Petition for Writ of Certiorari — Dana Corp. v. IPC Ltd. Partnership

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No.

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In Che

Supreme Court of the United States

WMctoher Cerm, 1988

DANA CORPORATION,

Petitioner

Vs

IPC LIMITED PARTNERSHIP

and

INTERNATIONAL PACKINGS CORPORATION,

Respondents

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

— AND APPENDICES —

BrRooKS & KUSHMAN

By: ERNIE L. BROOKS

Counsel of Record

KEVIN J. HEINL

Attorneys for Petitioner

2000 Town Center, Suite 2000

Southfield, Michigan 48075

(313) 358-4400

Interstate Brief & Record Company, a division of North American Graphics, Inc

1629 West Lafayette Boulevard, Detroit, MI 48216

(313) 962-6230

QUESTION PRESENTED

VEVENTH AMENDMENT RIGHT TO TRIAL BY JURY

TABLE OF CONTENTS

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TABLE OF AUTHORITIES

Statutes:

Constitutional Authority

No.

In Che

Supreme Court of the United States

October Cerm. 1988

DANA CORPORATION,

Petitioner

VS

IPC LIMITED PARTNERSHIP

and

INTERNATIONAL PACKINGS CORPORATION,

Respondents

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

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OPINIONS BELOW

t the United States Court ot Appeals

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JURISDICTION

t the Federal Circuit was enter

r 26, 1988. (C-1). A timely Petition For Rehearing

) was denied on December 6, 1988. and this Petition For

2

Federal Circuit Order denying rehearing is reproduced

in the Appendix. (D-1). This Court’s jurisdiction is

invoked under 28 U.S.C. § 1254(1).

SEVENTH AMENDMENT

OF THE U.S. CONSTITUTION

The Seventh Amendment to the U.S. Constitution

provides:

In suits at common law, where the value in

controversy shall exceed twenty dollars, the

right of trial by jury shall be preserved, and no

fact tried by a jury, shall be otherwise re-

examined in any court of the United States. than

according to the rules of the common law.

STATEMENT OF THE CASE

Dana sued IPC for infringement of U.S. Patent

No. 3,498,621 in the United States District Court for

the Eastern District of Michigan. The '621 patent

issued for a threaded rubber valve stem seal used in

automotive engines. In summary, the valve stem seal of

the ‘621 patent is a rubber (elastomeric) grommet fitted

onto the valve guide within which the valve stem recip-

rocates. The novel feature of the patented valve stem

seal was the screw thread in the internal wall that

contacts the valve stem.’ Dana’s design reduced oil

consumption and was first used in the Chevrolet Vega

and Ford Pinto.

' Claim | of the '621 patent reads:

1. In an internal combustion engine having a valve

guide and a poppet valve stem mounted for reciprocating

(Concluded on page 3)

The case was tried to a jury from May 5-20, 1987. The

jury returned a verdict in Dana’s favor and Judgment

was entered on the verdict July 21, 1987. IPC filed five

motions for JNOV which were denied December 7, 1987.

A.

IPC’s BEST MODE DEFENSE

One of IPC’s defenses was that Dana failed to comply

with the best mode requirement of 35 U.S.C. § 112,

reproduced immediately below:

The specification shall contain a written

description of the invention, and of the manner

and process of making and using it, in such full,

clear, concise, and exact terms as to enable any

person skilled in the art to which it pertains, or

with which it is most nearly connected, to make

and use the same, and shall set forth the best

mode contemplated by the inventor of carrying

out his invention.

Continued from page 2)

axial movement in said valve guide, a valve stem seal tor

sealing between said valve stem and said valve guide,

comprising a transversely extending portion of elastomeric

material positioned atop said valve guide, said elastomeric

portion having an axially extending receiving opening

axially aligned with said valve guide and defined by an

internal cylindrical wall, said internal wall having a

diameter less than the diameter of said stem and having a

screw thread formed therein, said screw thread being

continuous and extending the full axial length of said

internal wall, a depending annular elastomeric skirt

integral with said elastomeric portion at the periphery

thereof, said skirt being adapted to snugly surround said

valve guide, means for radially inwardly biasing said trans-

versely extending portion and means for radially inwardly

biasing said annular skirt

4

B.

BEST MODE COMPLIANCE IS A QUESTION OF FACT

Compliance with the best mode requirement of 35

U.S.C. § 112 is a question of fact. 860 F2d at 418. (A-5)

in

THE BEST MODE FACTUAL INQUIRY IS TWO-FOLD:

(1) WHAT IS THE BEST MODE, AND

(2) WAS IT CONCEALED?

The language of the statute, quoted above, required

determination by the jury whether fluoride treated

Buna-N or polyacrylic was the best mode. To sustain

the best mode defense, the accused infringer must

prove that the best mode was “concealed.”

The jury instruction included 35 U.S.C. § 112, and the

following instruction on “concealment”

Under the patent law, the specification must set

forth the best mode contemplated by the in-

ventor of carrying out his invention without con-

cealing trom the public preterred products of his

invention which he in tact conceived. In

attempting to show non-compliance with the best

mode requirement, only evidence of concealment

accidental or intentional) is to be considered

The “concealment” requirement was affirmed by the

Federal Circuit as controlling law:

Whether or not a specitic disclosure is ade-

quate for best mode purposes is determined by

comparing the disclosure with the facts con-

cerning the invention known to the inventor at

the time the application was filed. Spectra

Physics, Inc. v. Coherent, Inc., 827 F.2d 1524,

1535, 3 U.S.P.Q.2d 1737, 1745 (Fed. Cir. 1987)

Since “there is no objective standard by which

to judge the adequacy of a best mode disclosure,

only evidence of ‘concealment’, whether

accidental or intentional, is considered.” Id. See

also DeGeorge v. Burnier, 768 F.2d 1318, 1324,

226 U.S.P.Q. 758, 763 (Fed. Cir. 1985); In re

Sherwood, 613 E2d 809, 816, 204 U.S.P.Q. 537

944 (|C.C.P.A. 1980). “Compliance with the best

mode requirement exists when an inventor dis-

closes his preferred embodiment.” In re Gay, 309

F2d at 772, 135 U'S.PQ. at 315.

860 F2d at 418. |A-5-A-6).

D.

THE TRIAL RECORD ON THE BEST MODE ISSUE CON-

PAINS EVIDENCE ON: (1) BUNA-N vs. POLYACRYLIC, AND

(2) CONCEALMENT

Che trial record contained substantial evidence on

the best mode contemplated by the inventor for the

valve stem seal of the '621 patent. The best mode fact

dispute was confined to the valve stem seal material.

Exemplary documents reflecting the factual proofs at

trial are reproduced in the attached Appendix. |Appen-

dices E-H).

1. The Record On Fluoride Treated Buna-N

vs. Polyacrylic

IPC relied upon a two-page test report by Wilson, the

inventor, documenting bench tests conducted in 1963

tor fluoride treated and untreated Buna-N rubber seals

with various seal surface geometries. The Wilson test

report was dated November 2, 1964. IPC argued that

the statement in this Wilson test report that “fluoride

treatment was necessary” proved that fluoride treat-

ment was the best mode.

6

Dana countered with a memorandum signed by the

inventor Wilson on the same day as the test report

which states:

Buna N rubber is restricted to service tempera-

tures which do not exceed 250°F and, because of

its composition, it is subject to deterioration

from heat aging. It can be teflon spray coated or

the compound can be modified by additional!

graphite or it can be fluoride surface treated. The

latter treatment is to be preferred.

Polyacrylic rubber has a service temperature of

about 325°F although we are experimenting with

a compound capable of withstanding 400°F Its

composition is entirely different from Buna N

and is much less susceptible to heat aging

deterioration. It likewise can be teflon spray

coated and can be compounded with additional

graphite for lubrication and subsequently tumbled

in moly disulfide. This latter is the preferred

treatment. It cannot be fluoride surface treated.

(Appendix E, © 2 and 3; E-1).

Buna-N — acrylonitrile-butadiene — is disclosed in

the ‘621 patent, but fluoride treatment was not specifi-

cally disclosed. IPC argued that the absence of disclo-

sure of fluoride treatment invalidated the ’621 patent

under 35 U.S.C. § 112.

The jury had a substantial basis to find that poly-

acrylic was the best mode.” The preferred treatment of

* In addition to the report quoted above, Wilson also prepared a

test report of February 17, 1965 comparing Buna-N and polyacrylic

valve stem seals. Wilson concluded in that report that polyacrylic

appeared to give improved performance compared to Buna-N. (F-1 -

F-2). Wilson again noted that polyacrylic “was a higher temperature

resistant replacement for the |Buna-N|”’ — an important factor for

automotive engine components.

polyacrylic was fully disclosed in the '621 patent.’ The

inventor’s reports showed that polyacrylic rubber was

superior to Buna-N rubber in two important ways

higher temperature resistance and less susceptibility to

heat aging deterioration.

The ’621 patent application was filed on June 14

1965. Subsequently, the inventor Wilson prepared a

summary of the valve guide seal development dated

January 26, 1967. (G-1-—G-10). Of particular importance

is his conclusion echoing his earlier report on the

superiority of polyacrylic over Buna-N:

Polyacrylic {high modulus) all rubber seals

operated 50,000 miles and provided consistent

control of valve oil consumption during this

mileage. Buna-N all rubber seals likewise oper

ated 50,000 miles but did not provide a uniform

level of oil control throughout the test

2. The Concealment Issue

Mr. Dega, Dana’s expert on seal technology based on

38 years’ seal experience at General Motors Corporation

>

]

Polyacrylic is fully disclosed in the 621 patent, including

details of the preferred surface treatments used by Dana. The text ot

the ‘621 specification on materials and treatments reads

The valve seals 42 ot this invention have at least the

sealing portion 46 made of elastomeric material, and

particularly good results have been obtained trom seals

made of acrylonitrile, butadiene, and polyacrylics rubbers

and combinations thereot. These are well known materials

which are widely used in internal combustion engines tor

sealing purposes. In some instances the sliding, sealing

surfaces, such as the internal wall 50, may be coated with a

lubricating material, such as molybdenum disulfide

graphite, or the like, to provide a more slippery surface on

the elastomeric material and decrease friction between the

seal 42 and the valve stem 26. The methods of applying

such surface coatings are well known and widely used for

elastomeric seals

8)

testified at trial that those knowledgeable with valve

stem seals were well aware by 1965 of the fluoride treat-

ment process and its benefits when applied to Buna-N

used as a seal material. Dana also introduced an article

on fluoridation published in 1961. (H-1 —H-9). In addi-

tion, Dana proved that the fluoride treated Buna-N used

by Dana was supplied by a vendor, who recommended it

to Dana as a seal material. Dana contributed nothing to

this treatment technique. These were Dana's proofs to

negate concealment if the jury found that fluoride

treated Buna-N was the best mode — IPC argued, but

ottered no further evidence on, concealment.

z.

THE FEDERAL CIRCUIT ENTRY OF JNOV

The Federal Circuit reversed the Judgment against

IPC, granting JNOV on the best mode defense, on the

tollowing findings — ignoring all evidence on poly-

acrylic and concealment:

The “Wilson report,” the in-house letter cited

above, and the testimony concerning Dana’s first

sales of the patented seals are the only pieces of

evidence in the record that are probative con-

cerning what the inventor, Mr. Wilson, thought

constituted the best mode of his invention. The

two documents present uncontroverted and cor-

roborating evidence that, at the time the applica-

tion for the '621 patent was filed, Mr. Wilson

believed that the best way of carrying out his

invention included fluoride treating the surface

of the valve seals. That this was the best mode

at the time is confirmed by the fluoride treated

seals based on the Wilson design first sold by

Dana. Having no evidence to the contrary to

consider, reasonable minds could not have dif-

’

tered as to whether Mr. Wilson believed that

fluoride surface treatment was part of the best

mode of carrying out the claimed invention

860 F2d at 419-20 emphasis added A-9

ARGUMENT

\t trial, the jury implicitly found that polyacrylic

s the best mode or that IPC failed to prove conceal-

nt, or both. These implicit findings are inherent to

the rejection of IPC’s best mode defense. The Federal]

Circuit ignored both of these fact findings and the

ecord 1n support

Che Seventh Amendment forbids appellate courts

m reexamining or redetermining facts found by the

itiantlc © Gulf Stevedores In V. Ellerman l Ines

369 U.S. 355; 82 S.Ct. 780 (1962). The Federal

rcuit’s de novo tact findings so far depart from the

cepted and usual course of judicial proceedings as to

Ti 1?

yr an exercise of this Court's power of supervision.

\

[he Federal Circuit did not |} consider all the evi-

5

nce, (2) in a light most favorable to the non-mover

lrawing reasonable inferences favorable to the non-

over; (4) without determining credibility of witnesses,

ind (5) without substituting its choice for that of the jury

between conflicting elements in the evidence” as it

icknowledged it was required to do at 860 F2d 417 (A-4

It the Federal Circuit had applied the law as stated in

its Opinion, attirmance would have followed indepen-

dently (1) from the substantial evidence before the jury

that polyacrylic was thought by Wilson to be superior to

Buna-N, i.e., polyacrylic was the best mode, and (2) from

Dana’s evidence negating concealment of the fluoride

treatment of Buna-N

10

A.

FLUORIDE TREATED BUNA-SN vs. POLYACRYLIC

Nowhere does the Federal Circuit acknowledge the

record facts regarding Wilson’s investigation of poly

acrylic. Consequently the Federal Circuit does not

address the jury’s implicit fact findings that polyacrylic

as recorded by Wilson both before and after the ’621

application was filed, was superior to Buna-N, i.e

polyacrylic was the best mode.

The inference the Federal Circuit drew from the

“Wilson report” of November 2, 1964 is contradicted by

the “Wilson report” of February 17 1965 — concluding

polyacrylic was a replacement for Buna-N that gave

improved performance. The latter report was before the

jury on this vigorously litigated issue, but ignored by

the Federal Circuit. Additionally, the Federal Circuit’s

inference regarding Buna-N trom “Dana’s first sales ot

the patented seals” after the tiling date of the ’62]

application, 860 F2d 420 (A-9), is contradicted by the

January 26, 1967 development summary authored by

Mr. Wilson, where he reports superior performance

results for polyacrylic compared to Buna-N.

The jury's implicit fact findings on polyacrylic versus

Buna-N are ignored by the Federal Circuit.

B.

CONCEALMENT

Inexplicably, the Federal Circuit states, but does not

apply, the law of concealment.

The jury’s implicit “concealment” fact findings are

not contradicted by the Federal Circuit — they stand.

of

CONCLUSION: THE FEDERAL CIRCUIT IMPROPERLY

REDETERMINED THE FACTS

CONCLUSION

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APPENDICES TO PETITION FOR CERTIORARI

APPENDIX A

OPINION

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A-6

adequacy of a best mode disclosure, ... only evidence

of ‘concealment’, whether accidental or intentional, is

considered.” Id. See also DeGeorge v. Bernier, 768 F2d

1318, 1324, 226 USPQ 758, 763 (Fed.Cir.1985); In re

Sherwood, 613 E2d 809, 816, 204 USPQ 537, 544 (CCPA

1980). “Compliance with the best mode requirement

exists when an inventor discloses his preferred embodi-

ment.” /n re Gay, 309 F2d at 772, 135 USPQ at 315.

[3] Concerning its best mode JNOV motion, IPC

referred to what has been called the “Wilson report” to

support its view that the best mode requirement had

not been complied with. This document, dated Nov-

ember 16, 1964 (approximately seven months before the

tiling date of the application), is a test report docu-

menting tests the stated objective of which was “|tlo

investigate and determine which design is m pst effec

tive in controlling leakage and what is the ett. ct of the

surtace treatment”. The test included comparing the

ettectiveness of five different seal designs,’ each design

being tested both with and without a 60-second

tluoride surface treatment. The test conclusions, signed

by the inventor, are as follows:

No design was acceptable (max. allowable

leakage 0.75 gm/hr, preterred less than 0.5

ym/hr} when using non-treated rubber. Two

designs (409-111F and 409-111H) were quite

acceptable at leakage control with fluoride sur

Itment. Surface treatment Is necessary}

rformance of seal. Engine test

iples to be ordered from 409-111F and 409

L11H designs with iivoride treatment. (Emphasis

tne seal

A-7

In addition, IPC pointed to a letter from the inven-

tor’s supervisor to Dana’s patent counsel indicating

that, upon seeing a draft of the application, Mr. Wilson

“raised the point that no reference was made to

fluoride treated rubber” in the disclosure. Although the

same letter indicated that the disclosure of the fluoride

treatment was omitted because Dana felt that it was

“not part of the case,” this was not further explained in

the letter and we have been directed to no evidence at

trial to show a basis for nondisclosure. Finally, the

evidence establishes that the seals first sold by Dana

were fluoride treated seals corresponding to the Wilson

design.

Dana argued that the best mode requirement was

satistied because the “fluoride treatment of Buna-N

rubber for seal applications was known to the public

years before the filing date of the '621 patent applica-

tion”. A technical article from Rubber Age magazine

and certain expert testimony was cited by Dana as

supporting the view that such a treatment was

common to the skilled artisan.

In the Memorandum Opinion, the district court con-

cluded that the best mode requirement could be satis-

tied by reference to what the prior art discloses.* By

reviewll g the jury’s verdict under this erroneous view

of the law, the district court erred as a matter of law.

The best mode requirement is not satisfied by reference

to the level of skill in the art, but entails a comparison

of the facts known to the inventor regarding the inven-

tion at the time the application was filed and the dis-

closure in the specification. Spectra-Physics, Inc. v.

The opinion stated that, in order to deny [PC’s motion, the

court ‘need only find evidence to support [Dana’s] position” that, as

the court phrased it, “the flouridation [sic] of nitril rubber is well

known to those of ordinary skill in the art.”

A-8

Coherent, Inc., 827 E2d at 1535, 3 USPQ2d at 1745.

Indeed, in expressing this requirement, 35 U.S.C. § 112

states explicitly that disclosure must be made of the

best mode “contemplated by the inventor.” Accordingly,

Dana’s argument that the best mode requirement may

be met solely by reference to what was known in the

prior art is incorrect.

Dana's citation of our opinion in Spectra-Physics, Inc.

v. Coherent, Inc., id., does not aid its cause. There we

distinguished the eaablement requirement, which does

consider the level of skill in the art, from the best

mode requirement. We stated:

The essence of the enablement requirement is

that a specification shall disclose an invention

in such a manner as will enable one skilled in

the art to make and utilize it. Separate and dis-

tinct from enablement is the best mode require-

ment, the essence of which requires the inventor

to disclose the best mode contemplated by him,

as of the time he executes the application, of

carrying out his invention.

+ + *

Enablement looks to placing the subject

matter of the claims generally in the possession

of the public. If, however, the applicant develops

specific instrumentalities or techniques which

are recognized at the time of filing as the best

way of carrying out the invention, then the best

mode requirement imposes an obligation to dis-

close that information to the public as well.

(Emphasis in original.)

Id. at 1532, 3 USPQ2d at 1742 (citing In re Gay, 309

F2d 769, 772, 50 CCPA 725, 135 USPQ 311, 315 (1962)).

A-9

[4] Therefore, the trial court’s denial of IPC’s JNOV

motion on best mode grounds cannot stand because it

was based upon an incorrect interpretation of the law.

Rather than remand this case for a proper application of

the law, however, we are convinced there are sufficient

established facts of record to exercise our discretion to

determine the merits of IPC’s JNOV motion. 5A

Moore’s Federal Practice © 50.12 (2d ed. 1983). See

Sjolund v. Musland, 847 F.2d 1573, 1576, 6 USPQ2d

2020, 2023 (Fed.Cir.1988); Verdegaal Bros., Inc. v. Union

Oil Co. of Cal., 814 F2d 628, 2 USPQ2d 1051

(Fed.Cir.1987). As noted, our review is based upon the

same standard that is applicable in the district court. In

order to grant IPC’s JNOV motion we must determine

as a matter of law that, upon the evidence presented at

trial, reasonable minds could not have found that the

best mode requirement was satisfied. Morelock v. NCR

Corp., 586 F.2d at 1104-1105.

/

The “Wilson report,” the in-house letter cited above,

and the testimony concerning Dana’s first sales of the

patented seals are the only pieces of evidence in the

record that are probative concerning what the inventor,

Mr. Wilson, thought constituted the best mode of his

invention. The two documents present uncontroverted

and corroborating evidence that, at the time the appli-

cation for the ‘621 patent was filed, Mr. Wilson believed

that the best way of carrying out his invention included

fluoride treating the surface of the valve seals. That this

was the best mode at the time is confirmed by the

fluoride-treated seals based on the Wilson design first

sold by Dana. Having no evidence to the contrary to

consider, reasonable minds could not have differed as to

whether Mr. Wilson believed that fluoride surface treat-

ment was part of the best mode of carrying out the

claimed invention.

A-10

Other surface treatments were set out in the specifi-

cation as useful “in some instances” ” as follows:

In some instances, the sliding sealing surfaces,

such as the internal wall, may be coated with a

lubricating material, such as molybdenum disul-

fide, graphite, or the like, to provide a more slip-

pery surface on the elastomeric material and

decrease friction between the seal and the valve

stem. The methods of applying such surface

coatings are well known and widely used for

elastomeric seals.

Nowhere in the specification, however, does the

inventor disclose that a fluoride treatment must or

even should be applied to the surface of the patented

seals as indicated in the “Wilson report”.

The established tacts clearly show that fluoride sur-

tace treatment was the best mode contemplated by the

inventor at the time the application for the ’621 patent

was filed, and that it was not disclosed in the specifica-

tion. Since the '621 disclosure did not satisfy the best

mode requirement of 35 U.S.C. § 112, first paragraph,

IPC’s JNOV motion on best mode grounds should have

been granted and the ’62! patent declared invalid.

REVERSED.

As previously shown, the Wilson report concluded that “|s{ur

face treatment is necessary to satistactory pertormance ot seal

B-]

APPENDIX B

MEMORANDUM OPINION AND ORDER

(United States District Court —

Eastern District of Michigan — Southern Division)

(Filed December 7 1987)

(DANA CORPORATION, Plaintiff, vs. IPC LIMITED

PARTNERSHIP, and INTERNATIONAL PACKINGS COR-

PORATION, Defendants — CASE NO. 86-CV-70231-DT:

HONORABLE LAWRENCE P. ZATKOFF) ‘

AT A SESSION of said Court, held in the United States

Courthouse, in the City of Detroit, State of Mich-

igan, on the 7th day of December, 1987

PRESENT: THE HONORABLE LAWRENCE P. ZATKOFE

UNITED STATES DISTRICT JUDGE.

On May 20, 1987, the jury returned a verdict in favor

ot the Plaintiff. Thereafter, the parties have filed several

post-trial motions. After allowing sufficient time for

both parties to present and brief their arguments, the

Court will now dispose of the motions individually.

[

CONTRIBUTORY INFRINGEMENT

Detendants have filed a motion for judgment not-

withstanding the verdict (hereinafter “J.N.OV.”) on the

issue of contributory infringement. Defendants argue

that Plaintiff failed to allege in its Complaint that

Defendants contributorily, rather than directly,

infringed on Plaintiff’s patent. Plaintiff responds that

Defendants were fully apprised of the contributory

B-2

infringement claim throughout the pendency of this

suit.

Plaintiff’s Complaint alleges that Defendants violated

35 U.S.C. § 271. This statute permits civil suits for both

direct and contributory infringement. Moreover, para-

graph 9 of Plaintiff’s Complaint asserts that Defendants

manufactured and supplied valve stem seals to a third

party in violation of Plaintiff’s patent.

Based on the above, the Court finds that Defendants

were fully apprised of the claim and thus no surprise

nor prejudice occurred. Further, the evidence offered

throughout the trial was directed toward contributory

infringement. Therefore, Defendants’ motion for

I.N.OV. on the issue of contributory infringement is

DENIED.

[.

EQUITABLE ESTOPPEL

During the trial, Defendants asserted the defense of

equitable estoppel. The jury was instructed as to this

defense. Based on the verdict, it is clear the jury

rejected this defense.

Defendants have now filed a motion tor J.N.OV. on

the affirmative defense of equitable estoppel. As stated

in Perkin-Elmer Corp. v. Computervision Corp., 732

F.2d 888 (Fed. Cir. 1984):

When a party moves for JNOV, the trial court

must consider all the evidence in a light most

tavorable to the non-mover, must draw reason

able interences tavorable to the non-mover, must

not determine credibility of witnesses, and must

substitute its choice for that of the jury

ntlicting elements in the evidence.

B-3

To support a claim of estoppel, Defendants must show

that they were misled by misrepresentations, affirma

tive acts of misconduct, or intentionally misleading

silence by the Plaintiff. MGA, Inc. v. Centri-Spray

Corp., | U.S.P.Q. 2d 1308 (E.D. Mich. 1986). Plaintiff

submitted evidence that Defendants were aware that

they were infringing on Plaintiff’s patent. Further

Plaintiff offered evidence that it informed Defendants

ot the infringement. “{W|here there is a long period of

silence after a threat of enforcement, but not a threat of

immediate enforcement, the patentee will not be

estopped trom bringing an enforcement action.” /d. at

1312; Watkins v. Northwestern Ohio Tractor Pullers

Ass'n, 630 F.2d 1155, 1160 (6th Cir. 1980). The Court

finds ample evidence to support the jury’s verdict and

thus DENIES Detendants’ motion tor J.N.OV. on the

issue of equitable estoppel

[I]

PATENT CLAIMS | AND 2

Claim 1 of Plaintiff's Complaint alleged the

Detendants directly, actively or contributorily infringed

on Plaintiff's patent. Claim 2 asserted allegations of

intringement. Detendants seek J].N.OV. on both claims

The issues of direct infringement and active in

ducement under Claim | were not presented to the

jury. Instead, in open court, Plaintiff withdrew the

claim after Defendants moved for a directed ver-

dict. The Court granted the withdrawal of the claim

Detendants now request the Court to grant a J.N.OV.

on Claim 1.

Defendants assert that the jury was instructed on

direct infringement. The Court read the following

instructions to the jury

B-4

Dana has the burden of proving infringement by

a preponderance of the evidence.

A patent claim may be directly infringed either

literally or by equivalence. Dana is asserting

literal infringement of claim 1 of the ‘621

patent. By literal infringement the Court means

the following: if claim 1 “reads on” the IPC

valve stem seal then there is literal infringe-

ment. A claim “reads on” a device when the

language of the claim, construed in light of the

specification and the prior art, describes the

accused device element for element. In other

words, literal infringement here requires that

IPC’s accused valve stem seals embody every

element of claim | of the Dana patent. If you

tind that IPC sold valve stem seals to Chevrolet

and Pontiac knowing that such seals were espe-

cially made or especially adapted tor use in an

infringement of Dana's patent, and you turther

tind that such seals are not staple articles or

commodities of commerce suitable for substan

tial nonintringing use, then IPC is liable as a

contributory infringer of the Dana patent.

As is clear trom these instructions, the jury was

intormed that there must be a literal infringement

betore there 1s a tinding of contributory intringement.

The jury, however, was not instructed to find that

Detendants directly infringed. Based on the record, the

Court finds that there was no issue presented to the

jury that Detendants directly infringed under Claim |

and thus Defendants’ motion for J.N.OV. on Claim | is

DENIED.

Further, Defendants’ motion tor J.N.OV. as to Claim

2 is also DENIED. Claim 2 was not presented to the

B-5

jurv. Thus, a motion for J.N.OV. is fruitless since no

judgment was ever entered as to Claim 2.

lV.

INEQUITABLE CONDUCT

Throughout this matter, Defendants have argued that

Plaintift’s actions before the United States Patent Oftice

prevented Plaintiff from asserting a claim for infringe-

ment. The issue of inequitable conduct was presented

to the Court through Defendants’ motion tor summary

iudgment and was tried by the jury. In both situations,

Detendants’ claim was denied

Detendants have now filed a motion tor J.N.OV. on

claim of inequitable conduct. Defendants argue that

the facts clearly and convincingly support their posi-

\ review of Defendants’ and Plaintiff's motion and

trial testimony support the position that reasonable

is could find that Plaintiff had properly informed

patent office of all tacts relating to its invention.

Detendants’ motion merely reassembles arguments

usly made; those arguments attack the credibility

{ certain testimony but do not assert any facts which

stifv reversing the verdict of the jury. There-

rementioned reasons, Defendants

im ot inequitable conduct

Detendants have motioned tor J.N.OV. as to its aftir-

mative defense of best mode requirement. Defendants

claimed throughout trial, and in this motion, that the

flouride treatment used by Plaintiff in its patent should

ive been made known to the patent examiner. Plain-

he current rate is 12 percent pel

. ae 1087

The Complaint was filed on January 17, 19

Ay 2. - : 1 . / -

Applving the daily interest from the date of the Com

ooo

4

=

¢

~~

~

x

>

—

bp A

s¢ until the date of Plaintiff's motion the Court

T) ] Lititil a

: — }

] al ‘ P +++ > ms tit / tO S 16 }t) a» | lI pre udas

= + ty =e

MOTION FOR Cf TS

} rant

titt s motioned tor payment O! costs. Pursuant

: ak ; } ] 1

trer sent to this Court, the parties stipulated that

} . ()()

cts are awarded, Plaintiff 1s entitled to $5,Q00.0I

; - . }

After a review of this matter, the 4 ourt finds that the

) a Oe — hy sx

ete are proper under ER.Civ.P. 54(b}, and Hered)

AWA | ys P| intitt $5,000.00 In actual costs

} ichl

IRDERED

s/ LAWREN P ZATKOF!

NITED STATES DISTRICT J! DG!

C-1l

APPENDIX C

OPINION ANNOUNCING JUDGMENT OF THE COURT

(United States Court of Appeals — Federal Circuit)

(Opinion filed and Judgment entered October 26, 1988)

(DANA CORPORATION, Plaintiff-Appellee, v. IPC LIMITED

PARTNERSHIP and International Packing|s| Corp.,

Defendants-Appellants — No. 88-1194)

The attached opinion announcing the judgment of

the court in your case was filed today. The judgment

was also entered pursuant to Rule 36.

Costs may be recoverable under Rule 39 or as the

court may have directed in the opinion. A party en-

titled to costs is provided with a form for that purpose

with this notice. Costs when taxed are payable to the

party awarded its costs. If costs are awarded to the

government, they should be paid to the Treasurer of the

United States. Payment should be made to counsel tor

the party awarded costs or, if the party is not rep-

resented by counsel, to the party pro se. Costs should

be paid promptly.

If the court also imposed monetary sanctions, they

are payable to the opposing party unless the court’s

opinion provides otherwise. Sanctions should be paid in

the same way as costs.

FRANCIS X. GINDHART

Clerk

D-1

APPENDIX D

ORDER

(United States Court of Appeals — Federal Circuit)

(Filed December 6, 1988)

(DANA CORPORATION, Plaintiff-Appellee, v. IPC LIMITED

PARTNERSHIP and INTERNATIONAL PACKINGS CORP,

Defendants-Appellants — No. 88-1194)

Before: ARCHER and MICHEL, Circuit Judges,

and SKELTON, Senior Circuit Judge.

A petition for rehearing having been filed in this case,

UPON CONSIDERATION THEREOF it 1s

ORDERED that the petition for rehearing be, and

same hereby is, denied.

The suggestion for rehearing in banc is under

consideration.

FOR THE COURT

/s/ Francis X. Gindhart

Clerk

December 6, 1988

cc: R. V. Lupo

Ernie L. Brooks

Note: This Order will not be published in a printed volume because

it does not add significantly to the body of law and 1s not of

widespread legal interest. It 1s a public record. It is not

citable as precedent

E-]

APPENDIX E

MEMORANDUM

(November 2, 1964)

PERFECT CIRCLE Corporation Correspondence

TO: John Shirk FROM: Robert R. Wilson, Sr.

SUBJECT: PATENT DETAILS —~ ALL RUBBER VALVE SEALS

DATE: 11-2-64 MEMO#¥ 26

Pursuant to the conversation between you, Bill Charles-

worth, and myself, attached are copies of drawings

ER 409-Bl111, 113, and 114 which describe the original

five designs of all-rubber seals. Bench testing revealed

that the designs 409-111F and 111H, which involve the

use of a thread finish with lead, to be superior in perfor-

mance to the other three designs. These drawings do

not describe surface treatments or rubber compounding

but they do reveal the use of the thread finish. All three

drawings date back to February 1963.

Buna N rubber is restricted to service temperatures

which do not exceed 250°F and, because of its composi-

tion, it is subject to deterioration from heat aging. It

can be teflon spray coated or the compound can be

modified by additional graphite, or it can be fluoride

surface treated. The latter treatment is to be preferred.

Polyacrylic rubber has a service temperature of about

325°F although we are experimenting with a compound

capable of withstanding 400°F. Its composition is

entirely different from Buna N and is much less suscep-

tible to heat aging deterioration. It likewise can be

teflon spray coated and can be compounded with addi-

tional graphite for lubrication and subsequently tumbled

eS ES ll

] . |

in moly disulfide. This latter is the preferred treatment

It cannot be tluoride surface treated

Our Road Testing to date has involved treated Buna N

jackets, polyacrylic with graphite addition in the com

pound, and polyacrylic with a teflon spray coating

Customer samples have been furnished in the first tw

designs

S Bob

Robert R. Wilson, S1

Supervising Project Engineer

Research Department

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pew?

APPENDIX |

TEST REPORI

F-2

Numerical average of the stabilized average oil con-

sumption for the seal types is:

Sets

2,2-3 10-1, 10-2, 10-3 17-1, 17-2, 17-3 18-1, 18-2, 18-3

b/hr. 025 lb/hr 035 |b/hr 025 lb/hr

2-1,

Ave. .03

2

3 |

CONCLUSIONS

1} The 9914-10 comp‘’d which was a higher tempera-

ture resistant replacement for the 502 comp’d appeared

to give improved performance, 2) the 9914-17 comp’‘d

which was a stiffer material than 9914-10 comp’‘d and

which was supposed to correct a customer problem

of insert popout at initial engine hot test appeared to

operate at the same level as the 502 comp’, 3) the all

rubber seal which was a cost reduced model for

O.E.M. appeared to give improved performance over

the conventional seal with the Buna jacket, 4) visual

examination of the all rubber seals revealed wear ot

the internal grooving (thought to be excessive for

short testing involved). Wear appeared to be concen-

trated in a certain portion of the periphery which

indicated non-concentric O.D. and bore 5) on the

basis of exhibiting the least wear of the internal

grooving, set 18-1 was selected for indurance |sic|

testing in test 1097, and 6) two new cylinder heads

and two used heads were measured for concentricity

of guide O.D. and bore with results of new heads

average .014", used heads average .016” difference in

guide wall thickness.

PROJECT ENGINEER s/ Robert R. Wilson, Sr

DATE: 2-17-65 Form #2757

G-|]

APPENDIX G

SUMMARY REPORT [Sheet Nos. 1-8}

lanuary 26, 1967

3-K-409-FO23 DATE: January 26, 1967

2-K-757-FO03

This report records the results of the second two

90,000-mile endurance engine tests of all-rubber

valve seals

All-rubber seals made from both a Buna N and a high

modulus Polyacrylic compound were operated in two

1965 Chevrolet 283 engines by Automotive Research

Associates, San Antonio, Texas, for the above

mileage. Original Equipment seals were operated

10,000 miles in both units for comparative purposes

Both sets of seals operated for 50,000 miles. Seals

produced trom the Polyacrylic material provided the

better oil control. Valve stem and guide wear was

normal

hPLC

ANA ‘No Df

The purpose of this report is to record the results of

the second two 50,000 mile engine tests of all-rubbet

valve seals which were run in cars operated by Auto-

motive Research Associates, an independent firm at

San Antonio, Texas

The second two tests were run in the same engine as

the tirst two tests, but new cylinder heads, new

valves, new rings and new pistons were used. Seals

. ’ ’

; " ’

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i ty,

+ ; ; » + :

value tor the Buna N seals was only very slightly

Installation of Original Equipment seals reduced

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ii } i ae i 4 ‘ , i PALL AN

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pF ve ‘ Tr sh > naorn AR \ vel if ‘Ty eee <

ik. ii ( i biyY N71 il ‘ ’ biti bik LAALAN

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nile erval. Inspection of the

t se seals y new seals did not improve the eco

my as expected. Figure 3 illustrates a typical condi

tion of some of the guides on which the original

machined O.D. did not clean up when machined with

the P.( tool because of an eccentric condition

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G-6

the #5 intake seal made from Buna N material for

both the new and used conditions. Figure 16 repre-

sents the #5 intake seal made from the high mod-

ulus Polyacrylic compound. Comparison of Figure 16

with 15 illustrates the difference between the more

plastic-like characteristic of Polyacrylic with the

true, rubber-like bounce and snap of Buna N. Figure

17 is a comparison between the high modulus Poly-

acrylic seals run in this test series and the lower

modulus Polyacrylic seals run in the first series.

Charts III and IV list the quantitative results of the

load detlection measurements for seals run in this

series. These results are not completely understood

especially when compared with the same measure-

ments in the first test series. A complete explanation

ot this type measurement and the results obtained

trom both of these test series is beyond the scope of

this report and should be reported separately.

Charts V and VI summarize the valve stem and guide

bore wear for both engines. Unlike the first series of

tests, higher guide wear was not accompanied by

lower stem wear and vice versa in this series. Chart

V reveals that maximum exhaust guide wear of .006”

occurred in two cylinder locations. Average wear was

OO28". Intake guide wear was one-fourth this

amount. This may not be excessive for 60,000 miles

but it is greater than the amount experienced in the

first series. Exhaust stem wear in both engines was

three times the amount which occurred in the first

series. Contact with Chevrolet Engineering people at

a valve seal slide presentation {late in 1966) revealed

that variations can occur in cylinder heads as a result

ot ditterences in process between machining plants.

They reported that even guide bore finish can be

different. With such unknown factors prevalent, it is

difficult to establish meaningful absolute values.

G-7

With reference to Charts I and II, it can be seen that

the change which occurred in the average valve stem

finish for all valves was almost 60 percent of the

original value whereas this same change in the first

series of tests was about 75 percent of the original

value. The magnitude of change was much less for

this second series and the final value was at a

slightly higher level.

The one exhaust valve failure in the #145 unit

during the second series at 36,625 miles is con-

sidered to be a normal failure and one to be expected

under such severe operating conditions of high speed

operation and heavy car weights. A similar failure

occurred in the same #145 unit in the first series at

41,150 miles.

TEST PROCEDURE

The same two ARA units (#145 and #148) with Chev-

rolet 283 engines were used for this second series as

were run in the first series. New cylinder heads and

new valves were used for both engines. The rubber

materials were reversed for the second series with PA.

in the #145 unit and Buna N in the #148 unit.

Valve guide bore, stem size, and stem surface finish

in the seal travel area were measured prior to and

subsequent to testing. The valve seats were “touched

up”, guides machined for P.C. seals, and seals and

valves installed in P.C. Road Test. The heads then

were taken to ARA for assembly on the test engines.

The engine blocks were surface-honed and

thoroughly cleaned prior to build up. New original

equipment pistons were used for this series.

The same ring combination was used in both

engines. It was a duplicate of the set used in the first

series of tests and was composed of the following:

G-8

Top cm. — 3% x %s Moly K Plain Compression

2nd cm. — 3% xX Ya Ferrox KTF200 compression

Oil — 3% X Vo E-518A 17-23#

All engine work except head build up was accom-

plished by ARA personnel under P.C. supervision.

Seal leakage was measured on the two-valve bench

test at standard conditions of 18 +” Hg vacuum,

230°F + oil temperature, and 1440 RPM cam speed.

Hysteresis measurement of the rubber j: ckets was

made on the Instron test machine owned by Kitco

Engineering and Manufacturing Co. at Bluffton,

Indiana.

The oil used was Texaco Advance Custom Havoline

10-W-30 and was changed at 5,000 mile intervals. The

oil filter was changed each 10,000 miles and the air

cleaner was serviced at this same mileage. Spark

plugs were changed each 15,000 miles. Fuel was

Texaco regular.

The cars were especially weighted to produce a gross

vehicle weight of between 4000 and 5200 pounds dis-

tributed evenly on the wheels for tire testing. During

approximately 40,000 miles, both cars were operated

on a prescribed open highway course and accumu-

lated at least 1,000 miles per day of 20 hours. The

balance of 20,000 miles accumulated at 850 miles per

day of 16 hours on an eight mile oval test track.

Mileage on the road course and the track was alter-

nated as follows: Unit #145 — road 9.800 miles, track

15,600, road 16,900, track 4,700, road 13,500; Unit

#148 — track 3,400 miles, road 7,800, track 16,200

and road 32,600. Both engines were run on a 300

mile break-in schedule cf one hour each at speeds of

G-9

25-35 mph, 35-45, and 45-55 and 1'/% hours each at

speeds of 55-65 mph and 65-75.

After 50,000 miles on both units, the all-rubber seals

were removed and replaced by original equipment

seals for these engines, which consisted of a rubber

“O” ring in a stem groove and a metal shield sur-

rounding the top end of the valve spring (see Figure

14, reports 757-F002, 409-F020). The cylinder heads

were not removed for this seal change, but rather air

was introduced into each cylinder to hold the valves

closed while the seals were removed. The engines

were operated an additional 10,000 miles under the

new seal condition prior to complete tear down.

For the hysteresis curve measurements, all seals in

the assembled state were deflected the same given

amount in an axial direction on an Instron test

machine in the rubber vendor’s laboratory. The hys-

teresis curves were obtained in order to have some

numerical measure of the aged condition of the rubber.

The intake valves were weighed before and after

cleaning. Cleaning was accomplished by physically

scraping the deposit from the valve head.

Testing started late in September 1965 and was com-

pleted in February of 1966.

DATA:

Figure | — Graph of engine oil economy vs. mileage

2 — Graph of engine oil economy vs. mileage

accumulated average

3 — Photo of typical guide machining

4 — Eccentric guide measurements right head,

ARA unit #148

5 — Eccentric guide measurements, left head,

ARA unit #148

ald

G-10

Figure 6 — Eccentric guide measurements, right head,

ARA unit #145

7 — Eccentric guide measurements, left head,

ARA unit #145

8 — Photo of four Polyacrylic seals sectioned to

exhibit stem contact

9 — Photo of four Buna N seals sectioned to

exhibit stem contact

10 — Photo of valves from left head ARA unit

145 Polyacrylic seals

11 — Photo of valves from right head ARA unit

145 Polyacrylic seals

12 — Photo of valves from left head ARA unit

148 Buna N seals

13 — Photo ot valves from right head ARA unit

148 Buna N seals

14 — Graph of intake valve deposit measure-

ments, both units

15 — Graph of load deflection characteristics

typical Buna N seal

16 — Graph of load deflection characteristics

typical Polyacrylic seal (high modulus!

17 ~ Graph of load deflection characteristics

comparison between low and high modulus

Polyacrylic material

Chart I — Bench test performance and measurements,

ARA unit #145

Il —- Bench test performance and measurements,

ARA unit #148

III - Rubber jacket hysteresis measurements,

Polyacrylic, ARA unit #145

IV — Rubber jacket hysteresissmeasurements,

Buna N, ARA unit #148

V — Valve guide and stem wear, ARA unit #145

VI — Valve guide and stem wear, ARA unit #148

s/ Robert R. Wilson, Sr.

Section Supervisor, Research Department

APPROVED By: /s/ WH. Charlesworth

Chief Research Engineer

H-]

APPENDIX H

MAGAZINE ARTICLE

|(REPRODUCED FROM KUBBER AGE, OCTOBER, 1961. PP 99- 101}

Slippery Rubber

— BY C.M. DOEDE -

President, Quantum, Inc. — Wallingford, Connecticut

Promising research now being carried on to develop

a high lubricity rubber for military uses also evinces

a bright future for numerous commercial applications

N most applications, the high coefficient of friction

of rubber is a useful property, as important, or

nearly as important, as rubber’s elasticity. In some

uses, however, elasticity is the primary requirement and

a high coefficient of friction is a negative factor.

An example is the O-ring used to create a fluid-tight

seal around a rotating shaft. Here the need is for a

material that will press tightly against the shaft and

that has the resilience to conform to the shaft’s shape,

even in the face of imperfections and deformations.

Friction has no useful function in an O-ring and only

leads to wear and deterioration of the seal.

In most cases, of course, the fluid to be retained is a

liquid that has lubricating properties, so that friction is

radically reduced, but any friction in a shaft seal is

detrimental to its service life. Also, there is always

danger of loss of the lubricant, with rapid wear, destruc-

tion of the seal, and impairment of the mechanism as

the likely consequence. In addition, in certain systems

it may be necessary to retain a gas, in which case

H-2 -

special provisions must be made for lubricating O-rings

or other packings. Ideally, all such seals should be able

to function for long periods of time without any

applied lubricants, both as insurance against damaging

wear and as a safeguard to the mechanism in the event

that the lubricant is lost. A rubber or elastomeric mate-

rial with a very low coefficient of friction is obviously

called for as an approach toward this ideal.

As soon as one envisions a rubber with a low co-

efficient of friction as a speculative possibility, he

immediately foresees other potential uses for such a

material. A “frictionless” rubber, for instance, should

be an excellent material for ball and plug valves. Possi-

bly, friction is the greatest cause of leaky household

taucets and all the attendant nuisance repairs. Cer-

tainly, a sizable market would immediately ezist if one

could come up with a near-frictionless fau et valve

washer and valve stem packing that had ample resili-

ence to insure closure. Also a “frictionless” — or to put

it more accurately, a high-lubricity — rubber should

have use as a light-duty bearing and should have advan-

tages over plastic bearings in applications where the

self-alignment and vibration-damping qualities made

possible by the elasticity of rubber are beneficial factors.

Then, merely by extension of thinking one can

foresee tonnage use for low-friction elastomers as

weather seals for windows and doors and as extruded or

molded strips for sliding window and panel closure

retention and sealing. Hermetically tight windows

The Research Problem

he goal should be retention of the base composition to assure elasticity,

tensile strength, and tear resistance, but development of lubricity

as an integral, molecular feature of the surface

—

H-3

would be possible if the window units slid over a strip

of highly elastic, yet near-frictionless rubber. The prin-

ciple would also make possible non-stick static seals,

such as hatch and bulkhead gaskets.

Many attempts have been made to develop a low-

friction rubber. Usually these have involved incor-

porating some lubricating material into the base

composition or the coating of the elastomer with a

lubricant. Adding graphite, molybdenum disulfide,

Teflon, or oils to the composition leads to dis-

appointing results, mainly because sufficient additive to

sustain the lubrication function causes gross loss of

physical properties — reducing, for instance, tear and

tensile strengths and elasticity. Similarly, superficial

coatings of lubricants, such as Teflon dispersions and

graphite, are quickly lost, and thus give only temporary

reduction in the friction coefficient. Elastomers with

superticial coatings also can have only very limited use,

since they are messy to handle and unacceptable wher-

ever soiling is a consideration.

As a result of its work with various elastomers and

plastics, Quantum, Inc., became cognizant of the need

tor a low-friction, high-elasticity material and con-

ceived the idea of creating a truly “slippery” rubber by

a chemical surface treatment. It seemed obvious to us

that the goal should be retention of the base composi-

tion to assure elasticity, tensile strength, and tear resis-

tance, but development of lubricity as an integral,

molecular feature of the surface. A way to accomplish

this, we reasoned, would be to pertluorinate the surface

structure, so as to achieve a surface composition

similar to Teflon’s.

Causes of Frictional Behavior

Betore describing the chemical approach used to suc-

cessfully develop slippery rubber, some discussion of

H-4

the basic physical reasons for frictional behavior in

elastomers and plastics may be in order. Aside from the

effect of mechanical roug'ness, it would seem that the

frictional behavior of these materials is largely due to

the interaction of electrical forces between the polymer

and the surface it contacts. Hydrocarbon elastomers as

a class have high coefficients of frictions. Typically, the

dipole forces associated with CH groups in the polymer

molecule are high — as compared with CF groups —

with a resultant high level of attraction between such a

polymer and a contacting surface. On the other hand,

perfluorinated materials exhibit lower coefficients of

friction, because interatomic forces are internally

balanced (low dipole moment). In demonstration of

this, W.A. Zisman, of the Naval Research Laboratory,

has achieved a correlation between the frictional co-

efficients of materials and their surface free energies.

Pertluorinated materials were found to have low surtace

tree energies and also exhibited low coefficients of

friction.

Practical Applications

In practical applications, one must also consider the

tact that sliding surtaces are far from smooth when

considered from the standpoint of their microstructure.

In the absence of film lubricants, appreciable force may

be required to slide asperity over contacting asperity.

This is also a factor in the coefficient of friction. Poly-

tetrafluoroethylene functions as a low-friction material,

not only because of its low surface free energy, but also

because fragments of the polymer are easily torn away

by micro-projections of the bearing surface, thus filling

the “valleys” of the bearing surface with the polymer.

Once the initial wearing away is complete, film separa-

tion of the contacting surtace has been accomplished.

Since the sliding action now takes place between two

See

H-5

perfluorinated surfaces, the surface free energy is mini-

mized and optimum reduction in friction is realized.

The effects of fluorine in the structure of a polymer

in lowering frictional properties — or more aptly, of

hydrogen in increasing friction — is seen in the com-

parison of the coefficients of friction of rubber, Viton

“A”, and Teflon. Unlubricated natural rubber com-

pounds have coefficients of friction which range from

0.8 to trére than 1.0 when measured against a smooth

steel surface. Viton “A”, a partially fluorinated polymer

with one CH, group in the unit structure, has a coeffi-

cient of 0.50, and Teflon, a completely fluorinated

polymer, a coefficient of 0.30. The presence of the two

hydrogen atoms in the Viton “A” molecular unit is

possibly the most significant factor contributing to the

increase in the coefficient of friction over Teflon.

From these theoretical considerations, it can be seen

that the complete fluorination of the surface of rubber

should give that surface a reduced coefficient of fric-

tion. The surface so produced would be chemically

bonded and should have functional characteristics

similar to those of Teflon. The approach envisioned by

Quantum involved the following steps:

1) Graft polymerization of chemically active

monomers or oligmers to the surface of an

elastomer.

(2) Subsequent conversion of the graft polymer to

a fluorinated form.

The validity of this approach was demonstrated by

the grafting of methyl acrylate on the surface of natural

rubber, subsequent hydrolysis to the corresponding

acid form, and fluorination of the acid with sulfur

tetrafluoride. The use of sulfur tetrafluoride as the

fluorinating agent permits controlled fluorination of

H-6

certain active chemical groups, such as COOH, and, in

this instance, results in a trifluorinated terminal car

bon. Ultraviolet radiation was used to activate the

rubber surface during grafting, and the fluorination

’

reaction was carried Out in a pressure reactor at steam

tempt ratures

Samples ot rubber sheet so treated exhibited

’ ‘ r

juction in frictional Characteristics. Comparati'

lj

ts indicated that the coetticient of friction under

SLIPPERY

RUBBER

ee Sa

ORDINARY

RUBBER

FIG. | Illustrated is the difference in the contact angl

t wetting by water. The contact angle for plain rubber

was 78°, while the contact angle tor slippery rubber was

1° (contact angle tor Tetlon is 104 The contact angl

ne

ind coetticient of triction are related. since both ar

tunctions of the surtace tree energy of the rubber

at \ ne

; ‘ va es ,

} } ; rs DI xX} ‘

mri . ; . % ;

that r the contro! Sa4Tipies, and that under

_ : } j } : sal ot ]

ynamic load the frictional coefficient of “slippery

| | ,

. ' a . }, ' y

r was even iess. Measurement of the contact angle

j 1 ] Ima ] . . , }

iter iT piets nm riu if lated » lrta » i ; Intre ited

,

Ss of the same elast iter Figure

: Tne ry i A £ ¥ . ,

i‘ ‘

r |

r , + hh?

v2 Ta ] on ~

reated surtace

let ' iferatiir :

i biti LitClad wit >

, tact angle is tive of low surfas

“4 facto! is we ted eCariier, that Cal De ¢ rre

5

Wit w coetticients of triction Figure

Me

2 — The coefficient of friction is less for slippery

r as evidenced by the smaller deflection of the

rhe spring pulling the weight over the slippery

sINOSt THe Same iength as when unstressed

H-8

It will be noted that these treated samples of rubber

have a contact angle almost identical with that of Tef-

lon. Anyone who has ever touched a piece of Teflon is

acquainted with its high lubricity — its oily feel. Quite

obviously, rubber with a Teflon-like surface, would

seem to approach the ideal as a material for O-rings

and other precision mechanism seals.

The U.S. Navy Bureau of Ships became interested in

slippery rubber and now has a study under way at

Quantum aimed at the development and production of

“permanently lubricated elastomeric materials” which

meet Bureau of Ships requirements for non-lubricated

dynamic seal applications.

It is believed that in this research program, and in

others that Quantum will undertake on diverse com-

mercial product applications, even greater lubricity can

be developed in elastomeric surfaces. Several tech-

niques are being considered whereby the surface can be

made “more fluorinated” than by the original process.

In the new procedures, attempts will be made to pro-

duce surface conversion coatings containing a prepon-

derance of __CF,__CF, chain terminations, inasmuch as

there is evidence that the CF, group will turther

enhance lubricity.

The Potential

Much work remains to be done before the many com-

mercial advantages of slippery rubber can be fully

realized. Inasmuch as thickness of the coating, resist

ance to fluids, physical properties, wearability, changes

in dimension, cost of treatment, and other factors are

influencing considerations, it is believed that slippery

rubber will have to be “tailored” for most individual

applications. The treatment for an aircraft engine O-

ring would certainly be different from that used to

r

sl

ry ’

i

rire

i

’

|

f

y

"

;

O such materials aS neoprene, Dutyis

Sav, valve stem packings for household

or extrusions for weather-stripping pur

re is much work to be done in adapting

itrile type rubbers. Cost data will have

i + ; / 7 }

ndividual applications, and thes

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rming¢ Cir TeasiDility

‘ vat . } ' i

is im int Of researcn to De done ma

ulrements tor individual applications, no

obstacles, either technical or economic

would prevent widespread use. Even

mustry is tairly sophisticated, the proc

ily amenable to commercial production

likely that the cost of treatment would

i +} 7 } ‘ , ’ }

red through the value added to the pro