# Petition for Writ of Certiorari — Dana Corp. v. IPC Ltd. Partnership > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385002_1103%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1989 - **Citation:** 490 U.S. 1067 ## Text lamas ™? . 88-1568 4)» « ’ No. — 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 ‘ , : = . | : : . I { oh, Dorf, ; rr ror vr? , TY YT f RARAA | ane NE Nil Vaive .,suUIGC rverTry? > 7 ° > ~* AA ry } ae v I ecle " — 4 ’ , . \ ate 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 ) ] y Spt pra i . "" ie v\ S ( t App t } ~~ OPINIONS BELOW t the United States Court ot Appeals I S p it 860 | } \ l } e | ted States D \ I Rae r) iM C'e . R | 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 \ y¥ ’ TYrARA A *® < ™ \ re ST ; A A ‘ ; ’ * APPENDICES TO PETITION FOR CERTIORARI APPENDIX A OPINION 4 AT \ ™ f-App MITED S al iC WOrp \T \ ~~ r s>I R&R - C t rT ry P » i Li« \ ] tr t of the United » lL, \ ST LJistrict | Mic! , 1 “ ; S| { i W 1ed Vy ( ro! iD Le ind W la es Wana , “ey S Se issued to A \ Ss assi 1 to Dana. Dana 7 ? . ry ‘ ‘ , ‘ j bile manufacturers, including General Motors Cor poration |{GM), tor use in the manufacture of aut , my y nobile engines ( a | t the | a | [ itent recite rT) part she ’ i ‘+ . ernal combustion engine having a valve ; | . ls ‘ . 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[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 ~~. —— + co ~ + rte a. A uv sve ; yo; a8 1f ve Bava. mona a | 20 | awe | ra ” . eae ue er pe T “ws a Tr IA \WA pave - ——- ——~ veTION! NMOL Se OWN dYOD FIONID 1934N3d | | g 7 t f # 4 A ‘ Aad ‘ 4 al 4 .' * oi - ~ Ovi s23eS PSien? * 30 F ~O'Se 28 ~ ve 4 + SéOISN Oe wn) } - . —_ 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 . ’ ’ ; " ’ ’ ; , . ’ i ty, + ; ; » + : value tor the Buna N seals was only very slightly Installation of Original Equipment seals reduced : i ; i ‘ i if i ; ‘ b ~ . ’ Pc ner ‘7 . micrte ‘ ‘ [ iif TV TI¢ ii } i ae i 4 ‘ , i PALL AN 4 | ) 7 ; rr ry ] ? ; : Fr sar , " +E iVdaisS riguy4re d is a record OI Lit ICCUTIIUIALCU pF ve ‘ Tr sh > naorn AR \ vel if ‘Ty eee < ik. ii ( i biyY N71 il ‘ ’ biti bik LAALAN ' ¥ rf ’ ‘fs | | rs > yr ry rTne nrTecyrrr) it] rT | ; sc | s sil ’ ii si i i ii eee: i ii 4 TT) rr | ak 4 A +e 7 ‘re , rina me ron +f py i by ARA. Afte esti gan Wa a | +? ,* mn ‘ nmfino + + Bas a+ TY il i i ; ; LEAD? AS ( i. il biik, EXPE All if Pik idl . : ,* 1, * +h " hoe , mort " : Wad naG i ( i LAaTIRCS ( VCCI . ’ es ha , ~ , ry P ney ’ { ) | : | i } il is il ‘ - -ag ’ + srit ’ aet ti leer ‘ x ; ; ’ i eh | i ’ . ,? S ry ‘ P thy engines ’ ‘ . : ii sikiit : . ‘ ; ; + Ff {) {yi TY) ‘ \ . . | ihiil ; ‘ » ‘ . ; ; ry nr hay Ss» LMI ’ ‘ " . ‘ ‘ 4 nter ,ic < * ; -% . , ’ ' * feta < + rr ches ; . . \ r ’ ’ ry , ’ ‘ ? TY? \ Tcyr ryi?f ‘ i iki ¥ i i Aili r ‘ oy ~ ‘ | ’ < rneor + ' rh ry ‘1 # iG A iN Ss perated Decame ques 7 , ; " ; P a >? ; ry} “ rt ’ > rn > . of 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 = . by nal } no — . i VCCI tne VU ) : ‘ [) The ‘ mdition was observed ’ " ; : " yr) . ’ Kio y eh ‘ j : ; i\ Yi | ‘ " ; yeh ¢ nr hye + + 4 ih , rr crirte y ‘ t i ‘ i ii i i.e: ‘ pale " , . rr Noort Te This rs f | : ’ il : 3)! i Ty eis . =. , y ; ‘c rr ' + €h | \ : ' ’ , ; ’ : j i ‘ ; ' ‘ ‘ " ‘ ‘ ; " “a ‘ ‘ ‘ , ‘ ‘ y ¢h ‘ 1) = » | I I rO! \ iis \ I i ‘ | ~ t rc)? \ _ } ene + css ‘ . ; y ; y ‘ , *¢ 12 . A, 9 eAF \ : } \ , , ’ . + ' ries \ . ? | > , ’ , . | , ’ -_ . > ’ ‘ ’ . these ‘ , : ‘ —. , rr? y ‘ ‘ | " ; ‘ y + ¢h+ eta | . } \ VN \ , _ ‘ e+ ’ ‘ . ; , . ; " ; » . ; y ‘ ? ‘ ‘ ’ ‘ ; " ‘ | . ‘ | \ ’ , V I | DU . . ‘ | ‘ ‘ ‘ ‘ ‘ ’ + ._ vv " y . ’ ’ r ry i ( | ; iy ‘ " ' ‘ _ ‘ . ‘ ‘ ; y . ++ } " ue ’ | ’ : ‘ ‘ y ; ' cere ; } i —— " ry? " " + , ' t tiv es ‘ ‘ ‘ = ' * ; . = _ i ; XY } ‘ i\ ibis . ‘ " ‘ ‘ . me ’ : wae , ‘ -_ ? \ | rat | } ti ri we I i > . : ‘ " , ‘ 1) *} ‘ ior 7. i ISSUI i jul CDOSITS ' , ‘ ‘ : " ‘ ; P } Vil . i i « t * = ; , ‘ " . : iio ; ’ ; , , , . , A) 1d riect ! isuremen were mad ra ; y : ; treor ¢ ‘ , The net ’ r) cn 7 : . ' ’ i; il iil i Prat ? , ; ’ ’ ' : ‘1 ' ’ rves }< | . ; . : } rs " ry : “48 f I 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 +} } | 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 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385002_1103%3A1. Public record. Not legal advice.