Jeneric/Pentron, Inc. v. Dillon Co. (171 F. Supp. 2d 49, 2001)

Ruling on Cross Motions for Summary Judgment

ELLEN B. BURNS, Senior District Judge.

Plaintiff Jeneric/Pentron, Inc. (“Jeneric”) brought this patent infringement action against Defendants Dillon Company, Inc. (“Dillon”), Chemichl, Inc. (“Chem-ichl”), and Chemichl AG (“Chemichl AG”), pursuant to 35 U.S.C. § 271 (1998), alleging that Defendants sell two products that infringe United States Patent No. 5,653,-791 entitled “Two-Phase Dental Porcelain Composition” (“ ’791 Patent”) and United States Patent No. 5,944,884 entitled “Dental Porcelain Composition” (“ ’884 Patent”). Jeneric seeks an injunction, damages, and attorney’s fees as remedies. In turn, Dillon and Chemichl have asserted federal and state counterclaims against Jeneric. This ruling addresses Defendants’ Combined Motions for Summary Judgment [doc. no. 84], and Plaintiffs Cross Motion for Partial Summary Judgment [doc. no. 92], For the reasons that follow, Defendants’ combined motions are granted in part and denied in part, and Plaintiffs cross motion is denied.

I. BACKGROUND

A. Parties and Competing Products

Plaintiff manufactures dental materials and related oven equipment, which it markets to dentists and dental technicians for the construction of dental restorations such as inlays, crowns, and bridges. Plaintiff is the owner by assignment of the ’791 and ’884 patents. Inventors Carli-no Panzera and Lisa Kaiser filed the ’791 Patent application on March 12, 1996, and the ’884 Patent application on May 28, 1998. The United States Patent and Trademark Office (PTO) issued the ’791 Patent on August 5, 1997 and issued the ’884 Patent on August 31,1999.

Both patents relate to dental porcelain compositions, which have specified ingredients and which exhibit certain properties. Porcelain is a type of ceramic material, which has a crystalline phase and a glass phase. Ceramics prove useful in dental restorations because they can be colored to resemble teeth and they resist degradation inside the oral cavity. The ’791 and ’884 patents both teach a two-phase porcelain composition, which comprises a leucite crystallite phase disbursed in a glass phase. According to Plaintiff, the critical feature of both patents is that they direct a composition where the leucite crystals in a completed dental restoration must all be smaller than 10 microns. Indeed, both patents provide that “[i]t is essential to the practice of the present invention that the leucite crystallites present in the two-phase porcelain composition herein possess diameters not exceeding about 10 microns.” (’791 Patent, col. 2, lines 48-50; ’884 Patent, col. 2, lines 54-57.) This has the effect of reducing abrasive wear against natural teeth and discomfort inside the mouth. (Id.)

Defendants Dillon, based in Rhode Island, and Chemichl, based in Washington, sell two dental porcelain products used in conjunction with each other that Plaintiff accuses of infringing both the ’791 and the ’884 patents. The first product, known as Cerpress SL (“Cerpress”), constitutes a ceramic pellet used as a core or base material in a dental restoration. The second product, known as Sensation SL (“Sensation”), is applied over the Cerpress core to form a complete dental implant. Dillon and Chemichl import Cerpress and Sensation into the United States from Chem-ichl’s parent company, Chemichl AG of the Country of Liechtenstein. Dillon then resells the two products to dental technicians and dentists for the construction of dental restorations.

B. Procedural Background

Plaintiffs first action charges Defendants with infringement of the ’791 Patent, asserting that Sensation literally infringes claims 1 and 2, and that Cerpress infringes claim 1 under the doctrine of equivalents. [Doc. 3:98cv818(EBB) ] As relief, Plaintiff seeks an injunction pursuant to 35 U.S.C. § 283, treble damages pursuant to 35 U.S.C. § 284, and reasonable attorney’s fees and costs under 35 U.S.C. § 285. Defendants respond with the affirmative defenses that Sensation and Cerpress do not infringe any claim of the ’791 Patent, that each claim of the ’791 Patent is invalid and void, and that the ’791 Patent is unenforceable.

In addition, Dillon has asserted the following counterclaims against Jeneric: (1) tortious interference with contractual relations; (2) tortious interference with business relations; (3) violation of the Connecticut Unfair Trade Practices Act, Conn. Gen.Stat. §§ 42-110a et seq.; and (4) wrongful attempt to monopolize in violation of Section 2 of the Sherman Antitrust Act, 15 U.S.C. § 2 (1998). To this end, Dillon seeks a declaratory judgment of noninfringement, a declaratory judgment that the ’791 Patent is invalid, treble damages, punitive damages, and attorney’s fees and costs. Jeneric responds to the counterclaims by arguing that Dillon failed to state a claim upon which relief can be granted, that the counterclaims are unduly vague, and that Dillon is guilty of unclean hands.

On June 26, 1998, Plaintiff moved for a preliminary injunction, seeking to enjoin Defendants from making, using, selling, offering to sell, or importing the two accused products into the United States. Pursuant to this motion, the Court held a three-day hearing where the parties presented oral testimony and over 500 exhibits. On February 3, 1999, the Court denied Plaintiffs preliminary injunction motion on the ground that it failed to demonstrate a reasonable likelihood of success in proving that either Sensation or Cerpress infringed the ’791 Patent. See Jeneric/Pentron, Inc. v. Dillon Co., No. 3:98cv818(EBB), 1999 WL 66537 (D.Conn. Feb. 3, 1999). On March 20, 2000, the Federal Circuit affirmed this Court’s decision. See Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377 (Fed.Cir.2000).

During the pendency of the preliminary injunction proceedings and its appeal, Plaintiff prosecuted the application that ultimately issued as the ’884 Patent. This application was filed on May 28, 1998, four weeks after Plaintiff initiated the ’791 Patent infringement action. The PTO issued the ’884 Patent on August 31, 1999, and on September 9, 1999, Plaintiff filed a second action against Defendants for infringement of the ’884 Patent. [Doc. No. 3:99cvl775(EBB) ] Defendants deny the allegations and filed counterclaims against Plaintiff for 1) a declaratory judgment regarding the relative rights of the parties with respect to infringement of the ’884 Patent; 2) fraudulent procurement of the ’884 Patent; 3) “attempt to monopolize,” in violation of the Sherman Act, 15 U.S.C. § 2; 4) unfair competition under Connecticut Common law; and 5) unfair practices in violation of CUTPA.

Under the first action, Defendants had filed two motions for partial summary judgment. On April 7, 2000, following a conference in Chambers, this Court consolidated the two actions. Defendants then withdrew their pending motions for summary judgment without prejudice in order to refile the motions directed at both the ’791 and the ’884 Patents. In a letter dated May 2, 2000, Plaintiff identified its asserted claims. Plaintiff now asserts claim 1 of the ’791 Patent against Cerpress under the doctrine of equivalents, and asserts claims 1-8, 13-15 and 18 of the ’884 Patent against both Cerpress and Sensation. Defendants’ Combined Motions for Summary Judgment and Plaintiffs Cross Motion for Summary Judgment are before the Court.

II. SUMMARY JUDGMENT

A motion for summary judgment will be granted when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c); see also Anderson v. Liberty Lobby, 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party carries the burden of showing the absence of any genuine issue of material fact. Fed.R.Civ.P. 56. The court must “resolve all ambiguities and draw all inferences in favor of the nonmov-ing party....” Aldrich v. Randolph Cent. Sch. Dist., 963 F.2d 520, 523 (2d Cir.).

“[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact. As to materiality, the substantive law will identify which facts are material. Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted.” Anderson, 477 U.S. at 247-48, 106 S.Ct. 2505 (emphasis in original).

In addition, if the nonmoving party has failed to make a sufficient showing on an essential element of his case with respect to which he has the burden of proof at trial, then summary judgment is appropriate. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). “In such a situation, there can be ‘no genuine issue as to any material fact,’ since a complete failure of proof concerning an essential element of the nonmoving party’s case necessarily renders all other facts immaterial.” Id. at 322-23, 106 S.Ct. 2548; accord Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d. Cir.1995) (movant’s burden satisfied if it can point to an absence of evidence to support an essential element of nonmoving party’s claim).

In a patent infringement case, summary judgment is appropriate when it is apparent that only one conclusion as to infringement could be reached by a reasonable jury. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 540 (Fed.Cir.1998). Summary judgment of noninfringement is appropriate where the patent owner’s proof is deficient in meeting an essential part of the legal standard for infringement, since such failure will render all other facts immaterial. See London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537 (Fed.Cir.1991). “The purpose of summary judgment is not to deprive a litigant of trial, but to avoid an unnecessary trial when only one outcome can ensue. The court’s construction of the claims may lead to summary disposition of the issue of infringement when no material facts remain in dispute, or when the nonmovant can not prevail on its own view of the facts.” Vivid Tech., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 806 (Fed.Cir.1999) (citing Voice Techs. Group, Inc. v. VMC Sys., Inc. 164 F.3d 605, 612 (Fed.Cir.1999)).

On cross-motions for summary judgment, “[e]ach party carries the burden on its own motion to show entitlement to judgment as a matter of law after demonstrating the absence of any genuine disputes over material facts.” Massey v. Del Labs., Inc. 118 F.3d 1568, 1573 (Fed.Cir.1997). The party seeking summary judgment always bears the initial burden of establishing the absence of a genuine issue of material fact and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The burden then shifts, and “the nonmoving party [must] go beyond the pleading and by her own affidavits, or by the ‘depositions, answers to interrogatories, and admissions on file,’ designate ‘specific facts showing that there is a genuine issue for trial.’ ” Glaverbel Societe Anonyme & Fosbel, Inc. v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1560-61 (Fed.Cir.1995) (quoting Celotex, 477 U.S. at 324, 106 S.Ct. 2548). Broad conclusory statements by the nonmoving party and/or its experts on the ultimate issue of infringement, however, are insufficient to create a genuine issue of material fact and defeat summary judgment. See Arthur A. Collins, Inc. v. Northern Telecom, Ltd., 216 F.3d 1042, 1046 (2000); Capital Imaging v. Mohawk Valley Medical Assoc., 996 F.2d 537, 542 (2d Cir.1993) (“Non-moving party [must] produce probative evidence [and] must do more than simply show that there is some metaphysical doubt as to the material facts.” (quotations omitted)); W.L. Gore & Assoc. v. Garlock, Inc., 842 F.2d 1275, 1280 (Fed.Cir.1988) (“Where the evidence of infringement consists merely of one expert’s opinion, without supporting tests or data, the district court is under no obligation to accept it.”).

III. STATEMENT OF FACTS

The following undisputed facts are culled from the parties’ Local Rule 9(c) Statements, and the exhibits attached to their respective motions. The Court sets forth only those facts deemed necessary to an understanding of the issues raised in, and decision rendered on, these motions.

The ’791 Patent issued on August 5, 1997 from an application filed on March 12, 1996. Claim 1 of the ’791 Patent reads as follows:

1. A two-phase porcelain composition comprising a leucite crystallite phase dispersed in a feldspathic glass matrix, a maturing temperature of from about 750° to about 1050 °C. and a coefficient of thermal expansion of from about 12x10 -C/°C. to about 17.5x10 /°C. (room temperature to 450°C.), said porcelain composition comprising:

Component Amount (wt.%)

Si02 57-66

AI2O3 7-15

K20 7-15

Na20 7-12

Li20 0.5-3

CaO 0-3

MgO 0-7

F 0-4

Ce02 0-1

wherein the leucite crystallites possess diameters not exceeding about 10 microns and represent from about 5 to about 65 weight percent of the two-phase porcelain composition.

(’791 Patent, col. 6, lines 11-32.) The ’884 Patent issued on August 31, 1999 from an application filed on May 28, 1998. Claim 1 of the ’884 Patent reads as follows:

1. A porcelain composition comprising a leucite crystallite phase and a glass matrix phase, the leucite crystallites possessing diameters not exceeding about 10 microns and representing from about 5 to about 65 weight percent of the porcelain composition, and wherein the porcelain composition comprises:

Component_Amount (wt.%)

Si02 58-65

A1203 7-15

K20 7-15

Na20 7-12

Li20_01V3

(’884 Patent, col. 6, lines 20-34.)

The ’884 Patent application is a “child” application that is a continuation of a “parent” application which was a division of a “grandparent” application that matured into the ’791 Patent. Under 35 U.S.C. § 120, patents related in these ways are entitled to the benefit of the first application date. Therefore, the ’884 Patent is accorded the benefit of the ’791 Patent’s March 12,1996 filing date.

Due to the abundance of facts and diversity of arguments at bar, the remaining facts will be discussed as they arise in relation to specific arguments. All facts recited herein are undisputed unless otherwise indicated.

IV. DISCUSSION

Defendants’ seek summary judgment, requesting a declaration of noninfringement and a ruling that 1) the asserted claims of the ’791 and ’884 patents are invalid because they are “anticipated” under 35 U.S.C. § 102(b) by the issuance of United States Patent No. 4,604,366 (“ ’366 Patent”) in 1986; 2) that the asserted claims of the ’884 Patent are invalid because they are “anticipated” by Defendant Chemichl Ag’s LF-l-PFM composition which was “on sale” under 35 U.S.C. § 102(b) in the United States more than one year prior to the application date of the patents at issue; 3) that Cerpress does not infringe any asserted claim; and 4) that the ’884 Patent is unenforceable because Plaintiff perpetrated a fraud on the PTO. In response, Plaintiff opposes Defendants’ combined motions for summary judgment, raising material issues of disputed facts, and cross moves for partial summary judgment on infringement of the ’884 Patent by the Sensation product.

Any determination of patent infringement requires a two-step analysis. First, courts must construe the asserted claims of the patent to determine then-proper scope and meaning. See Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443 (Fed.Cir.1997); Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576 (Fed.Cir.1993). Claim construction is a question of law for the court. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Second, courts must determine whether the properly construed claims read onto the accused structure. See General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 981 (Fed.Cir.1997). Whether the accused device contains an element corresponding to each claim limitation, or its equivalent, is a question of fact for trial. See id.

A. Claim Construction

A patent does not protect everything it describes, but rather only the innovations set forth in its claims, which provide the metes and bounds of the invention. The claims of a patent, as distinguished from the specification and drawings, define the invention protected by the patent. See Smith v. Snow, 294 U.S. 1, 11, 55 S.Ct. 279, 79 L.Ed. 721 (1935); Novo Nordisk v. Genentech, Inc., 77 F.3d 1364, 1369 (Fed.Cir.1996). Courts may consult both intrinsic and extrinsic evidence as aids in construing patent claims. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Intrinsic evidence consists of the patent itself, the claim or claims at issue, the specification, and the prosecution history. See id. Extrinsic evidence includes expert testimony, inventor testimony, dictionaries, technical treatises, and prior art not cited in the prosecution history. See Markman, 52 F.3d at 980.

Under established rules of claim construction, intrinsic evidence of a patent constitutes “the most significant source of the legally operative meaning of disputed claim language.” Vitronics, 90 F.3d at 1582. The claims, specification, and prosecution history constitute the public record of a patentee’s claim, upon which competitors may rely. See Markman, 52 F.3d at 978-79. Allowing a clearly drafted claim to be altered by extrinsic evidence would destroy the rights of competitors to rely on the public record and design around the claimed invention. See Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed.Cir.1995). Thus, reliance upon extrinsic evidence is improper where the intrinsic evidence unambiguously describes the scope of the patented invention. See Markman, 52 F.3d at 978-79, 986; Bell & Howell, 132 F.3d at 705-06.

In construing patent claims, a court must first consider the words of the claims themselves, both asserted and unasserted. See Vitronics, 90 F.3d at 1582-83. These words generally should be given their customary and ordinary meaning to one of skill in the art. See Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed.Cir.1996). Next, a court must review the patent specification to determine if the inventor used any terms in a manner inconsistent with their ordinary meaning. See Vitronics, 90 F.3d at 1582. The specification contains a description of the invention, and the manner and process for making and using it in such full, clear, and exact terms as to enable any person skilled in the art to make and use it. See 35 U.S.C. § 112. In addition, the specification must explain the best mode or preferred embodiment for carrying out the invention, see id., and thus can serve as a dictionary for defining terms in the claims. See Markman, 52 F.3d at 979.

Courts also may examine the prosecution history of the patent, if in evidence. See Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The prosecution history includes a “complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims.” Vitronics, 90 F.3d at 1582. Extrinsic evidence such as expert testimony, inventor testimony, dictionaries, technical treatises, and prior art provides a final source for claim interpretation when needed to explain scientific principles, technical terms, and terms of art. See U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 678, 62 S.Ct. 839, 86 L.Ed. 1105 (1942); Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir.1995).

Claims can either be independent or dependent. An independent claim does not refer to any other claim of the patent and is read separately to determine its scope. A dependent claim refers to at least one other claim in the patent, includes all of the limitations of the claim to which it refers, and specifies a further limitation on that claim. See Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989); 35 U.S.C. 112. By definition, a dependent claim must be narrower than the independent claim upon which it relies. See Quantum, 65 F.3d at 1579. One may infringe an independent claim and not infringe a claim dependent upon that claim. The reverse is not true. One who does not infringe an independent claim cannot infringe a claim dependent on, and thus containing all the limitations of, that claim. See Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed.Cir.1994). In other words, “the dependent claim tail cannot wag the independent claim dog.” North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1577 (Fed.Cir.1993).

1. Prior Claim Construction of the ’791 Patent

In the context of ruling on Plaintiffs preliminary injunction motion, this Court construed claims 1 and 2 of the ’791 Patent. Plaintiff argued that the elements comprising claims 1 and 2 were not limited to the weight percentage ranges set forth therein. The Court rejected Plaintiffs proposed construction and construed claim 1

as being limited to the exact weight percentage ranges for its chemical components. The proper construction of claim 1 reveals that there must be a maximum of 1% of CeO sub2 and 15% of Al sub2 0 sub3 in the composition of the accused devices in order to find literal infringement.

Jeneric/Pentron, 1999 WL 66537 at *11. The Court also found that claim l’s precise weight percentage may not be modified by claim 2, because claim 2 is in dependent form. See id. at *10-*11.

Based on this construction, the Court denied Plaintiffs request for a preliminary injunction, finding that Plaintiff had

faded to demonstrate a reasonable likelihood of success in proving that Sensation literally infringes claims 1 and 2 of the ’791 patent. Sensation does not literally infringe because it contains 1.61% of CeO sub2, whereas claim 1 unambiguously specifies a range of 0-1% for this element.

Id. at *14. In regal’d to infringement by Cerpress, the Court found that “Jeneric has not demonstrated a reasonable likelihood of success in proving that Cerpress infringes claim 1 of the ’791 patent under the doctrine of equivalents,” because while it invoked the doctrine of equivalents in regard to lithium oxide, it did not assert the doctrine with respect to aluminum oxide, a second element whose weight percentage, tested at 15.97%, fell outside the specified range claimed in the ’791 Patent. Id.

On appeal, the Federal Circuit agreed that, “the claim language indicates that the invention’s chemical components should be limited to the precise ranges set forth therein,” and upheld this Court’s construction of the ’791 Patent. Jeneric/Pentron, Inc. v. Dillon Co., Inc., 205 F.3d 1377, 1381-82 (Fed.Cir.2000). In regard to the application of the construed claim to the accused devices, the Federal Circuit agreed with this Court’s determination that because Sensation contains 1.61% of cerium oxide (Ce02), and claim 1 limits the range to 0-1%, Jeneric did not show a reasonable likelihood of success on literal infringement by Sensation. See id. at 1382-83.

In regard to whether Cerpress infringes on claim 1 of the ’791 Patent under the doctrine of equivalents, the Federal Circuit upheld this Court’s determination that Jeneric had not demonstrated a likelihood of success in the context of a preliminary injunction motion, but did not reach the issue of infringement because this Court had not actually performed an equivalents analysis for the lithium oxide in claim 1, and conflicting evidence in the “preliminary record disclos[ed] several issues for resolution during trial.” Id. at 1384. Based upon thorough review, and in light of the Federal Circuit’s ruling, this Court adheres to its prior construction of claim 1 of the ’791 Patent as being limited to the exact weight percentage ranges for its chemical components.

2. Additional Construction of the ’791 Patent and Construction of the ’88U Patent

Additional construction of claim 1 of the ’791 Patent and construction of the same element in claim 1 of the ’884 Patent is necessary in connection with Defendants’ claim of invalidity by anticipation, and Plaintiffs response thereto. A dispute exists as to whether the limitation that the leucite crystals possess “diameters not exceeding about 10 microns”, (’791 Patent, Column 6, lines 29-30; ’884 Patent, Column 6, lines 21-22), found in claim 1 of each patent, refers to the micron size in the raw material or in the final composition. Plaintiff urges the Court to construe this limitation as the size of leucite crystals required in the “final restoration,” relying on the specification in each “Summary of the Invention Section”:

It is essential to the practice of the present invention that the leucite crys-tallites present in the two-phase porcelain composition herein possess diameters not exceeding about 10 microns. Diameters in excess of about 10 microns will impart an undesirably rough and uneven surface to the composition when employed, in its intended environment of use. Indeed, it has been determined that leucite diameters above about 10 microns may wear away local dentition and cause discomfort/irritation inside the oral cavity.

(’791 Patent, col. 2, lines 49-57; ’884 Patent, col. 2, lines 54-62 (emphasis added)). Plaintiff argues that these statements make clear that the leucite crystal size limitation is directed to the “final restoration.”

Defendants, however, argue that the plain language in both claims refers to a “porcelain composition” rather than a “final restoration.” Specifically, Defendants point to claim 14 of the ’884 Patent, which discloses a “dental restoration comprising a high expansion metal alloy or ceramic framework and at least one coating fused thereon of the porcelain composition of claim 1,” (’884 Patent, col. 7, lines 54-56 (emphasis added)), as proof that claim 1 does not refer to a “final restoration.” According to Defendants, this differentiation in terms shows that the “not exceeding about 10 microns” limitation refers to the leucite crystal size in the raw material rather than in the final product.

While the Court is aware that “a patent claim is not necessarily limited to a preferred embodiment disclosed in the specification,” see Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277 (Fed.Cir.1995), and that judges may not read into a claim a limitation that appears in the specification but not in the claim, see Minnesota Mining Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566 (Fed.Cir.1992); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121-22 (Fed.Cir.1985), the Federal Circuit has “repeatedly stated” that “claims must be read in view of the specification of which they are a part,” that the specification is usually “dispositive,” and that the specification “is the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582.

Here, the disputed limitation in claim 1 of each patent, read in light of the specifications cited by Plaintiff, are, in the Court’s view, unambiguous. Neither claims to being, in and of itself, a final dental restoration. Rather both claims disclose a “dental porcelain composition ... useful in the preparation and repair of dental restorations such as porcelain-fused-to metal restorations, all-ceramic restorations, inlays, onlays, and veneers.” (’791 Patent, col. 1, lines 4-11; ’884 Patent, col. 1, lines 13-20.) Therefore, Defendants’ citation to claim 14 is inapposite. When Plaintiff asks the Court to construe the leucite crystal size limitation in claim 1 as the size required in the “final restoration,” the Court understands this to mean the final porcelain composition taught by the claim. In other words, the limitation refers to the leucite crystal properties as they exist in the final product offered by the invention, not to the size of the leucite crystals before they are blended and heated. The fact that the invention’s porcelain composition might serve as a glaze on a dental restoration, rather than embody the entire restoration, does not diminish the fact that the “porcelain composition” disclosed in claim 1 of each patent constitutes the final composition of the invention’s product.

Accordingly, based on the plain language of the patents and the specifications’ references to “wear” on “local dentition,” and to “discomfort/irritation inside the oral cavity,” the Court construes the leucite crystal size limitation “not exceeding about 10 microns” in claim 1 of both the ’791 and the ’884 patents, as directed to the size of the leucite crystallites in the “final restoration,” that is, the final dental porcelain composition created by the invention.

B. Anticipation

Defendants’ first ask for summary judgment that the asserted claims of the ’791 and ’884 patents are invalid because they are “anticipated” under 35 U.S.C. § 102(b) by the issuance of the ’366 Patent and the disclosure embodied in Example 2. Plaintiff argues that the ’791 and ’884 patents are distinguishable from the ’366 Patent on the size of their leucite crystals, and that the Examiner who prosecuted the ’884 Patent considered Example 2 of the ’366 Patent.

On December 7, 1998, in the first Office Action taken on the application that matured into the ’884 Patent [hereinafter “ ’884 Application”], the Examiner rejected claims 1-8,12, and 16-19 under 35 U.S.C. § 102(b) as being anticipated by, among others, the ’366 Patent, stating that “[’366] teach[es] the production of a porcelain composition including Leucite crystals having an exemplified crystallite size of 5 to 10 microns (see example 2) with a thermal expansion within the instant claims.” The ’366 Patent, issued on August 5, 1986, qualifies as an item of prior art under 35 U.S.C. § 102(b), and was cited as a prior art reference during the prosecution of both the ’791 and the ’884 patents. The ’366 Patent directs various dental porcelain compositions, which blend various combinations of a “glassy phase matrix” and a “dispersed leucite phase.” (Defs.’ Ex. 6, ’366 Patent.) While there is clearly dispute between the parties about the ’366 Patent’s overall readability on the ’791 and ’884 patents, there appears to be little dispute over the readability of Example 2 of the ’366 Patent on each element of the asserted claims, except with regard to their respective limitations on the size of leucite crystals.

As set forth above, claim 1 of both the ’791 and the ’884 patents have the express limitation that the leucite crystal-lites “possess diameters not exceeding about 10 microns,” a limitation which, based on the Court’s construction of those claims above, refers to the size of the leucite crystallites in the final porcelain composition. Example 2 of the ’366 Patent, teaches the blending of two “master frits”, the first “doped” with 4 percent potassium nitrate and the second “doped” with 9 percent potassium nitrate, a substance that controls the amount of leucite crystals.

“Both of the master frits contained leu-cite in a 5 to 10 micron particle size range dispersed in the residual glassy phase ... A porcelain product was prepared from a mixture of equal parts of the first and second master frits. The Porcelain product, which had a fusion temperature of about 955 degrees C. exhibited a coefficient of thermal expansion which was intermediate that of the respective master frits.”

(Defs.’ Ex. 6, ’366 Patent, Example 2, col. 9, lines 22-35.) Based on Example 2, Defendants argue that the ’366 Patent teaches & final porcelain composition containing leucite crystals in the 5 to 10 micron range. Plaintiffs, however, claim that Example 2 of the ’366 Patent teaches a blending of two glass-ceramic frits, which, prior to heating, contain leucite crystals in a 5 to 10 micron range. Plaintiff asserts that “it is well known in the ceramic arts that the heating of such a mixture as described in Example 2 promotes growth of the leucite crystals.” (Pl.’s Resp. to Defs.’ Statement of Undisputed Facts & Pl.’s Statement of Additional Facts in Dispute [hereinafter “Pl.’s 9(c)(2)”] at 4-5.) The resulting porcelain composition taught by Example 2, Plaintiff contends, contains leucite crystals 2 to 50 microns in size, as taught by columns 4 and 7 of the ’366 Patent.

. Therefore, whether the “5 to 10 micron particle size” limitation set forth in Example 2 refers to the size of the leucite crystals in the final porcelain composition or their size prior to heating hinges on the factual question of whether the leucite crystals described in Example 2 will grow when heated to 955 degrees Celsius. Defendants’ expert, Dr. Walker, opined that “at 955 degrees the leucite crystals will not grow,” and that a temperature of 1150 degrees was necessary for growth. (Defs.’ Ex. 7, Walker Test, at 122.) Both of Plaintiffs experts (and inventors of the ’791 and ’884 patents), however, opined that the leucite crystals, as described in Example 2, will grow at temperatures as low as 500 to 700 degrees. (Pl.’s Ex. 5(A), Panzera Test, at 78-80, 162-65; Pl.’s Ex. 5(C), Kaiser Test, at 83-84.)

All patents are entitled to a presumption of validity under 35 U.S.C. § 282. A defendant must provide clear and convincing evidence of invalidity to overcome this presumption. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1358 (Fed.Cir.2001) (“To succeed with a summary judgment motion of invalidity ..., the movant must demonstrate a lack of genuine dispute about material facts and show that the facts not in dispute are clear and convincing in demonstrating invalidity.”); Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 994 (Fed.Cir.2000). “The presumption of validity under 35 U.S.C. § 282 carries with it the presumption that the Examiner did his duty and knew what claims he was allowing. Therefore, the challenger’s burden is especially difficult when the prior art was before the PTO examiner during prosecution of the application.” Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir.1999) (citations and quotations omitted); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1467 (Fed.Cir.1990).

“To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1346 (Fed.Cir.1999) (quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed.Cir.1997)); Electro Med. Sys. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1052 (Fed.Cir.1994). “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference,” Atlas, 190 F.3d at 1346, and “is a question of fact, including whether or not an element is inherent in the prior art.” Id.; Union Oil Co., 208 F.3d at 994. “Specifically, when a patent claims a chemical composition in terms of ranges of elements, any single prior art reference that falls within each of the ranges anticipates the claim ...,” “regardless of whether it also covers subject matter not in the prior art.” Atlas, 190 F.3d at 1346. Therefore, in the context of anticipation defenses, the district court must “assess the meaning of the of the prior art references cited to support the validity challenge.” Amazon.com, 239 F.3d at 1358. What a prior art reference teaches is a question of fact; therefore, “the district court necessarily makes fact-findings, explicitly or implicitly, concerning the meaning of the - asserted references.” Id.

Both parties are now in agreement that the factual dispute over whether and to what extent the leucite crystals taught by Example 2 will grow when heated constitutes a material factual issue sufficient to preclude summary judgment that the asserted claims of the ’791 and ’884 patents are invalid on the ground of anticipation. (Pl.’s 9(c)(2) at 9; Pl.’s Consolidated Opp’n to Defs.’ Combined Mots, for Summ. J. & Cross Mot. for Partial Summ. J. for Infringement of the ’884 Patent [hereinafter “Pl.’s Opp’n”] at 23; Defs.’ Reply Mem. in Supp. of Defs.’ Combined Mots, for Summ. J. and in Opp’n to Pl.’s Cross-Mot. for Summ. J. [hereinafter “Defs.’ Reply”] at 10-11.) Accordingly, Defendants’ motion for summary judgment on the claim of anticipation by the ’366 patent is DENIED.

C. Onr-Sale Bar

Defendants next ask for summary judgment that the invention defined in the asserted claims of the ’884 Patent is invalid under 35 U.S.C. § 102(b) because the subject matter disclosed therein was “on sale” in the United States more that one year prior to March 12, 1996, the effective filing date for the patent at issue. Plaintiff responds by arguing that 1) the alleged product was not “on-sale” prior to March 12, 1995, and 2) that the product, as allegedly offered in 1995, was different than the product on sale today.

Under 35 U.S.C. § 102(b) “A person shall be entitled to a patent unless'— ... (b) the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States.” To challenge a presumptively valid patent, an accused infringer must demonstrate by clear and convincing evidence that 1) there was a sale or offer to sell more than one year before the application for the subject patent, and 2) that the subject matter of the sale or offer to sell fully anticipated the claimed invention. Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045-46 (Fed. Cir.2001); UMC Elecs. Co. v. United States, 816 F.2d 647, 656 (Fed.Cir.1987).

1. Sale or Offer to Sell

Currently, Defendant Chemichl provides Defendant Dillon with a product called “LF-l-PFM”, which Dillon repackages into smaller containers and resells under its trademark, Sensation, one of the two allegedly infringing products. There is no dispute that Sensation and LF-l-PFM are the same, and that the instructions for use of Sensation and the instructions for use of LF-l-PFM are the same.

In October of 1994, Chemichl shipped “LF-PFM” (later renamed “LF-l-PFM”) samples, with instructions on its use, to J.F. Jelenko Co. (“Jelenko”) in Armonk, NY. On October 10,1994, in a telefax from Dan Johnson of Chemichl, to Rudy Michl of Chemichl AG, Johnson summarized a meeting he had had with Jelenko representatives regarding Jelenko’s concerns with the “PFM system”:

The most significant concern they have is with our pricing structure. They indicated to us that after a more thorough look at the current U.S. market ... [,][t]hey feel that we would have to come down at least $5-$6 per ounce in order for them to feel comfortable selling our PFM product.

This discussion led us into the LF-PFM product. They wanted to know more about this ceramic and how it performed on the alloys they sent us in August.... They felt that if the product worked on their Prospector alloy ... then they could re-define the porcelain market and the price objection would be non-existent. The following morning, Rolf and I discovered from Egbert that our present LF-PFM ceramic worked on both metals they sent ... After hearing this information, ... [t]hey gave us five ounces of Prospector ... for our technical department to do testing and wanted samples immediately for evaluation. They said they would begin a full blown marketing effort immediately upon confirmation of the product’s performance.

(PL’s Ex. 30, Letter dated October 10, 1994, at 2.) On January 4, 1995, Johnson sent Dave Kasza of Jelenko a letter stating:

After more extensive experimentation, our developers believe it is possible to lower the firing temperature of our Low-Fusing ceramic and extend the hold time in order to fuse it to Prospector .... Since the hold time is substantially increased, I would like to know if the this project is still of interest and if you would like us to do additional testing.

(Pl.’s Ex. 13, Letter dated January 4, 1995.) Thereafter, on February 6,1995, in another telefax from Johnson to Michl, Johnson summarized another conversation he had had with Jelenko representatives.

After a fairly lengthy conversation with both Dave Kasza and his ceramist, Frank Munzenmayer, they concluded that both our PFM opaque paste and our LF-PFM are not yet marketable in the U.S. for the following reasons:

LF-PFM

This they believe needs the most work. The handling characteristics as far as stacking is good, however, they experienced severe tearing. This is not checking, this is tearing (large crevices in the fired ceramic). They have had consistent tearing ... using our ceramic in conjunction with both Albacast and Sun-cast DFK. They have tried several techniques to overcome this problem, but have given up due to the sensitivity of the product. They are definitely interested in seeing if our LF-PFM could be used in conjunction with Prospector despite the long hold time required. This would be the product of primary interest. COMMENTS

Jelenko is not interested in creating a new market with our existing ceramic system. Their intention with our ceramic would be to go after the Ceraco users and cut into their opaque market share. If they can piggy-back our opaque paste with their top selling alloys, they would have a winner....

(PL’s Ex. 14, Letter dated February 6, 1995.)

In December of 1994, Chemichl also shipped LF-PFM samples and instructions to Dillon in North Attleboro, MA. On December 8, 1994, Johnson wrote to Kevin Dillon:

I enjoyed our phone conversation and am looking forward to the possibility of doing business in the future. Enclosed are samples of our two latest versions of porcelain-fused-to-metal-ceramie for your testing and evaluation....

(Defs.’ Ex. 9, Letter dated December 8, 1994.) In January of 1995, Johnson wrote to Michl:

I enjoyed talking with you the other day. Sounds like some interesting things came out of your meeting with Kevin [Dillon].... I’ve thought of a few incidental items that we should stick to during our negotiations with him:

1. I think he should immediately give us a Non-Disclosure agreement.

2. A firm, ironclad contract based on a volume commitment, discounts (by way of free product) would only apply if the volumes are met.

3. The 50% margin should be a gross margin prior to any give away programs or other miscellaneous expenses.

4. The audit should be done by our accountants....

(Pl.’s Ex. 31, Letter dated 1/23/95.) Also in January of 1995, Mr. Johnson requested that Michl give him the formulation for the LF-PFM product so that he could file the formula with the Food and Drug Administration under the pre-market notification guidelines to obtain approval for sale of the product. Johnson did not receive the formulation at this time.

In February of 1995, Chemichl distributed its “1995 Wholesale Price List”, which included listings on its LF-PFM product, to various companies in the United States. For example, on February 6, 1995, Johnson wrote to Mark DeTorre of 3M:

Enclosed is our new 1995 Whole Sale Price List. This new price list includes the complete CHEMICHL product line and is designed to make it easier for you to order.... I want to point out our latest development in low-fusing ceramics shown on pages 14-18. We believe, with time, low fusing ceramics will ultimately replace existing traditional ceramics (see attached Argumentation — • LF-PFM) ....

(Defs.’ Ex. 8, Letter dated February 6, 1995.)

Also in February of 1995, a “Secrecy and Non-disclosure Agreement” was executed by Chemichl and Dillon, whereby both parties agreed to protect each other’s product and trade information. (Pl.’s Ex. 11, Michl Cross at 131; Pl.’s Ex. 53, Johnson Cross at 172; Pl.’s Ex. 58, Copy of unsigned Secrecy and Non-Disclosure Agreement.) In April of 1995, Chemichl sent additional LF-PFM samples to Dillon. (Defs.’ Ex. 8, Proforma Invoice for Samples dated April 20, 1995.) In August of 1996, Johnson received the formula for the LF-l-PFM (formerly LF-PFM) product for filing with the FDA. The attached cover letter read:

Enclosed you will find a description of our “new” ceramic products and the composition of the basic glasses. The composition is confidential and only for the FDA....

(Pl.’s Ex. 35, Letter and Formula.) The first completed sale of the LF-l-PFM product occurred in August of 1996 between Chameleon Dental Products Inc. and Chemichl. (Pl.’s Ex. 38, Purchase Agreement .) In the fall of 1997, Dillon ordered commercial quantities of the LF-l-PFM product from Chemichl, and continues to do so today.

“Whether a particular activity raises the on-sale bar is a question of law, based on underlying factual considerations.” Intel Corp. v. International Trade Comm., 946 F.2d 821, 829 (Fed.Cir.1991). The Supreme Court recently rejected the “totality of the circumstances” approach, previously employed by the Federal Circuit, for determining whether the on-sale bar applies, and replaced it with a two-prong test: “First, the product must be the subject of a commercial offer for sale.... Second, the invention must be ready for patenting.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998) (finding proof of acceptance of a purchase order'prior to the critical date, and proof that inventor’s drawings sent to manufacturer prior to the critical date fully disclosed the invention, sufficient to raise the on-sale bar); see also Brasseler v. Stryker Sales Corp., 182 F.3d 888, 890 (Fed.Cir.1999) (quoting Pfaff, 525 U.S. at 67, 119 S.Ct. 304)).

In regard to the first prong, it is well established that “a single sale or offer to sell is enough to bar patentability,” In re Caveney, 761 F.2d 671, 676 (Fed.Cir.1985). Moreover, “[i]t is not necessary that the sale be consummated for the bar to operate ... no more than a firm offer to sell may be sufficient.” Buildex Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1464 (Fed.Cir.1988). However, “[u]nder longstanding judicial interpretation, a product embodying the patented invention, which is sold or offered for sale more than a year before the application’s filing date, may escape the statutory bar where such sale was primarily for a bona fide experimental purpose to perfect the invention, rather than for commercial exploitation.” Paragon Podiatry Lab., Inc. v. KLM Lab., Inc., 984 F.2d 1182, 1185 (Fed.Cir.1993).

Although the Supreme Court in Pfaff did not elaborate on what it meant by a “commercial offer for sale”, the Federal Circuit has since determined that “[applying established concepts of contract law, rather than some more amorphous test, implements the broad goal of Pfaff, which, in replacing this court’s ‘totality of the circumstances’ test with more precise requirements, was to bring greater certainty to the analysis of the on-sale bar.” Group One, 254 F.3d 1041, 1047. Based upon this determination, the Federal Circuit held that “the question of whether an invention is the subject of a commercial offer for sale is a matter of Federal Circuit law,” and that it will “look to the Uniform Commercial Code (‘UCC’) to define whether ... a communication or series of communications rises to the level of a commercial offer for sale.” Id. at 1047. While the Group One court did not offer any specific guidance on what constitutes a commercial offer for sale, it did note that only an offer “which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under § 102(b),” and that “contract law traditionally recognizes that mere advertising and promoting of a product may be nothing more than an invitation for offers, while responding to such an invitation may itself be an offer.” Id. at 1048 (citing Restatement (Second) of Contracts § 26 (1981)).

In regard to the second prong, the Supreme Court clearly held that the “ready for patenting” condition could be satisfied by “proof of reduction to practice before the critical date; or by proof that prior to the critical date, the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.” Pfaff, 525 U.S. at 67, 119 S.Ct. 304. In so holding, the Court disposed of the “substantially complete” standard previously employed by the Federal Circuit, and determined that although the invention need not be reduced to practice, the concept of the invention must be fully complete. See Pfaff, 525 U.S. at 66, 119 S.Ct. 304; Robotic Vision Sys., Inc. v. View Eng’g, Inc., 249 F.3d 1307, 1312 (Fed.Cir.2001) (interpreting Pfaff).

a. Commercial Offer for Sale

Here, the critical date under 35 U.S.C. § 102(b) is March 12, 1995, one year prior to the application filing date. There is no dispute that no actual sale was completed prior to the critical date. The activity that transpired prior to March 12, 1995, included the sending of samples and instructions to Jelenko and Dillon, and the distribution of price lists a few months later. The fact that the above activity transpired is not in dispute. The legal issue of whether the combination of these activities constituted a commercial offer for sale of a product ready for patenting, however, is contested and is dispositive here.

According to Defendants, these samples were sent with the intent of procuring commercial orders, and they, in combination with the distribution of the 1995 Wholesale Price List in February, 1995, constituted a firm offer for sale before the critical date. Jelenko ultimately declined to do business with Chemichl due to problems it perceived with the product, but Dillon, in the fall of 1997, ultimately placed orders with Chemichl for commercial quantities of the LF-PFM product, samples of which, according to defendants, had been sent to Dillon in 1994 and 1995.

In contrast, Plaintiff argues that the samples sent in 1994 and 1995 were for experimental purposes and did not constitute commercial offers for sale. Specifically, Plaintiff argues that Johnson’s letter to Dillon stating “enclosed are samples ... for your testing and evaluation,” Michl’s Declaration stating that in February of 1995 he met with Jelenko representatives “to discuss the results of their testing and evaluation of the samples of the LF-PFM,” Johnson’s letter to Michl stating that according to Jelenko, the product was “unmarketable” and “needs more work,” and the year and a half delay between Johnson’s request for the formulation to file with the FDA and Chemichl AG’s provision of such formula in August of 1996, establish the experimental nature of the 1994 and 1995 activity. Plaintiff asserts that these facts make clear that the samples sent to Jelenko and Dillon were for the purpose of determining the product’s utility with respect to various methods and alloys, not for the purpose of a specific commercial sale.

Applying the standards set forth above, the Court finds that, under the stricter standards set forth in Pfaff and its progeny, the activity that transpired prior to March 12, 1995 did not constitute a commercial offer for sale. The UCC does not define “offer,” and, therefore, does not displace pre-code law as to what constitutes an offer. Accordingly, courts must look to the common law for the definition. See Ronald A. Anderson, 2 Anderson on the Uniform Commercial Code § 2-206:12 (3d ed.1997) (footnotes omitted). However, although neither Pfajf nor the UCC provide a clear definition of what constitutes a commercial offer, the authorities appear to be in agreement on certain business activities that do not constitute offers, but rather constitute invitations to make an offer.

Frequently, negotiations for a contract are begun between parties by general expressions of a willingness to enter into a bargain upon stated terms, and yet the natural construction of the words and the conduct of the parties is that they are inviting offers, or suggesting the terms of a possible future bargain, rather than making positive offers. This is especially likely to be true where the words in question are in the form of an advertisement, circular, catalog or the like. Thus, if goods are advertised at a certain price, it is generally not an offer, and no contract is formed by the statement of an intending purchaser that he will take a specified quantity of the goods at that price. Rather, the courts routinely hold that such advertisements or other expressions of intention are invitations to solicit offers or to enter into a bargain rather than offers themselves. Similarly, a published price list is not an offer to sell the goods listed at the published prices ...

The cases are legion on this point; and though they are grounded on various bases, including the absence of quantity terms, the absence of apparent intent to form a contract, or potentially unlimited liability of the offeror if an offer is held to exist, they all share two other common characteristics: first, in virtually all of the cases there is the absence of a promissory undertaking; and second, in all the cases a reasonable person receiving the communication has reason to know, from the circumstances under which the manifestation is made, that no offer exists.

Richard A. Lord, 1 Williston on Contracts § 4.7, at 285-290 (4th ed.1990) (footnotes omitted) (emphasis added); see also Anderson, supra, § 2-206:15, at 20-21 (“An expression of intention that does not manifest a willingness to enter into a binding agreement on stated terms is, by definition, not an offer. Consequently, it is ordinarily held that an advertisement, a price quotation, or other invitation to negotiate, is not an offer.” (footnotes omitted)).

Here, none of the letters contained quantity terms, price quotations, or delivery terms, and the wholesale price list essentially amounted to a catalogue form of advertising. Moreover, no order form or other contractual instrument was contained in either the letters accompanying the samples or the price lists. Defendants’ only evidence to the contrary is Michl’s testimony that he distributed the samples “with the hope of procuring commercial sales.” (Defs.’ Ex. 8, Michl Decl. ¶8; Defs.’ Ex. 9, Dillon Decl. ¶ 6). An inventor’s attempted exploitation, however, “must be objectively manifested as a definite sale or offer to sell the invention. The subjective, uncommunicated, and ultimate intention of the offeror, however clear, is not alone sufficient.” Envirotech Corp. v. Westech Eng’g Inc., 904 F.2d 1571, 1575 (Fed.Cir.1990). Additionally, Plaintiff raises serious issues about Michl’s credibility, elicited on cross-examination during the preliminary injunction hearing. (Pk’s Ex. 5(D), Michl Cross at 43-47.)

Therefore, the Court finds that the combination of the samples, their accompanying letters, and distribution of the price lists constitutes invitations to offer or otherwise negotiate, specifically invitations to make offers to purchase a certain porcelain product at the prices listed; offers which Chemichl could then accept or reject. Accordingly, the Court concludes that Defendants have failed to show by clear and convincing evidence that, prior to March 12,1995, a commercial offer for sale was made.

Because the Court finds that Defendants’ activity falls short of a commercial offer for sale, the Court does not reach the second prong under Pfaff of whether the product was ready for patenting. Furthermore, because the Court finds that no offer for sale was made, the Court does not reach the issue of whether the LF-PFM product as offered in 1995 actually anticipated the ’884 Patent. Defendants’ motion for summary judgment under the on-sale bar is DENIED.

D. Infringement by Cerpress

Defendants’ third request asks for summary judgment that Cerpress does not infringe any of the asserted claims. Specifically, Defendants claim that Cerpress does not literally infringe either of the patents because it does not contain lithium oxide (Li20), and that under the doctrine of prosecution history estoppel, Plaintiffs are precluded from establishing infringement under the doctrine of equivalents. In response, Plaintiff claims that the lithium oxide was added as a flux modifier to make the porcelain composition “operable,” not as a limitation to distinguish claim 1 over prior art.

1. Literal Infringement

Direct infringement occurs when a party “without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent.” 35 U.S.C. § 271(a). To establish direct infringement, the patentee must prove by a preponderance of evidence that every element of the asserted claim, as properly construed by the Court, is found in the accused device or process, either literally or under the doctrine of equivalents. See Wolverine World Wide, 38 F.3d at 1196; Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed.Cir.1991). In this regard, each and every clause of a claimed invention is considered material and essential. See Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Therefore, the absence of even one element or its equivalent of a claimed invention places the accused device outside the coverage of the claims.

There is no dispute that although Cerpress contains all of the physical parameters specified in claim 1 of both patents, i.e. the leucite crystal size, the amount of leucite crystals, the maturing temperature, and the coefficient of thermal expansion, Cerpress does not literally infringe either the ’791 or the ’884 patent because its chemical composition does not contain the Li20 specified in claim 1 of both patents. The following chart shows a comparison of the chemical compositions:

884(wt.%) 791(wt.%)

Compound Claim 1 Claim 1 Cerpress(wt.%)

58-65 57-66 59.2 SÍO2

7-15 7-15 15.97 3 AI2O

7-15 7-15 10.22 K20

7-12 7-12 9.31 Na20

0.5-3 0.5-3 .041 LÍ2O

0-3 1.62 CaO

0-7 .020 MgO

0-4 .005 F

0-1 .45 Ce02

— 1.93 B2O3

— 1.02 BaO

( 791 Patent; 884 Patent; PI. s Ex. 6(c), Sisson Decl.) Based on Sisson’s testing, Plaintiffs own expert, Cerpress does not contain sufficient lithium oxide, an ingredient specifically required by every asserted claim of both patents. Accordingly, the Court finds that Cerpress does not literally infringe either the ’791 or the ’884 patent.

2. Doctrine of Equivalents

Plaintiff asserts that, despite the absence of literal infringement, Cerpress infringes the asserted claims under the doctrine of equivalents. Defendants respond that based on amendments made during the prosecution of the ’884 Patent, prosecution history estoppel applies to bar Plaintiffs use of the doctrjne of equivalents to establish infringement.

a. Prosecution History of the ’791 Patent

In an Office Action dated November 1, 1996, made in response to the ’791 Application, the Examiner entered certain restrictions, and rejected claims 1-10 as being unpatentable over a prior art, U.S. Patent No. 4,101,330. (Pl.’s Ex. 1, ’791 Patent File Wrapper.) On March 21, 1997, in a statement to the Examiner, Plaintiff/Applicant distinguished its invention from the prior art on the ground that the prior art employed a “mepheline syenite” glass matrix phase, as opposed to a feldspar glass matrix phase, making the prior art unsuitable for coating dental restorations, and on the ground that the leucite crystals in the prior art possessed diameters not exceeding about 37 microns, whereas Plaintiff/Applicant’s invention required leucite crystallites “not exceeding about 10 microns.” (’791 Patent File Wrapper.) On March 27, 1997, the PTO issued a notice of allowability. No amendments were added, and more importantly, the element at issue was neither amended nor argued during prose