Full opinion text
ORDER PHILIP M. PRO, District Judge. Presently before the Court is Defendants’ Motion for Partial Summary Judgment of Non-Infringement (Doc. # 239), filed on December 22, 2010. Plaintiff filed a Response (Doc. #257), on January 13, 2011. Defendants filed a Reply (Doc. # 274), on January 31, 2011. Also before the Court is Plaintiffs Motion for Partial Summary Judgment of Infringement (Doc. #244), filed on December 22, 2010. Defendants filed a Response (Doc. # 264) on January 13, 2011. Plaintiff filed a Reply (Doc. # 270) on January 31, 2011. Also before the Court is Plaintiffs Motion for Partial Summary Judgment of No Invalidity (Doc. # 240), filed on December 22, 2010. Defendants filed a Response (Doc. # 261), on January 13, 2011. Plaintiff filed a Reply (Doc. # 271), on January 31, 2011. Also before the Court is Defendants’ Motion for Summary Judgment of Invalidity (Doc. # 250), filed on December 22, 2010. Plaintiff filed a Response (Doc. #256), on January 13, 2011.. Defendants filed a Reply (Doc. # 273), on January 31, 2011. Also before the Court is Defendants’ Motion for Summary Judgment on Equitable Estoppel, Laches, and Failure to Give Notice under 35 U.S.C. § 287(a) (Doc. # 249), filed on December 22, 2010. Plaintiff filed a Response (Doc. # 258), on January 13, 2011. Defendants filed a Reply (Doc. # 275), on January 31, 2011. Also before the Court is Defendants’ Motion for Summary Judgment of No Liability for Defendants’ Sales Activity Outside of North America (Doc. # 251), filed on December 22, 2010. Plaintiff filed a Response (Doc. #251), on January 13, 2011. Defendants filed a Reply (Doc. # 276), on January 31, 2011. Also before the Court is Plaintiffs Motion to Strike Pulse’s New Summary Judgment Argument in Reply and to Amend the Parties’ September 2010 Stipulation (Doc. #279), filed on February 2, 2011. Defendants filed a Response (Doc. # 281), on February 22, 2011. Plaintiff filed a Reply (Doc. # 283), on March 4, 2011. I. BACKGROUND This is a patent infringement action brought by Plaintiff Halo Electronics, Inc. (“Halo”) against Defendants Pulse Engineering, Inc. and Technitrol, Inc. (collectively “Pulse”). Halo owns a family of patents that relate to a design for a surface-mount package and are denoted by U.S. Patent Nos. 5,656,985 (“'985 Patent”); 6,297,720 (“'720 Patent”); and 6,344,785 (“'785 Patent”) (collectively the “Halo Patents”). (Pl.’s Opp’n Mot. for Summ. J. Non-Infringement [“Opp’n Non-Infringement”] (Doc. #257).) The three patents stem from the '985 Patent application filed on August 10,1995. (Id., Ex. 57.) The Halo Patents name six individuals as inventors, three employees of Halo and three employees of Halo’s Hong Kong based manufacturer, Perfect Brave Limited (“PBL”). (Decl. of James Heaton (Doc. # 243) [“12/22/2010 Heaton Deck”] at ¶ 2.) Once the open construction design of the surface-mount package had been conceived, two of the inventors, Halo employees Jeff and James Heaton, were eager to see if the new design could withstand high temperatures without cracking. (Id. at ¶ 3.) Halo thus obtained what it contends were prototypes samples for high temperature testing from PBL. (Id.) An August 5, 1994 invoice from PBL to Halo shows that PBL sent 50 “samples” of each of the new prototypes to Halo, with Halo receiving the samples no earlier than August 8,1994. (Deck of Craig Countryman [“Countryman Deck”] (Doc. # 248), Ex. 10). The invoice shows charges for the parts denoted as samples for $300. (Id.) Halo did not have an industrial, high temperature oven at its U-S. facilities like the type used by its customers, so Jeff and James Heaton performed tests of the prototypes by exposing them to heat in their home ovens at the highest temperature possible. (12/22/2010 Heaton Deck at ¶ 4.) They also placed control parts under the same conditions to observe if the new design was indeed better. (Id.) In July 2002, counsel for Halo sent then Pulse President John Kowalski a letter stating in part: We are writing on behalf of Halo ... to notify you of certain surface mount packaging patents the company has recently acquired, copies of which are enclosed for your reference. Halo is interested in licensing these patents, and would like to solicit your company’s interest in entering into negotiations for the license of these patented technologies. (Defs.’ Mot. for Summ. J. Equitable Estoppel, Laches, & Failure to Mark [“MSJ Estoppel”] (Doc. # 249), Ex. 7.) On August 6, 2002, counsel for Halo sent another letter stating: There is reason to believe that surface mount products manufactured by your Company which are not transfer molded construction may possess features similar to those embodied in the patented devices described in Halo’s patents previously provided to you. Halo has not yet reached any conclusive determinations as to whether your company’s products are covered by its patents; rather Halo is devoting its energy to working out suitable arrangements with companies that would benefit from licensing Halo’s patented technologies. (Id., Ex. 8.) Halo brought an infringement complaint on March 15, 2007, alleging that Pulse sells surface mount packages which infringe on the Halo Patents. (Compl. (Doc. # 1).) Based on product drawings and part to drawing information produced by Pulse, Pulse and Halo have agreed to arrange products in groups to be represented by the following eleven products: H0022; H0009; H1260; 23Z 110SMNL; H6502NL; H1305; H1174; H0026; PE-5762QNL; H0019; and PE-67540NL. (Stip. Regarding Representative Products (Doc. # 217), Ex. A.) On June 14, 2010, this Court entered an Order construing the disputed claim terms of the Halo Patents and ordered Halo to limit its selection to fifteen asserted claims. (Order Claim Construction, 721 F.Supp.2d 989 (D.Nev.2010) [“Claim Construction”] (Doc. # 194).) On June 28, 2010, pursuant to this Court’s Order, Halo limited its assertions against Pulse to the following claims: Claims 1, 2, 3, 7, 8, and 16 of the '985 Patent; Claims 1 and 6 of the '720 Patent; and Claims 1, 2, 18, 26, 40, and 48 of the '785 Patent (the “Asserted Halo Claims”). (Pl.’s Selection of Proposed Asserted Claims (Doc. # 196).) The parties now bring several motions and cross-motions for summary judgment regarding infringement; invalidity; equitable estoppel, laches, and failure to mark; and liability for sales outside of North America. The Court will analyze each of these motions below. II. SUMMARY JUDGMENT STANDARD Summary judgment is appropriate if the pleadings, depositions, answers to interrogatories and admissions, and affidavits demonstrate “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). A fact is “material” if it “might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). An issue is genuine if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. Where a party fails to offer evidence sufficient to establish an element essential to its ease, no genuine issue of material fact can exist, because “a complete failure of proof concerning an essential element of the non-moving party’s case necessarily renders all other facts immaterial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The party “seeking summary judgment bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of ‘the pleadings ... ’ which it believes demonstrate the absence of a genuine issue of material fact.” Id. at 323, 106 S.Ct. 2548 (quotation omitted). The burden then shifts to the non-moving party to go beyond the pleadings and set forth specific facts demonstrating there is a genuine issue of material fact for trial. Fairbank v. Wunderman Cato Johnson, 212 F.3d 528, 531 (9th Cir.2000). The Court views all evidence in the light most favorable to the non-moving party. County of Tuolumne v. Sonora Cmty. Hosp., 236 F.3d 1148, 1154 (9th Cir.2001). III. INFRINGEMENT/NON-INFRINGEMENT (Doc. #244 and #239) Determination of infringement is a two step process. First, the court determines the meaning and scope of the asserted patent claims. Claim language is construed with its ordinary and customary meaning, “the meaning that the [language] would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.Cir.2005). The court then determines whether all of the claim limitations are present, either literally, or by equivalent, in the accused device. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1318-19 (Fed.Cir.2011). “[A]n accused product or process is not infringing unless it contains each limitation of the claim, either literally or by an equivalent.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed.Cir.2005). “The doctrine of equivalents prohibits one from avoiding infringement liability by making only ‘insubstantial changes and substitutions ... which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law.’ ” Siemens Med. Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1279 (Fed.Cir.2011) (quoting Graver Tank & Mfg. Co. v. Linde Air Prods., 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097 (1950)). “Under the doctrine of equivalents, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Freedman, 420 F.3d at 1357. The doctrine of equivalents must be applied to each element of a claim, not the patented invention as a whole, therefore each element of a patent must have an equivalent for infringement to be found. Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 30, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The main inquiry under a theory of equivalents is the “function-way-result test,” which asks “whether an element of an accused product performs substantially the same function in substantially the same way to obtain the same result as an element of the patented invention.” Siemens Med. Solutions USA, Inc., 637 F.3d at 1279. The interchangeability of substitutes for an element of a patent has bearing on whether the accused device is substantially the same as the patented invention. Warner-Jenkinson Co., Inc., 520 U.S. at 36, 117 S.Ct. 1040. However, the interchangeability of components must be known to one skilled in the art at the time of the patent and “[[Independent experimentation by the alleged infringer would not always reflect upon ... whether a person skilled in the art would have known of the interchangeability.” Id. Further, the patentee may not assert a theory of equivalence that would render a particular claim element without meaning. Id. at 39 n. 8, 117 S.Ct. 1040. Additionally, under the theory of prosecution history estoppel, “a patentee may not seek to recapture as an equivalent subject matter surrendered during prosecution.” Trading Tech. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1355 (Fed.Cir.2010). Courts have refused to apply the doctrine of equivalents where “the accused device is the antithesis of the claimed structure.” Planet Bingo, LLC v. Game-Tech Int’l, Inc., 472 F.3d 1338, 1345 (Fed.Cir.2006) (finding no infringement where the doctrine of equivalents would need to change the claim language from “before” to “after”). Likewise, infringement was not found under the doctrine of equivalents where an accused product contained a minority of adhesive strips where the claim called for a majority, an unmounted computer compared to the claim language of a mounted computer, or elongated slots within, rather than on top of, the claimed container. Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1106 (Fed.Cir.2000); Asyst Tech., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed.Cir.2005); Sage Prod., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425-26 (Fed.Cir.1997). A court “may determine infringement on summary judgment when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device.” Innovention Toys, 637 F.3d at 1319. However, “[b]eeause infringement under the doctrine of equivalents often presents difficult factual determinations,” summary judgment often is not appropriate Leggett & Platt, Inc. v. Hickory Springs Mfg. Co., 285 F.3d 1353, 1360 (Fed.Cir.2002). Conflicting expert testimony can create a genuine issue of material fact sufficient to avoid summary judgment. LG Elec., Inc. v. Bizcom Elec., Inc., 453 F.3d 1364, 1376 (Fed.Cir.2006); see also Overhead Door Corp. v. Chamberlain Group, Inc., 194 F.3d 1261, 1269 (Fed.Cir.1999) (expert’s report was sufficient to create genuine issue of material fact that features of the accused product were insubstantially different from claim terms). However, on a motion for summary judgment, the expert’s testimony must set forth “the factual foundation for his opinion-such as a statement regarding the structure found in the accused product-in sufficient detail for the court to determine whether that factual foundation would support a finding of infringement under the claim construction adopted by the court, with all reasonable inferences drawn in favor of the nonmovant.” Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1047-48 (Fed.Cir.2000). Similarly, “a party cannot create an issue of fact by supplying an affidavit contradicting his pri- or deposition testimony, without explaining the contradiction or attempting to resolve the disparity.” Sinskey v. Pharmacia Ophthalmics, Inc., 982 F.2d 494, 498 (Fed.Cir.1992). Here, the Court previously has interpreted the claim language of the '985, '720, and '785 patents. (Claim Construction.) Pulse now moves for summary judgment of non-infringement as to (1) each product represented by the H6502NL, PE-5762QNL, and PE-67540NL parts; (2) each asserted Claim of the '985 Patent, Claim 6 of the '720 Patent, and Claims 2 and 26 of the '785 Patent with respect to the products represented by the H0009 and H0019 parts; and (3) Claim 7 of the '985 Patent, and Claims 18 and 48 of the '785 Patent with respect to all the accused products. Plaintiff Halo moves for partial summary judgment of infringement with respect to (1) Claims 1, 2, 6, 7, 8, and 16 of the '985 Patent; (2) Claims 1 and 6 of the '720 Patent; and (3) Claims 1, 2,18, 26, 40, and 48 of the '785 Patent. A. Products Represented by H6502NL, PE-5762QNL, and PE-67540NL All of the Asserted Halo Claims require either “a plurality of toroid transformers” or “at least one toroid transformer.” Pulse argues that the products represented by the H6502NL, PE-5762QNL, and PE-67540NL parts do not infringe any of the Asserted Halo Claims, either literally or under the doctrine of equivalents, because the above products do not contain any toroid transformers. Additionally, Pulse argues that Halo appreciated the differences between toroid transformers and toroid chokes at the time of the patent applications because Halo expressly claimed toroid chokes in the '151 Patent, filed contemporaneously with the Patents at issue here, yet omitted any mention of toroid chokes in the present Patent. Pulse argues, therefore, that the Court should hold that a toroid choke is not the equivalent of a toroid transformer as a matter of law. Halo responds that each of the accused products contains one or more toroid chokes which, under the doctrine of equivalents, are equivalent to toroid transformers and therefore summary judgment in Pulse’s favor is inappropriate. Halo inventor Jeffrey Heaton testified that transformers and common mode chokes cannot be used interchangeably. (Mot. for Summ. J. of Non-Infringement (Doc. # 239), Ex. 7 [“7/21/2010 Dep. of Jeff Heaton.”] at 30-31.) Another Halo inventor, Peter Lu (“Lu”), testified that while common mode chokes can pass both AC and DC signals, transformers are unable to pass DC signals. (Mot. for Summ. J. of Non-Infringement, Ex. 20 at 168-171.) However, Lu also testified that while toroid chokes and toroid transformers are not interchangeable if the external and internal connections remain the same, they can be interchangeable if the external and internal connections are altered. (Id.) Dr. Wilmer Bottoms (“Bottoms”) testified that toroid chokes and toroid transformers are physically identical in the context of the Asserted Halo Claims. (1/13/2011 Decl. of Dr. Wilmer Bottoms “[1/13/2011 Bottoms Deck”] (Doc. # 259) at ¶ 108.) Additionally, Bottoms states that toroid chokes and toroid transformers are both constructed and situated inside the package in the same manner. (Id. at ¶ 109.) Bottoms states that toroid chokes do not actually become toroid chokes until they are placed in a circuit in a manner that produces the electrical characteristics of a choke, and that a toroid transformer may be used as a toroid choke simply by arranging the circuitry external to the accused product in a different manner. (Id. at ¶ 110.) Pictures of the accused products show no discernable difference between the physical characteristics of toroid chokes and toroid transformers. (Opp’n Non-Infringement at 4.) With respect to the PE-5762QNL product groupings, Bottoms declares that the drawing and electrical schematics show that the product contains a single toroid transformer. (1/13/2011 Bottoms Deck at ¶ 112.) Bottoms notes that the parts drawing for the PE-5762QNL contains the notation “XFRM,” which is an abbreviation for transformer. (Id.) Here, viewing all evidence in the light most favorable to Halo, the non-moving party, conflicting expert testimony creates a genuine issue of material fact that a toroid choke reads on the limitation of one or more toroid transformers. While Pulse offered testimony showing that toroid chokes and toroid transformers are not interchangeable, Halo has offered conflicting expert testimony supported by factual assertions that creates a genuine issue of material fact. Halo offered Bottoms’ deposition testimony that, for the purposes of the Asserted Halo Claims, toroid chokes and toroid transformers are physically identical; toroid chokes and toroid transformers are substantially similar in terms of how they are constructed and connected within the package; and that toroid chokes are interchangeable with toroid transformers if the external circuitry is arranged in a different manner. As factual support for his testimony, Bottoms offers his knowledge about the electrical characteristics of toroid chokes and toroid transformers; knowledge about the construction of toroid chokes and toroid transformers; and pictures of the accused products and Halo’s products showing that toroid chokes and toroid transformers both consist of wire wrapped toroids and are physically identical. Viewing all evidence in the light most favorable to Halo, a genuine issue of material fact exists as to whether the toroid chokes present in the products represented by H6502NL and PE-67540NL are the equivalent of toroid transformers. Additionally, there is a genuine issue of material fact that PE-5762QNL contains a toroid transformer. Accordingly, summary judgment of non-infringement of the products represented by the H6502NL, PE-5762QNL, and PE-67540NL parts is inappropriate and the Court will deny Defendants’ motion in this respect. B. Products Represented by the H0009 and H0019 All of the Asserted Halo Claims require the toroids to be “by/in a soft silicone material.” The Court construed the claim language “by/in a soft silicone material” to mean “retained inside the package by a soft silicone material.” (Claim Construction at 1002.) “Soft silicone material” means “a soft silicone material that is resilient so as to allow expansion of the toroid when heated.” (Id.) This Court has acknowledged that to one of ordinary skill in the art, “soft silicone does not mean hard plastic or epoxy.” (Id.) Therefore use of epoxy to retain toroids in their packaging would not satisfy this claim element. Pulse argues that the products represented by the H0009 and H0019 parts do not infringe any of the Asserted Halo Claims, either literally or under the doctrine of equivalents, because the above products do not use soft silicone to retain their transformers. Pulse states that the H0009 and H0019 parts use hard plastic or epoxy to retain their toroids. Halo states that the toroids present in the products represented by the H0009 and H0019 parts are retained inside the package by a resilient silicone material and hence infringe on the Asserted Halo Claims. Long-time Pulse engineer Aurelio Gutierrez (“Gutierrez”) declares that early on in the assembly process, the toroids of the accused products are dipped into silicone material. (Mot. for Summ. J. of Non-Infringement, Ex. 13 [“Gutierrez Decl.”] at ¶ 9.) Gutierrez states that this initial coating is a separate and distinct procedure from the procedure which retains the toroids in the packaging. (Id.) Gutierrez also declares that the toroids of the H0009 and H0019 products are later retained in their package by the epoxy Dexter-Hysol E01057. (Id. at ¶¶ 10-11.) Product drawings and bill-of-materials information for the H0009 and H0019 products show that Dexter-Hysol E01057 is used in the products. (Mot. for Summ. J. Non-infringement, Exs. 17,18.) However, Bottoms declares that the toroids of the H0009 and H0019 products are retained in their packaging by soft silicone that is resilient so as to allow expansion of the toroid when heated. (1/13/2011 Bottoms Deck at ¶ 113.) To support his position, Bottoms offers drawings and product schematics of the H0009 and H0019 products. (Id.) Bottoms states that the toroids of the H009 and H0019 products are coated with soft silicone which surrounds the toroid on all sides and then placed in the package. (Id.) Bottoms states that after the toroids are placed in package, a small amount of epoxy is placed in the package. (Id. at ¶ 114.) According to Bottoms, the epoxy never comes into direct contact with the toroids and is placed next to the toroids, contacting the silicone coated toroids only if they move laterally within the package. (Id.) It is Bottoms’ opinion that “silicone retains the toroids in the H0009 and H0019 products.” (Id. at ¶ 113.) Here, Halo has presented evidence, in the form of Bottoms’ declaration, that the toroids in the H0009 and H0019 products are retained by a soft silicone material that is resilient so as to allow expansion of the toroid when heated. Bottoms offers pictures of the H0009 and H0019 showing the toroids coated in silicone material and the placement points for epoxy to support his declaration. Viewing this evidence in the light most favorable to Halo, as the Court must, there is a genuine issue of material fact as to whether the toroids of the H0009 and H0019 products are retained in their packages by a soft silicone material. Accordingly, summary judgment of non-infringement of the products represented by the H0009 and H0019 parts is inappropriate and the Court will deny Defendants’ motion in this respect. C. Claim 7 of the '985 Patent and Claims 18 and 48 of the '785 Patent Claim 7 of the '985 Patent and Claims 18 and 48 of the '785 Patent (collectively, the “Asserted Standoff Claims”) require a portion of the package designed to rest in contact with the printed circuit board after mounting to prevent the solder posts from contacting the printed circuit board. Pulse argues that none of the accused products are designed to have a portion of their respective packages rest in contact with the printed circuit board. Halo responds that the accused Pulse products contain a standoff that is designed to rest in contact with the printed circuit board after mounting to prevent the solder posts from contacting the printed circuit board for maintaining a distance between the bottom of the pins and the printed circuit board. Gutierrez declares that “[n]one of the accused Pulse products are designed to have a portion of their respective packages rest in contact with the printed circuit board after mounting.” (Gutierrez Decl. at ¶ 13.) Additionally, Gutierrez states that terminal pins, rather than a standoff, are used to “prevent the end walls, or any other portion of the package, from resting in contact with the circuit board after mounting.” (Id.) Bottoms declares that the Pulse H0022 product includes a standoff designed to prevent the solder posts from contacting the printed circuit board for maintaining a distance between the bottom of the pins and the printed circuit board. (1/13/2011 Bottoms Decl. at ¶ 117.) Bottoms further declares that the Pulse H0022 standoffs are intended to rest in contact with the printed circuit board and prevent damage to the printed circuit board or the device. (Id.) In Bottoms’ expert opinion, all of the representative products include a standoff. (Id.) Bottoms bases his opinion on examination of the Asserted Standoff Claims and the accused Pulse products, as well as schematic drawings of Pulse product H0022 which he contends shows a standoff. Additionally, Dr. Lawrence Larson (“Larson”), an expert retained by Pulse, testified that the standoffs in the '985 patent were designed to rest in contact with the printed circuit board. (Countryman Decl. (Doc. # 269), Ex. 24 at 224-25.) Viewing all evidence in the light most favorable to Halo, as the Court must, conflicting expert testimony creates a genuine issue of material fact that the accused products contain a standoff designed to rest in contact with the printed circuit board after mounting to prevent the solder posts from contacting the printed circuit board. While Pulse offered the declaration of its employee that its products do not contain a standoff in accordance with the Asserted Standoff Claims, Halo offered Bottoms’ declaration that the accused Pulse products contain a standoff. Bottoms’ declaration is supported by analysis of the Asserted Standoff Claims and comparison to the accused products, as well as schematic drawings of Pulse product H0022 showing a structure consistent with a standoff. Accordingly, summary judgment of non-infringement of Claim 7 of the '985 Patent or Claims 18 and 48 of the '785 Patent is inappropriate and the Court will deny Defendants’ motion in this respect. D. Infringement of Claims 6 of the '985 Patent Claim 6 of the '985 Patent requires the following: An electronic surface mount package for mounting on a printed circuit board in an electronic device, said electronic surface mount package comprising: a one piece construction package having a sidewall and an open bottom, a plurality of toroid transformers carried within said package by a soft silicone material, said transformers each having wires wrapped thereon, a plurality of terminal pins molded within and extending from the bottom of said package, each of said pins extending through a bottom of said side wall and having a notched post upon which said wires from said transformers are wrapped and soldered thereon, respectively. This Court construed the phrase “an electronic surface mount package for mounting on a printed circuit board in an electronic device” to mean “an electronic device configured to attach to the surface of a DC voltage only printed circuit board.” (Claim Construction at 1001.) This Court construed “by a soft silicone material” to mean “retained inside the package by a soft silicone material” and “a soft silicone material” to mean “a silicone material that is resilient so as to allow expansion of the toroid when heated.” (Id.) Halo argues that the products represented by Pulse products H0022, H1260, H1305, H1174, and H0026 read on all the limitations of Claim 6 of the '985 Patent, therefore, summary judgment is appropriate. Pulse responds that there are genuine issues of material fact that the accused H0022, H1260, H1305, H1174, and H0026 products contain all of the claim limitations, hence summary judgment is inappropriate. Additionally, Pulse previously moved for summary judgment of non-infringement with respect to these parts arguing, among other things, that the toroids of the accused Pulse products are not retained in their package by soft silicone. While the evidence presented by Pulse was not sufficient to grant summary judgment, it may be used to create a genuine issue of material fact in opposition to Halo’s motion. Bottoms declares that the accused Pulse products meet the claim limitations of Claim 6 of the '985 Patent. (12/22/2010 Deck of Wilmer Bottoms [“12/22/2010 Bottoms Decl.”] (Doc. # 247) at ¶¶ 14-20.) Bottoms bases his opinion on analysis of the accused Pulse products and the Halo Patents as well as product drawings of the accused Pulse products which appear to show a one piece construction having an open bottom and side walk (Id.) Larson declares that each accused Pulse product is designed and configured to attach to a board that passes both AC and DC signals and therefore does not meet the “DC voltage only printed circuit board” claim restriction. (Decl. of Lawrence Larson [“Larson Decl.”] (Doc. # 266) at ¶ 3.) In connection with Pulse’s Motion for Summary Judgment of Non-infringement, Gutierrez declared that he was familiar with the manufacturing process of the accused products, and that early on in the manufacturing process, the toroids were dipped in silicone material and then later were retained in their packages by a separate adhesive. Viewing all evidence in the light most favorable to Pulse, as the Court must when deciding Halo’s motion, there are genuine issues of material fact as to whether the H0022, H1260, H1305, H1174, and H0026 products meet the limitations of Claim 6 of the '985 Patent. Pulse’s prior motion provided evidence that, while not sufficient to grant summary judgment to Pulse, creates a genuine issue of material fact as to whether the toroids in the accused Pulse products are retained in their packages by soft silicone. Accordingly, the Court will deny summary judgment on this issue. E. Infringement of Claim 7 of the '985 Patent Claim 7 of the '985 Patent requires the claim limitations of Claim 6 in addition to “a standoff for maintaining a distance between the bottom of said pins and said printed circuit board.” The Court construed “standoff’ to mean “a portion of the package designed to rest in contact with the printed circuit board after mounting in order to prevent the solder posts from contacting the printed circuit board.” (Claim Construction at 1003.) Halo argues that the products represented by Pulse products H0022, H1260, H1305, H1174, and H0026 read on all limitations of Claim 7 of the '985 Patent. As it did in its motion for summary judgment, Pulse argues that the standoff limitation of Claim 7 of the '985 patent is not present in the above accused products. Bottoms declares that the accused Pulse products contain a standoff as required by Claim 7 of the '985 Patent. (12/22/2010 Bottoms Decl. at ¶ 28.) Bottoms bases his opinion on analysis of the accused Pulse Products and the claim language of Claim 7.(Id.) Drawings of the accused products appear to show ends walls, which also may serve as a standoff. (Id. at ¶ 26.) Gutierrez declares that none of the above accused pulse products has such a standoff. (Gutierrez Decl. at ¶¶ 13-24.) Gutierrez also states that the representative products include terminal pins that extend from the package side walls and below the package end walls for mounting onto the surface of a printed circuit board, and that these pins, as opposed to a standoff, prevent, any portion of the package from resting in contact with the circuit board. (Id.) Viewing all evidence in the light most favorable to Pulse, as the Court must when deciding Halo’s motion, there are genuine issues of material fact as to whether the H0022, H1260, H1305, H1174, and H0026 products meet the limitations of Claim 7 of the '985 Patent. Pulse has offered evidence sufficient to create a genuine issue of material fact as to whether the accused products contain a standoff. Pulse offers the Gutierrez declaration supported by his analysis of the accused products and the Halo Patents for this proposition. Supported conflicting expert testimony is sufficient to create a genuine issue of material fact. Additionally, the side view drawings of the accused products do not conclusively show that the end wall is designed to rest in contact with the printed circuit board. Accordingly, Halo has not met its burden of showing no genuine issue of material fact remains as to the existence of a side wall designed to rest in contact with a printed circuit board. Therefore, summary judgment that Pulse infringes on Claim 7 of the '985 patent is inappropriate. The Court will deny Plaintiffs motion in this respect. F. Infringement of Claims 1, 2, and 8 of the '985 Patent Claim 1 of the '985 Patent is materially similar to Claim 6 of the '985 Patent with the exception that the preamble of Claim 1 does not recite the “for mounting on a printed circuit board in an electronic device” language. The limitations of Claim 2 are materially similar to Claims 1 and 6 with the exception that Claim 2 does not require “one piece” construction, and, like Claim 1, does not contain the “for mounting on a printed circuit board in an electronic device” language in the preamble. Claim 8 of the '985 Patent contains the same limitations as Claims 2 and 6 with the exception that Claim 8 requires only one toroid transformer rather than a plurality of toroid transformers. Halo relies on its earlier analysis of Claim 6 to allege that the products represented by Pulse products H0022, H1260, H1305, H1174, and H0026 infringe on Claims 1 and 2 of the '985 Patent. Halo also contends that Pulse products represented by 23Z110SMNL contain one toroid transformer and thus infringe on Claim 8 of the '985 Patent. Pulse relies on its earlier Motion for Summary Judgment of Non-infringement to argue that the accused products do not read on all the limitations of Claims 1, 2, and 8 of the '985 Patent. As set forth earlier in this Order with respect to Claim 6 of the '985 Patent, there is a genuine issue of material fact as to whether the toroids of the accused products are retained in their packages by soft silicone material. Claims, 1, 2, and 8 of the '985 Patent require toroids to be retained in their packages by soft silicone. Accordingly, summary judgment in favor of Halo is not appropriate with respect to Claims 1, 2, and 8 of the '985 patent. G. Infringement of Claim 16 of the '985 Patent Claim 16 of the '985 Patent Halo requires the following limitations: An. electronic surface mount package comprising: a construction package having a first side wall and an open bottom, at least one toroid transformer carried within said package by a soft silicone material, said toroid transformer having a wire wrapped thereon, at least one terminal pin molded within and extending from the bottom of said package, said pin extending through a bottom of said first side wall and having a notched post upon which said wire from said transformer is wrapped and soldered thereon, wherein said post is substantially parallel to said first side wall, and a portion of said terminal pin extends from and is substantially perpendicular to said first side wall, said terminal pin further including a lead for mounting onto the surface of the printed circuit board, an end wall substantially perpendicular to said first side wall, wherein at least a portion of said end wall extends below said post, and a second side wall substantially parallel to said first side wall, and wherein said wire from said transformer is contained between first and second planes defined respectively, by an outside surface of said first side wall, and an outside package of said second side wall. Halo argues that all of the accused products infringe on the limitations that are unique to Claim 16 of the '985 Patent. In its Response, Pulse does not specifically dispute the limitations that are unique to Claim 16. However, in its Motion for Summary Judgment, discussed above, Pulse argues that the toroids in its products are not retained by soft silicone, which would be required to infringe on Claim 16 of the '985 Patent. As set forth earlier in this Order with respect to Claim 6 of the '985 Patent, there is a genuine issue of material fact as to whether the toroids of the accused products are retained in their packages by soft silicone material. Claims 16 of the '985 Patent requires toroids to be retained in their packages by soft silicone. Accordingly, summary judgment in favor of Halo is not appropriate with respect to Claim 16 of the '985 patent. H. Claim 1 of the '720 Patent Claim 1 of the '720 Patent requires the following limitations: An electronic surface mount package for mounting onto the surface of a printed circuit board in an electronic device, said package comprising: a one piece open construction package having a side wall, a plurality of toroid transformers within said package, said transformers each having wires wound thereon, a plurality of terminal pins molded within the side wall of said package, the ends of the terminal pins forming solder posts and extending through and below the bottom of said side wall, said solder posts each having an hourglass shaped notch upon which said wires from said transformers are wrapped and soldered thereon, respectively, the other end of each of the terminal pins extending in gull wing fashion outwardly from the side wall and below the bottom of the package for mounting onto the surface of the printed circuit board. The Court construed “hour-glass shaped notch” to mean “a notch formed by two mirrored indentations on opposite edges of the solder post.” (Claim Construction at 1004.) The Court construed “gull wing fashion” to mean “extending outwardly from the case, then extending in a downward fashion away from the case, and then extending outwardly from the case.” (Id.) Halo argues that the H0022, H1260, H1305, H1174, H0026, and H0019 representative products infringe on Claim 1 of the '720 Patent. Halo contends that drawings of the accused products show that the accused products read on all limitations. Pulse responds that the accused products represented by the Pulse H0026 product utilize “J-leads” that do not extend in a gull wing fashion as terminal pins. Additionally, Pulse argues that Halo has not met its burden of showing no genuine issue of material fact remains because it only completes an analysis on the representative product H0022, and Halo merely states that analysis of the other representative parts yields similar results. Drawings of the accused representative product H0022 appear to show that the product contains gull wing terminal pins. (Countryman Decl. (Doc. #248), Exs. 18, 19.) Drawings also show one piece construction and a plurality of toroid transformers. (Id.) Drawings of the H0022 product also appear to show an hour glass shaped notch. (Id., Ex. 18.) Bottoms declares that the representative products include one or more terminal pins that are molded within and extend through and below the bottom of the side wall. (12/22/2010 Bottoms Decl. at ¶¶ 34-35.) Additionally, Bottoms states that the representative products have terminal pins that extend in a “gull wing” fashion. (Id. at ¶ 36.) Drawings of the H0026 product appear to show terminal pins extending in a “J lead” rather than “gull wing” fashion. (Mot. for Summ. J. of Non-Infringement (Doc. # 239), Exs. 23, 24.) Pulse has presented sufficient evidence to create a genuine issue of material fact as to whether the H0026 product contains terminal pins extending in a “gull wing” fashion. Accordingly summary judgment in favor of Halo on this issue is inappropriate and will be denied. Pulse does not respond specifically to Halo’s argument that products other than those represented by the H0026 product infringe on Claim 1 of the '720 Patent. However, Pulse argues that Halo’s “cursory” analysis of products other than the H0022 does not meet Halo’s burden of showing no genuine issue of material fact as to whether the representative products read on all limitations of Claim 1. The Court agrees Halo has not met its burden with respect to products other than the H0022 and summary judgment will be denied in that respect. With respect to the H0022 representative product, Halo has provided sufficient evidence showing that the H0022 representative product reads on all limitations of Claim 1 of the '720 Patent. Pulse has not provided sufficient evidence creating a genuine issue of material fact as to whether the H0022 product reads on all limitations of Claim 1 of the '720 Patent. Accordingly, the Court will grant partial summary judgment in favor of Halo with respect to the H0022 product only. I. Claim 6 of the '720 Patent Claim 6 of the '720 Patent requires the following limitations: An electronic surface mount package for mounting onto the surface of a printed circuit board comprising: an open construction package having a side wall, at least one toroid within said package in a soft silicone material, said transformer having a wire wound thereon, at least one terminal pin molded within the side wall of said package, said one end forming a solder post extending through and below the bottom of said side wall said solder post having a notched post upon which said wire from said transformer is wrapped and soldered thereon. Halo argues that drawings and testimony regarding the H0022, H1260, H1305, H1174, H0026, and 23Z110SMNL representative products show that these products read on all limitations of Claim 6 of the '720 Patent. Pulse, as with Claim 1 of the '720 Patent, argues that Halo has not met its burden of showing no genuine issue of material fact remains as to whether the accused products read on all limitations of Claim 6 of the '720 Patent. As set forth earlier in this Order with respect to Claim 6 of the '985 Patent, there is a genuine issue of material fact as to whether the toroids of the accused products are retained in their packages by soft silicone material. Claim 6 of the '720 Patent requires “at least one toroid transformer within ... soft silicone material.” Accordingly, there is a genuine issue of material fact as to whether the H0022, H1260, H1305, H1174, H0026, and 23Z110SMNL representative products meet this limitation. Accordingly, summary judgment on this issue is inappropriate and will be denied. J. Claim 1, of the '785 Patent Claim 1 of the '785 Patent requires the following limitations: An electronic surface mount package for mounting onto the surface of a printed circuit board comprising: a side wall with a bottom end, a plurality of toroid transformers within the package, the toroid transformers each having wires wrapped thereon, a plurality of terminal pins molded within the side wall and having a solder post with an end upon which the wires from the transformers are respectively wrapped and soldered thereon, each of the post ends extending beyond the bottom of the side wall. Halo argues that the products represented by Pulse products H0022, H1260, H1305, H1174, H0019, and H0026 infringe on Claim 1 of the '785 Patent. Pulse does not respond specifically to arguments that the products represented by Pulse products H0022, H1260, H1305, H1174, H0019, and H0026 infringe on Claim 1 of the '785 Patent, but instead argues that Halo has not met its burden of putting forth a prima facie case of infringement of Claim. 1 of the '785 Patent. Halo has not met its burden of showing no genuine issue of material fact as to whether the accused products read on all limitations of Claim 1 of the '785 Patent. While Bottoms declares that the representative products meet all limitations of Claim 1, he did not set forth the factual basis for his findings. Accordingly, his declaration is not sufficient to show no genuine issue of material fact remains. Therefore, summary judgment on this issue will be denied. K. Claims 2 and 26 of the '785 Patent Claims 2 and 26 of the '785 Patent are similar to Claim 1, but both Claims require toroids to be retained in their packages by a soft silicone material. Halo contends that the products represented by Pulse products H0022, H1260, H1305, H1174, H0019, and H0026 have toroids retained in their packages by soft silicone material and hence read on all limitations of Claims 2 and 26 of the '785 Patent. In its response, Pulse does not respond specifically to the arguments that its products infringe on claims 2 and 26 of the '785 Patent. However, in its motion for summary judgment of non-infringement, Pulse argues that its accused products do not have toroids retained in soft silicone material. As set forth earlier in this Order with respect to Claim 6 of the '985 Patent, there is a genuine issue of material fact as to whether the toroids of the accused products are retained in their packages by soft silicone material. Claims 2 and 26 of the '785 Patent require toroids retained in their package by a soft silicone material. Accordingly, there is a genuine issue of material fact as to whether the H0022, H1260, H1305, H1174, H0026, and 23Z110SMNL representative products meet this limitation. Accordingly, summary judgment on this issue is inappropriate and will be denied. L. Claims 18 and 48 of the '785 Patent Claims 18 and 48 of the '785 Patent both require a standoff and a gap between the bottom end of the side wall and the standoff. Halo contends that the H0022, H1260, H1305, H1174, H0019, and H0026 representative products contain a standoff and hence infringe on Claims 18 and 48 of the '785 Patent. Pulse contends that Halo has failed to prove that any of the accused products include a gap between the bottom end of the side wall and the standoff as required by Claims 18 and 48 of the '785 Patent. Bottoms declares that the representative products contain a gap between the standoff and the bottom end of the sidewall. (12/22/2010 Bottoms Decl. at ¶ 44.) Larson declares that, in all accused Pulse products, the side wall and end wall are continuously touching and there is no gap between them. (Larson Decl. (Doc. # 266) at ¶ 6.) From drawings of the H0022 product, it is unclear whether this product contains a standoff and gap. (Countryman Decl. (Doc. # 248), Ex. 18.) There is a genuine issue of material fact as to whether the H0022, H1260, H1305, H1174, H0019, and H0026 representative products contain a standoff and a gap between the standoff and the bottom end of the side wall. From drawings of the representative products it is unclear whether a gap is present, and the parties have presented conflicting expert testimony on the issue. Accordingly, summary judgment on this issue is inappropriate and will be denied. M. Claim 40 of the '785 Patent Claim 40 of the '785 Patent requires the following limitations: An electronic surface mount package for mounting onto the surface of a printed circuit board comprising: a first side wall with a bottom end, a plurality of toroid transformers within the package, the toroid transformers each having wires wrapped thereon, a plurality of terminal pins molded within the first side wall and having a solder post with an end upon which the wires from the transformers are respectively wrapped and soldered thereon, each of the post ends extending beyond the bottom end of the first side wall, wherein each of the post ends is substantially parallel to the first side wall, and a portion of each of the terminal pins extends from and is substantially perpendicular to the first side wall, each of the terminal pins further including a lead for mounting onto the surface of the printed circuit board, and a second side wall substantially parallel to the first side wall, and wherein the wires from the transformers are contained between the first and second planes defined, respectively, by an outside surface of the first side wall and an outside surface of the second side wall. Halo contends that the H0022, H1260, H1305, H1174, H0019, H0026110SMNL representative products contain all limitations of Claim 40 of the '785 Patent and hence infringe on the '785 Patent. Halo provides an analysis of the drawing of the H0022 product and contends that it contains all the limitations of Claim 40 of the '785 Patent. Halo then asserts that analysis of the other representative products would show that these products read on all the limitations of Claim 40 as well. Pulse does not respond specifically to allegations that the above products read on the limitations of Claim 40 of the '785 Patent but contends that, for all Claims, Halo has not met its burden of showing no genuine issue of material fact as to whether all limitations are met. Bottoms declares that the accused products contain posts that extend beyond the bottom end of a first side wall; that each of the posts is substantially parallel to the first side wall; that a portion of the terminal pins extends from and is substantially perpendicular to the first side wall; and that each of the terminal pins include a lead for mounting onto the surface of the printed circuit board. (12/22/2010 Bottoms Decl. at ¶ 45.) Drawings of the H0022 product appear to show terminal pins extending through a side wall; posts being substantially parallel to the side wall; and a portion of the terminal pins substantially perpendicular to the side wall. (Countryman Decl. (Doc. #248), Ex. 18.) Drawings of the H1260, 23Z110SMNL, H1305, H1174, H0026, and H0019 also appear to show terminal pins extending through a side wall; posts being substantially parallel to the side wall; and a portion of the terminal pins being substantially perpendicular to the side wall. (Countryman Decl. (Doc. # 248), Exs. 25-31.) Viewing all evidence in the light most favorable to Pulse, there is a genuine issue of material fact as to whether the accused products read on all limitations of Claim 40 of the '785 Patent. While the drawings of the accused representative products and Bottoms’ testimony provided evidence that the accused products contain posts that extend beyond the bottom end of the first side wall; that each of the posts is parallel to the first side wall; and that a portion of the terminal pins are substantially perpendicular to the side wall, Halo does not provide any evidence to support Bottoms’ contention that the terminal pins contain leads for mounting onto a printed circuit board. It is not clear from drawings of the accused products that these products contain such leads. Accordingly, there is a genuine issue of material fact as to whether the H1260, 23Z110SMNL, H1305, HI 174, H0026, and H0019 representative products read on all limitations of Claim 40 of the '785 Patent. Accordingly, summary judgement on this issue will be denied. IV. INVALIDITY^ALIDITY (Doc. # 250 and # 240) Under 35 U.S.C. § 102(b), a patent is invalid if “the 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.” Invalidity is an affirmative defense and the burden of proof lies with the party challenging the patent’s validity. Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1212 n. 2 (Fed.Cir.2005). To prove a patent invalid under the “on-sale” bar of § 102(b), the party claiming invalidity must prove that the invention in question was (1) the subject of a commercial, not experimental, sale, and (2) that the invention was ready for patenting. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353 (Fed.Cir.2002). Factors to be considered when determining the experimental nature of a sale 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 contacts made with potential customers. Id. (citing EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1357 (Fed.Cir.2002)). Every factor may not be relevant in a particular case, rather the factors are to be balanced. Id. An invention is ready for patenting if (1) it was actually reduced to practice or (2) the inventor prepared sufficiently specific drawings or descriptions “to enable a person skilled in the art to practice the invention.” Pfaff v. Wells Elec., Inc., 525 U.S. 55, 67-68, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998). “To demonstrate reduction to practice, a party must prove that the inventor (1) constructed an embodiment or performed a process that met all the limitations and (2) determined that the invention would work for its intended purpose.” In re Omeprazole Patent Lit., 536 F.3d 1361, 1373 (Fed.Cir.2008) (quotation omitted). Further, “[t]esting is required to demonstrate reduction to practice in some instances because without such testing there cannot be sufficient certainty that the invention will work for its intended purpose.” Id. (quotation omitted). A. August 5,1994 Sale Pulse argues that the Halo Patents are invalid under 35 U.S.C. § 102(b) because products embodying the Halo Patents were sold commercially more than a year before the filing of the patent applications. Halo responds that Pulse cannot meet its burden to show that the August 5, 1994 transaction between Halo and PBL is invalidating under § 102(b) because the transaction was purely for experimental purposes and there is no evidence that the invention was ready for patenting more than a year before the first Halo Patent was. Pulse replies that it has put forth a prima facie showing that the August 5, 1994 sale was invalidating and Halo has not put forth sufficient evidence to rebut this showing. Additionally, Pulse contends that the experimental use exception cannot apply to the August 5, 1994 sale because the inventions already had been reduced to practice. As the party claiming invalidity of the patents, Pulse bears the burden of showing that the invention in question was both (1) the subject of a commercial sale, and (2) that the invention was ready for patenting more than a year prior the date of the patent application. The Halo Patents were filed on August 10, 1995. Therefore, to be potentially invalidating, a commercial sale must have taken place prior to August 10, 1994. Only the August 5, 1994 sale is identified by Pulse to be an invalidating sale. Even viewing all evidence in the light most favorable to Pulse, there is no genuine issue of material fact that the August 5, 1994 sale was for experimental, rather than commercial, purposes. The first, third, and tenth factors analyze (1) the necessity for public testing, (3) the nature of the invention, and (10) whether the invention reasonably requires evaluation under actual conditions of use. James Heaton avers that prior surface mount packages would warp and crack at high temperatures and Halo needed to test its prototypes to ensure that they offered a reasonable solution to these prior problems before contracting with customers. (12/22/2010 Heaton Decl. at ¶¶ 2-7.) Pulse does not provide evidence raising a genuine issue of material fact in this regard. Rather, Pulse attacks the credibility of James Heaton without providing any evidentiary basis for doing so. Thus, Pulse has presented no evidence raising a genuine issue of material fact that testing of the prototypes under actual conditions of use was necessary because of the nature of the invention. The second, eighth, ninth, twelfth, and thirteenth factors are (2) the amount of control over the experiment retained by the inventor, (8) who conducted the experiment, (9) the degree of commercial exploitation during the experiment, (12) whether the inventor continually monitored the invention during the testing, and (13) the nature of the contacts made with potential customers. James Heaton avers that the prototypes were at all times under the control of the inventors at PBL or Halo. (Id. at ¶ 8.) Additionally, Heaton states that the Heatons personally performed and continually monitored all testing on the prototypes. (Id. at ¶ 5.) Halo also provides evidence that its first commercial exploitation of the Halo Patents took place weeks later on September 22, 1994. (Countryman Decl. (Doc. # 248), Ex 11, Ex. 8 at 320.) Pulse does not provide any evidence creating a genuine issue of material fact with respect to these factors. Pulse does not dispute that the prototypes were at all times under the control of the named inventors, but rather attacks Heaton’s credibility by questioning whether the alleged home testing even took place. Again, Pulse does not provide any evidentiary basis for attacking Heaton’s credibility. Further, Pulse does not provide any evidence suggesting that Halo made contact with customers or commercially exploited the Halo Patents during testing. Thus, Pulse has presented no evidence raising a genuine issue of material fact as to whether the inventors at all times maintained control over the prototype, conducted and monitored the experiment, and did not exploit the Patents commercially or make contact with potential customers during the testing. The fourth, seventh, and eleventh factors are (4) the length of the test period, (7) whether records of the experiment were kept, and (11) whether the testing was systematically performed. Jeff Heaton testified that the oven testing was performed as a quick yes or no test regarding whether the new design could withstand high temperatures. (Countryman Decl. (Doc. # 248), Ex. 8 at 303-04.) Halo also contends that due to the quick nature and low complexity of the testing, the tests did not take a long time to perform and the Heatons did not keep detailed notes of the experiments. James Heaton states that while the tests were done quickly, they were carried out in a systematic manner, control testing was performed on prior packages, and that he believes he sent a fax to PBL confirming the test results. (12/22/2010 Heaton Decl. at ¶ 4; Countryman Deck (Doc. # 248), Ex. 8 at 313-315, Ex. 9 at 503-07.) Pulse notes that Halo has not provided any “contemporaneous evidence” of the testing that corroborates Heaton’s declaration. Pulse points out that Halo has not submitted evidence of testing that one would expect, such as notes and records of the experiment, or the fax Heaton allegedly sent to PBL confirming the test results. Viewing the absence of such evidence in the light most favorable to Pulse, there is a genuine issue of material fact that the length of the experiment, the records of the experiment, and the systematic nature of the experiment are indicative of the August 5, 1994 sale being an experimental sale. The fifth factor is whether payment was made. The invoice in connection with the August 5, 1994 sale indicates that PBL charged Halo $300 for the parts it delivered. (Countryman Decl. (Doc. # 248), Ex. 10.) The fact that Halo made “payment does not per se make a section 102(b) bar.” Baker Oil Tools, Inc. v. Geo Vann, Inc., 828 F.2d 1558, 1564 (Fed.Cir.1987). Indeed, “[i]nventors can request another entity’s services in developing products embodying the invention without triggering the on-sale bar.”