microwave pickup sheet; the susceptor in each application consists of metallized aluminum on polyester; the susceptor in each application is located in the center third of the bag, positioned under the food (popcorn and oil) to be heated; both applications rely on bonding the susceptor to a paper backing; each application discloses a laminate formed by the susceptor and the backing paper; each laminate consists of a flexible sheet material to which the susceptor is bonded; and both applications disclose that the susceptor material may be bonded between the plies of the bag or just to one ply of the bag. Clearly, virtually every single element of what Golden Valley argues was the “far different” subject matter of the ’513 patent was described and claimed (and rejected by Examiner Weinstein) during the prosecution of the ’723 application. The disclosures in the ’723 application, and the manner in which Examiner Weinstein addressed the prior art to those disclosures, were thus clearly material to Examiner Bell. In spite of the striking similarities between the two applications, Golden Valley never advised Examiner Bell of the existence of the co-pending ’723 application, the circumstances surrounding its rejection, the similarities of subject matter and identity of claimed subject matter, or of the identity of Primary Examiner Steven Weinstein who had examined this closely related application. The Patent Office expressly disclosed the basis for the rejection of the ’723 application to attorney Harmon, before, during, and after Harmon’s preparation, filing and prosecution of the ’513 application. Thus Harmon knew that the subject matter of the invention suffered from “obviousness” problems which should have been disclosed to Examiner Bell. In the ’513 application, as in the ’723 application, Mr. Harmon initially pursued patent protection over susceptor-paper laminates utilizing a single sheet of paper bonded or laminated to only one side of the susceptor. Each of the inventors signed the oath and declaration in the ’513 application averring that they had in fact invented the subject matter of Claim 8, (claiming a susceptor-to-paper laminate) and the other claims dependent thereon, even though they knew that they had not originated the idea of bonding a single sheet of paper to a susceptor. In fact, this concept was embodied in the early James River Qwik Crisp technology. As noted, Examiner Bell, who examined the ’513 application, and Examiner Wein-stein, who examined the ’723 application, work in different art units of the Patent Office. Examiner Weinstein works in the unit that examines applications for microwave food packaging technology, and Examiner Bell works in the unit that examines applications for laminates. Neither of the Examiners was aware th^t the other was examining the ’723 application and the application for the ’513 patent, respectively. Based on the evidence described in detail earlier, the court finds that Golden Valley affirmatively sought to steer the ’513 application away from Examiner Weinstein and his art unit. Neither Mr. Harmon, Mr. Watkins, nor or anyone else associated with Golden Valley, disclosed the ’723 application and its prosecution history to Examiner Bell during the prosecution of the ’513 patent (June 3, 1985 through April 5, 1988). The prosecution history of the ’723 application was withheld from production in the present litigation for nearly two years, on the basis that it responded to claims that were not asserted in the present action, such as Claims 8 through 14 of the ’513 patent. In May of 1990, Golden Valley produced, pursuant to this court’s order, a copy of the prosecution his.to-ry covering the ’723 application. This prosecution history revealed Golden Valley’s failed attempt to obtain patent protection on the concept of laminating a susceptor to at least one sheet of paper material to stabilize and support it. IV. Nondisclosure of Prior Art in the ’513 Application During the prosecution of the ’513 application Mr. Harmon did not inform Examiner Bell of the existence of Finsbury’s pizza package, Wyandot’s commercial popcorn package, James River’s Qwik Crisp technology, the Brandberg ’045 patent, the Winters ’427 patent, or the Borek ’573 patent. The Pillsbury pizza package, the Wyandot popcorn container, and the James River Qwik Crisp products would all have been important to a reasonable examiner in deciding whether to allow the ’513 patent since they were successfully commercialized structures, including one for popcorn (using a single-sided paper-to-susceptor laminate). All of these structures were known to Golden Valley as a result of its review of the prior art. Also, Golden Valley never disclosed to Examiner Bell that the inventors named therein did not invent the single-sided laminate or that Golden Valley had obtained such a laminate as a product from James River more than one year before the filing date of the ’513 application, and had seen such a laminate in the Pillsbury pizza tray and the Wyandot popcorn box. The inventors and attorney Harmon knew that Golden Valley had obtained and tested the laminate but they nevertheless held the single-sided laminate out as a new invention, worthy of patent protection. Prior to the issue date of the ’513 application Mr. Harmon was aware of the existence of the Brandberg ’045 reference (having prosecuted that application on behalf of Pillsbury employee Brandberg years earlier) and was familiar with the ’045 reference from the repeated disclosure and reliance by Examiner Weinstein during prosecution of the ’723 application. Before and/or during the prosecution of the ’513 application, Mr. Harmon was likewise familiar with the Wyandot container, Pillsbury pizza laminate, James River Qwik Crisp product, the Bohrer ’010 and ’882 references, the Brastad ’420 and ’924 references, the Seiferth ’005 reference, and the Borek ’573 reference, which was likewise cited during the ’723 prosecution history. Mr. Harmon was also independently aware of the Winters ’427 reference. The evidence presented to this court clearly indicates that Mr. Harmon was aware of the prior art, its significance and its materiality when he began the prosecution of the ’513 patent. Mr. Harmon waited nearly 15 months after filing the initial ’513 application (June 3, 1985) to disclose any of the relevant, material prior art of which he was aware — notwithstanding the fact that during 1984 and 1985 he had been repeatedly apprised of the most relevant pri- or art with respect to a susceptor-to-paper laminate by Examiner Weinstein in the ’723 application, by the ’513 inventors, and through the James River-Golden Valley litigation . Claims 2, 4-10, and 12-14 were allowed by Examiner Bell on June 3, 1986, whereas Claims 1, 3, and 11 were rejected. On September 11, 1986, Mr. Harmon filed an amendment and a Prior Art Notice with respect to the ’513 patent. The amendment to the 1513 application added, for the first time, claims which described the paper-susceptor-paper laminate. For example, Claim 15 reads as follows: A flexible laminate including at least three layers suited for wrapping, packaging and shipping food articles that are to be heated in a microwave oven comprising a base sheet composed of microwave transparent flexible sheet material coated on at least one surface thereof with a layer of microwave interactive coupling material which becomes hot when exposed to microwave energy and being susceptible to melting, shrinking, warping and/or shriveling when exposed to microwave energy, said base sheet being positioned on a selected portion of the laminate to achieve heating of said food product through conduction of heat from the layer of microwave interactive coupling material to the food product in a selected area where the coupling material is located while other portions of the laminate remain unheated when exposed to microwave energy, and two layers of dimensionally stable flexible backing sheet material, one such backing sheet being bonded to each side of the base sheet to form a sandwich structure in which the base sheet is encapsulated and dimensionally stabilized by the enclosing flexible backing sheets on each side thereof, said backing sheets being composed of non-thermoplastic fibers that assist in preserving the integrity, dimensions and shape of the base sheet when the base sheet is exposed to microwave energy and heat being transferred from the base sheet through one of the dimensionally stable fibrous backing sheets to the food product by thermal conduction without disturbing the fibrous structure thereof. Nonetheless, Mr. Harmon accepted the allowance of Claims 2, 4-10 and 12-14 which cover the susceptor-to-paper laminate. In this Prior Art Notice Mr. Harmon listed 16 patents including the Bohrer ’010 patent, but did not cite the commercial Wyandot container, the commercial Pillsbury pizza tray, the Qwik Crisp technology, the Japanese published application corresponding to the ’723 application, or the Brandberg ’045 and Bo-rek ’573 patents which were cited in the ’723 application examination. Although Mr. Harmon identified the Bohrer ’010 patent by number and inventor’s name, he did not disclose that the Bohrer ’010 patent contained a “buried” reference to a gussetted, flexible paper popcorn bag having a susceptor bonded to its inner side. In fact, in the ’513 patent, Mr. Harmon had obtained patent protection over a bag such as the one described in the Bohrer ’010 patent. Mr. Harmon further represented that the Brastad ’924 and ’420 references both failed to disclose the use of stabilizing layers, notwithstanding his own knowledge from having read the Brastad references that they taught the option of “supporting” the flexible susceptor material by “more rigid dielectric material such as paperboard and the like”, and despite his being so informed by Examiner Weinstein during the prosecution of the ’723 application. At trial Mr. Harmon admitted to making those representations despite his knowledge of the disclosures of the Brastad references. In the specification of the invention disclosed in the ’513 patent, Mr. Harmon disclosed tests performed by the Golden Valley inventors using the Brastad invention to heat chicken patties and fish sticks. Mr. Harmon admitted at trial that the tests were performed using the Brastad susceptor material that did not have a paper or paperboard backing, even though Brastad had recommended that “supportive” paper backings or paperboard backings be utilized. The use of a supportive backing would have yielded better test results as there would have been less shriveling and disintegration of the heating material and there would have been more thorough heating and browning of the food . Moreover, in 1985 Golden Valley conducted tests utilizing the Brastad susceptor films with a supportive backing and the Brastad susceptor worked satisfactorily with only minor problems. However Golden Valley did not disclose these test results to Examiner Bell . After conducting his own search at the United States Patent Office, Examiner Bell only cited, as prior art, a radar-reflecting survivor vest fabric disclosed in the Eb-neth ’588 patent. Examiner Bell had no knowledge of any other prior art when he allowed the majority of the ’513 claims including Claim 8, which covered a susceptor-to-paper laminate, a structure that was repeatedly disclosed in the prior art. When Mr. Harmon attempted to distinguish the Canadian version of the Sei-ferth ’005 patent by claiming that the Sei-ferth patent failed to suggest the attachment of a sheet of paper on both sides of the susceptor, he knew that the claims that Examiner Bell had already allowed (Claim 8, etc.), covered a susceptor-to-paper laminate. Nevertheless, Mr. Harmon did not admit that he had received allowance of those claims, and did not discredit those claims, as he discredited identical claims in the Sei-ferth ’005 patent, in spite of the existence of the Pillsbury pizza product, the Wyandot commercial popcorn package, the Qwik Crisp technology, the two Brastad patents, and the Bohrer ’010 patent, all of which utilized a single-sided susceptor. On April 17, 1987, Golden Valley notified Examiner Bell of the Seiferth ’005 patent’s issuance. The ’005 patent issued on February 3, 1987 and is assigned to James River. This patent is titled “Food Receptacle for Microwave Cooking.” Claim 1 of the ’005 patent is as follows: A laminate for use in a disposable container adapted to heat the surface of a quantity of food when exposed to microwave energy, said laminate comprising (a) a continuous microwave interactive layer of elemental metal having a thickness which is sufficiently small to cause said microwave interactive layer, when subjected to microwave energy, to heat up to a temperature which is sufficient to heat the surface of food in heat transfer relationship therewith, (b) protective means for said microwave interactive layer, said protective means including a smooth surfaced plastic film having sufficient stability at high temperature that it will not degrade when the laminate is subjected to sufficient microwave energy to heat the surface of the quantity of food, and (c) support means for providing structural support for said interactive layer and said plastic film, said support means being formed of paper stock material having sufficient structural stability at the high temperature necessary for heating the surface of the quantity of food to maintain its physical shape; wherein said laminate is formed by the process including the successive steps of vacuum depositing said microwave interactive layer onto a smooth surface of said plastic film followed by the step of bonding directly said plastic film upon which said microwave interactive layer has been vacuum deposited to one side of said paper stock material in a manner to cause said plastic film and said microwave interactive layer to be held in bonded relationship with said support means to cause the surface of a quantity of food, when in heat transfer relationship therewith, to be heated when the laminate is subjected to microwave energy. Examiner Bell disallowed all of the Claims, 1-22 and 27, of the ’513 patent application in light of the Seiferth patent. When Mr. Harmon notified Examiner Bell of the Sei-ferth ’005 patent, but before the Examiner rejected the claims, he informed Examiner Bell of the existence of certain test results that he believed would overcome the Sei-ferth ’005 reference. Attorney Harmon claimed that the Seiferth ’005 structure was “unsuitable for important applications,” that all of the samples had failed the tests in that the samples always exhibited shriveling, disruption, and charring of the microwave interactive material. Golden Valley represented to Examiner Bell that Golden Valley had performed tests, which it was prepared to submit in affidavit form (if Examiner Bell so requested), to prove that its invention was superior to Sei-ferth’s invention, and that the invention Sei-ferth described was prone to “burning and perforation,” “disintegration” and “contamination of the food.” In preparing the affidavit, Mr. Harmon intended to prove that a susceptor bonded on each side to a sheet of paper was superior to a simple susceptor-to-paper laminate, as disclosed in the Sei-ferth ’005 patent. Incongruously, Harmon also asked for issuance of the ’513 claims that covered only susceptor-to-paper laminates (ie., claims 8-14). V. The Comparative Testing Re: The ’513 Application Examiner Bell, at Mr. Harmon’s request, invited Harmon to submit his test results together with an associated affidavit to show the results of the Golden Valley “invention” compared to the results of the Seiferth invention . Golden Valley has acknowledged the importance of these comparative tests and the resulting affidavit as being crucial to the issuance of the ’513 patent. As a result of citing the Seiferth ’005 reference, Golden Valley would not have received the ’513 patent in the absence of the affidavit and test materials In conducting the comparative tests, Golden Valley opted to compare samples of their own machine-manufactured product, directly off their production line, against hand-made samples of what was termed the Prior Art Test Material. Mr. Andreas admitted that Golden Valley conducted an earlier test (referred to as the “first test”) in March of 1987, apparently comparing hand-bonded single-sided to hand-bonded double-sided suscep-tors . However, no data was retained from this “first test.” No explanation was provided for the lack of retention of such “first test” data, and the inference can therefore be made that such results did not satisfactorily support Golden Valley’s contentions at the time. Golden Valley has acknowledged the importance of the following factors in the construction of a susceptor bonded to a stabilizing sheet of paper, which factors are crucial to the capability of the susceptor to withstand scorching, shriveling, and burning: A. The particular adhesive that is utilized; B. The amount of adhesive used; G. The kind of paper to which the susceptor is bonded (e.g., kraft paper as opposed to greaseproof paper); D. The manner in which the adhesive bond between the susceptor and paper is cured or dried; and E. The pressure to which the susceptor to paper laminate is exposed upon lamination. Nevertheless, the comparative tests that Golden Valley conducted compared “noncom-parable” laminates because the handmade Prior Art Test Materials were made with an adhesive two and one-half times more likely to fail, utilized little or no laminating pressure, were not dried in an oven, and utilized different papers for bonding as well as different amounts of adhesive. Reference to PX-362, an actual sample of the handmade prior art test bag, shows the susceptor poorly attached to the paper ply of the bag, with no bonding around the periphery of the sus-ceptor and little bonding elsewhere as evidenced by the lack of flber-tear. In reporting the test results, Mr. Harmon failed to disclose to Examiner Bell the following facts: (1) that the amounts of glue between the two categories of test samples were different; (2) that the actual glue utilized on the Prior Art Test Material was a glue that was two and a half times more likely to fail to hold the susceptor to the paper backing; (3) that the Prior Art Test Material involved little or no pressure being applied during the preparation of the laminate that would affect the bond strength between the paper and the susceptor; (4) that the Prior Art Test Material had not been subjected to elevated drying temperatures, but was merely hung up to dry out at ambient temperature, without exposure to an oven; (5) that, in the affidavit, the drawing of the Invention Test Material was erroneous in that the invention test material had its sus-ceptor attached directly to kraft material (which provides a better bond to a susceptor) ; (6) that the Invention Test Material utilized a different adhesive than that specified in the affidavit to attach the susceptor to the greaseproof paper — an adhesive that was known to be much more effective in maintaining the susceptor-to-paper bond; and (7) that the adhesive used in the Prior Art Test Material (Duracet 12) was a “thermoset-ting” adhesive. Further, it was not disclosed to Examiner Bell in the ’513 application that the popcorn bag disclosed in the ’723 application, in which the susceptor was bonded to only one ply of paper had been tested by Golden Valley and proclaimed to have achieved unexpected beneficial results including: (1) concentrated heating without the use of a rigid container which is unsuitable as a shipping package; (2) rapid and efficient induction of heat to a food product from a much hotter inductive layer without crinkling or shriveling of the pickup material which might move it away from the adjacent food product; (3) little or no scorching of the inductive layer; and (4) an increase of popcorn volume from 135 to 160 percent greater than the same control bag with no inductive pickup sheet. The samples tested for the ’723 application included susceptor films that had been stripped off the paper backing and then bonded directly to the inside of a nonsusceptor bag, as well as susceptor films that were not removed from the paper backing and were likewise bonded to the inside of a nonsusceptor bag. Mr. Turpin and Mr. Burnett both aeknowl-edged that these tests were relevant and material to the ’513 application. Mr. Hannon failed to disclose the fact that the reports of the ’513 tests directly contradicted the tests and representations made in the ’723 application regarding the ability of a susceptor-to-paper laminate to withstand scorching, shriveling, and burning. In particular, Golden Valley concealed in its affidavit the fact that it had made an absolutely contradictory representation in its ’723 application, namely that it had performed “extensive testing” which proved that the susceptor obtained from James River which was directly in contact with food did not “shrivel,” “scorch” or “disintegrate.” It was materially misleading for Golden Valley’s ’513 affidavit not to have disclosed this inconsistent representation, and the inconsistent testing upon which the representation was based. Moreover, this contradiction underscores the materiality of the ’723 application, the disclosure of which would have revealed this contradiction . Further, in direct contradiction to the representations of the “Affidavit under 37 U.S.C. 1.132” dated August 31, 1987, that the subject matter of the James River patents was “unsuitable for important applications” and “were unsuitable for commercial use”, Mr. Harmon had received and reviewed information to the contrary in the Seiferth ’005 file wrapper by March 31, 1987 . Included in the Seiferth ’005 prosecution history were the three affidavits of Saunders, Brown and Middleton, which revealed the commercial success of a number of packaging products containing the subject matter of certain James River patents, including the ’005 patent of Seiferth. Mr. Harmon could not explain why he would not have read such documents in the Seiferth ’005 prosecution history which touched on some of the same issues raised in the ’513 prosecution . Such cultivated ignorance is not only not credible, it tends to show knowing and deliberate deception. Without disclosing that the prior art commercial Wyandot package (which implemented the Bohrer ’010 and ’882 patents) exhibited no scorching, shriveling or burning, and had been commercially successful for several years, Mr. Harmon falsely represented that the test conducted with regard to the ’005 Seiferth reference also showed commercially nonacceptable traits (burning, scorching, etc.) such as was present in the inventions disclosed in the Bohrer ’010 and ’882 patents and that the test results were thus also applicable to the Bohrer ’010 and ’882 prior art The actual test panels of the ’765 application testing have confirmed that the test results of the ’513 affidavit were false. Consequently, the court finds that the affidavit that Golden Valley submitted to the Patent Office, which was signed by David Cox, Lawrence Brandberg, and David Andre-as was materially false and misleading. The court further finds that Mr. Harmon devised the tests and the test parameters, designated the constructions, and wrote the affidavit which was submitted to the Affiants for their execution, which Affiants just read and signed. Neither Cox, nor Brandberg, nor Andreas cheeked the accuracy of the submitted affidavit test information. Further, the ’513 comparative testing did not have any documented protocol nor any calibration techniques . The testing was done “in-house,” while Golden Valley had previously used an independent laboratory facility, Medallion Laboratories in Minneapolis, Minnesota, to conduct popping studies. With knowledge that the comparative tests of the ’513 application only attempted to distinguish the three-ply structure from the two-ply structure, Mr. Harmon nonetheless petitioned for and obtained allowance of all pending Claims 1-22 and 27 (as filed) — while Claims 8-14 still only covered a single paper sheet-to-susceptor (two ply) laminate. Claim 8, for example, covered what Harmon had described in the comparative tests as the prior art construction. Based on these representations, Mr. Harmon was able to address, via testing, only the three-ply structures, yet obtain claim coverage over the two-ply structures such as those represented by the prior art which he had purportedly distinguished from the three-ply invention. While Golden Valley first marketed and publicly sold its popcorn products in October, 1984, most foreign patent applications were filed in various foreign countries with a convention priority date of June 3, 1985, the filing date of the ’513 application. It is unrebutted that the specification and claims of the ’723 application provided support for filing the ’513 application as a continuing application to the ’723 application. As to such subject matter of the ’513 application for which there was support in the ’723 application, Golden Valley’s ’513 application would have had the benefit of the earlier May 21, 1984 filing date of the ’723 application. Had Golden Valley done so, it could have saved the validity of its foreign counterpart patents rendered invalid in “absolute novelty” countries such as Europe and Japan by the placing on sale of the ACT II popcorn bag in the United States in October of 1984. Accordingly, Golden Valley’s failure to claim priority for the ’513 application based on the ’723 application so as to avoid having the ’513 application examined by Examiner Weinstein evidences Golden Valley’s intent to commit inequitable conduct. Mr. Charles Turpin, Golden Valley’s chief packaging engineer and Director of Packaging Development, who testified that he was appearing as a representative of Golden Valley at trial, acknowledged that the testing of the James River susceptors performed by Golden Valley in connection with the ’723 application was relevant with respect to the ’513 affidavit. Plaintiff addressed these conflicting test results through Mr. Turpin. Mr. Turpin’s conclusions are reported in 2 charts — PX 392 (concerning the ’513 testing) and PX 395 (concerning the ’723 testing). However, these two charts ignore Mr. Andreas’ and Mr. Harmon’s testimony that the successfully tested ’723 single-sided susceptor included susceptor material removed from the backing material supplied by James River. Mr. Turpin’s theory is that the ’723 application, at PX 338 p. 40 (corresponding to DX 263 p. D48) when it refers to “flexible inductor sheets” in the first full paragraph, is referring to metallized polyester film backed to 60 pound paper, placed loose in the bag. Mr. Turpin then reasons that in the next paragraph of (D48), when this “sheet” is “bonded to a sheet of paper for dimensional support to prevent shrivelling and scorching”, that the ’723 application is describing bonding the 60 pound paper to a bag substrate of 55 pounds (25 pound greaseproof and 30 pound kraft laminated together), for a total substrate backing of 115 pounds. Mr. Turpin then reasons that this 115 pounds is heavy paper, approaching paperboard weight, which begins at approximately 140 pounds. He concludes that this is a different weight of backing than the 55 pound substrate used in the ’513 testing of the “prior art” sample. Mr. Turpin’s premise is not supported by the record. Mr. Turpin has based his conclusions upon his reading of the ’723 application, as to which he admittedly has no first-hand knowledge. “Sheets” and “sheet material” are defined in DX 39 (the testing report that underlies the ’723 application) at p. 3 to be “heater material removed from the paper backing as supplied by James River Corporation.” Hence, the word “sheet” at DX 263 p. D47-48 refers quite clearly to the metallized polyester film without the 60 pound paper backing. When, at the bottom of p. D48, this “sheet” is “bonded to a sheet of paper for dimensional support to prevent shrivelling and scorching”, the application is describing bonding the metallized polyester film to a piece of paper, the weight of which is not specified, but which Mr. Turpin acknowledges would be the Golden Valley bag in use at the time, namely 55 pounds (25 pound greaseproof plus 30 pound kraft). This is the structure which on the next page of the application, D49, is represented to have “little or no scorching of the inductive layer” and to have no “crinkling or shrivelling of the pickup material.” This structure corresponds precisely to the “prior art” structure tested in the ’513 application, and which was represented to Examiner Bell to have diametrically contradictory results, namely to “shrivel, disrupt, and char” in all tests performed. Hence, the premise underlying Mr. Turpin’s conclusions, that the substrate weight in the two applications differed, is incorrect. Mr. Turpin’s premise squarely contradicts the representation set forth in Golden Valley’s own Trial Memorandum shortly before trial. In that Memorandum at p. 28, Golden Valley stated that: “In the ’723 application, Golden Valley reported test results showing that an exposed metallized film bonded to the inside of its flexible bag gave improved popping performance over a control bag having no susceptor- It was represented generally in the application that the paper backing of the bag stabilized the film compared to no backing at all ...” That description by Golden Valley is consistent with the Court’s interpretation of the language of the ’723 application set forth in the paragraph above, and inconsistent with Mr. Turpin’s new interpretation. But even if Mr. Turpin’s premise were correct and the language on DX 263 p. D49 as to “no shrivelling or crinkling of the pickup material” referred to backing the film to 115 pound paper substrates, that would not alter the conclusion that the ’723 testing of the single-bonded James River susceptor, and the representations made about that testing to Examiner Weinstein, were material and should have been disclosed to Examiner Bell. The ’513 affidavit made representations about the Seiferth ’005 Figure 2 patent structure, the Bohrer ’010 susceptor structure, and the Bohrer ’882 susceptor structure. Golden Valley represented to the Patent Office in April and August, 1987 that these patent structures always failed and had no suitable commercial use. Seiferth ’005 Figure 2 discloses a susceptor bonded to many kinds of papers as well as paperboard. Both of the Bohrer patents disclose bonding the susceptor to paper or paperboard. In making representations to the Patent Office about its testing of the “structures” of the Seiferth and Bohrer patents in April and August, 1987, Golden Valley was obligated to disclose any and all prior testing and prior representations by Golden Valley on such single-bonded James River susceptors, regardless of whether that testing was upon a susceptor backed to a 60 pound paper substrate, or upon a 116 pound heavy-paper substrate, or even upon a heavier paperboard substrate. The Seiferth and Bohrer patent structures covered all such substrates. The ’723 application admittedly referenced the testing of, and contained representations about, single-bonded James River susceptors. Those susceptors were encompassed by the Seiferth and Bohrer patents. Those representations contradicted the representations made by Golden Valley to the Patent Office in April and August, 1987. It was material to a reasonable Patent Examiner to know this. Mr. Turpin’s answers to the court’s questions so acknowledged. Regardless of plaintiffs explanations, the fact remains that the ’765 test results were significantly different from the ’513- results Mr. Turpin’s testimony was rebutted by Mr. Brandberg’s deposition testimony. Mr. Brandberg participated in both the ’513 and ’765 tests and was the only person who constructed the bags in the ’765 tests. The results of the ’765 tests, notwithstanding Mr. Turpin’s testimony, simply show that the exposed susceptor is as good as, if not, on occasion, better than, the buried susceptor. Mr. Brandberg’s deposition testimony clearly showed that the susceptor-to-paper bond in the ’765 tests was machine laminated. Mr. Turpin further admitted on cross examination, that at least one-third of the “invention” test bags in the ’765 tests were actual production bags that had a machine lamination of susceptor-to-paper. VI. Failure to Disclose the Golden Valley/James River Litigation On June 17, 1987, Golden Valley filed a Declaratory Judgment action against James River Corporation, Ci