Geffner v. Linear Rotary Bearings, Inc. (936 F. Supp. 1150, 1996)

OPINION AND ORDER

SEYBERT, District Judge:

Pursuant to Rule 52 of the Federal Rules of Civil Procedure, the Court adopts the Findings of Fact and Conclusions of Law set forth below. To the extent that any of the Findings of Fact may be construed to constitute a Conclusion of Law or any Conclusion of Law may be construed to constitute a Finding of Fact, the same is hereby adopted by the Court in accordance with the proper characterization.

FINDINGS OF FACT

A. Procedural Background

1. Plaintiff Ted Geffner initiated this action on May 24,1991 against defendants Linear Rotary Bearings, Inc. (“LRB”) and Gar-nette S. Teass. In his Complaint, plaintiff charged the defendants with (1) infringement of claims 1-14 of Geffner’s U.S. Patent No. 4,025,128 (the “ 128 patent”), (2) breach of a license agreement dated August 3, 1977 between Geffner and LRB concerning the 128 patent, (3) palming off, and (4) unjust enrichment. See Compl. ¶¶ 1-27. Plaintiff sought recovery for unpaid royalties in the amount of $162,790 as of July 31, 1989, and royalties accrued subsequent to that date, the amount thereof to be determined through an accounting. See Pretrial Order, App. E.

2. Defendants answered plaintiffs Complaint on July 19, 1991 denying the allegations set forth in the Complaint and asserting the defenses of (1) invalidity of the 128 patent, (2) non-infringement of the 128 patent, (3) non-enforceability of the 128 patent due to fraud or inequitable conduct allegedly committed by Geffner on the United States Patent and Trademark Office (the “PTO”) in obtaining the 128 patent, (4) estoppel, (5) laches, and (6) failure to state a claim upon which relief can be granted. See Answer and Counterclaims ¶¶ 1-34.

3. Additionally, defendants counterclaimed seeking declaratory judgments of (A) invalidity or unenforceability of the 128 patent, (B) unenforeeability of the licensing agreement between Geffner and LRB, and (C) that LRB was lawfully marketing bearings without violating the 128 patent and/or contract rights. Moreover, defendants sought return of royalty payments of approximately $477,032.00 previously paid by LRB to Geffner under the licensing agreement as a result of Geffner’s alleged acts of fraudulently inducing LRB to enter into the license agreement. See Answer and Counterclaims ¶¶ 35-46; Pretrial Order, App. D.

4. In support of defendants’ above indicated contentions, defendants attached as Exhibit A to the Answer and Counterclaims a letter from the defendants’ prior attorneys to plaintiff dated November 29,1989 concerning defendants’ defenses and charges. As indicated in Attachment A, it is defendants’ position that the claims of the 128 patent are anticipated and thus invalid under 35 U.S.C. § 102 in view of a prior published British Patent Specification No. 896,251 issued to Norman Manby (the “Manby patent”). Separately, defendants contend that the claims of the 128 patent are unenforceable in view of a number of fraudulent misrepresentations concerning the Manby patent that plaintiff made to the PTO. Further, as a result of plaintiffs failure to disclose material information concerning the foregoing to LRB in connection with its entry into the licensing agreement at issue, defendant LRB seeks a return of past royalties paid. See Attachment A to the Answer and Counterclaims, at 6.

5. Defendants have requested from the Court (1) dismissal of plaintiffs Complaint with prejudice, (2) attorney fees and costs for defending against Geffner’s Complaint, (3) a declaratory judgment that LRB’s manufacture, use and sale of its bearings is fully lawful and does not violate any patent or contract rights of plaintiff Geffner, (4) compensation for damages suffered by LRB as a result of Geffner’s improper inducement of LRB to enter into the licensing agreement for the 128 patent including the return of past royalties paid, (5) punitive damages as a result of Geffner’s alleged acts of fraudulently obtaining the 128 patent and/or his fraudulent inducement of LRB to enter into the license agreement, (6) recovery of defendants’ attorney fees and costs for the prosecution of the counterclaims, and (7) such other and further relief as this Court may deem just and proper. See Answer and Counterclaims, at 9-11.

6. The allegations set forth in defendants’ Counterclaims were denied by plaintiff in his Answer to Counterclaims filed on August 8, 1991. See Pl.’s Answer to Defs.’ Counterclaims ¶¶ 35-46.

7. A bench trial was held by this Court from September 28, 1995 through October 10, 1995. Upon the completion of plaintiffs case on the merits, defendants moved for dismissal of plaintiffs charges of infringement of claims 2, 4 and 6-8 of the ’128 patent based upon an insufficient showing of evidence. In addition, defendants moved that codefendant Gamette S. Teass be dismissed from this action as a result of plaintiffs failure to present evidence establishing the involvement of Mrs. Teass in respect of any of the allegations set forth in the Complaint. Furthermore, defendants sought dismissal of plaintiffs allegations of palming off and unjust enrichment.

8. In response to defendants’ motions, plaintiff conceded his failure to establish any evidence during the presentation of his case concerning (i) the alleged infringement of claims 2, 4 and 6-8 of the 128 patent, Tr. 557; and (ii) the involvement of Mrs. Teass in respect of the allegations raised in the Complaint. Tr. 550. Consequently, plaintiff withdrew these charges from this litigation.

9. With respect to defendants’ request for dismissal of the palming off and unjust enrichment counts set forth in the Complaint, plaintiff continued to assert these allegations purportedly based upon defendant LRB’s use of the 128 patent number on LRB’s product literature. The Court requested briefing from the parties on this issue and such briefing was submitted by the defendants.

10. Plaintiff subsequently withdrew these claims, and at the same time moved, by letter motion dated October 27, 1995, to amend his pleadings to add the counterclaim defense of assignee estoppel. This application to add the new counterclaim defense was opposed by the defendants on the ground that it was unduly prejudicial because (i) defendants had no notice of this defense until it was first raised by plaintiffs counsel near the end of the bench trial; (ii) defendants had no opportunity to cross-examine plaintiffs witnesses with respect to this defense; and (iii) plaintiffs new defense was not addressed in any of the pleadings, in the Trial Briefs (or at least defendants’ Trial Brief because plaintiff elected not to file one), and more importantly, in the Pretrial Order submitted jointly by the parties.

11. For the reasons stated in defendants’ letter dated November 3, 1995, the Court agrees with the defendants’ contentions that it would be unduly prejudicial to the defendants to allow plaintiff to amend his pleadings subsequent to trial to assert the counterclaim defense of assignee estop-pel. Accordingly, plaintiffs motion to add this counterclaim defense is DENIED. See Fed.R.Civ.P. 15(b).

12. Accordingly, the outstanding issues in this ease relate to (i) the validity or enforceability of the remaining claims of plaintiffs ’128 patent (i.e., claims 1, 3, 5 and 9-14) in view of the Manby patent and Geffner’s arguments and drawings submitted to the PTO in attempting to distinguish the teachings of Manby from the Geffner invention; and (ii) whether the license agreement between Geffner and LRB concerning the ’128 patent is subject to rescission in light of Geffner’s alleged breach of fiduciary duty in inducing LRB to enter into the agreement at issue.

13. As more particularly discussed below, this Court finds that the remaining claims of the ’128 patent (i.e., claims 1, 3, 5 and 9-14) are invalid and unenforceable in view of the prior art disclosures of Manby and Geffner’s inequitable conduct before the PTO during the prosecution of the ’128 patent.

14. Further, this Court holds that the license agreement at issue is subject to rescission as a result of Geffner’s breach of his fiduciary duty of loyalty to LRB through his failure to disclose to LRB’s other directors various critical issues relating to the possible invalidity or unenforceability of the ’128 patent. Accordingly, the patent agreement at issue having been rescinded, defendant LRB is entitled to restitution of all royalties paid under the license agreement and the legal fees that it incurred on plaintiff’s behalf for the prosecution and maintenance of plaintiff’s foreign patents.

15. In addition, because the Court finds this to be an exceptional case, defendant LRB is entitled to reimbursement of its costs, attorney fees and expenses under 35 U.S.C. § 285.

B. Factual Background

1. Introduction

16. Plaintiff Geffner is an engineer and has been engaged in the design, development and manufacturing of bearings for over forty years. Compl. ¶ 3. In this regard, Geffner has worked in bearing research as a chief research and development engineer for a variety of leading bearing manufacturers including Thomson Industries and The Barden Corporation. Tr. 19-20. Plaintiff is the inventor of a number of rotary bearings including those claimed in U.S. Patent No. 3,446,-540 (Defs.’ Ex. B8), U.S. Patent No. 3,692,371 (Pl.’s Ex. 13) and U.S. Patent No. 3,751,121 (Defs.’ Ex. B9). Tr.22.

17. Subsequent to his employment with The Barden Corporation as a consultant in bearing design, plaintiff alleges that he developed a new bearing having both linear and rotary features. This bearing was designed by Geffner in 1975. Tr. 24-25. Geffner then retained an attorney by the name of Jerome Bauer, a patent attorney with whom he previously had worked, for the purposes of preparing and filing a patent application directed to his new linear rotary bearing. Tr. 25.

18. Bauer prepared a patent application directed to Geffner’s linear rotary bearing and filed said application as Application Serial No. 631,035 at the PTO on November 12, 1975. Defs.’ Ex. Al, at 2-24. This application was entitled “Antifriction Bearings” and it later issued as the 128 patent, which is the subject of the present action.

19. After filing the “Antifriction Bearings” patent application, Geffner and Albert Adelmann formed Linear Rotary, Inc., the predecessor to defendant LRB. This company was formed in 1976 with Geffner becoming Vice President and receiving 24 shares and Adelmann becoming President and receiving 76 shares out of 200 total shares outstanding. Tr. 26-27. Later, William Mit-sehang became a shareholder of Linear Rotary, Inc., receiving 2 shares. Defs.’ Ex. D9, at 3; Tr. 29, 34.

20. During the prosecution of the “Anti-friction Bearings” application before the PTO, Geffner first became aware of the Man-by patent, when it was brought to his attention by a group of Japanese businessmen. Tr. 106-08. Although Geffner discussed the existence of the Manby patent with the other members of the Board of Directors of Linear Rotary, Inc., the Court finds Geffner’s discussions with the other board members concerning this matter to have been vague, and to have knowingly, and materially, understated Geffner’s own substantial concerns that Manby anticipated (or disclosed) the features of his invention and presented a significant problem with respect to the validity and enforceability of his patent. Tr. 177-78.

21. After learning of the existence of Manby, plaintiff Geffner prepared some drawings and overlays (i.e., “Geffner graphics, A1-A2, B1-B2, C1-C4”) which purportedly showed the distinguishing features of the Geffner bearing as compared to the linear rotary bearing disclosed in the Manby patent. Tr. 110-11. However, as more particularly reviewed below, these graphics and overlays were misleadingly drawn by Geffner in his attempt to distinguish the Geffner invention from the prior art.

22. Geffner’s graphics were then utilized by Bauer in an interview with the Examiner at the PTO and later submitted by Bauer in a “Supplemental Amendment” filed at the PTO. The Supplemental Amendment discussed the subject of the interview and the distinguishing features of the Geffner invention relative to the features of the Manby linear rotary bearing. As a result of the Supplemental Amendment and the attached Geffner graphics, the Geffner application was allowed to issue as a patent by the PTO.

23. Furthermore, in addition to disclosing the existence of the Manby patent to the PTO, Bauer also made known the existence of the Manby patent to each of his foreign associates, providing the same with copies of the Geffner drawings and overlays. This occurred in November, 1976. At least two of his foreign associates, i.e., foreign associates in West Germany and the United Kingdom, responded quickly and indicated that the claims of the corresponding foreign Geff-ner applications were directly anticipated by Manby. In addition, the foreign associates brought to Bauer’s attention a number of flaws in Geffner’s arguments and drawings that he had presented to the PTO. However, notwithstanding this information, the contents of the foreign associates’ positions concerning the Manby patent were never disclosed by Geffner to the other directors of Linear Rotary, Inc. Tr. 179.

24. Approximately six months later, on May 24, 1977, the ’128 patent was issued to Geffner by the PTO. During the prosecution of the Geffner application, neither Geffner nor Bauer informed the PTO of any deficiencies in their previously submitted drawings and arguments.

26. On August 3, 1977, plaintiff Geffner licensed the ’128 patent to Linear Rotary, Inc. At that time, Geffner was an officer, director and shareholder of Linear Rotary, Inc. The license agreement (the “Patent Agreement,” Pl.’s Ex. 2) granted Linear Rotary, Inc. an exclusive license to make, use and sell bearings according to Geffner’s 128 patent and required Linear Rotary, Inc. to pay Geffner a royalty. This royalty varied depending upon the amount of bearings sold. A ten percent royalty was payable on the first five million dollars of sales of all bearings manufactured and sold by Linear Rotary, Inc. embodying any of the features of the 128 patent. Thereafter, the royalty rate dropped to six percent. Pl.’s Ex. 2, at 3. In addition, minimum royalties, which were credited against royalties payable, were to be paid as follows: first year — $0; second year — $25,000; third year — $50,000; fourth and following years — $75,000. Pl.’s Ex. 2, at 16.

26. The license agreement was for the full life of the ’128 patent. In addition, a provision within the license agreement stated that Geffner did not represent or warrant the validity of the ’128 patent or its foreign counterparts. Pl.’s Ex. 2, at 2-3.

27. Further, with respect to the royalty provision, according to the agreement, the minimum royalties were not to accrue until one year after the end of the month in which Linear Rotary, Inc. received an aggregate of $300,000.00 in consideration for its issued shares of capital stock. Pl.’s Ex. 2, at 6. Once the license agreement was in place and stock had been issued, Horace A. Teass, Sr., an attorney and a friend of Geffner, purchased stock for himself, his friends and his associates. Tr. 30-31. The corporate name of Linear Rotary, Inc. was then changed to Linear Rotary Bearings, Inc. in or about August of 1977. Defs.’ Ex. D8, at 1.

28. Following the execution of the Patent Agreement, LRB began to manufacture and to sell linear rotary bearings embodying many of the features of the invention disclosed in the T28 patent. In 1977, the first commercial linear rotary bearings were sold. Pl.’s Ex. 14. In so doing, defendant LRB created catalogs and product literature and labelled its literature with the T28 patent number. Pl.’s Ex. 3A; Tr. 31-33. In addition, Geffner wrote several articles explaining how his linear rotary bearing operated. These articles were published in various trade magazines such as Power Transmission Design. Pl.’s Ex. 5A, 5B. Further, as sales progressed, LRB remitted royalty payments to Geffner in accordance with the Patent Agreement.

29. In 1980, Bauer and Geffner were informed that Geffner’s corresponding West German patent application was being opposed by three German bearing manufacturers based upon the Manby reference. Bauer responded to the opposition with arguments similar to those he had made to the PTO.

30. In 1981, Geffner left the active service of LRB and retired to Florida. Geffner, however, continued to work with Bauer, his attorney, in the handling of patent matters concerning the ’128 patent. Tr. 35. The prosecution fees for Geffner’s corresponding foreign patent applications were paid by LRB. Tr. 292-93.

31. On February 22, 1983, the West German Patent Office rejected the Geffner application in view of the Manby patent.

32. In 1984, Horace A. Teass, Sr. purchased the 78 shares of LRB owned by Adel-mann and the 2 shares owned by Mitschang. By so doing, Mr. Teass, Sr, became the majority shareholder, controller and President of LRB. Tr. 33-34; see Defs.’ Ex. D9, at 3-4 (initial issuance of shares to Adelmann and Mitschang).

33. Pursuant to the Patent Agreement, beginning in 1982, a minimum royalty of $75,000 per year was payable to plaintiff Geffner. However, in 1986, LRB sustained financial difficulties and was unable to make full payment to Geffner. In this connection, LRB was unable to pay the balance of minimum royalties due as of June 30, 1986, amounting to $51,791. Pl.’s Ex. 7, last page. Further, LRB was unable to pay the balance of minimum royalties due for the period ended June 30, 1987, amounting to $48,537. Id.

34.. Subsequently, in late 1987, Geffner learned that a Japanese bearing company, i.e., Nippon Bearing Co., Ltd. (“Nippon”), was selling in the United States a bearing similar to the linear rotary bearing of his T28 patent. Pursuant to the Patent Agreement which required LRB to prosecute infringers of the ’128 patent, LRB brought this matter to Nippon’s attention by letter. This matter eventually was settled for $6,363.22 with Nippon agreeing to discontinue selling such bearings in the United States. Pl.’s Ex. 12C.

35. LRB’s financial difficulties continued into 1988-1989. As a result, LRB was unable to make full payment of the royalties due to Geffner. This resulted in annual deficiencies due Geffner in the amounts of $46,-886 on June 30,1988 and $48,901 on June 30, 1989. Pl.’s Ex. 7, last page.

36. In September, 1989, Horace A. Teass, Sr. passed away. Tr. 572. For an interim period of time, LRB was run by an assistant to Mr. Teass, i.e., Mr. Darryl Wakker, while the board decided how to proceed. Sales of LRB had fallen from almost $600,000 down to $300,000 and LRB for the last number of years was not profitable. Tr. 563-67.

37. Plaintiff Geffner terminated the Patent Agreement with LRB in October, 1989. Compl. ¶ 8. As of July 31, 1989, LRB owed Geffner $177,790 under the agreement. This amount was reduced to $162,790 as a result of another partial payment made by LRB of $15,000. Compl. ¶ 17. Furthermore, Geff-ner notified LRB to cease and desist from selling bearings embodying any of the features disclosed in his ’128 patent.

38. Upon receipt of Geffner’s default notice, LRB (under the direction of Mr. Wakker) sought patent counsel and was informed that the 128 patent was invalid in view of the Manby patent. Tr. 566. Further, LRB was informed by counsel that the 128 patent was unenforceable. This information was communicated to Geffner in late 1989 and LRB ceased making royalty payments. Tr. 42-43, 566.

39. In January, 1990, Garnette Teass (the daughter-in-law of Horace A. Teass, Sr., an attorney and a certified public accountant), was appointed President of LRB. Tr. 561. When Mrs. Teass first joined LRB, it was unclear whether the company was going to go out of business. Tr. 561-62.

40. On May 24, 1991, plaintiff Geffner initiated this action seeking recovery for past royalty payments under the Patent Agreement and additional damages for LRB’s alleged acts of infringement. Based on the alleged invalidity of the 128 patent and the alleged unenforceability of the Patent Agreement, LRB counterclaimed seeking recovery of all past royalties paid. Furthermore, following the institution of the lawsuit, defendant LRB deleted all references to the 128 patent number from LRB’s product literature.

41. As of the date of trial, LRB has two full-time employees and three part-time employees including Mrs. Teass. Annual sales for the fiscal year ending March 31, 1995 were approximately $430,000. Tr. 563. There are approximately 26 shareholders, including Geffner who owns approximately 12% of LRB. The company has never paid a dividend and only recently has become profitable. Tr. 567-68.

42. In the final analysis, LRB paid Geff-ner $477,032 in royalties. Pretrial Order, App. F., at 15 (stipulated fact). In addition, LRB paid $50,499 in legal fees on plaintiffs behalf for the prosecution and maintenance of plaintiffs foreign patents. Pretrial Order, App. D., at 12; Tr. 569-70. The sum of these two figures ($527,531) therefore represents the amount by which the plaintiff has profited as a result of his entry into the Patent Agreement with LRB.

2. The ’128 Patent

43. As mentioned above, plaintiff Geffner filed an application for a patent with the PTO on November 12, 1975 for his alleged invention entitled “Antifriction Bearings.” Defs.’ Ex. Al, paper 1. This patent application eventually issued as the ’128 patent, the patent presently in dispute. Pl.’s Ex. 1.

44. Figure A, below, shows a disassembled antifriction bearing of the ’128 patent, comprising four major components: an outer race 14 (Defs.’ Specimen Ex. E25), a retaining means 26 containing small bearing balls (Defs.’ Specimen Ex. E26), and closure rings 48, 50.

45. Figure B (Defs.’ Ex. E7), below, shows a cross-sectional view of the cylindri-caUy-shaped outer race 14. Running lengthwise along the inner surface of the outer race 14 are a plurality of raised, bearing lands 20, each of which extends longitudinally a distance slightly shorter than the length of the outer race. (See also Figure A above.) The raised, bearing lands 20 are separated by elongated recesses 22 (channels) which also extend longitudinally along the inner surface of the outer race. The linear, raised bearing lands 20 and recesses 22 are positioned at specific intervals around the interior surface of the outer race. Because the bearing lands 20 and recesses 22 are formed on the inner periphery of the circular race number 14, they are arcuate in width or in cross sections.

46. Figure C, below, shows the cylindrically-shaped retaining means 26. Running lengthwise along, and cut through the wall of the retaining means, are a plurality of elongated, oval closed loop paths 27, each path retaining a number of small bearing balls 24, and facilitating the directed travel thereof. Pl.’s Ex. 1 (Col. 3, lines 5-18 of the ’128 patent).

47. Each closed loop path 27 of retaining means 26 has a pair of parallel, spaced-apart tracks 28a and 28b connected at their ends by semi-circular returns 30, similar in shape to a safety pin. The closed loop paths of the retaining means are spaced apart from each other at specific intervals around the retaining means.

48. In this regard, Figures 4 and 5, below, reproduced from the ’128 patent, show one closed loop path 27 of the retaining means 26. The closed loop paths of the retaining means are cut through the wall of the retaining means (i.e., open through the wall of the retaining means), such that the bearing balls 24 (absent from Figures 4 and 5) retained and travelling within the closed loop paths project slightly outside of both the interior and exterior surfaces of the retaining means. Pl.’s Ex. 1 (Col. 3, lines 19-34 of the ’128 patent).

49.Because each retainer segment 26 cooperates to form parts of a whole retainer ring positioned between the inner and outer race members, their longitudinally extending sides 38 are angled radially toward the center or axis of the bearing. Similarly, the inside walls of each of the legs or pathways 28, identified as 42, cooperate with oppositely facing surfaces 44. The surfaces 44 define a double taper terminating in a central groove 46 that tends to position and seat the ball bearing elements 24 properly in their pathways. The two tapered sides of the surfaces 44 cooperating with the single taper of the surface 42 provide for a triangular positioning or three-point support of the ball bearing element 24 in each of the pathways 28 as is seen more clearly in Figure 3 of the ’128 patent. Pl.’s Ex. 1 (Col. 3, lines 25-52 of the ’128 patent).

50.Considering the above description and assuming that the retainer means 26, whether formed of a complete circle of separate arcuate sections 26 as illustrated in Figures 4 and 5 or as a single ring retainer means as described above, the plurality of closed loop paths 27 each will have the two substantially parallel longitudinally-extending pathway legs 28a and 28b. The longitudinally-extending center lines of the ball bearing elements 24 extending along the length of the legs 28a and 28b will be spaced from each other in each respective closed loop path 27 an arcuate distance that is greater than the arcuate width of each of the bearing lands 20. Pl.’s Ex. 1 (Col. 5, lines 34-36 of the ’128 patent).

51. Stated another way, the arcuate width of the bearing lands 20 will be smaller than the space between the center lines of the pathway legs 28a and 28b of each respective closed loop path 27 so that the rollable bearing elements 24 in each of the pathway legs 28a and 28b of their one respective closed loop path 27 cannot be simultaneously engaged between the inner and outer race members.

52. According to the teachings of the ’128 patent, at no given time during the operation of the bearing is it possible for the rollable bearing elements 24 in one of the pathway legs 28a or 28b to be engaged with a bearing land 20 at the same time as the rollable bearing elements 24 of the other spaced pathway leg of the same closed loop path. As a consequence, the bearing elements 24 of one of the pathway legs 28a or 28b of each closed loop path must be out of engagement with a bearing land 20 in the event that the bearing elements 24 of the other corresponding pathway leg of the same closed loop path is in bearing engagement with a land 20. Pl.’s Ex. 1 (Col. 5, lines 27-56 of the ’128 patent).

53. According to the ’128 patent, the arrangement of the pathway legs of each closed loop path described above is necessary. If the rollable bearing elements in the two pathway legs 28a and 28b of the same closed loop path 27 were simultaneously engaged with one or more bearing lands 20, the bearing elements and lands would be locked against relative rectilinear motion and there could be no free flow of the elements 24 within their respective closed loop path. This would lock up the inner and outer race members and prevent their relative motions and the operation of the antifriction bearings. By providing that the arcuate width of the lands 20 is smaller than the spacings of the center lines of the pathway legs 28a and 28b of the some closed loop path 27, it is assert-edly impossible for the bearing elements in both pathway legs 28a and 28b of one closed loop path to be simultaneously engaged between the inner and outer race members. Pl.’s Ex. 1 (Col. 5, lines 57-68 through Col. 6, lines 1-4 of the ’128 patent).

54. When the components of the antifriction bearings of the ’128 patent are assembled, the retaining means 26, with bearing balls 24 retained within its closed loop paths 27, is positioned inside the outer race element 14 and is held therein by two closure rings 48 and 50 which are affixed respectively at each end of the outer race. (See Figure A above.) Although the retaining means 26 is held within the outer race element 14, it is not stationary therein. The retaining means is designed to rotate within the outer race, or the outer race can revolve around the retaining means.

55. Figures 1 and 2, below, reproduced from the ’128 patent, show side views of an assembled antifriction bearing with a solid shaft 12 inserted therethrough as the inner race. (A physical specimen of the bearing of Figure 1 of the ’128 patent is represented by Defs.’ Ex. E24.) In Figure 2, a portion of the outer race 14 is removed to show the bearing balls 24 in one track (i.e., 28a or 28b) of one closed loop path 27 of the retainer means 26. Because the small bearing balls 24 of the retaining means 26 project slightly outside of both the interior and exterior surfaces of the retaining means 26, the bearing balls 24 can come into contact with the solid shaft 12, or the inner surface of the outer race 14, or both. The antifriction bearing can move linearly along the shaft, and can rotate around the shaft. The linear and rotary movements between the antifriction bearing and the shaft can occur separately or simultaneously.

56.Movement of the antifriction bearing of the ’128 patent is allowed as a result of a continuous circulation of the bearing balls around each closed loop pathway, and through the rotation of the bearing balls within the closed loop pathway. The lands and recesses of the outer race, and the closed loop paths of the retainer means are precisely positioned so that bearing balls travelling along one track of a closed loop path engage both the outer surface of the shaft and one of the bearing lands of the outer race (i.e., Figure 2), while bearing balls travelling along the adjacent track of the same closed loop path travel through a recess of the outer race.

57. Bearing balls in a single retainer means are positioned so that the balls of one track of the retainer engage a land while the balls of the adjacent track are in a recess. As a result, the bearing balls can move freely around the closed loop path, much like horses on a race track. Tr. 95.

58. Because the retaining means and the outer race are designed to rotate within or around each other, the movement of the bearing balls within the closed loop paths may be both rotary and linear. During rotary movement of the retaining means, the bearing balls within the closed loop paths are travelling across the bearing lands and recesses located along the inner surface of the outer race. One may think, then, that at some point in the rotational movement, the tracks of a closed loop path might not align with a recess and a land of the outer race. However, the relative widths between the parallel tracks of each closed loop path, the spacing between each closed loop path, the widths of the raised, bearing lands, and the widths of the recesses therebetween are designed to prevent such an occurrence. This occurrence is known as “jamming” or “bearing lock-up.”

59.As briefly described, jamming or lock-up occurs when the bearing balls in both tracks of the same closed loop path align with and engage simultaneously bearing lands. When this occurs, one track of the same closed loop path is no longer aligned with a recess of the outer race and thus, the bearing balls cannot circulate through the closed loop path. According to Geffner, he was the first to recognize this relationship. Tr. 81-82.

60. The essence, or allegedly novel feature of Geffner’s invention relates to the relative widths between tracks (i.e., 28a or 28b) of each closed loop path 27, the widths of the bearing lands 20, and the widths of the recesses 22. These relative widths are designed to prevent jamming which, again, is the situation in which all ball bearings in both tracks of the same closed loop path simultaneously engage a bearing land or lands.

61. In this regard, Figure 3 below, reproduced from the ’128 patent, shows an end view of the bearing and shaft with a portion of the bearing removed. To prevent jamming, the ’128 patent requires that the width (C) of each recess 22 be made greater than the distance (A) between tracks (28a or 28b) of the same closed loop path 27, and the width (B) of the bearing lands 20 be made smaller than the distance (A) between tracks (28a or 28b) of the same closed loop path 27. As a result, the relationship C > A > B is required in order to prevent jamming or lock-up. Tr. 90, 98-102. In addition, the ’128 patent further prevents jamming by making the number of the closed loop paths unequal to the number of bearing lands. Tr. 100-03.

3. The Pnor Art — The Manby Patent

62. The Manby patent (Defs.’ Ex. B6) entitled “Improvements in or relating to Anti-Friction Bearings” is substantially identical to the 128 patent. The Manby patent specification was published on May 16, 1962 (approximately 13 years before the filing of the Geffner application), based upon a British patent application (Serial No. 7072/57) filed on March 4,1957. Defs.’ Ex. B6.

63. The Manby patent specification (or “Manby”), like the Geffner 128 patent, discloses a number of constructions of an anti-friction bearing which permits both relative linear and relative turning movement between the bearing assembly and a shaft. Defs.’ Ex. B6 (page 1, lines 10-16 of the Manby patent). In this regard, Manby discloses at least two related embodiments found in Figures 1-4 and Figures 5-6. The Court first will describe those features common to both embodiments, and then will turn to discuss the distinctions indigenous to each.

64. With reference to Figures 3 and 5 of Manby, each embodiment includes a hollow cylindrically-shaped bearing cage (items 12 and 26 respectively) positioned inside the outer race and rotatable therein. Each cage contains a plurality of ball bearings. The bearing cage facilitates the linear and rotary motion of the outer race with respect to the inner race.

65. The bearing cage (or retainer) includes a plurality of trackways (items 14 and 27 respectively) which contain the ball bearings. See below. The cage 12 has a thickness which is less than the ball bearing diameter. Each trackway is opened at the radial top and bottom so that the ball bearings may extend simultaneously from the outer and inner surfaces of the cage. As is the case with the T28 patent, linear movement of the ball bearings through the trackways facilitates linear movement of the outer race with respect to the inner race.

66.With reference to the embodiments shown in Figures 1 and 6 below, the outer race (items 11 and 30 respectively) are generally cylindrically-shaped and contain an inner and outer surface. Located on the inner surface are a plurality of bearing lands (items 16 and 29 respectively) (described as “bearing faces” in Manby) which extend longitudinally a length which is less than the length of the outer race. A plurality of recesses (items 17 and 31 respectively) (described as “depressions” in Manby) are positioned between the bearing lands and extend longitudinally along the inner surface of the outer race. Like the bearing lands (“bearing faces”), the longitudinal length of the recesses (“depressions”) is less than the length of the outer race. Positioned at the ends of the bearing lands and recesses are first and second circular recesses (called “peripheral depressions” in Manby).

67. As stated above, linear movement of the outer race is provided by a continuous movement of the ball bearings through the trackways. Ball bearings in one trackway simultaneously engage both the bearing land (“bearing face”) of the outer surface and the smooth surface of the inner race (called a “shaft”) and move together in one direction. Concurrently, ball bearings in an adjacent trackway travel in the opposite direction and through a recess (“depression”). While in the recess, the ball bearings engage only one of the inner and outer races.

68. In the first embodiment as shown in Figures 1 and 3 of Manby, the trackways 14 are equally spaced apart around the bearing axis (Manby, page 5, lines 98-100) and are connected at their ends by semicircular-shaped returns 15 (“curved track end portions”) to form a single closed zig-zag circuit around the periphery of the cage. (See the bearing cage of Figure 3 above.) In this arrangement, the interconnections between the trackways allow for a continuous stream of ball bearings to circulate completely around the cage periphery. The returns are aligned with the first and second circular recesses (“peripheral depressions” in Man-by). Thus, when the ball bearings enter any one of the returns, the ball bearings engage only one of the race members.

69. As previously stated, continuous movement of ball bearings through the trackways facilitates linear movement of the race member. The returns allow ball bearings in one trackway to move into an adjacent trackway. Since ball bearings in one trackway travel in an opposite direction of ball bearings in an adjacent trackway, the returns allow for a continuous stream of ball bearings through any one trackway.

70. The relative widths of the bearing lands (B) (i.e., “bearing faces”), the recesses (C) (i.e., “depressions”) and the adjacent trackways (A) are described. On page 2 beginning at line 102, Manby sets forth:

The circumferential width of the bearing faces 16 is made slightly less than the width of the depressions 17 so that as measured peripherally the distance between the contact points of balls 13 in adjacent trackways is very slightly greater than the width of each bearing surface 16.

Defs.’ Ex. B6 (page 2, lines 102-108 of Man-by patent).

71. In other words, the arcuate width of each recess (C) is greater than the arcuate width of each bearing land (B), and the width between adjacent trackways (A) is greater than the arcuate width of the bearing lands (B). Using the Geffner scheme, C > B and A > B.

72. Further, the number of longitudinal trackways in the cage of the embodiment of Figures 1-4 is twice the number of longitudinal bearing faces (bearing lands) on the outer race. Moreover, the trackways and bearing faces are spaced equally apart around the bearing axis. Defs.’ Ex. B6 (page 5, lines 94-100 of the Manby patent). This is to prevent jamming or the formation of a “critical setting,” the situation in which ball bearings in adjacent pathways simultaneously engage both the inner race and the bearing land. Id. (page 2, lines 123-130 and page 3, lines 1-28 of Manby patent).

73. As mentioned above, an alternative form of construction which illustrates “a further method of avoiding critical settings” is shown in Figures 5-6 and discussed in principle on page 3, lines 69-110 of the Manby patent. Here, adjacent pairs of trackways are connected by returns to form a plurality of closed loop tracks (or “circuits”), as is the case in the ’128 patent. (See Figure 5 of Manby above.) In one trackway, ball bearings travel in one direction simultaneously engaging both the bearing land (or “bearing face”) and the inner race. Ball bearings in the other trackway travel in the opposite direction and through a recess (“depression”) of the outer race.

74. In this regard, Manby indicates that the modified retainer or bearing cage 26 of Figure 5 is the same as the retainer or bearing cage 12 of Figures 1 and 3 with the exception that, instead of joining the ends of the trackways together to form a single closed zig-zag arrangement, the trackways are joined at each end to form a plurality of closed circuits. Specifically, Manby on page 3, lines 72-86 states:

Fig. 5 shows a modified bearing cage 26 having trackways 27 corresponding to the trackways H except for the fact that they are connected in adjacent pairs with those of each pair joined at both ends by arcuate track end portions'28. Thus the cage provides a succession of separate closed circuits for the balls arranged around the circumference of the cage. As before the balls in each closed circuit run along trackways 27 for linear motion and while in one of the trackways they engage a bearing surface 29 on an outer race 30, see Fig. 6, and run freely in the other trackways opposite a depression 31 in the race.

Defs.’ Ex. B6 (page 3, lines 72-86 of Manby patent) (emphasis added).

75. This embodiment is described as permitting linear and rotary motion of the outer race member in the same manner as the bearing of the first embodiment, but with a set of balls running around a separate closed loop track (or “circuit”) as opposed to a zigzag succession of interconnected trackways. In other words, the bearing cage of the second embodiment is identical to that of the first embodiment except for the manner in which the pathways are interconnected by the returns.

76. The recesses (“depressions”) are further described as having a width slightly greater than the width of the closed loop track (C > A). In particular, beginning on page 3, line 86, Manby recites:

The depressions 31 are each of a width slightly greater than the distance between the contact points of balls in adjacent trackways.

Defs.’ Ex. B6 (page 3, lines 86-89 of Manby patent).

77. The embodiment of Figures 5-6 contains a further variation of the embodiment of Figures 1-4. This variation relates to the relative number of closed loop tracks and bearing lands. In particular, and beginning on line 93 of page 3, Manby recites that:

In the example shown in Figures 5 and 6 there are ten trackways 27 forming five complete circuits but instead of there being five bearing surfaces on the race 30 as in the construction of Fig. 1 there are six such surfaces thereby avoiding the theoretical possibility of a critical setting since it is ensured that whatever the relative rotary positions of the cage 26 and race 30 there are at least three rows of balls 13 spaced apart around the bearing axis to take the load by engaging with a bearing surface 29.

Defs.’ Ex. B6 (page 3, lines 93-105 of Manby patent).

78. Thus, Manby also teaches the avoidance of jamming (or a “critical setting”) by, among other things, employing an unequal number of closed loop tracks and bearing lands.

79. As a result, the embodiment of the Manby invention shown in Figures 5-6 is the same as the bearing claimed in Geffher’s T28 patent. Specifically, Manby shows a eylin-

drically-shaped retainer means (“bearing cage”) 26 coaxially positioned between the outer race 30 and the shaft 10. As is the case with the ’128 patent, the retainer means 26 can turn relative to shaft and outer race about their common axis. Defs.’ Ex. B6 (page 2, lines 76-78 of Manby patent). The retainer means (“bearing cage”) includes a plurality of closed loop paths (or “closed circuits”), each of which is filled with ball bearings 13. Id. page 3, lines 72-80.

80. Continuous movement of the ball bearings 13 around the closed loop paths or circuits provides for linear movement of the outer race 30 over the shaft 10. During linear movement, ball bearings 13, circulating through one elongated track of the closed loop circuit, simultaneously engage both the bearing land 29 and the shaft 10, while ball bearings 13 circulating through the other track of the same closed loop path or circuit, travel through the recess 31. Id. page 3, lines 80-86. While in the recess (“depression”) 31, the ball bearings 13 engage either the outer race 30 or shaft 10, but not both.

81. Further, Manby explicitly recognizes the possibility of jamming, i.e., ball bearings 13 in both tracks of the same closed loop path simultaneously engaging separate bearing lands 29. To prevent jamming (or the occurrence of a “critical setting”), Manby teaches the identical, allegedly novel features of the ’128 patent: that the recess width (C) should be greater than the distance (A) between tracks of the closed loop path (id. page 3, lines 86-89), and that the bearing surface width (B) should be less than the width (A) between tracks of the closed loop path (id. page 2, lines 105-118). Moreover, Manby teaches that the number of closed loop paths should be unequal to the number of bearing lands 29. Id. page 3, lines 93-100.

4. Manby Discloses All of the Limitar tions of the Remaining Claims of Geff-ner’s ’128 Patent

82. A review of the remaining claims of the ’128 patent indicates that all of the elements or limitations specified therein are present in Manby. Tr. 665-81. As an aid in clarifying this issue, set forth below are (1) a table showing Manby elements which are identical to the elements of claim 1 of the ’128 patent, and (2) a Claim Chart Analysis for claims 1, 3, 5, and 9-14 of the ’128 patent with respect to the Manby patent. Defs.’ Ex. D26 (Defs.’ Expert Report).

Elements of claim 1 of Geffher’s 128 Patent Manby Elements

1. First race member Outer bearing race 11, 30

2. Second race member Shaft 10

3. Bearing lands Bearing faces or surfaces 16, 29

4. Rollable bearing elements Bearing balls 13

5. Retainer means Bearing cage 12,26

6. Closed loop path Circuits formed by trackways 27 and end portions 28

7. Recesses Depressions 17, 31

8. Pathways Trackways 27

9. Returns End Portions 28

10.Circular Recess Depression 24

The ’128 Patent Manby

1. In a rectilineal* and rotary motion bearing having relatively spaced first and second race members, 1. Manby relates to a rectilinear and rotary motion bearing having relatively spaced first (outer bearing race 11, 30) and second (shaft 10) race members. See p. 1, lines 10-26.

one of said members having relatively spaced bearing lands, One of said members (outer bearing race 11, 30) has relatively spaced bearing lands (bearing surfaces 16,29). See p. 2, lines 54-57.

rollable bearing elements in said bearing for movement between said first and second race members and movable into and out of engagement with said bearing Rollable bearing elements (bearing balls 13) in said bearing move between said first (outer bearing race 11,30) and second (shaft 10) race members and movable into and out of engagement with said bearing lands (bearing surfaces 16, 29). See p. 2, lines 6-23, p. 3, lines 80-86.

retainer means between and movable relative to said first and second race members and having a plurality of closed loop paths for retaining said bearing elements between said first and second race members, the invention comprising Retainer means (bearing cage 12, 26) is between and movable relative to said first (outer bearing race 11, 30) and second (shaft 10) race members and has a plurality of closed loop paths (trackways 27 and end portions 28) for retaining said bearing elements (bearing balls 13) between said first (outer bearing race 11, 30) and second (shaft 10) race members. See p. 2, lines 44-46 and 76-78, p. 3, lines 73-77.

said closed loop paths each having a pathway defined therein Said closed loop paths (trackways 27 and end portions 28)

83. As indicated in the Claims Chart shown above, the Court finds that each of the noted Geffner claims “reads” on one or more of the bearings disclosed in Manby.

84. In this regard, even plaintiffs expert, Mr. Muller, acknowledged common subject matter between the patents, testifying that while Geffner taught “an elegant solution” to a problem, Manby taught “a lesser solution” to the same problem. Tr. 445, 523.

85. Plaintiff Geffner contends that, because one or more novel features are present in the ’128 patent, his patent can be distinguished from Manby. Thus, according to the plaintiff, his bearing is not anticipated by Manby.

86. According to Geffner’s expert, Mr. Muller, this result is attributable to the fact that the Geffner bearing has further distinguishing design characteristics over the Man-by bearing including the use of unequal spacing between adjacent closed loop paths. Tr. 384-86. Because Manby discloses equal distribution of all of the ball paths while the ’128 patent indicates that the distance between ball paths of adjacent closed loops may vary, Muller is of the view that the ’128 patent is directed to a greater number of design features than Manby. Tr. 385-86.

87. Similarly, using an analogy based upon a car to illustrate the alleged differences in bearing design characteristics, Muller surmised that a hypothetical “Manby car” only would be able to ten to the left, while a hypothetical “Geffner car” would be able to ten both to the left and to the right. Tr. 410, 450. Using this analogy, plaintiff’s expert concluded that the Geffner patented bearing is substantially different from the Manby design.

88. However, while Geffner may relate to further distinguishing features relative to Manby, (i.e., unequal spacing between balls of different closed loop paths) these distinguishing features are not stated in the language specified by the Geffner claims. Thus, these purported distinguishing features have no consequence on the anticipation issue in this lawsuit. Tr. 705-07.

89. Thus, Manby discloses and reads on (i.e., directly anticipates) all of the limitations stated in the remaining claims of the ’128 patent. Thus, claims 1, 3, 5 and 9-14 lack novelty and are anticipated by Manby. Tr. 681.

90. Notwithstanding the above findings, it is the Court’s understanding that the last paragraph of claim 1 contains two additional limitations which Geffner contends to be distinguishable from Manby. Tr. 192. The last paragraph of claim 1 of the ’128 patent recites:

each said closed loop path having two of said pathways, each of which is relatively spaced from the other an extent greater than the extent of each of said bearing lands and less than each of said recesses.

PL’s Ex. 1 (col. 7, lines 42-46 of ’128 patent). However, it is the Court’s opinion that these limitations are present in Manby. This is described in more detail below.

91. The first alleged distinguishable limitation requires the pathways of each closed loop path to be relatively spaced from each other an extent greater than the width of the bearing lands.

92. On page 2, lines 105-108, Manby discloses:

the distance between the contact points of balls 13 in adjacent trackways is very slightly greater than the width of each bearing surface 16.

Defs.’ Ex. B6 (page 2, lines 105-108 of Man-by patent).

93. In the Court’s opinion, the phrase “distance between the contact points of balls 13 in adjacent trackways” in Manby is the same in meaning as the language referring to the spacing between two pathways of a closed loop path, as recited in claim 1 of the 128 patent. Because Manby discloses that the distance between contact points of balls 13 in adjacent trackways is “greater” than the width of each bearing surface 16, it follows that Manby reads on the limitation of claim 1 that the spacing between pathways of each closed loop path is greater than the extent of the bearing lands.

94. Plaintiff Geffner further argues that because the specification of the 128 patent measures the distance between the two pathways of each closed loop based upon the distance between the “center lines” of the ball bearings in each pathway, while Manby measures the distance between the two pathways (trackways) based upon “contact points” of the ball bearings, Manby does not disclose the pathway distance limitation of the remaining claims of the 128 patent. Tr. 218-19; see also Tr. 852 (testimony of Bauer). According to plaintiff Geffner and his expert, Gerald Muller, this is so because the distance between the “contact points” of the ball bearings in Manby included not only the distance between the center lines of the ball bearings but also smaller distances (i.e., thousandths of an inch) relating to the distance between the inside edges of adjoining trackways or bearing balls. Tr. 145-46, 364-66, Defs.’ Ex. E6. According to plaintiff, this distinction arises because different locations on the surface of the ball bearing could come into contact with the outer race. Tr. 364-69.

95. However, it appears that Geffner’s definition of the distance between “contact points” discloses the distance between the center lines of the ball bearings by necessary implication. Tr. 792. Indeed, Geffner implies this in his illustrations. See Defs.’ Ex. C17 (last two pages), C18 (last two pages).

96. Further, when Mr. Bauer attempted to construe the dimension “A” (the distance between the pathway legs of each closed loop path) to be the inner tangent points of the balls in graphics Al and A2, such an “A” failed to exceed the widths of the lands (“B”) required by the claims (i.e., “C > A > B”). Tr. 904-07. Therefore, Mr. Bauer’s second definition of “A” based upon contact points fails to conform to his original definition of “A” based on center lines utilized in the Supplemental Amendment and drawings.

97. Accordingly, in view of the above noted shortfalls and others, this Court fails to find any support for plaintiff Geffner’s contentions that Manby does not disclose the distance limitations specified in the remaining claims of .the ’128 patent.

98. The second alleged substantial distinction that Geffner alleges concerns the requirement that the pathways of the closed loop paths be relatively spaced from each other a distance that is less than the width of the recesses.

99. On page 3, lines 86-89, Manby teaches:

The depressions 31 are each of a width slightly greater than the distance between the contact points of balls in adjacent trackways.

Defs.’ Ex. B6 (page 3, lines 86-89 of Manby patent).

100. Because the distance between contact points of balls in adjacent trackways is substantially the same as the spacing between pathways of each closed loop path, the Court is of the view that Manby discloses the claim 1 limitation that pathways are spaced from each other a distance that is less than each of the recesses.

101. Similarly, plaintiff Geffner attempts to differentiate the last paragraph of claim 1 from Manby by indicating that the distance-between-pathways limitation does not have to be limited to the pathways of the same closed loop path but also could include the distance between pathways of two adjacent closed loops. However, not only do the last paragraphs of claim 1 read contrary to such an interpretation, the graphics submitted by Geffner (i.e., see the discussion below concerning the Supplemental Amendment) purportedly to represent the Geffner invention (i.e., Geffner drawings Al, A2) indicate the opposite, even upon allowing for the fact that they were not intended to be drawn to scale, but were designed for illustrative purposes only.

102. Moreover, Geffner denied that Man-by taught the specific C > A > B relationship set forth in the last paragraph of claim 1 of the ’128 patent. Similarly, Geffner denied that Manby taught a workable bearing. However, even Geffner’s expert, Mr. Muller, admits that Manby discloses the C > A > B relationship in his calculations.

103. Specifically, in his calculations, Mr. Muller calculated in his model that the width of the recesses is 1.02 (“D” or “depression”), the distance between the trackways or contact points of the bearings is 1.0 (“B” or “bearing”) and the width of the bearing lands is 0.65 (“L” or “lands”). Since 1.02 > 1.0 > 0.65 (or D > B > L), even Mr. Muller calculated that the Manby bearing meets the C > A > B parameter of the claims. Pl.’s Ex. 23-24.

104. Similarly, Muller concluded that such a Manby 1.02 > 1.0 > 0.65 design would work and function properly. Additional working embodiments meeting the C > A > B parameter also were specified by Midler in his calculations. Pl.’s Ex. 26.

105. Consequently, plaintiffs own expert determined that Manby discloses the limitations of the remaining claims of the ’128 patent. Tr. 452-53.

106. Further, even Geffner testified that Manby teaches a workable bearing, but allegedly only on paper. Tr. 260-62. In this regard, Geffner contends that the Manby patent does not disclose his invention because Manby never built a workable bearing. However, in the Court’s view, to the extent that the Manby patent does not explicitly disclose all of the limitations of the ’128 patent, any remaining limitations of the ’128 patent are inherently disclosed by Manby. In this regard, the defendants have proven by clear and convincing evidence that persons of ordinary skill in the field of the invention would recognize the limitation of center lines from the Manby prior art reference. Indeed, the Court is of the view that, if a person of ordinary skill in the field of the invention were asked to determine the contact points of the ball bearings, such person would respond that this answer easily could be obtained by drawing lines down the center of the pathway legs (i.e., by drawing “center lines”). Accordingly, under principles of in-herency, the Court does not regard the Geff-ner limitation of center lines — or any other element of the ’128 patent for that matter— to be novel. Thus, because the defendants have proven by clear and convincing evidence that the Manby patent discloses all of the limitations of the ’128 patent’s claims, this Court finds that all of the subject claims of the ’128 patent read on the Manby reference.

5. The Prosecution of the Geffner ’128 Patent in View of Manby

107. During the initial prosecution of the Geffner application, the PTO Examiner allowed various claims concerning Geffner’s antifriction bearings. Tr. 681-82. However, before the patent issued, Geffner learned of the Manby patent. Tr. 106-07. As discussed above, the Manby patent discloses an antifriction bearing remarkably similar in all important aspects to Geffner’s invention.

108. Geffner’s patent attorney, Jerome Bauer, held an interview with the PTO Examiner on October 8, 1976 to discuss the relevance of the Manby patent to the Geffner invention. During the course of the interview, the Manby patent was, for the first time, disclosed to the Examiner.

109. In discussing the relevance of the Manby patent with the Examiner, Mr. Bauer utilized a number of transparent overlay exhibits. Tr. 690-91. The overlays were presented to the PTO Examiner as representative, cross-sectional drawings of the Manby patent. However, as more particularly discussed below, the diagrams prepared by Geffner distorted and grossly misrepresented the features of the Manby bearing. Tr. 709-18.

110. Because Bauer was relying on the information provided to him by Geffner, Bauer did not recognize the misleading nature of the information submitted to him at the time of the interview. Tr. 808-09. However, as discussed below, it is clear that Geffner knew of these discrepancies.

111. In this regard, the interview was followed by a paper filed with the PTO entitled “Supplemental Amendment” (Defs.’ Ex. Al, paper 7, at 37-65) in which Bauer discussed the contents of the interview and provided extensive arguments as to why Geffner’s invention was substantially different from the Manby patent. The Supplemental Amendment, dated October 19, 1976, included not only copies of the transparent overlay exhibits utilized during the previous interview, but also a number of inaccurate statements such as the assertion that Manby did not avoid “critical setting” (i.e., a lock-up of the ball bearing structure), and that “[f]or the first time in all art relating to antifriction bearings, the [Geffner] application now teaches how to avoid such critical settings without the use of offset trackways and offset bearing surfaces_” Defs.’ Ex. Al, paper 7, page 43, lines 1-12 (emphasis added). A more detailed discussion concerning the misleading information set forth in the Supplemental Amendment is set forth below.

112. As a direct result of the distorted Geffner drawings and misleading information submitted by Bauer concerning Manby, which supposedly distinguished the Manby bearing from the Geffner bearing, the Geff-ner patent was allowed by the PTO.

113. Moreover, in addition to filing in the United States, Geffner filed patent applications for the same invention in numerous foreign countries, including England (United Kingdom) and West Germany. In two separate letters dated November 4,1976, Geffner, acting through Bauer, disclosed the Manby patent to each of his foreign attorneys. These letters