# Penda Corp. v. United States

> United States Court of Federal Claims · September 30, 1993 · 29 Fed. Cl. 533

URL: https://www.frixlaw.com/law-library/cases/6644599

## Case

- **Full name:** PENDA CORPORATION v. The UNITED STATES, and Cadillac Products, Incorporated, Third-party
- **Court:** United States Court of Federal Claims
- **Decided:** September 30, 1993
- **Citations:** 29 Fed. Cl. 533; 1993 U.S. Claims LEXIS 161; 1993 WL 385577
- **Precedential status:** Published
- **Opinion:** Opinion of the court by Bruggink
- **Judges:** Bruggink
- **Cited by:** 11 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/6644599

## How later opinions describe it (automated extraction)

- stating that it would be “illegitimate” to read a limitation into a broad claim

## Opinion text

Opinion
BRUGGINK, Judge.
Penda Corporation (“Penda”) owns a patent on a plastic pallet, U.S. Letters Patent *542 No. 4,428,306 (“the ’306 patent”). Defendant, acting through the United States Postal Service (“Postal Service”), procured 640,000 pallets from third-party defendant Cadillac Products, Incorporated (“Cadillac”). Under its contract, Cadillac supplied the Postal Service with two types of pallets (“the accused pallets”). Penda contends that its patent reads on both of these pallets.
Penda claims that by this procurement the Postal Service used the ’306 patent without providing just compensation as required by 28 U.S.C.A. § 1498 (a) (West 1973 & Supp.1993). The Postal Service and Cadillac (“defendants”) counter that the ’306 patent is invalid as obvious under 35 U.S.C. § 103 (1988). Additionally, defendants contend that the ’306 patent is invalid for failing particularly to point out and specifically claim the subject matter the inventors regard as their invention as required by the second paragraph of 35 U.S.C. § 112 (1988).
I. Background.
A. The Patent.
The ’306 patent covers a design for a ■pallet. A pallet is an object used in material handling to provide an interface between bulk loads and a mechanized method of moving them. The ’306 patent concerns a pallet made of two sheets of thermoforma-ble plastic, which are molded and fused to form a single structure as set forth in the patent claim. Figure 1 is a perspective view, taken from the patent, of the pallet in suit. Pallets may be made of many materials, such as various types of wood and plastic. They have either one or two load-bearing surfaces. The pallet claimed in the ’306 patent and the accused pallets have one load bearing surface. In addition, the pallets claimed have feet on which the pallet rests. The pallet feet are formed from the same sheets of material as the load bearing deck.
[[Image here]]
Thermoforming is a process by which sheets of plastic are molded into useful objects through the application of heat and differential pressure. In twin-sheet ther-moforming, the manufacturer simultaneously molds the product out of two sheets of plastic, which the thermoforming process fuses together.
1. Claims.
The '306 patent contains seventeen claims. Penda contends that the first 200,-000 pallets that Cadillac sold the Postal Service infringe claims one through six and nine through eleven of the ’306 patent. Penda also contends that the 440,000 modified pallets that Cadillac sold to the Postal Service infringe claims nine through twelve, fifteen, and sixteen of the ’306 patent. The court has not found it necessary to address all the claims. If even a single claim is valid and infringed, plaintiff is due compensation. Because claims nine through eleven are the broadest in the patent, the court directs its attention toward them. These claims read: 1
9. A pallet (10) comprising:
*543 a substantially planar load-bearing member (12) formed from an upper sheet of material (13) and a lower sheet of material (15) located generally in fixed parallel relationship to each other; and
a plurality of feet (32) depending from the load-bearing member (12), the feet (32) being formed as a downwardly depending portion of each of the two sheets of material (13, 15) forming an upwardly opening pocket (36) on the interior thereof, each of the feet (32) including integral solid wall portions (40) formed of deformed portions of both of the sheets of material (13, 15) fused together.
10. A pallet (10) as claimed in claim 9 wherein there are also hollow wall portions (34) separating the solid wall portions (40) in each of the feet (32).
11. A pallet (10) as claimed in claim 9 wherein the solid wall portions (40) of each of the feet (32) are formed from portions of both of the two sheets of material (13, 15) joined together and wherein each of the feet (32) terminates in a foot floor (42) which is an integral, planar horizontal sheet of solid material also formed of portions of both of the two sheets of material (13, 15) fused together.
(the ’306 patent, col. 10, 11. 16-40) Defendants admit that claims nine and ten read on the accused devices, but assert that they are invalid. Those claims describe the foot design in detail, but only describe the deck as consisting of two sheets in a fixed parallel relationship. Claim nine describes the feet as having integral solid wall portions. The limitation of integral hollow wall portions separating the integral solid wall portions is introduced in claim ten.
Claim eleven depends from claim nine and thus incorporates its limitations. It does not, however, incorporate the additional limitation of integral hollow wall portions added by claim ten. Claim eleven adds the limitation that each foot “terminates in a foot floor (42) which is an integral, planar horizontal sheet of solid material also formed of portions of both of the two sheets of material (13, 15) fused together.” (’306 patent at col 10, 11. 33-40.) Defendants argued that claim eleven does not read on the accused devices because it limits the design of the foot floor to one containing a floor of single thickness generally parallel to the surface of the load-bearing member.
2. Prosecution History.
The inventors filed the application for the patent in suit on October 9, 1981. The application names William Dresen, Harlon Breezer, and Bill Price as coinventors. Also at that time, they filed their oath of inventorship as required by 35 U.S.C. § 115 (1988), stating, among other things, that they regarded as their invention the subject matter of the claims.
In January 1983, the examiner rejected initial application claims one through three, six through ten, and twélve through nineteen as being either anticipated by prior art or obvious to one of ordinary skill in the art. The examiner objected to the remaining claims as being dependant upon rejected claims, but found them otherwise allowable.
In response, on July 26, 1983, the applicants amended claims one, ten, twelve, and sixteen of the application to incorporate all the limitations of the application’s original claim four. They amended application claim eighteen to depend from application claim sixteen. They canceled claims four and seventeen, and renumbered the remaining claims. The examiner allowed the revised claims on September 25, 1983. The patent issued January 31, 1984.
3. Specification and Lexicography.
The specification describes the pallet feet:
It is another object of the present invention to provide such a pallet in which the legs elevating the load-bearing member of the pallet off of the surface have a particularly high compressive strength so that the pallet has a large capacity.
(’306 patent at col. 1, In. 66 through col. 2, In. 2.)
*544 It further described the preferred embodiment:
The feet 32 of the pallet 10 are also particularly constructed so as to be extremely strong and extremely resistant to deformation or collapse. As can be seen by referring to FIGS. 5 and 6, each of the feet 32 has alternating solid portions 40 and hollow wall portions 34 spaced about the periphery of the foot 32. The fact that the solid portions 40 alternate with the hollow portions 34 makes the feet 32 stronger and more crush resistant than would be possible if the entire periphery of the foot was constructed from either solid or hollow material. The solid portions 40 serve in essence as stiffening ribs for the hollow portions 34; while the hollow portions 34 break up the continuity of the solid portions 48 so that0 the overall strength of each of the feet 32 is stronger than would be if the entire foot was constructed of solid material and the resistance of the foot 32 to flexing under a load is greatly increased.
(’306 patent at col. 7,11. 36-52.) Figure 2, a drawing from the ’306 patent, illustrates this description.
[[Image here]]
Each of the alternative embodiments also contains the alternating hollow and solid structure. Not all of the claims, however, are limited to legs in which hollow portions separate the fused solid portions. Defendant contends, and plaintiff disputes, that the patent does not teach the advantage of a solid foot without hollow portions. The patent does indicate that one aspect of the present invention is that the feet are stronger than they would be if the foot were completely solid. (’306 patent col. 7, lines 46-52.)
The specification describes the foot floor in the preferred embodiment as being “formed along the bottom of the foot 32, with the floor 42 of each foot being a planar, single-thickness section generally parallel to the load-bearing member 12.” (’306 patent, col. 4, 11. 31-35). In an alternative embodiment, the specification describes the foot floor as being “provided with a canted bottom surface so as to drain toward the drain hole 143 provided in the center thereof so that fluid received inside of the foot 132 would drain out the drain hole 143.” (’306 patent col. 8, 11. 45-49.) In this described alternative embodiment, the drain hole in the foot is centrally located.
*545 4. The Inventors and the Invention.
William L. Dresen is President of Penda and has worked for it since 1978. Before joining Penda, he was Director of Research and Development at Glasfab, a company engaged in thermoplastic molding as well as reinforced fiberglass and urethane molding. Penda purchased Glasfab in 1978, and Dresen became General Manager of the combined companies. At that time, the company had $10,000,000 in total annual sales, of which thermoplastics accounted for one fifth. The company had between 50 and 60 employees.
Among articles that Penda manufactured before it designed the pallet at issue were single sheet thermoform pallets. These pallets had certain disadvantages. Most notably, they tended to flex under stress and could not hold heavy static loads, being limited to a load range of 1,000 to 1,500 pounds. Comparable wooden pallets could carry as much as 20,000 to 30,000 pounds. Wood pallets have the disadvantage, however, of being less durable. They are brittle and fracture easily. Also, they are more difficult to clean. Consequently, Pen-da’s customers wanted a heavier weight plastic pallet. Dresen sought plastic pallets that met the following criteria: they had to be stronger than existing pallets, that is, they could not flex; they had to be comparable in weight-bearing capacity to wooden pallets; and they had to have the durability of plastic. He found no such pallets to be available in the market.
It occurred to Mr. Dresen that Penda could use its twin-sheet thermoforming machine to build a stronger pallet. To develop a twin-sheet pallet, Mr. Dresen organized a small group of Penda employees— Harlon Breezer, vice president of sales at Penda; himself; and Bill Price, a consultant to Penda in thermoplastics. The group started meeting and brainstorming in early 1980. Dresen was in charge and served as the group’s facilitator.
Mr. Price was working as a consultant for Penda. He testified that he had also earlier sensed the need for a stronger plastic pallet. In part, these observations occurred while he was traveling with Mr. Dresen. After deciding that traditional thermoform pallets were inadequate, he approached Mr. Dresen who, it turned out, had the same idea. Mr. Price discussed his ideas with both Mr. Dresen and Mr. Breezer.
Mr. Price did the drawings during the development of the invention. His expertise is in designing parts and sketching parts and tools. Mr. Price testified that the inventors’ first drawing was a rough engineering sketch of a construction he felt would overcome some of the problems of single-sheet pallets. The pallet leg in this first drawing had two distinct sidewalls. Over time, the inventors developed this structure into the alternating solid and fused sidewalls disclosed in the patent.
After the inventors had a design for the pallet foot that they thought would work, they made a wooden model of that section of the plastic part. Mr. Price testified that the design objective of the inventors was to combine the strongest legs with the strongest deck. To this end, they considered the pallet legs separate from the pallet deck. Their intention was then to integrate the leg into the deck design. If they could design an appropriate foot, it was felt that the deck design would be easy. Mr. Breezer confirmed that the inventors worked out a leg design before making a wooden pattern, then added a deck design after they had a workable foot. Mr. Price testified that although the use of wooden models was common, it was unusual to test part of a design separate from the whole. The inventors did so because they initially considered the risk of failure in the pallet foot too great to justify the expense of making a model for the whole pallet. They made the model of the foot section when they felt they had a formable design.
After several months of work, the inventors had the design they wanted. Fusing together portions of the leg sidewalls imparted to the pallet sufficient compressive strength to withstand heavy loads. In addition to this strong pallet foot, the inventors had a design for the pallet deck that provided good rigidity.
*546 B. The Accused Pallets.
The accused pallets are nestable, twin-sheet, thermoform items. They have a deck portion in which the two sheets are generally parallel to one another, and downwardly depending legs in which portions of the sheets in the sidewall are fused together. In each of the accused pallets, the foot floor has ridges on the interior surface that are not fused to the outer sheet. Although the accused pallets have many other features, these are the only ones relevant to an analysis of infringement with respect to claim eleven. As explained below, the court deems it unnecessary to discuss the other claims of the patent. Defendants contend that because of these ridges in the foot floor, the feet in the accused pallet do not satisfy claim eleven’s limitation of “an integral planar horizontal sheet of solid material.” All the pallets designed by Penda had a solid foot floor. None showed hollow spaces in the foot floor. Although Cadillac actually produced two different models of its pallets, the differences between these models lay mainly in the pattern of channels appearing in the deck. The differences that did exist between the pallet feet in the two runs are not significant in discussing infringement of claims nine and eleven.
C. The Procurement.
Marshall Weiss of the Postal Services Engineering and Development center first learned of Penda’s pallet through a design firm. He contacted Penda and visited its facility to learn about the company’s products. In January 1987, the Postal Service purchased 500 Penda pallets for evaluation. The Postal Service purchased 20,000 additional Penda pallets in October 1987, in conjunction with the purchase of other pallets made of structural foam. After testing the structural foam and thermoform pallets under field conditions, the Postal Service concluded that the thermoform Penda pallet stood up better than the structural foam pallet.
The Postal Service contracted with Shuert/Oakland to design a Postal Service pallet and supply prototypes. Shuert/Oak-land supplied the prototypes in April 1988. At that time, however, a contract dispute arose, and the Postal Service was not able to follow through on its plans with Shuert/Oakland. The Postal Service decided to procure pallets in production quantities. It created a pallet specification describing how the pallet was to function. The specification was derived from an earlier specification used to purchase structural foam pallets and pallets molded from compressed wood fibers. It contains requirements as to the gross shape of the pallet: a single deck with nine feet. The Postal Service knew such pallets were feasible because of Penda’s commercial product and the Shuert/Oakland contract. The contract required the contractor to supply a design that the Postal Service would have an unlimited right to use.
Cadillac Products is a plastics company located in Troy, Michigan. It was founded in 1946 to make packaging materials. About fourteen percent of the company’s business is thermoforming. Its largest product area is automotive parts, which it makes by thermoforming and injection molding.
Cadillac first learned of the Postal Service’s interest in a plastic pallet at a vendor orientation seminar conducted by the Postal Service. The Postal Service issued its Request for Proposals on April 4, 1988. When the proposals were opened on May 20,1988, Cadillac was the low bidder. Marshall Weiss and other Postal Service employees conducted a pre-award survey of Cadillac’s facilities. The Postal Service awarded Cadillac the contract on July 20, 1988. About the time of bid opening, Cadillac began to prepare a design. For that purpose it hired WolPac Co. Mr. Jim Waun, a WolPac employee, did the work.
In June, 1988, Mr. Dresen and Mr. Mar-kos, Penda’s chief executive officer, approached Mr. Michael Williams, a Cadillac officer, at the National Plastics Exhibition. They suggested he review the '306 patent for possible infringement. Shortly thereafter, Cadillac began to redesign the pallet with the purpose of avoiding infringement. In July 1988, Cadillac notified the Postal *547 Service of Penda’s patent and requested additional time to prepare a design. Cadillac decided to incorporate different deck characteristics, and told WolPac to modify the design. Mr. Weiss of the Postal Service was aware of Cadillac’s effort, but did not recommend any design changes. The Postal Service refused to give Cadillac relief under the contract or to grant Cadillac additional time to redesign the pallet. After the redesign, Cadillac built prototypes from wood patterns and submitted them to the Postal Service for approval. Beginning November 28, 1988, Cadillac delivered pallets under the contract.
II. Discussion.
A. Infringement.
Plaintiff contends that the accused Cadillac pallets read on claim eleven of the ’306 patent. Defendants dispute this contention, but admit that claim nine, from which claim eleven depends, reads on the accused devices. 2 Moreover, there is no question that the accused devices contain a foot floor which is solid, integral, and formed of portions of the two sheets fused together. They contain a set of ribs on the upper, interior surface of the foot floor. There may or may not be a space between the upper sheet of material and the lower sheet of material at the ribs. The same material that forms the ribs composes the rest of the pallet. Defendants contend that this foot floor is not “an integral, planar horizontal sheet of solid material also formed of portions of both of the two sheets of material fused together.” The point of contention is whether the foot floor is “planar horizontal.”
Plaintiff maintains that the accused devices literally infringe claim eleven of the patent because the ribs in the foot floor are merely additional structure, by which defendant does not avoid infringement. 3 The plaintiff bears the burden of proving infringement by a preponderance of the evidence. Z.M.I. Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1582 (Fed.Cir.1988); Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1187 (Fed.Cir.1988); Mannesmann Demag Corp. v. Engineered Metal Prod. Co., 793 F.2d 1279, 1282 (Fed. Cir.1986). The inquiry comprises two distinct steps: first, the court interprets the claims of the patent without reference to the accused device; second, it compares the properly interpreted claims to the accused device to determine whether it infringes. Hormone Research Found., Inc. v. Genen-tech, Inc., 904 F.2d 1558 , 1562 (Fed.Cir. 1990), cert, dismissed, 499 U.S. 955 , 111 S.Ct. 1434 , 113 L.Ed.2d 485 (1991); S.R.I. Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1118 (Fed.Cir.1985).
1. Claim Interpretation.
Claim interpretation must precede the ultimate determination of infringement, because the claims of the patent delineate the extent of the property right conferred. Moeller v. Ionetics, Inc., 794 F.2d 653, 656 (Fed.Cir.1986); A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700, 702 (Fed.Cir. 1983), cert. denied, 464 U.S. 1042 , 104 S.Ct. 707 , 79 L.Ed.2d 171 (1984). In general, the meaning given to terms in a patent is the meaning that one of ordinary skill in the art would ascribe to them. 4 Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387 (Fed.Cir.1992). In interpreting the claims of a patent, the court refers to the claim itself, other claims, the specifications (including the drawings), the prosecution history, and extrinsic evidence presented at trial. Hormone Research Found., 904 *548 F.2d at 1562; LaBounty Mfg. v. United States Int’l Trade Comm’n, 867 F.2d 1572, 1574 (Fed.Cir.1989).
The dispute between the parties about the proper interpretation of the language of claim eleven centers on the phrase “each of the feet (32) terminates in a foot floor (42) which is an integral, planar horizontal sheet of solid material also formed of portions of both of the two sheets of material (13, 15) fused together.” Similar language appears in claim fifteen of the patent: “terminating in a horizontal, integral foot floor (142).” Claim fourteen describes the foot floor as “planar,” while claim fifteen does not.
A determination of the ordinary meaning of a term is not dispositive without reference to the specification and prosecution history. Z.M.I. Corp., 844 F.2d at 1580 . In the case at bar, the drawings and descriptions in the specification do suggest the meaning intended by the applicants. The specification is significant because the applicant must use language consistently in the claims and the specification. Z.M.I. Corp., 844 F.2d at 1580 ; McGill, Inc. v. John Zink Co., 736 F.2d 666, 674 (Fed.Cir.), cert. denied, 469 U.S. 1037 , 105 S.Ct. 514 , 83 L.Ed.2d 404 (1984). Figure six of the specification illustrates the patent foot floor. The upper surface of that foot floor is clearly not flat; it slopes to the middle. The reference number in the drawing for the foot floor is forty-two. This same reference number appears in claim eleven. One of ordinary skill in the art referring to the specification to interpret claim eleven would be drawn to figure six as an illustration of what the patentee meant by the phrase “integral, planar horizontal sheet,” and would see that the upper surface need not be everywhere parallel to the lower.
Similarly, figure nine of the patent illustrates a foot floor on which the upper surface slopes to the middle. In fact, none of the patent’s drawings illustrate a foot floor in which the upper, interior surface is level, horizontal, and everywhere parallel to the bottom of the pallet foot. The reference numbers for the foot floor in figure nine do not appear in claim eleven, but they do
appear at the corresponding place in the similar language of claim fifteen. The specification describes a foot floor with a “canted” surface. (’306 patent, col. 8 11. 47.) A review of other claims may provide significant evidence regarding the scope of a claim in issue. Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570 (Fed.Cir.1983). A person of ordinary skill in the art seeking to interpret claim fifteen of the patent would refer to figure nine for an illustration of what the patentees meant by the term “horizontal, integral foot floor.” Applying that knowledge in interpreting the phrase “integral, planar horizontal sheet” in claim eleven, that person would conclude that the upper surface need not be parallel at all points to the lower.
Representations made during the prosecution history, including amendments and arguments, are also relevant. Jonsson v. Stanley Works, 903 F.2d 812, 818 (Fed. Cir.1990); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867 (Fed.Cir.1985). The prosecution history limits claim interpretation by precluding interpretations disclaimed or disavowed during the prosecution. LaBounty, 867 F.2d at 1574 ; Z.M.I. Corp., 844 F.2d at 1580 . The prosecution history of the ’306 patent indicates that the applicants amended claim eleven after the first office action. The plaintiff added the word “integral” to indicate that the foot floor was made of one material fused together, and replaced the word “joined” with the word “fused” to distinguish prior art references teaching a pallet with two sheets attached to one another by an adhesive. Neither of these changes, by itself, prohibits the plaintiff from contending that the claim does not require that the upper, interior surface of the foot floor be smooth, if the language of the claim is sufficiently broad .to encompass such a structure.
Courts may refer to general and specialized dictionaries in interpreting terms. See Fromson, 720 F.2d at 1571 . “Planar” means “1: of or relating to a plane: lying in one plane 2: having a flat, two dimensional quality,” Webster’s Third New International Dictionary of the English *549 Language, Unabridged 1730 (Philip B. Gove ed., 1976), or “belonging to, situated in, or related in some way to a plane.” 9 The Oxford English Dictionary 959 (J.A. Simpson & E.S.C. Weiner eds., 1989). The court, however, would not rely on these definitions if it appeared that one of ordinary skill in the art would have interpreted the claim differently.
To interpret the claims, courts may also refer to extrinsic evidence. Texas Instruments Inc., v. United States Int’l Trade Comm’n, 988 F.2d 1165 , 1171 (Fed.Cir. 1993); Hormone Research Found., 904 F.2d at 1562. Several expert and factual witnesses were called on the question of infringement. Of particular note, plaintiff called Dr. John E. Johnson and Mr. John W. Hofeldt, Esq., as expert witnesses, and .defendant called Mr. Larry Stiller and Dr. Paul Sher Singh.
Dr. Johnson is an emeritus professor in the College of Engineering at the University of Wisconsin. He received a B.S. in civil engineering from Gonzaga University, an M.S. in structural engineering and structural design from Stanford, and a Ph.D. in mathematics and structural engineering with a minor in engineering mechanics from Purdue University. In the early sixties, Dr. Johnson developed a structural system of using plastics for buildings and roofing systems. He has done much research through the years both in an academic and a corporate setting. His handbook on the structural use of plastics has become an industry standard. As a full professor, he taught most of the design and analysis courses his department offered, as well as many seminars on the structural use of plastics.
Mr. Hofeldt obtained a bachelor’s degree in religious philosophy from the University of Wisconsin in 1943 and, after serving a stint in the navy, a law degree from the University of Wisconsin in 1947. He practiced law from 1955 until 1990, principally in the litigation of patent cases. At the time of trial, he was of counsel with the firm of Woods, Philips, Van Santen, Hoffman and Ertel. He has taught patent litigation and infringement courses at John Marshall Law School, which courses included within their ambit claim interpretation and infringement proofs. 5
Mr. Stiller learned the art of thermo-forming principally through apprenticeship. Before graduating high school in 1960, he worked in his father’s prototyping shop. He learned other aspects of the trade from other shops through his father’s contacts.
Dr. Singh is an assistant professor at Michigan State University in the School of Packaging, where he has been on faculty since 1985. He received a B.S. in chemical engineering in 1982, an M.S. in packaging in 1983, and a Ph.D. in agricultural engineering in 1987. 6 He worked at Michigan State in 1982 and 1983 as part of his degree program. He worked briefly at the University of California, Davis until he ceased his Ph.D. studies there, then worked for IBM in Rochester, Minnesota for a year. About six years ago he started a conference on *550 palletization unitization, which now meets annually. Also, he chairs the task group on a new pallet standard within American Standards for Testing and Materials, a professional society that develops standards and procedures to test and evaluate different types of systems.
None of the evidence indicates that one of ordinary skill in the art would assign the terms at issue meanings different from the common meaning given in the dictionary. Dr. Singh’s use of the term to mean “in one plane, flat,” is consistent with the dictionary definition. Similarly, Mr. Stiller’s interpretation of the term as meaning “on one plane” comports with the common definition. The court concludes that the term “planar horizontal” in claim eleven refers to the quality of being flat, in one plane, or of horizontal orientation. From the testimony of Dr. Johnson and Mr. Hofeldt that they consider the foot floor of the accused pallets planar, it would seem that they do not adopt a more restrictive definition of the term. Inasmuch as Dr. Johnson’s and Mr. Hofeldt’s testimony inseparably involves applying the claim to the accused device, current Federal Circuit precedent prohibits its use in interpreting the claim language. Therefore, the court refers to their testimony only by way of comparison. The court does not construe claims in the light of the accused device, nor does it construe them to “cover” or “not cover” the accused device. S.R.I. Int’l, 775 F.2d at 1118 .
Based on all the forgoing considerations (the claim language, the specification, the prosecution history, the dictionary definitions, and the extrinsic evidence that the court may consider), the court concludes that in the claim the phrase “planar horizontal” means of or relating to a plane and generally flat. It does not mean that the two surfaces are everywhere parallel, as urged by defendants.
2. Application of the Claims to the Accused Devices.
With this background understanding of the meaning of the terms in
claim eleven, we proceed to determine whether these claims read on the accused devices. 7 To prove literal infringement, the plaintiff must show that the accused device contains every limitation of the claim. Intellicall, Inc., 952 F.2d at 1389 ; Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 798 (Fed.Cir.1990); Hormone Research Found., 904 F.2d at 1562; Johnston v. IVAC Corp., 885 F.2d 1574, 1577, 1580 (Fed.Cir.1989); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 949 (Fed.Cir.1987), cert. denied, 485 U.S. 961 , 108 S.Ct. 1226 , 99 L.Ed.2d 426 (1988). In determining infringement, the court may only compare the accused devices with the patent, not with a commercial embodiment of the patented invention. Loctite Corp., 781 F.2d at 870 . The court has disregarded any evidence that compared the accused pallets to the actual Penda pallet.
Dr. Johnson testified that he considers the foot floor of the accused pallet to be planar. Similarly, Mr. Stiller, a witness for defendant, when asked if he considered the foot floor of the accused pallet planar answered “On one plane? Yes.” When counsel for third party defendant specifically directed him to consider both the upper side and lower side of the foot floor, Mr. Stiller replied that the bottom was flat, but that the top was beaded. Plainly, however, his initial reaction was that the foot of the accused device did terminate in a planar foot floor. Mr. Hofeldt testified that he considered the accused pallets to contain a foot floor made of an integral, horizontal sheet of material because he regarded the “bubbles” as additional structure irrelevant to the claim.
Only Dr. Singh, defendant’s expert, testified that he did not consider the foot floor planar. He spoke of the ribs as imparting to the foot floor a “vertical component.” Yet on direct examination, Dr. Singh also spoke of the Cadillac pallet as having “vertical ribs in addition to the integral floor.” *551 On cross-examination he spoke of “the addition of these ribs” and stated that he considered the ribs an “addition” to the foot floor.
As Mr. Hofeldt noted, claim eleven is an open claim because it depends from claim nine, which is an open claim using the term “comprising.” The addition of new elements does not avoid infringement. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044 (Fed.Cir.), cert. denied, 488 U.S. 825 , 109 S.Ct. 75 , 102 L.Ed.2d 51 (1988); Mannesmann, 793 F.2d at 1279 ; Amstar Cory. v. Envirotech Corp., 730 F.2d 1476 (Fed.Cir.), cert. denied, 469 U.S. 924 , 105 S.Ct. 306 , 83 L.Ed.2d 240 (1984). The proper inquiry is whether the claim and specification prohibit the addition of the structure. Stiftung v. Renishaw P.L.C., 945 F.2d 1173 (Fed.Cir.1991). Here, they do not. Dr. Singh believed that the patent required the top of the interior sheet and the bottom of the exterior sheet in the pallet foot to be everywhere parallel. The court finds that the hypothetical “person of ordinary skill in the art” would not have so understood the patent.
Dr. Singh’s reading is also inconsistent with the drawings, which show a slanted interior surface, and with the specification language, which speaks of a canted interior surface to aid in draining the pallet foot. Even if there were evidence that the interpretation adopted by Dr. Singh is the interpretation one of ordinary skill in the art normally would assign the phrase “planar horizontal,” a patentee is free to be his own lexicographer. Intellicall, 952 F.2d at 1387 ; Jonsson, 903 F.2d at 819 ; Z.M.I. Corp., 844 F.2d at 1580 ; Loctite Corp., 781 F.2d at 867 ; Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 888 (Fed.Cir.1984); Lemelson v. United States, 14 Cl.Ct. 318, 322 (1988). From the specification of the patent, it is clear that the patentees intended this claim to encompass a foot floor structure in which the interior and exterior surfaces were not everywhere parallel.
3. Doctrine of Equivalents.
Because the court finds that the accused pallets literally infringe claim
eleven, it is unnecessary to consider the doctrine of equivalents. Assuming for the sake of argument, however, that one of ordinary skill in the art could disregard the specification and read the phrase “planar horizontal” in the restrictive sense urged by Dr. Singh, the court finds that the accused devices nonetheless infringe under the doctrine of equivalents. The same interpretation of the claims used in determining literal infringement governs a determination of infringement under the doctrine of equivalents. Senmed, Inc. v. Richard-Allan Medical Indus., 888 F.2d 815, 818 (Fed.Cir.1989). An accused device infringes under the doctrine of equivalents if it performs substantially the same function as the patented structure, by substantially the same means, to provide the same result. Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605, 609 , 70 S.Ct. 854, 856 , 94 L.Ed. 1097 (1950). The accused device must contain every limitation of the claim either literally or by substantial equivalent. Intellicall, 952 F.2d at 1389 ; London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed.Cir.1991); Jurgens v. McKasy, 927 F.2d 1552, 1560 (Fed.Cir.), cert. denied, — U.S.—, 112 S.Ct. 281 , 116 L.Ed.2d 232 (1991); Becton, 922 F.2d at 798 . This tripartite formulation is also appropriate in evaluating whether the accused device contains the substantial equivalent of a particular element of the claim. Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320 , 1326 (Fed. Cir.1991), cert. denied, — U.S. —, 112 S.Ct. 2942 , 119 L.Ed.2d 566 (1992); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251 , 1260 (Fed.Cir. 1989).
The function of the foot floor is to close up the bottom of the foot, to provide a brace between the sidewalls, and to serve as a contact point between the pallet and the surface on which it is resting. The foot floor of the accused device serves the same function. The patented device performs this function by fusing together the portion of the two sheets between the sidewall. The accused device performs this function in substantially the same way. The ribs in *552 the foot floor may aid in this fusion, but they in no way interfere with it. 8 With respect to this second element of equivalents, only substantial similarity, not identity, is required. Graver Tank, 339 U.S. at 609 , 70 S.Ct. at 856 . Certainly, the way in which a foot floor with ribs performs the functions enumerated above is substantially similar to the way in which the patented pallet performs those functions. The result in the patented device is a strong foot floor to support the sidewall and to provide resistance to wear. No evidence offered by defendant refuted Dr. Johnson’s testimony that the foot floor was the strongest section of the pallet. The result in the accused device is the same — a strong foot floor. The foot floor of the accused device may in fact be more resistant to buckling than that of the patented pallet. Any difference, however, is only in degree and not in kind. The court finds persuasive Dr. Johnson’s statement that the foot floor is the strongest portion of the pallet, and that any stress great enough to result in a buckling there would result in the failure of some other portion of the pallet first. From observing the witnesses at trial, it was evident that Mr. Stiller’s and Dr. Singh’s explanation of how the pallet foot floor could buckle considered only the foot in cross-section and failed to acknowledge the contribution of additional structural support from other sidewalls.
B. Sufficiency of the Specification.
In their pretrial filings, defendants contended that the patent was invalid for failure to comply with section 112. 9 Because claim nine is the broadest claim and contains all of the features upon which defendants rely in asserting invalidity under section 112, resolution of this issue with respect to claim nine is considered adequate to dispose of the argument with respect to all of the claims. Defendants advanced two hypotheses to support their argument of invalidity: (1) that the claims included subject matter other than that which the applicants regarded as their invention, and (2) that the claims are invalid as indefinite because they are broader in scope than the disclosure portion of the specification. Defendants failed to prove by clear and convincing evidence that the applicants did not regard the subject matter claimed as their invention. Defendants’ second argument is both legally misplaced and factually unsubstantiated.
1. The subject matter the inventors regard as their invention.
Defendants contended in their pretrial materials that the applicants for the patent in suit regarded as their invention the combination of fused and hollow portions in the leg. Because claim nine only requires the presence of fused portions of the leg, defendants contend that it fails to comply with the second paragraph of section 112.
The Court of Customs and Patent Appeals held that in the absence of evidence to the contrary, the subject matter set out in the claims is presumed to be that which the applicant regards as his invention. In re Miller, 441 F.2d 689, 692 (C.C.P.A.1971); In re Moore, 439 F.2d 1232, 1235 (C.C.P.A.1971); see 2 Donald S. Chisum, Patents § 8.03[4] (1993). The “regards” language may only be relied upon to reject a claim where some evidence other than the specification shows that the claim does not correspond in scope to what the applicant regards as his invention. In re *553 Conley, 490 F.2d 972, 976 (C.C.P.A.1974); 2 Chisum, supra, § 8.03[4]. Miller, Moore, and Conley , cases in which the court considered the “regards” language, were all appeals from the denials of patent applications. No patent had yet issued. As such, those decisions did not address the statutory presumption of validity. The patent in suit, having been duly issued, is presumptively valid under section 282. 10
In closing argument, counsel for third-party defendant stated that the inventors had not testified that they considered a fully fused, solid foot wall to be their invention. This argument mistakes the burden of proof. The inventors, in the declaration submitted to the patent office with their application, swore that the subject matter claimed was what they considered to be their invention. It is up to the party asserting invalidity to prove by clear and convincing evidence that the inventors in fact did not consider the subject matter set forth in the claim as their invention. No such proof was offered.
Moreover, there is ample evidence from which to infer that the inventors regarded the fused portions of the sidewall in the pallet leg as their invention, rather than merely the combination of fused and hollow portions. The inventors designed the pallet foot first. The procedure that the inventors followed, of designing separate molds for testing just the pallet foot, was not their usual practice. Clearly, they were concerned primarily with producing a sufficiently strong foot. It may well be that a foot sidewall with hollow portions as well as solid portions is superior to one having only solidly fused portions. An inventor, however, is not restricted to claiming only the preferred embodiment or best mode of his invention. Inventors may claim that which they regard as their invention as broadly as the prior art will allow; it is in the disclosure portion of the speeifi-cation that the inventor must present the preferred embodiment. A broad claim, supported by a disclosure of the preferred and alternative embodiments, is exactly what the inventors supplied in this patent. The court concludes that the inventors intended claim nine to have the breadth exhibited by the claim language, and that they intended it to cover pallets regardless of whether the sidewalls of the feet have hollow portions.
2. Claim Definiteness.
The court looks to the claims themselves to determine the scope of the invention. Stiftung, 945 F.2d at 1181 ; Moore, 439 F.2d at 1235 . When assessing compliance with section 112, analysis should begin with the second paragraph of that section, Moore, 439 F.2d at 1235 , because where the first paragraph of that section uses the term “invention” it could only be referring to the claimed invention as set forth by the applicant. Id. The initial inquiry, therefore, is to determine whether the claims do set forth a particular area with reasonable precision and particularity.
When the meaning of claims is in doubt, especially where there is similar prior art, the claims are properly invalidated. Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1218 (Fed.Cir.), cert. denied, — U.S. —, 112 S.Ct. 169 , 116 L.Ed.2d 132 (1991). Only reasonable precision is required, however, in delineating the claimed invention. United States v. Telectronics, Inc., 857 F.2d 778, 786 (Fed.Cir. 1988), cert. denied, 490 U.S. 1046 , 109 S.Ct. 1954 , 104 L.Ed.2d 423 (1989). The exact level of detail required in the claims depends on the particular invention and on the prior art. Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed.Cir.), cert. dismissed, 474 U.S. 976 , 106 S.Ct. 340 , 88 L.Ed.2d 326 (1985). The definiteness of claim language is therefore *554 analyzed not in a vacuum, but rather in light of the teachings of the prior art and the particular application disclosure, as one of ordinary skill in the art would interpret it. Moore, 439 F.2d at 1235 . Just as claims that appear indefinite on their face may prove sufficiently definite when read in light of the prior art, claims that on their face appear definite may prove impermissi-bly indefinite when viewed in light of the prior art. Id.
In their pretrial filings, defendants asserted that the phrase “generally in fixed parallel relationship” is vague. The court does not consider the phrase to be ambiguous on its face, and defendants did not support their position at trial with clear and convincing evidence.
Words of degree often precipitate definiteness arguments that compel the court to determine whether the disclosure portion of the specification provides some standard for defining the outer boundaries of the range permitted by the phrase. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.Cir.1984) (construing the phrase “substantially equal to”). A phrase is not indefinite merely because the specification does not precisely define it. Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1547 (Fed.Cir.1984) (construing the phrase “close proximity”). To accept such a contention would be to turn the construction of a patent into a useless semantic quibble. Rather, a claim is sufficiently definite for purposes of the second paragraph of section 112 if one of ordinary skill in the art would understand what is claimed, when the claim is read in light of the specification. Amgen, 927 F.2d at 1217 ; Telectronics, 857 F.2d at 786 ; Seattle Box, 731 F.2d at 826 . “If the claims, read in light of the specifications, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits, the courts can demand no more.” Telectronics, 857 F.2d at 786 ; Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed.Cir.1986), cert. denied, 480 U.S. 947 , 107 S.Ct. 1606 , 94 L.Ed.2d 792 (1987). Even where some experimentation is required to fix the limits of words of degree such as “substantially equal to,” the claim is not indefinite if the experimentation required is not undue. Seattle Box, 731 F.2d at 826 ; cf. Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed.Cir.1984) (holding the disclosure portion of a specification enabling where it permitted practice without undue experimentation). The law does not require that the specification, let alone the claims, list every parameter of operation, so long as those of ordinary skill in the art realize that the parameter may be readily obtained. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.Cir.1986).
The Federal Circuit listed other factors tending to rebut an argument of claim indefiniteness in Rosemount, 727 F.2d at 1547 . The court noted that the party asserting invalidity had no trouble applying the terms of the claim to the prior art references. Id. In that case, one of the prior art references advanced by the party asserting invalidity used the same term that supposedly rendered the claim of the patent there in suit indefinite. The party asserting invalidity used the same term in describing its own products. A witness for the party asserting invalidity asserted that he had no trouble in understanding the claims of that patent. The examiner and the industry had both accepted the language of the claim. Also, the trial court had explicitly found the claim language to be as precise as the subject matter would permit.
As in Rosemount, the defendants in the case at bar introduced numerous prior art references and their witnesses never seemed to have trouble determining whether a particular component of a claim of the patent in suit was disclosed in the reference. The court finds that the language used in claim nine, and in particular the phrase “generally fixed in parallel relationship,” when read in light of the disclosure portion of the specification and the prior art, is sufficiently definite to apprise persons of ordinary skill in the art of both the *555 utilization and scope of the invention and is as precise as the subject matter will permit.
In addition to these shortcomings in proof, defendants premise their claim indefiniteness argument on an incorrect legal theory. Defendants assert that because only claims four and ten contain a limitation requiring hollow portions in addition to fused portions in the pallet leg sidewalls, all the other claims are indefinite. Absence of a limitation, however, has a precise meaning, and does not render a claim indefinite. In re Fisher, 427 F.2d 833, 838 (C.C.P.A.1970). An inventor may include subcombination claims that are drawn to just one aspect or combination of elements so long as that combination has a utility separate and apart from other aspects or elements of the invention as a whole. Stiftung, 945 F.2d at 1181 . A claim need not recite every element needed for practical utilization of the claimed subject matter, and it is entirely appropriate and consistent with the second paragraph of section 112 to present claims to only one aspect of an invention. Stiftung, 945 F.2d at 1181 . Thus, it is error to reason that an inventor may not claim one part of his invention separately from the rest. Stiftung, 945 F.2d at 1181 . The scope of a claim omitting a limitation is still definite so long as each recited limitation is definite. Fisher, 427 F.2d at 838 .
In its pretrial materials, defendant asserts that claims nine through twelve are invalid “when read in light of the patent and prosecution history.” Certainly it is true, as noted above, that claims are read not in a vacuum, but in light of the application disclosure as it would be interpreted by one of ordinary skill. Moore, 439 F.2d at 1235 . Defendant, however, misapplies this rule by looking to the specification for a definition of the invention, then criticizing the claims as being vague because they do not contain limitations directed to specific elements found in the embodiments taught in the disclosure portions of the specification, such as channels in the surface of the pallet’s load-bearing member. It is error, however, to look to the descriptive portion of the specification to determine what the invention is. Stiftung, 945 F.2d at 1181 . The claims, not the disclosure, define the scope of the invention. Id.
Defendants’ fundamental mistake lies in asserting that a claim is indefinite because it is broader than the disclosure. Broadening the scope of a claim by omitting a limitation may raise questions of sufficiency of the disclosure under the first paragraph of section 112, but does not render an otherwise definite claim indefinite. Fisher, 427 F.2d at 838 . The breadth of the claims, though important in assessing the sufficiency of the disclosure portion of the specification, is irrelevant to definiteness. Fisher, 427 F.2d at 838 ; see 2 Chi-sum, supra, § 7.03[7][b]. Thus, defendants’ argument concerning matter omitted from claim nine is irrelevant to the asserted defense of claim definiteness.
Defendants’ argument concerning overbreadth of the claims is more properly treated as support for a defense under section 112 paragraph one. That provision sets three requirements for the disclosure portion of the specification: the written description requirement, the best mode requirement, 11 and the enablement require *556 ment. Moore, 439 F.2d at 1235 . Neither the written-description requirement nor the best-mode requirement are implicated by the breadth of the disclosure. The relevant inquiry, therefore, is whether the scope of enablement provided by the disclosure is commensurate with the scope of the claims. In re Bowen, 492 F.2d 859, 861 (C.C.P.A. 1974); Moore, 439 F.2d at 1236 . To be sufficiently enabling, the disclosure must teach one of ordinary skill in the art how to make and use the claimed invention without undue experimentation. Telectronics, 857 F.2d at 785 ; Hybritech, 802 F.2d at 1384 . The scope of the claims, therefore, must bear a reasonable relationship to the scope of the enablement that the specification provides to persons of ordinary skill in the art. Bowen, 492 F.2d at 861 . The party asserting patent invalidity must present clear and convincing evidence as to why the specification does not reasonably permit one skilled in the art to practice as broadly as the invention is claimed. Telec-tronics, 857 F.2d at 785 (describing the burden as “persuasive” evidence).
The particular embodiments of the pallet illustrated in the disclosures contain features not found in claim nine. This does not mean that the disclosure is not enabling. One apparatus may embody several inventions. Stiftung, 945 F.2d at 1181 : The law does not require the applicant to describe every conceivable embodiment of an invention. Telectronics, 857 F.2d at 786 (citing S.R.I. Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir.1985)). Disclosure of one embodiment, along with the general manner of obtaining any information necessary to make and use other embodiments without undue experimentation, is sufficient. Id. 857 F.2d at 786 . The patent need not teach, and preferably omits, that which is well known in the art. Hybritech, 802 F.2d at 1384 . Thus, in the context of an application pros-
ecution it has been held error to reject the application merely because it did not teach a specific embodiment within the scope of an appealed claim. In re Vickers, 141 F.2d 522, 526 (C.C.P.A.1944). In arts involving predictable factors, such as patents in the mechanical or electrical arts, a single embodiment provides broad enablement because once imagined, other embodiments may be fashioned without undue experimentation. Fisher, 427 F.2d at 839 ; see Vickers, 141 F.2d at 527 (stating the rule for the mechanical arts); see also U.S. Dept. of Comm., Pat. & Trademark Off., Manual of Patent Examining Procedure § 706.03(z) (rev. 5th ed. 1989) (stating that in mechanical cases broad claims may be supported by disclosure of a single species). 12 On the other hand, in arts involving unpredictable factors, such as chemistry and physiology, the requisite scope of enablement varies inversely with the degree of unpredictability of the factors involved. Fisher, 427 F.2d at 839 ; see also U.S. Dept, of Comm., Pat. & Trademark Off., supra, § 706.03(z). Thus, chemical reactions, which involve a high degree of unpredictability, require a more extensive enabling disclosure. Telectronics, 857 F.2d at 786 . The specification, therefore, is deficient only if it does not enable as to some embodiments of the claim. Fisher, 427 F.2d at 839 .
The design of pallets is an art involving largely predictable factors. The disclosure portion of the patent in suit amply illustrates why one embodiment may be adequate to enable a broad claim in the mechanical arts. Certainly, there are many conceivable embodiments of claim nine that the disclosure does not teach — pallets having decks without ribs, pallets without hollow portions in the leg sidewalls, etc. Nevertheless, once the inventors have shown a person of ordinary skill in the art one particular pallet design having fused por *557 tions in the leg sidewall, other designs having fused portions in the leg sidewalls may be fashioned without undue experimentation. Thus, a fairly narrow disclosure may enable a comparatively broad claim.
The court concludes that the claim language is sufficiently definite reasonably to apprise those of ordinary skill in the art of both the scope and utilization of the claims. Moreover, the court finds that the language is as precise as the subject matter reasonably permits. The omission of limitations from the claim does not implicate concerns of claim definiteness, and because the art involves largely predictable factors, disclosure of a single species is enabling for a broad claim.
C. Nonobviousness.
Defendants admit that claim nine 13 of the patent reads on the accused devices, but assert as an affirmative defense that the claim is invalid as obvious under section 103. 14 All patents are presumed to be valid under section 282, and each claim is presumed valid individually. Vandenberg v. Dairy Equip. Co., Div. of DEC, 740 F.2d 1560, 1568 (Fed.Cir.1984). Defendants bear the burden of proving invalidity by clear and convincing evidence. Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1579 (Fed.Cir.1983); Lear Siegler, 733 F.2d at 885 . This burden of persuasion remains on the defendant throughout the trial, American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed.Cir.), cert. denied, 469 U.S. 821 , 105 S.Ct. 95 , 83 L.Ed.2d 41 (1984), and is all the more onerous where the patent examiner has considered all the pertinent prior art, Kloster Speedsteel A.B. v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed.Cir.1986), cert. denied, 479 U.S. 1034 , 107 S.Ct. 882 , 93 L.Ed.2d 836 (1987). Furthermore, the party challenging the patent’s validity bears the burden of proving that the examiner failed to consider a pertinent prior art reference. Richdel, 714 F.2d at 1579 .
A patent is invalid for obviousness under section 103 “if the differences between the subject matter ... 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.” Non-obviousness is a question of law. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed.Cir.), cert. denied, 481 U.S. 1052 , 107 S.Ct. 2187 , 95 L.Ed.2d 843 (1987). Analysis of this legal question requires three factual inquiries: the scope and content of the prior art, the differences between the patented item and the prior art, and the level of ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17 , 86 S.Ct. 684, 693 , 15 L.Ed.2d 545 (1966); Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447 (Fed.Cir.1986), cert. denied, 484 U.S. 823 , 108 S.Ct. 85 , 98 L.Ed.2d 47 (1987). The obviousness inquiry should be addressed to the invention as a whole, not just to the differences between the claimed invention and the prior art. Hybritech, 802 F.2d at 1383 n. 6.
1. Scope and Content of the Prior Art.
The art relevant to a consideration of obviousness is the analogous art. Wang Lab., Inc. v. Toshiba Corp., 993 F.2d 858 , 864 (Fed.Cir.1993). Non-analogous art is too remote to constitute prior art. In re Clay, 966 F.2d 656, 658 (Fed.Cir.1992). Two criteria determine whether a particu *558 lar reference is analogous art. First, if the reference is within the inventor’s field of endeavor, then it is deemed analogous. Wang, 993 F.2d at 864; Clay, 966 F.2d at 659 ; Bausch & Lomb, Inc., 796 F.2d at 449 . Second, if the reference is reasonably pertinent to the particular problem with which the inventor was involved, it is prior art. Wang, 993 F.2d at 864; Clay, 966 F.2d at 659 ; Bausch & Lomb, Inc., 796 F.2d at 449 ; see also, 2 Chisum, supra, § 5.01. As the Federal Circuit recently held in Clay :
A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been • motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it.
966 F.2d at 659 .
Thus, to determine whether a particular reference is within the prior art, the court must first determine the inventor’s goals and objectives. The court finds that the inventor’s goal was to design a stronger plastic pallet than previously had been known. This finding is based on all the evidence heard, but with particular reference to the following facts. Mr. Dresen, one of the named inventors, testified that although single sheet plastic pallets worked well in certain applications, the inventors “saw the potential of developing more structurally integrated pallets that would support products that would be heavier.” This perception of a need arose from contact with members of the industry. Mr. Dresen testified that Penda “had received, through our sales people, as well myself, a lot of requests for heavier pallets than we were able to make with the single-sheet methodology that we were using.” The inventors sought to meet these needs with a heavy duty pallet, of strength comparable to wood pallets, that would still offer the well known advantages of plastic over wood. Mr. Dresen testified that in their original meeting he and the other inventors concluded that “there was a real need in the market for a heavy-duty plastic pallet that could potentially compete with wooden pallets.” In addition to being strong enough to support the pallet, the leg had to withstand lateral impacts resulting from misaligned forklifts or jacks. Similarly, Harlon Breezer testified that the inventor’s main goal was to come up with a pallet that would be better than existing pallets by virtue of being stronger. Mr. Price also testified that the inventors came to recognize a commercial need for a stronger plastic pallet.
In particular, the inventors sought to develop a stronger pallet foot as part of a twin-sheet thermoform pallet. The ability of a pallet to bear up under a load is its compressive strength. In distinction, the tendency of a pallet to resist bending and flexing is its rigidity. That the inventors were particularly concerned with compressive strength is indicated by the steps undertaken in developing this pallet. The inventors designed the foot first, and tested it separately to determine whether it was sufficiently strong before proceeding to build a mold for the full pallet. The inventors testified, without contradiction, that it was unusual to test part of a design separately from the whole. If compressive strength had not been a particular concern, the inventors would not have spent so much time on the foot separately. Claim nine is the broadest because it teaches the most essential element of plaintiff’s patent — a stronger pallet foot integrally formed from a load bearing member consisting of two parallel surfaces.
*559 Moreover, this finding as to the inventors’ objectives is supported by the language of the specification. “The present invention relates to pallets in general and, in particular, to pallets which can be constructed of thermoplastic materials formed by thermoforming methods.” (the ’306 patent, In. 1.) All the claims’ preambles identify the invention as a “pallet.” The specification contains the following description of the prior art:
The prior art is generally cognizant of the general concept and desirability of manufacturing pallets from moldable materials such as thermoplastic resins. Among the kinds of prior art pallets which were known is one general variety constructed of a single planar member of plastic material which serves as a load-bearing member, with feet formed to elevate the single layer of material. Examples of pallets of this general character can be found in U.S.Pat. Nos. 3,140,672, 3,640,299, 3,680,495, and 3,720,176. Of these patents, U.S.Pat. No. 3,140,672 discloses a molded pallet which includes a planar deck 11 having a plurality of ribs 15 provided in it to stiffen and reinforce it. Another method utilized in the prior art to construct pallets of moldable material has been to construct two substantially planar load-bearing members which are positioned in parallel to each other and spaced by reinforcing or stiffening members spaced so as to allow the projection of the arms of a forklift there-through. Examples of pallets formed of this general character can be seen in U.S.Pat. Nos. 3,404,642, 3,680,496, 3,691,-964, 3,699,902, and 3,757,704. Other examples of patents disclosing pallet configurations which can be constructed of molded materials can be seen in U.S.Pat. Nos. 3,561,375, 3,697,029, 3,717,922, and 3,719,157.
Defendants never challenged these statements of the inventors’ goals. In fact, the inventors’ testimony was consistent with defendants’ statements in their Memorandum of Contentions of Fact and Law. Nevertheless, defendants urge a substantially broader definition of the prior art, as encompassing all of thermoforming. In reliance upon this position defendants proposed many findings regarding developments in the thermoforming industry generally. The court does not consider this to be the inventors’ field of endeavor, however, nor does the court consider every ther-moformed article to be reasonably pertinent to the inventors’ problem of increasing the pallet’s compressive strength. Pri- or art either must fall within the inventors’ field of endeavor or be reasonably pertinent to the particular problem the inventor faced.
The court finds that the inventors’ specific field of endeavor was the creation of a stronger thermoformed plastic pallet. 15 All thermoformed plastic pallets are, therefore, prior art. Other specific references, such as other types of pallets or other thermo-formed parts, may be prior art depending upon the specific facts of the reference and whether it is reasonably pertinent to the problem of making a stronger thermo-formed pallet.
Defendants have cited numerous prior art references. The list below, although not including every reference offered at trial, catalogs those prior art references that are most pertinent. Omission of any reference indicates not that the court failed to consider the reference, but merely that the court considered it less pertinent than those included.
a. The Bell Patent.
This reference discloses a plastic pallet made of one or more sheets of material. Bell, U.S. Letters Patent No. 3,640,-229 (1972). The parties agree that the patentees cited this reference to the examiner. 16 This is a nestable pallet with ribs in *560 the deck and in the legs to impart flex and compressive strength. Bell indicates that the load bearing capacity of the pallet is determined by the thickness of the material used. In an alternative embodiment, Bell suggests that a lighter pallet may be constructed by laminating a plastic exterior to a foam core. Figure 3 shows a cross-section of such a laminated sheet. The evidence tended to establish that the increase in strength-to-weight ratio that the Bell patent professes to provide is explicable in terms of the same underlying phenomena as that which Dr. Johnson used in explaining the strength of the invention’s deck. The court finds that this reference is pertinent prior art, but notes that the examiner duly considered it.
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b. The Brown and Howell Patents.
These patents teach a twin-sheet thermoforming machine of the type plaintiff used in making their pallets. One possible application suggested in Howell is plastic pallets. Defendants contend that this machine served as a catalyst, making such pallets economically feasible. The reference, however, contains no teachings as to how such pallets can be made stronger. These patents teach specifically the technology required to make the forming machines themselves. They do not contain any instruction as to what techniques should be employed in designing parts for use on the machine. Although these references suggest that the machine disclosed can be used to make pallets, these references do not teach how to do so. Nothing in this reference would teach one of ordinary skill in the art in 1979 how to overcome the structural problems posed by plastic pallets. The court finds that this reference has a different purpose than the claimed subject matter, is directed toward a different problem, is not within the inventors’ field of endeavor, and is not reasonably pertinent to the problem they confronted.
c. The Toboggan and the Buening Patent.
Defendants offered a plastic toboggan as prior art. The toboggan is fairly conventional in shape and made of two sheets of material. The front consists of a large, enclosed, hollow chamber. The floor contains a number of hat sections extending along the major axis of the toboggan from the front hollow chamber to the rear rail. The sides are rails to which the riders may cling. The normal and intended use of the item was as a toboggan.
Mr. Woodrich, who developed the toboggan, testified that it was intended that the sidewalls be fused. He did not offer any explanation as to why this was desired. As Mr. McConnell pointed out, the purpose of the railing in the toboggan is not to carry heavy loads. Nothing indicates that one of ordinary skill in the art, endeavoring to increase the compressive strength of a pallet, would look to the handrails of a toboggan for guidance.
Buening, shown in Figure 4, teaches a plastic toboggan similar to the one entered in evidence as a physical exhibit. Buening, U.S. Letters Patent No. 3,666,282 (1972). The toboggan has a deck structure with ribs on opposite sheets running perpendicular to one another and fused together at the points of intersection. The toboggan has a raised periphery to serve as a rail, but the only fusing shown in this rail is in the horizontal plane. As with the actual toboggan put into evidence, there is no indication that one of ordinary skill in the art would consult this reference in searching for a solution to the problem of increasing the pallet’s compressive strength. The court finds that with respect to claim nine, *561 which addresses primarily the pallet legs, neither the physical toboggan nor the toboggan patent were analogous prior art.
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d. The Hammond Patent.
Hammond teaches the use of plastic columns to add compressive strength to a pallet. Hammond, U.S. Letters Patent No. 3,561,375 (1971). The examiner did consider Hammond, inasmuch as it is one of the references cited in the specification of the patent at issue. The columns inserted into the pallet by Hammond may consist of paired frustro-conical sections joined so that the center of the column is more narrow than the ends. The court finds that Hammond is pertinent prior art to the problem of imparting compressive strength to the pallet.
e. The Mcllwraith Patent.
Mcllwraith identifies his field of art as plastic pallets, and in particular, “pallets formed to individual, molded, thermoplastic top and bottom deck members.” Mcllwraith, U.S. Letters Patent No. 3,610,-173 (1969). The Mcllwraith pallet has an upper deck and a lower deck. Each of the two decks has criss-crossed channels “welded” together where they cross. Although the deck structure is susceptible to thermoforming, evidence adduced at trial established, and the court finds, that one of ordinary skill in the art at the date of invention would have understood Mcll-wraith to teach a deck manufactured by blow molding. The two decks are joined by interlocking columns that, in the preferred embodiment, are removable. Figure 5 illustrates this construction. Mcllwraith emphasizes that his pallet is reversible. Mcllwraith teaches that the columns joining the two decks may be cut from a tube of metal, or may be made from high-strength plastic. To increase compressive strength, Mcllwraith suggests using thicker walls. For shipping and storage, Mcll-wraith suggests that the pallet be disassembled.
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Mr. Larry Stiller testified that he was generally familiar with the Mcllwraith type construction in twin sheet thermoform products. He described the deck as two series of hat sections, oriented at right angles to one another. He believed the top and bottom surfaces of each deck to be fused together, because the cross-sectional drawing only showed a single sheet of plastic where the two met. Mr. Stiller did not read the patent as suggesting blow molding. The court disagrees with his interpretation. Mr. Stiller conceded that Mcll-wraith did not teach a pallet with legs formed of the same sheet of material as the deck.
Mr. McConnell, plaintiff’s expert, also testified about this pallet. He described the structure as two blow-molded decks separated by columnar spacers. He recog *562 nized that the deck taught the use of ribs in the upper and lower surface running criss-cross to each other so as to provide good strength. He saw nothing in Mcll-wraith that would suggest to him that he could make the pallet and the legs out of one sheet of material. According to Mr. McConnell, Mcllwraith requires separate forming operations for the deck and the legs, if the legs are made out of plastic at all. One endeavoring to build a heavy-duty-pallet of unitary construction who looked to Mcllwraith would learn only from the crisscross pattern in the deck, and probably would have known of that technique already.
The court finds that Mcllwraith is pertinent prior art, inasmuch as one of ordinary skill at the time of invention, when working on the problem of inadequate compressive strength, would tend to look to Mcllwraith when seeking a solution. Moreover, this reference was considered by the examiner.
f. The Rowlands Patent.
This reference, which was before the examiner, teaches a blow-molded pallet. Rowlands, U.S. Letters Patent No. 3,467,-032 (1969). The skin forms a top and bottom surface. The molding process deforms pillars in the top and bottom. These pillars are in the shape of frustro-conical sections. These pillars may then be welded together along their tops to provide strength and rigidity. Holes are then cut in the side of the pallet to provide an aperture for forklift tines. Rowlands is pertinent prior art for what it teaches about adding compressive strength through columnar inserts, but like Mcllwraith, it teaches nothing about generating compressive strength through fusing side walls.
g. The Szatkowski Patent.
Szatkowski teaches a layered pallet made of cardboard, pressed board, or the like. Szatkowski, U.S. Letters Patent No. 4,015,544 (1977). The walls for the legs are folded down out of the boards, then intermittently glued together. The pallet, which is nestable, may also have other reinforcements in the legs. After being folded down, the leg portions are fastened together by glue or some other suitable means to form a pallet foot, as shown in Figure 6. The examiner considered this reference when he determined that the inventors’ teaching of fusing the pallet-foot sidewalls together was nonobvious. The court finds that Szatkowski is pertinent prior art.
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h. The Vissers Patent.
This pallet has an upper and a lower sheet. Legs depend from each sheet, and the legs of the top sheet fit into those of the bottom sheet. Vissers, U.S. Letters Patent No. 3,267,883 (1965). Mr. Stiller read the phrase “locked against displacement” to mean that the two sheets are fused. Nothing in the patent, however, suggests that these plates are joined at the feet. The only place the patent teaches uniting the plates is at the circumferential rim. Mr. McConnell testified that the specification suggested to him that the sheets were made of a material similar to fiberglass, then snapped together. To perform such a process, the upper sheet would be formed on a female mold and the lower sheet on a male mold, so that the surface of each sheet which was to come in contact with the other sheet would be in contact with the mold and thus more precisely defined. On the whole, the court finds that the Vissers patent is less pertinent a prior art reference than Szatkowski.
i. The Woolworth Patent.
Woolworth teaches a pallet leg made of high-impact plastic. Woolworth, U.S. Let *563 ters Patent No. 3,438,342 (1969). Figure 7 is an illustration of this pallet foot, taken from the Wool worth patent. The pallet leg is made of two concentrically situated cylinders connected together by a webbing structure, consisting essentially of radially disposed panels. The bottom of the leg is sealed by another plastic part, labeled in Figure 7. The top of the leg is designed to be bolted to the pallet.
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In trying to establish Wool worth as prior art, defendants elicited testimony from Mr. Stiller as to whether he could design a mold to produce this part by thermoforming. Presumably, defendants recognized that in developing a thermoformed pallet, one of ordinary skill in the art would most naturally turn to references that could themselves be thermoformed.
Mr. Stiller’s testimony was more revealing on this subject than defendants might have wished. His point of departure was a confident assertion that he could in fact design a mold to produce such a part by twin sheet thermoforming. As the court observed his verbal and demonstrative description of how he would do so, however, it grew increasingly apparent that the design he was describing simply would not work. Although difficult to articulate, the deficiencies in his design were absolutely clear to the court when hearing his testimony ore tenus and observing his models, his attempts to illustrate his approach, his gestures, and his ultimate frustration. Nor was this an arcane matter, beyond the ken of the lay observer. The court can best relate the deficiencies inherent in Mr. Stiller’s proposal by explaining that to implement his design, the upper mold surface would have to physically pass through the lower mold surface. It requires no specialized knowledge to realize that two objects cannot occupy the same space at the same time. Mr. Stiller tenaciously refused to concede the shortcomings of his proposed design, but, under the pressures of cross-examination, did ultimately abandon this first attempt. The court appreciates that the design process may be iterative in nature. Nevertheless, the inescapable conclusion for anyone observing Mr. Stiller’s testimony was that the conversion of the Woolworth foot from blow molding to twin-sheet molding was far less obvious than he originally thought.
2. Differences Between the Patented Invention and the Prior Art.
Keeping in mind the problem that the inventors confronted — that of enhancing the compressive load-bearing features of plastic pallets — the court now considers the differences between the way in which the inventors accomplished this result and the way the prior art attempted to solve this problem. The prior art must be considered not only for what it may teach toward the patent, but also for the manner in which it may lead one of ordinary skill in the art away from the invention.
Defendants contend that Bell teaches connecting two sheets of plastic in the leg to produce a stronger result. Bell, however, does not teach vertical fusing to add compressive strength. The two laminate sheets in Bell are fused not to each other, but to a central core of foam. The structure of Bell is more similar to the use of inserts in the foot to impart compressive strength. Bell does not teach the use of different designs on the top and bottom. That Bell may be explained by the same principles as explain the patented pallet is irrelevant. In re Van Wanderham, 378 F.2d 981, 988 (C.C.P.A.1967) (observing the difficulties attendant upon not considering *564 the subject matter as a whole, but instead focusing on the scientific principles involved.); see also Lindemann Maschinen-fabrik G.M.B.H. v. American Hoist & Derrick Co., 730 F.2d 1452, 1462 (Fed.Cir.1984) (noting that most patentable inventions employ known principles). Dr. Johnson, in analyzing the structure of the patented pallet, explained that tying the upper and lower sheets of material together in the deck provides a shear transfer mechanism, an effect he compared to that produced in an I-beam. The concept of the strength inherent in an I-beam is, however, ubiquitous. The proper inquiry under section 103 is addressed to whether the particular application of this principle taught by the inventors, which is to say the claimed subject matter as a whole, would have been obvious to one of ordinary skill in the art at the time the invention was made. Bell does not teach a fusing of the layers. If the patented pallet is nonobvious over Szatkow-ski, which teaches gluing parts of the leg together, it is nonobvious over Bell.
One method the prior art teaches for achieving greater compressive strength is the insertion of plastic columnar struts between two decks of a reversible pallet. E.g., Hammond, U.S. Letters Patent No. 6,561,375 (1971); Rowlands, U.S. Letters Patent No. 3,467,032 (1969). The struts in Hammond are not integrally formed with the decks, but are the product of a separate forming operation. Hammond teaches the use of struts comprising paired frustro-conical sections for compressive strength; this use of paired frustro-conical sections is very different from plaintiff’s techniques of fusing portions of the sidewalls together in the pallet legs. Hammond is only applicable for a two-deck pallet, which would not have satisfied the inventors’ goal of nestability.
Similarly, Rowlands teaches the use of columns between the decks to provide support. Unlike Hammond, these columns are formed from pockets deformed in each sheet of the two deck pallet. The columns are therefore an integral part of the structure, and in this regard are similar to the patent in suit. This solution is very different, however, from the one taught by the inventors. The columns in Rowlands are of a single thickness throughout. It would not have been obvious to one of ordinary skill in the art upon looking at Rowlands or Hammond that significant increases in compressive strength could be achieved by fusing together portions of the sidewalls in the legs.
Another technique for gaining compressive strength is the use of inserts. Row-lands, for example, teaches that the pockets in either surface which compose the spacer columns may be formed from the insertion of a frustro-conical insert. Mcll-wraith teaches making the columnar supports of a different material, such as steel tubing.
The most common technique found in the prior art for adding compressive strength was to use a thicker sidewall. It was from exactly this confine of thought that the inventors escaped. By fusing the two vertical sidewalls, the inventors achieved the effect of a thicker sidewall without the attendant disadvantages: greater weight, more expense, and formability problems.
No witness testified as to Szatkowski at trial. Plaintiff contends that Szatkowski, which the examiner considered, is a more pertinent reference than Vissers, which defendants advance. The fusing of the sidewalls as shown in the patent was considered by the examiner to be a non-obvious improvement over the adhesion taught by Szatkowski. Vissers teaches locking the legs together against displacement. The two plates are “united”, however, only at the circumferential rim. Plaintiff’s argument in closing, that this reference is less apt than Szatkowski, is well taken. To strengthen the legs, Vissers teaches the use of material of greater thickness. This teaching in no way suggests the solution that the patentees hit upon. The court finds that one of ordinary skill in the art in 1980 would have interpreted the phrase “locked against displacement” to call for some kind of mechanical fit to transfer shear from the upper to the lower sheet. Mr. Stiller’s interpretation, under which Vissers would read on the patent claims, *565 results only from impermissibly reading the teachings of the patent back into the prior art.
3. The Level of Ordinary Skill in the Art.
The necessary inquiry when determining obviousness is whether the invention would have been obvious to “one of ordinary skill in the art,” not whether it would have been obvious to the court, to a layman, to those skilled in remote arts, or to geniuses in the art at hand. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed.Cir.1983), cert. denied, 464 U.S. 1043 , 104 S.Ct. 709 , 79 L.Ed.2d 173 (1984). Six factors have been held relevant in determining the level of ordinary skill in the art: (1) the educational level of the inventor, (2) the type of problems encountered in the art, (3) the prior art solutions to those problems, (4) the rapidity with which innovations are made, (5) the sophistication of the technology, and (6) the educational level of active workers in the field. Bausch & Lomb, Inc., 796 F.2d at 449 ; Environmental Designs, 713 F.2d at 696 . Not every case will contain all factors, and in a particular case one or more factors may predominate. Environmental Designs, 713 F.2d at 697 .
a. Educational Level of the Inventors.
The court considers this criterion as a direction to consider all aspects of the inventors’ education, including informal education and years of practical experience. In 1980, Mr. Dresen had eleven years experience with thermoforming and was involved in the production of single-sheet pallets at both Penda and Glasfab, its predecessor. He worked for Glasfab starting in 1969, then went to work for Penda when they purchased Glasfab. Mr. Dresen earned a B.S. degree in industrial technology and industrial education. Mr. Breezer began working while in high school and has no formal education beyond high school but has sixteen years thermoforming experience. Mr. Breezer worked for Portage Plastics for eleven years, then worked at a tooling house. He joined Penda in 1978. While he was at Portage, the company produced a single-sheet pallet. Mr. Price, in addition to earning a two-year associate degree at a junior college, had fourteen years thermoforming experience and additional experience in the tool and die trade. He worked first with metal-stamping tools, then started a pattern and model shop called Arborcraft. After working there eleven years, he consulted for three years before joining Penda. He had previously designed single and twin-sheet products, including a single-sheet pallet. The inventor’s educational level, however, is not conclusive of the level of ordinary skill in the art; it is but one factor. Bausch & Lomb, Inc., 796 F.2d at 449 ; Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed.Cir.1983).
h. The Educational Level of Active Workers in the Field,
The court considers the term “education” in the context of this criterion to refer not only to formal education, but also to informal education and practical experience. Mr. Waun, who designed the accused devices, studied mathematics and engineering at four colleges without ever receiving a degree. He went to college about a year before entering the thermoforming business. He completed a five-year tool-and-die apprenticeship during which he served under Mr. Price. He later worked for Mr. Price’s company, Arborcraft, for three years, during which time he was a foreman for Mr. Price. He worked about eight years as head designer for Shuert Industries, a toolmaker that later became a ther-moformer. In 1980, Mr. Waun had approximately ten years experience in thermo-forming and additional experience in the tool-and-die trade. Mr. Constantino, the president of Cadillac, got his start in the thermoforming business straight out of high school. Larry Stiller, defendants’ expert, entered the thermoforming industry directly from high school. Mr. Stiller further testified that others he knew in the business had backgrounds similar to his own. Mr. McConnell, an expert for plaintiff, had about two years of college in aeronautical engineering, but never com *566 pleted his degree after serving in World War II. The other experts who testified, Dr. Johnson and Dr. Singh, both have academic careers. The court finds that neither is an active worker in the field in the sense that his background might be useful in assessing the level of ordinary skill in the art.
c. The Types of Problems Encountered in the Art.
The inventors’ precursors in the art of making plastic pallets found it difficult to generate sufficient compressive strength. The plastic pallets that were generally commercially available had problems with sagging and hinging. Additionally, twin-sheet thermoformers encountered problems in making the molds fit together properly to get a good fusing. Makers of pallets in general faced problems in producing durable, reusable pallets cheaply.
Certain articles that defendant offered as prior art 17 are instructive as to the types of problems encountered in the art. As early as 1970, industry watchers were suggesting thermoforming plastic pallets. Michael J. Steed, Why Not Thermoform Plastic Pallets?, Plastics Tech., Feb. 1970, at 43. Even at that early date, some recognized that the principal limitation on plastic pallets lay in developing the proper leg design. Steed indicated that research into different leg designs was already underway.
A later article recounts some of the problems encountered with early plastic pallets. See Ronald R. MacBride, Plastic Pallets are Coming on a Lot Stronger Now, Modern Plastics, Oct. 1972, at 60. MacBride recounted how early plastic pallets had been rushed to the market too quickly, and had to be withdrawn because of unanticipated problems. At that point, plastic pallets still could not compete with wood either in terms of rigidity or compressive strength. Returnables, even in 1972, cost over $20 per unit. A later article in a different journal confirms that plastic pallets were having trouble making inroads, and that twin-sheet pallets then in use were not exceptionally strong. Some Straight Talk About Plastic Pallets, Automation, Nov. 1974, at 70.
Two years later, MacBride followed up on his 1972 article. See Ronald R. MacBride, Despite the Odds, Plastic Pallets are Set To Grow, Mod. Plastics, Nov. 1974, at 58. In 1974, plastic pallet designers were still looking for ways to make their products stronger. At least three dozen companies had made major investments in developing a better plastic pallet.
d. The Prior Art Solutions to Those Problems.
Prior art plastic pallets included single-sheet pallets with channels and ribs to add strength, both in the deck and in the legs. Although offering the advantages associated with plastic pallets, these single-sheet pallets were generally too flimsy for heavy use. Prior art twin-sheet plastic pallets contained alternating fused and hollow portions in the deck and patterns of ribs in the upper and lower surfaces intersecting at right angles, but not fused or alternating fused and hollow portions in the leg walls. Others offered injection-molded legs bolted to thermoformed decks. The use of inserts in the legs was a common means of increasing the compressive strength. Some prior art references also suggest increasing the width of the leg wall.
e. The Rapidity with Which Innovations Are Made.
The parties stipulated that “innovation did not occur rapidly in the industry.” Mr. Stiller testified at trial that about the time the inventors were designing their pallet, those in the art were “getting creative” as the effects of the oil embargo eased. That observation, however, does not call into question the stipulation. The problem the inventors were working on — designing a *567 stronger foot — had been recognized at least since 1970. Steed, supra, at 43.
f. The Sophistication of the Technology.
The basic technology required to practice this art had been available for almost twenty years. All the equipment needed to practice this technology was commercially available. The molds for making products probably could have been fashioned by a number of toolmakers. This fact, considered in conjunction with the educational level of the inventors and other workers in the field, suggests that the relevant technology was at most modestly sophisticated or relatively unsophisticated.
g. Finding as to Level of Ordinary Skill.
One of ordinary skill in the art of designing and thermoforming plastic parts such as pallets would have had little if any formal education beyond high school. One of ordinary skill would have learned the trade principally from an apprenticeship or similar program of informal study. Although one of ordinary skill would have been familiar with the general principles and basic concepts of thermoforming, including the use of hat sections and furrows in the plastic to increase rigidity and fusing two sheets together in a thermoformed part, the court finds that this general familiarity does not mean that one of ordinary skill in the art would have chosen the proper design to integrate these principles successfully to solve a given problem such as that which confronted the inventors. On the whole, the level of ordinary skill in the art is relatively low.
4. Objective Indicia of Nonobviousness.
Secondary considerations such as commercial success and long-felt but unsolved need may also aid in the nonobviousness inquiry. Graham, 383 U.S. at 17 , 86 S.Ct. at 693 . Where available, such objective evidence of nonobviousness may be the most probative evidence presented, Bausch & Lomb, Inc., 796 F.2d at 447 , and must be considered. Newell Cos. v. Kenney Mfg., 864 F.2d 757, 768 (Fed.Cir.1988), cert. denied, 493 U.S. 814 , 110 S.Ct. 62 , 107 L.Ed.2d 30 (1989).
a. Commercial Success.
Defendants contend that plaintiff’s failure to put on explicit proof of commercial success is relevant in a determination of obviousness. As a preliminary matter, the court notes that plaintiff has no obligation to offer such proof. The patent is presumed valid under section 282. Defendants, not plaintiff, bear the burden of proof with respect to the question of validity. Furthermore, even if defendants had proven the device a commercial failure, that would not be sufficient to show that it was obvious and unpatentable.
Commercial success suggests patentability because (1) the economic return generated by an item is some indication of its worth to society, (2) others seem to be acknowledging the invention’s validity because they are willing to pay for the invention rather than defend a suit for patent infringement, and (3) if others had seen how to avail themselves of this commercial opportunity, they would have done so. None of these factors, however, warrants application of the rule’s converse. In other words, lack of commercial success does not in and of itself tend to show obviousness.
An invention need not be better, less expensive, or more commercially appealing to be nonobvious. See Demaco Corp. v. F. Von Langsdorff Licensing, Ltd., 851 F.2d 1387, 1390 (Fed.Cir.), cert. denied, 488 U.S. 956 , 109 S.Ct. 395 , 102 L.Ed.2d 383 (1988); Harmon, supra note 6, at 114. In any event, the record is not devoid of indicia of commercial success. This procurement itself was a substantial commercial coup. Moreover, plaintiff previously had sold as many as 66,000 pallets in one order, to a customer who purchased a total of 132,000 pallets in a year.
Of course, commercial success is only probative of nonobviousness to the extent that a nexus exists between it and the patented aspects of the product sold. *568 Cable Elec. Prod,., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026 (Fed.Cir.1985). There is, however, ample evidence of the merit of the Penda pallet. The Postal Service conducted extensive tests of available pallets. It purchased 20,000 pallets of the type covered by this patent for testing in the field. After these tests, the Postal Service concluded that the Penda design was superior to that of its competitors. Penda’s design was strong and durable. As defendants’ expert, Mr. Saunders, observed in regard to damages, this pallet is the type of product in which the commercial embodiment and the invention are largely coextensive. Just as apportionment of damages is not appropriate in such a situation, it is appropriate to impute the commercial success to the structures patented. See Fromson v. Western Litho Plate & Supply Co., 853 F.2d 1568, 1570 (Fed.Cir.1988); Georgia-Pacific Corp. v. United States Plywood Co., 318 F.Supp. 1116, 1132 (S.D.N.Y.1970), modified, 446 F.2d 295 (2d Cir.), cert. denied, 404 U.S. 870 , 92 S.Ct. 105 , 30 L.Ed.2d 114 (1971).
b. Long-Felt but Unsolved Need— Failure of Others.
Plaintiff did not offer evidence as to any long-felt need for more durable plastic pallets. The inventors did testify that they believed this need existed, but their testimony did not establish how long others may have felt this need. Prior art publications introduced by defendant, however, establish that this need was long-felt and unsolved. The need to develop a better leg design was felt as early as 1970. See Steed, supra, at 43. Those in the industry were working on the problem at that point. Id. A later article recounts the initial failure to solve this problem. MacBride, Plastic Pallets Are Coming on a Lot Stronger Now, supra, at 60. MacBride teaches that plastic pallets were rushed to the market too quickly and had to be withdrawn, and that plastic pallets could not compete with wooden pallets in either compressive strength or rigidity. Id. Two years later, plastic pallets were still having trouble in the market, and twin-sheet pallets were still not very strong physically. Some Straight Talk About Plastic Pallets, supra, at 70. By 1974, at least three dozen companies had made major investments in making pallets stronger. MacBride, Despite the Odds, Plastic Pallets Are Set To Grow, supra, at 58.
Defendants contend that plaintiff’s design would have been suggested by someone else much earlier, except that the oil embargo drove the price of plasties so high that plastic pallets were not a good investment in the mid-seventies. The articles defendants themselves offered for this point, however, show that for at least a four-year span in the early seventies, the plastics industry was working hard on developing a stronger plastic pallet. Even if the Brown machines were what eventually made such pallets commercially viable, they had been in use since the mid-seventies. Yet no one in the industry developed a plastic pallet like the one at issue before the inventors did so. The court finds that the plaintiff’s invention did fulfill a long-felt but unsolved need, and rejects the notion that the particular structure developed by the inventors was an inevitable consequence of the particular machine used.
c. Reaction of Experts.
Mr. McConnell testified as an expert in thermoforming. He has worked for many years in the field, and teaches seminars on thermoforming to various workers. His experience includes some design work and all aspects of the thermoforming industry. 18 Mr. McConnell said that he first saw the Penda pallet soon after it was introduced: “[FJrankly I was amazed at what I considered to be an ingenious way [of] increasing load bearing structure with the *569 use of those vertical fused sidewalls in the feet.” Later in his testimony he elaborated:
Q: What significance, if any, did you attribute to the Penda nestable twin sheet thermoform pallet when you became aware of it?
A: Well, I felt it opened up another avenue for the pallet manufacturers, ... the next category of weight carrying pallets.
But I also felt that it would help the industry in general, all of a sudden let us know, hey, we’ve been overlooking something for years, and that’s fusing vertical sidewalls for structure, because there are a lot of other items besides pallets [for which] this can be an advantage.
d. Other Secondary Considerations.
Copying may also be evidence of nonobviousness. Avia Group Int’l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1564 (Fed.Cir.1988); Chisum, supra, § 5.05[5]; Harmon, supra note 6, at 102. Plaintiff urges the court to find that Mr. Waun in fact,copied the patented pallet. Clearly he had access to plaintiff’s pallet. Plaintiff introduced evidence of shipments to WolPac of samples of their pallets. Access and similarity, however, are the elements for proof of copying in a copyright case, not a patent case. These facts standing alone might not indicate that any copying occurred. Regardless, the court considered dubious the testimony of Mr. Waun on this point. It seems at best highly improbable that his employer, a small company, would simultaneously take a rush design job on a twin-sheet thermoform pallet and conduct extensive tests on a large number of such pallets without using that testing knowledge in the designs. Although these two functions may have been located in different buildings, inasmuch as the company owner was involved in both projects, it is difficult to imagine the right hand not knowing what the left hand was doing to the extent indicated by Mr. Waun. The court finds Mr. Waun’s assurances to the contrary not entirely credible.
Acquiescence in licensing the patent may be objective evidence of nonobviousness. 2 Chisum, supra, § 5.05[3]; see Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 55-56 , 43 S.Ct. 322, 325 , 67 L.Ed. 523 (1923). Since this action was commenced, Cadillac has negotiated a license from Penda. Although a clause in the license indicates that the parties to the license did not consider it evidence of an established royalty, that agreement does not mean that the license may not be considered as evidence of some level of acceptance. The license was introduced into evidence by the government, which insisted that the court should allow it to use the license as evidence of a reasonable royalty since it was not a party to the license and did not stipulate that the license should not be used as evidence of an established royalty. Although other factors beside acceptance of patent validity may have contributed toward Cadillac’s entering this license, those same factors would limit the relevance of the agreement with respect to the amount of a reasonable royalty. Although of minimal probative value, the court does consider Cadillac’s acceptance of this agreement to be at least some evidence of the patent’s validity.
Likewise, laudatory statements regarding the patented invention may be some evidence of nonobviousness. See Akzo N.V. v. United, States Int’l Trade Comm’n, 808 F.2d 1471 , 1481 (Fed.Cir. 1986), cert. denied, 482 U.S. 909 , 107 S.Ct. 2490 , 96 L.Ed.2d 382 (1987). But see 2 Chisum, supra, § 5.05[5] (criticizing this use). The Postal Service was apparently quite impressed with the Penda pallets, which embodied the invention. The evidence at trial clearly showed that the Postal Service thought the Penda pallets superi- or to any other they had used, albeit more expensive.
e. Finding as to Secondary Considerations.
The secondary considerations, the so-called objective indicia of nonobviousness, on balance favor patent validity.
*570 5. Conclusions as to Nonobviousness.
Defendants have failed to prove by clear and convincing evidence that the Penda patent is obvious within the meaning of section 103. The court concludes that the differences between the subject matter patented and the prior art are such that the subject matter as a whole would not have been obvious to one of ordinary skill in the art to which the subject matter pertains. In reaching this conclusion, the court has first considered and made findings about the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the art, and objective indicia of nonobviousness. Much of the prior art discussed at trial had been presented to the examiner during the prosecution of this patent. Most of that which was not was less pertinent than that which was.
Defendants have failed to provide clear and convincing evidence that the examiner erred in his determination that the claimed subject matter was nonobvious over Bell, Hammond, Mcllwraith, Rowlands, Szat-kowski, and Vissers. Although the record does not indicate explicitly that the examiner considered Woolworth, 19 the court finds that this prior art reference is no more pertinent than those it is known the examiner did consider.
Defendants have urged the court to declare plaintiff’s patent invalid based on a combination of prior art references. To this end, in their pretrial memorandum defendants cited Orthopedic Equipment Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.1983), for the proposition that features may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of another. Defendants further urged the conclusion that the claims are invalid as obvious because they are “mere permutations of known techniques.” Defendants cited no authority for the latter standard.
The law on this point is well settled. There is no special test for inventions that are combinations of old elements, because virtually all inventions are combinations. Intel Corp. v. United States Int’l Trade Comm’n, 946 F.2d 821 , 842 (Fed.Cir. 1993); Harmon, supra note 6, at 84. One might as well contend that a book contains nothing new because it coins no new words and is thus merely a combination of old elements. Furthermore, it is permissible to combine prior art references only if the prior art itself suggests the desirability of such a combination. Panduit Corp., 810 F.2d at 1568 ; 2 Chisum, supra, § 5.04[l][e], Defendants have failed to prove by any measure, let alone prove by clear and convincing evidence, that the prior art does suggest such a combination.
In the preceding sections, the court has determined the scope and content of the prior art, the differences between the claimed subject matter and the prior art, the level of ordinary skill in the art in 1980, and the import of the objective indicia of nonobviousness. The level of ordinary skill in the art is fairly modest in comparison with many technological arts. The differences between the claimed subject matter and the prior art are substantial. The claimed subject matter as a whole would not have been obvious to one of ordinary skill at the time the invention was made.
D. Reasonable and Entire Compensation
The plaintiff has proven infringement, and defendants have failed to prove their affirmative defense of invalidity. We therefore must determine the amount of plaintiff’s “reasonable and entire compensation” for the government’s use of the patented invention. Both sides essentially agree on the methodology for determining *571 damages, but sharply disagree on an appropriate amount.
Both sides presented evidence as to damages primarily through expert witnesses. The witnesses who testified for plaintiff on the subject were Mr. James Malikowski and Mr. Howard W. Bremer, Esq., both of whom testified as experts, and Mr. Jack Bauman. Defendant presented the testimony of Mr. Robert Saunders, Esq., as an expert.
Mr. Malikowski is a vice-president and a principal of the I.P.C. Group, a financial consulting firm that focuses in two primary areas: litigation support and business valuation. He has testified on intellectual property matters more than 100 times. Mr. Malikowski holds degrees in both accountancy and philosophy, and is a certified C.P.A. He is a member of the Licensing Manufacturing Association and numerous accounting organizations. He is on the board of trustees of the Licensing Executive Society and the board of the Chicago chapter of the National Organization of Accounting. He worked for Peterson & Company evaluating intellectual property and has previously evaluated licenses for patents. He also serves as a guest lecturer at John Marshall School of Law as an expert in patent damages and reasonable royalties. Mr. Malikowski claims no particular expertise in pallet design or thermoform-ing. He was retained by Penda to determine the value of a reasonable royalty in this case. Dr. Lewis Koppell of I.P.C. Group assisted him in performing this evaluation. Dr. Koppell has an M.B.A. and a chemistry degree. Mr. Malikowski opined, on the basis of a willing-licensor/willing-licensee hypothetical negotiation, that a reasonable royalty would be in the range of $3.00 to $3.50 per pallet.
Since 1988, Mr. Bremer has worked as a consultant in patent and licensing matters. After receiving his undergraduate degree from the University of, Wisconsin-Madison in chemical engineering, in 1944, and after serving in the Navy for approximately two years, he returned to the University of Wisconsin and attended law school, from which he graduated in 1949. He worked first as a patent attorney in the Patent Division of Proctor and Gamble Company, Cincinnati, Ohio. His work there included patent and licensing issues involving royalties. During his twelve years with Proctor & Gamble, Mr. Bremer participated in forty to fifty license negotiations. When he left, Mr. Bremer was responsible for all of the patent work on soaps and detergents, which included patents on packaging machinery, packages, the detergents themselves, and the processes for making them. He also participated in monitoring any preexisting license agreements.
After leaving Proctor & Gamble, Mr. Bremer worked for the Wisconsin Alumni Research Foundation (WARF) 20 from December of 1960 until retiring in 1988. For the first fifteen years of his employment with WARF, Mr. Bremer was its sole patent counsel. As such, he evaluated all the faculty’s inventions, patented them, and licensed them out to industry. He participated both in negotiating several hundred new licenses and in monitoring existing ones. The bulk of his work was licensing out, because an entity in WARF’s position would rarely license in. Because the University research function covers almost all disciplines, WARF dealt with any subject matter that arose, ranging in origin from the engineering schools to the biochemistry department. The inventions brought to WARF included very simple mechanical items, complex mechanical contraptions, electronic devices, and much from the chemical art.
Plaintiff called Mr. Jack Bauman as a fact witness. Mr. Bauman’s background is presented because it is relevant in considering certain licenses he negotiated which plaintiff introduced into evidence. He received his undergraduate degree from Colgate University in 1950. He also attended *572 Harvard Business School in 1972. Mr. Bauman worked twenty-eight years for Union Camp Corporation, a manufacturer of paper and related converted paper products. He was General Manager of the Bag Division when he resigned on August 1, 1978. Mr. Bauman estimates that he participated in seven or eight negotiations to license products during his last seven or eight years at Union Camp.
After then serving as president of P.C.L. Packaging for three years, Mr. Bauman consulted on several projects and set up United States sales organizations for two Canadian companies, one of which was in the thermoform business and one of which was in the plastic flexible packaging business. His last consulting project, which began in February, 1984, was with Bigelow Sanford (“Bigelow”), with which he remained until 1990 when he took his present position. At Bigelow, Mr. Bauman reported directly to the Chairman of the Board. In January 1985, Bigelow created a separate entity called Bigelow Packaging, which did business under the name Big-Pak. Mr. Bauman was made General Manager of that division, where his principal responsibilities were to commercialize the package covered under a patent Bigelow owned for a returnable, reusable, bulk container system comprising mirror image top and bottom single sheet pallets separated by a triple, uncorrugated sleeve. In developing this package, Mr. Bauman participated in four or five license negotiations.
When Mr. Bauman took over the division in January of 1985, it owned a number of plastic pallet molds scattered among several thermoformers. These thermoformers’ products were not of uniform quality. Also, the pallet was not sufficiently rigid for larger applications. Mr. Bauman testified that, before deciding to deal with Pen-da, he surveyed most of the thermoformers in the United States, first for their ability to get a consistent quality in the existing pallets, and second for solutions to the problem of excessive flexing. Mr. Bauman then negotiated a license with Penda for the patent in suit.
Defendants called Mr. Robert J. Saunders, Jr., as an expert witness. Mr. Saunders completed the basic engineering program at Rose Polytechnic Institute while in the Army during World War II, graduated from Fordham University in physics in 1948, and received his J.D. from Fordham Law School in 1951. He worked first in the legal department of General Electric, principally in the radio and T.V. department and some related product lines. He handled all phases of the patent work, including procurement or evaluation of third-party patents, and negotiated one or two license-in patents and no license-out patents. He then joined the Texaco patent department, where he worked until 1972. As a patent attorney for Texaco, Mr. Saunders handled inventions in electronics and physics, principally nuclear well logging, data processing, or any invention other than primarily chemical inventions. He later worked heavily in licensing technologies in which a petroleum company would be involved, including electronics inventions, seismic data processing, nuclear well logging, and fuel additives.
After leaving Texaco, Mr. Saunders served with Research Corporation. From its formation in 1987 until 1989 he also worked for an affiliate, Research Corporation Technologies, in Tucson, Arizona. At both corporations, he served as general counsel and retired as corporate secretary. As general counsel of both corporations, Mr. Saunders spent about ninety-five percent of his time on the practice of patent law and technology transfer, developing programs to license or otherwise commercialize technology. The corporations evaluated inventions to assess potential for generating revenue. Ordinarily, patent protection would be sought, followed by licensing out. After seeking patents through outside counsel, the corporations negotiated the license agreements themselves. Mr. Saunders testified that he participated extensively in the licensing aspect of the business. The practice encompassed diverse arts. Since retiring, he has worked as a consultant in the private practice of patent law, mostly in the field of technology transfer and the transfer of patents and know *573 how. He also does some consulting work on the prosecution and preparation of patents.
1. General Principles.
The government may take a license in any United States patent. Decca, Ltd. v. United States, 640 F.2d 1156, 1166 (Ct.Cl.1980), cert. denied, 454 U.S. 819 , 102 S.Ct. 99 , 70 L.Ed.2d 89 (1981); Calhoun v. United States, 453 F.2d 1385, 1391 (Ct.Cl. 1972). The patentee’s sole remedy is a suit in this court for its “reasonable and entire compensation” under section 1498. Decca, 640 F.2d at 1166 . This remedy is premised on a theory of eminent domain. Motorola, Inc. v. United States, 729 F.2d 765, 768 (Fed. Cir.1984); Leesona Corp. v. United States, 599 F.2d 958, 966 (Ct.Cl.), cert. denied, 444 U.S. 991 , 100 S.Ct. 522 , 62 L.Ed.2d 420 (1979); Tektronix, Inc. v. United States, 552 F.2d 343, 346 (Ct.Cl.), modified, 557 F.2d 265 (Ct.C1.1977), cert. denied, 439 U.S. 1048 , 99 S.Ct. 724 , 58 L.Ed.2d 707 (1978). The property interest taken by the government is a compulsory, compensable, nonexclusive license. Motorola, 729 F.2d at 768 ; Leesona, 599 F.2d at 968 .
The “reasonable and entire compensation” owed the patent holder is equivalent to just compensation under the fifth amendment. Calhoun, 453 F.2d at 1395 . Thus, the court has traditionally turned to the law of eminent domain for legal precedents to apply in determining “reasonable and entire compensation.” Leesona, 599 F.2d at 967 . Basic principles of fairness are the governing consideration in determining just compensation for an eminent domain taking. Tektronix, 552 F.2d at 347 . These same principles guide in assessing reasonable and entire compensation. Id.
This court and its predecessors have employed several different methods in fixing the amount of reasonable compensation due one whose patent the government has infringed. Three of the measures the court has used are (1) a reasonable royalty, 21 (2) the patent owners’ lost profits, and (3) the savings to the government. Decca, 640 F.2d at 1167 . One way to monitor the reasonableness and fairness of an award is to compare the results derived from one measure, such as a reasonable royalty, to the results derived from another available method, such as lost profits or savings to the government. Leesona, 599 F.2d at 973 .
Courts most frequently determine reasonable and entire compensation by calculating a reasonable royalty. Decca, 640 F.2d at 1172 (stating that “the reasonable royalty method is the preferred method of ascertaining the value of patent rights taken by the government”); Leesona, 599 F.2d at 968 . They use the other two measures, lost profits and government savings, less often. A court may award lost profits only after the strictest proof that the plaintiff would in fact have earned and retained those sums on its sales to the government. Tektronix, 552 F.2d at 349 ; see Leesona, 599 F.2d at 971 (lost profits may only be awarded as an alternative to, not in addition to, a reasonable royalty). In a hypothetical negotiation, however, it is possible to consider the losses the licensor *574 might suffer as one factor in determining the rate it would have sought. Leesona, 599 F.2d at 972 (“Some elements of business injury might be weighed in determining what the owner might have sold for.”). Similarly, savings to the government are not used as a measure of compensation in preference to a reasonable royalty, Decca, 640 F.2d at 1172 , but these savings may be employed in estimating the amount a willing buyer would offer a willing seller. Leesona, 599 F.2d at 971 .
Because Penda did not establish a commercial licensing rate, 22 the court must turn to other methods, as did the court in Tektronix, 552 F.2d at 348 . The plaintiff in that action was the owner of a patent on an oscilloscope and some related electronics that the government had used without permission. Id. at 345 . Rejecting both the “nominal sliding-scale royalty” proposed by defendant and the plaintiffs theory of lost profits, the court concluded that the best method of computing compensation would be to determine a reasonable royalty by applying the willing-buyer/willing-seller method, id. at 348-349 , observing that the method is exemplified by Georgia-Pacific, 318 F.Supp. at 1116 .
Tektronix approved the use of a hypothetical negotiation to determine a reasonable royalty in a section-1498 action and noted that Georgia-Pacific exemplifies that method. 552 F.2d at 348-49 . The Federal Circuit subsequently has approved the use of the factors enumerated in Georgia-Pacific to determine a reasonable royalty in the context of a private suit for infringement. Smithkline Diagnostics, Inc. v. Helena Lab. Corp., 926 F.2d 1161, 1168 (Fed.Cir.1991).
Just as in Tektronix, the parties in the case at bar agree that there is no established royalty rate and differ substantially in their evaluation of what a reasonable royalty rate should be, drawing on the fifteen factors listed in Georgia-Pacific. The ultimate purpose of applying the Georgia-Pacific factors is to determine what a willing licensee would pay a willing licensor for the rights taken by the government. Most of the evidence on these factors came from expert witnesses.
2. The Georgia-Pacific Factors.
The Georgia-Pacific factors “state the practical considerations in royal *575 ty negotiations between a hypothetical willing licensor and licensee.” Sun Studs, Inc. v. A.T.A. Equip. Leasing, Inc., 872 F.2d 978, 994 (Fed.Cir.1989), overruled in part on other grounds, A.C. Aukerman Co. v. R.I. Chaides Const. Co., 960 F.2d 1020, 1039 (1992). Whether to treat the government or Cadillac as the licensee for purposes of this analysis depends on the approach used and the factor involved. The contractor operates under the aegis of the sovereign’s power to take a license under the second paragraph of section 1498(a). Decca, 640 F.2d at 1166, 1167 . Hence, at some points in th

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/6644599. Public record. Not legal advice.