Full opinion text
FINDINGS OF FACT AND CONCLUSIONS OF LAW LIFLAND, District Judge. Plaintiffs, Pfizer, Inc., Pharmacia Corp., Pharmacia & Upjohn Inc., Pharmacia & Upjohn Company, G.D. Searle & Co., G.D. Searle LLC, Searle LLC (Delaware), and Searle LLC (Nevada) (collectively “Pfizer” or “Plaintiffs”) allege infringement of U.S. Patent Nos. 5,466,823 (the “ ’823 Patent”); 5,563,165 (the “ ’165 Patent”); and 5,760,-068 (the “ ’068 Patent”) (collectively the “patents-in-suit”) by Teva Pharmaceuticals U.S.A., Inc. (“Teva” or “Defendant”). The patents-in-suit are directed toward eele-eoxib, the active ingredient in Celebrex, and a broad genus of compounds that in-eludes celecoxib, pharmaceutical compositions including such compounds, and methods of using such compounds. For the reasons set forth below, the Court finds that Teva has failed to prove obviousness, inequitable conduct, a violation of the best mode requirement, or obvious-type double patenting by clear and convincing evidence. Thus, the patents are neither invalid nor unenforceable, and Teva has infringed the patents under 35 U.S.C. § 271(e)(2). BACKGROUND I. A Brief History of Anti-Inflammatory Drugs The precise biological reason people suffer from pain and inflammation is not yet fully understood. However, great progress has been made in recent decades toward understanding and treating the pain and other symptoms associated with inflammatory conditions. Around the turn of the century, researchers at Friedrich Bayer & Co. invented aspirin, which quickly gained popularity as a painkiller. Over the next several decades similar drugs— classified as traditional non-steroidal anti-inflammatory drugs (“NSAIDs”) — were introduced into the market, including ibuprofen and naproxen. Yet it was not until the early 1970s that the mechanism of action of these drugs was understood. In simplified terms, scientists eventually discerned that traditional NSAIDs worked by blocking the production of prostaglandins in cells. Prostaglandins are small molecules that are associated with both pain and inflammation, and with “good housekeeping” functions, such as contributing to good gastrointestinal physiology and blood clotting. These prostaglandin molecules are produced in the body when arachidonic acid (a fat found in cell membranes) is catalyzed by cyclooxygenase (COX) enzymes. Traditional NSAIDs inhibited the COX enzyme, thus preventing the creation of prostaglandins and the associated pain and inflammation. This discovery also shed light on the cause of some of the reported side effects of traditional NSAIDs. It had been known for some time that NSAIDs were associated with gastrointestinal (“GI”) side effects, ranging from discomfort to serious life threatening ulcers, yet the cause of these GI risks was unclear. With the discovery of the prostaglandin pathway, it became clear that in addition to reducing the negative effects of prostaglandins, traditional NSAIDs like aspirin also reduced the positive “housekeeping” functions, thus causing potentially severe GI risks. This new knowledge was an important step in the ongoing effort to invent a new kind of NSAID that would treat pain and inflammation without causing GI side effects. The next breakthrough in anti-inflammatory drug development came in the 1970s and 1980s when scientists established that there were in fact two different kinds of COX enzymes: one responsible for producing good housekeeping prosta-glandins (COX-1), and one responsible for producing prostaglandins associated with pain and inflammation (COX-2). (See figure below.) COX-1 was fully identified and sequenced in 1988. COX-2 was sequenced in 1991. Once both enzymes were sequenced, scientists hypothesized that it might be possible to selectively inhibit COX-2, thus creating a GI sparing NSAID. However, due to the similarity of the two enzymes, there was significant skepticism as to whether it would be possible to develop a drug that selectively inhibited either enzyme. Scientists became more hopeful in 1992 after Dr. William Galbraith of DuPont-Merck gave a presentation at a prostaglan-din conference in Keystone, Colorado (“the Keystone Conference”). Dr. Galbraith’s presentation focused on a compound called DuP 697, which he reported might be a COX-2 selective inhibitor. Following the Keystone Conference, pharmaceutical companies stepped up their efforts to create a COX-2 selective compound, and thus began what Teva has characterized as a “race” to develop the first COX-2 selective inhibitor, with Pfizer and Merck as the two frontrunners. II. Celebrex and the Patents-in-Suit For Pfizer, the finish line of the COX-2 selective inhibitor race was Celebrex. Sometime between August and November 1993, Pfizer scientists invented several new compounds they believed would selectively inhibit the COX-2 enzyme. One of the compounds was celecoxib. On November 30, 1993, Pfizer filed U.S. Application No. 08/160,594 (the “ ’594 Application”), covering a broad range of chemical compounds, as well as pharmaceutical compositions utilizing the compounds, and methods of treatment. On July 12, 1994, the Patent Examiner issued a restriction requirement requiring Pfizer to select either the compound claims, the composition claims, or the method claims to prosecute, and further required Pfizer to elect a single species within the chosen group for examination. Pfizer elected to prosecute the compound claims and chose the species described in example # lc (celecoxib) as the elected species. The Examiner then defined a “generic concept inclusive of the elected species ... for examination along with the elected species.” The ’594 Application, as narrowed, was approved and ultimately issued as the ’823 Patent. Pfizer filed several divisional applications covering the compounds that were not embraced by the ’823 Patent. These patents were issued, but are not relevant here. Pfizer also filed a divisional application covering compositions. This divisional application issued as the ’165 Patent. Finally, Pfizer also filed international application PCT12720 covering methods. This application entered the national stage as the T13 Application, and ultimately issued as the ’068 Patent. (See figure below.) After the patents-in-suit were issued, Pfizer scientists conducted further testing of the compounds covered by the patents to identify a compound to develop into a commercial drug. Several compounds that initially seemed to be promising candidates were discarded after further testing revealed unacceptable properties such as excessive half-life or liver toxicity. Eventually, scientists selected celecoxib as the preferred compound and, following clinical trials, submitted a New Drug Application to the Food and Drug Administration (“FDA”) for Celebrex. The FDA approved Celebrex as a COX-2 selective NSAID for the treatment of osteoarthritis and rheumatoid arthritis on December 31, 1998. Celebrex was launched the following year, and almost immediately achieved enormous and sustained success in the marketplace. III. Teva’s Abbreviated New Drug Application The Hatch-Waxman Amendments to the Federal Food, Drug, and Cosmetic Act permit an applicant to file an Abbreviated New Drug Application (“ANDA”) with the Food and Drug Administration (“FDA”) requesting approval of a bioequivalent (“generic”) version of a drug that is already listed by the FDA as approved for safety and effectiveness without having to submit additional safety and efficacy data. See 21 U.S.C. § 366(j)(2)(A). An ANDA may be filed for drugs currently protected by patents. In its filing, the applicant must certify either (1) that it will not market its drug prior to the expiration of the relevant patents, or (2) that the relevant patents “are invalid or will not be infringed by the manufacture, use or sale of the new drug for which the ANDA is submitted.” 21 U.S.C. § 355(j)(2)(A)(vii)(IV). An ANDA applicant filing its application with the FDA and making a Section TV certification must notify the holder of the patent, who may then bring an action against the applicant for infringement under 35 U.S.C. § 271(e)(2). See 21 U.S.C. §§ 355(j)(2)(B)(i) and (j)(6)(B)(iii); see also, e.g., SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1314 (Fed. Cir.2006). Submission of an ANDA is an act of patent infringement if the ANDA seeks approval to manufacture, use, or sell a drug that is claimed in a patent or the use of which is claimed in a patent. 35 U.S.C. § 271(e). Teva filed Abbreviated New Drug Application No. 76-898 with the FDA. The application was addressed to a proposed drug March 19, 2007 product identified as “Ce-leeoxib Capsules, 100 mg, 200 mg, and 400 mg.” The ANDA contained a Section IV certification challenging the validity of the patents covering celecoxib. IV. The Current Litigation In February 2004, Pfizer filed an action against Teva for infringement. In May 2004, Teva filed an answer and asserted an affirmative defense claiming that the patents-in-suit are invalid or unenforceable due to obviousness under 35 U.S.C. § 103(a), inequitable conduct, and violation of the best mode requirement, and that the ’068 Patent (covering methods of use) is invalid for obvious-type double patenting over the T65 Patent (covering pharmaceutical compositions). The parties tried the case before the Court from November 13 through December 8, 2006 and on December 13, 2006. Written closing statements were submitted to the Court on February 1, 2007. JURISDICTION, VENUE AND APPLICABLE LAW This Court has subject matter jurisdiction over Pfizer’s patent infringement claims pursuant to 28 U.S.C. §§ 1331 and 1338(a). Venue is proper under 28 U.S.C. §§ 1391 and 1400(b). Because this action arises under the patent laws of the United States, this Court must apply the precedents of the United States Court of Appeals for the Federal Circuit, which has jurisdiction over any appeal of this judgment. See 28 U.S.C. § 1295(a). STANDARD OF REVIEW Patents enjoy a presumption of validity. 35 U.S.C. § 282 (“A patent shall be presumed valid.”). The party challenging the patent bears the burden of proving by clear and convincing evidence the invalidity or unenforceability of the claims of a patent. See id; see also Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed.Cir.2006). “The ‘clear and convincing’ standard of proof of facts is an intermediate standard which lies somewhere between ‘beyond a reasonable doubt’ and a ‘preponderance of the evidence,’ ” and “has been described as evidence which produces in the mind of the trier of fact an abiding conviction that the truth of [the] factual contentions [is] ‘highly probable.’ ” Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1468 (Fed.Cir.1988) (internal quotation omitted). Thus, Teva bears the burden of proving each of its defenses of patent invalidity/unenforceability, and each element of those defenses, by clear and convincing evidence. ANALYSIS I. OBVIOUSNESS Pursuant to § 103 of the United States Code, a patent is invalid if the claimed invention was “obvious” at the time it was created. The test for obviousness is “whether the claim at issue would have been obvious to one of ordinary skill in the art at the time of the patent.” Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1563 (Fed.Cir.1988); see also Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed.Cir.2006) (“[A] claimed invention is unpatentable if the differences between it and the prior art are ‘such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.’ ”) (quoting 35 U.S.C. § 103(a)). In adjudicating obviousness, four factors — called the Graham factors — must be considered: “(1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness.” In re Dembiczak, 175 F.3d 994, 998 (Fed.Cir.1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)). “For a chemical compound, a pri-ma facie case of obviousness requires ‘structural similarity between claimed and prior art subject matter ... where the prior art gives reason or motivation to make the claimed compositions.’ ” Yamanouchi Pharm. Co. v. Danbury Pharmacol, Inc., 231 F.3d 1339, 1343 (Fed.Cir. 2000) (emphasis added) (quoting In re Dillon, 919 F.2d 688, 692 (Fed.Cir.1990) (en banc)). Accordingly, this Court must apply the “motivation-suggestion-teaching” test, which asks “whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.” In re Kahn, 441 F.3d 977, 988 (Fed.Cir.2006). In other words, a pri-ma facie case of obviousness requires the party to “explain the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious.” Id. at 986 (internal quotations omitted). Evidence of motivation to combine need not be found explicitly in the prior art — it “may be implicit from the prior art as a whole,” In re Kotzab, 217 F.3d 1365, 1370 (Fed.Cir.2000), or evident from the general knowledge of a person of ordinary skill, Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed.Cir.2006); In re Kahn, 441 F.3d 977, 988 (Fed.Cir. 2006). Importantly, “[bjecause 35 U.S.C. § 103(a) orders a Court to determine whether the subject matter was obvious ‘at the time the invention was made,’ the obviousness inquiry cannot be performed using hindsight.” Janssen Pharmaceutica N.V. v. Mylan Pharms., Inc., 456 F.Supp.2d 644, 654-55 (D.N.J.2006); see also Orthopedic Equipment Co., Inc. v. United States, 702 F.2d 1005, 1012 (Fed.Cir.1983) (“It is wrong to use the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit. Monday morning quarterbacking is quite improper when resolving the question of nonobviousness in a court of law.”). The motivation-suggestion-teaching test “stands as a critical safeguard against hindsight analysis and rote application of the legal test for obviousness.” In re Rouffet, 149 F.3d 1350, 1358 (Fed.Cir.1998). Teva contends that celecoxib and other compounds within the genus of the ’823 Patent would have been obvious to a person of ordinary skill in the art in November of 1993. In brief, Teva’s theory of obviousness is that the person of ordinary skill would have derived a pharmacophore from the disclosure of the Merck T96 Application's Patent, and then used the pharmacophore, his/her general knowledge of pharmaceutical chemistry, and the teachings of two other references— the T42 Patent and the Fujisawa ’829 Application — to create twelve obvious compounds, including celecoxib. As an initial matter, the Court finds that the ’196 Application/’995 Patent is not pri- or art to the patents-in-suit because the Merck ’995 Patent is not entitled to claim priority to the filing date of the T96 Application. This finding alone warrants a ruling for Pfizer since Teva’s entire theory of obviousness hinges on this reference. However, even assuming arguendo that the ’196 Application/’995 Patent is prior art, the Court finds that Teva has failed to meet its burden of proving a prima facie case of obviousness. As explained in detail below, Teva has not shown that the person of ordinary skill would derive the proposed pharmacophore or that the pharmacophore would inexorably lead to the creation of celecoxib as one of the twelve allegedly obvious compounds. Accordingly, the Court finds that the patents-in-suit are not invalid for obviousness. A. The Date of Invention At the outset, the Court must determine the precise invention date for cele-coxib. Because the Court must evaluate obviousness “at the time the invention was made,” the invention date is a threshold question that will guide the entire obviousness analysis. “A general rule in patent law is that the date of invention ... is presumed to be the date [the applicant] files a complete patent application in the Patent and Trademark Office disclosing the invention.” 1 Chisum on Patents § 3.08. This presumption can be overcome by proof of either: (1) an earlier reduction to practice of the invention, or (2) an earlier conception of the invention coupled with due diligence from the date of conception to a subsequent reduction to practice or to the filing of the application. Id.; Dow Chemical Co. v. Halliburton Co., 631 F.Supp. 666, 704 (N.D.Miss.1985), aff’d 790 F.2d 93 (Fed.Cir.1986). “[This earlier] date, if established, is the ‘time the invention was made’ used in determining obviousness under 35 U.S.C. § 103.” Dow Chemical, 631 F.Supp. at 704 (N.D.Miss. 1985) (citing Lockheed Aircraft Corp. v. United States, 213 Ct.Cl. 395, 553 F.2d 69, 74 (1977)). Here, the invention date has been an issue of considerable dispute. The filing date for the application was November 30, 1993. However, shortly before the trial began, Pfizer asserted an earlier invention date of August 2, 1993 on the ground of earlier conception of the invention coupled with due diligence from the date of conception to a subsequent reduction to practice or to the filing of the application (i.e., ground (2) above). Specifically, Pfizer asserted that “it conceived the invention claimed in the patents-in-suit at least as early as August 2, 1993 and worked with reasonable diligence continuously through the time it filed for patent protection.” (Decl. of Michael Patunas in Support of Teva’s in Limine Motion No. 1, Ex. G at ¶ 9; see also Opinion on Teva’s Motion in Limine No. 1.) To support its assertion of an August 2, 1993 conception date, Pfizer relied upon pages from the laboratory notebook of Dr. Bertenshaw, one of the inventors of cele-coxib. The notebook pages, dated August 2, 1993, disclosed a broad genus of chemical compounds with several substituents in several positions. Celecoxib was within the genus (i.e., one could derive celecoxib by picking certain groups out of the possibilities listed in notebook pages), but the notebook pages provided no direction to celecoxib — no instruction or even suggestion to select these groups out of the plethora of possibilities provided. Pfizer initially sought this earlier invention date in order to antedate the Fujisa-wa ’829 Application (with a publication date of August 11, 1993), which Teva originally indicated was an important piece of its obviousness theory. At trial, however, the parties’ respective positions began to shift. Teva did not rely heavily on the ’829 Application. Pfizer meanwhile questioned the appropriateness of starting with the ’196 Application/’995 Patent by introducing other patents — with effective dates later than August 2, 1993 — that the person of ordinary skill could have started with instead. These patents would not have been available to the person of ordinary skill if the date of invention was set at August 2, 1993, as Pfizer initially argued it should be. On the second day of trial, Teva’s counsel “concede[d] the invention date is at least in October,” but did not elaborate further. (Trial Trans. II 30:6.) The trial concluded without further elaboration from either party as to the invention date they respectively believed should be accepted by the Court. Teva elaborated for the first time in its response to a Rule 52 motion filed by Pfizer at the close of Teva’s case-in-chief. In its response papers Teva argued that the proper invention date was October 4, 1993, since Pfizer scientists first synthesized celecoxib (i.e., reduced it to practice) no later than that date. An October 4, 1993 invention date would benefit Teva’s obviousness argument in two ways. First, it would make the ’829 Application viable prior art to the patents-in-suit. See infra Section I.B.2. Second, as discussed in Section I.D.l(c), Pfizer proffers several possible starting points for the development of new NSAIDs that it contends would have been more appealing to the person of ordinary skill than the one Teva relies on. Two of these proposed starting points are patents that resulted from applications which were filed in November 1993. These patents would not have been available to the person of ordinary skill on October 4,1993. Since the invention date had been a “moving target” throughout the trial and pre-trial proceedings, the Court sent a letter to counsel requesting that Pfizer “include a clear explication of [its] position regarding the proper invention date in its reply papers.” Letter to Counsel re: Pfizer v. Teva, Civ. Action No. 04-754 (Dec. 26, 2006). Pfizer did address the invention date in its reply papers — and moved the target once again. Pfizer abandoned its August 2 invention date argument, and urged the Court to adopt November 30, 1993 (the filing date of the patents-in-suit) as the default invention date. Accordingly, there are three potential invention dates on the table. As noted, Pfizer no longer asserts an invention date of August 2, 1993. Nor does the Court find there to be adequate support for conception of the invention on that date. This leaves October 4, 1993, and November 30, 1993, as the possible invention dates. As per the general rule, see supra, the Court will use November 30, 1993, as the default invention date unless there is clear and convincing evidence of the earlier October 4th date. The Court finds that there is. This case presents a unique situation. Generally, it is the patent holder who seeks to assert an earlier invention date in order to antedate a prior art reference or to establish priority in the context of an interference. Here, however, it is Teva that asserts the earlier invention date of October 4,1993, based on Pfizer’s reduction to practice on or before that date. In support of its assertion, Teva cites several pieces of evidence, including Pfizer’s own statement in an interrogatory response that Pfizer scientists synthesized celecoxib at least as early as October 4,1993: Interrogatory No. 28 Identify when, where and how the compound [celecoxib], and any pharmaceuti-cally acceptable salts thereof, were first synthesized, the individual(s) that conducted such synthesis, the individual(s) that directed such synthesis, and any analysis of the results of such synthesis. Response to Interrogatory No. 28 Plaintiffs object to the term “any analysis of the results of such synthesis” as vague and ambiguous. Subject to the general and specific objections, plaintiffs respond that celecoxib was first synthesized at least as early as October I, 1998 by Julie M. Miyashiro at G.D. Searle & Co.’s facilities in Skokie, Illinois. (Declaration of Michael E. Patunas in Support of Teva’s Post-Trial Brief, Exh. 3, at 3 (emphasis added).) In the typical scenario, there are concerns over the credibility of the patent holder’s own self-serving testimony regarding an earlier date of conception or reduction to practice. Chen v. Bouchard, 347 F.3d 1299, 1309 (Fed.Cir. 2003); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed.Cir.1996). However, those concerns are inapplicable in the current situation where the earlier invention date hurts, rather than helps, the patent holder. Accordingly, the Court will give due weight to Pfizer’s own self-defeating statements regarding an earlier reduction to practice. Furthermore, Pfizer’s statement is not the only evidence in the record that supports the October 4th date. There is documentary and testimonial evidence that corroborates the reduction to practice of celecoxib on this date. A page from the laboratory notebook of inventor Julie Mi-yashiro describes the synthesis (reduction to practice) of celecoxib. The page is dated October 4, 1993, and was signed and witnessed in accordance with Pfizer’s “Guidelines for Research Records.” See DTX 53; see also Deposition of Julie Marion Miyashiro Vol. 1 (Nov. 3, 2005), at 109:21-112:12. Accordingly, there is ample evidence to support the October 4th reduction to practice date, and the Court finds October 4, 1993 to be the correct invention date for the individual compound celecoxib. The next issue, therefore, is whether the synthesis of one species, celecoxib, supports an invention date of October 4, 1993, for all of the asserted claims of the ’823 Patent. The Court finds that it does. One of the asserted claims of the ’823 Patent (claim 9) covers only celecoxib. Synthesis of celecoxib on October 4 certainly supports an October 4, 1993 invention date for this claim. The remaining asserted claims cover genuses of compounds that include celecoxib. The Court finds that the synthesis of celecoxib — an individual species within those genuses— on October 4, 1993 is sufficient to establish that date as the proper invention date for the genus claims as well. The Board of Patent Appeals has held that the first party to conceive a species is the first to conceive of the generic invention. Miller v. Walker, 214 U.S.P.Q. 845, 847, 1982 WL 50432 (Bd.Pat.App.1982). Although the Federal Circuit has not made such a definitive statement, it has held that “conception of a species within a genus may constitute conception of the genus.” Oka v. Youssefyeh, 849 F.2d 581, 584 (Fed. Cir.1988) (emphasis added); see also In re Jolley, 308 F.3d 1317, 1322 n. 2 (Fed.Cir. 2002). Moreover, the predecessor to the Federal Circuit has held that a prior reduction to practice of a species establishes priority to the genus in the context of an interference and “precludes another party from claiming that he is the first inventor of the genus containing the species.” Mikus v. Wachtel, 504 F.2d 1150, 1151 (C.C.P.A.1974). Based on this caselaw, the Court finds that the date on which an individual species within a genus is reduced to practice constitutes the invention date for genus claims that include the species. In re Zletz, cited by Pfizer, is not to the contrary. In Zletz, the Federal Circuit stated: “Priority to a genus may indeed be shown by prior invention of a single species, but the genus will not be patentable to an applicant unless he has generic support therefor.” In re Zletz, 893 F.2d 319, 323 (Fed.Cir.1989) (internal citation omitted). The first clause of this quotation simply restates the rule explained above and adopted by this Court that invention of a species can establish invention of a genus containing that species. The second clause of the sentence — contrary to Pfizer’s interpretation — does not negate this sentiment. The import of the second clause is that even though a party can establish priority to a genus by showing earlier invention of an individual species, he will not ultimately be able to obtain a patent for the genus unless he can provide adequate § 112 support therefor. See id. (citing In re Grimme, 47 C.C.P.A. 785, 274 F.2d 949, 952 (1960) (discussing the disclosure required to support a generic claim in the field of chemistry)). Accordingly, the Court finds the invention date for celecoxib and the asserted claims of the ’823 Patent to be October 4, 1993. B. The Scope and Content of the Pri- or Art “The scope and content of the prior art is limited to art that is analogous to the claimed invention. Analogous art is that which is from the same field of endeavor or, if not within the field of endeavor, is still reasonably pertinent to the particular problem with which the inventor is involved.” Janssen Pharmaceutica N.V. v. Mylan Pharms., Inc., 456 F.Supp.2d 644, 652 (D.N.J.2006). As explained above, Teva argues that the patents-in-suit are obvious in light of three prior art references: the Merck T96 Application/’995 Patent, the Fujisawa ’142 Patent, and the Fujisawa ’829 Application. Pfizer disputes that the ’196 Application and the ’829 Application are prior art to the patents-in-suit. The prior art status of these two references is discussed below. 1. The Merck ’196 Application/’995 Patent Is Not Prior Art On June 24, 1993, Merck and Co., Inc. (“Merck”) filed U.S. Patent Application 08/082,196 (the “ ’196 Application”) entitled “Phenyl Heterocycles as COX-2 Inhibitors.” In early November 1993, Merck withdrew several claims of the ’196 Application from consideration. On November 23, 1993, the Patent Examiner rejected the remaining claims under 35 U.S.C. § 112 for failing to adequately teach how to use the claimed invention for failure to satisfy the enablement requirement). The Examiner explained: the claims are directed to compounds which selectively inhibit COX-2, compositions containing them, and methods of treating cyclooxegenase mediated diseases using said compounds. The discovery of COX-2 is a recent development in the art, as indicated in the instant specification, and relatively little is known about it and its properties.... Relatively little is known regarding the activity of COX-2, and there is no predictability as to which compounds will inhibit COX-2. In such a field, the data found in the specification regarding the activity of the claimed compounds is not sufficient to enable the full scope of the invention as claimed. Even within the limited set of compounds tested for activity, the variation of activity is so great that the data cannot be said to create the expectation that the multitude of compounds claimed will have the claimed activity. (PTX 34 at PFC 02019556.) On January 10, 1994, Merck filed a continuation-in-part (“CIP”) application Serial No. 08/179,467 (the “’467 Application”). The ’467 Application included substantial additional data, including in vivo data. Shortly thereafter, on February 22, 1994, Merck expressly abandoned the 196 Application. In the remarks section of the express abandonment, Merck stated as follows: In an informal interview [the patent examiner] clarified that with regard to the compounds and their use as anti-inflammatory agents, she is concerned that there is insufficient proof that inhibition of COX-2 would translate into anti-inflammatory activity. In response, applicants point out that this is a question [of] utility (35 USC 101) rather than a failure to teach how to use under 35 USC 112. Indeed, applicants have extensively taught “how to use.” See for Example pages 10-16 of the specification. In that there is no 101 rejection, Applicants must assume that the Examiner is not concerned about utility. Accordingly, the present rejection is traversed. In any event, the above mentioned CIP renders the Examiner’s concern moot, in that rat paw edema assay data are provided demonstrating that applicants!’] compounds are useful anti-inflammatory agents. (Id. at PFC 02019560-61.) On December 12, 1995, CIP Application ’467 issued as U.S. Patent No. 5,474,995 (the “ ’995 Patent”). A patent is available as prior art as of the actual filing date of the application that resulted in the patent. See In re Wertheim, 646 F.2d 527, 534 (C.C.P.A.1981). The reasoning underlying this rule is that the patent could have issued on that day but for delays in the patent office, and “[a]s Justice Holmes said in Milbum, ‘The delays in the patent office ought not to cut down the effect of what has been done.’ ” Id. A question arises where, as here, the patent issues from a CIP application: Is the patent considered prior art as of the date the original parent application was filed (here, June 24,1993), or only as of the filing date of the CIP (here, January 10, 1994)? This distinction is critical here because the CIP was filed after the invention date for the claims at issue in this case. As such, the ’995 Patent can only be prior art if it is entitled to claim priority to the June 24, 1993 filing date of its original ’196 Application. The Federal Circuit has addressed this question, and has held that a patent issuing from a CIP is entitled to the earlier filing date of its parent application if — and only if — the disclosures of the parent provide adequate § 112 support for the claims that actually appear in the patent as issued. See, e.g., Go Med. Indus. Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 (Fed.Cir.2006) (“A patent application for an invention disclosed in a previously-filed application in a manner that satisfies all the requirements of 35 U.S.C. § 112 is entitled to the benefit of the earlier filing date.”); see also In re Wertheim, 646 F.2d at 538 (holding that entitlement to an “earlier U.S. filing date for the patent necessarily depends on further compliance with §§ 120 and 112”). Accordingly, determining whether a patent is entitled to claim priority to its parent’s filing date generally requires the Court to examine both the parent application and the resulting patent and independently evaluate whether the patent claims were fully supported by the disclosures of the parent application; as applied to this case, the question is whether the disclosures of the ’196 Application provide adequate §112 support for the claims of the ’995 Patent. Entitlement to claim priority to the filing date of a parent application may not be available under certain circumstances. See Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1579 (Fed.Cir.1984). In Penn-walt, the plaintiffs subsidiary filed a patent application that was rejected by the Patent and Trademark Office (“PTO”) under 35 U.S.C. § 112 for failure to satisfy the enablement requirement. Id. at 1579. Following this rejection, the subsidiary abandoned the original application and filed a CIP application describing the claims in more detail. Id. The Federal Circuit held that (1) the filing of a CIP in response to a § 112 rejection creates a rebuttable presumption of acquiescence in the PTO’s determination that the original application did not comply with the requirements of § 112, and (2) that a finding of acquiescence precludes an inventor from claiming entitlement to the filing date of the original application. Id. at 1579-80. The reason for this preclusion is simple: An inventor who acquiesced in the PTO’s conclusion that the claims did not meet the statutory requirements for patentability is estopped from later claiming that these requirements were in fact met. See, e.g., 4 Chisum on Patents § 11.03. The Pennwalt Court thus made clear that a finding of acquiescence is a threshold finding, which eliminates the need to independently evaluate whether the claims of an issued patent are supported by the disclosure of a rejected application. Id. at 1580 n. 13; see also Moll v. Northern Telecom. Inc., No. 94-5451, 1995 WL 676420, at *3, 1995 U.S. Dist. LEXIS 17053, at *10 (E.D.Pa. Nov. 5, 1995) (explaining that a finding that the inventor acquiesced in the PTO’s final rejection of the earlier parent application “eliminates the need to [independently evaluate] whether the claims of the patent that issued were supported by the disclosure of the rejected application.”). Notably, Pennwalt and other cases that apply the acquiescence rule generally involve a different factual situation from the instant case. Typically, a patent holder seeks the benefit of the parent application’s earlier filing date in order to antedate a potentially invalidating reference. See, e.g., Max Daetwyler Corp. v. Input Graphics, Inc., 608 F.Supp. 1549 (E.D.Pa. 1985). Here, by contrast, an alleged in-fringer is seeking the benefit of a parent application’s earlier filing date in order to make a third party’s patent available as a prior art reference to the patents-in-suit. Pfizer urges the Court to apply the Pennwalt framework here, and argues that the Court need not independently evaluate whether the claims of the ’995 Patent are fully supported by the disclosures of the ’196 Application because “[t]he ‘filing of a CIP application to overcome a PTO rejection’ gives rise to a rebuttable ‘presumption of acquiescence in the rejection,’ resulting in a presumption that the applicant is not entitled to the earlier filing date.” (Pfizer’s Post-Trial Brief at 8 (citing Pennwalt, 740 F.2d at 1578).) Teva disagrees, arguing that the Pennwalt framework is not applicable in this factual situation. The Court finds that the first step of the Pennwalt framework is applicable here, but not the second. The Court agrees with Teva that the estoppel reasoning underlying step two does not apply where, as here, the party arguing for the earlier filing date is not the party that allegedly acquiesced in the PTO rejection. In other words, Teva should not be es-topped from arguing that the § 112 requirements were satisfied with respect to the relevant claims of the Merck ’196 Application just because Merck (an entirely unrelated party) acquiesced in the PTO’s conclusion that the claims did not meet those requirements. Cf. Arkla, Inc. v. U.S., 37 F.3d 621, 624 (Fed.Cir.1994) (explaining that the parties must have had a full and fair opportunity to litigate the subject at issue for estoppel to apply); Bd. of Trs. of Trucking Employees of North Jersey Welfare Fund, Inc. v. Centra, 983 F.2d 495, 505 (3d Cir.1992) (same). There is no similar reason to ignore the first step of the Pennwalt framework. The idea that the filing of a CIP in response to a § 112 rejection creates a re-buttable presumption of acquiescence in the PTO’s determination that the original application did not comply with the requirements of § 112 is equally applicable in the factual context presented here. And although an ultimate finding of acquiescence would not have a step-two preclu-sive effect in this context, the Court finds that it would still be relevant as evidence that the rejected application did not fully support the claims of the issued patent. In sum, the Court will apply the following framework to answer the question of whether the ’995 Patent is entitled to claim priority to the filing date of the T96 Application: The Court will evaluate the prosecution history of the ’196 Application to determine whether there is a prima facie case of acquiescence, and if so, whether it is rebutted. Regardless of the Court’s finding on this issue, Teva will not be precluded from arguing that the disclosure of the T96 Application provides adequate § 112 support for the claims of the ’995 Patent. The Court will undertake an independent evaluation of this question, but will consider a finding of acquiescence as part of its analysis. (a) Merck Acquiesced in the PTO’s Rejection of the ’196 Application There is prima facie evidence that Merck acquiesced in the PTO’s rejection of the ’196 Application based on the fact that Merck filed a CIP (with additional data) in response to the PTO’s § 112 rejection of the Application on enablement grounds. See supra. Teva argues that the elements of a prima facie case of acquiescence cannot be established because Merck never faced a “final rejection” during prosecution of the Merck ’196 Application. The Court is not persuaded by this argument. Mr. Ronald Smith, Teva’s expert on patent office practice and procedure, defined a “final rejection” as a rejection made in a “second office action, after the examiner had already rejected the claims, at least once, and an applicant has had a chance to respond to the rejection. If the examiner still feels the rejection is appropriate he would make the second action final.” (Trial Trans. XII 19:13-18.) Mr. Smith also stated that the November 23, 1993 rejection by the patent examiner was not a “final rejection.” (Trial Trans. XII 19:19-21.) Teva points to Federal Circuit caselaw stating that “[e]stoppel does not occur ... in the absence of an explicit final rejection under 35 U.S.C. § 112, first paragraph.” Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 560 (Fed.Cir.1994). The Court agrees that the November 23, 1993 rejection of the ’196 Application was not a “final rejection,” but finds that fact to be irrelevant to determining the existence of a prima facie case of acquiescence. Teva mis-uses the relevant case-law. Certainly there are cases stating that only a final rejection will give rise to a presumption of acquiescence. See, e.g., Paperless Accounting, Inc. v. Bay Area Rapid Transit System, 804 F.2d 659, 662-64 (Fed.Cir.1986); Waldemar, 32 F.3d at 560. But in both Paperless Accounting and Waldemar a preliminary § 112 rejection was later withdrawn by the patent examiner in subsequent rejections. “In both cases, the patentee filed the CIP application after the PTO had withdrawn the § 112 objections. Thus, in both cases, there was no acquiescence in a § 112 rejection because there was no pending § 112 rejection when the continuation-in-part application was filed.” B & S Plastics, Inc. v. Hydro Air Indus., Inc., No. SA CV 95-492, 1995 WL 811901, 1995 U.S. Dist. LEXIS 20791, at *8-*9 (C.D.Cal. Oct. 10, 1995). Without a pending § 112 rejection at the time the CIP was filed, the applicants were not faced with the choice to fight or submit — and it is the decision to submit rather than fight that gives rise to the prima facie case of acquiescence. In the present case, by contrast, there was an unambiguous rejection of the ’196 Application under § 112. Merck could have chosen to fight the rejection or submit to it. As Mr. Smith conceded, Merck could have responded to the rejection and asked the patent examiner to reconsider. It did not do so. It filed a CIP that addressed the examiner’s concerns. It chose to submit, impliedly conceding that the disclosure of the application was insufficient. Thus, the elements of a prima facie case can be established despite the fact that the rejection was not technically “final.” Moreover, Teva has offered no alternative explanation for Merck’s decision to file a CIP. In fact, Mr. Smith, Teva’s own witness, conceded that Merck abandoned the T96 Application in favor of the CIP in response to the examiner’s rejection: Q: Then what did the applicants do in response to the rejection? ... A: Applicants abandoned the application in favor of the co-pending continuation in part application filed January 10, 1994. (Trial Trans. XI 66:25-67:8 (emphasis added).) Accordingly, the Court finds that there is prima facie evidence of acquiescence, and will turn to the question of whether there is “countervailing evidence” of non-acquiescence. Pennwalt, 740 F.2d at 1579. Teva vigorously argues that there is ample countervailing evidence in the prosecution history of the ’196 Application to rebut a finding of acquiescence. Teva points specifically to Merck’s response to the Examiner’s rejection, in which Merck stated that it disagreed with the decision and traversed the rejection. “Traverse” is a term of art in the patent office. It means that the applicant disagrees with the position of the examiner and requests reconsideration. (Trial Trans. X 157:6-13; see afeo XI 67:22-68:3 (“[Traverse] means that they disagree with the rejection and request that it be withdrawn.”).) Mr. Smith testified that “if an applicant was acquiescing in a rejection, he wouldn’t file a traversal.” (Trial Trans. XII 20:22-23.) The Court does not find traversal — in the circumstances presented here — to be compelling evidence of non-acquiescence. There are two reasons for this finding: one substantive and one procedural. As to the substance of the traversal, Merck never actually disputed the idea that the data was insufficient to establish the utility of the claimed compounds. It merely argued (erroneously) that this was not a § 112 problem. (PTX 34 at PFC 02019560-61 (“[AJpplicants point out that this is a question [of] utility (35 USC 101) rather than a failure to teach how to use under 35 USC 112. Indeed, applicants have extensively taught ‘how to use.’ In that there is no 101 rejection, Applicants must assume that the Examiner is not concerned about utility. Accordingly, the present rejection is traversed.”).) Thus, the traversal does not illustrate disagreement — i.e., non-acquiescence — with the fundamental finding that the disclosed data was insufficient. Moreover, Merck’s argument was legally inaccurate. As discussed further infra, it is well established that the “use” element of the enablement requirement incorporates the utility requirement of 35 U.S.C. § 101. See infra; see also, e.g., In re Fisher, 421 F.3d 1365, 1378 (Fed.Cir.2005). The procedural consideration involves the context of the traversal. Merck traversed in an express abandonment. As Mr. Smith explained, because Merck set forth its traversal and accompanying argument in an express abandonment, the PTO was never going to consider or act on the traversal in any way: Q: [The traversal] is in a document where they [Merck] are expressly abandoning the application, right? A: Yes. Q: So they are not going to get the examiner to remove or change the rejection at the time that they are abandoning, right? A: At the time — no, not at the time. Q: ... After you file an express abandonment, the Patent Office doesn’t have to do anything in that application other than [mark] it as abandoned, right? A: I think they send out a letter acknowledging the express abandonment, then send the case the abandoned files. (Trial Trans. XII 29:22-30:9.) This was not Merck’s only option. The company could have chosen to simply traverse the rejection without abandoning the application. Since the rejection was not final, the examiner could have withdrawn or amended the rejection. By traversing in an express abandonment, Merck effectively eliminated this possibility. For both of these reasons, the Court is not persuaded that Merck’s traversal rebuts the prima facie evidence of acquiescence. Accordingly, the Court finds that Merck acquiesced in the PTO’s § 112 rejection of the T96 Application. As explained above, the inquiry does not end here. ■ The Court must still conduct an independent evaluation of whether the claims of the ’995 Patent are fully supported by the disclosure of the ’196 Application. If so, then all disclosures of the ’196 Application that were carried forward into the ’995 Patent will properly be considered prior art. See In re Lund, 54 C.C.P.A. 1361, 376 F.2d 982 (1966). If not, then the ’196 Application/’995 Patent is not prior art, and Teva’s entire theory of obviousness will be effectively eviscerated. Merck’s acquiescence is but one factor that the Court will consider when conducting this analysis. (b) Claim 6 of the ’995 Patent is Not Supported By the Disclosure of the ’196 Application Teva contends that claim 6 of the ’995 Patent is fully supported by the disclosure of the T96 Application. The Court disagrees. The parties do not dispute the relevant facts, only the legal conclusions to be derived therefrom. i. Undisputed Facts Claim 6 of the ’995 Patent is a genus claim covering dozens of chemical compounds: The claim requires a furanone core, one phenyl ring with a sulfonamide or methylsulfone substituent, and another phenyl ring with one or two substituents chosen from hydrogen (H), flouro (F), chloro (Cl), or bromo (Br) in any of the available positions. Finally, claim 6 requires that the two phenyl rings be attached at a double bond. The T96 Application covers several thousand compounds. Tables 1 and 2 of the T96 Application include several examples of covered compounds. (DTX 302 at 31-43.) Examples # 9 and # 10 in table 1 of the T96 Application are within the genus disclosed in claim 6 of ’995 Patent. (Id. at 33.) Three (unnumbered) examples in table 2 of the ’196 Application are also within the genus disclosed in claim 6 of ’995 Patent. (Id. at 39.) Thus, five— and only five — compounds within the genus of claim 6 of the ’995 Patent are disclosed in the T96 Application. These five compounds are reproduced below: These five compounds show diphenyl fura-nones with one phenyl substituted with a sulfonamide or methylsulfone and with a flourine or chlorine on the second phenyl. Importantly, however, the compounds do not cover the full scope of claim 6. (Trial Trans. VII 126:13-20.) For example, none of the five compounds use a bromine substituent. None of them include two different substituents. Nor do they cover the full range of possible positions for the mono- or di-substituted substituents. As for data, the 196 Application includes in vitro data for two of the examples (examples 9 and 10). (Id. at 45^6.) There is no in vivo data disclosed in the 196 Application, but it does include a description, written in the past tense, of a rat paw edema assay. (Id. at 44.) Finally, the 196 Application provides a detailed description for synthesizing example 9, and a general method for synthesizing example 10. Notably, the synthesis procedure for example 9 set forth in the 196 application is not included in the CIP application or the ’995 Patent. It was replaced by a different procedure. ii. The Disclosure of the T96 Application Does Not Satisfy the Written Description Requirement for Claim 6 of the ’995 Patent A patent must contain a written description of the claimed invention. See 35 U.S.C. § 112 (stating that the “specification shall contain a written description of the invention”). The written description must reasonably convey to a person of ordinary skill that the inventor possessed the entire invention — here, the entire genus covered by claim 6 of the ’995 Patent — as of the application filing date. Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir.1995); see also In re Reiffin, 199 Fed. Appx. 965, 967 (Fed.Cir.2006) (not prece-dential) (The “disclosure as originally filed must convey with reasonable clarity to those skilled in the art that [another] was in possession of the invention.”) (internal quotations omitted). Thus, the question in this case is whether the five examples disclosed in the T96 Application would convey to a person of ordinary skill that Merck possessed the entire genus of claim 6 of the ’995 Patent as of the filing date of the ’196 Application. It is well established that the written description requirement does not require a description of every possible embodiment falling within the scope of a genus claim, and that disclosure of a few species can reasonably convey possession of a genus and thus satisfy the written description requirement. See, e.g., In re Curtis, 354 F.3d 1347 (Fed.Cir.2004); Bilstad v. Wakalopulos, 386 F.3d 1116, 1124 (Fed.Cir.2004). Indeed, “disclosure of [even a single] species may be sufficient written description support for a later claimed genus including that species.” Bilstad, 386 F.3d at 1124. But it is not always sufficient. “There are ... exceptions to the general rule that disclosure of a species provides sufficient written description support for a later filed claim directed to the genus.” Id. at 1125. In Bilstad, the Federal Circuit surveyed several cases that considered the issue of written description support for an added genus claim when only a species was disclosed. The Court determined that the critical distinction between cases where disclosure of a species sufficed and those where it did not was the level of predictability in the relevant art: The distinction in these cases is based upon what would be reasonably conveyed to a person skilled in the art at the time of the original disclosure. If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then the disclosure of more species is necessary to adequately show possession of the entire genus. Id. In other words, the primary exception to the general rule that disclosure of a species is a sufficient written description of a later claimed genus involves inventions in unpredictable fields. Id. (“[UJnpredict-ability in the particular field may warrant closer scrutiny of whether disclosure of a species is sufficient to describe a genus.”). In an unpredictable field, a broader disclosure is required. Pharmaceutical chemistry is a highly unpredictable field. See, e.g., 2 Chisum, on Patents § 5.04 (“Because of the unpredictable nature of chemical reactions, a newly-synthesized compound may be very similar in structure to known and existing compounds and yet exhibit very different properties.”). Indeed, the Federal Circuit has expressly stated that the particular chemistry involved in the development of celecoxib was and is highly unpredictable. In an opinion in separate case involving the development of celecoxib, the Federal Circuit wrote: Even with the three-dimensional structures of enzymes such as COX-1 and COX-2 in hand, it may even now not be within the ordinary skill in the art to predict what compounds might bind to and inhibit them, let alone have been within the purview of one of ordinary skill in the art in the 1993-1995 period Univ. Of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 925 (Fed.Cir.2004). Moreover, the evidence presented in this case confirms the unpredictability of the field. For example, Dr. Talley — one of the inventors of celecoxib — testified about two compounds that were produced by his team. The two compounds were identical except that the positions of two substituent groups were reversed. With the groups in one position, the compound was a good inhibitor. With the groups in the reverse position, the compound was devoid of activity. (Trial Trans. XV 57:15-58:8; see also id. at XII 71:18-80:23 (Dr. Seibert); infra Section I.D.4.) In its Post-Trial Brief, Teva contends Dr. Trummlitz testified that based on the disclosure of the 196 Application, the person of ordinary skill would have understood that the inventors of the 196 Application possessed all of the compounds of Claim 6 of the ’995 Patent. (Teva’s Post-Trial Brief at 130.) Teva cites volume four of the trial transcript at 92:17-94:2 and 103:19-114:2. The Court has reviewed the transcript and does not find any such assertion in Dr. Trummlitz’s testimony. Moreover, even if such a statement could be extrapolated from Dr. Trummlitz’s testimony, Teva has offered no persuasive reasoning or supporting evidence as to why or how disclosure of five examples would reasonably convey to a person of ordinary skill that Merck actually possessed the entire genus of claim 6 on June 24,1993. Teva also argues that three additional compounds that were disclosed on page 41 of the ’196 Application provide written description support for claim 6 of the ’995 Patent. The Court disagrees. The three compounds at issue are 4,5 diphenyl fura-nones. In other words, they are diphenyl furanones with a double bond between the carbon atoms in the 4 and 5 positions. Teva admits that these compounds are not within the scope of claim 6, but nevertheless argues that they should be considered because they are “in equilibrium” with three 3,4 furanones that are within the scope of the claim. When compounds are in equilibrium, it means that if one compound is present, both will be present. Thus, according to Teva, when looking at the 4,5 furanones in the ’196 Application, the person of ordinary skill would “immediately envision the 3,4 furanones” as well. (Teva’s Post-Trial Brief at 132.) By way of evidence in support of this assertion, Teva cites to the testimony of Pfizer’s medicinal chemistry expert, Dr. William Jorgensen. Teva asserts that Dr. Jorgensen admitted the different compounds could be in equilibrium, but the Court does not read Dr. Jorgen-sen’s testimony to support this assertion. The relevant testimony was as follows: Q: That furanone, the 4, 5 configured furanone, would be in equilibrium with a 3, 4 furanone, wouldn’t it? A: I am not sure you want to go there. For compounds like this you can imagine multiple equilibrium.... They are [in] [equilibrium in the sense that any two isomers, if you have enough heat, it will convert it. That is a better way to do it. If you think about 3, 4, and the 4,5[ ] fura-none, they are different molecules .... And there is some barrier in between them. If there is enough heat you might be able to get them over that barrier or they might decompose on you. So in principal ... now, quote, they are in equilibrium in the sense that they are isomers. And maybe you could equilibriate thermally. Maybe not. Maybe they would decompose. (Trial Trans. XVI 111:24-112:15.) Dr. Jorgensen clearly stated that the 4,5 fura-nones and the 3,4 furanones are “different molecules,” and that although “they are isomers,” they might “decompose” if one tries to equilibrate them. (Id.) Teva offers no evidence other than Dr. Jorgensen’s testimony that the compounds are in equilibrium. Teva’s expert’s did not address the idea. There are no documents that support it. Moreover, Teva offered no evidence, other than its bald assertion, to support the idea that the person of ordinary skill would immediately envision the 3,4 furanones even if the compounds were in equilibrium. Accordingly, the Court will not consider the 4,5 furanones as providing support for claim 6 of the ’995 Patent. In sum, given the unpredictability of the art, the Court finds that the written description requirement for claim 6 of the ’995 Patent is not satisfied by the disclosure of five individual compounds in the ’196 Application. This finding alone would be sufficient to hold that claim 6 is not fully supported by the disclosure of the ’196 Application; however, the Court also finds that other § 112 requirements are not met. iii. The Disclosure of the ’196 Application Does Not Satisfy the Enablement Requirement for Claim 6 of the ’995 Patent Section 112 also includes an enablement requirement. See 35 U.S.C. § 112 (“[T]he specification shall contain a written description ... of the manner and process of making and using [the invention] in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”). Although related, the written description and enablement requirements are distinct and must be analyzed separately. See, e.g., 3 Chisum on Patents § 7.04; Invitrogen Corp. v. Clontech Labs. Inc., 429 F.3d 1052, 1071 n. 17 (stating that the “written description requirement is distinct from the enablement requirement”). Even assuming arguendo that the disclosure of the ’196 Application satisfies the written description requirement with respect to claim 6 of the ’995 Patent, the claim would not be fully supported because the enablement requirement is not met. To satisfy the enablement requirement, the disclosure “must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.”’ Univ. of Rochester v. G.D. Searle & Co., Inc., 249 F.Supp.2d 216, 231 (W.D.N.Y.2003). The Federal Circuit has explained the “undue experimentation” standard as follows: The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed. PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed.Cir.1996) (quotation and citation omitted). The Federal Circuit has also set forth factors to consider in determining whether a disclosure would require undue experimentation: “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed.Cir. 1988). Importantly, the “use” element of the enablement requirement also incorpo