# Appendix — National Business Systems, Inc. v. AM International, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385017_2520%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1985 - **Citation:** 471 U.S. 1110 ## Text | ) [Tree 84-1438 MAR 2D 1965 ALEXANDER STEvas, No. CLERK In THE Supreme Court of the United States OCTOBER TERM, 1984 NATIONAL BUSINESS SYSTEMS, INC., et al Petitioners, v. AM INTERNATIONAL, INC., et al., Respondents. APPENDIX I TO PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT EDWARD S. IRONS 1800 M Street, N.W. Suite 1000 North Washington, D.C. 20086 (202) 822-2939 Counsel for Petitioners | SSE Ss SESS SS "SSCS WILSON - Eras Printing Co.. Inc. - 7689-0096 - WASHINGTON. D.C. 20001 E Pi — ye the hy TABLE OF CONTENTS APPENDIX A —Court of Appeals’ Opinion -............... APPENDIX B —District Court’s Memorandum Opin- ion APPENDIX C —Court of Appeals’ Order Denying Petition for Rehearing Pree Peer r reer Pee eer es APPENDIX D —Court of Appeals’ Order Denying Appellants’ Motion to Correct Errors and Denying Appellants’ Motion for EATEN i iS ieee APPENDIX E —Court of Appeals’ Order Amending Rn cok LS ot ee eee APPENDIX F —Court of Appeals’ Order Staying Issuance of Mandate .......... APPENDIX G —Court of Appeals’ Corrected Order Staying Issuance of Mandate ............ APPENDIX H —Appellants’ Petition for Rehearing with Suggestion for Rehearing En RES EEO IES ESE eee ee APPENDIX I —Appellants’ Motion to Correct Errors in Opinion Filed September 20, 1984.. APPENDIX J —Appellants’ Motion for Sanctions .... APPENDIX K —Memorandum in Support of Appel- lants’ Motion for Sanctions ................. APPENDIX L —AM International’s Memorandum in Opposition to Appellant’s Motion for Sanctions Oe eee Pe eee eee eee eee ee eee eee APPENDIX M—Reply Memorandum in Support of Appellants’ Motion for Sanctions .... APPENDIX N —Appellees’ Memorandum in Opposi- tion to Appellants’ Motion to Correct Errors in Opinion 25a 66a 69a Tla 73a 75a 95a 114a 115a 140a 148a ii TABLE OF CONTENTS—Continued APPENDIX O —Defendants-Appellees’ Answer to Appellants’ Petition for Rehearing With Suggestion for Rehearing En TO sisi i een eel APPENDIX P —Petition for Rehearing of Appellants’ Motion for Sanctions with Sugges- tion for Rehearing En Banc .............. APPENDIX Q —Court of Appeals’ Order Denying Petition for Rehearing of Appellants’ Motion for Sanctions and Denying Appellees’ Motion to Reconsider Or- der Staying Issuance of Mandate ...... APPENDIX R —Plaintiffs’ Supplemental Proposed Fact Findings 245-249 APPENDIX S —Statutes and Rules _............................. Page 164a 180a la APPENDIX A IN THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT No. 82-2393 NATIONAL BUSINESS SYSTEMS, INC., et al., Plaintiffs-A ppellante, V. AM INTERNATIONAL, INC., e¢ al., Defendants-A ppellees. Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 80 C 4915 & 81 C 6227—Nicholas J. Bua, Judge. OPINION Filed September 20, 1984 Before PELL and ESCHBACH, Circuit Judges, and JAME- SON, Senior Dictrict Judge.* JAMESON, District Judge. National Business Systems, Ine. (NBS) appeals from those portions of the judgment of the district court (1) holding claim 7 of AM Interna- * Hon. William J. Jameson of the District of Montana, sitting by designation. 2a tional Inc.’s (A.M.) patent No. 3,272,120 valid and in- fringed: ‘2) denying NBS costs and attorneys’ fees; and (3) graucing an injunction against further infringement of claim 7 by NBS.' We affirm and remand for a deter- mination of damages. I. Factual Background This appeal concerns a single patent, No. 3,272,120, (7120) entitled “Address Printing Machines with Roller Platens,” issued to AM (as assignee of the inventor, D.W. Johnson) on September 13, 1966 from an application filed October 22, 1964.2 The patent was described by the dis- trict court as follows: The ’120 patent discloses and claims a data re- _corder using a two platen roller, two stroke (forward- return) method for imprinting forms from embossed printing plates or cards, such as are used in credit transactions in department stores and gas stations and in finance institutions with bank cards. The data recorder disclosed in the ’120 patent has a dual 1 Exclusive jurisdiction over patent appeals is now vested in the United States Court of Appeals for the Federal Circuit, 28 U.S.C. § 1295(a) (1) (as amended April 2, 1982). The Federal Courts Im- provement Act that amended section 1295, however, provided: “any case in which notice of appeal has been filed in a district court of the United States prior to the effective date of this Act [October 1, 1982] shall be decided by the court of appeals to which appeal was taken.” Federal Courts Improvement Act, Pub.L. No. 97-164, § 403(e), 96 Stat. 37, 58 (1982). The notice of appeal in this case was filed before October 1, 1982, and therefore this court properly acquired jurisdiction. 2 The validity of three other patents held by AM—No. 3,138,091 (091) 3,340,800 (’800) and 3,763,777 (’777), was also determined by the district court. The court held claim 12 of the ’800 patent and claims 1-3 of the ’777 patent invalid and claims 1 to 6 of the ’120 patent, claims 1-11 of the ’800 patent, and claims 4 and 5 of the "177 patent not infringed. In a prior order the court held the ’091 patent valid but not infringed. 3a platen roller arranged on a double eccentric shaft constituting a platen assembly which allows for selec- tive imprinting of characters from the embossed plates or cards. A first platen roller is lowered and imprints on the form the first portion of characters as it rolls along the embossed plate or card, which is on the bed of the data recorder, in a left-to-right stroke of the platen carriage, which houses the platen assembly and is operated by hand. The first platen roller is then raised and a second platen roller is lowered to imprint the remaining portion of the characters as it rolls along the embossed plate or card in a right-to-left return stroke. The AM machine was designed to meet a particular de- mand for an imprinter that could produce imprints on carbon form sets sufficiently clear to be read accurately by machine. The demand in part grew out of the Ameri- can Bankers’ Association’s decision to adopt “magnetic ink character recognition symbols” (MICR symbols) for imprinting deposit slips, receipts, and other forms. As the patent examiner remarked in 1966, “[a]lthough the use of MICR characters has greatly increased the speed and efficiency with which the imprinted forms can be sorted, a considerable amount of difficulty has been en- countered in the imprinting of the MICR characters on the forms.” After listing recent improvements in the design of imprinters and form sets, the examiner de- scribed the principal object of the AM machine: “it is the object of the present invention to further advance current practices of imaging form sets with characters having a high degree of clarity and outline accuracy through the use of small data recorders.” The ’120 patent listed seven claims, the last of which was held to have been infringed. Claim 7 is described in the patent: 7. A method of making an impression on a form set from an embossed printing device which utilizes a 4a carriage movable in opposite directions between a first and second position and having a pair of roller platens rotatably supported thereon, rolling one of the platens in printing relation to one portion of the printing device with the other platen in non-printing relation to another portion of the printing device when the carriage is moved in one direction, and rolling the other platen in printing relation to the other portion of the printing device with said one platen in non-printing relation to said one portion when the carriage is moved in the opposite direction. Accompanying and illustrating the claims in the patent were drawings showing “a preferred embodiment of the present invention” as a “small data recorder” with its carriage and platform holding a merchant plate and customer card. II. Proceedings Below On April 27, 1978 AM initiated the proceedings leading to this litigation when it applied for reissue of the ’120 patent pursuant to 35 U.S.C. § 251. The purpose of the reissue proceeding is to correct inadvertent errors in the original patent which may make it “wholly or partly in- operative or invalid.” Jd. AM sought to amend its patent by adding additional references to “prior art.” Prior art references are important because the statutory presump- tion of the patent’s validity, 35 U.S.C. § 282, “is ‘largely, if not wholly, dissipated’ when the pertinent prior art is not considered by the Patent Office.” Medical Laboratory Automation v. Labcon, Inc., 670 F.2d 671, 674 (7th Cir. 1981) (quoting Chicago Rawhide Mfg. Co. v. Crane Pack- ing Co., 523 F.2d 452, 458 (7th Cir. 1978), cert. denied, 423 U.S. 1091 (1976) ). Failure of the examiner to con- sider pertinent prior art, then, leaves the patent open to attack on numerous grounds such as “obviousness” (35 U.S.C. § 103), anticipation (35 U.S.C. §102(a)), and fraud on the Patent Office (37 C.F.R. § 1.56). A eee abe taal mete se Ma 5a On November 17, 1980, NBS filed a petition and pro- test in the reissue proceeding, asking the Patent Office to withdraw AM’s application and to strike it from the Pat- ent Office files for violation of the duty of disclosure required under 37 C.F.R. § 1.56. The patent examiner’s initial opinion on February 12, 1981 noted that a prior art patent No. 3,340,800 (’800), also assigned to AM, “would clearly have been material and would have been a most pertinent reference.” The examiner then con- sidered the merits of the reissue application and rejected all claims of the ’120 patent. ‘The examiner specifically re- jected Claim 7 on two grounds: (1) “under 35 U.S.C. § 102 (a) as fully anticipated by Cox [patent No. 539,356]”; and (2) “as being ‘on sale’ [under § 102(b)] more than a year before the [October 22, 1964] filing date” of the original 7120 patent application. AM appealed to the Pat- ent Office Board of Appeals. At AM’s request the appeal was suspended pending the outcome of this litigation. While the reissue proceedings were still pending, appel- lant NBS filed two complaints in federal district court. In periinent part NBS sought a declaratory judgment “for the purpose of resolving an actual controversy be- tween the parties with respect to the validity, enforce- ability and infringement by plaintiffs of each of AM’s United States Patents 3,138,091; 3,272,120; 3,340,800; 3,763,777.” NBS also sought treble damages and attor- neys’ fees under 35 U.S.C. ®§ 284 and 285 respectively. AM counterclaimed against NBS, alleging the validity and infringement of each of its four patents and similarly requesting treble damages and attorneys’ fees. The trial lasted eleven days, from April 13 to April 28, 1982. On August 26, 1982, the district court issued a 49-page memorandum opinion, with a careful analysis of the ex- pert testimony, exhibits, and applicable law.’ The court concluded, inter alia, that claim 7 of AM’s ’120 patent 3 See National Business Systems, Inc. v. Am. Intern. Inc., 546 F.Supp. 340 (N.D. Ill. 1982). 6a was “valid and infringed by plaintiffs’ devices.” The court enjoined NBS from further manufacture and sale of the infringing imprinters and ordered an accounting “as to the amount of damages suffered by AM by reason of NBS’ infringement of Claim 7.” Based on this accounting, the court ordered that “AM shall recover from Plaintiffs the amount of these damages, not less than a reasonable royalty.” Observing that “this is a close case,” that “at any time the validity and infringement of the three patents was ‘open to honest doubt,’ ” that “defendants have not proven that plaintiffs acted in a bad faith belief that the patents were invalid,” and that “defendants have not carried their burden of proof as to willful infringement,” the court denied both parties’ requests for treble damages and attorneys’ fees. Finally, in the same order, the court certified its judg- ment for immediate appeal pursuant to Fed.R.Civ.P. 54 (b). NBS now appeals both the court’s judgment of validity and infringement and its denial of attorneys’ fees and costs. III. Contentions on Appeal Appellant NBS raises numerous issues on appeal which are summarized in the following five contentions: 1. The district court was bound by the Patent Office’s final rejection of the reissue application, and alter- natively AM is “collaterally estopped to assert that claim 7 is valid, having unsuccessfully contested that issue in a fair proceeding before the [Patent Office] ;” 2. Claim 7 is invalid for being obvious under 35 U.S.C. § 103. 8. Claim 7 is invalid, having been “anticipated” by prior art under 35 U.S.C. § 102(a) and having been “on sale” for more than a year as prohibited by 35 U.S.C. § 102 (b). Se Neel Mh nih Wa kt Sl Tease le Ath 7a 4. The court erred in concluding that claim 7 was in- fringed under the “doctrine of equivalents.” 5. The court erred in denying NBS attorneys’ fees and costs provided for under 28 U.S.C. § 1927 and 35 U.S.C. § 285. IV. Effect of Patent Office Reissue Decision NBS contends that the Patent Office’s decision reject- ing claim 7 in the reissue proceeding was entitled to a “presumption of correctness” in the district court. This presumption, NBS argues, shifted the burden to AM to prove the decision was wrong. Alternatively, NBS ar- gues that “[{i]ntertwined with the presumption” is the doctrine of collateral estoppel which would prevent AM from relitigating the same issues decided by the Patent Office. A patent is presumed valid. 35 U.S.C. § 282. This court has held unequivocally that section 282 “places the burden of persuasion on the party attacking the validity of the patent. This burden remains upon the alleged in- fringer throughout the [judicial] proceeding and is in no sense dependent on the character of the proceedings before the Patent Office... .” Chicago Rawhide Mfg, Co. v. Crane Packing Co., 523 F.2d 452, 457-58 (7th Cir. 1975), cert. denied, 423 U.S. 1091 (1976). In Johnson & Johnson v. Wallace A. Erickson & Co., 627 F.2d 57 (7th Cir. 1980), we considered whether a district court could compel a reissue proceeding as a condition precedent to adjudication in the court. In holding that the district court lacked the power to com- pel a prior resort to the Patent Office, we first noted that “the only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the Courts of the United States, and not in the department which issued the patent,” quoting from Mc- Cormick Harvester Co. v. Aultman, 169 U.S. 606, 609 saat (1898) Id. at 59. We concluded that a prior reissue pro- ceeding would have no effect on subsequent litigation over the validity of a patent: The doctrine of primary jurisdiction does not apply. The validity of patents is “within the conventional experience of judges... .” The question of the valid- ity of any particular patent is a private issue be- tween the patentee and alleged infringers, and nct a public issue of industry-wide or regulatory concern. Finally, the factual adjudications of the Patent Of- fice, unlike most administrative factual adjudica- tions, . . . are not conclusive if supported by sub- stantial evidence on the record considered as a whole. The ultimate question of patent validity is one of law and not subject to the clearly erroneous stand- ard of review. ... Thus, the compelled reissue pro- ceedings would have no effect whatever on the ju- 627 F.2d at 61-62 (citations omitted, emphasis added) ; see also Application of Hitchings, 342 F.2d 80, 82 (C.C.P.A. 1965) (even within the Patent Office “prin- ciple of res judicata should not apply where the initial decision is no more than an unappealed final rejection of an examiner.”); cf. Mooney v. Brunswick Corp., 663 F.2d 724, 731 (7th Cir. 1931) (irregularities in reissve proceeding diminished presumption of validity). In the subsequent case of Singer Co. v. P. R. Mallory & Co., Inc., 671 F.2d 282 (7th Cir. 1982), reversing an order of the district court enjoining a patentee from proceeding with its patent reissue application, we recog- nized that the statutory procedure under 35 U.S.C. § 251 would “permit a review of prior art by an agency with particular expertise in the area, and... provide a guide to the patentee as to the advisability of continuing ex- pensive infringement litigation.” Jd. at 236. On the other hand, we also noted that a reissue of the patent would not affect the substantive rights in the litigation 9a of the party attacking the validity of the patent. “The district court will still rule on... [the] prior art claims, thus providing a remedy at law for any ‘incorrect’ find- ings by the Patent Office.’’ Id. at 235. The courts generally defer to the technical expertise possessed by the Patent Office in originally issuing a patent. This expertise and corresponding judicial def- erence are the practical underpinnings of the statutory presumption of validity surrounding patents. See Chi- cago Rawhide Mfg. Co., 528 F.2d at 458; Parker v. Motorola, Inc., 524 F.2d 518, 521 (5th Cir. 1975). But less deference is appropriate for a patent office finding of invalidity in a reissue proceeding because, as we pointed out in Johnson & Johnson, patent validity is a question of law reserved exclusively to the federal courts in de novo proceedings. Here, special deference to the Patent Office decision is particularly inappropriate be- cause the patent had been in existence for over 11 years and because the district court, having the benefit of ex- tensive proof by expert testimony and demonstrative evi- dence, issued a detailed, well-reasoned opinion. The de- cision of the Patent Office in the reissue proceeding is neither cloaked in a “presumption of correctness” inde- pendent of the patent nor entitled to special deference in a separate federal court adjudication of patent validity. V. Validity of Claim 7 It is well established that “the ultimate question of patent validity is one of law... .” Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Medical Laboratory Auto- mation v. Labcon, Inc., 670 F.2d at 672. The Supreme Court has made it equally clear, however, that the three conditions of patent validity—novelty, utility (defined in 35 U.S.C. $§101 and 102), and “nonobviousness” (35 U.S.C. §103)—are legal issues which lend themselves to critical factual inquiries. See Graham, 383 U.S. at 17. 10a In Republic Industries Inc. v. Schlage Lock Co., 592 F.2d 963, 972-73 (7th Cir. 1979), and Dual Mfg. & En- gineering, Inc. v. Burris Industries Inc., 619 F.2 i 660, 665 (7th Cir. en banc), cert. denied, 449 U.S. 870 (1980), we summarized the extent of the presumption of valid- ity of a patent, noting that the presumption is not con- clusive, but merely places the burden of proof on the party attacking the validity of the patent. We noted further that the presumption does not exist against evi- dence of prior art not before the Patent Office, and that even one prior art reference not considered by the Patent Office can suffice to overthrow the presumption. Even though the presumption of validity is weakened by the failure of the Patent Office to consider all per- tinent art before issuing the patent, the “degree by which it is weakened depends on a balancing of the pertinence of the newly cited art with the pertinence of the art con- sidered by the Patent Office.” Tee-Pak, Inc. v. St. Regis Paper Company, 491 F.2d 1193, 1195 (6th Cir. 1974). We now consider the various alleged claims of invalid- ity in light of these principles. A. Obviousness NBS contends that claim 7 of the ’120 patent was “ob- vious” in light of prior art patents ’800 and ’725. The obviousness bar appears in 35 U.S.C. § 103: A patent may not be obtained .. . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. The Supreme Court has set out standards for applying section 103 in Graham v. John Deere Co., 383 U.S. at 17: Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art re solved. Against this background, the obviousness or nonobviousness of the subject matter is determined. This court has consistently followed the guidelines. See, e.g., Dickey-John Corp. v. International Tapetronics Corp., 710 F.2d 329 (7th Cir. 1983); Novo Industri A/S v. Travenol Laboratories, Inc., 677 F.2d 1202, 1206 (7th Cir. 1982); Dual Mfg. & Engineering v. Burris Industries, 619 F.2d 660, 666 (7th Cir. 1980). The district court similarly followed the Graham guide- lines. First, the court determined the scope and content of the prior art patents: The patents referred to by [NBS’s expert] VanDer Linden include Nos. 1,280,192; 1,941,667; 2,775,936; 3,018,725; 3,113,615; 3,340,800. All but one of these patents discloses either a single platen roller operat- ing in a single stroke method, tandum [sic] platen rollers operating in a single stroke method, or two platen rollers operating in a single stroke, idling return method. The ’800 patent discloses a two platen roller, multiple stroke imprinter. Second, the court noted the differences between the prior art and the claims at issue: While certain elements of Claim 7 of the 7120 patent were disclosed in the prior art, the prior art com- bines none of these elements to produce the result which makes the 7120 patent ‘istinctive: selective im- printing by two platen rollers on opposite strokes. 546 F.Supp. at 352. lla Finally, although the district court made no specific finding of the contemporaneous level of skill in the perti- nent art, it is clear from the several references to that guideline in the court’s opinion that it resolved the level of ordinary skill in the art based on the expert testimony 12a and the prior art itself. Moreover, at least one expert testified that “[m]y designers would have had a very bad time” simply combining the prior art to produce the dis- puted invention. We are satisfied, therefore, that the district court followed the approved procedure in its anal- ysis of the obviousness issue. The obviousness issue presents a very close question in this case. Despite its conclusion that “Claim 7 of the 7120 patent would not have been obvious to one reason- ably skilled in the art at the time the invention was made,” the district court observed that the ’800 patent is the “closest” prior art. It discloses a two roller machine for selectively imprinting in four strokes: the first roller on the first stroke; an idling return stroke; then the sec- ond roller on the third stroke; and an idling return fourth stroke. It is distinguished from the ’120 patent princi- pally because it does not imprint in both directions, re- quiring only two strokes. In light of the ’800 patent, it would seem a logical improvement, if not an obvious one, to have designed a machine to imprint on opposite strokes.* We are persuaded, however, that the district court reached the right conclusion for two reasons. First, we are aware that a finding of obviousness might be the prod- uct of impermissible hindsight, reached without a precise appreciation of the contemporaneous level of skill in the art. See Walt Disney Productions v. Fred A. Niles Com- munications Center, Inc., 369 F.2d 230, 234 (7th Cir. 1966). Second, as Justice Stevens concluded in a similar case while a member of this court: *The NBS expert testified that it would have been “very, very obvious” to combine the prior art to produce the device disclosed in the ’120 patent. As we noted in Dual Mfg. & Engineering v. Burris Industries, 619 F.2d at 666 n. 4, however, “we cannot treat the witness as testifying as an expert witness on a disputed fac- tual matter for he was giving an opinion on the ultimate legal question for decision, that of obviousness.” 13a [A]s we read the transcript of the testimony in this case, we are impressed with the importance of having live witnesses, subject to cross-examination, explain the operation of physical exhibits in a way which enables a district judge to understand what is before him and to interrupt with proper questions when he does not understand. ... The trial judge really is in a better position to evaluate the obviousness issue than we are... . In this court it is appellant’s burden to persuade us that an intelligent district judge, who has demonstrated a thorough understanding of the relevant art, committed an error requiring reversal. Chicago Rawhide Mfg. Co. v. Crane Packing Co., 528 F.2d at 460. In this case the district court’s opportunity to base its conclusions on live testimony is critically im- portant. In its discussion of the obviousness issue, the district court made several important credibility assess- ments, specifically crediting the testimony of AM’s expert and rejecting that of NBS’s expert. Because we are 5 The testimony on which the district court relied consists of the following exchange during the rebuttal testimony of John A. Maul, AM’s sole expert witness, who for 22 years had worked as AM’s engineer designing and developing imprinters: Q. Now, during NBS’ defensive case, Mr. VanDerLinden expressed his opinion that the subject matter of Claim 7 of the Johnson patent was obvious based on the ’192 Duncan Pa- tent, the 667 Eley Patent, the ’863 Hueber Patent, the 936 Curtis Patent, the '725 Maul Patent, the 516 Johnson Patent, and the ’800 Gruver Patent. Do you agree with his position or opinion? A. No, Ido not. Q. What is your opinion? A. I find that there is no teaching how to put all of these elements together and come up with the Johnson. Q. You mean the Johnson method as set in Claim 7? A. Yes. Q. Are these patents considered collectively deficient in any respect relative to Claim 7 of Johnson? A. These patents considered collectively have no common basis where one of the roller platens prints on the left right stroke and the other prints on the right to left stroke. 14a unable to make these credibility assessments, we agree that “[t]he trial judge really is in a better position to evaluate the obviousness issue than we are,” notwithstand- ing that the issue is a legal question freely reviewable by this court. Here, the district court credited ‘“defend- ants’ expert testimony” and rejected “plaintiffs’ expert testimony. Based on the prior art and the expert testi- mony,” the court found “Claim 7 of the ’120 patent would not have been obvious to one reasonably skilled in the art at the time the invention was made.” 546 F.Supp. at 352-53. There is substantial evidence to support the court’s findings of fact, and NBS has not convinced us that the trial judge made an error of law in holding claim 7 “nonobvious”’. B. Anticipation As the district court observed, “[a]nticipation is a strictly technical defense.” Jd. at 350 (citing Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 486 F.2d 1180, 1182-83 (7th Cir.), cert. denied, 403 U.S. 942 (1971)). The defense of anticipation derives from the requirements for novelty found in 35 U.S.C. § 102(a): A person shall be entitled to a patent unless— (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent... . In Saunders v. Air-Flo Co., 646 F.2d 1201 1203 (7th Cir. 1981), this court described the strict standards for an- ticipation under section P02 (a) : “A previous patent .. . anticipates a purported in- vention only where, except for insubstantial differ- ences, it contains all of the same elements operating in the same fashion to/perform an identical function.” (quoting Popeil Bros., Inc. v. Schick Electric, Inc., 494 F.2d 162, 164 (7th Cir. 1974) ). 15a NBS contends, and the Patent Office concluded, that the Cox Patent No. 539,356 “fully anticipated” claim 7 of the ’120 patent. The district court found that the Cox patent “discloses a printing press and not a table-top imprinter as embodied in Claim 7... . Although the Cox Patent 539,356 discloses two rollers capable of printing in op- posite directions,” the court concluded, “. . . identification of the device embodied in the Cox patent as a printing press supports this court’s conclusion that there is no identity of function between the two patents, and there- fore no anticipation.” 546 F.Supp. at 350. NBS princi- pally contends that the differing embodiment of the Cox invention is “inconsequential” and furthermore is enccm- passed by Claim 7 which “does not exclude the practice of its ‘method’ with a ‘printing press’ nor limit such practice to a ‘table-top imprinter’.” We think appellant erroneously minimizes the distinc- tion drawn by the district court between the Cox printing press and the table-top imprinter. It is clear from the testimony of both parties’ experts that the Cox device was intended for printing an ink impression on a single sheet of paper rather than imprinting from embossed plates to a carbon form set. The same testimony discloses that the rotation of the rollers on the Cox device differed from those in the imprinter and that the “bed” of the printing press moved during the printing process in contrast to the stationary bed of the imprinter.® The district court cited 6 Roy VanDerLinder, appellant’s expert, was cross-examined con- cerning the Cox patent as follows: Q. Is there any such formset disclosed in the Cox patent? A. I believe it is a piece of paper in the Cox patent. Q. Itis not a formset, is that right, sir? A. That’s correct. Q. Then is it also correct that the Cox patent does not disclose the method set forth in Claim 7 of the Johnson patent and does not disclose the method which I have just recited in my previous question? [Continued } 16a this testimony in its opinion and plainly relied on the forege'ng differences between the two patents when it distinguished the Cox device as a “printing press.” Con- sidering this distinction, we can not conclude that the Cox patent “contains all of the same elements operating in the same fashion to perform an identical function” to the ’120 patent. See Saunder v. Air-Flo Co., 646 F.2d at 1203. The district court correctly held that “there is no identity of function between the two patents, and therefore no antici- pation.” 6 [Continued ] A. Yes. Q. And looking at Figure 1, does it disclose a printing press? A. Yes. Q. In the Cox Patent is there a disclosure of a single sheet of paper as contrasted to a formset as we have just been discussing? A. Yes. Q. In the Cox Patent is it a fact that a single sheet of paper is printed on both sides as contrasted to imprinting one side of a formset? A. Yes. Q. In the Cox Patent is it true that both the rollers and the bed are moving, namely, the rollers are moving in one direction and the bed moves in an opposite direction during all printing activity? A. Yes. Q. Is it true that in the Cox patent that during all the printing activities each of the rollers rotates in opposite direc- tions as indicated by the arrows within the drawings? I’m referring now to Figure— A. Yes. On redirect, VanDerLinden was asked whether he found “any reason to criticize’ NBS’s contention that the Cox patent an- ticipated the ’120 patent. The generality of the question and his answer, “No, I do not,” did little to mitigate the damage of the cross-examination or to enhance his credibility. The district court justifiably relied heavily on the cross-examination testimony. 17a D. “On Sale” Bar NBS argues that claim 7 of the ’120 patent is invalid because the invention it disclosed was “on sale” more than one year before the date of the patent application. Title 35 U.S.C. § 102(b) provides in part: A person shall be entitled to a patent unless— (b) the invention was ... in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States... . We have held that “‘[o]n sale’ does not mean an actual accomplished sale but activity by the inventor or his com- pany in attempting to sell the patented idea.” Amphenol Corp. v. General Time Corp., 397 F.2d 431, 433 (7th Cir. 1968) (quoted in Red Cross Mfg. v. Toro Sales Co., 525 F.2d 1135, 1189 (7th Cir. 1975)). In Red Cross we also allocated the proper burden of proof between the parties: When objection is asserted, the burden of establish- ing that the patented product was “on sale” before the critical date is on the objector. This burden must be satisfied by clear and convincing evidence. Once such activity has been successfully established, in- validity may be avoided by showing that the sales activity was “substantially for purposes of experi- ment.” The burden of proving experimental purpose rests with the inventor and must be met with “full, unequivocal, and convincing” evidence. 525 F.2d at 1139-40 (citations omitted). Finally, the Federal Circuit recently reviewed the proper test for de- termining whether an activity was experimental. See TP Laboratories v. Professional Positioners, Inc., 724 F.2d 965 (Fed. Cir. 1984). The court quoted at length from City of Elizabeth v. American Nicholson Pavenent Co., 97 U.S. 126 (1877) where the Supreme Court stated the following general rule: It is not public knowledge of his invention that precludes the inventor from obtaining a patent for it, but a public use or sale of it. 18a Id. at 186. The Supreme Court then set out the follow- ing general guidelines for applving the on sale provision: When the subject of invention is a machine, it may be tested and tried in a building, either with or with- out closed doors. In either case, such use is not a public use, within the meaning of the statute, so long as the inventor is engaged, in good faith, in testing its operation. He may see cause to alter it and im- prove it or not. . . . So long as he does not volun- tarily allow others to make and use it, and so long as it is not on sale for general use, he keeps the in- vention under his own control, and does not lose his title to a patent. Id. at 135. In this case, the 7120 patent application was filed on October 22, 1964. October 22, 1963, therefore, is the critical date before which the invention could not be on sale. The dispute here resolves into a single question: was there clear and convincing evidence of “activity by the inventor or his company in attempting to sell the patented idea”? While the record on appeal again presents a close question, we agree with the district court’s conclusion that “plaintiffs have not satisfied their burden of proving com- mercial activity of any kind with the requisite intention to exploit the 7120 invention.” 546 F.Supp. at 354. Four essential facts are undisputed: (1) in June of 1962 the American Association of Railroads (AAR) placed an order with AM for certain imprinters, without specify- ing imprinters embodying the ’120 invention; (2) in August of 1963 the 7120 invention was still being tested by AM engineers; (3) testing was largely completed when the product was released for factory production on Sep- tember 28, 1963;7 (4) the first actual sale of the machines ™The district court also found that “there is no evidence con- clusive on whether the designed device was reduced to practice and was capable of being produced.” The testimony of AM’s ex- pert, however, establishes that the imprinter had been thoroughly 19a to customers occurred sometime in late April or early May, 1964. There is also evidence that prior to October 22, 1943 AM had tentatively assigned at least a wholesale price to the imprinters. Absent from the record, however, is any evidence that AM disclosed to AAR the ’120 inven- tion or an imprinter embodying it. Before October 22 there is no evidence that AM even mentioned the model of imprinters it intended to ship to AAR. In sum, the evidence suggests an unusual circumstance where AM did not offer or attempt to sell its invention prior to October 22, 1963 because it already had an existing general order for imprinters. Evidence of AM’s unilateral decision to fill the order with imprinters embodying the ’120 inven- tion is insufficient to establish an attempt to sell without some evidence of relevant communications with the cus- tomer. See Red Cross Mfg. Corp. v. Toro Sales Co. 525 F.2d 1135, 1140-41 (7th Cir. 1975) (device displayed to potential customer) ; Dart Industries v. E.i. DuPont De Nemours & Co., 489 F.2d 1359, 13863 (7th Cir. 1973), cert. denied, 417 U.S. 933 (1974) (device demonstrated to numerous customers) ; Amphenol Corp. v. General Time Corp., 397 F.2d 481, 436 (7th Cir. 1968) (device was “placed ‘on sale’ by submitting a sample with a quoted price to the customer’’). It is well established that “mere existence of a sales contract is insufficient to establish a placing ‘on sale’.” Hobbs v. A.E.C., 451 F.2d 849, 859 (5th Cir. 1971) ; see also Application of Dybel, 524 F.2d 1393, 1400 (C.C.P.A. 1975) (executory contract for sale insufficient where there was no evidence that purchaser knew how invention would perform) .® tested and found operable prior to its release for factory produc- tion. This is all that is required to show reduction to practice. See CTS Corp. v. Piher int'l Corp., 593 F.2d 777, 779 (7th Cir. 1979). Despite this clearly erroneous finding, the record provides suffi- cient ground for affirming the district court’s ultimate conclusion that the invention was not on sale. 8 We do not hold that the purchaser must have actual knowledge of the invention for it to be on sale. See Application of Blaisdell, 242 F.2d 779, 783 (C.C.P.A. 1957). We merely state the obvious 20a VI. Infringement—Doctrine of Equivalents The district court found that “the NBS accused im- printers do not ‘fall clearly within the claim,’ and there is no literal infringement” of the ’120 patent. The court then applied the doctrine of equivalents and held that “the NBS imprinters are ‘the structual equivalent of the de- vice described in’ Claim 7 of the ’120 patent, and ‘perform . . . Substantially the same function, in substantially the same way, to achieve the same results, even though... [they] differ . . . in form or shape.’” Based on this finding, the district court found that the NBS imprinters infringed the ’120 patent. 546 F.Supp. at 349. NBS at- tacks this finding as “rooted in a misconception of law” which led the district court to erroneously confine its inquiry to the language of claim 7. We disagree with appellants’ characterization of the record and find no “misconception of law” on the part of the district court. The Supreme Court described the theory of the doctrine of equivalents in Machine Co. v. Murphy, 97 U.S. 120, 125 (1878) : “if two devices do the same work in substan- tially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.” (quoted and approved in Graver Mfg. Co. v. Linde Co., 339 U.S. 605, 608 (1950)). In Graver Mfg. Co. v. Linde Co. the Court also made it clear that: A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness and weight of evidence. It is to be decided by the trial court and requirement that to place an invention on sale a manufacturer or- dinarily must have some communication with its customers regard- ing sale of the invention or the device that embodies it. Zla that court’s decision, under general principles of ap- pellate review, should not be disturbed unless clearly erroneous. 339 U.S. at 609-10. Finally the Court listed several fac- tors that could influence a determination of equivalence: Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An im- portant factor is whether persons reasonably skilled in the art would have known of the interchange- ability of an ingredient not contained in the patent with one that was. Id. at 609. The district court correctly followed the foregoing guidelines in applying the doctrine of equivalents. The court did limit its inquiry with respect to determining literal infringement, but its finding of equivalence is prop- erly based on expert testimony regarding the interchange- ability of the “printing device” disclosed in claim 7 and the two embossed plates used in the NBS imprinters. The NBS imprinters print from one plate on the first stroke and a second plate on the return stroke. NBS argues that claim 7 is limited to imprinting “from differ- ent portions of the same embossed printing device” on opposite strokes. The court, however, specifically credited the testimony of AM’s expert that “at tne time the ’120 invention was developed, up to the present, the imprinting art has used printing device to mean a credit card and station plate either separately or in combination.” Thus, it is clear that claim 7 encompasses the variation prac- ticed by NBS.°® The district court, tien, correctly held ® The Federal Circuit has noted that “an invention representing only a modest advance over the prior art is given a more re- stricted (narrower range) application of the doctrine [of equiva- 22a that, despite minor variations, the NBS imprinters per- formed the same function and achieved the same results as the invention disclosed in claim 7. VII. Attorneys’ Fees and Costs The district court denied the NBS request for attorneys’ fees and costs attributable to the two patents found in- valid. The court held that, “despite the weight of the prior art, the issues of patent validity and infringement are sufficiently debatable to counsel against an award of treble damages and attorneys’ fees to plaintiffs under 15 U.S.C. § 285.” 546 F.Supp. at 364. The court repeatedly stressed the “closeness” of the case, noting “that at any time the validity and infringement of the three patents was ‘open to honest doubt.’ ”” NBS attacks this conclusion and argues principally that it is entitled to attorneys’ fees because AM committed fraud on the Patent Office by violating its duty under 37 C.F.R. § 1.56 to disclose material prior art. Under 35 U.S.C. § 285 the district court “in exceptional cases may award reasonable attorney fees to the prevail- ing party.” We have consistently held that a refusal to award costs and fees under 35 U.S.C. § 285 will not be disturbed absent an abuse of discretion. See, ¢.g., Faulk- ner v. Baldwin Piano & Organ Co., 561 F.2d 677, 685 (7th Cir. 1977), cert. denied, 485 U.S. 905 (1978); H. K. Porter Co. v. Black & Decker Mfg. Co., 518 F.2d at 1177, 1178-79 (7th Cir. 1975). Further, we have restricted awards under section 285 to “exceptional patent cases to prevent gross injustice where fraud and wrongdoing are clearly proved.” Faulkner v. Baldwin Piano & Organ Co., lents}.” Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1580 (Fed. Cir. 1983). Granting that the '120 invention is a “modest advance over prior art,” the question remains whether the NBS variations are “the same as, or an equivalent of, the im- provement claimed by the patentee.” Jd. There was substantial evidence to support the district court’s finding that the NBS im- printer was the equivalent of the '120 invention. 23a 561 F.2d at 685. Finally, we note the well-established rule that “[f]raud must be proved by clear and convincing evidence, and the party asserting it carries a heavy bur- den.” Kansas Jack, Inc. v. Kuhn, 719 F.2d 1114, 1151 (Fed. Cir. 1983). To support a finding of fraud, the court “must determine not only that the undisclosed art or in- formation was material, but that the one charged with nondisclosure knew or should have known of its ma- teriality at the time.” Jd. at 1153. In its opinion the district court considered in detail each assertion of fraud and found that NBS had failed to satisfy its heavy burden of proving deliberate misrepre- sentations by “clear, unequivocal and convincing evi- dence.” 546 F.Supp. at 354-55 (citing United States v. American Bell Tel. Co., 167 U.S. 224, 251 (1897); Scott Paper Co. v. Fort Howard Paper Co., 432 F.2d 1198, 1204 (7th Cir. 1970), cert. denied, 401 U.S. 913 (1971)). NBS fails to cite any part of the record to contradict this conclusion; particularly absent is evidence that AM knew or should have known of the materiality of the omit- ter prior art at the time of application. Under similar circumstances we have emphasized that “the district court was in the best possible position to assess attorneys’ fees . . . if it deemed it suitable to do so.” Faulkner v. Bald- win Piano & Organ Co., 561 F.2d at 685. Because NBS has not convinced us that the district court abused its discretion by refusing to award fees, we will not disturb its decision. VII. Conclusion We conclude that the district court was not bound by the findings of the Patent Office in the reissue proceed- ing with respect to patent validity and that the court cor- rectly found the facts and properly applied the law in holding that claim 7 of the patent ’120 is valid. It is neither obvious under 35 U.S.C. § 103, nor anticipated under section 102(a), nor was it on sale under section 102(b) for more than a year before the original applica- 24a tion. We conclude further that the district court properly applied the doctrine of equivalents in finding that claim 7 was infringed by the NBS imprinter. The jucgment of the district court is, therefore, affirmed and remanded for a determination of damages pursuant to the district court’s order of September, 1982.'° AFFIRMED and REMANDED. 10 In its reply brief NBS argues cursorily that the district court erred in issuing an injunction against further infringement. It now appears this issue is moot in the absence of further proceedings in the Patent Office. The patent was issued on September 13, 1966 for a 17 year term pursuant to 35 U.S.C. $154. The district court issued the injunction on September 13, 1982 but simultaneously stayed it pending this appeal. In the meantime, the patent expired on September 13, 1983 and “the right to make, the right to sell, and the right to use” the patented invention became “public prop- erty.” Brulvtte v. Thys Co., 379 U.S. 29, 31 (1964). 25a APPENDIX B IN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION No. 80 C 4915 Hon. Nicholas J. Bua, Presiding NATIONAL BUSINESS SYSTEMS, INC., et al., Plaintiffs, Vv. AM INTERNATIONAL, INC., Defendant. No. 81 C 6227 Hon. Nicholas J. Bua, Presiding NATIONAL BUSINESS SYSTEMS, INC., et al., Plaintiffs, Vv. AM INTERNATIONAL, INC., et al., Defendants. MEMORANDUM OPINION Filed August 26, 1982 This is a declaratory judgment action seeking to have letters patent Nos. 3,272,120 (“120 patent”), 3,340,800 26a (“800 patent”), and 3,763,777 (“777 patent”) held in- valid, unenforceable and/or not infringed by the manu- facture and sale of NBS imprinter Models 710 and 750 and of NBS imprinter Models 305 and 2025. The de- fendants have counterclaimed alleging willful infringe- ment of the same patents and imprinters. This action was tried to the Court between April 13, 1982 and April 28, 1982. I. General Description of the Patents The ’120 patent discloses and claims a data recorder using a two platen roller, two stroke (forward-return) method for imprinting forms from embossed printing plates or cards, such as are used in credit transactions in department stores and gas stations and in finance insti- tutions with bank cards. The data recorder disclosed in the ’120 patent has a dual platen roller arranged on a double eccentric shaft constituting a platen assembly which allows for selective imprinting of characters from the embossed plates or cards. A first platen roller is lowered and imprints on the form the first portion of characters as it rolls along the embossed plate or card, which is on the bed of the data recorder, in a left-to-right stroke of the platen carriage, which houses the platen assembly and is operated by hand. The first platen roller is then raised and a second platen roller is lowered to imprint the re- maining portion of the characters as it rolls along the embossed plate or card in a right-to-left return stroke. The ’800 patent discloses and claims a data recorder using a two-platen multiple (four) stroke method for se- lective imprinting of paper from an embossed printing device, such as is used in finance institutions for printing checks. The data recorder disclosed in the ’800 patent has a dual platen roller arranged on a double eccentric shaft constituting a platen assembly which allows for high quality imprinting of MICR characters (“Machine Ink Character Recognition”) when printing checks in accord- ance with American Bankers Association specifications 27a for E-13B magnetic code. A first platen roller is lowered and imprints only one row of characters, the MICR char- acters, and then is raised for an idling return stroke. The second platen roller is lowered and imprints other than the one row of characters imprinted by the first platen roller, and then is raised for an idling return stroke. The ’777 patent discloses and claims a two-platen roller, two stroke method for imprinting forms from embossed printing plates or cards, with independent means for ad- justing the pressure applied by the two platen rollers. The data recorder disclosed in the ’777 patent has two platen rollers mounted on separate shafts swinging inde- pendently, constituting a platen assembly which allows for selective imprinting of characters from a plastic credit card and a metal station or merchant plate. The first platen roller is lowered and imprints from the metal sta- tion or merchant plate in the right-to-left stroke. This data recorder allows for each platen roller to print with different pressure, which is desirable since one roller im- prints from a plastic credit card and the second roller imprints from a metal plate. Patent No. 3,272,120 entitled “Address Printing Ma- chines with Roller Platens” was issued on September 13, 1966, from an application filed October 22, 1964. It is assigned to the Addressograph-Multigraph Company, pred- ecessor (by change of name) to AM International (“AM’’) in the name of Dean W. Johnson. An application for reissue of the 7120 patent was filed on April 27, 1978, which was to mature as reissue Patent No. 30,470. The Patent Office rejected the 30,470 reissue application and the continuation application, Serial No. 275,764, was finally rejected on April 6, 1982. The rejection has been appealed to the Board of Appeals, by a paper filed April 12, 1981. Patent No. 3,340,800 entitled “Dual Roller Platens in Address Printing Machines” was issued on September 12, 28a 1967, from a continuation application whose parent origi- nal application was filed April 25, 1963. It is assigned to Addressograph-Multigraph Company in the names of John H. Gruver, Dean W. Johnson, and Lyle W. Seifried. Patent No. 3,763,777 entitled “Independently Adjust- able Multiple Data Recorder” was issued on October 9, 1973, from an application filed November 17, 1971. It is assigned to Addressograph-Multigraph Company in the name of Albert C. Brown. Il. The Parties, Jurisdiction and Venue The plaintiff, National Business Systems, Inc., a corpo- ration of Ontario, Canada (NBS/Canada), has a princi- pal office and place of business in Mississaugua, Ontario, Canada. Plaintiff, National Business Systems, Inc., a Delaware corporation (NBS/U.S.), is a wholly-owned subsidiary of NBS/Canada, having a principal office and place of busi- ness in Elmsford, New York, and, in addition, a place of business in Elk Grove Village, Illinois. Plaintiff, Heinrich Marketing Inc., is a Colorado cor- poration, having a place of business in Arvada, Colorado. Plaintiff George Heinrich is an individual residing in Arvada, Colorado, and is the sole owner of plaintiff Heinrich Marketing, Inc. The defendant, AM International, Inc., is a Delaware corporation, having a principal place of business in Chi- cago, Illinois. Defendant, Bartizan Corporation, is a New York cor- poration, having a principal place of business in Yonkers, New York, and is doing business within this judicial district. Defendant, Lewis Hoff, is the president of the defend- ant Bartizan Corporation, residing in New York, New York. 29a Jurisdiction exists by virtue of 28 U.S.C. § 1338(a) and 35 U.S.C. § 281, and venue is proper in this judicial district under 28 U.S.C. § 1891(c). III. Accused NBS Imprinters The following facts are undisputed regarding the ac- cused NBS imprinter Models 710, 750, 305, and 2025: 1. Each of the accused models has two platen rollers. 2. The dimensions, including the width, of each of the two platen roilers in the accused models are substantially identical. 3. On the left-to-right stroke, the first platen roller of the accused models imprints all of the lines of embossing from a plastic credit card. 4. Most plastic credit cards have at least three lines of embossed characters, only one line of which is in a machine readable font. 5. On a return right-to-left stroke, the second platen roller of the accused models imprints all of the lines of embossing from a metal merchant plate. IV. ’120 Patent Infringement Plaintiffs contend that the ’120 patent is not infringed by NBS accused imprinters under either A) literal in- fringement or B) the doctrine of equivalents. A. ’120—Literal Infringement Plaintiffs argue no literal infringement by pointing out that the accused NBS imprinters have platen rollers of substantially the same width, whereas the drawings in the ’120 patent show one narrow platen and one wide platen in an assembly designed to selectively imprint MICR characters, as specifically described in the specifica- tions of the ’120 patent. Plaintiffs also argue, according to the undisputed facts, that accused NBS imprinters use 30a two embossed printing devices, namely a credit card and a metal merchant plate, while Claim 7 of the ’120 patent describes a singular embossed printing device. Defendants contend that plaintiffs suggest an improper reading of the 7120 patent’s Claim 7, which defendants argue describes a device which can print more than one line of MICR characters with one of the platen rollers, and the claim mentions nothing about the width of the rollers in the two platen roller assembly. In addition, defendants point out that the reference to MICR charac- ters in the specification explicitly mentions other types of machine readable characters. Through their expert wit- ness, John A. Maul, defendants also argue that embossed printing “device” is used interchangeably with “devices” (R 1472-73) and in the alternative such description does not limit the operation or adaptability of the machine described in Claim 7. Plaintiffs’ argument is based on their assertion that this Court must read the language of the claim in light of the specification and the file wrapper, Graham v. John Deere Co., 383 U.S. 1, 33 (1966) ; United States v. Adams, 383 U.S. 39, 48-49 (1966). This argument is erroneous in the context of this case. The approach suggested by plaintiffs is proper to define the scope of the patent only when the claim itself is ambiguous. Deere & Co. v. In- ternational Harvester Co., 658 F.2d 1137, 1141 (7th Cir. 1981). Since there is no ambiguity on the face of Claim 7 of the ’120 patent, defendants correctly argue that the Court is to read the claim alone as the measure of the invention. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1965); Laser Alignment, Inc., et al. v. Woodruff & Sons, Inc., et al., 491 F.2d 866, 872 (7th Cir. 1974), cert. denied, 419 U.S. 874, (1974). Claim 7 of the ’120 patent read alone defines the platen roller assembly in the accused NBS imprinters and is in- fringed with respect to the platen assembly. But, since Claim 7 describes printing portions of the same printing 8la device and the accused NBS imprinters imprint off two printing devices, a credit card and a metal plate, the NBS accused devices do not “fall clearly within the claim,” and there is no literal infringement. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607 (1950). B. Doctrine of Equivalents Plaintiffs next argue that there can be no infringe- ment under the doctrine of equivalents since the accused NBS imprinters print the entirety of a credit card on one stroke and entirety of the metal merchant plate on the second return stroke. According to plaintiffs’ expert wit- ness, Roy VanDerLinden, their platen roller assembly does not need to selectively imprint portions of the same printing device because it imprints OCR (Optical Char- acter Recognition) characters which do not require selec- tive imprinting to produce the high quality of impression necessary for MICR characters (R 1009). Through Van DerLinden’s testimony (R 1028) and the testimony of plaintiffs’ other expert witness, David J. Williamowsky (R 1265), plaintiffs argue that the accused NBS im- printers: 1) do not use the invention embodied in Claim 7 of the ’120 patent, 2) are not used for the same purpose as a device described in the ’120 patent, and 3) do not achieve the same result as the ’120 patent device. Defendants contend that the accused NBS imprinters have an identity of means, operation and result with the invention claimea in Claim 7 of the ’120 patent, and that it is of no importance to the issue of infringement of the "120 patent invention whether embossed information is imprinted from one or more plates. Defendants also argue that the 7120 patent invention applies to OCR as well as MICR characters and that it benefits the imprinting of both OCR and MICR characters. The doctrine of equivalents is based on the premise that, in order to find infringement it is not necessary that all 32a possible embodiments of the invention be described or il- lustrated in the patent claim. Thus, infringement is not avoided where the alleged infringer varies the apparatus described in the specification or illustrated in the draw- ings. United States v. Adams, 383 U.S. at 49. Ellipse Corp. v. Ford Motor Co., 452 F.2d 163, 167 (7th Cir. 1971), cert. den. 406 U.S. 948, reh. den. 409 U.S. 898 (1972), Toro Co. v. R.L. Nelson Corp., 524 F.Supp. 586, 590 (C.D. Ill. 1981). The policy behind the doctrine of equivalents is the foundation on which a patent’s protec- tion and value rest. As the Supreme Court has stated, “ . . [T]o permit imiiation of a patented invention which does not copy every literal detail would be to con- vert the protection of the patent grant into a hollow and useless thing.” Graver Mfg. Co. v. Linde Co., 339 U.S. at 607. Both Maul and VanDerLinden agree that the invention disclosed in Claim 7 of the ’120 patent refers to the refine- ment of a two platen roller method of selective imprinting to a two stroke (forward-return) movement. According to Maul’s testimon,y the adaptation of the ’120 invention to a data recorder having two printing devices does not sufficiently vary the identity and means of the ’120 inven- tion to avoid infringement by equivalents (R 534). Maul further testified that, at the time the ’120 invention was developed, up to the present, the imprinting art has used printing device to mean a credit card and station plate either separately or in combination (R 1472-73). Plain- tiffs’ experts offered no contrary evidence to Maul’s testi- mony on the meaning of “printing device” in the imprint- ing art. Additionally, Willamowsky’s direct testimony that an embossed printing device means only one plate (R 1266) is contradicted by his cross-examination testi- mony, in which he admitted that the device in the ’120 patent drawings could print from two printing devices together, namely a credit card and a station plate (R 1348). 33a The difference between the “literal detail” of the singu- lar embossed printing device in Claim 7 and the two printing devices in the accused NBS imprinters is merely one of claim phraseology. Such a comparison does not address the question if identity of means, operation and result which is necessary in determining infringement by equivalents. Reese v. Elkhart Welding and Boiler Works, Inc., 447 F.2d 517, 527 (7th Cir. 1971) ; Skirow v. Rob- erts Colonial House, Inc., 361 F.2d 388, 391 (7th Cir. 1966). The Court rejects plaintiffs’ expert testimony, and accepts defendants’ expert testimony to the effect that the NBS imprinters are “the structural equivalent of the de- vice described in” Claim 7 of the 7120 patent, and “per- form ... substantially the same function, in substantially the same way, to achieve the same results, even though ... [they] differ ...in form or shape.” Machine Co. v. Murphy, 97 U.S. 120, 125 (1878); Reese v. Elkhart Welding, 447 F.2d at 527. Defendants have carried their burden of proof as to infringement. V. ’120 Patent Validity Plaintiffs attack the validity of the ’120 patent on five grounds. They assert that the patent is: A) invalid for anticipation under 35 U.S.C. § 102, B) invalid for ob- viousness under 35 U.S.C. § 103, C) unenforceable under 35 U.S.C. §§ 112, 115, 116, D) invalid for “on sale” bar under 35 U.S.C. §102(b) and, E) unenforceable for fraud on the Patent Office under 37 C.F.R. § 1.56. De- fendants assert that the ’120 patent is valid. Plaintiffs bear the burden of proving invalidity and must overcome by clear and convincing proof the presumption of validity established by 35 U.S.C. § 282. Laser Alignment, Inc. v. Woodruff & Sons, Inc., 491 F.2d at 871; Ashland Oil, Inc., v. Delta Oil Products Corp., 212 USPQ 508, 513 (E.D. Wise. 1981). A. 7120 Anticipation The Patent Office rejected Claim 7 on the reissue appli- cation for the ’120 patent as fully anticipated by the Cox 34a Patent 539,356. Plaintiffs’ expert VanDerLinden found no reason to criticize the Patent Office’s rejection of Claim 7. (R 1211). Nevertheless, VanDerLinden was unable to identify any single patent with a filing date or a publica- tion dated vrior to October 22, 1963 (one year prior to the filing date of the ’120 patent) that discloses each and every element or aspect of the method defined by Claim 7 of the ’120 patent (R 1146-47, 1150). In fact, VanDer Linden’s cross-examination testimony indicates that the Cox Patent 539,356 discloses a printing press and not a table-top imprinter as embodied in Claim 7. Despite VanDerLinden’s testimony, plaintiffs argue that defendants are bound by the Patent Office determination of Claim’s 7 invalidity, that their only recourse is to the Court of Customs and Patent Appeals (35 U.S.C. § 141) or the Circuit Court for the District of Columbia (35 U.S.C. § 145), and that this Court has no authority to disturb the Patent Office determination. Defendants ar- gue that the Patent Office determination is not binding, and assert that VanDerLinden’s testimony compels this Court to make its own finding of validity. Anticipation is a strictly technical defense. Unless all of the same elements are found in exactly the same situa- tion and united in the same way to perform an identical function, there is no anticipation. 35 U.S.C. § 102 (1976). Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 436 F.2d 1180, 1182-1183 (7th Cir. 1971), cert. denied 403 U.S. 942 (1971); Shelco, Inc. v. Dow Chemical Co., 466 F.2d 613, 614 (7th Cir. 1972), cert. denied, 409 U.S. 876 (1972). Although the Cox Patent 539,356 discloses two rollers capable of printing in opposite directions, Van DerLinden’s identification of the device embodied in the Cox patent as a printing press supports this Court’s con- clusion that there is no identity of function between the two patents, and therefore no anticipation. This is so even though the elements considered by themselves might resemble the elements in the imprinter disclosed by Claim 35a 7 of the ’120 patert. Sargent-Welch Scientific Co. v. J/B Industries, 496 F. Supp. 972, 976 (N.D. Ill. 1980). Plaintiffs argue that the Court is bound by the Patent Office’s finding of anticipation in the reissue application proceedings for the ’120 patent. This Court disagrees for two reasons. First, once a patent of invention has been granted, the Patent Office has no authority to in- validate the claims of the original patent in subsequent reissue proceedings. The Patent and Trademark Office does not regain power over the original patent’s validity when a reissue patent is applied for. When a patent has received the signature of the Secretary of the In- terior, countersigned by the Commissioner of Patents, and has had affixed to it the seal of the Patent Office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or cancelled by the President, or any other officer of the Government. United States v. Schurz, 102 U.S. 378 (1880), United States v. Am. Bell Telephone Co., 128 U.S. 315, 363 (1888). “The only authority competent to set a patent aside, or to annul it, or to correct it for any reason what- ever, is vested in the courts of the United States, and not in the department which issued the patent.” Mc- Cormick Harvesting Machine Co. v. Aultman, 169 USS. 606, 609 (1898); Johnson & Johnson v. Wallace A. Erickson & Co., 627 F.2d 57, 59 (7th Cir. 1980). A second reason the Court is not bound by the Patent Office’s findings is the fact that the time for surrender- ing an original patent in reissue proceedings occurs when the reissue patent is granted. There is no sur- render of the original patent if the reissue patent is rejected. Rather, the original patent stands as if no application had ever been made for a reissue. Allen v. Culp, 166 U.S. 501, 505 (1897); U.S. v. Marifarms, Inc., 345 F. Supp. 858, 861 (D. Del. 1972). It is true that the reissue statute as well as the Patent Office Rules require surrender of the original patent before a reissue 36a patent may be granted, 35 U.S.C. § 251; Rule 171, 37 C.F.R. § 1.171. However, 35 U.S.C. § 252, entitled “Ef- fect of Reissue,” specifically states that the surrender of the original patent does not take effect until the issuance of the reissue patent. American Tel. & Tel. Co. v. Milgo Electronic Corp., 416 F. Supp. 951 (S.D.N.Y. 1976).’ Plaintiffs have not satisfied their burden of clear and convincing proof as to anticipation of Claim 7 of the “120 patent. Therefore, this Court finds that the ‘120 patent was not anticipated. B. ’120 Obviousness The appropriate analysis for a determination of ob- viousness has been described by the Supreme Court as follows: “Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art re- solved. Against this background, the obviousness or non-obviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Graham v. John Deere Co., 383 U.S. at 17-18. Plaintiffs argue obviousness on two grounds, neither of which is accepted by the Court. First, according to plain- tiffs’ expert VanDerLinden, it would have been “very, 1 For the same reasons that this Court does not accept plaintiffs’ claim that the Court is bound by the Patent Office's rejection of the reissue application for the "120 patent, the Court refuses to accept plaintiffs’ theory that the Patent Office’s findings create a presump- tion of invalidity as to Claim 7 of the "120 patent. 87a very obvious” to substitute the double eccentric platen roller in the prior art ’800 patent (the same one that is in issue in this action, p. 20, infra.) into the data recorder embodied in the prior art Patent No. 3,018,725, which discloses one platen roller imprinting in a left-to-right stroke with an idling, raised return stroke (R 1210). VanDerLinden testified that such a combination of the ’800 patent and the 725 patent would operate in the same way producing the same results as the ’120 patent’s Claim 7. Second, plaintiffs offered other prior art patents which they claimed would make the ’120 invention obvious to a person of ordinary skill] in the art. Defendants’ expert testified that his designers would have had “a very bad time” trying to substitute the ’800 patent’s double eccentric platen roller into the device dis- closed in the ’725 patent, and that he never thought of making such a substitution at the time. This Court begins with plaintiffs’ first ground for ob- viousness: the combination of the ’800 and ’725 patents. Obviousness under 35 U.S.C. § 103 is to be determined “as of the time the invention was made.” Both parties’ experts, however, based their opinions of the obviousness of the ’800/’725 combination on experience possessed as of the time of the trial. This speculation as to the '120 patent invention’s similarity to a “particular combina- tion of elements from prior patents” constituted an im- proper use of hindsight as a test of obviousness. Holley v. Outboard Marine Corp., 241 F. Supp. 657, 665 (N.D. III. 1964), aff'd. 345 F.2d 351 (7th Cir. 1965), cert. denied 383 U.S. 934, reh. denied 384 U.S. 914, 1966); Walt Disney Productions v. Fred A. Niles Com. Ctr., Inc., 369 F.2d 230, 234 (7th Cir. 1966). Because the experts’ testi- mony was based on hindsight, it is not to be considered by this Court, and, as a result, the "120 patent retains its presumption of validity under 35 U.S.C. § 282. The strength of this presumption is weakened in this case, however, where, of the seven prior art patents presented 38a in plaintiffs’ analysis of obviousness, only one (No. 2,104,863) was considered by the Patent Office. The presumption of validity does not exist against prior art which was not considered by the Patent Office when the patent was issued. Lee Blacksmith, Inc. v. Lindsay Bros., Inc., 605 F.2d 341, 342-343 (7th Cir. 1979).? Thus, the six prior art patents not considered by the Patent Office must be made a part of this Court’s obviousness analysis. As a result, the Court now turns to plaintiffs’ second ground for obviousness: the other prior art patents. Based on expert witness VanDerLinden’s testimony, plaintiffs argue that Claim 7 of the ’120 patent would have been obvious to a person of ordinary skill in the art at the time the invention was made. VanDerLinden based his conclusion of obviousness on a “combination of the teachings of all those patents.” (R 1173). The patents referred to by VanDerLinden include Nos. 1,280,192; 1,941,667; 2,775,936; 3,018,725; 3,113,516; 3,340,800. All but one of these patents discloses either a single platen roller operating in a single stroke method, tandem platen rollers operating in a single stroke method, or two platen rollers operating in a single stroke, idling return method. The ’800 patent discloses a two platen roller, multiple stroke imprinter. Defendant expert Maul testified that these prior art patents provide no teaching for combining their various elements to yield a device using two platen rollers print- ing on opposite strokes from different portions of a printing device as set forth in Claim 7 of the ’120 patent (R 1425). Defendants offer the cross-examination testi- 2 It is, of course, true that the presumption of validity is strength- ened where the prior are relied on by the party claiming invalidity is the same as or no better than that considered and rejected by the Patent Office. Tracor, Inc. v. Hewlett-Packard Co., 519 F.2d 1288, 1292 (7th Cir. 1975). That, however, is not this case. 39a mony of VanDerLinden, where, defendants claim, it was admitted that the ’800 patent, which is the closest prior art patent, disclosed no teaching “of printing data with two rollers on opposite strokes.” (R 1169). It is well established in the Supreme Court and in the Seventh Circuit that a combination of prior art elements need not produce a synergistic effect in order for the combination patent to be valid. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, reh. den. 426 U.S. 955 (1976), Re- public Industries, Inc. v. Schlage Lock Co., 592, F.2d 963, 969 (7th Cir. 1979). Sakraida and Republic reaffirm as the test of obviousness in combination patents the analy- sis set forth in Graham v. John Deere, supra, p. 12. Re garding combinations of prior art elements, the obvious- ness test of § 103 does not turn on whether an invention is equivalent to some element in the prior art, but rather whether the difference between the prior art and the sub- ject matter in question is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art. Dann v. Johnston, 425 U.S. 219, 228 (1976). While certain elements of Claim 7 of the ’120 patent were disclosed in the prior art, the prior art combines none of these elements to produce the result which makes the ’120 patent distinctive: selective imprinting by two platen rollers on opposite strokes. This Court credits defendants’ expert testimony which found no teaching of the '120 invention and rejects plaintiffs’ expert testimony. Based on the prior art and the expert testimony, this Court finds Claim 7 of the ’120 patent would not have been obvious to one reasonably skilled in the art at the time the invention was made.’ *In light of this Court’s finding of unobviousness, it is unneces- sary to address secondary considerations of commercial success, long felt need or failure of others. See John...... 40a C. 85 U.S.C. §§ 112, 115 and 116 35 U.S.C. § 112 requires that in order to be valid, patent claims must particularly point out and distinctly claim the subject matter which the applicant regards as his invention. Rockwell v. Midland-Ross Corporation, 438 F.2d 645, 653 (7th Cir. 1971). The purposes for the precision requirements are to warn others skilled in the art against infringement, and to enable them to benefit from the teachings of the patent. Ellipse Corp. v. Ford Motor Co., 452 F.2d at 170. Plaintiffs argue that Claim 7 of the 120 patent faiis to meet this requirement. This Court disagrees. Plaintiffs offered no testimony that Claim 7 of the 7120 patent is not understandable to one of ordinary skill in the art. Rather than focusing on the precision of Claim 7, they merely assert that the patent’s specifications dis- close a narrower scope of invention than does defendants’ interpretation of Claim 7 and that such inconsistent in- terpretation reveals defendants’ failure to point out their invention. This argument misses the point of § 112. Therefore, it is insufficient to support a finding that the precision requirements of that statute have been violated, and to thus rebut the presumption of validity as to the Patent Office’s findings. Furthermore, this Court finds that defendants’ interpretation of Claim 7 of the ’120 patent necessary to find infringement is not inconsistent with the scope of the subject matter which the defendants’ inventors regard as their invention, and, therefore, that Claim 7 of the ’120 patent does not particularly point out and distinctly claim the subject matter of the invention under 35 U.S.C. § 112. Application of Cormany, 476 F.2d 998, 1000 (CCPA 1973).* * It should be noted that, even if the Court were to find that the defendants’ interpretation of Claim 7 were not sufficiently precise, a serious question would remain as to the appropriateness of apply- ing $112 in the manner suggested by plaintiff. Invalidity under § 112 is determined by the patentee’s conduct when drawing up the Ala Finally, the Court notes that plaintiffs erroneously assert invalidity under 35 U.S.C. § 115 and 116 since the inventor’s oath of the ’120 patent is included in the file wrapper and no joint inventors were involved in the 7120 patent. E. ’120 “On Sale” Bar 35 U.S.C. § 102(b) provides that a patent shall issue unless “the invention . . . was on sale in this country, more than one year prior to the date of the application for patent in the United States.” “On sale” does not mean an actual accomplished sale but activity by the inventor or his company in attempting to sell the patented idea. Amphenol Corp. v. General Time Corp., 397 F.2d 431, 433 (7th Cir. 1968). Armour Research Foundation v. C. K. Williams & Co., 280 F.2d 499, 506 (7th Cir. 1960) cert. denied 365 U.S. 811, reh. denied, 366 U.S. 941 (1961). The policy underlying the “on sale” bar is to prevent an inventor from holding back the secrets of his invention from general public knowledge while at the same time exploiting it commercially, thereby extending the duration of his legal monopoly. Koehring Co. v. National Auto- matice Tool Co., 362 F.2d 100, 103 (7th Cir. 1966). The burden of establishing that the patented product was “on sale” must be satisfied by clear and convincing evidence. Minnesota Mining & Mfg. Co. v. Kent Industries, Inc., 409 F.2d 99, 100 (6th Cir. 1969). Plaintiffs, relying on deposition testimony, argue that defendants’ in-house production and pricing documents present a prima facie case of “on sale” bar because the documents clearly show a commercial exploitation of a product sufficiently similar if not identical, to the device disclosed in Claim 7 of the ’120 patent. Plaintiffs rely patent claims and is not properly applied to the patentee’s attempt at an alleged overly broad interpretation of a patent’s claims. The latter is protected against by the doctrines of file wrapper estoppel and four corners interpretation of the claims and specifications of the patent. 42a chiefly on two of AM’s in-house documents, a “Request For Estimate and Price Quotation,” dated March 5, 1963 (PX-12A), and a “Request For Production Release,” dated August 20, 1963 (PX-12K). In cases in which com- mercial exploitation has been established prior to the critical date (one year prior to the date of the application for patent), a necessary determination must be whether the item placed “on sale” sufficiently embodied the inven- tion described in the patent in suit to invoke the bar of § 102(b). Red Cross Mfg. Co. v. Toro Sales Co., 525 F.2d 1135, 1141 (7th Cir. 1975). Exact identity is not re- quired as long as the invention is esseritially completed at the time of the invalidating sale. Dart Industries, Inc. v. E. I. DuPont DeNemours and Co., 489 F.2d 1359, 1365 (7th Cir. 1973) cert. denied 417 U.S. 933 (1974). While the basic design of the two platen roller imprinter capable of printing on opposite strokes is revealed in the defend- ants’ production and pricing documents, there is no evi- dence conclusive on whether the designed device was reduced to practice and was capable of being produced. It is for this reason that plaintiffs’ claim of on-sale bar is rejected. Under § 102(b), plaintiffs must establish that the al- leged commercial exploitation occurred before October 22, 1963. Defendants rebutted plaintiffs’ case by producing testimony from expert Maul (R 1486-1500) and witness Wasson (R 1505-1515) to the effect that the device em- bodied in Claim 7 of the ’120 patent was still in the experimental and developmental stage in the critica] time period. Specifically, defendants point to testing reports dated January 10, 1963 and August 13, 1963 (PX-121 and PX-12J). Defendants also point to a report pre- pared by R. L. Root, AM’s patent counsel who worked on the 7120 patent application. (PX-12L). PX-12L dis- closes that the “first batch” of machines (devices em- bodied in Claim 7 of the ’120 patent) had been shipped on an order for the Association of American Railroads. 43a The document was dated May 25, 1964. The documents demonstrate that modifications in the devices were being made during the relevant time period. This fact makes more onerous the burden of proving a reduction to prac- tice, one of the requirements for “cn sale’ bar. CTS Corp. v. Piher International Corp., 593 F.2d 777, 779 (7th Cir. 1979) cert. denied 444 U.S. 884 (1979). Plain- tiffs have failed to carry their burden of clear and con- vincing proof that the alleged ‘‘on sale” devices were suf- ficiently complete and similar to the device embodied in Claim 7 of the ’120 patent. While it is true that no completed cale is required, Amphenol Corp. v. General Time Corp., 397 F.2d at 433, plaintiffs have not satis- fied their burden of proving commercial activity of any kind with the requisite intention to exploit the ’120 invention. F. °’120 Fraud Plaintiffs claim that in procuring the ’120 patent, de fendants committed fraud on the Patent Office in that they 1) falsely attributed novelty to the dual-platen roller assembly in the 7120 patent, 2) falsely attributed inventorship, and 3) failed to disclose to the Patent Office the prior art of the ’800 patent (and addressing machine) and evidence of the alleged “on sale” bar. It is this Court’s conclusion that these allegations are un- supported by either the law or the facts. A claim of fraud or inequitable conduct in soliciting a patent must be based on “clear, unequivocal and con- vincing” evidence and can be asserted only if there has been a deliberate misrepresentation in the Patent Office. United States v. American Bell Tel. Co., 167 U.S. 224, 251 (1897); Scott Paper Co .v. Fort Howard Paper Co., 432 F.2d 1198, 1204 (7th Cir. 1970), cert. denied 401 U.S. 913 (1971). To provide fraud on the Patent Office, one must establish that the applicant knowingly and will- fully concealed information from that office, that the in- formation was not known to the Patent Examiner, and 44a that the information concealed was material. Columbia Broadcasting System, Inc. v. Zenith Radio Corp., 391 F. Supp. 780, 791 (N.D. Ill. 1975) affd. 5387 F.2d 896 (7th Cir. 1976); Reynolds Metals Co. v. Aluminum Co. of America, 457 F. Supp. 482, 500 (N.D. Ind. 1978), rev'd on other grounds 609 F.2d 1218 (7th Cir. 1979), cert. denied 446 U.S. 989 (1980). Plaintiff has failed to meet its burden of proof. Plaintiffs’ charge of false attribution of novelty is re- jected in light of this Court’s finding that Claim 7 of the "120 patent was non-obviousness. Similarly, plaintiffs’ claim of false attribution of inventorship is rejected. The latter argument is conditioned on limiting the ’120 inven- tion to printing only one row of MICR characters. This Court has found, however, that the ’120 invention should not be so limited. Additionally, palintiffs’ charge of fraud for defendants’ alleged failure to disclose prior art of the 800 patent and its corresponding addressing machine and of the prior art commercial Model TP addressing machine is rejected in light of this Court’s finding that Claim 7 of the 7120 patent is non-obvious. This finding is sup- ported by the rule that it is a permissible exercise of patentee’s judgment to withhold prior art on his belief that it would not affect the Examiner’s evaluation of the pending application. CTS Corp. v. Piher International Corp., 527 F.2d 95, 99-100 (7th Cir. 1975), cert. de- nied 424 U.S. 978 (1976). Finally, plaintiffs’ charge of fraud for failure to dis- close evidence of the alleged “on sale” bar is rejected by this Court’s finding that plaintiff failed to carry his bur- den of proving “‘on sale” bar. VI. ’800 Patent Infringement Plaintiffs contend that the ’800 patent is not infringed by NBS accused imprinters under either A) ilteral in- fringement or B) the doctrine of equivalents. This Court 45a concludes that the facts demonstrate neither literal in- fringement nor infringement by equivalents. A. ’800 Literal Infringement Plaintiffs contend that no literal infringement of the ’800 patent exists on three grounds. First, they point out that the accused NBS imprinters have platen rollers of substantially the same width, whereas Claim 12 of the ’°800 patent discloses one narrow platen roller to “roll along only said one row of characters, and a second platen roller dimensioned and aligned to roll along other than said one row of characters.” Plaintiffs point out that the “said one row of characters” is described in Claim 12 as containing “a series of machine recogniza- tion characters requiring a high order of impression uni- formity.” Second, accused NBS imprinters do not have a platen roller which prints only one row of machine recognization characters. Third, Claim 12 of the ’800 patent describes a singular embossed printing device. Defendants contend that the device disclosed in Claim 12 of the ’800 patent is capable of printing more than one row of characters, and also that embossed printing “device” is used interchangeably with “devices.” The disputed issue of the embossed printing device mentioned in Claim 12 of the ‘800 patent is identical to the issue of literal infringement regarding Claim 7 of the ’120 patent. See p. 5, supra. The Court’s conclusion is identical as well—the ’800 patent, like the ’120 patent, is not literally infringed by the NBS accused imprinters. B. Doctrine of Equivalents Like their argument regarding literal infringement, plaintiffs’ argument against a finding of infringement under the doctrine of equivalents is the same as that made with regard to Claim 7 of the ’120 patent. Through their experts, plaintiffs assert that the accused NBS im- 46a printers do not use the invention embodied in Claim 12 of the ’800 patent, are not used for the same purpose as a device described in the ’800 patent, and do not achieve the same result as the ’800 patent. Finally, piain- tiffs argue that defendants are estopped from arguing the doctrine of equivalents by the doctrine of file wrapper estoppel. Defendants contend that the accused NBS imprinters have an identity of means, operation and result with the invention claimed in Claim 12 of the ’800 patent, and that it is of no importance to the issue of infringement of the ’800 patent invention whether embossed informa- tion is imprinted from one or more than one row of char- acters with one of the platen rollers, that it applies to OCR as well as MICR characters, and that it benefits the imprinting of both OCR and MICR characters. While infringement is not avoided by varying the ap- paratus described in the specification or illustrated in the drawinzs of a patent, United States v. Adams, 383 U.S. at 49; Ellipse Corp. v. Ford Motor Co., 452 F.2d at 157; Toro Co. v. R. L. Nelson Corp., 524 F. Supp. at 590; infringement by equivalents requires a real identity of means, operation and result between the accused products and the allegedly infringed patent. Reese v. Elkhart Welding, 447 F.2d at 527; Skirow v. Roberts Colonicl House, Inc., 361 F.2d at 391. Defendants failed to dem- onstrate the requisite identity. In fact, defendants’ ex- pert Maul testified that he had never seen a device as disclosed in Claim 12 of the ’800 patent print more than one row of characters with one of the platen rollers (R 713-14). Further, Maul was unable to point to any pas- sage in the ’800 patent specifications which supports his testimony that the phrase “along only said one row of characters” does not exclude rolling along other rows of characters at the same time (R 753). Unlike defendants, plaintiffs provided expert testimony which fully supported their position. Plaintiffs’ experts 47a testified that the accused NBS imprinters do not operate under the same function nor for the same purpose as the ’800 invention. This Court found his testimony com- pletely credible. Additionally, plaintiffs correctly argue that defendants are estopped from arguing a function or purpose of Claim 12 of the ’800 patent which is greater in scope than that which is claimed in the file wrapper of the ’800 patent. Thus, even if their expert’s testimony were credible, which this Court does not find, defendants would still be unable to invoke the doctrine of equivalents to its full extent. Under the doctrine of “file wrapper estoppel’, an ap- plicant who has limited or modified a claim in order to avoid its rejection by the Patent Office may not later expand his claim by including the excluded matter, or its equivalents, or by omitting the limitations. Ortho Phar- maceutical Corp. v. American Hospital Supply Corp., 534 F.2d 89, 94 (7th Cir. 1976); Laser Alignment, Inc. v. Woodruff & Sons, Inc., 491 F.2d at 875. Defendants are estopped from arguing that the function of the ’800 in- vention may be interpreted as its ability to print more than one row of characters with one of the platen rollers. Defendants offer this interpretation to support their as- sertion that the purpose of the ’800 invention is not solely to solve the problem of imprinting MICR char- acters. It must be noted, however, that defendants’ ex- pert Maul testified that the problem of imprinting MICR characters was solved by the ’800 invention (R 739-40) and plaintiffs’ expert Williamowsky testified that the MICR problem cannot be divorced from the invention dis- closed in Claim 12 of the ’800 patent (R 1262). This Court believes that the latter is a proper characteriza- tion of the file wrapper history of Claim 12 of the ’800 patent. Thus, defendants’ interpretation of the function and purpose of the ’800 invention is rejected. Defend- ants’ interpretation is tantamount to arguing infringe- 48a ment under a claim (Claim 27) which was rejected in the file wrapper history. This cannot be allowed. Claim 27 falls in the category of claims which have “been nar- rowed in order to obtain the issuance of a patent by dis- tinguishing the prior art. [Such claims] cannot be sus- tained to cover that which was previously by limitation eliminated from the patent.” Graham v. John Deere Co., 383 U.S. at 33. For the foregoing reasons, defendants have failed to carry their burden of proof as to infringement. VII. ’800 Patent Validity Plaintiffs attack the validity of the ’800 patent on five grounds. They argue that the patent is: A) invalid for obviousness, C) unenforceable under §§ 112, 115 and 116, D) invalid for “on sale” bar, and E) unenforceable for fraud on the Patent Office. Defendants assert that the 800 patent is valid. A. ’800 Anticipation Plaintiffs’ expert VanDerLinden found the method dis- closed in Claim 12 of the ’800 patent anticipated in each of the Patents Nos. 1,280,192; 2,758,538; and 3,125,951. However, VanDerLinden later testified that he was un- able to identify any single patent with a filing date or a publication date prior to Aprii 25, 1962 (one year prior to the filing date of the ’800 patent) that discloses each and every element or aspect of the method defined by Claim 12 of the ’800 patent (R 1180-81). As has already been stated, p. 10, supra., there is no anticipation unless all of the same elements are found in exactly the same situation and united in the same way to perform an identical function. Jllinois Tool Works, Inc. v. Sweetheart Plastics, Inc., supra; Shelco, Inc. v. Dow Chemical Co., supra. The Lyman Patent No. 3,125,951, which embodies a device similar to the ’800 49a invention, discloses a single segmented roller printing in a single stroke, constituting a platen assembly which fails to imprint with an impression quality as high as the ’800 invention. The ’192 patent and the 538 patent disclose devices not as similar to the ’800 invention as the device disclosed in the ’951 patent. In light of these facts and of expert VanDerLinden’s contradicting testimony, this Court concludes that plaintiffs have failed to carry their burden of clear and convincing proof as to anticipation of Claim 12 of the ’800 patent. B. ’800 Obviousness According to plaintiffs’ expert VanDerLinden, it would have been obvious to one of ordinary skill in the art to use independent strokes of two platen rollers, one of which would take an impression along one row of characters and the other along the remaining rows of characters (R 1087). It is uncontested that the ’800 patent states that the difference between it and the Patent No. 2,399,849 lies in the *800 platen assembly, which rolls the platen parallel to, rather than perpendicular with, the char- acters and allows for selective imprinting of one row of MICR characters. Plaintiffs offer prior art Patents Nos. 1,280,192; 3,125,951; and 1,941,667 as teaching a combi- nation of the ’800 patent’s elements in the method of Claim 12 of the ’800 patent. The ’192 patent discloses two platen rollers printing two single strokes in a for- ward-return movement parallel to the two separate print- ing devices. The ’951 patent discloses selective imprint- ing of one row of MICR characters in a single stroke parallel miovement by a narrow platen roller segmented from a wide platen roller on a single roller. The ’667 patent discloses tandem platen rollers imprinting from either two ser-~ate printing devices or two different parts of the same pr.. ing device. A finding of obviousness is appropriate when a Court is presented with inventions that merely rearrange old 50a elements in new combinations with each element per- forming the same function it performed in the prior art. Such a finding must be made even if the new com- bination produces a more striking result than the old elements would produce functioning individually. St. Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833, 838 (7th Cir.) cert. denied 434 U.S. 833 (1977). While Claim 12 of the ’800 patent discloses an improvement in imprinting MICR characters with high quality impres- sion, the ’800 invention uses an arrangement of elements disclosed in prior art patents, albeit in a different com- bination, to produce this improved result. In light of the rule that combination patents are to be found unpatent- able if “wanting in any unusual or surprising conse- quences from the unification of the elements here con- cerned.” A&P Tea Co. v. Supermarket Corp., 340 US. 147, 152 (1950) reh. denied 340 US. 918 (1951), this Court feels that the evidence compels it to hold that the ’800 patent is invalid for obviousness.° Additional support for this Court’s finding of obvious- ness is provided by a detailed reading of the file wrapper for the ’800 patent. The file wrapper history reveals that originally the Patent Office was reluctant to allow the claims of the ’800 patent in light of the ’951 patent. Defendants were able to persuade the office to grant the 5 Defendants contend that none of the prior art patents presented by plaintiffs teach the invention embodied in Claim 12 of the ’800 patent of selectively imprinting one row of MICR characters from a single printing device in two separate strokes with two platen rollers. They point out that the '192 patent does not teach the imprinting of one row of characters with one platen roller in one stroke and the remaining characters with the other platen roller in a separate stroke from the same printing device. Additionally, the 951 patent utilized a single stroke rather than two separate strokes for imprinting one row of MICR characters, and finally, the ’667 patent discloses tandem platen rollers as opposed to two platen rollers mounted on a double eccentric shaft. Despite these distinc- tions, the combined teachings of prior art Patents Nos. ’192, ’951, ’667 and ’849 render the ’800 patent invalid for obviousness. 5la patent by pointing out that Claim 12 of the ’800 pat- ent disclosed that its device selectively imprinted sep- arate portions from the same printing device. Plaintiffs’ expert testimony, however, revealed that the ’667 patent, which was not presented to nor considered by the Patent Office, discloses imprinting of separate portions of the same printing device. As has already been stated, pp. 13-14, supra., the presumption of validity does not ex- ist against evidence of prior art not before the Patent Office. Republic Industries, Inc. v. Schlage Lock Co., 592 F.2d at 972; The Allen Group v. Nu-Star, Inc., 575 F.2d 146 (7th Cir. 1978) (per curiam). In light of this and in light of the testimony with regard to the ’667 patent, this Court finds that Claim 12 of the ’800 patent would have been obvious to one of ordinary skill in the art at the time the invention was made. C. 35 U.S.C. $§ 112, 115 and 116 Plaintiffs make identical arguments with regard to the invalidity of Claim 12 of the ’800 patent under 35 U.S.C. § 112 as they made in reference to Claim 7 of the ’120 patent. See pp. 16-17, supra. Defendants rest on the presumption of validity applied to Claim 12 of the ’800 patent, especially as to technical requirements considered by the Patent Office. This Court’s comments regarding the failure of disclosure alleged in Claim 7 of the ’120 patent are dispositive in the case of Claim 12 of the ’800 patent, which satisfies the requirement of precision set forth in § 112. See pp. 16-17, supra. Plaintiffs’ assertion of invalidity under 35 U.S.C. §§ 115 and 116 is unsupported by the file wrapper of the con- tinuation application for the ’800 patent, which properly contains the oath of the joint inventors and the joint affidavit and petition for addition of inventors. D. ’800 “On Sale” Bar As was stated earlier, p. 17, supra, “on sale” bar re- quires clear and convincing evidence of commercial ex- 52a ploitation of a device, not identical to but complete and similar to the device disclosed in Claim 12 of the ’800 patent. Plaintiffs present their prima facie case via depo- sition testimony and defendant’s in-house documents. Plaintiffs rely chiefly on an exhibit entitled “Status Re- port—Transverse Platen Arrangement Model 1900-9100 Addressograph Machines,” dated April 2, 1962 (PX-11).° Plaintiffs also rely on a document entitled “Advance Prod- uct Data For The Transverse Platen,” dated May 29, 1962 (PX-56). The latter is used to identify the Model 1900 and 9100 Addressograph Machines referred to in PX-11 as devices embodied in Claim 12 of the ’800 patent. While evidence of commercial exploitation, rather than a completed sale, is sufficient to establish a prima facie case for “on sale” bar, Amphenol Corp. v. General Time Corp., p. 17, supra., once such commercial activity has been established, in validity may be avoided by showing that the sales activity was “substantially for purposes of experiment.” Smith awi Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 256 (1887) ; Red Cross Mfg. Corp. v. Toro Sales Co., 525 F.2d at 1139. The question of whether a use of sales activity is for the purpose of experimentation is one of the inventor’s intent. Red Cross Mfg. Corp. v. Toro Sales Co., 525 F.2d at 1144; Solo Cup Co. v. Paper Machinery Corp., 240 F. Supp. 126, 131 (E.D. Wis. 1965), modified on other grounds, 359 F.2d 754 (7th Cir. 1966). The interoffice correspondence dictated by B. L. Meyers reveals the inventors’ intent to test the alleged “on sale’ devices for eight weeks after their exhibition. The prime purpose of the exhibition was to permit pros- pective customer evaluation rather than to take orders immediately and profit on the alleged “on sale” devices. “(T]he placing of an invention ‘on saie’ for experimental purposes to enable the inventor to determine whether the invention is complete and functional does not place the 6 Under § 102(b), plaintiffs must establish that the commercial exploitation occurred before April 25, 1962. Eee eee ce Be 53a invention ‘on sale’ within the meaning of the statute.” Red Cross Mfg. Co. v. Toro Sales Co., 525 F.2d at 1144; See also Dart Industries, Inc. v. E. I. DuPont De Nemours and Co., 489 F.2d at 1366. This Court concludes that de- fendants have successfully rebutted plaintiffs’ prima fcie evidence of commercial exploitation, and holds that no “on sale” bar may be found on these facts. Even if this Court were to find that defendants had failed to rebut plaintiffs’ prima facie case, it would never- theless be compelled to find that plaintiffs had failed to show by clear and convincing proof that the alleged “on sale” devices were sufficiently complete and similar to che device embodied in Claim 12 of the ’800 patent to justify a finding of “on sale” bar. This is especially true in light of the testing which took place eight weeks after the exhibition. This testing extends past the critical date of one year prior to the application date, see n.6, supra. Also, PX-56 describing the alleged “on sale” devices is dated after the critical date for “on sale” bar. E. ’800 Fraud Plaintiffs’ argument that defendants committed fraud because they failed to disclose evidence of the alleged “on sale” bar is obviated by this Court’s finding that no such bar was shown. Additionally, plaintiffs did not establish that the defendants knowingly and willfully concealed ma- terial information from the Patent Office. Columbia Broadcasting System, Inc. v. Zenith Radio Corp., supra. Plaintiffs provided no support for their allegations of in- equitable conduct, nor did they prove bad faith. Precision Instrument Mfg. Co. v. Automotive Maintenance Ma- chiney Co., supra. In sum, plaintiffs’ allegation of fraud is completely without merit. VII. ’777 Patent Infringement Plaintiffs contend that the ’777 patent is not infringed by NBS accused imprinters under either A) literal in- fringement or B) the doctrine of equivalents. 54a A. ’777 Literal Infringement This Court finds no literal infringement of the ’777 patent because the accused NBS imprinters do not clearly fall within Claims 1 and 2 of the ’777 patent. Graver Tank & Mfg. Co. v. Linde Air Products Co., supra. Claims 1 and 2 of the ’777 patent read alone do not encompass a two platen roller assembly in which the two rollers are supported by a single support rod, as embodied in the _ accused NBS imprinters (R 1125). Claims 1 and 2 of the 177 patent also do not encompass a two platen roller assembly in which one of the two separately supported - platen rollers has an extension platen, as embodied in the accused NBS imprinters. The Court is not persuaded by defendants’ attempts to contradict these observations. In fact, defendants’ expert Maul admitted that the support for the platen assembly of the NBS accused imprinters differs from that disclosed in Claims 1 and 2 of the ’777 patent (R 1377-78). On these facts, no literal infringe- ment may be found. B. Doctrine of Equivalents Plaintiffs argue first that defendants cannot discharge their burden of proving infringement since it is not pos- sible to determine what subject matter is within the scope of Claims 1-5 of the ’777 patent. Plaintiffs support this assertion by alleging invalidity of Claims 1-5 of the ’777 patent under 35 U.S.C. § 112.: In the alternative, plain- tiffs argue that even if it were possible to determine the scope of Claims 1-5 of the ’777 patent, defendants are estopped by the file wrapper history from claiming in- fringement by equivalents. It is asserted that the doctrine of file wrapper estoppel prevents defendants from claim- ing that the ’777 invention embodies anything other than two parallel platen support elements, thereby excluding from infringement by equivalents the accused NBS im- printers. PM PR. are Eg a € x f 3 ; > 5 i 55a In support of their assertion that the ’777 patent is infringed under the doctrine of equivalents, defendants contend, through Mr. Maul’s testimony, that the accused NBS imprinters have identity of means in the support yokes dangling from a single support rod and that their operation from the single support rod is the same as from the two rods embodied in Claims 1 and 2 of the ’777 pat- ent (R 654, 676). It is asserted that the other accused NBS imprinters which disclose yokes dangling from two aligned support shafts produce the same function when printing a credit card and a merchant plate, and that there exists further identity of operation between the yoke-stop assembly embodied in the accused NBS in.- printers and that disclosed in Claims 1 and 2 of the ’777 patent (R 1378). Additionally, defendants contend that the accused NBS imprinters have screws identical to those embodied in Ciaim 3 of the ’777 patent which provide for the separate and independent adjustment of the pressure applied against the printing plate by each platen roller (R676-79). Finally, defendants argue that the accused NBS imprinters produce substantially the same imprint- ing result as the device disclosed in Claims 1-3 of the ’777 patent. As was stated earlier, p. 22, supra., infringement by equivalents is not avoided by varying the apparatus de- scribed in the specification or illustrated in the drawings of the patent. United States v. Adams, supra, Ellipse Corp. v. Ford Motor Co., supra., Toro Co. v. R. L. Nelson Corp., supra. Plaintiffs must fail in their argument that the absence of similar literal detail in the two platen roller support rods in Claims 1 and 2 of the ’777 patent and the accused NBS imprinters precludes infringement by equivalents. This Court is persuaded by the testimony of defendants’ expert which established identity of means, operation and result between the ’777 invention and the accused NBS imprinters. Reese v. Elkhart Welding and Boil Works, 56a Inc., supra. Skirow v. Roberts Colonial House, Inc., supra. Both experts Maul and VanDerLinden agree and this Court finds that the significant element of the ’777 inven- tion discloses the separate and independent means of ad- justing the pressure of each platen roller (R 804-5, 1023). .nis element is fully embodied by the accused NBS im- printers. Plaintiffs also attempt to argue the doctrine of file wrapper estoppel. File wrapper estoppel traditionally pre- cludes employing equivalents to enlarge patent claims to include areas explicitly abandoned before the Patent Office. See p. 23, supra. The claims made now were not abandoned before the Patent Office, but rather were fully part of the application as submitted. As © result, an estoppel theory does not apply. Claims 1-3 of the ’777 patent cover the accused NBS imprinters and “may fairly be called the equivalent of the ones described” in the accused NBS imprinters. Laser Alignment, Inc. v. Wood- ruff & Sons, Inc., 491 F.2d at 875, Dole Valve Co. v. Perfection Bar Equipment, Inc., 298 F. Supp. 401, 406 (N.D. Ill 1968), aff'd 419 F.2d 968 (7th Cir. 1969). For the foregoing reasons, this Court concludes that de- fendants have carried their burden of proof as to infringe- ment. IX. 777 Patent Validity Plaintiffs attack the validity of the ’777 patent on four grounds. They argue that it is: A) invalid for obvious- ness, B) unenforceable for failure of disclosure, C) un- enforceable for fraud on the Patent Office, and D) un- enforceable for failure to disclaim Claims 4 and 5 pursuant to 35 U.S.C. §§ 253 and 288. A. 777 Obviousness Based on the testimony of expert VanDerLinden, plain- tiffs argue that a person of ordinary skill in the art at the time the invention was made would have found it 57a obvious to assemble an imprinter of the type disclosed in Claims 1-3 of the ’777 patent. Plaintiffs argue that Patent No. 3,410,207 discloses an automatic yoke-stop asseanbly which activates an idling, raised return stroke of a single platen roller, as embodied in Claims 1 and 2 of the ’777 patent and applied to the movement of the first platen roller. Further, plaintiffs point out that the ’T77 patent itself mentions the ’120 patent as prior art for a two platen roller, double stroke imprinter. Addi- tionally, plaintiffs argue: 1) that Patent No. 3,556,007 discloses independently adjustable platen rollers; 2) that Patent No. 3,661,080 discloses the concept of independ- ently adjustable platen rollers placed parallel to each other; and 3) that Patent No. 3,577,917 discloses a spring- screw assembly for adjusting a single platen roller, which is shifted from one printing path to another in a forward- return, double stroke. Finally, plaintiffs’ expert VanDer Linden testified that he observed the features of Claims 1-3 of the ’777 patent in combination in these various prior art patents. As established in the previous obviousness analyses, pp. 25-27, supra., a patent combining elements present in the prior art is patentable only after close scrutiny reveals a new or different function of the invention as a whole, A&P Tea Co. v. Supermarket Corp., supra. The presump- tion of validity attached to the combination patent may only be overcome by prior art which teaches the patent’s combination of elements. This Court is persuaded by plaintiffs’ expert VanDerLinden’s testimony that the teaching of the combination of the elements embodied in Claims 1-3 of the ’777 patent could be found in the prior art patents. His testimony regarding the ’777 invention is not based on improper hindsight, but rather is based on the prospective of “a hypothetical person” having all of the prior art at hand and having ordinary skill in the art at the time the invention was made. Popiel Brothers, Inc. v. Schick Electric, Inc., 494 F.2d 162, 167 (7th Cir. 58a 1974), Gass v. Montgomery Ward, 387 F.2d 129, 130 (7th Cir. 1967). VanDerLinden’s testimony is supported by evidence of prior art patent (Patents Nos. ’007, ’207 and ’917) not considered by the Patent Office when it issued the ’777 patent and hence unaffected by the patent’s presumption of validity. See Blacksmith, Inc. v. Lindsay Bros., Inc., pp. 13-14, supra. While it is true that the ’080 patent (the fourth prior art patent on which VanDerLinden’s testimony was based) was considered insufficient by the Patent Office to render the ’777 invention invalid because the ’080 patent disclosed tandem platen rollers printing at the same time, nene of the Patents Nos. ’007, ’207 or ’917 were considered by the Patent Office. This Court accepts VanDerLinden’s characterization of the means and operation of each of these prior art patents. The Court is especially persuaded by testimony regarding the 917 patent, which discloses every element disclosed in Claims 1-3 of the ’777 patent except the two platen rollers situated side-by-side, which the preamble to the ’777 pat- ent acknowledges as taught in the 7120 patent. In light of the new prior art considered and the credible testimony of plaintiffs’ expert, this Court finds the combination of old elements embodied in Claims 1-3 of the ’777 patent to be “the work of the skilled mechanic, not that of the inventor.” Hotchkiss v. Greenwood, 52 U.S. 248, 266 (1851). Thus, plaintiffs have satisfied their burden of proof as to obviousness.’ 7 Defendants argue that: 1) the ’207 patent discloses no means for adjusting pressure of the single platen roller; 2) the ’120 patent discloses no independent means for adjusting pressure of each of the two platen rollers; 3) the ’007 patent discioses a stationary double platen roller with no independent means for supporting each platen roller; 4) the ’080 patent discloses two tandem platen rollers which print in one stroke; and 5) the ’917 patent discloses a single platen roller which naturally has nothing to do with separate means for supporting two platen rollers. Defendants further con- tend that none of the prior art patents teach the combination of 59a B. ’777 Failure of Disclosure Plaintiffs argue that Claims 1, 2, 4 and 5 of the ’777 patent fail to recite the subject matter which the applicant regarded as his invention and are therefore invalid under the second paragraph of 35 U.S.C. § 112. Based on the testimony of expert Williamowsky, plaintiffs assert that defendants failed to provide antecedent definitions for the terms used in Claim 1 of the ’777 patent and that the "777 patent specifications do not clearly support Claims 1-5 of the ’777 patent (R 1289, 1291-1319). Additionally, based on the testimony of expert VanDerLinden, plaintiffs allege that Claims 1-5 of the ’777 patent fail to set forth an enabling description of the ’777 invention as required in the first paragraph of 35 U.S.C. § 112 (R 1021). Be- cause this Court believes that plaintiffs have failed to prove that defendants violated the requirements of 35 U.S.C. § 112, plaintiffs argument that the ’777 is invalid for failure of disclosure is rejected. As has already been stated, pp. 16-17, supra., 35 U.S.C. § 112 requires that in order to be valid, patent claims must particularly point out and distinctly claim the sub- ject which the applicant regards as his invention. Rock- well v. Midland-Ross Corp., 438 F.2d at 653. Ambiguous, indefinite and vague patent claims are void. Ellipse Corp. v. Ford Motor Co., 452 F.2d at 170. Plaintiffs’ argument that Claims 1, 2, 4 and 5 of the ’777 patent fail under the second paragraph of § 112 to recite any means for adjust- ing the printing pressure of any platen, independently or otherwise, assumes that § 112 requires each claim to recite every aspect of the claimed invention. There is no such requirement, and Claim 3 of the ’777 patent is sufficient to disclose the independent pressure 2djustment means which inventor Brown regarded as his invention. elements embodied in Claims 1-3 of the ’777 patent. Despite these distinctions, the combined teachings of the prior art Patents Nos. ’207, ’007, 080, ’120 and ’917, render the ’777 patent invalid for obviousness. 60a Furthermore, the testimony of plaintiffs’ own expert Williamowsky is rejected as improper hindsight not based on the perspective of one of ordinary skill in the art at the time the invention was made. As established in the earlier analysis of § 112, the proper application of the § 112 precision requirement is at the time the patent claims were written. In contrast, this Court is persuaded by the testimony of defendants’ expert Maul to the effect that a person of ordinary skiil in the art would, at the time of the invention, find Claim 1 of the ’777 patent understandable, see § 112 (first paragraph) ; Application of Edwards, 568 F.2d 1349, 1852 (CCPA 1978) ; Applica- tion of Hawkins, 486 F.2d 569, 574 (CCPA 1973). It is, therefore, this Court’s conclusion that the § 112 precision requirement is satisfied. Plaintiffs also allege that the ’777 invention is non- enabling. This Court accepts Maul’s testimony and Van DerLinden’s cross-examination testimony which agree that the pressure adjusting screws do affect an adjustment of pressure on each platen roller independently. VanDer Linden’s direct testimony as to plaintiffs non-enabling argument is rejected as contradicted by his cross-examina- tion testimony. The Patent Office twice rejected the claims and drawings in the ’777 patent application under § 112 before allowing them, and such evidence in the file wrapper history strengthens the presumption of validity of Claims 1-3 of the ’777 patent. Plaintiffs have failed to satisfy their burden of proof as to invalid’ty under § 112. C.. °777 Fraud Plaintiffs first argue that defendants acted fraudulently when they did not. inform the Patent Office Examiner that Claims 1-3 of the ’777 patent did not satisfy the second paragraph of 35 U.S %. § 112. As with many of defend- ants’ allegations of fraud, the latter is obviated by this Court’s finding that Claims 1-3 fully satisfy the statutory precision requirements. Ree Re eR ee he a a Bed a a a Oa as ey 6la Plaintiffs next argue that defendants acted fraudulently in failing to disclose the ’007 prior art patent. In the absence of clear and convincing proof of “wrongfulness, willfulness, or bad faith,” Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. at 814-815, it is a permissible exercise of a patentee’s judg- ment to withhold prior art which the patentee believes would not affect the Examiner’s evaluation of the pending application. CTS Corp. v. Piker Internationai Corp., 527 F.2d at 99-100. Plaintiffs have failed to offer clear and convincing proof of bad faith by defendants in not dis- closing the ’007 patent, and therefore plaintiffs have failed to carry their burden of proof as to fraud. D. °’777 Fraud for Failure to Disclaim Plaintiffs argue that defendants engaged in inequitable conduct amounting to fraud when they failed to disclaim Claims 4 and 5 of the ’777 patent, which defendants re- moved from their infringement claim prior to trial. Plaintiffs argue that the failure to disclaim Claims 4 and 5 of the ’777 patent constituted improper conduct which requires the Court to dismiss the defendants’ infringe- ment action as to all the claims of the ’777 patent. 35 U.S.C. § 288 provides that: “Whenever, without deceptive intention a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs unless a disclaimer of the invalid claim has been entered at the Patent and Trademark Office before the com- mencement of the suit.” Based on this statutory provision, it has been held that “invalidity of any part of a patent will dvfeat the entire patent unless (1) the invalid portion was claimed through inadvertence, accident, or mistake, and without any fraud- ulent or deceptive intention, and (2) is disclaimed without 62a unreasonable neglect or delay.” Strong v. General Electric Co., 484 F.2d 1042, 1045 (5th Cir. 1970). It is on the basis of this rule of law that plaintiffs argue that de- fendants’ infringement action must be dismissed as to all claims of the ’777 patent. This Court rejects plaintiffs’ argument for two reasons. First, Cle‘ms 4 and 5 of the ’777 patent are not in con- troversy .n this case since uefendants have never made a specific charge of infringement under them. Second, dismissal of the action is not appropriate where, as here plaintiffs have failed to prove bad faith or «*ceptive in- tention on the part of defendants in procuring the patent from the Patent Office.* In the abscence of clear and convincing proof of bad faith, imperfect preparation in failing to drop Claims 4 and 5 from dependants’ infringe- ment suit does not require invalidation of the ’777 patent under § 288. Conclusion Defendants have requested treble damages and attor- neys’ fees pursuant to 35 U.S.C. §§ 284 and 285, alleging willful infringement by plaintiffs. Because this is a close case, and only one of defendants’ three patents has been found to be valid and infringed, it must be said that at any time the validity and infringement of the three pat- ents was “open to honest doubt’ and that, as a result, defendants have not proven that plaintiffs acted in a bad faith belief that the patents were invalid. IJnterna- tional Mfg. Co. v. Landon, Inc., 336 F.2d 723, 728 (9th Cir. 1964) cert. denied 379 U.S. 988 (1965), Artmoore Co. v. Dayless Mfg. Co., 208 F.2d 1, 5, cert. denied 347 U.S. 920 (1954) (7th Cir. 1953). Defendants admitted the closeness of the technology in the art by citing a low level of technological content in data recorders in their 8 Under § 288, the relevant question is whether bad faith or deceptive intention were present at the time of procurement of the patent from the Patent Office. Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 275 €D. Del. 1972). 63a 1980-84 growth p [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385017_2520%3A2. Public record. Not legal advice.