Full opinion text
OPINION MCKELVIE, District Judge. This is a patent case. -Plaintiff Wesley Jessen Corporation is a Delaware- corporation, with its principal place of business in Des Plaines, Illinois. Wesley Jessen is the owner of U.S. Patent No. 4,711,943 (the ’943 patent), which relates to a monomer for making contact lenses and contact lens materials. Defendant Bausch & Lomb, Inc. is a New York corporation with its principal place of business in Rochester, New York. Bausch & Lomb manufactures and sells an extended wear contact lens under the trade name PureVision. By a complaint filed on May 3, 2001, Wesley Jessen alleges that by manufacturing and selling its PureVision line of contact lenses Bausch & Lomb is wilfully infringing ten claims of the ’943 patent. Bausch & Lomb answered the complaint by denying infringement, asserting certain affirmative defenses and counterclaiming for a declaratory judgment it does not infringe and that the asserted claims are invalid and unenforceable. Pursuant to an agreement between the parties, this case was tried to the court, beginning on May 29, 2002. During the trial, Wesley Jessen presented evidence and argument in support of its contention Bausch & Lomb infringed certain claims of the patent either literally or under the doctrine of equivalents, and as a remedy sought injunctive relief and an award of fees and costs based on Bausch & Lomb’s alleged willful conduct. Bausch & Lomb responded by presenting evidence and argument in support of its contention that it does not infringe the claims of the patent, either literally or under the doctrine of equivalents, and that the claims of the patent are invalid as anticipated by U.S. Patent No. 4,260,725 issued to Keogh, et al. (the ’725 or Keogh patent), and as obvious in light of a number of patents, including Keogh and U.S. Patent Nos. 4,235,985 issued to Tanaka (the ’985 or Tanaka patent). Bausch & Lomb also offered evidence and argument in support of its contention that the claims of the ’943 patent are invalid for failure to disclose the best mode, for lack of enablement, for lack of utility, and for indefiniteness of the claims. Last, Bausch & Lomb offered evidence and argument in support of its contention the claims of patent should be unenforceable for the inventor’s inequitable conduct in failing to disclose material information to the examiner during the prosecution of the patent. Wesley Jessen responded to each of these defenses. The parties completed presenting evidence on June 3, 2002 and submitted closing arguments the following day. This is the court’s post trial opinion. I. FACTUAL AND PROCEDURAL BACKGROUND The court draws the following facts from the pretrial order and from the evidence presented at trial, including the evidence presented during the April 5, 2002 claim construction hearing. A. The Field of the Invention and the ’918 Patent The application that led to the ’943 patent was filed in 1985 and relates to contact lens materials and contact lenses fabricated therefrom that have a combination of properties not achieved prior to the invention. The ’943 patent addressed problems experienced in the contact lens industry in the early eighties that related to developing a comfortable contact lens that could be worn for longer periods of time. As noted in the background section of the ’943 patent, the contact lens market in the early 1980s consisted of three basic types of contact lenses: (1) rigid, non-gas permeable lenses, (2) soft hydrogels, and (3) rigid, gas-permeable lenses. As detailed below, each of these contact lenses had certain deficiencies that made them generally unsuitable for extended wear use. Lenses suitable for extended wear must be optically transparent, possess chemical and thermal stability, be wettable to tears, permeable to oxygen, and be comfortable, durable, and easy to handle. The first contact lenses developed as a substitute for eyeglasses were rigid and non-gas permeable lenses, which were made from materials such as polymethyl methacrylate (PMMA or polyMMA). Rigid PMMA lenses have acceptable surface wettability when used in conjunction with wetting solutions, and excellent durability, but lack sufficient oxygen permeability for extended wear. Because there is a lack of blood vessels within the cornea, the cornea must obtain oxygen directly from the atmosphere. If a contact lens does not have sufficient oxygen permeability, placing it over the cornea will result in corneal swelling and discomfort. Although the PMMA lenses blocked the natural flow of oxygen to the cornea, sufficient oxygen would usually be transported to the wearer’s cornea by tear film generated between the lens and the cornea through normal blinking. Oxygen deprivation was a problem, however, when the wearer was asleep and, therefore, not blinking. In the late 1970’s and early 1980’s, people in the content lens industry began to develop extended wear contact lenses from soft hydrogel materials, such as poly (2-hydroxyethyl)methacrylate (HEMA). These lenses improved oxygen permeability by significantly increasing the water content of the materials. They also possessed excellent wetting characteristics, which made them very comfortable to wear. However, the high water content caused the lenses to soften, drape, and sag in a way that good optical resolution was difficult, and they tended to tear when handled and were subject to increased protein deposits on the lenses. People in the industry also sought to develop rigid, gas-permeable lenses made primarily with siloxane-containing components. These lenses were not a commercial success. They would dry and irritate the-eye, as the siloxane materials tended to be hydrophobic, which meant water would bead on the lens rather than form a film on its surface. Thomas B. Harvey, III-filed an application with the United States Patent and Trademark Office (“PTO”) on April 26, 1985, entitled “Hydrophilic Siloxane Monomers and Dimers for Contact Lens Materials and Contact, Lenses Fabricated Therefrom.” Harvey sought to combine the desirable properties of the three aforementioned types of lens materials into one contact lens. material that had the dimensional stability of rigid non-gas-permeable lenses, the comfort of silicone hydrogels, and the oxygen permeability of gas-permeable lenses. In his patent application, Harvey reviewed the history of developments relating to contact lenses and limitations that were restricting the uses of extended wear lenses. This history demonstrated that attaining a combination of desirable properties in a single material had been particularly problematic since the addition of one component to improve a desirable property, such as adding a siloxane to improve oxygen permeability, had tended to adversely affect other desirable properties, such as wearer comfort. The invention of the ’943 patent sought to solve these problems by teaching the making of siloxane-containing hydrogel monomer for making contact lenses having both improved oxygen permeability and dimensional stability. Harvey described his invention as including the use of a monomer that combined a hydrophilic group and a siloxane into a single monomer to form a strong, highly oxygen-permeable silicone hydrogel material that did not depend solely on water content for its oxygen permeability. The hydrophilic group could be an amid or a carbamate. He reported that the invention made it possible to maintain high oxygen permeability without having the high water content of earlier extended wear lenses and the problems of physical deformation that normally accompanied high water content lenses. Harvey characterized his claimed contact lens materials as having a specified range of (i) water content, (ii) oxygen permeability, (in) tear strength, and (iv) percent elongation. Harvey summarized the objects of the invention as follows: An object of the present invention is to provide new and useful hydrophilic silox-ane-containing monomers for making contact lenses. Another object of the invention is to prepare hydrogels from the monomers of the foregoing type which have moderate water contents (about 15-60%), but high oxygen permeabilities [greater than about Dk 25 x 10 ~ (Dk is measured in units of cm (02) cm/cm sec. cm Hg) ]. A further object of the invention is to provide a contact lens having improved wettability, characterized by a receding contact angle of less than that of contact lenses made of polyMMA. Still another object of the invention is to provide a hydrophilic siloxane copolymer, suitable for the fabrication of extended wear contact lenses, and having the following characteristics: (1) moderate water content [about 15-60%]; (2) high oxygen permeability [Dk greater than about 25x10 -10]; (3) tear strength greater than about 1.0 g/mm; (4) percent elongation greater than or equal to about 80%; (5) wettable; and (6) minimal protein deposit formation. ’943 patent, col. 3,1. 49 — col. 4,1. 8. B. Prosecution History of the !9Jp3 Patent The ’943 patent was originally filed as Application Serial No. 06/727,501 on' April 26, 1985. The original application, as amended, contained 63 claims, directed to three subclasses or groups, contact lens material, organic compound synthesis, and copolymers. In an Office Action dated August 22, 1985, the Examiner noted the claims had been incorrectly numbered- and required that the applicant elect one of the three groups for prosecution. The applicant elected to prosecute the claims directed to the contact lens material. Claim 1 read as follows: 1. A contact lens material having improved oxygen permeability and stability; said contact lens material comprising a monomer .having: a first portion for increasing wettability, said first portion being hydrophilic and • including a side-chain functionality selected from the group including the following structural formulae: and a second portion for increasing oxygen permeability, said second portion including a siloxane. In an Office Action dated August 23, 1985, the Examiner allowed certain claims and rejected others as being unpatentable over U.S. Patent No. 4,495,361 to Friends et al. (“Friends”) either alone or in view of U.S. Patent No. 2,929,829 to Morehouse (“Morehouse”), and as indefinite on the ground that it was not clear whether the claims covered monomers as well as polymers. Harvey responded by arguing that Friends does not teach monomers that contain a siloxane, a required element of each of the pending claims, and that amino acid compounds of Friends were not contact lens materials. He sought to distinguish Morehouse on the ground 'that it does not teach contact lens materials. On the issue of indefiniteness, Harvey responded that the rejected claims covered monomers and added certain new claims to cover the corresponding polymers. By an Office Action dated March 17, 1986, the Examiner again rejected claims 1 through 14 as indefinite and suggested Harvey amend them to specify that only monomers were encompassed by the claims. The Examiner also rejected certain claims as being anticipated by Newell and other claims as being obvious over Newell, or U.S. Patent No. 3,652,629 to Fort (“Fort”), or U.S. Patent No. 3,249,461 to Te Grotenhuis (“Te Grotenhuis”) in view of Friends alone, or together with U.S. Patent No. Re. 31,406 to Gaylord (“Gay-lord”). In response, Harvey filed a paper on July 16, 1986, amending claim 1 to clarify that monomers were being claimed to obviate the rejection of indefiniteness. In response to the rejection based on the prior art, Harvey argued that Newell, Fort, and Te Grotenhuis, disclose the ■ use, in one fashion or another, of siloxane compounds having either an amide or carbamate, but were either not directed to contact lens materials or to the hydrophilic siloxane monomer and that the secondary references failed to cure these deficiencies. He also argued that the primary references were concerned with (1) electro-optical light transmitting coatings and adhesives in an industrial environment; (2) lubri--eant's for fibers and plastics; and (3) hy-drolyzable siloxanes. Harvey also argued that the secondary references did not provide direction for .modifying the primary. references to arrive at the pending claims. In particular, he cited Gaylord as an example this, noting that Gaylord teaches the use of a separate co-monomer to provide wettability, whereas his patent application teaches incorporating an amide or urethane (carbamate) moiety in the monomer structure itself. On September 16, 1986, the Examiner again rejected all the pending claims either as anticipated by Newell, or obvious over the previously cited combination of art, noting that the use of the co-monomers in the secondary references with the nitrogen-silicone containing monomers of the primary references would be, prima facie, obvious in contact lens manufacture. Thereafter, the Examiner indicated he would allow claims limited to the physical properties as defined in dependent claim 48 and which distinguish over optical fibers. Applicant then, filed a Notice of Appeal and later filed an amendment after the Appeal to amend independent claims: 1, 19, 25, 26, 27, 64, and 82 to distinguish the claims over optical fibers, to include a specified range.-of oxygen permeability, water content, tear strength, and percent elongation, and to clarify that claim 1 was directed to a polymeric material. A Notice of Allowance issued on .April 23, 1987, and the application matured into U.S. Patent 4,711,943 on December 8, 1987. C. The Claims at Issue The ’943 patent contains 73 claims, 7 of which are independent and 66 of which are dependent. Wesley Jessen is asserting 4 independent claims: 1,19, 27 and 50, and 6 dependent 'claims: 11, 14, 54, 57, 60, and 63. Most, of the asserted claims center on: (a) a first portion for increasing wettability; (b) a second portion for increasing oxygen permeability; and (c) four physical properties of the resulting contact lens material or contact lens, including moderate water content (15-60%), good oxygen permeability (Dk greater than or equal to 25 x 10 ~), and good physical stability measured by tear strength and percent elongation. Claims 19, 54 and 57 specifically claim an acrylic structure. Claims 1, 27, and 50 are independent claims and all cover polymeric material comprising a monomer having a designated hydrophilic first portion (which is a combination of an amide or a carbamate) and a designated siloxane second portion. Claims 2 through 13 are dependent claims that depend from claim 1. Independent claim 1, a composition of matter claim, recites: 1. A non-fibrous polymeric contact lens material having improved oxygen, permeability and stability, said polymeric contact lens material comprising a monomer having the following structural formula: first portion for increasing wettability, said first portion being hydrophilic and including a side-chain functionality selected from the group including the following structural formulae: and a second portion for increasing oxygen permeability, said second portion including a siloxane; wherein: said material has a water content of about 15-60%; Dk greater than or equal to about 25 x 10 ~; tear strength greater than or equal to about I.0 g/mm; and percent elongation greater than or equal to about '80%. Claims 11 and 14 depend from claim 1, claim a composition of matter and article claim respectively. Claim 11 limits the second portion to a particular siloxane structure. Claim 14 is a contact lens made from the material described in claim 1. They read as follows: II. The contact lens material of claim 1 wherein said second portion comprises the following structural formula:. wherein: n is 3; A1 and A2 are the same or different and are selected from lower alkyl and B groups; and B has the following structural formula: wherein: Z \ Z and Z are CH3. 14. A contact lens formed from the contact lens material of claim 1. Independent claim 19 is not stated in terms of a first and second portion, but rather shows a general chemical structure for a monomer with contains both portions. The general chemical structure is an acrylic, either a (meth)acrylamide or a (meth)acrylcarbamate. This structure is also- depicted in Formula III in the patent specification as one of the preferred embodiments of the invention. Formula III is composed of a combination of Formula I and Formula II. See ’943 patent, col. 6, 11. 60-65. It reads: 19. A non-fibrous polymeric material for making a contact lens with improved oxygen permeability and stability, said contact lens material comprising a monomer having the following structural formula: wherein: X1 is CH3 or H; X2 is CH3 or H; ■ m is 0 or 1; and Y is selected from the group consisting of the following structural formulae, the radical shown on thé left of each formula being bonded to ,th.e carbon shown on the left of Y in the .above .formula; wherein: n is an integer from 1 to 6; A1 and A2’ are the same or different and are selected from lower alkyl and B groups; and B has the following structural formula: wherein: Z1, Z2 and Z3 are the same or different and are selected from the group consisting of lower alkyl, phenyl, benzyl and tri-alkyl-siloxy substituents; and wherein: said material has a water content of about 15-60%; Dk greater than or equal to .about 25 x 10_1°; tear strength greater than or equal to about 1.0 g/mm2; and percent elongation greater than or equal to about 80%. Independent claim 27 describes a polymeric -material comprising a monomer with a first - and second’ portion and with four physical properties as in claim 1, but differs from claim 1 in also claiming a second monomer, a crosslinking agent and a polymerization initiator. It reads: 27. A non-fibrous; contact lens material comprising the copolymerization product of: (a) a first monomer having: a.first.portion for increasing wettability, said first portion being hydrophilic and including a side-chain functionality selected from the group consisting of the following structural formulae: a second portion for increasing oxygen permeability, said second portion including a siloxane; (b) a sepond monomer, copolymerizable with said first monomer; (c) a crosslinking agent; and (d)a polymerization initiator; and wherein: said material has a water content of about 15-60%; Dk greater than or equal to about 25 x 10 “; tear strength greater than or equal to about 1.0 g/mm; and percent elongation greater than or equal to about 80%. Independent claim 50 is similar to claim 1, but claims a material comprising a polymer (rather than a monomer) formed from “at least” a monomer having the first and second portions, with the material having the four physical properties. It reads: 50. A non-fibrous contact lens material having improved oxygen permeability and stability, said contact lens material comprising a polymer formed from at least a monomer having: a first portion for increasing wettability, said first portion being hydrophilic and including a side-chain functionality selected from the group including the following structural formulae: and a second portion for increasing oxygen permeability, said second portion including a siloxane; wherein: said material has a water content of about 15-60%; Dk greater than or equal to about 25 x 10 ~; tear strength greater than or equal to about 1.0 g/mm; and percent elongation greater than or equal to about 80%. Dependent claims 54 depends on claim 50 and limits the first portion of the monomer to acrylics — either a (meth)acrylamide or a (meth)acryleabamate. It reads: 54. The contact lens material of claim 50 wherein said first portion comprises the following structural formula: wherein: • X1 is CH3 or H; X2 is CH3 or H; m is 0 or 1; and Y is selected from the group consisting of the following structural formulae, the radical shown on the left of each formula being bonded to the carbon shown on the left of Y in the above formula: Claim 57 depends from Claim 54 and limits the second portion to particular si-loxane structures. It reads: 57. The contact lens material of claim 50 wherein said first portion comprises the following structural formula: wherein: X1 is CHS or H; X2 is CHS or H; m is 0 or 1; and Y is selected from the group consisting of the following structural formulae, the radical shown on the left of each formula being bonded to the carbon shown on the left of Y in the above formula: wherein said second portion comprises the following structural formula: wherein: n is an integer from 1 to 6; A1 and A2 are the same or different and are selected from lower alkyl and B groups; and B has the following structural formula: wherein: Z1, Z2 and Z3 are the same or different and are selected from the group consisting of lower alkyl, phenyl, benzyl and tri-alkylsiloxy substituents. Claim 60 depends from claim 50 and more narrowly limits the second portion of the’ monomer to a specific species of silox-ane structures. It reads: 60. The contact lens material of claim 50 wherein said second portion comprises the following structural formula: wherein: n is 3; A1 and A2 are the same or different and are selected from lower alkyl and B groups; and B has the following structural formula: wherein: Z1, Z2 and Z3 are CH8. Claim 63 is the contact lens made from the material of claim 50. It reads: 63. A contact lens formed from the contact lens material of claim 50. The specification of the ’943 patent contains nine preferred embodiments of the hydrophilic siloxane monomers, five are preferred embodiments of the dimers, and over sixty examples of materials made from two of the preferred monomers, as well as fifteen tables describing the physical properties of each formed material. D. The Bausch & Lomb Accused Products Bausch & Lomb’s PureVision silicone hydrogel contact lens is made from a non-fibrous polymeric contact lens material called “Balafilcon A.” Wesley Jessen contends that Bausch & Lomb’s PureVision contact lenses, as well as Balafilcon A, infringe the asserted claims of the ’943 patent. According to Bausch & Lomb, “Balafil-con A is a copolymer of a silicone vinyl carbamate, N-vinyl-prryolidone, a siloxane cross-linker and a vinyl alanine wetting monomer..Balafilcon A, and hence,Pu-reVision contact lenses, are made by the copolymerization of at least two monomers, one of which is a monomer known as Tris(trimethylsiloxy)silylpropyl vinyl car-bamate or TRIS-VC. As is apparent from its complete chemical name, TRIS-VC is a silicone vinyl carbamate monomer. , E. The Trial During trial, the parties directed their attention to five issues. First, whether, as Wesley Jessen contends; the claims cover a vinyl carbamate such as TRIS-VC, the material in Bausch & Lomb’s PureVision lens, or, as Bausch & Lomb contends, the claims are limited to acrylics. Second, whether Wesley Jessen has proved Bausch & Lomb’s Balafilcon A monomer has “a first portion for increasing wettability.”, Third, whether, as Bausch & Lomb contends, Dr. Harvey’s invention was anticipated by the Keogh ’725 patent or would have . been obvious in light of the Keogh ’725 patent and the Tanaka ’985 patent. Fourth, whether, - as Bausch & Lomb contends, Dr. Harvey was never able to demonstrate that his material was suitable for contact lenses and that he failed to disclose to the Patent and Trademark Office the most successful test he did conduct was with an oxygen plasma treatment. It argues these facts suggest the claims of the patent are invalid for lack of enablement and a failure to disclose best mode, or unenforceable due to inequitable conduct. Finally, Wesley Jessen asks the court to draw a negative inference from Bausch & Lomb’s failure. to disclose an opinion it sought from counsel on whether it infringed the claims of the Harvey Patent and find Bausch & Lomb is willfully infringing the patent. The parties, offered the following evidence at trial on these matters. 1. Infringement a. Literal Infringement Wesley Jessen called Dr. Harvey to testify in support of its infringement case. Dr. Harvey testified that in June of 1981 he was working at Syntex Ophthalmics when he conceived the idea for and began working on developing a hydrophilic silox-ane monomer for use in contact lens materials. His goal was to improve the hydro-philicity and oxygen permeability of the lens materials. A further object of the invention was to provide a contact lens material with improved wettability. Harvey’s idea was to combine the properties of siloxane with the properties of hydrogels in a single monomer that would contain a hydrophilic portion, a siloxane portion, and a polymerizable group. This approach, to develop a hydrophilic siloxane-containing monomer that could be incorporated into a hydrogel, could provide a lens with increased oxygen permeability that does not have a high water content, because .the hydrogel would not depend solely on water for its oxygen permeability. By 1985, Harvey had developed a material he described by a structural formula that is set out in claim 1 of the patent.- It has a first portion for increasing wettability. He described and claimed that first portion as: “said first portion being hydro-philic and including a side-chain functionality selected from the group including the following structural formulae”: The monomer also has a second portion that Harvey described and claimed as: “a second portion for increasing oxygen permeability, and said second portion including siloxane.” He also characterizes the material as “halving] a water content of about 15-60%, Dk [a measure of oxygen permeability] greater than or equal to about 25x10 ~, tear strength greater than or equal to about 1.0 g/mm(2), and percent elongation greater than or equal to about 80%.” Dr. Harvey reported that in testing the material he needed a proxy to test wetta-bility in the eye and used a test that measured a receding contact angle, which he referred to as a wetting angle or a contact angle. The ’943 patent thus characterizes improved wettability as having “a receding contact angle of less than that of contact lenses made of polyMMA [PMMA, the substance used in hard lenses].” ’943 patent, col. 3,11. 59-62. Wesley Jessen called Dr. Lynn Winter-ton to testify on tests he performed to establish that Bausch & Lomb’s PureVision has “increased wettability,” as required by the asserted claims. Dr. Win-terton is the analytical group director in surface chemistry and surface modification at Wesley Jessen’s corporate parent CIBA Vision. He has a Ph.D. in material science and engineering from the University of Utah. Dr. Winterton concluded, based on his tests, that the PureVision lens material Balafilcon A has “increased wettability” over the material used in rigid non-gas permeable materials, PMMA. Dr. Winterton testified that in his patent Harvey describes using a test called the Wilhelmy Plate Methodology to measure wettability. Under that test, a sample of material is suspended from an electro-balance and is either lowered into a fluid or the fluid is raised up to it to create a wavefront, from which contact angles can be measured. The smaller the receding contact angle, the more wettable the substance. Harvey used this test on hydrated material and measured a receding contact angle, which would be less than that of a contact lens material made with PMMA. Winterton confirmed that in 1985, receding contact angle measurements were the most accurate methodology to determine wettability using water. Dr. Winterton explained that the receding contact angles of PMMA is not a fixed number, but depends on the processing history of the sample. Dr. Winterton testified that he performed the Wilhelmy Plate test on hydrated samples of PMMA and determined that PMMA had a receding angle of 46 degrees. He performed the same test on untreated samples of hydrated PureVision material and found that it had a receding angle of 21 degrees. He noted that these results confirm that the non-plasma treated PureVision lenses have a lower contact angle (and thus are more wettable) than PMMA. Dr. Winterton next testified as to a Sessile Drop test that he conducted on both untreated PureVision lenses and the treated PureVision commercial product. Under the Sessile drop test, he used a syringe to place water on the samples and then to withdraw that water, while measuring the advancing and receding contact angles. He testified that the results from this test were comparable to the results he obtained using the Wilhelmy Plate method. The Sessile Drop tests also demonstrated that the PureVision material was more wettable than PMMA. While the PMMA had a receding angle of 53 degrees, the untreated PureVision had an average receding angle 17 degrees. The average receding angle for the commercialized product was 11 degrees. For a third set of tests, Bausch & Lomb brought to CIBA Vision three films characterized as PMMA, TRIS, and TRIS-VC.. These films were hydrated prior to Dr. Winterton performing the contact angle measurements. He testified that a dynamic Sessile Drop method was performed as a substitute for the Wilhelmy Plate method because the samples produced by Bausch & Lomb were not amenable to the Wilhelmy Plate technique. Dr. Winterton explained that the ’943 patent reports static and dynamic (i-.e., advancing and receding) contact angles and that the Wilhelmy Plate method was used to record dynamic contact angles, while the Sessile Drop technique was used to record static contact angles. Dr. Winterton testified that the dynamic sessile mode gives values for receding contact angles that are comparable to the Wilhelmy Plate method and reported that the measurements of the receding contact angles of PMMA obtained by that method were comparable to the Wilhelmy Plate method. He further reported that the average receding angle for TRIS by the dynamic sessile technique was 64°, while the average receding angle for TRIS-VC was 40°., Dr. Winterton concluded that these results show that TRISVC is more wettable than TRIS. He opined that the lower receding contact angle of TRIS-VC as compared to TRIS was due to the presence of the carbamate. Wesley Jesseh called Dr. Murray Goodman as a technical expert. Dr. Goodman is a professor of Chemistry and Biochemistry at the University of California at San Diego. He testified that Dr. Harvey’s polymer had “a first portion for wettability,” which is made up of -a hydrophilic grouping of oxygen, carbon and nitrogen and could be an amid or a carbamate. The first portion of the polymer is complimented by a second portion that is designed to increase oxygen permeability or oxygen transport. This second portion is a hydrophobic oxygen transporting siloxane. The two portions are polymerized, or joined, to make the monomer. Dr. Goodman described the structure of the Balafilcon A polymer in Bausch & Lomb’s PureVision line of contact lenses. It includes a vinyl acrylic tinting agent, dimethiacryl antiquineone, which adds col- or to the lens, and cross linked chains with a TRIS-VC monomer, a vinyl pyrrolidone, and a vinyloxycarbonyl alanine derivative. The TRIS-VC monomer includes siloxane and a carbamate as side chains. It has the following structure: Dr. Goodman testified that Balafilcon A meets each of the limitations in the claim 1. It is a non-fibrous contact lens material with improved oxygen permeability and stability. It has a water content between 15 and 60 percent, a Dk greater than or equal to 25 times 10-10, a tear strength greater to or equal to 1 gram per square millimeter, and an elongation greater than or equal to 80 percent. It is a polymeric material comprising a monomer. The TRIS-VC component has a first portion for wettability that is hydrophilic, and a carbamate or amide with a side chain functionality selected as identified in the claim. Dr. Goodman testified that a carbamate is hydrophilic, which has the characteristic of increasing wettability. He further testified that Dr. Winterton’s report established that the TRIS-VC is more wettable than TRIS, using the comparison of receding contact angles used to characterize increased wettability in the patent. In the context of claim construction, Dr. Goodman testified that a person of ordinary skill in the art would be a person holding a Ph.D. or have approximately four years of experience in the field of contact lens research or its equivalent. That person would understand Harvey’s .invention and the claims as follows. Harvey claims a monomer with a first portion for wettability, which is made up of a hydrophilic grouping, identified in the claim as either an amid or a carbamate, each of which is a specific grouping of oxygen, carbon and nitrogen. This first portion is complimented by a second portion, designed to increase oxygen permeability, that includes a siloxane. He notes that a person of ordinary skill in the art would understand that there needs to be a polymerizable entity appended to make the polymer. In the context of the claim, a person of ordinary skill in the art would understand that, with an appropriate initiator, a vinyl or acrylic would be that po-lymerizer. Vinyl and acrylic are both C double bond C and they polymerize through a chain growth process by a free radical initiator. They are in many ways interchangeable, as acrylics are a subset of vinyls. While in examples in the patent, Harvey identifies acrylics as the C double bond C polymerizable group, one of ordinary skill in the art would understand the patent teaches one to use a vinyl. As noted above, Dr. Goodman relied on certain testing done by Dr. Lynn Winter-ton, to confirm that the Balafilcon A has improved wettability as claimed in the patent. That is, the patent provides that the improved wettability of the claimed material would be characterized by a receding contact angle of less than that of the contact lenses made from the material used in hard contact lenses, PMMA. He testified that Dr. Winterton’s tests showed that the vinyl carbamate group of TRIS-VC was more wettable than TRIS, and attributed that wettability to TRIS-VC containing a hydrophilic carbamate. Dr. Goodman testified that the TRIS-VC component of Balafilcon A has a second portion for increasing oxygen permeability, with the second portion including a siloxane. He concluded that, based' on this analysis and his understanding of the claims, Bausch & Lomb’s Balafileon A infringes each of the following claims asserted by Wesley Jessen: claims 1, 11, 14, 27, 50, 60 and 63. Bausch & Lomb responded to Wesley Jessens’ evidence on literal infringement with testimony from Dr. George Grobe, III, who questioned Dr.'Winterton’s tests on wettability and with testimony by Dr. William H. Daly who responded to Dr. Goodman’s testimony on literal infringement. George L. Grobe, III, is a director of materials and surface science at Bausch & Lomb. He testified he had tested dry films of TRIS and TRIS-VC for wettability under a refined Sessile Drop methodology called a Zisman plot, where liquids are placed on a solid surface, and a contact angle can be measured. Under the Zis-man methodology, measurements of contact angle made where the probe is inserted are excluded. He reported that by this test, the wetting characteristics of TRIS and TRIS-VC were the same. However, on cross examination he conceded that his test results in Def. Ex. 109 do indicate a difference — TRIS-VC is reported as having a contact angle of 99°, .while TRIS is reported as having a contact’ angle of 113°. Grobe further testified he had reviewed Dr. Winterton’s test under the Sessile Drop method and concluded it was not useful, as the probe Dr. Winterton used influenced and distorted the shape of the drop. Grobe further testified that by his definition, in his testing, fully processed PureVision lenses are hydrophobic, notwithstanding the fact that Bausch & Lomb advertises its PureVision lenses to the world as hydrophilic. See Pl.Ex. 733 (Pu-reVision brochure stating that “The Bausch & Lomb PureVision (Balafileon A) Visibility Tinted Contact Lens is a soft hydrophilic contact lens.”). Dr. Grobe testified that a contact angle of 90° indicates a hydrophobic lens and that his opinion is consistent with Bausch & Lomb’s PureVision Global Training Program, which indicates that the water wetting angle of a completely hydrophobic lens is about 110°. He conceded, however, that Balafileon A, the bulk material of PureVision, is defined by the USP Dictionary of USAN International Drug Names (1998) as being hydro-philic. Dr. Daly, who has a Ph.D. in polymer chemistry and is a Professor of Chemistry at LSU, testified- that Bausch & Lomb’s material and lenses do not infringe, as TRIS-VC is an vinyl monomer, not an acrylate, and does not correspond to the structural formula in claim 1. He testified that the vinyl groups and the acrylate groups will not behave the1 samé when used to make a copolymér system. To obtain a good contact lens material, one that is clear, one needs to have a good distribution of the co-monomers in a given polymer chain. When- one changes from an acrylic as identified by Harvey in the patent to a vinyl monomer, one will not get a good distribution of the co-monomers and will get a poor lens material. In addition, Dr. Daly looked to Dr. Grobe’s tests to confirm that TRIS-VC does nbt increase wettability. He further testified in' support of Bausch & Lomb’s position that as used in the patent the term “wettability” means wettable enough to be able to be inserted into the eye without causing discomfort to the patient as it is. the wettability in a patient’s eye that determines whether a material may be used for .contact lenses. Bausch & Lomb argued that the claims of the ’943 patént should be limited to the specific embodiments disclosed in the specification, which are acrylics. Specifically, Bausch & Lomb reads the section at column 5' of the patent titled “Detailed Description of Preferred Embodiments” as describing the first portion as in claim -1 and as reporting that-this first portion has the general structure shown in Formula I, which is an acrylic. Bausch- and Lomb reaches this conclusion by finding that the applicant adopted this construction when he stated that the first portion for wetta-bility as claimed has the general structure shown in Formula I. Second, it argues that this must he the structure for the first portion as the applicant did not identify any other structure that would justify a broader claim construction. Third, Bausch & Lomb argues that if there is no structure tied to the claims, the “first portion for increasing wettability” is a means-plus-function element and must be limited to the structures disclosed in the specification. b. Infringement Under the Doctrine of Equivalents. Dr. Goodman also testified for Wesley Jessen on whether the PureVision lens and Balafileon A infringe under the doctrine of equivalents. Goodman explained .that the differences between independent claim 50 and claim 54 (and, by logical extension, claim 57 which depends from claim 54) is that claim 54 specifically claim acrylics for the polymerizable portion of the monomer. As noted above, he opined that one skilled in the art could substitute an acrylic monomer for TRIS-VC (a vinyl monomer) in Balafileon A and come up with an equivalent material and that one skilled in the art would know that interchangeability of that sort could be accomplished. Goodman testified that an acrylic is a specific type of vinyl compound. He explained that both vinyls and acrylics have the vinyl grouping CH2=CH-. Vinyls have an unspecified compound bonded to CH, .while in acrylics that compound is C=0. See Pl.Ex. 721 (quoting definition of “vinyl compound” from Hawley’s Condensed Chemical Dictionary (13th ed.1997)). He also noted that using a material that has a vinyl carbamate group. imparts a more wettable, hydrophilic character to the material. To support that general proposition he cited to an .article written by Bausch & Lomb witness Jay F. Kunzler. See Pl.Ex. 713 (article entitled “Silicone-based Hydrogels for Contact Lens Application,” which was published in the August 1999 .edition of Contact Lens Spectrum notes that “This vinyl carbamate group is hydrophilic. This direct hydro-philic attachment now gives the silicone significant, hydrophilic character.”) Goodman also noted that the chemical structure of one of the Harvey ■ patent’s preferred acrylic monomers differs from TRIS-VC only in that TRIS-VC has a single additional oxygen atom, which is not critical to the.claimed invention. In comparing the two monomers, he stated: “Both are vinyl structures. They have C double-bond C at the left side of the structures ... one [the Harvey monomer, TSAA] is linked to a carbonyl. The other [TRIS-VC] is linked to an oxygen ... so that an oxygen is the only additional part in TRIS-VC over TSAA.” Goodman further noted that TRIS-VC is synthesized in a substantially identical fashion to the Harvey monomers via a condensation reaction. See Pl.Ex. 722-724. Last, he noted that acrylics and vinyls are interchangeable for purposes of the claimed invention, as acrylics can be copolymerized with vinyls and vice versa. Goodman thus concluded that TRIS-VC is an equivalent structure, that performs substantially the same function in substantially the same way. With regard to claim 19, which is also directed to an acrylic, Goodman noted that his testimony regarding the interchangeability of acrylics and vinyls as discussed in the context of claim 54 is equally applicable to the whole monomer as described in claim 19. He further stated that the difference between TRIS-VC and the monomers described in claim 19 were insubstantial and that one of ordinary skill would know that-TRIS-VC and the monomers described in claim 19 are interchangeable. Goodman testified that there are differences between the manner in which vinyls and acrylics copolymerize, but that these differences are not substantial and that, for the purposes of the invention, vinyls and acrylics are interchangeable. Thus, even if TRIS-VC is not identical to the monomer in the first portion in claims 19, 54 and 57, it is used in substantially the same way as those monomers, with substantially the same structure, performs substantially the same function and that the differences between them are insubstantial. As further evidence of the interchangeability of vinyls and acrylics, Wesley Jessen relies on a 1995 Bausch & Lomb document, from its Chemical and Material Development Program entitled “Hi-Dk Program Perspective.” That document notes that “a vinyl carbonate or carbamate could be used in place of the methacyrlate group for nearly any currently used monomer.” Pl.Ex. 725. Dr. Daly responded to Dr. Goodman’s testimony, by testifying that it was his opinion there was no equivalence, as TRIS-VC does not increase wettability and is a substantially different structure than any monomers listed in the Harvey patent. TRIS-VC also exhibits a substantially different reactivity in a copolymeri-zation process than the TRIS amide that is cited in the Harvey patent. He testified that while the TRIS amide as described in the patent can not react with N-vinyl pyr-rolidone, TRIS-VC and N-vinyl pyrroli-done copolymerize very cleanly. And when they do, they produce a cloudy, opaque material. Therefore, any attempt to polymerize TRIS-VC with the monomers in the Harvey patent would result in incompatible copolymers. He testified that Bausch & Lomb’s work demonstrated this, as it had to design a whole ensemble of new monomers to carry out the polymerization to make Balafileon A. In rebuttal, Dr. Goodman explained that he disagreed with Dr. Daly’s conclusion that differences in the reactivities of vinyls and acrylics made vinyls non-equivalent. He noted that while this may be true for very simple “textbook” examples of these types of monomers, the reactivities of the complex monomers at issue here are not very different and there would be no problem getting polymerization to take place. 2. Validity- a. Anticipation and Obviousness In support of its case on invalidity, Bausch & Lomb called Jay F. Kunzler. Dr. Kunzler is a research fellow at Bausch & Lomb. Kunzler has a Ph.D. in macromolecular science from Case Western Reserve University. He is one of the inventors on the Keogh patent, which discloses a variety of hydrophilic side chains that can be employed on siloxane monomers for hydrogels for contact lens applications. The Keogh patent, introduced as Def. Ex. 118, is entitled “Hydrophilic Contact Lens Made From Polysiloxanes Which are Thermally Bonded to- Polymerizable Groups and Which Contain Hydrophilic Si-dechains.” The invention relates to “a novel polysiloxane water absorbing Contact lens.” More ' specifically, the abstract states the patent discloses “[a] water absorbing, soft, hydrophilic, flexible, hydro-lytically stable, biological inert contact lens with the capability of transporting oxygen sufficiently to meet the requirements of the human cornea.” The invention comprises. “a polysiloxane which is a, co terminally bonded through divalent hydrocarbon groups to polymerizably activated unsaturated, groups and which contain[s] hydro-philic sidechains .... ” Keogh teaches that the claimed contact lenses are to be prepared “from the polymerization of hydro-philic sidechains eojitaining polysiloxane monomers ... to. form polymers in a cross-linked network.” ’725 patent, col. 11. 9-18. After setting forth a number of formulae embodying the’ claimed invention, the Keogh patent lists 38 illustrative examples of how to prepare its preferred embodiments. Example V instructs the reader how to measure a number of the physical properties of the resultant film, including oxygen permeability, percent of water, tensile strength, tensile modulus, and percent elongation. The copolymer prepared in accordance with Example V includes a water content of 18%, an oxygen permeability of 6.7x10 " Dk, a tensile strength of 86 g/mm, and percent elongation of 84%. A number of the other examples, including Example XXX, state that after following its instructions “[a] soft, water absorbant, hydrophilic, optically clear film is obtained.” Dr. Kunzler testified that he had recently prepared four sample materials pursuant to Example XXX in the Keogh patent, after modifying and simplifying the monomer and polymer preparations, and concluded that the amide side-chain’ siloxane polymers described in the patent can be used to prepare-low modulus silicone hy-drogels possessing a water content of about 15-60%, oxygen permeability (Dk) of greater than or equal to about 25 x. 10 ~, as measured by the coulometric technique, with tear strength greater than or equal to about 1.0 g/mm2 and percent elongation greater than or equal to about 80%. Dr. Kunzler reported that two of the four formulations he prepared fell within the ranges for the four physical properties required by the claims of the ’943 patent. Dr. Daly followed this testimony with his opinion that based on Dr. Kunzler’s recent work, the Keogh patent anticipates all of the claims of the Harvey patent explicitly or inherently, with the exception of claim 19 which discloses the specific structure of the claimed monomer. Example V of the Keogh patent demonstrates the four claimed properties that the copo-lymer of Keogh was designed to achieve, while examples XXVIII, XXIX, and XXX describe the synthesis of the materials. Daley noted Keogh teaches polysiloxane monomers which include an amide side chain that is hydrophilic. He also testified that Keogh discloses each element of the broader asserted claims, as construed by Wesley Jessen. In particular, Example XXX discloses a monomer having an amide structure, a siloxane structure, and-polym-erizable groups. In addition, Dr. Daly testified that a person of ordinary skill in the art (which he defined as a person with a Ph.D. in chemistry or polymer science working in this area) would have found the invention in the Harvey patent obvious, in light of both Tanaka and Keogh. He noted that Keogh identified a method to prepare contact lens material which has a hydrophilic side chain attached to a siloxane structure. Tanaka discloses siloxane monomers having hydrophilic groups that are useful for contact lens materials. The Tanaka monomer discloses the concept of attaching a polymerizable group to a hydrophilic moiety and then further attaching the hydro-philic moiety to the siloxane. Dr. Daly provided no testimony, however, as to what specific teaching there is to combine the Tanaka and Keogh patents. In response, Wesley Jessen called Dr. Goodman, who testified the Keogh structure is very different from the structure claimed by Harvey in the ’943 patent. He testified that Keogh teaches a ladder-shaped polymeric structure in which the siloxane is contained in the rungs of the latter as a cross-linker, while Harvey teaches the hydrophilic siloxane portions as a side chain off of the polymer backbone. He further testified that, as Harvey indicated in col. 2 11. 25-32 of the ’943 patent, Keogh specifically teaches away from monofunctional monomers, such as those claimed in the ’943 patent. In addition, he noted that Keogh does not teach or suggest the separate cross-linking agent, as described in claim 27 of the ’943 patent, or the four claimed physical properties of the Harvey patent. Dr. Goodman further testified that the Keogh patent does not teach or suggest the substitutions made by Dr. Kunzler for Example XXX of the Keogh patent. As to Kunzler’s tests, Dr. Goodman reported that the changes he made, including substituting DMA, were major deviations from the example in the Keogh patent, and would not have been obvious. In addition, Wesley Jessen identified a number of alleged deficiencies with Dr. Kunzler’s test to support its contention that these tests cannot and do not support a finding of anticipation. First, the material identified in the example used by Dr. Kunzler had not been produced at the time the patent was filed, and perhaps had not been produced before Dr. Kunzler did it for this trial. Second, the first embodiment that Kun-zler prepared directly from Example XXX produced a material that did not meet the four physical properties of the ’943 patent, and is not even a hydrogel. • Thus it is vastly different from a material produced from the ’943 patent claims which disclose “essentially ... a hydrogel, which does not depend solely on water for its oxygen permeability,” having the claimed structure, and the four claimed physical properties. Moreover, none of the other samples prepared by Dr. Kunzler are in fact disclosed in the Keogh patent, as he substituted 'certain constituents in making them, including DMA. Dr. Kunzler acknowledged that none of his other three samples exactly reproduced what was contained in Example XXX, and that, while the third and fourth samples meet the four properties of the ’943 patent, they involve the substitution of DMA for two components listed in Example XXX. He explained that he picked DMA over the other preferred co-monomers listed in the Keogh patent, because he had it available in- his laboratory. Third, Wesley Jessen argues that in selecting DMA from dozens of preferred monomers in the Keogh patent, Dr. Kun-zler was simply working backwards from the Harvey patent, where nothing in Keogh suggests that the choice of DMA would work. Dr, Goodman opined that these “fundamental” changes, including the substitution of DMA,, were “a belated attempt to make such a major substitution in order to create something that would create a hydrogel, since the replication of Example XXX showed that it was clearly not a hydrogel” and led to “polymers with completely different properties.” As further support for this contention, Wesley Jessen points to Dr. Daly’s testimony that the reason for substituting DMA in Example XXX of the . Keogh patent was because “the objective is to make a hydrophilic gel.” Wesley Jessen suggests all of these facts demonstrate Keogh did not anticipate or disclose inherently the Harvey invention. As for the Tanaka reference, Dr. Goodman testified that Tanaka teaches away from the Harvey invention, as it is directed to contact lens materials “which do not substantially absorb water.” He further testified that there was no motivation in the prior art; to suggest these two references should be combined to produce hy-drophilic siloxane hydrogels. Finally, he noted, that it is not physically possible to take the hydrophilic group from Keogh and insert it into- Tanaka.- > Wesley Jessen also points to a number secondary considerations that suggest the invention in the Harvey patent was not obvious. Wesley Jessen notes that Bausch & Lomb’s documents show that upon reading of the Harvey patent, its scientists recognized its importance. Further, Bausch & Lomb has recognized the contribution of the ’943 patent by citing it in many of their own patents and publications, including U.S. Patent Nos. 5,563,184; 5,525,691; 5,387,663; 5,387,632; 5,364,918; 5,358,995; 5,386,797; 5,274,008; 5,219,965; 5,177,165; 5,158,717; and 5,135,197. Finally, Wesley Jessen notes that Keogh and Tanaka are listed as references cited on the front of the ’943 patent. Consequently, the Examiner considered these references and was aware of these references when the PTO issued the patent. Moreover, the Harvey patent specifically addresses and distinguishes both Keogh and Tanaka in describing the background of his invention. With regard to Keogh, the ’943 patent states that: Difunctional acrylic siloxanes are at the heart of what is called the B & L (Bausch & Lomb) technology, exemplified by [a number of patents including the Keogh ’725 patent]. There, a variety of polysiloxanes, end-capped with po-lymerizable, unsaturated groups, are shown to be useful for manufacturing contact lenses without the use of “fillers” such as cross-linking agents. The specifications of such patents suggest (but no specific teaching or example is provided showing) incorporation of an acrylamido group adjacent to each polymerizable and unsaturated group of the difunctional monomers and specifically teach away from use of monofunctional monomers, as requiring such “fillers.” Moreover, even in the disclosed difunetional embodiments ... the ... dimers of the present invention are not shown or suggested. ’943 patent, col. 2, 11. 16-35. With regard to Tanaka, the ’943 patent states that while “[cjopolymerization of a variety of hydrophobic siloxane monomers ... with' a hy-drophilic monomer (such as N-vinyl pyrro-lidone or dimethyl acrylamide) a cross-linking agent, and an initiator, are described in a series of patents to Tana-ka,” including the Tanaka ’985 patent, the Tanaka references “do not teach or suggest the acrylamide sidechain siloxane monomers and polymers of the present invention.” Id. at col. 1,11. 67 — col. 2,11. 9. b. Best Mode and Enablement On the issues óf best mode and enablement, Bausch & Lomb offered the testimony of Dr. Daly who testified that the documents relating to Dr. Harvey’s development of his material show that he was not successful in ever actually having the material work as a contact lens in a human eye, and that the most success he did have was when he used a plasma treated lens, which a patient was able to keep in his eye for a few minutes. As Dr. Harvey failed to disclose that plasma treatment for his lens he had failed to disclose his best mode of practicing the invention. In response to these, contentions, Wesley Jessen relied on the testimony of Dr. Harvey. He confirmed that he never did successfully commercialize the material for a contact lens. He then reviewed his development of the material and his attempts to test it in humans. Dr. Harvey reported that in an initial test on a volunteer a lens made from the material caused sufficient stinging that the volunteer could not keep it in his eye long enough to evaluate his vision through the lens. Dr. Harvey then modified the material by removing methanol in a process called methanol extraction. He then placed the lens in the volunteer’s eye and confirmed they had eliminated the stinging. The methanol extraction caused surface drying on the lens, which meant that when the lens was place in a volunteer’s eye it removed layers of epithelium from the corneal area. Dr. Harvey then sought to solve the drying problem by treating the lens with an oxygen plasma surface treatment. During a follow up test with the plasma treatment, the volunteer found that the lens fit and visual acuity was good. Dr. Harvey testified that he understood that the plasma treatment would not last well. It was generally understood in the contact lens field at that time that the effect of plasma treatment was short-lived. Dr. Harvey explained that while he believed that the use of plasma treatment could be a valuable tool with which to test the properties of the lens, he' did not believe plasma treatment to be his best mode because of its short term effect.' This belief is corroborated by Harvey’s statement in the Background of Invention section of the ’943 patent, where he stated that “surface treatments ... have a tendency to be short lived in their effectiveness due to normal wear and tear on the surface.” ’943 patent, col. 1,11. 62-66. The invention in the ’943 patent was never commercialized at Syntex. Commercialization was hindered by the sale of the company and diversion of resources away from the project. Harvey reported that when the company was sold, he stopped his work on the lens and it. was never commercialized. While he pursued the patent, he did not disclose the plasma treatment in the patent application, because he did not consider it a best mode and never did come to a conclusion as a best mode of practicing the invention. Harvey subsequently left Syntex in 1989. c. Utility and Indefiniteness In its papers, Bausch and Lomb sets out two additional arguments in support of its contention that the claims of the Harvey patent are invalid. First, Bausch & Lomb contends the claims are invalid for lack of utility. Second, it contends the claims are indefinite, arguing that the second portion for increasing oxygen permeability is indefinite because in most iftstances the claims fail to describe a complete chemical formula for the second portion. In its post trial filing, Bausch & Lomb supplemented its indefiniteness defense, by further arguing that the claims were indefinite for a second reason: a person of ordinary skill in' this art would not be able to determine whether a potentially infringing material has “increased wettability” because the PMMA standard identified in the patent is unreliable. 3. Inequitable Conduct Báusch and Lomb also argues that the claims are unenforceable and that Dr. Harvey engaged in inequitable conduct by failing to disclose the oxygen plasma treatment to the Patent and Trademark Office, and in suggesting to the PTO that his material possessed all of the wettability necessary for contact lenses. In its post trial briefing, Bausch & Lomb supplemented this defense by also arguing that Dr. Harvey had mislead the PTO in two other statements. First, Harvey distinguished U.S. Patent No. Re. 31,406 to Gaylord by writing “Gaylord teaches a separate monomer that must be copolymerized to achieve greater wettability, whereas applicant herein teaches putting the amide and urethane moieties in the monomer structure.” Defendant contends this statement was misleading as it in effect tells the PTO that it was not necessary to use copolymerization to produce a lens with adequate wetta-bility, because wettability is introduced by the amide and the urethane moieties in the siloxane structure. Second, Bausch & Lomb reports Harvey’s statement in the specification at Column 1, lines 59 to 66 that surface treatments of contact lenses have a ten