Full opinion text
MEMORANDUM OF FINDINGS OF FACT AND CONCLUSIONS OF LAW LINDSAY, District Judge. I. Introduction This case concerns United States Patent No. 4,420,639 (the “ ’639 patent”), issued with respect to the chemical compound known as nabumetone to Anthony W. Lake and Carl J. Rose on December 13, 1983 and assigned to Beecham Group, p.l.c. (“Beecham”), one of two plaintiffs herein. Stipulated Facts ¶¶ 6, 82. The ’639 patent contains four claims covering nabumetone. Only two of those claims are at issue in this case: claim 2, which recites the compound in solid form; and claim 4, which recites the compound per se. See Stipulated Facts ¶¶ 7, 84. Since February, 1992, pursuant to its New Drug Application (“NDA”) No. 19-583, SmithKline Beecham Corporation (“SmithKline Beec-ham”), the second plaintiff, has marketed an anti-inflammatory drug product called Relafen, the active ingredient of which is nabumetone. Stipulated Facts ¶¶ 8-10. The defendants, Copley Pharmaceutical, Inc., Teva Pharmaceuticals U.S.A., and Eon Labs Manufacturing, Inc., (the “defendants”), seek to market a generic version of Relafen. Each of the defendants, pursuant to 21 U.S.C. § 355(j), has filed with the United States Food and Drug Administration (“FDA”) an abbreviated new drug application (“ANDA”), by which each seeks the FDA’s approval for the commercial manufacture, use and sale of a drug product containing nabumetone. With its ANDA, each defendant also filed with the FDA a certificate, pursuant to 21 U.S.C. § 355(j)(2)(A)(vii)(IV), asserting that the ’689 patent is invalid (a “Category IV Certification”). The Category IV Certifications for the defendants Copley Pharmaceutical, Inc., and Eon Labs Manufacturing, Inc., also asserted that the ’639 patent is unenforceable. Stipulated Facts ¶¶ 11-19. The defendants each gave written notice (“notice of certification”) to Beecham, pursuant to 21 U.S.C. § 366(j)(2)(B)(i) and (ii), that the ANDA and the accompanying certification had been filed with the FDA. In accordance with 21 U.S.C. § 355(j)(2)(B)(ii), the defendants’ notices also set forth the legal and factual bases for their claims that the ’639 patent is invalid and/or unenforceable. Id. With regard to each defendant, within forty-five days of receipt of notice, Beecham, as permitted by 21 U.S.C. § 355(j)(5)(B)(iii), brought suit, together with SmithKline Beecham, to enjoin the infringement of the ’639 patent. The three suits have been consolidated for all purposes in the present action. Stipulated Facts ¶ 20. By way of defenses and counterclaims to the plaintiffs’ infringement action, the defendants first claim that the ’639 patent is invalid because nabumetone was anticipated by prior art; namely a 1973 article by scientists J.N. Chatterjea and R. Prasad entitled “Condensation of Mannich Base Salts with Phenols: Orientation of Ad-ducts,” published in the Indian Journal of Chemistry, Volume 11 at 214-18 (March 1973) (the “Chatterjea & Prasad publication”). The Chatterjea & Prasad publication identified and enabled nabumetone, the defendants argue, and therefore anticipated all claims set forth in the ’639 patent, either explicitly or inherently. The defendants claim, in addition, that the ’639 patent is unenforceable because Beecham breached its duty of candor to, and engaged in inequitable conduct before, the United States Patent and Trademark Office (“PTO”). On January 20, 1999, Í entered an order referring this case to Thomas Creel, as special master, for management of pretrial discovery. In July of 1999, the defendants filed two motions for summary judgment: one on the ground that all claims in the patent were invalid; and the second on the ground that inequitable conduct rendered the patent unenforceable. By order dated November 5, 1999, I referred both motions to special master Creel for a report and recommendation as to the disposition of the issues raised by the motions. On January 31, 2000, the special master issued two reports and recommendations. The first recommended that the defendants’ motion for summary judgment, based upon invalidity of all claims, be granted. The second recommended that the defendants’ motion for summary judgment of unenforceability, based upon inequitable conduct, be denied because there remained triable issues of fact as to the intent element of the inequitable conduct claim. After a de novo review of the issues raised by the motions, I issued a memorandum and order on August 16, 2000 that (1) rejected the special master’s recommendation and denied the motion for summary judgment as to invalidity (because the record demonstrated material issues of fact in dispute); and (2) adopted the special master’s recommendation and denied the motion for summary judgment on un-enforceability. As noted in that order, with regard to the motion for summary judgment on unenforceability, I specifically accepted and adopted the special master’s analysis and conclusions. A non-jury trial of this case commenced on January 8, 2001 and consumed sixteen trial days. Because the defendants bore the burden of overcoming, by clear and convincing evidence, the presumption, under 35 U.S.C. § 282, that the patent was valid and enforceable, I set the order of trial so that the defendants presented their case-in-chief first. At the close of the defendants’ case, the plaintiffs moved for entry of judgment in their favor pursuant to Fed.R.Civ.P. 52(c). After hearing argument, I declined to rule on the plaintiffs’ motion. The plaintiffs then presented their case. II. Findings of Background Facts A.The Parties Beecham is a corporation of the United Kingdom and the owner of the ’639 patent. Stipulated Facts ¶¶ 2, 6. SmithKline Beec-ham is a corporation of the Commonwealth of Pennsylvania, and the owner of New Drug Application No. 19-583, pursuant to which it has marketed Relafen in the United States since February, 1992. Stipulated Facts ¶¶ 1, 8-9. The defendants all are corporations of the State of Delaware. Stipulated Facts ¶¶ 3-5. B. Nabumetone Nabumetone is the generic name that has been given to the chemical compound at issue in this case. The structure of nabumetone may be indicated in words, using various accepted chemical naming conventions. For example, nabumetone may be validly described either as “2u-(2-methoxy-6-naphthyl) ethyl methyl ketone” (or, in abbreviated form: “methoxy ke-tone”); or as “4-(6'-methoxy-2'-naphthyl) butan-2-one.” Stipulated Facts ¶¶ 33-34. C. Level of Ordinary Skill in the Art The category of art into which the ’639 patent falls is that of synthetic organic chemistry. Testimony of Dr. Edward C. Taylor (“Taylor”), Day 1 at 54:18-19; Testimony of Dr. Paul Bartlett (“Bartlett”), Day 15 at 107:3-6. One of ordinary skill in the art of synthetic organic chemistry in 1973 was a person having either a doctoral degree in organic chemistry, primarily synthetic organic chemistry, with a year or two of post-doctoral experience, either industrial or academic; or a masters degree in synthetic organic chemistry with four or five years of industrial experience in that field. Taylor, Day 1 at 89:4-14; Bartlett, Day 15 at 106:14-107:15. The person of ordinary skill in the art in 1973 (sometimes referred to herein as the “ordinary chemist”) knew how to conduct standard reactions, such as reduction reactions; reactions named in the Chatterjea & Prasad publication, such as the Grignard reaction; and could apply standard organic chemical methods to the synthesis of simple organic molecules. Taylor, Day 1 at 89:15-90:7. The ordinary chemist in 1973 was familiar with nuclear magnetic resonance (“NMR”) spectroscopy, a tool for determining chemical structure. Taylor, Day 1 at 90:7-22. The ordinary chemist in 1973 also was familiar with standard chemistry and organic synthesis textbooks, and was able to do a literature search using Chemical Abstracts, an index of developments in chemistry periodically published by The American Chemical Society. Taylor, Day 1 at 90:22-91 3; Stipulated Facts ¶ 123. Beecham chemists Drs. Alex Gou-die, Ms. Laramie Gaster (later Dr. Laramie Gaster), and Dr. Marta Marton all were persons of ordinary skill in the art in the mid-1970s. Testimony of Dr. Carl Rose (“Rose”), Day 10 at 75:15-77:7. D. The Chatterjea & Prasad publication The Chatterjea & Prasad publication was published more than one year prior to the date of Beecham’s application in the United States for the ’639 patent and was listed in Volume 79 of Chemical Abstracts. In that volume of Chemical Abstracts, the Chatterjea & Prasad publication was indexed under 4-(6'-methoxy-2'-naphthyl) butan-2-one, one of the chemical names for nabumetone. Stipulated Facts ¶¶ 122-25. Nabumetone is referenced on two of the five pages in the Chatterjea & Prasad publication. First, at page 215, the article refers to the methyl ether of compound XX, a hydroxy compound; the structure of that methyl ether is that of nabumetone. Second, at page 218, the article provides the chemical name for nabumetone, along with a four-step sequence of chemical reactions that results in nabumetone. Using the abbreviated chemical names for the relevant compounds, the sequence is as follows: (1) methoxy acetate to methoxy ethanol, (2) methoxy ethanol to methoxy bromide, (3) methoxy bromide to methoxy nitrile, and (4) methoxy nitrile to methoxy ketone. Stipulated Facts ¶¶ 126, 128; Exhibit 13 at 215, 218. The Chatterjea & Prasad publication states that the methoxy ketone was obtained “by Grignard reaction ... as thick pale yellow oil.” Exhibit 13 at 218. It provides no other information about the methoxy ketone, but does list characterizing data for the methoxy ketone derivative (the “2, 4-DNP derivative”). Id. There is no indication that Chatterjea and Prasad purified or crystallized the me-thoxy ketone. Exhibit 13; Rose, Day 11 at 38:20-24. At page 215, the Chatterjea & Prasad publication sets out a structural proof that includes nabumetone, identified as the methyl ether of compound XX. Chatterjea and Prasad identified two hydroxy compounds: compound XIX and compound XX, the position isomer of compound XIX. A previous paper, by Miller and Robinson, had described the methyl ether of compound XIX. Chatterjea & Prasad proposed to synthesize the methyl ether of compound XX in order to compare it to the methyl ether of compound XIX described by Miller & Robinson. Taylor, Day 1 at 112:1-116:9; Taylor, Day 2 at 12:3-19; Bartlett, Day 15 at 130:1-131:22; Exhibit 13. It is “meaningless” to compare a hy-droxy compound to a methoxy compound, and an ordinary chemist would not do so as part of a structural proof. Taylor, Day 2 at 12:8-13; Day 2 at 61:18-62:3; Bartlett, Day 15 at 131:12-17. The authors of the Chatterjea & Prasad publication proposed therefore to compare two methoxy compounds. The Chatterjea & Prasad publication, as noted above, begins its sequence of chemical reactions with a compound referred to in the article as methoxy acetate. Next to the name of the starting material (methoxy acetate) at page 218 of the Chatterjea & Prasad publication, is footnote 19. Footnote 19 references a 1948 article by R. Jones, et al. entitled, “Byosynthesis of Penicillins. VI. N-2-Hydroxyethylamides of Some Polycyclic and Heterocyclic Acetic Acids as Precursors,” J. Am. Chem. Soc., 70, 2513 (1948) (“Jones,” the “Jones article,” or “footnote 19”). Exhibit 13 at 218. E. Footnote 19 and the “Jones Error." The Jones article referenced in footnote 19 of the Chatterjea & Prasad publication describes a method for synthesizing me-thoxy acetate. The synthesis is in two basic steps: first, 6-methoxy-2-acetonaph-thone is converted to methoxy acid by a Willgerodt reaction; second, methoxy acid is converted to methoxy acetate by a process called esterification. Taylor, Day 2 at 33:16-34:2; Exhibit 15. What came to be known in the present litigation as the “Jones error” arises in the first step of the reaction. A paper by Ormancey and Ho-reau, published in 1955, reported that, under the conditions set forth in Jones for the Willgerodt reaction, demethylation occurs. Taylor, Day 2 at 34:2-8; Exhibit 21, “Structure Moleculaire et Activite Oes-trogene XVI. Influence de la Distance des Groupements Fonctionnels dans la Serie Allenolique” (Molecular Structure and Es-trogenic Activity XVI. Influence of the Distance of the Functional Groups in the Allenolic Series), Bull. Chim. Soc. Franc., pages 962-69 (1955) (“Ormancey”). As a result of the demethylation, hydroxy acid, rather than methoxy acid, is created. Id. The second step of the Jones synthesis, the esterification of the acid to form the acetate, works. Taylor, Day 2 at 96:7-15. However, if the result of the first step in Jones were hydroxy acid, the result of the second stop in Jones would be hydroxy acetate, rather than methoxy acetate. The plaintiffs argue that the ordinary chemist, knowing of the Jones error, would understand the Chatterjea & Prasad publication to teach a series of hydroxy compounds, concluding with a hydroxy, ketone rather than a methoxy ketone. F. The ’689 Patent Prosecution History and Related Events at Beecham. The ’639 patent issued from the last of a chain of six United States patent applications. Beecham was represented in this prosecution by the firm of Jacobs & Jacobs, working with Beecham’s in-house Patent Department in the United Kingdom. Stipulated Facts ¶ 86. 1. Beecham Research Leading to the Initial Patent Application. The series of patent applications that led to the ’639 patent grew out of research that began with Beecham’s anti-inflammatory group, a research unit focused in part on non-steroidal anti-inflammatory drugs (“NSAIDs”). NSAIDs are used in the treatment of certain diseases characterized by inflammation, especially arthritis. Rose, Day 11 at 77:7-12. Dr. Carl Rose was a member of Beecham’s anti-inflammatory group from 1970 to 1975. Rose, Day 11 at 76:15-18. He conceived the structure of nabumetone no earlier than July 1973, and, under his direction, Zoe Slattery, a laboratory technician, synthesized nabumetone no later than October, 1973. Stipulated Facts ¶ 149; Rose, Day 11 at 52:15-22. 2. The ’778 and T59 Applications a. Beecham’s Interactions with the PTO On August 29, 1974, Beecham filed a patent application in the PTO which was given the Serial Number 501,773 (“the ’773 application”). The ’773 application listed Anthony W. Lake and Carl J. Rose, both Beecham employees, as inventors, and was assigned to PTO Examiner James Reamer. Stipulated Facts ¶ 88. The ’773 application contained twenty-two claims, including a claim for the compound nabumetone. Examiner Reamer issued a restriction requirement obligating Beecham to elect which of the claimed inventions it would prosecute. Stipulated Facts ¶¶ 90-91. Beecham chose the compound of claim 20, nabumetone. Id. On March 28, 1975, Beecham filed a divisional application, Serial Number 563,-159 (“the 159 application”), which was directed to certain of the unelected claims in the ’773 application. The 159 application was assigned to PTO Examiner Stanley Friedman. Stipulated Facts ¶ 92. On or about April 29, 1975, examiner Reamer issued a final office action in the ’773 application, rejecting claim 20 (nabumetone) as obvious over the 1955 Ormancey article, which, among other things, discloses a ho-molog of nabumetone. Exhibit 3 at 101— 03. Stipulated Facts ¶ 93. On August 21, 1975, Beecham filed a continuation of the ’773 application, which was given the Serial Number 606,411 (“the ’411 application”), and assigned to examiner Reamer. Claim 23 of the ’411 application was the compound nabumetone per se. Exhibit 11 at 61 (Bates Stamp page number 185004). Stipulated Facts ¶ 95. The ’411 application mentioned the Chatterjea & Prasad publication, but asserted that compound XIX, a hydroxy compound discussed in the article, was the compound “most pertinent” to the issue raised by the ’411 application. Exhibit 11 at 63 (Bates Stamp page number 185006). It does not appear that Beecham provided the PTO with a copy of the Chatterjea & Prasad publication in the ’411 application. On December 8, 1976, Beecham filed a continuation-in-part application of the T59 application. The continuation-in-part application was given the Serial Number 748,676 (“the ’676 application”). The ’676 application was assigned to examiner Friedman. Stipulated Facts ¶ 96; Exhibit 5 at 14, 73. Beecham then abandoned the ’773 and ’159 applications. Stipulated Facts ¶¶ 97-98. b. Beecham’s Internal Communications, Research, and Correspondence By late 1974 or early January 1975, someone in Beecham’s anti-inflammatory group discovered the Chatterjea & Prasad publication in Chemical Abstracts. Stipulated Facts ¶ 151. Dr. Rose first became aware of the Chatterjea & Prasad publication on approximately January 2, 1975, the date of a memorandum from Dr. David Miller, his supervisor in the anti-inflammatory group, to Dr. Gwyn Cole, a member of Beecham’s Patent Department. Rose, Day 10 at 56:1-57:11; Exhibit 94. That memorandum stated that nabumetone “is not the unique Beecham compound we thought it was.” Exhibit 94. Dr. Rose testified that from January 1975 to the fall of 1976, it was “taken for granted” at Beecham that the Chatterjea 6 Prasad publication had named nabume-tone, and it was thought that Beecham could not get patent protection for the compound because of the Chatterjea & Prasad publication. Rose, Day 10 at 72:10-21. A report from Beecham’s anti-inflammatory group dated January 20, 1975 and authored by Dr. David Miller states: “The original [Chatterjea & Pra-sad] publication pre-dated our patent application and hence we have a case of prior disclosure.” Exhibit 96 at 4; Rose, Day 10 at 73:20-74:20. More than a year later, an anti-inflammatory group report dated February 1976 similarly stated: “The compound is old, and so no claims to [nabume-tone] per se or its preparation can be obtained.” Exhibit 123 at 2. The same language appeared in an anti-inflammatory group report dated May 1976. Exhibit 133 at 3. According to Dr. Rose, the Beecham Patent Department, which included a number of “ex-chemists,” also believed that nabumetone had been named by Chatter-jea & Prasad. Rose, Day 10 at 82:16-25. A memorandum dated March 8, 1976 from Dr. Goudie and Ms. Gaster to Dr. Rose and others identified the Chatterjea & Prasad publication as the “existing literature procedure” for synthesizing nabume-tone. Rose, Day 10 at 77:17-81:11; Exhibit 127 at 1. The memorandum states: “The starting ester is readily available.” Exhibit 127 at 1. The starting ester to which they referred is the methoxy acetate, and it was readily accessible by research in the literature by 1973 (and necessarily by 1976, when the memorandum was written). Rose, Day 10 at 81:12-82:15. At some point during 1976, Drs. Miller and Rose transferred to the Chemical Development Department. Dr. Miller, however, remained Dr. Rose’s supervisor. Dr. Rose supervised Dr. Marton, who was asked to repeat the Chatterjea & Prasad publication’s route to nabumetone. Rose, Day 10 at 84:21-85:15. Dr. Marton began with methoxy acid, which she converted to methoxy acetate, citing the Jones article for the esterification procedure. Rose, Day 10 at 86:15-87:13; Exhibit 427 at 17. In the fall of 1976, Dr. Rose made solid, crystalline nabumetone, starting with authentic methoxy acetate and proceeding through the intermediates, methoxy ethanol, methoxy bromide and methoxy nitrile. Stipulated Facts ¶ 155. Using NMR spectroscopy, Dr. Rose confirmed at each stage of his 1976 synthesis that he had made the intended compounds. Stipulated Facts ¶ 156. Before it was crystallized, the na-bumetone that Dr. Rose had synthesized appeared as a “semi-solid.” Exhibit 37 at 46. After his experiments, Dr. Rose submitted a sample of methoxy nitrile for testing at Beecham on October 22, 1976, using a Beecham biological testing form. On that form he indicated that the source of the material was the Chatterjea & Pra-sad publication. Rose, Day 10 at 111:23— 113:14; Exhibit 156. In a memorandum to the Beecham Patent Department dated November 2, 1976, captioned with the title of the Chatterjea & Prasad publication, Dr. Rose stated that he had prepared nabumetone “following the published methods as closely as detail would allow.” Rose, Day 10 at 95:10-96:12; Exhibit 484 at 1. In the experiment that he reported, however, he did not rely on Jones as the source for deriving the starting material, methoxy acetate. Rose, Day 10 at 98:15-22. In a second memorandum to the Beecham Patent Department dated November 5, 1976, Dr. Rose also reported that the first step in the “published route” to nabumetone (the Chatterjea & Prasad publication) is the conversion of methoxy acetate to methoxy ethanol. Rose, Day 10 at 101:15-103:16; Exhibit 483. Similarly, a report of the Beecham Chemical Development Department dated November 3, 1976 described the research done by Drs. Marton and Rose, and explained that “[a] preparation of [nabumetone] using the published route of Chatterjea and Prasad was requested by the Patent Department.” Rose, Day 10 at 104:4-105:25; Exhibit 160 at 6. A Beec-ham internal report of “New Product Development” for the period October to December 1976 also states plainly that “[t]he route of [the Chatterjea & Prasad publication] is based on the reduction of methyl (6-methoxy-2-naphthyl) acetate [methoxy acetate] ...making no mention of the Jones reference. Rose, Day 10 at 110:19-111:18; Exhibit 430 at 29. Also in 1976, Dr. Rose attempted to synthesize the hydroxy series of compounds, but was never able to synthesize the hydroxy ketone using the Grignard reaction set forth in the Chatterjea & Pra-sad publication. The only way he was able to make the hydroxy ketone was to deme-thylate nabumetone. Rose, Day 11 at 50:18-51:10. 3. The ’676, ’Ill and ’119 Applications a. Beecham’s Interactions with the PTO The ’676 application, dated December 8, 1976, contained claims directed to pharmaceutical compositions for nabumetone and methods of treatment with nabumetone. The ’676 application also contained claim 8, solid nabumetone having a melting point of not less than 78.5° C. Stipulated Facts ¶ 99; Exhibit 5 at 67. In addition, the application contained new language, added by Beecham, that was not present in the earlier applications: J.N. Chatterjea and R. Prasad (Indian J. Chem., 1973 214-8) reported the preparation of a compound which they thought to be [nabumetone]. However the compound they reported was an oil whereas we have found that [nabume-tone] is a solid when pharmaceutically pure. We have also found that crystalline [nabumetone] may be prepared. Stipulated Facts ¶ 100; Exhibit 5 at 18. The ’676 application also contained “Example 19,” which set forth a four-step synthesis of nabumetone beginning with methoxy acetate. Stipulated Facts ¶ 100; Exhibit 5 at 53-54. The synthetic route described in Example 19 involves the same compounds, reactants and reagents named at page 218 of the Chatterjea & Prasad publication. Stipulated Facts ¶ 161. Example 19 enables one of ordinary skill in the art to make nabumetone starting with methoxy acetate. Stipulated Facts ¶ 152. As Dr. Taylor testified, “Example 19 ... and the Chatterjea & Prasad named route ... are identical.” Taylor, Day 1 at 111:6-8. On February 14, 1977, Beecham provided the PTO with a copy of the Chatterjea & Prasad publication, but referred the examiner to the hydroxy analog of nabume-tone (compound XX), and not to nabume-tone itself (the methyl ether of compound XX). Exhibit 11 at 140, 144 (Bates Stamp page number 185081, 185085). On March 4, 1977, Beecham disclosed to the PTO that the Chatterjea & Prasad publication named nabumetone, but told the PTO that it did not believe there was “a sufficient enabling disclosure in that brief description in the reference to enable one of ordinary skill in the art to produce the compound.” Exhibit 11 at 138 (Bates Stamp page number 185079). In response to a restriction requirement made by examiner Friedman, Beecham elected to prosecute the pharmaceutical composition and method-of-treatment claims in the ’676 application, but filed a divisional application, Serial Number 795,-119, to continue prosecuting claim 8, na-bumetone in solid form (“the T19 application”). The T19 application was filed on May 9, 1977, and was assigned to examiner Reamer. Stipulated Facts ¶¶ 101, 105. Beecham then abandoned the ’411 application. Stipulated Facts ¶ 102. On March 13, 1978, Beecham filed an amendment to the ’119 application, adding the following compound claims: na-bumetone in solid form; and crystalline nabumetone with a melting point of approximately 80°C. Stipulated Facts ¶ 106; Exhibit 6 at 67. In the amendment, Beecham also told the PTO that Chatter-jea and Prasad “obtained a thick, pale yellow oil having a melting point of 184° to 186°. Duplication of the Chatterjea disclosure confirms the fact that Chatter-jea, et al. did not obtain the 6-methoxy compound of the instant case, but rather obtained the 6-hydroxy compound.” Exhibit 6 at 68 (emphasis in original). On October 27, 1978, Beecham filed a continuation application, Serial Number 955,197 (“the ’197 application”), containing the same three claims to nabumetone as in the ’119 application. Exhibit 7 at 5, 65. The T97 application was assigned to examiner Reamer. Beecham then abandoned the ’119 application. Stipulated Facts ¶¶ 107-08. b. Beecham’s Internal Communications, Research, and Correspondence In an October 17, 1977 letter, G.D. Mei-kle, a member of the Beecham Patent Department, advised Beecham’s Canadian patent agents that: “[Submitting affidavit evidence that the Chatterjea and Prasad paper contains inoperative information does not seem to be possible.” Exhibit 197 at 1. On June 6, 1978, the Journal of Medicinal Chemistry published an article written by then-Beecham employees Drs. Rose, Lake, Miller and Goudie, entitled, “4-(6-Methoxy-2-naphthyl) butan-2-one and Related Analogs, a New Class of Anti-inflammatory Compounds” (the “Goudie paper”). Stipulated Facts ¶ 153; Exhibit 17. One of the synthetic routes set forth in the Goudie paper is the same as the route set forth in Example 19. Stipulated Facts ¶ 154. On June 8, 1978, Dr. Rose attempted to create hydroxy ketone from hydroxy ni-trile using the Grignard reaction. The Grignard solvents he employed were a mixture of diethyl ether, benzene and tet-rahydrofuran (“THF”). The experiment was unsuccessful, and Dr. Rose did not repeat it. Rose, Day 12 at 76:20-77:15; Exhibit 176 at 31. Dr. Rose’s laboratory notebook also shows that from July 4-7, 1978, he performed a second set of methoxy series experiments, which he termed “Preparation of [Nabumetone] Literature Method.” Exhibit 176 at 40-41. In that set of experiments, he began with authentic methoxy ethanol and proceeded through the intermediates methoxy bromide and methoxy nitrile to synthesize methoxy ketone (na-bumetone). Rose Day 11 at 11:13-12:3; Exhibit 176 at 40^41; Stipulated Facts ¶ 157. Using NMR spectroscopy, Dr. Rose confirmed at each stage of his 1978 synthesis that he had made the intended compounds. Stipulated Facts ¶ 158. He reported in his laboratory notebook that he produced nabumetone as “an oil ... which solidified.” Exhibit 176 at 41. On July 13, 1978, Dr. Rose sent to Dr. Cole of Beecham’s Patent Department a memorandum in which Dr. Rose stated that he had “repeated the preparation of [nabume-tone] using the route reported by Chatter-jea & Prasad.” Rose, Day 11 at 9:2-17; Exhibit 223. The memorandum also comments that “if [nabumetone] is in the oil prepared by the authors [Chatterjea & Prasad] at all, it must be present in a low proportion.” Exhibit 223. 4. The ’197 Application a. Beecham’s Interactions with the PTO As stated above, the 197 application was filed on October 27, 1978. In an office action dated January 24, 1979, examiner Reamer rejected the three claims of na-bumetone contained in the 197 application over the Chatterjea & Prasad publication. Exhibit 7 at 66-68; Stipulated Facts ¶ 109. On April 23, 1979, Beecham filed an amendment to the 197 application, arguing in favor of the three claims. The amendment was accompanied by a declaration from Dr. Rose dated March 16, 1979 (the “First Rose Declaration”). Exhibit 7 at 96; Exhibit 33; Stipulated Facts ¶ 110. The First Rose Declaration stated that Dr. Rose had “attempted to follow the directions set forth at page 218” of the Chat-terjea & Prasad publication for the preparation of nabumetone, but that he had “diverged from the described processes in that [he] purified the compounds carefully at each stage.” Exhibit 33 at 2, ¶ 5. Beec-ham’s patent attorneys represented to the PTO that this was Dr. Rose’s only divergence from the process outlined in the Chatterjea & Prasad publication; Dr. Rose agreed with this characterization. Exhibit 7 at 93; Rose, Day 11 at 32:2-15. The First Rose Declaration provided a table comparing the melting points noted in Dr. Rose’s methoxy series with those reported in the Chatterjea & Prasad publication. For his own preparation of nabumetone, Dr. Rose listed a melting point of 80°C; for that of the Chatterjea & Prasad publication, he listed “oil.” Exhibit 33 at 5, ¶ 7. Examiner Reamer again rejected the three claims in the T97 application in a May 25, 1979 office action. Exhibit 7 at 102-03; Stipulated Facts ¶ 111. Beecham appealed to the PTO’s Board of Appeals on December 20, 1979. On September 15, 1981, the Board of Appeals affirmed examiner Reamer’s decision. Exhibit 7 at 119-125, 135-41. Stipulated Facts ¶¶ 112-115. b. Beecham’s Internal Communications, Research, and Correspondence An October 14, 1981 Beecham Patent Department memorandum, written to Beecham’s Mr. E.R. Stove by Mr. H.B. Dawson, states: “The Beecham evidence [presented to the PTO] in relation to Chat-terjea was in the form of Declarations by Drs. Rose and Miller ... showing by means of a repetition of the Chatterjea process that Chatterjea did not obtain [na-bumetone] and arguing that it was not obvious to repeat Chatterjea (a necessary argument as it seems that repeating Chat-terjea using correct techniques does give [nabumetone]).” Exhibit 263 at 1-2 (emphasis in original). In this memorandum, Mr. Dawson requested the assistance of the Beecham “special projects unit,” a group of chemists who performed chemical investigations at the request of Beecham’s management. Exhibit 263; Testimony of Dr. Richard K. Anderson (“Anderson”), Day 4, at 113:6-12. As a result of this request, Dr. Richard K. Anderson became involved in investigating the Chatterjea & Prasad publication. Anderson, Day 4 at 114:9-15. Dr. Anderson was a member of the special projects unit. Anderson, Day 4, at 112:22-25. The goal of Dr. Anderson’s investigation was to prove Beecham’s hypothesis that Chatterjea and Prasad actually had described hydroxy, rather than methoxy, compounds (the “hydroxy hypothesis”). Anderson, Day 5 at 8:10-9:8. In a preliminary progress report dated October 22, 1981, Dr. Anderson raised a potential problem with the hydroxy hypothesis, namely that it was not known whether the Willgerodt reaction outlined in Jones would completely demethylate the compound. If demethylation were not complete, then some authentic methoxy acid might be formed. Anderson, Day 5 at 14:21-15:17; 16:12-19; Exhibit 270 at 4. 5. The T90 Application a. Beecham’s Interactions with the PTO Beecham filed a continuation application on November 12, 1981, Serial Number 320,190 (“the ’190 application”). Stipulated Facts ¶ 116; Exhibit 8 at 3. The ’190 application contained the three claims to nabumetone in solid form that had been contained in the rejected T97 application. On February 16, 1982, Beecham amended the T90 application by adding claim 11, a claim for the compound nabumetone per se. Stipulated Facts ¶ 117; Exhibit 8 at 64-65. On November 2, 1982, in the T90 application, examiner Reamer issued a final rejection of the three claims to na-bumetone in solid form, as obvious over the Chatterjea & Prasad publication under 35 U.S.C. § 103; and of claim 11, as anticipated by the Chatterjea & Prasad publication under 35 U.S.C. § 102. Stipulated Facts ¶ 118; Exhibit 8 at 79-81. On May 3, 1983, Beecham filed a response to the final rejection. That response included an April 20, 1983 declaration of Dr. Rose (the “Second Rose Declaration”) and a November 5, 1982 affidavit of Dr. Anderson (the “Anderson Affidavit”). Stipulated Facts ¶ 119; Exhibit 8 at 84, 345, 369; Exhibit 34; Exhibit 349. Beecham knew, as of the date of the Anderson Affidavit, that pure hy-droxy ketone is a solid with a melting point of approximately 120°C. Stipulated Facts ¶ 162. Beecham’s May 3, 1983 response informed the PTO that, at Beec-ham’s request, Dr. Chatterjea had become involved in “reinvestigating” the Chatterjea & Prasad publication, because “according to Beecham’s repetition of the Chatterjea/Prasad route, the 2-methoxy compound could not be produced.” Exhibit 8 at 89-90. Beecham told the PTO that Dr. Chatterjea “took a fresh look at the synthesis with particular emphasis on the preparation of the starting material,” and provided an affidavit from Dr. Chat-terjea stating that he had “replicated the Chatterjea/Prasad synthesis and obtained a product which was ... the 2, 4-DNP derivative of the- ... 2-hydroxy compound.” Id. at 91, 97. On June 9, 1983, the examiner reversed his original rejection of the three claims of the ’190 application and allowed these claims. The PTO issued the ’639 patent on December 13, 1983. Stipulated Facts ¶ 120; Exhibit 1; Exhibit 8 at 416-38. b. Beecham’s Internal Communications, Research, and Correspondence In total, Dr. Anderson attempted to complete the four-step synthesis using hy-droxy compounds five times. On November 19-20, 1981, his first two attempts at the Grignard reaction, using only diethyl ether as a solvent, failed to convert the hydroxy nitrile to hydroxy ketone. Anderson, Day 5 at 61:8-15; Exhibit 801; Exhibit 36 at 49-51. On November 24, 1981, Dr. Anderson sent a memorandum to the Beecham Patent Department reporting his findings to date. In that memorandum he stated that the hydroxy ketone had not yet been prepared from the hydroxy ni-trile. Instead, to check the melting point of the ketone reported in the Chatterjea & Prasad publication, Dr. Anderson was planning to demethylate a sample of na-bumetone. Anderson, Day 5 at 64:18-66:13; Exhibit 290 at 1. As of December, 1981, Beecham had not yet repeated the four-step synthesis outlined in the Chatter-jea & Prasad publication using hydroxy compounds. Anderson, Day 5 at 68:11-20; Day 9 at 61:6-15; Exhibit 250 at 1; Exhibit 294 at 1. On December 8, 1981, at Beecham’s request, Dr. Chatterjea sent to Beecham a sample of the methoxy nitrile that he had been able to “salvage” from the original experiment that led to the Chatterjea & Prasad publication. Exhibit 295; Exhibit 297 at 1. Dr. Anderson arranged for various analyses to be made of the sample received from Dr. Chatterjea. The results of these analyses, reported in a memorandum from Dr. Anderson to Mr. Stott of the Beecham Patent Department dated January 14, 1982, showed that the sample in fact consisted of 70-75% methoxy nitrile. Anderson, Day 9 at 63:11-22; Exhibit 305. In Dr. Anderson’s third, fourth and fifth attempts to complete the four-step hy-droxy synthesis, he used a combination of THF and benzene for the Grignard reaction in the conversion of the nitrile to the ketone, and was able to make the reaction proceed. Anderson, Day 6 at 22:3-15, 26:23-27:10. Dr. Anderson ran his third Grignard reaction in the hydroxy series of compounds on December 15, 1981. Anderson, Day 6 at 8:17-15:8; Exhibit 36 at 62-63; Exhibit 802. He described the product of the third reaction as a “thick yellow brown oil [that] gradually solidified.” Exhibit 36 at 63. In a memorandum to Mr. F.P. Doyle dated January 26, 1982, Mr. Stott stated: “There now appears to be only one course of action remaining in our attempt to secure valid compound protection for [na-bumetone] in the States, namely to argue that the Chatterjea publication is not an enabling prior publication. Thus, while we cannot deny the actual disclosure of [na-bumetone], we can show that the disclosed synthesis does not lead to the compound.” Exhibit 309 at 2. From February 11 to 18, 1982, Dr. Anderson worked on his fourth Grignard reaction in the hydroxy series of compounds. Anderson, Day 6 at 15:9-19:8; Exhibit 36 at 84-87; Exhibit 802. He described the product of that fourth reaction as a “free-running liquid.” Anderson, Day 6 at 19:16-19; Exhibit 36 at 87. In early 1982, Dr. Anderson also synthesized the methoxy series of compounds, starting with authentic methoxy acetate and proceeding through the intermediates methoxy ethanol, methoxy bromide and methoxy nitrile. On March 25, 1982, he reported obtaining methoxy ketone, which he described as a “pale brown oil [that] solidified.” From that product, Dr. Anderson made solid, crystalline nabume-tone. Stipulated Facts ¶ 159; Anderson, Day 7 at 7:11-18; Exhibit 36 at 91. Using NMR spectroscopy, Dr. Anderson confirmed at each stage of his synthesis that he had made the intended compounds. Stipulated Facts ¶ 160. Also in the spring of 1982, Beecham corresponded with Dr. Chatterjea. After receiving a letter from Mr. Stott on March 12, 1982, stating that Beecham was “still unable to reproduce the results that are given in” the Chatterjea & Prasad publication (Exhibit 319 at 1), Dr. Chatterjea responded on March 27, 1982, that he was “surprised at [Beecham’s] inability to reproduce the work along the lines suggested in [his] original paper,” and promised to take a “fresh look at the problem.” Exhibit 323. On June 21, 1982, Dr. Chatter-jea again wrote to Mr. Stott, informing him that he had taken a “fresh look” at the issue, and had repeated the synthetic route described in the Chatterjea & Prasad publication “with care.” Exhibit 331 at 1. Dr. Chatterjea reported: “[0]ur work stands verified.... [W]e synthesized the methyl ketone.” Id. at 1-2. On July 6, 1982, Mr. Stove responded to Dr. Chatterjea, thanking him for his results, but asking him to perform the reaction sequence again “because the U.S. Patent Office want [sic] to know what happens when 2-acetyl-6-me-thoxynaphthalene is subjected to the Will-gerodt reaction exactly as described by Jones ... and the product of this reaction is esterified according to Jones and then put through the ... reaction sequence you describe in [the Chatterjea & Prasad publication].” Exhibit 333 at 1. A July 26, 1982 cable from Mr. Stove to Dr. Chatter-jea reiterated the request to perform the reaction sequence “following the reported procedures exactly as described [in Jones];” in other words, Mr. Stove wrote, “you should disregard the composition of the ester obtained following Jones and submit this product to the subsequent steps reported in your paper.” Mr. Stove stated that this might “seem artificial,” but insisted that it was “required” by the PTO. Exhibit 335 (emphasis in original). From October 6 to 8, 1982, Dr. Anderson worked on his fifth Grignard reaction in the hydroxy series of compounds. Anderson, Day 6 at 21:12-26:22; Exhibit 358 at 68-70. He described the product of that fifth reaction as a “thick yellow oil that gradually solidified.” Exhibit 358 at 70. On June 3, 1983, after the ’639 patent was granted, Mr. Stott authored a memorandum to Beecham’s Dr. K.R.L. Mans-ford that stated: “All the claims including the unrestricted compound claim have been allowed. The Examiner’s decision is completely unexpected.... It would appear that this is the first time a patent has been allowed in the U.S.A. for a compound that is described in the prior art under these circumstances.” Exhibit 373. G. The Defendants’ Claim that Beec-ham Intentionally Misled the PTO. As noted above, I accepted, after de novo review, the findings of the special master that two statements made to the PTO by Beecham, in the course of the patent application process, were material misrepresentations. I now affirm that determination after hearing all the evidence. Each of the two statements was made in an affidavit. The first statement is contained in the Second Rose Declaration, submitted to the PTO on May 3, 1983 as part of Beecham’s response to the PTO’s final rejection of the T90 application. In paragraph 5 of that document, Dr. Rose incorrectly represented that: (1) he was able to synthesize nabumetone successfully by following the Chatterjea & Prasad publication only because he fortuitously had methoxy acid, and did not need to synthesize it; (2) had he not been in such an “unusual position,” he would have been “obliged” to utilize the Jones reference to obtain the methoxy acetate starting material; and (3) “any independent expert” likewise would have been “obliged” to use the Jones synthesis because the “free acid [methoxy acid from which methoxy acetate is derived by the process of esterification] was not, and still is not, generally available.” Exhibit 34 at 4. The second statement is contained in the Anderson Affidavit, also submitted by Beecham to the PTO on May 2, 1983. The Anderson Affidavit incorrectly represented that the melting point of hydroxy ketone was “oil.” Exhibit 349 at Appendix 4. The defendants argue that these material misrepresentations were made with the intention to mislead the PTO and persuade the examiner to issue a patent for nabume-tone. The defendants argue that there is a substantial likelihood that a patent examiner, reviewing the application in light of the sworn statements from Drs. Rose and Anderson, would have considered their misrepresentations important to the pat-entability issues of identity and enablement with respect to nabumetone. I agree. The November 2, 1982 rejection of the ’190 application had been based in part on reasoning that the claims of the ’190 application were obvious in light of and anticipated by the Chatterjea & Prasad publication. The sworn statements of Drs. Rose and Anderson were submitted to persuade the PTO of the contrary view. The defendants also presented evidence of other inconsistencies between the materials presented to the PTO by Beecham and Beecham’s internal documents, including research reports and correspondence. Part of this evidence has been set forth above; other portions will be described in the sections that follow. III. Conclusions of Law and Ultimate Findings A. Invalidity The ’639 patent enjoys a statutory presumption of validity and enforceability. 35 U.S.C. § 282. However, an invention is not novel, and therefore not patentable, if a prior art reference discloses every element of the asserted invention. See Lewmar Marine Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed.Cir.1987), cert. denied, 484 U.S. 1007, 108 S.Ct. 702, 98 L.Ed.2d 653 (1988). Under 35 U.S.C. § 102(b), if an invention “was ... described in a printed publication in this or another country ... more than one year prior to the date of application for patent in the United States,” it has been anticipated and is therefore not entitled to a patent. The parties in this case do not dispute that the Chatterjea & Prasad publication meets the requirement that the prior art reference be a publication printed more than one year prior to the date of the relevant application. The dispute at trial centered on whether the Chatterjea & Prasad publication adequately “describes” the ’639 patent. The plaintiffs argue that deference is due to the PTO’s decision to issue the ’639 patent. It is true, of course, that a “presumption of validity ... is accorded to issued patents under 35 U.S.C. § 282.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1329 (Fed.Cir.2000). But it is also true that the defendants’ burden, to prove invalidity by “clear and convincing evidence,” is “constant and never changes.” American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed.Cir.1984), cert. denied, 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984). Thus, the deference owed to the PTO’s issuance of a patent does not increase the burden of a party challenging the patent’s validity. See id. As the American Hoist court stated, “the production of ... invalidating evidence not before the PTO ... eliminate[s], or at least reduce[s], the element of deference due the PTO, thereby partially, if not wholly, discharging the attacker’s burden, but neither shifting nor lightening it or changing the standard of proof.” Id. (emphasis in original). Several factors in this case cancel the deference ordinarily due to a PTO decision. First, as I have already determined, material misrepresentations were made to the PTO. Thus, the PTO’s decision was based at least in part on incorrect information. Second, evidence was offered at trial that was not before the PTO, including research, internal communications and other correspondence. That evidence casts doubt on other of Beecham’s representations to the PTO. As the court held in American Hoist, “[djeference is due the Patent and Trademark Office decision to issue the patent with respect to evidence bearing on validity which it considered but no such deference is due with respect to evidence it did not consider.” Id.See also Purdue, supra, 230 F.3d at 1329. For these reasons, I decline to defer to the PTO’s determination with regard to the ’639 patent. The burden remains on the defendants, however, to prove the claim of invalidity by clear and convincing evidence. “The ‘clear and convincing’ standard of proof.. .is an intermediate standard which lies somewhere between ‘beyond a reasonable doubt’ and a ‘preponderance of the evidence.’ ” Buildex Incorporated v. Kason Industries, Inc., 849 F.2d 1461, 1463 (Fed.Cir.1988) (quoting Addington v. Texas, 441 U.S. 418, 425, 99 S.Ct. 1804, 60 L.Ed.2d 323 (1979)). “Although not susceptible to precise definition, ‘clear and convincing’ evidence has been described as evidence which produces in the mind of the trier of fact ‘an abiding conviction that the truth of [the] factual contentions [is] highly probable.’ ” Id. (quoting Colorado v. New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984)). See also Price v. Symsek, 988 F.2d 1187, 1191 (Fed.Cir.1993). To establish invalidity of the ’639 patent by reason of anticipation by a prior art reference, the defendants must demonstrate both identity of invention and enablement by the prior art reference. See, e.g., Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed.Cir.2000) (“[t]o be anticipating, a prior art reference must disclose ‘each and every limitation of the claimed invention[,] ... must be enabling[,] and [must] describe ... [the] claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention’ ”) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed.Cir.1994)); General Electric Co. v. Nintendo Co., Ltd., 179 F.3d 1350, 1356-57 (Fed.Cir.1999) (“[t]o anticipate a claim, a reference must disclose every element of the challenged claim and enable one skilled in the art to make the anticipating subject matter”) (quoting PPG Industries, Inc. v. Guardian Industries Corp., 75 F.3d 1558, 1566 (Fed.Cir.1996)). Identity of invention requires that a pri- or reference disclose to one of ordinary skill in the art all elements and limitations of the patent claim. See Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed.Cir.1991). For a prior art reference to “enable” the invention of a patent, the reference must place the invention in the possession of the public by enabling others to practice the invention. See In re Donohue, 766 F.2d 531, 533 (Fed.Cir.1985) (“Donohue II ”). “Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his own knowledge to make the claimed invention.” Id. Notably, “anticipation does not require actual performance of suggestions in a disclosure. Rather anticipation only requires that those suggestions be enabling to one of skill in the art.” Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1379 (Fed.Cir.2001). See also Donohue II, supra, 766 F.2d at 533 (it is not “necessary that an invention disclosed in a publication shall actually have been made in order to satisfy the enablement requirement”). Indeed, even “[a]n inoperable invention or one which fails to achieve its intended result does not negate novelty.” Bristol-Myers, supra, 246 F.3d at 1377 (quoting U.S. v. Adams, 383 U.S. 39, 50, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966)). A reference that requires experimentation by one skilled in the art is nevertheless anticipatory so long as the experimentation is not “undue.” The determination of what constitutes undue experimentation requires the application of a standard of reasonableness, taking into account the nature of the invention and the state of the art. In re Wands, 858 F.2d 731, 736-37 (Fed.Cir.1988). “[A] considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.” Id. The use of additional references to establish that the anticipatory reference is enabling is legally permissible under Section 102. Bristol-Myers, supra, 246 F.3d at 1379; Donohue II, supra, 766 F.2d at 534; Application of Samour, 571 F.2d 559, 562-63 (Cust. & Pat.App.1978). The law of enablement presumes one acts with common sense and allows one skilled in the art to use commercially available, or otherwise known or readily available materials reported in the prior art, as starting points. See Bruning v. Hirose, 161 F.3d 681, 686 (Fed.Cir.1998); Application of Brebner, 59 C.C.P.A. 897, 455 F.2d 1402, 1404 (Cust. & Pat.App.1972) (“a rejection for failure to enable because of failure to disclose how to obtain starting materials would be sustainable only if the method of obtaining them would not be apparent to one of ordinary skill in the art”); Ex parte Thomson, 24 U.S.P.Q.2d 1618, 1620 (1992). As stated in Donohue II, supra, “possession of the public” occurs when the ordinarily skilled person’s own knowledge, combined with the publication’s description, enables that person to make the invention, but the invention in the publication need not have been actually made. 766 F.2d at 533. There is no dispute that the Chatterjea & Prasad publication literally states the chemical name for what is now called nabumetone: “£u-(2-methoxy-6-na-phthyl) ethyl methyl ketone,” and describes a process by which this compound may be synthesized from other compounds. Taken alone, the chemical name for nabumetone and the description of a method for deriving it would be sufficient to establish identity of the compound named in the Chatterjea & Prasad publication with the compound named in the ’639 patent. See Donohue II, supra; Samour, supra. The position taken by the plaintiffs at trial was that, because of the “Jones error,” the person of ordinary skill in the art would have understood the Chatterjea & Prasad publication to describe only hy-droxy compounds and that therefore, the Chatterjea & Prasad publication fails to identify nabumetone. 1. Identification Although Drs. Rose and Anderson, and the plaintiffs’ witness Dr. Paul Bartlett, an expert in synthetic organic chemistry, now argue that the Chatterjea & Prasad publication does not identify nabumetone to the ordinary chemist, I reject that conclusion in light of other evidence to the contrary in the record. Of especial significance is the fact that all of the Beecham chemists confronted with the Chatterjea & Prasad pub: lication during the relevant time period— including Drs. Rose, Anderson, Marton, Goudie, Miller, Cole and Ms. Gaster — initially believed the article to have identified nabumetone. Dr. Rose testified that when he first read the Chatterjea & Prasad publication, in 1975, he believed that it described nabumetone and not a hydroxy ketone. Rose, Day 10 at 58:5-59:21. Dr. Anderson testified that a chemist reading the Chatterjea & Prasad publication, even in 1981, would think that it describes na-bumetone. Anderson, Day 7 at 71:7-21. As late as January 1982, Beecham was resigned to the fact that the Chatterjea & Prasad publication identified nabumetone. As Mr. Stott told Mr. Doyle: “we cannot deny the actual disclosure of [nabume-tone]” by the Chatterjea & Prasad publication. Exhibit 309 at 2. Indeed, Beecham maintained the belief that the Chatterjea & Prasad publication identified nabume-tone even after the patent was issued, as indicated by Mr. Stott’s June 3, 1983 memorandum to Dr. Mansford, expressing surprise that the examiner had allowed a patent “for a compound that is described in the prior art.” Exhibit 373. This evidence accords with Dr. Taylor’s testimony that the ordinary chemist would understand the Chatterjea & Pra-sad publication to identify nabumetone. The contemporaneous laboratory notes and correspondence of Beecham employees, indicates that the scientists at Beec-ham immediately understood the Chat-terjea & Prasad publication to describe precisely what it purports to describe: a four-step synthesis of nabumetone beginning with methoxy acetate. Furthermore, there is no dispute that, if one begins with authentic methoxy acetate and follows the sequence of reactions set forth in the text of the Chatterjea & Prasad publication, one will derive na-bumetone. Indeed, Drs. Rose and Anderson and other Beecham chemists successfully synthesized nabumetone, beginning with methoxy acetate and following the process or method set forth in the Chatterjea & Prasad publication. I am simply unpersuaded by the argument advanced by the plaintiffs that the Jones error precludes the identification of nabumetone by the Chatterjea & Prasad publication. As to that issue, I credit the testimony of Dr. Edward C. Taylor, the defendants’ expert in synthetic organic chemistry. a. Dr. Taylor’s Testimony. Dr. Taylor testified that a chemist of ordinary skill would not believe, simply by virtue of the footnote 19 reference to Jones, that the Chatterjea & Prasad publication either did not identify or mistakenly identified nabumetone. Instead, as Dr. Taylor testified, a chemist of ordinary skill would clearly understand from both the plain language of the article and from the purpose of the article, as expressed by the authors, that the Chatterjea & Prasad publication described nabumetone. First, as noted earlier, the Chatterjea & Prasad publication clearly states the chemical name for nabumetone: Xu-(2-me-thoxy-6-naphthyl) ethyl methyl ketone. Exhibit 13 at 218. Drs. Rose and Anderson, testified consistently with Dr. Taylor that this name unequivocally provides the structure of nabumetone to a chemist of ordinary skill. Rose, Day 10 at 58:22-59:5; Anderson, Day 5 at 6:2-8; Taylor, Day 1 at 101:25-102:15. In fact, as Dr. Taylor went on to testify, an ordinary chemist would know how to synthesize na-bumetone simply by looking at the structure: “[t]his is a simple molecule, and the synthesis of this compound independent of anything else in the paper is really not a major challenge to a person of ordinary skill.” Taylor, Day 1 at 102:19-22. Dr. Rose agreed that nabumetone was a “simple compound,” for which there were “a number of synthetic routes.” Rose, Day 11 at 51:11-15; 52:5-10. The Chatterjea & Prasad publication also references the “related methyl ether” of Compound XX, a hydroxy compound. Drs. Rose, Bartlett and Taylor agree that this description also unequivocally identifies nabumetone to a chemist of ordinary skill. Rose, Day 10 at 59:9-18; Bartlett, Day 15 at 131:23-132:12; Taylor, Day 2 at 62:14-63:4. Second, as Dr. Taylor explained, given the objective of the authors’ scientific investigation, the ordinary chemist would understand that the Chatterjea & Prasad publication described the synthesis of a series of methoxy, not hydroxy, compounds. As Dr. Taylor testified, “the objective of the [Chatterjea & Prasad] article” was to investigate the findings of an earlier pair of researchers, Miller and Robinson, by comparing one methyl ether to another. Taylor, Day 1 at 112:1-116:9; Day 2 at 10:4-12:2. Thus, an ordinary chemist would have understood that the Chatterjea & Prasad publication identified a methoxy, rather than a hydroxy, compound because the authors’ purpose was to compare the compound they had identified to another methoxy compound: “[fit’s apples and oranges to compare a hydroxy, with a methoxy, because they are simply different to start with.” Taylor, Day 2 at 18:25-19:2. Although the authors of the Chatterjea & Prasad publication “could have compared the two hydroxy compounds, they chose not to;” instead “their strategy was clearly to compare the methyl ethers.” Taylor, Day 2 at 20:15-18. In fact, “[t]here is not a mention of ... any hydroxy compound being prepared in the experimental section [of the Chatterjea & Prasad publication], except for the preparation of compound XIX, which was immediately methylated to form the methoxy compound.” Taylor, Day 2 at 60:21-25. Thus unlike the situation in Application of Yale, 58 C.C.P.A. 764, 434 F.2d 666, 668-69 (Cust. & Pat.App.1970), the person of ordinary skill, reading the Chatterjea & Pra-sad publication, would not have any reason to dismiss the naming of nabumetone as a typographical error. Taylor, Day 2 at 62:14-20. As to the impact of the Jones reference in footnote 19, Dr. Taylor testified that: the person of ordinary skill reading that would not take that as a certain indication that [Jones] was the method that Chatterjea & Prasad used. They could have, but when you look [the footnote] up it is a reference to a compound which is the starting material for the Chatter-jea & Prasad synthesis, and there are a number of syntheses to that compound[.][M]aybe this is what they used. Maybe they didn’t, but all I can say is it is not explicitly stated that they used it. So I think that is about as far as the person of ordinary skill can go in interpreting that footnote. Taylor, Day 2, 28:18-29:3. If the person of ordinary skill in 1973 wished actually to synthesize nabumetone, Dr. Taylor explained, he or she would certainly read footnote 19, but the ordinary chemist “would fully realize that there is a good 25 years that’s elapsed since the publication of ... [the] reference in footnote 19,” and would perform a literature search. Taylor, Day 2 at 31:13-25. Dr. Taylor expounded: They would certainly look for methoxy acid from which the methoxy acetate is made... They would look for methoxy ethanol. They would look for ... me-thoxy bromide. That is if you are going to repeat the synthesis, you are going to see whether in that last 25 years any of these compounds along the synthetic pathway have been made, maybe by better procedures because the objective here ... is to synthesize the final compound. And if there is a shorter synthesis that one can carry out or a better one, by finding a better method for making one of these intermediates, that would be an obvious thing that a person of ordinary skill would do. So the person of ordinary skill would go to the literature, and he or she would certainly find a number of very interesting articles which dealt with the synthesis of methoxy acid and methoxy acetate, much more recent than the 1948 paper. Taylor, Day 2 at 32:2-19. As he summarized: “the major point here is that there are options for making the methoxy acetate ... which overcome this error in Jones which has been clearly recognized by a person of ordinary skill in 1973 reading the literature.” Taylor, Day 2 at 36:12-16. Importantly for purposes of this case, Dr. Taylor testified that if the person of ordinary skill chose an option other than Jones for maki