28. Mr. Gentry acknowledged that except for the electrical aspect of the claimed invention which allowed it to be used either in the car or in the home, "everything else about the [Pollenex] unit was a combination of something that Clairol had already combined in an existing product" (Gentry at 55). After the Clairol project engineer for the FG-1, FG-2 and FG-3 massagers acquired and disassembled a Pollenex B600 massager, he concluded that Pollenex had copied Clairol so closely that Pollenex had even copied Clairol's mistakes (Carlucci at 19).
V. Foster and Gentry's Failure to Disclose The Prior Art Clairol FG-2 & FG-3 Massagers To The Patent Office
29. Prior to the patent application at issue, both of Messrs. Foster and Gentry had applied for and received other patents (Gentry at 19-20; Foster at 34).
30. Both Messrs. Foster and Gentry in the patent application at issue acknowledged "the duty to disclose information which is material to the examination of this application in accordance with Title 37, Code of Federal Regulations, § 1.56(a)" (Pl. Exh. 104 at 14; Foster at 151).
31. Mr. Gentry understood that he had a duty to "tell [the patent office] what you know" (Gentry at 24).
32. Mr. Gentry understood prior art to mean "Things that existed prior to the invention. . . . Things material, things that relate to the invention" (Gentry at 23).
33. Mr. Foster understood prior art to "also apply to products that had been produced" (Foster at 49).
34. In connection with previous patent applications, Mr. Foster had provided to the patent attorneys involved "all of the information that I felt was relevant to the concept, design and development of this product that I had in my files", "basically the file information on the project"; "it has been my practice to disclose all the information about a particular concept that I have in applying for an invention to the patent attorney who does the application" including existing products "that I would consider relevant . . . [i.e.] if the principles involved in the concept in question are similarly related in nature to the particular idea" (Foster at 44, 46-48, 63).
35. In connection with a previous patent application, Mr. Foster disclosed to the patent attorney the closest existing product, another Pollenex product, although the existing product and the claimed invention were "totally different", as well as information about products that competed with the existing Pollenex product (Foster at 54-55). He considered that disclosing "one or two products that are out there already is sufficient" (Foster at 56).
36. In connection with other patent applications, Mr. Foster disclosed to Mr. Whitesel information about existing products on the market of the same type (Foster at 64, 68, 70).
37. In connection with another patent application, Mr. Foster supplied Mr. Whitesel with publications concerning other such products, including a manufacturer's specification for one such product (Foster at 70-72).
38. During the course of the patent application at issue, Mr. Foster does not think that he supplied Mr. Whitesel with the Clairol products or the product literature, he does not recall informing Mr. Whitesel about the Clairol products, and did not discuss with anybody whether the Clairol product should be disclosed (Foster at 108, 124, 152, 170-173).
39. Mr. Foster's explanation for not disclosing the Clairol product was "because there were numerous other products that we had considered" (Foster at 179).
40. Mr. Gentry, in a telephone conversation with Warren Whitesel, Pollenex's patent attorney, regarding the patent application at issue, discussed the massagers he had seen around the world, and listed all of the products of which he was aware, including trade names. Mr. Gentry also believes he mentioned to Mr. Whitesel that Clairol had a back massager on the market, but does not recall whether he made clear that the Clairol back massager has all of the same characteristics or elements of the claimed invention other than the ability to use it in both the home and the auto as sold, and does not recall whether he gave any consideration to showing Mr. Whitesel any of the existing products (Gentry at 56, 61). The essence of what he disclosed to Mr. Whitesel is contained in column 1, lines 7-21 of the patent at issue, which Mr. Gentry believed fulfilled his duty of disclosure (Gentry at 56, 63).
41. Mr. Whitesel, the attorney who prosecuted the patent application at issue, had at the time approximately forty years of experience as a patent attorney after two years as a patent examiner (Whitesel at 6).
42. Mr. Whitesel had discussed the duty of candor/duty of disclosure many times with Messrs. Foster and Gentry prior to the application at issue (Whitesel at 12-14).
43. Mr. Whitesel did not become aware of the Clairol products until the start of this litigation (Whitesel at 14). He has not physically examined a Clairol back massager or seen any product literature (Whitesel at 17-18).
44. In the course of preparing the patent application at issue, Mr. Whitesel remembers a telephone conversation with Messrs. Foster and Gentry that is summarized in the disclosure of the prior art contained in the patent (col. 1 at 7-45). Mr. Whitesel, in contrast to Mr. Gentry's recollection, does not recall that any specific manufacturer's products or trade names were mentioned (Whitesel at 15-16). Pollenex did not supply any existing products or information beyond what is summarized in the patent (Whitesel at 23).
45. In connection with the patent application at issue, Mr. Whitesel did not file a separate information disclosure statement beyond the disclosure he wrote into the text of the proposed patent (Whitesel at 32-33).
VI. During Prosecution of The Patent Application The Patent Office Was Deceived Because Foster and Gentry Failed To Disclose The Clairol FG-2 & FG-3 Massagers
46. The original claim 1 of the patent application in issue as filed was directed to a massager having a cushion with at least one vibrator, a control unit to apply power to the vibrator, and a jack on the control unit to receive either an AC adapter or a DC adapter (Pl. Exh. 104 at 10).
47. The original claim 1 of the patent application in issue was rejected by the U.S. Patent Office examiner under 35 U.S.C. § 103 as obvious in view of a combination of three cited references, i.e. Kawakami (Def. Exh. 205) or Muncheryan (Def. Exh. 208) combined with Bentley (Def. Exh. 209) and Geldmacher (Def. Exh. 206), the examiner stating:
The patents to Kawakami and Muncheryan disclose a massager cushion having a control unit and connected to different electric sources. The patents to Bentley teaches the expedient of providing inflating means in a cushion to make it as firm as desired and the patent to Geldmacher discloses the provision of heating means in a cushion for therapeutic purposes. In view of the above teachings to provide the cushion of Kawakami and Muncheryan with inflating means to make the cushion as firm as desired as taught by Bentley and to provide heating means as suggested by Geldmacher would have been of no patentable moment but an obvious matter of choice on the part of a person having ordinary skill in the art as involving nothing more than utilizing well known devices for their intended purpose (Pl. Exh. 104 at 23, 24).
48. In seeking reconsideration and allowance of the patent application, Mr. Whitesel narrowed claim 1 by including several features, all of which were features of the Clairol FG-2 & FG-3 units, namely: two vibrators, one upper and lower, the ability to energize the vibrators at either a high or low setting, an air bladder in the lumbar region, and a means for selectively adjusting the inflation of the air bladder (Pl. Exh. 104 at 27).
49. Mr. Whitesel then argued to the patent office:
The claims are drawn to an application for an automobile seat. The claims now require two vibrator motors, means for operating them at either a high or a low level, and an air bladder which may provide an adjustable degree of firmness. The system may operate on either AC or DC.