Full opinion text
OPINION SUE L. ROBINSON, Chief Judge. I. INTRODUCTION Union Carbide Chemicals & Plastics Technology Corporation is the assignee of all rights, title, and interest in and to U.S. Patent Nos. 4,916,243 (“the ’243 patent”); 4,908,343 (“the ’343 patent”); and 5,057,481 (“the ’481 patent”). These patents relate to improved catalysts used to produce ethylene oxide. Ethylene oxide is a building block chemical used to make numerous household products including shampoo, antifreeze, and laundry detergent. Generally speaking, ethylene oxide is made by combining ethylene and oxygen. When ethylene and oxygen are chemically combined, three main products result— ethylene oxide, carbon dioxide, and water. The carbon dioxide and water are undesirable byproducts of the chemical reaction. The efficiency of the reaction is measured by comparing the amount of ethylene oxide produced to the amount of ethylene and oxygen used in the process. Scientists, including those employed by the parties in this litigation, have tried for years to improve the efficiency of the reaction. Simply put, they want to produce more ethylene oxide and less carbon dioxide and water. One well known technique of increasing the efficiency of the reaction is to combine the ethylene and oxygen in the presence of a silver catalyst. When a silver catalyst is present, oxygen combines with the silver and, through that combination, oxygen is caused to react with ethylene to form ethylene oxide. See the ’343 patent, col. 2, Ins. 10-15. Since at least the 1930s, scientists have been trying to improve the silver catalysts to increase the efficiency of the reaction and the life of the catalyst. One way to improve the silver catalysts is to add other metals to the silver. These other metals are referred to as “promoters.” Union Carbide Chemicals & Plastics Technology Corporation filed this patent infringement action on May 3,1999 against defendant Shell Oil Company, Shell Chemical Company, and CRI Catalyst Company (collectively, “Shell”), alleging that Shell infringes the ’243 patent, the ’343 patent, and the ’481 patent (collectively, “the patents-in-suit”). Shell countered that all three patents-in-suit were invalid and not infringed. Union Carbide Corporation joined this litigation on January 4, 2000. Union Carbide Chemicals & Plasties Technology Corporation and Union Carbide Corporation are referred to collectively as “Union Carbide.” Shell Oil Company had filed suit against Union Carbide in April 1999 in Houston, Texas. That case was transferred here and consolidated with this action. The consolidated action was tried to a jury over twelve days. After two and one-half days of deliberations, the jury found that Shell did not infringe any claims of the patents-in-suit and that each asserted claim was invalid. The jury also answered willful infringement and damages interrogatories, checking “No” for all three willful infringement questions and finding $0.00 in damages based upon a 0% royalty. Union Carbide is incorporated in Delaware and has its principal place of business in Connecticut. (D.I.75, ¶¶ 4-5) Shell is a Delaware corporation with its principal place of business in Texas. (D.I. 75, ¶¶ 7-9; D.I. 78 ¶¶ 7-9) The court has jurisdiction over this action under 28 U.S.C. §§ 1331 and 1338. Venue is proper in this judicial district by virtue of 28 U.S.C. §§ 1391(c) and 1400(b). II. BACKGROUND A. The Patents-in-Suit and Asserted Claims The three patents-in-suit can be better understood by grouping them into two categories. Throughout this litigation, the parties referred to the ’243 patent as “the synergy patent” and the ’348 and ’481 patents as “the salt patents.” The application leading to the ’243 patent was a continuation of prior U.S. application Ser. No. 763,273 filed August 7, 1985, which was a continuation of application, now abandoned, Ser. No. 497,231 filed May 23, 1983, which was a continuation of application, now abandoned, Ser. No. 116,-292 filed February 13, 1980, now abandoned, which was a continuation-in-part of Ser. No. 021,727 filed Mar. 20, 1979, now abandoned. As described in its specification, the ’243 patent comprises a supported silver catalyst containing a combination of (a) cesium and (b) at least one other alkali metal selected from the group consisting of lithium, sodium, potassium and rubidium, wherein (a) and (b) are present in amounts in relation to the amount of silver therein sufficient to increase the efficiency of the ethylene oxide manufacture to a value greater than the efficiencies obtainable under common operating conditions from respective catalysts which are the same as said catalyst except that instead of containing both (a) and (b), one contains the respective amount of (a), and the other contains the respective amount of(b). (’243 patent, col. 1, Ins. 19-28) Claim 4, which is dependent of claim 1, is the only asserted claim of the ’243 patent. 1. In the continuous process for the production of ethylene oxide by the vapor phase oxidation of ethylene with molecular oxygen provided as an oxygen-containing gas at a temperature of from about 200"C. to 300"C. in the presence of at least about one mole percent of carbon dioxide and an organic chloride in the gaseous feed stream and in the presence of a supported, silver-containing catalyst in a fixed bed, tubular reactor used in commercial operations to form ethylene oxide, wherein said supported, silver-containing catalyst contains 2 to 20 weight percent silver deposited on a support which is in a form and size for use in the reactor, wherein (i) the specific reaction conditions of the ethylene oxide process; (ii) the specific catalyst support characteristics and (iii) the specific silver deposition method comprise an ethylene oxide production system, the improvement in which the catalyst comprises silver deposited on an alpha-alumina macroporous support in a first amount having a surface area less than 10 m2/ g and contains a combination of (a) cesium in a second amount and (b) at least one other alkali metal selected from the group consisting of lithium, sodium, potassium and rubidium in a third amount, which combination comprises (a) and (b) in amounts in relation to the amount of silver in the catalyst sufficient to provide an efficiency of ethylene oxide manufacture that is greater than the efficiencies obtainable in the same ethylene oxide production system, including the same conversions, than (i) a second catalyst containing silver in the first amount and cesium in the second amount, and (ii) a third catalyst containing silver in the first amount and the alkali metal in the third amount, wherein the combination of silver, cesium and alkali metal in said catalyst is characterizable by an efficiency equation: efficiency % = b0 -í- b^BG) + b2 CBCs) + — b^BA) + b ¿BG)2 + b 5(BCs)2 + — b6jBA? + b7(BG» BCs) * (JBG ) — b Sj BA¡ + (BCs ) — b 9j BA where BAX =BRb, BA2=BK, BA3=BNa, BA4=BLi, and where the coefficient b0 through b9j and BG, BRb, BK, BNa, BLi and BCs are determined from a composite design set of experiments using the same ethylene oxide production system for the independent variables silver, cesium and alkali metal, and wherein BG is the difference of the average value of the silver content from the silver content used in the design set, BCs is the difference of the average value of the cesium content from the cesium content used in the design set ... and BLi is the difference of the average value of the lithium content from the lithium content used in the design set. 4. The process of claim 1 wherein said alkali metal is lithium. (’243 patent, col. 29, In. 53 — col. 30, In. 54) In other words, the invention is directed to a continuous process for the production of ethylene oxide in the presence of a silver-containing catalyst, wherein the catalyst contains (i) silver in a first amount, (ii) cesium in a second amount, and (iii) at least one other alkali metal selected from the group consisting of lithium, sodium, potassium and rubidium in a third amount. Cesium and lithium are combined in sufficient amounts, relative to the amount of silver, so as to provide an efficiency for ethylene oxide production that is greater than the efficiency obtained by a catalyst which contains silver in the first amount and cesium in the second amount, or a catalyst that contains silver in the first amount and lithium in the third amount. The ’243 patent describes the use of a design set of experiments and the use of a corresponding efficiency equation to determine which combinations of alkali metals achieve a synergistic combination. The ’343 and ’481 patents are both continuations-in-part of prior U.S. application Ser. No. 18,809, filed Feb. 20, 1987, now abandoned, which was a continuation of U.S. Ser. No. 640,269, filed Aug. 13, 1984, now abandoned. The “salt patents” relate to catalysts for the manufacture of ethylene oxide, especially at commercial concentrations in the presence of carbon dioxide gas recycle, which contain impregnated silver on a support having an efficiency-enhancing mixture of salts. The ’343 patent requires a cesium salt with an oxyan-ion selected from a first group of elements with at least one other alkali or alkaline metal salt that has an oxyanion from a second group of elements. The ’481 patent requires a cesium salt with an oxyanion of one of the first group of elements in combination with at least one other cesium salt. The asserted claims of the ’343 patent include independent claims 1, 25, and 41, and dependent claims 3 and 13. 1. A catalyst for the manufacture of ethylene oxide by the epoxidation of ethylene containing an impregnated silver metal on an inert, refractory solid support and an efficiency-enhancing amount, relative to the amount of silver metal, of a mixture of (i) a cesium salt of an oxyanion of an element selected from Groups 3b through 7b inclusive, of the Periodic Table of the Elements, and (ii) at least one of an alkali metal salt of lithium, sodium, potassium and rubidium and an alkaline earth metal salt, in which the anions of such salts are halides of atomic numbers of 9 to 53, inclusive, and oxyanions of elements other than the oxygen therein having an atomic number of 7 or 15 to 83, inclusive, and selected from Groups 3a to 7a, inclusive, and 3b through 7b, inclusive, of the periodic Table of the Elements. 3. The catalyst of claim 1, wherein the support is alpha alumina. 13. The catalyst of claim 3 which comprises sulfate anion. 25. A catalyst for the manufacture of ethylene oxide by the epoxidation of ethylene containing an impregnated silver metal on an inert, refractory solid support and an efficiency-enhancing amount, relative to the amount of silver metal, of a mixture of (i) a cesium salt of an oxyanion of an element selected from Groups 3b through 7b inclusive, of the Periodic Table of the Elements; and (ii) an alkali metal salt of lithium, sodium, potassium and rubidium, in which the anions of such salts are oxyanions of elements other than the oxygen therein having an atomic number of 15 or 83 and selected from Groups 3a to 7a, inclusive, and 3b through 7b, inclusive, of the Periodic Table of the Elements. 41. A catalyst suitable for the manufacture of ethylene oxide comprising an impregnated silver metal on an inert, refractory solid support and an efficiency-enhancing amount, relative to the amount of silver metal, of a mixture of (i) a cesium salt of an oxyanion of an element other than the oxygen therein selected from Groups 3b through 7b, inclusive, of the Periodic Table of the Elements; and (ii) an alkali metal salt of lithium, sodium, potassium and rubidium, in which the anions of such salts are oxyanions of elements other than the oxygen therein having an atomic number of at least 15 to 83 and being from Groups 3b to 7b; inclusive, and from 3a to 7a, inclusive of the Periodic Table of the Elements, which catalyst has been subjected to a process for making ethylene oxide by the reaction of ethylene and oxygen in which a stream comprising ethylene, oxygen, recycled carbon dioxide and a gas phase inhibitor is fed to a fixed bed of said catalyst and ethylene oxide is removed from the fixed bed of said catalyst. (’343 patent, col. 32, In. 63 — col. 33, In. 9; col. 33 Ins. 18-19; col. 33, Ins. 52-53; col. 34, Ins. 5-17; col. 34, Ins. 53 — col. 35 In. 3) The asserted claims of the ’481 patent include independent claim 1 and dependent claims 3, 4, and 28. 1. A catalyst for the manufacture of ethylene oxide by the epoxidation of ethylene containing an impregnated silver metal on an inert, refractory solid support and an efficiency-enhancing amount, relative to the amount of silver metal of a mixture of cesium salts, at least one of which is a cesium salt in which the anion thereof is an oxyanion of an element having an atomic number of 21 to 75 and being from groups 3b through 7b, inclusive, of the Periodic Table of the Elements. 3. The catalyst of claim 1 in which at least one cesium salt is a halide having an atomic number of 9 to 53 or an oxyanion of an element other than the oxygen therein having an atomic number of (i) 7 or (ii) 15 to 83 and being from groups 3a to 7a of the Periodic Table of the Elements. 4. The catalyst of claim 3 in which at least one cesium salt is cesium sulfate. 28. The catalyst of claim 1, wherein said catalyst has been subjected to a process for making ethylene oxide by the reaction of ethylene and oxygen. (’481 patent, col. 27, Ins. 48-56; col. 27 Ins. 61-68; col. 30, Ins. 21-23) B. The Accused Products Shell manufactures and sells the six accused catalysts in this litigation. The trade names are S863, S879, S880, S881, S882, and S883. The different catalysts contain different mixtures and amounts of metal promoters. For example, S880 has 33% more lithium than S879. (D.I. 351 at 668) Lithium sulfate is found in S879, S881, and S883, but not S882 or S880. (PTX 906) Nevertheless, for purposes of the infringement analysis, the accused catalysts are treated as essentially the same and, unless otherwise noted, are not distinguished in this opinion. C. Motions Made at Trial and Post-Trial At trial, Union Carbide and Shell filed a number of motions for judgment as a matter of law (“JMOLs”), on which the court reserved ruling. Union Carbide filed three JMOLs challenging the sufficiency of the evidence regarding Shell’s defenses that: (1) the ’343 and ’481 patents were anticipated by prior public knowledge; (2) Dr. Ann Lauritzen was the first inventor of the subject matter of the ’343 and ’481 patents under 35 U.S.C. § 102(g); and (3) the ’243 patent was obvious. Shell filed nine JMOLs at trial, most of which were mooted by the jury’s verdict in Shell’s favor. With respect to the three issues that Union Carbide filed pre-verdict JMOLs, Union Carbide renewed its JMOLs after trial and seeks JMOL in its favor or, in the alternative, a new trial. With respect to all other unfavorable jury findings, Union Carbide seeks a new trial based on the verdict being against the weight of the evidence. Moreover, Union Carbide moves for a new trial because Shell infected the trial with irrelevant and prejudicial arguments and evidence which produced “an irrationally lopsided and inconsistent verdict which cries out to be overturned.” (D.I. 339 at 4) Shell renewed its JMOL on the issue of inequitable conduct and filed a motion for recovery of attorneys’, fees. In response, Union Carbide filed a JMOL of no inequitable conduct. III. STANDARD OF REVIEW The court is asked to review the jury’s findings of non-infringement, lack of enablement, obviousness, priority of invention, and indefiniteness. Infringement is a question of fact. Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed.Cir.2001). Enablement, obviousness, and priority of invention are questions of law with factual underpinnings. Durel Corp. v. Osram Sylvania, Inc., 256 F.3d 1298 (Fed.Cir.2001) (enablement); Tegal Corp.v. Tokyo Electron Am., Inc., 257 F.3d 1331 (Fed.Cir.2001) (obviousness); Innovative Scuba Concepts, Inc. v. Feder Indus., Inc., 26 F.3d 1112, 1115 (Fed.Cir.1994)(priority of invention). Definiteness is strictly a question of law. Union Pac. Resources Co. v. Chesapeake Energy Co., 236 F.3d 684, 692 (Fed.Cir.2001). By its motion for entry of JMOL or, alternatively, for a new trial, Union Carbide seeks relief from an adverse jury verdict. To prevail on a renewed motion for JMOL following a jury trial, a party “ ‘must show that the jury’s findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied [by] the jury’s verdict cannot in law be supported by those findings.’ ” Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)). “‘Substantial’” evidence is such relevant evidence from the record taken as a whole as might be acceptable by a reasonable mind as adequate to support the finding under review. Perkin-Elmer Corp., 732 F.2d at 893. In assessing the sufficiency of the evidence, the court must draw all reasonable inferences from the evidence in the light most favorable to the nonmovant. See id.; Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed.Cir.1997). The appropriate inquiry is whether a reasonable jury, given the facts before it, could have arrived at the conclusion it did. See Dawn Equip. Co. v. Kentucky Farms, Inc., 140 F.3d 1009, 1014 (Fed.Cir.1998) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 975-76 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)). The court may not determine the credibility of the witnesses nor “substitute its choice for that of the jury between conflicting elements of the evidence.” Perkin-Elmer Corp., 732 F.2d at 893. Likewise, in order to promote finality after trial, as well as to preserve the historical function of the jury as the trier of facts, the court “ought to grant a new trial on the basis that the verdict was against the weight of the evidence only where a miscarriage of justice would result if the verdict were to stand.” Williamson v. Consolidated Rail Corp., 926 F.2d 1344, 1352 (3d Cir.1991). Since the jury answered only general interrogatories without any specific findings of underlying facts, the jury is presumed to have made such factual findings. Perkin-Elmer Corp. 732 F.2d at 893; Read, 970 F.2d at 821. Therefore, to set aside the jury’s verdicts regarding non-infringement, lack of enablement, obviousness, and priority of invention, Union Carbide needs to show that such presumed findings were not supported by substantial evidence. Id. Because a patent is presumed valid, the quantum of proof required at trial was clear and convincing evidence for all validity challenges. 35 U.S.C. § 282 (1994) (“A patent shall be presumed valid.”); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.Cir.1987). Thus, in its renewed JMOLs, Union Carbide needs to show that substantial evidence did not support the jury’s presumed finding that Shell had established invalidity by clear and convincing evidence. In its motions for a new trial, Union Carbide needs to show that the jury’s verdict is against the clear weight of the evidence. IV. DISCUSSION A. The ’243 Patent The jury found that Shell’s S863, S880, S881, S882, and S883 did not infringe claim 1 of the ’243 patent. The jury also found claim 1 to be invalid under theories of indefiniteness, lack of enablement, and obviousness. Union Carbide challenges each of those findings. 1. Claim Construction Prior to trial, the court issued a Markman order outlining the court’s claim construction. (D. 1.271) The court defined, among other terms, the phrase “characterizable by an efficiency equation” to mean that “the synergistic combinations are determined from the efficiency equation.” (Id. at 3-4) Union Carbide argues that (1) the court erred in its claim construction, and (2) Shell improperly argued the wrong claim construction to the jury. The plain meaning of the word “charac-terizable” means “able to be characterized or described by.” However, a review of the ’243 patent’s claims, specification, and prosecution history dictates a different definition here. See Markman, 52 F.3d at 979. The prosecution history of the ’243 patent demonstrates that in order to infringe the claims of the ’243 patent, one must use the efficiency equation to determine which combinations of promoters will provide synergy. In the application leading to the ’243 patent, one of the named applicants, Dr. Madan Bhasin, described his invention as being “directed to an improvement to commercial ethylene oxide production processes wherein a supported silver catalyst is characterized by, inter alia, having a certain amount of cesium and a certain relative amount of other alkali metal.” (JTX 7 at 94) Unlike the prior art, the application purported to be the first to recognize that “the combination of cesium with other alkali metal could synergistically enhance the efficiency of a commercial ethylene oxide catalyst.” (Id.) The examiner rejected the application as obvious in light of, among other references, U.S. Patent Nos. 4,168,247 issued to Percy Hayden et al (“Hayden ’247”); 4,212,772 issued to Wolf D. Mross et al (“Mross ’772”); and 3,962,136 issued to Robert P. Nielsen et al (“Nielsen ’136”). The examiner noted that each of those references teaches the use of cesium and other metals in silver catalysts for the production of ethylene oxide. (Id. at 140-42) With respect to the Nielsen ’136, the examiner noted that “it would be obvious to one skilled in the art to determine at least one optimum combination of cesium and potassium amounts by routine experimentation leading to a catalyst falling within the scope of the claims.” (Id. at 142) The examiner further rejected the claims as being indefinite. “The claims are directed to a process of producing ethylene oxide ... with the improvement encompassing optimum amounts of both cesium and the other alkali metal.... ” (Id. at 144) “[T]he scope of the claim is incapable of being readily determined, if at all, in the absence of undue experimentation.” (Id. at 145) In response, the applicants amended the claims to include the efficiency equation. (Id. at 168) The applicants commented: [Applicants’ discovery of this heretofore unknown synergistic effect is applicable to any ethylene oxide production system .... [Ojnce the ethylene oxide production system is defined thereby fixing the various parameters to precise values, that same ethylene oxide production system is then used to prepare a composite design set of experiments from which the ultimate Efficiency Model equation is obtained. From that equation, it is a simple matter to determine the combinations of cesium and alkali metal which will provide the synergistic effects discussed and claimed herein.... In other words, once the conditions and the parameters for the ethylene oxide production system are set, including but not limited to the specific reaction conditions, the specific catalyst support characteristics, the specific silver deposition method, etc., by virtue of the present invention, it is possible to determine (if it at all exists) a combination of cesium and alkali metal on a supported silver catalyst which will provide a synergistic efficiency. (Id. at 169-70) (emphasis added). The applicants further noted that the efficiency equation was added to the claims “such that they now contain the specific efficiency equation by which the synergistic combinations of the present invention are characterizable.... By means of the teachings of the present invention, applicants are able to precisely determine the amounts of alkali metal combinations which, if any, are able to produce such synergistic effects for any ethylene oxide production system.” (Id. at 171-72) After several more rejections, amendments, arguments, and an appeal, the claims were allowed with the efficiency equation in place. After reviewing the entire prosecution history, the court reaffirms its ruling that the claims at issue require that the synergistic combination of silver, cesium, and alkali metal in said catalyst is determined from the efficiency equation. The claims are not apparatus claims encompassing all synergistic catalysts. Rather, the claims at issue are product-by-process claims directed to synergistic catalysts with relative amounts of alkali metals which were determined from the efficiency equation. 2. Infringement The jury found that none of the Shell catalysts infringed claim 4 of the ’243 patent. Under § 271(a) of the Patent Aci, [ejxcept as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States ... during the term of the patent therefor, infringes the patent. 35 U.S.C. § 271(a). Determining infringement is a two-step process. First, the court must construe the asserted claims so as to ascertain their meaning and scope. See Kahn v. General Motors Corp. ., 135 F.3d 1472, 1476 (Fed.Cir.1998). Second, the claims as construed are compared to the accused device. See id. In order to be found infringing, each and every claim limitation must be present, either literally or by an equivalent, in the accused device. See Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 398 (Fed.Cir.1994). In the case at bar, Union Carbide had the burden of proving, by a preponderance of the evidence, that every claim limitation was met by the accused device. See Kahn, 135 F.3d at 1476. At trial, Union Carbide spun the court’s claim construction into an “after the fact” infringement test. For purposes of its infringement analysis, Union Carbide broke claim 4 of the ’243 patent into four limitations. First, the catalysts have to be used commercially for the production of ethylene oxide. Second, the catalysts have to contain both cesium and lithium. Neither of the first two elements were disputed. Third, the catalysts have to be synergistic or meet an “efficiency test” as set forth in the claim. Under this test, three catalysts are compared. The first catalyst contains an amount of both cesium and lithium. The efficiency of that first catalyst is then compared to two otherwise identical catalysts except that the second catalyst has the same amount of cesium but no lithium and the third catalyst has the same amount of lithium but no cesium. Union Carbide’s expert witness, Dr. Gary Haller, testified that he evaluated the Shell catalysts by first conducting a design set of experiments and measuring the efficiencies of ten catalysts for each of the six Shell catalysts. He then prepared two additional catalysts for each Shell catalyst which were identical to the Shell catalyst except that one had the same amount of cesium but no lithium and the other one had the same amount of lithium but no cesium. The catalysts are shown to be synergistic if the first catalyst (cesium and lithium) has an efficiency greater than either the cesium only or the lithium only catalyst. In each case, the Shell catalysts had an efficiency greater than the cesium only and lithium only catalysts. (D.I. 352 at 910-19) Thus, each of the Shell catalysts met the first three of the four limitations in the ’243 patent. When Dr. Haller reached the fourth limitation, Union Carbide began to deviate from the court’s claim construction. In describing the fourth limitation — that the catalysts be “characterizable by an efficiency equation” — Dr. Haller told the jury the claim required “that you be able to correlate the amounts of cesium and lithium with the efficiency using a particular equation form.” (D.I. 352 at 898) With respect to the Shell catalysts, Dr. Haller conducted the design set of experiments, calculated the efficiency of the each Shell catalyst, and created contour plots using the experiment results and parameters. The contour plots have lithium on one axis and cesium on the other axis. See e.g., PTX 79.07. For any combination of the two metals, the catalyst efficiency is depicted in the third dimension. Dr. Haller concluded that the Shell catalysts met the fourth limitation because each contour plot he generated using the efficiency equation showed that each one had a greater efficiency than a cesium optimized catalyst. See e.g., D .1. 352 at 926-28. Union Carbide is incorrect in its assertion that synergistic catalysts that can be modeled by an efficiency equation infringe claim 4 of the ’243 patent. Union Carbide offered no evidence at trial that Shell used an efficiency equation to determine the alkali metal combinations of its catalysts. Thus, the jury’s verdict that none of the Shell catalysts infringed the ’243 patent will be left undisturbed. 3. Validity Just as Union Carbide attempted to gloss over the efficiency equation limitation in its case-in-chief infringement analysis, Shell likewise ignored this limitation .in its invalidity analysis. The - jury found the ’243 patent to be invalid as indefinite, not enabled, and obvious. a. Definiteness The jury found that Shell had proven by clear and convincing evidence that claim 4 of the ’243 patent was indefinite. Union Carbide argues that such a finding is demonstrably unsupported and against the weight of the evidence. A patent’s claims must be sufficiently definite that one skilled in the art can determine the precise limits of the claimed invention. See generally, Union Pac. Resources, 236 F.3d at 692. Whether a claim is invalid under 35 U.S.C. § 112, ¶2, for indefiniteness is a question of law. Personalized Media Communications, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 702 (Fed.Cir.1998). The definiteness inquiry focuses on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.Cir.1986). Even if the written description does not enable the claims, the claim language itself may still be definite. In re Hyatt, 708 F.2d 712, 714-15 (Fed.Cir.1983); In re Miller, 58 C.C.P.A. 1182, 441 F.2d 689, 693 (1971) (“Breadth is not to be equated with indefiniteness_”). Shell argued at trial that claim 4 is indefinite because the efficiency equation cannot be used to determine synergistic combinations as required by the claim. Shell contends that the equation does not adequately describe the behavior of a cesium-lithium system, the math models are unreliable, and the form of the model is wrong. To support its theories, Shell introduced a report coauthored by Dr. Bha-sin that concluded that the efficiency equation was inadequate for a cesium-lithium combination. Without a working math model for a cesium-lithium catalyst, Shell argued that claim 4 is indefinite. In a 1981 project report, Dr. Bhasin described his testing of cesium-lithium catalysts named HEC-10 and HEC-10A. In the report, Dr. Bhasin wrote: The response surface of this system has been mapped fairly well within the promoter limits studied. Its complex shape has prevented the development of reliable math models. The effect of lithium on a catalyst efficiency confirms that lithium acts, with cesium (synergistically), to modify the silver surface. Additional work with these promising promoters and other mixed alkali promoter systems is continuing and will be the subject of future report. sfc Numerous attempts were made to mathematically model the steady state efficiency and temperature. The standard deviation of all models is high, forcing the conclusion that the form of the models is incorrect. Lines of constant efficiency sketched by hand in Figure 4 reveal an unsymmetrical shape that cannot be modeled by a polynomial function. (DTX 14 at U2602, U2611) Union Carbide argues that Shell’s reliance on the above experiment is misplaced. Instead of showing that the claim is indefinite, the unreliability of the cesium-lithium model for that test, at best, has to do with whether or not the claim describes an operable invention. Union Carbide cites Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870 (Fed.Cir.1993), for the proposition that a defendant’s contention that “the claims do not describe a workable invention ... is irrelevant to definiteness under § 112, P 2.” Id. at 875. Thus, if Dr. Bhasin did an experiment on a cesium-lithium catalyst that could not be characterized by the efficiency equation, then that particular catalyst fell outside the scope of claim 4. The court agrees with Union Carbide that the evidence Shell presented does not render the claim indefinite. If one cannot use the efficiency equation to determine a synergistic combination of alkali metals for a particular catalyst, then that catalyst falls outside the scope of the claim. A single experimental report showing that Union Carbide had difficulty developing the mathematical model for a particular catalyst does not amount to clear and convincing evidence that claim 4 is indefinite. In fact, it is the efficiency equation itself which makes the claim definite. By use of the efficiency equation, one can determine which combinations of alkali metals fall within the scope of the claim. Therefore, a verdict contrary to that rendered by the jury is compelled. Union Carbide’s motion for judgment as a matter of law is granted. b. Enablement The jury found that claim 4 of the ’243 patent was not enabled. To satisfy section 112 of the Patent Act, the specification must enable a person of ordinary skill in the art to make and use the full scope of the claimed invention. 35 U.S.C. § 112, ¶ 1. See generally, Union Pac. Resources, 236 F.3d at 690. For claim 4 to be enabled, the specification must teach one of skill in the art how to use the efficiency equation to determine the synergistic combinations, and must do so for the full scope of the invention. Shell relies on its same argument that the claim is indefinite for the proposition that the claim is not enabled. Shell argued at trial that Union Carbide’s internal document, DTX 14, showed that if one skilled in the art used the efficiency equation to determine the appropriate combinations of cesium and lithium, “she would get the incorrect answer.” (D.I. 335 at 27; D.I. 357 at 2218-21) Union Carbide again argues that the test Shell is referring to shows, at best, that the particular catalyst of that experiment fell outside the scope of the patent. Union Carbide challenged Shell’s expert witness, Dr. Paul J. Conn, regarding his conclusions that the patent was not enabled. Dr. Conn agreed that he “understand[s] [the ’243] patent well” and that he “understand^] the claims.” (D.I. 358 at 2510) Dr. Conn’s conclusion that the patent was not enabled was based on his reading of DTX 14, a research report dated after the filing dates of both the original and CIP applications leading to the ’243 patent. Union Carbide also presented its own evidence rebutting Shell’s lack of enablement contentions. For example, Dr. Hal-ler testified he was able to prepare and test the accused catalysts in accordance with claim 4. Union Carbide also points to the fact that the ’243 specification provides specific examples of how to prepare catalysts containing cesium and lithium. See e.g., ’243 patent, col. 22, Ins. 18-57. The court holds that the weight of the evidence does not support the verdict that claim 4 of the ’243 patent is not enabled. The appropriate inquiry is whether one of ordinary skill in the art can use the patent to make and use the full scope of the invention. Shell’s reliance on a failed experiment conducted after the filing of the patent application and its expert’s conclusion do not, as a matter of law, amount to clear and convincing evidence that the patent is not enabled. Rather than hindering attempts by those of skill in the art to practice the invention of the ’243 patent, the efficiency equation further teaches how to make and use the full scope of the claimed invention. Thus, Union Carbide’s motion for a new trial is granted. c. Obviousness The jury found that claim 4 would have been obvious at the time the invention was made to a person having ordinary skill in the art. A patent is invalid for obviousness if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103. The ultimate determination of obviousness is a question of law based on underlying factual inquiries. See Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed.Cir.1997). Those factual inquiries involve consideration of the four so-called Graham factors: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; (4) and any secondary considerations of nonobviousness, such as commercial success. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed.Cir.1996). The existence of each limitation of a claim in the prior art does not, by itself, demonstrate obviousness. Instead, there must be a “reason, suggestion, or motivation in the prior art that would lead one of ordinary skill in the art to combine the references, and that would also suggest a reasonable likelihood of success.” Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1353 (Fed.Cir.1999). “Such a suggestion or motivation may come from the references themselves, from knowledge by those skilled in the art that certain references are of special interest in a field, or even from the nature of the problem to be solved.” Id. at 1356. Shell argued at trial that claim 4 is obvious in light of Mross ’772 and Nielsen 136, both of which were before the examiner during prosecution. Shell witnesses testified that both Nielsen and Mross show synergistic combinations of metals, although they do not recognize the synergy. Shell argues further that, although these references do not teach the use of an efficiency equation and a composite design set of experiments, “the use of a composite design of experiments and a mathematical equation to characterize the relationship between various components in a multi-component system was within the knowledge of one skilled in the art when the initial application was filed.” (D.I. 335 at 49) Shell’s evidence fails for a number of reasons. First, Shell did not offer a limitation-by-limitation presentation on the Graham factors. Second, the two references do not explicitly recognize the required synergy, and Shell offered no evidence at trial other than its experts’ conclusions that the references inherently exhibit synergy. Third, neither of the two references depict the use of a design set of experiments nor the use of an efficiency equation. Although Shell witnesses testified that such techniques were well-known in the art at the time, the only evidence Shell cited to support that contention was the specification of the ’243 patent. A patent’s own disclosure cannot be used to suggest that the invention would have been obvious. See In re Dow Chem. Co., 837 F.2d 469, 473 (Fed.Cir.1988) (“There must be a reason or suggestion in the art for selecting the procedure used, other than the knowledge learned from the applicant’s disclosure.”). Each of these reasons is fatal to Shell’s obviousness defense. The court holds that Shell’s evidence fell well short of the required clear and convincing standard required. As such, the court is compelled to render a verdict inconsistent with that reached by the jury. Union Carbide’s JMOL on the issue of obviousness of claim 4 of the ’243 patent is granted. B. The ’343 and ’481 Patents The jury found that Shell’s S879, S880, S881, S882, and S883 did not infringe claims 1, 3, 13, 25, and 41 of the ’343 patent nor claims 1, 3, 4, and 28 of the ’481 patent. The jury further found the asserted claims to be invalid under theories of lack of enablement, anticipation, priority of invention, and obviousness. Union Carbide challenges each of those findings. 1. Claim Construction Prior to trial, the court only defined one disputed claim term — “salt.” The court defined salt as, “a compound that contains a positively charged component (cation) and a negatively charged component (anion), other than a hydrogen or hydroxyl ion, and is not an oxide.” (D.I. 360 at 3319-20) Although the parties asked the court throughout trial to further refine the definition, neither party is challenging the final claim construction. For purposes of simplification, the claims of the ’343 and ’481 patents can be broken into a few limitations. Claim 1 of the ’343 patent, the broadest claim, requires a catalyst that contains an efficiency-enhancing amount of (1) a cesium ox-yanion salt and (2) an alkali metal salt. Claim 1 of the ’481 patent, the broadest claim, requires a catalyst that contains an efficiency-enhancing amount of at least two cesium salts wherein at least one of the cesium salts has an anion selected from a particular group of elements. 2. Infringement The jury found that none of the Shell catalysts infringed the asserted claims of the ’343 or ’481 patents. At trial, Shell argued that Union Carbide failed to prove the “efficiency-enhancing limitation” of both patents. Shell claimed that Union Carbide only offered evidence showing that the catalysts themselves provided an improved efficiency and not that the specified salts themselves were efficiency-enhancing. Union Carbide argues that Shell deviated from the parties’ agreed upon claim construction by articulating its “efficiency-enhancing argument.” The court had not construed the “efficiency-enhancing” limitation in its Mark-man orders. During claim construction briefing, Union Carbide suggested that the phrase, “an efficiency-enhancing amount, relative to the amount of silver metal, of a mixture of ...” meant “an amount sufficient to provide an efficiency greater than that of a silver-only catalyst (containing the same weight-percent silver), prepared on the same support.” (D.I. 196 at 11) Union Carbide continued: “In other words, to determine whether one has an efficiency-enhancing amount, relative to the amount of the claimed mixture, one must compare the efficiency of the catalyst with the base value efficiency of a comparable silver-only catalyst.” (Id at 12) Shell did not propose a definition of that term in its opening claim construction brief. (D.I.187) In its reply to Union Carbide’s definition, Shell replied that Union Carbide “presents a completely rewritten construction of the language ‘an efficiency-enhancing amount, relative to the amount of silver metal of ... ’ found in the claims of the ’343 and ’481 patents. [Union Carbide’s] construction, however, is unnecessary as the quoted language contains no terms of disputed meaning. In any event, Shell agrees with [Union Carbide’s] interpretation that ‘one must compare the efficiency of the catalyst with a base value efficiency of a comparable silver-only catalyst ... so long as the testing of the catalyst efficiencies is conducted under the same conditions.’ ” (D.I. 200 at 11) Thus, the court did not propose its own definition of the term. Shell argued at trial that Union Carbide failed to prove that the salts of the claims were on the accused catalysts for the purpose of enhancing efficiency. For example, Dr. Haller admitted on cross examination that he did not know which specific mixtures of cations and anions caused enhancement or exactly how the ethylene oxidation is occurring on the catalyst. (D.I. 353 at 1186, 1190) Dr. Richard Kemp, a former research scientist in Shell’s ethylene oxide area and current Union Carbide employee, testified that the enhanced efficiency may be caused by a number of factors. Q. So on the surface of the catalyst it is an unanswered question whether the cesium is associated with the silver, and whether the rhenium is associated with the silver, or some other unanswered question? A. As far as I know, that is correct. Q. To the best of your knowledge, that is still a mystery of science? A. The exact role and relationship between all the different components of the EO catalysts, is still a mystery. (D.I. 352 at 735-36) Union Carbide argues that Shell’s arguments are irrelevant to the infringement analysis. Union Carbide contends that the parties’ “agreed upon claim construction” merely requires a comparison of “the efficiency of the catalyst with a base value efficiency of a comparable silver-only catalyst.” (D.I. 316 at 66) The claims, however, specifically require “an efficiency-enhancing amount ... of a mixture of ... salt[s].” The salts themselves, therefore, must be efficiency-enhancing. Although Union Carbide presented evidence that the salts are, in fact, efficiency-enhancing, the jury’s finding that the Shell catalysts did not infringe was not against the clear weight of the evidence. Thus, Union Carbide’s motion for a new trial on this issue is denied. 3. Validity The jury found each claim of the asserted claims of the ’343 and ’481 patents to be invalid for lack of enablement, anticipation by prior public knowledge or use, prior invention by another, and obviousness. For the reasons set forth below, the court is compelled to enter a verdict contrary to the one reached by the jury. a. Enablement The ’343 and ’481 patents were continuations of patent applications filed in 1984. The ’343 patent claims a catalyst containing a mixture of a(l) cesium salt with an oxyanion of one of twenty-nine different elements (including rhenium) and (2) at least one other alkali or alkaline earth metal salt that has an oxyanion selected from a certain list of elements. The ’481 patent is similar, but it requires two cesium salts. Shell argued at trial that Union Carbide did not know how to make a rhenium catalyst at the time of the patent application. In support of its theory, Shell presented evidence that on May 18, 1982, Union Carbide tried but failed to make a rhenium catalyst for testing. (PTX 85 at U 0122494) Shell claimed that Union Carbide’s first successful experiment with a rhenium catalyst came in 1988, shortly after Union Carbide scientists received a copy of a European patent application filed by a Shell employee, Dr. Ann Lauritzen. (DTX 65) That application referred to a composition containing silver, a support, rhenium, and at least one other metal. Union Carbide, in fact, had received a copy of the Lauritzen European patent application and discussed it at a technology review meeting. (DTX 69) Shortly thereafter, Union Carbide began doing more rhenium experiments. Shell argued to the jury that Union Carbide did not know how to make a rhenium catalyst until Union Carbide copied Dr. Lauritzen’s work. (D.I. 357 2341-48) Shell’s theory of lack of enablement fails as a matter of law. The appropriate en-ablement inquiry involves looking at the specification and determining whether one of ordinary skill in the art would be able to practice the full scope of the invention. In support of its theory that the inventors themselves were unable to make and use a rhenium catalyst, Shell pointed to one of Dr. Bhasin’s notebooks showing a failed rhenium experiment. Upon closer inspection of that test, however, one finds that the failed experiment was for a catalyst that fell outside the scope of the claims. The claims of both the ’343 and ’481 patents require a cesium salt. The rhenium experiment found in PTX 65 involved a silver, lithium, and rhenium catalyst. Failing to make a lithium-rhenium catalyst does not amount to clear and convincing evidence that the specification does not teach one of skill in the art how to make and use a cesium-rhenium catalyst. Likewise, proving that Union Carbide conducted experiments based on tables found in a competitor’s patent does nothing to answer the question of whether the specification of the patent enables one of skill in the art to make and use the invention. Union Carbide presented significant evidence that the ’343 and ’481 patents were enabled. The patents contain numerous examples of the claimed catalysts and describe in detail how to prepare them. See, e.g., ’343 patent, col 25, In. 8 — col. 32, In. 61; ’481 patent, col 23, In. 26 — col. 28, In. 47. In fact, the ’481 patent contains specific examples of rhenium catalysts and the method used to prepare them. See ’481 patent, col. 26, In. 29 — col. 28, In. 47 (listing NH4Re04 as an anion addition). Moreover, Shell’s expert admitted on cross-examination that the ’481 patent was enabled. Q. Yesterday you talked about rhenium, do you remember that? A. Yes, I’m sure I did since that’s a component of the high selectivity catalyst. Q. If you would turn to Column 25— 26 of the ’481 patent. Isn’t it true if you look at Examples 11 and 12, you have rhenium examples in this patent? A. Yes, that’s true. Q. So this patent tells you how to make cesium-containing catalysts; is that correct? A. Yes. (D.I. 358 at 2562) The court concludes that the weight of the evidence does not support the verdict that the ’343 and ’481 patents are not enabled. Union Carbide’s motion for a new trial on this issue is granted. b. Anticipated by Prior Public Knowledge or Use The jury answered all interrogatories in favor of Shell when asked whether Shell had “proven by clear and convincing evidence that the invention described in any asserted claim was anticipated by pri- or public knowledge or use.” As set forth in the court’s charge to the jury, Shell made three contentions with regard to this interrogatory. Shell argued that (1) the ’343 and ’481 patents are anticipated by U.S. Patent 4,007,135 (“Hayden”); (2) all asserted claims of the ’343 patent except claim 13 and all asserted claims of the ’481 patent except claim 4 are anticipated by Japanese Patent Laying Open 56-10750 (“Kokai”); and (3) the inventions of the ’343 and ’481 patents are anticipated by Shell’s commercial use of S879 catalyst more than one year prior to the effective filing dates of the patents. Since the court does not know which of the three theories the jury adopted, the court will discuss each contention separately. i. Anticipation by Hayden A claim is anticipated if each and every limitation is found either expressly or inherently in a single prior art reference. Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed.Cir.1998); see also PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566 (Fed.Cir.1996); Scripps Clinic & Research Found., 927 F.2d at 1576. “There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Id. at 1576. Thus, the factual inquiry relevant to the anticipation analysis is whether a single prior art reference discloses every limitation of the challenged claim and enables one skilled in the art to make the anticipatory subject matter. See, e.g., PPG Indus., 75 F.3d at 1566. As with each of the invalidity defenses, Shell had to present clear and convincing evidence that every limitation in the ’343 and ’481 patents are found in Hayden. The following exchange between Shell’s counsel and Dr. Conn encompassed the entire testimony on the issue of anticipation. Q. All right. Let me hand you a copy of Defendants’ Trial Exhibit 528, please, sir. What is it? A. This is U.S. Patent 4,007,135 to Hayden, et al. Q. What’s the date of the document? A. It’s February 8th, 1977 it issued. Q. Is this a document that came out of the Union Carbide files? A. Yes. It has a Union Carbide production number. Q. In the top right-hand corner, does it have Dr. Bhasin’s name? A. Yes, it does. Q. Have you reviewed the disclosure of the Hayden ’135? A. Yes, I have. Q. Can you look on the front of it and tell us when it was filed? A. It was filed November 22nd, 1974. Q. If you would turn back to the claims, please, and tell us what this patent discloses in the way of cations and-anions for the use of ethylene oxide catalysts? A. In terms of the cations, it claims the use of sodium, potassium, cesium and rubidium. And in terms of what you would characterize as anions, it lists, among other things, the elements tungsten, chromium, magnesium — sorry, not magnesium, tungsten, molybdenum, that falls within that oxyanion category. Q. Are those elements that would be contained within the claims of the ’343 and ’481 patents? A. Yes, they are. Q. What is the date of the Hayden ’135? A. The date it issued? Q. Yes. A. February 8th, 1977. Q. Do you have an opinion as to whether or not the ’343, and ’481 patent are anticipated by the Hayden '135 patent? A. Yes, I do. Q. What is that opinion? A. That my opinion is that the claims are anticipated by the ’135 patent. Q. Would the claims of the ’135 and ’481 patent be obvious in light of the Hayden ’135? A. Did you say the ’343 and ’481 patent? Q. Yes. A. Yes. They would be. Q. What does Hayden teach? What’s the subject of the Hayden patent? A. The Hayden patent teaches mixtures of alkali metals with a variety of other components, including molybdenum and tungsten oxyanions for on of EO catalysts. (D.I. 357 at 2352-54) Shell’s evidence that Hayden anticipates the claims of the ’343 and ’481 patents fall well short of the required clear and convincing standard. Shell merely pointed out that the invention in both Hayden and the patents-in-suit are comprised of many of the same elements. An appropriate anticipation analysis would require that Shell present evidence that every limitation of the claims corresponded to an element of the Hayden reference. Shell did not do that. Thus, of the possible ways that the jury could have concluded that the claims at issue were anticipated by prior knowledge or use, anticipation by Hayden could not have been one of them. ii. Anticipation by Kokai As with the Hayden reference, Shell’s presentation on Kokai did not rise to the level required to invalidate the claims based on anticipation. Shell’s counsel had the following exchange with Dr. Conn. Q. I want to direct your attention to not just those first six experiments, but to the disclosure that is contained in the Japanese patent application, and the Japanese, complete translation of the Japanese patent. A. Yes. Q. Have you reviewed the disclosures in the Japanese patent? A. Yes, I have. Q. Have you compared those disclosures to the elements of each of the claims of the ’343 and the ’481 patents? A. Yes, I have. Q. I’m going to ask you, have you reached any opinion concerning whether or not the Japanese patents claim, what is contained in some of the claims of the ’343, ’481 patents, have you reached those opinions? A. Yes. They did claim some of the elements of it. Q. All right. Do you have an opinion as to whether the claims of the ’343, 1, 3, 25, 41, claims that are in issue in the case, are anticipated by the Japanese patent? A. Yes, I do. Q. What does anticipated mean? A. It means that the catalysts that are claimed were present in the prior literature. Q. All right. Do you have an opinion whether the claims of the ’481, 1, 3, and 28, were anticipated by the Japanese patent described in exhibit — Defendants’ Trial Exhibit 126? A. Yes, I do. Q. And what is that opinion? A. That they are anticipated. Q. With respect to Claim 13 of the ’343, do you have an opinion whether or not that would have been obvious to those skilled in the art from reading the Japanese patent? A. Yes. Q. And what is that opinion? A. That is that it would be obvious to one skilled in the art. The patent itself does not describe the use of sulfate, but it was well-known at the time, and also it was — in oi’der to prepare catalysts with the combinations of alkali metals and the molybdenum, or tungsten, or the other oxyanions, it’s necessary to find soluble salts of the alkali metals to combine with what are generally the anions in other forms that are readily commercially available. And sulfates are one of those forms that are commonly cited as innocuous or desirable to use. Q. Did you review Dr. Bhasin’s U.K. patent 2,043,481 and does it disclose the use of sulfates? A. Yes, it does. It discloses sulfates as a soluble salt to use. Q. What about the Hayden patent? A. Yes, Hayden describes the use of alkali sulfates as well as sulfates. Q. Are those patents readily available? A. Yes, they were. Q. Were sulfates commonly used? A. Yes, they are. Q. I’ve asked you now about some of the claims with respect to anticipation, one from each of the patents with respect to obvious[ness]. I need to now ask you a combined question. Have you formed an opinion whether or not the claims of the ’343 patent, 1, 3, 13, 25, 41, are all obvious in view of the prior art? A. Yes. Q. With respect to obviousness, I failed to ask you about Claim 4 of the ’481 patent. Have you formed an opinion as to whether or not Claim 4 of the ’481 patent, as you did with respect to Claim 13 in the ’343 patent, would be obvious to those skilled in the art over the Japanese patent? A. Yes. Q. And what is that opinion? A. That it’s obvious. Q. All right. With respect to all of the claims of the ’481, have you formed an opinion as to whether or not they would be obvious to one skilled in the art in view of the Japanese patent? A. Yes. Q. And why? What is it about the Japanese patent that would make it obvious? A. That combinations of alkali metals in combination with oxyanions are well-known in the Japanese patent. Q. All right. Does it in there disclose alkali metal complex compounds of molybdenum, tungsten and boron? A. Yes, it does. And it — also, it describes, in addition, the mixtures of different alkali metals, and it describes the mixtures of different oxyanions, so that it covers both patents. Q. All right. Does it give an explanation for why it suggests mixing the alkali metal? A. Yes, it has — it discusses the desirability of different of the alkali metals for different purposes. Some are for efficiency, some for stability, some for activity. Q. Let’s take it a step at a time. Did it refer, first, to the cesium? A. Yes. Q. All right. And why did it suggest using cesium? A. Because, in general, it gives the higher efficiency. Q. Something that’s— A. Not too surprising, is it? Q. All right. Did it also suggest the use of the potassium? A. Yes, it did. Q. And for what reason? A. It cited potassium for the standpoint of stability. Q. What does that mean? A. Lasting longer. % # * sj< 4s * Q. Look at Page 11. What conclusion was drawn about the use of mixtures? A. The conclusion is after this discussion that I mentioned of the advantages for lifetime or activity, from the foregoing, it is preferred to use the potassium, rubidium and cesium complex compounds in combination. That’s mixtures. Q. All right. And it’s not just describing them, it’s saying they’re preferred? A. They’re preferred, yes. * % í¡« * # * Q. What is the analogy between that and the use of cesium and lithium? A. Well, as I mentioned several times, and Dr. Lauritzen mentioned, the reason that lithium is used in combination with cesium is for lifetime. Cesium is used for the efficiency and lithium for lifetime. Q. All right. I’m going to move past the Japanese patent now. (D.I. 357 at 2330-36) At no time did Shell identify the limitations in the claims and then point to corresponding elements in the Kokai reference. Without, at minimum, correlating limitations and elements, a defendant cannot meet his clear and convincing standard. See e.g., Jamesbury Corp. v. Litton Indus. Prod., Inc., 756 F.2d 1556, 1563 (Fed.Cir.1985)(unsupported testimony of expert is insufficient to overcome the presumption o