Full opinion text
OPINION GREENAWAY, District Judge. This matter comes before the Court on plaintiff A.K. Stamping Co., Inc.’s (“AKS”) motion seeking a preliminary injunction, and the cross-motion of defendant Instrument Specialties Co., Inc. (“ISC”) seeking summary judgment. AKS argues that ISC is infringing upon one of its patents and a preliminary injunction is necessary to halt that alleged infringement. ISC, in contrast, argues that AKS’s patent is invalid and, in any event, it has not been infringed. For the reasons discussed below, ISC’s motion for summary judgment is granted in part and denied in part and AKS’s motion for a preliminary injunction is granted. BACKGROUND In a Verified Amended Complaint, dated January 13, 1999, AKS alleged various breaches of federal patent law and state law by ISC. AKS is a New Jersey corporation that designs and manufactures, among other things, tools and components for use in the computer, electronics, telecommunications, and medical industries. ISC is a Delaware corporation that likewise designs and manufactures products for the computer industry. The subject matter at issue is AKS’s “Card Cage Shielding Contactor” (the “Shield”), a metal implement used to reduce the distortion and disruption to personal computers caused by unwanted electromagnetic (“EMI”) and radio frequency (“RFI”) emissions. See Diagram A, Fig. 2 (depicting Shield and computer chassis). A computer’s chassis contains a “card cage portion” with openings to receive new circuit cards. A circuit card is installed by placing it within the chassis opening and securing the attached mounting bracket to the chassis. Though necessary to permit the installation of supplemental circuit cards, these openings increase the machine’s susceptibility to unwanted emissions. With advancements in computer technology — particularly increases in computer speed — harmful emissions have increased as well. The Shield was designed to minimize those negative effects, while continuing to permit easy installation of circuit cards. Previous card cage shields had proven problematic because they were insufficiently flexible and often snagged on the mounting bracket during installation and removal. In response to discussions with customers in the computer industry concerning their needs for improved shielding, AKS employees began developing the Shield. During October 1995, AKS employee Leonard G. Meier met on several occasions with representatives of Sequent Computer (“Sequent”) concerning Sequent’s interest in a new “EMI gasket” that would better address the problems associated with emissions from card cage openings. At a meeting on October 19, 1995, Meier proposed and sketched a part to meet Sequent’s needs (the “October sketch”) (attached here as Diagram B). The October sketch depicted a form of shield with longitudinal bands and tabs at the bottom of the Shield. “Fingers” with nearly squared-off corner breaks are struck from the bands, remaining attached to the Shield only at the base of each finger, and running longitudinally along each band and latitudinally across the bottom. Over the course of 1995, Meier also met with representatives of Apple Computer (“Apple”) to discuss Apple’s card cage shielding needs. Specifically, Apple sought a highly compressible card cage shield that would minimize the potential for snagging during insertion and removal of card cage mounting brackets. Following Meier’s discussions with AKS’s customers, he and James H. Bos-trom of AKS discussed the design problems and concluded that altering the orientation and shape of the contact fingers would eliminate certain snagging difficulties and enhance protection from emissions. Together with Mark Andrews, Meier and Bostrom refined the idea. On November 28, 1995, Andrews completed a technical computer drawing of the product that had been discussed with Apple (the “November drawing”) (attached here as Diagram C). In January 1996, AKS completed the invention and began marketing the Shield to IBM and certain other customers. AKS continued to develop proper tooling to manufacture the Shield, and in April 1997, AKS commenced broad marketing of the Shield. On December 3, 1996, AKS filed an application for a patent on the Shield with the United States Patent and Trademark Office (the “PTO”). The alleged infringing item is ISC’s Backplane Shielding, ISC product number 9510 (the “Backplane”), designed to be placed between the computer chassis and the circuit card openings to protect against EMI/RFI emissions. AKS contends that it bears all of the novel features of the Shield and infringes claims 1-4 of the ’632 patent. Prior to development of the Shield, ISC had been involved in the computer tooling business and had marketed two computer shielding products designed to reduce harmful emissions. Neither of those earlier products bore the traits of the Backplane of which AKS complains. In October 1996, in response to a customer request, ISC began developing the Backplane. Production and sales of the Backplane commenced in March 1997. AKS learned that ISC was marketing the Backplane at some point during the Summer of 1998. In August 1998, counsel for AKS notified ISC’s president that the Backplane fell within certain of the claims of the pending patent, and that AKS would consider the sale and marketing of the Backplane to be infringing once the patent issued. On January 5, 1999, the PTO issued patent number 5,856,632 on the Shield (the “ ’632 patent”) to AKS. Within days, AKS filed the amended complaint, and now has filed a motion seeking a preliminary injunction enjoining ISC from infringing the ’632 patent. In addition to opposing that motion, ISC has filed a cross-motion for summary judgment. DISCUSSION I. ISC’s Motion For Summary Judgment ISC argues that it is entitled to summary judgment on AKS’s patent infringement claims because the ’632 patent is invalid, unenforceable and, in any event, is not infringed by the Backplane. ISC also contends that it is entitled to summary judgment on AKS’s unfair competition and tortious interference claims. Procedurally, this Court shall address ISC’s summary judgment arguments before resolving AKS’s motion seeking a preliminary injunction. Summary judgment is appropriate under Fed.R.Civ.P. 56(c) when the moving party demonstrates that there is no genuine issue of material fact and the evidence establishes the moving party’s entitlement to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Orson, Inc. v. Miramax Film Corp., 79 F.3d 1358, 1366 (3d Cir.1996). In making this determination, the Court must draw all reasonable inferences in favor of the non-movant. See Hullett v. Towers, Perrin, Forster & Crosby, Inc., 38 F.3d 107, 111 (3d Cir.1994); National State Bank v. Federal Reserve Bank of New York, 979 F.2d 1579, 1581 (3d Cir.1992). Once the moving party has satisfied its initial burden, the party opposing the motion must establish that a genuine issue as to a material fact exists. See Jersey Cent. Power & Light Co. v. Lacey Township, 772 F.2d 1103, 1109 (3d Cir.1985). The party opposing the motion for summary judgment cannot rest on mere allegations and instead must present actual evidence that creates a genuine issue as to a material fact for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Siegel Transfer, Inc. v. Carrier Express, Inc., 54 F.3d 1125, 1130-31 (3d Cir.1995). “[U]nsup-ported allegations in [a] memorandum and pleadings are insufficient to repel summary judgment.” Schoch v. First Fidelity Bancorporation, 912 F.2d 654, 657 (3d Cir. 1990); see also Fed.R.Civ.P. 56(e) (requiring non-moving party to “set forth specific facts showing that there is a genuine issue for trial”). “There can be ‘no genuine issue as to any material fact’ where the nonmoving party’s proof is deficient in meeting an essential part of the applicable legal standard, since such failure renders all other facts immaterial.” London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537-38 (Fed.Cir.1991) (quoting Celotex, 477 U.S. at 323, 106 S.Ct. 2548). In determining whether there are any issues of material fact, the court must resolve all doubts as to the existence of a material fact against the moving party and draw all reasonable inferences — including on issues of credibility — in favor of the non-moving party. See Watts v. University of Delaware, 622 F.2d 47, 50 (3d Cir.1980). A. Noninfringement An infringement analysis involves two steps. First, the Court construes the disputed claims in the ’632 patent. Following that analysis — claim construction— the properly construed claims are compared to the allegedly infringing product. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claim construction is a question of law. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). The second step, whether the ac cused method or product infringes the asserted claim “is a question of fact, to be submitted to a jury.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (citations omitted). 1. Claim Construction “[I]n interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.” Vitronics, 90 F.3d at 1582. “Extrinsic evidence may not be relied upon during claim construction when the intrinsic evidence unambiguously defines the disputed claim language.” Personalized Media Communications v. International Trade Comm’n, 161 F.3d 696, 706 (Fed. Cir.1998). Although the court may consider “the descriptions in the ... patent specification, the prosecution history, and relevant extrinsic evidence” if necessary to illuminate the meaning of the claim terms, “throughout the interpretation process, the focus remains on the meaning of claim language.” Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed.Cir.1997); Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.Cir.1998). a. Combination of shield, chassis and bracket ISC urges the Court to construe the patent claims to cover a three-part assembly, combining a card cage shield, a computer chassis, and a circuit card bracket, rather than a single device, as advanced by AKS. ISC suggests that by mentioning the chassis and bracket in the claims’ body and preamble, the invention includes those items. Because ISC does not design or manufacture computer chassis or circuit card brackets, it argues that it could not infringe the ’632 patent, under the “combination” construction. ISC’s argument is illogical on its face for several reasons. First, the claims’ preambles make clear that the patented invention is a “card cage shielding contactor for being interposed between a circuit card bracket and a computer chassis to enhance an electrical shielding connection between the circuit card bracket and the computer chassis.... ” 5:56-59; 6:30-33 (emphasis added). ISC notes correctly that if words in the preamble are necessary to give meaning to a claim, those words may be deemed limitations of the claim. See Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 688-89 (Fed.Cir.1990).. The fact that the Shield’s eventual environment — between a bracket and chassis — is also referenced in the preamble does not, however, define the invention to encompass those separate parts as elements. ISC cites Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615 (Fed.Cir.1995), to support its argument that the references to the chassis and bracket in the preamble limit the claims such that the chassis and bracket are included as elements of the invention. In Bell Communications, the patent-in-issue covered: A method for transmitting a packet over a system comprising a plurality of networks interconnected by gateways, said packet originated by a source device connected to one of said networks and destined for a destination device connected to one of said networks, said packet including a source address and a destination address Id. at 618. The Federal Circuit held that the preamble’s description of the packet as including source and destination addresses limited the patent to cover only methods where the transmitted packet contained those delineated features. Bell Communications’ conclusion that the source and destination addresses were elements in that method patent does not transform any mention in a device patent of the parts with which the device will interface into components of the patent. Notably, the Bell Communications court did not construe the patent language to cover the destination device itself. To extend Bell Communications as ISC urges would be inappropriate and would vitiate the very purpose of design patents. Any patent for a specific item will necessarily describe the purpose for which it has been developed. In this instance, a description of the invention’s purpose requires a description of its milieu. Indeed, the fact that the preamble expressly states that the invention is a contactor “for being interposed” between the bracket and the chassis supports a finding that the claims cover a single device, and not the combination of three. Furthermore, the specifics of each claim detail the traits of a singular device, not a combination. For example, claim 1 covers a “card cage shielding contactor comprising a relatively thin, flexible sheet of electrically conductive material having a first end, a longitudinally opposite second end, and laterally opposite side.... ” The claim language further describes the specifics of the Shield, and where and how it interacts in the milieu into which it is placed. The fact that the invention is only effective if “juxtaposed” with a computer chassis does not mean that the invention includes the chassis. Taken to its illogical conclusion, ISO’s argument suggests that no product could be protected from infringement unless it stands alone or the patentee also held patents for every item with which the new product interacts. Surely the designer and manufacturer of a high speed computer hard drive, for example, need not also produce computer chassis to be able to patent the drive — which would be utterly useless without the computer itself. Indeed, under ISC’s interpretation, an AKS employee could leave the company and begin producing and selling a precise copy of the AKS Shield and not be found to infringe because that individual did not also produce computers. As the plain language of the claims refutes ISC’s interpretation, this Court declines to adopt it. Additional support for construing the claims to cover a single device — the Shield — emerges from the patent specification. The first figure illustrating the claimed invention, Figure 1, depicts a side view of a mounting bracket, the Shield, and a computer chassis. See Diagram D. Figure 1 is described as “an exploded side elevational view showing a card cage shielding contactor of the present invention about to be interposed between a circuit card bracket and a computer chassis.” 2:21-24 (emphasis added). If the patent examiner considered the invention to cover all three parts, this description would never have survived. See Markman, 52 F.3d at 979 (“Claims must be read in view of the specification, of which they are a part.”). ISC seeks further support for its combination argument in the patent’s use of the definite article “the.” This Court agrees with ISC that patent drafting is an art. The Court cannot, however, concur that the use of the definite article “the” within the body of the claims, subsequent to the preamble’s employ of the indefinite article “a” or “an” preceding references to the computer chassis and mounting bracket, supports an interpretation that the invention covers a three-part assembly. The claims’ use of the definite article simply clarifies the purpose and the placement of the Shield. It does not transform “the” computer chassis or “the” mounting bracket into components of the patented device. Indeed, if it did, the lack of any specific description of those purported elements anywhere in the claims or the patent specification would surely render the “combination patent” invalid. See generally Rowe v. Dror, 112 F.3d 473, 478 (Fed.Cir.1997) (describing court’s ability to examine patent specification to determine whether preamble recitations are “structural limitations or mere recitations of purpose”). b. “Relatively Thin” ISC next asks the Court to construe the term “relatively thin,” which describes the thickness of the metal sheet from which the Shield is made. ISC argues that the phrase should not be construed to mean 0.003 inches thick — since that value is merely the preferred embodiment of the invention put forth in the patent specification. ISC urges instead that “relatively thin” should be construed to cover a range of thicknesses. AKS agrees. This Court’s review of the intrinsic evidence comports with the parties undisputed proposed construction. A thickness of 0.003 inches is mentioned only in the description of the preferred embodiment of the invention. See 3:16-19 (“Card cage shielding contactor is constructed of a relatively thin, flexible sheet of electrically conductive material, the preferred material being a metal, such as stainless steel having a thickness of about 0.003 inch.”). The patent claims simply describe the metal as “relatively thin.” Accordingly, the patent claims cover shields made of metals of a range of thicknesses. c. Tip Shape and Electrical Contact Finally, ISC requests that this Court interpret the language contained in claims 1 and 2 referring to the shape of the contact fingers and the resultant enhanced electrical contact. With the portions of these claims at issue in this argument highlighted, these claims state, in pertinent part: Claim 1: A card cage shielding contactor ... [with] a multiplicity of contactors ... comprising fingers struck from the sheet in a first altitudinal direction toward one of the circuit card bracket and the computer chassis, each of said fingers being in the form of a cantilever extending in a longitudinal direction from a root at the sheet to a tip spaced from the sheet in the first altitudinal direction, the tip having a rounded profile configuration transverse to the longitudinal direction such that the contact forces move the tip of the cantilever alon[g] the longitudinal direction to establish the enhanced electrical shielding contact. Claim 2: A card cage shielding contactor ... [with] a multiplicity of contactors ... comprising fingers struck from the sheet in a first altitudinal direction toward one of the circuit card bracket and the computer chassis, each of said fingers being in the form of a cantilever extending in a longitudinal direction from a root at the sheet to a tip spaced from the sheet in the first altitudinal direction, the fingers each including a tip portion swept back in a second alti-tudinal direction opposite to the first altitudinal direction for enabling a wiping contact between the finger and the confronting one of the circuit card bracket and the computer chassis, the tip having a rounded profile configuration transverse to the longitudinal direction such that the wiping contact is facilitated for establishing the enhanced electrical shielding contact. ISC argues that the phrase “such that” means that the enhanced electrical shielding results from contact between the rounded profile of the tip and either the chassis or bracket. ISC maintains that claims 1 and 2 are inconsistent, since claim 1 ostensibly covers enhanced electrical contact from the contact between the end of the rounded tip and the computer chassis or mounting bracket, while the second claim covers a device where the bent knuckle portion of the tip makes the enhanced contact. ISC argues that this interpretation is evident from the plain language in the claims. This Court disagrees. Claim 1 plainly describes the general finger shape, with a tip that has a rounded profile configuration, and the movement of the tip along the longitudinal plane. Claim 2, by contrast, describes the specific features of the tip portion and the nature of the contact between the tip portion and the bracket or chassis. See generally Diagram E, Figs. 3, 4, and 8. Claim 1 does not, as ISC suggests, state that the enhanced electrical contact results from the contact between the rounded end of the tip and either the chassis or the bracket. Rather, the claim simply states that the rounded profile configuration permits the contact forces to move the tip of the finger longitudinally to establish the enhanced shielding contact. Thus, it is the longitudinal movement (permitted by the tip shape) that establishes the enhanced contact. And, as claim 2 then explains, the tip portion is bent back in a knuckle shape that enables a wiping contact between the bent knuckle segment of the tip portion, which is facilitated by the tip shape. 2. Infringement Analysis The second step in the infringement analysis — whether the properly construed claims are infringed by the ISC Backplane — is a question of fact. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed.Cir.1999). Although this is typically a jury question, if no genuine issues of material fact exist, summary judgment is proper. See Zelin-ski v. Brunswick Corp., 185 F.3d 1311, 1315-16 (Fed.Cir.1999). While AKS bears the ultimate burden of proving infringement, see id. at 1317, the question of non-infringement is now before the Court on ISC’s motion for summary judgment. Therefore, AKS need not demonstrate infringement at this juncture; ISC must show that there are no genuine issues of material fact as to whether its Backplane does not infringe the properly construed claims. Absent such a showing, summary judgment is inappropriate. Patent infringement can be either literal or under the doctrine of equivalents. “To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly.” Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.Cir.1995). Under the doctrine of equivalents, an accused product that does not literally infringe may still be found to infringe “if ‘it performs substantially the same function in substantially the same way to obtain the same result.’ ” Id. at 1579 (quoting Graver Tank Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950)). ISC first asserts that it has not infringed because it does not manufacture or import mounting brackets or computer chassis and therefore its product cannot embody every element of the ’632 patent. As discussed above, ISC’s proffered construction of the ’632 patent is erroneous and thus ISC may not rely on it in arguing that the Backplane does not infringe AKS’s patent. ISC also argues that it has not infringed because “although the tips of the fingers of ISC’s backplane shield are rounded, they make no contact with either the computer chassis or the bracket during use.” ISC Summary Judgment Brief at 32. Once again, ISC’s noninfringement argument depends on its erroneous proffered claim construction. Under this Court’s construction, claim 1 does not require the rounded tip ends to make contact with either the computer chassis or the mounting bracket. See Diagram E, Fig. 8. Thus, the fact that the Backplane’s tip ends do not make the contact is irrelevant to the infringement analysis. Although the ultimate burden of proving infringement is on AKS, for purposes of summary judgment, ISC has not shown that there are no genuine issues as to any material facts regarding whether its product fails to embody every limitation of the ’632 patent. ISC’s motion for summary judgment on grounds of noninfringement must be denied, as genuine issues of material fact exist as to whether ISC has infringed the ’632 patent. The question of infringement remains one for the jury. B. Invalidity of the ’632 Patent ISC argues that even if it falls short of its burden on noninfringement, summary judgment is still warranted because the ’632 patent is invalid. First, ISC contends that the Shield is invalid by virtue of the on-sale bar to patentability, codified in 35 U.S.C. § 102(b) (1994). Next, ISC challenges the invalidity of the ’632 patent because AKS engaged in inequitable conduct in prosecuting the patent before the PTO. Finally, ISC asserts that the ’632 patent is impermissibly indefinite, in contravention of 35 U.S.C. § 112. The Court will address each argument in turn. As an initial matter, a “patent shall be presumed valid.” 35 U.S.C. § 282 (1995). The burden of establishing invalidity of a patent or any patent claim rests with the patent challenger. See id.; see also D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147 n. 2 (Fed.Cir.1983). Invalidity must be proven by clear and convincing evidence. See Oney v. Ratliff, 182 F.3d 893, 895 (Fed.Cir.1999). Summary judgment on invalidity grounds is “inappropriate if a trier of fact applying the clear and convincing standard could find for either party.” Id. 1. The “On Sale Bar” A patent is invalid if the product was offered for commercial sale more than one year before the date on which the patent application was filed. See 35 U.S.C. § 102(b). The date one year prior to filing the application is referred to as the “critical date.” The determination that a product was on sale is a question of law, to be decided by this Court based on the underlying facts. See Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1358 (Fed.Cir.1999). The Supreme Court recently clarified the components of this “on-sale” bar to patentability in Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998). Pfaff made clear that an invention need not be reduced to practice to be subject to the on-sale bar. “Invention,” for purposes of the patent statutes, refers to an inventor’s complete concept, rather than a finished product reduced to practice. See id. at 66, 119 S.Ct. 304. Thus, to the extent that AKS suggests that because the Shield was not reduced to practice prior to the December 3, 1995 critical date it may not be barred, its arguments are unavailing. Pfaff then set forth a two-part test for determining when the on-sale bar applies. Section 102(b) precludes the patenting of an invention if, prior to the critical date, (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. See id. at 67, 119 S.Ct. 304. To prevail on its argument that the ’632 patent should never have issued by virtue of the on-sale bar, ISC must show by clear and convincing evidence both that there that there are no genuine issues of material fact as to 1) whether the inventors’ meetings with Apple and Sequent constituted commercial offers for sale, and 2) whether the invention was ready for patenting prior to December 3, 1995. See, e.g., Tec Air, 192 F.3d at 1358. a. Commercial offer for sale ISC maintains that the meetings Leonard Meier (one of the Shield’s inventors) held with Apple and Sequent in the fall of 1995 constituted commercial offers for sale prior to the December 3,1995 critical date. In support of this contention, ISC offers Meier’s deposition testimony about his conversations with customers about their card cage shielding needs, his and Bos-trom’s development of the Shield concept in September 1995, and their proposals of the concept to certain of AKS’s customers. ISC also offers Meier’s call sheets, which detail his visits and discussions with customers about their needs. To refute ISC’s arguments, and point to the existence of genuine issues of material fact, AKS also offers excerpts of Meier’s testimony, which state that while AKS wanted to spark the customers’ interest in purchasing new shielding, the Shield was a work-in-progress during the course of these discussions, and that samples were to be provided to Apple for testing to confirm whether the Shield as it had been developed, met the customer’s needs. In Pfaff, the inventor of computer chip sockets provided Texas Instruments with detailed engineering drawings of his invention well in advance of the critical date. Following receipt of those drawings, but still more than one year before the patent application was filed, Texas Instruments placed a written purchase order for 30,000 new sockets. Following that order, the inventor began producing the sockets in commercial quantities. See Pfaff, 525 U.S. at 57-58, 119 S.Ct. 304. The Court held that this constituted a commercial offer for sale subject to the on-sale bar, thereby invalidating Pfaffs patent. The fact that the invention was neither reduced to practice nor delivered to the customer until after the critical date did not alter the finding that a commercial offer had occurred. See id. at 60-63, 119 S.Ct. 304. As in Pfaff, other cases declaring patents invalid by operation of the on-sale bar contain firm evidence of a commercial offer for sale. See, e.g., Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1333 (Fed. Cir.1998) (affirming trial court’s finding of invalidity where at least three clearly commercial transactions, including one in which “money changed hands,” had occurred); Buildex Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed.Cir.1988) (invalidating patent in light of evidence of shipment of prototypes and offer and acceptance of price and quantity terms). By contrast, here, the evidence of a commercial offer presently before the Court is much less concrete — leaving open genuine issues of material fact and thus failing to satisfy ISC’s weighty burden for demonstrating invalidity. Unquestionably, the evidence put forth by ISC does contain some elements of commerciality. For example, Meier’s call sheets mention “quotes” to be sent to customers in connection with the Shield and, as discussed above, AKS hoped to sell the ultimate product to these customers. Nevertheless, that same evidence — and that put forth separately by AKS — speaks to non-commercial aspects of the interaction, suggesting that the product was indeed in the development or experimental stage. Moreover, ISC has offered no evidence to show that the quotes mentioned in Meier’s call sheets were ever sent. Compare LaBounty Mfg., Inc. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1072-73 (Fed.Cir.1992) (affirming finding of non-experimental use upon evidence of transmission of price and warranty information and mailing of invoices, and without any evidence of experimentation or testing), with Seal-Flex, Inc. v. Athletic Track and Court Constr., 98 F.3d 1318, 1322 (Fed.Cir.1996) (reversing summary judgment because material questions existed, including whether evaluation of product — once it had been installed and was in use at customer’s facilities — was reasonably necessary). Thus, unlike many cases where a pre-critical-date commercial offer was found, there is no evidence before this Court of a purchase order, delivery of a sample, or any promise of future delivery. Although none of those factors is a necessary predicate to a finding of a commercial offer of sale, and no actual sale need take place, see, e.g., Intel Corp. v. United States Int’l Trade Comm’n, 946 F.2d 821, 830 (Fed.Cir.1991), the slim evidence of a commercial offer beyond general discussions and sketches makes it difficult for this Court, at the summary judgment stage, to declare that there are no genuine issues of fact as to whether a commercial offer of sale had occurred. Since a reasonable trier of fact, applying the clear and convincing standard to the facts presently before this Court, could find for either party, summary judgment on the grounds that the Shield was offered for commercial sale prior to the critical date must be denied. See Oney, 182 F.3d at 895. 2. . Inequitable Conduct ISC next asserts that the patent is unenforceable because AKS engaged in inequitable conduct before the PTO by failing to disclose material information. “[I]f an applicant withholds material information from the PTO with intent to affect the allowance of claims, the applicant may be found guilty of inequitable conduct and the patent obtained would be rendered unenforceable.” LaBounty, 958 F.2d at 1070 (citations omitted). “The elements of materiality of withheld information and culpable intent must be established by clear and convincing evidence.” Id. The Court must determine whether, considering the totality of the circumstances, “the conduct of the patentee is so culpable that its patent should not be enforced.” Id. “A patent applicant must disclose any material information to the PTO.” Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1258 (Fed.Cir. 1997) (citing 37 C.F.R. § 1.56(a) (1996)). The starting point in determining materiality is the definition of the PTO, which recites, in part, as follows: ‘information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and ... [i]t refutes, or is inconsistent with, a position the applicant takes in ... [asserting an argument of patentability.’ Id. at 1257 (quoting 37 C.F.R. 1.56(b)(2)(a) (1996)). It is important, however, to note that “a patentee need not cite an otherwise material reference to the PTO if that reference is merely cumulative or is less material than other references already before the examiner.” Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 47 U.S.P.Q.2d 1225, 1229 (Fed.Cir.1998). ISC must first make a threshold showing of intent to withhold material information before AKS need produce evidence of good faith, and before this Court will balance the materiality of the non-disclosed prior art with the evidence of intent to determine if inequitable conduct occurred. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 398 (Fed.Cir.1996). “Direct proof of wrongful intent is rarely available but may be inferred from clear and convincing evidence of the surrounding circumstances.” LaBounty, 958 F.2d at 1076. ISC contends that AKS failed to disclose on-sale activities in connection with the Shield, in derogation of its duty to the PTO. If the 1995 discussions had constituted commercial offers for sale, ISC may very well be correct. As discussed above, however, ISC has not established by clear and convincing evidence that the 1995 discussions met the standard for commercial offer for sale. Accordingly, they cannot establish by clear and convincing evidence that these discussions were material and imposed an obligation upon AKS to disclose their substance to the PTO. ISC further argues that AKS withheld relevant prior art by failing to submit the October sketch with the patent application. The patent application did include the November drawing, along with extensive discussions of other prior art and attempts to differentiate the Shield from those existing products. ISC maintains that Meier conceded that the October sketch showed “every” feature of the invention, thus demonstrating the materiality of this non-disclosed sketch. See ISC Summary Judgment Brief at 19. Upon review of. Meier’s testimony, this Court finds no such concession. Meier stated that the Sequent sketch showed “the concept that the fingers go toward the static side. And it was the basic concept of what we came up with.” Pavely Cert. Ex. P., Meier Dep. at 71. He also agreed that the sketch showed the fingers extending in the first and second altitudinal directions, as well as the spacing of the fingers. See id. Although significant components of the ultimate invention are clearly present in the sketch, Meier testified that it was drawn in a simple manner in an attempt to show the concept that was being considered. See id. These arguments do not satisfy ISC’s burden. Even were this Court to agree that the October sketch contained all of the elements of the claimed invention^ albeit in rough form — ISC has not shown by clear and convincing evidence that this preliminary sketch is not cumulative to the November drawing that was part of the PTO’s record. This Court recently granted summary judgment on the ground of inequitable conduct in M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 68 F.Supp.2d 494 (D.N.J.1999). In that case, the patentee had faded to disclose a twenty-year-old product offered in its sales catalog that contained similar inner workings to the subject of the patent-at-issue. As in M. Eagles, there is no question that the inventors here knew of this prior sketch when they declared that the patent application was complete — the October sketch was drawn by Meier. In M. Eagles, however, the patent focused expressly on the inner workings of the newer product and declared that none of the prior art reflected such design. See id. at 502. In light of that finding and the totality of the circuirn stances, this Court inferred intent to deceive. Id. at 503; see also Critikon, 120 F.3d at 1256-57 (inferring intent where patentee knew of prior art disclosing point of novelty essential to its patent prosecution). The evidence here, by contrast, is not clear and convincing on either intent or materiality. Indeed, the fact that the November drawing was disclosed and obviously antedated the critical date, bespeaks a lack of intent to deceive. Accordingly, ISC’s motion for summary judgment because of inequitable conduct is denied. 3. Indefiniteness ISC asserts that the ’632 patent is invalid because a person of ordinary skill in the art, upon reviewing its claims, specification, and prosecution history would be unable to discern what certain claims cover. Specifically, ISC contends that claims 1 and 2 employ the term “rounded” differently, resulting in two competing constructions of the shape of the Shield’s contact fingers. According to ISC, this inconsistent use of the same term renders the patent impermissibly indefinite. Indefiniteness is a question of law to be determined by the Court. See Personalized Media Communications, LLC v. International Trade Comm’n, 161 F.3d 696, 705 (Fed.Cir.1998). The second paragraph of 35 U.S.C. § 112 provides: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” To determine whether a patent claim comports with the statute’s mandate, this Court must analyze “whether one skilled in the art would understand the bounds of the claim when read in light of the specification.... If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Personalized Media, 161 F.3d at 705 (original ellipsis) (citation omitted). ISC contends that the language in claims 1 and 2 clouds whether the “rounded tips” are “shaped like the tip of a normal human finger” or “like a finger bent at the knuckle.” But, ISC argues, in prosecuting its patent application, AKS distinguished its claims from the prior art on the ground that the tips are rounded along their lengths and curved like a knuckle. ISC’s contention that these phrases are inconsistent, thereby invalidating the patent on indefiniteness grounds, is unpersuasive. It is clear upon reading the literal language of these claims that claim 1 describes the overall shape of the contact fingers — including the shape of their tips, while claim two details the particulars of the tip portion of each of those fingers. This interpretation is supported by reference to the technical drawings included in the patent. See Diagram E, Figs. 3, 4. Figure 3 offers an aerial view of a band on the Shield with its cantilever fingers. The fingers are struck from the metal sheet with rounded ends, which comports with the language of claim 1. Figure 4, however, provides a side profile of the band, and a detailed examination of the shape of the sweep back contained in the tip portion. This figure is consistent with claim 2’s description of the shape of the tip portion, which improves the wiping contact. There is no inconsistency, and thus no indefiniteness on that basis. Moreover, ISC’s suggested construction of the contact finger design would render claim 2 superfluous. If the rounded end of the tip portion made contact, any description of the sweep back to facilitate the wiping contact would be meaningless. Mindful of a patent’s presumed validity, and the Federal Circuit’s admonition that when patent claims are amenable to more than one construction, they should be interpreted, when reasonably possible, to preserve their validity, see Modine, 75 F.3d 1545, 1557 (Fed.Cir.1996), this Court is reluctant to accept ISC’s interpretation. ' As noted above, the “decision as to whether a claim is invalid under this provision requires a determination whether those skilled in the art would understand what is claimed.” Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217 (Fed.Cir.1991); see also Personalized Media, 161 F.3d at 705. ISC has offered no evidence that the Court may properly consider in this context — deposition testimony or affidavits or expert opinion — that suggests that someone skilled in the art could not understand this invention sufficiently to be able to practice it because of the allegedly indefinite language. As the arguments of counsel alone cannot constitute clear and convincing evidence of indefiniteness, ISC has failed to meet its burden. Indeed, even if ISC’s argument did satisfy its initial burden on summary judgment and pointed to the non-existence of a material fact on this issue, AKS has responded with substantial evidence that could lead a trier of fact to conclude differently. For example, AKS has offered the testimony of three engineers who compared the claims of the ’632 patent with the traits of ISC’s allegedly infringing Backplane. See AKS Preliminary Injunction Brief at 17-20 (citing Patel Dep. at 95-98, Federici Dep. at 73-78, and McFadden Dep. at 81-85, 157-59, 161-62). AKS argues that their ability to comprehend the language of those claims defeats ISC’s indefiniteness theory. AKS also disputes ISC’s characterization of the patent prosecution, arguing that the shape of the finger tip was not the sole distinction from the prior art. For all of these reasons, ISC has not met its burden, and its motion for summary judgment on grounds of indefiniteness must be denied. C. Dependent Infringement AKS has also asserted claims against ISC for contributory infringement and inducing infringement. Neither ISC, in moving for summary judgment on these claims, nor AKS in opposing it cited a single authority governing the standard for finding induced or contributory infringement, or the facts to support (or refute) these claims. At oral argument, however, both parties agreed that there are no disputed material issues of fact on these claims and thus summary judgment is appropriate. Tr. Nov. 12,1999 at 71-72. Along with prohibiting direct infringement, the patent statute also imposes liability for induced and contributory infringement — so-called “dependent infringement.” See Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed.Cir.1993). There may be no dependent infringement without first finding actual infringement. See id. Both contributory infringement and induced infringement also require the involvement of a third party. See Joy Technologies, 6 F.3d at 775. 1. Contributory Infringement Under 35 U.S.C. § 271(c), [wjhoever offers to sell or sells ... a component of a patented machine, manufacture, combination or composition ... constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. According to AKS’s statements at oral argument, its contributory infringement argument relates to ISC’s “combination” patent theory. Were the Court to accept that interpretation, AKS maintains that ISC’s sale of the Backplane would contribute to direct infringement by the purchaser who would practice the “combination invention” of the bracket, chassis, and Backplane shield. Since this Court has found the ’632 patent to cover only a single device, there is no genuine issue of material fact as to whether ISC’s sale of the Backplane contributes to the direct infringement of the patent by a third party. Compare Serrano v. Telular Corp., 111 F.3d 1578, 1583-84 (Fed.Cir.1997) (finding contributory infringement where accused device in combination with a second device contained all the limitations of the asserted claim). Accordingly, ISC’s motion for summary judgment on Count II is granted. 2. Inducing Infringement AKS also alleges that ISC induced infringement of the ’632 patent, prohibited by 35 U.S.C. § 271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”). Like contributory infringement, inducing infringement requires a finding first of direct infringement, and then that the defendant knowingly induced that infringement. See Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed. Cir.1990). As this Court has rejected ISC’s noninfringement arguments, and whether direct infringement occurred is a question for the jury, any grant of summary judgment would be premised of necessity on a finding that AKS cannot satisfy the second prong as a matter of law. To meet this standard, AKS must establish that ISC possessed specific intent to encourage another’s infringement and not merely that the defendant had knowledge of the acts alleged to constitute inducement. The plaintiff has the burden of showing that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements. Id. AKS appears to argue that by selling the Backplane to ISC customers, ISC induced the customers’ infringement of the ’632 patent. In its preliminary injunction papers, AKS submitted the certification of Mark Andrews, relaying a hearsay account of a conversation between an IBM employee, Walter Goodman, and an ISC representative concerning the sample ISC Backplane provided to Goodman. According to Andrews, Goodman inquired as to whether the Backplane implicated any proprietary, interests of AKS and was assured that it did not. Andrews Cert. ¶ 7. AKS has offered no evidence of the date on which the alleged conversation between Goodman and the ISC representative transpired. To sustain an inducing infringement claim, the acts of inducement must follow the issuance of the patent. See National Presto Indus., Inc. v. West Bend Co., 76 F.3d 1186, 1196 (Fed.Cir.1996) (no induced infringement where inducement occurred before patent existed). If there is no patent to infringe, any “inducement” is not wrongful, and may not serve as the basis for liability under § 271(b). See National Presto, 76 F.3d at 1196. AKS appears to concede that this conversation occurred before the patent issued. See AKS Opposition Brief at 32 (criticizing ISC’s representative’s alleged representations to Goodman for having been made “despite knowledge of the pending patent application” and arguing that “these misrepresentations led directly to sales to IBM by ISC ... in mid-December 1998”). As such, these statements cannot serve as a basis for an inducement claim. Indeed, even if the alleged conversation between Goodman and the ISC representative transpired sometime following the issuance of the ’632 patent on January 5, 1999, a lone hearsay reference to a single conversation between an unnamed ISC representative and one of his customers (also an AKS customer) is wholly insufficient to create a genuine issue of material fact as to whether ISC knowingly induced direct infringement. Accordingly, ISC’s motion for summary judgment on Count III, inducing infringement, is granted. D. State Law Claims Finally, ISC has moved for summary judgment on AKS’s state law claims for unfair competition and tortious interference with contract and with prospective economic advantage. AKS’s unfair competition and tortious interference claims were originally premised on alleged misappropriation of trade secrets. In withdrawing those trade secret allegations, AKS re-characterized its unfair competition and tortious interference counts as being premised on ISC’s “wrongful and tortious act” in allegedly infringing the ’632 patent, and ISC’s unfair behavior in its interaction with IBM and ISC’s advertising for the Backplane. 1. Unfair Competition ISC argues that as now portrayed, AKS’s state law claims are preempted by patent law since the basis for any liability on these claims would be patent infringement. Although 28 U.S.C. § 1338(b) provides federal courts with jurisdiction over state law unfair competition claims joined in federal infringement actions, those state law claims must be based on acts beyond simply patent infringement. See Mars Inc. v. Kabushiki-Kaisha Nippon Conlux, 24 F.3d 1368, 1373 (Fed.Cir.1994) (“infringement of patent rights ... is not generally recognized as coming within the rubric of ‘unfair competition’ ”); see also Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1306 (Fed.Cir.1999) (“[t]he patent laws will not preempt such claims if they include additional elements not found in the federal patent law cause of action”), cert. denied, — U.S. -, 120 S.Ct. 933, 145 L.Ed.2d 812 (2000). AKS concedes that it must demonstrate conduct distinct from the infringement to sustain its state law claims. AKS argues that ISC’s “direct targeting” of an AKS customer (IBM) and ISC’s representative’s comments to IBM despite knowledge of AKS’s pending patent application, along with ISC’s advertising of the Backplane, defeat summary judgment on its state tort claims. To prove unfair competition under New Jersey law under a passing off theory, AKS must show that ISC “passed” or “palmed” off AKS’s Shield as ISC’s product. See, e.g., New Jersey Optometric Ass’n v. Hillman-Kohan Eyeglasses, Inc., 144 NJ.Super. 411, 427-28, 365 A.2d 956 (Ch.Div.1976), aff'd, 160 N.J.Super. 81, 388 A.2d 1299 (App.Div.1978); Hoffman-La Roche Inc. v. Genpharm Inc., 50 F.Supp.2d 367, 380 (D.N.J.1999). AKS has not introduced a scintilla of evidence that ISC offered AKS’s Shield to any potential customer as ISC’s own product, or that there was a likelihood of confusion that ISC’s Backplane would be perceived by the public as AKS’s Shield. See Eli Lilly, 28 F.Supp.2d at 494-95. To the contrary, one of AKS’s primary complaints is that ISC wrongly differentiated its product from the AKS Shield in conversations with IBM. Unfair competition under New Jersey law also encompasses unprivileged imitation. To satisfy this standard, AKS must first show that ISC’s Backplane copied or imitated the physical appearance of the Shield and that the copied or imitated feature had acquired a special significance identifying it as AKS’s product. See Eli Lilly, 23 F.Supp.2d at 495. AKS must also demonstrate that: (i) the copy or imitation is likely to cause prospective purchasers to regard his goods as those of the other, and (ii) the copied or imitated feature is nonfunctional, or, if it is functional, he does not take reasonable steps to inform prospective purchasers that the goods which he markets are not those of the other. SK&F, Co. v. Premo Pharmaceutical Laboratories Inc., 625 F.2d 1055, 1062-63 (3d Cir.1980). Aside from the fact that the Shield was ultimately patented — which may not be the sole basis for the state law claims in this patent action — AKS has offered no evidence to show that the Shield, or any of its features, had acquired special significance in the marketplace, as distinctly identified with AKS. Nor has AKS demonstrated that the Backplane is likely to be perceived as an AKS product in the market, or that ISC does not take reasonable steps to inform customers that the Back-plane is an ISC product, rather than an AKS Shield. In sum, AKS appears not to have discovered any facts independent of alleged infringement to support these state law claims. Because AKS cannot avoid preemption and, in any event, has not introduced evidence to satisfy the prerequisites of an unfair competition claim, there are no genuine issues of material fact to preclude summary judgment. Therefore, ISC’s motion for summary judgment on Count V is granted. 2. Tortious Interference with Contract and with Prospective Economic Advantage AKS’s remaining state law claim, tor-tious interference, also was originally premised on a misappropriation of trade secrets theory. AKS claimed initially that ISC allegedly interfered with AKS’s contract with Indravadan Patel. See Am.Cplt. ¶ 167. As described above, AKS now argues that ISC’s conduct in marketing its product to IBM, which was an AKS customer, and the representations made directly to IBM and generally in ISC sales literature constituted tortious interference. As with AKS’s unfair competition claim, its tortious interference claim is not preempted if it is based on more than patent infringement alone. See Rodime, 174 F.3d at 1306. Under New Jersey law, one may intentionally prevent a third person from entering a prospective contractual relation with a competitor if: (a) the relation concerns a matter involved in the competition between the actor and the other and (b) the actor does not employ wrongful means and (c) his action does not create or continue an unlawful restraint of trade and (d) his purpose is at least in part to advance his interest in competing with the other. C.R. Bard, Inc. v. Wordtronics Corp., 235 N.J.Super. 168, 172, 561 A.2d 694 (1989) (quoting Restatement (Second) of Torts § 768 ). Thus, even if ISC did intentionally cause AKS’s customers not to contract with AKS, if ISC compiled with the four factors set forth in C.R. Bard, its behavior was permissible. AKS’s bases for its tor-tious interference claim are ISC’s advertising and the IBM conversation. As such, the C.R. Bard factors are not met. Such vague and eonclusory allegations fail to raise a genuine issue of material fact as to whether ISC’s behavior was indeed wrongful. Accordingly, ISC’s motion for summary judgment on Count VII is granted. II. AKS’s Motion for a Preliminary Injunction AKS has moved this Court for a preliminary injunction, prohibiting ISC from marketing the Backplane. Having survived ISC’s summary judgment motion on the patent infringement claim, AKS must satisfy the standard for a preliminary injunction before such relief may be obtained. Under 35 U.S.C. § 283, this Court may grant injunctive relief to prevent the violation of any right secured by the patent. In addressing AKS’s motion for a preliminary injunction, the Court must consider: (1) whether AKS has shown a reasonable probability of success on the merits, (2) whether AKS will be irreparably injured by denial of relief, (3) the extent to which granting preliminary relief will result in even greater harm to the nonmoving party, and (4) whether granting preliminary relief is in the public interest. See Council of Alternative Political Parties v. Hooks, 121 F.3d 876, 879 (3d Cir.1997); see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1438 (3d Cir.1994). All four factors must be considered before an injunction may issue. See Polymer Technologies, Inc. v. Bridwell, 103 F.3d 970, 973 (Fed.Cir.1996). A. Likelihood of Success on the Merits To obtain preliminary injunctive relief, AKS must show, in light of the burdens in place at trial, that it is likely to prove that the ’632 patent is valid and that it is infringed by the Backplane, and that it will withstand ISC’s allegations of patent invalidity and unenforceability. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed.Cir.1997). 1. Validity Although 35 U.S.C. § 282 accords a patent holder a presumption of validity, at the preliminary injunction stage, due to the extraordinary nature of the desired relief, AKS bears the burden of showing it is likely to refute ISC’s charges of invalidity. See Nutrition 21 v. United States, 930 F.2d 867, 869 (Fed.Cir.1991). AKS need not prove validity — in light of the presumption of validity, that burden always rests with the patent challenger. See Canon Computer Sys., Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed.Cir.1998). AKS must demonstrate, however, that it is likely to show at trial that ISC has not offered persuasive evidence of invalidity. See id. (“where the challenger fails to identify any persuasive evidence of invalidity, the very existence of the patent satisfies the patentee’s burden on the validity issue”); New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 883 (Fed.Cir.1992) (noting that patentee at preliminary injunction phase “must show that the alleged infringer’s defense lacks substantial merit”). a. On Sale Bar Relying on its arguments in support of its summary judgment motion, ISC asserts that the patent is invalid by virtue of the on-sale bar. Upon reviewing the evidence presented by both parties, this Court concludes that AKS has met its burden and demonstrated that ISC has not pointed to substantial evidence that the discussions with either Sequent or Apple constituted a commercial offer for sale. Accordingly, the on-sale bar is not a basis for denying the preliminary injunction. b. Pre-critical date sales Patents may only issue on novel inventions. See 85 U.S.C. § 101 (1994). Thus, a patent is invalid “when the same device or method, having all of the elements and limitations contained in the claims, is described in a single prior art reference.” ATD Corp. v. Lydall, Inc., 159 F.3d 534, 545 (Fed.Cir.1998). In opposition to AKS’s preliminary injunction motion, ISC relays a hearsay account that several gaskets bearing all of the pertinent features of the claims in the ’632 patent were made for, and sold to, IBM in the early 1990s. The pre-critical date development and sale of these alleged equivalent devices, according to ISC, raises a substantial question about the novelty of the Shield, and, consequently, about the ’632 patent’s validity. This argument, devoid of support beyond counsel’s argument, is untenable. ISC did not produce any documents connected to this alleged prior art during the course of discovery and should not be allowed to rely on this withheld material in arguing invalidity. See Schwarzkopf Technologies Corp. v. Ingersoll Cutting Tool Co., 142 F.R.D. 420, 422 (D.Del.1992) (requiring defendant to identify all prior art underlying its affirmative defenses); ATD Corp., 159 F.3d at 550-51 (affirming trial court’s exercise of discretion to exclude use of prior art not produced during discovery). In connection with this motion, ISC, in its brief, presents a lone, unattributed drawing of one such alleged device. This drawing utterly fails to raise a substantial question of invalidity, because the evidence is not presented in a form, or with the proper authentication, that this Court needs to evaluate this issue. In light of that, and mindful that the presumption of a patent’s validity applies at all stages of litigation, see Canon, 134 F.3d at 1088, this Court will not credit an argument rooted in unsubstantiated hearsay to have “substantial merit” about invalidity. c.Best Mode A patent specification must “set forth the best mode contemplated by the inventor for carrying out his invention.” 35 U.S.C. § 112 ¶1 (1994). ISC contends that the ’632 patent fails to disclose the best mode for carrying out the Shield and therefore is invalid. To determine wheth