Ziggity Systems, Inc. v. Val Watering Systems

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FINDINGS OF FACT, DISCUSSION, CONCLUSIONS OF LAW, AND ORDER

HUYETT, District Judge.

TABLE OF CONTENTS

TABLE OF CONTENTS.......................................................762

FINDINGS OF FACT.........................................................763

I. Parties.................................................................763

II. Patents-in-Suit..........................................................763

III. Eldon Hostetler, The Inventor...........................................764

IV. Development of the Ziggity Poultry Watering System....................765

V. Patent Infringement....................................................771

VI. Willful Infringement....................................................775

VII. Liability of the Defendants..............................................775

VIII. Patent Validity .........................................................776

A. 35 U.S.C. § 103 (Obviousness).......................................776

B. 35 U.S.C. § 102 (On Sale Bar).......................................779

C. Inequitable Conduct.................................................780

D. 35 U.S.C. § 112.....................................................780

E. 35 U.S.C. § 132 (New Matter).......................................781

IX. Damages...............................................................781

X. Breach of Contract Counterclaims .......................................782

A. The Settlement Agreement..........................................782

B. The Oral Agreement................................................783

DISCUSSION.................................................................783

I. Patent Infringement Analysis............................................783

A. Scope of the Claims at Issue........................................783

1. Scope of Claim 19 of the '345 patent ............................784

2. Scope of the remaining claims at issue...........................785

B. Literal Infringement................................................786

1. Literal infringement of Claim 19.................................786

2. Literal infringement of the remaining claims.....................789

C. Infringement Under the Doctrine of Equivalents.....................790

D. Willful Infringement................................................792

E. Liability of the Defendants..........................................794

1. Val.............................................................794

2. Vallorbs ........................................................794

3. Individual defendants............................................795

II. Patent Validity Analysis.................................................796

A. Invalidity Under 35 U.S.C. § 103 (Obviousness).......................797

1. Scope and content of the prior art...............................798

2. Level of ordinary skill in the art ................................799

3. Differences between the prior art and the claims at issue.........800

4. Secondary considerations.........................................802

5. Conclusion with respect to the defense of obviousness............807

B. Invalidity Under 35 U.S.C. § 102 (On Sale Bar)......................808

C. Invalidity Because of Inequitable Conduct............................812

1. Ziggity drinker 2................................................812

2. Ziggity drinker 3................................................813

3. Ziggity’s sale of “trigger action” drinkers to Cap-It-All in December 1978 .................................................. 813

4. Ziggity’s interrogatory answers and answer to request for production of documents..........................................814

5. Dutch Search Report and the Boegli Patent......................814

6. British Search Report and the Wilmot Patent.....................815

D. Invalidity Under 35 U.S.C. § 112 ....................................816

E. Invalidity Under 35 U.S.C. § 132 (New Matter).......................818

III. Damages Analysis......................................................819

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A. Lost Profits........................................................820

1. Lost profits as a result of lost sales.............................820

2. Lost profits as a result of price erosion..........................824

B. Reasonable Royalty.................................................824

C. Sales Base..........................................................829

D. Prejudgment Interest................................................830

E. Increased Damages.................................................831

F. Attorney Fees......................................................832

G. Summary of Damages ..............................................832

IV. Analysis of Breach of Contract Counterclaims............................833

A. The Settlement Agreement..........................................833

B. The Oral Agreement................................................835

CONCLUSIONS OF LAW.....................................................837

APPENDIX...................................................................839

FINDINGS OF FACT

I. PARTIES

1. Plaintiff Ziggity Systems, Inc. (“Ziggity”) is a corporation organized and existing under the laws of the State of Indiana and has its principal place of business located at 12456 Industrial Parkway East, Middlebury, Indiana 46540. (Stipulated).

2. Defendant Val Products, Inc. (“Val”) is a corporation organized and existing under the laws of the Commonwealth of Pennsylvania and has its principal place of business located at 2599 Old Philadelphia Pike, Bird-in-Hand, Pennsylvania 17505. (Stipulated).

3. Defendant Vallorbs Jewell Company is a corporation organized and existing under the laws of the Commonwealth of Pennsylvania and has its principal place of business located at 2599 Old Philadelphia Pike, Bird-in-Hand, Pennsylvania 17505. (Stipulated).

4. Defendant Frederick W. Steudler, Sr. (deceased) was an individual residing at 138 Musser Avenue, Lancaster, Pennsylvania 17603, and was an officer and director of both Val and Vallorbs. (Stipulated).

5. Defendant Jeanette Steudler, named in her capacity as Executrix for the Estate of Frederick W. Steudler, Sr., is an individual residing at 138 Musser Avenue, Lancaster, Pennsylvania 17603, and is an officer and director of both Val and Vallorbs. (Stipulated).

6. Defendant Frederick W. Steudler, Jr. is an individual residing at 311 Poplar Avenue, New Providence, Pennsylvania 17660, and is an officer and director of both Val and Vallorbs. (Stipulated).

II. PATENTS-IN-SUIT

7. The patents-in-suit are United States Letters Patent No. 4,637,345 (“the ’345 patent”) and United States Letters Patent No. 4,491,088 (“the ’088 patent”). (Stipulated).

8. The ’088 patent issued January 1, 1985 on Application Serial No. 520,099, filed April 10, 1981. The sole named inventor was Eldon Hostetler, Vice President of Ziggity. Application Serial No. 520,099 was a continuation of United States Patent Application Serial No. 113,607, filed January 21, 1980. United States Letters Patent No. 4,284,036 (“the ’036 patent”) issued on Application Serial No. 113,059 on August 18, 1981. That portion of the 17 year term of the '088 patent subsequent to August 18, 1998, the expiration date of the ’036 patent, was disclaimed during the prosecution of Application Serial No. 520,099 in order to overcome the Examiner’s rejection over the already-then issued ’036 patent based on “double patenting.” On April 16, 1985, reexamination of the ’088 patent was requested. As a result of the reexamination proceeding in the United States Patent and Trademark Office, claims 1 and 2 of the ’088 patent were cancelled, and new

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claims 3, 4, and 5 were added and issued on March 31, 1987 as Reexamination Certificate No. B1 4,491,088. (Stipulated).

9. The ’345 patent issued January 20, 1987 on Application Serial No. 644,612, filed August 27, 1984. Application Serial No. 644,612 was a continuation of application Serial No. 520,099. (Stipulated).

10. Ziggity has alleged infringement of claims 1-13 and 19-24 of the ’345 patent and claims 3-5 of the ’088 patent. (Stipulated).

11. Claims 14-18 of the ’345 patent are not at issue in this action. (Trial Transcript 2/16/90 at page 193, lines 5-8).

12. The ’036 patent is not at issue in this litigation. (Trial Transcript 2/20/90 at page 94, lines 21-25).

13. All ownership interest in the ’088 patent and the ’345 patent have been assigned to Ziggity by Eldon Hostetler. (Defendants’ Exhibit 281).

III. ELDON HOSTETLER, THE INVENTOR

14. Eldon Hostetler is the sole inventor of the patents-in-suit. (Trial Transcript 2/13/90 at page 101, line 15 thru page 102, line 1).

15. Eldon Hostetler was born in an Old Order Amish home on a 280-acre farm near Shipshewana, Indiana in 1923.

(Id.

at page 25, lines 16-23).

16. Eldon Hostetler’s formal education concluded with the eighth grade.

(Id.

at page 25, lines 21-22).

17. He worked on the family farm until he was 21 years old.

(Id.

at page 25, lines 24-25).

18. In 1944 at 21 years of age, he went to work for Creighton Brothers of Warsaw, Indiana. At that time, Creighton Brothers was the largest poultry farm in the world.

(Id.

at page 25, lines 24-25; page 26, lines 13-15 & 21-22).

19. While employed at Creighton Brothers, Eldon Hostetler took a short course in poultry at Purdue University.

(Id.

at page 27, lines 5-6).

20. At Creighton Brothers, Eldon Hostetler was responsible for selection and blood testing of poultry.

(Id.

at page 27, lines 3-9).

21. After Eldon Hostetler left Creighton Brothers, he went into a partnership with Dr. Pringle, a large broiler grower who wanted to get into the hatchery business.

(Id.

at page 28, lines 5-10).

22. Eldon Hostetler developed a new strain of poultry which later became known as the White Meatier.

(Id.

at page 29, lines 1-6).

23. In 1984, Eldon Hostetler started research on an automatic feeder.

(Id.

at page 29, line 10).

24. Eldon Hostetler has been involved in research and development of poultry feeding and watering equipment since 1948.

(Id.

at page 29, lines 10-13).

25. Eldon Hostetler is the sole or co-inventor on close to 50 patents relating to poultry feeding and watering equipment.

(Id.

at page 29, lines 1-19).

26. From 1956 to 1976, Eldon Hostetler was employed by Chore Time, which is the largest poultry feeding and watering equipment manufacturer in the world.

(Id.

at page 30, lines 1-19).

27. Eldon Hostetler’s responsibilities at Chore Time were to research and develop poultry feeding and watering products.

(Id.

at page 31, lines 6-8).

28. Eldon Hostetler considers the centerless auger system developed for Chore Time and the nipple watering system developed for Ziggity to be his most significant developments.

(Id.

at page 29, lines 18-25).

29. In 1976, Eldon Hostetler’s wife was stricken with cancer, and he terminated his employment with Chore Time to take care of his wife’s health needs.

(Id.

at page 30, line 24 thru page 31, line 2).

30. During that time period, Eldon Hostetler commenced development of a new product and took steps to start a company to manufacture and distribute it. The product was a watering system for poultry.

(Id.

at page 31, lines 3-10.)

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31. Ziggity was formed in 1977.

(Id.

at page 30, lines 19-23).

32. Eldon Hostetler has been the vice-president of Ziggity ever since the company’s formation. (Plaintiff’s Exhibit 23-78.)

IV. DEVELOPMENT OF THE ZIGGITY POULTRY WATERING SYSTEM

33. Eldon Hostetler’s first efforts to develop a poultry watering system centered around the development of a cup system. (Trial Transcript 2/13/90 at page 31, lines 11-15).

34. In 1977, cup, bell, and trough systems were the water systems of choice by poultry integrators and growers. (Trial Transcript 2/15/90 at page 11, lines 12-17).

35. Cup, bell, and trough systems are referred to as open systems. (Trial Transcript 2/15/90 at page 12, lines 8-11).

36. In an open system, water is supplied to a container such as a cup, bell, or trough drinker. Chickens drink from these open containers. (Plaintiff’s Exhibit 51-B at page 10, lines 3-8).

37. Poultry cannot swallow. Poultry must trap water in their mouths and then raise their heads so that the water will run down their throats. (Trial Transcript 2/14/90 at page 70, lines 1-5).

38. Drinking in an upright position is more natural for a chicken and other fowl. (Trial Transcript 2/14/90 at page 70, lines 1-11).

39. In 1977, there were only a few nipple systems sold in the United States. The nipple systems sold at that time were manufactured in Europe. The Monoflo vertical action nipple with threaded attachment to the supply pipe is an example of the type of nipple drinker offered to the American poultry market in 1977. (Trial Transcript 2/13/90 at page 32, lines 4-12).

40. Nipple drinking systems are generally known as closed systems. (Trial Transcript 2/15/90 at page 12, lines 12-14).

41. In a closed watering system, water is supplied to the system through a regulator which controls the pressure of the water within the system. Nipple drinkers are attached directly to the water supply lines and the system is placed in a position with respect to the cage or floor so that chickens and other fowl get the water from the system by activating a triggering device on the nipple. (Trial Transcript 2/13/90 at page 33, line 22 thru page 34, line 24; page 38, lines 4-21).

42. The nipple systems offered in the United States market in 1977 did not perform well. They leaked and did not assure a constant and metered flow of water to birds when the nipple was triggered. (Trial Transcript 2/14/90 at pages 79-80; page 81, lines 16-23).

43. The poor performance of the nipple drinkers available in 1977 created negative good will for nipple systems in general. (Trial Transcript 2/15/90 at page 11, lines 17-22; page 16, lines 2-6).

44. Because of the resistance to nipple systems, Eldon Hostetler’s initial development of a poultry watering system concentrated on the use of a cup waterer. (Trial Transcript 2/13/90 at page 32, lines 13-25; page 33, lines 1-4).

45. Eldon Hostetler had a 12,000 square foot chicken house at his home which he used for research and testing. (Trial Transcript 2/13/90 at page 32, lines 17-19).

46. He purchased tooling to make a sufficient quantity of his cup watering system devices to test them in his own chicken house. (Trial Transcript 2/13/90 at page 32, lines 13-16).

47. The cup watering system developed by Eldon Hostetler in 1976 and 1977 is described in United States Patent No. 4,185,590. (Defendants’ Exhibit 5).

48. Eldon Hostetler’s cup watering system was not successful because it was too costly to manufacture and, therefore, too expensive to succeed on the market. (Trial Transcript 2/13/90 at page 32, line 13 thru page 33, line 4).

49. One feature of Eldon Hostetler’s cup watering system did, however, contribute to the success of the Ziggity nipple watering systems developed later. That feature was an arrangement allowing for the drinker to be snapped onto a saddle

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affixed to the water supply pipe. (Trial Transcript 2/13/90 at page 33, lines 7-16; page 42, lines 8-22).

50. The snap-on feature allowed for easy removal and cleaning of drinkers and reattachment of the drinker to the supply line. (Plaintiffs Exhibit 36).

51. In 1977, John Fredericks, general manager of Creighton Brothers and a longtime friend and associate of Eldon Hostetler, suggested to Eldon Hostetler that he develop a nipple watering system which utilized the snap-on feature. (Trial Transcript 2/13/90 at page 33, lines 7-10).

52. Creighton Brothers had experimented with European style nipple drinkers. The European style nipple drinkers often became clogged, resulting in leaks or inadequate water supply to the chickens. (Trial Transcript 2/13/90 at page 33, lines 7-8).

53. Eldon Hostetler’s cup watering system was of the active type. The chicken was required to peck at a trigger pin to release water into the cup. (Trial Transcript 2/13/90 at page 31, line 11 thru page 32, line 3).

54. The designer of a nipple watering system for poultry must keep several factors in mind. Principal among these factors are: Leaks must be avoided, a proper amount of water must be dispensed when the nipple is triggered, and the system must be “user friendly,” i.e. it must be a system that the chickens, including day-old chicks or “peeps,” can and will use. (Trial Transcript 2/13/90 at page 43, line 4 thru page 45, line 13).

55. In a nipple watering system, the birds must water themselves by activating the triggering device on the nipple drinker. (Trial Transcript 2/13/90 at page 45, lines 2-9).

56. There are two broad categories of chicken house systems using nipple drinkers. One is a cage system, and the other is a floor system. (Trial Transcript 2/13/90 at page 37, lines 4-23; Trial Transcript 2/14/90 at page 73, lines 1-9).

57. Cage systems are primarily used for laying hens, including pullets, which are laying hen chicks. In a floor system, the birds using the drinkers are broiler chickens. (Trial Transcript 2/15/90 at page 26, lines 22-23; page 27, line 24 thru page 28, line 3).

58. Broiler chicks are brought to a chicken house in flocks of 20,000 or more to be fed and watered for a period of approximately six and eight weeks, at which time the chickens are processed for human consumption. (Trial Transcript 2/15/90 at page 23, lines 13-19; page 29, lines 11-20).

59. Water leaks or an over-supply of water from a nipple drinker when triggered can cause a condition in chicken houses known as “wet pits.” Wet pits cause disease, mortality, and condemnation of the chickens when processed. Additionally, wet pits increase the labor required to maintain a proper environment for the growth of broilers and the production of eggs in cage operations. (Trial Transcript 2/15/90 at page 16, lines 4-6; page 24, lines 12-24).

60. The designer of a nipple watering system for chickens must also be mindful of the labor and maintenance cost of the use of the system. Some broiler houses accommodate up to 100,000 chickens at a time. (Trial Transcript 2/13/90 at page 43, lines 10-14; Trial Transcript 2/14/90 at page 76, lines 10-16).

61. Eldon Hostetler’s first nipple drinker consisted of the triggering device in his cup watering system with the cup having been removed and the nipple attached to the saddle on the water supply line. (Plaintiff’s Exhibit 3, Drawing No. 1).

62. This first nipple drinker was made from an injection molded plastic body and had a machined stainless steel insert which defined the outlet and the seats for the head of the trigger pin and two ball valve elements. (Trial Transcript 2/13/90 at page 47, line 22 thru page 48, line 9).

63. Eldon Hostetler tested this first drinker in his own chicken house. The drinker was unsuccessful because dirt and other debris in the supply line got caught in the seats preventing an effective seal of the ball valves and the head of the trigger

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pin, resulting in leaks. (Trial Transcript 2/13/90 at page 48, lines 10-21).

64. After recognizing the difficulties and failures of his first nipple drinker, Eldon Hostetler modified the drinker. His second prototype drinker was made with a solid injection molded plastic body. The second prototype drinker used a cup headed trigger pin, wherein the head of the pin was radiused on the bottom and flat on the top. The second prototype nipple drinker used only one ball valve. The cup headed trigger pin and the ball valve cooperated with seats integrally molded into the plastic body. (Plaintiffs Exhibit 3, Drawing No. 2; Trial Transcript 2/13/90 at page 48, line 22 thru page 50, line 24).

65. Nipple drinkers are used with very low water pressures. If the water pressure becomes too high, baby chicks cannot trigger the drinker against the force of the water pressure. Typically, water pressures in the nipple drinker system are less than one-half pound per square inch. (Trial Transcript 2/13/90 at page 34, line 25 thru page 35, line 18).

66. The water pressure is reduced through the action of the regulator attached to the system. (Trial Transcript 2/13/90 at page 39, lines 10-20).

67. Low water pressures are a factor that the designer of a successful nipple drinker must take into account. (Trial Transcript 2/13/90 at page 34, line 25 thru page 35, line 18).

68. Eldon Hostetler’s third prototype nipple drinker used the same ball and trigger pin as used in his second prototype. However, the housing or body of the drinker was changed to provide for a cylindrical bottom to the valve chamber upon which rested a molded thermal plastic seat which was somewhat resilient. (Plaintiff's Exhibit 3, Drawing No. 3; Trial Transcript 2/13/90 at page 50, line 25 thru page 51, line 15).

69. The third prototype nipple drinker was considerably more successful than the previous two. However, sealing problems continued and Eldon Hostetler sought to correct those problems by redesigning the insert molded thermal plastic seat. (Trial Transcript 2/13/90 at page 136, lines 14-20).

70. In the fourth nipple drinker in the evolution of the Ziggity nipple drinker watering system, Eldon Hostetler modified the seat to provide for an upstanding circular leaf at the bottom of the seat. The modified seats provided a seal at the lower leaf where the cup head of the trigger pin rested and a seal at the upper leaf on the seat which cooperated with the ball valve element. (Plaintiff’s Exhibit 3, Drawing No. 4; Trial Transcript 2/13/90 at page 51, lines 16-24).

71. The fourth drinker developed by Eldon Hostetler was successful and was the product sold commercially in large quantities in 1977 and 1978. It was referred to as the model No. 50 nipple drinker. (Plaintiff’s Exhibit 23, at pages 3, 4, 7, and 31).

72. The No. 50 nipple drinker worked reasonably well in cage operations with adult laying hens. It was not as successful for baby chicks and start-grow pullets. (Plaintiff’s Exhibit 23, at page 196).

73. Eldon Hostetler found that the shrinkage of the plastic in the molding process for the drinker body, or housing, resulted in the so-called “straight” outlet having a somewhat reverse taper. The restriction at the lower most point of the outlet could become clogged with material such as a grain of sand, which would hold the trigger pin in an up position resulting in a flow of water into the pits. Additionally, the restricted outlet made the trigger pin harder to activate. Eldon Hostetler made several changes to the molding process in an attempt to solve this problem. First, the molds were changed to allow for a two degree open taper of the outlet. This fifth change to the nipple drinker was helpful but not sufficient. (Trial Transcript 2/13/90 at page 53, line 18 thru page 54, line 16).

74. Next, the molds were further changed to allow for notches in the drinker body right below where the thermal plastic seat is inserted. This sixth change appeared to solve the problem created by shrinkage of the part in molding. (Plain

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tiffs Exhibit 3, Drawing No. 6; Trial Transcript 2/13/90 at page 55, lines 5-21).

75. When Eldon Hostetler started developing of his nipple drinker at the suggestion of his friend, John Fredericks, General Manager of Creighton Brothers, he had his attorney prepare a letter to Mr. Fredericks confirming that in April of 1977, Mr. Hostetler had installed prototype nipple drinker systems for testing by Creighton Brothers and that, from time to time, modifications to those nipple drinkers would be placed in the Creighton Brothers nipple drinker system for further testing. (Plaintiffs Exhibit 23, at page 1).

76. Although not documented in a letter, a similar arrangement was made with Mr. Hostetler's friend of 30 years, Frank Horwood, who was general manager of Cap-It-All Chore Time Poultry, Ltd. of Australia and New Zealand. (Trial Transcript 2/13/90 at page 71, line 15 thru page 72, line 13).

77. Eldon Hostetler knew, as did other designers of nipple watering systems, that extensive testing in the field was required to develop a good nipple drinker system. (Trial Transcript 2/14/90 at page 15, lines 17-18; page 59, lines 11-15; Trial Transcript 2/21/90 at page 198, lines 13-15).

78. The tests at Creighton Brothers and Cap-It-All and the use in the field of the No. 50 drinkers established that the constant pecking by the chickens on the trigger pin resulted in the outlet of the drinker body being worn from the inside. The worn outlet allowed for a substantial increase in the flow of water. In the nipple drinker systems developed by Mr. Hostetler, the water released to the chicken upon activation of the trigger is metered. The metering is accomplished by carefully defining the clearance of the cylindrical shank of the trigger pin within the outlet opening of the drinker body. (Plaintiffs Exhibit 23, at page 195).

79. Fiberglass impregnation of the drinker body material strengthened the material but did not prevent the water on the drinker body which resulted in excessive flow of the water to chickens. Excessive flow of water to the chickens also results in wet pits because the water which cannot be consumed by the bird simply runs down the bird’s breast to the pit. (Plaintiff’s Exhibit 23, at page 78; Trial Transcript 2/13/90 at page 90, lines 10-22; Trial Transcript 2/15/90 at page 24, line 15-19).

80. In October of 1978, Eldon Hostetler attempted to solve the problem of the worn outlet by insert molding a cadmium plated steel washer at the throat of the outlet in the drinker body. (Plaintiff’s Exhibit 3, Drawing No. 7; Trial Transcript 2/13/90 at page 55, line 22 thru page 56, line 14).

81. Mr. Hostetler believed that the steel washer would provide a durable surface against which the trigger pin would strike and control maintenance of the metering orifice at the throat of the drinker outlet. Several thousand drinkers of this type were constructed and delivered to Creighton Brothers for testing. They failed. Mr. Hostetler found that the flow of water across the ball valve, the trigger pin, and the washer resulted in electrolysis of the steel parts and adversely affected the concept behind the insertion of a washer in this seventh nipple drinker development. (Plaintiff’s Exhibit 23, at page 196).

82. Eldon Hostetler again modified the molding to open the outlet even further to a seven degree angle in the hopes that some side to side motion of the trigger pin and the freedom of motion would result in ease of use by the baby chicks. Drinkers of this type were supplied to Cap-It-All for testing in New Zealand. Trials of these drinkers were not successful. The tapered opening and the problem of wear of the drinker body caused by activation of the trigger pin resulted in excessive water flow and wet pit problems. The results of these trials using this eighth version of the nipple drinker at Cap-It-All in New Zealand were reported to Eldon Hostetler in a letter dated February 1, 1979. (Plaintiff’s Exhibit 3, Drawing No. 8; Plaintiff’s Exhibit 23, at pages 123 thru 126; Trial Transcript 2/13/90 at page 56, lines 15-23; page 57, lines 6-8).

83. After the failure of the seventh version of the nipple drinker which included the washer inserted at the throat of the

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nipple outlet, Mr. Hostetler changed the drinker design to include a stainless steel insert in the outlet of the drinker body which had a straight bore providing for a defined clearance around the cylindrical shank of the trigger pin. This ninth version of the nipple drinker was very successful for adult laying hens in cage operations. The first of the No. 50 trigger drinkers with straight action and stainless steel inserts were delivered to Creighton Brothers in January 1979. (Plaintiffs Exhibit 3, Drawing No. 9; Plaintiffs Exhibit 23, at page 121; Trial Transcript 2/13/90 at pages 57-59).

84. Chickens are cannibalistic. In recognition of this fact, poultry managers debeak the baby chicks to prevent them from doing harm to the other chicks. (Trial Transcript 2/13/90 at pages 95-96).

85. One method of debeaking which was popular until the mid to late 1970’s consisted of removing a portion of the upper beak in front of the nostrils. This method resulted in a projecting lower beak. This method of debeaking was popular in the midwest where Eldon Hostetler was performing his developmental work. The projecting lower beak made it very easy for even young chicks to trigger a vertical action drinker where the trigger pin moves along its axis only. (Trial Transcript 2/13/90 at page 96, lines 5-20).

86. The European style nipple drinkers offered to the United States market in 1977 were of the vertical action type.

87. All of the nipple drinkers developed by Eldon Hostetler in 1977 and 1978 were vertical action drinkers. (Plaintiffs Exhibit 23, at pages 194 & 195).

88. In 1978, use of the Lyons debeaking equipment was popular in the midwest. The Lyons debeaking equipment removed both the upper and lower beaks of baby chicks in front of the nostrils. (Trial Transcript 2/13/90 at page 97, lines 2-13).

89. Baby chicks debeaked in this manner could not use vertical action drinkers. (Trial Transcript 2/13/90 at page 97, lines 12-14).

90. After the introduction in the market of the Lyons Debeaker, removal of both the upper and lower beaks on baby chicks had became more and more prevalent in the poultry industry. Mr. Hostetler recognized that his vertical action drinker was difficult, if not impossible, to use by baby chicks debeaked in this manner. (Trial Transcript 2/13/90 at page 97, lines 15-25).

91. At the same time that Mr. Hostetler was solving problems with the straight action drinkers, he commenced working on a nipple drinker which could be triggered with side-to-side movement of the trigger pin from 360 degrees. The motivation behind this development was (1) the change in the debeaking methods of baby chicks and (2) Mr. Hostetler’s recognition that chickens tried to get the water drop released from the drinker off of the side of the pin rather than the bottom of the pin. (Plaintiff’s Exhibit 23, at page 196).

92. In September of 1978, he laid out on paper a trigger action nipple drinker with 360 degree action on the trigger pin. The trigger pin was changed to include a drum type head with a flat bottom and the upper surface containing a large concave recess in the head of the pin. The layout also called for a new seat which included the shoulder and leaf of the previous seat used in the No. 50 straight action drinkers but provided for a flat surface upon which the flat underside of the trigger pin head could rest. (Trial Transcript 2/13/90 at pages 59-61).

93. Mr. Hostetler’s hope was to provide for a leveraged actuation of the trigger pin lifting the ball valve element off of its seat so that baby chicks without upper and lower beaks could trigger the drinker. (Plaintiff’s Exhibit 23, at pages 196-197).

94. Mr. Hostetler ordered pins of this type from Eleo Industries, which manufactured the pins by using a cold headed process. (Plaintiff’s Exhibit 23).

95. The first 2,000 sample pins manufactured by the cold headed process and of the design laid out by Mr. Hostetler in mid-September 1978 were delivered to Ziggity for tolerance check on September 29, 1978. (Plaintiff’s Exhibit 23, at page 70).

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96. At the same time, Eldon Hostetler was working with his mold shop, Bender Mold and Machine in Mishawaka, Indiana, with respect to development of a seat that would work in cooperation with the new recess headed pin having a flat bottom on the head. (Plaintiffs Exhibit 23, at page 44).

97. Upon receipt of prototype pins and seats, Mr. Hostetler assembled some drinkers of this design and placed them in his own chicken house for testing. (Trial Transcript 2/14/90 at page 59, lines 6-15).

98. On October 2, 1978, Elco provided Mr. Hostetler with a quote for production quantities of the recess headed trigger pins. The first 6,500 trigger pins were received by Ziggity on December 11, 1978. These were also assembled in drinkers with prototype seats for testing in Mr. Hostetler’s chicken house. (Plaintiffs Exhibit 23, at pages 71 & 109).

99. In January of 1979, Mr. Hostetler was satisfied that the concept of the 360 degree trigger action nipple drinker was good and might develop into a very good nipple drinker if Elco and the seat manufacturers could deliver products within the narrow range of tolerance that Mr. Hostetler sought and specified.

100. Satisfied that the concept was good, but recognizing that manufacturing tolerance problems could prevent use of the drinker design, and mindful of the fact that other nipple drinker systems, initially thought to have good and workable designs, later developed problems in the field, Mr. Hostetler decided to show the poultry industry his new concept nipple drinker at the Southeastern Poultry Association Trade Show, the premier annual trade show held in Atlanta, Georgia. (Trial Transcript 2/13/90 at page 60, lines 1-8; Trial Transcript 2/14/90 at page 30, lines 4-9).

101. The 1979 Southeastern Poultry Association Trade Show opened on January 25,1979. (Trial Transcript 2/13/90 at page 60, lines 4-7).

102. Samples of the 360 degree trigger action nipple drinkers were given out at that trade show. (Plaintiffs Exhibit 23, at page 104; Trial Transcript 2/14/90 at page 29, line 25 thru page 30, line 4.)

103. At the 1979 Southeastern Poultry Association Trade Show, 360 degree trigger action nipple drinkers were offered for sale by Ziggity. (Trial Transcript 2/14/90 at page 29, line 25 thru page 30, line 4).

104. The tenth version of the Ziggity nipple drinker, the drinker shown at the 1979 Southeastern Poultry Association Trade Show, was the forerunner of the Model 60 Trigger Action Drinker which became the standard nipple drinker product in mid-1979 and continued as Ziggity’s standard nipple drinker until early 1989. (Plaintiffs Exhibit 23, at page 198; Trial Transcript 2/13/90 at page 60, lines 1-8).

105. The tenth version of the Ziggity nipple drinker contained a machined stainless steel insert in the drinker body with a seven degree taper in the drinker outlet to provide for the side motion of the trigger pin which extended through and out of the drinker body outlet. (Plaintiff’s Exhibit 3, Drawing No. 10).

106. In February 1979, Mr. Hostetler sought quotes on a modified seat arrangement to use with a modified drinker body arrangement. Mr. Hostetler had found that in both the 360 degree trigger action nipple drinkers and the straight action nipple drinkers, it was possible for the ball valve to adhere to the thermal plastic seat and for the seat to become dislodged in the drinker body upon triggering of the trigger pin. (Plaintiffs Exhibit 23, at pages 136, 137, & 138).

107. The eleventh version of the Ziggity nipple drinker provided for a shoulder or collar on the inserted thermal plastic seat which cooperated with a change in the cap portion of the drinker body so that the cap would hold the seat in position within the drinker body and the valve chamber. (Plaintiff’s Exhibit 3, Drawing No. 11; Trial Transcript 2/13/90 at page 61, lines 12-19; page 62, lines 2-14).

108. The 360 degree trigger action nipple drinkers incorporating this eleventh design change were manufactured and sold in March of 1979 and thereafter. (Plaintiffs Exhibit 23, at pages 141, 143-46; Trial

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Transcript 2/14/90 at page 53, lines 14-23; page 34, line 1-10).

109. The twelfth version of the Ziggity nipple drinker, which did not become the standard drinker until 1989, became available in late 1979. In the twelfth version of the Ziggity nipple drinker, the machined stainless steel insert in the outlet of the drinker body was replaced with a stainless steel eyelet. Additionally, the drinker body was shortened and made more compact and the 0-ring which sealed the drinker body to the saddle in which the drinker body was mounted was moved from the side of the drinker body to the upper surface of the cap. This change made it easier to insert and remove the drinkers from the saddles. (Plaintiffs Exhibit 3, Drawing No. 12; Trial Transcript 2/13/90 at page 63, line 4 thru page 64, line 9).

110. The twelfth version of the Ziggity nipple drinker became very successful and as a result of the Ziggity nipple drinker’s success, resistance to nipple drinker systems was broken down to the point where in the mid to late 1980’s, the Ziggity nipple watering system was the preferred water system among poultry integrators and growers.

111. Throughout the development of the Ziggity nipple drinker, Mr. Hostetler has experimented with numerous seat materials in the hopes of finding a material with the right amount of resiliency, but one which was not adversely affected by the presence of chlorine or chemicals in vitamins and medications supplied to the chickens through the watering system. The search for the ideal material continues today. (Trial Transcript 2/13/90 at page 74, lines 20-24; Trial Transcript 2/15/90 at page 47, line 6 thru page 48, line 13).

112. Mr. Hostetler long ago discovered that stainless steel seats were not the answer because of the electrolysis problem. Further, stainless steel seats can become gummy and inoperative like any other seat material when certain vitamins and medications are placed into the watering system by poultry growers. (Trial Transcript 2/15/90 at page 51, lines 21-25; Trial Transcript 2/22/90 at page 73, lines 9-14).

113. In recognition of these developments after nearly a decade of use of nipple drinkers, Mr. Hostetler conceived the idea of using a plastic metering pin in the inlet of the drinker body to control and meter the quantity of water supplied to a chicken upon triggering of the nipple. This thirteenth version of the Ziggity nipple drinker is the current standard product offered for sale by Ziggity since early 1989. (Trial Transcript 2/13/90 at page 66, lines 5-22).

V. PATENT INFRINGEMENT

114. Val became involved in the poultry watering industry in the mid-1970’s. (Trial Transcript 2/21/90 at page 75, lines 2-4).

115. Yal’s first product was a cup watering system which it manufactured and sold until it commenced making and selling nipple drinkers in 1983. (Trial Transcript 2/21/90 at page 75, line 6; page 185, lines 17-20).

116. Val’s first nipple drinkers copied many of the features of the Ziggity nipple drinkers on the market in 1983. The Yal nipple drinkers used a pin substantially identical to the trigger pin used in the Ziggity 360 degree trigger action nipple drinker. Other features which were nearly identical were the body, the snap-on hook features, and the ball. (Trial Transcript 2/21/90 at page 20 thru page 21, line 14).

117. The Val nipple drinker could be mounted in the Ziggity saddles, and the Val drinker was physically interchangeable with the Ziggity drinker. (Trial Transcript 2/21/90 at page 24, lines 1-6).

118. The only significant distinction between the Val nipple drinker and the Ziggity nipple drinker in 1983, and subsequently, was the stainless steel machined seat used by Val as compared to the resilient injection molded seat used by Ziggity. (Trial Transcript 2/21/90 at page 20 thru page 21, line 14; Trial Transcript 2/22/90 at page 96, line 21 thru page 97, line 1).

119. After 1983 when Val Products commenced selling nipple drinkers, Ziggity’s 360 degree trigger action nipple drinker had enjoyed substantial commercial sue

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cess. (Trial Transcript 2/16/90 at pages 67-69).

120. In 1985, Ziggity commenced an action against the same defendants that are named in this action in the United States District Court for the Eastern District of Pennsylvania, Civil Action No. 85-0378. The Honorable Edward Cahn presided over that action. (Plaintiff's Exhibit 65).

121. In that action, Ziggity alleged that defendants had infringed Ziggity’s '088 patent by the manufacture, use, and sale of a 360 degree trigger action nipple drinker which included a trigger pin substantially identical to Ziggity’s trigger pin. (Plaintiff's Exhibit 65).

122. On February 4, 1987, a Stipulation of Dismissal of that action was filed after the parties had reached agreement on the terms of a settlement of the issues alleged in that action. (Plaintiff’s Exhibit 65).

123. Pursuant to the terms of that settlement, Val was given until April 1, 1987 to exhaust inventory of drinkers alleged to infringe the ’088 patent. (Plaintiff’s Exhibit 76; Trial Transcript 2/16/90 at page 127, lines 6-9).

124. In the Settlement Agreement, Ziggity agreed that a nipple drinker containing a pin with a flat upper surface on the head of the pin would not infringe the ’088 patent. (Plaintiff’s Exhibit 76).

125. In the Settlement Agreement, Ziggity released the defendants from claims of past infringement and covenanted not to sue the defendants for infringement of its patent with respect to any drinker made by the defendants which included a flat head trigger pin as shown in Exhibit A to the Settlement Agreement. (Plaintiff’s Exhibit 65).

126. Subsequent to April 1, 1987, Ziggity moved to enforce the Settlement Agreement contending that Val had sold 360 degree trigger action nipple drinkers having a trigger pin therein which had a recess in the head of the pin after April 1, 1987. (Plaintiff’s Exhibit 65).

127. At a hearing before Judge Cahn on June 10, 1987, Judge Cahn found that the charges made by Ziggity pertaining to the breach of the Settlement Agreement had been established and pursuant to an order of Judge Cahn, Val paid $12,000.00 to Ziggity and represented and warranted that 156,628 drinkers were sold by Val after April 1, 1987 containing the large recess headed trigger pins. (Plaintiff’s Exhibits 65 & 76).

128. At all times, the seat and trigger pins used in the Val nipple drinker have been manufactured by Vallorbs. (Trial Transcript 2/14/90 at page 128, lines 14-17; Trial Transcript 2/21/90 at page 53, lines 14-17).

129. Prior to April 1, 1987, Vallorbs commenced manufacturing trigger pins with a smaller recess for use in Val drinkers. (Trial Transcript 2/21/90 at page 197, lines 13-22).

130. The first operation in the manufacture of the trigger pins by Vallorbs was performed on a screw machine. Production of trigger pins on a screw machine results in the formation of a burr when the part is cut off of the bar stock in the screw machine. (Trial Transcript 2/14/90 at page 133, lines 3-4).

131. For a period of time after April 1, 1987, the trigger pins were manufactured on the screw machine with the large head portion of the pin coming out first and being part of the bar stock when machined. Using this method of manufacturing the trigger pins, the machined part is cut off of the bar stock at the small end of the trigger pin. (Trial Transcript 2/16/90 at page 49, lines 11-24).

132. This method of manufacture resulted in a very small or, in some cases, non-existent burr at the center of the upper surface of the head of the trigger pin. (Trial Transcript 2/16/90 at page 49, line 25 thru page 50, line 3).

133. Sometime in 1987, Val changed its method of manufacturing the trigger pins by machining the small end of the pin while the pin remained attached to the bar stock in the screw machine and cutting the pin off at the large head. (Trial Transcript 2/16/90 at page 51, lines 13-15).

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134. This procedure resulted in the formation of a screw machine burr on the upper surface of the head of the trigger pin. (Trial Transcript 2/14/90 at page 51, lines 13-15).

135. Vallorbs implemented a secondary manufacturing operation for the removal of the screw machine burr. (Trial Transcript 2/14/90 at page 132, lines 14-20).

136. The deburring operation used by Vallorbs consists of bringing a saw in contact with the burr on the head of the pin to remove a portion of the burr including the loose “slag” normally associated with a screw machine burr. (Trial Transcript 2/14/90 at page 136, line 8 thru page 137, line 1).

137. The saw contacts the flat surface of the pin with the plane of the saw being vertical to the plane of the head of the trigger pin. (Trial Transcript 2/14/90 at page 137, lines 2-13).

138. The saw operation leaves a portion of the burr projecting from the flat surface of the head of the trigger pin. (Trial Transcript 2/14/90 at page 137, lines 8-11).

139. In the next step of the deburring operation, the pin head is struck with a spherical punch. (Trial Transcript 2/14/90 at page 137, lines 17-20; page 138, lines 7-15).

140. The radius of the spherical punch is the same as the radius of the ball valve element used in the drinker — .156 inch. (Trial Transcript 2/14/90 at page 138, lines 16-18; Trial Transcript 2/16/90 at page 15, lines 17-23).

141. Some of the production drawings for the head of the trigger pin call for a tolerance of .001 inch in the overall height of the head of the pin from the lower flat surface to the upper flat surface. (Trial Transcript 2/21/90 at page 202, lines 20-23).

142. The Vallorbs secondary operation results in the formation of a recess in the center of the upper surface of the head of the trigger pin which is designed to vary between 0 and .003 inches. (Trial Transcript 2/16/90 at page 20, lines 18-20).

143. Measurements of the recess in trigger pins in Val drinkers found in the field after sale by Val were conducted by Eldon Hostetler on Ram Optical Measuring Equipment and revealed that the recess varies in depth from .002 inch to .0075 inch. The trigger pins manufactured by Vallorbs and assembled in the Val nipple drinkers are not flat, i.e. the upper surface of the Val trigger pin is

not

a continuous horizontal surface without a noteworthy depression. (Trial Transcript 2/13/90 at page 104, lines 14-25; page 105, lines 1-12; page 107, lines 2-23).

144. There is a recess in the upper surface of the head of the Val trigger pin of varying depth. (Trial Transcript 2/15/90 at page 43, lines 6-20; Trial Transcript 2/16/90 at page 20, lines 18-20).

145. As noted above, the recess is placed in the head of the pin by a spherical punch. (Trial Transcript 2/16/90 at page 15, lines 12-15).

146. The horizontal width of the recess increases with an increase in the depth of the recess. (Trial Transcript 2/21/90 at page 17, lines 9-12).

147. The recess made by the spherical punch has a circumferential edge where the recess meets the upper flat, or horizontal, surface of the Val trigger pin. (Trial Transcript 2/13/90 at page 107, lines 20-23).

148. The recess is a precise, carefully formed recess — it is not a surface irregularity. (Trial Transcript 2/14/90 at page 150, lines 10-23).

149. The small or bottom end to the Val trigger pin is smooth and has no burr or recess. (Trial Transcript 2/22/90 at page 50, lines 8-21).

150. There is a functional advantage to having the above described recess in the upper surface of the head of the Val trigger pin. (Trial Transcript 2/14/90 at page 123, lines 7-12).

151. The secondary deburring operation results in a uniform, within tolerance, clearance between the lower most portion of the ball valve element when seated in the drinker and the upper surface of the

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head of the trigger pin. (Trial Transcript 2/14/90 at page 150, lines 20-23; page 151, lines 14-21; Trial Transcript 2/22/90 at page 142, lines 8-25).

152. Clearance between the trigger pin and the ball valve element is necessary to assure that the ball valve element will not be held off of the seat when the drinker is not activated by a chicken. (Trial Transcript 2/14/90 at page 151, lines 14-21; page 125, lines 22-25).

153. When triggered, the edge region of the recess provides the initial point of engagement with the ball valve element resulting in leveraged off-center activation of the ball valve element. (Trial Transcript 2/14/90 at page 86, lines 4-8; page 87, lines 2-7).

154. When the trigger pin is tilted by the chicken, the long lever arm from the point of contact on the shank of the trigger pin to the fulcrum at one edge of the lower surface of the head of the trigger pin where it contacts the seat is greater than the lever arm from that fulcrum point to the point of contact of the trigger pin and the ball. (Trial Transcript 2/21/90 at page 20 thru page 21, line 14).

155. Simple laws of mechanics and physics dictate that, the shorter the second lever arm, the greater the advantage of force, and that, the longer the second lever arm, the greater the advantage of distance. (Trial Transcript 2/21/90 at page 24, lines 1-6).

156. The presence of the recess in the upper surface of the head of the Val trigger pin makes the nipple drinker easier to trigger by baby chicks and decreases the response time between activation of the trigger pin and the delivery of water to the chicken utilizing the drinker. (Trial Transcript 2/21/90 at page 26, lines 15-17).

157. The upper surface of the trigger pin can be made flat and within the desired tolerance of finish. (Trial Transcript 2/16/90 at page 145, lines 10-11; Trial Transcript 2/22/90 at pages 24-25).

158. The term “flat” requires a continuous horizontal surface without noteworthy peaks or depressions. The term “finish” relates to the smoothness of the flat surface and is measured in micro-inches. (Trial Transcript 2/14/90 at pages 146-150).

159. The chosen method of manufacturing the trigger pin by Vallorbs results in cost savings. (Trial Transcript 2/14/90 at page 153, lines 12-15; Trial Transcript 2/16/90 at page 16, lines 14-15; page 22, lines 8-14; page 33, lines 11-12).

160. The method of manufacturing the Val trigger pin creates a recess, that recess has an edge, and that edge provides the initial actuation engagement with the ball valve at a location spaced apart from the lowermost portion of the ball valve. (Trial Transcript 2/16/90 at page 15, lines 12-15; Trial Transcript 2/13/90 at page 107, lines 20-23).

161. Defendant Frederick W. Steudler, Jr. testified that he believes that the terms “confront” and “confronting” mean “touching.” (Trial Transcript 2/16/90 at page 70, lines 16-24).

162. Nothing in the dictionary definition of “confronting” requires that term to mean “touching.” Claim 19 contains no special requirement that the ball valve must actually be touching the valve actuator, other than of course during actuation engagement. Therefore, the spatial orientation of the recess as “confronting” the ball valve is

not

limited to actual contact between the recess and the ball valve.

163. In the Val nipple drinker, the recessed region and the ball valve are confronting.

164. The 360 degree trigger action nipple drinkers manufactured by Vallorbs and sold by Val containing the above-described recess in the center of the upper surface of the head of the trigger pin literally infringe Claim 19 of the '345 patent.

165. The 360 degree trigger action nipple drinkers manufactured by Vallorbs and sold by Val containing the above-described recess in the center of the upper surface of the head of the trigger pin also literally infringe Claims 1-2, 6-13, and 20-24 of the ’345 patent. (Defendants’ Exhibits 3 & 4).

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166. The 360 degree trigger action nipple drinkers manufactured by Vallorbs and sold by Val having a recess in the center of the upper surface of the head of the trigger pin, as described above, perform substantially the same function in substantially the same way to yield substantially the same result as does the claimed invention. (Trial Transcript 2/21/90 at page 24 thru page 26, line 14).

167. The 360 degree trigger action nipple drinkers manufactured by Vallorbs and sold by Val having a recess in the center of the upper surface of the head of the trigger pin, as described above, infringe Claims 1-13 and 19-24 of the ’345 patent and Claims 3-5 of the reexamined ’088 patent under the doctrine of equivalents.

{See, e.g.,

Defendants’ Exhibits 3 & 4).

VI. WILLFUL INFRINGEMENT

168. Vallorbs, the manufacturer of the trigger pin used in the . Val nipple drinker, as well as the two individual defendants, have been and still are (with, of course, the exception of Frederick W. Steudler, Sr.) involved in the screw machine industry and have developed an expertise in manufacturing small precision parts. Ziggity, on the other hand, does not manufacture any of the component parts of its nipple drinker and has no expertise in the screw machine industry.

169. The term “flat” has a special meaning in the screw machine industry. (Defendants’ Exhibits 163-172).

170. Within the screw machine industry, the heads of defendants’ trigger pins are considered flat. (Trial Transcript 2/22/90 at page 109, lines 5-13; page 121, lines 5-7).

171. In June 1987, Val presented Mr. Ramik, defendants’ patent counsel, with examples of what it considered to be flat-headed trigger pins. (Defendants’ Exhibits 278-1 thru 278-4; Trial Transcript 2/20/90 at page 98, line 11 thru page 100, line 24). At that time, Mr. Ramik provided Val with his verbal opinion that the head of its new trigger pin was flat and, thus, that the new trigger pin did not infringe either of the patents-in-suit. (Trial Transcript 2/20/90 at page 100, line 25 thru page 101, line 18; Trial Transcript 2/21/90 at page 86, line 2 thru page 87, line 9).

172. On June 12, 1987, Ziggity raised some concern over whether defendants had breached the Settlement Agreement reached in the previous litigation between the parties (Defendants’ Exhibit 9) by manufacturing and using the trigger pins with the smaller recesses. (Plaintiff’s Exhibit 65). However, for nineteen months thereafter, Ziggity did not raise any more objections concerning Val’s newly designed trigger pins. (Trial Transcript 2/21/90 at page 124, line 9-15; page 206, lines 1-16).

173. Defendants did not become aware that Ziggity did not consider the head of their new trigger pin to be flat until Ziggity initiated this lawsuit in January of 1989. (Trial Transcript 2/21/90 at page 206, lines 10-16).

174. Based on the totality of the circumstances, I find that defendants acted in good faith in attempting to design around the patents-in-suit and had a reasonable basis for believing that their new trigger pins were flat and, thus, not infringing the patents-in-suit. Consequently, I further find that defendants’ infringement of the patents-in-suit was

not

willful.

VII. LIABILITY OF THE DEFENDANTS

175. Val makes, uses, and sells the infringing nipple drinkers.

176. The seats and trigger pins manufactured by Vallorbs are components of the infringing drinkers sold by Val. (Trial Transcript 2/14/90 at page 128, lines 14-17).

177. The seats and trigger pins manufactured by Vallorbs and assembled into the nipple drinkers sold by Val are a material part of the invention of the ’088 and ’345 patents. (Plaintiff’s Exhibits 49-B, 50-B, 51-B, and 68).

178. The seats and trigger pins manufactured by Vallorbs and assembled into the nipple drinkers sold by Val are specially made for use in such drinkers and are not staple articles or commodities of com

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merce suitable for substantial non-infringing use. By manufacturing the seats and trigger pins for use in the Val drinker, Vallorbs has contributorily infringed the ’088 and ’345 patents. (Plaintiff’s Exhibits 66 & 68).

179. Vallorbs manages Val and controls Val’s actions. (Plaintiff’s Exhibit 68, page 24, line 9 thru page 25, line 9). The management of Vallorbs makes the decisions concerning the products which are sold by Val. Therefore, Vallorbs has induced Val to infringe the patents-in-suit.

180. Val and Vallorbs are almost totally integrated through common management, common employees, and common physical facilities. (Plaintiff’s Exhibit 68, at page 24, lines 5-24; Trial Transcript 2/21/90 at page 182). In essence, Vallorbs is the manufacturing arm for Val’s nipple drinkers. (Plaintiff’s Exhibit 68, at page 24, line 12 thru page 25, line 9).

181. Frederick W. Steudler, Sr. and Frederick W. Steudler, Jr., along with Richard Steudler, have total and final authority and control over Vallorbs and Val. (Trial Transcript 2/14/90 at page 155, lines 13-15; Trial Transcript 2/15/90 at page 175, lines 20-15; pages 187-190; Trial Transcript 2/20/90 at page 148, lines 1-12).

182. Frederick W. Steudler, Sr. and Frederick W. Steudler, Jr. were the principal officers, directors, and managers of all activities of Val and Vallorbs on a day to day basis. (Plaintiff’s Exhibit 68, at page 75, line 20 thru page 76, line 11; page 442, line 24 thru page 443, line 1). As corporate officers, they were certainly aware of what they were doing and of their activities.

183. Frederick W. Steudler, Sr. and Frederick W. Steudler, Jr. actively participated in both the manufacture and sale of the infringing products. (Trial Transcript 2/26/90 at page 119, lines 8-18; page 42, line 21 thru page 43, line 19).

184. Frederick W. Steudler, Sr. died on August 16, 1989. (Stipulated).

185. Ziggity moved to substitute Jeanette Steudler, in her capacity as executrix and representative of the estate of Frederick W. Steudler, Sr., for Frederick W. Steudler, Sr. as a party defendant. By order dated February 9, 1990, the court granted this motion and ordered that the caption of the case be amended accordingly.

186. Defendant Frederick W. Steudler, Sr., prior to his death, and defendant Frederick W. Steudler, Jr. have induced Val and Vallorbs to infringe the patents-in-suit.

VIII. PATENT VALIDITY

A. 35 U.S.C. § 103 (Obviousness)

187. The relevant prior art is that art which a person with ordinary skill in the art of nipple-type watering drinkers for fowl and small animals could reasonably be expected to look for solutions to problems relating to nipple drinkers, such as controlling water leakage and obtaining water flow upon slight lateral movement of the trigger pin. With respect to the problem of controlling water leakage, the general art of fluid valves is potentially relevant. With respect to the problem of obtaining water flow upon slight lateral movement of the trigger pin, the relevant art is the more specific art of designing and manufacturing nipple-type watering devices for poultry, wherein the poultry, including day old chicks, must affirmatively activate a triggering device to obtain water.

188. The content of the prior relevant art is (1) the fourth and nine versions in the development of the Ziggity nipple waterer, (2) the nipple waterer described in the 1977 EZ Sip brochure published by Ziggity, and (3) United States and foreign patents defined to be prior art within 35 U.S.C. § 102 . (Defendants’ Exhibits 5 & 8.)

189. Defendants contend that the most relevant of the prior art is the Clark patent, assigned to Fox Products Company, U.S. Patent No. 3,756,199, hereinafter, “the Clark patent” or “the Fox drinker.” (Defendants’ Exhibits 2, 3, 4, 5, & 12; Trial Transcript 2/16/90 at page 155, lines 19-23).

190. Fox Products Company manufactured and sold nipple drinkers constructed as described in the Clark patent from the early to mid-1970’s. (Trial Transcript

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2/21/90 at page 57, lines 22-25 thru page 58).

191. The Fox drinker met with minimal commercial success, and Fox Products Company eventually ceased production. (Trial Transcript 2/20/90 at page 125, lines 12-25; page 126, lines 1-6).

192. More recently, the inventor, Clark, has commenced manufacturing a drinker similar to that shown in Figure 1 of the Clark patent, which has been redesigned to attempt to correct problems prevalent with the earlier Fox drinker. (Trial Transcript 2/21/90 at page 177, lines 20-24; pages 178-180).

193. The Clark patent was issued September 4, 1973, and commercial embodiments of the drinker described in the Clark patent were manufactured and sold at that time and thereafter. (Defendants’ Exhibit 5).

194. Ziggity has approximately 70 percent of the nipple drinker market, and defendant Yal has approximately 30 percent of the nipple drinker market. All others offering nipple drinkers for sale, including the redesigned Clark nipple drinker, account for less than 5 percent of the nipple drinker market. (Trial Transcript 2/15/90 at page 55, lines 4-5; page 32, lines 2-12).

195. The Clark patent and the commercial embodiment of the Fox drinker utilize a flat disc valve triggered by a flat-headed trigger pin. (Defendants’ Exhibit 5).

196. The Clark patent discloses '360 degree trigger action. (Defendants’ Exhibit 5; Trial Transcript 2/16/90 at page 171, lines 11-13).

197. The EZ Sip brochure and versions 4 and 9 of the No. 50 Ziggity trigger drinker do not disclose 360 degree trigger action. The primary difference between the claimed invention and the EZ Sip brochure and the No. 4 and 9 versions of the Ziggity nipple drinker is the 360 degree off-centered leveraged actuation called for in the claims of the ’088 and ’345 patents. (Plaintiff’s Exhibits 42 & 43; Trial Transcript 2/14/90 at page 31, lines 20-22).

198. The primary and distinct differences between the disclosure of the Clark patent and the claimed invention is the use of a ball valve means in the claimed invention, as opposed to the flat disc valve means disclosed in the Clark patent, and the resulting off-centered leveraged actuation of the ball valve means called for in the claims of the ’088 and ’345 patents. (Plaintiff’s Exhibits 42 & 43; Defendants’ Exhibit 5).

199. Defendants contend that these differences between the invention claimed in the ’088 and ’345 patents and the prior art (the EZ Sip brochure and the Clark patent) are such that the subject matter as a whole would have been obvious to one of ordinary skill in the art to which such subject matter pertains at the time the invention was made in 1979.

200. In support of that contention, defendants assert that U.S. Patent No. 2,851, -007 issued on September 9, 1958 to Kagan, which discloses a poultry watering valve and which was a reference of record during the prosecution of the re-examination of the ’088 and ’345 patents, discloses a ball valve means. (Defendants’ Exhibits 2, 3, 4, & 5).

201. The poultry watering device disclosed in Kagan is a vertical action nipple drinker wherein the ball valve means is unseated allowing the flow of water upon

vertical

motion of the trigger pin — not

lateral

motion of the trigger pin. (Defendants’ Exhibit 131; Trial Transcript 2/13/90 at page 157, lines 9-24).

202. Defendants also note U.S. Patent No. 3,163,394 issued on December 29, 1964 to Downin. The Downin patent was not of record during the prosecution of the ’088 and ’345 patents. (Defendants’ Exhibit 125).

203. Downin discloses a ball valve for use in a faucet in a relatively high pressure water distribution system. The structure disclosed in Downin and according to the specification in Downin, was developed by the inventor to overcome pressure surges in the distribution system caused by the rapidity with which the ball valve opens and closes the faucet. The ball valve in Downin is unseated by rotation of a cam

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member which pushes the ball valve off the seat when the higher lobe of the cam comes in contact with the ball valve. Downin is non-analogous prior art. (Defendants' Exhibit 125).

204. Defendants also note French Patent No. 2,068,037 published August 20, 1971 naming Monnier as the applicant’s representative. (Defendants’ Exhibits 126 & 127).

205. Monnier discloses a device for blowing compressed air of the type known in practice as “air guns” which are intended to project a jet of compressed air for cleaning mechanical and other parts. (Defendants’ Exhibits 126 & 127).

206. Monnier discloses a hollow nozzle for the jet of compressed air which has a concave surface at its inlet and which in a closed position rests on the convex surface of a ball valve means. Compressed air is allowed to enter the hollow core of the nozzle when the nozzle is deflected angularly with respect to the center line of the nozzle structure thereby permitting air to enter the inlet of the hollow stem of the nozzle. (Defendants’ Exhibits 126 & 127).

207. Monnier is a non-analogous prior document. Monnier is dealing with a structure of a valve suitable for opening and closing a passage to allow or prevent compressed air from entering the passage. Monnier does not teach unseating a ball from a seat by off-centered leverage actuation. Monnier teaches the use of mating convex and concave surfaces to provide a seal in an open position and opening the passage in the central core in the nozzle by angular deflection of the nozzle so as to break the seal between the end of the nozzle and the ball valve. Monnier’s valve structure is not within the environment of fluid valves or poultry watering equipment and, thus, is not relevant prior art. (Defendants’ Exhibits 126 & 127).

208. Defendants note French Patent No. 734,635 published in October 5, 1932 and issued to Maury. (Defendants’ Exhibit 128).

209. Maury is a non-analogous prior document. Maury discloses a stopcock for use with high pressure water systems. Maury, like Monnier, disclosed a hollow discharged jet, the inlet of which is blocked by a valve member having a convex surface which cooperates with the upper surface of the discharge jet. Maury provides for allowing fluid to enter the hollow stem of the discharge jet upon angular displacement of the jet which disrupts the mating relationship between the convex surface of the blocking member. Like Monnier, Maury provides a convex surface on a blocking member to prevent entry of water into the hollow core of the discharged jet. Like Monnier, in Maury, upon angular displacement of the discharged jet, the seal between the blocking member and the inlet end of the discharged jet is broken allowing high pressure water to enter the discharge jet. (Defendants’ Exhibit 128).

210. Finally, defendants note U.S. Patent No. 3,477,408 issued on November 11, 1969 to Mull. (Defendants’ Exhibit 130).

211. Mull discloses an open trough type watering system which contains a float valve which is used to unseat, in a purely vertical motion, a ball valve to allow additional water to fill the trough when the float sinks sufficiently low in the trough. (Defendants’ Exhibit 130).

212. The upper surface of the rod which unseats the ball valve is concave to mate with the convex surface of the ball valve; at the inlet to the trough, the connecting rod 88. is raised and lowered vertically through guide member 90. (Defendants’ Exhibit 130).

213. Kagan was of record during the prosecution of the ’088 patent and ’345 patent. Downin, Monnier, and Maury do not disclose devices useful in the relevant art — the design and manufacturing of poultry watering equipment. (Defendants’ Exhibits 2, 3, 4, 5, & 8).

214. All of the prior art relied upon by the defendants was either of record during the prosecution of the ’088 and ’345 patents (EZ SIP brochure, Kagan, and Mull) or is not analogous prior art (Monnier and Maury) or is merely cumulative of prior art which was of record (Mull).

*779

215. The difference between the invention claimed in the ’088 and ’345 patents and the relevant prior art would not have been obvious to one of ordinary skill in the relevant prior art at the time the invention was made in 1979.

216. The claimed invention has enjoyed substantial commercial success. Prior to the availability on the market of the Ziggity 360 degree trigger action nipple drinker in the Spring of 1979, nipple drinkers had little success in the poultry watering market. (Trial Transcript 2/13/90 at page 39, line 21 thru page 40, line 1).

217. The success of the Ziggity 360 degree trigger action nipple drinker is because of the ease with which it is triggered by baby chicks, particularly chicks that have had their upper and lower beaks removed. When Ziggity commenced business in 1977, the then available European style nipple drinkers had been unsuccessful and had created resistance to the adoption of nipple drinking systems by poultry integrators and growers. Ziggity’s success, at first, was minimal. (Trial Transcript 2/13/90 at page 39, line 21 thru page 40, line 1).

218. Since the introduction of the 360 degree trigger action drinker, Ziggity’s sales have doubled every year until fiscal 1989, and Ziggity now has 70% of the nipple market. (Trial Transcript 2/15/90 at page 30, lines 19-23).

219. Ziggity’s success has paved the way for defendants’ entry into the nipple market. There is a nexus between Ziggity’s commercial success and the claimed invention. (Trial Transcript 2/15/90 at page 31, lines 18-23; page 60, lines 5-9).

220. The poor performance of nipple drinkers of the European style and those such as the Fox drinker that were available in the United States in the mid-1970’s created a long felt need for a successful nipple drinker system. (Trial Transcript 2/13/90 at page 39, lines 21 thru page 40, line 1; Trial Transcript 2/14/90 at page 79, line 15 thru page 80, line 5).

221. Most poultry integrators and growers recognize the advantage of a closed system in terms of reduced labor and the avoidance of a high incidence of disease and contamination of the water supply. Until the Ziggity 360 degree trigger action nipple drinker was marketed in 1979, no successful nipple drinker or other closed system had been brought to the market. (Trial Transcript 2/14/90 at page 78, lines 8-25).

222. Val copied certain of the features of the Ziggity nipple drinker, including the snap on hook arrangement, and Val designed its drinker so that its drinker could be fit within the saddles produced by Ziggity for mounting the Ziggity nipple drinker. (Trial Transcript 2/16/90 at page 121, line 8 thru page 122, line 20).

223. The initial Val drinker first sold in 1983 was virtually identical to the Ziggity nipple drinker in all respects with the exception of the use of a stainless steel seat as compared to the Ziggity resilient seat. (Trial Transcript 2/21/90 at page 20 thru page 21, line 14; Trial Transcript 2/22/90 at page 96, line 21 thru page 97, line 1).

224. The ’088 and ’345 patents have been acknowledged by others. When charged with infringement, Monoflo and Impex nipple drinker manufacturers agreed to commence making flat headed trigger pins to avoid infringement of the '088 and ’345 patents. (Trial Transcript 2/13/90 at page 122, line 12 thru page 125, line 6).

B. 35 U.S.C. § 102 (On Sale Bar)

225. The sixth and eighth versions in the development of the Ziggity nipple drinkers were used experimentally and were

not

shown to work for their intended purpose prior to January 21, 1979. The seventh version of the Ziggity nipple drinker was used experimentally by Creighton Brothers and was

not

shown to work for its intended purpose prior to January 21, 1979. Hence, the sixth, seventh, and eighth versions in the development of the Ziggity nipple drinker are

not

prior art. (Trial Transcript 2/13/90 at page 69, lines 6-10).

226. The claimed invention was

not

in public use or on sale in the United States

*780

prior to January 21, 1979. (Trial Transcript 2/14/90 at page 56, lines 12-15).

227. The invention claimed in the '088 and '345 patents was

not

known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by Eldon Hostetler. (Trial Transcript 2/13/90 at page 101, lines 15-25).

228. Eldon Hostetler did

not

abandon the invention claimed in the '088 and '345 patents.

229. The invention claimed in the

’088

and '345 patents was

not

first patented or caused to be patented and was

not

the subject of an inventor’s certificate by Eldon Hostetler or his legal representatives or assigns in a foreign country prior to January 21, 1980 on an application for patent or inventor’s certificate filed prior to January 21, 1979.

230. The claimed invention in the '088 and ’345 patent was

not

described in a patent granted on an application for patent by anyone else filed in the United States before the invention thereof by Eldon Hostetler and was

not

described in a patent granted on an international application by another who had fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of title 35 of the United States Code before this invention by Eldon Hostetler.

231. Eldon Hostetler did himself solely invent the subject matter sought to be patented. (Trial Transcript 2/13/90 at page 101, lines 15-22).

232. Before Eldon Hostetler’s invention thereof, the invention claimed in the ’088 and ’345 patents was

not

made in this country by another who had not abandoned, suppressed, or concealed it.

233. The invention claimed in the ’088 and ’345 patents is novel.

C. Inequitable Conduct

234. As noted above, the sixth, seventh, and eighth versions in the development of the Ziggity nipple drinker are

not

prior art.

235. The Boegley reference, U.S. Patent No. 3,385,267, was cited by the Examiner in connection with the examination of the application pending in the Netherlands. Boegley, 3,385,267, was subsequently cited and relied upon by the Examiner during the original prosecution for the ’088 patent. (Defendants’ Exhibits 5 & 8).

236. The Examiner cited the Boegley 3,385,267 patent for its teaching of a serrated or multi-stepped seat cooperating with the radius of a cup-headed trigger pin. (Defendants’ Exhibit 8).

237. Ziggity’s then current patent attorney pointed out to the Examiner that the Boegley reference did not teach or suggest the combination of two valve elements namely, a ball and a pin head, cooperating with multiple spaced valve seats. (Defendants’ Exhibit 2).

238. Upon filing that amendment, the Examiner issued the ’088 patent. (Defendants’ Exhibits 2 & 3; Plaintiff’s Exhibit 42).

239. During the re-examination of the ’088 patent requested by the defendants, defendants and the Patent Office primarily relied upon the teaching of Winegard, U.S. Patent No. 3,077,896, for the same or related propositions. (Defendants’ Exhibit 3).

240. Winegard is more pertinent than Boegley 3,385,267.

241. No material prior art was withheld from the Patent Office by Mr. Hostetler or his attorneys.

242. To the extent that any material prior art was withheld from the Patent Office, the withholding of such prior art from the Patent Office was neither intentional, nor grossly negligent.

D. 35 U.S.C. § 112

243. The specification of the '088 and ’345 patents, including the drawings, contain a sufficient description of the invention and of the manner and process of making and using the invention in full, clear, concise, and exact terms so as to enable any person skilled in the art of designing and manufacturing poultry watering systems to make and use the invention. (Defendants’ Exhibits 2, 3, & 4).

*781

244. The specification, including the drawings, discloses the best mode contemplated by Eldon Hostetler for carrying out his invention at the time the patent application was filed on January 21,1980. (Defendants’ Exhibits 2, 3, & 4).

E. 35 U.S.C. § 132 (New Matter)

245. All of the claimed subject matter in the ’088 and ’345 patents are supported by the original specification, including the drawings. No amendment during the prosecution history introduced new matter into the disclosure of the invention. (Defendants’ Exhibits 2, 3, & 4).

IX. DAMAGES

246. The products which compete in the poultry watering equipment market are open water systems, such as cups, bells, troughs, and closed systems, such as nipple drinkers. (Trial Transcript 2/15/90 at page 12, lines 8-14).

247. While some users of poultry watering equipment remain loyal to open water systems, their number is rapidly decreasing. (Trial Transcript 2/15/90 at page 30, lines 12-18).

248. There is a separate and distinct market for nipple drinkers. (Trial Transcript 2/15/90 at page 17, line 3-13).

249. Buyers of poultry watering equipment are either buyers of open watering systems or buyers of nipple watering systems. (Trial Transcript 2/15/90 at page 17, lines 6-10).

250. Those who have used nipple watering systems do not revert back to using open watering systems. (Trial Transcript 2/15/90 at page 16, lines 8-14).

251. Within the nipple market, Ziggity has approximately 70 percent of the total nipple drinker sales, and Val has approximately 30 percent of the total nipple drinker sales. (Trial Transcript 2/15/90 at page 31, line 24 thru page 32, line 7).

252. All the other manufacturers of nipple drinkers have an insignificant percentage of the total nipple drinker sales — not more than 2-5 percent. (Trial Transcript 2/15/90 at page 32, lines 8-12).

253. Ziggity and Val market their nipple drinker through distributors. The buyers of poultry watering equipment are poultry integrators and contract growers. There are less than 50 poultry integrators in the United States market. Four to five poultry integrators comprise 70 to 80 percent of the poultry market. Poultry integrators are vertically integrated operations that produce all supplies required for the breeding, hatching, processing, and feeding of chickens, with the exception of the houses in which the chickens are raised. (Trial Transcript 2/15/90 at pages 18-26; Trial Transcript 2/23/90 at page 51, lines 15-18).

254. There are two large segments of the poultry market. One is the cage operations for the production of eggs, and the other is the floor operations for growing chickens for the production of chicken meat for human consumption. (Trial Transcript 2/15/90 at page 26, lines 17-24).

255. There is no significant open market for chickens or eggs outside of the market developed by the integrators. (Trial Transcript 2/15/90 at page 22, lines 3-19).

256. Integrators contract with farmers to raise broiler chickens for meat production and to house chickens for egg production. (Trial Transcript 2/15/90 at page 18, lines 6-9).

257. Typically, the contract growers own the houses and the equipment, including the poultry watering equipment used in the houses. (Trial Transcript 2/15/90 at page 18, lines 20-23).

258. Some integrators require that contract growers use a specific brand and type of poultry watering equipment. Other integrators have approved lists of brands and types of poultry watering equipment. (Trial Transcript 2/15/90 at page 17, lines 21-23).

259. Ziggity and Val concentrate sales efforts on integrators and compete for inclusion on the approved list of manufacturers of poultry watering equipment. (Trial Transcript 2/15/90 at page 17, lines 21-25; Trial Transcript 2/21/90 at page 203, line 22 thru page 204, line 14).

*782

260. The factors evaluated by integrators in selecting poultry watering equipment are the mortality rate of chicks, the ratio of feed consumed to weight gained in boiler operations, the total weight gained per bird, and the frequency of condemnation of disease or defective birds upon processing. (Trial Transcript 2/15/90 at pages 19-20).

261. There is a strong demand for the Ziggity and Val nipple drinker products. (Trial Transcript 2/15/90 at page 30, lines 9-11).

262. Val’s drinker would not have performed as well as it did if Val had not infringed the ’088 and '345 patents. (Trial Transcript 2/23/90 at page 47, line 25; page 48, lines 1-3; page 59, lines 23 — 25; page 60, lines 1-14).

263. Poor performance of the Val drinker would have resulted in removal as an authorized or approved supplier on the integrator supplier lists. (Trial Transcript 2/15/90 at page 36, line 18 thru page 37, line 2).

264. Ziggity would have obtained approximately 70 percent of the sales of the Val nipple drinkers and related products if Val had not infringed the ’088 and ’345 patents. (Trial Transcript 2/15/90 at page 38, line 14 thru page 39, line 2).

265. Ziggity did, at all relevant times, have the capacity, and presently has the capacity, to manufacture and market substantially more nipple drinkers to accommodate a greater demand for its product and, thus, would have been able to accommodate the sales to Val’s customers. (Trial Transcript 2/15/90 at page 66, lines 5 — 20; pages 71-74; pages 104-107).

266. But for the infringement by defendants, Ziggity could have charged a higher price for its nipple drinkers. (Trial Transcript 2/15/90 at page 41, lines 5-14).

267. Ziggity’s damages resulting from the infringement include lost profits in the form of price erosion. (Trial Transcript 2/15/90 at page 102, lines 21-25; page 103, lines 1-10).

268. Ninety-six to ninety-eight percent of Ziggity’s drinker sales, excluding replacements, are sales of drinkers in connection with sales of the entire nipple drinker watering system, including, but not limited to, the regulators, pipes, saddles, hangers, anti-perch devices, raps, clamps, valves, and filters. (Trial Transcript 2/15/90 at page 34, lines 3-18).

269. The nipple drinker drives the sale of the entire nipple drinker watering system. Accordingly, the sale of parts of the system not covered by the ’088 and ’345 patents are convoyed with the sale of nipple drinkers. (Trial Transcript 2/15/90 at page 33, lines 6-15; page 109, lines 4-6; Trial Transcript 2/22/90 at page 71, lines 6-14).

270. Based on profits on 70 percent of Val’s sales, a reasonable royalty of 15% on the sales that Val would have retained, price erosion, convoyed sales, and prejudgment interest, Ziggity’s damages total $3,835,090.46. (Plaintiff’s Exhibit 47).

X. BREACH OF CONTRACT COUNTERCLAIMS

A. The Settlement Agreement

271. In the Settlement Agreement, Ziggity covenanted not to sue defendants for patent infringement if the head of their trigger pin was flat. (Plaintiff’s Exhibit 76).

272. The upper surface of the trigger pin in the Val nipple drinker is

not

flat. (Trial Transcript 2/22/90 at page 68, lines 1-14 & 19-23; page 95, lines 4-11).

273. Accordingly, Ziggity did

not

breach the Settlement Agreement.

274. Defendants also raise the defenses of release and license. Both of these defenses are based upon defendants’ contention that the upper surface of the trigger pin in the Val nipple drinker is flat.

275. The upper surface of the trigger pin in the Val nipple drinker is

not

flat. (Plaintiff’s Exhibit 65; Trial Transcript 2/22/90 at page 68, lines 1-14 & 19-23; page 95, lines 4-11).

276. Hence, the defenses of release and license are without merit.

*783

B. The Oral Agreement

277. At the conclusion of the hearing to enforce the Settlement Agreement that the parties entered into in their previous patent litigation, which hearing was conducted on June 12, 1987, Judge Cahn of this court suggested that Ziggity’s counsel should contact Val’s counsel prior to commencing any action for infringement based on the theory that Val’s small-recess-headed trigger pin infringed Ziggity’s patents-in-suit. (Plaintiff’s Exhibit 65, at page 89, lines 8-11).

278. Counsel for Ziggity stated at the hearing that he would do so. (Plaintiff’s Exhibit 65, at page 89, lines 12-13).

279. There was no consideration for the alleged contract. (Plaintiff’s Exhibit 65).

280. Ziggity commenced this action in January 1989.

281. There had been substantial contact between counsel for Ziggity and Val regarding Ziggity’s belief that Val was continuing to violate the Settlement Agreement and the Court’s order of June 12, 1987. (Defendants’ Exhibits 176, 177, 178, & 180).

282. When the action was filed in this court, a courtesy copy was delivered to counsel for the defendants with a letter from Ziggity’s counsel stating a willingness to discuss resolution of the dispute prior to the incurrence of expense in the conduct of litigation. (Plaintiff’s Exhibit 48).

283. Defendants proceeded with an answer and counterclaim and discovery commenced.

284. Defendants suffered no damages as a result of Ziggity’s alleged breach of its agreement to contact the defendants prior to initiating this lawsuit because defendants were never deprived of their opportunity to attempt to settle this lawsuit and avoid unnecessary litigation.

285. In light of all the surrounding circumstances, defendants were

not

justified in relying on Ziggity’s lack of complaints with respect to their new trigger pins during a ten-month period as a positive endorsement of their new trigger pins. (Trial Transcript 2/21/90 at page 208, lines 6-9).

286. Ziggity made it clear at the hearing before Judge Cahn on June 12, 1987 that Val’s new trigger pin did

not

have a flat head. (Plaintiff’s Exhibit 65).

287. Defendants did

not

acquire the machinery for the secondary operation (burr removal) in reliance on anything Ziggity did or did not do. Rather, defendants purchased the machinery to reduce the cost of manufacturing and to increase the volume of production of trigger pins. (Trial Transcript 2/14/90 at page 153, lines 12-15; Trial Transcript 2/16/90 at page 16, lines 14-15; page 22, lines 8-14; page 33, lines 11-12; Trial Transcript 2/21/90 at pages 205-206).

DISCUSSION

I. PATENT INFRINGEMENT ANALYSIS

The burden of proof as to factual issues relating to defendants’ infringement rests upon the patent owner, Ziggity. The level of persuasion necessary to meet that burden is a preponderance of the evidence.

Hughes Aircraft Co. v. United States,

717 F.2d 1351, 1361 (Fed.Cir.1983). It is not necessary for the patent owner to prove that every claim of the patent is infringed. Infringement of any single claim establishes liability.

The infringement analysis entails two principal inquires: (1) a determination of the scope of the claims as a matter of law and (2) the factual finding of whether the properly construed claims encompass the accused structure.

Mannesmann Demag Corp. v. Engineered Metal Prod. Co.,

793 F.2d 1279, 1282 (Fed.Cir.1986);

Fromson v. Advance Offset Plate, Inc.,

720 F.2d 1565, 1569 (Fed.Cir.1983). This analytical framework applies both where claims are asserted to be literally infringed and where infringement occurs under the doctrine of equivalents.

Texas Instruments, Inc. v. United States Int’l Trade Comm’n,

805 F.2d 1558, 1562 (Fed.Cir.1986).

A. Scope of the Claims at Issue

A claim must be construed in light of the language of the claim, the prior art,

*784

the prosecution history, and the patent specification, and not in light of the accused device. “It is only

after

the claims have been

construed without reference to the accused device,

that the claims, as so construed, are applied to the accused device to determine infringement.”

SRI Int’l v. Matsushita Elec. Corp. of America,

775 F.2d 1107, 1118 (Fed.Cir.1985) (emphasis in original).

The specification and drawings are useful aids in ascertaining the scope and meaning of the language employed in the claims.

United States v. Telectronics, Inc.,

857 F.2d 778, 781-82 (Fed.Cir.1988),

cert. denied,

490 U.S. 1046 , 109 S.Ct. 1954 , 104 L.Ed.2d 423 (1989). The invention defined by the claims, however, is not restricted to the precise structure disclosed by the specification and drawings.

See SRI Int’l,

775 F.2d at 1121-1122 ;

Lemelson v. United States,

752 F.2d 1538, 1552 (Fed.Cir.1985);

Autogiro Co. of America v. United States,

384 F.2d 391, 396-98 , 181 Ct.Cl. 55 (1967).

The specification “set[s] forth the best mode contemplated by the inventor of carrying out his invention.” 35 U.S.C. § 112 . This one embodiment of the invention does

not

restrict the claims. Claim interpretation must

not

make use of “best mode” terms inasmuch as the patentee need

not

guard against infringement by listing every possible infringing device in the specification.

SRI Int’l,

775 F.2d at 1122 (quoting

Auto-giro,

384 F.2d at 398 ). Only the words, terms, and phrases of the claim itself “define the metes and bounds of the protection afforded by the claims.”

Palumbo v. Don-Joy Co.,

762 F.2d 969, 974 (Fed.Cir. 1985). When necessary, these words, terms, and phrases are construed in light of the specification. However, to read the specification into the claims would obviate the need for their statutorily required existence in the patent.

SRI Int’l,

775 F.2d at 1121 . Further the claims of the patent are to be construed so as to maintain the validity of the patent if that is at all possible.

ACS Hosp. Sys. v. Montefiore Hosp.,

732 F.2d 1572, 1577 (Fed.Cir.1984); 35 U.S.C. § 282 .

1.

Scope of Claim 19 of the ’345 patent

In the present litigation, Ziggity asserts infringement of Claims 1-13 and 19-24 of the ’345 patent (Plaintiff’s Exhibit 43) and Claims 3-5 of the ’088 patent (Plaintiff’s Exhibit 42). Claim 19 of the ’345 patent is a representative claim to which the remaining claims have been and will be compared, although each claim stands on its own merits with respect to the infringement and validity analysis. 35 U.S.C. § 282 .

At the outset, the preamble of Claim 19 defines the invention as “a watering device for fowl and small animals.” Claim 19 further defines the invention as having a “housing.” The specification states that elements 20 and 30 of the patent drawings exemplify such a housing. Claim 19 goes on to define, in ordinary language, a specific valve structure formed within that housing. That valve structure comprises the following: upper and lower seats, a ball valve for bearing on the upper seat to seal against fluid flow, a valve actuator with a portion projecting through and beyond the outlet and portion bearing on the lower seat, and a specifically oriented recess in the head portion of the valve actuator. The last two subparagraphs of Claim 19 describe the spatial and functional interrelationships of the components of this structure.

Nowhere in Claim 19 are absolute dimensions of the components specified, nor do they need to be.

See

35 U.S.C. § 112 , ¶16. Any structure of these components in the defined arrangement which provides the defined function within the defined environment is included within the language of that claim. Hence, any watering device for fowl with a ball valve/actuator structure of the type set forth in Claim 19 is literally within the scope of Claim 19.

Claim 19 does not specify the size of the recess in terms of absolute numbers, but instead in terms of what the recess must accomplish. In particular, the size of the recess must be such that the edge region of the recess can cooperate with the ball valve

*785

to provide a specific form of “initial actuation engagement” in response to “lateral movement” of the valve actuator pin. Claim 19 further defines that specific form of initial actuation engagement as being that which is “provided at a location spaced apart from the lowermost portion of the ball valve.” In a broad sense then, the size of the recess must only be sufficiently large and spatially oriented to permit the edge of the recess to initially engage the ball valve at a place away from the lowermost portion of the ball valve.

Claim 19 likewise specifies the extent of “lateral movement” not in terms of absolute distances, but instead in terms of its necessary function within the environment — whatever such movement is necessary to cause the ball valve to shift off its seat and permit fluid to flow and is obtainable and expected within the poultry watering environment. This language of Claim 19 is necessarily broader than the corresponding recitations in Claims 1 and 3 of the ’345 patent and Claims 4 and 5 of the ’088 patent, which are further limited to “slight” and “any” movement, respectively.

As required by 35 U.S.C. § 112 , certain intercomponent dimensions are provided in the specification and general relative dimensions of the best mode known, as of the filing date, are shown in the patent drawings. At no point in the specification, drawings, or prosecution history did the inventor, Eldon Hostetler, state that his invention was limited to certain absolute dimensions of components. In fact Mr. Hostetler explicitly stated the opposite: “While the preferred embodiment of the invention has been illustrated and described, it will be understood that changes in the construction may be made within the scope of the appended claims without departing from the spirit of the invention.”

See

Plaintiff’s Exhibit 43 at column 6, lines 53-56.

The absolute limit to the dimensions of the recess and the absolute limit in lateral movement were never at issue during the prosecution history of the patents-in-suit. Therefore, in properly construing the scope of Claim 19, it is unnecessary and improper as a matter of law to impose any absolute size limitations on the “recessed region.” All that is required is that the size of the recess be sufficient to perform its required function. Likewise, there is no basis for imposing any limitation on the extent of the “lateral movement” referred to in Claim 19, other than to require that the lateral movement cause the ball valve to shift off its seat.

2.

Scope of the remaining claims at issue

As stated earlier, plaintiff asserts infringement of Claims 1-13 and 19-24 of the ’345 patent and Claims 3-5 of the '088 patent. Therefore, I shall construe the scope of the remaining claims at issue.

Claim 1 of the ’345 patent shares many of the same limitations as Claim 19 but defines the invention as “adapted to be connected to a water supply line.”

Compare

Plaintiff’s Exhibit 43 at column 6, lines 67-68

with

column 9, line 22. Additionally, Claim 1 does not recite the “upper and lower” spatial limitation of the seat locations used in Claim 19, but instead uses the more general “valve seat and second seat” designations.

See

Plaintiff’s Exhibit 43 at column 6, line 61. However, as noted above, Claim 1 includes the more specific limitation of “slight actuator movement” on the extent of movement necessary to cause fluid flow.

See

Plaintiff’s Exhibit 43 at column 7, line 6.

Claim 2 of the ’345 patent includes all the limitations of Claim 1, but recites the ball valve limitation of Claim 19 and requires the concave actuator surface to “substantially” correspond to the curvature of the ball valve.

See

Plaintiff’s Exhibit 43 at column 7, lines 11-13. While the written specification does not define “substantially” apart from its ordinary meaning, the drawings do provide a general indication of the extent of variance expected in having the curvatures “substantially” correspond. More importantly, it is useful to note that Ziggity, in defining the subject matter of its invention in the claims, was obviously aware of the significance and applicability of the term “substantially.”

*786

That term was used only in Claims 2, 10, and 23 and, thus, should not be implied into any other claim absent evidence of Ziggity’s specific intent to do so.

In contrast to Claims 1 and 19, Claim 3 more specifically defines the recess/valve relationship. The recess is specified to have a “leveraging edge” at the “circumference” of the recess, and the valve is to be “at least partially received within” the recess. Claim 4 includes these same limitation's and further requires the recess to be a concave surface. Claim 5 carries that limitation a step further and requires that the valve member be a ball valve having a portion receivable within the concave recess. Figure 2 of the ’345 patent shows an example of such an arrangement.

Claim 6 differs from Claim 19 primarily in not defining the location of the seats in terms of the usual vertical orientation of the watering device. Instead, Claim 6 also defines the location of initial actuation engagement in terms of the location of the closest portion of the ball valve to the second seat. Claim 7 includes all the limitations of Claim 6 and, in addition, requires that lateral movement of the valve actuator cause the edge region to move toward the ball valve. Thus, by implication, the subject matter of Claim 7 assumes the edge region is not in contact with the ball valve already, or else the edge region could not move “toward” the ball valve.

Claim 8 includes all of the limitations of Claim 7 and further requires the recess to include a concave surface and the edge region to be located at the periphery of that concave surface. Claims 9-12 progressively limit the inventive subject matter to include specific additional structures to enhance drinker performance. Claim 13 provides a specific definition of the extent of necessary lateral movement by reference to intended usage with small chicks.

Claim 20 includes all of the limitations of Claim 19 and further defines the location of the lowermost portion of the ball valve with respect to the plane of the lower seat. Claim 21 applies the limitation of Claim 8 to the subject matter of Claim 20. Claim 22 further defines the invention in terms of the functional advantages which the structure provides from repeated actuation.

Claim 23 generally incorporates the subject matter of Claim 19 with the additional limitation and function of Claim 9 concerning fulcrum lifting from a flattened lower seat surface and orients the location of initial actuation engagement with respect to the housing outlet. Claim 24 further includes structure defining a second sealing function at the second seat.

Claim 4 of the reexamined ’088 patent differs from Claim 19 of the ’345 patent primarily in requiring three valve seats which provide three fluid seals and in requiring such proximity of the peripheral edge of the recess and the ball valve such that

any

lateral movement of the trigger pin causes fluid flow. Claim 5 of the reexamined ’088 patent includes limitations similar to those in Claim 4, except that the “housing” is defined more broadly to include the drinker “saddle”, which is shown in the drawing as item 6. Finally, Claim 3 of the reexamined ’088 patent includes all the subject matter of Claim 5 with additional limitations directed to the structure of the interlocking hooks.

B. Literal Infringement

The next step in the infringement analysis is the application of the properly construed claims to the accused device. Plaintiff asserts both literal infringement and infringement under the doctrine of equivalents. I shall first address literal infringement.

A finding of literal infringement requires that each and every element or feature of the properly construed claim be found in the accused device.

Atlas Powder Co. v. E.I. Du Pont De Nemours & Co.,

750 F.2d 1569, 1579 (Fed.Cir.1984) (citing

Fromson v. Advance Offset Plate, Inc.,

720 F.2d 1565, 1569 (Fed.Cir.1983)).

1.

Literal infringement of Claim 19

Defendants contend that the Yal nipple drinker does not literally infringe the patents-in-suit. Using Claim 19 of the ’345 patent as an example, defendants maintain that the Val nipple drinker cannot be read

*787

on Claim 19 because (1) the Val pin does

not

have a recessed region; (2) the Val pin does

not

have an edge region; (3) the recessed region and the ball valve are

not

confronting; and (4) the initial actuation engagement is

not

provided at a location “spaced apart” from the lowermost portion of the ball valve.

See

Defendants’ Post-Trial Brief, at 28-29. I will address each of contentions seriatim.

a.

Recessed region

— Defendants’ expert witness, Mr. Ramik, concluded that the recessed region specified in claim 19 is limited to the type of recess shown in the illustration of Figures 2 and 3 of the ’345 patent. According to Mr. Ramik, those drawings show a recess that extends practically to the diameter of the head of the pin. Therefore, defendants contend that the recessed region set forth in Claim 19 must be of a width and depth as shown in Figures 2 and 3.

This reasoning is flawed. In construing the “recess region” to have a size requirement limited to what is specifically shown in the drawings, defendants ignore well established patent law. It is true that, in construing the claim in a patent, the court must consider a number of factors, including: (1) the language of the claim; (2) other claims in the patent; (3) the disclosure in the specification and drawings, and (4) the prosecution history of the patent. However, defendants fail to recognize that the specification and drawings cannot be used to limit the scope of the claim or the claimed invention as a whole.

The words and phrases in the specification, together with the drawings, (1) must enable a person skilled in the pertinent art to make and use the invention, and (2) must set forth what the inventor believes to be the preferred mode of carrying out the invention, at the time the patent application was filed. Different methods of carrying out the invention disclosed in the patent are called the “embodiments” of the invention.

Patent laws do not require that the applicant describe in the specification every possible future embodiment of the invention.

SRI Int’l v. Matsushita Elec. Corp. of America,

775 F.2d 1107, 1121-22 (Fed. Cir.1985). Therefore, the claims of the patent are not necessarily limited to the particular embodiments of the invention described in the patent specification and drawings.

SRI Int’l,

775 F.2d at 1122 (quoting

Autogiro Co. of America v. United States,

384 F.2d 391, 398 , 181 Ct.Cl. 55 (1967));

Lemelson v. United States,

752 F.2d 1538, 1552 (Fed.Cir.1985).

Therefore, I conclude that the pin in the Val nipple drinker has a “recessed region.” Although the recessed region in the Val trigger pin is much smaller in diameter than the recessed region in the Ziggity pin, it is a recessed region nonetheless. The recess in the Val pin is clearly visible to the naked eye. Defendants cannot, nor do they attempt to, argue that there is no indentation on the Val pin. Rather they contend that the indentation on their pin is not a recessed region as that word should be construed in Claim 19, in light of the Figure 2 and Figure 3 drawings. In light of the fact that the drawings cannot be used to limit the scope of Claim 19 and that Claim 19 contains no absolute size requirement for the “recessed region,” I conclude that the upper surface of the Val pin contains a “recessed region.”

b.

Edge region

— No where in the '345 patent is the term “edge region” given a special definition apart from its ordinary meaning. Unless used otherwise by the patentee, the words of a claim are to be given their ordinary accustomed meaning in light of the subject matter and context of the invention.

See ZMI Corp. v. Cardiac Resuscitator Corp.,

844 F.2d 1576, 1580 (Fed.Cir.1988). In the present case, the claim language simply defines “edge region” functionally in terms of the location of the initial actuation engagement with the ball valve. The drawings, illustrating the applicant’s best embodiment at the time the application was filed, confirm the ordinary meaning of edge region as being that area in the vicinity of where the recess merges with the rest of the upper surface of the head of the valve actuator.

*788

Further, evidence of the ordinary meaning of words used in a claim may be found by reference to any' standard dictionary.

Casler v. United States,

15 Cl.Ct. 717 , 9 U.S.P.Q.2d 1753, 1765 (1988) (in determining the scope of the disputed claim, court may consider “texts such as dictionaries which explain common usage of the disputed claim terms”),

aff'd mem.,

883 F.2d 1026 (Fed.Cir.1989). It is proper for a court to take judicial notice of the contents of a dictionary.

B.V.D. Licensing Corp. v. Body Action Design, Inc.,

846 F.2d 727, 728-29 (Fed.Cir.1988). For the purpose of this opinion, I shall take judicial notice of the definitions contained in

Webster’s Ninth New Collegiate Dictionary

(Merriam-Webster Inc., Springfield, Mass. 1987)

(“Webster’s”).

In

Webster’s,

“edge” is defined as

2 a: the line where an object or area begins or ends: BORDER b: the narrow part adjacent to a border c: a point near the beginning or the end; ____

See

Appendices for Plaintiffs Post Trial Brief, Appendix B. Further, “region” is defined as:

3 b: an indefinite area surrounding a specified body part 4: a sphere of activity of interest: FIELD____

See

Appendices for Plaintiffs Post Trial Brief, Appendix B. Therefore, the ordinary meaning of “edge region” in the context of the claimed recessed region would be equivalent to the narrow area surrounding or adjacent to the edge.

This definition of “edge region” is not inconsistent with the usage of that term during prosecution of the patents-in-suit. At no time did Ziggity more narrowly define the spatial orientation or configuration of that edge. Instead, reference to the edge region is made only with respect to its contact point and leveraging function.

c.

Confronting

— Just as with the term “recessed region,” there is no special definition of the term “confronting” given in the specification of the ’345 patent. Certainly nothing in the dictionary definition of “confronting” requires that term to mean “touching.” In

Webster’s,

“confronting” is defined as “opposing,” “bringing face-to-face,” or “encountering.”

See

Appendices for Plaintiff’s Post Trial Brief, Appendix B.

In the ’345 patent, plaintiff defines its claim limitations in terms of the interrelationship of the components and their function and, in fact, stated:

By “confronting” the applicant refers only to the spacial relationship between the valve ball and the actuator pin head which,

although not necessarily touching when the valve is closed,

is intended to be so close, only a short distance away, that only slight actuation force and movement is necessary.

See

Defendants’ Exhibit 4, Amendment of March 11, 1986, paper no. 15, at 3. Therefore, Claim 19 contains no special requirement that the ball valve must actually be touching the valve actuator, other than during the actuation engagement. In fact, in the specification of the ’345 patent, a preferred embodiment of the invention is described as having the upper surface of the valve actuator head “adjacent to and slightly spaced from the lowermost portion” of the ball valve.

See

Plaintiff’s Exhibit 43 at column 4, lines 33-34. The description “adjacent to and slightly spaced from the lowermost portion” stems from the original disclosure and cannot be considered “new matter.”

See infra

Discussion, Section II. E. Another preferred embodiment is shown in Figure 2 of the ’345 patent which shows part of the ball valve touching the edge region of the recess in the non-actuated or resting state.

As stated before, the purpose of the specification is to set forth the best embodiment of the invention known to the patentee at the time the patent application was filed. The specification cannot be held to limit the scope of the claims to cover only the disclosed embodiment. However, the specification can be used to help construe the claims, without limiting their scope. If Eldon Hostetler had considered contact between the ball valve and the valve actuator to be an important aspect of his invention, he should have included that requirement and limitation in his claim.

*789

The patent statute provides in pertinent part:

an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital or structure, material, or acts in support thereof, and such claim shall be construed to cover all corresponding structure, material, or acts described in the specification

and equivalents thereof

35 U.S.C. § 112 (emphasis added). Therefore, I conclude that the spatial orientation of the recess as “confronting” the ball valve should be construed to include all such equivalent orientations which allow the recess to perform its specified function with respect to the other elements of the claimed combination in the poultry watering environment — and

not

limited to actual contact between the recess and the ball valve.

d.

Spaced apart

— Finally, defendants contend that their valve actuator contacts the ball valve substantially on center, and, therefore, that the location of the engagement is not “spaced apart from the lowermost portion” of the ball valve, as required in Claim 19. This contention is without merit.

The width of the recess in the head portion of Val’s valve actuator is .060 inch, which is 20 times larger than the depth of the recess.

See

Plaintiffs Exhibit 30, bates Nos. 115454 and 115457. Since the recess is formed by a ball punch having the same radius as the ball valve,

see

Trial Transcript 2/16/90 at page 15, line 16 thru page 16, line 15, it is geometrically impossible upon lateral movement of the pin portion for the center of the head portion of the valve actuator to hit the lowermost point of the ball valve. Because, upon lateral movement of the pin portion, the edge region provides' that initial actuation engagement with the ball valve,

1

the valve actuator will hit the ball approximately .030 inch (i.e. half of the width of the recess) from the lowermost portion of the ball. Hence, it is clear that, upon lateral movement of the pin portion, the initial actuation engagement is provided at a location apart from the lowermost portion, or center, of the ball valve.

Therefore, I conclude that defendants have literally infringed Claim 19 of the ’345 patent.

2.

Literal infringement of the remaining claims

Just as with Claim 19 of the ’345 patent, each and every element and feature of Claims 1-2, 6-13, and 20-24 is found in the Val nipple drinker.

2

Therefore, defendants also literally infringe those claims.

In addition, plaintiffs also maintain that on occasion the Val nipple drinker will also infringe Claims 3-5 of the ’345 patent and Claims 3-5 of the reexamined ’088 patent. Plaintiffs contend that there are instances in which

the dimension of the thickness of the actuator pin head is so large that the deburring punch creates a larger recess in the head of that pin and [, therefore,] that the ball valve protrudes into that recess and

perhaps

even touches or is immeasurably close to the edge of that recess. In such circumstances since there is a statistical probability these circumstances exist because of Defendants’

*790

manufacturing techniques, Defendants’ nipple drinkers would include each and every element of Claims 3-5 of the '345 patent and Claims 3-5 of the Reexamined patent.

See

Plaintiff’s Post Trial Brief at page 46. Apparently, plaintiff bases this argument upon the testimony of defendants’ expert witness, Mr. Boehringer, but fails to cite to his testimony in the trial transcript which supports their argument.

Defendants argue that Mr. Boehringer’s testimony does not support a statistical variation in the dimension of the thickness of the actuator pin.

See

Trial Transcript 2/22/90 at pages 119-121; Defendants’ Exhibit 280.

I conclude that Mr. Boehringer’s testimony does

not

support plaintiff’s argument. Although Mr. Boehringer did measure the head heights of 179 randomly selected Val pins and charted the results,

see

Defendants’ Exhibit 280, he did

not

conclude that the pins with the thickest heads were so large that the deburring punch would create a large recess in the head of that pin and that the ball valve would protrude into that recess and would, perhaps, even touch the recess or be immeasurably close. Rather, plaintiff draws that conclusion without any evidence in support thereof.

This court will

not

make a finding of infringement based upon possibilities that are not supported by evidence. Hence, I conclude that the Val nipple drinker does

not

literally infringe Claims 3-5 of the ’345 patent and Claims 3-5 of the reexamined ’088 patent.

C. Infringement Under the Doctrine of Equivalents

Even though an accused device may avoid the literal language of the claims, plaintiffs may nevertheless prove infringement based on the doctrine of equivalents. The doctrine of equivalents prevents an infringer from appropriating the essence or heart of an invention by avoiding the literal words of a patent claim.

Atlas Powder Co. v. E.I. Du Pont De Nemours & Co.,

750 F.2d 1569, 1579 (Fed.Cir. 1984). Infringement based on equivalents can be established if the accused device and the claimed invention perform substantially the same function in substantially the same way to yield substantially the same result.

Graver Tank & Mfg. Co. v. Linde Air Prod. Co.,

339 U.S. 605 , 70 S.Ct. 854 , 94 L.Ed. 1097 (1950).

In applying the doctrine of equivalents to determine if there is infringement, an owner of a patent is es-topped or prevented from taking positions which are inconsistent with positions that he took in the Patent Office in order to get the patent in the first place. This is called the doctrine of prosecution history estoppel.

See Hughes Aircraft Co. v. United States,

717 F.2d 1351 (Fed.Cir.1983). The doctrine of prosecution history estoppel is merely designed to preclude a patent owner from obtaining a claim construction that would resurrect subject matter surrendered during the prosecution of the patent before the Patent Office, as reflected in the file history. Thus, application of the doctrine of equivalents requires consideration of the purpose and context of amendments and arguments submitted during prosecution of the patent application to determine what subject matter has, in fact, been surrendered by the patentee.

With respect to Claim 19 of the ’345 patent, the analysis for prosecution history estoppel is very straightforward. Claim 19 of the ’345 patent was originally introduced as Claim 32 in the Amendment of September 8, 1986.

See

Defendants’ Exhibit 4. That claim was never amended and, thus, no subject matter was surrendered in response to prior art. Therefore, the scope of Claim 19 of the ’345 patent is no less broad under the doctrine of equivalents.

See Senmed, Inc. v. Richard-Allan Medical Indus., Inc.,

888 F.2d 815, 821 (Fed.Cir.1989). The only arguments submitted in support of Claim 19 (Claim 32 in the following remarks) were as follows:

Claims 14, 15 and 17 have been amended and new Claims 19-37 have been included so as to more particularly point out and distinctly claim the subject mat

*791

ter of the present invention, as discussed with the Examiner during the interview. In particular, the present claims define an arrangement wherein the recessed portion of the actuating pin head includes an edge which is cooperatively associated with the ball valve in that it provides initial leveraging actuation engagement with the ball valve in response to lateral movement of the pin with respect to the housing. The point of engagement between this edge and the ball valve is off-center or spaced apart from the lowermost point of the ball valve in vertical arrangements or, more generally, that point on the ball valve which extends furthest toward the level or position of valve actuator seat within the housing. It will be readily understood by those of ordinary skill in the art from Figure 4 that the “level” of the valve actuator seat is at the surface of that seat upon which the valve actuator bears. Where that surface includes a central bore to the outlet, the lowermost point of the ball valve is also closest to the center of the bore.

The off-centered leveraging arrangement of the present invention is clearly illustrated in Figure 4. This feature significantly increases the responsiveness of the present invention to lateral or tilting actuation and thereby permits wide spread utilization. New independent Claims 19, 32 and 36 and the dependent Claims therefrom have been included to further point out the structural details of the present invention and the functional results thereof.

As discussed during the interview, none of the references of record teach or suggest the advantages or structural arrangement of the present invention. Thus, it is respectfully submitted that this ease is now in condition for allowance, and passage to issue is respectfully solicited.

See

Defendants’ Exhibit 4.

The function of the invention claimed under Claim 19 is to properly water fowl and small animals.

See

Plaintiff’s Exhibit 43. In a general sense, the claimed invention achieves this function by use of a ball valve/actuator structure having leveraged actuation through initial actuation engagement provided by a recess structure in the actuator at a location spaced apart from the lowermost portion of the ball valve. As a result, the claimed invention provides at least the following advantages: (1) a watering device which is more responsive to actuation by poultry to meter the correct amount of water to the poultry; (2) better fluid sealing when the ball valve is closed; and (3) a longer useful life.

The function of defendants’ nipple drinkers is also to properly water fowl and small animals.

See

Plaintiffs’ Exhibit 35. Defendants’ nipple drinkers also achieve this function by use of a ball valve/actuator structure having leveraged actuation through initial actuation engagement provided by a recess structure in the actuator at a location spaced apart from the lowermost point of the ball valve. As a result, defendants’ nipple drinker also provides: (1) a watering device which is more responsive to actuation by poultry to meter the correct amount of water to the poultry, (2) better fluid sealing when the ball valve is closed, and (3) a longer useful life.

Therefore, because defendants’ nipple drinkers perform substantially the same function in substantially the same way to yield substantially the same result as the invention set forth in Claim 19 of the ’345 patent, defendants infringe Claim 19 of the ’345 Patent under the doctrine of equivalents.

Defendants contend that they avoid infringement under the doctrine of equivalents because the Val nipple drinkers function differently from Ziggity’s in that the Val drinkers employ a different type of leveraged actuation. Defendants assert that the invention claimed in Claim 19 requires “distance leverage” while the Val drinker employs “force leverage.”

Every lever has advantages of force and distance in proportion to the distance of the point of engagement of the lever from the fulcrum. Defendants use valve actuators that have recesses smaller that the recess shown in the ’345 patent as the preferred

*792

embodiment of the invention as of January 25, 1980. Thus, it follows from elementary physics that the location of the initial actuation engagement in the Val nipple drinker is closer to the fulcrum of the lever than in the Ziggity nipple drinker. Therefore, the ball valve in the Val nipple drinker can be lifted with less force than the ball valve in the Ziggity nipple drinker, but will not be lifted as high as the ball valve in the Ziggity nipple drinker.

See

Trial Transcript 2/20/90 at page 111, line 15 thru page 113, line 13. Consequently, the Val drinker can be said to maximize force and minimize distance; whereas, the Ziggity drinker can be said to maximize distance and minimize force.

See id.

Although defendants are correct in stating that the Val drinker emphasizes force leverage and the Ziggity drinker emphasizes distance leverage, their contention that they avoid infringement under the doctrine of equivalents because of this difference in leveraged actuation is sophistry. Claim 19 of the ’345 patent did

not

limit the subject matter of the invention to one or the other component — force or distance — of leveraged actuation. Therefore, Claim 19 must be interpreted to cover both types of leveraged actuation — a leveraged actuation which emphasizes force over distance as well as a leveraged actuation which emphasizes distance over force.

In essence, defendants’ contention with respect to infringement under the doctrine of equivalents would imply into Claim 19 a limitation as to the size of the recess. As already discussed with respect to literal infringement, there is no reason to imply such a limitation into Claim 19 in light of the language of the claim, the specification, the prosecution history, or the prior art.

Infringement under the doctrine of equivalents does

not

require the two products to be identical. Therefore, in spite of the fact that the sizes of the recessed regions differ, there can be no doubt that Ziggity nipple drinker and the Val nipple drinker perform substantially the same function in substantially the same way to produce substantially the same result. Hence, I conclude that Val’s 360 degree trigger action nipple drinkers infringe under the doctrine of equivalents Claims 1-13 and 19-24 of the ’345 patent and Claims 3-5 of the reexamined ’088 patent.

D. Willful Infringement

As a matter of law, if a patent is willfully infringed, then under 35 U.S.C. § 284 the patent owner is entitled to an award of increased damages up to three times the amount of actual damages. In addition, if a patent is willfully infringed, the court may consider the case “exceptional” pursuant to 35 U.S.C. § 285 and award attorney fees to the patentee.

The question of willful infringement is a question of the infringer’s intent — a question of fact. “There are no ‘hard and fast

per se

rules,’ and the finding [of willful infringement] is based on the totality of the circumstances.”

State Indus., Inc. v. Mor-Flo Indus., Inc.,

883 F.2d 1573, 1581 (Fed.Cir.1989),

cert. denied,

— U.S. -, 110 S.Ct. 725 , 107 L.Ed.2d 744 (1990). Although infringement need only be proven by a preponderance of the evidence, clear and convincing evidence is required to show that the infringement was committed willfully.

Id.

The question of willful infringement is by definition a question of the infringer’s intent. Infringement is not willful if, based upon the totality of the circumstances, it is determined that defendants acted in good faith and with a reasonable basis for believing that they were not infringing the patents-in-suit. On the other hand, infringement is willful if, based upon the totality of the circumstances, it is determined that defendants acted in bad faith and without a reasonable basis for believing that they were not infringing the patents-in-suit.

Gustafson, Inc. v. Intersystems Indus. Products, Inc.,

897 F.2d 508 (Fed.Cir.1990).

The facts which led to this present action are somewhat different than the typical patent infringement action. The parties in the present action were parties in a previous law suit, in which the parties entered into a Settlement Agreement in early 1987.

*793

See

Defendants’ Exhibit 9. That Settlement Agreement, provided in pertinent part:

6. Defendants agree to cease making, using, and selling, as of April 1, 1987, allegedly infringing products having a recess in the head of the trigger pin as shown in Exhibit “B” attached to the Amended Complaint.

7. Plaintiff hereby releases from liability and covenants not to sue Defendants for any claim of infringement of Plaintiff’s patents based on manufacture, use, and/or sale of Defendants’ new product design which substitutes a

flat head trigger pin,

as shown in Exhibit “A” attached hereto, into a drinker assembly. Plaintiff agrees that this new product design does not infringe any of Plaintiff’s patents or patent applications or any continuations, continuations in part, divisions, reissues or reexaminations thereof____

See id.

at page 2 (emphasis added). Unfortunately, the parties defined the term “flat head trigger pin” only by way of a drawing attached to the agreement as Exhibit A.

Pursuant to the Settlement Agreement, Val attempted to design around the patents-in-suit by switching from a recess-headed trigger pin with a recess of a depth of approximately .032 inch to, what it considered essentially, a flat-headed trigger pin with a deburring mark on its head of a depth of approximately .003 inches, or less than Vioth that of the former trigger pin. Through cross-sectional diagrams, Val advertised its nipple drinkers as having flat-headed trigger pins.

See

Defendants’ Exhibits 147-161.

At a hearing held on June 12, 1987 with respect to the previous lawsuit, Ziggity mentioned concern over whether defendants breached the Settlement Agreement by manufacturing and using the trigger pins with the smaller recesses.

See

Plaintiff’s Exhibit 65. For nineteen months thereafter, Ziggity did not raise any more objections concerning Val’s newly designed trigger pin.

See

Trial Transcript 2/21/90 at page 124, lines 9-15. During that time period, Val grew increasingly confident that Ziggity had accepted its new trigger pin as a legitimate design around Ziggity’s patents.

See id.

at page 206, lines 1-16. In fact, Val was so confident, in light of the Settlement Agreement, that its new pins did not infringe the Ziggity patents, it purchased an additional machine to manufacture its new pins, which was more effective at removing the cut off burr than the original machine.

See id.

at page 124, lines 9-15.

Then in January 1989, Ziggity initiated this present lawsuit against defendants, alleging that Val’s new pins were not flat and, therefore, infringed the Ziggity patents-in-suit.

The idea of manufacturing and using a flat-headed trigger pin as a design around Ziggity’s patents was first presented to Val by its patent counsel, Mr. Vincent L. Ramik, in mid-July 1986.

See

Defendants’ Exhibit 121; Trial Transcript 2/20/90 at page 97, line 20 thru page 98, line 10. In June 1987, Val presented Mr. Ramik with examples of what it considered flat-headed trigger pins.

See

Defendants’ Exhibits 278-1 thru 278-4; Trial Transcript 2/20/90 at page 98, line 11 thru page 100, line 24. At that time, Mr. Ramik provided Val with his verbal opinion that its new pins were flat and, thus, did not infringe either of the two Ziggity patents-in-suit.

See

Trial Transcript 2/20/90 at page 100, line 25 thru page 101, line 18; Trial Transcript 2/21/90 at page 86, line 2 thru page 87, line 9.

Based on the totality of the circumstances, I find that defendants acted in good faith in attempting to design around the patents-in-suit and had a reasonable basis for believing that their new trigger pins were flat and, thus, not infringing the patents-in-suit. First and most important, Vallorbs and Fred Steudler, Jr. are and have been for many years, as was Fred Steudler, Sr., involved in the screw machine industry and have developed an expertise in manufacturing small precision parts. In fact, Vallorbs manufactures the trigger pins for the Val nipple drinker. In contrast, Ziggity does

not

manufacture any of the component parts of its nipple drinker and has no expertise in the screw machine

*794

industry. Hence, it is understandable why defendants understood the term “flat” in the Settlement Agreement as that term is understood in the screw machine industry.

See

Defendants’ Exhibits 163-172. Defendants’ expert, Mr. Boehringer, admitted as an expert in the use of screw machines,

see

Trial Transcript 2/22/90 at page 109, lines 5-13, testified that, within the custom of the screw machine trade, the heads of Val’s trigger pins are “absolutely flat and remarkably so.”

See id.

at page 121, lines 5-7. Unfortunately, as is so often the case, the parties did not foresee the problem with the interpretation of the term “flat.” Second, as early as June 9, 1987 and after examining samples of their new pins, Mr. Ramik, defendants’ patent counsel, gave defendants a verbal opinion that their new pins were flat. Finally, defendants did not become aware that Ziggity did not consider the heads of the new Val trigger pins to be flat pursuant to the Settlement Agreement until Ziggity initiated this present lawsuit.

E. Liability of the Defendants

1.

Val

Val makes, uses, and sells the infringing nipple drinkers. Thus, Val is clearly liable as an infringer under 35 U.S.C. § 271 (a). However, Val is believed to be essentially judgment-proof.

Similarly, defendants admit that Mr. Steudler, Sr. was, and that Mr. Steudler, Jr. is, actively involved in selling the infringing drinkers.

See

Trial Transcript 2/16/90 at page 119, lines 8-18. Plaintiff contends that, to the extent of those infringing sales, Mr. Steudler, Sr. and Mr. Steudler, Jr. are personally liable under § 271(a) for selling the infringing nipple drinkers. In support of that contention, plaintiff points out that section 271 merely states “whoever” and does not make exception for salesmen, agents or corporate officers. Therefore, plaintiff concludes that salesmen of infringing products, even if acting as employees of a corporation, are still personally liable to the extent of their infringement. Plaintiff offers no case law to support this bold conclusion. Because I conclude that the two individual defendants are personally liable under 35 U.S.C. § 271 (b), I need not decide whether they are also liable under section 271(a).

2.

Vallorbs

Vallorbs manufactures for and sells to Val the trigger pins and valve seats used in the infringing Val nipple drinkers. These components are important material parts of the claimed invention. Vallorbs knows that those components are specially made for use in the infringing nipple drinkers because Vallorbs managers Val. Those components are not staple articles or commodities of commerce and have no substantial non-infringing use. Therefore, Vallorbs is liable as a contributory infringer under 35 U.S.C. § 271 (c).

Further, defendants acknowledge that Vallorbs manages Val and controls Val’s actions.

See

Plaintiff’s Exhibit 68, page 24, line 9 thru page 25, line 9. Therefore, the management of Vallorbs makes the decisions concerning the products that Val sells. Therefore, Vallorbs induced Val’s infringement of the patents-in-suit and, under 35 U.S.C. § 271 (b), Vallorbs is liable as an infringer.

Power Lift, Inc. v. Lang Tools, Inc.,

774 F.2d 478 (Fed. Cir.1985). For that matter, even without absolute management control, the mere sale of devices, such as the trigger pins used in the Val drinker, which are not usable in any manner other than in conjunction with infringing devices constitutes inducement.

Chisum v. Brewco Sales and Mfg., Inc.,

726 F.Supp. 1499, 1512-13 (W.D.Ky.1989).

Also, in light of the near total integration of Val and Vallorbs through common management,

see

Trial Transcript 2/21/90 at page 182, common employees, and common physical facilities,

see

Plaintiff’s Exhibit 68, page 24, lines 5-24, the activities of Val and Vallorbs in making, using, and selling the infringing nipple drinkers should be viewed as those of a single entity. Even Vallorbs’ own senior employees and managers consider Vallorbs to be the manufacturing arm for the nipple drinker program.

See

Plaintiff’s Exhibit 68, page 24, line 12 thru page 25, line 9. Despite separate books and records to

*795

maintain the formality of independent existence, Val and Vallorbs have complete unity of interest with respect to the infringing nipple drinkers and are, in fact, one business. Therefore, if Val is a direct infringer, then so is Vallorbs.

3.

Individual Defendants

Ziggity maintains that the two individual defendants are personally liable under 35 U.S.C. § 271 (b) for inducing Val and Vallorbs to commit infringement. The parties have opposing views as to the controlling legal standard for imposing such joint liability. Defendants assert that, in order to establish personal liability under section 271(b), plaintiff must prove that the individual defendants actively and knowingly aided and abetted the direct infringement of the corporate defendants. Defendants also argue that plaintiff has insufficient evidence to establish personal liability of the individual defendants under an alter ego theory. Plaintiff states that it is

not

attempting to establish personal liability by contending that Mr. Steudler, Sr. and Mr. Steudler, Jr. are the alter egos of Val and Vallorbs. Plaintiff maintains that it can establish personal liability under section 271(b) merely by showing that the individual defendants exercised sufficient control over the corporate defendants to be considered the “moving force” behind the infringement.

The Court of Appeals for the Federal Circuit has interpreted 35 U.S.C. § 271 (b) broadly to “include liability of corporate officials who actively aid and abet their corporation’s infringement.”

Power Lift, Inc. v. Lang Tools, Inc.,

774 F.2d 478, 481 (Fed.Cir.1985). The court in

Power Lift

cited with approval

International Manufacturing Co. v. Landon, Inc.,

336 F.2d 723, 728-29 (9th Cir.1964).

Id.

In

Landon,

the court concluded that a director or officer of a corporation is subject to personal liable under section 271(b) without regard to whether he was the alter ego of his corporation, as long as he was “the moving, active conscious force” behind the corporation’s infringement. 336 F.2d at 729 .

Approximately, one year after the decision in

Power Lift,

the Court of Appeals for the Federal Circuit in

Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,

806 F.2d 1565 (Fed.Cir.1986), stated:

[I]t is well settled that corporate officers who actively aid and abet their corporation’s infringement may be personally liable for inducing infringement under § 271(b)

regardless of whether the corporation is the alter ego of the corporate officer.

Id.

at 1578-79 (emphasis added).

Therefore, it is clear that plaintiff can establish liability of the individual defendants under section 271(b) without proving that the corporate defendants were the alter egos of the individuals.

Defendants assert that, in order to be personally liable under section 271(b), one must knowingly aid and abet another’s direct infringement.

See Water Technologies Corp. v. Calco, Ltd.,

850 F.2d 660, 668 (Fed.Cir.1988). Plaintiff does

not

dispute that assertion. However, the parties disagree as to how the “knowing” requirement should be interpreted. It appears that defendants are equating “knowing inducement” with “willful infringement,” whereas plaintiff equates “knowing” with conscious awareness of one’s actions.

Willfulness or intent to infringement is not a prerequisite to a finding of infringement.

See

35 U.S.C. § 271 . Therefore, common sense mandates that the “knowing” requirement under section 271(b) cannot be equal to the “willful” requirement in order to get enhanced damages under section 284. In this regard it is important to note that section 271(b) does

not

use the word “knowing” and section 284 does

not

use the word “willful.” Instead, these requirements have been imposed through case law.

I conclude that the “knowing” requirement judicially imposed under section 271(b) is merely a requirement that the corporate officer be conscious and aware of his activities — not that he was aware that his activities amounted to infringement.

*796

As the Court of Appeals for the Federal Circuit noted in

Orthokinetics:

Corporate officers are presumably aware of what they are doing, and in that sense they can be said to have acted “willfully.” However, that does

not

mean that their acts must rise to the level recognized by the law as constituting willful infringement before they can be liable for infringement by their corporation.

Hence the district court erred in positing willful infringement as a prerequisite for the imposition of personal liability for the corporation’s direct infringement.

806 F.2d at 1579 (emphasis added).

Courts have imposed liability on a corporate officer and director as a result of the effective control that the individual had over his corporation and his active participation in the activities which amounted to infringement. Active participation sufficient to invoke personal liability has been characterized as “the moving force” behind the infringement,

White v. Mar-Bel, Inc.,

509 F.2d 287, 292 (5th Cir.1975); “the moving, active, conscious force behind the infringement,”

Superior Testers, Inc. v. Damco Testers, Inc.,

315 F.Supp. 934, 935 (E.D.La.1970),

Rohm and Haas Co. v. Dawson Chemical Co.,

557 F.Supp. 739, 819 (S.D.Tex.1983); or “direct participation in and control of the infringing design, manufacture, and sale,”

A. Stucki Co. v. Schwam,

634 F.Supp. 259, 265 (E.D.Pa. 1986).

In the present case, Mr. Steudler, Sr. and his son were without a doubt the moving force every step of the way. They were the principal officers, directors, and managers of all activities on a day to day basis.

See

Plaintiffs Exhibit 68, page 75, line 20 thru page 76, line 11; page 442, line 24 thru page 443, line 1. As corporate officers, they were certainly aware of what they were doing and of their activities, which Ziggity has shown to constitute infringement. As this court has already concluded, in order to establish personal liability, it is

not

necessary to show that the individuals were aware that their actions amounted to infringement.

Mr. Steudler, Sr. and Mr. Steudler, Jr. actively participated in both the manufacture and sale of the infringing products.

See

Trial Transcript 2/26/90 at page 119, lines 8-18; page 42, line 21 thru page 43, line 19. Mr. Steudler, Sr. ran the business as he saw fit,

see

Plaintiffs Exhibit 68, page 115 and pages 443-45; oversaw every expense,

see id.

at page 11, lines 6-7; page 13, lines 14-16; and controlled all the financial matters by himself,

see

Trial Transcript 2/22/90 at page 49, lines 19-25. To his employees, he personified the business.

See

Trial Transcript 2/15/90 at page 190, lines 17-20. His wife, although nominally corporate President and 50 percent shareholder, totally relied upon his judgment.

See

Plaintiffs Exhibit 67.

The management of Vallorbs viewed Val as Mr. Steudler, Jr.’s program.

See

Plaintiff’s Exhibit 66, lines 19-25. He designed the infringing products and controls the manufacture and sale of those products.

See

Plaintiff’s Exhibit 68, page 67, lines 22-24. Mr. Steudler, Jr. established Val’s marketing plan.

See id.

page 59, lines 21-24. After the death of his father, Mr. Steudler, Jr. and his brother, Richard, have come to nearly personify the business.

See

Trial Transcript 2/15/90 at page 190, lines 17-20.

Therefore, it is clear that Mr. Steudler, Sr. was the guiding hand of the overall business of Val and Vallorbs and, within that context, his son, Mr. Steudler, Jr. was the moving force behind the infringing nipple drinkers at Val. As such, both individuals are liable under 35 U.S.C. § 271 (b) for inducing infringement of the patents-in-suit.

II. PATENT VALIDITY ANALYSIS

Defendants have, several bases for contending that plaintiff’s patents-in-suit are not valid. A United States Letters Patent is presumed valid. The relevant statutory provision is Section 282 of the Patent Statute which provides in pertinent part as follows:

A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent

*797

form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

35 U.S.C. § 282 .

Shortly after its formation, the Court of Appeals for the Federal Circuit in

Stratoflex, Inc. v. Aeroquip Corp.,

713 F.2d 1530 (Fed.Cir.1983), delineated the burden of establishing invalidity of a patent:

The presumption [of validity] like all legal presumptions, is a procedural device, not substantive law. It ... requires the decision maker to employ a decisional approach that starts with acceptance of the patent claims as valid and that looks to the challenger for proof of the contrary. Thus the party asserting invalidity not only has the procedural burden of proceeding first and establishing a prima-facie case, but the burden of persuasion on the merits remains with that party until final decision. The party supporting validity has no initial burden to prove validity, having been given a procedural advantage requiring that he come forward only after a prima-facie case of invalidity has been made. With all the evidence in, the trial court must determine whether the party on which the statute imposes the burden of persuasion has carried that burden.

Id.

at 1534 .

Furthermore, the party contesting the validity of a patent must prove invalidity by clear and convincing evidence. “This heavy burden [of proof] is deeply rooted in the judicial process and reflects the deference owed to the considered judgment of an expert, such as a Patent Examiner.”

Spalding & Evenflo Cos. v. Acushnet Co.,

718 F.Supp. 1023, 1031 (D.Mass.1989).

The presumption mandated by section 282 is applicable to all challenges to the validity of the patent.

Hybritech Inc. v. Monoclonal Antibodies, Inc.,

802 F.2d 1367, 1375 (Fed.Cir.1986) (“the presumption of validity goes to validity of the patent in relation to the patent

as a whole,

not just to nonobviousness under section 103”),

cert. denied,

480 U.S. 947 , 107 S.Ct. 1606 , 94 L.Ed.2d 792 (1987).

It is neither necessary nor appropriate for a court to declare a patent valid. A trial court is required only to decide whether the patent challenger has carried its burden of establishing invalidity in the particular case before the court.

Panduit Corp. v. Dennison Mfg. Co.,

810 F.2d 1561, 1569 (Fed.Cir.),

cert. denied,

481 U.S. 1052 , 107 S.Ct. 2187 , 95 L.Ed.2d 843 (1987). When the burden has been carried, the court should declare the patent invalid. When the burden has not been carried, a court need only so state. Thereupon, the patent simply remains valid until another challenger carries the burden under section 282.

A. Invalidity Under 35 U.S.C. § 103 (Obviousness)

Defendants challenge the validity of plaintiff’s patents-in-suit on the basis of obviousness. 35 U.S.C. § 103 . Section 103 of the Patent Statute provides in pertinent part:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in § 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

35 U.S.C. § 103 .

Therefore, a patent is invalid if the invention as a whole would have been obvious to one of ordinary skill in the art, to which the invention pertains, at the time the invention was made. A determination of whether the subject matter of the claims at issue would have been obvious under section 103 involves the following factual findings:

*798

1. the scope and content of the prior art;

2. the level of ordinary skill in the art;

3. the differences between the claimed subject matter and the prior art; and

4. where relevant, objective evidence of nonobviousness — the secondary consideration, such as long-felt need, commercial success, failure of others, copying, unexpected results.

See Perkin-Elmer Corp. v. Computervision Corp.,

732 F.2d 888, 894 (Fed.Cir.),

cert. denied,

469 U.S. 857 , 105 S.Ct. 187 , 83 L.Ed.2d 120 (1984);

Graham v. John Deere Co.,

383 U.S. 1, 17 , 86 S.Ct. 684, 693-94 , 15 L.Ed.2d 545 (1966);

see also Stratoflex, Inc. v. Aeroquip Corp.,

713 F.2d 1530, 1538 (Fed.Cir.1983) (“evidence arising out of the so-called ‘secondary considerations’ must always when present be considered in route to a determination of obviousness”). These factual findings serve as the foundation upon which the court bases its ultimate legal conclusion regarding the obviousness of the claimed subject matter as a whole.

1.

Scope and content of the prior art

Pertinent prior art has been defined as that which one of ordinary skill in the art would reasonably be expected to look to for a solution to the problem which the patented invention solves.

Stratoflex,

713 F.2d at 1535 . The prior art is not to be narrowly confined to the methods and inventions of the subject art, but extends to other analogous arts.

Graham,

383 U.S. 1 , 86 S.Ct. 684 ;

L.D. Schreiber Cheese Co. v. Clearfield Cheese Co.,

540 F.Supp. 1128, 1134-35 (W.D.Pa.1982),

aff'd,

716 F.2d 891 (3d Cir.1983). However, the more remote the prior art is from the context of the subject matter,' the less persuasive it becomes on the question of obviousness.

L.D. Schreiber,

540 F.Supp. at 1135 . An inventor is only presumed knowledgeable of prior art in the field of his endeavor that is reasonably pertinent to a particular problem which the invention solved.

Union Carbide Corp. v. American Can Co.,

724 F.2d 1567 (Fed.Cir.1984).

In the present case, the problem which Mr. Hostetler was attempting to solve was to design and construct a reliable and cost-effective nipple-type watering device for chickens which was suitable for chickens of all ages and in all environments.

See

Trial Transcript 2/13/90 at page 43, line 4 thru page 45, line 23. Nipple watering devices are used by one-day old chicks in floor or broiler operations, as well as by mature adult laying hens in cage operations.

See id.

at page 37, line 4 thru page 38, line 3. Therefore, the nipple drinker must be just as accessible to the day old chicks as it is to the mature hens. In order to be accessible to day old chicks, the water from the nipple drinker must flow upon very slight lateral movement of the trigger pin.

Therefore, in the present ease, the relevant prior art is that art which a person with ordinary skill in the art of nipple-type watering drinkers for fowl and small animal could reasonably be expected to look for solutions to problems relating to water flow upon slight lateral movement of the trigger pin, as well as other problems relating to designing a nipple drinker that is suitable to all chickens of all ages in all environments. Defendants contend that the relevant prior art should extend to fluid valves generally. Plaintiffs contend that the relevant prior art should be limited to nipple-type watering devices for chicken, other fowl, and small animals.

As stated above, the breadth of the prior art is defined by the problem which the invention solved. Therefore, it would seem reasonable that, if the patented invention solved more than one problem, each problem would have its own relevant prior art. The problems encountered in nipple drinkers, and the reasons that they were not successful in the United States until the Ziggity nipple drinker was introduced, were that they leaked and they were not applicable to all types of chickens in all types of environments. From the standpoint of the leaking problem, it is logical that one with ordinary skill in the art would look to fluid valves generally. However, with respect to the problems associated with designing a nipple drinker that was applicable to all

*799

types of chickens, i.e. developing a trigger pin that could easily be activated by one-day old chicks, it is logical that one with ordinary skill in the art of nipple watering devices for chickens, other fowl, and small animals would look

only

to prior art relating to nipple watering devices for chickens, other fowl, and small animals. A nipple drinker is activated by a chicken or a small animal by moving the trigger pin, either vertically or laterally. Therefore, there is no reason why one with ordinary skill in the art of nipple-type watering devices would look to a field as broad as fluid valves generally to solve a problem specifically related to activation of the valve actuator (i.e. the trigger pin) by a chicken, other fowl, or small animal. Granted, water leakage is a common problem in delivering water in areas other than to chickens, other fowl, and small animals.

See

Trial Transcript 2/16/90 at page 153, line 8 thru page 154, line 2. On the other hand, however, there are problems associated with delivering water to chickens, especially day-old chicks, which are

not

analogous to problems in other areas of water delivery. Chickens do not swallow and, therefore, can only accept a very small amount of water upon each peck of the trigger pin. Furthermore, day-old chicks must be able to access water just as the older chickens. Consequently, the water must flow upon very slight actuation of the trigger pin.

The field of search by the Patent Examiner is relevant objective evidence of the scope of the prior art.

E.I. Du Pont De Nemours & Co. v. Berkley and Co.,

620 F.2d 1247, 1266 (8th Cir.1980). The Patent Examiners who examined each of the four applications leading to the patents-in-suit searched only outside the art of animal husbandry as a final step in issuing the last of the four applications and concluded that the claims were allowable because the claimed structure was

not

shown in the prior art within the environment of the invention.

In asserting their obviousness defense, defendants rely on the following: (1) the Clark Patent (Defendants’ Exhibit 123); (2) the Mull Patent (Defendants’ Exhibit 130); (3) the Kagan Patent (Defendants’ Exhibit 131); (4) the Downin Patent (Defendants’ Exhibit 125); (5) the Monnier French Patent (Defendants’ Exhibit 126); (6) and the Maury Patent (Defendants’ Exhibit 128). Of those patents, the Clark Patent, the Kagan Patent, and Mull Patent were of record during the prosecution of the applications which matured into the patents-in-suit and plaintiff admits that they are relevant prior art.

See

Trial Transcript 2/20/90 at page 156, lines 9-19. Plaintiff however, contends that Downin, Monnier, and Maury are outside the scope of the relevant prior art and, thus,' should not be considered by this court.

Downin, Maury, and Monnier are all from the valve art in general. Downin is patent for a ball valve in a water faucet; Maury is a patent for a stopcock; and Monnier is a patent for an air gun intended to project a jet of compressed air for the purpose of cleaning mechanical or other parts. Therefore, in keeping with this court’s finding that prior art in fluid valves is relevant prior art to the extent that it relates to general principles of water flow and cutoff, I will consider the Downin and Maury patents. The Monnier patent, however, involves a valve which controls the flow of air. Therefore, it is outside the scope of relevant prior art. Even if the Monnier could be considered relevant prior art, it is so remote from the subject art of nipple-type watering devices for chickens and small animals that it would have very little persuasive value.

See Schreiber,

540 F.Supp. at 1135 .

Therefore, within the relevant prior art are other chicken drinkers. Representative of prior art chicken nipple-type watering devices is the Fox Products Co. U.S. Patent to Clark 3,756,199, issued September 4, 1973.

See

Defendants’ Exhibit 123.

2.

Level of ordinary skill in the art

The level of ordinary skill in the art is established by evidence showing the technical competence and experience of skilled artisans working the area of the subject invention and by the manner in which problems were solved. Section 103 provides in relevant part:

*800

A patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that

the subject matter

as a whole would have been obvious at the time the invention was made

to a person having ordinary skill in the art to which said subject matter pertains.

35 U.S.C. § 103 . With respect to this second factual inquiry, the “art to which said subject matter pertains” is clearly the art of designing and manufacturing nipple-type watering devices for fowl and small animals, in particular chickens.

3

The only objective evidence in the record of the level of ordinary skill in the art of designing and manufacturing nipple-type watering devices for chickens is as follows. Mr. Eldon Hostetler, the inventor of the patents-in-suit, has an eighth grade education and many years of experience in developing and designing watering and feeding devices for fowl and small animals.

See

Trial Transcript 2/13/90 at pages 25-30; Trial Transcript 2/14/90 at page 59. Mr. Fred Steudler, Jr. testified that he has a degree in industrial engineering,

see

Trial Transcript 2/21/90 at page 51, lines 20-23, and Dr. Andrews stated that he knew of a farmer who designed his own poultry watering system.

See

Trial Transcript 2/14/90 at page 88. Finally, Mr. Steudler, Jr. testified that he believed that Mr. Clark, the inventor of the Clark Patent, had a college degree. However, Mr. Steudler admitted that he did not know the field of study in which Mr. Clark majored in college.

See

Trial Transcript 2/21/90 at page 59 & page 175.

Section 103 requires that a claim be declared invalid only when the invention set forth in the claim would have been obvious “to one of

ordinary skill

in the art to which said [invention] pertains.” As an aid in determining obviousness, that requirement precludes consideration of whether the invention would have been obvious to the rare genius in the art, or to a judge or other layperson after learning all about the invention.

Stratoflex, Inc. v. Aeroquip Corp.,

713 F.2d 1530, 1538 (Fed. Cir.1983). Inventors, such as Mr. Hostetler, Mr. Clark, and Mr. Steudler, Jr., are presumed to have extraordinary skill in the art.

See, e.g., Kloster Speedsteel AB v. Crucible Inc.,

793 F.2d 1565, 1574 (Fed.Cir. 1986);

Standard Oil Co. v. American Cyanamid Co.,

774 F.2d 448, 454 (Fed.Cir. 1985). Further, defendants consider Mr. Steudler, Jr. to be the most knowledgeable person in the entire nipple-drinker industry.

See

Plaintiffs Exhibit 68, page 426, lines 14-18. Therefore, I conclude that the level of ordinary skill in the art of designing and manufacturing nipple-type watering devices for chickens is someone having knowledge of the behavioral characteristics of chickens ranging from one-day old chicks to adult chickens, as well as a reasonable degree of mechanical aptitude acquired through either an applicable education or relevant experience in the field, but not necessarily the same level of education and experience as inventors in the art, such as Mr. Hostetler, Mr. Clark, and Mr. Hostetler, Jr. “A person of ordinary skill in the art is ... presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights____”

Standard Oil,

774 F.2d at 454 .

3.

Differences between the prior art and the claims at issue

After defining the prior art and the level of ordinary skill in the art of the claimed invention, it is necessary to identify and evaluate the differences between the prior art and the claims at issue.

The Clark patent, which was of record throughout the prosecution of the patents-in-suit, is a patent for a nipple-type animal operated watering device. Defendants con

*801

tend, and plaintiff does not contend otherwise, that the only differences between Claim 1 of the ’345 patent and Figure 6 of the Clark patent are the shapes of the valve member and the head of the valve actuator. The Clark nipple-drinker employs a flat valve and a valve actuator with a flat head, whereas the Ziggity nipple drinker defined in Claim 1 employs a valve with a convex shape and a valve actuator with a concave shape.

Defendants cite the Kagan patent, a nipple drinker for animals, to teach the use of a ball valve in a nipple drinker. The Kagan nipple drinker is different from the Ziggity nipple drinker in that it can only be activated by an animal upon vertical actuation of the trigger pin.

Defendants cite the Downin and Maury patents to teach use of a valve actuator with a concave head in conjunction with a convex ball valve. Defendants, however, never discuss the differences between the Downin and Maury patents and the claimed invention. Defendants then argue that, if you apply the teaching of these secondary references (Downin and Maury) to use of valve actuator with a concave head in conjunction with a convex ball valve to the Clark reference, there are no differences between the Clark patent and the Ziggity patent.

See

Trial Transcript 2/16/90 at page 187, lines 11-15.

Defendants’ argument is flawed. Even though the Patent Examiner did

not

have Downin and Maury before him during the prosecution of the patents-in-suit, he did have Clark, Kagan, and Mull. Mull, a patent for a readily portable animal watering through which includes a valve mechanism, demonstrates the relationship between convex ball valve and a concave valve actuator.

4

Therefore, to the extent that defendants cite Downin and Maury for the purpose of demonstrating the relationship of convex ball valves and concave sealing surfaces, Downin and Maury are merely cumulative of the art of record and add nothing new. The relationship between convex ball valves and concave sealing surfaces does not in and of itself teach the subject matter of the claimed invention. When prior art which was

not

considered by the Patent Examiners but which is cumulative of prior art that was considered by the Examiners is relied upon by the party challenging the validity of the patent, the deference to the United States Patent Office remains intact.

FMC Corp. v. Manitowoc Co.,

835 F.2d 1411 (Fed.Cir.1987).

Defendants’ obviousness argument is flawed for another reason. Defendants attempt to make out a defense of obviousness by looking to the drawings of prior art patents to find every element of the patents-at-issue. Defendants contend that Clark plus Downin and Maury equals Hostetler [Clark + (Downin + Maury) = Ziggity]. However, defendants never explain how the convex to concave shapes employed in Downin and Maury teach the desirability of employing these shapes in a chicken nipple drinker so as to allow a small amount of water to flow upon slight actuation of the trigger pin. “Where the party asserting invalidity must rely upon a combination of prior art references to establish invalidity, that party bears the burden of showing some teaching or suggestion in these references which supported their use in combination” to resolve the problem or problems solved in the patented device.

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,

776 F.2d 281, 293 (Fed.Cir.1985). Therefore, defendants have not met their burden on this aspect of the defense.

Ziggity’s patented invention is

not

a ball valve actuated by a concave-headed valve actuator. Ziggity’s patented invention is a nipple-type drinker for chickens and small animals which employs a ball valve and a concave-headed valve actuator in such a way as to improve on the design of nipple-drinkers that had previously been in the market by eliminating the problems associated therewith. Ziggity does not contend that any element of its patented invention is new. What Ziggity does contend is

*802

that the structural arrangement of these old elements results in a nipple drinker which has the advantage of increased responsiveness to lateral or titling actuation, thereby permitting wide-spread utilization.

See

Defendants’ Exhibit 4. Defendants seem to forget that an invention is

not

obvious simply because it contains old and well-known elements.

Environmental Designs v. Union Oil Co. of Cal.,

713 F.2d 693, 698 (Fed.Cir.1983),

cert. denied,

464 U.S. 1043 , 104 S.Ct. 709 , 79 L.Ed.2d 173 (1984);

see also Rosemount, Inc. v. Beckman Instruments, Inc.,

727 F.2d 1540, 1546 (Fed.Cir.1984). “Virtually all inventions are combinations [of several elements] and virtually all are combinations of old elements.”

Environmental Designs,

713 F.2d at 698 . In fact, plaintiff admits that its claimed invention is a combination of structural elements which were known to exist separately. A patent may issue on a combination of old elements and still be nonobvious if the elements are assembled or combined in such a way as to produce a new or advanced or improved result.

Jones v. Hardy,

727 F.2d 1524, 1528 (Fed. Cir.1984). Hence, the critical question is whether the invention

as a whole

was taught or suggested by the prior art,

not

merely whether individual elements or features of the invention are found somewhere in the prior art.

It is common to find elements or features of most inventions somewhere in the prior art.

Connell v. Sears, Roebuck & Co.,

722 F.2d 1542, 1549 (Fed.Cir.1983) (“Humans must work with old elements, most if not all of which will normally be found somewhere in an ‘examination of the prior art’.”). Recognizing this reality, defendants searched the prior art for mechanical elements which look like the segregated elements of the patent claims at issue. “In essence, defendants have

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