Full opinion text
MEMORANDUM OPINION SUE L. ROBINSON, District Judge. 1. INTRODUCTION Presently before the court are ten motions brought in two related patent infringement actions involving SSBG and Cisco Systems, Inc. (“Cisco”) relating to Teles’s U.S. Patent Nos. 6,954,453 (“the '453 patent”), 7,145,902 (“the '902 patent”) and 7,483,431 (“the '431 patent”) (collectively, the “patents in suit”). The procedural history of these actions is complex and detailed below. Pending before the court are: (1) Teles’s motion to amend its pleadings (Civ. No. 09-72, D.I. 86; Civ. No. 09-232, D.I. 170); (2) Cisco’s motion to dismiss for lack of subject matter jurisdiction (Civ. No. 09-72, D.I. 198; Civ. No. 09-232, D.I. 281); (3) Cisco’s motion to exclude the opinion of SSBG’s expert Christopher Spadea on commercial success (Civ. No. 09-72, D.I. 202; Civ. No. 09-232, D.I. 285); (4) SSBG’s motion to limit the testimony of Cisco’s expert Thomas La Porta (Civ. No. 09-72, D.I. 205; Civ. No. 09-232, D.I. 288); (5) SSBG’s motion to limit the testimony of Cisco’s expert Kevin Negus (Civ. No. 09-72, D.I. 206; Civ. No. 09-232, D.I. 289); (6) SSBG’s motion for partial summary judgment of no inequitable conduct (Civ. No. 09-72, D.I. 216; Civ. No. 09-232, D.I. 299); (7) Cisco’s motion for summary judgment of noninfringement (Civ. No. 09-72, D.I. 218; Civ. No. 09-232, D.I. 301); (8) SSBG’s motion for partial summary judgment of infringement (Civ. No. 09-72, D.I. 222; Civ. No. 09-232, D.I. 305); (9) Cisco’s motion for partial summary judgment for invalidity of the '431 patent pursuant to 35 U.S.C. § 112 and for confirmation of the priority date for the '431 patent (Civ. No. 09-72, D.I. 223; Civ. No. 09-232, D.I. 306); and (10) Cisco’s motion for summary judgment of invalidity (Civ. No. 09-72, D.I. 227; Civ. No. 09-232, D.I. 310). The court has jurisdiction over these matters pursuant to 28 U.S.C. § 1338. II. BACKGROUND A. The Parties and Patents in Suit The patents in suit relate to voice over internet protocol (“VoIP”) telephony. Cisco provides routers and other network products that provide access to VoIP service providers. Teles is the listed owner by assignment of the patents in suit. In mid-2009, Teles transferred ownership of the '453, '902 and '431 patents by assignment to SSBG, a German corporation owned solely by Prof. Sigram Schindler, founder of Teles and inventor of the patents in suit. SSBG represents that it and Prof. Schindler own a controlling interest in Teles, and Teles has been granted a non-exclusive license to manufacture, use and sell products under the patents. The patents in suit share a common specification claiming priority to original German patent applications filed in October 1996. The '453 patent issued from PCT No. PCT/DE97/02363, filed on October 7, 1997. The application issuing as the '902 patent was filed as a divisional application from the '453 patent application (U.S. Patent Application No. 09/147,970). The '431 patent was filed as a continuation of the '902 patent application (U.S. Patent Application No. 11/456,549). B. The Technology at Issue 1. Generally This case concerns internet telephony. Traditional telephony involves routing a telephone call over the public switched telephone network (the “PSTN”) from one telephone to another. The patents in suit and the accused Cisco products relate to VoIP technology through which a telephone call may be routed over a data network, such as the internet, rather than the PSTN. The patents describe two methods of data transfer: line-switching (or circuit switching) and packet-switching. Line-switching connections are synchronous connections. ('902 patent, col. 1:45-48) When a line-switching call is put through, a continuous, real-time connection is established using the full bandwidth of a channel. {Id. at col. 1:49-52) Data is transferred from one line section to an adjoining line section through a switch. {Id. at col. 1:45-48) Although a line-switching connection is free of any time delay and has a fixed bandwidth, such connections are expensive, since costs accumulate irrespective of the data actually being transferred. {Id. at col. 1:52-58) A packet-switching exchange involves the transfer of data, such as audio or video data or computer files, which are packeted and transferred as data packets. (Id. at col. 1:59-62) Packet-switching is asynchronous, and a fixed connection need not be maintained. (Id. at col. 1:62-67) The data packets are transferred time-delayed between two adjoining line sections by a switch; “each packet is treated individually and not in conjunction with the others.” (Id. at col. 1:62-2:2) Packet-switching is used on the internet, whose data packets are termed “IP packets” (for “Internet Protocol”). (Id. at col. 2:3-5) IP packets have a length of 16 bytes or more because they contain information in their headers, such as sender and receiver addresses. (Id. at col. 2:5-11) Because of this length, a time delay occurs in the packet-switch (an IP-switeh or router) when transferring data. “This time delay can be so great, when there is a heavy load on the packet-switching apparatus which passes a data packet over the router to the destination address, that certain applications are no longer possible.” (Id. at col. 2:10-15) Such delay is problematic with internet telephony; when the delay of individual packets is significant, a normal conversation is no longer possible. (Id. at col. 2:16-22) 2. Overview of the invention The patents disclose that, “[biased on the prior art, the present invention is concerned with the problem of providing a method for transferring data from a first switch to a second switch and providing a switch[ ] for carrying out the method which, depending on the data origin and headers of a user or network management system, allows flexible data transfer between the switches and more particularly cost-effective data transfer with real-time properties,” (Id. at col. 3:17-19) (emphasis added) “The solution according to the present invention makes it possible during [a] packet-switching connection between two switches to achieve a dynamic change-over [from a packet-switching connection] to [a] line-switching connection without interrupting the connection.” (Id. at col. 3:20-24) In other words, a line-switching connection is “established only when required, i.e., when a packet-switching data transfer no longer has the desired bandwidth,” such that data blockage is bypassed. “Slight time delays” may be present, but the bypass enables the data transfer to occur “substantially in real time.” (Id. at col. 3:26-34) The patents describe utilizing switches having both line-switching and packet-switching functionality. (Id. at col. 3:43-46) That is, the switch has “a packeting device for packeting and unpacketing data, an IP-switching device for routing data packets, a line-switching device for establishing connections for switching through data channels and a control device which directs incoming data either to the IP-switching device or to the line-switching device depending on the control signals.” (Id. at col. 3:46-53; fig. 4) “The important factor is therefore the possibility of dynamically switching between packet-switching and line-switching during one transfer.” (Id. at col. 7:20-22) The internal control commands (as to whether packet-switching is to take place through an IP-switch or line-switching is to take place through a line-switching device) are produced in a control, unit, which is itself “substantially a switch” that monitors and controls open connections. (Id. at col. 8:49-60) The switching decision is made by the control unit based on specified transfer parameters. (Id. at col. 9:46-56) Together, the patents in suit contain 210 claims to various methods and apparatus encompassed by the invention, for example, methods for data transfer and data switching apparatus. SSBG asserts that Cisco infringes the following claims: (A) claims 2, 34, 68, 69, 71, 74-77,.79, 82-85, 87, 90-92, 95, 98, 100-01, and 104 of the '902 patent; (B) claims 34-36 and 38 of the '453 patent; and (C) claims 1, 3, 6, 8, 11, 13, 16, 18, 45, 46 and 47 of the '431 patent. (D.I. 281, JA6440 at ¶ 10) Certain of these claims have been identified by the parties in connection with their claim construction papers (in which the parties seek the construction of sixty-three (63) terms). The court focuses its limited resources on those most essential claim terms and issues addressed by the parties in their summary judgment motions. C. Litigation History The '453 patent issued on October 11, 2005. On October 18, 2005, Cisco filed a declaratory judgment action against Teles in the United States District Court for the District of Columbia, seeking a declaration that the '453 patent is invalid and not infringed (hereinafter, “Teles I”). (Civ. No. 09-232, D.I. 1) On March 24, 2006, Teles filed suit against Quintum Technologies, Inc. (“Quintum”) in this judicial district for infringement of the 453 patent (hereinafter, “Quintum”). (Civ. No. 06-197-SLR) The '902 patent issued December 5, 2006. Teles amended its Quintum complaint in December 2006 to add a count of infringement of the '902 patent; the amendment was not opposed by Quintum. (Civ. No. 06-197, D.I. 28) In February 2007, Teles was granted leave to amend its counterclaims to include allegations that Cisco infringes the '902 patent. (Civ. No. 09-232, D.I. 39; D.I. 41) In August 2007, Cisco filed a request for inter partes reexamination of the 453 and 902 patents with the United States Patent and Trademark Office (the “PTO”), and moved to stay Teles (Id., D.I. 47, ex. 1) Judge Reggie B. Walton of the United States District Court for the District of Columbia granted Cisco’s motion. (Id., D.I. 68) On May 9, 2008, Quintum moved to transfer Quintum to the District Court for the District of Columbia or, in the alternative, to stay the action pending reexamination of the 453 and 902 patents. (Civ. No. 06-197, D.I. 49) This court denied the motion. The '431 patent issued January 27, 2009. Two days later, Teles filed a complaint against Cisco in this court alleging infringement of the '431 patent (hereinafter, “Teles II”). (Civ. No. 09-72, D.I. 1) In early February, Cisco filed a declaratory judgment complaint for invalidity and non-infringement of the '431 patent in the District of Columbia (hereinafter, “Teles III”). (D.D.C.Civ. No. 09-224-RBW, D.I. 1) On February 5, 2009, Cisco filed a motion to transfer Teles II to the District of Columbia or, in the alternative, to dismiss or stay the action pending the conclusion of Teles III. (Civ. No. 09-72, D.I. 5) Judge Walton subsequently dismissed Teles III in favor of Teles II under the first-filed rule. {Id., D.I. 16) On February 23, 2009, Cisco moved for leave to amend its declaratory judgment complaint in Teles I to add claims relating to the invalidity, unenforceability, and Cisco’s non-infringement of the 431 patent. (Civ. No. 09-232, D.I. 81) The following day, Teles moved to transfer to this court. (Id., D.I. 82) The Teles I stay was terminated on March 4, 2009. (Id., D.I. 85) On March 24, 2009, Judge Walton denied Cisco’s motion to amend its complaint in Teles I given that the '431 patent was the subject of Teles II and, following consultation with this judicial officer, transferred Teles I to this court. (Id., D.I. 91) On April 24, 2009, Teles moved to consolidate the three Delaware actions (Teles I, Teles II, and Quintum), which motion was denied, (Civ. No. 06-197, D.I. 106) By the parties’ stipulation, Quintum was dismissed in October 2009. (Id., D.I. 152) Trial in the related Teles I and Teles II actions is currently scheduled to begin on August 9, 2010. D. Reexaminations The reexaminations of the '453 and '902 patents have proceeded concurrently with this litigation. Cisco filed its request for (inter partes) reexamination of the '902 patent on August 8, 2007 and its request for (ex parte) reexamination of the '453 patent on August 30, 2007. The PTO granted reexamination of the 453 patent on November 23, 2007. On November 27, the PTO both granted reexamination of the 902 patent and issued an office action rejecting all of the claims of the 902 patent as both anticipated and/or obvious. (D.I. 246, ex. C; D.I. 245, ex. A) A first office action rejecting the asserted claims of the '453 patent issued from the Central Reexamination Unit of the PTO (the “CRU”) on February 13, 2008. In that action, each of the 453 claims on reexamination (claims 34-36 and 38) were rejected as anticipated and/or obvious. (D.I. 246, ex. D) During this time, the prosecution of the 431 patent application, filed in July 19, 2006, was ongoing. On August 6, 2008, a final office action issued in the 453 patent reexamination affirming the rejection of all claims. (D.I. 246, ex. E) On October 3, 2008, the CRU issued an “Action Closing Prosecution” in the 902 patent reexamination, finally rejecting all of the claims except dependent claims 91 and 104. (Id., ex. F) The parties have since appealed both final actions by the CRU to the Board of Patent Appeals and Interferences (“BPAI”), which heard argument on the '453 patent in December 2009. No decision has yet issued. Oral argument has not yet been scheduled on the '902 patent. III. STANDARD OF REVIEW A court shall grant summary judgment only if “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “Facts that could alter the outcome are ‘material,’ and disputes are ‘genuine’ if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct.” Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (internal citations omitted). If the moving party has demonstrated an absence of material fact, the nonmoving party then “must come forward with ‘specific facts showing that there is a genuine issue for trial’ ” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e)). The court will “view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party opposing the motion.” Pa. Coal Ass’n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). IV. DISCUSSION A. Teles’s Motion to Amend and Cisco’s Motion to Dismiss On October 1, 2009, Teles filed a motion to amend its patent infringement complaints in Civ. Nos. 09-72-SLR and 06-197-SLR and to amend its counterclaims and request for declaratory judgment in Civ. No. 09-232-SLR. (D.I. 86) Cisco opposed the motion on the basis that Teles remains a named party in the amended pleadings. Cisco argued that Teles, a nonexclusive licensee, now lacks standing to sue and has filed a motion to dismiss on that basis. (D.I. 198) Cisco also opposed the motion to amend on the basis that the amended pleadings in Civ. No. 09-232-SLR contain an extended list of accused products adding over 200 new products over multiple categories to the litigation. (D.I. 97 at 5) Cisco objected that the amended pleadings only conclusorily assert infringement as to these products; the bases for infringement are not detailed. (Id.) On June 7, 2010, after discovery closed and oral argument on claim construction had been held, the court issued an order that the parties supplement their briefing on the motions to amend and to dismiss. Specifically, it was not clear to the court if any of Cisco’s concerns with respect to the motion to amend had been mooted by the close of discovery and whether all of the 200 products sought to be added to the pleadings in Civ. No. 09-232-SLR had been vetted through the discovery process. (D.I. 353) The parties have clarified their respective positions as follows. (D.I. 362) The parties agree that SSBG should be substituted for Teles in this case pursuant to Federal Rule of Civil Procedure 25(c) and, therefore, the court will do so. (D.I. 361 at 1; D.I. 362 at 2) Cisco is correct that Teles’s motion to amend must be denied, however, insofar as the proposed pleadings filed in connection with that motion merely add, rather than substitute, SSBG as a party. (D.I. 86, ex. IB (Civ. No. 09-232-SLR), ex. 2B (Civ. No. 09-72-SLR)) The court no longer has jurisdiction over Teles, a non exclusive licensee. See Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1367 (Fed.Cir.2008) (collecting authority). Accordingly, Cisco’s motion to dismiss Teles is denied as moot. In its request for supplemental briefing, the court informed Teles that it could file amended proposed pleadings deleting any of the 200 products that had not been vetted through discovery. Teles responded that it was its “understanding” that all of the 200 products “were the subject of discovery” and, quite surprisingly, listed an additional ten products “identified ... after the earlier proposed pleading.” (D.I. 362 at 3-A) The court rejects counsel’s attempt to expand the record in this manner. Cisco has identified at least six products that it contends were not contained in expert reports or otherwise vetted through discovery. The parties’ infringement and noninfringement briefs concentrate on the functionality of Cisco’s operating system software and, to a large degree, omit reference to specific products; they certainly do not group or address 194 of them. Furthermore, Cisco argues that many of these products are not actually “accused products,” they have been included for SSBG’s damages case (as possible “convoyed sales”). (D.I. 368) The accused products are not clearly identified in plaintiffs summary judgment papers. Therefore, to the extent disputes regarding the accused products remain following the court’s issuance of its claim construction order and the present opinion, the court has determined that they would be better decided from the bench (following proper identification in the pretrial order). Teles’s motion to amend is denied to the extent that Teles will not remain a party, and denied as moot in other respects. The court will hereinafter refer to “SSBG” when discussing the infringement, enforceability and validity arguments at bar. B. Infringement The court has before it cross motions for summary judgment. SSBG seeks partial summary judgment that Cisco’s 1861, 881 SRST and 888 SRST router products infringe claim 34 of the 453 patent, claim 45 of the 431 patent, and claims 69 and 84 of the 902 patent. (D.I. 224) Cisco seeks summary judgment that its router products do not infringe the patents under any of the “fourteen infringing scenarios” identified by SSBG’s expert in his infringement report. (D.I. 302) At issue in SSBG’ infringement motion are apparatus claims of each patent, as follows: '431 patent 34. Switching apparatus for routing a telephone call comprising non-packetized data from a first end terminal located at a user’s premises to a second end terminal located at another user’s premises, selectively by line switching or packet switching, the switching apparatus comprising: means for establishing a connection through a line-switching network to the second end terminal; means for line-switching transferring data received from the first end terminal as non-packetized data over the line-switching network to the second end terminal; means for establishing a connection through a packet-switching network to the second end terminal; means for packet-switching transferring data received from the first end terminal as non-packetized data over the packet-switching network to the second end terminal; and means responsive to a control signal for transferring to a line-switching transfer or a packet-switching transfer to the second end terminal; said means responsive to a control signal changing-over to a line-switching data transfer or a packet-switching transfer during the existing transfer with the presence of said control signal. '902 patent 69. Switching apparatus for selectively routing a telephone call from a first end terminal to a second end terminal, comprising: means for establishing a connection to a packet switching network through which data can be sent to the second end terminal; means for transferring first data of the telephone call originated by the first end terminal over the connection through the packet switching network for delivery to the second end terminal; means for establishing a connection to a line-switching network through which data can be sent for delivery to the second end terminal; means for transferring second data of the telephone call originated by first end terminal over the connection through the line-switching network for delivery to the second end terminal; and means responsive to a control signal for changing-over from a packet-switching mode of transfer of the first data of the telephone call to a line-switching mode of transfer of the second data of the telephone call without interruption of a call set-up procedure. 84. Switching apparatus for switching data packets from multiple origin end terminals, the data packets containing headers including information identifying respective origin and destination end terminals, the switching apparatus comprising: a packet switching device for transferring data packets through a packet switching network through which data can be sent for delivery to destination end terminals; a line switching device for establishing line connections through a line-switching network through which data can be sent to the destination end terminals; and a control device connected to the packet switching device and the line switching device for directing the data packets from the multiple origin end terminals to either the packet switching device or to the line switching device, the control device being responsive to the data packet headers for controlling the packet switching device and the line switching device for establishing and maintaining respective communications connections for data transfer with real-time properties between origin end terminals and destination end terminals, the control device also being responsive to a control signal for changing-over from packet-switching transfer of first data of a communications connection to line-switching transfer of second data of the communication connection without interruption of the communications connection. '431 patent 45. Switching apparatus for routing a telephone call from a first end terminal to a second end terminal, selectively by line switching or packet switching, the switching apparatus comprising: means for establishing a connection through a line-switching network to the second end terminal; means for line-switching transferring data received from the first end terminal over the line-switching network to the second end terminal; means for establishing a connection through a mobile packet-switching network to the second end terminal; means for packet-switching transferring data received from the first end terminal over the mobile packet-switching network to the second end terminal; and means responsive to a control signal for transferring to a line-switching transfer or a packet-switching transfer to the second end terminal; said means responsive to a control signal changing-over to a line-switching data transfer or a mobile packet-switching transfer during the existing transfer with the presence of said control signal, (emphases added) Cisco seeks summary judgment of noninfringement with respect to all of the asserted claims and accused products. By its memorandum order of the same date, the court has construed certain claim limitations relevant to the issue of infringement. Specifically, a “connection” or “communications connection” is a pathway between end-terminals through which data are transferred and, importantly, is established after the completion of call set-up. The “changing over” limitations require that the change-over occur during the communications connection between end-terminals, i.e., after completion of call set-up and during the voice or audio phase of the call. As described in further detail in the court’s claim construction order, the problem solved by the invention was how to use internet telephony without interrupting the real-time transfer of data, i.e., a telephone conversation. See '902 patent at col. 3:25-28. The prosecution, reexamination history and specification are replete with references to this problem, the solution being a dynamic change-over from packet-switching to line-switching without having to terminate the call and start over. The court has also determined that the “means responsive to a control signal for changing over” is the control device 71 described in figure 4 of the patents. With these constructions in mind, the court turns now to the issues of - infringement. 1. Cisco’s products It is SSBG’s position that Cisco products that are capable of executing software that enables routers to be “voice-enabled” infringe the patents in' suit. (D.I. 281 at JA6445-46, ¶¶ 14-15, 17) The Cisco software having these voice-enabled features is Cisco’s Internetworking Operating System (or “IOS”). The IOS software has IP telephony capability and renders the accused Cisco products capable of interconnection and data transfer over packet-switching networks (e.g., an IP Wide Area Network or IP “WAN”) or a line-switching network (such as the PSTN). Although over 200 Cisco products (running the IOS) are accused of infringement, SSBG focused on the Cisco 1861 router at oral argument and in its summary judgment briefing. Cisco’s 1861 router is marketed to small to medium sized offices to provide a unified communications system by offering the integration of voice gateway, call processing, voicemail, conferencing and security capabilities, among others. The 1861 router has eight built-in ethernet ports that are used to transmit data packets to and from IP telephones. The 1861 router has four FXS ports that are used to transmit analog (or non-packeted) data to and from analog telephones. The Cisco 1861 router has built-in interfaces, specifically, FXO and ISDN Basic Rate Interface (“BRI”) configurations, for interfacing with the PSTN. These interfaces are capable of connecting to a line-switched network (such as the PSTN) and transferring telephone call data from a first telephone through the line-switched network for delivery to a second telephone. The 1861 router is capable of connecting to mobile data networks such as a 3G cellular network when equipped with a high-speed WAN interface card (or “HWIC”). The 1861 router (with the IOS) will attempt to transfer data over the IP WAN, but will change over to the PSTN upon determining that the IP WAN would not be suitable for the transfer. Reasons that the IP WAN may not be suitable include too much time delay or variation in delay. Additionally, certain “cause codes” (generated by the remote router connected to the telephone being called) indicate that the remote router has problems in forwarding data to the telephone being called and will cause a change over to PSTN. SSBG also asserts that Cisco’s 881 and 888 SRST routers infringe the claims. These routers have four built-in ethernet ports that are used to transfer data packets to and from IP telephones. The 881 and 888 SRST routers also have four FXS ports that are used to receive analog (nonpaeketed) data from analog telephones. 2. “Infringing Scenarios” SSBG’s expert, Robert Stillerman (“Stillerman”), has identified several “infringing scenarios” relevant to Cisco’s products. Stillerman’s infringement opinion relates to “Cisco products that are capable of executing software that enables routers [or] gateways [ ] to be ‘voice-enabled.’ ” (D.I. 281 at JA6445, ¶ 14) These “Voice Enabled Switching Products” comprise “Voice Enabled IOS Products” that utilize Cisco’s IOS software. (Id. at ¶ 15) Stillerman explains that the Cisco Voice Enabled Switching Products employ two mechanisms for determining how to route a telephone call: consideration of the dial plan and Call Admission Control (“CAC”). From the dial plan, the Voice Enabled Switching Products “determine when a roundtable number has been dialed, and then determine which routes are available to reach the destination having that routable number.” (Id., JA6491-92 at ¶ 183) CAC determines whether a packet network has the “resources” to carry a voice call. (Id., JA6488 at ¶ 176, citing “Tarng Exhibit 215”) “CAC occurs during call setup after a dialable number has been matched and is done on a call by call basis.” (Id., JA6487 at ¶ 173) “When a call that is intended for the packet switching network fails to be admitted to that network, the next preferred route is considered. When that next route is the PSTN, then switch over from the packet switching network to the line switching network occurs.” (Id., JA6492 at ¶ 185) According to Stillerman, all of the Voice Enabled Switching Products use CAC “at least in the handling of calls being considered for a packet switching network.” (Id., JA6490 at 1Í178) “PSTN Fallback” and “MAX CONN” are examples of CACs used by the Voice Enabled Switching Products. (Id., JA6488 at ¶ 175) With PSTN Fallback, “[i]n the event [an] impairment [delay, jitter and packet loss] is determined to be too high for the call being considered,[] the call that was attempted over the first route packet switching network is abandoned and an alternate route to the destination [such as the PSTN] is attempted.” (Id., JA6498 at ¶¶ 202, 204, 206) That is, PSTN Fallback will establish a call over the packet-switching network so long as an acceptable value of delay is detected, otherwise, that route will be abandoned and the call will be attempted on the PSTN. (Id. at ¶ 209) This also occurs in the “PSTN Fallback with PBX Hairpin” scenario described by Stillerman, the only difference being that the first data of the call is a request from the PBX to route a call to a dialed number over a packet switching network. (Id., JA6503 at ¶ 211) Stillerman describes the “MAX CONN” CAC as follows: During the call setup, and during the period where information is being transferred as messages are exchanged between site A and site B, site B determines that the maximum number of connections [“max conn”] has already been reached. Site B rejects the call in a message to site A. Site A then checks to see if the call can be routed over another dial peer. The alternate dial peer using the PSTN is found and the call is routed over the PSTN. (Id., JA6504 at ¶ 215) Stillerman describes one scenario wherein this procedure may occur outside of the “call setup” phase and in the “voice state,” that is, where a caller decides to transfer the call to another extension within the network. A transfer operation may occur whereby the PSTN is selected upon the caller’s use of a “switch-hook flash” or “a button configured on the phone for flash or transfer.” (Id., JA650405 at ¶ 216) The second caller is on hold during the exchange process. (Id.) Stillerman describes several other infringing scenarios in which the decision as to whether to admit a call and/or to switch over to the PSTN occurs when the call is initially routed, as compared to in the voice phase. (Id., JA6508 at ¶¶ 222, 227) (“Resource-Based CAC with Gatekeeper”); JA6515 at ¶ 239 (“CAC using Cisco Call Manager” (“CCM”)); JA6518 at ¶248 (“CAC with RSVP Agent”); JA6520 at ¶257 (“Call Setup and re-routing under various network conditions”); JA6522 at ¶ 263 (“Call Forward”); JA6523 at ¶ 269 (“Call Forward — ¡divert”); JA6528 at ¶ 282 (“Call Control Discover”); JA6529 at ¶¶ 286-88 (“Codec Mismatch”); and JA6531 at ¶ 293 (“Infringing Wireless Scenarios”). 3. “Changing over” or “change-over” The primary claim construction issue presented by the parties concerns the use of the term “changing over” (or “changeover”) in the patents. According to SSBG, a telephone call has three phases — a call set up, media, and tear-down phase — and change-over may occur during any of these phases. Cisco advocated that a changeover must occur only during the media (voice or midcall) phase of the call. For reasons discussed in the court’s commensurate claim construction order, the court has found Cisco’s construction to be the proper one. The court need go no further than this construction to find the majority of SSBG’s “infringing scenarios” inapplicable. As characterized by Stillerman, in all scenarios except for “Call Transfer,” Cisco’s routers redirect a call automatically to the PSTN when the data network is congested at the time of call setup. At no point does Stillerman describe calls being rerouted to PSTN after call setup or while the call is in progress (rather than placed on hold). There is no indication that congestion is detected between routers after data is transmitted between the end terminal telephones. SSBG makes no such arguments in its papers. (D.I. 247) Stiller-man’s declaration in support of SSBG’s motion for summary judgment of infringement is consistent with his expert report in these respects. (D.I. 222, ex. 3 at ¶¶ 18, 22) 4. “Call Transfer” scenario The “call transfer scenario” is the only of SSBG’s infringing scenarios that implicate a change-over following the establishment of a connection. During a call in progress, caller one or two may initiate a call transfer (to caller three) by “a switch-hook flash and dialing a number, or by depressing the appropriate soft key on a Cisco phone[.]” (D.I. 281, JA6523 at ¶ 270) Stillerman describes the “first data” of the call, including the dialed digits, destined for the end terminal as well as the “second data” of the call, which is any data sent over the PSTN once the call is transferred to the PSTN. (Id., JA6523 at ¶¶ 271-72) He describes the control signal that is sent for the purpose of routing the call over the most preferable network. (Id. at ¶ 273) According to Stillerman, “[sjwitch over occurs when the next configured dial peer to be used for the call is tried after not admitting the forwarded call to the packet-switching network attempt.” (Id., JA6524 at ¶274) (emphasis added) Call transfer necessarily involves establishing a connection to a third end terminal. According to Cisco, one of the original callers must put the call on hold in order to initiate the transfer. Assuming that the Cisco voice-enabled router products establish the proposed call over the PSTN (rather than the WAN), the original transferor is thereafter dropped from the call. Thus, “there is no change over from packet-switching to line-switching of the voice data that was transferred during the original connection” between the first and second end terminals. (D.I. 219 at 23) (emphasis added) SSBG’s response is both brief and convoluted; it simply states that “Cisco ignores the fact that Cisco phone systems may allow a phone call for delivery to one end terminal to be answered by another party, such as a secretary.” (D.I. 247 at 17) SSBG provides no rebuttal to Cisco’s characterization of the call transfer process. SSBG appears to assert a doctrine of equivalents argument, but cites no expert testimony or other evidence in support thereof. (D.I. 247 at 18 (“[A] reasonable juror could find that the ability for a call center to transfer an incoming call to the intended party without dropping the call and requiring the call to redial is a call from end terminal to end terminal.”)) On this limited record, Cisco’s position is the better one. Call transfer implicates two separate calls (connections). Viewed in the context of the new call being initiated to caller three, the change-over precedes the voice phase of this connection with the transferee and, therefore, falls outside of the scope of the claims. Viewed in the context of the call between callers one and two, the change-over does occur after the initiation of the voice phase of the call. The purpose of this change-over, however, is not to improve the call quality or improve data flow between callers one and two; the purpose is to establish the best connection for the call being initiated to transferee caller three. As the court has found that a “change-over” must occur after the call setup phase, the issue presented by the call transfer scenario is whether the change-over from packet-switching to line-switching occurs during an ongoing end-terminal to end-terminal connection between callers one and two. Stillerman provides no detail regarding the effect of the user’s request for call transfer, such as, at what point data flow between callers one and two is suspended or terminated. There is simply no evidence of record that the preexisting call between callers one and two does not terminate upon the request for transfer to caller three. Absent any indication that the change-over occurs during an existing voice connection (between callers one and two), as construed by the court, summary judgment of noninfringement is appropriate. 5. “Means responsive to a control signal for changing over” The parties agree that a control device is disclosed as the structure corresponding to the “means responsive to a control signal for changing over” function; such device is control device 71 (described by figure 4 of the patents). There are no other corresponding structures specifically disclosed in the specification. Cisco argues that the claims should be limited, therefore, to the control device 71. SSBG asserts that the patents describe “general control devices for performing the changeover,” many of which were known in the art and appreciated by persons of ordinary skill in the art as being capable of the function of responding to a control signal. (D.I. 247 at 19) SSBG relies on the deposition testimony of Cisco’s expert, Thomas La Porta (“La Porta”), in this regard. (D.I. 247 at 19 n. 66 & 67; D.I. 207 at 33, n. 93-94) Thus, SSBG asserts, the claims need not be limited to control device 71. A corresponding structure for purposes of 35 U.S.C. § 112, ¶ 6 must be disclosed within the four corners of the patent or clearly within the intrinsic record. See Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1208 (Fed.Cir.2002) (“Structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.”) (citation omitted) (emphasis added). SSBG agrees that control device 71 (in figure 4) is a corresponding structure. (D.I. 207 at 35-36) It generally argues, however, that the patents provide a more general description of a control device in the following passages: (1) “A switch according to the present invention has a packeting device for packeting and unpacketing data, an IP switching device for establishing connections for switching through data channels and a control device which directs incoming data either to the IP switching device or to the line switching device depending on the control signals.” ('902 patent, col. 3:51-57) (2) “A packet switch, alias packet switching apparatus, is also called a router, an IP switch or a host computer.” (Id., col. 1:44-45) (3) “In addition where applicable, an ATM interface and an interface with a mobile phone network can also be provided.” (Id., col. 8:37-38) (4) “The implementation of the switches 7a and 7b [of Figure 1] takes place selectively through hardware or software. The line switching is thereby preferably implemented by hardware and the packet-switching by software. Thus with line switching, after switching through a connection the data are forwarded without further examination, whilst with packet switching the destination address of each data packet is evaluated and the next IP switch has to be selected from the routing tables. A switching device for the switches 7a and 7b which undertakes a change over between packet and line switching is preferably likewise implemented as software.” (Id. at col. 7:37-47) (D.I. 207 at 25 & n. 41-44) La Porta’s testimony does not call out any other disclosures in the specification. Rather, La Porta generally testified that persons of skill in the art would know how to use a control device or equivalent device to perform the claimed function. Specifically, “[t]he structure would be a switch that could take an input signal and switch from one line to another, one communication path to another, and I think that is a well-known structure” in the art. (D.I. 282 at JA8930, p. 403) The disclosures called out by SSBG do not expand the guidance provided in the specification with respect to the control devices illustrated in figure 4: The internal control commands, as to whether a packet switching is to take place through the IP switch or a line switching is to take place through the line switching device 73, are produced in a control device 71. The device 71 is substantially a switch which forwards the incoming data either as data packets to the IP switch 72 or as bit flow to the line switching device 73. To this end, the control information of the incoming data are evaluated. The change-over control unit 711 monitors and controls which open connections are present (i.e., which and how many data channels are connected) and which bandwidth the individual data channels require. In detail the control device 71 has a change-over control unit 711, two packeting/unpacketing devices 713 and 714, and an intermediate register 712. The change-over control unit is connected to a topography data bank 75 which contains geographical data for a number of IP addresses. ('902 patent, col. 8:59-col. 9:9) In view of this specific disclosure, the “means responsive to a control signal for changing over” limitation is limited to the control device 71 and its equivalents. See Minks v. Polaris Indus., Inc., 546 F.3d 1364, 1377 (Fed.Cir.2008) (limiting claim to a structure of one Figure and structural equivalents) (citations omitted). In this regard, not all structures known in the art necessarily fall within the scope of permissible equivalents. In order to prove literal infringement, SSBG must show “that the relevant structure in the accused device perform[s] the identical function recited in the claim and [is] identical or equivalent to the corresponding structure in the specification.” Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed.Cir.2003). Equivalence is determined by whether the structures “perform the identical function, in substantially the same way, with substantially the same result.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.Cir.2000). The issue at bar, therefore, is whether SSBG has adduced proof of equivalence regarding control device 71. SSBG asserts that, if the court were to agree with Cisco’s construction, a reasonable juror could find that Cisco’s products meet the control device limitation through the doctrine of equivalents. (D.I. 247 at 20 (“A control device for changing-over generally includes a microprocessor, memory, and input/output circuits to perform the control function[.]”)) In support, SSBG points to one paragraph of Stillerman’s declaration filed in connection with SSBG’s opposition to Cisco’s motion, which does not provide a function/way/result analysis. (D.I. 247 at 20, citing id., ex. 1 at ¶ 10) SSBG cannot demonstrate infringement on this record. 6. Direct infringement “Direct infringement requires a party to perform each and every step or element of a claimed method or product.” BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed.Cir.2007). “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.2000). Cisco asserts that it cannot infringe the '431 patent under Stillerman’s “infringing wireless scenario” because, for a customer to carry out this scenario using Cisco’s products, the customer would have to: (1) purchase a Cisco voice-enabled router with a 3G card; (2) obtain the appropriate service plan with his wireless carrier, ineluding a SIM card for a supported wireless carrier; (3) configure the router to support packet-switched VoIP calls; (4) “configure the dial[ ] peers such that VoIP calls must be first routed so that the packet-switched wireless communication through the 3G card is the primary route, and the PSTN is the back up route;” and (5) configure one of the CACs for these calls. (D.I. 219 at 34) Cisco states that SSBG has not provided any evidence that any customer has actually done this and used its products in an infringing manner. (Id.) Moreover, there is no indication that Cisco recommends or intends that its customers configure its products in this way. (Id.) According to Cisco’s data sheet, its 3G card provides a “secure backup solution” that is an “alternative to wireline backup solutions;” “[i]f a network fails, the Cisco integrated services router routes mission-control data to the Cisco 3G WWAN HWIC for transmission across the wireless infrastructure.” (Id. at 35, citing D.I. 221, ex. 1 at 1) In his expert report, Stillerman states that, in this scenario, “it is possible for a phone, for example a Cisco 7961 configured for SIP operation, to make a call to a destination end terminal via the Cisco Voice Enabled Switching Product at the branch office ... and access the mobile data network for the call. When [this product] is also able to access the PSTN, then any call that is placed over the mobile packet data network will be subject to the CAC functions ... that the Cisco Voice Enabled Switching Products perform prior to admitting the call to that mobile packet data network.” (D.I. 281 at JA6580-31, ¶293) (emphasis added) Stillerman provides no examples of customers who are alleged to have actually used the accused products in this manner, nor does SSBG call out any in its papers. In response to Cisco’s motion, SSBG asserts, without further explanation, that “Cisco sells numerous types of adapters/modules for 3G GSM, CDMA and WiFi wireless capabilities,” which Cisco has ignored in its motion. (D.I. 247 at 22) SSBG also asserts that, under Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed.Cir.2002), Cisco infringes by selling software that may be configured by a user to infringe, since the infringing capabilities are “already present in the underlying software.” (D.I. 247 at 22-23, citing Fantasy Sports, 287 F.3d at 1118) The court disagrees that Fantasy Sports is applicable to the present situation. In that case, the accused fantasy football software product was “able to [be] customize[d]” to include a bonus scoring system that was described in the asserted patent. Emphasizing that infringement may not be based on only a mere capability of infringing modification, the Federal Circuit stated that, in order to infringe the '603 patent, the code underlying an accused fantasy football game must be written in such a way as to enable a user of that software to utilize the function of awarding bonus points for unusual plays such as out-of-position scoring, without having to modify that code. In other words, an infringing software must include the “means for scoring ... bonus points” regardless [of] whether that means is activated or utilized in any way. Id. at 1117-18. In contrast to Fantasy Sports, SSBG concedes that Cisco does not supply the entire invention: Cisco does not make or sell SIM cards. SSBG nevertheless argues that “SIM cards are simply something customers are intended to have and install” in order to access a 3G wireless network. (D.I. 247 at 23) SSBG cites no evidence, from its expert or otherwise, in support of this proposition. Insofar as no reasonable jury could find that Cisco directly infringes on this record, summary judgment of noninfringement is warranted on this alternative basis. 7. Conclusion All but one of SSBG’s relevant “infringing scenarios” are premised on its construction of the term “change over,” which the court has rejected. SSBG has not identified a genuine issue of material fact for trial with respect to “call transfer.” With respect to those asserted claims requiring “means responsive to a control signal for changing over,” the court’s holding is buttressed insofar as there is no dispute that Cisco’s products do not contain the “control device” structure as described in the specification. Finally, no reasonable jury could find that Cisco infringes the '431 patent for the additional reason that there is no indication that Cisco directly infringes that patent. Cisco’s motion for summary judgment of noninfringement is granted; SSBG’s motion for partial summary judgment of infringement is denied. C. Validity of the '453 and '902 Patents: 35 U.S.C. §§ 102 and 103 1. Background Cisco seeks judgment that the '453 and '902 patents are invalid in view of the same references it has advanced in the reexaminations. These primary references are U.S. Patent No. 6,069,890 to White et al. (‘White”), U.S. Patent No. 6,137,792 to Jonas et al. (“Jonas”), and U.S. Patent No. 5,598,411 to Matsukawa (“Matsukawa”). Each were before the PTO on reexamination and found to invalidate certain claims. Cisco reiterates those positions here, as well as advances certain new arguments not considered by those examiners. Specifically, Cisco asserts that the combination of White and Jonas render the asserted claims of the '453 patent obvious, consistent with the PTO’s conclusions. (D.I. 278 at JA3881) Cisco now also asserts that the White-Jonas combination renders the '902 patent obvious. On reexamination, the PTO has found claims 68, 69, 71, 75, 77, 79, 82, 84, 87, 90, 92, 95, 98, and 100 (plus others not at issue) of the '902 patent anticipated by Jonas. (D.I. 284 at JA10149-71, 10228-56) Cisco seeks judgment that claims 34, 74, 76, 83, 85, 91, 101 and 104 of the '902 patent, added to this litigation after the commencement of the '902 patent reexamination, are anticipated by Jonas, as are claims 34, 35, 36 and 38 of the '453 patent. The PTO also rejected the '902 patent claims at issue in the reexamination as anticipated by Matsukawa; Cisco seeks that same judgment here, and adds that Matsukawa also anticipates claims 34, 68, 69, 71, 74-77, 79, 82-85, 87, and 90-91 of the '902 patent, as well as claims 34, 35, 36 and 38 of the '453 patent. (Id. at JA10259-62) Finally, Cisco asserts that, if this court adopts its construction of the “mobile phone packet switching network” limitation, the combination of Jonas plus U.S. Patent No. 6,125,113 to Farris, et al. (“Farris”) renders the '431 patent invalid as obvious. In short, the PTO has found that Jonas identifies the problem inherent with sending time-sensitive data communications over the internet, and discloses a solution of changing over in the middle of an end-to-end connection. This ability to change-over during the existing transfer is the only component of the patented inventions not disclosed by White. Farris is similar to White, but also discloses routing calls from cellular telephones. Finally, the PTO has determined that Matsukawa discloses changing over an existing end terminal to end terminal call from a packet-switching to a line-switching connection during (and without interruption of) the call-set up procedure. 2. Discussion The court notes at the outset that the BPAI and Federal Circuit have not affirmed the rejection of any of the claims on reexamination and, consequently, the PTO’s findings at this stage are not binding. Moreover, the examiners’ conclusions on reexamination are not relevant to the merits of the pending summary judgment motion. This court is not, as the examiners were, a finder of fact with respect to invalidity; it may only adjudge whether SSBG has advanced sufficient evidence from which a reasonable jury could find the patents valid. At this juncture, the court notes that SSBG cites a total of two paragraphs of Stillerman’s rebuttal expert report in support for its validity position. (D.I. 251 at 25-36) In full, those sections state only that: The Supplemental Response [of June 2, 2004 in the '453 patent prosecution history] correctly argued that the teachings of the Jonas and Arango patents were limited to transmission of data packets (as compared with the '453 which taught other forms of data, such as analog data), computer-to-computer communications (as opposed to human-to-human or non-machine communications) and POPs (Points of Presence) or signaling or routing tables or ports (as opposed to other types of routers, such as CPE routers and WAN routers). It is implicit that the examiner agreed with these arguments, as the patents were issued over that art. (D.I. 281 at JA7640, ¶ 93) Additionally: La Porta has not identified the structure in Jonas that corresponds to the switch 7 of the patents-in-suit. There is no disclosure in Jonas of a structure that is identical to switch 7. For example, Router 20 receives data packets from a host 1. The invention is directed to transmitting data packets, not real-time voice packets. Jonas is oriented to using protocols such as TCP over IP as opposed to voice protocols that are typically carried over UDP. Therefore, even the packet protocols are ill suited to voice transmission. Furthermore, there is no disclosure in Jonas regarding transmitting of voice data for which the patents-in-suit are directed. (Id. at JA7686-87, ¶ 306) Even if this cursory discussion were sufficient to withstand summary judgment on anticipation by Jonas, these passages do not relate to Cisco’s other anticipation or obviousness arguments. Stillerman’s validity report does address each asserted reference substantively. The court declines, however, to extend its limited judicial resources crafting validity positions on behalf of SSBG, which is represented by (at least six) counsel. The court is generally reluctant to stay proceedings in view of concurrent reexamination proceedings, but does so in this case for several reasons. Granting summary judgment of invalidity on this record would be, essentially, founded on SSBG’s failure of proof, not necessarily the merits of Cisco’s claims. Reexamination of the '453 and '902 patents has moved to final action. As both reexaminations are nearing the conclusion of the first stage of appellate review (with the BPAI), it is very possible that the Federal Circuit will hear the case through an appeal of the BPAI decisions prior to receiving the court’s issuance of a post-trial (JMOL) opinion in this case and an appeal therefrom. Under these unusual circumstances, the court will stay the issue of validity of the '453 and '902 patents pending appeal of the rejections on the reexaminations and will issue an order accordingly. The court need not stay consideration of the obviousness of the '431 patent; insofar as the court finds the '431 invalid under 25 U.S.C. § 112, as discussed infra, that issue is moot. 3. Daubert motions Two of the pending motions in limine relate to validity, specifically, SSBG’s motion to limit La Porta’s testimony and Cisco’s motion to exclude the opinion of SSBG’s expert Christopher Spadea (“Spadea”) on commercial success. (D.I. 205, 202) There is no cross-motion (by SSBG) for a judgment of validity, therefore, the court’s ruling on the La Porta motion does not affect its disposition of the issues at bar. In view of the court’s decision to stay trial on the '453 and '902 patents on validity, the remaining in limine motions are denied as moot. D. Inequitable Conduct Cisco claims that the '431 patent is unenforceable due to inequitable conduct. Specifically, Cisco asserts that Vincent De-Luca (“DeLuca”), who was acting as both the prosecuting attorney for the '431 patent application and as lead counsel for SSBG in the '453 and '902 reexaminations, committed inequitable conduct by knowingly and intentionally failing to disclose information about those reexaminations to the examiner of the copending '431 patent application. (D.I. 245 at 1) Cisco also claims that the duty of candor was violated by Prof. Schindler, first named inventor on the '431 patent. (Id. at 14) SSBG seeks summary judgment of no inequitable conduct. (D.I. 217) There is no cross motion by Cisco. 1. Standards Applicants for patents and their legal representatives have a duty of candor, good faith, and honesty in their dealings with the PTO. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed.Cir. 1995); 37 C.F.R. § 1.56(a). This duty is predicated on the fact that “a patent is an exception to the general rule against mo- nopolies and to the right of access to a free and open market.” Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 816, 65 S.Ct. 993, 89 L.Ed. 1381 (1945). The duty of candor, good faith, and honesty includes the duty to submit truthful information and the duty to disclose to the PTO information known to patent applicants or their attorneys which is material to the examination of a patent application. Elk Corp. of Dallas v. GAF Bldg. Materials Corp., 168 F.3d 28, 30 (Fed.Cir.1999). A breach of this duty constitutes inequitable conduct. Molins, 48 F.3d at 1178. If it is established that a patent applicant engaged in inequitable conduct with respect to one claim, then the entire patent application is rendered unenforceable. Kingsdowm Med. Consultants v. Hollister Inc., 863 F.2d 867, 877 (Fed.Cir. 1988). Additionally, “[a] breach of the duty of candor early in the prosecution may render unenforceable all claims which eventually issue from the same or a related application.” Fox Indus., Inc. v. Structural Pres. Sys., Inc., 922 F.2d 801, 803-04 (Fed.Cir.1990). A finding of inequitable conduct is “an equitable determination” and, therefore, “is committed to the discretion of the trial court.” Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1261 (Fed. Cir.2001). In order to establish unenforceability based on inequitable conduct, a defendant must establish by clear and convincing evidence that: (1) the omitted or false information was material to patentability of the invention; (2) the applicant had knowledge of the existence and materiality of the information; and (3) the applicant intended to deceive the PTO. Mo lins, 48 F.3d at 1178. A determination of inequitable conduct follows a two-step analysis. The withholding of information must first meet threshold findings of materiality and intent. Id. Rule 56 provides: Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability. 37 C.F.R. § 1.56(b) (2007). After determining that the applicant withheld material information, the court must decide whet