Full opinion text
MEMORANDUM OPINION CONTAINING FINDINGS OF FACT AND CONCLUSIONS OF LAW DANIEL T.K. HURLEY, District Judge. THIS CAUSE is before the court following trial in this matter, held from August 12, 2008 to August 28, 2008 and from October 7, 2008 to October 9, 2008. Having reviewed the evidence admitted at trial and considered the arguments of counsel, the court now makes the following findings of fact and conclusions of law: Introduction 1. Plaintiff Sensormatic Electronics Corporation (“Sensormatic”)has brought this lawsuit against Defendants The TAG Company U.S. LLC (“TAG”) and Phenix Label Company (“Phenix”) for infringement of various claims of two of Sensormatic’s patents, U.S. Patent No. 5,729,200 (“the '200 patent”) and U.S. Patent No. 6,181,245 (“the '245 patent”). Sensormatic seeks permanent injunctive relief against TAG and Phenix. 2. TAG and Phenix have asserted counterclaims for invalidity and unenforceability of the '200 and '245 patents. 3. In addition to its patent infringement claims, Sensormatic has brought claims against TAG and former employee Dennis Gadonniex for misappropriation of trade secrets in violation of the Florida Uniform Trade Secrets Act; against Mr. Gadonniex for breach of contract and breach of fiduciary duty; and against TAG for aiding and abetting breach of fiduciary duty and violations of the Florida Deceptive and Unfair Trade Practices Act. Sensormatic seeks unjust enrichment relief for TAG’s misappropriation of trade secrets, permanent injunctive relief for the remaining claims, and attorneys’ fees for the breach of contract claim. A. Parties 4. Sensormatic is a Nevada corporation with its principal place of business at One Town Center Road, Boca Raton, Florida 33486. Sensormatic designs and manufactures Electronic Article Surveillance (“EAS”) systems, which are typically used to detect and deter shoplifting in retail stores. (PX 786, '200 patent, col. 11:14-16) This case involves disposable acoustomagnetic (“AM”) EAS labels, which are affixed to retail merchandise. 5. TAG is a limited liability company organized under the laws of Florida and with its principal place of business at 6278 North Federal Highway # 318, Fort Lauderdale, Florida 33308. TAG sells AM EAS labels known as the Series 58 labels. 6. Phenix is a Kansas corporation with its principal place of business at 11610 South Alden Street, Olathe, Kansas 66062. Phenix manufactures AM EAS labels, including Series 58 labels, for sale by TAG. 7. Dennis Gadonniex is a resident of Bradenton, Florida. Gadonniex has been a consultant for TAG and is a former employee of Sensormatic. B. Procedural History 8. Sensormatic filed this lawsuit against TAG and Phenix on November 29, 2006, alleging patent infringement of multiple Sensormatic patents. 9. On June 12, 2007, Sensormatic amended its complaint to add Gadonniex as a defendant and to add claims against TAG for misappropriation of trade secrets and deceptive and unfair trade practices. See DE # 45. 10. ' On August 12, 2008, the first day of trial in this case, the parties stipulated that TAG and Phenix have infringed the asserted claims of the '200 and '245 patents. See DE # 316. TAG and Phenix defended on the ground that the '200 and '245 patents are invalid and/or unenforceable. Jurisdiction 11. This court has jurisdiction over Sensormatic’s infringement claims and defendants’ invalidity and unenforceability claims pursuant to 28 U.S.C. § 1331. The court has supplemental jurisdiction over Sensormatic’s state law claims pursuant to 28 U.S.C. § 1367(a). 12. Venue is proper in this court pursuant to 28 U.S.C. § 1391(b)(2) because a substantial part of the events giving rise to the claim occurred in the Southern District of Florida. Discussion A. Background 1. Acousto-Magnetic Electronic Article Surveillance (“AM EAS”) Systems 13. An aeousto-magnetic electronic article surveillance (“AM EAS”) system is generally used to deter and detect the theft of retail merchandise. A typical AM EAS system consists of two components: (1) “markers” or “labels,” which are affixed to retail products and designed to interact with a magnetic field placed at the store exit, and (2) “pedestals,” which both create the magnetic field and detect markers that have not been deactivated at the checkout register. (PX 786, '200 patent, col. 1:16-33; Patterson, Tr. 102:3-21). 14. Markers have magnetic properties that cause an alarm to sound if they are brought within the magnetic field created by the pedestals without having first been deactivated. (PX 786, col. 1:17-20; Patterson, Tr. 104:2-20). The marker is typically deactivated by a store employee at the time of purchase. After being deactivated, the marker may be brought through the magnetic field without sounding an alarm. (PX 786, col. 1:23-26; Patterson, Tr. 112:22-114:1) 15. The markers themselves consist of two principal components — a “resonator” and a “bias,” both of which sit inside a plastic housing. (PX 786, col. 1:27-33; Patterson, Tr. 105:5-23) 16. The resonator is formed from a magnetostrictive metallic material which resonates (or vibrates) at a particular frequency when exposed to the alternating magnetic field created by the pedestals. (PX 786, col. 1:45-50; Patterson, Tr. 106:1-14,106:24-107:10). 17. The bias element is formed from a semi-hard metallic material which, when fully magnetized, causes the resonator to vibrate at a frequency detectable by the pedestals in response to an alternating magnetic field generated by the pedestals. (PX 786, col. 1:60-2:5; Patterson, Tr. 111:18-112:21) The standard frequency in the industry is 58 kHz. (Bulson, Tr. 2312:24-25) 18. When the bias element is demagnetized (e.g., by a checkout clerk upon payment for the merchandise), the resonator vibrates at a higher frequency than can be detected by the pedestals. Thus, after demagnetization of the bias, the marker can pass through the field generated by the pedestals without sounding an alarm. (PX 786, col. 1:60-2:5; Patterson, Tr. 113:22-114:13) 2. Patent Prosecution History 19. In the fall of 1995, Sensormatic’s Dr. Kevin Coffey and Dr. Richard Copeland conceived of the idea of using a lowcoercivity bias material that exhibited “abrupt characteristics.” (DX 155, 11/28/95 Coffey memo, at 3; DX 256, Invention Disclosure (Ex. A) at 3 (“new abrupt magnet”); PX 786, col. 4:45-59; Coffey, Tr. 351:5-352:6, 389:24-390:3; Copeland, Tr. 1445:3-24) “Coercivity” refers to the measure of the strength of an opposing magnetic field (measured in Oersted or Oe) that is needed to reduce the magnetization of a metal, such as the bias element, from full magnetization to zero in the presence of the field. (Patterson, Tr. 121:3-6) The abrupt magnetization and demagnetization characteristics of the label were designed to allow “label activation and label deactivation” with “much lower field levels.” (DX 256, Invention Disclosure (Ex. A) at 5) 20. On August 28, 1996, Drs. Coffey and Copeland filed an application for what became the '200 patent. (PX 786) The '200 patent was granted on March 17, 1998. (Id.) 21. The '200 patent application disclosed four prior art references, each of which are cited on the face of the patent: the Anderson '489 patent, the Anderson '490 patent, the Liu '140 patent and the Lian '230 patent. (PX 786) 22. The Examiner initially rejected all 47 claims in the '200 application on the ground that the specification would not enable a person reasonably skilled in the art to make and/or use the invention, as required by 35 U.S.C. § 112, first paragraph. (PX 86, May 16, 1997 Office Action) Sensormatic “traversed” and argued that the rejection was incorrect because, among other things, persons of ordinary skill in the art could make the claimed material based upon the desired properties that are specified in the '200 patent’s claims. (PX 86, Aug. 22,1997 Response to Office Action) The Examiner subsequently withdrew his rejection and allowed all 47 claims as originally written, with a few minor edits to the specification. (PX 86, Sept. 25,1997 Notice of Allowability) 23. On December 1, 2005, the firm of Defendants’ testifying expert, Dr. Gordon Fish, filed a Request for Re-examination with the PTO. (PX 922, Dec. 1, 2005 Request for Re-examination; Fish, Tr. 2098:17-25) 24. On February 9, 2006, the PTO granted Defendants’ Request for Re-examination, finding that there was “a substantial new question of patentability ... with respect to the instant claims” under 35 U.S.C. § 102-103. (PX 922, Feb. 9, 2006 Office Action p. 3) 34. The PTO rejected original Claim 4. (PX 922, Nov. 9, 2006 Office Action) Sensormatic then amended claim 4 to include the additional limitation set forth in dependent claim 5 and cancelled claim 5. (PX 922, Jan. 3, 2007 Summary of Interview; Response to Nov. 9, 2006 Office Action) 35. On Feb. 12, 2008, the PTO issued a Re-examination Certificate. (PX 816) In all, 42 of the 47 claims withstood re-examination as originally written; two claims were cancelled; and three claims were amended. (Id.) 36. The '245 patent is a continuation-in-part (“CIP”) of the '200 patent. (PX 788) 37. The CIP application for the '245 patent was filed on August 15, 1997. (PX 788) It claimed priority to the '200 patent. The '245 patent issued on January 30, 2001. (Id.) 38. The specification or written description of the '245 patent is largely the same as the '200 patent specification. (PX 788) 39. In the application for what became the '245 patent, the inventors disclosed the same four prior art references on the face of the '200 patent. (PX 87) The Examiner added the Gadonniex '770 patent (which had issued after the '200 patent issued and after the '245 application was filed) to the list of pertinent art, though he did not reject any of the claims on the basis of that patent. (PX 87, June 16, 2000 Office Action) 40. On June 16, 2000, the Examiner rejected all of the '245 patent claims based on the judicially created doctrine of double patenting in light of the '200 patent (PX 87, June 16, 2000 Office Action) Sensormatic subsequently filed a “terminal disclaimer” (which defeats a double-patenting rejection based on commonly-owned patents for period of common ownership) to overcome the double patenting rejection pursuant to 37 C.F.R. § 1.321(c). (PX 87, Aug. 11, 2000 Sensormatic Amendment and attached Terminal Disclaimer) 41. The Examiner then withdrew the rejection and allowed all 19 claims as originally written, with a few minor edits to the specification. (PX 87, Aug. 30, 2000 Notice of Allowability) 42. On December 14, 2005, Dr. Fish’s firm, again acting on behalf of Phenix filed a Request for Re-examination with the PTO. (PX 923, Dec. 14, 2005 Request for Re-examination) 43. Dr. Fish’s firm asserted that all 19 claims of the '245 patent were either anticipated by or obvious in light of the same references they had asserted in the '200 patent re-exam proceedings as well as three additional references. (PX 923, Dec. 14, 2005 Request for Re-examination pp. 1-7) 44. On March 6, 2006, the PTO granted Defendants’ Request for Re-examination, finding that the cited references raised “a substantial new question of patentability ... with respect to the instant claims” under 35 U.S.C. § 102-103. (PX 923, March 2, 2006 Office Action) 45. The PTO issued a Re-examination Certificate on March 4, 2008. (PX 815) In all, 16 of the 19 original claims withstood re-examination as originally written, two claims were amended, and one was can-celled. (PX 815) B. Sensormatic’s Infringement Claims 46. Sensormatic contends that Defendants’ Series 58 labels infringe Claims 2, 6, 10, 11, 18, 19, 20, 27, 28, and 43 of the '200 patent, and Claims 1, 2, 4, 7, 9, 14, 15, and 17 of the '245 patent. (DE 300, Stipulation on Limiting Asserted Claims and Replevin) 47. Sensormatic bears the burden of proof to establish infringement by a preponderance of evidence. Kegel Co. v. AMF Bowling, Inc., 127 F.3d 1420, 1425 (Fed.Cir.1997). 48. Determination of literal infringement involves a two-step analysis. Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1363 (Fed.Cir.2000). First, each claim must be properly construed, which is an issue of law for the court. Markman v. Westview Instruments, 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Second, each properly construed claim is compared with Defendants’ Series 58 Labels and their use to determine whether the claims read on the allegedly infringing or accused products. Id. at 1581-82. 49. The parties stipulated to the following constructions of certain claim terms: “magnetomechanical electronic article surveillance system of the type which radiates a marker interrogation signal in the form of intermittent bursts at a predetermined frequency” means an EAS system that generates an alternating electromagnetic field as a pulsed interrogation signal at a predetermined frequency; and “resonance characteristic that is substantially unchanged” means a resonant frequency that is largely unchanged, or has no appreciable change. See DE # 287. 50. The parties disputed the construction of four other claim terms. In its Order Construing Disputed Claim Terms, the court construed the claims as follows: “fully magnetized” means that the biasing element exhibits virtually no further increase in its magnetization level retained when the applied magnetic field is further increased; “full magnetization level” means the level of magnetization at which the biasing element is “fully magnetized,” as that term is defined above; “DC magnetic field Ha required to achieve saturation means that DC magnetic field strength, the application of which causes the biasing element to become “fully magnetized,” as that term is defined above; and the recited slope in the disputed term “deactivation-field-dependent resonant-frequency-shift characteristic having a slope that exceeds [100,200] Hz/Oe” refers to the maximum value of the slope attained by a curve properly fitted to data points representing measured resonant frequency as a function of the peak amplitude of an applied AC demagnetization field. See DE #304. 51. The parties stipulated before trial that TAG and Phenix, by making, using, offering for sale, and/or selling Series 58 labels in the United States from 2006 to the present, have practiced the asserted claims. See DE # 316. 52. The court therefore finds that, by making, using, offering for sale, and/or selling Series 58 labels in the United States from 2006 to the present, defendants TAG and Phenix have in fact practiced each of the asserted claims. 1. General Principles Governing Invalidity Defenses 53. Claims of an issued patent are presumed valid. 35 U.S.C. § 282. 54. “A party seeking to establish that particular claims are invalid must overcome the presumption of validity in 35 U.S.C. § 282 by clear and convincing evidence.” State Contracting & Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed.Cir.2003). 55. “Although an exact definition is elusive, ‘clear and convincing evidence’ has been described as evidence that ‘placets] in the ultimate factfinder an abiding conviction that the truth of its factual contentions are highly probable.’ ” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359 n. 5 (Fed.Cir.2007) (quoting Colorado v. New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984)). 56. In conducting an invalidity analysis, each claim must be examined individually. Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1370 (Fed.Cir.2003). “ ‘[E]ach claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; [and] dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.’ ... Where claims differ in scope in an aspect material to the analysis, those claims must be addressed individually.” Id. at 1370-71 (quoting 35 U.S.C. § 282). 57. The parties have stipulated that the court need address the validity of only the eighteen asserted claims. See DE # 300. 58. Findings of fact and conclusions of law are set out separately for each defense below. 2. Inherent Anticipation a. Governing Legal Principles 59. A patent is valid only if it is not anticipated by prior art in the area. 35 U.S.C. § 102(a). Invalidation of a patent on anticipation grounds “requires a showing that each element of the claim at issue, properly construed, is found in a single prior art reference.” Zenith Elecs. Corp. v. PDI Commun. Sys., 522 F.3d 1348, 1363 (Fed.Cir.2008). In other words, a single prior art reference “must disclose each and every feature of the claimed invention, either explicitly or inherently.” Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375 (Fed. Cir.2006). 60. Defendants’ anticipation argument is based solely upon the doctrine of inherent anticipation. (Fish, Tr. 2201:16-22) 61. To show inherent anticipation, Defendants must demonstrate that each and every claim limitation is “necessarily present in the prior art, not merely probably or possibly présent.” Akamai Techs., Inc. v. Cable & Wireless Internet Sews., Inc., 344 F.3d 1186, 1192 (Fed.Cir.2003). Anticipation by inherency “may not be established by probabilities or possibilities.” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed.Cir.1999). The “mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. b. Findings of Fact 62. Dr. Fish contended that each of the asserted claims, except for claim 18 of the '200 patent, is inherently anticipated by U.S. Patent No. 5,527,399 issued to Manning et al. 63. The claims of the '399 patent are directed not to EAS markers, but rather to different methods for producing a thin semi-hard magnetic strip. (DX 14, col. 11:62-12:61) The '399 patent does acknowledge, however, that the magnetic strips resulting from the claimed methods may be used as the bias element in AM EAS and harmonic anti-theft systems. (DX 14, col. 1:30-32 (referencing patents describing markers for EAS systems)) 64. The '399 patent teaches two broad processing methods: a carburization process and a non-carburization process, each of which has a number of steps. (Manning, Tr. 1091:14-24, 1104:25-1105:6, 1110:11-20;) These steps may be performed at a “wide range” of temperatures and for various amounts of time. (Coffey, Tr. 2442:11-23; DX 14, col. 3:50-8:49) Varying the times and temperatures in each of the steps could “affect the magnetic properties” of the resulting magnetic material. (Manning, Tr. 1105:13-17, 1110:21-25; Fish, Tr. 2210:2-11) Thus, the '399 patent discloses a “broad universe of materials,” including “a thousand different possible chemical combinations” and “broad ranges of processing techniques” that will “impact the magnetic properties of the ultimate material.” (Fish, Tr. 2209:14-2210:1) 65. The '399 patent is silent as to the “abrupt” characteristics claimed in the '200 and '245 patents, such as the slope of the deactivation-field-dependent resonant-frequency shift, strength of DC magnetization field required to magnetize the bias to saturation, and strength of applied AC magnetic field required to cause the magnetization level to drop below 95% of full magnetization level. (DX 14; Coffey, Tr. 508:19-509:2, 510:11-17; Fish, Tr. 2088:16-2090:7) 66. Defendants’ expert Dr. Fish (Phenix’s patent agent) testified about three markers that were created at his suggestion. Those are markers Mil, M12 and M13 (“Fish Markers”). These markers each contained an Arnokrome 4 bias material and a Metglas 2826 MB resonator. (Fish, Tr. 1974:16-1975:6) Dr. Fish testified that the Fish markers practiced the '399 patent and read on the asserted claims. Thus, according to TAG and Phenix, the '399 patent anticipates the asserted claims of the '200 and '245 patents. 67. In fact, however, Dr. Fish admitted that for “many of the asserted claims, fewer than all three [Fish] markers read on that claim.” (Fish, Tr. 2208:18-2209:4) For example, markers Mil and M12 do not meet the “saturation” limitations in claims 10 and 11 of the '200 patent and claims 7 and 9 of the '245 patent because they had not achieved “saturation,” as defined in the court’s Markman order, at less than 200 or 350 Oe. (Coffey, Tr. 2434:16-2435:17) 68. Moreover, there is insufficient evidence that the Fish markers in fact practice the '399 patent. Although the Fish markers used Arnokrome 4 as the bias material, Dr. Fish acknowledged that he had no knowledge of how the Arnokrome 4 in the Fisk markers was processed, let alone whether it was processed according to the teachings of the '399 patent. (Fish, Tr. 2212:2-8) 69. Finally, the court notes that the PTO considered and rejected precisely these anticipation arguments in the reexamination proceedings initiated by Phenix. (Fish, Tr. 2202:4-6; PX 922, April 24, 2007 Office Action at 6-7, 15-16, 18-19; PX 923, May 10, 2007 Office Action at 8-9 and July 20, 2007 Office Action at 3-4) c. Conclusions of Law 70. Even had it been shown that the Fish markers both practiced the '399 patent and contained each of the limitations of one or more of the asserted claims, defendants’ inherent anticipation argument would nevertheless fail, because even in that case it would not have been demonstrated that an embodiment of the '399 patent necessarily contains the limitations of any asserted claim. In other words, the fact that some embodiments of the '399 patent may contain all the limitations of an asserted claim does not preclude the possibility that some limitations may be absent in other '399 embodiments. Under Federal Circuit case law, this defeats a claim of invalidity due to inherent anticipation. See Electro Medical Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1052 (Fed.Cir.1994). 71. At closing argument, defendants relied on Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed.Cir.1985). But defendants appear to misunderstand Banner. In that case the Federal Circuit said that “when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Id. at 782. This logically follows from the fact that if the prior art contains a narrow range entirely contained within a later broader range, it is impossible to fall within the prior art’s earlier narrow range while avoiding the later, broader one. As the Federal Circuit said in Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed.Cir.2006), “Titanium Metals stands for the proposition that an earlier species reference anticipates a later genus claim, not that an earlier genus anticipates a narrower species.” 72. Defendants thus have failed to show by clear and convincing evidence that any of the asserted claims are inherently anticipated by the '399 patent. 3. On-Sale Bar a. Governing Legal Principles 73. A claim is invalid if a product embodying each and every limitation of the claimed invention was “in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). This rule is commonly known as the “on-sale bar.” “The date exactly one year prior to the date of application for the patent is known as the critical date.” Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1327 (Fed.Cir.2001). 74. “The ultimate determination of whether a patent is invalid under § 102(b) due to application of an on-sale bar is a question of law.... This ultimate determination is based upon underlying factual considerations..... In order to overcome the presumption of validity, such underlying facts supporting a determination of invalidity must be proven by clear and convincing evidence.” Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1257 (Fed.Cir.2001) (quotations and citations omitted). 75. To invalidate a claim by operation of the on-sale bar, defendants must prove that two conditions were satisfied prior to the critical date. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67-68, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998). “First, the [claimed invention] must [have been] the subject of a commercial offer for sale.” Id. “Second, the invention must [have been] ready for patenting.” Id. “[The second] condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.” Id. 76. When the asserted basis of invalidity is a public use or on-sale bar, the court should determine “ ‘whether the subject of the barring activity met each of the limitations of the claim, and thus was an embodiment of the claimed invention.’” Dana Corp. v. American Axle & Mfg., Inc., 279 F.3d 1372, 1375 (Fed.Cir.2002) (citation omitted). 77. “The on-sale bar is evaluated on a claim-by-claim basis, so that some of the claims of a patent may be found to be barred while others are not.” Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1353 (Fed.Cir.2002). 78. If a prior sale or public use is “primarily for experimentation rather than commercial gain, then the sale is not invalidating under § 102(b).” Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1210 (Fed.Cir.2005). 79. “ ‘[A] bona fide effort to bring [the] invention to perfection, or to ascertain whether it will answer the purpose intended’ does not constitute a ‘public use.’ ... [T]he focus of the test is whether the use was truly experimental or in fact commercial.” Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 998 (Fed.Cir.2007) (citation omitted). “[T]he question is ... whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1354 (Fed.Cir.2002). 80. “[V]arious objective indicia may be considered in determining whether the inventors engaged in experimentation.” Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1212 (Fed.Cir.2005). These factors include: “(1) the necessity for public testing; (2) the amount of control over the experiment retained by the inventor; (3) the nature of the invention; (4) the length of the test period; (5) whether payment was made; (6) whether there was a secrecy obligation; (7) whether records of the experiment were kept; (8) who conducted the experiment; (9) the degree of commercial exploitation during testing; (10) whether the invention reasonably requires evaluation under actual conditions of use; (11) whether testing was systematically performed; (12) whether the inventor continually monitored the invention during testing; and (13) the nature of the contacts made with potential customers.... This list is not exhaustive, and all of the experimentation factors may not apply in a particular case.” Id. at 1213. 81.If the patent challenger makes a prima facie case of public use, the patentee “must simply produce sufficient rebuttal evidence [of experimental use] to prevent the party challenging the patent’s validity from meeting its burden of proving by clear and convincing evidence that the invention was in public use.” Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1316 (Fed. Cir.2005). A “party challenging a patent’s validity has the burden of proving by clear and convincing evidence that the patent is invalid, and that ... burden does not shift at any time to the patent owner.” Id. 82. Defendants contend that each of the asserted claims is invalid because, pri- or to the critical date, Sensormatic sold or publicly used labels within the United States embodying every element of each of the asserted claims. (DE # 276; Opening, Tr. 17-23; Closing, Tr. 2754:10-24). 83. Defendants argued that the sale of labels employing Metglas 2605 TCA, Arnokrome 4, or SemiVac 90 bias materials constituted a public use or sale of the claimed inventions. (Closing, Tr. 2754:10-24) b. Findings of Fact 84. As defendants acknowledge, the effective filing date of the '245 patent is the filing date of the '200 patent for purposes of the on-sale bar analysis. Thus, the critical date for both the '200 and '245 patents is August 28, 1995, one year prior to the filing date of the '200 patent. (PX 786, DE # 276). 85. Both parties agreed that a semi-hard magnetic material bearing the trade name Arnokrome 4 was commercially available from Arnold prior to the critical date, and that Sensormatic purchased Arnokrome 4 prior to the critical date. But the parties dispute whether Sensormatic sold labels containing Arnokrome 4 bias material prior to August 28,1995. 86. Defendants relied largely on the testimony of Kathie Bulson, TAG Company’s Senior Vice President, and a former Sensormatic employee. Ms. Bulson testifled that labels using Arnokrome 4 bias material were sold to Sensormatie customers in early to mid 1994. (Bulson, Tr. 2351:20-25, 2353:4-5) The court, however, finds this testimony not credible nor worthy of belief. 87. Furthermore, defendants produced insufficient documentary support for Ms. Bulson’s contention that Arnokrome 4 had been approved for use in labels to be sold. (Bulson, Tr. 2396:2-5) Ms. Bulson testified that she was not involved in the decision to approve Arnokrome 4 for use in labels. She testified that for Arnokrome 4 to have been approved for use in labels to be sold, it would first have had to be approved by Mr. Patterson’s group. (Bulson, Tr. 2353:17-23, 2395:22-2396:1) 88. Mr. Patterson in turn testified that without a final specification, a bias material cannot be . used in labels to be sold to Sensormatie customers. (Patterson, Tr. 2523:1 — 1; Copeland, Tr. 1379:19-20) No final specification was ever approved for Arnokrome 4. (Patterson, Tr. 2524:5-10) Mr. Patterson further testified that Arnokrome 4 was never used in Sensormatie labels that were sold or offered for sale. (Patterson, Tr. 2524:5-10) Dr. Copeland also testified that to the best of his knowledge, Sensormatie did not sell labels containing Arnokrome 4. (Copeland, Tr. 1453:19-22) 89. The court finds the testimony of Mr. Patterson and Dr. Copeland on this point to be accurate. The testimony of Mr. Patterson and Dr. Copeland, along with the documentary evidence, established that from 1993 through 1995 Sensormatic evaluated Arnokrome 4 for potential use in labels, but that for various reasons Sensormatie doubted whether Arnokrome 4 had the necessary magnetic properties to function as bias material in its labels. (Copeland, Tr. 1488:16-1489:3, 1526:3-1527:6; DX 189, Dec. 8, 1993 memo from Copeland stating “[f]irst pilot material [of Arnokrome 4] received at the beginning of December .... Test results show this material to be at or below the low limit specification for remanent flux.... The specification release will be delayed until these issues about Arnold’s capabilities are finalized”; DX 187, Feb. 4, 1994 Krishnasamy memo noting that Arnokrome 4 was still in developmental stage; DX 137, June 10,1994 memo from Patterson stating “Arnold Engineering still cannot meet our mechanical specifications” for Arnokrome 4; DX 296, Apr. 4, 1995 presentation stating Arnokrome 4 is “where we are heading this coming fiscal year”). 90. During this time, Sensormatie projected future purchases of Arnokrome 4 and purchased some quantities for experimentation. Defendants rely on Sensormatic documents concerning projected purchases of Arnokrome 4 as support for their contention that Arnokrome 4 was being used in labels sold to the public. (See, e.g., DX 271, Dec. 3, 1994 “Bias Commitments” showing commitment to 22,500 lbs. of Arnokrome 4; DX 281) However, Ms. Bulson admitted that the bias commitments do not establish that Sensormatie actually purchased those materials, or that Sensormatie ever sold labels with Arnokrome 4 bias materials. (Bulson Tr. 2397:21-25, 2398:11-15) 91. Defendants relied on documents indicating that Arnokrome 4 had been “issued to production.” But Dr. Copeland testified testimony established that within Sensormatie “issued to production” meant only that the material had been sent to the production department for evaluation and testing. The product would be put on the market only if it ultimately met specifications. (Copeland, Tr. 1378:13-1379:6) 92. Defendants also rely on a May 31, 1995 Arnold Engineering document titled “Visit to Sensormatie Electronics Corporation.” (DX 156) Page 2 of the document says the “status” of Arnokrome 4C is “Commercial,” while the “status” of Arnokrome 4D is “Development.” (DX 156) Defendants contend that this shows that Sensormatic was selling labels with Arnokrome 4 bias material at that time. But former Arnold employee Mr. Manning testified that the designation “commercial” meant only that the materials were being offered by Arnold for sale to Sensormatic; not that Sensormatic was selling labels with Arnokrome 4 bias. (Manning, Tr. 1119:20-1120:13). 93. Instead, a document relating to the preparation of the May 31 presentation in DX 156 reveals that as of May 19, 1995 Arnold still had not received “feedback on the final production approvals of Arnokrome 4.” (PX 924) The results Arnold was awaiting, namely the Sensormatic Manufacturing Engineering Department’s final evaluation of Arnokrome 4, are presented in a May 4, 1995 memorandum, in which Sensormatic concluded that “Arnokrome IV is not a replacement for existing bias material.” (PX 927) 94. The court thus finds that defendants have not proven by clear and convincing evidence that Sensormatic sold labels employing Arnokrome 4 material prior to the critical date. 95. Sensormatic acknowledged sending some labels using Arnokrome 4 to customers for test purposes. (Patterson, Tr. 2525:12-18) Mr. Patterson testified that these tests occurred somewhere in the “'94, '95 time frame.” (Patterson, Tr. 2550:16-24) Defendants contend that this use of Arnokrome 4 constitutes “public use” for purposes of the on-sale bar. 96. However, Sensormatic presented convincing evidence that, even if Arnokrome 4 labels were sent to customers prior to the critical date, the use was experimental rather than commercial, and thus outside the scope of the on-sale bar. 97. Mr. Patterson testified that public testing of Arnokrome 4 labels was necessary, because without testing in customer sites Sensormatic could not know what kind of issues the customer would have. It was necessary to test whether issues that appeared in the laboratory are really issues in the field. Store clerks who behave one way in the laboratory might behave differently in the actual store, facing a long line of customers, which could affect the performance of the labels. (Patterson, Tr. 2526:16-2527:1, 2528:8-13) 98. Mr. Patterson’s testimony established that Sensormatic conducted and retained control over the experiment with Arnokrome 4 labels. The Arnokrome 4 test labels were controlled lots. (Patterson, Tr. 2525:14-15) Sensormatic created several thousand Arnokrome 4 test labels, compared to millions or even billions of labels Sensormatic typically produces when labels are being produced for commercial purposes. (Patterson, Tr. 2551:15-18, 2568:6-14) Sensormatic employees placed the labels on products in the retail setting, and monitored how they performed. Sensormatic would bring samples of the labels back to the lab for evaluation. (Patterson, Tr. 2556:21-2557:9) 99. Sensormatic was not paid for the Arnokrome 4 labels used in tests, but gave them to the participating customers. (Patterson, Tr. 2525:3-6) 100. The evidence therefore shows that Sensormatic’s use of Arnokrome 4 labels was experimental, rather than commercial, and thus outside the scope of the on-sale bar. 101. Even had defendants shown that Arnokrome 4 labels were commercially sold prior to the critical date, defendants did not demonstrate that those labels in-eluded each and every element of any of the asserted claims. 102. Neither Dr. Fish nor Ms. Bulson offered evidence or analysis regarding the properties of Arnokrome 4 labels sold pri- or to the critical date. 103. The evidence that was offered showed that Arnokrome 4, prior to the critical date, did not exhibit the abrupt characteristics taught by the '200 and '245 patents. For instance, in May of 1996, Dr. Copeland experimented with Arnokrome 4 to determine whether it could be used as the bias element in a low energy, abrupt bias marker. He concluded it could not because it was “too gradual.” (DX 145, p. 2, May 20, 1996 memo from Copeland to Manning saying the Arnokrome 4S samples were “too gradual”; Copeland, Tr. 1484:19-25) 104. Defendants next contend that Sensormatie sold labels before the critical date that used SemiVae 90 bias material and that embodied the limitations of the asserted claims of the '200 and '245 patents. 105. Sensormatie does not dispute that it sold labels with SemiVae 90 bias material, but contends those labels contained high eoercivity SemiVae 90. Sensormatie contends that Defendants have failed to prove by clear and convincing evidence that Sensormatie sold labels containing low eoercivity (less than 55 Oe) SemiVae 90 prior to the critical date. 106. As noted above, Sensormatie required a final specification before a bias material could be used in labels to be sold to Sensormatie customers. (Patterson, Tr. 2523:1-4; Copeland, Tr. 1379:19-20) The final specification for SemiVae 90 bias material was dated February 20, 1995, before the August 28,1995 critical date. (PX 929) But that specification required high coercivity SemiVae 90 — in the range of 60 to 100 Oe, not less than 55 Oe as required by certain claims of the '200 and '245 patents. (PX 929 p. 2) Thus, SemiVae 90 that was approved and sold before the critical date was high eoercivity SemiVae 90. Dr. Copeland testified that the SemiVae 90 actually used in markers before the critical date had high eoercivity. (Copeland, Tr. 1462:4-10) 107. Defendants relied on documents from the spring of 1994 showing eoercivity values for SemiVae 90 less than 55 Oe. (E.g., DX 250) But these documents concern SemiVae 90 that was in testing and evaluation, but had not been approved for use in labels to be sold. 108. For example, DX 250 at page 4 indicates that in March of 1994, 50 Oe SemiVae 90 was “issued to production.” As discussed above, however, “issued to production” at Sensormatie meant only that material was sent to the production department for testing, not produced for sale to customers. (Copeland, Tr. 1366:21-1367:10) In fact, the first page of DX 250 explains that SemiVae 90 was “tested in Incoming Inspection and a trial production was conducted. The results are described below.” (DX 250) Similarly, in April of 1994 Sensormatic’s preliminary specification for SemiVae 90 called for coercivities between 40 and 100 Oe. (DX 247) But the same exhibit made clear that further testing was required before Sensormatic would issue a final specification. Id. (“Sensormatie will issue a final specification only after completing this evaluation.”) Materials shipped pursuant to this specification were used for evaluation. (Copeland, Tr. 1466:1-8) In short, although these documents indicate that some Semi-Vac 90 in 1994 may have had eoercivity less than 55 Oe, they do not show that Sensormatie sold labels with that lower eoercivity SemiVae 90. 109. Sensormatic’s testing of SemiVac 90 was not complete, and SemiVac 90 was not released for use in AM labels, until January 1995. (PX 933, Jan. 24, 1995 email from Bob DiMarzio: “SemiVac can be released for use.”) The first specification for SemiVac 90 after it was released for use required 60 to 100 Oe eoercivity. (PX 929, p. 2) (Feb. 20, 1995 first commercial Semi-Vac 90 specification shows 60-100 Oe; Copeland Tr. 1361:22-1362:9) 110. Thus, the evidence regarding the properties of the SemiVac 90 that was sold in labels prior to the critical date is at best equivocal. Defendants failed to show by clear and convincing evidence that labels containing SemiVac 90 having coercivities less than 55 Oe were sold or offered for sale prior to August 28,1995. 111. Even had defendants shown that low-eoercivity SemiVac 90 was used in labels sold prior to the critical date, defendants nevertheless have failed to show that the SemiVac 90 exhibited the abrupt characteristics taught by the '200 and '245 patents. The evidence of record shows that SemiVac 90 did not exhibit the abrupt characteristics of the asserted claims. (PX 382 p. 1, Feb. 28, 1996 memo from Coffey to Patterson saying current SemiVac 90 does not meet new abrupt bias specifications; Coffey, Tr. 390:12-15) 112. In fact, Figure 2 of the '200 patent, labeled “Prior Art,” depicts actual data from a marker utilizing SemiVac 90 as the bias material. Figure 2 shows that SemiVac 90 has a demagnetization curve that is not abrupt. (PX 786, Copeland, Tr. 1468:23-1469:10) In short, SemiVac 90 was a gradual, not an abrupt, material. (Copeland, Tr. 1470:9-10) 113. Finally, defendants contend that, prior to the critical date, Sensormatie sold labels using Metglas 2605 TCA (“TCA”) bias material that embodied the asserted claims of the '200 and '245 patents. 114. Defendants failed to set forth a claim by claim analysis showing that any labels containing TCA met each limitation of any of the asserted claims. 115. As discussed above, Sensormatie required a final specification before a bias material could be used in labels to be sold. The only specification for TCA bias material was for coercivities of 65 +/- 15 Oe. (DX 274) Dr. Copeland testified that he would have expected the actual range of coercivities of the TCA to be centered on 65, and tighter than the range specified. (Copeland, Tr. 1495:4-9) 116. Defendants relied on the testimony of defendant Mr. Dennis Gadonniex to establish that Sensormatie sold labels containing TCA with eoercivity below 55 Oe. Mr. Gadonniex admitted that the specification required TCA bias material to have a eoercivity of 65 +/-15 Oe. (Gadonniex, Tr. 1601:24-1602:2) He testified, however, that in 1994 the coercivities of TCA bias material were “all over the place.... between 30 and 80.” (Gadonniex, Tr. 1614:1-4) 117. Mr. Gadonniex’s testimony is partially corroborated by PX 700, a document showing eoercivity values for TCA. However, PX 700 cannot establish the coercivity of any TCA bias materials included in labels sold before August 28,1995 with any certainty, because it is undated, and Mr. Gadonniex testified he had no way of dating the document. (PX 700; Gadonniex, Tr. 1804:7-9) 118. Mr. Gadonniex testified that the purpose of the testing he did of TCA bias materials was to ensure compliance with specifications. (Gadonniex, Tr. 1803:17-19) He also admitted that all but 17 of the 75 samples reflected in PX 700 were out of specification. (Gadonniex, Tr. 1804:19-1805:5) His testimony that the material was used in labels sold to customers, despite the fact that the overwhelming majority of that material was out of specification, is not credible or worthy of belief. 119. Even if Sensormatic had sold labels containing TCA with coercivity below 55 Oe before the critical date, defendants have not shown that such labels would have embodied all of the limitations of the any of the asserted claims, because each of the asserted claims includes more than just the coercivity of the bias material. 120. At closing, defendants acknowledged that Mr. Gadonniex’s testimony is the sole basis for defendants’ contention that labels containing TCA bias met any of the asserted claims’ abruptness limitations before the critical date. (Closing, Tr. 2763:16-18) 121. Although Mr. Gadonniex testified that he monitored the TCA production line and that the material generally exhibited abrupt characteristics, he did not testify that they met the specific abruptness requirements in the asserted claims. (Gadonniex, Tr. 1615:15:-17) 122. In fact, Mr. Gadonniex conceded that he had no data concerning any properties of TCA other than coercivity. (Gadonniex, Tr. 1813:7-1814:2,1814:3-16) 123. Mr. Gadonniex’s testimony thus failed to address at least one limitation of each of the asserted claims. Because defendants’ on-sale bar argument as it relates to TCA rests entirely on Mr. Gadonniex’s testimony, defendants have failed to show by clear and convincing evidence that the on-sale bar invalidates any of the asserted claims of the '200 or '245 patent. c. Conclusions of Law 124. Because defendants have not met their burden of proving by clear and convincing evidence that labels embodying each and every limitation of any of the asserted claims were on sale or in public use prior to August 28, 1995, the on-sale bar defense must be rejected. A Enablement a. Governing Legal Principles 125.A patent is not valid unless it contains “a written description of the invention, and of the manner and process of making and using it, 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....” 35 U.S.C. § 112. 126. The enablement requirement is satisfied if “the specification teaches those in the art enough that they can make and use the invention without ‘undue experimentation.’ ” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed.Cir.2003). 127. In determining whether undue experimentation is required, the court should consider “(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). 128. In order to invalidate a claim on lack of enablement grounds, Defendants must show “that all of the disclosed alternative modes are insufficient to enable the claims, because ‘the enablement requirement is met if the description enables any mode of making and using the invention.’ ” Johns Hopkins Univ. v. Cell-Pro, Inc., 152 F.3d 1342, 1361 (Fed.Cir.1998) (quoting Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed.Cir.1991)). “The law makes clear that the specification need teach only one mode of making and using a claimed invention.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1335 (Fed.Cir.2003). b. Findings of Fact 129. Defendants contended that the preferred embodiments set forth in each of the patent’s specification were not enabling because: (1) the specification identifies the relevant bias materials by trade name only, (2) the trade names at issue do not refer to so-called “invariant” materials, and (3) the specification does not set forth the steps for processing the bias materials to obtain the desired magnetic properties. 130. Defendants put on their non-enablement defense principally through their technical expert Dr. Gordon Fish. Dr. Fish admitted during cross examination that he had not disclosed in his expert reports an opinion that the asserted claims of the '245 patent are invalid for failure to satisfy the enablement requirement of 35 U.S.C. § 112. (Fish, Tr. 2127:16-21) As a result, this Court struck Dr. Fish’s testimony to the extent it included opinions and evidence that any of the asserted claims of the '245 patent are invalid on non-enablement grounds. Defendants adduced no additional evidence at trial regarding lack of enablement and the asserted claims of the '245 patent. 131. During the original prosecution of the '200 patent, the Examiner initially rejected all 47 claims in the application on non-enablement grounds. (PX 86, May 16, 1997 Office Action) Sensormatic traversed the rejection, upon which the Examiner withdrew the rejection and allowed all of the claims as originally written. (PX 86, Sept. 25, 1997 Notice of Allowability) Thus the PTO has already considered and rejected the precise non-enablement arguments made by defendants in this case. 132. Many of the asserted claims set forth specific magnetic properties of the bias material. (PX 786, cols. 11-16) Others set forth specific magnetic properties of the marker, which includes the bias and resonator. (Id.) The evidence at trial showed that a person of ordinary skill in the field of magnetics or materials science in August 1996 would have known how to obtain these magnetic properties without undue experimentation either by processing an alloy him- or herself, or simply by specifying the magnetic characteristics to commercial suppliers of such alloys with expertise in such processing. 133. Defendants’ own technical expert, Dr. Fish, admitted that, “[i]f the specification spells that out, spells out what [the magnetic] properties are, and those can be achieved by the manufacturer, yes, that would be enabled.” (Fish, Tr. 1874:20) 134. The '200 patent specification spells out in detail the desired magnetic properties of the bias and marker in the claims, the text and the figures. The claims themselves specify numerically the desired magnetic properties. (PX 786, cols. 11-16) The figures of the '200 patent also provide graphical representations of the claimed magnetic properties. (PX 786) 135. The evidence at trial showed that a person armed with these figures and the desired magnetic properties could simply have provided that information to magnetic materials vendors, who, using existing knowledge of how to process magnetic materials, could process materials to the desired properties without undue experimentation. In response to a question posed by the court, Dr. Copeland testified that “We [Sensormatic] give [vendors] direction as to what the end properties need to be, and then they have to, you know, figure out how they adapt their processes for that material to obtain that.” (Copeland, Tr. 1392:15-24) The court finds Dr. Copeland’s testimony credible on this point. 136. It was thus well known in the art at the time the '200 patent was filed how to process materials to obtain the magnetic properties specified in the '200 patent. For example, Dr. Fish admitted during cross-examination that individuals at Carpenter at the time would have known “within their routine level of skill” how to obtain the desired magnetic properties. (Fish, Tr. 2106:21-25) The court finds this statement by Dr. Fish to be accurate. c. Conclusions of Law 137. Based upon these findings, the court concludes that defendants have not shown by clear and convincing evidence that any of the asserted claims are invalid because a person of ordinary skill in the art would not have been able to make or use the inventions asserted therein. 5. Fraudulent Inventorship a. Governing Legal Principles 138. A patent applicant must disclose the names of all inventors. 35 U.S.C. § 111. A patent can be invalidated if the patentee “did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f). 139. Inventorship is a question of law based on underlying factual determinations. C.R. Bard, Inc. v. M3 Sys., 157 F.3d 1340, 1352 (Fed.Cir.1998). “The general rule is that a party alleging ... nonjoinder of inventors must meet the heavy burden of proving its case by clear and convincing evidence, and must provide evidence to corroborate the alleged joint inventor’s conception.” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir.2004) (citations omitted). 140. “The ‘inventor;’ in patent law, is the person or persons who conceived the patented invention. Thus facts relevant to inventorship are those showing the conception of the invention, for others may provide services in perfecting the invention conceived by another without becoming an ‘inventor’ by operation of law.” C.R. Bard, 157 F.3d at 1352. “‘[A]n inventor may use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent.’ ” Id. (citations omitted). 141. “ ‘To be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.’ This requires more than merely exercising ordinary skill in the art — ‘a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known [in] the current state of the art.’ ” Caterpillar Inc. v. Sturman Indus., 387 F.3d 1358, 1377 (Fed.Cir.2004) (citations omitted). 142. “One may not qualify as a joint inventor ... by ‘merely assisting the actual inventor after conception of the claimed invention.’ ” Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed.Cir.2002) (emphasis in original) (citations omitted). “ ‘Depending on the scope of the patent’s claim, one of ordinary skill in the art who simply reduced the inventor’s idea to practice is not necessarily a joint inventor,” even if the specification discloses that embodiment to satisfy the best mode requirement. Id. at 1008. 143. “[Ijnventorship is determined on a claim-by-claim basis.” Gemstar-TV Guide Int'l Inc. v. International Trade Commission, 383 F.3d 1352, 1381 (Fed.Cir.2004). 144. A failure to name an inventor, even if proven, does not automatically invalidate a patent. 35 U.S.C. § 256, entitled “Correction of named inventor,” provides that if an inventor is inadvertently not named, the patent will not be invalidated as long as the error was not done with any “deceptive intent.” 145. “[Section 256] is a savings provision. If a patentee demonstrates that inventorship can be corrected as provided for in section 256, a district court must order correction of the patent, thus saving it from being rendered invalid.” Pannu v. Iolab Corp., 155 F.3d 1344, 1350 (Fed.Cir.1998) b. Findings of Fact 146. Defendants contend that all of the claims of the '200 and '245 patents are invalid because Sensormatic, including the inventors, knowingly omitted Dennis Gadonniex as an inventor on both patents with the intent to deceive the PTO. Defendants rested this contention on the testimony of Mr. Gadonniex himself. 147. Mr. Gadonniex testified, that he believes he should have been named an inventor on both the '200 and the '245 patents. (Gadonniex, Tr. 1633:8-12) Mr. Gadonniex identified the following as claims he had contributed to: '200 patent claims 1, 2, “maybe” 3, 4-9, 15, and 31 through 33. (Gadonniex, Tr. 1643:7-1644:23). 148. The court finds Mr. Gadonniex’s testimony on this point not credible nor worthy of belief. Defendants offered no documentation or other corroboration of Mr. Gadonniex’s testimony. To the contrary, documents contemporaneous to the inventions show that Dr. Coffey and Dr. Copeland — and not Mr. Gadonniex — were the individuals who conceived of the claimed inventions. (See, e.g., DX 256, Feb. 23,1996 Invention Disclosure (Ex. A); DX 155, Nov. 28, 1995 Coffey memo; PX 382, Feb. 28, 1996 Coffey memo; PX 527, Mar. 8,1996 Coffey memo) 149. Dr. Copeland testified that Mr. Gadonniex played no role in the conception of the inventions of the '200 or '245 patents. (Copeland, Tr. 1447:2-4) Dr. Coffey asked Mr. Gadonniex to investigate a lower coercivity range after the November 1995 conception. (Copeland, Tr. 1434:7-16) Similarly, Dr. Coffey testified that Mr. Gadonniex did not contribute to the conception of the inventions, but worked on making Metglas 2605 SB1 material more abrupt after Drs. Copeland and Coffey’s November 1995 conception. (Coffey, Tr. 411:9-15, 411:20^12:5) The court finds the testimony of Dr. Copeland and Dr. Coffey to be credible and accurate on these points. 150. Even had the court concluded that Mr. Gadonniex qualified as an inventor of some of the claims contained in the '200 patent, invalidation would nevertheless be inappropriate because defendants offered no evidence whatsoever that Mr. Gadonniex was omitted as an inventor with intent to deceive the PTO. 151. Dr. Copeland testified that he did not intentionally leave Mr. Gadonniex off the patent knowing he was an inventor, and that there would have been no reason to leave Mr. Gadonniex off the patent if he had been an inventor. (Copeland, Tr. 1449:8-13) Sensormatic listed Mr. Gadonniex as an inventor on what became the '770 and '021 patents around the same time — both having application dates of July 1, 1996. (DX 25, '770 patent; DX 18, '021 patent) 152. The court finds that neither Dr. Copeland, Dr. Coffey, nor anyone at Sensormatic, omitted Mr. Gadonniex’s name from the '200 patent application with intent to deceive the PTO. c. Conclusions of Law 153. The defendants have failed to prove by clear and convincing evidence that Mr. Gadonniex contributed to the conception of any of the asserted claims. 154. By extension, defendants have further failed to prove that there was any intent to deceive the PTO in this regard. 155. Thus, the '200 and '245 patents are not invalid for failure to join an inventor. 6. Obviousness a. Governing Legal Principles 156. A claim is invalid if the subject matter of the claimed invention “as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). 157. Obviousness is a question of law, based on underlying factual findings that must be proven by clear and convincing evidence. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 767 (Fed.Cir.1988). 158. “The factual determinations underpinning the legal conclusion of obviousness include: 1) the scope and content of the prior art; 2) the level of ordinary skill in the art; 3) the differences between the claimed invention and the prior art, and 4) evidence of secondary factors, also known as objective indicia of non-obviousness.” Eisai Co. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1356 (Fed.Cir.2008). 159. Secondary considerations or objective indicia of non-obviousness include, among other things, “commercial success, long-felt but unresolved need, failure of others, copying and unexpected results.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed.Cir.2000) (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)). 160. “Evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.” Ruiz, 234 F.3d at 667 (citation omitted). Objective indicia of non-obviousness is “not just a cumulative or confirmatory part of the obviousness calculus but constitutes independent evidence of nonobviousness.” Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., 520 F.3d 1358, 1365 (Fed.Cir.2008). 161. Evidence of secondary considerations “should when present always be considered as an integral part of the analysis.” W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed.Cir. 1983). “ ‘[A] nexus between the merits of the claimed invention and evidence of secondary considerations is required in order for the evidence to be given substantial weight in an obviousness decision.’ ” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed.Cir.2008) (citations omitted) 162. As with other invalidity issues, obviousness must be examined on a claim-by-claim basis. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1370 (Fed.Cir.2003) 163. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art....