# General Tire & Rubber Co. v. Firestone Tire & Rubber Co.

> District Court, N.D. Ohio · October 3, 1972 · 349 F. Supp. 345

URL: https://www.frixlaw.com/law-library/cases/1501841

## Case

- **Full name:** The GENERAL TIRE & RUBBER COMPANY, Plaintiff, v. the FIRESTONE TIRE & RUBBER COMPANY, Defendant; The FIRESTONE TIRE & RUBBER COMPANY, Plaintiff, v. the GENERAL TIRE & RUBBER COMPANY, Defendant
- **Court:** District Court, N.D. Ohio
- **Decided:** October 3, 1972
- **Citations:** 349 F. Supp. 345
- **Precedential status:** Published
- **Opinion:** Opinion by Battisti
- **Judges:** Battisti
- **Cited by:** 10 later opinions in the Frix Law Library

## Citator (automated)

- **Yellow flag:** Modified by GENERAL TIRE & RUBBER COMPANY v. Firestone Tire & Rubber Company, 351 F. Supp. 872 (1972).
- Negative treatments: 1
- Distinguished by: 0
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/1501841

## Opinion text

MEMORANDUM OPINION AND ORDER
BATTISTI, Chief Judge.
This is a rather complex patent case, perhaps the most protracted in existence anywhere in the world.
1
At issue is a patent on the invention of tire treads and tread stock made from very tough synthetic rubber to which large amounts of oil have been added to increase the yield and to improve processability. Since 1950 it has been known in the trade as oil-extended rubber (OER). The issues in this case are set out in Findings 13-16. Three representative stocks (Stock A, Blend 2, and Blend 5) are charged with infringement of ten representative claims (1, 8-5, 7, 13, 14, 17-19, and 22). Firestone has defended on the grounds of non-infringement, invalidity, license, and unenforceability. As this opinion and the accompanying findings of fact and conclusions of law indicate, this Court has rejected each and
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every one of Firestone’s defenses; and judgment will be entered in favor of the General Tire and Rubber Company.
Findings 17-21 set out the history of the patent in the Patent Office and the proceedings before Judge Holtzoff. General Tire & Rubber Co. et al. v. Watson, 184 F.Supp. 344 (D.D.C.1960). This patent was originally allowed by the Patent Office examiner whose area of expertise was directly related to the subject matter of the invention,
viz,
pneumatic tire treads. Invention was found by Judge Holtzoff after a full adversary attack on the invention, not only by the Patent Office but also what appears to be an unprecedented attack by the Department of Justice.
A statutory presumption of validity attaches to a patent upon its issuance and the burden of establishing invalidity is imposed upon the party attacking it. It is Firestone’s burden to overcome this presumption by clear and convincing evidence, and every reasonable doubt should be resolved in favor of a finding of validity. 35 USC § 282 ; Cantrell v. Wallich, 117 U.S. 689, 695-696 , 6 S.Ct. 970 , 29 L.Ed. 1017 (1885); The Barbed Wire Patent, 143 U.S. 275, 285 , 36 L.Ed. 157 (1891); Mumm v. Decker & Sons, 301 U.S. 168, 171 , 57 S.Ct. 675 , 81 L.Ed. 983 (1937); Frohoek-Stewart, Inc. v. Reed-Cromex Corp., 254 F.Supp. 120, 122-123 (N.D. Ohio 1966); Simplicity Mfg. Co. v. Quick Mfg., Inc., 355 F.2d 1012, 1014 (6th Cir. 1966); H. K. Porter Co., Inc. v. Goodyear Tire & Rubber Co., 163 USPQ 106 , 114 (N.D.Ohio 1969), aff’d 168 USPQ (6th Cir. 1971); Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 106 F.2d 554, 557 (6th Cir. 1939).
This presumption is strengthened by the fact that invention was found after extended prosecution in the Patent Office and thereafter a full federal court adversary proceeding. Hildreth v. Mastoras, 257 U.S. 27, 32 , 42 S.Ct. 20 , 66 L.Ed. 112 (1921); Cincinnati Butchers’ Supply Co. v. Walker Bin Co., 230 F. 453, 454 (6th Cir. 1916); Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828, 837 (6th Cir. 1956), cert. den., 352 U.S. 891 , 77 S.Ct. 128 , 1 L.Ed.2d 86 (1956); United States Plywood Corp. v. General Plywood Corp., 230 F.Supp. 831, 837 (W.D.Ky.1964), aff’d, 370 F.2d 500 (6th Cir. 1966), cert. den., 389 U.S. 820 , 88 S.Ct. 39 , 19 L.Ed.2d 71 (1967). Judge Holtzoff heard many of the same witnesses, considered the primary prior art references, and the main prior use defenses presented here by Firestone. None of this prior art was found to be an anticipation or to make the invention obvious.
Findings 22-62 describe the art to which the invention relates. They describe the technology and terminology necessary to the understanding of the invention and the prior art. They also describe the man who is skilled in the relevant art and the state of the art at the time of the invention. In short, they provide the proper starting point for the resolution of technical issues and the determination of invention. Graham v. John Deere Co., 383 U.S. 1, 17 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966); American Stove v. Cleveland Foundry Co., 158 F. 978, 984-985 (6th Cir. 1908); Kohn v. Eimer, 265 F. 900, 902-903 (2d Cir. 1920); Nickerson v. Bearfoot Sole Co., 311 F.2d 858, 869-870 (6th Cir. 1962), cert. den., 375 U.S. 815 , 84 S.Ct. 48 , 11 L.Ed.2d 50 (1963); Sanford v. Kepner, 99 F.Supp. 221, 226 (D.Pa.1951), aff’d 195 F.2d 387 (3rd Cir. 1951), 344 U.S. 13 , 73 S.Ct. 75 , 97 L.Ed. 12 (1952); Minnesota Mining & Mfg. Co. v. Carborundum Co., 155 F.2d 746, 749 (3rd Cir. 1946).
Findings 63-79 set out the circumstances surrounding the invention and its advance over the prior art. These circumstances not only contradict Firestone’s allegations that the invention was derived from others and falsely presented to the Patent Office, but are themselves evidence of unobviousness. They have provided valuable assistance in the determination of invention. Judge Hand expressed this fact in Safety Car Heating
*351
& Lighting Co. v. General Electric Co., 155 F.2d 937, 939 (2d Cir. 1946):
“Substantially all inventions are for the combination of old elements; what counts is the selection, out of all their possible permutations, of that new combination which will be serviceable. No objective standard is practicable. . . Courts, made up of laymen as they must be are likely either to underrate, or to overrate, the difficulties in making new and profitable discoveries in fields with which they cannot be familiar; and so far as it is available, they had best appraise the originality involved by the circumstances which preceded, attended and succeeded the appearance of the invention.”
Judge Iloltzoff was of this view. While he recognized that the manner in which an invention is made is not determinative of patentability ( 35 U.S.C. § 103 ), he stated, at 184 F.Supp. at 347 :
“The fact, however, that the discovery was made accidentally by a person skilled in the art, while others had been working to find other ways and means to achieve the same objective, namely, to increase the supply of usable rubber, would seem, to some extent at least, to negative the contention that the invention was obvious.”
The reaction of the industry to the invention is well known. Their reaction strengthened the statutory presumption of validity and negated. Firestone’s allegations that the invention was obvious and that its product was inferior to the prior art. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 56 , 43 S.Ct. 322 , 67 L.Ed. 523 (1922); Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 106 F.2d 554, 558 (6th Cir. 1939); Ekco Products Co. v. Chicago Metallic Mfg. Co., 321 F.2d 550, 553-554 (7th Cir. 1963), cert. den., 375 U.S. 970 , 84 S.Ct. 490 , 11 L.Ed.2d 418 (1964). Indeed, Firestone was among the leaders in first expressing doubt, then extolling the surprising virtues of the invention. As Mr. Justice Graham said in his learned opinion in the English case (GX 2520, p. 60) :
“It is indeed unusual, if not unprecedented, to find in a patent action such a tribute from a defendant to the excellence of a plaintiff’s product and process.”
As in United States v. Adams, 383 U.S. 39 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966), here we have the classic indicia of invention: (a) a novel combination of elements, each old in itself, but combined in a manner counter to and discouraged by the teachings of the art, to produce a surprising result; (b) initial disbelief and skepticism by those skilled in the art; (c) followed by universal adoption of the invention, revolutionizing the art and producing great economy.
The claimed invention against which the prior art is to be measured is set out in Findings 91-96. Graham v. John Deere Co., 383 U.S. 1, 17 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966).
While the claims of a patent limit the invention, and the specification cannot be utilized to expand the patent monopoly, it is fundamental that the claims of a patent are to be construed in light of the specification and both are to be read with a view to ascertaining the invention. United States v. Adams, 383 U.S. 39, 49 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966).
The claimed invention is a product (tire treads and tread stock). It consists of the novel, interacting combination of elements. The controlling legal principles are straightforward:
Even if the elements of a combination are individually old, a combination constitutes a patentable invention when it is novel, the elements have a new or different interdependent functional and cooperative relationship, and the bringing together of the elements as taught by the patent in suit was unobvious in the light of the prior art. United States v. Adams, 383 U.S. 39, 51-52 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966); Maytag Co. v. Murray Corp.
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of America, 318 F.2d 79, 81 (6th Cir. 1963). A new combination of old elements whereby an unexpected result is obtained (or even an old result is obtained in a more economical or efficient way) constitutes patentable invention. Webster Loom Co. v. Higgins, 105 U.S. 580, 591 , 26 L.Ed. 1177 (1882); Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U.S. 428, 443 , 31 S.Ct. 444 , 55 L.Ed. 527 (1911); National Latex Products Co. v. Sun Rubber Co., 274 F.2d 224, 239 (6th Cir. 1959), cert. den. 362 U.S. 989 , 80 S.Ct. 1078 , 4 L.Ed.2d 1022 (1960); Firestone v. Aluminum Co. of America, 285 F.2d 928, 930 (6th Cir. 1960); FMC Corp. v. F. E. Meyers & Bro. Co., 384 F.2d 4, 8-9 (6th Cir. 1967), cert. den., 390 U.S. 988 , 88 S.Ct. 1183 , 19 L.Ed.2d 1291 (1968); Great Lakes Equip. Co. v. Fluid Systems, Inc., 217 F.2d 613, 617 (6th Cir. 1954).
As will be seen, all of Firestone’s defenses cannot stand the light of day. Even more so is Firestone’s argument to the effect that there is no invention. Firestone urges that there is no invention because an unpatented but new product (OER masterbatch) was used in known and exclusively used processes to obtain a known end product (tire treads and tire tread stock). This argument misses the point by a mile and is particularly specious, because no one knew that the end product — OER tire treads and tire tread stock — could be utilized feasibly and would result in a better synthetic rubber tire.
2
In this connection and for the technology involved, see Finding 95 which articulates Claim 14 defining the tire tread composition.
There is no real question of infringement. Firestone’s defenses in this regard amount to no more than nit-picking semantics. See Robertson Rock Bit Co., Inc. v. Hughes Tool Co., 176 F.2d 783, 786 (5th Cir. 1949).
Firestone says it does not infringe because the Mooney of the rubber it used was not shown by analysis of a vulcanized tire tread. There is no basis in law for this assertion and, in fact, the Mooney cannot be directly shown by such analysis. General has proven directly, beyond doubt or even challenge, the Mooney of the rubber used by Firestone in making its infringing products. It is unreasonable to read the claims otherwise.
Firestone says that the rubber in its FR-S 184 has no raw Mooney because at all times prior to the addition of oil to the rubber it is in the form of a latex upon which no Mooney can be measured. With all respect, this argument is specious. Firestone regularly coagulates this latex and measures the Mooney of the coagulum as a part of its production controls for FR-S 184. Dr. Semon referred to the Mooney of latices in his testimony meaning, as he pointed out, the Mooney of the polymer when coagulated. This is obviously the intent of the claims.
Firestone says Dr. Semon’s tests showed that its FR-S 184 did not meet the polymer characterization test set out in claim one.
3
This argument hardly need be discussed. Semon’s preliminary tests using HAF black and a hydrocarbon oil showed the polymer of FR-S 184 to be well above the 60 Mooney limit set out in claim one. Even though Firestone took care not to repeat precisely any of the infringement tests performed by General,
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the net effect of Semon’s preliminary tests was to confirm infringement.
Firestone did not present any of Semon’s preliminary tests to the Court. Those it did present were designed for failure, not fairness. Semon used oils that were not recommended for use in tread compounds and which he had never heard of as being so used. His blacks were not of the type called for in the claim one test. The tests, using high and low structure blacks which were not in existence until after 1960, were excluded at the trial. Those using high modulus furnace black are not in compliance with the claim one requirement that the black be high abrasion furnace black and are therefore irrelevant.
Firestone says it does not infringe Claims 18, 19, or 22 because they call for the rubber to be substantially unmasticated or unbrokendown. Again Firestone relies on semantics. It is clear from the patent that some working is necessary in order to incorporate the carbon black and other ingredients, but no more than was used in the prior art. In other words, according to this claim language and the invention, there should be and need be no excessive mastication or breakdown such as was used by the Germans to degrade the rubber to the point of processability.
Conspicuously, Firestone makes no attack on General’s direct proof of the raw Mooney, oil content, black content, extrusion Mooney values, or mixing procedures used by Firestone. In most instances, these facts have been agreed to by Firestone. They are the facts which are material to and constitute proof of infringement.
The parties are at issue over the status of some 51 alleged prior art references as prior printed publications. The first category of disputed references consists of documents which originated under the government synthetic rubber program: the CD Reports, AU Reports, Technical Committee Reports, and Tire Test Reports. The AU Reports may be disposed of summarily. They originated in the government laboratories at Akron University and were found in the files of Rubber Reserve after this suit began. There is no showing that they were distributed, even to the other participants in the government synthetic rubber program. So far as has been shown, they were merely internal government papers, clearly not publications.
The CD Reports, Technical Committee Reports, and Tire Test Reports may be considered together. They were distributed to a limited number of named individuals participating in the government program, according to fixed distribution lists. They were not available to the general public, but were subject to secrecy agreements between Rubber Reserve and the participants in the rubber program.
A distribution to a limited group with an injunction to secrecy is not publication within the meaning of 35 U.S.C. § 102 . In Badowski v. United States, 164 F.Supp. 252, 255 (Ct.Claims 1958), the Court held that:
“The statutory language, ‘printed publication,’ implies that numerous copies were printed and made accessible to the general public.”
In Ex parte Suozzi, 125 USPQ 445 , 446-447 (P.O.Bd.App.1959), it was held that a government report restricted to use for governmental purposes was not a disclosure to the public and therefore not a printed publication under 35 U.S.C. § 102 :
“We will first refer to the aforementioned distribution list appearing on the last page of the reference report. From the tenor of said list, each of the entities named thereon would appear to be a regular governmental installation, or an individual in regular governmental service, either military or civilian, named as a recipient of a copy of the report because of some relation of the subject matter of the latter to work of said entity. Hence, it seems clear to us that the report is one of an internal organizational character and that each of the aforesaid entities, in receiving a copy of the report, would
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be doing so in an official capacity and not as a part or member of the general public. On this basis we see no establishment of publication for the reference report merely by the distribution thereof, in and of itself, denoted on said list. . . .
“The distribution list of said report, and particularly when read together with the notation in question, shows that at the time of its formulation . said report was intended for and given but limited distribution, and this as we have pointed out only of an official nature. In the light of these circumstances, we can reasonably conclude only that the ‘other requesters' of the involved notation were likewise to have some official capacity for access to a copy of the report.”
In Dow Chemical Co. v. Williams Brothers Well Treating Corp., 81 F.2d 495, 499 (10th Cir. 1936), the Court held:
“The proof is convincing that this was a private report to one entitled to the services of the Institute; it was never published and is not therefore a ‘printed publication.’ See United Chromium v. General Motors Corporation, 11 F.Supp. 694 (D.C.Conn.), in which the authorities are gathered.”
See also, Rayonier Inc. v. Georgia-Pacific Corp., 156 USPQ 110, 126 (W.D.Wash. 1967).
Documents which are the subject of secrecy agreements and classified as “Restricted” cannot be anticipatory prior art. In Ex parte Harris, 79 USPQ 439 , 440 (1948), the Commissioner of Patents considered the status of reports circulated among participants in a wartime government-sponsored research program, and subsequently released to the public. He stated:
“It is immaterial that copies of the report were in the hands of members of the group at the time of declassification, the test is whether this material was freely available to the public at large immediately following the decision to declassify. ...”
In
Harris ,
as here, the participants in a government-sponsored research program (there penicillin, here rubber) were subject to contractual obligations against divulging technical information generated under the program to the general public. There is no showing here that these contractual obligations terminated prior to the filing of General’s patent application.
None of the CD, Tire Test, or Technical Committee Reports meets the legal standards required of printed publications. None is prior art under 35 U.S.C. § 102 .
The second classification of disputed references is the microfilms of captured German documents. The first question is whether they meet the statutory requirement that a reference be “printed” ( 35 U.S.C. § 102 ). The leading case, Application of Tenney, 254 F.2d 619, 627 (C.C.P.A.1958), has answered the question in the negative; a microfilm is not printed and not prior art:
“While microfilming furnishes a means of multiplying copies, there is no probability, from a mere showing that a microfilm copy of a disclosure has been produced, that the disclosure has achieved wide circulation and that, therefore, the public has knowledge of it. The nature of present day microfilm reproduction differs from normal printing methods. Though one would be more likely than not to produce a number of copies of printed material, one producing an item by microfilming would be as apt'to make one copy as many. In the case of printing, unless a number of copies were produced, a waste of time, labor and materials would result; present day microfilming methods, on the other hand, are as well designed to produce one microfilm as well as many without waste.
“It is no doubt true that the present law is anomalous, as evidenced by our conclusion that the microfilm is not ‘printed.’ A foreign patent file, laid open for public inspection, is not a printed publication, because type
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written, while a printed publication, available to the public only in a Southern Rhodesian library, would be. The former is obviously more likely to reach the eyes of the American public than the latter. It is obvious, however, that unless we are to rewrite 35 U.S.C. § 102 (b) for Congress, this must be the result reached. Our job is to interpret the law, not to make it.”
Not only are Firestone’s microfilm references not “printed,” but there is no evidence of their publication. Publication is not shown by mere evidence of ability to mass produce. Browning Manufacture Co. v. Bros., Inc., 126 USPQ 499 , 503 (D.Minn.1960). Directly in point are decisions which hold that German GM’s (Gebrauchsmustern) are not publications although they are indexed, the index is published, and copies of the GM are available to the public on request. Permutit Co. v. Wadham, 13 F. 2d 454, 458 (6th Cir. 1926); Bendix Corp. v. Balax, Inc., 421 F.2d 809, 811-12 (7th Cir. 1970).
The German microfilms fail as prior printed publications. They are not prior art under 35 U.S.C. § 102 .
Firestone relies on two German documents which are not microfilms. These documents, apparently captured from the Germans during or after the war, are completely without authentication. They were apparently found in a warehouse-like library in England where they had been dumped, unbound, into folders stored in boxes. They were unearthed after this suit began by searchers working on the English case. They are not printed. There is no evidence they were ever published or that they were made available to the public (or even were in the English library) prior to November 20, 1950. They are not prior printed publications, nor prior art under 35 U.S.C. § 102 .
The third classification of disputed references is the preliminary and final mimeographed reports of the Wilmington Chemical Company. At least one of these reports was distributed to several individuals in the rubber industry. However, each was marked “Confidential.” There is no evidence that dissemination to the general public was intended, nor that the public had access to the reports. See, Ex parte Deaton and Kirkland, 146 USPQ 549 , 550-51 (P.O.Bd.App.1965) ; Stamicarbon N.V. v. Escambia Chemical Corp., 300 F.Supp. 1209, 1215 (N.D.Fla.1969), mod. on other grounds 430 F.2d 920 (5th Cir. 1970).
These reports fail as prior printed publications. They are not prior art under 35 U.S.C. § 102 .
The large number of references cited against the patent is in itself evidence of lack of anticipation and lack of obviousness. Hoeltke v. C. M. Kemp Mfg. Co., 80 F.2d 912, 917 (4th Cir. 1936); Ric-Wil Co. v. E. B. Kaiser Co., 179 F.2d 401, 404 (7th Cir. 1950), cert. den. 339 U.S. 958 , 70 S.Ct. 981 , 94 L.Ed. 1369 (1950); Minneapolis-Honeywell Regulator Co. v. Midwestern Instruments Inc., 298 F.2d 36, 38 (7th Cir. 1961); Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 268 (2d Cir. 1967). Typical of the language in these cases is the following from
Hoeltke,
80 F.2d at 917 :
“Defendant has cited 33 patents as basis for its contention that complainant’s invention is lacking in novelty; and this in itself is some evidence of the weakness of the contention. Such a citation of so many prior patents almost inevitably means either that none of them is nearly like the invention of the patentee and that the attempt is being made to invalidate the patent because the patentee has brought together for the purposes of his invention devices to be found in prior patents of different character, or that prior attempts to solve the problem with which he was confronted have not met with success.”
35 U.S.C. § 102 sets out conditions for patentability. It states that a person shall be entitled to a patent unless, inter alia, the invention was previously patent
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ed or described in a printed publication. A patent held invalid under this provision is referred to as being anticipated by a prior art reference.
The standards of anticipation are strict. The invention must be disclosed within the four corners of a single reference. If a reference is silent or ambiguous with respect to an element or feature o.f the invention, that gap cannot be filled by an assumption or by combining one reference with another. An anticipating, reference must teach the invention; it is not sufficient to point to its silence or ambiguity after the invention and argue that the invention could be made out from the reference. This thought was well expressed by Judge Learned Hand in Asbestos Shingle, S & S Co. v. H. W. Johnsmanville Co., 184 F. 620, 626 (2nd Cir. 1910) where, in referring to an alleged prior art reference, he said:
“The defendant’s theory is that Sachs must have meant, by cements, hydraulic cements; that by the manufacture of cardboards he must have meant the use of the usual machines; and that by the suggestion which he made of the uses of his substance he therefore disclosed completely all that Hatschek did. That is not enough; the art must be enriched by more than fruitful intimations, untested suggestions, or pregnant surmise before the subsequent comer who has elaborated and proved the invention may be deprived of his right.”
See also, American Graphophone Co. v. Leeds & Catlin Co., 170 F. 327, 331 (2d Cir. 1909).
Prior publications and uses must do more than point to the goal. They must mark the path. See Grubman Engr. & Mfg. Co. v. Goldberger, 47 F.2d 151, 153 (2d Cir. 1931). It is clear that anticipation cannot be found unless all of the elements of the invention are disclosed in a single prior art reference. Firestone v. Aluminum Co. of America, 285 F.2d 928, 929-930 (6th Cir. 1960); H. K. Porter Co., Inc. v. Goodyear Tire & Rubber Co., 163 USPQ 106 , 114-5 (N.D.Ohio 1969), aff’d, 168 USPQ 449 (6th Cir. 1971); Preformed Line Products Co. v. Fanner Mfg. Co., 328 F. 2d 265 , 271 (6th Cir. 1964). A patented combination cannot be anticipated piecemeal by finding individual features separately in the prior art. Imhaeuser v. Buerk, 101 U.S. 647, 660 , 25 L.Ed. 945 (1880); Bates v. Coe, 98 U.S. 31, 48 , 25 L.Ed. 68 (1878); Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 298 F.Supp. 435, 442 (W.D.Mich.1969), aff’d 430 F.2d 221 (6th Cir. 1970). The fact that a prior art reference might, by modification, be considered to disclose the invention is insufficient to establish anticipation if it were neither designed, adapted, nor actually used in the performance of the invention. Topliff v. Topliff, 145 U.S. 156, 161 , 12 S.Ct. 825 , 36 L.Ed. 658 (1892); Trabon Engr. Corp. v. Dirkes, 136 F.2d 24, 26 (6th Cir. 1943); Spring-A-Way Displays of California, Inc. v. Ad-Rack, Inc., 249 F.Supp. 368, 370 (S.D.Ohio 1965).
An anticipating reference must bear within its four corners adequate directions for the practice of the invention. If it offers no more than a starting point for further experiments; if its teaching will sometimes succeed and sometimes fail; if it does not inform the art, without more, how to practice the new invention — it has not correspondingly enriched the store of common knowledge and it is not an anticipation. Dewey & Almy Chemical Co. v. Mimex Co., 124 F.2d 986, 989-990 (2d Cir. 1942); Lincoln Stores v. Nashua Mfg. Co., 157 F.2d 154, 160 (1st Cir. 1946); Munising Paper Co. v. American Sulphite Pulp Co., 228 F. 700, 703-4 (6th Cir. 1915); Gordon Form Lathe Co. v. Walcott Mach. Co., 32 F.2d 55, 58 (6th Cir. 1929); Morgan Const. Co. v. Wellman-Seaver-Morgan Co., 18 F.2d 395, 399 (6th Cir. 1927). Prior art involving an inoperative disclosure or one which fails to achieve its intended result (e. g,, the Rostler, German, Government, and McMillan references) does not constitute an anticipation. United States v. Adams,
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383 U.S. 39, 50 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966); Trabon Engineering Corp. v. Dirkes, 136 F.2d 24, 26 (6th Cir. 1943).
Disclosures in foreign prior art (e. g., the Rostler British patent and the German microfilm references) are strictly construed and are restricted to what is clearly and definitely disclosed therein. National Latex Products Co. v. Sun Rubber Co., 274 F.2d 224, 236 (6th Cir. 1959), cert. den., 362 U.S. 989 , 80 S.Ct. 1078 , 4 L.Ed.2d 1022 (1960); Morgan Const. Co. v. Wellman-Seaver-Morgan Co., 18 F.2d 395, 399 (6th Cir. 1927); General Tire & Rubber Co. v. Watson, 184 F.Supp. 344, 349 (D.D.C.1960).
Faced with these strict legal principles, Firestone has not seriously asserted anticipation. Nevertheless, it has referred to certain groups of references as if they were anticipations.
Firestone concentrates on the similarities (real or imagined) between its references and its version of General’s invention. In analyzing prior art references too, it is the differences that are relevant, and there are significant differences with respect to each significant reference corresponding to Firestone’s own classification.
Firestone has alleged some eight prior use defenses. Only two need be discussed. One is the alleged prior knowledge or use by the Wilmington Chemical Company. The other is the alleged prior knowledge, use or sale associated with Tire Test 123.
35 U.S.C. § 102 bars a patent if it was “known or used by others in this country” before the invention or if it was “in public use or on sale in this country” more than one year prior to the date of the application for the patent in suit. As in the case of a prior printed publication, a prior use, knowledge, or sale does not anticipate unless it be of the same perfected invention as that of the patent. Each element or feature of the invention must be found in the alleged prior knowledge, use, or sale to invalidate the patent. Goodwin v. Borg-Warner Corp., 157 F.2d 267, 272 (6th Cir. 1946); Winslow Mfg. Co. v. Peerless Gauge Co., 202 F.Supp. 931, 936 (N.D.Ohio 1958).
The proof of the asserted prior public use, sale, knowledge, or invention must be established by evidence that is so clear, convincing, and cogent as to admit of no reasonable doubt. Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 7-8 , 54 S.Ct. 752 , 78 L.Ed. 1453 (1934); The Barbed Wire Patent, 143 U.S. 275, 284 , 36 L.Ed. 157 (1892); Eibel Process Co. v. Minnesota
&
Ontario Paper Co., 261 U.S. 45, 60 , 43 S.Ct. 322 , 67 L.Ed. 523 (1923); Preformed Line Products Co. v. Fanner Mfg. Co., 225 F.Supp. 762, 768 (N.D.Ohio 1960), aff’d, 328 F.2d 265 (6th Cir. 1964); National Latex Products Co. v. Sun Rubber Co., 274 F.2d 224, 231 (6th Cir. 1959); Austin Machinery Co. v. Buckeye Traction Ditcher Co., 13 F.2d 697, 700 (6th Cir. 1926); H. K. Porter Co. Inc. v. Goodyear Tire & Rubber Co., 163 USPQ 106 , 115 (N.D.Ohio 1969), aff’d 168 USPQ 449 (6th Cir. 1971); General Tire & Rubber Co. v. Watson, 184 F.Supp. 344, 350 (D.D.C.1960).
The alleged prior use must be public, perfected, not experimental, and not abandoned. Goodwin v. Borg-Warner Corp., 157 F.2d 267, 273-274 (6th Cir. 1946); cert. den. 329 U.S. 799 , 67 S.Ct. 491 , 91 L.Ed. 683 (1946); FMC Corp. v. F. E. Meyers & Bro. Co., 384 F.2d 4, 9 (6th Cir. 1967), cert. den., 390 U.S. 988 , 88 S.Ct. 1183 , 19 L.Ed.2d 1291 (1968); Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 135-136 , 24 L.Ed. 1000 (1878); The Barbed Wire Patent, 143 U.S. 275, 285, 292 , 36 L.Ed. 157 (1892); Warren Bros. Co. v. City of Owosso, 166 F. 309, 315-316 (6th Cir. 1909), cert. den., 214 U.S. 525 , 29 S.Ct. 703 , 53 L.Ed. 1067 (1909).
The alleged sale or offer to sell must be a bona fide commercial transaction for profit and be a sale of the perfected device. A sale for experimental purposes, even if profitable, is not an anticipation. Goodwin v. Borg-Warner
*358
Corp., 157 F.2d 267, 273-274 (6th Cir. 1946), cert. den. 329 U.S. 799 , 67 S.Ct. 491 , 91 L.Ed. 683 (1946); Ushakoff v. United States, 327 F.2d 669, 671-672 , 164 Ct.Cl. 455 (1964).
The defense of alleged prior use by Wilmington Chemical Company was presented to Judge Holtzoff and rejected. It was interposed again before Judge Watkins in Baltimore, then specifically dropped and finally resurrected before this Court.
The Wilmington Chemical report which purports to set out the work alleged as a prior use has been shown to fail as a prior printed publication and as an anticipation. The evidence of the work itself fares no better. No high Mooney rubber was shown; the amount of oil in the masterbatch is uncertain; no tire tread, or any other compound, was shown to have been made from the masterbatch. Firestone admits that the only attempt at compounding the material failed utterly. This work was unproved, not public, and at most an abandoned, unsuccessful experiment, never repeated.
The alleged prior use of the Test 123 was also before Judge Holtzoff (by way of the testimony of Dr. Reynolds of Phillips). The government’s final report of Tire Test 123 (urged here as an anticipating reference by Firestone) was put before Judge Holtzoff by General as evidence of unobviousness. As with the Rostler work, it was undisputed that Tire Test 123 was an experiment. Again, as with the Rostler work, there can be no dispute that the Tire Test 123 work on the allegedly high Mooney rubbers was an abandoned experiment. Either of these reasons, standing alone, is sufficient to overcome the defense.
Information relating to Tire Test 123 was not available to the public. It qualifies, therefore, neither as prior public knowledge nor prior public use. It is clear that there was no “sale” or offer of sale with respect to the tires of Tire Test 123 within the meaning of 35 U.S.C. § 102 (b). This work was not proved by evidence of what was actually done, nor did it constitute an anticipation of the invention of the patent in suit. It was at most an abandoned experiment which led away from the invention by recommending the use of 50 Mooney cold rubber with two parts of softener as the direction in which the industry should proceed.
Firestone’s main defense of invalidity is based on 35 U.S.C. § 103 , which provides :
“A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
Exercising the human inclination to hindsight Firestone assembled its 144 references and selected from them bits of information which it pieced together to form a mosaic
now
said to point like an arrow directly to the invention. This approach is not permitted by 35 U.S.C. § 103 or the case law.
In applying the test of obviousness, the Court must determine the pertinent art and the level of ordinary skill possessed by the person in that art. The scope and content of the prior art and the differences between that art and the claimed invention must also be determined. Graham v. John Deere Co., 383 U.S. 1, 17-18 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966); H. K. Porter Co., Inc. v. Goodyear Tire & Rubber Co., 168 USPQ 449, 450-51 (6th Cir. 1971).
The claims and specification are to be read together, with a view to ascertaining the invention against which the prior art is to be applied, United States v. Adams, 383 U.S. 39, 49 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966). This application must be carried out not by hindsight, but with foresight applied as of the date of the invention. Goodyear Tire
*359
& Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 , 64 S.Ct. 593 , 88 L.Ed. 721 (1944); Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U.S. 428, 434-435 , 31 S.Ct. 444 , 55 L.Ed. 527 (1911); Expanded Metal Co. v. Bradford, 214 U.S. 366, 381 , 29 S.Ct. 652 , 53 L.Ed. 1034 (1909); Webster Loom Co. v. Higgins, 105 U.S. 580, 591 , 26 L.Ed. 1177 (1892); Simplicity Mfg. Co. v. Quick Mfg. Co., 355 F.2d 1012, 1015 (6th Cir. 1966).
In assessing the prior art, the Court must have regard for all of the signposts contained in it. It must consider the passages and references which point away from the invention as well as those said to point toward it. Known disadvantages in old devices which would naturally discourage search for new inventions may be taken into account in determining unobviousness. United States v. Adams, 383 U.S. 39, 52 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966). What would have been obvious to one skilled in the art at the time the invention was made is determined in view of the sum of all the relevant teachings in the art, not in view of first one and then another of the isolated teachings of the art. Application of Kuderna, 426 F.2d 385, 389 (C.C.P.A.1970). Mr. Justice Graham, in England, expressed this principle succinctly, as applied to the U.K. counterpart of the patent in suit, at GX2520, pp. 63-64:
“The whole of the relevant prior art must be assumed to be in the mind of the skilled addressee and this may well produce, and would produce here, as the history of the matter shows, quite a different result from that which would be produced if a careful selection from prior art is made, having the invention which is sought to be attacked in mind.”
The above cases set the legal framework within which the Court is to determine obviousness or unobviousness. These bare bone principles are not always easy to apply, however, since they tend to treat as objective a test which is fundamentally subjective. Consequently, courts have developed certain empirical signposts of invention, not in derogation of the statutory test of invention, but in implementation of it. Judge Learned Hand was one of the first to clearly express this concept. In Safety Care Heating & Lighting Co. v. General Electric Co., 155 F.2d 937, 939 (2d Cir. 1946), he said that, insofar as the information was available, courts had best appraise invention :
“. . .by the circumstances which preceded, attended and succeeded the appearance of the invention. Among these will figure the length of time the art, though needing the invention, went without it: the number of those who sought to meet the need, and the period over which their efforts were spread: how many, if any, came upon it at about the same time, whether before or after: and — perhaps most important of all — the extent to which it superseded what had gone before. We have repeatedly declared that in our judgment this approach is more reliable than
apriori
conclusions drawn from vaporous, and almost inevitably self-dependent, general propositions.” More recently, the Supreme Court has
spoken on this subject, holding in
Graham, supra,
383 U.S. at pp. 17-18, 86 S.Ct. at 694:
“Such secondary considerations as commercial success, long felt but unresolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject sought to be patented. As indicia of obviousness or unobviousness, these inquiries may have relevancy.”
In United States v. Adams, 383 U.S. 39, 51-52 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966), the Supreme Court expanded upon the secondary considerations enumerated in
Graham .
Among the considerations relied upon in the Court’s finding of unobviousness were: the obtaining of unexpected results arising from a novel, interacting combination of old elements; the initial expressions of disbelief by those skilled in the art, followed by widespread adoption of the invention; and
*360
the fact that the combination of elements was made in the face of respected and long-accepted teachings in the art which would naturally discourage the combination.
The patentees’ overcoming of a “technological block” (that large quantities of oil could not be used in quality products such as tire treads) which those skilled in the art had not previously eliminated also constitutes cogent evidence of invention. Expanded Metal Co. v. Bradford, 214 U.S. 366, 381 , 29 S.Ct. 652 , 53 L.Ed. 1034 (1909); Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 , 64 S.Ct. 593 , 88 L.Ed. 721 (1944); National Latex Products Co. v. Sun Rubber Co., 274 F.2d 224, 240 (6th Cir. 1959), cert. den., 362 U.S. 989 , 80 S.Ct. 1078 , 4 L.Ed.2d 1022 (1960); Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828, 838 (6th Cir. 1956); H. K. Porter Co., Inc. v. Goodyear Tire & Rubber Co., 163 USPQ 106 , 114-15 (N.D. Ohio 1969), aff’d, 168 USPQ 449 (6th Cir. 1971); Schnell v. Allbright-Nell Co., 348 F.2d 444, 447 (7th Cir. 1965), cert. den., 383 U.S. 934 , 86 S.Ct. 1062 , 15 L. Ed.2d 851 (1966).
Courts have also held that while lack of commercial recognition of a reference may not be relevant to the issue of anticipation (compare Tillotson Mfg. Co. v. Textron, Inc., Homelite, 337 F.2d 833 , 837 (6th Cir. 1964) and Kaiser Industries Corp. v. McLouth Steel Corp., 400 F.2d 36, 45 (6th Cir. 1968), with Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 298 F.Supp. 435, 446 (W.D.Mich. 1969), aff’d, 430 F.2d 221 (6th Cir. 1970), the failure of such reference to get recognition in the trade is relevant to a showing of unobviousness. Campbell v. Mueller, 159 F.2d 803, 808-809 (6th Cir. 1947); Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 298 F.Supp. 435, 446 , aff’d, 430 F.2d 221 (6th Cir. 1970). These cases are pertinent in evaluating work such as that of McMillan, Rostler, the German art, Tire Test 123, and the rest of Firestone’s references, since none was commercially significant.
All of the indicators of unobviousness approved by the courts are present: the reaction of disbelief and skepticism by those skilled in the art, followed by surprise, praise, and total adoption; the revolutionary commercial success; the enormous savings gained by using the invention; the fact that every significant tire manufacturer, except Firestone, has taken a license; the long-felt need, unsolved by others working on the problem with great incentive, both from the standpoint of economics and national security; and the solution by the inventors, reached in part by accident and flying in the face of long-accepted teachings against the combination of the invention.
After the fact, Firestone has assembled dozens of references from which they argue obviousness, yet they cannot explain why the industry did not think to use this “obvious” invention to effect great savings and alleviate the shortage of rubber-producing capacity in 1950. After the fact, Firestone presented witnesses who say it had all been known before, yet they cannot explain where the pioneers were when the invention was made. Dr. Semon was presented as one of the outstanding men in the rubber industry, with over 100 patents and many high awards. His skill was above that of the man of “ordinary” skill in the art, yet the invention was unobvious to him. After the fact, counsel for Firestone disparaged the invention, yet Firestone had praised it, and even now says that it could not operate its tire factories without using it (GX2687, pp. 5-9). General’s invention is proved unobvious by the genuine, contemporaneous reactions of those skilled in the art.
Firestone asserts a royalty-free license (said to have been given it by the government which is said to have obtained it under the provisions of General’s Research Contract) as a defense to General’s charge of infringement in the manufacture of tire treads and tread stocks. The first relevant inquiry, therefore, should be whether the express terms of that Research Contract (said to
*361
be unambiguous by Firestone) provide for any license to tire treads or tread stocks. The answer is clearly, no; the clear, unambiguous language of the contract excludes the license Firestone seeks. Paragraph 3 limits the scope of authorized research (and accompanying license) to the production of rubber and carbon black masterbatches. It was never further extended in any material respect. Paragraph 6, the only paragraph which could provide for the submission of information (and an accompanying license) beyond the scope of Paragraph 3, specifically excludes
“subsequent compounding,"
that is, the process of making a tire tread or other end-products from rubber.
If there were any doubt, the history of the Research Contract makes it clear that the plain meaning of its terms was the intended meaning.
4
It shows that prior to the passage of the Rubber Act of 1948, the government expressly authorized research and acquired license rights in the fields of rubber compounding and end-products. This was accomplished by agreements such as the Cross-License, Compounding, and Patent Agreements Relating to Research Work (none of which was entered into by General). The Rubber Act did not authorize such research, however; it limited government research to the improvement of synthetic rubber per se. This Act necessitated the renegotiation of the research arrangements previously in effect, with the result that all reference to research or license rights with respect to compounding, tires, treads, tread compounds, or other end-products was eliminated. See 11 O.Jur.2d 410, Contracts § 163.
Another relevant factor in the construction of the Research Contract (if construction is deemed necessary) is General’s Operating Agreement, of which it is a part. The Operating Agreement clearly related only to the production of synthetic rubber, made to government specifications in the government-owned plant at Baytown, Texas. It had nothing to do with compounding, tire treads, or end-products. Section 3(i), which provided for research expenditures, to the extent approved in advance by Rubber Reserve, was specifically limited to “processes used or intended to be used” in the “manufacture of Synthetic Rubber.” Correspondingly, any license rights granted to the government by Section 8 of the Operating Agreement were limited to the “manufacture of Synthetic Rubber.” While General did not engage in any research provided for under the Operating Agreement, its Research Contract, when entered into, was specifically stated to be in implementation of and pursuant to Section 8 of the Operating Agreement. It is, therefore, clear that the research authorized and rights acquired by the Research Contract could be no broader than those under the Operating Agreement of which the Research Contract was a part:
“. . . A contract should be construed in the light of a previous contract which is evidently designed to control the relations of the parties for a period covered by the latter contract, unless the latter contract is manifestly an abrogation of the former.
“When a written agreement consists of
more
than one distinct writing or contract, the different provisions of all should be given due weight in ascertaining the intended meaning of any portion of the same. . . 11 O. Jur.2d 395, Contracts § 149.”
The patent does not claim any invention made as a result of or as part of the work done by General under the Research Contract. The invention was made privately, at General’s own expense. It was completed before any work at Baytown on oil-extended rubber is
*362
even alleged to have taken place. In fact, no invention (patented or otherwise) is charged to have been made by General as a part of the government-reimbursed research, nor is it charged that General failed to provide the government with all information relating to its reimbursed work. Firestone has not even charged that it uses any information generated by General under the Research Contract in the manufacture of its infringing products.
It is apparent that Firestone does not have an expressed license covering the invention of the patent in suit. Its main theory on this issue is one of implied license, based on the premise that the main, but by no means only, use of synthetic rubber is in tires. Therefore, Firestone argues, it must follow that the government, which was interested in establishing a viable synthetic rubber industry, would demand a license to the rubber’s chief end-product as well as to the rubber itself, and that the Research Contract should be read as if it had done so.
5
Andrews v. Deering Milliken, Inc., 382 F.2d 799, 803 (6th Cir. 1967).
This argument is unsound because it asks the wrong question. The question is not why the government did what it did, but what did it do. The fact is that the plain language of the contract, never modified, does not authorize research or grant licenses in the fields of compounded goods or end-products for rubber. If a “why” is of interest, the Rubber Act provides the answer, as discussed above.
There are many factors negating any implied license to tire .treads or tread stocks. Perhaps the most striking is the parties’ mutual understanding of the key terms of the contract, expressed during the negotiations.
On December 7, 1949, Mr. Knowlton, General’s chief negotiator and General Counsel, wrote to Mr. Hadlock, the Government’s negotiator and Executive Director of Rubber Reserve, regarding the meaning of paragraph 7 (the license paragraph) of the proposed Research Agreement furnished with Hadlock’s letter of November 23, 1949. Messrs. Knowlton and Hadlock discussed this paragraph by phone on December 9 and each made notes, Hadlock’s on the original and Knowlton’s on the retained copy of the December 7 letter. In addition, Mr. Knowlton made a separate memorandum on December 9, wrote a letter to Mr. McCoy, General’s outside counsel, on December 13, and wrote a confirming letter to Hadlock on December 16. The clear intent of both parties is summarized in the December 16 letter which states that the words “without limitation” in paragraph 7(1) of the agreement refer:
“. . .to the kind of use that RFC may make of the invention and the resulting information relative to production [of synthetic rubber], and do not refer to the subsequent use of the product in other patentable combinations.”
Thus, the understanding of both parties at the time the agreement was executed conformed with the plain meaning of the agreement — that no license rights with respect to end-products were to be conveyed.
It is elemental that a license cannot be implied when there is an expressed license which is explicit. Hazen Mfg. Co. v. Wareham, 242 F. 642, 647 (6th Cir. 1917); Henry J. Kaiser Co. v. McLouth Steel Corp., 175 F.Supp. 743, 749 (E.D.Mich.1959), aff’d, 277 F.2d 458 (6th Cir. 1960). A license cannot be implied contrary to the intent of the parties to an express agreement covering the subject matter. Negotiations leading up to the express agreement are clearly (and necessarily) to be considered in determining this intent of the parties and, where the terms are in dispute, in construing the contract. Corbett v. Winston Elkhorn Coal Co., 296 F. 577, 579 (6th Cir. 1924); Owensboro Ditcher &
*363
Grader Co. v. Markham, 32 F.2d 564, 566 (6th Cir. 1929).
While the sale of a product which has only one use may carry with it an implied license to use it in the intended way, such license does not attach where, as here, it is stipulated that the product has other important uses. Further, the right to “use” a product such as a rubber masterbatch refers to the right to use the masterbatch itself, so long as it retains its separate identity. It does not extend to uses in other patentable combinations. Rubber Tire Wheel Co. v. Goodyear Tire & Rubber Co., 232 U.S. 413 , 34 S.Ct. 403 , 58 L.Ed. 663 (1914); Nachman Spring-Filled Corp. v. Kay Mfg. Corp., 78 F.2d 653, 657 (2d Cir. 1935); See also, Aralac, Inc. v. Hat Corporation of America, 166 F.2d 286, 293 (3rd Cir. 1948).
Rubber Tire Wheel
held that Goodyear’s rights in its rubber, one use of which was in a patented tire combination, did not extend to the use of the rubber in that combination. The Supreme Court held that Goodyear’s rights in the rubber attached to it as an article of commerce:
“ . . .
and it continues only so long as the commodity to which the right applies retains its separate identity. If that commodity is combined with other things in the process of the manufacture of a new commodity, the trade right in the original part as an article of commerce is necessarily gone.” 232 U.S. at 418-419 , 34 S.Ct. at 405 :
Since the government had no license, the question whether Firestone obtained it from the government need hardly be argued. It is apparent from these findings that the government had no authority, intent, or justification for giving away valuable patent rights relating to tires in connection with the sale of its synthetic rubber plants.
By
Firestone’s own estimates, this would have been a multimillion dollar bonanza, completely without consideration to the government (DX 1836). Certainly, it cannot be assumed that the Disposal Commission had authority to give away valuable government rights.
In order to constitute a waiver, there must be an intentional relinquishment of a known right. The facts show no such intent or action on General’s part. Further, there is no evidence that either the government or Firestone were misled or relied upon any of General’s actions. American Locomotive Co. v. Chemical Research Corp., 171 F.2d 115, 121 (6th Cir. 1949); Everhart v. State Life Ins. Co., 154 F.2d 347, 356 (6th Cir. 1946); Joyce v. Gentsch, 141 F.2d 891, 897 (6th Cir. 1944); In re Euclid Doan Co., 104 F.2d 712, 715 (6th Cir. 1939).
Firestone’s estoppel theory is self-defeating. If the government were not entitled to a license, then everything General is accused of was perfectly proper and consistent with there being no license. If the government were entitled to a license, then any action by General in attempting to avoid the license would have been ineffective and, hence, irrelevant.
Firestone has raised certain miscellaneous defenses, including a charge that the patent is invalid for failure to comply with the requirements of 35 U.S.C. § 112 ; that the patent is invalid because of an alleged fraud on the Patent Office; and that the patent is unenforceable because of an alleged misuse. These allegations, dubious from the outset, were shown to be without substance or relevance at the trial.
It is clear that the patent in suit is valid, infringed, enforceable, and not licensed. According to pretrial agreement, the amount and measure of damages arising from Firestone’s infringing acts need not be argued or decided now. This issue will be left to a subsequent proceeding, after appellate procedures have been exhausted.
Similarly, the amount of any award arising from the Court’s ruling on the question of “costs, attorneys’ fees, and punitive damages,” deferred in this Court’s Memorandum and Order of June 22, 1970 (revised as of June 26, 1972),
*364
349 F.Supp. 333 can properly be left to a proceeding subsequent to appellate review of the finding of fraud pursuant to Rule 54(b), F.R.Civ.P. and so it shall be.
Therefore, it is hereby ordered that U. S. Patent 2,964,083 is valid, enforceable, infringed, and not licensed. This holding (but not the accounting) is specifically directed to the infringement of representative Claims 1, 3-5, 7, 13, 14, 17-19, and 22 by representative Stock A, Blend 2, and Blend 5 (and tires whose treads are made therefrom) in view of the pretrial order limiting trial to those representative stocks and claims.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FINDINGS OF FACT
The Parties, Actions, and Jurisdiction.
1. This is a patent infringement action involving The General Tire & Rubber Company (hereafter “General”), an Ohio corporation whose principal place of business is in Akron, Ohio, and The Firestone Tire & Rubber Company (hereafter “Firestone”), also an Ohio corporation whose principal place of business is in Akron, Ohio.
2. The patent in suit, U. S. Patent No. 2,964,083 entitled,. “Pneumatic Tires and Tread Stock Composition,” was issued to General on December 13, 1960, and is and has been owned by General since that date.
GX2516
1
par. 1
3. The history of litigation with respect to this patent has been complex and protracted. Infringement actions on the patent have been brought in this Court by General against Firestone, Goodyear, Uniroyal, Goodrich, Mohawk, Dunlop, Mansfield, Denman, McCreary, and Seilon. With the exception of Firestone, these actions have been settled. In addition, General has entered into license agreements under the patent with Armstrong, Carlisle, Cooper, Gates, Hercules, and Schenuit. Foreign counterparts of the patent in suit have been or are being litigated in at least England, France, South Africa, and Mexico.
FX2897 FX2946 GX2519
GX2675 FX2947 FX2948
GX2520 GX2518
4. For practical purposes, the controversy has narrowed to one between General and Firestone. Its entry into the legal arena began on March 30, 1961, when Firestone and coplaintiff, McCreary Tire & Rubber Company, filed a declaratory judgment complaint against General in Baltimore, Maryland. That action (hereafter the “Baltimore case”) sought a declaration that the patent in suit was invalid, not infringed, and licensed to Firestone royalty-free. General responded on April 4, 1961, by filing an infringement action against Firestone in this Court (hereafter the “Cleveland case”), thus joining Firestone to the ranks of Goodyear and Uniroyal (then U. S. Rubber) whom General had sued for infringement in this Court on December 13, 1960, the day the patent issued. Also, on October 23, 1961, General filed a counterclaim for infringement in the Baltimore case.
Complaint (C67-206)
Complaint (36,799)
Counterclaim (C67-206)
5. General’s prosecution of the Cleveland infringement action against Firestone was enjoined by the Baltimore Court, and trial of the Baltimore case commenced April 15, 1964. That trial continued until January 11, 1967, during which time a record of some 38,000 pages of transcript and over 2,000 identified exhibits was amassed.
130 U.S.P.Q. 138 , 139
B1
B38,267
6. On January 11, 1967, the United States Court of Appeals for the Fourth
*365
Circuit, acting upon a petition for writ of mandamus filed by General, entered an opinion, and the next day a formal order, directing the Baltimore Court to transfer the Baltimore case to this Court. The reasons for this transfer and a detailed history of the Baltimore case appear in the opinion of the Court of Appeals reported at 373 F.2d 361 .
Writ, January 12, 1967
7. The transfer became final once the Supreme Court denied Firestone’s petition for certiorari; this Court then dissolved the injunction prohibiting General from proceeding in the Cleveland case and the parties began preparation for trial. During the course of that preparation they were required to submit detailed outlines of their cases, including lists of issues, witnesses, documents to be relied upon, and evidence expected to be elicited. In addition, some 16 pretrial conferences were held. Following the guidelines set out in the Handbook of Recommended Procedures for the Trial of Protracted Cases adopted by the Judicial Conference of the United States and, later, the Manual for Complex and Multidistrict Litigation, the Court and the parties expended substantial efforts to clarify and narrow issues and to set ground rules prior to trial to the end that the trial would not be unduly protracted.
386 U.S. 960 , 87 S.Ct. 1031 , 18 l.Ed.2d 109 (1967) Pretrial Conf. June 14, 1968, pp. 28-32
8. On June 22, 1970, this Court, acting upon General’s motion, entered a memorandum opinion and order dismissing Firestone’s declaratory complaint in the Baltimore case for fraud and unclean hands and as being unnecessary for the full protection of Firestone’s rights in defending against General’s infringement action. That memorandum and order also consolidated all other litigable issues in the Baltimore case with General’s infringement complaint in the Cleveland case and deferred consideration of the question of costs, attorneys’ fees, and punitive damages arising from the Court’s determination of fraud.
3
Memorandum Opinion and Order, June 22, 1970, pp. 12-15
9. In its memorandum and order of June 22, 1970, the Court also denied Firestone’s motion to dismiss both the Cleveland and Baltimore cases for an alleged patent misuse by General.
2
3
The memorandum and order of June 22,1970, constitutes this Court’s Findings of Fact and Conclusions of Law with respect to the issues therein decided.
Memorandum Opinion and Order pp. 24-25
10. Trial of the Cleveland case and all litigable issues from the Baltimore case commenced September 30, 1970, and concluded January 22, 1971, after some 45 days of trial. The Cleveland record comprises nearly 6,000 pages of transcript and over 600 identified exhibits. The entirety of the Baltimore record, except insofar as portions of it were struck or limited on motion of one or the other of the parties, also has been made a part of the record of this action.
ci
C5904
11. The findings and conclusions made herein are «applicable to both the Cleveland case and all remaining litigable issues in the Baltimore case, including the previously reserved questions of costs, attorneys’ fees, and punitive damages arising from the prior finding of fraud.
12. This Court has jurisdiction of the parties and subject matter. Venue in this District is proper.
The Issues.
13. The claims of the patent in suit fall into two main groups: those directed to pneumatic tires (claims 1-12) and
*366
those directed to a vulcanizable rubber tire tread stock (claims 13-22).
GX2516, par. 2
14. Paragraph 34 of Agreed Statement of Facts No. 1 charts some 20 Firestone tire tread stocks which are charged with infringement of tread stock claims 13-22 and, when applied as the vulcanized tread portion of a pneumatic tire, with infringement of all but claims 9 and 10 of the pneumatic tire claims.
GX2516, par. 2 & 34
15. For purposes of limiting the length of trial, the number of claims in issue was reduced to 11 representative claims (1, 3-5, 7, 13, 14, 17-19, and 22) and the number of tread stocks to three representative stocks (Stock A, Blend 2, and Blend 5).
Memorandum Opinion and Order, Sept. 23, 1970
16. Firestone denies infringement, asserts invalidity of the patent, and claims a royalty-free license under the patent arising out of a research agreement entered into between General and the United States. Ancillary to its claim of license, Firestone also contends that the patent is unenforceable for unclean hands due to an alleged violation by General of its fiduciary duties to the United States and that General has waived its right to enforce the patent due to other alleged breaches of its obligations to the United States. Finally, Firestone has raised the defense of patent misuse against the enforceability of the patent. These defenses will be considered individually below.
Firestone Pretrial Brief
The Patent.
17. The application for the patent in suit was filed November 20, 1950, in the names of Emert S. Pfau, Gilbert H. Swart, and Kermit V. Weinstock. At that date Mr. Swart was General’s director of research; Mr. Pfau was a polymerization chemist and Mr. Weinstock was a research compounder, both working under Mr. Swart.
Pfau, B709-12 Weinstock,
4
DX1367 pp.
Swart, B7255 — 58, 33-34
7281 GX2680, pp. 7-8
DX1001
18. The course of the application in the Patent Office was unusual and protracted. It was assigned originally to Division 45, a Patent Office examining unit which deals with tires. The application was allowed by the appropriate examiner in Division 45 on December 10, 1954. The applicants promptly paid the required final fee, leaving only the mechanical task of printing to be accomplished before the patent would issue. On December 28, 1954, however, another examiner (assigned to Division 50, a unit which deals with synthetic rubber) requested that the application be withdrawn from issue and transferred to his unit. This request was granted by the appropriate authorities. The Division 50 examiner eventually rejected the application, and his rejection was upheld by the Patent Office Board of Appeals.
PX1001 184 F.Supp. 344 , 346
DX1002
19. Following the rejection by the Patent Office, suit was brought against the Commission of Patents in the federal district court for the District of Columbia pursuant to 35 U.S.C. § 145 to secure an adjudication that General was entitled to a patent. Trial of that action was had in June, 1960, before Judge Holtzoff. The Commissioner of Patents was represented by counsel for the Patent Office and, in what appears to have been an unprecedented action, also by counsel from the Department of Justice. Judge Holtzoff heard testimony from 19 witnesses (including 6 deposition witnesses).
184 F.Supp. 344 DX1393
DX1002
20. After considering the evidence, Judge Holtzoff entered his opinion and findings that General was entitled to a
*367
patent. Prosecution then resumed in the Patent Office where certain other claims were added and allowed, and the patent issued on December 13, 1960, ten years after the application had been filed.
184 F.Supp. 344 PX1001
DX1002
21. It is apparent from the above history of the prosecution of the patent in suit that the question of invention has undergone not only the careful scrutiny of the Patent Office,
ex parte,
but has also been subjected to the adversary processes of the federal court system, prior to its presentation to this Court. Because the patent was granted after such adversary proceedings, the Court finds that the presumption of validity attaching to the issuance of the patent is strengthened substantially.
PX1001 DX1002
DX1393
The Art.
22. The invention, to use the words of the patent, “relates to pneumatic tires having extruded tread portions of an exceedingly tough synthetic rubber.” In order to understand the context and the subject matter of the invention, it is necessary first to understand the relevant art at the time of the invention.
DX1001, Col. 1, lines 18-19
23. The basic ingredient in a pneumatic tire tread is rubber. Prior to World War II, natural rubber, procured in the form of a milk-like latex from rubber trees, was used for this purpose. During the war, however, both Germany and the United States were cut off from the major sources of natural rubber and both were forced to turn to the production of synthetic rubber as a substitute.
GX2516, par. 6, 13 & 14 DX1288, pp. 17-23
24. Germany had developed a number of types of synthetic rubbers prior to 1940, including one which had commercial promise for the making of tire treads. In anticipation of the possibility of war, the Germans had taken an early lead in the commercial production of this rubber, made from the chemicals butadiene and styrene, and known as “Buna S.” While information concerning Buna S was available in the United States before the war and the product was familiar to some of our scientists on a laboratory basis, it had not been produced here commercially.
GX2516, par. 13 & 14 DX1288, pp. 17-23
25. In the early 1940’s the United States began the commercial production of butadiene-styrene synthetic rubber under the control of, and in plants owned by, the Government. This rubber was also called Buna S, even though its characteristics were quite different from the German Buna S (as will be discussed later). In 1942, the Government issued a directive that the American butadienestyrene rubber should be called GR-S (government rubber-styrene), but for some time thereafter the American rubber was referred to in this country by both designations. After the Government relinquished control of the rubber program, it became known by its present designation, SBR (styrene-butadiene rubber).
GX2516, par. 14 & 15 Gruber, C134-40, 150
PX1988 tab B DX1752, p. 1
PX1993
26. The GR-S rubber produced in the United States prior to 1955 was made in government-owned plants controlled by a government agency known as the Office of Rubber Reserve but operated by private companies. The normal manufacturing procedure was as follows: liquid butadiene, a conjugated diolefine having four carbon atoms, was mixed with a water emulsion of styrene in the presence of the necessary chemicals to start and control the polymerization reaction.
5
One of the added chemicals was known as a modifier. Its function was to “modify” the reaction to produce a poly
*368
mer of a given plasticity. The more modifier added, the shorter the molecular chains and more plastic or workable the rubber.
6
At the desired time, usually when the polymerization reaction was about 70% complete, another chemical, called a “shortstop,” was added to terminate the reaction.
GX2516, par. 15 Gruber, C133-141
DX1288, pp. 17-39, 270-75
27. This polymerization reaction produced a latex of extremely small rubber particles dispersed in water. The rubber particles were then precipitated out of the dispersion (coagulated) by the addition of an acid, and the resultant rubber, looking somewhat like cottage cheese, was then washed, dried, and compressed into bales weighing about 75 pounds. This bale of rubber was the end product of the American synthetic rubber plants. A few plants, such as the one operated by General at Baytown, Texas, added carbon black prior to the coagulation of the latex and thus produced as an end product a bale of rubber and carbon black known as a carbon black masterbateh.
GX2516, par. 16 GX2522, p. 672
28. The bales of rubber from the polymer plants were then sold to various manufacturers of rubber products, most notably tire makers.
7
Tire makers in the United States insisted upon a synthetic rubber with a plasticity such that it could be processed in the same manner, on the same equipment, and in the same times as had been usual for processing natural rubber. This led the Government to specify that all standard GR-S be modified to a plasticity which would allow the rubber to be processed in the time and equipment usual for natural rubber (about 50 Mooney).
8
GX2516, par. 14 GX2522, p. 373
DX1288, pp. 53-58, 69-89
29. Thus, in this country, plasticity became one of the most important controls in the production of synthetic rubber, and, in 1942-43, the Mooney plastometer (named after Dr. Melvin Mooney) came into use as the standard measurement for this plasticity. A Mooney machine measures the resistance to rotation of a serrated metal disk embedded in a rubber sample heated to 212° F and registers this resistance to shearing forces on a dial in Mooney units. The higher the Mooney reading of a given rubber, the less plastic and more difficult it is to process.
GX2516, par. 3 & 4 Soday, C3486-87
30. Two types of disks or rotors may be used in the Mooney machine — large and small. The shorthand notation for the Mooney reading indicates which rotor was used: “ML-4” — large rotor reading after 4 minutes of rotation (not counting a 1 minute initial warmup period) ; “MS-4” — small rotor after 4 minutes.
9
Large rotor Mooney readings above 120 may be unreliable since the specimen may slip or tear as the rotor turns, thereby giving a reading which is lower than it should be. The small rotor reduces the shearing force and overloading of the machine and is generally considered to provide more reliable readings on the tougher rubbers, although it too is subject to increasing unreliability as the toughness becomes extreme. It is generally accepted that small rotor units
*369
may be converted to large by multiplying the small rotor reading by 1.8.
GX 2516, par. 3 & 4 Baker, B520, 5549-50
Niemeyer, Bll,284-85
31. At an early date, the standard government plasticity specification for GR-S rubber was set at 50 Mooney. Prior to this, some GR-S had been made at 60 Mooney or possibly 65, but the tire makers complained that even at this figure they had difficulty processing the rubber because it was “too tough” and accordingly the Mooney was adjusted to 50-5.
10
GX2516, par. 5 & 14 Baker, B5157, 6635-41
DX1152 tab 25-F Alliger, C418-19
GX2522, pp. 375,806
32. Butadiene-styrene rubber having a Mooney of about 100 (known as GR-S 85) was available in this country from about 1943. Although GR-S 85 was used to some extent for asbestos packing, it was not used for tire treads, despite its known superior properties. The compounding committee of Rubber Reserve, made up of representatives of Goodyear, Firestone, Goodrich, and U. S. Rubber, declined even to test a GR-S in this Mooney range.
DX1272 tabs F & H Soday, C3497-3502
33. A major difference between the synthetic rubber produced in America and Germany was that the Germans added little or no modifier in their polymerization reaction. As a result their rubber, as shipped from the polymer plant, had little plasticity and could not be used by the tire makers until after it had been put through a special treating process. This process, known as heat treatment or heat degradation, involved heating the rubber in large ovens in the presence of air or oxygen, causing the long-chain molecules to break and the rubber to become more plastic.
PX1221, tabs A & B GX2522, pp. 373, 937-86
DX1288, pp. 17-23
34. In other words, a German polymer maker produced a form of rubber which its tire-producing customer could not process without first installing expensive and massive equipment to heat the rubber in the presence of air, thereby oxidizing and softening it. This heat degradation had to be carried out at the tire factory rather than at the polymer plant because the heat softened rubber returned to an unworkable plasticity if not used within a few days of the heat softening operation and could not be re-softened. This was in contrast to the rubber produced by the American polymer plants, which, because its plasticity had been modified, was ready for use by the tire maker without any treatment to make it more plastic.
PX1221, tabs A & B GX2683, tabs 136A, 138
DX1288, pp. 17-23 GX2522, pp. 373, 937-86
35. Even with heat degradation the German tire plants were not able to use their existing equipment, designed for processing natural rubber, without both slowing the equipment and extending the processing times.
PX1221, tabs A & B
36. The Germans did not use the Mooney machine, nor measure plasticity as such, but measured the hardness of their rubber with an instrument known as the “defo” machine. This machine measured the weight required to produce a given vertical compression of a standard sized rubber sample in a given time and its recovery in a given time after removal of the weight, unlike the Mooney machine which measured the shearing resistance of a sample to the rotation of a disk which is embedded in it.
11
There is no generally recognized eorrela
*370
tion between defo-type values and Mooney values.
6X2522, p. 939 Schadendorff, B35,379-80
GX2516, par. 3 & 4
GX2682, tabs 470, 958
37. The German and American rubbers were both polymerized at a temperature of about 122° F. In 1947-48, however, the Americans began to use what proved to be an improved GR-S which was polymerized at a temperature of about 41° F. This rubber was called “cold” rubber and the other was thereafter referred to as “hot” rubber. During the period 1948-52, cold rubber gradually replaced hot rubber as the rubber used for tire treads. As with hot GR-S, its plasticity specification was set by Rubber Reserve at about 50 Mooney, although the early commercial production was somewhat higher, in the range of 55-65 Mooney.
GX2516,
par.
17 & 18 Baker, B6159-61
PX1129, p. 775
38. Depending upon the nature of the polymerization reaction, synthetic rubbers (particularly hot rubbers) characteristically contained gel structures in various amounts. Gel-molecules of rubber which are cross-linked in a manner somewhat similar to the vulcanization process was avoided where possible, because it often led to processing difficulties. One reason ..$j^ polymerization process was not carried beyond about 70% completion was that the amount of gel increased rapidly beyond that point.
12
DX1288, pp. 35-36 Semon, C3912-14, 3896
Alliger, C396 Swart, B7391-97
39. Neither natural- nor synthetic rubber is useful in a tire tread unless it is mixed with a reinforcing ingredient. Further, in order to form a vulcanizable compound, sulfur (the vulcanizing agent) and chemicals such as accelerators (which speed up vulcanization) and antioxidants (which prevent oxidation and deterioration) are added. Except for the reinforcing ingredient, carbon black, none of these need be discussed in detail.
GX2516, par. 6 & 7
40. Carbon black is a standard ingredient added to tread compounds to improve certain important properties such as strength. Not all carbon blacks have this property. Those which do are called reinforcing blacks, the degree of reinforcement depending upon the surface area per unit weight and the structure of the carbon black particles.
GX2516, par. 7
41. Before 1940, the best available carbon blacks were the channel blacks, which in essence were lampblacks made by the incomplete burning of natural gas in close proximity to a cold metal channel (I-beam) upon which the black was deposited. One useful type of channel black was known as EPC (easy processing channel).
GX2516, par. 7
42. During World War II, furnace blacks began to be produced. These blacks, made by cracking natural gas in a furnace, had about the same particle size as the channel blacks, but had a different particle structure, were alkaline rather than acid, and were more difficult to work into the rubber. An improved furnace black, known as Philblack O, was developed by Phillips Petroleum about 1946-47 and went into commercial use about 1948. Other things being equal, this black produced improved abrasion resistance over EPC in both hot and cold rubber tread recipes.
GX2516,
par.
7
43. Philblack O and blacks of this type made by others became known as HAF (high abrasion furnace) blacks.
*371
There are many commercial HAF blacks which can be used interchangeably. For example, Firestone uses Statex-R (Columbian Carbon Company), Philblack 0 (Phillips Petroleum Company), Aromex HAF (J. M. Huber Corporation), and Vulcan 3 (Cabot Carbon Company) all interchangeably.
GX2516, par. 7
44. Subsequent to the introduction of the high abrasion furnace blacks, reinforcing furnace blacks of smaller particle size came into commercial production. These became known as ISAF (intermediate super abrasion furnace) and SAF (super abrasion furnace) blacks. After 1960, HS and LS (high structure and low structure) furnace blacks began to be produced and used commercially. These types are designated by hyphenations, such as HAF-HS, HAF-LS, and ISAF-HS. Another type of furnace black used commercially, but not shown to be used for tire treads, is HMF (high modulus furnace) black.
GX2516, par. 7 & 34 Alliger, C436-37
GX2521, p. 17 GX2522, pp. 399-404
DX1288, pp. 245, 266
45. The amount and type of carbon black used depends upon the degree of reinforcement and other physical properties desired. With both natural and synthetic rubber, the amount of carbon black used in tread compounds was about 50 parts black to 100 parts rubber.
13
GX2516, par. 7
46. The preparation of a tire tread compound involves the mixing (compounding) of synthetic rubber made by the polymer plants with carbon black, sulfur, and other ingredients provided by other suppliers, under carefully controlled conditions. The determination of what ingredients to use, the proportions of each, and the mixing times, procedures, and equipment to use to obtain the desired product end properties and required manufacturing efficiencies is crucial to the commercial manufacture of tire treads. This determination is arrived at through an interplay of the factory manager, who has the responsibility for the actual mixing, and the research department, which is responsible for innovations. Situated between the research department and the factory manager is the product development compounder. He has both scientific training and practical experience, and he is the referee between research and the factory. His position is similar to that of a master chef; he has the final decision with respect to the use of new rubbers and other materials, and the combinations and proportions thereof. This man is the person to whom the patent in suit is addressed and his is the art against which the invention is to be measured. Of the witnesses who testified, Mr. Baker of General and Mr. Brandau of Firestone most nearly approach this man.
GX2682, tab 111 Alliger, C450-51
Baker, B506-08 Brandau, 610,340-43
47. In 1950, the exact nature of the interactions between rubber, carbon black, sulfur, and the other ingredients was not fully understood by either the laboratory researcher or the compounder. The skilled rubber compounder knew how to make a good tread compound but he did not know with certainty why it was good. As a result, he was a very conservative person.
14
Based on past experience, the skilled compounder would not accept the suggestions of a laboratory chemist, unproved by actual road tests of tires made from the suggested composition. This was particularly true when the suggestions ran counter to the accepted expertise of his art. In short,
*372
the art of rubber compounding was not a precise or scientifically exact art.
Baker, B3883-88; 6155-71; 6642-47
Alliger, C299; 330-31
48. In processing rubber tire treads before World War II, as now, the machinery used in America normally consisted of Banbury mixers and mills (rolls). The basic techniques now used in the tire factories for handling or processing rubber, and from it building pneumatic tires, were also developed prior to World War II. These techniques did not change materially with the advent of synthetic rubber, cold rubber, and improved carbon blacks, nor with the advent of the invention of the patent in suit.
GX2516, par. 19-22, 35 B19,058-59
DX1285 Niemeyer, BIO,252-55
FX2739, pp. 11-15 & Exhibit A
49. In a typical processing procedure just prior to the invention, the rubber and carbon black, with possibly some other ingredient (but none which would cause vulcanization) were worked in the Banbury for about four and one-half minutes at a temperature of about 300° F.
15
The Banbury mixer resembled a giant dough mixer in that it had inter-meshing blades which counter-rotated within a closed housing. It was (and is) a massive and expensive piece of equipment, standing over one story high.
16
It commonly mixed single batches of about 400 pounds.
GX2516, par. 19 Baker, B3650, 4516-17
GX2521, p. 118
FX2739, pp. 11-15 & Exhibit A
50. The product as it came from the Banbury was called a masterbatch (a masterbatch being rubber plus some, but less than all, compounding ingredients). Upon removal from the Ban-bury, the masterbatch was formed into a sheet on a mill and set aside to cool. It was then passed to a second Banbury, where the remaining ingredients were added and mixed for about two and one-half minutes to form the final stock. These ingredients included sulfur and chemicals to aid vulcanization. It was also customary to add a small amount of a softening oil, usually about 5 parts by weight, to facilitate processing. This oil was usually added in two parts — one in the first Banbury mixing and one in the second.
17
GX2516, par. 19
FX2739, pp. 11-15 & Exhibit A
Baker, B6155-71; 6493-6505
Weinstock, GX2680, pp. 117-118, 130-131
51. The mixing operation is delicate. The mixing had to be thorough so that all of the ingredients were blended into a cohesive, homogeneous mass, yet this had to be accomplished at a temperature which would not scorch or prevulcanize the rubber and without excessive power demands or strain on the equipment. It also had to be done quickly, since excessive time spent in producing a batch could result in a commercially unfeasible procedure. For example, if the time required to mix a batch of rubber were doubled from six to twelve minutes, the practical effect would be that the plant capacity would be cut in half.
Baker, C5791-93
Brandau, B10,343
52. After cooling, the final stock was normally placed on a “warm-up” mill before further processing. A mill was a pair of large, smooth, metal rolls between which the rubber mixture was passed. One roll normally ran somewhat slower than the mating roll, thereby producing a pulling or shearing action on the rubber. The separation between rolls could be varied, and the width of separation determined how much work was done on the mixture; an open mill
*373
did practically no work, while a tight mill did considerable work.
GX2516, par. 19 Baker, B601-04; 4544-48;
GX2521,
"mill"
C5806-07
53. The warm-up mills and the mills used to form the Banbury batches into sheets (called “sheet-off” and “batch-off” mills) were set at an opening setting. Tight mills were used when ingredients were to be incorporated on the mill or when it was desired to soften the rubber by mechanical working.
GX2516, par. 9 Baker, C5806-07
54. From the warm-up mills, the final tread stock was moved to the extruder, a screw-fed device provided at its exit end with a die of the proper shape, in cross-section, for the extrusion of a tire tread. The treads were extruded in a continuous strip and cut to the proper lengths on an angle so that the ends could be overlapped on the tire to form a smooth joint or “splice.” Treads at this state were referred to as “green” treads and the compound at this stage was called a tread stock.
GX2516, par. 20 & 21 Baker, B639-46
55. The green tread was subsequently wrapped about a previously-constructed carcass and the assemblage (at that point resembling an open-ended drum) was called a “green” tire. In order to secure the tread splice, a cement composition was employed and the meeting ends of the tread were usually mechanically pressed (stitched) together.
GX2516, par. 21
56. The green tire was then placed in a mold and heated for a predetermined time, sufficient to vulcanize the tire in its final shape. The terms “vulcanize” and “cure” were used synonymously in the tire making industry.
GX2516, par. 22
GX2521, p. 28
57. Various tests were employed to determine the physical properties of the vulcanized rubber compound. The more important ones from the standpoint of this case were tensile strength, elongation, modulus, and hysteresis or heat build up. The American Society for Testing Materials (ASTM) has established procedures for these tests which are followed in principle by the various rubber and tire companies. This organization is also the publisher of a “Glossary of Terms Relating to Rubber and Rubber-Like Materials.”
GX2516, par. 8-12
GX2521
58. Tensile strength is measured by the pulling force required to produce rupture of a standard specimen.
GX25I6, par. 8
59. Elongation is the percentage by which an original marked distance on a rubber specimen will increase under a given pulling force. Ultimate elongation is the percentage at the moment of rupture.
GX2516, par. 9
60. Modulus is the force necessary to produce a stated percentage elongation. For example, modulus at 300% is the force required to produce 300% elongation.
GX2516, par. 10
61. When rubber is deformed and released, it generates heat. This property, known as heat build-up or hysteresis,
is
an important quality in a tire tread because, even under normal driving conditions, treads are subjected to repeated deformations. The amount of rise in temperature depends on the hysteresis characteristics of the tread, which are a function of the rubber itself and the amount and type of other compounding ingredients, particularly carbon black. If the heat build-up becomes too great, it could cause a failure or blow-out of the tire; the lower the heat build-up, the better the tread, all other things being equal. Various methods of measuring heat build-up were employed, all involving repeated deformation of a vulcanized specimen of rubber. The Goodrich Flexometer was widely used to measure the rise in temperature of a vulcanized specimen subjected to a prescribed num
*374
ber of rapid compressions in a specified time.
GX2516, par. 11 Semon, C4404-10
62. In summation, the conventional commercial manufacture of the tread portions of pneumatic tires at the time of the invention of the patent in suit was as follows: Butadiene-styrene rubber with a plasticity of about 50 Mooney was mixed with about 50 parts of carbon black and about 8-12 parts of hydrocarbon oil (both based on 100 parts of rubber) and mixed in a Banbury for a total of about seven minutes, then extruded to form the tread portion of the tire. The equipment, procedures, and times employed were basically the same as those that had been used for processing natural rubber prior to World War II.
18
The use of high Mooney rubber (90 Mooney and above) was avoided because it was too tough to process commercially into a tire tread or tread compound, even though it had been known from the early 1940’s that its abrasion-resistant properties were superior. The use of amounts of oil beyond 8-12 parts was also avoided, even though it had been known for years that oil was a softener for rubber, because it was thought that more oil was incompatible with the maintenance of the high physical properties demanded of a tread rubber. It was in the context of this art that the inventors began their work.
GX2516, par. 19 & 22 Baker, B6493-97
FX2739, pp. 11-15 & C5790-91
Exhibit A Niemeyer, Bll,-232-36
The Invention.
63. The work which culminated in the invention of the patent in suit was initiated by the Ohio Rubber Company’s request to Swart for assistance in developing a cheap compound for making rubber mats, such as automobile floor mats. This request was made sometime before March 15, 1949. Pfau, a former employee of Goodrich who had been recently hired to bolster General’s research department (then consisting of no more than 15 technically-trained people), was assigned to this project by Swart by memo of March 21, 1949.
DX1044 Pfau, B709-11
DX1109 Weinstock, DX1367, pp. 36-46
Swart, B7279-80 GX2680, p. 8
64. Since mat stocks did not demand high quality physical properties, Pfau first approached the problem by adding large quantities of oil (50 parts) and 50 parts of clay (a non-reinforcing filler pigment) to a butadiene-styrene rubber having a Mooney of 105. The theory of this approach, worked out by Swart and Pfau, was that:
“The inherent strength and toughness of the high Mooney polymer plus its ability to absorb and retain the oil was expected to give a product of good strength and easy processability for application in such products as light colored floor matting.”
DX1044 Pfau, B761-62
DX1048 (A071785) Swart, B7283
65. The work with clay proved to be a failure because the resulting compound was too soft and sticky to handle at curing temperatures. Nevertheless, work continued on this project, designated project number 104. Its obective was stated to be the “addition of high oil loadings to high Mooney GR-S to give a cheap processable stock.”
19
DX1048 (A049989) Pfau, B768-69
Swart, B7280-82 Weinstock, DX1367, p. 57
*375
66. In June, 1949, the inventors added 100 parts of oil to a series of butadienne-styrene copolymers, ranging from at least 71 to 169 Mooney. Convinced by then that they would have to use a filler other than clay, the inventors added carbon black as a reinforcing filler (100 parts EPC). Surprisingly, good physical properties were obtained on these compounds, and the inventors “decided to work out a rubber/oil-black masterbatch since the largest potential market should be in the field where carbon black reinforcement would be essential.”
BX1050 (A075050) Pfau, B838-40
Weinstock, DX1367, Swart, B7283-84 pp. 63 — 68
67. In June or July, 1949, the inventors met with Mr. L. M. Baker and, based on the physical properties they had obtained, requested that he set up a road test to evaluate their compounds “as a tractor tread or as a second line passenger tire tread compound.”
20
Baker was General’s Manager of Product Compounding and he was the person responsible for initiating, setting up, and evaluating road tests of new compounds, and the development and evaluation of improved tread compounds. Baker, a graduate chemist, was the man who had the responsibility for adoption of new tread compounds at General in this period — the referee between research and the factory referred to in Finding 46. In short, he was a good example of the man skilled in the art as of the date of the invention.
21
Baker turned down the inventor’s request because General “did not have any particular need at that time for a second line tire.”
Baker, B435-49; 498-507; 516-31; 2416-18; 6468-70
68. Work on evaluation of high Mooney rubber/oil/black masterbatches continued during July and August, 1949, with some difficulties, but with the result that very good physical properties were obtained from the compounds. During this period, the patentees had one or two further discussions with Baker. By August 15, 1949, with the help of Mr. Phillips, the man in overall charge of tire manufacturing, they had persuaded Baker to set up a development project designated by Baker as C-26. This project, entitled “Special Low Cost Wet Masterbatch for Tractor Treads and Second Line Passenger Treads,” was designed to evaluate the very high Mooney-very high oil masterbatches upon which the inventors had been working.
DX1051 Weinstock, DX1367, pp. 66-74;
DX1052 102-106; 125-29
DX1102 GX2680, pp. 52-53;
Baker, B2422-34 79-82; 85-86; 551-53
Pfau, B2649 — 52
Swart, B7284-85
69. Further masterbatches of varying high Mooney rubbers, oils, and carbon blacks were evaluated in September and October, 1949. In the fall of 1949, Weinstock combined the remnants of a number of these high Mooney master-batches (none containing rubber of less than 150 Mooney and all containing at
*376
least 50 parts of oil) and, on his own time, took the compounds to the factory retreading shop where he made crude recaps for two of his own tires. These tires were run on his personal ear in the Akron vicinity for about a month, during which time he took Pfau for a ride to demonstrate that the treads had normal traction on hills, and on wet and icy pavements. This “test” and the testimony of Weinstock and Pfau demonstrate that the inventors were aware that their suggestion to use their compounds for even second-line treads was radical, and that they were determined to verify for themselves, however roughly, that they were not advocating a position which would make them appear foolish before their colleagues.
22
DX1053 Weinstock, GX2680, pp. 92-93;
DX1054 117-26
Pfau, B938-43 DX1367, pp. 104-23
70. Throughout November and December, 1949, work continued on selecting the proper amounts of oil and carbon black for the high Mooney rubbers Pfau was making. A relationship was noted between the plasticity of the rubber and the oil and carbon black loadings desirable for good processability and balanced physical properties. In some instances better physical properties were obtained by increasing the amount of oil used.
DX1056 Pfau, B909-925
DX1057
71. In January, 1950, rubber in latex form and having a Mooney of approximately 160-200, obtained in 55 gallon drums from Polymer Corporation in Sarnia, Canada, was masterbatched with 50 parts oil and 75 parts carbon black and made into a tread stock in General’s laboratory.
23
The physical properties of the stock were excellent and the results were taken to Baker on January 24 by Swart and Weinstock. Baker copied the data onto a sheet in his own hand and that same day, referring to the excellent properties he had been shown, he revised and upgraded the C-26 project to test the tires for premium rather than second line tire treads.
DXX059 Baker, B2447-56
DX1105 Pfau, B2683
DX1104 Swart, B7285-90
DX1106
72. The experimental tires for this test (known as tire test 2614) were built in February, 1950, from a compound containing 60 parts oil and 85 parts carbon black to 100 parts of a butadiene-styrene rubber having a Mooney between 160-200. This test appears as Example 4 of the patent.
DX1060 Weinstock, DX1367, pp. 139-42;
DX1065 737-38
Baker, B2456 GX2680, pp. 130-32
73. It was intended that five tires be made for this test, but production difficulties caused three of the tires to be discarded.
24
Two tires were built, however, and sent to General’s road test fleet in Colton, California, where the test was run, beginning March 22 and ending May 8, 1950. Preliminary results from this test (at 4,200 miles) showed that the test tires were 29% better in tread wear than the control tires which were
*377
made from the standard-Mooney hot-rubber recipe then in commercial use in General’s premium tires. Some at General doubted this report and thought the test tires and the control had been mixed up, but oil extraction analyses performed by Weinstock on the treads proved that this was not so. At 12,600 miles, the test tires were still running 14% better than the controls and at 14,700 miles, when the test was discontinued because one of the control tires had worn smooth, the test tires were superior to the control in tread wear by 6%.
DX1060 Baker, B2456-72
DX1065 Weinstock, DX1367, pp. 134-44;
Pfau, B1072-73; 686-88; 731
1223-27 GX2680, pp. 373-76
74. The final report of tire test 2614 recognized that further work was needed before commercial production would be pn .-tical, but the improved treadwear of the test tires was recognized as extremely significant. The recommendation was that further work be “expedited.”
DX1065
75. In March, 1950, the patentees prepared two batches of rubber coagulated from latices obtained at Sarnia, Canada. One rubber, having a Mooney over 160, was mixed with 70 parts of oil and 85 parts carbon black. The other, having a Mooney of 120 was mixed with 35 parts of oil and 75 parts black. Test tires were made from each of these batches and run on General’s test fleet as tire test 2845 starting May 11, 1950. This test is reported in Example 5 of the patent.
DX1063 DX1067
DX1065
76. The final report on tire test 2845 (dated July 25, 1950) showed that the test tread made from the rubber having a Mooney over 160 was 18% superior to the standard cold rubber control tire in treadwear and that the test tread made from the 120 Mooney rubber was 24% superior in treadwear, both after 18,900 miles. As with tire test 2614, the test was stopped when one of the control tires became smooth. The report concluded that the treadwear of the test tires was “extremely remarkable” and that splice difficulties still required work. The report recommended that: “This performance is so remarkable and the quality and cost potentialities are of such magnitude that projects C-69A and C-26 (high Mooney — high oil treads) must be completed without any delays.”
DX1067 (A074704) Baker, B3633-43
77. Prior to the filing of the application for patent, other road tire tests were undertaken, including tire test 2914, a test conducted on tires made from a blend of a high Mooney oil masterbatch and ordinary Mooney rubber. This test is reported in Example 6 of the patent. Other tire tests were 2911 and 2930.
DX1116 Baker, B3667-76,
DX1117 3732-34
DX1125
78. During this time period the inventors initiated further studies with respect to the development of oil-extended rubbers for use in treads under arctic conditions, selection of plasticizers, solution of handling problems, and problems in characterizing the polymers whose Mooney was so high that it could not be measured accurately. This work is reflected in the monthly progress reports for the months of April to October, 1950.
DX1064 DXX068 — 72
DX1066 DX1077
79. The upshot of this work was the demonstration by the patentees that a quality tire tread could be made from the previously unusable high Mooney rubber by adding sufficient oil (and carbon black based on the rubber plus oil) to it to make it processable in the same time and manner as ordinary 50 Mooney rubber. While it had been known previously that oil could soften rubber and that high Mooney rubber was superior in physical properties, those skilled in the art did not think it possible to add the large amount of oil (and adjusted carbon black) needed to make high Mooney rubber (90-120 or higher) processable in the ordinary way and still maintain the high quality and properties demanded of tire treads since it was well known that oil had an adverse effect on physical prop
*378
erties. Further, it was well known (and published) that adding either exeell oil (over 10 parts) or excess carbon black (over 50 parts) or both, to ordinary Mooney rubber caused an impermissible increase in hysteresis or elongation; but the addition and interaction of both with the high Mooney rubber, in accordance with the invention, had the surprising and very desirable effect of lowering hysteresis. The inventors had thus shown that the compounder could have both the benefit of superior properties and easy processability at a drastic reduction in cost. Oil costs about two cents per pound while synthetic rubber costs about twenty-three cents per pound.
Findings 66-69; Baker, B6155-73; 6493-505 81-88
DX1001 Weinstock, GX2680, pp. 117-118; 130-131
DX1288, pp. 2, 19-20 Niemeyer, Bll,232-36
PX1221, tab A, PX1036 p. 569 FX2595
Reaction to the Invention.
80. The reaction at General to the inventors’ work was one of skepticism, at least until after road tests clearly had shown the quality of the high oil-high Mooney compounds. The inventors themselves had doubts, despite the good physical properties obtained. Well aware of the long-accepted belief that large quantities of oil should not be used in tire treads and afraid of appearing foolish for making the suggestion, they had made the rough, unofficial tire test on Weinstock’s personal automobile as set out in Finding 69. Baker admitted to his skepticism of the project and agreed that the expression “Bottneck Baker” accurately described his initial attitude toward setting up to the project. Even at the stage where the test tires were being built, the inventors had difficulty in persuading, and in fact initially failed to persuade, the factory to add the quantities of oil required.
Weinstock, GX2680, pp. 79-82, 85-86
Baker, B4022, 6063, 6104-09, 6155-73
81. The initial reaction of others in the industry amounted to scorn. A high executive of U. S. Rubber Company (now Uniroyal) wrote General's president stating that he had “not yet bought the idea that mineral oil is rubber”; that he was “still wary of too much softener in tire treads”; and that in his opinion “the better the Bourbon, the less water you put in it.”
PX1001, p. 324
82. The first reactions of Goodyear and Firestone were as emphatic. Mr. Yogt, Technical Superintendent of Goodyear, ridiculed oil-extended rubber for tire treads, telling Baker that he thought Baker had been in the rubber industry long enough to know that it was not possible to improve tread wear of tires by adding oil to the tread compound and that he was surprised that General would subscribe to that principle. Mr. Torrance, Chief Chemist at Firestone, told Baker he was also surprised that Baker would advocate oil-extended rubber tire treads.
PX1001, p. 321 Baker, B6099-6103
83. Perhaps most candid of all was the testimony of the compounder from Firestone (U.K.), Mr. Taylor, who testified on Firestone’s behalf at the trial in England which involved the validity of General’s corresponding U.K. patent and Firestone’s infringement thereof. This testimony concerning the reaction to the announcement of General’s invention is reported at pages 58-59 of the Judgment of the High Court of Justice, Chancery Division, rendered June 29, 1970, as follows :
Q. “Did you find anything technologically surprising in the development, as opposed to economically”?
A. “Yes; I must honestly say that we were surprised that one could use such quantities of oil.”
Q. “Such big quantities”?
A. “Yes. . . We had got so accustomed to the oil loadings we had used for many years, that one regarded the levels we were using of 5 or 8 parts as being the normal. 45 parts of oil of course
*379
seemed, you know, an astonishing amount to use, even if it was a high Mooney rubber.”
GX2520, pp. 58-59
84. The initial skepticism and disbelief was quickly replaced by acceptance and adoption of the invention, however. All of the prior extensive work attempting to make high Mooney rubber processable for tire treads (such as heat softening and air Banbury breakdown) were promptly discontinued and never shown to be resumed. Firestone’s answers to interrogatories show that by 1954, 95% of Firestone’s passenger treads used oil-extended rubber.
GX2681, tab 31(b) B19,054-56
DX1288, p. 2 DX1080
GX2516, par. 34 DX1152, tab 45C
PX1221, tab A DX1254
DX1217 GX2683, tab 136A, 138
DX1272, tabs A-N GX2566
DX1249 GX2567
DX1250
DX1252
85. In contrast to its early skepticism, Firestone’s technical publication, SYNTHETIC RUBBER FACTS, published and distributed to the industry in 1958, after the invention but before the patent was obtained, contains several passages relative to the impact of oil-extended rubber treads. In its section on the history of synthetic rubber, Firestone lists, the first production of oil-extended rubber in 1951 as among the “important dates in the history of synthetic rubber.”
DX1288, p. 23
86. This Firestone technical publication also described the advantages of oil-extended rubber treads, as follows:
“In 1951 production of oil-extended rubber was begun. This type of rubber is a homogeneous mixture of high Mooney (120 ML4 or higher) base polymer and a petroleum oil (usually 25 or 37.5 parts per 100 parts of polymer). The resultant material has a Mooney viscosity in the normal range (e. g., 45 to 60 ML4). It had been known for some time that high Mooney polymer had superior tread wear resistance, but this property could not be exploited because of the difficulty of processing the polymer. Oil-extension corrected this difficulty, making available a new and useful polymer type. Advantages of oil extension may be summarized as follows:
1. Satisfactory processability of very high molecular weight polymer permitting utilization of the desirable properties of this type of rubber,
2. Improved tread-wear and tread-crack resistance,
3. Lower cost of rubber,
4. Greater production of rubber from a given amount of monomer,
5. Improved hysteresis characteristics.”
DX1288, pp. 19-20
87. It further described the impact of oil-extended treads as follows:
“In order to utilize the advantages offered by excessively high Mooney viscosity polymers, and to process these polymers on available rubber equipment, it was necessary to incorporate large amounts of processing oils. The addition of these oils decreases tread-wear. However, this is more than compensated for by the increased wear from the higher Mooney polymer. “Since the introduction of cold rubber and oil-extended cold rubber as replacements for natural rubber, the performance of passenger treads has been so outstanding that these polymers have become the standard of the industry.”
DX1288, p. 271
88. In its U. S. Patent No. 3,019,207, filed in 1956, Firestone further extolled the virtues of oil-extended rubber for tire treads as follows :
“Oil-extended synthetic rubbers, especially oil-extended GR-S, have become very popular in recent years for a number of reasons. The oils employed commercially are much cheaper than the synthetic rubber itself, so that the oil-extended synthetic rubber is produced at a saving over the straight
*380
synthetic rubber. Since the oil employed for extension of the rubber acts as a plasticizer for the rubber, it has been customary to employ stiffer synthetic rubbers for oil-extension than are employed in the absence of oil. For example, commercial GR-S has usually been manufactured with a Mooney plasticity of about 50 to 60 for use without oil-extension, whereas the GR-S employed for producing oil-extended polymers usually has an initial Mooney plasticity of at least 85 or 90, and generally exceeds 125. Tire treads produced from the oil-extended rubber of such high initial Mooney plasticity have exhibited very good abrasion resistance,
the wear ratings being much higher than would be predicted from a consideration of the diluting effect of the oil on the rubber.
Thus, the practice of utilizing oil-extended GR-S for tire treads has become very popular in recent years.” (Emphasis added.)
DX1831
89. This Court must agree with the cogent remarks of Mr. Justice Graham, speaking for the English Court in reference to Firestone’s Synthetic Rubber Facts Book (see Finding 83), that:
“It is indeed unusual, if not unprecedented, to find in a patent action such a tribute from a defendant to the excellence of a plaintiff’s product and process.”
GX2520, p. 60
90. It is clear that the work of Pfau, Swart and Weinstock constituted an extremely important contribution to the advancement of the tread compounding art and the tire making industry generally, and that its success was unobvious and surprising to those skilled in the art.
The Claimed Invention.
91. The claimed subject matter of the patent in suit is an article of manufacture, in two forms. One form (claims 1-12) is a vulcanized pneumatic tire, and specifically the tread portion of the tire. The other form (claims 13-22) is a vulcanizable (but unvulcanized) tread stock, this article being a tread slab which has not yet been applied to a tire carcass.
DX1001 DX1028 — 31
Baker, B636-38
92. The unusually exacting characteristics and qualities required of the article of manufacture are set out in the patent as follows:
“. . . the rubber characteristics or qualities for tire treads are exacting and difficult to meet. Tire treads must be of uniform weight and cross-section; they must wear well and resist cracking both due to flexing and light; they must have substantial tensile strength and toughness. These qualities are had only in rubber compounds of the highest quality. Only highest quality rubber compounds are therefore used for good tires whereas in mechanical goods and especially in rubber footwear cost per unit of compound weight and not quality is the controlling factor.”
DX1001, Col. 1, lines 39-49
93. The patent goes on to describe other essential characteristics of the article of manufacture as follows:
“Even though quality is of prime importance in tires, it is essential that tires be capable of being made in volume and to make tires in volume it is necessary that the rubber compounds used be capable of extrusion through an orifice (including calendering which is, in fact, extrusion through a die having rotating sides). It is only by such extrusion processes that tire treads have been made in volume and with uniformity.”
DX1001, Col. 1, lines 50-57
94. The foregoing volume production of high quality tire treads according to the invention is said in the patent to be performed utilizing “the usual rubber machinery,” and processing the tread compound “in the very short time commensurate with ordinary procedures” then in use for the ordinary commercial synthetic rubbers (which were about 50
*381
Mooney). This ability to formulate the tread in such a way as to enable the compounder to use the ordinary equipment, times, and procedures is extremely important, since a decrease in production capacity or the requirement of huge capital outlays for new or additional equipment would be prohibitive to the adoption of a new compound.
DX1001, Col. 1, lines 29-34; Col. 4, lines 34-43
Brandal!, BIO,343
95. According to the invention, a high quality tire tread capable of being produced in commercial volume in the ordinary equipment, times and procedures used to process 50 Mooney rubber and at substantial savings in material costs comprises the novel interacting combination of:
(a) a tough butadiene-styrene synthetic rubber having a Mooney of at least 90. This rubber was previously known to be superior in physical properties, but considered unusuable for making tire treads because it was too stiff and tough to work on the ordinary equipment
25
and, therefore, the essential ingredients such as carbon black could not be uniformly mixed into the rubber within the normal times demanded for commercial production.
(b) a large quantity of softening oil (at least 20 parts) incorporated into the tough synthetic rubber in an amount sufficient to enable the rubber to be processed into tire treads on ordinary equipment, in ordinary times, and using ordinary procedures. That is, no special treatment such as heat softening or long mechanical working would be required. It was previously known that oil could soften rubber, but it was considered that the large amounts necessary to make tough rubber processable without additional treatment would so deteriorate the physical properties of the rubber that it would be useless for tire treads.
26
(c) a reinforcing agent (carbon black in practice) added to the compound in conventional amounts, considering the rubber-oil mixture as all rubber. This carbon black could be uniformly mixed throughout the oil-rubber tread compound in the same equipment, time, and manner as if using ordinary 50 Mooney rubber. Thus, any deterioration in the starting rubber resulting from this necessary mixing action would be no more than that resulting from the prior art mixing with 50 Mooney rubber. In this combination, the retained superior properties of the high Mooney rubber would more than offset the deteriorating effect of the oil, resulting in a high quality end product at much lower cost.
DX1001 Alliger C294-95
Findings 62; 73; 79-83; Weinstock, GX2680, p. 54 86-88; 176-77 PX1221, tabs A & B
PX1114A
96. Blends of rubbers are covered. Some claims are directed specifically to cold rubber (claim 7)to an oil of a particular boiling point (claim 5); to a minimum oil content of 30 parts (e. g., claim 19); to a minimum rubber toughness of 115 Mooney (claim 22); and to a characterization of the rubber toughness based on a test requiring a mixing of oil, rubber, and carbon black (claim 1). These will be analyzed specifically
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in connection with the findings on infringement, but it is not necessary to treat them specifically here since General does not rely upon the narrower claims to distinguish over the prior art.
DX1001
Infringement
97. Since December 13, 1960, the date of issuance of the patent in suit, Firestone has made substantial quantities of curable rubber tread stocks from three representative formulas which were designated in this case as Stock A, Blend 2, and Blend 5. These stocks also were applied as the tread portions of pneumatic passenger tires commercially manufactured by Firestone. The three formulas for the stocks expressed in parts by weight are as follows:
FR-S 184 96 60 82
Diene 35 20
Diene 55 20
FR-S 1500 18
Other Rubber
27
_4_
Total Parts of Rubber 100 100 100
Parts of Oil Supplied by FR-S 184 36 23 31
Parts of Oil Supplied at Banbury 20
Total Parts of Oil per Hundred Parts of Rubber 36 43 31
Parts of Black and Type 55 ISAF 68 ISAF 65 HAF
The formula for each of the above stocks also contains other ingredients such as sulfur, accelerators and the like. The exact composition and amounts of such ingredients are considered to be trade secrets by Firestone, but disclosure of this detailed information is agreed by Firestone to be not necessary for the purposes of this litigation.
GX2516, par. 33 and 34
GX2681, tab 31(b)
98. The material, FR-S 184, in Stock A, Blend 2, and Blend 5 was (and is) a regular commercial product of Firestone manufactured by copolymerizing, in an aqueous emulsion system at a temperature of about 41° F. (a), a latex of a synthetic rubbery copolymer of butadiene and styrene containing more than 50% by weight of butadiene, and (b) an aqueous emulsion of a hydrocarbon mineral oil obtained from petroleum. The latex and emulsion were (and are) proportioned so that FR-S 184 contained 37.5 parts by weight of such oil and 100 parts of the rubbery copolymer.
GX2516, par. 25 GX2517
DX1288, pp. 57, 74
99. The copolymer contained in FRS 184 was a “cold” rubber with a relatively long chain molecular structure. It was compatible with hydrocarbon mineral oils. It was substantially gel free as determined by normally used industry tests, and it was non-oil resistant in accordance with the classification usually made in the rubber industry of oil-resistant versus non-oil resistant (based on the relative resistance of vulcanized compounds made from the rubbers to swelling in hydrocarbon oils).
GX2516, par. 25-29
DX1288. p. 251
100. The Mooney viscosity (ML-4 at 212 °F.) of the contained copolymer in the latex for FR-S 184 was rigidly controlled by Firestone. Such control included taking regular samples of the latex as it was made, coagulating it (without adding oil) and measuring the Mooney viscosity of the rubber coagulum.
DX1288, pp. 271-2
GX2517
101. Asa part of the discovery in the Baltimore case, Firestone supplied General with a representative sample of the copolymer contained in FR-S 184 that had been coagulated without adding the oil. Two measurements of Mooney viscosity were made by General on two different portions of the sample, and the readings were 116 ML-4 and 117 ML-4. Firestone made no Mooney measure
*383
ments on a portion of the sample it had retained.
DX1353 Meyer, Bll,814-18; 12,309
102. It has been stipulated by the parties that the samples of FR-S 184 latex used for Mooney determinations were coagulated by a method which in fact differed from, but for the purposes of this case may be considered to be the same as, the method used in the commercial co-coagulation of the latex and oil emulsion.
GX2517
103. Firestone has stipulated that the Mooney viscosity readings on at least some of the samples of rubber coagulum from FR-S 184 latex were above 90 ML-4 at 212" F. The evidence as to particular samples ranged from about 95 to 117 ML-4. Firestone’s expert witness, Dr. Semon, desired samples of the contained polymer in FR-S 184 for test purposes to be as near 91 ML-4 as possible, but none that low was obtained for him.
GX2517 Meyer, Bll,814-18; 12,309
DX1353 Semon, C4274-75; 4456-57
GX2595-97
104. The Mooney viscosity of the FR-S 184 oil masterbatch was never below 40 ML-4. Since FR-S 184 has always contained 37.5 parts by weight of a typical rubber softening oil, the Mooney viscosity of the contained rubber copolymer must always have been above 90 ML-4, according to charts prepared by Firestone’s expert, Dr. Semon. The median Mooney range for FR-S 184 specified by Firestone is 45 ML-4, corresponding to a Mooney reading of about 102 for the contained polymer according to the Semon chart. The Court finds that the contained copolymer in FR-S 184 as made by Firestone since December 13, 1960, meets the Mooney requirements of claims 13, 14, 17-19, and 22.
DX1288, p. 74 Semon, C4441-43
FX2865
105. Another portion of the sample of the copolymer in FR-S 184 supplied by Firestone (Finding 101) was mixed by General’s personnel with 65 parts by weight of Philblack O (a high abrasion furnace black) and 30 parts by weight of Sundex 53 (a hydrocarbon oil).
28
The mixing procedure used was that described in lines 3 to 30 in column 7 of the patent in suit. Mooney viscosity measurements made by General on the mixture gave values of 80.5 ML-4 and 81 ML-4. No one from Firestone observed the mixing and Mooney measurements, but Firestone made no such mixtures or Mooney measurements itself on this sample of FR-S 184. A series of similar tests run by Dr. Semon for Firestone in 1969-70 on samples of what was alleged to be commercial production runs of the copolymer in FR-S 184, when mixed with high abrasion furnace black and a hydrocarbon oil, resulted in compounds having a ML-4 of 85. The Court finds that the contained polymer in FR-S 184 as made by Firestone since December 13, 1960, met the Mooney requirements of claims 1, 3-5, and 7.
DX1353 Meyer, Bll,822-29; 12,153-54
Semon, C4269-74 Irons, B12,5X6
106. Diene 35 and Diene 55 in Blend 2 were rubbery polymers of butadiene manufactured by Firestone to have measured Mooney viscosities of 35 and 55 ML-4, respectively. FR-S 1500 in Blend 5 was a cold, butadiene-styrene rubber made by Firestone having a typical Mooney viscosity of 50 ML-4.
GX2516, par. 38
107. 82.7 parts by weight of FR-S 184, 20 parts of Diene 35 and 20 parts of Diene 55 (corresponding to the proportions of the rubber constituents in Blend 2) were mixed by General’s personnel with 7 parts of Sundex 53 (23 parts of hydrocarbon oil being present in the 82.7 parts of FR-S 184) and 65 parts of Philb

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/1501841. Public record. Not legal advice.