# Struthers Patent Corp. v. Nestle Co., Inc.

> District Court, D. New Jersey · October 13, 1981 · 558 F. Supp. 747

URL: https://www.frixlaw.com/law-library/cases/1810125

## Case

- **Full name:** STRUTHERS PATENT CORPORATION, Plaintiff, v. the NESTLE COMPANY, INC., Defendant, v. STRUTHERS WELLS CORPORATION, Et Al., Additional Defendants on Counterclaim
- **Court:** District Court, D. New Jersey
- **Decided:** October 13, 1981
- **Citations:** 558 F. Supp. 747; 211 U.S.P.Q. (BNA) 1023; 1981 U.S. Dist. LEXIS 10056
- **Precedential status:** Published
- **Opinion:** Opinion by Debevoise
- **Judges:** Debevoise
- **Cited by:** 21 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/1810125

## How later opinions describe it (automated extraction)

- holding that the destruction of documents which the party knew, or should have known, would be relevant to a pending or potential lawsuit is sanctionable

## Opinion text

TABLE OF CONTENTS
Page
Introduction
A. Background 752
B. General Comments about the Summary Judgment Motions ' 753
I.The Special Master’s Report
A. The Destroyed Documents 756
B. Struthers’ Knowledge of Impending Litigation 758
C. Relationship of the Documents to the Issues 759
D. Present Availability of the Destroyed Documents 761
E. Sanctions to be Imposed 763
II. The Muller Patents
A. Description of the Patents 767
1. Muller ’007 Patent 767
2. Muller’522 Patent 768
B. Prosecution of the Muller Applications 769
1. The Muller I Application (the ’007 Patent) 769
a. The Petition to Accelerate 769
b. The Examiner’s First Action 770
c. The Examiner’s Second Action 771
d. The Interview with the Examiner 772
2. The Muller II Application 773
a. The Examiner’s First Action 773
b. The Product-by-Process Claim 774
c. The Double Patenting Rejection 774
d. The Prior Art Rejection 774
e. Muller II - The Decision of the Board of Appeals 775
3. The Muller III Application (the ’522 Patent) 775
C. The CCPA Clinton Decision 776
D. Prior Sale - Nestle’s and Struthers’ Contentions 777
1. Facts Relied upon by Nestle 777
2. Facts Relied upon by Struthers 780
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Page
Invalidity over the Prior Art 781 H
1. Presumption of Validity 781 2. Summary Judgment Standards 784
3. ’007 Patent Prior Art 785
4. Differences between the Prior Art and the '007 Claims 786
5. The ’522 Patent 790
Invalidity by reason of Prior Sale 791 lx,
Conclusion 793 Ü
III.The Ganiaris ’295 and ’034 Patents
A. Description of the Patents 794
1. The Ganiaris ’295 Patent 794
2. The Ganiaris ’034 Patent 795
Prosecution of the Ganiaris Applications 796 w
1. The Ganiaris I Application 796 2. The Ganiaris II Application 796
3. The Ganiaris III Application (the ’295 Patent) 798
4. The Ganiaris IV Application (the ’034 Patent) 799
C. Prior Sale-Nestle’s and Struthers’
Contentions 801
1. Facts Relied upon by Nestle 801
2. Facts Relied upon by Struthers 802
Abandonment of the ’295 Patent 802 Ü
Invalidity of the ’295 Patent under § 112 804 H
F. Invalidity of the ’295 Patent over the Prior Art - Obviousness 805
1. Applicable ’295 Filing Date 805
2. Prior Art 806
Invalidity of the ’295 Patent under § 102(d) 808 O
H. Invalidity of the ’034 Patent over the Prior Art - Obviousness 810
1. Applicable Filing Date 810
a. Ganiaris I and II Filing Dates 810
b. The British Application Filing Date 812
2. Prior Art 812
I. Invalidity of the ’034 Patent under § 112 814
J. Conclusion 814
IV.The Reimus Patents
A. Description of the Patents 815
1. Reimus ’302 Patent 815
2. Reimus ’129 Patent 816
3. Reimus ’353 Patent 817
4. Reimus ’723 Patent 818
Prosecution of the Reimus Applications 818 W
1. The Reimus I Application (the ’302 Patent) 818
2. The Reimus II Application (the ’129 Patent) 821
3. The Reimus III Application (the ’353 Patent) 822
4. The Reimus IV Application (the ’723 Patent) 824
Page
C. Prior Sale-Nestle’s and Struthers’ Contentions 825
1. Facts Relied upon by Struthers 825
2. Facts Relied upon by Nestle 825
D. Abandonment of the Four Reimus Applications 827
E. Invalidity of the ’129 and ’353 Patents for Claiming Subject Matter Previously Given Up 827
F. Invalidity by Reason of Prior Sale 830
G. Invalidity under § 112 832
H. Invalidity of the Reimus Patents over Prior Art - Obviousness 833
I. Invalidity for Withholding Information 835
J. Conclusion 835
V.The ’126 and ’722 Patents
A. Description of the Patents 836
1. The Howell ’126 Patent 836
2. The Ganiaris ’722 Patent 837
B. Prosecution of the Applications 838
1. The Howell Application (the ’126 Patent) 838
2. The Abandoned Ganiaris A Application (Serial No. 651,451) 838
3. The Ganiaris B Application (the ’722 Patent) 841
C. Prior Sale - Nestle’s and Struthers’
Contentions 843
1. Nestle’s Initial Submission 843
2. Struthers’ Initial Response 844
3. Nestle’s Reply 844
4. Struthers’ Surrebuttal 844
D. Invalidity of the ’126 Patent under § 112 845
E. Invalidity of the ’126 Patent over the Prior Art - Obviousness 846
F. Invalidity of the ’126 Patent by Reason of Prior Sale 848
G. Invalidity of ’722 Patent under § 112 849
H. Invalidity of the ’722 Patent over the Prior Art - Obviousness 850
1. Ganiaris A Filing Date 850
2. British Application Filing Date 852
3. Invalidity of the ’722 Patent under § 102(d) 852
4. Invalidity of the ’722 Patent under § 102(b) 853
I. Invalidity of the ’722 Patent by Reason of Prior Sale 853
J. Conclusion 853
Appendix A
OPINION
Introduction
DEBEVOISE, District Judge.
Plaintiff, Struthers Patent Corporation, filed its complaint on April 13, 1972, alleg
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ing that defendant, The Nestle Company, Inc., was infringing ten Struthers patents by its manufacture and sale of soluble coffee. Nestle denied infringement and asserts that each of the patents is invalid and unenforceable. Nestle filed a counterclaim seeking, in one Count, a declaratory judgment of invalidity and unenforceability of each of the ten patents and asserting, in a second Count, a claim alleging unfair competition. Nestle joined as defendants on the counterclaim two corporations which are affiliated with plaintiff — Struthers Wells Corporation and Struthers Scientific and International Corporation. The three affiliated corporations will be referred to collectively as “Struthers”.
The case has had a protracted pretrial history. Two matters are now ripe for disposition: (i) Struthers’ motion to confirm the report and recommendation of a special master concerning sanctions to be imposed by reason of Struthers’ destruction of relevant documents prior to institution of this action, and (ii) Nestle’s motions for summary judgment of invalidity and/or unenforce-ability of the ten patents in suit.
For the reasons which are set forth in Parts I through V of this opinion, the findings of the special master will be adopted in part, modified in part, and rejected in part, but his recommendation that no sanctions be imposed will be adopted; Nestle’s motions for summary judgment of invalidity of the ten patents will be granted.
A.
Background
Struthers is in the business of licensing and selling technical information and know-how. It owns the ten patents in suit, which deal generally with freeze concentration in the manufacture of instant or soluble coffee and certain other food products. Nestle is the world’s largest seller of soluble coffee.
In simple terms, freeze concentration of coffee extract (derived by brewing coffee from coffee beans) involves removing water from the extract by chilling the extract sufficiently to form ice particles and then removing the ice particles, leaving a more concentrated solution. After the concentration stage the concentrated solution may be dried by various means to form the powder or granules constituting the soluble coffee. Nestle uses a freeze
drying
process but denies that it freeze
concentrates
coffee. For the most part the patents in suit contemplate that the freeze concentration processes described therein either will be or may be followed by freeze drying.
Events pertinent to the pending motion took place as early as the mid-1960s. At that time Struthers entered into a contractual relationship with General Foods Corporation to assist General Foods in developing equipment for the freeze concentration of coffee extract. During the course of that relationship Struthers disclosed and sold or offered to sell to General Foods various processes and items of equipment relating to freeze concentration. According to General Foods it did not find the processes or equipment useful in its business and it terminated its relationship with Struthers.
Thereafter extensive litigation between General Foods and Struthers took place, most of which ultimately was consolidated in the United States District Court in Delaware. Struthers charged General Foods with infringement of six of the ten patents at issue in the present action. Each party charged the other with theft of trade secrets and know-how. After extensive discovery and other pretrial proceedings the parties settled, signing a settlement agreement on February 9, 1972.
After February 9 and prior to April 13, 1972, when the present action was filed, Struthers collected and destroyed a very substantial part of the documents and depositions which it had assembled in the course of the General Foods case. This document destruction is the subject of Nestle’s motion for sanctions and the special master’s report and recommendation recommending against sanctions.
Nestle filed four motions for summary judgment, each directed to two or more of the ten patents in issue. Four days of hearings on those motions were held. I
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ruled against Nestle from the bench on certain grounds which it advanced, and I reserved decision on the remaining grounds. Parts II through V of this opinion deal with the remaining grounds.
B.
General Comments about the Summary Judgment Motions
Summary judgment of invalidity of a patent is not common. Nevertheless I have concluded that summary judgment of invalidity of each of the ten patents at suit is required in this case.
Nestle filed in support of its summary judgment motions a very extensive record. This record consists of the file wrappers of the proceedings in the Patent Office relating to each of the ten patents in suit and to certain other applications pertinent to these patents. It consists of documents produced by Struthers to Nestle in this action. It consists of Struthers’ answers to interrogatories and deposition testimony of Struth-ers’ officers and employees in this case and in the Struthers/General Foods litigation. It consists of a vast array of prior art, including earlier patents, articles and texts.
Each of the four summary judgment motions was accompanied by three volumes of exhibits,
i.e.,
a volume containing the file wrapper of the patents which were the subject of the motion, a volume containing documents produced by Struthers to Nestle, and a volume of prior art documents. Exhibits referred to in Parts II through V of this opinion will be found in the pertinent volume relating to the particular motion under discussion. The factual data contained in this material can hardly be disputed, consisting as it does of official records of the Patent Office, Struthers’ own statements, and prior art which has not been challenged.
In addition, each party filed affidavits. Struthers’ affidavits were designed to demonstrate that there are genuine issues of material fact which preclude summary judgment.
So vast is the record submitted in support of the summary judgment motion that it is a temptation to conclude that, amidst it all, genuine issues of material fact must exist. However, the trial of this case would impose such a heavy burden upon the parties and upon the resources of the Court, particularly as a jury has been requested, that I concluded that every effort had to be made at this time to comb the record and to determine if such issues do, in fact, exist. This is what I attempted to do, and the necessity to describe for the record the results of this inquiry is the cause of this regrettably (but I think necessarily) long opinion.
Each of Nestle’s motions advances six or more grounds why summary judgment of invalidity and/or unenforceability should be granted. I have ruled that as to certain of those grounds the motions should be denied as a matter of law, and that, as to certain others of those grounds, the motions should be denied because as to those grounds there are genuine issues of material facts. I have ruled that each of the ten patents is invalid as a matter of law on one or more grounds. As to each patent except one (the Ganiaris 3,636,722 patent) one ground of invalidity is obviousness over the prior art, 35 U.S.C. § 103 . (The question of obviousness was not reached in the case of the ’722 patent, as I concluded that it is invalid on two other grounds.) I did not believe it necessary in the case of any of the patents to determine whether they were also invalid because they were previously described in a patent or other publication, 35 U.S.C. § 102 (b), and there were certain other grounds advanced by Nestle upon which I did not rule.
For the purpose of the § 103 contentions it was necessary to make the factual inquiries mandated by
Graham
v.
John Deere Co.,
383 U.S. 1 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966): (i) determining the scope and content of the prior art; (ii) ascertaining the differences between the prior art and the claims in the patents at issue; and (iii) determining if the differences are such that the claimed subject matter would have been obvious at the time the invention was made to a person having ordinary skill in the art.
The scope and content of the prior art is set forth in great detail in the record and
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can hardly be disputed. Similarly, the differences between the prior art and the claims in the patents at issue can be readily ascertained by a simple comparison. Struthers has argued strenuously, however, that there is a factual issue as to what was the ordinary skill in the art and as to whether the differences between the prior art and the claims in the patents at issue would have been obvious to a person having such skill. Struthers contends that these questions cannot be resolved without the testimony of experts in the face of affidavits of Struthers’ employee, Neophytos Ganiaris, asserting an absence of obviousness. I will deal with this contention in more detail in Parts II through V of this opinion. Some general observations, however, might be helpful at this point.
The subject matter of the art involved in the present case is freeze concentration and freeze drying in the manufacture of powdered soluble food products. Although coffee is the principal food product under discussion, the same principles and techniques apply to certain other food products as well.
As an examination of the prior art record discloses, this subject matter is a well ploughed field. For decades patents have been filed, articles written, and research and development undertaken in every phase of freeze concentration processes and equipment. The same record discloses that the skill in the art by this late date is very high. Not only is the skill in the art high, the subject matter is relatively simple, easily understandable by a person having limited or no technical background in this field.
After reviewing the entire record applicable to all ten patents I concluded that it can be determined that there is no genuine issue of fact that the various changes and alleged improvements which Struthers has introduced into the prior art either are no more than cosmetic differences without any patentable significance or else, if they can be seen as improvements, are such as would have been obvious to one skilled in the art. The basis for this conclusion is described in some detail in Parts II through V and should be apparent from a comparison of the prior art and the claims at issue. The situation here is similar to that which prevailed in
C-Thra Products, Inc.
v.
Uniflex, Inc.,
397 F.2d 952, 955 (2d Cir.1968).
Appellant now stresses that in patent cases summary judgment is often inappropriate by reason of the necessity to inquire into the scope and content of the prior art, the differences between the pri- or art and the claims at issue, and the level of ordinary skill in the art ... In many cases involving a question of patent validity such inquiry involves consideration of technical questions which are often best understood with the aid of expert testimony. But in this case, as Judge Bartels pointed out (Appellants’ appendix, p. 6a), the prior art and the patent claims are not complex and are easily understandable without expert aid. This is one case where it truly would be ‘an absurd waste of time and effort’ to deny summary judgment.
Three other matters should be mentioned by way of introduction.
Nestle urges that by reason of Struthers’ misconduct in prosecuting various of the patents involved in this case, at the very least Struthers should be denied the benefit of the presumption of validity accorded by 35 U.S.C. § 282 . As will be described in some detail in Parts II through V, Struthers persistently violated Patent Office rules when prosecuting the applications leading to these patents. This resulted in major voids in the Patent Office records, often making it impossible to determine why an examiner acted as he did. For example, often one cannot tell from the file wrapper why an examiner who had found a claim to be invalid over the prior art reversed himself. More disturbing, though less frequent, are the situations in which Struthers changed its factual position. From time to time, both in proceedings before the Patent Office and during the course of this litigation, Struthers simply changed its factual statements when expedient to do so. I deal with this more extensively, particularly in Part II. If this were the trial of the case, it might well be that the presumption of va
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lidity would be affected. However, for the purpose of the summary judgment motions I have assumed that Struthers is entitled to the full benefit of the presumption.
Another point which might be noted preliminarily is the fact that I am being asked to grant a summary judgment of invalidity of ten patents which, prior to their issuance, were reviewed and ultimately approved by a number of different patent examiners, each an expert in the field of patents. I think, however, that after reviewing all the prior art relating to all ten of the patents, and after reviewing all of the patents themselves, I am in a better position to evaluate the validity issues than were the examiners.
I have had the benefit of being able to review all of the patents, all of the file wrappers, and all of the prior art at the same time. These patents are intimately related to each other, and the prior art of one is frequently prior art of another. My conclusion of obviousness of one patent was fortified and confirmed as I moved on to each succeeding patent and its prior art.
None of the patent examiners had the opportunity to view these patents and the prior art in a unified presentation. Much of the prior art was never before them. In the case of some of the applications a number of examiners were assigned, none seeing the application through from start to finish. A candid statement by William A. Drucker, patent counsel and an officer of Struthers, describes the pressures under which these patent examiners worked:
What often happens — this is what I want to explain — examiners are under a production quota, and they are concerned with disposition of cases, and part of their system is to make proposals to patent attorneys saying, ‘If you will make the following changes, I think I can see my way to allowing this language and letting the case get off my desk.’
Sometimes the proposal of the examiner on its face is quite acceptable. Sometimes it requires some conversation before final version is agreed upon. This is, I might say, or usually it happens on a Friday or it used to at the time these cases we are concerned with because examiners had weekly quotas for disposal of cases. That was the normal natural working in the Patent Office, at least in the coffee arts. I can’t comment now on every single art, but in the part dealing with food and coffee a lot of the examiners at that time were under such high pressure from the Commissioner’s Office to get rid of cases, to avoid an appeal if at all possible. In fact were under positive instructions to issue patents as opposed to rejecting them.
(Transcript of Hearing, June 16, 1981, at 18.)
Given all this, it is neither surprising nor an adverse reflection on the examiners that in the unusual circumstances of this case I find myself in a better position to determine certain issues of validity than they were.
There is one final point I wish to make before turning to the individual motions. I am more confident in my conclusions by reason of the fact that each party has been represented by extraordinarily able counsel. Each legal issue has been briefed and argued exhaustively. Each side has probed the record and has, I am sure, discovered and impressed upon me every fact or circumstance supporting its position. In writing this opinion I have drawn extensively upon the briefs of both sides. For example, I have treated Nestle’s accounts of the prosecution of the pertinent patent applications as proposed findings of undisputed facts and, after checking them against the record, have modified and (as modified) adopted them.
I turn now to the five pending motions. I.
The Special Master’s Report
In December, 1975 Nestle filed a motion pursuant to
Fed.R.Civ.P.
37 seeking sanctions against Struthers for an alleged destruction by Struthers just prior to the institution of this action of a very substantial quantity of documents relevant to the issues in this action.
These documents were voluminous in nature and were assembled during the course
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of the litigation between Struthers and General Foods Corporation. In that action Struthers asserted against General Foods six of the ten patents which it now asserts against Nestle.
Judge Meanor, to whom the case was then assigned, reviewed the papers which Nestle submitted in support of its motion for sanctions on account of the document destruction, and he heard argument on the motion. As set forth in his opinion filed September 15, 1976, he concluded that he was “[ujnable to determine from the written record what documents were destroyed or how they related to the issues in this action”. Further, on the record before him, he was unable to “determine the appropriateness of the many forms of sanctions sought by Nestle”. He reserved decision until a hearing could be conducted.
In order that resolution of the document destruction issues would not delay prosecution of the other phases of this case I appointed The Honorable Harold R. Tyler, Jr., a former United States District Court Judge, Special Master to supervise discovery, conduct hearings, and file a report containing his findings of fact, conclusions of law, and recommendations with respect to the document destruction charge. Inquiry into the following factual and legal questions was to be made: (i) identification, with as much specificity as possible, of the documents which were destroyed; (ii) the relationship of those documents to the issues in the present action; (iii) the extent to which such documents can now be obtained from other sources; (iv) whether Struthers knew or should have known at the time it caused the destruction of the documents that litigation against Nestle on the patents at issue was a distinct possibility, and (v) whether, in the light of the circumstances disclosed by the factual inquiry, sanctions should be imposed upon Struthers and, if so, what the sanctions should be.
By pretrial order # 2 Judge Tyler was appointed Special Master. Thereafter very extensive work was performed by the Special Master and the parties with respect to the document destruction phase of the case. Had it not been for the efforts of the Special Master, it would have been impossible for me to have proceeded with the discovery and summary judgment phases of the case.
On June 8, 1981 the Special Master filed his report and recommendations, which concluded that no sanctions should be imposed upon Struthers. Struthers filed a motion to confirm the Special Master’s report and to deny Nestle’s motion for sanctions. Nestle filed objections to the report and recommendation. A hearing on the motion and objections was held on September 10, 1981. Most of the grounds of Nestle’s objections are addressed in this Part I. In view of my conclusions set forth below it is unnecessary to address the remaining grounds.
A.
The Destroyed Documents
During the course of the General Foods litigation Mr. Drucker, patent counsel and an officer of Struthers, was in general charge of assembling and controlling documents. He arranged for all Struthers’ documents pertaining to freeze concentration to be assembled and sent, ultimately, to the Texas law firm representing Struthers in that litigation, Fulbright and Jaworski. Mr. Drucker retained in his own custody the files relating to the processing of the pertinent patent applications. Through the discovery process in the General Foods litigation depositions were acquired and thousands of documents produced. Struthers kept these documents in Houston and copies were kept by Mr. Drucker in New York City, by John G. Muller, a Vice President of one of the Struthers companies, in Washington, D.C., and by Struthers' Delaware counsel in Wilmington, Delaware. In addition, the Fulbright firm sent to Westheimer Transfer & Storage Co., Inc., for storage, certain documents which included those known as the Office of Saline Water (“OSW”) documents. These were documents relating to work carried out by Struthers for the Office of Saline Water, United States Department of the Interior.
A protective order was entered in the Delaware federal district court in the Gen
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eral Foods litigation covering some, but by no means all, of the depositions and documents produced by General Foods. It provided, in part:
2.At the conclusion of this litigation, all information received by any party from an opposing party and designated as secret, or determined to be secret by Court order,
shall be deposited by the party then in possession of it in a secure place,
still subject to the terms of this order, protected from access by any person other than a person authorized to see it by the terms of this order, or the terms of some subsequent Court order. (Emphasis added.)
On February 9, 1972 Struthers and General Foods signed an agreement terminating their litigation.
At Mr. Drucker’s instructions, some OSW documents had been destroyed at the Westheimer warehouse on January 12,1972. Struthers can give no explanation of this destruction, which took place just prior to a court-ordered document inspection by General Foods of the OSW documents. The remaining documents stored at Westheimer were destroyed on March 7, 1972, pursuant to Mr. Drucker’s instructions.
On February 14 or 15, 1972 (less than a week after the Struthers-General Foods settlement agreement was signed) Mr. Drucker ordered that all the General Foods litigation documents be shipped to Houston for destruction. The exact dates when the destruction of the documents in Houston took place (except for the documents destroyed on January 12 and March 7, 1972 in the Westheimer warehouse) is not known precisely. Many were probably destroyed in late February and early March, 1972. Some must have been destroyed in or after May, 1972, when Struthers’ Delaware attorneys shipped documents to Houston in response to Mr. Drucker’s instructions.
On March 6, 1972, Mr. Muller burned the documents under his control in Washington, D.C. Struthers’ Delaware counsel destroyed certain of the documents in their control in February, 1972 and, as mentioned above, shipped others to Houston in May, 1972.
Mr. Drucker’s files contained documents underlying or pertaining to the patents in suit in the present case or relating to freeze concentration. This included documents relating to the prosecution and the file history of abandoned, pending and issued applications. These were destroyed, according to Struthers, as a “routine housekeeping practice” and “began in the early 1960s and continued subsequent to April 13,1972” (the date when Struthers filed its complaint against Nestle).
The Special Master found that this document destruction program resulted in the destruction of the following categories of documents:
1. Copies of transcripts of depositions of General Foods personnel.
2. Copies of exhibits marked during the depositions of General Foods personnel.
3. Copies of documents, which copies were produced to Struthers by General Foods in the course of discovery.
4. All copies of the OSW records except copies of government contracts and a North American Aviation contract.
5. Copies of Struthers’ correspondence and related materials pertaining to customers or potential customers of Struthers for a period during the mid-1960s.
6. Materials in the files of Struthers designated as “privileged” in relation to the litigation with General Foods.
7. Copies of documents in the files of Struthers relating to the prosecution and file history of some or all of the freeze concentration patents here in suit.
This finding requires a modification to reflect two events which occurred during the proceedings before the Special Master.
Shortly before the March 21, 1981 hearing before the Special Master, Struthers reported that “portions” of its customer correspondence in the mid-1960s had been discovered. Thus at least part of the customer records previously reported to have been destroyed evidently were not destroyed and, very belatedly, have been pro
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duced. The day before the hearing before the Special Master Nestle was informed that the original index cards of documents from the Struthers-General Foods litigation were in existence and in the possession of Struthers’ counsel. Early in this litigation Struthers denied the existence of such a list. With these modifications, the findings of the Special Master as to the documents which were destroyed are supported by the record and will be adopted.
B.
Struthers’ Knowledge of Impending Litigation
The Special Master found that “[t]he record does not indicate when Struthers decided to institute suit against Nestle, nor does it establish who, acting on behalf of Struth-ers, made that decision. The complaint herein was filed April 13, 1972.” This is a correct finding.
In addition, however, I believe it necessary to determine whether Struthers knew or should have known at the time it caused the destruction of the documents that litigation against Nestle on the patents at issue was a distinct possibility. The Special Master did not make a specific finding on this point, but the record leaves no question as to what the answer to this question must be.
Struthers’ proposed Contentions of Fact filed with the Special Master conceded that “After the settlement of the General Foods litigation, Struthers knew or should have known that litigation against Nestle on the patents at issue in its present action against Nestle was contemplated.”
A recital of Struthers’ position on this issue is pertinent, because it bears upon Struthers’ motives when destroying the documents and it bears upon its good faith in the present proceedings.
In 1976, in opposition to Nestle’s motion for sanctions, Struthers filed an affidavit of Mr. Drucker which stated in part:
10. I also want to emphasize that at the time the documents were destroyed Struthers had not turned its attention to preparation for litigation with Nestle and indeed was not prepared for litigation with anyone. I was not at that time aware of any plan by Struthers to conduct further litigation nor have I subsequently become aware that such a plan was in existence at that time.
11. * * * Struthers has not concealed from Nestle any information appropriate to the matters in dispute in the present litigation. From the beginning of the present litigation until this time there has been absolutely no document destruction on behalf of Struthers.
Indeedno document destruction occurred from the moment that litigation between Struthers and Nestle was contemplated by Struth-ers.
[Emphasis in original.]
In its Interrogatory 81(a)(C)(xii) Nestle had requested Struthers to identify “memo-randa of counsel, diary and timebook entries of counsel and employees of respondents, bills and statements of counsel”, etc. In its answers (which list William Drucker, James Weiler and Dudley Dobie (of the Fulbright firm) of counsel), Struthers responded:
Objection is made to identification of memoranda of counsel, diary and time-book entries of counsel and bills and statements of counsel on the basis of privilege. However without waiving the foregoing objection,
there are no such documents
relating, pertaining, referring to or bearing upon the foregoing. In addition,
there are no other documents of the nature requested.
(Emphasis added.)
Nestle also served further document requests (Nos. 7-9) relating to destruction, to which Struthers replied: “There are no documents relating to the solicitation or giving of advice concerning document destruction.”
Discovery of the Fulbright firm’s time sheets in the proceedings before the Special Master disclosed that Mr. Drucker's statements and the answers to these interrogatories were not true.
It will be recalled that the Struthers-Gen-eral Foods settlement agreement was signed on February 9, 1972 and that Mr. Drucker issued the document destruction orders on February 14 or 15, 1972. The
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Fulbright records show that on February 11, 1972, Mr. Drucker entered into discussions with the Fulbright firm regarding the disposition of documents
and
institution of new legal proceedings. The Fulbright and Jaworski time record of Dudley R. Dobie dated February 11, 1972, reads as follows:
Conf. T. Clark re document retention; T/T W.A. Drucker re doc. disposition and new litigation; continue review of files for storage. (Chargeable Hours Card No. 000037; Tab. 18.)
Mr. Dobie testified that the new litigation mentioned in his card referred to either Nestle or Coca-Cola (Dobie Tr., p. 192.)
During February, 1972 letters proposing non-exclusive licenses were sent over the signature of Struthers’ litigation counsel,Mr. Weiler, to Nestle and several other companies in the soluble coffee industry. Those letters were dated February 15,1972, the very time when Mr. Drucker issued his instructions for the destruction of documents.
Again, on February 22, 1972, Mr. Dobie had another telephone conversation with Mr. Drucker regarding the Nestle matter. His Time Card of that date reads as follows:
T/T Drucker re Nestle matter and re storage of files. (Fulbright and Jaworski Chargeable Hours Card No. 000002, Tab. 19.)
On February 23, 1972 — the same date on which the order of dismissal was filed in the Delaware District Court terminating the Struthers/General Foods litigation — Mr. Drucker had further discussions with the Fulbright lawyers regarding the Nestle litigation. Mr. Dobie’s Time Card for February 23, 1972 reads as follows:
T/T Richards re entry of Order of Dismissal; T/T
W.A. Drucker re Nestle litigation;
review Rule 60 requirements re Court’s jurisdiction after judgment;
investigate jurisdiction re Nestle litigation.
(Fulbright and Jaworski Chargeable Hours Card No. 000001, Tab. 20; emphasis added.)
On the same date Mr. Drucker also conferred with James F. Weiler, the partner in charge of the litigation. Weiler’s Time Card for February 23, 1972 reads:
Confer Drucker re bringing suit against Nestle in Houston; drafting Complaint and venue questions; confer Dobie re same.
(Fulbright and Jaworski Chargeable Hours Card No. 000161, Tab. 21; emphasis added.)
Confronted with these records, Struthers had little choice but to concede that at the time it caused the destruction of the documents it knew or should have known that litigation against Nestle on the patents at issue was a distinct possibility. The Special Master’s report will be modified to include a finding to the effect that Struthers had actual knowledge that such litigation was a distinct possibility at the time of its destruction of documents in and after February, 1972. Further, there will be included a finding that during the course of the present litigation Struthers sought to conceal the fact that it had such knowledge until, during the proceedings before the Special Master, it was confronted with records from its former attorneys’ files — which demonstrated that Struthers’ original contentions in this regard were untrue.
C.
Relationship of the Documents to the Issues
The Special Master did not make findings as to the relationship of the destroyed documents to the issues in the present action, perhaps because it is so obvious that each category of destroyed documents (with the possible exception of the OSW documents) was likely to contain relevant information or material which might lead to relevant information.
The General Foods litigation in which the destroyed documents were assembled included a number of separate actions, the claims in which were eventually dealt with in the district court action in Delaware. Struthers filed actions in Texas charging that General Foods was infringing certain of Struthers’ patents. General Foods began a declaratory judgment action with respect to the patents in Delaware and thereafter the Texas actions were transferred there.
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As additional patents were issued to Struth-ers, additional infringement actions were filed by Struthers in Delaware. Ultimately, six patents (all in suit in the instant action) were in suit in Delaware. In addition, Struthers filed an action in the New York State courts alleging theft of trade secrets by General Foods. General Foods’ amended complaint in Delaware also contained a count alleging unfair competition by reason of Struthers’ wrongful misappropriation of General Foods’ confidential information and Struthers’ use of that information to obtain the Muller ’007 patent (see Part II of this opinion) and the Reimus ’302 dewaxing patent (see Part IY of this opinion). The relationship of the unfair competition and patent claims was discussed in
General Foods Corp. v. Struthers Scientific and International Corp.,
297 F.Supp. 271 (D.Del.1969).
The six patents asserted against General Foods are among the ten patents which are the subject of this suit and of Nestle’s summary judgment motion. They are dealt with in this opinion as follows:
Part II — Both patents in this group,
viz.,
Muller 3,404,007 and Muller 3,495,522, were in suit in Delaware.
Part III — Ganiaris 3,531,295 and Ganiaris 3,620,034 were not in suit in Delaware. Their disclosure of washing the ice to recover coffee solids is, however, included in the claims of other of the patents which were in suit.
Part IY — Reimus 3,381,302, Reimus 3,449,129 and Reimus 3,474,723 were in suit in Delaware. The fourth Reimus patent (3,632,353) purports to derive from the same applications.
Part V — Of the two hollow agitator shaft patents, Howell 3,367,126 was in suit in Delaware; Ganiaris 3,636,722 was not.
In Documentary Requests Nos. 1-6 in the present action Nestle asked for all documents and other products of discovery in the General Foods-Struthers litigation. Concluding that this was a proper subject of discovery, Judge Lacey, who was then handling this case, entered an order on February 15, 1973 which provided, in part:
That Defendant’s [Nestle’s] motion to compel Respondents [all three Struthers companies] to produce for inspection and copying all documents which are the subject of Defendant’s first documentary request (Nos. 1-6) is hereby GRANTED, except insofar as such documents have been produced or marked as Defendant’s Deposition Exhibits in this litigation.
Having heard Nestle’s summary judgment motions before addressing the document destruction issues, I am able to evaluate the relationship between the destroyed documents and major issues in the case. There can be no question that Judge Lacey correctly concluded that the documents generated in the earlier litigation are pertinent to the present case.
Given the fact that six of the ten patents involved in the present action were the subject of the earlier action, and that the present and former actions involve similar claims and defenses, transcripts of the depositions of General Foods personnel, copies of exhibits marked during those depositions, and copies of documents produced to Struthers by General Foods in the earlier litigation must be highly relevant in the present action. Among other things, they would bear upon the validity of Struthers’ patents under paragraphs (a), (b), (f) and (g) of 35 U.S.C. § 102 and under 35 U.S.C. § 103 .
There is a dispute between the parties as to the relevance of the OSW documents which involved a development program for freeze desalination of water which Struth-ers had undertaken for the United States government. Nestle contends that freeze concentration and desalination are essentially the same process and therefore Struthers’ work on desalination would bear upon its freeze concentration efforts. Struthers, on the other hand, urges that the processes are essentially different and that the OSW documents produced in the General Foods action related to issues unrelated to patent validity. There is insufficient evidence in the record to make a finding on the relevance of these documents in the present litigation, but, of course, destruc
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tion of the documents compounds the difficulty of making such a determination.
The Special Master recited Struthers’ rationale for destroying its correspondence and related materials pertaining to customers or potential customers for the period during the mid-1960s: “Struthers made the decision to destroy these documents because of their age and because of the view of Struthers’ counsel, at the time of destruction, that such documents were wholly irrelevant to any litigation with Nestle or any other company.”
The conclusion of Struthers’ counsel in this regard (if, indeed, he did so conclude) was unjustified. As the summary judgment motions in this case amply demonstrate, an important basis for attacking the validity of Struthers’ patents is that the subject matter claimed in the patents was offered for sale or sold more than one year prior to the applications therefor, 35 U.S.C. § 102 (b). Correspondence with customers during the mid-1960s, a period one year or more prior to the applications for the patents now in litigation, had potential relevance to the on sale defense. It is inconceivable that Struthers’ counsel, an experienced patent attorney who had only recently wrestled with this issue in the General Foods litigation, would not have appreciated the significance of this kind of document.
Whether or not the materials in the files of Struthers designated as “privileged” in the General Foods litigation is discoverable in the present action, they are in all likelihood relevant to the issues now before the Court. Given the substantial overlap of the patents involved in the present and former case and the similarity of the patent claims and defenses, much of the “privileged” materials, like the General Foods case deposition transcripts, exhibits and documents, must bear upon the issues in this case.
The documents in Struthers’ files relating to the prosecution and file history of some or all of the freeze concentration patents now in suit also had a potential relevance in the present case. It became evident during the review of the papers in support of Nestle’s motions for summary judgment (papers which were not available to the Special Master) that there are major deficiencies and gaps in the Patent Office files of the prosecution of the pertinent patent applications. This will be developed more fully in Parts II through Y of this opinion. Suffice it to say at this point that it is quite likely that Struthers’ files would have filled these gaps and helped explain or amplify questions relating to the prosecution of the patents. Thus, the destroyed files were also potentially relevant to the issues in this ease.
Inasmuch as the Special Master made no findings as to the relevance of the destroyed documents to the issues in the present case, his report and recommendation will be modified to include the factual findings contained in this section C.
D.
Present Availability of the Destroyed Documents
The Special Master’s findings with respect to the present availability of the destroyed documents appear at different places in his report and recommendation, quite often in connection with his discussion of other issues. I shall discuss them as they apply to each category of documents destroyed. There is one general observation in the report which is incorrect.
At page 11 of the report it is stated: “That deposition [of General Foods’ Delaware counsel] reveals that the Connolly firm has copies of
all or virtually all
of the materials destroyed by or at the direction of Struthers in 1972.” The following discussion of the present availability of the documents will show that that conclusion is too broad.
Turning now to the present availability of the seven categories of documents:
The Special Master found (at pp. 8, 9) that “Copies of the transcripts of depositions of General Foods personnel, together with the exhibits thereto, are still in existence and in the possession of Messrs. Connolly, Bove & Lodge of Wilmington, Delaware, attorneys for General Foods. The same law firm also is currently in possession
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of copies of documents which were produced by General Foods to Struthers in the course of the General Foods litigation.” This finding is amply supported by the deposition testimony of Paul Crawford taken during discovery undertaken in connection with the proceedings before the Special Master.
The Special Master also found that “the originals of [the documents which were produced by General Foods to Struthers] appear to be still in the possession of General Foods”. This finding has some support in the record in the form of deposition testimony of Michael J. Quillinan, General Foods’ Manager of Patent Litigation, given in October, 1972. However, according to that testimony, the original documents, contained in five five-drawer filing cabinets, are not assembled in one place. The documents probably had been returned to the places from which they had come. In the words of Mr. Quillinan: “The simplest way would be to simply return to the corporate arms that provided these documents, the various haystacks thereof that existed. And I am not sure that even today [October, 1972] such haystacks exist. They may be in the form of hay. Where and what degree they are stacked, I' really cannot say.”
Thus it is highly probable that the original documents were still in the possession of General Foods at the start of the Struthers litigation against Nestle. However, it also appears that they had been scattered throughout General Foods’ corporate departments. It had required strenuous discovery efforts on Struthers’ part to obtain production of those documents in the earlier litigation. That work, in all likelihood, would have had to have been repeated by Nestle if it sought to obtain the documents from General Foods. Its task would have been complicated by the fact that General Foods is not a party to the present litigation.
However, it appears, as the Special Master found, that the first three categories of documents are available in that they are in the possession of General Foods’ Delaware counsel and that, at least in October, 1972, General Foods had the original category 3 documents scattered throughout the corporation’s offices.
As to the availability of the remaining four categories of documents, the Special Master made the additional finding that the items referred to in categories 4, 5, 6 and 7 above “were in fact received from Struthers by General Foods”. From this it might be inferred that the documents were therefore available in the files of General Foods’ counsel. The finding on which this inference is based is clearly erroneous, at least as to categories 4, 6 and 7. The finding will not be adopted.
As to category 4, some of the OSW records were destroyed on January 2, 1972 before General Foods’ inspection, and it is not known whether General Foods made copies of the balance of the OSW records which were inspected by General Foods and which Struthers subsequently destroyed. At page 9 of his report and recommendation the Special Master wrote:
“I note
that there is some evidence that the originals of the OSW records may still be in the possession of the United States Government.” This observation can only be applicable to OSW documents which were generated by or submitted to the United States government. It cannot be applicable to Struthers’ internal documents relating to the OSW project.
Further, according to evidence submitted by Nestle long after the Special Master had filed his report and recommendation, the government’s copies of the OSW documents were disposed of even before Struthers destroyed its copies in 1972.
As to category 5, it may well be that General Foods did receive copies of Struth-ers’ customer correspondence, although discovery in connection with the document destruction proceeding raises a question as to whether it received all such documents. It now seems likely that most of the customer records have finally been located through Nestle’s discovery efforts during the proceeding before the Special Master.
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As to category 6, pursuant to the order of the Delaware district court, General Foods received copies of a
portion
of the documents as to which Struthers claimed a privilege. It did not receive those which were not ordered to be produced. The Special Master recognized this fact and he may have intended to limit the overly broad language appearing on page 6 of his report by the observation appearing on page 9 to the effect that “[cjopies of
some,
at least, of the Struthers files designated ‘privileged’ in the litigation with General Foods are currently to be found in the offices of Messrs. Connolly, Bove and Lodge” (emphasis added).
As to category 7, General Foods did not receive Mr. Drucker’s prosecution and file history. As found by the Special Master, it did receive very substantial documentation relating to freeze concentration, including laboratory notebooks, data sheets, weekly reports, etc., as listed in the footnote commencing on page 6 of the Special Master’s report. To the extent that General Foods’ counsel did not receive the Struthers’ “privileged” documents (category 6) and the documents in the Struthers prosecution files (category 7) these destroyed documents, were and remain unavailable in the present litigation.
Therefore, the Special Master’s findings as to the present availability of copies or originals of the destroyed documents will be adopted, modified and rejected to the extent indicated in this section D.
E.
Sanctions to be Imposed
The Special Master recommended that no sanctions be imposed upon Struthers for the destruction of the documents. His recommendation was based upon his findings concerning the matters discussed in sections A through D above, and it was based upon certain other factual findings.
The Special Master found that Struthers’ motives for destroying the documents were proper, namely:
1.“... when the decision was made by Mr. Drucker on behalf of Struthers in February, 1972 to destroy documents, that decision was in large measure motivated by the existence of a protective order entered in the General Foods litigation on or about April 24, 1969 ...” (p.
n
2. “Counsel for Struthers knew that originals or copies of some or all of the documents were in the possession or control of General Foods; they also believed that it would be impossible to reach an agreement with General Foods regarding the disposition of all these documents.” (p. 8).
3. “The proof indicates that Struthers and its counsel were motivated to destroy some of the OSW records because they perceived no need to continue storage, particularly since, in their view, copies or originals of all these documents were on file with the United States government.” (p. 8).
4. “As to the files of correspondence and related materials pertaining to Struthers’ potential customers in the mid-1960’s, Struthers made the decision to destroy these documents because of their age and because of the view of Struthers’ counsel, at the time of the destruction, that such documents were wholly irrelevant to any litigation or any other company.”
Nestle urges rather substantial reasons to reject these findings.
As to the finding that the destruction of the documents was occasioned by the existence of the protective order, Nestle notes: (i) Struthers’ action constituted a violation of that order, which required that upon termination of the litigation the documents subject thereto be kept “in a secure place”, (ii) Struthers’ destruction of its
own
documents could not possibly have been occasioned by the existence of the protective order which was designed to protect General Foods’ documents, and (iii) even as to the depositions of General Foods’ personnel and even as to the General Foods’ documents, only a portion were subject to the protective order.
As to the finding that counsel for Struth-ers knew that
some or all oí
the documents
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were in the possession or control of General Foods, Nestle notes: (i) clearly not
a11
the documents were in the possession or control of General Foods or its counsel (and I have so found in an earlier section of this opinion), and (ii) since Struthers had no discussions with General Foods concerning preservation of documents, Struthers had no basis for relying on General Foods to preserve indefinitely documents which might be relevant in a new litigation to which it was not a party.
As to the finding that Struthers destroyed the OSW documents to avoid the burdens of storage and because copies or originals were on file with the government, Nestle notes: (i) the so-called “burden” of storing the OSW documents was a $7.50 per month storage bill of Westheimer Transfer & Storage Co., Inc. and (ii) internal Struth-ers OSW documents would not have been on file with the government (and I have so found in an earlier section of this opinion).
As to the finding that Struthers destroyed its customer records because of their age and lack of relevance, Nestle notes the high degree of relevance of such documents in connection with the on-sale defense. (I have found, in Section C, that it is inconceivable that Struthers’ counsel would not have appreciated the significance of this kind of document.)
Were I to make a finding on the evidence which was before the Special Master as to Struthers’ motives in destroying the documents, my finding would differ from his. The reasons Struthers advances smack to me of after-the-fact rationalizations. I note the significance of Struthers’ vigorous denials, early in this litigation, that suit against Nestle was contemplated when the documents were destroyed, and the reversal of this position only when confronted in the document destruction proceeding with records which demonstrated conclusively that Struthers and its attorneys were discussing document destruction and suit against Nestle at the very same time. This indicates to me that Struthers knew perfectly well that it should not have destroyed the documents when suit against Nestle was contemplated. Nevertheless, in some measure this finding rests upon credibility evaluations, and the Special Master heard certain pertinent testimony on this issue. I conclude, therefore, that the finding as to Struthers’ motivation is not clearly erroneous.
Another finding on which the Special Master based his recommendation was that “the instant motion was filed in December 1975 but not brought on by Nestle for argument and decision by this Court until 1980”. This statement is clearly erroneous, but for understandable reasons. The Special Master could not be expected to have a familiarity with the involved procedural history of this case. Nestle brought on the sanctions motion in December, 1975, as the Special Master observed. It was heard and argued before Judge Meanor, who wrote an opinion disposing of that and other motions. He concluded that he could not decide the sanctions motion without an evidential hearing. Thereafter, the case was assigned to different judges and the delay in scheduling the evidential hearing and resolving the motion was attributable to the inability of the Court to reach the matter, not Nestle’s dilatoriness.
The Special Master further found that “not until the spring of 1981 did counsel for Nestle make any effort to obtain existing copies of the documents in question from General Foods or its attorneys”.
In October, 1972, Nestle took the deposition of General Foods’ Manager of Patent Litigation, Mr. Quillinan, and sought to ascertain the whereabouts of General Foods’ copies of all the documentation generated in its case against Struthers. At that time Mr. Quillinan testified, as noted above, that the haystacks of documents had been redistributed throughout the corporations and “may be in the form of hay”. Nestle’s attorney then asked if General Foods’ counsel had possession of the documents General Foods produced to Struthers. Mr. Quillinan said, “I really don’t know.” General Foods’ patent counsel, who were present, did not disclose that they had in their possession a complete set of such documents. Nestle did not learn of this fact until such counsel
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were deposed in connection with the proceeding before the Special Master.
Again, I might have reached a different conclusion, but the Special Master’s finding that if Nestle really wanted the documents it would have gone after General Foods and its counsel more aggressively, is not clearly erroneous and will be adopted.
The Special Master found that “the belated motion for sanctions was finally pressed in 1980 more to obtain some tactical advantage over Struthers than to achieve true discovery”. I have noted above that the motion was pressed in .1975 and that the five-year delay is attributable to problems which confronted the Court and not to Nestle’s inaction. It may well be that Nestle has been primarily interested in the tactical advantages which it could derive from the document destruction caper rather than in the wish to obtain additional discovery, and the Special Master’s finding in this regard will be adopted.
On the basis of the findings of the Special Master as adopted, modified and rejected by me, I will adopt his sanctions recommendation, although for somewhat different reasons from those set forth in his report and recommendation.
I do not think there is any basis for imposing sanctions for violating Judge Lacey’s order to produce. Long before he had entered that order Struthers had destroyed the documents. It was unable to comply and, therefore, cannot be held to have willfully violated the order.
The issue is whether Struthers should be penalized for destroying the documents in 1972 under the circumstances of this case.
I conclude that the destruction of the documents was clearly improper. It is immaterial, in arriving at this conclusion, that Struthers thought that the destruction was a convenient way to handle the Delaware district court’s protective order or that it sought relief from the burden of storing the documents or that it thought other parties or counsel or the government would have originals or copies of the documents. Similarly, it is immaterial, in arriving at this conclusion, that Nestle, once having learned of the event, exploited it to the full as a matter of litigation tactics, perhaps thereby seeking to divert the Court from the substantive issues in the case. All that may affect the ultimate relief to be accorded. It does not in any way cure the essential wrongness of what Struthers did.
Struthers had in its possession a vast collection of documents which had been gathered through great effort in an earlier litigation. It was contemplating new litigation involving substantially the same subject matter and issues as were involved in the litigation in which the documents had been assembled. It knew that a substantial portion of the documents would be relevant in the litigation about to be instituted. Yet it nevertheless destroyed those documents. As a result, some became forever unavailable; many would have to be acquired once again through the long and difficult process of discovery, imposing on the Court and litigants unnecessary, heavy burdens, of which these sanction proceedings are but a part. Regardless of its avowed reasons for the destruction (which the Special Master found to be genuine reasons), Struthers’ actions in 1972 were highly improper.
The applicable rule is set forth in
Bow-mar Instrument Corp. v. Texas Instruments, Inc.,
25 Fed.R.Serv.2d 423 , 427 (N.D.Ind.1977):
The proper inquiry here is whether defendant, with knowledge that this lawsuit would be filed, wilfully destroyed documents which it knew or should have known would constitute evidence relevant to this case.
Struthers’ conduct clearly comes within these criteria. In February and March, 1972 Struthers had in its possession vast quantities of documents. It was actively planning to institute a complex patent action against Nestle. It knew that the documents included material relevant to the issues which would be involved in that action. Yet, on the eve of filing its complaint, Struthers embarked upon an extensive program to assemble and then destroy these documents, thus placing itself in a position
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where it could not comply with future discovery requests of the parties or orders of the Court with respect to those documents. It makes no difference what other reasons Struthers had for destroying those documents; its actions in the circumstances which prevailed in 1972 constituted
wilful
destruction of documents in anticipation of litigation.
Had this conduct resulted in demonstrable injury to Nestle, there is no question in my mind that whatever sanctions as would be necessary to undo the harm would be in order,
National Hockey League v. Metropolitan Hockey Club, Inc.,
427 U.S. 639 , 96 S.Ct. 2778 , 49 L.Ed.2d 747 (1976). I have concluded, however, in conformity with the recommendation of the Special Master, that Nestle has not been harmed in its defense on the substantive issues in this case.
In Parts II through V of this opinion I set forth my reasons for granting Nestle’s motions for summary judgment of invalidity of the ten patents in suit. Even without the destroyed documents Nestle has been able to assemble a comprehensive record with respect to these patents sufficient to demonstrate that there is no genuine issue of material fact as to their invalidity. Access to the destroyed documents might have provided a few more nails to drive into the coffin, but even without those documents Nestle secured sufficient nails to inter decently the ten patents in suit.
So, in the last analysis, Nestle’s ability to meet the substantive issues in the case has not been impaired significantly by the destruction of the documents. The necessity to pursue the matter has imposed a very heavy, unnecessary burden on the litigants and upon the Court. The appointment of the Special Master was required in order to ease the Court’s burden and to make it possible for the Court to deal with discovery and substantive matters. Nestle urges that these burdens, which flowed from the document destruction, require that attorneys’ fees and other costs incurred by Nestle as a result of the document destruction proceedings be assessed against Struthers. This would be a reasonable sanction in some circumstances. However, in the course of the present case Nestle’s own conduct when discovery was sought from it has been far from exemplary. At every opportunity it sought to delay and obstruct necessary discovery. It evaded and even violated orders of the Court. It, too, has cast unnecessary burdens on the litigants and the Court. Under the circumstances each party should bear its own attorneys’ fees and costs incurred in the document destruction proceedings.
An order will be entered which will recite simply that the report and recommendations of the Special Master are adopted, modified and rejected in the manner set forth in this opinion.
II.
The Muller Patents
Nestle moved for summary judgment of invalidity and/or unenforceability of Muller patents 3,404,007 (the ’007 patent) and 3,495,522 (the ’522 patent) on the following grounds:
1. Struthers (Muller’s assignee) is collaterally estopped to relitigate the final judgment of unpatentability entered by the Patent Office Board of Appeals in the essentially identical Muller application Serial No. 738,776 (the Muller II application discussed below), from which no appeal was taken.
1
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2. The Muller patents are invalid over the prior art, including prior art not considered by the Patent Office before granting the Muller patents in suit.
3. All claims of the ’007 patent are invalid for failure to comply with the requirements of 35 U.S.C. § 112 .
2
4. (a) The ’522 patent is invalid because the apparatus subject matter it claims was abandoned.
(b) The ’522 patent is invalid because it claims only an aggregation of known elements in a combination in which those elements perform only the functions and operations theretofore performed in similar combinations of the prior art.
(e) The ’522 patent is invalid for double patenting and extension of the monopoly of the ’007 patent.
(d) The ’522 patent is invalid by reason of late claiming.
3
5. The Muller patents are invalid by reason of prior offer for sale, sale and use of the subject matter they claim.
6. The Muller patents are invalid and unenforceable by reason of Struthers’ withholding from the Patent Office of information material to the patentability of the subject matter claimed in the patents.
4
After the hearing on the Group I motion I reserved decision on grounds 2, 4(a), (b) and (c), and 5. This opinion concerns itself with those grounds.
A.
Description of the Patents
1.
Muiier ’007 Patent
The Muller ’007 patent is for a “Freeze dried coffee process and product”. The abstract of the disclosure recites that “A process is provided for making concentrated coffee or tea in dry form by freeze concentration of an aqueous beverage extract in which solids are recovered from the ice crystals and the concentrated extract is freeze dried.”
The specifications recited that the invention relates to a process for the preparation of powdered soluble food products generally but is particularly applicable to the preparation of powdered or soluble coffee and tea. “Soluble or ‘powdered’ coffee has been prepared by first extracting coffee beans with hot water and subsequently dehydrating the extract by spray drying under either vacuum or slightly elevated pressure
*768
conditions. This process has met with vast commercial success, but the flavor of the soluble coffee leaves much to be desired. Volatile taste and flavor elements of the coffee are lost through evaporation, and more oxidation takes place also because of the elevated temperatures and pressure of air. The resulting soluble product is, therefore, never as good as the extract from which it is prepared.”
The specification noted how this loss of flavor had been dealt with in the past: “To improve the flavor of the soluble coffee, it has been often proposed to remove substantial amounts of the water in the extract by partially freezing the extract and separating the resulting pure ice crystals from the concentrated extract.” This constituted a freeze
concentration
step. There followed a
drying
step, as to which, the specification noted, “This process of partial freezing is then followed by a complete dehydration under vacuum conditions. In this way the coffee loses less of the volatile components by virtue of the fact that the extract is subject to vacuum conditions for shorter periods of time.” But, nevertheless, during the conventional method of drying the concentrated extract “much of the flavor components of the coffee which are volatile flash off along with the water and must somehow be replaced in the coffee powder. Even this replacement of the coffee aroma elements into the coffee powder produces a product which is not truly comparable to freshly brewed coffee.” In essence, the '007 patent solves the problem of loss of flavor by instituting, after the freeze concentration step, a freeze drying step.
The patent has five claims, the first four claiming variants of the freeze concentration-freeze drying process and the fifth claiming the product produced by claim 1. The claims read:
I claim:
1.A process for the preparation of a dehydrated coffee beverage product which is readily soluble in cold water, said process comprising:
(a)preparing an aqueous coffee extract containing about 10 to 30 percent by weight of dissolved solids;
(b) subjecting said extract to concentration by partial freezing to form ice crystals and a more concentrated extract containing about 30 to about 50 percent by weight of solids;
(c) separating said more concentrated extract from said ice crystals by centri-fugation; and
(d) subjecting said more concentrated extract to relatively complete dehydration by freezing the extract to a solid mass and freeze drying to a moisture content of about 1 to 5 percent at temperatures between about 0° to -50° C.
2. The process according to claim 1 in which the ice is washed in step (c) and the washings are returned to step (b).
3. The process according to claim 1 in which the ice is washed in step (c) and the washings are returned to step (a).
4. The process according to claim 1 in which the ice is washed in step (c) and thereafter the washings are spray dried.
5. The product produced by the process of claim 1.
2.
Muller ’522 Patent
The Muller ’522 patent is for a “Beverage Apparatus”. The abstract of the disclosure reads: “A system of apparatus for dehydrating coffee and tea is disclosed in which a freeze concentration device includes an integral agitator device and an ice separating centrifuge which is connected to a freeze drying device which removes moisture from the freeze concentrated product under vacuum by sublimation and heat.” This patent (which was applied for
2V¿
years after the application of the ’007 process-product patent) claims as an invention an apparatus which accomplishes the process claimed in the ’007 patent, namely, an apparatus which dehydrates coffee, tea or other powdered soluble food products through freeze concentration followed by freeze drying. Its three claims read as follows:
What is claimed is:
1. A system of apparatus for preparing a dehydrated coffee or tea beverage
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product from an aqueous liquid, the extract, comprising:
(a) concentrating means for partially freezing the liquid extract to form ice therein by indirect exchange of heat across a tubular heat exchange surface between the extract and a circulating refrigerant;
(b) means coacting with concentrating means (a) for agitating extract and removing ice from said tubular heat exchange surface;
(c) centrifuge means for separating ice formed in the extract from said liquid extract,
(d) freezing means for freezing the extract;
(e) means for removing moisture under vacuum from frozen extract by sublimation; and
(f) heat source means coacting with vacuum means for heating and drying the frozen extract.
2. The apparatus of claim 1 including means coacting with the centrifuge means (c) for washing ice separated from the extract.
3. The apparatus of claim 2 including means coacting with the centrifuge means (c) for recovering solids from washings.
B.
Prosecution of the Muller Applications
The history of three pertinent Muller applications for patents, all of which were owned and prosecuted by Struthers, provides indisputable data which bears upon the resolution of the pending motion.
The first application (Muller I; Serial No. 523,574; Ex. 1) resulted in the ’007 patent here in suit; the second application (Muller II; Serial No. 738,776; Ex. 2) became abandoned by reason of Struthers’ failure to appeal the final Patent Office determination of unpatentability entered by the PTO Board of Appeals; the third application (Muller III; Serial No. 829,613; Ex. 3) resulted in the ’522 patent here in suit.
1.
The Muller I Application (the ’007 Patent)
In January, 1966 Struthers filed the Muller I patent application in the name of its employee, John G. Muller, for a process of preparing soluble powdered coffee or tea. That process is summarized in the abstract of the disclosure quoted above and appearing in Column 1 of the ’007 patent, which issued on that application.
The ’007 patent calls for conjoining two processes — freeze concentration and freeze drying. The specification of the ’007 patent sets forth one publication and twenty patents which describe “various processes for freeze concentration” (Col. 3, lines 59-68), as well as two publications and twenty-nine patents which describe “freeze drying processes and equipment” (Col. 4, lines 5-17). Yet another publication and eight patents are set forth as describing “various methods of preparing coffee extracts which may be employed in the process of this invention (Col. 2, line 66 to Col. 3, line 4).
The file wrapper of the ’007 patent contains the officially certified written record of the proceedings before the Patent Office which resulted in the allowance of the Muller I application and its issuance as the ’007 patent.
a.
The Petition to Accelerate
After the Muller I application was filed, but prior to any official action by the patent examiner, William Drucker, Esquire, president of the plaintiff and an officer of each counterclaim defendant, filed on April 24,1967 (Ex. 1, p. 20) a request that examination of the application be accelerated, and he concurrently submitted two prior art references, assertedly developed in a search of the prior art. Mr. Drucker represented that the two prior art patents — neither of which is mentioned in the specification of the ’007 patent — were “deemed most closely related to the subject matter encompassed by the claims”.
The first reference is one of a number of patents to Earl Flosdorf, No. 2,471,677, granted in 1949 (Prior Art Book Tab G). Mr. Drucker distinguished the Flosdorf ’677
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patent from Muller’s alleged invention by asserting that Flosdorf ’677
is limited to the treatment of orange juice, whereas the present invention is concerned with preserving the flavor in coffee and tea.
(Ex. 1, pp. 20-21.)
The petition did not call attention to another of Flosdorf’s patents, No. 2,509,681 (Tab H) issued in 1950, even though the application for the latter patent is referred to in Flosdorf ’677 (Tab G, Col. 1, lines 9-10). Flosdorf ’681 was recognized later in the proceedings to have an important bearing on patentability of the ’007 subject matter.
The other prior art reference cited in the Muller I petition, a 1935 Krause British patent (Tab Q), was acknowledged by Mr. Drucker to relate to freeze concentration of coffee, but he distinguished it as thereafter employing “hot spray [drying] or drum drying”. In connection with distinguishing Krause, Mr. Drucker stated the “essence” of Muller’s invention:
It is the essence of the present invention to start with a suitable concentrate, as does Krause, but thereafter to subject it only to a cold desication [sic] so as to avoid the volatilization of delicate flavor substances which would be lost in spray or drum drying * * *.
(Ex. 1, p. 21.)
Thus, none of the “most closely related” art which Struthers brought to the examiner’s attention described freeze concentration of coffee followed by freeze drying.
b.
The Examiner’s First Action
Shortly after the petition was filed, a first official action, dated June 6,1967, was mailed to Mr. Drucker by the patent examiner, Maurice W. Greenstein (Ex. 1, p. 28).
See
37 C.F.R. §§ 1.104-1.107 . The examiner had found the Flosdorf ’681 patent, and with one exception, which is not pertinent for present purposes, he rejected all of the Muller application claims “as fully met by” that patent.
The 1950 Flosdorf ’681 patent describes freeze drying of fruit juices and aqueous extracts “such as coffee extract”
(e.g.,
Tab H, Col. 1, line 3; Col. 2, line 3; Col. 8, lines 4 and 9). Flosdorf teaches that the juice or extract should be “preconcentrated” by appropriate means before freezing and freeze drying, as by
subjecting the material to partial freezing with formation of a mixture of ice and concentrate and separating the concentrate from the ice, as by centrifuging. (Tab H, Col. 2, lines 17-20.)
The quoted teaching describes freeze concentration. The ’007 patent uses like terminology; see Col. 2, lines 1-6.
Flosdorf ’681 thus expressly teaches the conjoined processes of freeze concentration followed by freeze drying of coffee extract. Flosdorf ’681 also teaches freeze concentrating coffee extract to within the range (30% to 50% solids) set forth in the Muller ’007 patent claims:
With coffee extracts, preconcentration to a solids content of about 50% gives optimum results in the practice of the invention, from the standpoint of quality of product and cost.
(Tab H, Col. 8, lines 9-12.)
The examiner rejected the Muller claims as having been anticipated by Flosdorf, relying on 35 U.S.C. § 102 (b).
The examiner’s first action also made a separate and additional rejection of all the application claims over other art,
viz,,
the 1942 Irwin patent 2,292,447 (Tab D) or the 1956 Colton patent 2,751,687 (Tab J), in view of the 1947 Noyes patent 2,416,945 (Tab F) and (as to tea) the 1958 Cortez patent 2,852,388 (Tab K). Irwin and Col-ton, the primary references in this rejection, were cited as showing preparation of soluble coffee by freeze drying coffee extract, which can be preconcentrated by any conventional method. Noyes was cited to show that freeze concentration is one of those conventional methods. The examiner stated:
Consequently, to concentrate the extracts of the primary reference^] as by the method of Noyes is deemed to be an obvious expedient and well within the purview of one having ordinary skill in this art.
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(Ex. 1, p. 29.)
Struthers responded to the official action and requested reexamination (see 37 C.P.R. § 1.111). In its response, filed August 21, 1967 (Ex. 1, p. 31), Struthers did not challenge any of Examiner Greenstein’s rejections. Paced with the rejection on Flos-dorf ’681, and the separate rejection on Irwin, et al., Struthers cancelled the principal original claims and substituted new claims 7-10. The differences between the original claims and the new claims appear from a side-by-side comparison set forth in Appendix A, in which there are also set forth the claims which eventually issued in the ’007 patent.
As appears from the comparison, one change effected by the amendment was to add a limitation in clause (c) of application claim 7 that after separating the ice from the concentrated solution, coffee solids be recovered from the ice to be combined with the more concentrated extract.
5
That new limitation was asserted by Struthers to constitute the significant advance which “clearly distinguishes over the cited art”— even though it is not part of the “essence of the invention” previously urged upon the examiner by Mr. Drucker.
Mr. Drucker’s remarks accompanying the new claims asserted:
The feature of this claim [new claim 7] which most clearly distinguishes over the cited art is found in step (c) in which the solids are recovered from the ice after centrifugation of the ice from a concentrated extract prior to freeze drying the concentrated extract. * * * None of these principal references [Flosdorf, Irwin or Colton] teach the recovery of solids from the ice subsequent to centrifugation.
(Ex. 1, p. 33.)
Muller’s invention was thereby recast, and patentability over the prior art was posited by Struthers upon the feature of recovering solids from the centrifuged ice.
c.
The Examiner’s Second Action
In response to Struthers’ new claims the examiner mailed a further official action, dated March 26, 1968, to Mr. Drucker (Ex. 1, p. 34). Examiner Greenstein cited additional prior art showing the allegedly distinguishing feature of solids recovery from the ice to be old and well known.
The 1961 Cole patent 2,967,778 (Tab M) cited by the examiner describes freeze concentration of juices “and other beverage liquids such as milk, coffee, etc.” (Col. 1, lines 24-25). Cole teaches that some of the concentrate clings to the ice crystals in the centrifuge too tightly to be removed by centrifugal force, and that enough liquid containing valuable solids clings to the ice to require removal and recovery. That removal is accomplished by treating the ice in the centrifuge with controlled amounts of water (Tab M, Col. 5, lines 38-50), a procedure the patent refers to as a “washing procedure” or “washing treatment” (Col. 6, line 18; Col. 8, lines 54-56). The washings are returned to any desired stage of the process.
The examiner also cited a 1940 Basset British patent 529,202 (Tab R), which also discloses freeze concentration of coffee extract and washing retained solids from the ice in the basket of the centrifugal “hydro-extractor”,
i.e.,
centrifuge (page 2, lines 1— 7).
As Examiner Greenstein put it:
Flosdorf teaches partially dehydrating coffee extract by freeze concentration to a solids level within the range set forth herein. The concentrate is then frozen and its moisture sublimed as claimed. The newly defined procedures of the instant claims differ from those of Flosdorf in the additional steps of washing the centrifuged ice crystals to recover coffee solids imprisoned by the water ice and adding said recovered solids to various phases of the drying procedure. However, such steps, which are set forth for the first time, are considered to be an obvious expedient where one wishes to
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recover all of the flavor components of the original extract. Furthermore, those steps are deemed to be obvious because they are conventionally employed in the coffee art, as shown by the secondary references.
The examiner added that the prior art also rendered the tea claim unpatentable.
The second action was made FINAL (see 87 C.F.R. § 1.113 ), giving Struthers the right to appeal from the examiner’s action to the Board of Appeals. Struthers did not appeal or file a written response to the second examiner’s action. Instead, Mr. Drucker had an interview with Examiner Greenstein.
d.
The Interview with the Examiner
There is no written record which summarizes or otherwise reveals the discussion that was had during the
ex parte
interview between Mr. Drucker and Examiner Green-stein. The form letter mailed April 25, 1968 (Ex. 1, p. 37) states that the interview occurred on April 23, and the paper mailed April 30, 1968 (Ex. 1, p. 38) states that “agreement was reached” at the interview to the changes it sets forth. The reasons advanced by Mr. Drucker, which caused the examiner to withdraw his rejections, do not appear in the official file wrapper.
As is seen from the comparison chart (Appendix A), application claim 7 (which became claim 1 of the ’007 patent) was amended to cancel the very feature — recovery of solids from the ice subsequent to centrifugation — upon which Mr. Drucker had previously posited patentability of that claim over the prior art cited in the first rejection. Other changes were also made,
6
and application claims 7-10 were allowed. They appear as claims 1-4 of the ’007 patent.
The Patent Office record does not disclose how application claim 7 (patent claim 1), after amendment to eliminate the solids recovery feature, could have been regarded as patentable over the art cited in the first action. In that action, as described above, the examiner had rejected the claims “as fully met by Flosdorf”, and had additionally rejected them as unpatentable over Irwin or Colton in view of Noyes. These were rejections Struthers did not challenge but, instead, sought to avoid by presenting new claims including the solids recovery feature. Application claims 8-10 (patent claims 2-4) recite washing the ice, but that feature was established by the examiner in the second action to be only an obvious variant shown in the Cole and Basset patents he cited.
The file wrapper does not suggest why the examiner reversed his previous positions. The record also lacks any statement of the reasons advanced by Mr. Drucker in support of his oral request at the interview for reconsideration of the final rejection of the claims.
The absence of a written record violated Patent Office rules,
see, e.g.,
37 C.F.R. §§ 1.2 , 1.111, 1.133. The official action of the examiner issued after the interview did not, as Struthers contends, constitute compliance with these rules. The consequences which should flow from these violations will be discussed in later sections of this opinion.
In addition to the changes in the claims referred to above, there appeared in the ’007 patent allowed by the examiner after his interview with Mr. Drucker claim 5 — the product-by-process claim. Struthers
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had made no written request for that type of claim. Patent Office regulations in effect at the time, as set forth in the Manual of Patent Examining Procedure, permitted that form of claim only in certain circumstances, and only if the applicant submitted a required showing. Thus, § 706.03(e) of the Manual provided:
An article which cannot be described in any other manner, may be claimed by a process of making it * * *.
Applicant must, however, make a showing
that the product cannot be described except by reference to the process of making it. (Emphasis supplied.)
No such showing appears in the file wrapper of the ’007 patent, notwithstanding the Patent Office requirement that all business be transacted in writing. Nor is it shown how Mr. Drucker persuaded the examiner to grant such a claim which had not been requested in writing.
7
2.
The Muller II Application
In June, 1968, after the Muller I application had been allowed, Struthers filed the Muller II application (Serial No. 738,776; Ex. 2). The Muller II specification is essentially identical to that of the Muller I application as filed, except that it contains the “up to about 50 percent” disclosure at page 6, line 21 (Ex. 2, p. 9) which was not contained in Muller I as filed. Original claim 1 of the Muller II application largely paralleled the original claim of the Muller I application, but was directed to vegetable product extracts. There were dependent claims to coffee and tea, and there was also a product-by-process claim (Ex. 2, p. 13).
Struthers sued General Foods under the ’007 patent on October 1, 1968, the day it issued. During the course of discovery in that action it became apparent that there might be ambiguity in the ’007 patent as to the freeze drying temperature set forth at the end of claim 1. Insofar as this ambiguity persisted in the Muller II application it was cured by an April 24, 1969 amendment which added a new claim 11. New claim 11 (Ex. 2, p. 19) was specific to coffee and paralleled claim 1 of the ’007 patent, with three differences. In clause (b), the more concentrated extract is recited in claim 11 to have a concentration of at least 30% solids, whereas patent claim 1 recites about 30% to 50% solids. In clause (c), claim 11 includes washing the extract in a centrifuge; this is the subject matter shown by the Cole and Basset patents cited by the examiner in his second action in Muller I. Third, clause (d) of claim 11 was rewritten to make plain that the temperature range applies to freezing of the extract:
(d) Subjecting said separated more concentrated extract to further dehydration by: freezing at temperatures between about 0° and minus 45° C; sublimation of ice; and further drying under vacuum to a moisture content of 1 to 5% by weight.
New claim 11 thus repaired the deficiency of ’007 claim 1, to which General Foods had drawn attention.
a.
The Examiner’s First Action
In December, 1969, Examiner Greenstein mailed to Mr. Drucker a first official action in the Muller II application. The examiner took exception to designation of Muller II as a “divisional” application. By statute, 35 U.S.C. § 121 , a divisional application is one filed as a result of a requirement for restriction (also known as a requirement for division) between independent and distinct inventions claimed in a prior application.
See also
37 C.F.R. § 1.142 . In the event two distinct inventions are initially claimed in an application and the Patent Office requires restriction between them, the ap
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plicant must elect which one he wishes to prosecute in that application. The other invention may be made the subject of a divisional application. § 121 provides that in the event of such a requirement for restriction, the patent issuing on either application cannot be used as a reference against the other.
Examiner Greenstein pointed out that there had been no requirement for division in the Muller I application, and it was consequently improper to style Muller II as a “divisional” application. The examiner demanded a new oath, and correction of the specification (Ex. 2, p. 23). In response, Mr. Drucker acquiesced and promised to supply a new oath upon indication that Muller contained allowable (patentable) subject matter (Ex. 2, p. 29).
The examiner’s first action rejected claim 11 (and dependent claims 12-14) of the Muller II application as unpatentable over claims 1 to 4 of the ’007 patent. The rejection was based on the 35 U.S.C. § 101 prohibition against double patenting.
All claims in Muller II (claims 1-14) were also rejected over the counts of two interferences in which the ’007 patent was then involved. Both interferences were terminated, without award of priority, before conclusion of proceedings in the Muller II application, and they consequently had no effect on the outcome.
Product-by-process claim 2 of the Muller II application was rejected as unpatentable over the freeze dried coffee shown by the Irwin reference (Tab D). The examiner stated (Ex. 2, p. 23):
At best there is but a difference in degree and not of kind between the instantly claimed product and that of the reference. The product is, in any event a freeze dried coffee, used in the same manner as any other freeze dried coffee product.
b.The Product-by-Process Claim
Struthers initially contested Examiner Greenstein’s rejection of the product-by-process claim by pointing to the allowance of that form of claim as claim 5 of the ’007 patent (Ex. 2, p. 29). In the next action, however, a different examiner (Mr. Ba-shore) repeated the rejection, saying (Ex. 2, р. 32):
Claim 2 is rejected as an improper product-by-process claim. The freeze dried product may be described in other manners without the necessity of relying on a description of the process by which it is made.
Struthers thereafter did not make a showing in support of that form of claim but, rather,
acquiesced
in the rejection by
can-celling
claim 2 (Ex. 2, p. 40).
с.
The Double Patenting Rejection
In response to the double patenting rejection made in the first action, Mr. Drucker inquired as to the possibility of overcoming that rejection by filing a terminal disclaimer (Ex. 2, p. 29). Examiner Bashore replied in the second official action that a terminal disclaimer would not overcome that rejection (Ex. 2, p. 32). Nonetheless, in March, 1972 a terminal disclaimer was filed; it was signed by Mr. Drucker in his capacity as Vice President of Struthers Scientific (Ex. 2, p. 61). That instrument disclaimed the terminal portion of any patent granted on the Muller II application which would extend beyond the expiration date of the ’007 patent. By filing the terminal disclaimer Mr. Drucker conceded that the terms of the Muller II application were not patentably distinct from the subject matter patented in the ’007 patent,
Application of Vogel,
422 F.2d 438 (Oust. & Pat.App.1970); Manual of Patent Examining Procedure § 804.
d.The Prior Art Rejection
In the second official action all claims in the Muller II application were rejected over prior art (Ex. 2, p. 33). The rejection was based upon Struthers’ own Ganiaris patent 3,283,522 (Tab 0) in view of the 1942 Irwin patent (Tab D) which had been cited in the Muller I case. The Ganiaris patent was cited as teaching freeze concentration of tea and coffee extracts, as well as washing of the separated ice. Irwin was cited to show vacuum drying of coffee extract by
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sublimation (freeze drying). Another reference (Togashi) was cited against a tea claim, which was later cancelled.
The second action was made FINAL, and Struthers thereupon appealed to the Patent Office Board of Appeals (Ex. 2, p. 36).
e.
Muller II
— The
Decision of the Board of Appeals
The decision of the Board of Appeals was rendered January 12, 1973 (Ex. 2, p. 78). As to the double patenting rejection the Board took note of the recent decision in
Application of Vogel,
422 F.2d 438 (CCPA 1970), which required identity of subject matter claimed in a prior patent and a later application in order to meet the “same invention” test (i.e., the situation which cannot be overcome by the filing of a terminal disclaimer). The Board stated:
In the instant case, the appealed claims set forth a process which is almost exactly the same as the claims of U.S. 3,404,-707 [sic: 3,404,007, the Muller patent cited on the previous page of the Board’s decision]. Even though the differences between the appealed claims and the patent claims are so small as to be almost non-existent, the fact remains that the claims are not drawn to identical subject matter. Under the identity of subject matter tests required by the CCPA, we cannot sustain the examiner’s rejection.
The Board then went on to
affirm
the rejection of all claims remaining in the application as being unpatentable over the combination of the Ganiaris ’522 patent and the Irwin ’447 patent.
8
After discussing the disclosures of the two references, the Board stated:
In summary, Irwin shows the freeze drying of coffee extract and indicates that concentration of the brew is preferable prior to dehydration. Ganiaris shows a concentration procedure useful prior to preparation of an instant coffee. It is our opinion that the use of the Ganiaris concentration procedure in combination with the Irwin dehydration method would be clearly obvious to the skilled worker in the art.
Contrary to the appellant’s assertion, there is a clear link between the combination of references cited by the Examiner. Even though Ganiaris shows no drying step, it is clearly suggested that the concentration of the extract is preliminary to the preparation of instant coffee. Instant coffee may be prepared by the method of Irwin, and, as pointed out above, concentration prior to drying is Irwin’s preferred embodiment. Washing of the ice crystals in the centrifuge is shown in Ganiaris’ Figure 2. These washings are recirculated into the system and will be ultimately dried along with coffee extract when the dry coffee is produced. Irwin shows the same dehydration procedure as used in the appealed claims,
i.e.,
freeze drying. No particular temperatures are recited for the freezing of coffee extract. However, it is clear that temperatures sufficient to freeze the material must be used. Determination of the proper temperature would be merely routine experimentation which is within ordinary skill in the art.
(Ex. 2, pages 81-82.)
Struthers elected not to exercise its right of appeal either to the CCPA under 35 U.S.C. § 141 or to the United States District Court under 35 U.S.C. § 145 , and, instead, permitted the Board’s adverse judgment to become final. 37 C.F.R. § 1.197 (c).
3.
The Muller III Application (the ’522 Patent)
The Muller III application (Serial No. 829,613; Ex. 3) was filed June 2, 1969, well subsequent to issuance of the ’007 patent and some 3 Vi years after the Muller I application was filed. The Muller III specification is essentially similar to that of the Muller II case. In Muller III Struthers, for
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the first time, presented claims to apparatus.
Both the oath (Ex. 3, p. 15) and the specification (Ex. 3, p. 5) of Muller III represented that application to be a “division” of Muller II; they also represented Muller II to have been a “division” of Muller I.
See ante,
pages 773-774. Muller I and Muller II were examined in Patent Office Art Group 170; Muller III was examined in a different art group, Group 360. Struthers did not inform the Muller III examiner (Mr. Jenkins) that there had been no requirement for division in either Muller I or Muller II, and Mr. Jenkins did not cite the ’007 patent against the Muller III apparatus claims.
The notice of allowance of Muller III (Ex. 3, p. 26) and Examiner Greenstein’s action in Muller II objecting to designation of that application as a division (Ex. 2, p. 22) were both mailed the same day, December 12, 1969. Struthers did not bring to Examiner Jenkins’ attention in Muller III the objection advanced by Examiner Greenstein in Muller II to designation of the latter as a divisional application. Struthers paid the issue fee for Muller III on December 16, 1969 (Ex. 3, p. 27) and concurrently requested that the patent issue on the earliest possible date (Ex. 3, p. 28).
The apparatus claims of Muller III are in “means” form; that is, each of the several clauses recites means for performing a stated function. The claims were allowed as filed, with only minor changes effected by an examiner’s amendment mailed November 4, 1969 (Ex. 3, p. 17). The examiner cited a number of items of prior art (Ex. 3, p. 19) which he said had been considered (the Muller '007 patent is not among those listed).
Muller III issued as the ’522 patent on February 17, 1970 (Ex. 3, p. 21).
C.
The CCPA Clinton Decision
While Struthers pursued the Muller applications, General Foods sought to patent essentially the same freeze concentration/freeze dry subject matter in its Clinton, et al. patent application.
9
The Clinton, et al. application (Serial No. 830,195) had been involved in interference with the Muller ’007 patent, and Clinton, et al. had been accorded benefit of the May 5, 1965 filing date of their parent application (Ex. 1, p. 65). That interference was terminated in April, 1972, after settlement of all litigated matters between Struthers and General Foods in February, 1972 (Ex. 2, p. 57). Thereafter, General Foods sought to obtain patent claims to freeze concentration and freeze drying of coffee extract. As Clinton’s May 5, 1965 effective filing date was earlier than Muller’s January 28, 1966 filing date, the Muller patent was not prior art as against Clinton, et al.
The essential identity of the subject matter Clinton sought to patent and the subject matter patented to Muller is shown by the following side-by-side comparison of their two principal claims (the text of the Clinton claim appears in the CCPA opinion):
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Pursuant to 35 U.S.C. § 141 , General Foods appealed to the United States Court of Customs and Patent Appeals from the examiner’s final rejection of the Clinton claims, which the Board of Appeals had affirmed. That Court, in turn, affirmed.
Application of Clinton, et al.,
527 F.2d 1226 (CCPA 1976).
As the Court’s opinion reflects, the Clinton, et al. claims were rejected over the Flosdorf ’681 patent (Tab H) considered with the Colton ’687 patent (Tab J) and Sivetz (Tab U); alternatively, the claims were rejected over Clinton, et al. ’784 (Tab P) considered with the Ganiaris ’522 patent (Tab 0) ( 527 F.2d at 1228 ). The Court summarized each of the prior art references, but in the portion of the decision headed “OPINION” the Court rested its affirmance of the rejection on Flosdorf ’681 alone (with reference to a Cottle patent as to the dewaxing claims). The Court stated;
We first consider the references by themselves and see whether they suggest doing what appellants have done. [Citation omitted.] Flosdorf alone suggests subjecting a coffee extract to a combination of freeze concentration and freeze drying.
( 527 F.2d at 1228 .)
The Court of Customs and Patent Appeals thus affirmed the rejection of claims to freeze concentration and freeze drying of coffee over the same Flosdorf ’681 patent which Examiner Greenstein originally had regarded as a complete anticipation of Muller’s claims in the Muller I application (which became the ’007 patent). As noted above, the Muller I file wrapper does not give the slightest hint why the examiner abandoned that position.
D.
Prior Sale
— Nestle's
and Struthers’ Contentions
Nestle urges as an additional ground for its motion for summary judgment of invalidity of the ’007 and ’522 patents the prior offer for sale, sale and use of the subject matter those patents claim.
1.
Facts Relied upon by Nestle
Nestle relies upon data Struthers supplied in response to discovery requests in the General Foods case and in the present case to establish that the subject matter of the ’007 and ’522 patents was in public use or on sale in this country more than one year prior to the date of application of those patents and that, therefore, the two patents are invalid under 35 U.S.C. § 102 (b). The material upon which Nestle relies is as follows:
Struthers published a five-page advertising brochure captioned STRUTHERS “FRECON” PROCESS QUESTIONS AND ANSWERS, bearing a revision date of 11/27/64 (Item 7 in Struthers Production Book), which is more than one year prior to the filing date of Muller I. “FreCon” is Struthers’ acronym for freeze concentration. That advertising brochure included the following statements (all emphasis is supplied):
5. Q. What products have been successfully concentrated by the “FreCon” process?
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A. To date, the following products have been successfully concentrated by the “FreCon” process:
Coffee Extract
It is thought that virtually all comestible liquids could be successfully concentrated by the “FreCon” freeze concentration technique.
7. Q. What is the difference between freeze concentration and freeze drying?
A. * * * Freeze concentration is far less expensive than freeze drying per pound of water removed. Thus, where it is desired to reduce a liquid to a dried product, it is more economical to install a
freeze concentration
plant
as the first step followed by freeze drying.
11. Q. Is the Struthers “FreCon” process really perfected yet?
A. Yes. Struthers is
now
prepared to supply complete “FreCon” plants of any size on a firm price-guaranteed performance basis.
12. Q. What does the “FreCon” process cost?
A. * * *
Recent proposals
on Struth-ers’ “FreCon” plants to concentrate
coffee extract
to 45% solids from 25% solids shows an overall cost of $.03 per pound of dry coffee solids.
* Sfc ífc He S}! *
14. Q. Is it possible to rent a pilot plant so that client can evaluate the “FreCon” process in his own plant on fresh material using his own operating staff?
A. Yes. Struthers is prepared to rent for use in the client’s own plant a portable freeze concentration unit capable of producing 100-150 pounds per hour of 40-50° Brix concentrate from fresh whole juice. This unit, complete with all auxiliaries, including an ammonia refrigeration system, is presently mounted on a railroad flat car. If necessary, it can be transferred to a truck trailer.
On the basis of this brochure Nestle argues that the subject matter claimed in the Muller patents was on sale more than one year prior to the filing of the Muller I application.
In addition, Nestle urges that the subject matter of the Muller patents was sold by Struthers to General Foods more than one year prior to the January, 1966 Muller I application, and General Foods used and practiced that subject matter. Nestle refers to Struthers’ supplemental answer to Nestle’s Interrogatory 50:
50. Respondents believe that General Foods Corporation has infringed United States Letters Patent Nos. * * * 3,404,007, * * * 3,495,522 * * *. The basis of such belief lies in the fact that Struthers Scientific and International Corporation in 1964 and 1965 sold freeze concentration equipment and systems to General Foods for use in freeze concentrating coffee extract and General Foods did in fact freeze concentrate coffee extract with said equipment. * * *
A copy of the 1964 contract between Struthers and General Foods is Item 8 to the Struthers Production Book, and copy of the 1965 contract is Item 9.
Even earlier, in September, 1963, Theodore Feit of Struthers caused an article to be published in
Food Engineering News
entitled, “Struthers Scientific Introduces Freeze Concentration Process” (Item 10). The publication stated Struthers had developed “a new process for concentrating comestible liquid products by freezing”, including such products as fruit and vegetable juices, soups,
coffee
and other beverages, and that:
Several leading food processors are currently evaluating the process for use on
a commercial scale, and Struthers is offering the process,
called the Struthers ‘Fre-Con method’ under license to a single processor in each field.
(Item 10, page 1.) (Emphasis supplied.) In 1964, as part of its effort to sell its freeze concentration system and equipment, Struthers made numerous contacts with
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major food processors. Initially, Struthers’ sales department “took a rifle approach” by contacting specific companies. Shortly thereafter, Struthers Vice President in charge of the “FreCon” division, John G. Muller, stepped in and made “a number of blanket mailings” to food companies describing the “FreCon” process and equipment, and enclosing brochures (Muller Tr. 961-962; Defendant’s Deposition Ex. 16, Tab 8).
At a meeting of December 30, 1963, Struthers offered to supply to the Birds Eye Division of General Foods a “FreCon” plant at a cost of between $325,000 and $350,000, and also discussed rental of a portable “FreCon” plant mounted on a railroad flatcar (Item 11). Design drawings of the “FreCon” system for the flatcar unit were also shown to General Foods at the meeting.
In January, 1964, Struthers began assembling the portable “FreCon” plant and completed construction early in 1964 (Muller Tr. 794; Defendant’s Deposition Ex. 16, Tab 8). That portable unit had freeze concentration equipment mounted on a 60-foot railroad flatcar containing crystallizers, centrifuges, pumps, tanks, and miscellaneous equipment to practice Struthers’ process of freeze concentrating comestible liquids (Muller Tr. 819; Item 1). Muller testified to the purpose for constructing the flatcar plant:
Q Could you tell me in your own words what the purpose of this plant was?
A Our sales engineer had been in contact with the Birds Eye Division of General Foods endeavoring to sell plants for the freeze concentration of orange juice.
He had the impression, he told me that if we had a plant of some appreciable size that had been shown to operate satisfactorily on orange juice, then we would receive orders for a commercial plant.
Our Board of Directors appropriated the funds to build the mobile plant to demonstrate the suitability of the process to Birds Eye and also to others.
That was the original justification for building it.
(Muller Tr. 959-60; Defendant’s Deposition Ex. 16, Tab 8.)
In February, 1964, Struthers and General Foods reached agreement concerning use of the flatcar “FreCon” plant at the Birds Eye facility in Winter Haven, Florida. Despite an initial demand for a $12,000 per month rental fee (Item 11), Struthers agreed, in furtherance of its efforts to receive orders for a commercial plant, to allow General Foods to use the flatcar at Winter Haven free of charge (Item 16). Struthers made another sales concession to General Foods in agreeing to a non-confidential agreement covering the use of the flatcar at Winter Haven (Item 16, pages 1-2.)
At the same time Struthers was building its flatcar “FreCon” plant, Struthers’ sales manager, J.J. Pike, made a firm offer to sell a “FreCon” plant to General Foods’ coffee arm, the Maxwell House Division. On January 9 and 16, 1964, Pike wrote to General Foods enclosing a detailed contract proposal and process flow diagrams of Struthers’ “FreCon” plant (Items 13 and 14). Pike wrote:
In accordance with our meeting in your office on January 13,1964, we are pleased to submit herewith our firm proposal for a plant to concentrate coffee extract from 27% by weight coffee solids to 45% by weight coffee solids via the Struthers Scientific and International Corporation freeze concentration (FreCon) process. This plant would process approximately 1,500 pounds per hour of feed and produce approximately 900 pounds per hour of 45% extract containing 400 pounds of coffee solids.
(Item 14.)
This offer for sale of the “FreCon” equipment and process was for a commercial size plant. If operated continuously, the plant would process over three million pounds of coffee solids per year. The commercial processing capacity of the “FreCon” plant was fully recognized by the parties and recited by Struthers in its offer:
As we have discussed, this system would be supplied to the Maxwell House Division with the understanding it will be
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used as pilot plant facilities or possibly for use in market testing of your product. In the event you utilize this equipment in the production of a Maxwell House product to be nationally distributed, a paid-up royalty of $10,000 would be required. (Item 14.)
The General Foods’ product referred to in Pike’s letter was MAXIM, a freeze dried soluble coffee General Foods had recently introduced. Struthers had promoted its FreCon system for use with freeze drying, and Struthers was aware that General Foods intended to use the Struthers freeze concentration equipment in the manufacture of freeze dried MAXIM soluble coffee (Item 15).
On April 30, 1964, in order to “expedite the project”, General Foods’ Maxwell House Division accepted Struthers’ offer of January, 1964:
As you know, we are now engaged in the preparation of a definitive agreement for purchase from you of the ‘FreCon’ equipment and process and we hope to be in a position to submit the documents to you shortly.
(Item 12.)
Further to “expedite” the project, Struthers was at the time authorized to order necessary equipment and to begin necessary work, even though the formal contract of sale had not yet been executed (Item 12).
Meanwhile, the completed flatcar “Fre-Con” plant was sent to General Foods’ Winter Haven facility. It arrived during April, 1964 and was used there for several weeks, first to concentrate orange juice and then coffee extract (Muller Tr. 798, Item 1). Photographs of the flatcar were taken at Winter Haven (Muller Tr. 279-305, Item 1), and the flatcar plant was shown by General Foods to personnel from the Florida Citrus Commission (Muller Tr. 313-314, Defendant’s Deposition Ex. 16, Tab 8).
By May 21, 1964, Birds Eye had completed its use of the flatcar “FreCon” plant for concentrating orange juice and turned over the equipment to Maxwell House Division personnel for freeze concentrating coffee extract (Item 17). Coffee extract was shipped from a nearby General Foods facility and personnel from General Foods’ Ho-boken coffee manufacturing plant were present during the freeze concentration runs using coffee extract. Near the end of May, 1964 General Foods completed its evaluation of the “FreCon” system and returned the unit to Struthers.
Arrangements were made for Maxwell House to make further use of the “FreCon” plant and on about August 10, 1964 the flatcar arrived at the Hoboken coffee plant. Coffee extract was freeze concentrated in the flatcar unit from a 24% to 26% initial concentration to a 43% to 45% final concentration (Item 19). That use ended and the flatcar “FreCon” plant was removed from Hoboken in September, 1964.
Negotiations for the formal contract of sale continued during the spring and summer of 1964, and on August 12, 1964, Struthers and General Foods entered a “Contract of Sale for Freeze Concentration Equipment” (Item 8). The contract provided:
Struthers shall sell to General Foods, and General Foods shall purchase from Struthers, the freeze concentrating equipment enumerated and described in the attached specifications marked ‘Exhibit A’ for the price, upon the terms of payment, and subject to the terms and conditions hereinafter stated.
(Item 8, p. 1.)
The equipment contracted for was actually delivered to General Foods’ Hoboken plant during November and December, 1964. It included means for washing ice in the centrifuge (Struthers Answer to General Foods’ Interrogatory 119; Item 21). General Foods’ commercial use of the equipment sold under the first contract is also confirmed by a reconciliation of charges included in a second contract of September 30,1965 (Item 9). The reconciliation states: “Prepaid royalty for commercial use of plant — $10,000.”
2.
Facts Relied upon by Struthers
Struthers correctly notes that under § 102(b) any sales or offers for sale of the
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inventions claimed in the ’007 and ’522 patents within one year prior to January 28, 1966 (the date of filing of Muller I application) would not invalidate that patent. (The ’522 patent, Muller III, has the same effective filing date as Muller I.) Thus, references to sales, offers to sell, or use of those inventions in 1964
and
1965 are not sufficient to establish § 102(b) invalidity, since all but the first twenty-eight days of 1965 are within the one-year period exempted under § 102(b).
Struthers contends that not only has Nestle failed to establish a sale, offer to sell, or use within the one-year period, it has failed to establish that what was sold to General Foods was, in fact, the invention claimed in the ’007 and ’522 patents.
Referring to Struthers’ supplemental answer to Nestle Interrogatory 50, which is quoted above, Struthers asserts that the answer does not indicate that Struthers believed that the sale and use of the “FreCon” equipment and system in itself constituted infringement of Struthers’ patents. It simply indicates (1) that Struthers sold equipment which, if employed in the manner disclosed by the Muller patents
(e.g.,
the particular combination of steps there set forth was followed and the precise temperature, pressure and solids content ranges were adhered to) could be used to copy the Muller inventions, and (2) that Struthers believed that General Foods did, in fact, use the equipment in the manner taught by the patents. Struthers further notes that the interrogatory answer stated only that freeze concentration equipment and systems were sold to General Foods, whereas the ’007 and ’522 patents contemplated a freeze concentration step followed by a freeze drying step. Similarly, Struthers points out, the article, the brochure, and the deposition testimony upon which Nestle relies refer to freeze concentration, not freeze drying.
Finally, to establish that the sales to General Foods did not include the inventions claimed in the ’007 and ’522 patents, Struth-ers offered paragraphs 58-60 of the Neo-phytos Ganiaris affidavit, which read:
58. The applications for the ’007 and ’522 patents were filed or effectively filed on January 28, 1966. Accordingly, any sales which would be a statutory bar to their validity would have to have taken place prior to January 28, 1965.
59. The only sale by Struthers to General Foods prior to January 28, 1965 was pursuant to an agreement dated August 12,1964. That agreement did not provide for any freeze drying apparatus, process technology or know-how. Struthers, for example, did not sell
‘subjecting said more concentrated extract to relatively complete dehydration by freezing the extract to a solid mass and freeze drying to a moisture content of about 1 to 5 percent at temperatures between about 0° to -45° C.’
as set forth in claims 1(d) of the ’007 patent, nor did Struthers sell the combination of claim 1(d) with the remaining steps of that claim.
60. Nor, for example, did Struthers sell either
‘freezing means for freezing the extract;’ or
‘means for removing moisture under vacuum from frozen extract by sublimation;’ or
‘heat source means coacting with vacuum means for heating and drying the frozen extract.’
as set forth as subparts (d), (e) and (f) in the ’522 patent. The combination of claims 1(d), (e) and (f) with the remaining elements of that claim was likewise not sold to General Foods.
E.
Invalidity over the Prior Art
1.
Presumption of Validity
The determination of the validity of a patent must begin with the presumption that it is valid, a presumption which can be overthrown only by clear and convincing evidence. 35 U.S.C. § 282 ;
e.g., Universal Athletic Sales Co.
v.
American Gym, Recreational & Athletic Equipment Corp.,
546 F.2d 530, 540 (3d Cir.1976),
cert. denied,
430
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U.S. 984, 97 S.Ct. 1681 , 52 L.Ed.2d 378 (1977). The presumption can be overcome by clear and convincing evidence,
Aluminum Co. of America v. Amerola Products Corp.,
552 F.2d 1020 (3d Cir.1977), and its effect can be vitiated by a number of factors, such as irregularity in Patent Office procedures or withholding material facts,
Monsanto Co. v. Rohm & Haas Co.,
456 F.2d 592 (3d Cir.),
cert. denied,
407 U.S. 934 , 92 S.Ct. 2463 , 32 L.Ed.2d 817 (1972), or failure of the examiner to consider relevant prior art during prosecution of the patent application,
Philips Electronics & Pharmaceutical Industries Corp. v. Thermal & Electronics Industries, Inc.,
450 F.2d 1164 (3d Cir.1971).
The presumption of validity of the ’007 and ’522 patents has been weakened, if not destroyed, by one or both of two factors.
As described above, the examiner reversed himself and allowed claim 1 of the ’007 patent and allowed product-by-process claim 5 after a conference with Mr. Drucker and without a written record of the conference or of the reasons for his change of position as to claim 1 or allowance of new claim 5.
It is the purpose of the file wrapper to make available for all to see the entire prosecution of an application, including the reasons rejections were withdrawn and the patent claims were allowed.
See Graham v. John Deere Co.,
383 U.S. 1, 33 , 86 S.Ct. 684, 701 , 15 L.Ed.2d 545 (1966):
It is, of course, well settled that an invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office.
Hogg
v.
Emerson,
11 How. 587 [ 13 L.Ed. 824 ] (1850);
Crawford v. Heysinger,
123 U.S. 589 [ 8 S.Ct. 399 , 31 L.Ed. 269 ] (1887). Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent.
Powers-Kennedy Co. v. Concrete Co.,
282 U.S. 175, 185-186 [5] S.Ct. 95, 99, 75 L.Ed. 278 ] (1930);
Schriber Co. v. Cleveland Trust Co.,
311 U.S. 211, 220-221 [ 61 S.Ct. 235, 239 , 85 L.Ed. 132 ] (1940).
Thus, information concerning allowance of the ’007 patent claims is unavailable in the file wrapper, notwithstanding Patent Office rules which require a complete
written
record of the proceedings.
To that end, Rule 2 of the Patent Office Rules of Practice in patent cases, 37 C.F.R. § 1.2 , provides:
§ 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
Concerning interviews, 37 C.F.R. § 1.133 provides:
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(b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for response to Office actions as specified in §§ 1.111, 1.135.
37 C.F.R. § 1.111 (referred to in the Rule quoted above) prescribes:
§ 1.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/1810125. Public record. Not legal advice.