# Cargill, Inc. v. Sears Petroleum & Transport Corp. > District Court, N.D. New York · August 27, 2004 · 334 F. Supp. 2d 197 URL: https://www.frixlaw.com/law-library/cases/2520610 ## Case - **Full name:** CARGILL, INCORPORATED, Plaintiff, v. SEARS PETROLEUM & TRANSPORT CORP., and Sears Ecological Applications Co., LLC, Defendants - **Court:** District Court, N.D. New York - **Decided:** August 27, 2004 - **Citations:** 334 F. Supp. 2d 197; 2004 U.S. Dist. LEXIS 21748; 2004 WL 3507329 - **Precedential status:** Published - **Opinion:** Opinion by Peebles - **Judges:** Peebles - **Cited by:** 24 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/2520610 ## How later opinions describe it (automated extraction) - concluding, when considering a summary judgment motion, that decision on motion to dismiss issued “at an early procedural juncture, prior to the completion of discovery, and upon a scant record, particularly in contrast to the exhaustive materials now before the court” was not… - declining to preclude evidence under Rule 37, which was previously withheld on the basis of attorney-client privilege ## Opinion text DECISION AND ORDER PEEBLES, United States Magistrate Judge. This action has as its genesis a commercial dispute between plaintiff Cargill, Incorporated (“Cargill”), one of the world’s largest privately-held companies with operations centered around the manufacture and sale of agricultural products, and defendant Sears Petroleum Transport Corporation (“Sears”), a family-run petroleum products company headquartered in upstate New York. 1 At the heart of this multi-faceted controversy is United States Patent No. 6,299,793 (the “’793 patent”) issued in October of 2001, and assigned to Sears, as well as the invention which that patent teaches. The claims associated with the ’793 patent describe a low molecular weight carbohydrate and salt based composition developed to address problems associated with roadway icing, although the language of the claims contained within the patent does not specifically limit use of the patented product solely to direct application upon road surfaces. Currently pending before the court is an application by the parties for construction of certain disputed terms within the ’793 patent, as well as cross-motions for summary judgment addressing various issues presented in the case surrounding the patent claims and defenses asserted by the parties including, inter alia, infringement, patent unenforceability, patent invalidity, and willful infringement. Cargill also seeks summary dismissal of common law counterclaims asserted by Sears, stemming from defendants’ contention that pri- or to issuance of the ’793 patent Cargill misappropriated and used to its own commercial benefit the principles associated with the underlying invention. I. BACKGROUND A. Evolution and Prosecution of the ’793 Patent Development of the invention forming the basis of the ’793 patent was driven by *207 a perceived need for an improved roadway de-icing agent lacking in certain undesirable characteristics linked to previously available commercial products. According to background information set forth in the patent, products used in the past by municipalities and others for preventing or removing ice and snow buildup on pavement surfaces were found to possess inherently undesirable traits, including the tendency to promote corrosivity and environmental contamination. Prompted by a desire to develop deicing agents which did not exhibit these deleterious features, the industry turned to alternative formulations including those utilizing agricultural waste materials and by-products as base constituents. Prior art cited in the ’793 patent references products derived from a wet milling process of shelled corn, soaked in a hot solution concerning sulphurous acid, yielding steep water solubles used in the de-icing product; a composition which included an “admixture of waste concentrate of alcohol distilling”; and a composition “formed from a waste product of the process of removing sugar from sugar beet molasses, also known as desugared sugar beet molasses.” Marks Invalidity Aff. Exh. 1, col. 1, Ins. 28-48. 2 The problems associated with these earlier organic products using agricultural residues, including brewers condensed solubles (“BCS”), as a base element included extreme variations in composition, viscosity, film forming tendency, freezing temperature, and other functional aspects, resulting in potentially greatly varied performance from batch to batch. 3 The presence of “highly undesirable or unnecessary ingredients”, including high organic contents, phosphorous compounds and heavy metals, in such earlier products also led to additional problems such as “stratification in storage, biological degradation, odor, plugging of filters and spray nozzles and environmental diffieulties[.]” ’793 patent, col. 1, In. 67; col. 2, In. 24. To address these undesirable qualities associated with earlier formulations, the co-inventors of the ’793 patent — David Wood, a Sears employee, and Robert A. Hartley, a Canadian chemist — set out to meet “an immediate need for synthetic, chemically modified thickeners, and carefully purified materials which can be substituted for the currently used agricultural residues ... [to] improve performance and reduce metal corrosion, spalling of concrete, toxicity and [address] environmental concerns.” ’793 patent, col. 2, Ins. 8-13. Among the objects of the invention listed in the ’793 patent is the desire to provide 1) “a deicing, formulation which exhibits improved performance standards which overcomes [sic] the prior art problems described above”; 2) “a deicing formulation which utilizes a synergistic combination of a low molecular weight carbohydrate and an inorganic freezing point depressant”; 3) “for improved ice melting properties and ... less corrosion”; 4) “consistent physical and chemical properties, thereby assuring consistent quality and performance”; and 5) “an economical, highly effective deicing formulation.” ’793 patent, col. 2, Ins. 14-32. Upon determining that the principal organic components of the prior art formulations consisted of carbohydrates, the ’793 inventors set about testing to probe the *208 efficacy of the use of carbohydrates to formulate a more consistent and effective de-icing agent. In one set of tests BCS was diluted and divided into several fractions, which were then added to a mixture of ethanol and methanol, mixed with magnesium chloride in varying proportions, and assayed to determine their effects upon freezing point depression. Testing, including that calculated to identify the active constituents of BCS, revealed to the inventors that low molecular weight carbohydrates had the greatest impact on freezing point depression when mixed with magnesium chloride. The inventors next identified several potential sources of carbohydrates in the low molecular weight range of less than 1,000, including glucose/fructose (180), disacchar-ides (342), trisaccharides (504), tetrasac-charides (666), eentasaccharides (828), and hexasaccharides (990). Potential commercial sources of such low molecular weight carbohydrates were listed by the inventors in the ’793 patent to include Corn Syrup Solid DE 44, high maltose corn syrup, high fructose corn syrup, and glucose. Inventors Wood and Hartley initiated the patent prosecution process by the filing of utility patent application no. 09/224,-906, on January 4, 1999. See Hansen Aff. Exh. C. That application, which has been referred to by the parties as a parent non-provisional application, and has been abandoned by the inventors, claimed an invention using a combination of three key components to formulate a de-icing composition which did not exhibit the problems associated with the cited prior art. Those components were described to include a freezing point depressant, which could consist of “any suitable inorganic or organic material and mixtures thereof’, which could include either a chloride and/or an organic substance such as, notably, sugars (hexoses, saccharides) and an array of other potentially suitable components; a film former, comprised of “any suitable water soluble or water resoluble material”; and water. Id. While the film former is described in that application as intended to immobilize the freezing point depressant to prevent runoff from the road surface to which it is applied, it is also described as “itself a freezing point depressant” with the resulting effect of “further improv[ing] the efficiency of ice melting and aidfing] in the reduction of metal corrosion[.]” Id. On January 7, 1998 inventors Hartley and Wood filed provisional application no. 60/070,636. Hansen Aff. Exh. B. That application disclosed the same concept of using the combination of a freezing point depressant, a film former, and water in a refined form to overcome the problems associated with then-existing de-icer formulations, as was the subject of the earlier parent non-provisional application. See id. While Sears has not altogether abandoned its claim of priority dating back to the provisional parent application filed on January 4, 1999, it acknowledges experiencing the serendipity which ultimately led to the issuance of the ’793 patent in December of 1998, when it received a report from Bodycote Ortech, Inc. (“Bodycote”), a Canadian materials testing laboratory engaged at the request of inventors Wood and Hartley to conduct testing regarding the characteristics of Ice Ban — an existing, commercially available de-icing product. That report disclosed a synergism between the magnesium chloride and the Ice Ban. In analyzing the Ice Ban product Bodycote isolated five primary constituents, and discovered that one of those five components, identified as “Fraction E”, consisted predominantly of carbohydrates appearing to be low molecular weight saccharides, or sugars. On December 31, 1998 Sears received a supplemental report stating that *209 “lower molecular weight [carbohydrates] appear[ed] to produce the greatest influence on the freezing point of the solution.” Hansen Aff. Exh. T, at SP01024. Wood and Hartley filed continuation-in-part (“CIP”) application no. 09/755,587, the application which ultimately resulted in issuance of the ’793 patent, on January 5, 2001. Hansen Aff. Exh. D. In that application, the inventors disclosed ten references to prior art, including nine de-icer patents containing agricultural waste product constituents. 4 Following review of the application by Patent and Trademark Office (“PTO”) Examiner Greene, certain of the claims in the application were initially rejected based upon that prior art, including the Janke ’813, Johnson and Gambino patents. Examiner Greene commented that the pri- or art already taught the use of products containing carbohydrates, and that the choice of molecular weight range is “a matter of obvious choice or design best determinable through routine experimentation and optimization within the art and producing no unexpected results absent a showing otherwise.” Hansen Aff. Exh. E, at 3-4. In response to these concerns, Wood cited research by co-inventor Hartley reflecting that the prior art involved components with “any number of extraneous, and frequently undesirable, compounds” that “either alone or in combination with magnesium chloride, ... were producing the various problems” encountered with the prior products. Hansen Aff. Exh. F, at 2. Wood went on to note that the invention practiced by Wood and Hartley was designed to “develop a more pure liquid for combining with the magnesium chloride (or other chloride salts) that would eliminate the problems noted ... as well as provide uniform performance and quality to the market.” . Id. After amendment of the application to specify not only the molecular weight range of the carbohydrate component but additionally a listing of potential sources for that element, the claims were subsequently allowed, and the ’793 patent was issued on October 9, 2001. B. The Parties’ De-Icing Industry Business Ventures Neither Cargill nor Sears is a stranger to the commercial de-icing business. Car-gill notes that it has been -involved in the winter highway maintenance industry for approximately forty years, and during more than twenty of them has focused considerable efforts on technology related to ice melting, corrosion reduction, and environmental safety. For approximately fifteen of those years, Cargill has manufactured and sold de-icing and anti-icing products, and in October of 2000 began selling the ClearLane line of de-icing and anti-icing materials, which are at the heart of this matter. For its part, Sears entered the commercial de-icing business in the late 1990s by way of a joint venture through which it distributed Ice Ban, a liquid de-icer made *210 from waste products of the brewing and corn milling industries. Along the way, Sears claims to have recognized the need for a new “synthetic” product, based on refined agricultural ingredients, to avoid or minimize the environmental and corrosive problems associated with prior products, including Ice Ban. Toward that end, in November of 1997 Robert Hartley, a Canadian-based chemist, was engaged to conduct scientific research, with the aid of Bodycote, ultimately yielding the December, 1998 discovery of the synergistic effect of combining low molecular weight carbohydrates with chloride salts. On July 29, 1999 a meeting was held at Sears’ offices in Rome, New York. In attendance were two Cargill employees, Richard Rose and Gerald Thornton, and representatives of Sears and its partner, Innovative Materials, U.S. (“IMUS”), including David Wood. The circumstances surrounding the genesis of that meeting are sharply disputed. Sears maintains that in the summer of 1999, Cargill approached Sears and proposed supplying it with agricultural products, and in turn purchasing Sears’ finished de-icing products in bulk. According to Sears, such an arrangement would have been beneficial for a variety of reasons, including the fact that Cargill operated a large salt mine in nearby Lansing, New York. Cargill, in contrast, maintains that it was Sears that first approached Cargill with a proposal to meet, after learning that Cargill was planning to meet with Ice Ban America, a Sears competitor. Prior to the July 29, 1999 meeting, Car-gill’s Richard Rose faxed a letter to IMUS representative Crawford, with a copy to David Wood of Sears, pointing out that Cargill had been working to develop its own technology in the areas to be discussed, and advising Sears and IMUS that Cargill’s “agreement to meet with you is contingent on your acknowledgment that no confidential or otherwise proprietary information shall be exchanged.” Marks Trade Secrets Aff. Exh. 7. That letter went on to warn that information disclosed by Sears and/or IMUS during the meeting would not be regarded as confidential or proprietary, and there would be no limitation on Cargill’s right to use or disclose any such information. Id. As will be seen, there is also sharp disagreement over the extent of disclosure of the claims forming the basis of the ’793 patent during the July 29, 1999 meeting, which lasted approximately one hour. Cargill contends that several references in the record, including deposition testimony of David Wood, strongly suggests that the specifics of the invention were disgorged during that meeting. Sears, nonetheless, maintains that the patent application and underlying technology were only generally discussed in a preliminary way during that initial session, with a view toward more complete disclosure during subsequent, follow-up meetings. A second, day-long session was conducted between Sears and Cargill representatives at Cargill’s facility in North Olm-stead, Ohio on August 25, 1999. As a prelude to that day-long meeting, the parties entered into a written confidentiality agreement which was to govern the ex-' change of information during those talks. See Marks Trade Secrets Aff. Exh. 9. At that meeting Sears discussed the development of its new “synthetic” de-icing product, and its discovery that low molecular weight carbohydrates, in combination with magnesium chloride, produced enhanced freezing point depressive characteristics. Also discussed at the second session were marketing, sales, and pricing issues as well as the future market potential for the new product. *211 Shortly after the Ohio meeting, Cargill terminated discussions with Sears concerning a business relationship between the two entities. The explanation given by Cargill regarding that abrupt termination was.based upon its discovery, following the second meeting, that Sears personnel had discussed with its customers a possible business relationship with Cargill — a matter which Cargill viewed as a breach of the parties’ confidentiality agreement. Despite Sears’ acceptance ,of responsibility for the secrecy breach and a request for further meetings to discuss a possible business venture, no further talks were held between the parties. On June 4, 2002 United States Patent No. 6,398,979 (the “ ’979 patent”) was issued and assigned to Cargill. Hansen Reply Aff. Exh. AAA. That patent describes a de-icer containing molasses solids and magnesium chloride in proportions covered by the claims in the ’793 patent. Throughout this litigation Cargill has claimed that its ClearLane brand’ de-icer line of prod-' ucts is covered by this ’979 patent. II. PROCEDURAL HISTORY After being advised, including by letter dated October 12, 2001, of Sears’ contention that it was infringing the ’793 patent, Cargill commenced this action on February 22, 2002 in the Southern District of New York seeking a declaratory judgment to include, inter alia, a finding of nonin-fringement. Upon motion subsequently filed by defendant Sears, arguing the lack of any meaningful nexus between that court and the parties or the existing controversy, the case was .ordered transferred to this district on April 17, 2003. 5 , 6 See Dkt. No. 19. Following completion of pre-trial discovery, both Sears and Cargill elicited the court’s assistance with regard to claim construction. A hearing was held on June 29, 2004 to address the disputed claim terms. On the following day, .oral argument was heard regarding various dispositive and non-dispositive cross-motions which have been interposed in the action. III. DISCUSSION A. Claim Construction As a threshold matter, a court confronted with patent infringement claims must construe any controverted provisions of the patent in issue. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996). Toward that end, I have been called upon by the parties to assist in the construction of several controversial portions of the claims set forth within the ’793 patent. To assist in this endeavor, the parties presented their respective positions regarding the disputed claim terms during the Markman hearing, both in the form of oral argument, and through the testimony of Dr. E. Bruce Nauman, a Professor of Chemical and Biological Engineering at the Rensselaer Polytechnic Institute, offered by Sears as a claim construction expert, and Dr. Wilfred A. Nixon, a Civil and Environmental Engineering Professor at the University of Iowa with highway maintenance experience, who was called on behalf of Cargill. 7 *212 Patent claim construction begins with the non-controversial premise that the issue is one of law, to be decided by the court. Markman, 52 F.3d at 979; see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed.Cir.1999) (citing Markman). When engaged in patent construction, a court must construe claims as one of ordinary skill in the relevant art would understand and interpret them. Markman, 52 F.3d at 986 ; see also K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed.Cir.1999). The Federal Circuit’s decision in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir.1996), is widely regarded as defining the contours of the claim construction inquiry. Under Vitronics, a court should look first to the intrinsic evidence of record, including the patent itself and its express claims; the specification; and any available prosecution history in order to inform the construction analysis. Id. at 1582 . A court engaged in claim construction must bear in mind the paramount consideration that the intrinsic evidence, including the patent itself, specification, and file history — all matters of public record — should control wherever possible, since it is this record upon which competitors and others must rely in order to determine the scope and extent of the protected rights associated with the patent in issue. Id. at 1583 . Perhaps the most definitive sources of guidance concerning the construction of a claim are the words found within it. See id. at 1582 . Words contained within a patent should normally be given their ordinary and customary meaning, unless the patent prosecutor has chosen to set forth specific, nontraditional definitions of the particular term in the patent specification or file history. Id. When divining the ordinary meaning of a claim term, courts generally afford first-level consideration to dictionary definitions revealing the ordinary meaning of particular claim terms. 8 Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed.Cir.2003) (citing Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002)); see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed.Cir.2002). Technical treatises and dictionaries may also be used by the court at any time in construing terms, provided that the dictionary definitions do not contradict the express or implied meaning set forth in the patent record. Vitronics, 90 F.3d at 1584 n. 6; Canton Bio-Medical, Inc. v. Integrated Liner Techs., Inc., 19 F.Supp.2d 22 , 28 n. 2 (N.D.N.Y.1998) (Scullin, J.) (citing Vitronics), aff'd, 216 F.3d 1367 (2d Cir.2000). *213 In addition to the express terms of a patent claim, the patent specification, which is akin to an internal dictionary, must be reviewed to determine whether the inventor has used any term in a manner inconsistent with its ordinary, meaning; “ ‘[c]laims must be read in view of the specification, of which they are a part.’ ” Vitronics, 90 F.3d at 1582 (citing Markman, 52 F.3d at 979 ). The specification is the “single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582 . The specification must be considered as a whole, and all portions should-be read in a manner that renders the patent internally consistent. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed.Cir.2001). “Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir.2001). The third category of relevant intrinsic evidence to be considered is the prosecution history surrounding the patent. The prosecution history, which is customarily though not' always offered to assist the court in fulfilling its claim construction responsibilities, is comprised of the complete record of proceedings before the PTO, including any express representations made by the applicant regarding scope of the claims being made, and an examination of the prior art. Vitronics, 90 F.3d at 1582-83 . Such evidence, which normally chronicles the dialogue which occurs with the PTO and provides reliable indication of any limitations or concessions on the part of the applicant, can often-be highly instructive in the issue of claim construction. Accordingly, courts supplied with such evidence strive to avoid definitions upon which the PTO could not reasonably have settled in order to ensure against the possibility of an applicant obtaining a scope of protection which encompasses subject matter that, through the conscious efforts of the applicant, the PTO did not examine. Genentech, Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555, 1564 (Fed.Cir.1994). Similarly, representations made in an attempt to overcome objections by the patent examiner provide particular enlightenment in construing claims and es-topping inventors from later attempting to broaden their arguments beyond the scope of those presented in the PTO. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733-34 , 122 S.Ct. 1831, 1838-39 , 152 L.Ed.2d 944 (2002). If analysis of the available intrinsic evidence resolves ambiguity of a disputed claim term, the inquiry ends there. Vitronics, 90 F.3d at 1583 . If,‘on the other hand, there remains genuine ambiguity in the claims after consideration of all available intrinsic evidence, the court' should next examine available extrinsic evidence, including expert testimony, inventor testimony, dictionaries, and technical treatises and articles, for guidance in reconciling any conflicting intrinsic indicators. Id. at 1584 . Such extrinsic evidence may only be used to help the court understand the claims, however, and does not justify any departure from or contradiction' with the claim language. Id. To assist in resolving ambiguity, a court may in its discretion admit and rely on prior art, whether or not cited in the specification or file history. Id. at 1584-85 . Prior art and dictionaries, as publicly accessible, objective information, are for obvious reasons preferable to expert testimony as tools for resolving ambi *214 guity. Id. at 1585 ; see also Texas Digital Sys., 308 F.3d at 1202-03 . Ultimately, interpretation of patent claim terms can only be determined with full understanding of what the inventors actually invented and intended to envelop within the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998). For this reason, when inventors distinguish their invention from prior art, that prior art is properly excluded from the claims’ coverage. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 267 F.Supp.2d 533, 543 (N.D.W.Va.2003) (citing SciMed Life Sys., Inc., 242 F.3d at 1343 ). Throughout its presentation Car-gill has urged the court to approach claim construction from a perspective which takes into account the intended embodiment of the invention as having been principally designed to assist in the control of snow and ice on roadways. “[W]hile it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims[.]” See Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed.Cir.1988) (emphasis added). As another judge of this court has observed, “[n]or should particular embodiments in the specification be read into the claims; the general rule is that the claims of a patent are not limited to the preferred embodiment.” Cornell Univ. v. Hewlett-Packard Co., 313 F.Supp.2d 114, 126 (N.D.N.Y.2004) (Mordue, J.) (citing, inter alia, Texas Digital Sys., 308 F.3d at 1204 ). I have therefore interpreted the ’793 patent in a manner which admits of other, non-roadway uses, though mindful of the history and context in which the invention was developed. 9 The ’793 patent presents four independent claims, including claims one, four, seven and eight. Each independent claim describes a “de-icing and anti-icing composition comprising an aqueous solution which contains a low molecular weight carbohydrate”, together with a chloride salt, in constant proportions, by weight, of between three and sixty percent of carbohydrates and five to thirty-five percent chloride salt. ’793 patent, col. 9, In. 47-67-col. 12. Claims one and four limit the molecular weight of the carbohydrate ingredient to a range of 180 to 1500, while claims seven and eight refine the maximum allowable carbohydrate molecular weight to 1000. Id. Independent claims four and eight further provide for inclusion of a thickener within specified weight ranges. Id. Dependent claims two and five narrow the chloride salt component of the solution to be “at least one selected from the group consisting of sodium chloride, magnesium chloride and calcium chloride.” Id. Dependent claims three and six allow for the inclusion of a “colorant to provide visual aid in applying the composition to a surface.” Id. 1) Person Of Ordinary Skill In The Art In addressing claim construction, the relevant inquiry for the court is how a person of ordinary skill in the art would understand the claim terms at the time of the invention. Markman, 52 F.3d at 986 . Put another way, patent claims must be construed not through the eyes of the court, or those of any proffered experts, but instead from the standpoint of a person skilled in the. art. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1332 (Fed.Cir.2001). In con *215 structing the person of ordinary skill in the art, the court should consider the educational level of the inventor, the type of problems encountered in the art, the prior art solutions to the problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of workers in the field. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed.Cir.2000) (citation omitted). As one might gather, claim construction can often turn upon the court’s definition of a person of ordinary skill in the art. Not surprisingly, the parties differ somewhat markedly concerning the applicable relevant art to be applied in this case. Both parties agree that the “art” in question is that of chemical road de-icing and anti-icing. 10 The parties’ respective positions diverge, however, when it comes to the required level of practical experience in road de-icing and anti-icing, as well as the degree of sophistication necessary in the field of chemistry. Sears, noting that the patent teaches a chemical composition and not a process for removing ice and snow from roadways, urges a definition which would require a bachelors degree in chemistry or chemical engineering with continued work in the field since graduation. Cargill, in contrast, proposes a more relaxed requirement with regard to education, including a bachelors degree in physical science and at least four courses in chemistry, together with approximately five years of involvement in research, development or characterization of de-icing and anti-icing chemicals. When analyzed in a vacuum, the claims set forth in the ’793 patent seemingly support Sears’ proposed requirement of a bachelors degree in chemistry or .chemical engineering, without education or practical experience in the field of roadway de-icing. The claims teach a chemical composition containing, as the principal ingredients, carbohydrates — polymers which can include simple sugars such as glucose and fructose as. the monomers — and a chloride salt. Because the patent focuses upon the synergistic effect of these mixtures, as well as the addition of water, thickeners, and colorants, Sears argues that what is essential to understanding the ’793 patent terms is an understanding of solution thermodynamics of chemical compositions in various states of equilibrium. Cargill counters that one cannot overlook the fact that the invention practiced in the ’793 patent sprung from a perceived need to improve over earlier products utilized as roadway de-icing and anti-icing agents. Accordingly, Cargill maintains, at least some level of understanding of the de-icing and anti-icing processes to which this invention could be put to use would be helpful. It is for this reason that Cargill proposes to define the person of ordinary skill in the art to include someone with additional practical experience in understanding de-icing and anti-icing beyond receipt of a bachelors degree in the physical sciences. In arriving at a formulation to define the elusive person of ordinary skill in the art, I have considered the educational and prac *216 tical experiences of the inventors. In this instance, co-inventor Robert A. Hartley, while — as Cargill argues — not possessing a bachelor’s degree in chemistry, apparently received an equivalent degree in the United Kingdom, and has extensive expertise in the field of chemistry extending well beyond that expected of a person of ordinary skill in the field. Coinventor David H. Wood, while not a chemist, has practical knowledge of winter highway maintenance. It is this combination, in my view, that informs the definition of one with ordinary skill in the art. I will therefore define a person of ordinary skill in the art as possessing a bachelors degree, or the equivalent, in chemistry or chemical engineering, with some coursework in the field of organic chemistry, and additional post-graduate involvement in research or practical experience in the field of roadway ice management. 2. Construction of Claim Terms in Contention The parties appear to be in agreement regarding the need for the court to construe the terms “de-icing and anti-icing composition,” “aqueous solution,” “carbohydrate” (referred to by Sears as “low molecular weight carbohydrate”), “chloride salt,” “balance,” “colorant,” and “thickener.” Although it does not appear to be controversial, Cargill also requests guidance concerning the claim term “viscosity.” 11 i) De-icing and Anti-icing Composition The first disputed claim term to be construed is “de-icing and anti-icing composition.” While the parties’ positions regarding this term do not differ markedly, Cargill attempts to restrict the term to direct pavement and roadway usage, citing the genesis for the invention and its description within the patent as a basis for its argument. Sears opposes such a restrictive interpretation, countering that there is nothing in the claims themselves to limit the utility of the invention to roadways, and that it can and should be construed to extend to other areas where icing occurs. Notwithstanding the parties’ quarrel over this term, at first blush the phrase consists of simple, understandable and unambiguous words. The use of the prefix “de” before a word is commonly accepted to mean “[r]emove or remove from[.]” American Heritage Dictionary of the English Language 465 (4th ed.2000). Similarly, use of the term “anti” to precede a word is defined to mean “[d]estroying[.]” Id. at 76. Consistent with these elementary definitions, the term “de-ice” is defined in one generally accepted dictionary as meaning “to keep free or rid of ice.” Marks Claim Construction Aff. Exh. 6 (Websters Third New International Dictionary, (1993 ed.) 595). Despite this more expansive reach of the words themselves, the phrase “de-icing and anti-icing composition” cannot be interpreted in a vacuum; instead, one must look to the patent as a whole, including the circumstances under which it was developed and the prior art described. Plainly, each of these sources is strongly suggestive of an intended use of the ’798 invention to control ice on roads and other similar surfaces. Indeed, as Cargill argues when advocating a more restrictive *217 definition than that propounded by Sears, the ’793 patent describes the background of the invention in conjunction of snow and ice removal from roadways, and begins with the observation that “[t]he current state of the art for coping with snow and ice on roads usually involves applying a deicer material such as a salt to the road surface.” ’793 patent, col. 1, Ins. 10-12. Similarly, as Cargill notes one of Sears’ own experts, L. David Minsk, defines the terms de-icing and anti-icing in the context of pavement maintenance. Indeed, even Sears’ own promotional material for its products and those of SEACO describes anti-icing as a “preventive/proactive strategy designed to prevent packed snow or ice from bonding to pavement surfaces.” Marks Claim Construction Aff. Exh. 9, at SP 03826. Arguing in favor of a definition which restricts the de-icing and anti-icing composition to controlling ice on roadways, Car-gill goes one step further, suggesting an additional circumscription which would require that the material be directly applied to the road or other pavement surface. I reject this additional limitation as unsupported by the patent claims and specification. Indeed, this position overlooks the language within the ’793 patent itself which describes the inclusion of [tjhickeners which are used ... to increase the viscosity of the compositions so that the liquid remains in contact with the road surface or with the solid particles in piles of rock salt/sand, or rock salt/aggregates, or rock salt alone, or sand or aggregate. ’793 patent, cols. 7, Ins. 10-15. Cargill’s description also ignores the following clarifying language: While the present invention has been particularly shown and described herein with reference to various preferred modes it will be understood by one skilled in the art that various changes in detail may be effected therein without departing from the spirit and scope of the invention as defined by the claims. Id. col. 9, Ins. 42-47. Clearly, the ’793 patent itself contemplates a composition whose utility is not necessarily limited to direct application on road pavement surfaces. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed.Cir.2004) (“[tjhe patentees were not required to include within each of their claims all of these advantages or features described as significant or important in the written description”). Based upon the foregoing, I construe the term “de-icing and anti-icing composition” as a composition whose intended purpose, through direct or indirect application, is to keep roadways free or rid of ice, or to prevent its formation on such surfaces. ii) Aqueous Solution The phrase “aqueous solution”, while seemingly non-controversial, has become a significant battleground in this case. The parties’ differences with respect to this term focus upon the extent to which incidental, insoluble components can exist in the specified aqueous solution. Cargill urges a definition requiring a “uniformly disbursed liquid mixture containing water as the primary solvent.” Sears offers a more relaxed requirement of a “single-phase, liquid mixture of two or more components, one of which is water and with possible incidental amounts of insoluble components.” The term “solution” is defined in one source as constituting a “homogeneous mixture of two or more substances, which may be solids, liquids, gases, or a combination of these.” American Heritage Dictionary, at 1655. The term “homogeneous” is defined elsewhere as “often loosely used to *218 describe a mixture or solution composed of two or more compounds or elements that are uniformly disbursed in each other.” Hawley’s, at 577, as cited in Jacks on Aff. Exh. 1. While both of those sources associate the term “homogeneous” with “solution,” the Hawley’s definition goes on to observe that “[a]ctually, no solution or mixture can be homogeneous; the situation is more accurately described by the phrase ‘uniformly disbursed.’ ” 12 Haw-ley’s, at 577, as cited in Jackson Aff. Exh. 1. Use of the term “aqueous” cqnstricts the solution in issue in the ’793 patent to a liquid with water as a component, or even the primary solvent. This much is not in dispute. The critical issue presented is the degree of homogeneity required in the aqueous solution. As even the Hawley’s dictionary definition recognizes, no solution or mixture can be entirely homogeneous. Moreover, both parties’ experts have acknowledged that in practice, there are no solutions which are completely free of extraneous materials, however microscopic they may be. Indeed, even contemporary drinking water standards provide for inclusion of certain impurities including asbestos particles, albeit within exceedingly narrow defined limits. In consideration of the patent claim language and use of the term aqueous, derived from aqua—which means “[w]ater”, American Heritage Dictionary, at 89—I interpret the phrase “aqueous solution” to mean a uniformly disbursed liquid mixture of two or more components, one of which is water, and which can contain incidental amounts of insoluble components. iii) Low Molecular Weight Carbohydrate Once again the parties disagree appreciably on the definition to be attributed to this phrase. 13 The term “carbohydrate” itself is not a controversial one; its definition specifies a “compound of carbon, hydrogen, and oxygen ... in which the ratio of hydrogen to oxygen is the same as in water.” Hawley’s, at 206, as cited in Marks Aff. Exh. 11. As used in the ’793 patent, however, the term is restricted to a carbohydrate with a “low molecular weight,” and the carbohydrate source is further specifically limited as being “selected from the group consisting of glucose, fructose, and higher saccharides based on glucose and/or fructose and mixtures thereof.” 14 ’793 patent, col. 9, Ins. *219 47-67-col. 12. The controversy in this instance centers around the source, including its purity and consistency, of the carbohydrate constituent. While the term “carbohydrate” is readily definable, its use in the ’793 patent must be considered in light of the limitations expressed, including the molecular weight range and the potential origins or sources of the designated carbohydrates. Indeed, both parties appear to be in agreement on this score. Citing various sources including the patent itself, Cargill urges a definition which requires that the carbohydrate be from a “pure and consistent source.” For its part, Sears proposes to limit the allowable carbohydrates to those obtained from a “refined and consistent source.” Both note, in support of their respective positions, prior art which was based upon use of agricultural residues and waste products that were notoriously impure and inconsistent. While Cargill urges a definition which would require purity, there is nothing in the claim or elsewhere in the ’793 patent to support such a stringent requirement. Indeed, as Sears argues, the purity requirement propounded by Cargill would exclude various of the examples cited in the patent, since according to the evidence—including the testimony of Dr. Nauman—the carbohydrate sources cited vary in sugar content from 50% to 99% with none being “pure”. 15 The ’793 patent stresses the importance of the requirement that the carbohydrates utilized be derived from sources with “consistent physical and chemical properties”, ’793 patent, col. 2, Ins. 28-29, and distinguishes prior art teaching de-icing agents derived from agricultural waste products with famously poor consistency. “[A] claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Altiris, Inc., 318 F.3d at 1370 (quoting CCS Fitness, 288 F.3d at 1366 ). Consistent with this approach, the six specific embodiments set forth in the ’793 patent utilize refined agricultural products with just such properties as a designated low molecular weight carbohydrate source. As the Federal Circuit has noted, “the written description of the preferred embodiments ‘can provide guidance as to the meaning of the claims, thereby dictating the manner in which the claims are to be construed, even if the guidance is not provided in explicit definitional format.’ ” Bell Atlantic Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258 , 1268 (Fed.Cir.2001) (quoting SciMed, 242 F.3d at 1344 ). From the terms of the ’793 patent, including the specified embodiments, consideration of the potential sources of low molecular weight carbohydrates listed, and the prior art referenced, I conclude that a person of ordinary skill in the art would construe the term “low molecular weight carbohydrate”, as used in the ’793 patent, as a material which includes carbon, hydrogen, and oxygen where the ratio of hydrogen to oxygen is the same as in water, and which is obtained from a refined and consistent source. 16 *220 iv) Chloride Salt The term “chloride salt”, as utilized in the ’793 patent, does not seem to be controversial. A salt is generally accepted by one of the ordinary skill in the art as a neutralization product of an acid' and a base. Both parties agree that a chloride salt is one in which the anion, or negatively charged portion, is comprised of chlorine, and can include sodium chloride, magnesium chloride and calcium chloride. v) Balance The independent claims of the ’793 patent specify ranges, in percentages by weight, for carbohydrate and chloride salt content, and identify water as constituting the “balance”. The parties disagree over whether this term, in combination with the specification of the carbohydrate and chloride salt content range, permits inclusion of any incidental impurities or additional ingredients other than the colorants and thickeners specified in some of the claims. The battle lines regarding this term are drawn based upon the parties’ respective positions concerning the permitted extent of impurities in the composition taught by the ’793 patent. Cargill urges a confined, closed ended reading of the term, to the exclusion of other, non-specified ingredients, whereas Sears contends that it should be interpreted in such a fashion as to allow for some incidental, unspecified ingredients. The term “balance”, not necessarily restricted to the art of chemistry, is generally accepted to mean “the remainder or rest,” Random House Webster’s College Dictionary 101(2d ed.1991), or “something left over, remainder”, Merriam-Webster Collegiate Dictionary 87 (10th ed.1995). See Hansen Aff. Exh. K. At first blush, these sources appear supportive of Car-gill’s proffered definition. Strictly construed, use of the closed-ended term “balance” in the formulation specified indicates that other than the low molecular weight carbohydrate source and chloride salts, as well as possible addition of thickeners and colorants, the remainder of the solution practiced in the ’793 patent is water only. Such a strict definition, however, ignores the realities associated with the patent, and in particular the designated sources of carbohydrates and chloride salts. Commercially available sources for the low molecular weight carbohydrates and the chloride salts, as well as the water, specified within the invention by definition all include impurities. Clearly what the term “balance” was intended to eliminate were the harmful, unlisted ingredients associated with the prior art, based on agricultural waste products which utilize materials which have highly undesirable or unnecessary ingredients leading to practical difficulties by manufacturers and users, such as stratification in storage, biological degradation, odor, plugging of filters and spray nozzle and environmental difficulties e.g., .... high organic contents (about 40% by weight), presence of phosphorus compounds and heavy metals. ’793 patent, col. 1, In. 66-col. 2, In.6. It should also be noted that the use of such closed-ended terms as balance, or “consisting essentially of’ can allow for the presence of “unlisted ingredients that do not materially affect the basic and novel *221 properties of the invention.” PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.Cir.1998). In light of these considerations, and the ’793 patent itself, I construe the term “balance”, as used, to mean that aside from the other specified ingredients, including low molecular carbohydrates and chloride salts, and with the possible addition of colorants and thickeners, as well as incidental impurities or harmless ingredients associated with the commercial sources of the key components in the invention, the solution shall contain only water. To hold otherwise, and specifically to adopt Cargill’s interpretation, would be to reject the reality of impurities in all of the stated ’793 ingredients. vi) Colorant Claims three and six of the ’793 patent provide for the inclusion of a colorant in the invention described in claims one and four, respectively, in order “to provide visual aid in applying the composition to a surface.” Once again, the parties differ concerning this term, their disagreement centering upon whether the colorant must be a separately added ingredient, and instead can be inherent in one of the other prescribed constituents. According to one authoritative chemical dictionary, the term “colorant” is described as a “substance that imparts color to another material or mixture. Colorants are either dyes or pigments and may be (1) naturally present in a material ... (2) admixed with it mechanically ... or (3) applied to it in a solution”. Hawley’s, at 287, as cited in Marks Claim Construction Aff. Exh. 18. As can be seen, this definition does not appear to limit the term to color additives, but instead is sufficiently broad to allow for inclusion of pigmented or dyed materials already included within the formulation. To be sure, there is some facial appeal to Cargill’s argument that use of the phrase “further includes” suggests that the addition of a separate colorant as an ingredient was envisioned by the inventors. This proffered interpretation, however, is belied by the illustrations given in the patent. As Cargill concedes, certain of the examples cited describe materials which are in some way colored in appearance without the introduction of a separate ingredient to instill color. While in examples I and II a colorant (Caramel YT25) is added, example III describes a solution, with high maltose corn syrup and industrial grade magnesium chloride solution as the key ingredients, which has an appearance described as “[c]lear, light brown” without the addition of any separate colorant. Based upon the cited examples, the stated objective of including a colorant, and the Hawley’s definition of the term, I reject the restrictive reading of the term “further” which would exclude the possibility of a colorant already inherent and present in the solution described in claims one and four. Instead, I adopt a definition of “colorant” to include a substance or material, whether inherent in or separately added to the specified composition, which imparts color to the composition. vii) Thickener Claims four through six and eight provide for inclusion of a thickener with the previously described solution and, unlike the case with regard to colorants, also provide weight by percentage limits for such thickeners. The parties also disagree upon the definition of this term, and specifically whether it must be a separately added ingredient, or instead can be inherent in the other materials included within the composition. *222 A “thickening agent” is described by one source as “any of a variety of hydrophilic substances used to increase the viscosity of liquid mixtures and solutions”. Hawley’s, at 1084, as cited in Marks Aff. Exh. 19. The ’793 patent describes the use of thickeners envisioned by the inventors as follows: Thickeners are used in certain applications as the third key component to increase the viscosity of the composition so that the liquid remains in contact with the road surface or with the solid particles in piles of rocksalt/sand, or rocksalVaggregates, or salt alone, or sand or aggregate. Thickeners are mainly cellulose derivatives or high molecular weight carbohydrates. ’793 patent, col. 2, In. 63-col. 3, In. 2. To be sure, inclusion of the phrase “the third key component” in the ’793 patent does provide reason for pause. Nonetheless, it is generally understood — and indeed spelled out in the patent — that thickeners, whose sole function is to increase viscosity of a solution, are typically polymers, high molecular weight carbohydrates or cellulose derivatives, including carbohydrates. Reviewing the patent as a whole and the other intrinsic evidence available, I am unable to conclude that a person of ordinary skill in the art would not understand, in the context of this patent, that the thickeners envisioned could be included within the other prescribed constituents. Accordingly, I will construe the term “thickener” to mean a substance or material, whether inherent in or separately added to a composition, which causes an increase in the composition’s viscosity. B. Summary Judgment Standard In addition to eliciting the court’s assistance in connection with claim construetion, the parties — principally Cargill-Miave sought summary judgment addressing several of the claims and defenses asserted in this action. The entry of summary judgment disposing of a claim or defense is appropriate in a patent infringement suit, provided that the test ordinarily applicable to such applications is met. Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998). Under that test, summary judgment is warranted when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits ... show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 , 106 S.Ct. 2548, 2552 , 91 L.Ed.2d 265 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 , 106 S.Ct. 2505, 2509-10 , 91 L.Ed.2d 202 (1986). The moving party has the initial burden of demonstrating that there is no genuine issue of material fact.to be decided with respect to any essential element of the nonmoving party’s claim. Anderson, 477 U.S. at 250 n. 4, 106 S.Ct. at 2511 n. 4. Once that burden is met, the opposing party must show, through affidavits or otherwise, that there is a material factual issue for trial. 17 Fed.R.Civ.P. 56(e); Celotex, 477 U.S. at 324 , 106 S.Ct. at 2553 ; Anderson, 471 U.S. at 250, 106 S.Ct. at 2511. When deciding a summary judgment motion, the court must resolve any ambiguities and draw all inferences from the facts in a light most favorable to the nonmoving party. Wright v. Coughlin, 132 F.3d 133, 137-38 (2d Cir.1998). Summary judgment is inappropriate where “re *223 view of the record reveals sufficient evidence for a rational trier of fact to find in the [nonmovant’s] favor.” Treglia v. Town of Manlius, 313 F.3d 713, 719 (2d Cir.2002) (citation omitted). As will be seen, the claims and defenses drawn into issue by the pending cross-motions are subject to differing burden of proof allocations as between the parties as well as, in certain instances, a heightened burden beyond mere preponderance of the evidence. When assessing a motion for summary judgment the court should take into consideration the question of who bears the burden of proof, as well as the extent of that burden. Anderson, 477 U.S. at 252-55, 106 S.Ct. at 2512-14 . C. Patent Invalidity In its motion Cargill seeks a finding, as a matter of law, that the ’793 patent is invalid. In support of its position plaintiff urges 35 U.S.C. § 102 (b), contending that the claimed invention was the subject of both sales and printed publications describing the invention and dating back more than one year prior to the filing date of the patent application. Cargill’s invalidity argument hinges upon its claim that the date of application for the ’793 patent should be affixed as January 5, 2001, and that Sears should not derive the benefit of either of its two earlier applications when determining the appropriate priority date to be applied. Analysis of the validity of the ’793 patent must proceed against the backdrop of the independent presumption of validity which by statute attaches to each claim contained within a regularly issued patent under 35 U.S.C. § 282 . 18 Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264, 1266-67 (Fed.Cir.1991) (citing 35 U.S.C. § 282 and Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 487 , 55 S.Ct. 455, 459 , 79 L.Ed. 1005 (1935)); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed.Cir.1983) (under section 282 a “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.”); see also ConMed Corp. v. Erbe Electromedizin GmbH, 241 F.Supp.2d 187, 192 (N.D.N.Y.2003) (Hurd, J.), vacated due to settlement, No. 00-CV-987, 2004 WL 1576596 (N.D.N.Y. June 29, 2004). A party seeking to overcome this presumption and establish patent invalidity must do so by clear and convincing evidence. Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1377 (Fed.Cir.2002); Pfizer, Inc. v. Perrigo Co., 933 F.Supp. 377, 379 (S.D.N.Y.1996) (citing, inter alia, Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1573 (Fed.Cir.1985)). Under 35 U.S.C. § 102 , any sale, offer for sale, or public use of a product within the scope of the claimed invention more than one year prior to the date of application for the patent renders a patent invalid as anticipated. Petrolite Corp. v. Baker Hughes Inc., 96 F.3d 1423, 1425 (Fed.Cir.1996). A patent is also invalid as anticipated if any patent or printed publication has described the invention *224 outside of that same one year period. C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1349 (Fed.Cir.1998). Anticipation as a defense to a patent infringement claim must be proven by “clear and convincing evidence”. Ralston Purina, 772 F.2d at 1573-74 . Ordinarily, the defense of anticipation presents questions of fact, including whether or not an element of a patent claim is inherent in the prior art. Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1346 (Fed.Cir.1999) (citation omitted). When addressing a claim of anticipation, a court must first define the claims of the patent, and then compare the properly construed claims to the prior art. In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed.Cir.2002). “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” Atlas Powder Co., 190 F.3d at 1346 (internal quotations and citation omitted). Anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference—in other words, if granting patent protection would permit the patentee to exclude the public from practicing the prior art, the claim is anticipated, regardless of whether it also covers subject matter not in the prior art. Id. When a patent claims a chemical composition in terms of ranges of elements, any single prior art reference that falls within each of the ranges anticipates the claim. Atlas Powder Co., 190 F.3d at 1347 . A prior art reference may also anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it. Id. Under the doctrine of inheren-cy, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates. Atlas Powder Co., 190 F.3d at 1347 . Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art; artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. Id. Discovery of a previously unappreciated property of a pri- or art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. Id.; see also Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed.Cir.1985). In Atlas Powder Co., the Federal Circuit noted that “[t]he public remains free to make, use, or sell prior art compositions or processes, regardless of whether or not they understand their complete makeup or the underlying scientific principles which allow them to operate.” 190 F.3d at 1348 . Moreover, as the Federal Circuit has noted, [t]o serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Continental Can Co., 948 F.2d at 1268 . In support of its anticipation argument, Cargill urges several pieces of prior art and publications, including 1) Ice Ban, a product that has been sold since at least 1994; 2) Caliber M1000, an anti-icing and de-icing material consisting of a low molecular weight carbohydrate and solution of magnesium chloride on sale as of August 27,1999 with a first bulk sale of October of 1999; 19 3) the Janke ’812 patent, issued in *225 January of 1998; 4) the Johnson patent, issued in July of 1999; and 5) the Janke T35 patent, issued in August of 1999. The first step in evaluating Cargill’s invalidity claim is to determine the proper priority date to assign to the ’793 patent. Cargill asserts that the ’793 patent application date of January 5, 2001 is the appropriate priority date, arguing that Sears is not entitled to the benefit of the two earlier parent and grandparent applications. Sears counters by contending that, at the very least, it is entitled to a priority date of January 4, 1999 — the date of its non-provisional parent application. A patent application will be deemed to relate back to and receive the benefit of the filing of a parent application when (1) the applications are submitted by the same inventor or inventors; (2) the applications were co-pending, meaning that the second application was filed while the first application was still pending; (3) the later application contains a specific reference to the prior application; and (4) the prior application disclosed the invention in the manner required by 35 U.S.C. § 112 . Pfizer, 933 F.Supp. at 380 (citing 35 U.S.C. § 120 and 3 Ernest B. Lipscomb Ill, Walker on Patents § 9:10 28 (1985)). The first three of these conditions do not appear to be controversial; Cargill seemingly acknowledges that each is satisfied by the ’793 patent application when considered together with its predecessor applications. Cargill contests, however, Sears’ ability to satisfy the fourth element of this governing test — the written description requirement. Speaking to the written description requirement, the relevant statutory provision requires that [t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is mostly nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. § 112 . Pertinently, [a] claim in a CIP [continuation-in-part] application is entitled to the filing date of the parent application which the claimed invention is described in the parent specification in a manner that satisfies, inter alia, the description requirement of 35 U.S.C. § 112 . Therma-Tru Corp. v. Peachtree Doors, Inc., 44 F.3d 988, 992 (Fed.Cir.1995). Put another way, an application complies with section 120 and acquires an earlier filing date “if, and only if,” it could have been added to an earlier application without interjecting new matter. Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed.Cir.1997). “Each application in the chain must describe the claimed features.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. *226 Cir.1997). The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed “ ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter[,]’ ” rather than the presence or absence of literal support in the specification for the claim language. Ralston Purina, 772 F.2d at 1575 (quoting In re Kaslow, 707 F.2d 1366, 1375 (Fed.Cir.1983)). While the section 102(b) bar to patentability and its applicability to a particular case presents a question of law to be determined by the court, compliance with the written description requirement of section 112 presents an issue of fact to be decided based upon the particulars of each case. Pfizer, 933 F.Supp. at 380 -81 (citing Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed.Cir.1995)); MSM Investments Co., LLC v. Carolwood Corp., 70 F.Supp.2d 1044, 1055 (N.D.Cal.1999) (citations omitted), aff 'd, 259 F.3d 1335 (Fed.Cir.2001). Having reviewed the record and considered the arguments of the parties, I am unable to affix an appropriate priority date for the ’793 patent as a matter of law. Sears claims the benefit of at least January 4,1999 — the date of the filing of utility patent application no. 09/224,906, as a priority date. Such a date would defeat most of Cargill’s prior art claims. Sears’ argument in this regard is supported by an analysis offered by its expert, Professor Nauman, explaining that the 1999 parent application disclosed “sugars (hexoses, saccharides)” to be used in combination .with chloride salts for the purpose of freezing point depression. Hansen Aff. Exh. DD, at 27-28. According to Dr. Nauman, at the time of the invention a person of ordinary skill in the art would have understood sugars to be carbohydrates with molecular weights ranging from 180 (hexoses) to about 1476 (oligosaccharides). Professor Nauman further notes that the parent application discloses a carbohydrate range (3-60%) identical to, and a chloride salt range (5-30%) nearly the same as, those of the ’793 patent. Additionally, Professor Nauman observes that two of the examples in Table 4 of the 1999 application disclose mixtures of magnesium chloride and low molecular weight carbohydrate sources (molasses and maltodextrin no. 15) within the limits of the ’793 patent. 20 , 21 It is true that the inventors transitioned from reference to “sugars” to “low molecular weight carbohydrates” between the January 4, 1999 application and the .later application upon which the ’793 patent was granted. The precise terminology utilized in a parent and CIP application need not, however, be verbatim; rather, “there may be some variation in the scope of the claimed subject matter” which will not affect the priority date of the earlier application provided that the “claims in the CIP application are substantially based upon disclosures contained in the parent application.” ConMed Corp., 241 F.Supp.2d at 193 . it is true, as Cargill argues, that the essence of plaintiffs patent — the synergistic interplay between the low molecular weight carbohydrates and the chloride salts contained in the mixture taught by the ’793 patent — was not “discovered” by Sears until December of 1998, and thus by definition could not have been disclosed in *227 the earlier iteration filed in January of 1998. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1254-55 (Fed.Cir.2004) (“the Chiron scientists, by definition, could not have possession of, and disclose, the subject matter of chimeric antibodies that did not even exist at the time of the 1984 application. Thus, axiomatically, Chiron cannot satisfy the written description requirement for the new matter appearing in the 561 patent, namely chimeric antibodies.”) Nonetheless, I cannot rule out the possibility that a reasonable factfinder could conclude that the prior two applications — and particularly the second, filed in January of 1999 — adequately disclosed the later inventions such as to entitle Sears to the benefit of the earlier filing dates. Having determined that a reasonable factfinder could conclude that the ’793 patent is entitled to a priority date extending back at least until January 4, 1999, and potentially to the date of the earlier, provisional parent application on January 7, 1998,1 now turn to Cargill’s claim of anticipation based upon the specific prior art urged in support of that argument. Before discussing the specific prior art, it is worth reiterating that as the party challenging the validity of a presumptively valid patent, Cargill bears the burden of proof, a burden which in this case requires it to establish the existence of an on-sale bar by clear and convincing evidence. Abbott Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1318 (Fed.Cir.1999). As the Federal Circuit noted in Abbott Labs., however, [i]t is well settled in the law that there is no requirement that a sales offer specifically identify all the characteristics of an invention offered for sale or that the parties recognize the significance of all of these characteristics at the time of the offer. If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics. Id. at 1319 (internal citations omitted). 1. Ice Ban According to Cargill, Ice Ban has been sold since 1994, and Sears has been distributing that product since 1997. Cargill urges anticipation of independent claims one, two, and seven of the ’793 patent based upon the Ice Ban sales in the one year prior to the applicable priority date. According to Sears, reference to Ice Ban as providing an on-sale bar suffers from the same infirmities as several other instances of prior art, many of which were considered and rejected by the PTO as impediments to the issuance of the ’793 patent. In support of its position, Sears notes that BCS are among the principal ingredients in Ice Ban. It is true, as co-inventor David Wood admitted during his deposition, that the agricultural by-products used to make Ice Ban can be rich in carbohydrates of the type required by the ’793 patent. Both Wood and co-inventor Hartley have acknowledged that the active ingredients in the prior art by-products are in fact carbohydrates. As Professor Nauman has noted, however, use of BCS and other similar fermentation wastes, such as corn steep water, in a de-icer formulation does not anticipate the claims of the ’793 patent since prior art utilizing in these types of waste products, including the Johnson, Janke, and Rudnick patents, was considered by the PTO examiner during the course of the ’793 patent prosecution. The record reflects that the Ice Ban products now urged by Cargill were disclosed in the Janke and Johnson patents which, in turn, were considered by the *228 PTO examiner prior to the issuance of the ’793 patent. In light of this fact and the expert report of Dr. Nauman, a reasonable factfinder could conclude that the sale of Ice Ban more than one year prior to the appropriate priority date for the ’793 patent does not render the patent invalid. 2. Caliber M1000 Caliber is an anti-icing and de-icing material that contains a low molecular weight carbohydrate and a solution of magnesium chloride. Caliber was on sale as of August 27, 1999, and a bulk sale of Caliber M1000 was made in October of 1999. Cargill claims that Caliber’s ingredients fall within the ranges of the ’793 patent, offering co-inventor Wood’s admission during his deposition that Sears views Caliber as the same product that is disclosed in the ’793 patent as support for its position. 22 In response to Cargill's arguments surrounding the Caliber M1000 product, Sears has countered that both elements of the ’793 patent claims, requiring a carbohydrate and a chloride salt, are not met since according to one authoritative source, Caliber’s Steve Bytnar, Caliber has never included magnesium chloride as a component. Moreover, Sears asserts, Bytnar characterizes the early sales of the product as mere “field trials.” In light of my finding of genuine issues of material fact regarding the appropriate priority date to apply, it is unnecessary to address the parties’ competing contentions regarding the effect of the Caliber M1000 development and sale. If Sears is found to be entitled to the earlier priority date of January 4, 1999, based upon the filing of the nonprovisional parent application, then the development and sale of the competing product Caliber does not invalidate the ’793 patent. 3. The Janke ’812 Patent The Janke patent discloses a de-icing material made from whey, water, and sodium chloride. Cargill submits that typical whey powder is generally between 70 and 75% lactose, a low molecular weight sugar identified in the ’793 patent. Janke’s carbohydrate content thereby falls within the ’793 range. Sears’ response with respect to this and the other three patents which Cargill claims anticipate the ’793 patent is the same. “[F]or purposes of determining issues of invalidity, this court must adopt the same construction of the ... patent’s claims as it adopted in deciding the infringement issue.” Astrazeneca AB v. Mutual Pharm. Co., 278 F.Supp.2d 491, 516 (E.D.Pa.2003). Sears argues that none of the patents cited as prior art contain low molecular weight carbohydrates derived from a “pure and consistent source”, as Cargill requires in its Mark-man brief, nor from a “refined and consistent source”, the definition which Sears has proposed. Instead, those prior patents disclose de-icing inventions containing the kind of agricultural waste products expressly disclaimed by Sears. In Janke ’812, those products are the “liquids that remain after the coagulated cheese has been removed from the milks”. Hansen Aff. Exh. BB. Sears also asserts that PTO Examiner Greene considered the Janke ’812 patent during the prosecution of the ’793 patent, and seeks to distinguish it from the ’793 invention as not disclosing the amounts of carbohydrates and salts, or of any synergy *229 between the two. Sears further notes that Janke does not teach the use of colorants or thickeners. Cargill responds that discovering synergy is discovering a new characteristic of an existing invention, which does not preclude a finding of anticipation. 23 Atlas Powder Co., 190 F.3d at 1348-49 . Based upon the record I am unable to conclude, as a matter of law, that claims one, two, and seven of the ’793 patent were anticipated by the Janke ’812 patent, particularly in light of the disclosure of that patent as prior art in the ’793 patent application and the granting of that patent notwithstanding that cited prior art. 4. The Johnson Patent Cargill also contends that the independent claims of the ’793 patent were anticipated by the Johnson patent, issued in July of 1999. Because this argument depends upon a finding that Sears is not entitled to a January 4, 1999 priority date, the unresolved fact questions surrounding that determination preclude the entry of summary judgment on this contention. 5. The Janke ’135 Patent Cargill also offers the Janke ’135 patent, issued in August of 1999, in support of its anticipation claim. That patent, which unlike Janke ’812 was not cited during the patent prosecution in this case, describes a de-icing and anti-icing composition containing at least 10% by weight of vintners’ condensed solubles (