Full opinion text
MEMORANDUM OPINION RALPH M. FREEMAN, District Judge. This action was commenced on August 25, 1975, by plaintiff Ex-Cell-0 Corporation which seeks a declaratory judgment that United States Letters Patent 3,709,623 is invalid and unenforceable. The defendants in this action, Litton Industries, Inc., and its wholly owned subsidiary, Litton Industrial Products, Inc., the latter being the current owner of the patent in suit, have filed a counterclaim for preliminary and final injunctive relief against the infringement of this patent by the plaintiff. Following extensive discovery, the plaintiff made a motion for a summary judgment contending that the patent in suit was invalid under 35 U.S.C. § 102(b) because the invention was “on sale” more than one year prior to filing of the patent application. In the alternative, the plaintiff maintained that several claims of the patent were invalid for late claiming. In response to this motion, the defendants also moved for a summary judgment that the patent in suit was not invalid on the basis of the “on sale” and late claiming defenses. On October 10, 1978, the Court entered an order denying both of these motions. The Court did, however, grant the plaintiff’s motion pursuant to F.R.C.P. 42(b) for a prior and separate trial of the “on sale” and late claiming issues. This opinion represents the Court’s findings of fact and conclusions of law based upon the evidence presented at that prior and separate trial. I. INTRODUCTION The patent in suit issued on January 9, 1973, on the application of Hollis N. Stephan and Leslie C. Seager. This application, Serial No. 46,401, is a continuation of abandoned parent application Serial No. 25,118 originally filed on April 27, 1960. At the time of the original application Stephan, now deceased, was an employee of the Lucas Machine Division of The New Britain Machine Company, Inc. and Seager was an employee of one of Lucas’ customers, the Eimeo Corporation of Salt Lake City, Utah. Both the original and the continuation applications were assigned to New Britain which was later acquired by defendant Litton Industrial Products. The patent in suit relates to a conventional, automatically controlled boring, drilling and milling machine with automatic tool changing capability. The machine as described in the preferred embodiment set forth in the patent has a column mounted on a bed. Attached to the column is a vertically movable spindlehead, which includes a power driven rotatable spindle. Also mounted on the bed is a saddle capable of relative movement toward and away from the spindle or column. Mounted on the saddle is a work table capable of movement transversely of the axis of rotation of the spindle. The machine has a tool rack or magazine with an assortment of tools which is mounted on the work table. Electronically controlled power drives move the spindle, spindlehead, saddle and work table relative to one another and this existing relative movement is utilized to effect a tool change. The machine changes tools by stopping the spindle in a single predetermined angular position, moving the magazine horizontally and the spindle vertically to align the spindle with a tool holding aperture in the magazine, and then moving the spindle axially to engage or disengage a tool in the magazine. The movements of the spindlehead, work table and saddle are generally referred to in the trade as movements along a particular axis. For example, in a horizontal machine such as that set forth as the preferred embodiment of the patent in suit, the vertical movement of the spindlehead is referred to as movement along the Y axis; the movement of the saddle toward and away from the column or spindle is referred to as movement along the Z axis; and the movement of the work table transversely of the axis of rotation of the spindle is referred to as movement along the X axis. These relative movements are produced in the machine described in the patent in suit by a system known as numerical control. In such a system instructions for the movement of the machine parts and the performance of machining operations is written or punched on tape or cards. These instructions are then read mechanically and transmitted to the machining center. As a result, the machining center is able to automatically complete a number of operations requiring different tools. Numerical control systems can be used to produce movements along any number of axes. Consequently, the number of axes of relative movement is often used as a modifier of the control system. For example, a control system producing three axes of movement would be referred to as a three-axis numerical control system. It is clear to the Court that the ability to change tools automatically through the use of a system of numerical control was old in the art as of the date of the original application for the patent in suit. It is also clear that the plaintiff had been producing machines which had the ability to stop the spindle in a predetermined angular position long before Stephan et al. applied for their patent. One of the principal differences between the machining center described in the patent in suit and those described in the prior art is that the machine described in the patent in suit is able to change keyed tools (tools which have keys designed to fit into keyways in the spindle and which are used to transmit the driving power of the spindle to the tool) automatically by repeatedly inserting the tool into the spindle in the same predetermined angular position. The ability to repeatedly insert the tool in the same angular position with respect to the spindle assures consistency and accuracy in machining operations, not obtainable when tools are inserted in the spindle in a random position. This distinction between the machine described in the patent in suit and other machines produced in the 1950’s is clear from an examination of other patents submitted by the parties. For example, it is clear that prior to the application of Stephan et al. means had been devised for changing keyed tools automatically. However, these means could not insure that a tool would be placed in the spindle in the same predetermined angular position each time. Similarly, some machines possessed the capability of placing a particular tool in the spindle in such a way that the torque (produced by the turning action of the spindle) required to free the tool from whatever tool storing mechanism was employed would insure that the angular position of the tool in the spindle remained virtually the same for repeated uses. These machines, however, were incapable of changing keyed tools automatically. With this brief introduction, the Court will now consider the merits of the case along with the various positions advanced by the parties. II. ON SALE The facts relevant to the “on sale” defense may be broadly grouped into two categories. The first category consists of those facts surrounding a transaction between Lucas, the defendants’ predecessor, and the Eimco Corporation of Salt Lake City, Utah which transaction is alleged by the plaintiff to constitute a sale of the invention. The second category consists of positions taken by Stephan et al. in proceedings before the Board of Patent Interferences and the Patent Office with respect to the legal significance of this transaction and the facts surrounding it. The evidence relevant to these two factual categories comes almost exclusively from testimony taken in a mid-1960’s interference proceeding where Stephan et al. was one of the parties. In addition, the parties rely on certain documents later submitted to the Patent Office and depositions taken in this action. Prior to the filing of the original application for the patent in suit, the Eimco Corporation, a longtime customer of Lucas, was in the business of manufacturing crawler tractors and underground mining equipment and had designed a housing for such tractors. All of the machining required to produce these housings was performed by a conventional boring and milling machine, the tools of which were changed manually. Since this was a time consuming process, Eimco was looking for a way to increase its productivity through the purchase of a new boring machine. Leslie C. Seager, Eimco’s chief production engineer at that time, concluded that Eimco was in need of a fully automatic boring mill which could change tools automatically. Seager contacted many machine tool companies but none were able to provide him with a satisfactory proposal for a fully automatic machining center. One of the major hangups appears to have been the reluctance of the companies contacted to meet Seager’s requirement that the tooling for the machine was to have the No. 50 National Machine Tool Builders taper driven through keys. As a result of Seager’s inability to secure a proposal for the type of machine he felt was needed, Eimco verbally ordered a conventional boring mill from a Lucas competitor, the Bullard Company. The reason that the Bullard Company, rather than Lucas, received this order is that Eimco had become increasingly dissatisfied with Lucas’ tools and service and had decided to look elsewhere for its new machine. In mid-summer 1958, R. E. DuBoc, a distributor for Lucas, learned of Eimco’s dissatisfaction and relayed the information to A. J. 'LeBrun, Lucas’ sales manager. On August 8,1958, LeBrun met with Seager in an attempt to improve Lucas’ service and also to convince Eimco to place an order with Lucas. At that meeting, Seager made known his desire for a fully automatic machine with three-axis numerical control and the ability to stop the spindle in the same predetermined angular position so that a keyed tool could be inserted into the spindle in the same relative position each time it was used. Seager and LeBrun also discussed the positioning of a toolholding magazine on the front of the table or on the saddle. At this meeting, Seager made a sketch of the magazine which resembled a box with compartments in it for storing tools. The compartments were to be equipped with detents for holding the tools. Both Seager and LeBrun were of the opinion that numerical control techniques could be used to effect the relative movement of the magazine and spindlehead required for changing tools. Pursuant to these discussions, Lucas gave Eimco a quotation on August 11, 1958, for a conventional Lucas 542B120 horizontal boring, drilling and milling machine including a spindle with a No. 50 taper. However, the proposal was not satisfactory to Eimco because among other things it included provision for two-axis numerical control rather than the three-axis control that Seager wanted. One of the reasons for this deficiency was that Lucas had no experience with three-axis control systems, and therefore was unable to determine the price of the machine Seager had outlined. On August 26 and 27, 1958, Seager and Mr. James Campbell, superintendent of Eimco at that time, visited the Lucas plant in Cleveland, Ohio, at the suggestion and invitation of LeBrun. During this visit Seager met with coinventor Stephan, Wilbur Meinke, Lucas’ chief engineer and a representative of General Electric (supplier of Lucas’ numerical control equipment). Seager made it clear at this meeting that he was interested in a machine with automatic tool changing capabilities which could stop the spindle in a predetermined angular position for tool changing and which had three-axis numerical control. At this meeting it was decided that the magazine would be mounted on the end of the work table. In addition, the discussion dealt with ways of stopping the spindle in the same predetermined angular position. Among the methods discussed were the use of limit switches, latching switches and proximity switches. At this meeting Seager indicated that he expected Lucas to build the basic machine, but that Eimco would construct the tools and magazine and anything that had to do with tooling. Seager’s desire to have Eimco build the tooling stemmed from his belief that Eimco was more experienced in that area and could therefore do a better job. Although it is apparent that at this time Seager was not interested in a machine with tape control, the record clearly reflects that he was interested in a machine which would have the proper lead screws so that it could be retrofitted for tape control in the future. After Seager’s visit several of those at Lucas, in the words of Meinke, “thought that [they] were biting off more than [they] might chew.” Consequently, Meinke and Stephan wanted to prove to themselves that the machine could, in fact, be built and change tools automatically. They therefore had a two station magazine built and simulated a tool changing cycle which demonstrated that the machine could correctly position the spindlehead and magazine for automatic spindle to magazine tool changes. In Meinke’s words: Manually we oriented the spindle in one position. The positioning of the table and head was done under numerical control. I might say that what we did was to use a two axes controlled machine and then we initiated the saddle motion so that the tools would be brought into the spindle socket and be stopped just a short distance from the stopping place, and then manually we would actuate the power tool ejector mechanism to close the collet, and this would then grab the tool. It would hold the tool, and it would pull the tool out of the magazine and hold the tool, and then we switched back to tape and it would initiate the saddle to retract. Then, since it was on tape, we had programmed what we call an end bracket, a small bracket about six inches long or maybe ten inches long, six inches wide, and three inches high, that had three holes in it. They would hold the tail end of the saddle feed screw and the table power drive shaft and our back rest shaft. We would proceed to machine these little brackets using the spade drill and the semifinishing and finishing bar, boring bars, and then we would again go through the same combination numerical positioning and hand operation to deposit the tool back in the magazine. We were simulating an actual tool change cycle that eventually evolved into a fully automatic program. Plaintiff’s Exhibit 281 at 200-01. According to Meinke, following this demonstration, “it was just a matter of putting in the proper coding or electronic codes and controls in the machine numerical control system.” Id. at 202. On January 30, 1959, Eimco executed a purchase order for a Lucas 542B120 “Precision” Horizontal Boring, Drilling and Milling Machine. Since Lucas was unable to provide Eimco with a quotation on the type of numerical control system desired, the machine described in the purchase order did not have three-axis numerical control. Eimco, however, was still interested in a machine with this feature. As a result, the order specifically stated that the machine would be adaptable for tape or numerical control and would be equipped with the proper lead screws. The purchase order also specified that the machine would have pendant controls for operation of the machining functions. These controls could also be used to control and jog the spindle so that it could be stopped in any desired position. Despite Seager’s emphasis on having a fully automatic machine, it is clear that the machine described in the order was incapable of automatic tool changing. In fact, the order referred to time studies which according to Seager dealt with the speed with which operations could be performed using manual tool changing. However, any notion that the machine being purchased was merely a conventional boring mill is dispelled by a Rule 131 Affidavit filed by Seager in order to overcome a Patent Office rejection of Claims 17 and 18 of the patent in suit. In that affidavit, Mr. Seager stated: . The Eimco order was prepared under the supervision of the deponent and . . . the order was placed with the clear understanding . . . that the machine would be capable of fully automatic tool changing . Following the execution of the January 30,1959 purchase order, Seager was invited to the Lucas plant in Cleveland to discuss the machine that had been ordered and the adaptation of numerical control to it. On this date, Seager witnessed a demonstration similar to that conducted earlier by Stephan and Meinke and discussed above. In the aforementioned Rule 131 affidavit, Seager described this demonstration as follows: Deponent further states that on February 17, 1959, he visited the Lucas plant and witnessed a demonstration which proved the feasibility of using a clutch-servo numerical controls to accomplish automatic tool changing, and that the demonstration was carried out on a boring machine equipped with two-axis clutch-servo numerical controls for operating the head and table, and that the actuation of the saddle was initiated from tape by a command thereon, and that the saddle positions were controlled by the use of end measuring rods, and that a magazine which held two tools was mounted on the work table of the machine, and that the tools were used to machine a lead screw bracket of the type used on the Lucas machine, and that he observed a tool changing cycle in which a tool from the magazine was mechanically transferred to the spindle and after a machining operation was mechanically returned to the magazine, and that the tape controlled the positions of the head and table in aligning the spindle with a selected one of the tools in the magazine. Deponent further states that the machine which was demonstrated and tested on February 17, 1959, included a power driven tool spindle which was selectively movable to a plurality of positions, and that the spindle had a rearward end and an operating end, and that a tool carrying magazine was selectively movable to a plurality of positions for presenting a tool at a predetermined position preparatory to engaging with the spindle any one of the tools in the magazine, or returning to the magazine a tool which was carried in the spindle, and further that the machine carried means within the spindle for movement between the two ends of the spindle and for cooperating with the magazine to engage with the spindle a tool from the magazine and to release the tool prior to the return of the tool from the spindle to the magazine, and that the machine operated successfully and proved the operability of the machine conceived in August, 1958. Based upon this demonstration, Seager was satisfied that the machining center could be built and operated as contemplated, despite the fact that at the demonstration they were unable to stop the spindle in a predetermined angular position. As a result, Seager proceeded on the assumption that the machine being produced for Eimco would be a fully automatic piece of equipment when it was delivered. In his deposition taken for this case, Seager testified: [Because of my satisfaction that the system could be built] we gave them an order and said, in fine print, okay, you guarantee that you can retrofit and do all those other good things, so that we can make it a fully automated piece of equipment. Plaintiff’s Exhibit 284 at 134. With respect to Eimco’s responsibility to provide the tooling and design the magazine, Seager stated: Now, we took one risk and one risk only. We spent — I can’t give you the dollar figures now — but I would say it was probably fifteen or twenty thousand dollars on magazines and fixtures and tools. Now, had we failed on this thing, we would have then had fifteen or twenty thousand dollars worth of tools, all the tools, which would have been okay. But the magazine and the holding fixtures probably would have been a waste of money. Id. On March 5, 1959, a short time after this demonstration, Eimco executed a change order which deleted some items from and added other items to the January 30, 1959 purchase order. According to Seager, under whose supervision the change order was prepared, the purpose of these changes was to insure that the machine being purchased was properly equipped for automatic tool changing. On April 28, 1959, Lucas supplied Eimco with a quotation for a General Electric Mark III numerical control device adapted to the Lucas 542B120 machine. This constituted the control device for automatic positioning of the spindlehead, table and saddle necessary for the fully automatic machine capable of automatically changing tools contemplated by Seager. On May 12, 1959, Eimco executed a further change order covering the purchase of the General Electric Mark III. On July 6, 1959, Lucas advised its distributors that the Mark III would be delivered to Lucas 14 to 16 weeks after May 1, 1959. On July 1, 1959, Seager again visited the Lucas plant to follow up on the progress of the machine order quotation and to discuss further refinements of the numerical control. Subsequent to this visit, Eimco executed a change order dated July 15,1959, to add an electronic and mechanical conversion program control necessary to orient the spindle. The order discloses that it was in confirmation of an earlier verbal order given by Seager to LeBrun on July 2, 1959. Although this is the first time the actual control mechanism for stopping the spindle was placed in the order, Seager’s testimony makes it clear that methods for stopping the spindle had been part of the discussions between Lucas and Eimco since the inception of the order. While this was going on, Eimco was apparently working on the tooling and the tool magazine in preparation for an upcoming demonstration of the machining center in September, 1959. This is evidenced by a letter from Seager to Lucas dated August 6, 1959, which stated: We are rushing all tooling on our 103 Main Frame for the Tool Change Magazine and boring bars and we expect to ship both the magazine and tools complete to you in ample time for September 15th, 1959 tryout. Plaintiff’s Exhibit 51 Despite this, the tool magazine and tooling for the machine were not shipped by Eimco until October 13, 1959. The magazine, designed by Seager, was built by an Eimco subcontractor. The tools sent to Lucas were the tools necessary to perform the machining operations on one of Eimco’s tractor frames. In late October 1959, the machine was demonstrated to Seager and members of the A.I.E.E. at the Lucas plant in Cleveland. At this demonstration, the center was used to machine a part and performed in a fully automated manner as originally contemplated by Seager. The only problem was a “hunting condition” which existed with respect to the spindle. In other words, the spindle did not always stop in a predetermined angular position on its first revolution, but instead would miss the programmed stop before coming to rest in the desired position in the second revolution. The machining center was eventually shipped to Eimco in late January 1960. The New Britain Machine Company and Lucas, one of its divisions, began negotiations, apparently sometime in early 1960, to obtain sole patent rights for the invention. As a result of these negotiations, it was agreed that Eimco would not enforce its right to an assignment of Seager’s interest in any patent. In exchange for this agreement, Eimco was granted a nonexclusive license to make, use or sell the machines embodying the invention. In exchange for an assignment of his patent rights, Seager was to receive $500 from New Britain. In addition to the factual information surrounding the development of the invention set forth above, a second category of evidence relevant to the on sale issue must be considered. The evidence concerns the characterization of the transactions between Lucas and Eimco by Stephan et al. in proceedings before the Board of Patent Interferences and the Patent Office. In 1965 the Patent Office declared an Interference between Stephan et al. and two other parties. A detailed analysis of that proceeding is unnecessary at this point and for present purposes it is sufficient to note that the task of Stephan et al. was to establish the priority of its invention in relation to the inventions of the other parties to the interference. After a great deal of testimony with respect to the facts set forth above, Stephan et al. sought to characterize these facts in such a way so as to establish the priority of its invention. With respect to the January 30, 1959 purchase order the interference brief of Stephan et al. stated: Pursuant to the conception of the invention in August, 1958, Eimco on January 20, 1959 placed a formal order (Steph. Exch. G.) for the 542B120 Lucas machine covered by the LeBrun proposal of August 11, 1958. . There was no doubt in Seager’s mind that the Eimco order which was prepared under his supervision contemplated a fully automatic machine including automatic tool changing. The testimony concerning Seager’s interpretation of the original order is confirmed by the subsequent change orders which were issued as Lucas was able to quote definite prices on the required equipment. All of the structure called for by the count is covered by Stephan et al. exhibit G except for the tool magazine. The tool magazine was built by Eimco and not by Lucas. Plaintiff’s Exhibit 280A, Brief of Stephan, et al. at 35-37. And with respect to the February 17, 1959 demonstration, the brief stated: It is clear from the testimony of both Meinke and Seager that the test on February 17, 1959 demonstrated the practicability and utility of the Stephan et al. invention. Actual machining operations were performed and the tools were selectively transferred to the spindle from the magazine. At the end of a machining operation the spindle was angularly oriented and the tool in the spindle was returned to the magazine in the same predetermined angular position in which it was previously supported therein. The successful demonstration fulfilled all the conditions essential to a reduction to practice and would be urged as such but for the fact that it was overlooked when the preliminary statement was prepared. While the machine that was demonstrated did not have proximity switches for stopping the spindle, as was actually embodied in the Eimco machine in accordance with the conception in 1958, there was no question that the switches would work and an actual use of the switches was not required for a reduction to practice. Id. at 38-39. Later in the prosecution of the Stephan et al. continuation application, the patent examiner rejected Claims 17 and 18 as being fully met by a patent previously issued to Donald Pittwood. In order to overcome the reference to the Pittwood patent, Stephan et al. submitted the Rule 131 affidavit which is quoted extensively above. The amendment to which this affidavit is attached characterized it as “an affidavit under Rule 131 executed by co-inventor Seager stating facts which show a conception prior to December 30, 1958, and a reduction to practice on February 17, 1959.” Based on these facts, the plaintiff claims that the patent in suit is invalid under 35. U.S.C. § 102(b) which provides: A person shall be entitled to a patent unless . . . the invention was patented or described in a printed publication in this or a foreign country or 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. Since the original patent application of Stephan et al. was filed on April 27, 1960, the plaintiff bears the burden of showing that the invention was on sale prior to April 27, 1959. The purpose underlying § 102(b) was aptly set forth by the Court in Gould Inc. v. United States, 579 F.2d 571, 580 (Ct.Cl. 1978): It appears certain that the purpose of the on sale bar and the 1-year grace period is an attempt by Congress to balance the interests of the inventor with the interests of the public. On the one hand, Congress was concerned that an inventor would have sufficient time to not only determine whether a patent is desired following a sale, but that sufficient time would also be provided to have the patent application prepared and filed in the Patent Office. On the other hand, Congress was concerned with encouraging inventors to file for a patent as soon as possible and, at the same time, prevent the commercial exploitation of an invention for more than 1 year. Similarly, many courts have acknowledged that § 102(b) was prompted by a concern that unless otherwise restricted to the one year waiting period an inventor might be able to extend the period of his monopoly by commercially exploiting the invention for an indefinite period of time before filing his patent application. Micro-Magnetic Industries, Inc. v. Advance Automatic Sales, Inc., 488 F.2d 771 (9th Cir. 1973); Koehring Co. v. National Automatic Tool Co., 362 F.2d 100 (7th Cir. 1966). The party asserting the “on sale” defense has the burden of proving the defense by clear and convincing evidence. Minnesota Mining & Mfg. v. Kent Industries, 409 F.2d 99 (6th Cir. 1969). However, the evidence need not show that there was an actual accomplished sale, since the statutory bar may be triggered by activity of the inventor or his company in attempting to sell the patented idea. Amphenol Corporation v. General Time Corp., 397 F.2d 431 (7th Cir. 1968). For example, in Red Cross Manufacturing v. Torro Sales Co., 525 F.2d 1135, 1140 (7th Cir. 1975), the Court held that the demonstration of the patented invention to the inventor’s principal buyer was sufficient to trigger the “on sale” bar and stated the general principle that: the statutory prescription of § 102(b) is concerned not with the formal requisites of the challenged activity but with its effects. Not all sales trigger the “on sale” bar, however. If the primary purpose of a sale is experimental rather that commercial, the defense does not apply. Dart Industries, Inc. v. E. I. Dupont de Nemours & Co., 489 F.2d 1359 (7th Cir. 1973). The inventor’s intent determines whether sales activity is for experimental or commercial purposes. Sales activity ceases to be experimental when the motivation of the inventor is to exploit the invention and gain a competitive advantage over others. Red Cross Manufacturing, supra. As its name implies, the “on sale” defense requires a showing that the invention was the subject of a sales transaction more than one year prior to the filing of the patent application. The defendants contend that the invention was not on sale because the January 30, 1959 purchase order and the proposal which preceded it do not describe a machine which has automatic tool changing capability. Thus, they maintain that the subject of the sale was not the invention, but nothing more than a conventional boring mill. As part of their argument that the machine ordered from Lucas was not the invention, the defendants contend that the agreement with respect to the invention was one whereby Lucas and Eimco would jointly develop the machine which matured into the patent in suit. While these contentions might be properly treated as one issue, i. e., whether the transaction constituted the sale of a conventional machine coupled with an understanding to jointly develop the invention, the Court believes that the arguments presented by the defendants are more easily dealt with separately. Consequently, the Court will first consider whether the transaction between Lucas and Eimco concerned the invention, regardless of whether the transaction involved a joint development. Later, after discussing the reduction to practice issue, the Court will deal with the question of whether the facts of the ease warrant a finding that the invention was jointly developed and therefore not “on sale.” With respect to the first of these issues, the Court is of the opinion that the record clearly supports a finding that the transaction between Lucas and Eimco was not confined to a conventional boring mill. There is no hint in the testimony of either Seager or the Lucas employees or agents that the transaction in question was limited to a conventional machine. From its very inception, the transaction centered around Seager’s desire to have a fully automatic piece of equipment and the efforts of Lucas to meet this desire. The fact that the January 30, 1959 purchase order did not provide for. a machine with automatic tool changing capability is not persuasive. A major reason for this, as disclosed by the record, is that Lucas was unable to quote Eimco a price for the Mark III numerical control unit because it had not been produced by General Electric at that time. To hold that the Court is limited in its inquiry to what is stated in the purchase order is to ignore the substance of the transaction. Clearly, the transaction in this case was directed at the invention as originally conceived by the inventors. Alternatively, the defendants argue that even if the sale did not involve a conventional machine, the device sold could not have been the invention because the magazine, an element of all of the claims of the patent in suit, was furnished by Eimco and was not included in the Lucas-Eimco transaction. The Court is of the opinion that based on the record, this circumstance should not bar the application of § 102(b) to the patent in suit. The defendants’ argument with respect to the magazine can be summarized as follows: The patent in suit is a combination patent with the magazine as an element of all of its claims (a fact admitted by the plaintiff’s expert). In order for an invention to be “on sale” every element of its claims must be found in the article sold. Scharmer v. Carrollton Mfg. Co., 525 F.2d 95 (6th Cir. 1975). Therefore, the absence of the magazine is fatal to any argument that the device sold to Eimco satisfied the criteria of § 102(b). The problem with this argument is that it proves too much. As noted above, the purpose of the “on sale” bar is to prevent an inventor from extending his monopoly by commercially exploiting his invention prior to filing an application for a patent. If the “on sale” bar can be avoided merely by permitting or requiring the purchaser to acquire some element of the invention elsewhere, the potential for extending the inventor’s monopoly and thus subverting the purpose underlying § 102(b) is apparent. As a result, the Court is of the opinion that the absence of the magazine from the Lucas-Eimco transaction is insufficient to preclude the application of 102(b) in this case. In addition, the Court has grave doubts that the holding in Scharmer, supra, is applicable to the case at bar. In Scharmer, the Court was faced with a situation where the patentee was arguing that his invention was not on sale because the sale included elements which were not claimed in the patent. Thus, the Scharmer court correctly concluded that if the article sold met the claims of the patent, the fact that an extra unclaimed feature was sold as part of the article does not preclude application of § 102(b). This case clearly involves a different situation and for the reasons stated above requires a different rule. Cf. Timely Products Corporation v. Aaron, 523 F.2d 288, 302 (2nd Cir. 1975) (“Complete readability of the claim on the thing offered is not required.”) The fact that the transaction between Lucas and Eimco related to a machine which eventually evolved into the invention is not dispositive of the “on sale” issue, however. As the Court stated in Hobbs v. United States, Atomic Energy Commission, 451 F.2d 849, 859 (5th Cir. 1971): The mere existence of a sales contract is insufficient to establish a placing “on sale.” The invention that is the subject of the sale must be a reality in the sense that it must be beyond the experimental stage. Most courts considering the issue have held that in order for an invention to be on sale within the meaning of § 102(b) the transaction must concern an invention which has been reduced to practice. See e. g. Timely Products Corporation v. Aaron, supra; In Re Yarn Processing Patent Validity Litigation, 498 F.2d 271 (5th Cir. 1974); cert. denied 419 U.S. 1057, 95 S.Ct. 640, 42 L.Ed.2d 654 (1974); Dart Industries, Inc. v. E. I. Dupont de Nemours and Co., 489 F.2d 1359 (7th Cir. 1973). Unfortunately, the Court of Appeals for the Sixth Circuit has not passed on this issue. In Ajem Laboratories, Inc. v. C. M. Ladd Co., 424 F.2d 1124 (6th Cir. 1970) cert. denied 400 U.S. 830, 91 S.Ct. 59, 27 L.Ed.2d 60 (1970), the Court assumed without holding that a reduction to practice was necessary for an invention to be “on sale.” In view of this decision and the numerous cases holding that a reduction to practice is essential to the statutory defense, the Court is of the opinion that the plaintiff bears the burden of showing a reduction to practice before the critical date in order to prevail on its claim that the invention was “on sale” within the meaning of § 102(b). The question presented, then, is whether the invention was reduced to practice prior to April 27, 1959. The plaintiff relies on the February 17, 1959 demonstration described above, as a reduction to practice. There is no dispute, however, that the machine tested on February 17, 1959, did not have certain features which were later incorporated into the machine delivered to Eimco. Specifically, the machine tested had only two-axis numerical control and thus lacked a device capable of automatically moving the various components of the machine in three axes. More importantly, the machine lacked means for automatically stopping the spindle in one predetermined angular position. The question whether the absence of these elements precludes a finding that the machine was reduced to practice on the date alleged by the plaintiff requires an analysis of the law relating to reduction to practice as well as an analysis of the roles these features played in the invention. In Ajem Laboratories, supra, the Court, in discussing the concept of reduction to practice in the context of the on sale defense, stated: This court has previously held (in a case dealing with Section 102(g)) that for patent purposes an invention may be reduced to practice by building a working model and operating it under simulated field conditions without the necessity of showing successful commercial use: “Satisfactory reduction to practice of an invention does not, however, demand proof of successful commercial use. It does demand tests which successfully prove practical utility for its intended use. The Court of Customs and Patent Appeals has outlined these principles thus: To constitute an actual reduction to practice of a machine, the device must be completed in an operative form capable of successfully demonstrating its practical utility in its intended field of use. Unless the device is of such a nature that by its very simplicity its practical operativeness is manifest, the machine must be tested under actual working conditions in such a way as to demonstrate its practical utility for its intended purpose. Patents, 1219. Actual performance is required of the function for which the machine is intended with a quality, extent, and character of operation sufficient to indicate its utility in the environment in which it is contemplated to be useful. Id. at 1127-28. Other courts have rendered similar pronouncements in the process of considering a contention that an invention was “on sale.” For example, in Timely Products Corporation v. Aaron, 523 F.2d 288, 302 (2nd Cir. 1975), the Court held that among other things a party asserting the “on sale” bar must show that: The invention [has been] tested sufficiently to verify that it is operable and commercially marketable. This is simply another way of expressing the principle that an invention cannot be offered for sale until it is completed, which requires not merely its conception but its reduction to practice. And in In Re Yarn Processing Patent Validity Litigation, supra, the Court posited a four phase model of the invention-patent process to facilitate its analysis of the concept of reduction to practice. The model used by the Court is as follows: The earliest phase in the development of any invention is its mental conceptualization by the inventor, the time when the idea first dawns. This is typically followed in short order by the second phase, in which the inventor attempts to embody his idea in a working model or prototype. Phase two ends when he has succeeded in rendering his idea a reality by constructing a working model that substantially embodies the claims later to be patented. Then begins the third phase, in which the inventor experiments with his model so as to satisfy himself that it needs no further refinement and to prove its fitness for the intended purpose. Once this is completed, the inventor is free to initiate the last phase of concern to us, in which he secures a limited legal monopoly to himself under the patent laws. This last phase is initiated by his application for the patent and terminates when the patent is finally issued. This is the general factual context of the legal issues before us. Id at 275. With respect to the legal definition of reduction to practice, the Court stated: Thus the legal definition of the date of reduction to practice appears to equate it precisely with the end of the experimental period for purposes of § 102(b). At least one commentator has clearly equated the two. [T]he law on experimental use has developed mainly from the diverse jurisdictions in infringement cases and has had less than homogeneous treatment. It is safe to say, therefore, that not all courts will recognize that the determination that a public use is excused as experimental depends upon a finding that there has not been at that point an actual reduction to practice of the claimed invention. Nonetheless, no other reasonable basis for the determination exists in the light of the patent statute. Kayton, This Year (1966). In Patent Law, 35 Geo.Wash.L.Rev. 720, 727 (1967). The purpose of the experimental exception to § 102(b) is to allow the inventor sufficient time to perfect his invention. An invention is “perfected” for purposes of patentability once it has been reduced to practice by sufficient testing and experimentation to demonstrate its utility. At that point, then, further experimentation is not necessary before applying for a patent, and it would seem that the experimental period should end. Id. at 280-81 (Citations omitted). On the basis of these decisions, the Court is of the opinion that the invention was not reduced to practice before the critical date and that the “on sale” bar does not apply. Although the three-axis numerical system control is not specified in the invention, the claims of the invention clearly read on a machine with automatic tool changing capability. Automatic tool changing in the machine ordered by Eimco and the machine shown as the preferred embodiment of the invention would be impossible without three-axis control to align the spindlehead and magazine and thereafter, to cause insertion and withdrawal of tools from the magazine. However, even if the three-axis numerical control system were present at the February 17, 1959 demonstration, the absence of a means for automatic spindle orientation is clearly fatal to the plaintiff’s contention that the invention was reduced to practice on that date. The absence of such means required that the spindle in the machine demonstrated be moved by jogging it with a pendant control device. In other words, the system was not fully automatic because an operator was required to operate the pendant control. As a result, it is clear that Seager’s requirement for a fully automatic machine like that described in the patent in suit was not met. Some courts have recognized that a reduction to practice can occur even though minor or insignificant refinements must be made. See e. g. Kraus v. Emhart Corp., 320 F.Supp. 60 (N.D.Cal.1970). Such decisions have no applicability to this case. The addition of means to stop the spindle in a predetermined angular position was neither minor nor insignificant. It is clear from the record in this case that spindle orientation is necessary to automatically change keyed tools in such a way that a tool will retain the same predetermined angular position relative to the spindle each time it is inserted in the spindle. It is equally apparent that the spindle orientation feature is one of the most important differences between the invention claimed by the patent in suit and the prior art presented in this case. As noted previously, until the invention of Stephan et al. machines had been patented which changed tools automatically in such a way that the angular position of the tool in the spindlehead was repeated within a few degrees for each use of the tool. Such machines were incapable of changing keyed tools, however. Similarly, machines had been produced which were capable of changing keyed tools automatically. However, these machines were such that angular orientation of the tool and spindlehead was not assured. In this regard, it is also important to note that one of the major thrusts of Seager’s concept was not only to have a machine which changed tools automatically, but also to have a machine which could use keyed tools. Thus, the fact that the continuation application of Stephan et al. states that the invention was not limited to changing keyed tools, does not detract from the fact that the desire to automatically change keyed tools was a principal factor in the inventors’ minds and an important feature of the invention. Based upon the record, then, it is impossible for the Court to conclude that the February 17, 1959 demonstration constituted a reduction to practice. Absent a means for spindle orientation, it can hardly be said that the invention was essentially complete at the time of the invalidating sale or at any time before the critical date. See Dart Industries, supra at 1365. Nor can it be said that the machine was completed in an operative form capable of demonstrating its practical utility in its intended field of use, see Ajem Laboratories, supra at 1127, or that the invention was in such a state on February 17, 1959, that further experimentation was not necessary before applying for a patent. See In Be Yarn Processing, supra at 281. In spite of this, the plaintiff contends that the Court should hold that the February 17, 1959 demonstration constituted a reduction to practice because spindle stoppage was old in the art and only routine skill was required to build the patented invention. To be sure, both Seager and Meinke expressed their satisfaction that the invention could be built following the February demonstration. This argument, however, overlooks the fact that the fully automatic nature of the machine was not demonstrated on February 17 and that discussions regarding stopping the spindle continued after the critical date. In fact, spindle stoppage was not even achieved to Seager’s satisfaction when the machine was demonstrated in October, 1959. Furthermore, Seager’s deposition testimony clearly shows that following the February 17, 1959 demonstration he was still uncertain of the success of the venture and that, as a result, he was still concerned with having a conventional Lucas machine to fall back on if the project failed: Q. Now, do you know approximately when this demonstration [the February 17, 1959 demonstration] or test was conducted? A. I think it would be early in the year of ’59. Q. And then following that demonstration what was the next highlight? A. Well, I think then we formalized an order, which we have already gone through, in which we left some things out. In other words, we made a lot of assumptions — we think we can do this, but we are not sure. So Eimco took the position, okay, we have got to buy a boring mill — no. We have got to buy two boring mills. But we don’t know whether we are going to get what we are looking for. Therefore, we will get the machines on the basis that if we fail we still have a boring mill — it’s the same as if we bought a standard boring mill except it would be a little more sophisticated. At that we wouldn’t have had a tape control unit on it at that point. We would have a pendant control. So we could have used it just as a standard boring mill. Plaintiff’s Exhibit 284 at 133. Seager’s testimony also makes it clear that the spindle orientation problem was not as easily solved as the plaintiff contends: Q. What was the position of Lucas at this time? Were they saying we could do it? A. Lucas was saying we can do it, yes. Mr. Stephan said, “I know I can stop the spindle.” And without going into a lot of detail, he made a number of attempts at various things before he came up with a final answer. Q. Was he present at this demonstration also? A. Yes. Q. And was he satisfied with it at the end of the demonstration? A. Well, except he couldn’t stop the spindle, and I wasn’t satisfied with it either. I mean, this was part of the development program. Plaintiff’s Exhibit 284 at 133-34. Thus, Seager still recognized the possibility that the project might fail and, accordingly, viewed Eimco’s agreement to design and procure the magazine and holding fixtures as a financial risk: . Now, had we failed on this thing, we would have then had fifteen or twenty thousand dollars worth of tools, all the tools, which would have been okay. But the magazine and the holding fixtures probably would have been a waste of money. So we stood to possibly throw eight or nine thousand dollars down the drain. So this was a calculated risk that management was willing to take, because we needed the machine anyway. Plaintiff’s Exhibit 284 at 134-35. Based on this testimony, the Court concludes that the plaintiff’s claim that further development of the machine demonstrated on February 17 involved only routine skill is unpersuasive and that the invention as described in the patent was not sufficiently reduced to practice on that date to assure its success and obviate the need for further experiment before the filing of a patent application. In addition, whether the means for stopping the spindle involved routine work or invention, it is apparent that spindle stoppage was an essential part of the invention and was not present in a prototype or model of the machine until September, 1959. In short, since the invention in this case concerns a machining center which has the capability of changing keyed tools automatically, the Court does not believe that the demonstration of a machine which had few of the capabilities of the invention and which manifestly could not change tools automatically constitutes a reduction to practice of the invention. Cf. Fredkin v. Irasek, 397 F.2d 342, 55 C.C.P.A. 1302, 158 U.S.P.Q. 280 (C.C.P.A.1968). A similar situation existed in Amerio Contact Plate Freezers, Inc. v. Belt-Ice Corporation, 316 F.2d 459 (9th Cir. 1963), where the appellant contended that an invention had been placed on sale prior to the critical date. The patents in suit involved machines for automatically freezing packaged foods. Prior to the critical date, the inventor had done some testing, but was unable to complete his testing because freezer plates which he had ordered had not been delivered. With respect to these plates, the Court stated: Knowles [the inventor] testified that he knew the plates would work because they had been in use for years. But, until the plates were completely installed and the machine set up, it was not possible to test, by mechanical means, whether the plates would stop at the right location, engage the dogs properly, and move all the way up and down. Id. at 461, n.5. The Court went on to hold that the failure to have the invention constructed at the time of the alleged sale was fatal to the “on sale” defense. Like the inventor in Amerio, the inventors, in this case, although believing they would succeed, could not have constructed or sufficiently tested their invention prior to the critical date to prove that it would perform in the way expected. Consequently, the Court is of the opinion that the invention was not reduced to practice on or before April 27, 1959. Furthermore, the Court is of the opinion that the authority relied on by the plaintiff in support of what is in essence an obviousness argument is inapplicable to the case at bar. The principal case relied on by the plaintiff is Timely Products Corporation v. Aaron, supra, where the Court held that one of the requisites for applying the “on sale” bar is that the complete invention claimed must have been embodied in or obvious in view of the thing being offered for sale. Other cases have recognized that obviousness plays a role in determining whether a particular device which is sold (or is in public use) constitutes the invention. Frantz Manufacturing Co. v. Phoenix Manufacturing Co., 457 F.2d 314 (7th Cir. 1972); Tool Research and Engineering Corp. v. Honcor Corp., 367 F.2d 449 (9th Cir. 1966), cert. denied 387 U.S. 919 (1967). However, these cases do not stand for the proposition that a reduction to practice may be implied from the fact that the invention is obvious from what has been sold. Indeed, when applied in the “on sale” context the proposition most evident from these cases is that the concept of obviousness can be used to determine whether the subject of the sale was the invention or something else. More specifically, as set forth in these cases, the obviousness criteria appears to apply where the inventor contends that insignificant or minor differences between an invention and the article placed “on sale” or in public use precludes the application of § 102(b). In this case, the Court has already determined that question in favor of the plaintiff, to the extent that it has held that the transaction in this case involved the invention. As a result, the Court does not believe that the plaintiff’s obviousness argument does away with the requirement that a reduction to practice prior to the critical date be shown in order to make the § 102(b) bar effective. The Court, in Timely Products, the case principally relied on by the plaintiff, implicitly recognized this by stating that in addition to the requirement of showing that the invention was embodied in or obvious in view of the article being sold, the party seeking the benefit of the defense must also show that the invention was completed or reduced to practice. Clearly this requires a different showing than that the invention was obvious in view of the article sold. Consequently, the Court is of the opinion that it must look to the cases involving the issue of reduction to practice cited above rather than the cases dealing with obviousness to determine whether the invention was sufficiently completed prior to the critical date for the “on sale” bar to apply. Since the Court has determined that the facts of the case do not show that the February 17, 1959 demonstration constituted a reduction to practice within the legal meaning of that term, the Court is of the opinion that plaintiff’s obviousness argument cannot be used to turn that demonstration into an invalidating event. Despite the facts that the evidence surrounding the development of the invention does not show a reduction to practice on the date alleged by the plaintiff, it is argued nonetheless that the admissions of Stephan et al. before the patent office establish February 17, 1959, as the reduction to practice date. The statement most heavily relied on by the plaintiff is the Rule 131 affidavit submitted by Seager and quoted extensively above. The affidavit recites facts which are not really in dispute but the plaintiff claims that because the affidavit was used to support a claim of reduction to practice on February 17, the defendants should somehow be bound to that date. The problem with this argument is that the affidavit was submitted to overcome a Patent Office rejection of Claims 17 and 18 of the patent in suit; claims which by their terms do not include means for stopping the spindle in a predetermined angular position. Hence, the affidavit is easily and consistently read as alleging a reduction to practice of only certain parts of the machine described in the patent in suit. As a result, the Court concludes that this affidavit is not dispositive of the reduction to practice issue. The other statement, on which the plaintiff has placed little reliance in his post-trial filings, is the one quoted above from the interference brief of Stephan et al. which states that had Stephan et al. not overlooked the February 17 demonstration when preparing its preliminary statement that demonstration would have been alleged as a reduction to practice. The Court is of the opinion that this statement is not dispositive of the reduction to practice issue. First, as the Court held in its Memorandum Opinion regarding the cross motions for summary judgment, the requisites for the application of the doctrine of judicial estoppel are not present in this case. Consequently, the statement must be considered in the same way as any other evidence and the defendants are not precluded from arguing or offering evidence showing that February 17 was not the reduction to practice date. Second, as noted above, the facts surrounding the demonstration clearly show that the invention was not reduced to practice in the legal sense on February 17. Third, the statement in the brief is isolated and did not represent the official position of Stephan et al. And finally, as set forth more fully in the Court’s earlier opinion, Stephan et al. gained nothing by this assertion. Accordingly, the Court holds that neither of these statements is sufficient to disturb its finding that the invention was not reduced to practice prior to the critical date. Even if the invention had been reduced to practice as asserted by the plaintiff, the Court is of the opinion that the circumstances surrounding the invention mandate a holding that the transaction between Lucas and Eimco was not a sale within the meaning of § 102(b). Specifically, the Court finds that the invention was jointly developed by Seager of Eimco and Stephan of Lucas and, thus, was not on sale from Lucas to Eimco. One factor leading to this conclusion is that while the evidence clearly shows that the machine was built primarily by Lucas, it is also clear that Eimco undertook to design the magazine and have it built by a subcontractor. Even apart from the design of the magazine by Eimco, the record supports a finding of joint development. The evidence clearly shows that Seager of Eimco was involved in the invention from the outset. Indeed, it appears that many of the decisions regarding the machine resulted from discussions between Seager, Stephan and Meinke. To be sure, Lucas was saddled with the primary burden with respect to the invention. This, however, does not detract from the inescapable conclusion that Seager, as a representative of Eimco, was involved in the conception of the invention. The facts surrounding the filing of the patent application and the eventual assignment of sole ownership of the patent is even more compelling evidence in support of the Court’s conclusion that the invention was the subject of a joint development rather than a sale. It appears from the record that Lucas was interested in obtaining a patent on the machine developed by Seager and Stephan. As a result, it negotiated with Eimco through its patent counsel and came to an agreement whereby Eimco would not exercise its right to an assignment of Seager’s patent rights and Seager would in turn assign those rights to the New Britain Machine Company of which Lucas was a division. In consideration for said assignment, Seager was to receive $500, if and when the patent was granted, and Eimco received a non-exclusive royalty free license to manufacture,