Appendix — E. I. du Pont de Nemours & Co. v. Phillips Petroleum Co.
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US.
D
OCT 12 1988
IN THE
Supreme Court of the United States
OCTOBER TERM, 1988
E. I. DU PONT DE NEMOURS & COMPANY,
Petitioner,
Vv.
PHILLIPS PETROLEUM COMPANY, PHILLIPS 66
COMPANY, and PHILLIPS DRISCOPIPE, INC.,
Respondents.
APPENDIX TO
PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
JOHN O. TRAMONTINE
875 Third Avenue
New York, New York 10022-6250
Tel.: (212) 715-0600
Attorney for Petitioner
Of Counsel:
EDWARD F. MULLOWNEY
GLENN A. OQUSTERHOUT
THOMAS J. VETTER
FisH & NEAVE
875 Third Avenue
New York, New York 10022-6250
Tel.: (212) 715-0600
October 12, 1988
TABLE OF CONTENTS
Page
Opinion of the Court of Appeals, June 15, 1988 ....... Al
Opinion of the District Court After Trial, February
a iscsauddekcantonenas A26
Judgment of the District Court, February 26, 1987 ... A182
Judgment of the Court of Appeals, June 15, 1988 ..... A184
Order of the Court of Appeals Denying Petition for
I IR RUINE Gica ins sa cekcbecsandccekesckdactacases A185
Al
Opinion of the Court of Appeals,
June 15, 1988
UNITED STATES COURT OF APPEALS
FoR THE FEDERAL CIRCUIT
87-1259 AND 87-1284
E. I. pU PONT DE NEmMourRS & COMPANY,
Plaintiff-Appellant,
V.
PHILLIPS PETROLEUM COMPANY, PHILLIPS 66 COMPANY,
AND PHILLIPS DRISCOPIPE, INC.,
Defendants-Cross-Appellants.
John O. Tramontine, Fish & Neave, of New York,
New York, argued for plaintiff-appellant. With him on
the brief were Edward F. Mullowney, Glenn A. Ouster-
hout and Thomas J. Vetter.
Philip S. Beck, Kirkland & Ellis, of Chicago, Illinois,
argued for defendants-cross-appellants. With him on the
brief were Harry J. Roper and George S. Bosy, Neuman,
Williams, Anderson and Olson, of Chicago, Illinois.
Appealed from: U.S. District Court for the District of
Delaware
JUDGE LATCHUM
A2
Court of Appeals Opinion
UNITED STATES COURT OF APPEALS
For THE FEDERAL CIRCUIT
87-1259 and 87-1284
E. L pu Pont DE Nemours & COMPANY,
Plaintiff-Appellant,
V.
PHILLIPS PETROLEUM COMPANY, PHILLIPS 66 COMPANY,
AND PHILLIPS DrRiSCOPIPE, INC.,
Defendants-Cross-Appellants.
DeEciwep: June 15, 1988
Before BISSELL, Circuit Judge, and MILLER, Senior Circuit
Judge.*
BISSELL, Circuit Judge.
E. L. du Pont de Nemours & Company (“Du Pont”)
appeals from a judgment of the United States District
Court for the District of Delaware, see E. I. du Pont de
Nemours & Co. v. Phillips Petroleum Co., 656 F. Supp.
1343, 2 USPQ2d 1545 (1987), that Du Pont failed to
prove that the infringement of claims 1, 2, 5, 10, 12 and 14
of its U.S. Patent No. 4,076,698 (7698) was willful.
Phillips Petroleum Company, Phillips 66 Company, and
Phillips Driscopipe, Inc. (collectively, “Phillips”), the
alleged infringers, cross-appeal from the district court’s
judgment that Du Pont proved infringement and that
Phillips failed to prove invalidity under 35 U.S.C.
* Circuit Judge Archer heard oral argument in these appeals but
subsequently recused himself, taking no position in the decision of
this case.
A3
Court of Appeals Opinion
§§ 102(g), 103 (1982 & Supp. III 1985), and
unenforceability due to inequitable conduct. We affirm in
part, reverse in part, vacate in part, and remand for
further proceedings consistent with this opinion.
BACKGROUND
Polymers are large molecules formed when a smaller
molecule, known as a monomer, joins chemically to itself
in a repeating fashion. Forming a copolymer’ involves
joining different monomers. #h Du Pont’s invention,
ethylene, a monomer, is cggighymerized with a “higher
alpha-olefin.” This « bean having between 5
and 18 carbon atoms wit © @ouble bond at one
end.2 ~ :
The copolymers of the six claims ‘at issue are in part
defined by their properties. Consider. for example,
claim 5:
5. An interpolymer of ethylene and a higher
olefinic hydrocarbon having 5 to 10 carbon atoms per
molecule, said higher olefinic hydrocarbon having
one terminal ~CH=CH, per molecule and no other
olefinic unsaturation, said interpolymer being further
characterized in that it has an X-ray crystallinity in
the range of 40 to 70%, a melt index in the range of
0.3 to 20, a density in the range of 0.9 to 0.95 and
said interpolymer being further characterized in that
its density is not less than 0.93 unless the content of
said higher olefinic hydrocarbon in the interpolymer
is at least 3% by weight.
The remaining claims are similar, though claim 1 requires
a certain “Elmendorf tear strength,” and claim 12 requires
a specified hoop stress. All six claims are reproduced in
the Appendix below.
‘i.e., “interpolymer.”
2 In comparison, a “lower alpha-olefin” would have 3-4 carbon
atoms.
A4
Court of Appeals Opinion
Du Pont filed its original patent application on March
1, 1956, and a continuation-in-part (CIP) application,
S.N. 632,416, on January 4, 1957. The °698 patent issued
from the CIP application on February 28, 1978, to
Anderson and Stamatoff. The delay in issuance was
partially due to an interference proceeding before the
Board of Patent Interferences at the United States Patent
& Trademark Office (PTO). As originally filed, the
application contained both product and process claims.
However, the process claims were cancelled following the
interference proceeding, leaving 15 product claims in the
698 patent.
In 1981, Du Pont filed the infringement suit now on
appeal. Phillips in its Answer and Counterclaim alleged
invalidity, unenforceability, and noninfringement. In a
bifurcated trial, the court tried the liability issues from July
21, 1986 through August 18, 1986. During the district
court proceedings, the PTO conducted a merged
reissue/reexamination proceeding of the "698 patent that
culminated, on May 12, 1986, with a final rejection of all
the claims. On June 11, 1986, Du Pont appealed that
rejection to the PTO Board of Patent Appeals and Inter-
ferences but that appeal was stayed as of August 6, 1986.
Included in the prior art Phillips relied on at trial
were the three items relied on in the appeal: (1) the 1955
work of Witt and Leatherman—researchers for Phillips;
(2) Vandenberg U.S. Patent No. 3,058,963; and (3)
Brown U.S. Patent No. 2,728,752.
At trial, Du Pont conceded that Phillips, through the
work of Witt and Leatherman, made ethylene/higher
alpha-olefin copolymers in the United States before the
date of the claimed invention. However, Du Pont claimed
that its copolymers could be distinguished from those of
ee I
AS
Court of Appeals Opinion
Phillips because of two properties disclosed in its patent
specification but not expressly written into the claims. The
district court accepted Du Pont’s argument, incorporated
those two properties as limitations into the six claims at
issue, and determined that the claims were not invalid, not
unenforceable, and infringed but not willfully.
ISSUES
1. Whether the district court erred in incorporating
two extraneous property limitations into the claims.
2. Whether the district court erred in holding that the
claims were not invalid under 35 U.S.C. § 102(g).
3. Whether the district court erred in holding that the
claims were not invalid under 35 U.S.C. § 103.
4. Whether the district court erred in holding that the
patent was not unenforceable.
5. Whether the district court clearly erred in finding
that the claims were infringed.
6. Whether the district court applied the incorrect
standard of proof regarding willful infringement.
OPINION
I. VALIDITY
A. Claim Interpretation
The district court believed that the essence of Du
Pont’s invention is that its copolymers, when compared
with “free-radical polyethylene, with linear polyethylene
and with comparable copolymers of ethylene ... and the
A6
Court of Appeals Opinion
lower alpha-olefins,” possess superior (1) environmental
stress crack resistance and (2) impact strength. Du Pont,
656 F. Supp. at 1350, 2 USPQ2d at 1547. The district
court interpreted the claims as including those two proper-
ties. In doing so, it erred.
The significance of claims in defining an invention
was clearly expressed by our predecessor court in Autogiro
Co. of America v. United States, 384 F.2d 391, 395-96,
155 USPQ 697, 701 (Ct. Cl. 1967):
The claims of the patent provide the concise
formal definition of the invention. They are the
numbered paragraphs which ‘particularly [ point] out
and distinctly [claim] the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112.
It is to these wordings that one must look to deter-
mine whether there has been infringement. [| Foot-
note omitted.] Courts can neither broaden nor nar-
row the claims to give the patentee something differ-
ent than what he has set forth. [Footnote omitted. }
No matter how great the temptations of fairness or
policy making, courts do not rework claims. They
only interpret them.
In accordance with that instruction, this court has con-
sistently adhered to the proposition that courts “cannot
alter what the patentee has chosen to claim as his in-
vention.” SSIH Equipment S.A. v. U.S. Intl Trade
Comm, 718 F.2d 365, 378, 218 USPQ 678, 689 ( Fed. Cir.
1983) (citing Autogiro); see also Loctite Corp. v. Ultraseal
Lid., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed. Cir.
1985) (“Generally, particular limitations or embodiments
appearing in the specification will not be read into the
claims.”). Indeed, neither Du Pont nor the district court
cites any case of this court reading extraneous limitations
into a claim.
el
A7
Court of Appeals Opinion
It is entirely proper to use the specification to inter-
pret what the patentee meant by a word or phrase in the
claim. See, e.g., Loctite Corp. v. Ultraseal Ltd., 781 F.2d
861, 867, 228 USPQ 90, 93 (Fed. Cir. 1985). But this is
not to be confused with adding an extraneous limitation
appearing in the specification, which is improper. By
“extraneous,” we mean a limitation read into a claim from
the specification wholly apart from any need to interpret
what the patentee meant by particular words or phrases in
the claim. “Where a specification does not require a
limitation, that limitation should not be read from the
specification into the claims.” Specialty Composites v.
Cabot Corp., Nos. 87-1456, -1457, slip op. at 11 (Fed. Cir.
April 27, 1988 (emphasis in original), citing Lemelson v.
United States, 752 F.2d 1538, 1551-52, 224 USPQ 526,
534 (Fed. Cir. 1985).
Although the district court cited as support United
States v. Adams, 383 U.S. 39, 148 USPQ 479 (1966),
Adams does not support reading into the claims extra-
neous limitations from the specification. Adams involved
claims to a battery comprising a combination of various
claimed elements, none of which was water. Adams
argued that the battery, unlike prior art batteries, could be
successfully and unexpectedly operated with water.
Though using water was not expressly included in the
claims, that unexpected feature was relevant to the Court’s
decision on nonobviousness. See, ¢.g., Graham v. John
Deere, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966)
(objective indicia are probative of nonobviousness ).
It was not necessary for the Court in Adams to read,
and the Court did not read, a “water” limitation into the
claims. The Court discussed the water feature only when
considering rebuttal of defendant’s argument of obvious-
ness. Properly interpreted, Adams does not deviate from
A8
Court of Appeals Opinion
this language in a Supreme Court precedent that Adams
refers to for authority:
[ W Je know of no principle of law which would
authorize us to read into a claim an element
which is not present, for the purpose of making
out a case of novelty or infringement. The
difficulty is that if we once begin to include
elements not mentioned in the claim in order to
limit such claim and avoid a defense or anticipa-
tion, we should never know where to stop.
McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116
(1895) (cited in Adams, 383 U.S. at 48-49, 148 USPQ at
482).
Du Pont contends that Decca Limited v. United
States, 420 F.2d 1010, 164 USPQ 348 (Ct. Cl. 1970), cert.
denied, 400 U.S. 865 (1970), supports the district court
decision. It is mistaken. The claims at issue in Decca were
written in “means plus function” format, which are subject
to the last paragraph of 35 U.S.C. § 112. Hence, resort to
the specification in Decca was necessary not only pursuant
tc the normal rule of resorting to the specification to
interpret what the patentee meant by claim language, but
also, pursuant to statute.
Although language in Decca and other Court of
Cliams decisions may have given the perception that
claims are to be “saved” from invalidity by reading
extraneous limitations into them, see, e.g., SSIH Equip-
ment S.A. vy. USITC, 718 F.2d 365, 385, 218 USPQ 678,
695 (Fed. Cir. 1983) (Smith, J., concurring in part,
dissenting in part), this court’s consistent approach in
interpreting claims, and in rejecting resort to extraneous
limitations from the specification, should have negated
that perception by now. See Sjolund v. Musland, Norsol,
Inc. and Wink Corp., No. 87-1496, slip op. at 23 (Fed.
ope ee
A9
Court of Appeals Opinion
Cir. June 1, 1988) (“limitations from the specification are
not to be read into the claims”). Thus, the district court
was wrong as a matter of law in reading into the claims at
issue the two extraneous property limitations mentioned
above. The remainder of this opinion, and the proceed-
ings on remand below, shall treat the ciaims as not
containing those limitations.
B. Novelty—35 U.S.C. § 102(g)
The novelty issue relates to 35 U.S.C. § 102(g).
which states that a person is entitled to a patent unless
“before the applicant’s invention thereof the invention
was made in this country by another who had not
abandoned, suppressed, or concealed it.”
The claims in this case fall into two groups. One
group—claims 2, 5, 10 and 14—contains limitations per-
taining only to density, percent crystallinity, melt indices,
percent monomer, and type of monomer. Independent
claim 5, reproduced above, is representative. Du Pont has
conceded that the Witt and Leatherman copolymers of
Phillips made in this country before the Du Pont in-
vention, satisfied those limitations. Because it is con-
3 At trial, Du Pont conceded as follows:
DuPont judicially admits that before the date of DuPont’s
invention of the patent in suit, Gerald T. Leatherman and
Donald R. Witt, researchers at Phillips, made in the United
States copolymers of ethylene with propylene, ethylene with |-
butene, ethylene with l-pentene and ethylene with l-hexene. That
those ethylene with I-pentene copolymers had comonomer-type,
density, melt index, percent crystallinity and weight percent
comonomer content falling within the ranges expressly called for
by the claims asserted against Phillips in this action.
That those ethylene-l-hexene copolymers had comonomer-
type, density, percent crystallinity and weight percent comon-
omer content falling within the ranges expressly called for by the
claims asserted against Phillips in this action and melt indices of
0.19 and 0.27.
DuPont will not attempt to prove in this action that the
invention of the patent in suit was made by DuPont before the
dates that those ethylene-l-pentene copolymers and ethylene-l-
hexene copolymers were made by Gerald T. Leatherman and
Donald R. Witt.
Al0
Court of Appeals Opinion
ceded that the copolymers of claims 2, 5, 10 and 14 are
anticipated by the prior work of Phillips, we reverse the
district court’s determination with respect to these claims,
and hold these claims invalid.
The second group of claims—claims | and 12—must
be addressed on remand. Those two claims include a
limitation not present in the other four claims and not
conceded by Du Pont to be present in the Witt and
Leatherman copolymers. Claim | includes this limitation:
“‘when in the form of a film, an Elmendorf tear strength in
the range of 150 to 400 grams per mil.” Claim 12, which
claims the copolymer in the form of pipe, recites a
limitation to impact strength in terms of hoop stress. To
find anticipation of claims | and 12, the district court must
determine that Phillips met its burden of proving by clear
and convincing evidence that the copolymers it made prior
to Du Pont’s invention possessed those properties. See
American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725
F.2d 1350, 1360, 220 USPQ 763, 771 (Fed. Cir.), cert.
denied, 469 U.S. 821 (1984).
Phillips asserts, citing Titanium Metals Corp. of
America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.
Cir. 1985), that the strength limitations of claims | and 12
are merely property limitations that cannot serve to dis-
tinguish the claims from the Witt and Leatherman copoly-
mers. In Titanium, the claims covered, for example, a
“titanium based alloy consisting essentially by weight of
about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up
to 0.2% maximum iron, balance titanium, said alloy being
characterized by good corrosion resistance in hot brine
environments.” The reference upon which both the Patent
ebee* 6 Se ar
Wad aa are.
All
Court of Appeals Opinion
Office and the court based their § 102 rejections showed
an alloy with those percentages, and the court stated:
Congress has not seen fit to permit the patenting
of an old alloy, known to others through a
printed publication, by one who has discovered
its corrosion resistance or other useful properties,
or has found out to what extent one can modify
the composition of the alloy without losing such
properties.
Id., 778 F.2d at 782, 227 USPQ at 778.
Titanium, however, does not mean that property
limitations can never have meaning in a claim. On
occasion, particularly with polymers, structure alone may
be inadequate to define the invention, making it appropri-
ate to define the invention in part by property limitations.
As the district court here recognized in assessing the issues
under 35 U.S.C. § 112, “if the claims, read in light of the
specification, reasonably apprise those skilled in the art
both of the utilization and scope of the invention, and if
the language is as precise as the subject matter permits,
the courts can demand no more.” Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231
USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 107 S. Ct.
1606 (1987).4
Here, the district court found that “[t]he ethylene-
higher alpha-olefin copolymers of the invention are char-
acterized by several parameters so that they can be
distinguished by external tests from linear ethylene
homopolymers and from linear ethylene copolymers that
are rubber-like.” Du Pont, 656 F. Supp. at 1350, 2
4 Compare Seattle Box, Inc. v. Industrial Crating & Packing, Inc.,
731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984) (the test for
adequacy under § 112 { 2 is “whether one of ordinary skill in the art
would understand what is claimed when the claim is read in light of
the specification” ).
Al2
Court of Appeals Opinion
USPQ2d at 1547. The district court concluded that those
parameters “are measurements of comonomer content,
density, and percent crystallinity.” Id. However, the
district court implicitly used additional parameters to help
define the claimed invention because it read into the
claims the two property limitations discussed above in
Part I, A, and considered the Elmendorf strength of claim
1 and hoop stress of claim 12 in determining validity and
infringement.
Furthermore, Du Pont’s expert, Dr. Beasley, testified
that “if process parameters are not identical in two
polymerizations intended to make ethylene copolymers
using the same monomers, the resultant copolymer will
probably have different properties.” The district court
‘accepted that and noted: “the court now assumes that
Phillips is not urging the theory initially espoused by Dr.
Price that compounds that have the same general chem-
ical structure will have the same properties regardless of
how they are made.” Thus, the district court found the
interpolymer actually produced depends in part on the
process used to prepare it. Du Pont, 656 F. Supp. at 1365,
2 USPQ2d at 1560.
It is clear, therefore, that the district court correctly
regarded the claimed interpolymers as compositions that
can be permissibly defined in terms of structure and
properties. Thus, the issue is not, as in Titanium, whether
one can get a patent on discovering a new property of an
old composition of matter. The issue is whether the
claimed copolymer, as defined in part by various property
parameters, is new. In Titanium, once the alloy disclosed
in the prior art reference was determined to possess the
structural limitations of the claim, the burden shifted to
the applicants to show that the alloy disclosed in the
Al3
Court of Appeals Opinion
reference did not possess the claimed property. Here,
however, Phillips has not shown that their interpolymers
of ethylene and higher alpha olefins possess the property
limitations set forth in the claims.
As the one challenging validity, Phillips must prove
on remand that the strength limitations of claims | and 12
are possessed by the Witt and Leatherman products. See
Tyler Refrigeration v. Kysor Industrial Corp., 777 F.2d
687, 689, 227 USPQ 845, 846-47 (Fed. Cir. 1985)
(identity of invention is question of fact and challenger
must show that each element of claim is found in a prior
patent or publication, either expressly or under principles
of inherency). In meeting that burden, Phillips need not
prove awareness by Witt and Leatherman that their
products possessed the properties. Also, Phillips is entitled
to rely not only on the Witt and Leatherman patent
application and its corresponding foreign patent appli-
cations, but also on the notebook data presented by
Phillips. The district court did not allow Phillips to use
that data regarding the two improper claim limitations
discussed above in Part I, A, because it determined that
the data on stress crack resistance was “abandoned,
suppressed, or concealed.” Du Pont, 656 F. Supp. at
1355-56, 2 USPQ2d at 1551-52. That was legally in-
correct if 35 U.S.C. § 102(g), as opposed to the Federal
Rules of Evidence, was used as the basis of excluding the
data. The inquiry under § 102(g) allows Phillips to use
any relevant data to prove its defense unless the informa-
tion is otherwise untimely produced.
C. Nonobviousness
As the district court recognized, determining
nonobviousness is a legal question based on factual under-
Al4
Court of Appeals Opinion
pinnings. Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 567 (1966); Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1596-
97 (Fed. Cir.), cert. denied, 107 S. Ct. 2187 (1987).
Changing the definition of the claims used by the district
court by eliminating the two limitations it improperly read
into the claims may affect a number of those factual
inquiries and the legal conclusion itself. Because of that,
we deem it appropriate for the district court to reassess the
nonobviousness of claims | and 12 as properly defined.
We can review that legal assessment, in any subsequent
appeal, for error or the underlying fact findings for clear
error.
However, because the district court applied an in-
correct test in excluding the work of Witt and Leatherman
as prior art for § 103 purposes, we give guidance to the
court on one aspect of one of the factual underpinnings of
nonobviousness, the “‘scope and content of the prior art.”
Id. Specifically, we now address when § 102(g) prior
work can be used as § 103 prior art.
ae ee
The district court in excluding the work of Witt and
Leatherman applied a test derived from Jn re Clemens, ,
622 F.2d 1029, 1039-40, 206 USPQ 289, 299 (CCPA :
1980): the work of another under § 102(g) is prior art
under § 103 only when that work is known to the art or to
the patentee before he made the invention. See, e.g.,
Kayton on Patents, 5-28 (2d ed. 1983). Applying that
test, the district court held that Phillips’ prior work was not |
usable in a § 103 context “[b]ecause Phillips’ work was |
kept secret and was unknown to both the du Pont
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Court of Appeals Opinion
researchers and the art.”5 Du Pont, 656 F. Supp. at 1363,
2 USPQ2d at 1558. The district court also relied on
Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d
1437, 223 USPQ 603 (Fed. Cir. 1984), and Phillips
contends that Kimberly-Clark eliminated the test of
Clemens. We agree with Phillips.
Kimberly-Clark distinguished as dictum the Clemens
requirement of applicant’s personal knowledge because
“§ 102(g) contains no personal knowledge requirement.”
745 F.2d at 1445, 223 USPQ at 607. Nor does § 102(g)
contain a “known to the art” requirement apart from the
requirement of no abandonment, suppression or con-
cealment. Hence, the alternative Clemens requirement
that the prior work be “known to the art” is also implicitly
dismissed as dictum. That implication is further supported
by the conclusion in Kimberly-Clark that certain prior
work at issue, solely because it satisfied § 102(g) (i.e., it
was reduced to practice and had not been abandoned,
suppressed or concealed), could be used for § 103 pur-
poses. /d., 745 F.2d at 1444, 223 USPQ at 606; see also
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1371 n.1, 231 USPQ 81, 84 n.1 (Fed. Cir. 1986)
(§ 102(g) prior art can be used for § 103).
5 Because work is “secret” does not necessarily mean that it has
been “abandoned, suppressed or concealed.” The latter determination
depends on the overall facts of each case. For example, the filing of a
United States patent application, as Phillips did here, maintains the
secrecy of work, but is a factor cutting against abandonment, suppres-
sion or concealment. In any event, Du Pont conceded that the prior
Phillips work has not been abandoned, suppressed or concealed, e.g.,
it admits in its reply brief that the Witt and Leatherman work is
“available as a defense of prior invention under Section 102(g).” In
that regard, the Phillips’ work was the subject of foreign patent
applications, speeches at various conferences, and papers presented at
American Chemical Society meetings.
Al6
Court of Appeals Opinion
The concurring opinion in Jn re Bass, 474 F.2d 1276,
177 USPQ 178 (CCPA 1973), properly characterized the
proposition for which Kimberly-Clark stands by stating:
[t]he term ‘prior art’ as it is used in 35 U.S.C.
§ 103 should include all inventions which were
made in this country before an applicant or
patentee made his invention, regardless of when
those inventions are made public or patent appli-
cations on them are filed, so long as those
inventions are found not to have been aban-
doned, suppressed, or concealed.
474 F.2d at 1292, 177 USPQ at 190. Moreover, although
Kimberly-Clark concluded there was no abandonment,
suppression, or concealment because of a filed patent
application that issued, Kimberly-Clark does not require
that a patent application be filed or a patent be issued
before § 102(g) prior work can qualify as § 103 prior art.
Certainly the court in Kimberly-Clark was concerned
about “secret prior art.” 745 F.2d at 1446, 223 USPQ at
607. Nevertheless the requirement of proving no
abandonment, suppression, or concealment does mollify
somewhat the “secret” nature of § 102(g) prior art.
Despite its concern over “secret prior art,” the court in
Kimberly-Clark allowed prior work to be used as prior art
in a § 103 context so long as it satisfied the requirements
of § 102(g). As stated in the concurring opinion in
Kimberly-Clark, the majority opinion “has extended the
scope of what constitutes the prior invention of another,
under § 102(g), to encompass the prior work of another
7
Al7
Court of Appeals Opinion
which has been reduced to practice.” 745 F.2d at 1460,
223 USPQ at 619 (footnote omitted ).6
Il. INFRINGEMENT
As indicated above, we reverse the district court’s
claim interpretation with respect to the two property
limitations “read into” the claims and, with respect to the
judgment that Phillips has not proven invalidity, we
reverse for claims 2, 5, 10 and 14 and vacate for claims |
and 12. Thus, the judgment of infringement must also be
vacated. However, on the infringement issue it is appro-
priate for judicial economy to review Phillips’ challenge to
the district court’s interpretation of the density and
crystallinity parameters appearing in claims | and 12.
A. Density
Phillips urges that the “0.95” limitation appearing in
the claims means “0.950” and that the district court
incorrectly interpreted “0.95” as meaning between 0.9451
and 0.9550. Consequently, Phillips urges that the district
court incorrectly found that Phillips’ products, having a
density between 0.9501 and 0.9550, literally infringed the
claims at issue.
Phillips urges that during the prosecution history Du
Pont made arguments on the meaning of the density that
are contrary to the district court’s interpretation. We
agree with Phillips that arguments made during the
6 The effect of using § 102(g) for § 103 purposes is limited by the
Patent Law Amendments Act of 1984. Pursuant thereto, this sentence
was added to 35 U.S.C. § 103: “Subject matter developed by another
person, which qualifies as prior art only under subsection (f) or (g) of
section 102 of this title, shall not preclude patentability under this
section where the subject matter and the claimed invention were, at
the time the invention was made, owned by the same person or
subject to an obligation of assignment to the same person.”
Al8
Court of Appeals Opinion
prosecution history are relevant in determining the mean-
ing of the terms at issue. Those arguments, and other
aspects of the prosecution history, as well as the specifica-
tion and other claims, must be examined to ascertain the
true meaning of what the inventor intended to convey in
the claims. Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861,
867, 228 USPQ 90, 93-94 (1985). Using the prosecution
history in that manner is different from prosecution history
estoppel, which is applied as a limitation upon the doc-
trine of equivalents after the claims have been properly
interpreted. Jd., 781 F.2d at 870, 228 USPQ at 96. The
district court here incorrectly assumed that prosecution
history can be used only in the latter regard. After noting
that “Phillips advanced five prosecution history estoppel
arguments related to the claim parameters of density,
crystallinity and comonomer content in an effort to restrict
the scope of the asserted claims,” Du Pont, 656 F. Supp. at
1388, 2 USPQ2d at 1579, the court concluded that none of
the arguments “involve the classic situation for estoppel,
such as if Du Pont had narrowed a claim by amendment
and now sought to require what was given up by resort to
the doctrine of equivalents.” Jd.
In interpreting “0.95” the district court referred to the
specification and to “customary scientific notations.” Jd. at
1385, 2 USPQ2d at 1577. However, during prosecution
Du Pont argued that a density between 0.950 and 0.955
was not within the scope of its claims. This position is
inconsistent with the claim interpretation Du Pont now
urges. Specifically, the examiner rejected Du Pont’s
pending claims, stating in part: “Since the polymers
disclosed by the [Field and Feller (F&F)] references
have densities within the scope of applicants’ claims .. . it
is not seen how the instantly claimed copolymers differ
Al9
Court of Appeals Opinion
from those of the references.” (Emphasis added.) In
response, Du Pont argued:
| W Jherever given in Field and Feller, the den-
sities of the ‘normally solid hydrocarbon mate-
rial’ polymerization product, where some olefinic
material, other than propylene, was included in
the reaction mixture with ethylene, were in the
range of linear polyethylene homopolymers
(0.954 - 0.97) rather than in the range (0.9 to
0.95) of the novel branched polyethylenes
(ethylene 1-olefin copolymers ) claimed by appli-
cants.
The examiner posited in the rejection that the F&F
densities, including one of 0.9547, were within the scope
of Du Pont’s claims (0.9 to 0.95), but that was contested
by Du Pont.
Du Pont argues that the examiner, in subsequently
withdrawing his rejection, placed no reliance on the 0.95
density recitation to distinguish F&F. That misses the
point. Regardless of the examiner’s motives, arguments
made during prosecution shed light on what the applicant
meant by its various terms. Not only did Du Pont argue
that an F&F density of 0.954 fell outside the scope of its
claims but also, regarding the next highest F&F density,
0.9557, Du Pont stated that it was “far above” any
densities of applicant’s unique, branched polyethylenes.
Du Pont also stated that the F&F density of 0.9585 had a
“quite high density.”
In light of that prosecution history, as well as other
factors such as the patent specification, the district court
should ascertain on remand the meaning of the density
parameter. If the court determines that the parameter has
changed, it should reassess infringement. We caution,
however, that even if the district court decides in light of
A20
Court of Appeals Opinion
the prosecution history to redefine the density as 0.950,
and accordingly, changes its finding of literal infringement
for those products of Phillips having a density between
0.9501 and 0.9550, the issue of infringement under the
doctrine of equivalents must be addressed by the court.
As indicated in Loctite Corp. v. Ultraseal Ltd., 781 F.2d
861, 871, 228 USPQ 90, 96 (Fed. Cir. 1985), merely
because certain prosecution history is used to define the
claims more narrowly, there still may be—even in light of
that same prosecution history—an appropriate range of
equivalents under the doctrine of equivalents.
B. Crystallinity
On crystallinity, Phillips urges that the 70% maximum
limitation means “70%,” not “70% + a variance of 10%-
20%” as interpreted by the district court. As with density,
the district court seemed to find prosecution history rele-
vant only in an estoppel context. That, again, is incorrect.
With Phillips’ interpretation, products over 70% would not
literally infringe; with the district court’s interpretation,
some were held to infringe literally.
The district court seemed to ignore arguments made
during the reissue/reexamination proceeding that prior art
polymers including those with crystallinity of 38%, 32%,
and 38% were “outside the scope of appellant’s claims.”
Statements made during reissue are relevant prosecution
history when interpreting claims. See, e.g., Howes v.
Medical Components, 814 F.2d 638, 645, 2 USPQ2d 1271,
1275 (Fed. Cir. 1987); Standard Oil Co. v. American
Cyanamid Co., 774 F.2d 448, 452, 227 aaa 293, 296
(Fed. Cir. 1985).
It is relevant to the claim interpretation here that Du
Pont urged that something 2% off the claimed lower limit
A2!
Court of Appeals Opinion
of 40% is not in the range, yet later argued for a variance
of 10%-20% off the upper limit. As with density, therefore,
we instruct the district court judge on remand to reassess
the meaning of the crystallinity parameter. Again as with
density, however, even if the district court redefines the
parameter as “70% without variance,” the issue of in-
fringement under the doctrine of equivalents must still be
addressed.
C. Remand Instructions
On remand, the district court should ascertain the
meaning of a density of “0.95” and a crystallinity of
“70%.” If it means “0.950” density or “70% without
variance” crystallinity, infringement will have to be reas-
sessed under the doctrine of equivalents for those Phillips
products having a density over 0.950 or a crystallinity over
70%. However, the instruction to reassess the definitions
of “0.95” and “70%” does not affect the infringement
determination unchallenged on appeal for those infringing
Phillips products that have a density below 0.950 and a
crystallinity less than 70%.
Ill. INEQUITABLE CONDUCT
Phillips alleges as inequitable conduct (1) Du Pont’s
failure to inform the PTO about the alleged status of Du
Pont’s Rule 131 affidavit, and (2) Du Pont’s improper
selection of data. The district court rejected those argu-
ments apparently because it found that Phillips failed to
prove by clear and convincing evidence that the alleged
misrepresentations were material. Phillips has not shown
us that those findings were clearly erroneous, J.P. Stevens
& Co. v. Lex Tex Ltd., 747 F.2d 1553, 1562, 223 USPQ
1089, 1094 (Fed. Cir. 1984), cert. denied, 474 U.S. 822
(1985), nor that the conclusions of no inequitable conduct
A22
Court of Appeals Opinion
were otherwise incorrect. In reaching that conclusion in
the context of this case, we are reminded of this admoni-
tion of Kimberly-Clark v. Johnson & Johnson, 745 F.2d
1437, 1454, 223 USPQ 603, 614 ( Fed. Cir. 1984): “Fraud
in the PTO’ has been overplayed, is appearing in nearly
every patent suit, and is cluttering up the patent system.”
IV. WILLFULNESS
The district court decided that Du Pont did not prove
willfulness by clear and convincing evidence, although it
stated that Du Pont wouid have proven infringement if
the standard of proof had been a preponderance of the
evidence. Du Pont argues on appeal that willful in-
fringement need only be proved by a preponderance of
the evidence. Du Pont, 656 F. Supp. at 1394, 2 USPQ2d
at 1584. That is legally incorrect. As this court stated in
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 628, 225 USPQ 634, 644 (Fed. Cir. 1985):
“(t]he jurisprudence ... uniformly requires clear and
convincing evidence in support of increased damages.”
Du Pont cites Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1569, 1583, 1 USPQ2d 1081,
1083, 1094 (Fed. Cir. 1986). There the court did not
specifically focus on the proper standard to apply, but,
when discussing the procedural history at the district court
it stated generally that the “54 jointly prepared questions
... [submitted to the jury] .. . recognized the appropriate
burdens to be met by each of the parties as well as the
corresponding standard of proof with respect to each
issue.” Id. at 1569, 1 USPQ2d at 1083. One of the
standards, not discussed in the opinion, is revealed by
question 24, contained in the APPENDIX to the opinion:
“Do you find that Orthokinetics has proved by a pre-
at .
—
ee Oe a ee re ee eae ™
A23
Court of Appeals Opinion
ponderance of the evidence that the infringement of the
[°867] patent by any of the following defendants was
willful?”
Obliquely, therefore, Orthokinetics might support
Du Pont’s position. However, Orthokinetics never focused
on the issue, and we conclude that Orthokinetics never
intended to change the proper test stated in Shatterproof.
DECISION
In view of the foregoing: (1) the district court’s claim
interpretation is (a) reversed insofar as it has “‘read into”
the claim two extraneous property limitations, and (b)
vacated insofar as it has interpreted a density limitation of
“0.95” to mean “0.9451-0.9550” and a crystallinity limita-
tion of “70%” to mean “70% + 10-20%”; (2) the district
court’s judgment that Phillips did not prove invalidity
under 35 U.S.C. § 102(g) is reversed for claims 2, 5, 10,
and 14 and vacated for claims | and 12; (3) the district
court’s judgment that Phillips did not prove invalidity
under 35 U.S.C. § 103 is vacated for all claims; (4) the
district court’s judgment that Phillips did not prove
unenforceability is affirmed; (5) the district court’s judg-
ment that Du Pont proved infringement is vacated; and
(6) the district court’s judgment that Du Pont did not
prove willful infringement is affirmed. This case is
remanded for further proceedings consistent with this
opinion.
COSTS
Costs are awarded to Phillips.
AFFIRMED IN PART, REVERSED IN PART,
VACATED IN PART AND REMANDED
A24
Court of Appeals Opinion
APPENDIX
1. An interpolymer composed of interpolymerized
comonomers consisting essentially of ethylene and at least
one normal aliphatic mono-alpha-olefinic hydrocarbon
containing from 5 to 10 carbon atoms per molecule, the
proportion of said monoolefinic hydrocarbon being from 3
to 7% of the weight of the interpolymer, said interpolymer
having a melt index within the range of 0.3 to 20, and,
when in the form of a film, an Elmendorf tear strength in
the range of 150 to 400 grams per mil, and a density of
0.93 to 0.94.
2. An interpolymer of ethylene and from 1% to 20%
by weight of a higher olefinic hydrocarbon having 5 to 18
carbon atoms per molecule, said higher olefinic hydrocar-
bon having no non-aromatic unsaturation other than one
terminal -CH = CH, per molecule, said interpolymer hav-
ing essentially no other copolymerized components, the
proportion of the interpolymerized ethylene component
therein being not less than 80% nor more than 99% by
weight, the percentage crystallinity of the interpolymer
being such that the density ranges from 0.95 at 1%
interpolymerized higher olefinic hydrocarbon down to 0.9
at 20% interpolymerized higher olefinic hydrocarbon.
5. An interpolymer of ethylene and a higher olefinic
hydrocarbon having 5 to 10 carbon atoms per molecule,
said higher olefinic hydrocarbon having one terminal
-CH =CH, per molecule and no other olefinic unsatura-
tion, said interpolymer being further characterized in that
it has an X-ray crystallinity in the range of 40 to 70%, a
melt index in the range of 0.3 to 20, a density in the range
of 0.9 to 0.95 and said interpolymer being further charac-
terized in that its density is not less than 0.93 unless the
————
A25
Court of Appeals Opinion
content of said higher olefinic hydrocarbon in the inter-
polymer is at least 3% by weight.
10. Composition of claim 5 in the form of a film.
12. Composition of claim 5 in the form of pipe which
is further characterized by withstanding 3000 hours at
hoop stress of 750 psi and a temperature of 60°C.
14. A composition of claim 5 having a density in the
range of 0.910 to 0.945 and a melt index in the range of
0.3 to 2.1.
A26
Opinion of the District Court After Trial,
February 26, 1987
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
Civil Action No. 81-508-JLL
E.I. DU PONT DE NEMourRS & COMPANY,
Plaintiff,
V.
PHILLIPS PETROLEUM COMPANY, PHILLIPS 66 COMPANY,
and PHILLIPS DRISCOPIPE, INC.,
Defendants.
William O. LaMotte III of Morris, Nichols, Arsht &
Tunnell, Wilmington, Del., and John O. Tramontine,
Edward F. Mullowney, Glenn A. Ousterhout, and Thomas
J. Vetter of Fish & Neave, New York, N.Y., for plaintiff.
C. Waggaman Berl, Jr., Wilmington, Del., and Harry J.
Roper, Sidney Neuman, George S. Bosy, Nicholas A.
Poulos, Lawrence E. Apolzon, Susan Bennett Fentress,
Raymond N. Nimrod, and Steven R. Trybus of Neuman,
Williams, Anderson & Olson, Chicago, Ill., for defendants.
A27
District Court Opinion
OPINION
Wilmington, Delaware
- February 26, 1987
LATCHUM, Senior Judge.
I. INTRODUCTION
This is a patent infringement suit! in which the
plaintiff, E.I. duPont de Nemours and Company
(“DuPont”), has charged the defendants, Phillips Petro-
leum Company, Phillips Chemical Company, whose name
was changed during the pendency of this case to Phillips
66 Company, and Phillips Driscopipe, Inc., with the
infringement of Claims 1, 2, 5, 10, 12, and 14 of DuPont’s
U.S. Patent No. 4,076,698 (“the 698 patent”). (Docket
Item [“D.1.”] 212 at 1.) Since Phillips Chemical Com-
pany, now named Phillips 66 Company, and Phillips
Driscopipe, Inc., are wholly owned Delaware corporate
subsidiaries of Phillips Petroleum Company, all three
defendants will be referred to collectively as “Phillips.”
(D.I. 212 at 1 and 252.) Phillips’ Answer, Affirmative
Defenses, and Counterclaims allege that the 698 patent is
invalid and unenforceable for various reasons and there
has been no infringement. (D.I. 159.) In addition,
Phillips filed a pretrial motion for summary judgment to
dismiss DuPont’s suit under the doctrine of collateral
estoppel based on a rejection of all the claims of the 698
patent by a Patent Examiner entered in a reissue-
reexamination proceeding in the Patent Office. (D.I.
210.) The Court reserved decision on the summary judg-
1 Subject matter jurisdiction exists by virtue of 28 U.S.C.
§ 1338(a). Personal jurisdiction and venue are not disputed by the
parties. (D.I. 212 at 2.)
A28
District Court Opinion
ment motion until after trial. The parties stipulated with
Court approval that the liability issues of validity,
enforceability, and infringement would be bifurcated from
the trial of the damage issues. (D.I. 161.)
The case was tried on the liability issues to the Court
without a jury from July 21, 1986 through August 18,
1986.2 After carefully considering the sufficiency, weight,
and credibility of the testimony of the witnesses, their
demeanor on the stand, the documentary evidence admit-
ted at trial, and the post-trial submissions of the parties,
the Court enters the following findings of fact and con-
clusions of law which are embodied in this opinion as
permitted by Rule 52(a), Fed.R.Civ.P.
Il. THE FACTS
A. The Invention In Issue
The °698 patent in suit relates to copolymers of
ethylene and higher alpha-olefins. The original patent
application was filed on March 1, 1956; a continuation-in-
part application was filed on January 4, 1957, and the
patent issued on February 28, 1978 (PX 1).8
The invention of the patent is based on DuPont’s
discovery that the “impact strength”, and _ the
“environmental stress crack resistance” of melt process-
able ethylene copolymers can be unexpectedly improved
by incorporating a higher alpha-olefin comonomer having
five or more carbon atoms (Tr. 87-93). The ’698 patent
specifically discloses that the alpha-olefin comonomers
which are “most outstanding in producing resins with high
impact strength and excellent stress crack resistance” are
2 Post-trial briefing was completed on January 7, 1987.
3“PX” refers to plaintiffs trial exhibits; “DX” refers to defen-
dants’ trial exhibits; and “Tr.” refers to the trial transcripts docketed
as D.I. 254-A through 254-U.
OOS
A29
District Court Opinion
those having “preferably 5 to 18 carbon atoms per
molecule” (PX 1, col. 3, ll. 19-23).
There are two aspects to the 698 patent: (1) the
composition of the ethylene copolymers, and (2) the
superior impact strength and the superior environmental
stress crack resistance that can be obtained by using those
ethylene copolymers. -
1. The Composition of the Ethylene Copolymers
Polymers are large molecules made by chemically
joining together many small molecules called monomers.
Polyethylene is the polymer made by polymerizing ethyl-
ene monomer:
ETHYLENE* — C=C
POLYETHYLENE — ... -C-C-C-C-C-C-C-C.. ..
(PX 1200; Tr. 36-37)
There are two types of polyethylenes. The first, free-
radical polyethylene, was developed in the 1930’s (Tr.
1180), and was commercialized after the end of World
War II (Tr. 52). Free-radical polyethylene is formed by
highly reactive growing molecules containing free radicals.
The polymer molecules formed by this process have both
long and short chain branches. The structure can be
analogized to a rose bush (Tr. 37-41).
The second type of polyethylene is linear polyethyl-
ene made by coordination catalyst processes developed in
the 1950’s (Tr. 61-62; 1181). Linear polyethylene mole-
cules are long straight chain structures. These molecules
do not have the branches that free-radical polyethylene
molecules have (Tr. 62).
4In these structures, each carbon atom has attached to it
hydrogen atoms (H) which are not depicted here for simplicity.
A30
District Court Opinion
Copolymers are made by polymerizing two mon-
omers (Tr. 66). For example, when ethylene and hexene
are copolymerized, an ethylene-hexene copolymer is
formed.
ETHYLENE C=C HEXENE C=C
ey pe
ETHYLENE-HEXENE COPOLYMER
...cctectec.c-c-c-cfEeelc-c-cc...
(
(
(
(
(PX 1202; Tr. 64-67)
Hexene (or hexene-1 ) is a six carbon “alpha-olefin.”
It has a double bond at one end of the molecule. Its
structure, and the structures of other typical alpha-olefin
comonomers are as follows:
ana iacileinaaniinmniaaaaallll
W-ON—A— AN—
A31
District Court Opinion
TYPICAL ALPHA-OLEFIN COMONOMERS
PROPYLENE C=C - BUTENE C
6— > -—O-— 0-8-0464 6-4 6- -R
PENTENE C= 'HEXENE C
ey re ee
T
OCTENE c DECENE C
16+ 6—0-4—h—h
(PX 1203; Tr. 67-68)
A32
District Court Opinion
The compositions described in the °698 patent are
linear copolymers of ethylene and higher alpha-olefin
comonomers (PX 1, col. 1, l. 61 to col. 2, |. 23; Tr. 67-68).
The higher alpha-olefin comonomers begin with pentene
which has 5 carbon atoms, and include hexene (6 carbon
atoms), heptene (7 carbon atoms), octene (8 carbon
atoms), and the remaining higher alpha-olefins through
octadecene, which has 18 carbon atoms (Tr. 67). DuPont
uses Octene-| in its commercial ethylene copolymers and
has in some instances used decene (Tr. 1090-91). Phillips
uses hexene-!1 (PX 1237; Tr. 2275; 3161-62; 3168-69;
3206; 3212-13).
Copolymers made with the lower alpha-olefins, such
as butene (4 carbon atoms) and propylene (3 carbon
atoms), are not within the scope of the invention. The
698 patent specifically discloses that in “producing resins
with high impact strength and excellent stress crack
resistance . . . [p]ropylene is not effective; butene-1 shows
only marginal effectiveness in this respect” (PX 1, col. 3,
ll. 19-25; Tr. 110-11).
The ethylene copolymers of the 698 patent can be
processed in conventional melt processing equipment ( Tr.
88). Melt index is a measure of the rate at which the
copolymer flows when melted and relates to the melt
processability of the material. The patent specifically
discloses that the ethylene copolymers of the 698 patent
“have melt indexes in the range of 0.2 to 20” to enable
them “to be fabricated by conventional fabricating tech-
niques” (PX 1, col. 4, Il. 12-15).
The ethylene-higher alpha-olefin copolymers of the
invention are characterized by several parameters so that
they can be distinguished by external tests from linear
ethylene homopolymers and from linear ethylene copoly-
a |
OE SE ee
A33
District Court Opinion
mers that are rubber-like (Tr. 856, 858-60, 888-89).
Those parameters are measurements of comonomer con-
tent, density, and percent crystallinity.
Comonomer content is a measurement of the pres-
ence and amount of comonomer in the ethylene-higher
alpha-olefin copolymer which aids in distinguishing the
copolymers of the invention from linear ethylene
homopolymers and linear ethylene copolymers that are
rubber-like. The ’698 patent discloses that the amount of
higher alpha-olefin can vary from a very small amount of
comonomer (linear ethylene homopolymer has none) on
the order of 1% by weight up to about 20% by weight
(above 20% the copolymers become rubber-like) (Tr.
139, 859-60, 888-89).
The measurement technique for comonomer content
disclosed in the patent is infrared spectroscopy (PX 1, col.
7, ll. 62-64 and Table I; Tr. 363-64, 380-90). Infrared
spectroscopy comonomer content measurements as low as
1.4% by weight for a heptene (7 carbon) polymer and 1%
by weight for a decene (10 carbon) copolymer (PX 1,
Table I [Example 1] and col. 7, ll. 62-64) are reported.
When the °698 patent application was filed in the mid-
1950’s, the margin of error for infrared comonomer
content measurements was much greater than the degree
of accuracy that can be obtained today by much later
developed techniques. For example, with a hexene
copolymer, the margin of error was at the very least
+0.6%. Thus, a nominal infrared measurement of 1% by
weight for hexene comonomer would have included
copolymers with hexene comonomer contents ranging
from about 0.4% to about 1.6% by weight (Tr. 3616).
Density and degree of crystallinity are also in-
dications of the amount of comonomer, aiding to dis-
A34
District Court Opinion
tinguish the copolymers of the invention from linear
ethylene homopolymers and linear ethylene copolymers
that are rubber-like. As comonomer is incorporated in ic
linear polyethylene chain, both the density and degree of
crystallinity decrease from the values measured with linear
polyethylene homopolymer alone (Tr. 132). The density
data that are included in the 698 patent disclose that
small amounts of comonomer can be used. Specifically,
the patent discloses that with the materials the DuPont
researchers were using, for linear polyethylene homopoly-
mers the densities ranged from 0.945 to 0.960, and that as
comonomer was added, the density decreased. Similarly,
the patent discloses that the degree of crystallinity likewise
decreased as comonomer was added (Tr. 132).
2. Superior Impact Strength And Environmental Stress
Crack Resistance Obtained With Higher Alpha-
Olefin Copolymers
The invention of the 698 patent was not the dis-
covery that ethylene could be copolymerized with higher
alpha-olefins, nor was it the discovery of a new co-
monomer content range, a new density range, or a new
X-ray crystallinity range (Tr. 135, 607-08). The invention
was the discovery that melt processable copolymers of
ethylene and higher alpha-olefins having five or more
carbon atoms unexpectedly can achieve impact strength
and environmental stress crack resistance properties that
are superior to those obtained with free-radical polyethy-
lene, with linear polyethylene and with comparable
copolymers of ethylene (that is, with similar densities and
melt index) and the lower alpha-olefins propylene (3
carbons) and butene (4 carbons) (Tr. 86-93).
Impact strength is a measure of a polymer’s ability to
sustain a sudden mechanical blow. Impact strength tests
A35
District Court Opinion
include the Izod impact test in which a sample is struck by
a weight that falls in a pendulum fashion and the Elmen-
dorf tear strength test in which a film sample is torn by a
weighted pendulum which rapidly tears the film (Tr. 88-
90; PX 601, which is the 1955 ASTM D 689-44 for
Elmendorf Tear Strength).
Environmental stress crack resistance is a measure of
the length of time that a polymer sample can be subjected
to a stress load without cracking. The stress load can be
imposed by bending the sample. The environment can be
heated air or liquids which cause stress cracking such as
detergents. One of the standard environmental stress
crack resistance tests is the Bell ESCR test in which
samples are notched and bent and placed in the stress
cracking agent Igepal (Tr. 90-92, 932-36; PX 135; PX
1256 at 389-93). Another stress test is the hoop stress test
for plastic pipe (Tr. 92-93).
The 698 patent discloses that superior impact and
environmental stress crack resistance properties can be
obtained in ethylene copolymers with alpha-olefins con-
taining five or more carbons up to eighteen carbons.
Based on prior experience on the effect of branching in
free radical polyethylene, this result was totally unex-
pected and unpredictable prior to DuPont’s discovery in
1955 (Tr. 99-103).
When an alpha-olefin comonomer molecule is in-
corporated in an ethylene copolymer, a side chain or
branch is formed (Tr. 66). This can be seen graphically
in the structure diagram of an ethylene-hexene copolymer
(supra at A30). In the mid-1950’s, it was known on the
basis of prior work with free-radical polyethylene that
decreasing the number of branch points would cause an
impairment of both stress crack resistance and impact
A36
District Court Opinion
toughness (PX 1, col. 1, ll. 51-60; Tr. 94-96). In other
words, to improve the properties of stress crack resistance
and ‘mpact toughness, one would increase the number of
branch points. On the basis of this experience, one skilled
in the art would have expected lower alpha-olefins to be
more effective than higher alpha-olefins in improving
these properties. When lower and higher alpha-olefins are
separately copolymerized with ethylene in equal amounts
by weight, the lower alpha-olefin comonomers being of
lower molecular weight will give more branch points in
the copolymer (Tr. 102). Dr. John Beasley explained this
by comparing copolymers made with butene, which has |
four carbons, and octene, which has eight. At equal |
weights, twice as many branch points will be obtained
using butene than will be obtained with octene. Thus, to
one skilled in the art in the 1950’s, better stress crack
resistance and impact strength would have been expected
with the butene copolymer (Tr. 101-09).
Unexpectediy, DuPont discovered the opposite to be
true. The higher alpha-olefin copolymers achieved these
superior properties (Tr. 101, 103, 109). Based on this
discovery, DuPont filed the applications for the °698
patent in 1956 and 1957 from which the °698 patent
issued.
The specifications of the 698 patent clearly disclose
the existence of unexpected superior properties of the
invention of the *698 patent and they read in pertinent
part:
a. A copolymer which can be extruded into film
. surprisingly, with an impact toughness higher
than any film forming polyethylene resin ever tested.
b. A copolymer which can be extruded into wire
coatings . . . which, surprisingly, have stress crack
a
A37
District Court Opinion
resistance at least equal to any other wire coating
polyethylene resin ever tested.
c. A copolymer which can be extruded into pipe
. which, surprisingly, has a longer time to failure
when subjected to internal pressure both at room
temperature and at elevated temperatures than does
any other pipe forming polyethylene resin ever tested.
d. A copolymer which can be injection molded
into various articles . .. which, surprisingly have good
impact toughness and stress crack resistance at least
equal to any injection moldable resin ever tested (PX
1, column 2, lines 24-47).
* * *
Those which are most outstanding in producing resins
with high impact strength and excellent stress crack
resistance while at the same time being relatively high
in crystallinity contain more than 4 carbon atoms and
preferably 5 to 18 carbon atoms per molecule.
Propylene is not effective; butene-l| shows only
marginal effectiveness in this respect. (PX 1, column
3, lines 19-25.)
Phillips argues that it is improper to ascertain the
invention of a patent from the specifications outside of the
patent claims. But this is not entirely so. The Supreme
Court held in United States v. Adams, 383 U.S. 30, 40
(1966), that “it is fundamental that claims are to be
construed in the light of the specifications and both are to
be read with a view to ascertaining the invention.” Other
courts have likewise held that limitations that are essential
to an invention are to be read into the claims in ascertain-
ing the invention. Roberts Dairy Co. v. United States, 530
F.2d 1342, 1352-53 (Ct.Cl. 1976); Stanley Works v.
ee
A38
District Court Opinion
McKinney Mfg. Co., 520 F.Supp. 1101, 1110 (D.Del.
1981). In this case the superior impact strength and
environmental stress crack resistance which are essential
elements of the invention are distinctly disclosed in the
specifications as the surprising aspect of the copolymers
involved and they must be read with the claims in
ascertaining the invention.
Ill. COLLATERAL ESTOPPEL DEFENSE
As noted above, just prior to the commencement of
trial in this Court, Phillips moved for summary judgment
‘to dismiss DuPont’s action under the doctrine of collateral
estoppel. (D.I. 210.) Consideration of that motion was
deferred until after trial. Phillips’ motion must now be
decided.
Phillips points out that the Patent Office conducted
a merged reissue and reexamination proceeding of
DuPont’s 698 patent over an extended period of time.
(D.I. 211A at A3-9.) In a final office action, Edward J.
Smith, Patent Examiner, on May 12, 1986, rejected all the
claims of the 698 patent. (Jd. at 102-119.) On June 11,
1986, DuPont appealed the Examiner’s final office action
to the Board of Patent Appeals and Interferences. (Jd. at
133-34.) On August 6, 1986, the Assistant Commissioner
of Patents entered an Order staying all further proceedings
in the DuPont reissue/reexamination pending in the Pat-
ent Office. (D.I. 257, App. C.)
Phillips strenuously argues that the Examiner’s Final
Office Action of May 12, 1986, rejecting all the claims of
the 698 patent, is entitled to preclusive effect against
DuPont in this Court which it contends is a collateral
proceeding. The Court finds Phillips’ contention to be
without legal merit and therefore will deny Phillips’
summary judgment motion for the following reasons.
A39
District Court Opinion
First, Phillips’ argument is premised on the assump-
tion that a patent examiner’s rejection of the 698 patent
claim is a final decision of an administrative agency. The
Court concludes that this assumption is incorrect. A
patent examiner’s rejection of claims in a
reissue/reexamination proceeding is not a final decision
by the Patent Office. Any final Patent Office decision in
the reissue/reexamination matter is a question that would
have to be determined by the Board of Patent Appeals
and Interferences. MPEP §§ 1442.02 and 2286. (D.I.
257, App. C.) But since the reissue/reexamination pro-
ceedings in the Patent Office were stayed (id., App. C),
the Board of Patent Appeals and Interferences has never
considered the Examiner’s rejection of the claims, has
never made a final determination, and never will, because
the MPEP provides that the decision of this Court on
validity and enforceability of the 698 patent will be
considered controlling in the Patent Office. See MPEP
§ 2286 (id., App. C). Phillips has cited no precedent, and
the Court has found none on its own, which holds that an
Examiner’s final office action in a reissue/reexamination
proceeding is a final decision of the Patent Office which
should be given collateral estoppel effect by this Court.
Second, Phillips’ effort to bring an Examiner’s final
office action under the Supreme Court’s decision on
collateral estoppel in Blonder-Tongue v. University Foun-
dation, 402 U.S. 313 (1971), is equally unavailing. Phil-
lips argues that in Blonder-Tongue, the Supreme Court has
established that the doctrine of collateral estoppel pre-
vents a patentee from relitigating the validity of claims of
a declared invalid patent in a “prior proceeding.” But
Phillips ignores the fact that the only “prior proceeding”
covered by the collateral estoppel rule in Blonder-Tongue
was a “trial” in which there has been a “judicial resolution
A40
District Court Opinion
of the same issue.” In Blonder-Tongue, there had been a
prior decision of patent invalidity by a United States
District Court after trial. Thus, the Supreme Court held in
that situation, that collateral estoppel could be pleaded
and given effect in subsequent litigation if the patent
owner had been given a full and fair opportunity to pursue
his claim in the prior trial “procedurally, substantively and
evidentially.” Blonder-Tongue, 402 U.S. at 333. Apart
from the fact that the Examiner’s rejection was not a final
decision of the Patent Office, it would be absurd to hold
that an Examiner’s final office action before a decision was
reached by the Board of Patent Appeals and Interferences
in the stayed reissue/reexamination proceedings was pre-
clusive in this Court. The proceedings to the point
reached before the Examiner afforded no evidentiary
hearing, no live testimony in order to determine credi-
bility, no right of cross-examination, and no application of
the rules of evidence. Certainly the absence of these
features before the Examiner cannot be said to fulfill the
Blonder-Tongue. requirements of a full and fair opportu-
nity “procedurally, substantively and evidentially.”5 In
contrast to the mere paper record considered by the
Examiner, this Court conducted a full trial on the issues of
infringement, validity, and enforceability of the *698 pat-
ent between July 21, 1986 to August 18, 1986. The parties ~
called a total of 29 fact and expert witnesses to testify and
introduced 999 exhibits into evidence. The trial transcript
covers more than 1900 pages of direct testimony and over
1400 pages of cross-examination. (D.I. 554 A-U.)
Trial was not merely limited to a comparison of the
°698 patent and prior art references. Extensive and
detailed evidence was also received on DuPont’s unex-
5 This Court would have been faced with a different problem had
the reissue/reexamination proceedings ended with a final decision of
the Patent Office. This, however, did not occur in this case.
A4l
District Court Opinion
pected and surprising discovery that superior impact
strength and stress crack resistance could be obtained with
ethylene-higher alpha-olefin copolymers, on Phillips’ fail-
ure to make that discovery when its researchers also
worked in the same field in the mid-1950’s, on Phillips’
later recognition of DuPont’s discovery and the com-
mercial success of that invention.
The Court, therefore, holds that the Examiner’s final
office action rejecting all claims of the *698 patent in the
now terminated reissue/reexamination proceedings§® is not
entitled to a preclusive effect in this Court based on the
doctrine of collateral estoppel, and Phillips’ summary
judgment motion will be denied.
IV. VALIDITY
A. Burden of Proof
The parties disagree as to which has the burden of
proof on the issue of patent validity. Phillips contends
that its “burden under [35 U.S.C.] § 282 is met simply by
showing prima facie invalidity based on the final office
action in the reissue proceeding” (D.I. 259 at 33), or as it
otherwise argued, DuPont has the burden of overcoming
the deference that this Court must give to the Examiner’s
rejection *f the claims of the °698 patent in the
reissue/reexamination proceedings. The Court finds Phil-
lips’ argument to be without merit.
35 U.S.C. § 282 provides, in pertinent part:
A patent shall be presumed valid. . .. The burden of
establishing invalidity of a patent or any claim there-
of shall rest on the party asserting such invalidity.
6 The protestor participation reissue/reexamination proceedings
conducted by the Examiner in this case were abolished in 1982 by the
Patent Office for the future. (D.I. 257, App. E.)
| 2 ! —
A42
District Court Opinion
The party asserting invalidity must prove invalidity with
facts supported by clear and convincing evidence. Loctite
Corp. v. Ultraseal, Ltd., 781 F.2d 861, 872 (Fed. Cir.
1985). That burden of persuasion is “permanently on the
party asserting invalidity,” Richdel, Inc. v. Sunspool
Corp., 714 F.2d 1573, 1579 (Fed. Cir. 1983), is “constant
and never changes,” American Hoist & Derrick Co. v.
Sowa & Sons, 725 F.2d 1350, 1361 (Fed. Cir. 1984), and
is “never annihilated, destroyed, or even weakened,
regardless of what facts are of record,” ACS Hosp.
Systems Inc. v. Montefiore Hosp., 732 F.2d 1572, 1574-5
(Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp.. 713
F.2d 1530 (Fed. Cir. 1983). These holdings of the
Federal Circuit are overwhelming and the presumption of
validity created by § 282 is applicable to this case in this
Court. The Federal Circuit has also noted in Fromson v.
Advance Offset Plate, Inc., 755 F.2d 1549, 1555 ( Fed. Cir.
1985):
The Examiner’s decision, on an original or reissue
application, is never binding on a court. It is,
however, evidence the court must consider in
determining whether the party asserting invalidity
has met its statutory burden by clear and convincing
evidence.
In short, Phillips bears the burden of persuading this
Court that the 698 patent is invalid by clear and con-
vincing evidence. The fact that the reissue/reexamination
examiner rejected the claim is only one piece of the total
evidence presented at trial which this Court must consider
in determining whether Phillips has met its burden of
proving invalidity. That piece of evidence, however, is not
binding upon this Court and it does not weaken the
presumption of validity or reduce Phillips’ burden of
proving invalidity by clear and convincing evidence.
A43
District Court Opinion
B. Phillips’ Anticipation Defenses
Phillips contends that the claims of the ’698 patent
are invalid as anticipated under 35 U.S.C. § 102 by the
prior work of Phillips and by other prior art.
1. Phillips’ Work In The Mid-1950’s
DuPont concedes that in 1954-55, Donald Witt and
Gerald Leatherman, researchers for Phillips, made ethyl-
ene copolymers using both lower alpha-olefins ( proplyene
and butene) and higher alpha-olefins (pentene and he-
xene) (Tr. 1279) and that they were disclosed in a patent
application which they filed in August 1956.7 (PX 88.)
Phillips contends that this earlier work of Phillips’ re-
searchers, which was not abandoned, suppressed, or con-
cealed, invalidates the claims of the 698 patent under 35
U.S.C. § 102(g). The Court is unable to agree because
Phillips’ researchers, unlike DuPont, failed to discover
that superior impact strength or environmental stress crack
resistance can be achieved with higher alpha-olefin
copolymers.
Indeed, the Izod impact strength of the butene
copolymers made by Witt and Leatherman was superior to
their pentene and hexene copolymers. (PX 88, Table VI;
Tr. 168-73; 2059; 1472).8 These disclosures are just the
opposite of DuPont’s discovery.
Phillips also argued that by the fall of 1955, ‘Phillips’
researchers also determined” that the Witt and Leather-
man pentene and hexene copolymers “exhibited excellent
toughness” (D.I. 259 at 13), citing to DX 858 and the
7 After the claims of application were rejected, the application
was thereafter abandoned. (PX 88.)
8 The Izod impact strength reported for butene copolymers was
4.0-10 ft.lbs./inch notch compared with 1.7-2.8 reported for pentene
copolymers and 3.5-4.3 reported for hexene copolymers. (PX 88,
Table VI, Tr. 168-72.)
2 a
A44
District Court Opinion
testimony (Tr. 1935-38) of Professor Bryce Maxwell, one
of Phillips’ experts. Phillips’ contention is based on stress-
strain multiplication analysis which Professor Maxweil
admitted on cross-examination cannot be used to deter-
mine impact strength. (Tr. 2123.)9
Phillips has also throughout its post-trial briefs
created the impression that its researchers concluded in
1955 that the Witt and Leatherman pentene and hexene
copolymers had environmental stress crack resistance su-
perior to that of lower alpha-olefin propylene and butene
copolymers.10 The evidence at triai demonstrated that
Phillips’ researchers never arrived at that conclusion or
made that discovery.
It is true that the Witt and Leatherman application
contains specific stress crack data for propylene and
butene copolymers, but no such data is given for pentene
and hexene copolymers. (PX 88, Table VI.) The appli-
cation contains no hints whatsoever of the possibility that
pentene and hexene copolymers could be superior to
propylene and butene copolymers in stress crack resis-
tance.11 Indeed, Mr. Leatherman admitted on cross-
examination that he and Mr. Witt did not discover that
higher alpha-olefin copolymers had impact strength or
stress crack resistance superior to that of the lower alpha-
olephin (propylene and butene) copolymers. (Tr. 2541-
44.) Their contemporaneous actions in 1954 and 1955
9 No evidence was introduced at trial to show that anyone at
Phillips ever applied Professor Maxwell’s multiplication technique to
the data for the Witt and Leatherman polymers.
19 Neither Witt nor Leatherman did any further work with
pentene or hexene copolymers after 1955. (Tr. 2536; 2569.)
11 The disclosures in the Witt and Leatherman application
concerning stress crack resistance to which Phillips refers in its brief
(D.1. 295 at 16, citing PX 88 at L000007 and L000010), do not relate
to higher alpha-olefin copolymers. The only stress crack data in the
application was for the lower alpha-olefin propylene and butene
copolymers. (Tr. 1715; Tr. 2544-45.)
a
A45
District Court Opinion
confirm that Witt and Leatherman prepared detailed
research reports summarizing their work on propylene and
butene copolymers, but they did not prepare any reports
on copolymers made with higher alpha-olefins pentene or
hexene. (Tr. 2547-48; 2570.) Also after making the
pentene and hexene copolymers, they abandoned them
and returned to using propylene and butene copolymers.
(Tr. 2536; 2569; DX 204, 208A, 215, 227, 230, 234.)
Phillips belatedly produced on March 5, 1986, a few
months before trial, the notebook of John N. Scott, a
Phillips researcher. (DX 206.) The stress crack data
contained in that notebook show that butene and pentene
copolymers achieved comparable stress crack resistance,
while the hexene copolymers had not reached that level.
(Tr. 188.) Mr. Scott admitted that his results showed no
difference between butene, pentene or hexene (Tr. 2755)
and Mr. J. Paul Hogan, a principal witness for Phillips,
testified that there was no way of telling which would have
the highest stress crack resistance. (Tr. 2385-86.) But
even if the Scott data could be said, as Phillips contends,
to show any improvement of stress crack resistance, that
data was suppressed and concealed for more than 30 years
and reliance upon that data, as uncertain as it is,,cannot be
relied upon to support Phillips’ prior invention defense. In
Short, Phillips has not proved by clear and convincing
evidence that the pentene and hexene copolymers made
by Witt and Leatherman were superior to propylene and
butene copolymers in impact strength or stress crack
resistance. The Court further finds that Phillips has not
borne its burden of proving that Witt and Leatherman’s
pentene and hexene copolymers inherently had stress
crack resistance superior to that of the lower alpha-olefins
propylene and butene.
a
A46
District Court Opinion
However, even if Phillips had established at trial that
the Witt and Leatherman pentene or hexene copolymers
inherently had such superior impact strength or stress
crack resistance, its prior invention defense would still be
unavailing because it is clear that these superior properties
were neither recognized nor appreciated by Phillips prior
to DuPont’s discovery of those superior properties in the
higher alpha-olefin copolymers.
To establish prior invention, there must be evidence
that the alleged prior inventors appreciated at the time of
their work all the elements of the invention. Standard Oil
Company v. Montedison, 494 F.Supp. 370 (D.Del. 1980),
aff'd, Standard Oil Company v. Montedison, 664 F.2d 356
(3d Cir. 1981); see also Kimberly-Clark Corp. v. Johnson
& Johnson, 745 F.2d 1437, 1444 ( Fed.Cir. 1984). Thus,
Phillips not only failed to prove that the Witt and
Leatherman pentene and hexene copolymers had superior
impact strength and stress crack resistance over propylene
and butene, but it also failed to prove by contempo-
raneous evidence that it recognized that these superior
properties could be obtained with higher alpha-olefins.
As noted above, the only stress crack resistance data
for the Witt and Leatherman pentene and hexene copoly-
mers appear in one document in Mr. John Scott’s note-
book number 6606 (DX 206) which Phillips did not
produce, although called for, until March 5, 1986. (PX
1364.) Phillips advances the argument that the production
of this notebook negates DuPont’s contention of abandon-
ment, suppression or concealment. The Court finds
otherwise. In the first place, the Scott data is not
conclusive that the pentene and hexene copolymers of
Witt and Leatherman were superior to the lower alpha-
olefins. But even if it did make that showing, disclosing
A47
District Court Opinion
this data after 30 years is not evidence negating the
argument of abandonment, suppression or concealment.
DuPont’s contention that Phillips abandoned, sup-
pressed or concealed any data relating to the stress crack
resistance of Witt and Leatherman’s pentene and hexene
copolymers is a valid one. There was nothing in the talks
of Dr. William Reynolds, of Phillips Research Division,
presented at various conferences or in papers presented at
American Chemical Society meetings which disclosed the
superior stress crack resistance of pentene, hexene, or
other higher alpha-olefins. (Tr. 2690-93.)
Likewise, the reference in the Witt and Leatherman
patent application (PX 88) relied upon by Phillips to
negate abandonment, suppression and concealment
proves nothing with regard to stress crack resistance of
copolymers with higher alpha-olefins. For example, the
reference in the Witt and Leatherman application to the
“high degree of flexibility” (PX 88 at L000007) continues
on to disclose that the “copolymers have very high
environmental stress crack resistance value greater than
420 hours.” This, however, was the stress crack resistance
obtained by Witt and Leatherman with propylene and
butene copolymers. (PX 88 at Table VI, L000016.)
Phillips’ reliance on references in the Witt and Leather-
man application to copolymers as being useful for pipe,
tubing or film because of their “stress cracking properties”
(PX 88 at LO00010) does not anticipate DuPont’s dis-
covery. This is so because Mr. Leatherman testified at
trial that such general references to stress cracking in the
application were based on stress crack data for propylene
and butene copolymers. (Tr. 2545-46.) Furthermore,
Mr. Leatherman testified at his deposition that he did not
recall any pipes, tubing or film being made with the
copolymers he and Mr. Wiit prepared. (PX 1402 at 72-
73.)
A48
District Court Opinion
It is also significant that the actions Phillips took in
regard to ethylene alpha-olefin copolymers in the latter
part of the !950’s and early 1960 were consistent with
Phillips’ failure to discover, or even to recognize, that
superior properties can be achieved with higher alpha-
olefin copolymers. The first ethylene alpha-olefin copoly-
mers Phillips introduced commercially in 1958 were made
with butene. (Tr. 2268.) Almost ten years passed before
Phillips in 1967 eventually introduced a higher alpha-
olefin hexene copolymer. (Tr. 2275; D.I. 137 at 15; DX
2580. )
In the early 1960’s Phillips continued to rely on
butene and considered using propylene. When a project
was undertaken in 1960 to develop a “copolymer which
will compete with high pressure polyethylene in film
applications,” Mr. Hogan listed the comonomers to be
studied as follows:
I. Comonomers
A. 1-Butene
B. Propylene
C. 1-Butene-Propylene Mixtures.
(PX 121; Tr. 159.)
Phillips did not introduce its first ethylene higher
alpha-olefin copolymer to the market until 1967, five years
after DuPont introduced its higher alpha-olefin copoiy-
mers to the market and more than ten years after DuPont
filed for the 698 patent. That Phillips” copolymer was
made with hexene. (Tr. 2275; D.I. 137 at 15.) The
manner in which Phillips entered the higher alpha-olefin
copolymer business supports the significance of the in-
vention of the 698 patent. The evidence also strongly
supports the inference that Phillips initiated its program to
switch from butene to hexene only after it learned of
DuPont’s discovery that the higher alpha-olefin copoly-
mers have superior properties.
A49
District Court Opinion
On June 4, 1963, the DuPont Canadian patent (the
counterpart to the ’698 patent in suit) issued. (PX 4.)
Phillips was using four carbon butene as a comonomer at
that time. (Tr. 2268-75; D.I. 137 at 14-15.) The DuPont
Canadian patent (PX 4) specifically disclosed that su-
perior impact toughness and environmental stress crack
resistance can be achieved by using higher alpha-olefins
above butene (i.e., pentene and up). (Tr. 205-06.)
On July 9, 1963, a month after the issuance of the
Canadian patent, Phillips held a Marlex Task Force
Meeting. (PX 125.) The environmental stress crack
resistance of Phillips’ ethylene-butene copolymers was
considered and the Task Force reported that “ESC im-
provements resulting from incorporation of larger chain
olefins are being studied for PF bottle grade resins.” (PX
125 at 4.)
On July 12, 1963, three days after the Task Force
meeting, Phillips made an ethylene-hexene copolymer
which was then immediately tested for environmental
stress crack resistance. (PX 136 at L95078; Tr. 2425.)
The stress crack resistance time of greater than 1,000
hours for this sample, which Phillips obtained sometime
after August 7, 1963 (Tr. 2425), was the earliest Phillips
data Mr. Hogan could point to in support of the statement
in an August 1964 memorandum (DX 405; PX 126) that
“we have found that ethylene/hexene-1 PF copolymers in
the processable melt index range possess higher ESCR
than ethylene/butene copolymers.” (Tr. 2420-24.)
In January 1964, Phillips issued a Research Division
Progress Report entitled “Improved Methods for Prepara-
tion of Marlex Polymers,” and according to a later report,
dated May 24, 1965, the research studies discussed in that
January 1964 report “showed that improved ESCR values
—
ASO
District Court Opinion
could be obtained by utilizing hexene-1 instead of butene-
1 as the process comonomer.” (PX 34 at L08134-35; Tr.
2447-48.) Although Phillips “searched and searched” for
the January 1964 report (Tr. 2450), it was never found
and produced. Mr. Hogan, who prepared a portion of the
missing January 1964 report and who received a copy (Tr.
2451), had no recollection whether the missing report
referred to DuPont’s Canadian patent (the counterpart to
the 698 patent in suit). (Tr. 2451-52.) Because of the
timing, a strong inference persists that Phillips turned to a
closer examination of copolymers with higher alpha-
olefins only after the superior properties were disclosed in
1963 in DuPont’s Canadian patent.
Phillips’ work with hexene and other higher alpha-
olefins continued after the January 1964 report. In
November 1965, Mr. Hogan and Mr. A. G. Kitchen issued
a report which summarized work done with several higher
alpha-olefins after June 1963 when DuPont’s Canadian
patent issued. (PX 83; Tr. 2452-54.) Hogan and Kitchen
stated at the outset of the November 1965 report that:
Bench reactor studies have shown that the
environmental stress crack resistance (ESCR) of
processable PF polymers is greatly increased by the
use of alpha olefins other than butene-1 as co-
monomers. Hexene-1, which introduces butyl
branches to the polymer chain, was the preferred
comonomer.
(PX 83 at 1, L04404. )
In the “Results And Discussion” section of the report,
Messrs. Hogan and Kitchen stated, “it is quite apparent
that hexene-! incorporation caused a large increase in
ESCR, compared to butene-1| incorporation.” (PX 83 at
ASI
District Court Opinion
3, L04407.) This result is graphically expressed in Figure
2 of that report which shows the significantly better stress
crack resistance Phillips obtained with hexene compared
to butene. (PX 83, Figure 2, reproduced as chart PX
1215.)
Mr. Kitchen at his deposition testified that he was
surprised by the large increase in stress crack resistance
achieved with hexene in place of butene and he also
explained that similar results were obtained with octene,
decene and dodecene. (D.I. 95 at 47.)
Based on all this evidence the Court concludes that
Phillips has not proved by clear and convincing evidence
that the research efforts or patent application of Witt and
Leatherman in the mid-1950’s anticipated DuPont’s in-
vention of the 698% patent so as to invalidate that patent
under 35 U.S.C. § 102(g).
2. Phillips’ Other Anticipation References
Phillips has cited a handful of other references in
support of it anticipation defense, viz: Vandenberg U.S.
Patent 3,058,963 (DX 100); Vandenberg U.S. Patent
3,015,690 (DX 101); Belgian Patent 533,362 (DX 107A);
Nowlin et al. U.S. Patent, 3,219,649 (DX 77); Brown U.S.
Patent 2,728,752 (DX 14); Hogan et al. U.S. Patents
2,846,425 (DX 44) and 2,825,721 (DX 45).12 Curiously,
Phillips argues that this Court should combine and cull the
teachings of its references to build an anticipation. This
the Court refuses to do because it is contrary to well
12 While Phillips stated in its opening brief (D.I. 259 at 47-48)
that it relied upen three other references as anticipation, viz., the
Buckley and Ray ariicle (DX 121); Hagemeyer et al. U.S. Patent
2,899,413 {DX 41); and the Belgian Patent 538,782 (DX 106A),
these references were not discussed in either Phillips’ opening or reply
brief except in its defense of obviousness. Therefore, the Court will
treat these references accordingly.
A52
District Court Opinion
established law. The Federal Circuit has held time and
again that anticipation is a defense that is established only
when a party challenging validity proves that a single
prior art reference discloses each and every element of the
claimed invention. E.g., Great Northern Corp. v. Davis
Core & Pad Co., Inc., 782 F.2d 159, 165 (Fed. Cir. 1986);
Structural Rubber Products v. Park Rubber, 749 F.2d 707,
715 (Fed. Cir. 1984); Studiengesellschaft Kohle v. Dart
Industries, 726 F.2d 724, 727 (Fed. Cir. 1984); W. L.
Gore & Associates, Inc. v. Garlock, inc., 721 F.2d i540,
1541 (Fed. Cir. 1983). As a matter of fact, none of these
other references teach the achievement of superior impact
strength or stress crack resistance with ethylene higher
alpha-olefin copolymers, which was the discovery and
invention of DuPont’s 698 patent.
But even when these other references are considered
in combination as suggested by Phillips, they do not
support Phillips’ anticipation defense.
Vandenberg 963 and ’690 Patents and Belgian Patent
The Vandenberg ’963 patent is directed to a coordi-
nation catalyst system with which “[a]ny ethylenically
unsaturated hydrocarbon or mixtures thereof may be
polymerized.” (DX 100, col. 4, Il. 45-46.) Vandenberg
963 goes on to state:
Exemplary of the ethylenically unsaturated hydrocar-
bons which may be homopolymerized or mixtures of
which may be copolymerized are the linear 1-olefins
such as ethylene, propylene, butene-1, hexene-|,
heptene-1, octene-1, octadecene-1, dodecene-1, etc.,
and branched chain l-olefins and other olefins such
as isobutylene, cis-butene, diisobutylene, tert-
butylethylene, 4- and 5S-methylheptenes-1, tetra-
sali ieee
A53
District Court Opinion
methylethylene, and substituted derivatives thereof
such as_ styrene, a-methylstyrene, vinyl-
cyclohexane, diolefins such as hexadiene-1,4, 6-
methylheptadiene-1,5 and conjugated diolefins such
as butadiene, isoprene, pentadiene-1,3, cyclic olefins
such as cyclopentadiene, cyclohexene, 4-vinyl-
cyclohexene-1 terpenes such as B-pinene, etc.
(DX 100, col. 4, Il. 63 to col. 5, 1. 1.) This paragraph
merely offers, as Professor Charles Price, one of Phillips’
experts, concluded, a “[l]ot of possibilities.” (Tr. 1540.)
The Vandenberg 963 patent contains sixty-four ex-
amples, principally of the homopolymerization of ethylene
or propylene, which confirm that Vandenberg’s process
results in extremely high molecular weight polymers. In
almost every example, Vandenberg’s reported value for
reduced specific viscosity’3 shows that the resulting poly-
mer had a zero melt index and was not melt processable.
(Tr. 1532.)
The only example in Vandenberg which discloses a
copolymer made from ethylene and an alpha-olefin is
Example 53, in Table V at columns 11 and 12. (Tr. 1306,
1532.) This ethylene-octene-1 copolymer made in a batch
polymerization contained 5.8% octene and had a reduced
specific viscosity of 9.0. (DX 100, Table V.) This
copolymer was of very high molecular weight, on the
order of 1,000,000, and would be a zero melt index or no
flow copolymer. (Tr. 1532; Tr. 3495-96.} It was not melt
processable in the mid-1950’s. (Tr. 87-88.) Vandenberg’s
copolymer was not tested for impact strength or stress
crack resistance. (Tr. 3474-75.)
13 Reduced specific viscosity is an indication of molecular weight
(Tr. 1307; DX 100, col. 5, ll. 66-68). The higher the reduced specific
viscosity, the greater the molecular weight (see Tr. 41-42; Tr. 2696).
A54
District Court Opinion
In short, Vandenberg’s 963 patent does not disclose a
melt processable ethylene-octene-1 copolymer or any
other melt processable higher alpha-olefin copolymers.
Vandenberg’s ’963 patent also contains no hint of the
superior impact strength or stress crack resistance of such
copolymers.
Mr. Edwin J. Vandenberg, the inventor, admitted at
trial that he had not discovered that ethylene higher
alpha-olefin copolymers would have superior impact
strength and stress crack resistance over butene copoly-
mers at the same melt index and density (Tr. 3497-98;
3501), nor did he predict this discovery in 1955 when he
made his ethylene-octene copolymers. (Jd.) Indeed, Mr.
Vandenberg, a highly skilled polymer chemist (Tr. 3464-
65), admitted that even today he had no explanation why
the stress crack resistance of the higher alpha-olefin
copolymers is superior to the propylene and butene
copolymers. (Tr. 3500-00A. )
Furthermore, Phillips’ attempt to rely on the Van-
denberg *690 patent (DX 101) as an anticipation, either
alone or combined with the Vandenberg °963 patent,
highlights the deficiencies of the 963 patent. The Van-
denberg *690 patent discloses a process for polymerizing
olefins using hydrogen to control the molecular weight
and refers to the application for the Vandenberg °963
patent as describing a process which can be improved by
such use of hydrogen. (DX 101, col. 1, 11. 48-55.) The
Vandenberg °690 patent has no specific ‘examples of
ethylene alpha-olefin copolymers.
Phillips’ argument can be reduced to the following
two propositions that (1) one skilled in this art would use
hydrogen as taught by the Vandenberg °690 patent to
reduce the molecular weight of the ethylene-octene
eee Cid
AS55
District Court Opinion
copolymer (Example 53) of the Vandenberg 7963 patent
to a melt processable range, and (2), if Example 53 were
modified with such use of hydrogen, that copolymer
produced inherently would have impact strength or stress
crack resistance superior to that of the lower alpha-olefin
propylene and butene copolymers.
Phillips, however, did not prove its second proposi-
tion of inherency at trial any more than it did with the
Witt and Leatherman prior invention defense. Further-
more, the first proposition is incorrect factually. Mr.
Vandenberg was highly skilled in this art and was the
inventor of both the 690 and 963 patents. (Tr. 3462-65. )
He knew that hydrogen could be used to reduce the
molecular weight of polymers before he made the high
molecular weight, no flow ethylene-octene copolymer
(Example 53) of his 963 patent. (Tr. 3493-94.) Yet,
even Mr. Vandenberg never thereafter used hydrogen to
reduce the molecular weight of that ethylene-octene
copolymer. He did something else.
After Mr. Vandenberg had conducted his Example 53
experiment (Run 13) using 10 grams of octene to 1.9
grams of ethylene (Tr. 3468-69; PX 11 at 1), he reported
that “it is probable that some useful copolymers may be
developed” and that “it may be possible to obtain
sufficient copolymerization by operating at the very high
monomer ratios that can be obtained by using the more
reluctant monomer (as isobutylene, octene-1, etc.) as
solvent for the polymerization.” (PX 930 at 4, Tr. 3479-
80.) Thereafter, Vandenberg attempted two runs using
octene to ethylene ratios of about 25 to 1, or about 5 times
the ratio of Example 53. Insignificant amounts of product
were obtained. (Tr. 3481-86; PX 11 at 6, 10.) Mr.
Vandenberg then made another attempt to make a
ev
A56
District Court Opinion
copolymer using a 25 to 1 ratio of octene to ethylene (PX
12, Run 8) and he obtained a polymer containing 31%
octene and having a reduced specific viscosity of 10.0,
even higher than his Example 53 copolymer. (Tr. 3487-
90.) From this Vandenberg concluded (PX 13 at 2) that
“‘copolymerizations go poorly, in general, with this sys-
tem.” No further work was done by Mr. Vandenberg or
others at Hercules, Inc., on copolymers of ethylene with an
alpha-olefin with five or more carbon atoms. (Tr. 3491-
93.)
Finally, the Belgian 362 patent (DX 107A), which
Phillips relies on in combination with Vandenberg ’963 to
argue that claims 1, 10 and 12 are anticipated (D.I. 259 at
53-54), only discloses ethylene homopolymers. (Tr. 1536-
37.) The Vandenberg 7963 patent refers to this Belgian
patent only for its description of “a new process of
polymerizing ethylene to a high molecular weight
polyethylene” (DX 100, col. 1, ll. 14-17), not for uses or
properties for the polymers of Vanderberg 963. (Tr.
1537-38.) The Court finds nothing in ether Vandenberg
patent which discloses that the Vandeaberg copolymers
would have the properties and uses of the Ziegler
homopolymers (the Belgian patent 342) or that Van-
denberg copolymers would meet the nunerical values for
tear strength'4 in Claim | and for hoopstress in Claim 12
of the 698 patent. The Court conclude; that Phillips has
not sustained its burden by clear and convincing evidence
that the invention of the 698 patent was anticipated by
the two Vandenberg patents or the Belgian patent.
14 Claim | of the 698 patent provides far an Elmendorf tear
strength limitation of 150-400 grams per mil an¢ Claim 12 refers to a
copolymer in the form of pipe “characterized by withstanding 3000
hours at hoop stress at 750 psi and a temperatire of 60°C.” (PX 1,
col. 13, ll. 24-25; col. 14, ll. 30-31.)
—————
A57
District Court Opinion
The Nowlin et al. 649 Patent
The Nowlin et al. 649 patent (DX 77) also discloses
a single ethylene higher alpha-olefin copolymer (ethylene-
hexene) that is not melt processable. Dr. Charles Price, a
Phillips’ expert witness, admitted that fact and also testi-
fied that because this ethylene-hexene copolymer would
not be melt processable, it could not be used to form
bottles or extruded into pipe as stated in col. 9, lines 46-51
of the Nowlin et al. patent. (Tr. 1551-52.)
Example II of Nowlin is the only example of an
ethylene higher alpha-olefin copolymer (ethylene-
hexene). Ethylene homopolymers are disclosed in Exam-
ples I and III of Nowlin et al. The Example II hexene
copolymer, like the Example I no flow, zero melt index
ethylene homopolymer, was difficult to grind in a blender.
(DX 77, col. 6, ll. 50-74 and col. 7, ll. 68-70.)
Although not stated in Nowlin et al., the melt index
of the Example II ethylene-hexene copolymer was 0.057.
(Tr. 1545-46; PX 1304; PX 1302 at L07685, Run 6868-
14.) Nowlin et al., however, knew how to reduce the
molecular weight of a polymer. The Example III ethylene
homopolymer they made had a melt index of about 6.0.
Yet, there was also a severe decrease in failing ball impact
strength. (DX 77, col. 8, ll. 57-65.)
Phillips again makes the argument based on two
propositions that (1) one skilled in this art would reduce
the molecular weight of the Example II ethylene-hexene
copolymer of Nowlin et al. to the melt processable range,
and (2), if Example II were modified to so reduce
molecular weight, the copolymer inherently would have
impact strength or stress crack resistance superior to that
of the lower alpha-olefin propylene and butene copoly-
“mers.
SR
AS58
District Court Opiiion
Phillips, however, failed to prove at trial the second
inherency proposition. The facts are also contrary to the
premise in its first proposition that one skilled in the art
would reduce molecular weight. Dr. Nowlin and his co-
inventor Lyons, like Vandenberg, were skilled in this art
and knew how to reduce the molecular weight of a
polymer. Yet after obtaining the ethylene-hexene copoly-
mer of Example II of their patent, they did not rerun that
experiment to reduce the molecular weight of that copoly-
mer. Instead, they suggested doing what Vandenberg
did—add more comonomer:
In Run 6694-11 and -14 [the 6694 should be
6868 | efforts were made to build-in a plasticizer in the
form of 1-hexene. Preliminary evaluations listed in
Table XI show there to be no marked difference in
polyethylene and these copolymers which also are
very stiff and insoluble in hydrocarbons. Larger 1-
hexene/ethylene ratios should be investigated in the
polymerizations to increase the plasticity and other
properties.
(PX 1302 at LO07672.) Nowlin et al., like Vandenberg,
were skilled polymer researchers, yet they all missed the
discovery made by DuPont that is the subject of the 698
patent.
The Brown ’752 Patent
Standard Oil’s Brown ’752 patent (DX 14) differs
from Phillips’ other anticipation references in that it
relates to free-radical polymerization, as opposed to
coordination polymerization. (Tr. 1778.) Brown specifi-
cally relates to the use of tertiary butyl ethylene as a
“polymerization modifier” in the free-radical initiated
AS9
District Court Opinion
polymerization of ethylene. (DX 14, col. 1, ll. 51-58; col.
2, ll. 12-21.)
Brown also discloses that it is not clear what the
tertiary butyl ethylene “polymerization modifier” does.
Brown explains that:
Whether the tertiary butyl ethylene acts by in-
creasing the solubility of polyethylene in ethylene
during polymerization, or by modifying the polymeri-
zation process, in somewhat the same manner as do
higher temperatures or higher pressures, to, for exam-
ple, increase branching and decrease polymer den-
sity, or whether some other effect, such as chain
termination, is predominant, is not determined.
(DX 14, col. 2, ll. 19-26.)
Tertiary butyl ethylene, preferably present in
amounts between about 5.0% and 20% by weight
based on the ethylene, modifies the polymerization so
that more extensible, less dense polymers are pro-
duced. The larger amounts of tertiary butyl ethylene
within the given range apparently copolymerize with
the ethylene.
(DX 14, col. 1, ll. 56-61.)
Phillips relies on the indication of apparent copolymeriza-
tion because tertiary butyl ethylene is a higher alpha-
olefin.
Regardless of what is discloses about tertiary butyl
ethylene, Brown does not anticipate the *698 patent. Dr.
George A. Mortimer, who Phillips produced at trial to
testify on Brown, conceded that there is absolutely no
disclosure in the Brown patent that the Brown process
resulted in ethylene copolymers with improved impact
A60
District Court Opinion
strength or stress crack resistance. (Tr. 1777, 1789-93.)
Dr. Beasley also testified to the same effect. (Tr. 3649,
3665.) Dr. Mortimer’s “toughness and flexibility” testi-
mony (D.J. 257 at 56-57) does not overcome this
fundamental deficiency in the Brown disclosure. Once
again there is a complete failure of trial proof by Phillips
that any ethylene tertiary butyl ethylene copolymer that
might be produced in the examples of Brown would
inherently possess impact strength or stress crack resis-
tance superior to the lower alpha-olefin propylene and
butene copolymers.
Phillips’ reliance on Dr. Mortimer’s testimony that
Brown’s apparent copolymers would have densities less
than .9300 (D.1. 257 at 57) overlooks the fact that Dr.
Mortimer’s anticipation opinions were also based on den-
sity data for polyethylene prepared without tertiary butyl
ethylene which he attempted to read into the Brown
disclosure from Franta paient 2,586,322. (DX 38; Tr.
1758-60, 1786-88.) Dr. Mortimer conceded, however, that
Brown says nothing about incorporating data from
Franta. (Tr. 1760.)
The trial evidence confirmed that there was a sound
basis for Brown's uncertainty as to what the tertiary butyl
ethylene actually did. Brown disclosed only how much
tertiary butyl ethylene was included in the reaction mix-
ture at the start of each run and said nothing about how
much tertiary butyl ethylene was incorporated into any
copolymers that might have been formed. (DX 14, col. 3,
il. 24-60; Tr. 1785-86. )
The evidence confirms Brown’s disclosure that “some
other effect, such as chain termination” may have been
“predominant.” (DX 14, col. 2, Il. 19-26.) Viscosity values
Aél
District Court Opinion
listed in the Table in column 3 of Brown show that as the
percent tertiary butyl ethylene in the reaction mixture
increases the molecular weight of the resultant polymers
decreases substantially. These data show that tertiary
butyl ethylene acted as a “telogen” or “chain transfer
agent” which lowered molecular weight. (Tr. 57-60;
3655a.) Dr. Mortimer, who has stated that the “chain
transfer reaction is more important in ethylene polymeri-
zation than it is in the polymerization of almost all other
monomers,” agreed. (Tr. 1772, 1784.)
Standard Oil’s internal report describing the work
underlying the Brown patent (PX 628; Tr. 3650-51)
confirms that it was not at all clear that any tertiary butyl
ethylene had copolymerized. The report states that, in
spite of considerable effort, Standard Oil’s researchers
could not confirm by infrared examination that any ter-
tiary butyl ethylene had actually copolymerized. (PX 628
at A00023; Tr. 3653-54.) The report states (PX 628 at
A00023 ):
Infrared examination of the structure of the
polymers prepared in the presence of the higher
concentrations of t-butylethylene has, as previously
noted in the case of lower concentrations, failed to
confirm the presence of any t-butyl groups. Other
methods have also failed to verify the general belief
that t-butylethylene participated in the formation of
the high polymers but the small decrease observed
in polymer density with increasing amounts of
t-butylethylene employed (Figure 3) is a strong
indication that some copolymerization did occur.
There is, however, one property of t-butylethylene
about which no uncertainty exists, namely, that it acts
as a mild chain terminator. Work reported later in
connection with nonolefinic modifiers suggests that
this property of t-butylethylene may have been an
important factor in its modifying action.
A62
District Court Opinion
The Standard Oil report also shows that even though
Brown’s polymers made in the presence of tertiary butyl
ethylene had improved extensibility or elongation when
compared to polymers made under the same conditions in
the absence of tertiary butyl ethylene, the same level of
elongation was attained by the Standard Oil researchers
using other nonolefinic “modifiers” that would not
copolymerize. (PX 628 at A00008, { 1; Tr. 3655, 3665.)
There was no evidence that the observed change in
extensibility with tertiary butyl ethylene was due to
copolymerization. (Tr. 3665.)
The Hogan ’721 And ’425 Patents
The Hogan °721 and °425 patents are the least
pertinent of Phillips’ anticipation references. Although
Dr. Price and Mr. Hogan testified about these patents at
trial, Phillips refers to none of that testimony in its briefs.
Indeed, Dr. Price did not attempt to rely on the Hogan
patents as disclosing copolymers within the scope of the
claims of the ’698 patent.
Hogan °721 and °425 relate to processes for making
ethylene polymers and copolymers. Phillips implies that
these references disclose ethylene higher alpha-olefin
copolymers by asserting that “each reference discloses that
ethylene afd ‘other olefins up to octene may be polymer-
ized by the process and that copolymers of these olefins
can likewise be prepared. (D.I. 257 at 58.) The portions
of the references Phillips cites relate only to
homopolymerization of olefins including higher alpha-
olefins (DX 45, col. 1. Il. 52-55; DX 700A at 2, ll. 4-6; DX
44. col. 3, ll. 3-8), copolymerization of ethylene and lower
alpha-olefins ( propylene and butene ), and copolymeriza-
tion of olefins other than ethylene (DX 45, col. 9, |. 55 to
col. 10, |. 21; DX 700A at 14, Il. 1-28; DX 44, col. 3, Il. 8-
10).
A63
District Court Opinion
Dr. Price conceded that there are no examples of
ethylene higher alpha-olefin copolymers in either of the
Hogan patents (Tr. 1671, 1672, 1674), and there is
nothing in either patent which teaches that ethylene
higher alpha-olefin copolymers have superior impact
strength and stress crack resistance. (Tr. 1675.) The only
specific examples of copolymers of ethylene shown in
Hogan *721 which are prior art are copolymers of ethylene
and propylene. (DX 45, Examples XXI-XXIV.) The
specific examples of Hogan °425 disclose only the
homopolymerization of ethylene. The only disclosure
directed to copolymers is a general statement concerning
the possibility of preparing ethylene- -propylene copoly-
mers. (DX 44, col. 3, ll. 8-10; Tr. 2341-42.)
The Court finds and concludes that Phillips has not
met its burden of proving by clear and convincing evi-
dence that the ’698 patent is invalid based on its anticipa-
tion defense under 35 U.S.C. §102 by any of the refer-
ences cited.
C. Phillips’ Obviousness Defense
Phillips next contends that the claims of the 698
patent were obvious and therefore the patent is invalid
under 35 U.S.C. §103.
The test for obviousness under §103 is whether the
invention as a whole would have been obvious to one of
ordinary skill in the art at the time the invention was
made. The Supreme Court in Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), held that the resolution of
obviousness must be made after a consideration of (1) the
scope and content of the prior art, (2) differences between
prior art and the claims at issue, (3) the level of ordinary
skill in the pertinent art, and (4) objective evidence of
Oe
A64
District Court Opinion
secondary considerations such as commercial success, long
felt but unsolved need, failure of others, etc. The Federal
Circuit repeatedly has held that “secondary consid-
erations” or “objective indicia of noncobviousness” must
always be considered before the determination of obvious-
ness is made. Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1144 (Fed.Cir. 1985); Simmons Fastener
Corp. v. Illinois Tool Works, 739 F.2d 1573, 1574-75
(Fed.Cir. 1984); Jones v. Hardy, 727 F.2d 1524, 1530-31
(Fed.Cir. 1984).
Where a party challenging validity relies on a com-
bination of prior art references to establish obviousness
under 35 U.S.C. §103, that party must show that those
references contain some teaching which suggests their use
in combination. Ashland Oil, Inc. v. Delta Resins &
Refractories, 776 F.2d 281, 293 (Fed.Cir. 1985); Hybri-
tech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1381 (Fed.Cir. 1986). There must be some reason for the
combination other than hindsight gleaned from the dis-
closure of the patent in suit. Interconnect Planning Corp.
v. Feil, 774 F.2d 1132, 1143 (Fed.Cir. 1985); Hodosh v.
Block Drug Co., Inc., 786 F.2d 1136, 1143 n.5 (Fed.Cir.
1986); Studiengesellschaft Kohle mbH v. Dart Industries,
549 F.Supp. 716, 736-37 (D.Del. 1982), aff'd, 726 F.2d
724 (Fed.Cir. 1984).
Phillips argues, on the basis of Kimberly-Clark v.
Johnson & Johnson, 745 F.2d 1437 (Fed.Cir. 1984), that
all work which qualifies as Section 102(g) work con-
stitutes “prior art” in a Section 103 obviousness analysis.
(D.I. 259 at 62.) The Kimberly-Clark holding does not
reach that far.
In Kimberly-Clark, the work by Champaigne, which
the Court found to constitute Section 103 prior art, differs
A65
District Court Opinion
from the Phillips work in an important respect: the
patentee was aware of the Champaigne work, both being
employees of Kimberly-Clark (745 F.2d at 1444-45),
while the DuPont researchers here were unaware of the
Phillips work when the invention of the 698 patent was
discovered and made. The Court in Kimberly-Clark
further observed that an invention which is unknown to
both the applicant and the art at the time the applicant
makes his invention would constitute secret art (id. at
1445-46), and that “the use of such secret art—as § 103
‘prior art’—except as required by § 102(e), is not favored
for reasons of public policy.” (Jd. at 1446.) Accordingly,
the holding of Kimberly-Clark is that the work of another
under Section 102(g) is prior art under Section 103 only
when that work is known to the art or to the patentee
before he made the invention. Because Phillips’ work was
kept secret and was unknown to both the DuPont re-
searchers and the art, it cannot be prior art for purposes of
Section 103. However, even if the work of Witt and
Leatherman in the mid-1950’s may be used as prior art
under § i103, then pursuant to § 102(g), that work is only
available as prior art to the extent it was not abandoned,
suppressed or concealed and thus Phillips is limited to the
disclosure of the Witt and Leatherman patent application
(PX 88) or its corresponding foreign applications.
I. Scope and Content of the Prior Art
The scope and content of the prior art relied on by
Phillips for obviousness include the work of Witt and
Leatherman (discussed in Section IV, B.1. above), the
seven “anticipation” references (discussed in Section IV,
B.2. above), and seven additional patents and publica-
tions, viz: the Buckley and Ray article (DX 121), Hage-
meyer et al. U.S. Patent 2,899,413 (DX 41), Belgian
A66
District Court Opinion
Patent 538,782 (DX 106A), Anderson et al. U.S. Patent
2,905,645 (DX 6), the Roedel article (DX 152), the
Richards article (DX 151), and the Franta U.S. Patent
2,586,322 (DX 38). The Court now turns to a consid-
eration of these additional references not heretofore dis-
cussed under the anticipation references.
Richards, Roedel, Franta, and Buckley and Ray
The art relied on by Phillips concerning free-radical
polyethylene and decomposition products of diazo com-
pounds, the Richards article (DX 151), the Roedel article
(DX 152), Franta U.S. Patent 2,586,322 (DX 38), and
the Buckley and Ray article (DX 121), have little to do
with the subject matter of the 698 patent.
The Richards article (DX 151) was published in
1951, years before the discovery of processes for the
coordination polymerization of ethylene. Richards teach-
es that for free-radical polyethylene “[t]o a first approxi-
mation the properties of polyethylene may be described in
terms of average molecular weight and the degree of
crystallinity” (DX 151 at 371), and that it is the presence
of adventitious branching which gives free-radical
polyethylene its “flexibility and toughness.” (DX 151 at
top of 374.) Richards teaches that flexibility and tough-
ness may be improved by lowering the crystallinity (or
density). (DX 151 at 372.) In other words, if better
flexibility and toughness was desired, add more branches.
This, of course, is not the invention of the 698 patent. As
Dr. Charles Price conceded, there is nothing in Richards
about the effect of the length of the branches or side
chains (Tr. 1474) and no mention of impact strength or
stress crack resistance. (Tr. 1465.) Clearly, it would not
be obvious from Richards that longer branches would be
A67
District Court Opinion
better than shorter branches in producing an ethylene
copolymer with superior impact strength and stress crack
resistance. \
The 1953 Roedel article (DX 152) represents anoth-
er early attempt to characterize free-radical polyethylene
in which mechanisms are proposed to account for the
occurrence of long and short chain branching in free-
radical polyethylene. For short chain branching, Roedel
proposed a branching mechanism and concluded that four
carbon branches should be most probable followed by
five and three carbon branches. (DX 152 at 6111.) He
also noted that it was “probable that two short chains can
originate from the same carbon atom.” (id.) Dr. Beasley,
DuPont’s principal expert, testified that short chain
branching in free-radical polyethylene is more complex
than envisioned by Roedel and that things other than the
formation of four carbon branches are going on in free-
radical polymerization. (Tr. 660, 663, 664-65.) Free-
radical polyethylenes may also contain two carbon
branches and short chain branches of other lengths, as
well as two short chain branches on the same carbon
atom. (Tr. 40, 654-55, 665-72.) Only four carbon
branches are possible in an ethylene-hexene copolymer,
and it is impossible to obtain two such branches on the
same carbon atom. Roedel states that “tough” polymers
can be made by control of molecular weight and that
“flexible” polymers can be made by control of short chain
branching. (DX 152 at 6112.) Roedel thus did not teach,
as urged by Phillips (D.I. 259 at 8-9, 63-64), that the
toughness properties of free-radical polyethylene were due
to four carbon branches.
Roedel did not teach, as urged by Phillips (id. at 9,
63-64), that long chain branching in _ free-radical
A68
District Court Opinion
polyethylene was “deleterious” on flow properties. What
Roedel actually states is (DX 152 at 6112):
Long chain branching, while it has a relatively minor
effect on crystallinity because of its low number
average, has a marked effect on melt flow and
viscoelastic properties.
Dr. Price admitted that Roedel never said that long chain
branching in free-radical polyethylene is a bad thing. (Tr.
1718-19.) Thus, Phillips’ argument (D.I. 259 at 64) that
there was an incentive to reduce long chain branching to
obtain good flow properties is a make-weight argument.
Dr. Price also conceded that according to Roedel long
chain branching has no effect on solid state properties,
which would include enviornmental stress crack resistance
and impact strength. (Tr. 1717-18.)
DuPont’s Franta patent (DX 38) discloses free-
radical ethylene polymerization runs at lower tempera-
tures than those normally used in commercial free-radical
processes. The resulting polymers, such as Run 22, have
higher densities and are more brittle and not as tough as
commercial free-radical polyethylenes. (Tr. 3639-42.)
Franta does not suggest that the disclosed polymers
had superior impact strength or stress crack resistance.
(Tr. 3642.) Dr. Price’s admission that he did not know
whether the Franta polymers would be more or less tough
than commercial free-radical polyethylene (Tr. 1506-07),
undercuts Phillips’ reliance on the general references in
Franta to “improved physical strength” and “superior
film, monofil and molding properties.” (D.I. 259 at 10.)
Stress crack resistance data in the 698 patent for a free-
radical polyethylene sample very similar to Franta’s Run
A69
District Court Opinion
22 show that the Run 22 polymer would have very poor
stress crack resistance in Igepal—about one hour. (Tr.
3642-47. )
The 1952 Buckley and Ray article discloses materials
made from the decomposition of mixtures of diazometh-
ane and |-diazohexane which, according to Phillips ( D.I.
259 at 10-11), would have the same structure as a
copolymer of ethylene and heptene-1. Here again there is
a complete failure of proof by Phillips that such a
copolymer made by decomposition of diazo compounds
would inherently possess impact strength or stress crack
resistance superior to lower alpha-olefin propylene and
butene copolymers.
The Court now assumes that Phillips is not urging the
theory initially espoused by Dr. Price that compounds that
have the same general chemical structure will have the
same properties regardless of how they are made. (Tr.
1192.) Dr. Beasley demonstrated that Price’s same struc-
ture/same properties theory did not hold true even with
simple hydrocarbons, let alone with complex polymers.
(Tr. 3665-70; PX 1378, 1379.) When pressed on cross-
examination, Dr. Price admitted that in order to give an
opinion that one polymer would have the same properties
as another he would have to know if it is a copolymer, if it
has the same amount of comonomer, if it has the same
average molecular weight (or melt index) and the same
molecular weight distribution (Tr. 1405-06), and he
would have to find out by fractionation and analysis if the
comonomer was equally distributed between the high and
low molecular weight fractions. (Tr. 1414.) Dr. Price did
not have such information for any of the prior art
copolymers. Dr. Beasley testified that, if the process
parameters are not identical in making two copolymers,
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District Court Opinion
the resultant copolymers will probably have different
properties. (Tr. 601, 603-04, 787-88, 813-15, 819, 843-44,
897-921; PX 724, 1257, 1258; DX 592, 593.)
The Buckley and Ray article does not disclose any-
thing concerning impact strength or stress crack resistance.
(Tr. 1501-02.) Phillips ignores this fact by arguing that
Buckley and Ray taught that longer side chains were more
effective for reducing density and improving flexibility
than the shorter side chains (D.I. 259 at 66), and that this
teaching contradicts DuPont’s assertion (D.I. 256 at 11)
that, based on experience with free-radical polyethylene,
one would increase the number of branch points to
improve stress crack resistance and impact toughness.
Buckley and Ray did not so teach; the article did report
(DX 121 at 3701-02):
Similar mixed polymers were produced from
mixtures of diazomethane and higher aliphatic diazo-
compounds, up to 1-diazododecane, and the physical
properties of these materials depended on both the
number and length of the branches introduced into
the molecule. Crystallinity was decreased, and
solubility increased, either by increasing the propor-
tion of second component or by increasing its chain
length. ...
This passage only refers to the properties of crystallinity
and solubility. It says nothing about impact strength or
stress crack resistence. The quoted passage teaches that
for these mixed polymers in order to lower crystallinity or
density one could either increase the number of branches
or use branches of increasing length. This simply means
that, following the teachings of Buckley and Ray, one
would use the same weight percent of different alpha-
olefin comonomers to get the same crystallinity or density.
A7l
District Court Opinion
(PX 1301; Tr. 1500.) This, however, is not the unexpected
discovery made by DuPont. DuPont’s discovery was that
a higher alpha-olefin copolymer, such as an octene copoly-
mer, with only half as many branches as a lower alpha-
olefin butene copolymer, but with the same level of
crystallinity (or density ), would unexpectedly have impact
strength and stress crack resistance which was superior to
the butene copolymer. There is no hint of this unexpected
discovery in Buckley and Ray, or in any other reference
cited by Phillips.
Anderson °645, Hagemeyer "413, and Belgian ’782
The remaining prior art references cited by Phillips
are the coordination polymerization processes mentioned
in Anderson et al. 645 patent (DX 6), the Hagemeyer et
al. °413 patent (DX 41), and the Belgian ’782 patent, and
are no more pertinent than the Hogan °721 and °425
patents discussed in Section IV, B.2 above. These patents
disclose processes for ethylene copolymerization. Ander-
son et al. 645 (DX 6, col. 4, ll. 3-8), Hagemeyer et al.
’413 (DX 41, col. 4, 1. 72 to col. 5, 1. 4; col. 5, ll. 60-71; col.
10, 1. 75 to col. 11, 1. 7), and Belgian ’782 (DX 106A at
L142224). The only examples of ethylene alpha-olefin
copolymers contained in those references are of ethylene-
propylene copolymers. Example VI of Anderson et al.
645 (DX 6, col. 4, 1. 70 to col. 5, 1. 20); Example 5 of
Hagemeyer et al. *413 (DX 41, col. 10, Il. 25-39);
Examples 20-22 of Belgian ’782 (DX 106A at L142252-
53).
Phillips has offered no explanation why any of these
patents would support its obviousness contentions. There
are no examples at all in these three references of ethylene
higher alpha-olefin copolymers (Tr. 1669-74) and there is
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District Court Opinion
nothing in those references that teaches that superior
impact strength or stress crack resistance could be obtain-
ed with the higher alpha-olefin copolymers. (Tr. 1675.)
2. The Level of Ordinary Skill in the Art
Phillips presented no evidence concerning the ievel in
1955 of ordinary skill in the art of ethylene polymerization
and properties of ethylene polymers. However, Dr. John
Beasley’s undisputed testimony was that a person of
ordinary skill in that art would be someone with (1) a
Bachelor’s degree in chemistry or chemical engineering
plus about 3 years of experience in the field of making and
testing polymers, preferably polyethylene, or (2) a Mas-
ter’s degree and two years of such experience, or (3) a
Ph.D. degree and one year of such experience. (Tr. 3684-
85.) This level of skill is similar to that possessed by such
workers as Vandenberg, Hogan, Witt and Leatherman in
1955. (Tr. 3462-69, 2127; PX 1402 at 11-12.)
3. Differences Between Prior Art and DuPont
Invention
The differences between the prior art and the in-
vention of the 698 patent have been discussed in elabo-
rate detail in Section IV, B.1 and 2, and Section (The
crucial difference between the prior art and the invention
of the 698 patent is that there is nothing in any prior art
reference that disclosed or even suggests that melt proces-
sable ethylene higher alpha-olefin copolymers can achieve
superior impact strength and environmental stress crack
resistance. There is no hint that this was a possibility, let
alone something that would have been obvious at the time
to one of ordinary skill in the art. As stated in Section II,
A.2 above, the prior art taught that the impact toughness
and stress crack resistance properties of ethylene polymers
A73
District Court Opinion
would decrease if the number of side branches decreased.
(Tr. 101-09.) Accordingly, for any given amount by
weight of an olefin comonomer, one of ordinary skill in
the art prior to the invention of the ’698 patent would
have expected the impact toughness and stress crack
resistance properties of a copolymer to decrease as the
number of carbons in the comonomer increased (decrease
in number of side branches). DuPont’s researchers
discovered the opposite. ( Jd.) Furthermore, there is noth-
ing in any of the prior art references which discloses or
suggests that the higher alpha-olefin copolymers could
have the particular level of Elmendorf tear strength
required by claim | or the particular level of hoop stress
reactance required by claim 12.
Phillips in arguing obviousness jumbles all of its
references together without really offering any credible
suggestion of how they should or could be combined to
suggest the invention of the 698 patent. These numerous
and mixed references “skirt all around but do not as a
whole suggest the claimed invention, which they must, to
overcome the presumed validity.” Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1383
(Fed.Cir. 1986).
The prior art discloses that, as of 1955, free-radical
polyethylene had been a commercial product since shortly
after the end of World War II (Tr. 52-53, 1180), and a
new low pressure process for producing linear polyethy]-
ene using coordination catalysts had only recently been
discovered and was then in the early stages of com-
mercialization. (Tr. 61-62, 1181.)
Researchers at DuPont, Phillips, and elsewhere had
made ethylene-propylene copolymers and had found that
although they were tougher (due to reduced crystallinity )
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District Court Opinion
than the highly crystalline linear polyethylene, they were
no better than or were inferior to comparable commercial
free-radical polyethylenes. (Anderson et al. 645 [DX 6];
Hogan °721 [DX 45]; Hagemeyer et al. 413 [DX 41];
Belgian °782 [DX 106A].) Indeed, researchers at Phillips
had made ( but did not disclose until July 1956) ethylene-
butene copolymers that, although tougher than the
ethylene-propylene copolymers, were little, if any, better
than comparable commercial free-radical polyethylenes.
(DX 327, Table VIII at LO7779.)
Still others had attempted to make ethylene copoly-
mers with the higher alpha-olefirs octene-1 ( Vandenberg
963, Example 53 [DX 100]), hexene-1 (Nowlin et al.
649, Example II [DX 77] and Witt), and pentene-|
(Leatherman). However, those attempts resulted in
polymers that were either not melt processable, as in the
case of Vandenberg and Nowlin, or that they had impact
strength inferior to commercial free-radical polyethylenes
and to butene and propylene copolymers (Witt and
Leatherman ).
Thus, the prior art relied on by Phillips taught that
one should either make ethylene-butene copolymers or
stick with the commercial free-radical polyethylenes.
Phillips’ argument (D.I. 259 at 67), that “the same
uses disclosed by DuPont were disclosed over and over
again in the prior art,” overlooks the whole point of the
698 invention. DuPont does not contend that its re-
searchers invented plastic film or plastic pipe. The
invention, as clearly disclosed in the "698 patent’s specifi-
cation, was that these copolymers could produce film
“with an impact toughness higher than any film forming
polyethylene resin ever tested” (PX 1, col. 2, ll. 27-28), or
pipe “which, surprisingly. has a longer time to failure
A75
District Court Opinion
when subjected to internal pressure both at room tempera-
ture and at elevated temperatures than does any other
pipe forming polyethylene resin ever tested” (PX 1, col. 2,
ll. 37-41). Those specifications also disclose that the
claimed copolymers when used as wire coatings “sur-
prisingly, have stress crack resistance at least equal to any
other wire coating polyethylene resin ever tested” (PX 1,
col. 2, ll. 32-34), and, when used for injection molding,
produce articles “which, surprisingly, have good impact
toughness and stress crack resistances at least equal to any
injection moldable resin ever tested” (PX 1, col. 2, ll. 44-
47).
That the invention of the 698 patent was not obvious
to those of ordinary skill in this art is established by the
conduct at the time of real people working in this art.
Vandenberg, Nowlin et al., Witt and Leatherman, after
they had made ethylene higher alpha-olefin copolymers,
failed to anticipate the °698 invention. They simply did
not thereafter make the modifications that Phillips now so
arduously urges would have been obvious to them.
These actual facts, taken with other contemporaneous
and subsequent actions of Phillips’ researchers in the mid
and later 1950’s, including the commercialization by Phil-
lips in 1958 of ethylene-butene copolymers and the be-
lated recognition of the superior properties which can be
achieved with the higher alpha-olefins by Kitchen and
Hogan after DuPont’s Canadian patent (PX 4) issued in
1963, confirm the nonobviousness of the claimed 698
invention.
Phillips argues that the evidence is inadequate to
support the conclusion of unexpected superior impact
strength and stress crack resistence and is not com-
mensurate with the scope of the claims. (D.I. 259 at 73-
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District Court Opinion
74). In support of this argument, Phillips cites patent
application law where the applicant, not the infringer,
bears the burden of proof.15 Moreover, two cases cited by
Phillips, Jn re Greenfield, 571 F.2d 1185 (CCPA 1978),
and Jn re Lindner, 457 F.2d 506 (CCPA 1972), con-
cerned attempts to overcome obviousness rejections using
test data obtained from a single compound where the
rejected claims included hundreds of different compounds.
In this case, the evidence includes data for hundreds
of different ethylene alpha-olefin copolymers supporting
the superior impact strength and stress crack resistance
properties of DuPont’s invention across the full scope of
the claims.‘® Furthermore, any gap may be effectively
covered by trends discernible by a worker skilled in the art
from a large quantity of existing data. Jn re Kollman, 595
F.2d 48, 56 (CCPA 1979). DuPont’s researchers dis-
cerned these trends from the data available to them at the
time DuPont filed its parent and CIP applications for the
698 patent (Tr. 163-65) and the trends they discerned
have been firmly established by modern-day computer
analyses of that same data. (Tr. 144-66, 845-50, 275-311:
PX 1206-11, 1247-52.)
1S Only if Phillips had made out a prima facie case of obvious-
ness, which the Court finds it has not, would DuPont have any burden
with respect to such objective evidence of nonobviousness. Even then,
the burden would be that of going forward with such evidence, not
the burden of proof on that issue. Ashland Oil, Inc. v. Delta Resins &
Refractories, 776 F.2d 281, 291-92 (Fed.Cir. 1985).
‘6 This evidence included Elmendorf tear strength and stress
crack resistance data presented in the 698 patent (PX |, Tables I, II,
V, VI and VII), all of the ethylene alpha-olefin Elmendorf tear
strength and stress crack resistance data in DuPont’s possession at the
time it filed its CIP application for the 698 patent (PX 1205; Tr. 144-
46; DX 884-87), and the comparative data and statements from
Phillips, Dow and others in the industry (PX 83, 1215, 34, 72, 133, 10,
1216-21, 1242, 852, 1398). Consequently, at about the time DuPont
filed its CIP application for the ’698 patent, it had Eimendorf tear
strength data for over 400 alpha-olefin copolymers (PX 98; DX 570,
571; PX 1246, 1205; Tr. 144-46, 151).
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District Court Opinion
Phillips advances several arguments attempting to
prove this evidence insufficient.
Phillips argues that DuPont’s evidence of superior
results is insufficient because the “ethylene-butene copoly-
mers are frequently equal) to or better than ethylene
copolymers of higher olefins” and mentions the butene
copolymers currently produced by DuPont’s Conoco sub-
sidiary. (D.I. 259 at 71.) In its next paragraph, however,
Phillips attempts to have it both ways. Phillips points to
an excerpt from the hearing on February 6, 1986 before
Judge Schwartz in this case and asserts that DuPont has
admitted that one must compare products as they existed
at the time, not incorporating 30 years of development
work, and that DuPont may not “bootstrap its own work”
by relying on the superior properties of Phillips’ higher
alpha-olefin copolymers. (Jd.)
The trouble with this argument is that Phillips ignores
a fact well understood by the experts (Tr. 601, 603-04)
and stated at the hearing before Judge Schwartz—that the
only meaningful comparison for determining the effect of
comonomer selection is “to make [the polymers] the same
way with the same technology.” (D.I. 169 at 29.)
Phillips did this in its study which began in 1963, after the
issuance of DuPont’s Canadian patent (PX 83, 1215), and
that is what Dow Chemical Company did in its 1979 study
(PX 10, 1216-21). The comparison of a butene copoly-
mer with a particular hexene or octene copolymer will not
show the effect of carbon chain length on properties unless
the processes by which the polymers were made are
essentially the same and the densities and melt indices of
the respective polymers are comparable. (Tr. 601, 603-
04, 787-88, 813-15, 819, 843-44, 897-921; PX 724, 1257,
1258; DX 592, 593; Tr. 2441-47.)
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District Court Opinion
Another argument advanced by Phillips is premised
on the testimony of Professor Maxwell—that DuPont
“created” the superior properties of the higher alpha-
olefin copolymers by skillfully presenting only the most
favorable data in its patent applications for the °698
patent. (D.I. 259 at 72-73.) This argument is without
merit because the Court has already found that Professor
Maxwell’s analysis was faulty.
Phillips’ reliance on Jn re Boesch, 617 F.2d 272
(CCPA 1980), is not helpful. In that case, the court held
that objective evidence comprising the testing of a total of
five alloy compositions within the scope of the ciaims and
nine prior art alloy compositions was not sufficient to
demonstrate nonobviousness where the claimed alloy
compositions overlapped with alloy compositions ex-
pressly disclosed in the prior art.
The trouble with Phillips’ argument is that it erro-
neously implies that DuPont’s objective evidence is limit-
ed to the data contained in the *698 patent, excluding
other data in evidence. Phillips has not cited, and the
Court is not aware of, any case to support such a
limitation.
4. Commercial Success
Phillips argues that the higher alpha-olefin copoly-
mers of the 698 patent were not “actually a commercial
success” (D.I. 259 at 77-79), that DuPont attempted, but
failed, to commercialize higher alpha-olefin copolymers,
and that this alleged “failure” confirms the obviousness of
DuPont’s invention. (Jd. at 81-82.)
The trial evidence does not support Phillips’ argu- |
ment. DuPont’s commercial production of higher alpha-
ai eae
A79
District Court Opinion
olefin octene and decene copolymers grew substantially
from 1962, the time of their introduction, to 1983, when
DuPont’s annual production of these copolymers exceeded
210 million pounds. (PX 1282; DX 852.) By the end of
1985, DuPont had produced commercially over
1,800,000,000 pounds. (DX 852.)
Furthermore, Phillips has produced ethylene higher
alpha-olefin copolymers in ever increasing amounts since
beginning its production of hexene copolymers in 1967.
(PX 1264, 1265.) Since DuPont’s ’698 patent issued in
1978, Phillips has sold over 4,000,000,000 pounds of
ethylene-hexene copolymers. (PX 1264.) These sales
may be considered as part of the proof of commercial
success when determining nonobviousness. Ralston Pu-
rina Co. v. Far-Mar-Co, Inc., 586 F.Supp. 1176, 1223
(D. Kan. 1984), aff'd in part, reversed in part on other
grounds, 772 F.2d 1570 (Fed.Cir. 1985). Cf. Parkson
Corp. v. Proto Circuits, Inc., 220 USPQ 898, 910-11 (D.
Md. 1983).
The trial evidence also shows that many of the major
polyethylene producers in the United States are licensed
under DuPont’s 698 patent and have commercialized
higher alpha-olefin copolymers. DuPont’s licensees in-
clude The Dow Chemical Company (PX 1283), Soltex
Polymer Corporation (PX 1284), Mobil Chemical Com-
pany (PX 1285), Amoco Corporation (PX 1286), Allied
Corporation (PX 1287), Union Carbide Corporation (PX
1288), National Distillers and Chemical Corporation (PX
1290), Norchem, Inc. (PX 1291, 1291A), Exxon Chem-
ical Company (PX 1292), Gulf Oil Corporation (now
Chevron) (PX 1293), and American Hoechst Corporation
(PX 1294).
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District Court Opinion
Phillips states that “none of the licensees have paid
any running royalties and any payment of future running
royalties in all licenses under the 698 patent is contingent
upon DuPont first obtaining the allowance of claims in the
reissue proceeding.” (D.I. 259 at 83.) While this is true,
Phillips overlooks the fact that under the terms of those
licenses, DuPont has received nonrefundable down-
payments of license fees totaling $2,125,000.00 (see Ar-
ticle III(a) of PX 1284-88 and of PX 1290-94, respective-
ly).
Phillips’ argument that the economic data does not
support a finding of commercial success is not persuasive.
For example, Phillips contends that DuPont’s com-
mercialization of higher alpha-olefin copolymers was a
“failure” because DuPont chose to produce large quan-
tities of ethylene homopolymers and butene copolymers in
addition to octene copolymers. (D.I. 259 at 81-82.) The
evidence showed otherwise. DuPont’s production of
ethylene homopolymers and butene copolymers was di-
rected principally to different end-use markets that did not
require the superior properties offered by the higher
alpha-olefin copolymers. For instance, DuPont produced
large quantities of ethylene homopolymers to provide raw
materials for its in-house conversion to different value-
added products. (Tr. 1091-92, 1133-34; DX 2724.)
DuPont’s butene copolymer production from its E and J
units was completely phased out by 1983. (Tr. 1092,
1098, 1120-21.)
DuPont’s butene copolymer production from its K
unit began in 1983 as a result of its acquisition of Conoco.
Conoco had previously acquired a license to a proprietary
polymerization technology that would operate with butene
comonomer but not with octene comonomer. (Tr. 1120-
Al
District Court Opinion
21, 1139.) The butene copolymers from K unit did not
compete with the higher alpha-olefin copolymer produc-
tion from DuPont’s E and J units which opened new
markets for high molecular weight resins. (Tr. 1121,
1140.)
Phillips argues that there was no commercial success
because the sales evidence did not show whether DuPont’s
octene copolymers obtained a substantial share of the
polyethylene market (D.I. 259 at 77), because DuPont’s
sales of octene copolymers did not surpass the sales of
ethylene homopolymers and butene copolymers (id. at 77-
78), and because DuPont’s profitability on its octene
copolymers was allegedly “miserable” and a “dog.” (Jd.
at 78.) Phillips’ analysis ignores the wide acceptance and
commercialization of DuPont’s invention by the industry,
Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 907
(Fed.Cir. 1986), and in particular, the adoption of the
invention by Phillips, Parkson Corp. v. Proto Circuits, Inc.,
220 USPQ 898, 910 (D.Md. 1983). Furthermore, the
reliance of Phillips’ expert on the alleged absence of price
premiums for the higher alpha-olefin copolymers in a
highly competitive industry (D.I. 259 at 78) is not per-
suasive of a lack of commercial success, particularly when
the higher alpha-olefin copolymers of the 698 patent are
accepted products and big sellers. Paine, Webber, Jack-
son & Curtis v. Merrill Lynch, 587 F.Supp. 1112, 1116
(D.Del. 1984).
Phillips next contends that DuPont’s production and
sales of its octene copolymers experienced “ordinary”
growth and that this proves that there is no direct
connection or nexus between the merits of DuPont’s *698
patent and the commercial success achieved by that
invention. (D.I. 259 at 75.) The fact is that DuPont’s
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District Court Opinion
ethylene-octene copolymers experienced more than ordi-
nary growth, The evidence proved that DuPont’s produc-
tion of octene copolymers (“Type A’’) in the ten years
following the OPEC oil crisis (1974-1984), increased by
360% from 48,000,000 pounds to 221,000,000 pounds.
(DX 2583.) DuPont’s production of butene copolymers
and ethylene homopolymers increased by only 117% from
170,000,000 pounds to 369,000,000 pounds. (Jd.) Dur-
ing this same period, the entire plastics industry grew by
58%. Thus, DuPont’s ethylene-octene copolymers demon-
strated more than “ordinary” growth.
Mr. Edward S. Davis testified at trial that the superior
impact strength and stress crack resistance properties of
the higher alpha-olefin copolymers enabled DuPont to
penetrate several markets that previously employed other
polymers or that, through technological advances, re-
quired properties superior to those achievable from the
butene copolymers. (Tr. 1095-99, 1125; PX 1281.)
Phillips, apparently relying upon the testimony of its
economic consultant, Dr. Horace J. DePodwin, argues that
DuPont’s profitability in its ethylene-octene business was
lower than the ordinary profit required at DuPont and
lower than the profits achieved by its conventional
polyethylene business. (D.I. 259 at 78.) Dr. DePodwin’s
testimony was based on his determination that DuPont’s
net return on investment in high density polyethylene resin
business should be greater than 20%. (DX 2575.) This
testimony is of little weight because Dr. DePodwin
obtained his 20% figure from a 1976 DuPont departmen-
tal annual report. (Tr. 3387-88.) However, Dr. DePod-
win overlooked that the 20% return figure used in the
report only applied to “cost-savings projects that have
been deferred too long.” (DX 2412 at R042837.) Dr.
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District Court Opinion
DePodwin admitted that a single quarterly report con-
cerning the wire and cable end-use market was the only
DuPont record of the actual profitability of DuPont’s
polyethylene business that he reviewed. (Tr. 3444-46.)
On the other hand, Phillips’ own actions provide
strong evidence that the commercial success of the higher
alpha-olefin copolymers is directly attributable to the
merits of the invention of the 698 patent. Between 1973
and 1983, Phillips’ annual production of butene copoly-
mers dropped from 152 million pounds per year to 60
million pounds per year while its annual production of
hexene copolymers grew from 103 million pounds per
year to over 850 million pounds per year. (PX 8339,
1265.)
Phillips argues that DuPont may not rely on the
commercial success that Phillips has experienced in pro-
ducing and selling higher alpha-olefin copolymers because
its sales are the result of process and product devel-
opments, cost reductions, technical service and marketing
superiority. (D.I. 259 at 76.) The evidence, however, fails
to support this argument. What Phillips completely
sidesteps is that, despite all of its alleged process and
product developments, cost reductions, technical service
and marketing achievements, Phillips’ personnel con-
cluded in 1980 that—
Phillips largest volume [5502, 5202] resins as now
made will be unacceptable in competition with other
resins if butene were used instead of hexene (PX 133,
p. 2),
because
[b]utene does not impart the stress cracking resis-
tance to ethylene copolymers that hexene does (PX
133, p. 1).
A84
District Court Opinion
This evidence in 1980 flies in the face of Phillips’ con-
tention that its commercial success resulted from other
factors. It does, however, demonstrate that the market
relies upon and demands the superior properties offered
by the higher alpha-olefin copolymers of the *698 in-
vention.
Phillips, relying on Jn re Tiffin, 448 F.2d 791 (CCPA
1971), argues that the commercial sales data in evidence
is “inadequate” and does not support a finding of
nonobviousness because it is “not commensurate with the
scope of the claims.” (D.I. 259 at 79.) Phillips again
relies on patent application cases. The Federal Circuit has
repeatedly held in the context of an issued patent that,
The objective evidence of nonobviousness, i.e.,
the “indicia” of Graham, supra, may in a given case
be entitled to more weight or less, depending on its
nature and its relationship to the merits of the
invention. It may be the most pertinent, probative,
and revealing evidence available to aid in reaching a
conclusion on the obvious/non-obvious issue. It
should when present always be considered as an
integral part of the analysis.
W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 1555 (Fed.Cir. 1983). To the same effect is
Simmons Fastener Corp. v. Illinois Tool Works, 739 F.2d
1573, 1575 (Fed.Cir. 1984). Thus, the question is not
whether the evidence of commercial success is “‘com-
mensurate in scope with the claims,” but rather whether
the evidence is relevant to the question of nonobviousness.
The choice by the polyethylene industry to com-
mercialize primarily ethylene-hexene and ethylene-octene
A85
District Court Opinion
copolymers, but not other higher alpha-olefin copolymers,
was essentially a matter of choosing the least expensive
alternatives from within the scope of the invention of the
698 patent. (Tr. 71-74, 221.) Hence, the evidence of the
commercial success of ethylene-hexene and ethylene-
octene copolymers provides “pertinent, probative, and
revealing evidence” of the nonobviousness of DuPont’s
invention.
Finally, Phillips argues that the evidence of com-
mercial success will not support a conclusion of
nonobviousness because “economic motivation did not
exist to work with higher olefins.” (D.I. 259 at 80.)
The pertinent question is whether economic motiva-
tion existed to attempt to make ethylene polymers having
superior impact strength and stress crack resistance prop-
erties. The work at both DuPont and Phillips in the
1950’s shows that such motivation did exist. To argue, as
Phillips does, that higher alpha-olefins were not available
in “commercial quantities” is somewhat beside the point.
Phillips has offered no evidence to show that such a source
of higher alpha-olefins would not have become readily
available to Phillips had it discovered early-on the su-
perior properties that can be achieved by the higher
alpha-olefin copolymers.
Based on the credible evidence in the light of the
criterion set forth in Graham v. John Deere Co., the Court
finds and concludes that Phillips has not met its burden of
proving by clear and convincing evidence that DuPont’s
698 patent was obvious under 35 U.S.C. § 103.
D. Phillips’ Indefinite Claims Defense
Phillips contends that the 698 patent is invalid under
35 U.S.C. § 112 (second paragraph) because the claims
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District Court Opinion
are indefinite in that they do not particularly point out and
distinctly claim the subject matter which the applicant
regards as his patent.
The second paragraph of Section 112 provides, in
pertinent part:
The specification shall conclude with one or
more claims particularly pointing out and distinctly
claiming the subject matter which the applicant re-
gards as his invention.
The Federal Circuit has interpreted this to mean that
“<Tijf the claims, read in light of the specifications,
reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language
is as precise as the subject matter permits, the courts can
demand no more.’ ” Shatterproof Glass Corp. v. Libbey-
Owens Ford Co., 758 F.2d 613, 624 (Fed.Cir. 1985)
(quoting Georgia-Pacific Corp. v. United States Plywood
Corp., 258 F.2d 124, 136 (2d Cir. 1958)).
1. The Density Limitations
First, Phillips argues that the density limitations of all
the asserted claims of the °698 patent are indefinite
because the *698 patent does not specify a particular
method for preparing the polymer sample for density
determination. (D.I. 259 at 86.) This argument is un-
availing because there is no evidence in the record to
support the proposition that those skilled in the art would
use a sample preparation technique other than one in-
volving “reasonably normal fabrication conditions.” (DX
327 at LO7755; Tr. 2693-94. )
Phillips’ own patents, which it contends anticipate the
698 patent, report density values for polyethylenes and
ethylene copolymers without reporting how the samples
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District Court Opinion
used for those density determinations were prepared. See,
e.g., Witt and Leatherman application (PX 88 at
L000017), the Hogan °721 patent at column 36, Table
XXVIII and column 38, lines 56-58 (DX 45), and the
Nowlin et al. 649 patent (DX 77).
Density values may be influenced somewhat by going
to extremes in sample preparation, such as cooling the
sample very slowly or subjecting the sample to rapid
cooling by a quick quench. (Tr. 359-60.) But, even if
samples were prepared by a slow cool or a quick quench
technique and were then compared to a sample cooled
normally, in most instances, the density differences would
not be major. (Tr. 2693-94.)
Phillips also contends that there was no “standard or
generally accepted technique” in effect in 1957 for pre-
paring samples for density determination (D.I. 259 at 86),
does not help its indefiniteness defense. In Hybritech Inc.
v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385
(Fed.Cir. 1986), the Federal Circuit rejected a similar
argument:
The basis of the district court’s holding that the
claims are indefinite is that “they do not disclose how
infr agement may be avoided because antibody
affinity cannot be estimated with any consistency.”
(Conclusion 6.) Even if the district court’s finding in
support of this holding—that “there is no standard
set of experimental conditions which are used to
estimate affinities”—is accurate, under the law per-
taining to indefiniteness—“‘if the claims, read in light
of the specification, reasonably apprise those skilled
in the art both of the utilization and scope of the
invention, and if the language is as precise as the
subject matter permits, the courts can demand no
more.” Shatterproof Glass Corp. v. Libbey-Owens Ford
Co., 758 F.2d 613, 624 (Fed.Cir. 1985 )—the claims
ts
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District Court Opinion
clearly are definite. The evidence of record in-
disputably shows that calculating affinity was known
in the art at the time of filing, and notwithstanding
the fact that those calculations are not precise, or
“standard,” the claims, read in light of the specifica-
tion, reasonably apprise those skilled in the art and
are as precise as the subject matter permits. As a
matter of law, no court can demand more.
See also W. L. Gore & Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1558 (Fed.Cir. 1983), where the court
rejected the argument that the absence of a definition for
“specific gravity of the solid polymer” rendered the
specification non-enabling and the claims indefinite.
The short answer to Phillips’ contention of in-
definiteness is demonstrated by the ease with which
Phillips’ expert witnesses applied at trial the density
limitations of the ’698 claims to the prior art references.
(Tr. 1318, 1320, 1322-26, 1329-30, 1332, 1338-39.) Rose-
mount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540,
1547 ( Fed.Cir. 1984).
2. Elmendorf Tear Strength Limitation of Claim 1
Claim | of the 698 patent contains an Elmendorf tear
strength limitation of 150 to 400 grams per mil. (PX 1,
col. 13, ll. 16-25.) Phillips makes three arguments that this
limitation is indefinite because one skilled in the art (a)
would not know how to perform the test on plastics, (b)
would not know how the Elmendorf tear strength speci-
men should be prepared, and (c) the thickness of the tear
Strength specimen is not specified. (DI. 259 at
87-88.)
While it is true that the Elmendorf tear strength test
for paper was not an ASTM standard for plastic film in
1956-57, it was a recognized test that was used at that time
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District Court Opinion
on plastic film by those skilled in the art. This is shown,
for example, by Phillips’ September 1956 “Plastic Test
Manual,” which contained “[o]nly those tests most fre-
quently used” on plastics in Phillips’ laboratories (DX 706
at L142656), specifically included an adaption for plastic
film of the ASTM Elmendorf tear strength paper test
—D689. (DX 706 at L142733-34; Tr. 2360-64.) Profes-
sor Maxwell’s testimony to the contrary is not credible
(Tr. 1851-53) because he admitted on cross-examination
that he had heard that the Elmendorf tear test was being
used to evaluate toughness of plastics in 1956-1957 (Tr.
1939) and that he had no real hands-on experience with
the Elmendorf tear strength test. (Tr. 1940-41.)
Phillips’ contention that the °698 patent does not
show how the Elmendorf tear strength specimen should be
prepared is also without merit. The DuPont patent clearly
indicates that the Elmendorf tear strength data reported
were obtained on compression molded films. (Tr. 890-
91.) That was a technique generally being used at the
time for Elmendorf tear strength measurements, especially
for laboratory purposes on smail quantities of material.
(Tr. 742-43.) Furthermore, the evidence established that
one skilled in the art would have used compression
molded samples of an appropriate thickness such as 10-12
mils. (Tr. 755-56, 1000.) Dr. Beasley explained that it
was important to keep the film thickness within a rela-
tively narrow range in order to obtain the best results
using the Elmendorf tear test. (Tr. 756, 763-64, 1000.)
Compression molded films are normally molded within a
relatively narrow range of thickness (such as 10-12 mils)
for the Elmendorf tear strength test because it is difficult to
compression mold extremely thin films and because thick
films would not tear in the testing device. (Tr. 764.) If
the mold was properly filled prior to molding by
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District Court Opinion
distributing the polymer uniformly throughout the chase
(Tr. 2027), orientation in the resultant film would be
minimized. (Tr. 745-53.) But in the samples prepared by
Professor Maxwell, he failed to do this. The fact that his
demonstration sheet of compression molded film (DX
872A) was roughly twice as thick in the center than it was
in the corners (Tr. 2028-30) indicated that he did not fill
the mold properly. He also did not allow the polymer to
melt before applying pressure in the compression molding
process (Tr. 1990), which is contrary to normal practice
for compression molding. (Tr. 1026; DX 706 at L142658,
Item (4)( Phillips 1956 compression molding procedure );
DX 547 (ASTM D 1928-70, procedure C, 915.9 at
L135721)).
Finally, Phillips’ contention that one skilled in the art
would not know what thickness to prepare the Elmendorf
tear strength specimens is likewise untenable. The cred-
ible evidence indicated that the normal range of com-
pression molded film thickness would be in the range of
10 to 12 mils and that any variations of thickness would
have little effect on Elmendorf tear strength (Tr. 1000),
see handwritten comment (on DX 691, a DuPont letter)
which states:
Elmendorf values are ok for thin films but as
they get too thick the value depends on thick-
ness. It is to be assumed that a skilled analyst
would use a thin enough film (Tr. 999-1000).
3. The X-Ray Crystallinity Limitation of Claim 5
Phillips argues that Claim 5 which contains a 40-70%
crystallinity limitation as measured by X-ray diffraction
makes that claim and its dependent claims 10, 12, and 14
indefinite because X-ray crystallinity measurements are
not standard and vary widely between laboratories. Yet,
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District Court Opinion
the evidence indicated that one skilled in the art would
recognize X-ray crystallinity as a qualitative indication of
comonomer content and would take into account the plus
or minus 10 or 20 percent laboratory to laboratory
variance inherent in the technique (Tr. 1041) in applying
the X-ray crystallinity limitation to Claim 5 and _ its
dependent claims. The evidence showed that determining
X-ray crystallinity was known in the art at the time of
filing the 698 patent application and notwithstanding that
those calculations are not precise or standard, Claim 5,
read in the light of the specifications, reasonably apprised
those skilled in the art and are as precise as the subject
matter permits. Hybritech, Inc. v. Monoclonal Antibodies,
Inc., supra, 802 F.2d at 1385 (Fed.Cir. 1985).
The Court concludes that based on the credible
evidence presented, Phillips has not borne its burden of
proving by clear and convincing evidence that the claims
of the 698 patent are invalid for indefiniteness under the
second paragraph of 35 U.S.C. § 112.
V. UNENFORCEABILITY
Phillips charges that DuPont committed three sepa-
rate acts of inequitable conduct when prosecuting the 698
patent before the Patent Office and that any one of those
acts alone is sufficient to declare all the patent claims
unenforceable.
Phillips, of course, by asserting its unenforceability
defense, bears the heavy burden of proving by clear and
convincing evidence that the nondisclosed or false infor-
mation was material to the decision of the Patent Office in
issuing the patent. J.P. Stevens & Co., Inc. v. Lex Tex
Ltd. Inc., 747 F.2d 1553, 1559-62 (Fed.Cir. 1984);
Environmental Designs v. Union Oil Co. of Cal., 713 F.2d
693, 698 (Fed.Cir. 1983).
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District Court Opinion
The three acts of inequitable conduct which Phillips
contends DuPont committed may be summarized as fol-
lows: (1) when the prosecution of the 698 patent was
recommenced after its interruption by Interference No.
94,730, DuPont failed to disclose to the patent examiner
that the Baxter ethylene-styrene work upon which DuPont
relied to overcome the prior art of the Anderson et al.
645 patent had been rejected by the Court of Customs
and Patent Appeals (““CCPA”’) in the ’730 Interference:
(2) DuPont improperly selected data which it presented
to the Patent Office to support its argument that the
claimed copolymers possess unexpectedly improved prop-
erties; and (3) DuPont failed to disclose to the Patent
Office Phillips’ Belgian Patent 535,082, a material refer-
ence known to DuPont. The Court will consider these
contentions in order.
A. Failure To Disclose CCPA’s Opinion In Inter-
ference No. 94,730
The record before the Patent Office shows that the
patent examiner in the first office action rejected all the
original claims of the CIP application, which lead to the
698 patent, for lack of invention in view of a number of
cited references. (PX 3 at 000022-23.) To overcome the
examiner’s rejections, DuPont relied upon ethylene-
styrene copolymerization performed by Warren Baxter
which was presented in a Rule 131 affidavit. (PX 3 at
000026-31, 000101, 000108-112.) The examiner again
rejected the claims as unpatentable over Anderson et al.
645 and ruled that DuPont’s affidavits were insufficient to
show reduction to practice because of a complete failure to
establish utility. (PX 3 at 000113-14.) The Board of
Appeals reversed the examiner and held that DuPont’s
affidavit of December 22, 1959, was sufficient to overcome
the Anderson et al. 645 patent. (PX 3 at 000262-266. )
4 |
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District Court Opinion
Following this decision, Patent Examiner J. L. Schofer
allowed all claims but formal allowance was withheld
pending a study of interference questions. (PX 3 at
000267. )
Prosecution of the 698 patent application was dis-
continued pending the outcome of Interference No.
94,730, declared between DuPont (as assignee of Drs.
Anderson and Stamatoff), and applications of Ziegler et
al. and Natta et al. (DX 915.) Following the proceedings
before the Board of Patent Interferences, the Board held
that the Baxter ethylene-styrene copolymer had not been
proved by contemporaneous documents to have been of
any practical utility. (DX 487-D at 158-66.) The Court of
Customs and Patent Appeals agreed with the Board of
Interferences’ decision that the Baxter copolymer runs in
1954, relied upon by Anderson, had not established
practical utility and thus Anderson was not entitled to a
priority
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