RICH, Circuit Judge.
This patent appeal is from the October 27, 1982, judgment of the United States District Court for the Southern District of Texas. Sitting without a jury, it held claims 1-3, 6, and 8-12 of U.S. Patent No. 3,816,092 (RH patent or Wilson patent), issued June 11, 1974, to Rohm and Haas (RH or R & H) as assignee of the inventors, for "Herbicidal 3,1-dichloroanilides," valid and infringed by Crystal Chemical Co. and Joe C. Eller (collectively Crystal).
The extensive opinion of the district court is reported at 217 USPQ 515-603 and familiarity with the procedural history and substantive background of this dispute as therein set forth will be presumed. We find it necessary at this juncture to discuss only the issue of fraud as it affects patent validity.
The Fraud Issue
A. Disposition by the District Court
Of 220 Findings of Fact, the district court made the following 19 findings with respect to Crystal's claim that the RH patent was procured with affidavits furnished to the PTO containing misleading, falsified, and misrepresented data. Each of these findings appears under the district court's subheading "6. Renewed Prosecution of the 1961 Application." 217 USPQ at 541. We summarize them as follows, adding some pertinent comments and giving their USPQ locations and finding of fact numbers:
1. On February 16, 1973, RH held an "extensive interview" with patent examiner Thomas, after intensive preparation "to identify areas of potential interest to the patent examiner and to collect and organize documents in logical sequence." Representatives of both the Department of Justice,
2. Thomas had been responsible for declaring Interference 93,751 among Monsanto, RH, and Bayer, and rendered the decisions on motions during the motion period. Finding 109 at 217 USPQ 542.
3. At the time of renewed prosecution, Thomas was a primary examiner. Since 1956 he had examined applications dealing with herbicides, he was the recognized PTO herbicide expert, in 1973 he had 8 or 10 other pending applications dealing with the same subject matter as RH's 1961 application, he was well aware of the herbicidal activity of propanil and related compounds, he was familiar with the review and interpretation of herbicidal data sheets, and he was familiar with the prior art. Finding 110 at 217 USPQ 542.
4. During the interview, documents were spread out for ease of reference on conference room tables. Thomas brought the RH prosecution files with him and indicated that he had reviewed them prior to the interview. Finding 111 at 217 USPQ 542.
5. During the interview, RH summarized and explained key events of prior proceedings including, but not limited to, the interference and the Monsanto litigation. RH left Thomas copies of trial court and appellate opinions, RH's appellate brief, and all four volumes of the appendix before the Third Circuit in the Monsanto case (the appendix being marked for items that might be of particular interest to Thomas). Thomas stated that he intended to review these items after the interview. Finding 112 at 217 USPQ 542.
6. On returning these documents several weeks later, Thomas stated that he had reviewed the pertinent parts. Finding 113 at 217 USPQ 542.
7. RH's discussion of the Monsanto litigation and its disclosure of Monsanto's contention that RH had withheld herbicidal data from the PTO, together with its counsel's notation to Thomas of the trial court's comment that "Monsanto and Rohm and Haas were equally disingenuous with respect to the comparison of the herbicidal effects of DCAA and DCPA in their applications to the Patent Office," alerted Thomas to the importance of the comparative data. Only the testimony of McRae, one of the inventors, and of Hutz, RH's lead counsel, is cited in support of this finding. Finding 114 at 217 USPQ 543.
8. Hutz and McRae also brought a "substantial number of documents" called the "500,000 series" documents. The court found that although Hutz repeatedly offered to file the documents with the PTO, Thomas elected to have them remain with RH. Finding 115 at 217 USPQ 543.
9. RH also discussed with Thomas the prior art that had been raised during prosecution of the RH applications, the prior art relied on by RH in the Monsanto litigation, and the prior art that had been cited against Monsanto during prosecution of its application. Finding 116 at 217 USPQ 543.
10. In preparation for the interview, RH collected all records available to it reflecting herbicidal test data on propanil and related compounds regardless of whether the related compounds were prior art. These were the "500,000 series" documents. The identity of the compounds for which data existed was brought to Thomas' attention. Finding 117 at 217 USPQ 544.
11. These data were used to prepare several affidavits that had been filed in the PTO
12. Thomas was told that RH had been unable to locate all the test data in its records corresponding to data recited in the affidavits filed with the PTO, and that there were data in its records that had not been initially reported to the PTO during the prior prosecution. Finding 119, at 217 USPQ 544.
13. Test data specifically identified and discussed indicated that propanil was not unique as a pre-emergence or general herbicide, that propanil damages some crops, that related compounds displayed relatively high herbicidal activity, and that related compounds like DCAA and DCMVA possessed some selective, post-emergence herbicidal activity. Finding 120, at 217 USPQ 544.
14. Even though all data on propanil's herbicidal activity were not discovered by RH, "a search for all of such data was conducted." Finding 121, at 217 USPQ at 544.
15. The interview lasted about 2 1/2 hours, which is "considerably longer than normal interviews." Finding 123 at 217 USPQ 545.
16. Following the interview, RH filed an amendment summarizing the interview. It offered again to supply more information and copies of any document discussed. Finding 124, at 217 USPQ at 545.
17. At the conclusion of the interview, RH was of the good faith belief that Thomas appreciated the information supplied and its implications. He was again reminded of these disclosures at a subsequent interview, and he told RH that he was fully satisfied and required no further information. Finding 125, at 217 USPQ 545.
18. Regarding the affidavits relied on by RH during prosecution: "As defendants argued and as plaintiff has admitted, at the time the six allegedly defective affidavits were submitted on the Patent Office, all of the test data were not disclosed in the affidavits." The employee who prosecuted the application and decided which data to submit died before its issuance, and "the reason behind his actions were not disclosed during the trial * * * and it has been represented to this Court that such motives, if any, are not known." Although not wholly a finding of fact, the court also here stated: "What is important to this Court's inquiry into the validity of Rohm and Haas' patent in light of defendants' fraud allegations is the fact that McRae, the person who executed but did not prepare the affidavits, believed such affidavits and the assertions contained in such affidavits to be accurate."
19. RH's dealings with Thomas during renewed prosecution of the 1961 application "were reasonably based on its belief that patent examiner Thomas was qualified as an expert in the herbicide field, experienced
The trial court filed 133 Conclusions of Law. Based on the above summarized findings of fact, and in view of Fifth Circuit precedent on "fraudulent procurement" (Conclusion 32), it stated a single conclusion with respect to Crystal's assertions of fraud in the PTO, which we quote verbatim:
B. Arguments on Appeal
Crystal admonishes that the trial court's opinion "totally overlooked R & H's most egregious misrepresentations." We certainly agree that the facts revealed by the arguments on appeal are nearly wholly absent from the opinion below.
Crystal states that propanil was compared to DCAA (3,4-dichloroacetanilide, its adjacent lower homolog) in Affidavit D which was submitted during prosecution of the 1960 application on July 11, 1961, and during prosecution of the 1961 application on July 20, 1961. Apparently, a first draft of the affidavit was destroyed and another one containing different comparative data was substituted. Crystal asserts that the first draft contained data from propanil versus DCAA tests run in December, while the second affidavit compared propanil kill data from the December tests and DCAA kill data from tests run in May, a time of year when plants are well known to be more resistant to herbicides. A June 21, 1961, letter from the R & H patent department to R & H's Washington counsel explains:
Crystal states that both McRae and Wilson acknowledged that one comparing such data would need to know that the tests
DCAA % Post-Emergence Phytotoxicity at 1 lb./acre DECEMBER DATA AFFIDAVIT D-------- ----------- Crabgrass .......................... 50 0 Foxtail ............................ 0 0 Millet ............................. 20 0 Wheat .............................. 0 0 Ryegrass ........................... 0 0 Wild Oats .......................... 70 0 Sudan grass ........................ 20 0 Mustard ............................ 20 0 Lamb's Quarter ..................... 100 0 Curly Dock ......................... 60 0 Pigweed ............................ 100 0 Bean ............................... 0 0 Flax ............................... 0 0
Crystal also states that R & H deleted the May data ("AFFIDAVIT D") that showed two plants to have been affected by DCAA (wild carrot at 60 and indian mallow at 70). It is emphasized by Crystal that the May data shown above were submitted in the affidavit which contained the December propanil data. R & H's communication to the PTO which accompanied this affidavit stated that the "Affidavit shows comparisons of the herbicidal activity of [propanil] with [nine] compounds which are all homologs, analogs or position isomers of [propanil]." R & H continued:
Turning to what it calls the "affidavit E misrepresentations," Crystal states that despite affidavit D, the examiner refused to withdraw his prior art rejection. He questioned whether DCIBA (3,4-dichloroisobutyranilide, another homolog) and DCMVA (3,4-dichloroalphamethyvaleranilide, another homolog) would not also be selective herbicides if applied at low rates, and requested R & H to submit appropriate data. He also questioned whether DCAA would be effective when applied at higher rates and requested that R & H submit data on DCAA at 10 lbs./acre.
Crystal submits that tests of DCAA on eight different crops and fourteen different weeds at 10 lbs./acre showed that DCAA had injury rates of 80% to 100% on six of the weeds, and that rice, wheat, ryegrass, tomatoes and barley were tolerant at this rate. Crystal asserts, however, that in preparing
With respect to DCIBA and DCMVA, Crystal states that the test results at 1/8 and ¼ lb./acre showed DCIBA had no effect on rice, and little effect at higher rates, although it was highly phytotoxic to a number of weeds at those rates. The results also showed, it is stated, that DCMVA had a very low effect on rice at these low rates. Crystal suggests that R & H could not merely omit unfavorable data because all of the DCIBA and DCMVA data were unfavorable. Crystal states that R & H changed it:
DCIBA DATA AFFIDAVIT E ACTUAL DATA------------- ------------ Gulf Blue Gulf Blue lbs/acre Rose Bonnet Rose Bonnet-------- ---- ------ ---- ------ 1/8 ........................... 30 35 0 0 ¼ ........................... 40 45 0 10 ½ ........................... 65 70 10 15 1 ............................. 90 90 15 20 2 ............................. 100 100 40 30
Additionally, Crystal notes that R & H omitted all data showing that carrots were tolerant to DCIBA and DCMVA.
In concluding its discussion of what R & H did, Crystal states that the examiner accepted the affidavit representations concerning DCAA, DCMVA, and DCIBA as sufficient to overcome all rejections: "Thereafter the rejections over the Fischer, the CBCC article and the Bielstein reference were withdrawn, the broadest, primary claim — claim 9 — was held allowable, and an interference was declared * * *. These prior art references were never again asserted by any PTO Examiner as a basis for rejecting or limiting any claims."
In light of the above facts, Crystal argues that the "subjective but for" test of materiality has been satisfied, citing Norton v. Curtiss, 433 F.2d 779, 167 USPQ 532, 57 CCPA 1384 (1970). It also asserts that "Virtually identical procedural circumstances" that led the Third Circuit to affirm the trial court's determination that Monsanto's claims to propanil per se were invalid for fraud in the PTO are presented here. Monsanto Co. v. Rohm and Haas Co., 312 F.Supp. 778, 164 USPQ 556, and 165 USPQ
Crystal also states, and we agree, that the court was in error in saying that "what is important to" the court's inquiry into fraud is "the fact that McRae, the person who executed but did not prepare the affidavits, believed that such affidavits and the assertions contained in such affidavits to be accurate." See footnote 2 supra. Crystal emphasizes that intent is not often demonstrated by direct proof, but only by circumstantial evidence, and that
Crystal also states that both McRae and Myers knew that the data compared in Affidavit D were taken from different times of the year and that, thus, while accurate they were not fair. It is further argued that both reliance on the misrepresentations and injury to the public are manifest.
Turning to the effect of the renewed prosecution in 1973, after the interference, Crystal asserts that the court "erred in concluding that the February 16, 1973 representations to Examiner Thomas were effective retractions or corrections of the acts of fraud completed during 1958-63." First, Crystal argues that this conclusion is based on inadmissible evidence (memoranda of R & H's lead counsel concerning the interview) and testimony (that of R & H's lead counsel) that was heavily relied upon. Prior to trial, Crystal asserts, it sought production of the documents relied on and R & H refused to produce them on the grounds of privilege and work product. Thus,
Second, Crystal argues that the information supplied to the PTO in 1973 was legally ineffective because the alleged attempted retraction of material misrepresentations occurred only after prosecution on the merits had been closed, citing Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F.Supp. 948, 964-65, 175 USPQ 260, 271-72 (S.D.Fla.1972), aff'd, 479 F.2d 1328, 178 USPQ 577 (5th Cir.1973); Tipper Tie v. Hercules Fasteners, 130 F.Supp. 3, 9, 105 USPQ 182, 187 (D.N.J.1955), aff'd, 232 F.2d 635, 109 USPQ 373 (3d Cir.1956); Louis A. Grant, Inc. v. Keibler Industries, Inc., 377 F.Supp. 1069, 1082, 181 USPQ 1, 10-11 (N.D.Ind.1973), dismissed, 541 F.2d 284 (7th Cir.1976), for the proposition that such retractions must
Third, Crystal argues that "the raw data submissions to the examiner were too complicated and were presented too quickly to have been effective retractions or corrections of the previous misrepresentations." Crystal emphasizes that about 3,771 pages were presented to Thomas at the interview, some 1,326 of these being the "500,000 series documents."
Crystal notes that
Fourth, Crystal alleges that "the trial court erred in determining that R & H was entitled to rely on Examiner Thomas." Instead, it is argued:
Finally, Crystal contends that, in any event, "once fraud on the PTO has been committed, it cannot be corrected," citing Ex parte Mallard, 71 USPQ 294 (Comm'r Pat.1946) and Kuzel v. Heany, 1911 C.D. 148 (Comm'r Pat.1910).
In light of the above arguments, Crystal concludes its discussion of fraud by maintaining that during the post-interference interview R & H continued to conceal effectively the previous wrongs by burying the relevant data in a mountain of irrelevant information.
2. Rohm and Haas
Dozens of issues were considered and resolved by the trial court, many involving Crystal's antitrust counterclaims under sections 1 and 2 of the Sherman Act and section 3 of the Clayton Act. Although comparatively few "findings" and only one "conclusion" of the court are devoted to the fraud allegations, R & H devoted almost forty percent of the "Argument" portion of its brief to this issue, as did Crystal.
Preliminarily, we note that nowhere does R & H deny the facts that underlie Crystal's allegation of fraud with regard to affidavits D and E. R & H variously characterizes those facts simply as "defects which they claim existed," "all deficiencies which may have existed," or in terms like "whatever those deficiencies may have been," and so on.
The R & H argument is directed solely to contentions that no fraud or inequitable conduct was proved because, ultimately, R & H "made a complete disclosure of all material facts."
R & H asserts that it discussed the following matters at the interview:
R & H also states that "On December 12, 1973, a final interview was held with Examiner
With respect to Crystal's fraud arguments, R & H first notes that Crystal's emphasis on the pre-1973 prosecution totally ignores
R & H also maintains that Hutz' testimony and related documents were properly admitted as rebuttal evidence. R & H points out that Crystal did not seek production of those documents by motion to compel, nor did Crystal seek to depose any witness other than Hutz and McRae regarding the circumstances of the interviews.
R & H declares that Crystal's assertion that prosecution on the merits was closed by 1973 "is belied by the Examiner's ready rejection of claims during the renewed prosecution." Further, R & H contends that Thomas readily understood its interview disclosures. With respect to the written record:
R & H further states that "Defendants' contention that Mr. Thomas had to be expressly told about each prior rejection and how each affidavit responded to each rejection is fallacious." It contends that R & H "was entitled to rely on the reasonable belief that the Examiner had taken its disclosures into account when allowing the Wilson application," for it "placed evidence before the Examiner that it reasonably believed should have alerted the Examiner to the true state of the facts." [Emphasis by R & H.]
Responding to Crystal's argument that fraud cannot be corrected, R & H says that "The law plainly holds that the question of `correction' is properly assessed at the end of prosecution where the bases of allowance can be accurately determined," citing a number of cases.
R & H also stresses that the district court properly determined that R & H acted in good faith, although that finding is only with regard to the alleged attempted cure. While Crystal argues that R & H did not apprise the PTO that the test data obtained for DCAA were obtained from tests run at different times and that Dr. McRae knew the tests would guarantee different results, R & H counters that it "presented all available herbicidal data to the Examiner, and
Finally, additional to the above, R & H argues that the criticized data were neither material nor relied on by the PTO, because "the alleged deficiencies in the original prosecution did not result in the allowance of any claim in the Wilson patent." (Emphasis by R & H.) R & H stresses that the patent did not issue until about a year after the interview and that, "During that year the application was twice rejected by Examiner Thomas, and the claims at issue were thereafter allowed. Thus, unlike most cases where fraud and inequitable conduct are alleged, the Trial Court was not compelled to speculate on the probable impact of the alleged withholdings on the ultimate issue of patentability. The Patent Office, with all of the criticized herbicidal data before it, found the data did not detract from patentability." Further,
With respect to the prior art, R & H concludes as follows:
3. Crystal's Reply
Noting that courts have not required a showing on all the elements of common law fraud, although "the evidence clearly shows all the elements * * * exist with respect to the pre-interference prosecution," Crystal responds to R & H's argument on materiality:
With respect to R & H's argument that Examiner Meros could have relied on commercial success, Crystal states that
Aside from this, says Crystal, "it is not necessary to prove that the comparative test data misrepresentations were the only evidence the Examiner considered in allowing claim 9; it is sufficient that it `resulted in substantial measure' from representations made in affidavits."
Crystal, for the most part, summarizes its previous arguments regarding intent and reliance, and states that "No matter what the law on timeliness of a retraction or correction, none occurred here."
Crystal states that for Thomas to have been aware of the significance of the data, it would have been necessary for him to have in mind, during the interview, the specific deficiencies in the various affidavits, the relationship between those deficiencies and the prior art rejections by the then examiner, and the various representations that were made concerning the affidavit data:
Crystal points out that, while Thomas' memory was dim on much of what took place at the interview, he was quite clear on what did not take place. "In the 27 years of my Patent Office career, those things [affidavit misrepresentations] have not been pointed out to me, never." Crystal further states that "Hutz testified nearly two months after Thomas, and had full opportunity to directly and affirmatively contradict Thomas' testimony. However, he did not. Instead, he testified that he merely let Thomas `draw his own conclusions'":
Continuing, Crystal contends that
Crystal makes the same argument with respect to the conclusion by the district court that "the record * * * indicates that the patent examiner was fully informed of all factors material to the patentability of the methods claimed * * *."
Crystal again argues that the court abused its discretion in admitting the Hutz testimony and documents relevant to the interviews while denying it an opportunity for discovery, and adds that it was error for the court to place controlling weight on the testimony and memoranda of R & H's trial counsel.
Finally, Crystal continues to maintain that the post-interference allowance of claims by Thomas was not based on a re-determination of the § 103 issue passed on earlier by Meros, and that the 1973 "disclosure" concealed rather than revealed. R & H seeks
Crystal says a total of 14 pages would have sufficed to have shown the truth of matters discussed in the affidavits.
The questions presented by Crystal's allegation of fraud in the PTO are:
R & H has not denied Crystal's key factual assertions that data in Affidavit E were falsified and that the differing experimental conditions that lay behind the data comparison in Affidavit D were not revealed to the PTO. Nevertheless, it argues (1) that this activity does not amount to fraud because the affidavits were not material and because (2) the intent of the deceased patent agent who prepared the affidavits is not known.
It cannot be disputed that the purpose of the affidavits was to overcome prior-art rejections that had been entered by the examiner. R & H wished to overcome those rejections by demonstrating the allegedly unique activity of propanil when compared with a number of other closely related compounds. Findings of Fact 81 and 82 at 217 USPQ 536 and 537. Although the examiner did not retract his rejections on consideration of Affidavit D, the rejections were withdrawn and claim 9, the broadest claim in the application, was allowed after presentation of Affidavit E, wherein R & H advised that the data (which were falsified) "should clearly be a complete answer to the Examiner's question" and that the related compared compounds
It cannot be said that these misrepresentations to the PTO were the result of an honest mistake. Cf. Norton v. Curtiss, 433 F.2d 779, 794, 167 USPQ 532, 544 (CCPA 1970). While direct proof of intent to mislead is normally absent, such submissions usually will support the conclusion that the affidavit in which they were contained was the chosen instrument of an intentional scheme to deceive the PTO. In any event, proof of the actual state of mind of the applicant or persons associated with or representing an applicant is not required. "The intent element * * * may be proven by a showing of acts the natural consequences of which are presumably intended by the actor." Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144 at 1151 (Fed.Cir.1983). Thus, the trial court's assertion that "what is important" to the fraud inquiry was affiant-inventor McRae's actual state of mind was legal error. Question "1" must be answered in the affirmative.
Crystal argues that "Once fraud on the PTO has been committed, it cannot be corrected," citing cases supra. R & H counters that the cases cited do not necessarily support such a broad proposition, attempting to distinguish them in a very brief discussion which concludes with the statement:
R & H does not say what the policy considerations are.
Surely, a very important policy consideration is to discourage all manner of dishonest conduct in dealing with the PTO. At the same time, the basic policy underlying the patent system is to encourage the disclosure of inventions through issuance of patents. Another policy of the system is to stimulate the investment of risk capital in the commercialization of useful patentable inventions so that the public gets some benefit from them, which may not occur in the absence of some patent protection. Clearly, we are faced with questions of both socioeconomic policy on the one hand, and morals or ethics on the other. We think we should not so emphasize either category as to forget the other.
Respecting the possibility of curing misconduct, we wish to focus as sharply as possible on the exact issue before us. In this case, we face specifically an assertion of invalidity of an issued patent, not a rejection by the PTO for "fraud" of a still-pending patent application. The assertion of invalidity, nevertheless, is based on what occurred during the prosecution of the application — more accurately, the whole sequence of copending applications. The problem, therefore, is what, if anything, could have been done in the PTO during prosecution to cure or overcome misconduct consisting of intentional misstatements of asserted material facts so as to have saved the later issued patent from the consequences of the misconduct. We are not dealing with the question of what, if anything, can be done after the patent issued to alleviate the effect of misconduct, as did one of our predecessor courts in In re Clark, 522 F.2d 623, 187 USPQ 209 (CCPA 1975) (unsuccessful attempt to overcome failure to inform the PTO of highly relevant prior art by reissue of patent).
Specifically, the narrow issue we now deal with is whether voluntary efforts during prosecution by or on behalf of an
The first requirement to be met by an applicant, aware of misrepresentation in the prosecution of his application and desiring to overcome it, is that he expressly advise the PTO of its existence, stating specifically wherein it resides. The second requirement is that, if the misrepresentation is of one or more facts, the PTO be advised what the actual facts are, the applicant making it clear that further examination in light thereof may be required if any PTO action has been based on the misrepresentation. Finally, on the basis of the new and factually accurate record, the applicant must establish patentability of the claimed subject matter. Considering the overall objectives of the patent system, we think it desirable that inventions meeting the statutory requirements for patentability be patented and, therefore, we also think it desirable to reserve the possibility of expiation of wrongdoing where an applicant chooses to take the necessary action on his own initiative and to take it openly. It does not suffice that one knowing of misrepresentations in an application or in its prosecution merely supplies the examiner with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate his own conclusions. We therefore answer question "2", as posed above, in the affirmative.
The final question, therefore, is whether R & H's 1973 "disclosure" sufficed to remedy its previous misconduct. We hold that, as a matter of law, it did not.
This court and others have held that the facts which may lead to a holding of "fraud" in the PTO must be proved by "clear, unequivocal, and convincing evidence." Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1383, 217 USPQ 1281, 1286 (Fed.Cir.1983). Likewise, we now hold that where intentional material misrepresentations have been made, as here, a complete "cure" must also be demonstrated by clear, unequivocal, and convincing evidence. Because all business with the PTO is to be transacted in writing and its actions must be based exclusively on the written record, 37 CFR 1.2, this question of fact should never be difficult to resolve.
R & H relies almost wholly upon the fact findings by the trial court, but those findings make no mention of the misrepresentations made by R & H. They refer, for example, to Monsanto's contention regarding "withheld" data and the Monsanto court's "disingenuous comment." Finding 114. This may account for R & H's submission of all the propanil-related herbicidal test data it could discover, i.e., its attempt to cure any Monsanto-type problems by disclosing that "there were data in its records that had not been initially reported to the PTO." Finding 119. In view of this, the trial court found that R & H told examiner Thomas of the "omissions" of test data from the affidavits and supplied to the extent possible the "omitted" data and all other data it possessed. Finding 128.
Notwithstanding the court's Finding 118 that "to the extent that such base records could be reconstructed, they were identified, keyed to the prior affidavits, compared side by side with each of the affidavits and discussed with the patent examiner," the next Finding 119 emphasizes that "the patent examiner was informed that Rohm and Haas had been unable to locate all of the test data in its records corresponding to data recited in the affidavits filed earlier with the Patent Office." Which affidavit data could not be discovered is not mentioned by the trial court.
The trial court's Finding 125 that R & H was of the "good faith" belief that examiner Thomas appreciated the information supplied and its implications is irrelevant. In this matter, the PTO had to rely on the applicant but, despite R & H's lengthy interview summaries, the record is devoid of
Considering the realities of the situation and all the items said to have been discussed with Mr. Thomas in the pivotal 2 1/2 hour interview, we regard the court's conclusion of law that he was "fully informed of all the factors material to the patentability of the methods claimed," (Conclusion of Law 33) as unrealistic when the whole record is considered. The conclusion that he was "fully informed" rests solely on the presentation to him of a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which examiners work.
Although Thomas' deposition testimony indicates that he had forgotten nearly all of what happened at the interview, he was quite sure of what did not happen, stating that never in his twenty-seven years of experience with the PTO had anyone ever brought their prior misconduct to his attention. Therefore, and in view of the fact that there is no written evidence of any disclosure that there had been previous misrepresentations, to say nothing of their specific correction, we hold that the asserted "cure" was insufficient as a matter of law. Question "3" is answered in the negative.
The Wilson and McRae patent No. 3,816,092 is held invalid because of fraud in the Patent and Trademark Office in its procurement. The decision of the trial court holding it valid is therefore reversed, and the case is remanded for further proceedings consistent herewith.
We have considered appellants' "Motion to Tax Printing Costs" filed June 16, 1983, and appellee's opposition thereto filed June 22, 1983. These two papers, filed before decision, deal only with the printing of the Combined Appendix of ten volumes said to contain a total of 9,307 pages, 5,743 of which were designated by appellee after appellants had initially designated the balance. There is an excessively detailed dispute over how many of the pages designated by appellee were necessary. Appellee appears not to have contributed to the cost of printing the appendix, which cost, paid by appellants, is said to have been $31,850.15. Federal Rule of Appellate Procedure (FRAP) 30(b) authorizes us to impose upon a party the cost of printing material "unnecessarily" included. FRAP Rule 39(a) provides that, in the absence of an order by the court, in the case of a reversal "costs shall be taxed against the appellee."
Having considered the foregoing, we have a clear appreciation of the impossibility of determining, within reason, exactly what was or was not necessarily included in the appendix in this extended and complex litigation. We conclude that, under all of the circumstances with which we have necessarily become familiar in deciding this case, it is fair and equitable that the parties share equally the cost of printing the Combined Appendix and that otherwise each party bear its own costs. In accordance with Rule 39(a), it is so ordered.
REVERSED AND REMANDED.
MILLER, Circuit Judge, concurring in part.
Although I agree with the majority's analysis and holding on the fraud issue, it seems appropriate to state my conclusion that, because of the unpredictability of propanil in 1957, the district court erred in granting R & H an April 4, 1957, date of conception rather than a date, concurrent with a reduction to practice, in the summer of 1957 — after the May 27, 1957, date of filing of Monsanto's application, so that the Monsanto patent constitutes a 35 U.S.C. § 102(e) bar to the R & H patent. Alpert v. Slatin, 305 F.2d 891, 896, 134 USPQ 296, 301 (CCPA 1962).