Full opinion text
RULING ON CROSS-MOTIONS FOR PRELIMINARY INJUNCTION JOSÉ A. CABRANES, District Judge: CONT ENTS I. INTRODUCTION 484 II. FINDINGS OF FACT 485 A. General Information—Parties 485 B. General Information—Trocars 486 C. ’773 Patent 487 1. Validity of the Patent 487 a. Was there a Prior Public; ation? 487 b. Was the Alleged Prior Pi iblication “Enabling”? 489 c. Is the Device Claimed in tl Markelov Prospectus? íe '773 Patent Obvious in Light of the 490 d. Was there a Failure to Disclose the “Best Mode” for Practicing the Invention? 490 2. Infringement of the Patent 491 a. Does the Surgiport Infringe Claim 50 of the ’773 Patent? 491 b. Does the Surgiport Infringe Claim 34 of the ’773 Patent? 492 c. Does the Surgiport Infringe the ’773 Patent Under the Doctrine of Equivalents? 492 3. Irreparable Harm to Plaintiffs 493 4. The Balance of Hardships/Good Faith 493 5. The Public Interest 494 D. ’030 Patent 495 1. Validity of the Patent 495 a. Is the ’030 Patent Obvious in Light of the ’773 Patent? 495 b. Was There a Prior Public Use of the ’030 Patent Before February 24, 1985? 495 2. Infringement of the Patent 496 a. Does the Endopath Infringe Claim 1 of the ’030 Patent? 496 b. Does the Endopath Infringe the ’030 Patent Under the Doctrine of Equivalents? 497 3. Irreparable Harm to Defendant 498 4. The Balance of Hardships/Public Interest 498 III. DISCUSSION 498 A. ’773 Patent 499 1. Likelihood of Success on the Merits 499 a. Validity 500 (i) Prior Publication 500 (ii) “Enabling” 501 (iii) Obviousness 501 (iv) Best Mode 501 (v) Summary 502 b. Infringement 502 (i) Claim 50 502 (ii) Claim 34 503 (iii) Doctrine of Equivalents 504 (iv) Summary 504 c. Conclusion 504 2. Irreparable Harm 504 3. Balance of Hardship 505 4. Public Interest 505 5. Summary 505 B. ’030 Patent 505 1. Likelihood of Success on the Merits 505 a. Validity 506 (i) Obviousness 506 (ii) Prior Use 506 (iii) Summary 507 b. Literal Infringement 507 (i) Triangular Base 507 (ii) Triangular-Shaped Opening 507 (iii) Parabolically Shaped Bevels 508 (iv) General Registry 508 c. Doctrine of Equivalents 508 d. Summary 509 2. Irreparable Harm 509 3. Balance of Hardships 509 4. Public Interest 509 5. Summary 509 IV. CONCLUSION 510 This case concerns “trocars” — sharp-pointed surgical instruments used to establish a path of entry into an anatomical cavity through which a camera as well as other instruments may be inserted in order to perform minimally invasive surgical procedures. Prior to 1987, the only trocars generally available were reusable instruments made from stainless steel. Within the last ten years, doctors have improved the “classic” trocar by including a spring-loaded safety shield that snaps forward to cover the sharp point once the trocar has penetrated the anatomical wall. In addition to the safety shield, the parties to this action currently manufacture and sell tro-cars that are disposable, guaranteeing that the trocars are both sharp and sterile. The projected growth in the use of disposable safety trocars, particularly for procedures such as cholecystectomies (gall bladder removals), means that there is much at stake in determining who has the right to manufacture and sell these surgical instruments. Ethicon, Inc. (“Ethicon”) and Dr. Inbae Yoon (“Yoon”) have brought this action against United States Surgical Corporation (“USSC”), and USSC has counterclaimed against plaintiffs. Plaintiffs seek a preliminary injunction that would enjoin defendant from continuing to sell all safety tro-cars currently being marketed under the name of “Surgiport” until it may be determined whether USSC has infringed U.S. Patent No. 4,535,773 (“ ’773 Patent”). Defendant has cross-moved for a preliminary injunction, claiming that Ethicon has infringed U.S. Patent No. 4,654,030 (“ ’030 Patent”), and USSC seeks an order enjoining Ethicon from continuing to sell all safety trocars currently being marketed under the name of “Endopath” and any other surgical trocars that employ the same safety shield configuration as the “Endopath.” After an evidentiary hearing lasting eleven days, the parties submitted post-hearing findings of fact and conclusions of law. After final argument on March 13, 1991, the motions were deemed submitted for decision. I. INTRODUCTION This is a dispute between Ethicon and USSC, two leading manufacturers of medical and surgical devices. Dr. Inbae Yoon, a doctor and inventor of surgical instruments, entered into an agreement with Ethicon to license his patent for a trocar with a spring-loaded safety shield — the ’773 Patent. USSC has marketed a disposable trocar with a spring-loaded safety shield since 1987, and in 1989, Ethicon sued USSC for infringement of Yoon’s ’773 Patent. USSC denies that it is infringing the patent and contends further that Yoon’s ’773 Patent is invalid. Ethicon has filed a motion for a preliminary injunction which, if entered, would compel USSC to refrain from selling and manufacturing the Surgiport pending a final resolution of the dispute at trial. To grant Ethicon’s motion for a preliminary injunction, the court must conclude: (1) that Ethicon is reasonably likely to succeed on its claims at trial; (2) that Ethicon can show that it is being irreparably harmed by USSC’s conduct; (3) that the balance of hardships tips in Ethicon’s favor; and (4) that the issuance of the injunction is in the public interest. After a full evidentiary hearing and the submission of post-hearing memoranda of law, I have concluded the following: (1) Ethicon is reasonably likely at trial to sustain its burden in showing that the ’773 Patent is valid; (2) Ethicon is not reasonably likely at trial to prevail on its claim of infringement; (3) Ethicon has failed to show that it is being irreparably harmed by USSC's sale of the Surgiport; (4) Ethicon has not shown that the balance of hardships tips in its favor; and (5) Ethicon has not shown that this injunction would be in the public interest. Therefore, Ethicon’s motion for a preliminary injunction is denied. USSC owns the rights to the ’030 Patent, which describes a particular configuration of the trocar cutting head and the trocar safety shield. USSC claims that Ethicon’s disposable trocar, the Endopath, infringes the ’030 Patent because it uses the cutting head and safety shield covered by the patent. USSC has filed a motion for a preliminary injunction which, if entered, would prevent Ethicon from selling and manufacturing the Endopath pending a final resolution of the dispute at trial. As in the case of the ’773 Patent, the court must consider: (1)the likelihood that USSC will succeed on its claims at trial; (2) whether USSC is being irreparably harmed by Ethicon’s conduct; (3) the balance of hardships; and (4) the public interest. After a full evidentiary hearing and the submission of post-hearing memoranda of law, I have concluded the following: (1) USSC is reasonably likely at trial to sustain its burden in showing that the ’030 Patent is valid; (2) USSC is not reasonably likely at trial to prevail on its claim of infringement; (3) USSC has failed to show that it is being irreparably harmed by Ethicon’s sale of the Endopath; (4) USSC has not shown that the balance of hardships tips in its favor; and (5) USSC has not shown that this injunction would be in the public interest. Therefore, USSC’s motion for a preliminary injunction is also denied. II. FINDINGS OF FACT Based on the testimony presented at the evidentiary hearing and on the exhibits admitted in full during the course of the hearing, I hereby make the following findings of fact: A. General Information — Parties 1.Yoon is a medical doctor who resides in Phoenix, Maryland. He is the inventor of the ’773 Patent issued by the United States Patent and Trademark Office on August 20, 1985. The ’773 Patent describes and claims a spring-loaded safety shield as part of a trocar. See Amended Complaint (filed Dec. 13, 1989) (“Complaint”), 1111 3 & 7; Plaintiffs’ Exhibit (“PX”) 8 (Defendant’s Exhibit (“DX”) 44) (’773 Patent). 2. It is undisputed that Ethicon is a New Jersey corporation having its principal place of business in Somerville, New Jersey and that it is a wholly-owned subsidiary of Johnson & Johnson, Inc. engaged in the sale and manufacture of a variety of medical and surgical devices. See Complaint, 112. 3. Ethicon is the exclusive licensee of rights in the ’773 Patent. Yoon licensed Ethicon in an agreement dated June 27, 1988 and amended on November 15, 1989. See PX 55 (License and Royalty Agreement); PX 56 (DX 46) (Agreement Amendment). 4. USSC is a Delaware corporation with its principal place of business in Norwalk, Connecticut. USSC sells and manufactures a variety of medical instruments, including surgical stapling devices and other minimally invasive surgical products. See testimony of Bruce Lustman (Oct. 16, 1990), Hearing Transcript (“Tr.”) 532. 5. Since February 1987, USSC has manufactured and sold a line of surgical tro-cars with spring-loaded safety shields under the name “Surgiport.” USSC’s current Surgiport product line consists of 3mm, 5mm, 7mm, 8mm, 10mm, 11mm and 12mm size trocars. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 475-77; DX 70A (chart showing USSC’s laparoscopic instruments); PX 3a (11 mm Surgiport); PX 3b (7 mm Surgiport); PX 3c (8 mm Surgiport). 6. In January 1990, Ethicon introduced its safety trocar, the “Endopath,” in 5mm, 7/8mm and 10/llmm sizes. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 491-92; DX 70B (chart showing Ethicon’s laparoscopic instruments). 7. EndoTherapeutics Corporation (“Endo”) is a small California company that owns the rights to the ’030 Patent. In April 1985, it began marketing the “Endo-port,” a disposable safety trocar. In June 1986, Endo entered into an exclusive licensing agreement with USSC for rights in the ’030 Patent. See PX 25 (DX 102) (’030 Patent); testimony of Dr. Frederic H. Moll (Oct. 24, 1990), Tr. 1272-73; DX 1 (License Agreement between Endo and USSC dated June 12, 1986). B. General Information — Trocars 8. A trocar is a surgical instrument used to establish a path of entry into an anatomical cavity. It is used primarily in laparoscopy, a minimally invasive procedure whereby a small incision is made into the abdomen through which a tube is inserted, permitting the surgeon to introduce a camera or similar viewing system as well as surgical instruments into the cavity. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 350; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 669. 9. The “classic” trocars consist of a tube (the cannula) and a cutting element (the obturator or stylet). The obturator, which fits within the cannula, is a shaft with a sharp piercing tip at its end. The “classic” trocar does not include a safety shield. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 59-60, 74. 10. To make the requisite hole, the tro-car is pressed against the body until the obturator punctures the body wall and extends into the cavity. Once that is done, the surgeon removes the obturator, leaving the cannula.protruding through the body wall so that instruments can be inserted to view internal organs, drain fluids or perform surgical procedures. More than one trocar is often used in a given procedure. See DX 9 (Zucker & Bailey, Atlas of Endo Cholecystectomy 5 (1990)); testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 351; testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 479; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 675. 11. In laparoscopic surgical procedures, the wall of the body cavity is separated from the internal organs by the introduction of gas into the body cavity. This process is known as insufflation. Insufflation can be performed through a Verres needle prior to the insertion of a trocar or after insertion of the trocar by the introduction of gas through the outer jacket of the trocar. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 359-61; PX 22 (Verres Needle); PX 5 (videotape of lapa-roscopic surgery performed with safety trocars). 12. There are a variety of surgical techniques, including choledoscopy, where tro-cars are used without insufflation. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 384. 13. From 1962, when trocars were first used in laparoscopy, until 1987, the only trocars available on a wide-scale basis were reusable (or non-disposable) devices made from stainless steel. See DX 9 (Zucker & Bailey, Atlas of Endo Cholecystectomy 1); testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 459-60; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 672-74. 14. Reusable trocars have several disadvantages, including the need to sharpen the piercing tip and the need to disassemble, sterilize and reassemble the device after each use. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 459-61; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 672-74. 15. The “classic” trocars — those without safety shields — are potentially dangerous because they may perforate vital organs. At least three doctors claim to have developed a spring-loaded safety shield that represents a modification to the standard trocar: Dr. Sergei Markelov, who applied for a Soviet inventor’s certificate for the spring-loaded safety trocar on February 4, 1980; Yoon, who applied for a U.S. Patent for his spring-loaded safety trocar on March 26, 1982; and Dr. Frederic H. Moll, who applied for a U.S. Patent on August 24, 1983. See DX 18 (letter of Feb. 4, 1980 from Rector, Tselinograd Medical Institute to All-Union Scientific Research Institute of State Expert Patent Analysis); PX 8 (DX 44) (’773 Patent); DX 101 (U.S. Patent No. 4,601,710); testimony of Dr. Frederic H. Moll (Oct. 24, 1990), Tr. 1244-45. C. 773 Patent 16. The ’773 Patent discloses and claims products and methods relating to trocars with insufflation capacity and safety shields designed to prevent injury to body organs upon the trocar’s penetration into the body cavity. See PX 8 (DX 44) (’773 Patent). 17. One embodiment of the safety tro-car appearing in Figure 1 of the ’773 Patent discloses a cylindrical spring-loaded safety shield which encases the obturator or cutting shaft and which is in turn encased by the trocar’s outer jacket. This embodiment of the invention is typical of the devices covered by Claim 50, and the associated method of use of this embodiment is typical of the methods covered by Claim 34 of the ’773 Patent. See PX 8 (DX 44) (’773 Patent). 1. Validity of the Patent a. Was there a Prior Publication? 18. Dr. Sergei Markelov has been a surgeon for seventeen years, and he is a chief physician of the Tselinograd district in the Soviet Union. From 1978 to 1988 he was affiliated with the Tselinograd State Medical Institute (“Institute”), a hospital and medical teaching and research facility located in the city of Tselinograd within the republic of Kazakhstan. Kazakhstan is the second largest republic in the Soviet Union. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 52-54, 84-85; DX 12 (Markelov Autobiography); DX 41 (excerpt from Directory of Soviet Research Organizations). 19. During the period between 1978 and 1980, an American exhibition of modern agriculture was presented in Tselinograd. Americans visited the city during the period of the exhibition. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 56-57; DX 63 (copy of brochure entitled “Agriculture in the USA” used at exhibition in Tselinograd). 20. In early 1978, while working in the emergency hospital of the Institute, Dr. Markelov became concerned about the serious risk of perforation of internal organs posed by standard reusable trocars. Dr. Markelov conducted an extensive search of literature and patents from the USSR, United States, Great Britain, France, West Germany and Japan to determine if anyone had found a solution to this problem. Since he found that no one had provided an answer to the problem, Dr. Markelov proceeded to seek his own solution. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 63-65. 21. By March 1979, Dr. Markelov had designed and developed a safety trocar incorporating a spring-loaded safety shield that would spring into place to cover the cutting tip of the obturator upon penetration of the abdominal wall. Dr. Marke-lov explained that once the design was complete he had thirty instruments manufactured at a major manufacturing facility in Tselinograd, the Industrial Association Tselinogradselmash, so that he could test and use them in actual surgery. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 65, 68-69, 71; DX 15 (acknowledgement from factory to Dr. Markelov that thirty trocars were manufactured between February and March 1979). 22. Between March and September 1979, Dr. Markelov used his safety trocar in a number of successful operations in the emergency room of the Institute. In February 1980, the Institute assembled the materials needed to apply for an “inventor's certificate” and submitted them to the State Committee for Inventions (“State Committee”), the national Soviet agency that administers the Soviet Patent system. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 71-72, 76-79; DX 16 (Statement of Results for testing of the trocar for laparocentesis); DX 17 (statement of Conclusion from Secretary of Science and Patent Expert of the Institute); DX 18 (supporting letter from Rector of Institute to All-Union Scientific Research Institute of State Expert Patent Analysis). 23. Dr. John A. Martens is an expert on the Soviet patent system and on the Soviet system for managing scientific information. His testimony concerning the way the system itself functions was generally credible. 24. In the Soviet system, an inventor has the option to apply for either an “inventor’s certificate” or a patent. If he chooses the former, he transfers all rights in the invention to the State and will receive only the “benefit” of public recognition. A patent, on the other hand, permits the inventor to retain the right to license his invention to the State, thereby receiving potential royalties. Both would give an inventor international priority according to applicable international conventions. If the criteria of patentability are established to the satisfaction of the State Committee, an inventor’s certificate or patent will be issued. See testimony of Dr. John A. Martens (Oct. 23, 1990), Tr. 1033-37. 25. The Center for Scientific and Technical Information (“CSTI”) network, which came into existence in the 1960’s, plays an important role in the rapid dissemination of new technological information through the Soviet system. See testimony of Dr. John A. Martens (Oct. 23, 1990), Tr. 1024-28. 26. It is the responsibility of each CSTI, such as the Tselinograd Center, to distribute promptly to the other Centers all important technological information materials printed by them and the concurrent responsibility of all receiving Centers to index the material promptly for use by the interested public. The primary goal of the CSTI network is the speedy, effective dissemination of new scientific developments. See testimony of Dr. John A. Martens (Oct. 23, 1990), Tr. 1024-25, 1053-54. 27. As of January 1981, there were 111 CSTIs dispersed geographically throughout the Soviet Union in such cities as Moscow, Leningrad, Riga, Kiev and Minsk. See testimony of Vladimir Shevchenko (Oct. 22,1990), Tr. 892; DX 71-A (map of Soviet Union indicating locations of CSTI centers as of January 5, 1981); DX 71-B (chart listing CSTI centers as of January 5, 1981). 28. These CSTI were open to and used by a broad cross-section of the Soviet public, including scientists, students, information specialists and engineers. See testimony of Vladimir Shevchenko (Oct. 22, 1990), Tr. 902-03; testimony of Dr. John A. Martens (Oct. 23, 1990), Tr. 1047-48, 1060-62; DX 75 (article entitled “Certain Issues of Utilization of Patent Holdings Accumulated by the Inter-Branch Agencies for the STI”), table 3; DX 30 (affidavit of Pyotr Tarasov). 29. Mr. Pyotr Tarasov, the Director of the Tselinograd Center since 1973, states in his affidavit that the Markelov Prospectus was printed and disseminated to other CSTIs, in accordance with applicable laws, within 10 to 15 days of its January 5, 1981 printing. Because plaintiffs were unable to cross-examine Mr. Tarasov, I credit this affidavit only in so far as it corroborates Dr. Martin’s testimony. See DX 30 (affidavit of Pyotr Tarasov). 30. On July 18, 1980, the State Committee acknowledged receipt of the Institute’s application for an inventor’s certificate, naming Dr. Markelov as inventor. This acknowledgment confirmed that the date on which the application was received was June 17, 1980. This is the key date for establishing priority of invention. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 79; DX 19 (acknowl-edgement from State Committee of the USSR for Inventions and Discoveries). 31. In mid-1980, after the State Committee acknowledged Dr. Markelov’s application, Dr. Markelov prepared a written document which he called a “prospectus.” He sent copies of this document, which contained drawings of his trocar and a description of its operation, together with some manufactured safety trocars, to approximately eight doctors within the Soviet Union for their review and use. He encouraged these physicians to utilize the tro-ears and report back to him. He placed no obligation of secrecy of any kind upon the doctors. He received letters back from several colleagues. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 80-82, 84-89; DX 20 (prospectus entitled “Trocar for Laparo-centesis”); DX 21 (letter from Dr. Voronezh to Dr. Markelov, Oct. 9, 1980); DX 22 (letter from “Petya” to Dr. Markelov, Jan. 3, 1981). 32. In late 1980, after receiving favorable reports from his colleagues, Dr. Mar-kelov prepared a second prospectus describing his device (“Markelov Prospectus”). He did this in order to disclose to physicians and others on a broader scale both how the device worked and how it could be made. He had this second prospectus printed at an official publishing house, the Tselinograd Center for Scientific and Technical Information (“Tselinograd Center”). He gave one of his trocars to an expert draftsperson who prepared a drawing of the instrument for inclusion in the prospectus. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 90-96; id. (Sept. 27, 1990), Tr. 144. 33. The Tselinograd Center printed the prospectus on January 5, 1981. Dr. Marke-lov requested and received 150 copies of his prospectus so that he could personally distribute them to interested physicians and scientists. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 91, 96-97; DX 23 (prospectus entitled “Trocar”). 34. Dr. Markelov’s personal copy of the Markelov Prospectus indicates that only 150 copies were printed. It is undisputed, however, that this exhibit is a copy of one of the original 150 prospectuses printed by the Tselinograd Center for Dr. Markelov’s personal use. If additional copies had subsequently been printed, this fact would not be indicated on the back of one of the original 150 copies. See DX 23 (Markelov Prospectus); testimony of Dr. Regina Jouk (Oct. 24, 1990), Tr. 1169-71. 35. Dr. Markelov sent about 20 or 30 prospectuses to physicians in major areas of the USSR. In addition, he disseminated his prospectus to approximately forty doctors, professors and medical students at a February 20, 1981 meeting of the Tselino-grad Surgical Society (the “Society”), an organization of about 100 surgeons practicing in the Tselinograd region. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 97, 99-100. 36. At the meeting of the Society, Dr. Markelov demonstrated his safety trocar, distributed copies of his prospectus, and answered questions from the other members. At the conclusion of the meeting, the Society voted to recommend Dr. Markelov’s trocar for broad use in surgical practice. See testimony of Dr. Sergei Markelov (Sept. 26, 1990), Tr. 99-102; DX 24 (excerpts from transcript of the Society’s meeting on February 20, 1981). b. Was the Alleged Prior Publication “Enabling”? 37. Dr. Stephen J. Tricamo is Head of the Mechanical Engineering Department at the Stevens Institute of Technology, in Ho-boken, New Jersey. He is an expert in mechanical design, design of machine components, and design of mechanical systems. His testimony concerning whether someone skilled in the art could make the device described in the Markelov Prospectus was generally credible. Professor Ernesto E. Blanco, Adjunct Professor in the Department of Mechanical Engineering, Division of Design, of the Massachusetts Institute of Technology, is an expert in the design of surgical instruments. However, his testimony concerning whether a person skilled in the art of making surgical instruments could construct a trocar by reading the Markelov Prospectus, including the illustration, text, and description of the purpose of the instrument, was generally not persuasive. See DX 43 (curriculum vitae of Dr. Stephen J. Tricamo); testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 727-30; See PX 6 (curriculum vitae of Professor Ernesto E. Blanco). 38. The illustration of the trocar included in the Markelov Prospectus is not drawn to scale. It does not contain an indicated scale that would permit one to use the drawing alone to make a model of the trocar. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 738; DX 84 (excerpt from J. Duff, Problems in Industrial Technical Illustration 2). 39. One skilled in the art of making surgical instruments would examine the illustration contained in the Markelov Prospectus in light of the entire disclosure. The device described is a surgical trocar to be used in laparocentesis, as indicated in the written text of the document. One skilled in the art would have knowledge of the reusable trocars in use at the time of the Markelov invention. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 741-43. 40. The illustration of the trocar contained in the Markelov Prospectus contains certain “gaps,” but these are conventional exaggerations that one skilled in the art of making surgical instruments would recognize as a means of clarifying both that spaces between the structures exist and that the structures themselves have certain thicknesses. In light of the purpose of this type of trocar, one skilled in the art would know that there could not be wide gaps if the device were to perform as intended. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 742-43; DX 85 (excerpt from T. French & C. Vierck, A Manual of Engineering Drawing for Students and Draftsmen 220 (1953)). c. Is the Device Claimed in the ’773 Patent Obvious in Light of the Markelov Prospectus? 41. The testimony of Professor Ernesto E. Blanco on the question of whether the device claimed in the ’773 Patent (the “Yoon trocar”) was obvious in light of the Markelov Prospectus was generally credible. The testimony of Dr. Stephen J. Trica-mo on this question was unpersuasive. 42. In the Markelov Prospectus, the tro-car safety shield is retained within the cannula after it pierces the body wall because “stops” connected to the shield run up against the end of the grooves in the cannula. This is an “external” mechanism for stopping the safety shield from falling out of the open end of the cannula. In the Yoon trocar, the shield is restrained internally because of a reduction in the diameter of the cannula. See testimony of Professor Ernesto E. Blanco (Oct. 25, 1990), Tr. 1482-87; PX 8 (DX 44) (’773 Patent), fig. 1. 43. Because of these grooves, the device claimed by the Markelov Prospectus (the “Markelov trocar”) cannot be used, by itself, for procedures requiring insufflation. See testimony of Professor Ernesto E. Blanco (Oct. 15, 1990), Tr. 230-31; testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 391; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 708. 44. However, the Markelov trocar may be adapted for use in insufflation. See testimony of Dr. Sergei Markelov (Sept. 27, 1990), Tr. 170-71; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 708. 45. All of the embodiments shown in the ’773 Patent reveal an outer jacket that completely encloses the safety shield, suggesting that the Yoon trocar was intended to prevent the leakage of fluid, both liquid and gas. See testimony of Professor Ernesto E. Blanco (Oct. 15, 1990), Tr. 237-38. d. Was there a Failure to Disclose the “Best Mode” for Practicing the Invention? 46. When Yoon filed his patent application, he believed that there would be less risk of injury to internal organs if the safety shield did not lock rigidly over the cutting tip, but rather, was flexible (but not so much as to expose the cutting tip) when it came into contact with internal organs. See PX 109 (DX 91) (deposition testimony of Dr. Inbae Yoon (Apr. 5, 1990), at 215-16). 47. There are advantages in having a safety shield that does not lock automatically. For example, were a trocar to lock prematurely, “tenting” might occur when the blunt end of the safety shield is unable to pierce the peritoneum. This could cause tearing and other trauma to the peritoneum. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 399, 401. 48. Each of the commercial embodiments of the safety trocar — the Surgiport marketed by USSC and the Endopath marketed by Ethicon — incorporates safety shield locking devices. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 466-67; testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 402. 2. Infringement of the Patent a. Does the Surgiport Infringe Claim 50 of the 773 Patent? 49. Dr. Stephen J. Tricamo’s testimony concerning whether USSC’s Surgiport infringes Claim 50 of the ’773 Patent was entirely credible. To the extent that Professor Ernesto E. Blanco’s testimony contradicted that of Dr. Tricamo on the question of infringement of Claim 50, it was not persuasive. 50. In order for a safety shield to permit “longitudinal interior passage” of the obturator, the obturator must be insertable and removable from the shield. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 756-58. 51. The drawings and specification of the ’773 Patent confirm that the safety shield of the Yoon trocar permits “longitudinal interior passage” of the obturator by having a shield which is part of and fastened to the cannula. See PX 8 (DX 44) (’773 Patent), fig. 1. 52. In the Surgiport, the obturator and safety shield are joined as a unit, and the cannula is wholly separate. Hence, unlike the Yoon embodiment, the obturator in the Surgiport does not — indeed, it cannot— pass through the safety shield, as required by Claim 50. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 755-58. 53. To provide a proper channel through the body, the obturator of the tro-car must be removed. See, e.g., testimony of Dr. Sergei Marke-lov (Sept. 26, 1990), Tr. 60. 54. When the drafters of the ’773 Patent intended to describe movement “back and forth” — when, for example, they described the movement of the safety shield between the accommodating means (cannula) and the shaft (obturator) — they used the words “reciprocating longitudinally.” When they intended to describe the shield’s capacity to have the obturator go in and out, they used the words “longitudinal interior passage.” See PX 8 (DX 44) (’773 Patent), col. 26, lines 54-56; testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 756, 819-21. 55. The Yoon embodiment was intended to have an obturator that passed through both the shield and cannula. Figure 1 of the ’773 Patent depicts a device where the obturator would be inserted in and removed from the shield and cannula. The Yoon prototype confirms the conclusion that the “longitudinal interior passage” phrase in the Claim means a device where the obturator passes into and out of the cannula/shield unit. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 755-58; PX 8 (DX 44) (’773 Patent), fig. 1; DX 60 (Yoon Prototype). 56. In the case of USSC’s Surgiport, the safety shield is removed from the cannula with the obturator. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 768; see also PX 3a (11mm Surgiport); PX 3b (7mm Surgi-port); PX 3c (8mm Surgiport). 57. Figure 28C of the ’773 Patent does not show a device where the safety shield is removed from the cannula. It shows how the Yoon trocar may be assembled. It does not expand, or alter, the claim as written. See PX 8 (DX 44) (’773 Patent), col. 15 lines 43-48; testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 765-68. b. Does the Surgiport Infringe Claim 34 of the ’773 Patent? 58. Dr. Stephen J. Tricamo’s testimony concerning whether USSC’s Surgiport infringes Claim 34 of the ’773 Patent was entirely credible. To the extent that Professor Ernesto E. Blanco's testimony contradicted that of Dr. Tricamo on the question of infringement of Claim 34, it was not persuasive. 59. Claim 34 describes how to use the Yoon trocar, not how to manufacture it. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 858; DX 83 (’773 File Wrapper), Amendment at 11. 60. Claim 34 of the ’773 Patent was expressly amended to require “inserting an elongate implement having a sharp distal end axially into said [receiving] elongate member and said reciprocating member. ...” In order to infringe Claim 34, the Surgiport would have to be used in such a way that the obturator is inserted into both the cannula and the safety shield at the same time. See DX 83 (’773 File Wrapper), Amendment at 5 (emphasis added); see also testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 859-60. 61. The obturator and safety shield of the Surgiport are manufactured as a single unit. The surgeon would never have occasion to “insert” the obturator of the Surgi-port into the safety shield. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 850-51, 860. c. Does the Surgiport Infringe the ’773 Patent Under the Doctrine of Equivalents? 62. The ’773 Patent is not a wholly novel device. Its incorporation of a safety shield is a significant improvement to the “classic” trocars already in use, but the Yoon trocar is not of such novelty and importance as to mark a distinct step in the progress of the art. See PX 109 (DX 91) (deposition testimony of Dr. Inbae Yoon (Apr. 6, 1990), at 360). 63. The advantages of the safety shield in the Yoon trocar are primarily psychological. There is no medical evidence that it saves lives or avoids injury. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 389. 64. The basic difference between the Surgiport and the Yoon trocar is that in the Surgiport, the safety shield and obturator are a single unit; unlike in the Yoon trocar, neither the safety shield nor the obturator can be removed without the other. See testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 755-56. 65. By removing the shield from the cannula, the Surgiport leaves a wider path of entry for endoscopes and other instruments. In order to use the same size instruments as with the Surgiport, a surgeon would be required to use a Yoon trocar with a larger diameter. The room taken up by the safety shield would require an increased wound size of up to 20%. See testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 682-83; testimony of Dr. Stephen J. Tricamo (Oct. 18, 1990), Tr. 760. 66. The Yoon trocar, in which the safety shield protrudes beyond the cannula while in the body, permits air leakage at the juncture of the cannula and shield. If the shield/cannula unit is not inserted far enough into the abdomen, this juncture may be positioned so that the gas leaks into the abdominal wall, thereby causing a painful condition known as subcutaneous emphysema. See testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 680. 67. Because the safety shield in the Yoon trocar remains in the body and extends about one centimeter beyond the end of the cannula, the shield impairs the operative viewing field. This is especially so if the Yoon instrument is pushed further into the body to prevent the leakage described above, see Findings of Fact, No. 66. See testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 679-80. 68. The protruding spring-loaded safety shield found in the Yoon embodiment may cause tissue that is being removed during an operation to become dislodged and subsequently lost in the abdomen. See testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 683. 69. Because the cutting tip and safety shield in the Surgiport are a single unit, the cutting tip is protected when the obturator is removed from the cannula. In contrast, the cutting tip of the Yoon embodiment is exposed upon removal from the cannula, thereby creating risks of cutting operating room personnel and transmitting viral infections. See testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 681. 3. Irreparable Harm to Plaintiffs 70. USSC had been the only company selling disposable safety trocars before Ethicon entered the market. Even now that Ethicon’s Endopath is competing with the Surgiport, USSC has approximately 95% of the total market. If a company is alone in the market with a good product, surgeons become accustomed to the product, grow to depend on it, and grow accustomed to buying it. This product acceptance is “goodwill” that money cannot buy. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 494, 500-03. 71. Surgeons are generally reluctant to try an equivalent product once they have become accustomed to using a particular product. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 355-56. 72. USSC promotes the use of its Surgi-ports together with its Endo Clip Applier for use in laparoscopic gall bladder removals (“cholecystectomies”), a relatively innovative procedure which allows patients to undergo major surgery with minimal cosmetic scarring and activity restrictions. The Endo Clip Applier may also be used with Ethicon’s Endopaths. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 480-82; testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 422. 4. The Balance of Hardships/Good Faith 73. USSC initially became interested in the possible development of a disposable safety trocar as a result of its contact with Endo in 1985. Endo had developed a disposable safety trocar, called the Endoport, which it had begun to market in 1985. Recognizing the potential for a disposable trocar and believing that the product would fit well with its line of disposable surgical stapling devices, USSC entered into negotiations with Endo for a license to the product. This effort culminated in an exclusive license agreement dated June 12, 1986. See PX 4 (DX 104) (Endoport); testimony of Bruce Lustman (Oct. 16, 1990), Tr. 534-35; DX 1 (License Agreement between Endo and USSC dated June 12, 1986). 74. USSC worked on developing and redesigning the Endoport and planning its introduction on a national scale. Finally, in February 1987, USSC introduced a new, re-designed safety trocar — the Surgiport. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 465-76. 75. In the summer of 1987, several months after the national introduction of the Surgiport, Yoon approached USSC and asserted that the device infringed his ’773 Patent. See testimony of Bruce Lustman (Oct. 16, 1990), Tr. 536-37. 76. In October 1987, USSC and Yoon reached an agreement on the essential terms of a license, which was confirmed in writing in March 1988. USSC believed that it shortly would have a formal written agreement. See testimony of Bruce Lustman (Oct. 16, 1990), Tr. 537-40; DX 4 (letter from Attorney Presta to Attorney Libsohn dated March 11, 1988 confirming agreement); PX 111 (DX 58) (deposition testimony of Frank R. Presta (Dee. 5, 1989), at 92-96, 102-05); PX 110 (DX 92) (deposition testimony of Thomas R. Bremer (Apr. 24, 1990), at 111-15). 77. In March 1988, at about the same time he was negotiating the agreement with USSC, Yoon contacted Ethicon about a possible license. See DX 48 (confidential Disclosure Agreement between Yoon and Ethicon (Mar. 1, 1988)); DX 49 (letter from Yoon to Dr. Alan Levy dated March 4, 1988). 78. Yoon reached an agreement with Ethicon in June 1988. See PX 55 (License and Royalty Agreement). 79. In early 1989, Yoon, acting through new counsel, and with the knowledge of Ethicon, contacted USSC and advised it of the 1988 agreement with Ethicon and of his willingness and ability to grant USSC a non-exclusive license. This was the first notice USSC had of the fact that Yoon had negotiated an agreement with Ethicon. See testimony of Bruce Lustman (Oct. 16, 1990), Tr. 541-42; DX 5 (letter from Attorney Goldstein to Leon Hirsch dated February 7, 1989). 80. In March 1989, representatives of USSC met with Yoon’s lawyers, who informed them that Yoon had entered into a non-exclusive licensing agreement with Ethicon and was free and eager to enter into a similar agreement with USSC. See testimony of Bruce Lustman (Oct. 16, 1990), Tr. 542-55. 81. In June 1989, Mr. Lustman and Mr. Bremer from USSC met Yoon in Washington, D.C. The parties agreed on the amount of a license fee, the commencement date of royalties (with Yoon free to select either of two options), and the royalty rate. See testimony of Bruce Lustman (Oct. 26, 1990), Tr. 546-55; DX 6 (Mr. Lust-man’s notes written at June 14, 1989 meeting). 82. It is undisputed, however, that no formal agreement had been reached at the June 1989 meeting. Plaintiffs filed this suit in July 1989. They filed their motion for a preliminary injunction in August 1990. See PX 110 (DX 92) (deposition testimony of Thomas R. Bremer (Apr. 24, 1990), at 159-60). 88. In September 1989, after Ethicon had filed suit, USSC sent a proposed draft of an agreement to Yoon offering $2.2 million in paid-up royalties for five years and 5% on sale, for the rest of the life of the patent. In October 1989, Yoon entered into the Amended License Agreement with Ethicon. See PX 104 (proposed license agreement between Yoon and USSC dated September 20, 1989); PX 56 (DX 46) (Agreement Amendment). 5. The Public Interest 84. USSC has conducted seminars and teaching sessions to familiarize surgeons with its disposable trocar. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 481-82, 495; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 686-87; DX 9 (Zucker & Bailey, Atlas of Endo Cholecystectomy (1990)). 85. USSC has educated more than ten thousand obstetricians, gynecologists, and general surgeons in the use of the Surgh port. Annual sales of the product have gone from about $5 million in 1987 to more than an estimated $50 million in 1990, as a result of USSC’s efforts. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 482, 485, 495. 86. USSC has effectively developed the market for disposable safety trocars in this country, and its product is by far the predominant trocar in the market. Laparosco-py has become one of the most rapidly growing areas of surgery. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr, 494; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 671-72. 87. USSC has introduced a cannula made out of special radiolucent material, which allows surgeons to obtain unobstructed x-rays during surgery, thereby enhancing patient safety. This is not available in Ethicon’s product line. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 478, 492-93; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 676-77; DX 70A (chart showing USSC’s laparo-scopic instruments); DX 70B (chart showing Ethicon’s laparoscopic instruments). 88. Ethieon’s Endopaths come in 7/8 mm and 10/11 mm sizes, permitting surgeons to use different size instruments through a single trocar without having to attach an adapter. This flexibility makes the Endopaths somewhat more convenient to use. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 376. 89. While there are differences between USSC’s Surgiport and Ethicon’s Endopath, these differences are not significant. While surgeons may prefer one over the other, they are for most purposes interchangeable. See testimony of Dr. Martin Weisberg (Oct. 16, 1990), Tr. 386; testimony of Dr. Karl Zucker (Oct. 17, 1990), Tr. 703-04. 90. Were USSC forced to discontinue the sale and manufacture of its Surgiport pending trial, the disruption of substantial long term relations with its customers could spill over and affect other USSC products because of hospital purchasing procedures. Furthermore, such an injunction could mean the loss of jobs by as many as 350 factory employees. See testimony of Bruce Lustman (Oct. 16, 1990), Tr. 568-72; testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 496-97. D. ’030 Patent 91. On February 9, 1990, USSC asserted a counterclaim charging plaintiff Ethi-con with infringement of the '030 Patent. USSC charges that the Endopath, which Ethicon began to market and sell in January 1990, infringes the ’030 Patent. See Answer to Amended Complaint and Amended Counterclaims (filed Feb. 14, 1990), Till 109-15. 92. The ’030 Patent was issued to Endo on March 31, 1987. Endo had applied for the patent on February 24, 1986. See PX 25 (DX 102) (’030 Patent). 93. The ’030 Patent claims a safety tro-car having a pyramidal cutting head and safety shield with a triangular-shaped opening — a design intended to reduce the force required for the safety trocar to penetrate the body wall. See testimony of Dr. Frederic H. Moll (Oct. 24, 1990), Tr. 1258; testimony of Dr. Stephen J. Tricamo (Oct. 25, 1990), Tr. 1347. 1. Validity of the Patent a. Is the ’030 Patent Obvious in Light of the ’773 Patent? 94. Dr. Stephen J. Trieamo’s testimony that the ’030 Patent is obvious in light of the ’773 Patent was generally credible. To the extent that Professor Ernesto E. Blan-co’s testimony contradicted that of Dr. Tricamo on the question of the obviousness of the ’030 Patent, it was not persuasive. 95. The ’030 Patent teaches that the shield retracts to the base of the cutting head and that the opening conforms to the base of the cutting head. Neither the ’773 Patent nor any other art discloses either of those features. See testimony of Dr. Stephen J. Tricamo (Oct. 25, 1990), Tr. 1347-1350, 1706-07; PX 8 (DX 44) (’773 Patent); DX 101 (copy U.S. Patent No. 4,601,710); PX 25 (DX 102) (’030 Patent); DX 121A (photograph of Endoport tip); DX 122A (photograph of Endopath tip). 96. During prosecution of the application for the ’030 Patent, the patent examiner reviewed both the ’030 Patent and U.S. Patent No. 4,601,710 (“ ’710 Patent”), an earlier Moll patent. The ’710 patent is cited in the ’030 Patent as prior art. The invention of the ’030 Patent was found patentable over the tapered tubular shield shown in the ’710 Patent. See testimony of Dr. Stephen J. Tricamo (Dec. 18, 1990), Tr. 1704-05; DX 101 (’710 Patent); PX 25 (DX 102) (’030 Patent). b. Was There a Prior Public Use of ■ the ’030 Patent Before February 24, 1985? 97. Dr. William Kennett used an Endo-port safety trocar (the product practicing the ’030 Patent) in performing a clinical procedure on February 8, 1985. Dr. Philip Darney used Endoports in three clinical procedures on February 15, 1985. These tests were necessary experiments to ascertain the viability of the device in actual surgery on humans. Endo’s records, including the reports received and the evaluations made, confirm the non-public nature of these uses. See testimony of Dr. Frederic H. Moll (Oct. 24, 1990), Tr. 1260-72; DX 109 (reports of clinical tests of Endoport); DX 110 (report by Dr. William Kennett of clinical test of Endoport); DX 111 (report by Dr. Philip D. Darney of clinical test of Endoport). 98. The circumstances and contexts of the tests, including Dr. Moll’s and the other physicians’ presence and supervision, reveal that the tests were experimental in nature and intended to be confidential. See testimony of Dr. Frederic H. Moll (Oct. 24, 1990), Tr. 1262-72, 1321-22. 99. The first time Dr. Moll showed a prototype of the trocar to anyone other than those advising Endo was at the annual meeting of the Association of Operating Room Nurses, held on February 25, 1985. No one from Endo solicited any sales or took any orders either at or prior to the meeting. The first Endoport trocars, other than those exclusively used for test purposes, were not made until April 1985. See testimony of Dr. Frederic H. Moll (Oct. 24, 1990), Tr. 1272-73. 2. Infringement of the Patent a. Does the Endopath Infringe Claim 1 of the ’030 Patent? 100. Professor Ernesto E. Blanco’s testimony concerning whether the Endopath infringes Claim 1 of the ’030 Patent was credible. To the extent that Dr. Stephen J. Tricamo’s testimony contradicted that of Professor Blanco on the question of the Endopath’s infringement of Claim 1 of the ’030 Patent, it was not persuasive. 101. Claim 1 is limited to a device whose cutting head has a triangular “base.” The base is the planar figure articulated by three line segments, each of which marks the boundary between the planar side surface of the cutting head and the planar side of the shaft below it. In other words, the ’030 specification shows that there is a triangular “base” where each of the three planar surfaces of the pyramidal cutting head intersects with a planar side of the shaft. The three lines of intersection define a triangular cross-section, which is the “base.” See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1600; PX 25 (DX 102) (’030 Patent). 102. The surfaces of the cutting head of the Endopath merge smoothly into the cylindrical shaft. There is no intersection of planes — there are no line segments to define a triangular base where the cutting edges terminate. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1600. 103. A person of ordinary skill in the art would not consider the cutting tip of the Endopath to have a triangular base simply because a hypothetical triangular cross-section connecting the points where the three cutting edges terminate could be drawn. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1600-01; PX 2b (10/11 mm Endopath). 104. A triangle is a two-dimensional figure formed by three intersecting straight lines. A triangle has length and width, but no height. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1594, 1596. 105. A person skilled in the art would not describe the cross-section of the opening of the Endopath safety shield as a triangular-shaped opening. The opening of the Endopath safety shield is cut into a sphere. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1594, 1599. 106. The “bevels” on the Endoport safety shield have substantially the same slopes as the surfaces of the cutting head and they act as extensions of those surfaces when the shield is retracted. This is exactly what is embodied in the Endoport safety trocar pursuant to the ’030 Patent. See PX 25 (DX 102) (’030 Patent), col. 3, lines 27-31; PX 4 (Endoport); testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1615-17. 107. The Endopath’s safety shield contains rounded “bulges” at its distal end. A bulged or curved surface cannot be said to have a slope. The surface of each bulge has a constantly changing or infinite number of slopes. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1615-16; PX 2b 65 (10/11 mm Endopath). 108. The rounded bulges on the Endo-path’s safety shield are not “generally par-abolically shaped.” A parabola is a two-dimensional figure which corresponds to a cross-section of a cone. See PX 34 (model of cross-section of a cone); testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1618, 1631-32. 109. The opening of the Endopath safety shield cannot be said to be formed by the bases of the three parabolic bevels. The opening of the Endopath’s shield is not formed by imaginary lines but rather by three arcs corresponding to the periphery of the inside surface of each of the three rounded bulges. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1618, 1631. 110. General registry means coincidence of the periphery of two figures. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1601-05. 111. The device claimed by the ’030 Patent (the “Moll trocar” or Endoport) shows that the triangular shield opening aligns perfectly with the triangular base. Each edge of the opening is parallel and adjacent to the base, such that the three lines defining the opening of the shield and the three lines defining the base of the cutting tip are so aligned that they could be superimposed upon each other. See PX 25 (DX 102) (’030 Patent), fig. 8; testimony of Professor Ernesto E. Blan-co (Dec. 18, 1990), Tr. 1668-69; PX 28 (model of ’030 tip and shield). 112. When the Endopath’s shield is retracted to its fullest extent, the tip of each of the three arcs of the rounded bulges touches an imaginary line formed by connecting points at the proximal end of the two cutting edges that define each slope of the cutting head. Three points of contact are insufficient for “general registry.” See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1610-11. b. Does the Endopath Infringe the ’030 Patent Under the Doctrine of Equivalents? 113. The Moll trocar has a safety shield with a triangular opening the edges of which have a certain width. These “ledges” create a discontinuity in the cutting process during insertion. Once the surgeon has inserted the Moll trocar up to the ledges of the safety shield, the cutting process is over, and the ledged shield expands the hole until it reaches the maximum diameter. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1636-37. 114. The tip of the Endopath’s safety shield does not have ledges. The transition from the cutting head to the cannula is made over the shield’s three rounded bulges which are separated by gaps at the shield’s distal end. Expansion over the bulges is smoother than forcing a triangular ledge through the insertion being cut by the sharp edges of the cutting head. The Endopath’s “bullet-nosed” safety shield reduces trauma to tissue during penetration, even though the bulged safety shield requires more force to penetrate. See testimony of Professor Ernesto E. Blanco (Dec. 18, 1990), Tr. 1637-38. 115. The testimony of James V. Martin, Director of Operations of Ethicon and former project manager for the development of the Endopath, was generally credible concerning the development and purpose of the Endopath. 116. Ethicon had two design purposes with respect to the Endopath’s “bullet-nosed” safety shield. First, the Endo-path’s shield was designed to reduce the trauma to surrounding tissue by distributing over a greater area the force exerted by the safety shield. Second, Ethicon sought to improve safety by decreasing the time needed for the safety shield to snap forward to cover the cutting tip upon penetration of the body wall. By decreasing the distance that the safety shield retracts and by increasing the force of the spring, the speed with which the safety shield snaps forward is increased. This has the disadvantage of increasing the force needed to retract the safety shield. See testimony of James V. Martin (Dec. 18, 1990), Tr. 1553-57, 1569-70. 117. The force needed to retract fully the safety shield of the Endopath is less than that needed to retract the safety shield of the Surgiport. However, the En-dopath requires a greater maximum force to penetrate than is required by a Surgi-port of comparable size. See testimony of James V. Martin (Dec. 18, 1990), Tr. 1587-90; DX 136 (memorandum entitled “Ethicon Endopath-Por-vair Penetration Characteristics”); see also testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 523. 118. An advertisement for the Endo-path claims that it was “designed for easy penetration.” This refers to the minimization of trauma to surrounding tissue, not the reduction in the force required to penetrate the body wall. Ethicon never intended to suggest, and the advertisement itself never suggests, that reduction in penetration force was a design goal. See testimony of James V. Martin (Dec. 18, 1990), Tr. 1559-62; DX 124 (Endo-path advertisement). 119. Ethicon’s European patent application for the Endopath never mentions that the purpose of the Endopath is to reduce penetration force. See testimony of John V. Martin (Dec. 18, 1990), Tr. 1566-70; DX 126 (Ethicon European Patent Application). 3. Irreparable Harm to Defendant 120. USSC has exclusive rights to the ’030 Patent, see Findings of Fact, No. 7, but it does not practice the ’030 Patent. In other words, the Surgiport’s safety shield does not align itself with the base of the cutting head, and the shield’s opening is not triangular-shaped. Like the Moll tro-car, the Surgiport reduces penetration force, but it does so through an alternative design. See testimony of Dr. Stephen J. Tricamo (Oct. 25, 1990), Tr. 1367-70. 121. It is likely that USSC’s market share will be reduced by Ethicon’s continued sale of the Endopath. 4. The Balance of Hardships/Public Interest 122. Were the injunction against Ethi-con to enter, USSC would be the sole presence in the disposable trocar market until Ethicon is able to develop an alternatively designed cutting tip and safety shield. 123. USSC has a full line of trocar products and is currently, and has been consistently, able to supply the market for disposable safety trocars. There is currently no trocar model or size offered by Ethicon that is not included as part of USSC’s product line. See testimony of Lee R. Cohen (Oct. 16, 1990), Tr. 492. III. DISCUSSION Both parties invoke the court’s authority under federal patent law to “grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” 35 U.S.C. § 283 (1988). After eleven days of testimony and over one-hundred exhibits, it is easy to forget that we have not had a full trial on the merits. The court’s findings with respect to the underlying issues of validity and infringement of both the ’773 and ’030 Patents are unavoidably tentative, and they have been made for the sole purpose of resolving the pending motions for preliminary injunction. See University of Texas v. Camenisch, 451 U.S. 390, 395, 101 S.Ct. 1830, 1834, 68 L.Ed.2d 175 (1981). Despite how it may appear, I intimate no view whatsoever on the underlying merits of the complaint and counterclaim in this action. See Illinois Tool Works, Inc. v. Grip-Pak, Inc., 906 F.2d 679, 681 (Fed.Cir.1990) (preliminary injunction lies within sound discretion of district court “after a hearing in which neither party [is] required to prove his case in full and in light of findings and conclusions not binding at trial” (emphasis in original)). The standards for awarding a preliminary injunction are “no more nor less stringent in patent cases than in other areas of the law.” H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384, 387 (Fed.Cir.1987). A party seeking a preliminary injunction must establish a right thereto in light of four factors: 1) a reasonable likelihood of success on the merits; 2) irreparable harm; 3) the balance of hardships tipping in favor of the requesting party; and 4) that the issuance of an injunction is in the public interest. Chrysler Motors Corp. v. Auto Body Panels, Inc., 908 F.2d 951, 952 (Fed.Cir.1990); see also Hybritech, Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451 (Fed.Cir.1988); T.J. Smith & Nephew, Ltd. v. Consolidated Medical Equip., Inc., 821 F.2d 646, 647 (Fed.Cir.1987). No one of these factors is dispositive. The Court “must weigh and measure each factor against the other factors and against the form and magnitude of the relief requested.” Hybritech, 849 F.2d at 1451. The absence of an adequate showing with regard to any one factor may be sufficient, “gi