Petition — Lowrey v. Morris

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80-546 ocT 6 1980

MICHAEL RODAK, JR., CLERK

IN THE

Supreme Court of the United States

Octoser Term, 1980

STUDIENGESELLSCHAFT Kouie M.B.H., as Trustee

for the Max-Planck-Institut fiir Kohlenforschung,

Petitioner,

—against—

EastMaNn Kopak Company,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

ARNOLD SPRUNG

NatTHANIEL D. KRAMER

Sprunc Freire Horn Lyncu & Kramer

600 Third Avenue

New York, New York 10016

Attorneys for Petitioner

Questions Presented for Review

35 U.S.C. §101 entitles an inventor to a patent on a

new composition of matter. 35 U.S.C. §271(a) provides

that «ny unauthorized making, using or selling of the

patented invention constitutes infringement of the patent.

The questions presented in this petition are:

A. Whether the act of making the patented composition,

independent of a subsequent use thereof, constitutes

an act of infringement unde 35 U.S.C. §271(a).

B. Whether the act of using the patented composition

in a manner not exemplified in the patent constitutes

an act of infringement under 35 U.S.C. §271(a).

TABLE OF CONTENTS

PAGE

Questions Presented for Review .................:..c:cceceeeeceseeees i

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Table of Cases and Authorities .22.0...........:.ccccccceeeeseseeseeees iil

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REASONS FOR GRANTING THE WRIT .............2..2.-cesceceeeeceneeeeeees 5

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A. The Making of a Patented Composition of Mat-

ter, Without More, Constitutes Infringement

Under 35 U.S.C. §271 (a) ..2.......cccccccseccesceeseeseeeeeee 6

B. Any Use of a Patented Composition of Matter

Constitutes Infringement of the Patent Under

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TABLE OF AUTHORITIES

Cases: PAGE

Ansul Co, v. Uniroyal, Inc., 448 F.2d 872 (2d Cir.1971) 9

Bullock Electric &d Mfg. Co. v. Westinghouse Electric

& Mfg. Co., 129 Fed. 105 (6th Cir. 1904) 00... 7

Caterpillar Tractor Co. v. International Harvester Co.,

DED ee Fe Ree See ROD svcencstcccrncaschocensaibrcitncncccineces 7

King-Seeley Thermos Co. v. Refrigerated Dispensers,

Inc., 354 F.2d 533 (10th Cir. 1965) 00.00.20... eeccseseeees 9

King-Seeley Thermos Co. v. Tastee Freez Industries,

Inc., 857 F.2d 875 (7th Cir. 1966) ...............ccccsccccccsecses 9

Kuehl, Application of, 475 F.2d 658 (C.C.P.A, 1973) .... 4

Neff Instrument Corp. v. Cohu Electronics, Inc., 269

SR TD CR GR Re catia Rented natescecdeesicineacdstnatans 6-7

Radio Corp. v. Radio Engineering Laboratories, Inc.,

SD SFB ECE racial tis ssccnlilestn ete cincses 8

Reinharts, Inc. v. Caterpillar Tractor Co., 85 F.2d 628

PIs MIPOID das tiaerligdeenitcicdidlanstosepeannseeneiealie ee a 9

Technicon Instrument Corp. vy. Coleman Instruments,

Inc., 255 F. Supp. 630 (N.D. Ill. 1966) aff'd, 385 F.2d

Me A 5 RR EK nn eet. dr SET IE Ie 7

Thuau, Application of, 135 F.2d 344 (C.C.P.A. 1943) ... 9

United Shoe Machinery Corp. v. O’Donnell Rubber

Products Co., 84 F.2d 383 (6th Cir. 1936) ..000.00000020.... 8

Ziegler v. Phillips Petroleum Co., 483 F.2d 858 (5th

et BI» satadistitsirasacnretinnrsedioeaxa EA tec dS SE 3, 4

Other Authorities:

eS RRR NE ON a aC RIOR i ONS 7,9

IN THE

Supreme Court of the United States

Octoser TERM, 1980

No. f Ree

STUDIENGESELLSCHAFT KoHLE M.B.H., as Trustee

for the Max-Planck-Institut fiir Kohlenforschung,

Petitioner,

—against—

Eastman Kopak Company,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Studiengesellschaft Kohle m.b.H., as Trustee for the

Max-Planck-Institut fiir Kohlenforschung, petitions for

a writ of certiorari to review the judgment of the United

States Court of Appeals for the Fifth Circuit in this case.

Opinions Below

The Opinion of the Court of Appeals is reported at 616

F.26 1315 (5th Cir. 1980). The Opinion of the District

Court is reported at 450 F. Supp. 1211 (E.D. Tex. 1977).

They appear in the Appendix at pages la and 56a.

Jurisdiction

The Decision of the Court of Appeals sought to be re-

viewed was rendered on May 15, 1980. A timely petition

for rehearing was denied on July 8, 1980. The Court of

Appeals filed its Judgment on July 25, 1980. This petition

was filed within ninety days of both the denial of rehear-

ing and the Judgment of the Court of Appeals. The juris-

diction of this Court is invoked under 28 U.S.C. §1254(1).

Statutes Involved

The relevant statutory provisions are 35 U.S.C. §§101

and 271(a), which read as follows:

“$101. Inventions patentable

“Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of

matter, or any new and useful improvement thereof,

may obtain a patent therefor, subject to the condi-

tions and requirements of this title.”

oe . *

“§271. Infringement of patent

“(a) Except as otherwise provided in this title,

whoever without authority makes, uses or sells any

patented invention, within the United States during

the term of the patent therefor, infringes the patent.”

Statement of the Case

This is a civil action for infringement of two patents,

3,257,332 (the ’332 patent) and 3,826,792 (the ’792 patent)

brought by the patent owner and petitioner, Studiengesell-

schaft Kohle m.b.H., as Trustee for the Max-Planck-Insti-

tut fiir Kohlenforschung, against the Eastman Kodak Com-

pany. Federal jurisdiction is based on 28 U.S.C. §§1331

and 1338.

The ’332 patent claims the Nobel Prize winning catalysts

of Professor Karl Ziegler and his co-workers, which are

used to produce plastics and rubbers. The ’792 patent

claims the process of using these catalysts to polymerize

certain petrochemical gases (olefins) into plastics and rub-

bers. This petition concerns only the ’332 patent.

In the early Fifties, Professor Ziegler and his co-workers

at the Max-Planck-Institut in Germany discovered that by

combining an organoaluminum compound, such as alum-

inum triethyl, and a heavy metal salt, such as a titanium

chloride, new catalysts (compositions of matter) would be

formed which showed the remarkable characteristic of be-

ing able to easily polymerize ethylene (a petrochemical

gas) into a strong, useful plastic, polyethylene.’ Professor

Ziegler, and others who learned of his catalysts, also found

these catalysts to be effective for polymerizing other petro-

chemical gases, such as propylene, the next higher homolog

of ethylene, into useful plastics and rubbers.

Development of these catalysts, which became universally

known as “Ziegler catalysts,” was recognized as a great

scientific achievement and advance, opening a whole new

field of chemistry, and earned for Professor Ziegler many

high scientific awards in addition to the coveted Nobel

Prize.

The Ziegler catalysts also achieved unprecedented com-

mercial success, being used to produce billions upon bil-

lions of pounds of useful plastics and rubbers. The royalty-

paying licensees under the Ziegler catalyst patents in the

1 The basic chemistry and terminology involved are deseribed in

Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 861-66 (5th Cir.

1973) and the decision of the court below at 4a-7a.

United States have included numerous well-known petro-

chemical giants.

The ’332 patent is based on Ziegler’s earliest United

States and foreign applications covering his catalysts and

giving working examples of their use for the polymeriza-

tion of ethylene. A typical claim of the ’332 patent reads

as follows:

“Polymerization catalyst, comprising the product formed

by mixing an effective amount of aluminum triethyl

with a titanium chloride.” *

Kodak is accused of infringing the ’332 patent by making

and using a Ziegler catalyst as covered by this patent. In

its plant at Longview, Texas, after making the catalyst,

Kodak also uses it to polymerize propylene into poly-

propylene.*

In conformance with 35 U.S.C. §112, the specification of the

332 patent teaches how to both make and use the claimed catalyst.

The claims, however, are composition of matter claims. Corre-

sponding process claims, based on the same or expanded teaching,

but directed solely to the use of the particular catalyst, are also

possible under the patent law. 35 U.S.C. §101, see generally

Application of Kuehl, 475 F.2d 658, 666 (C.C.P.A. 1973). After

the decision of the court in Ziegler v. Phillips Petroleum Co.,

supra, a patent incorporating such process claims issued to Ziegler

—the ’792 patent.

8In the earlier Ziegler v. Phillips Petroleum Co. case, the Fifth

Circuit characterized the catalyst as having both composition of

matter and process characteristics. This is explainable only on the

ground that, in accordance with the particular facts of that case,

the catalyst was formed during the reaction, #.e., there was no

separate and distinct making and using of the same, and the Court

found:

“There was no convincing proof that the chemical components

disclosed in the 332 patent ever combined together in the

I Sa to produce that composition of matter.” 483

2d at ‘

In contrast thereto, in the instant case, Kodak separately makes

its catalyst as a distinct composition of matter prior to its sep-

arate use as a polymerization catalyst.

Though Kodak makes its aveused catalyst by combining

aluminum triethyl and titanium chloride, and though the

catalyst is clearly used by Kodak at its plant, neverthe-

less, the court below declined to find infringement, holding

the ’332 patent was only infringed by the use of the Ziegler

catalysts, and only then when the nse is for the poly-

merization of ethylene.‘

REASONS FOR GRANTING THE WRIT

Introduction

The questions presented are of major importance, in-

volving far-reaching considerations of statutory construc-

tion. They require a decision of this Court in order to

avoid territorial discrimination under the patent laws

caused by inconsistent holdings as between the Fifth and

other Federal Circuits.

While a substantial portion of the petrochemical indus-

try is located in the states of the Fifth Circuit, a sizable

portion of that industry and other major chemical indus-

tries are located outside the Circuit. A fundamentally dif-

ferent view of composition of matter patents, dictating sub-

‘Kodak uses a specific form of titanium chloride and adds a

third component, lithium butyl, to optimize the yield of the type

of polypropylene it commercially desires, but the activity and use-

fulness of the catalyst is completely dependent upon the presence

of the aluminum triethyl and titanium chloride. If either of these

essential components is removed from Kodak’s catalyst, there is

no catalyst, no polymerization and no polypropylene would be

formed in Kodak’s plant.

Kodak has also suggested that it does not necessarily add the

aluminum triethyl directly to the titanium chloride in preparing

its catalyst. Its own tests, however, show that regardless of the

order of mixing its catalyst components, the resulting catalyst

is substantially identical with “little variation in catalyst activity

or polymer properties.” Obviously, the order of mixing is irrele-

vant.

stantially narrower readings of patent claims within the

circuit, not only discriminates in favor of those companies

which have previously located their plants in the Fifth

Circuit, but could well lead to future reallocation of enor-

mous amounts of investment capital to plants within the

confines of that Circuit at the expense of investment in

facilities located in the circuits adhering to the traditional

view of the scope of composition of matter patents.

Moreover, the decision below places great uncertainty

on the construction which should be given to the many tens

of thousands of composition of matter patents presently

extant.’ Such uncertainty will undoubtedly provuke need-

less, expensive patent litigation.

In addition, it may also cause more inventors to main-

tain their inventions as trade secrets rather than disclose

them to the Patent and Trademark Office in exchange for

potentially worthless patents. Such secrecy would be par-

ticularly unfortunate in the critical area of petrochemical

technology involved herein.

A. The Making of a Patented Composition of Matter, Without

More, Constitutes Infringement Under 35 U.S.C. §271(a)

It is hornbook law and the law outside the Fifth Circuit

that any one of the three acts set forth in 35 U.S.C. §271(a),

t.e., the making, using or selling of the patented invention,

constitutes an infringement of the patent. Put differently,

Section 271(a) has been uniformly interpreted in the dis-

junctive, so that each making of the patented invention in

the United States constitutes a distinct act of infringe-

men, regardless of the use or sale here. Neff Instrument

5 It has been conservatively estimated, based on a review of the

Official Gazette of the Patent Office at the time of the issuance of

the initial Ziegler catalyst patent that there are approximately

75,000 composition of matter patents extant at any given time.

Corp. v. Cohu Electronics, Inc., 269 F.2d 668, 673 (9th

Cir. 1959):

“By the grant of a valid patent, the owner obtains an

exclusive right, not only to prevent use by another of

his invention, but likewise the making or the selling

of the article, in the disjunctive.

The mere manufacture of a patented article, without

sale, is sufficient to create an infringement.”

Accord, Caterpillar Tractor Co, v. International Harvester

Co., 106 F.2d 769 (9th Cir. 1939); Bullock Electric & Mfg.

Co. v. Westinghouse Electric d Mfg. Co., 129 Fed. 105, 109

(6th Cir. 1904); Technicon Instruments Corp. v. Coleman

Instruments, Inc., 255 F. Supp. 630, 641-42 (N.D. Tl. 1966),

aff’d, 385 F.2d 391 (7th Cir. 1967); 4 D. Chisum on Patents

§16.02[3] (1980) (Section 271(a) “codifies the long-stand-

ing rule that the making of a patented product without

use or sale will constitute infringement.”)

Under the decision of the Court of Appeals for the Fifth

Circuit complained of herein, however, the plain statutory

language of 35 U.S.C. §271(a) has been disregarded and

the provision read, instead, as being limited to cover only

the use of the claimed invention. Indeed, as discussed in

Section B, infra, it is being further limited to cover only

use in a manner expressly exemplified by the patentee, here

the use of the pioneering catalyst to polymerize a single

reactant, ethylene:

“we hold that the District Court properly found the ’332

patent limited to the polymerization of ethylene.”

38a°

* This was the only ground upon which the court below held the

332 patent non-infringed. Ibid.

Under this holding of the Fifth Cireuit, the independent

acts of making and selling a composition of matter, each

a separate act of infringement under the patent statute

and the prevailing law outside the Fifth Circuit, would

only be relevant if the composition were also put to use,

in the United States, in a manner specifically exemplified

in the patent, creating the territorial discrimination and

uncertainty discussed above. (Supra at 5-6)

B. Any Use of a Patented Composition of Matter Constitutes

Infringement of the Patent Under 35 U.S.C. §271(a)

The holding of the Fifth Circuit is also in conflict with

holdings of this Court and other circuits with respect to

the statutory interpretation of the term “uses” in 35 U.S.C.

§271(a).

In this Court and the courts outside the Fifth Circuit,

the term “uses” in 35 U.S.C. §271(a) has been interpreted

as encompassing any use of a patented article or com-

position of matter. Indeed, it has been considered bedrock

law that a claim to an article or composition covers all

uses to which the same may be put.

As this Court noted in Radio Corp. v. Radio Engineering

Laboratories, Inc., 293 U.S. 1, 14 (1934): the patented

apparatus there involved

“had potencies and values more important than the

uses that were immediately apparent, potencies and

values at least dimly apprehended, and never discarded

or forgotten down to the time of their complete

fruition. The benefit of all alike belonged to the in-

ventor. 293 U.S. at 14. (emphasis added)

Similarly, the Sixth Circuit ruled in United Shoe Ma-

chinery Corp. v. O’Donnell Rubber Products Co., 84 F.2d

383, 385 (6th Cir. 1936) that

“the law is clear that an inventor is entitled to the

benefit of all the uses to which his invention may be

put whether understood by him or not.”

To the same effect is Ansul Co. v. Uniroyal, Inc., 448

F.2d 872, 878 (2d Cir. 1971):

“an inventor who discovers a basic new use is not re-

quired to specifically disclose, or even be aware of,

all the uses of his invention.”

Decisions from other circuits are in accord. Reinharts,

Inc. v. Caterpillar Tractor Co., 85 F.2d 628 (9th Cir. 1936) ;

King-Seeley Thermos Co. v. Tastee Freez Industries, Inc.,

357 F.2d 875, 880 (7th Cir. 1966); King-Seeley Thermos

Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533, 537

(10th Cir. 1965); see 4 D. Chisum on Patents §16.02[4]

at 17 (1980)

“one does not escape infringement by using a patented

invention for a purpose not contemplated or disclosed

by the patentee.” *

Uniquely, however, the Fifth Circuit has narrowly inter-

preted the word “uses” in 35 U.S.C. §271(a) to limit the

same to the use specifically exemplified in the disclosure

of the patent.

The Fifth Circuit stands alone in this narrow and awk-

ward reading of the patent law, leading to the territorial

7 The “all uses” doctrine also operates to limit the proliferation

of patents. See Applicotion of Thuau, 135 F.2d 344, 347 (C.C.

P.A. 1943), which denied a composition of matter patent in view

of an earlier patent teaching the same composition of matter,

though for other uses:

“the doctrine is so familiar as not to require citation of au-

thority that a patentee is entitled to every use of which his

invention is susceptible, whether such use be known or un-

known to him.”

discrimination and uncertainty on claim interpretation de-

scribed in greater detail above.

CONCLUSION

The Court should grant the instant petition for certiorari

in order to clarify the conflict between the decision of the

Fifth Circuit and the decisions in other jurisdictions, and

permit a uniform interpretation of 35 U.S.C. §271(a) on

the acts which would constitute infringement of a composi-

tion of matter patent, so as to prevent territorial discrim-

ination under the patent laws.

Respectfully,

ARNOLD SPRUNG

NatHaNniEL D. Kramer

Sprune Fetre Horn Lynou & Kramer

600 Third Avenue

New York, New York 10016

Attorneys for Petitioner

APPENDIX

Opinion of Court of Appeals

STUDIENGESELLSCHAFT KonLe mbH, as Trustee for the

Max-Planck-Institut fur Kohlenforschung,

Plaintiff-Appellant,

Eastman Kopak Company,

Defendant-Appellee.

No. 77-3230

United States Court of Appeals,

Fifth Circuit.

May 15, 1980

Rehearing Denied July 8, 1980

In a suit for infringement of patents involving catalysts

for the polymerization of hydrocarbons, the United States

District Court for the Eastern District of Texas, Joe J.

Fisher, Chief Judge, 450 F.Supp. 1211, ruled that all pat-

ents involved in the suit were unenforceable and not in-

fringed. On appeal, the Court of Appeals, Coleman, Chief

Judge, held that: (1) suit was not barred by laches and

estoppel; (2) certain claims of United States Letters Pat-

ent No. 3,826,792 relating to polymerization of propylene

or other higher olefins were not invalid; and (3) chemical

manufacturer’s 409 catalyst process did not infringe United

States Letters Patent Nos. 3,257,332 or 3,826,792.

Affirmed in part; reversed in part.

Opinion of Court of Appeals

Appeal from the United States District Court for the

Eastern District of Texas.

Before:

Coteman, Chief Judge,

Frank M. Jounnson, Jr. and Pouitz, Circuit Judges.

Summary

Studiengesellschaft Kohle mbH (SGK) charged Kast-

man Kodak Company (Eastman) with infringement of

patents obtained by Professor Kar] Ziegler covering cer-

tair chemical catalysts useful in the polymerization of

hydrocarbons. Acting as Trustee for the Max-Planck-In-

stitut fiir Kohlenforschung, the predecessor in interest to

the Ziegler patents, SGK accused Eastman of violating

U.S. Letters Patent No. 3,113,115 (’115); No. 3,257,332

(°332) ; No. 3,231,515 (’515); No. 3,392,162 (’162); and No.

3,826,792 (’792). The alleged infringement took place at

Eastman’s Longview, Texas, plant, where Eastman used a

special catalyst, known as its “409 catalyst” to produce

polypropylene. SGK contends that Eastman’s process and

catalyst employ the teachings of the listed patents, result-

ing in infringement. Although SGK initially sought an in-

junction against Kodak’s activity, it subsequently sought

instead compensation for use by Kodak of SGK’s patented

invention. 7

The patents cover catalysts and processes for polymeriz-

ing certain hydrocarbons. In essence the patents teach that

vy mixing certain organometal compounds, particularly an

organoaluminum compound, with a compound of a metal

of Group IVB, VB, or VIB of the Periodic System of Ele-

ments, such as a titanium salt, a polymerization catalyst

Opinion of Court of Appeals

would be produced that polymerized olefins much more

effectively than was previously possible. SGK sought a

broad reading to the patents and an equally large protec-

tion against the unlicensed use of the teachings of the

patents.

Eastman’s 409 process employs a catalyst composed of

lithium butyl (LiBu), aluminum triethyl (AJEt;), and

hydrogen-reduced alpha titanium trichloride (H-a-TiCl,)

at a temperature of 160° C. and a pressure of 71 atmo-

spheres to produce polypropylene. SGK contended that

this process was directly covered by the patents.

Eastman denied infringement, asserting that it uses

additional components not specified in the patents under

different conditions to produce a different product. East-

man further asserted that various claims of the patents

were invalid because of existing prior art. Finally Hast-

man argued that SGK’s claims were barred by laches.

Prior to trial SGK sought to remove the ’115 patent

from suit, and the claims based upon it were dismissed

with prejudice. Following a two-week trial, the District

Court allowed the taking and filing of post-trial depositions

and the submission of additional exhibits. It subsequently

accepted substantial post-trial briefs and heard lengthy

oral argument from both sides. At the conclusion of these

extensive proceedings, the Court found that Eastman had

not infringed the remaining patents, held that certain

claims of the ’792 patent were invalid, and concluded,

alternatively, that SGK’s claims were barred by laches.

Studiengesellschaft Kohle v. Eastman Kodak, 450 F.Supp.

1211 (E.D. Tex. 1977).

Although four patents were at issue in the District

Court’s opinion, SGK has appealed the trial court’s deter-

Opinion of Court of Appeals

mination on only the ’332 and ’792 patents. SGK urges on

appeal that the District Court erred (1) in finding the ac-

tion barred by laches, (2) in failing to find infringement

of the ’332 and ’792 patents, (3) in finding claims 22 to 32

of the ’792 patent anticipated by prior art, (4) in holding

claims of the ’792 patent invalid for failure to comply with

various statutory disclosure requirements, (5) in failing

to dismiss defendant’s “unclean hands” and “inequitable

conduct” defenses as not being properly pleaded not prop-

erly before the Court, and (6) in arbitrarily and summa-

rily ordering SGK to produce numerous documents

previously held privileged by the Special Master.

After an extensive examination of the voluminous rec-

ord, we find that the suit is not barred by laches, and we

affirm the decision of the district court as to the infringe-

ment and reverse as to the validity issues. We dismiss

SGK’s procedural objections as being without merit.

I. BACKGROUND

A. The Chemistry Involved

We must begin with a general discussion of the chem-

istry underlying the patents at issue. The basic principles

of the relevant organic chemistry were described in con-

siderable detail in Ziegler v. Phillips Petroleum Co., 483

F.2d 858 (5th Cir.), cert. denied, 414 U.S. 1079, 94 S.Ct.

597, 38 L.Ed.2d 485 (1973). We review them briefly here.

The simplest hydrocarbon molecule is a componnd of one

carbon atom and four hydrogen atoms and is commonly

known as methane, represented by the chemical symbol CH,.

Because the molecule is bonded together exclusively by

single pairs of electrons, methane is known as a saturated

Opinion of Court of Appeals

hydrocarbon.’ The carbon atom in methane may form single

bonds with additional carbon atoms, forming other satu-

rated hydrocarbons, such as ethane (C,H,), propane (C;H,),

and butane (C,H,,.). These molecules are called members

of a homologous series.

Carbon atoms may also bond to each other in double

bonds, producing unsaturated hydrocarbons. The simplest

of these is ethylene (C,H,).? The addition of other carbon

atoms by single bonds produces another homologous series

whose members include propylene (C;H,) and butylene

(C,H,). This unsaturated series is known as the olefin

series or as ethylenically unsaturated hydrocarbons. The

double bond connecting the adjacent carbon atoms is known

as an unsaturated or olefinic bond. In ethylene the double

bond must be at the end, but in higher members of the

series the unsaturated bond may appear at other locations

within the hydrocarbon chain. Where the unsaturated bond

occurs at the end of the hydrocarbon chain, the compound

is called an alpha olefin.’

The chemical configuration of CH, is diagrammed as follows:

a—0—z

2 The double bond is represented below:

tf H

$The following diagram of propylene shows the characteristic

location of the double bond in alpha olefins:

ee ae

| | |

c= C — C—H

| |

H H

Opinion of Court of Appeals

The patents in suit claim to teach chemical processes and

catalysts which produce synthetic polymers of hydrocar-

bons. These products are formed by causing hydrocarbon

molecules to link together in long chains, called polymers,

Thus a synthetic polymer may be produced by causing in-

dividual molecules of, say, ethylene to link together into one

long chain, called polyethylene. In this case the smaller

molecule, ethylene, is called a monomer. Polyethylene is, of

course, the polymer. Similar polymers may be produced

from other members of the olefin series. The linking of the

monomers is termed a polymerization reaction, and the poly-

merization catalyst is that which causes the monomers to

link together to form polymers. A catalyst is defined as a

substance which affects the rate or course of a given chem-

ical reaction in some manner without becoming a significant

part of the reaction product. Normally, catalysts are used

in relatively small amounts as compared with the reactants.

The patents at issue arise from the activities of Dr. Kar]

Ziegler, who was Director of the Max-Planck-Institut fiir

Kohlenforschung. In 1953 Ziegler and three co-workers dis-

covered that several combinations of an organo aluminum

compound and a compound of a metal of Groups IVB, VB,

or VIB of the Periodic System of Elements produced poly-

merization catalysts that polymerized ethylene much more

effectively than was previously possible. The catalysts

caused monomers to combine in a linear fashion, forming

straight and not branched chains, without requiring the

formation process to include high pressures or excessive

temperatures. Although Ziegler experimented with a num-

ber of different compounds, the ones most relevant here are

aluminum triethyl and a titanium chloride salt, particularly

titanium tetrachloride.

The development of these various polymerization cata-

lysts was recognized as a great scientific achievement, and

Opinion of Court of Appeais

Ziegler and his co-workers were awarded the Nobel Prize

for their accomplishment. Following his initial success, Zie-

gler pursued a policy of actively patenting and licensing his

new catalyst. In late 1953, he filed German applications

Z3799, Z3862, and Z3882 which are the predecessors to the

332 patent before us. In 1954 he filed additional German

applications, Z4348, Z4375, Z4629. SGK relies in part on

these to sustain the ’792 patent.

After his initial discovery, Ziegler continued his experi-

ments with catalysts for a broad range of olefinic polymers.

The news of Ziegler’s success with polyethylene prompted

vigorous research by scientists around the world, as they

and Ziegler worked on ways to improve the effectiveness

of the catalysts and to polymerize higher members of the

series. In Italy Professor Giulio Natta was contemporane-

ously working in polymer research, Using the catalyst Zie-

gler had developed, Natta succeeded in polymerizing propy-

lene and in characterizing its stereostructure.

Ethylene is symmetrical and reacts readily to form long

linear and uniform polymer chains. Propylene, on the other

hand, because of the additional methyl group, is asymmet-

rical and can form different polymer structures—called

stereostructures—depending upon the position the methyl

group takes. If the methyl groups in a propylene polymer

chain are oriented in a non-uniform or random way, the re-

sulting polymer is soft, pliable, tacky, and amorphous; it is

called “atactic.” When the methyl groups in the chain are

oriented such that they appear repeatedly in the same rela-

tive position, the resulting polymer is hard, tough, and

highly crystalline. Polypropylene of this “stereoregular”

structure is called “isotactic.” A catalyst which polymerizes

propylene in such a way that the regular “isotactic” stereo-

structure is preferentially formed is considered a “stereo-

specific” catalyst.

Opinion cof Court of Appeals

Natta further discovered that by using a compound of

solid crystalline titanium trichloride in the “alpha” form,

he was able to polymerize propylene to a polymer very

rich in the highly crystalline “isotactic” structure. Because

of his work in polymerizing propylene, Natta shared the

Nobel Prize with Ziegler. Natta also pursued an active

patenting policy.

Meanwhile, Eastman was at work on its own research,

directed to developing catalysts that would make good

yields of highly crystalline polypropylene of high molecu-

lar weight, in a solution process in which the temperature

conditions were above 150° C. in order to dissolve the

polymer in a hot solvent carrier. Eastman’s first com-

mercial catalysts, known at its “402” catalysts, used an

alkali metal compound, lithium aluminum hydride (LiAJH,),

co-reacted with hydrogen-reduced alpha titanium trichloride

(H-e-TiCl,).

Although the 402 catalyst produced the product Eastman

desired, Eastman sought a more economical catalyst for

the manufacture of the same product. This desire led to

the development of the 409 catalyst which is the object

of this suit. The 409 catalyst is prepared from the co-reac-

tion of lithium butyl (LiBu), aluminum triethyl (AIEt;),

and hydrogen reduced alpha titanium trichloride (H-e-

TiCl,;) in mol ratio of 0.3 to 0.3 to 1.0. The 409 catalyst

received a plant trial on one of Eastman’s three produc-

tion lines at the Longview plant during the period of April-

June 1967. Thereafter, 409 replaced 402 on all production

lines.

In April 1974 Eastman entered into a license agreement

with Natta’s assignee, wherein Eastman received protec-

tion under all Natta’s basic patents and applications in

the polypropylene field.

Opinion of Court of Appeals

B. The Legal Principles

The issues before us involve both questions of fact and

questions of law. The issue of patent infringement is a

question of fact, Ziegler v. Phillips Petroleum Co., 483 F.2d

858, 867 (5th Cir.) cert. denied, 414 U.S, 1079, 94 S.Ct. 597,

38 L.Ed.2d 485 (1973), while the ultimate question of

patent validity is one of law, Bird Provision Co. v. Owens

Country Sausage, Inc., 568 F.2d 369 (5th Cir, 1978). Even

when the ultimate issue is a legal one, the conclusion of

law must be based on the results of several factual in-

quiries. See, e. g., Graham v. John Deere Company of

Kansas City, 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d

545 (1966); Control Components, Inc, v. Valtek Inc., 609

F.2d 763, 766 (5th Cir. 1980); Parker v. Motorola, Inc.,

524 F.2d 518, 531 (5th Cir. 1975), cert. denied, 425 U.S.

975, 96 S.Ct. 2175, 48 L.Ed.2d 799 (1976).

When the questions involved are factual ones, our re-

view of the District Court’s findings must be limited to

the “clearly erroneous” standard of Rule 52(a). If the

findings of fact are not clearly erroneous, the only issue

on appeal is whether the legal conclusion drawn from those

facts is correct. Cathodic Protection Service v. American

Smelting and Refining Co., 594 F.2d 499, 506 (5th Cir.

1979), cert. denied, U.S, ——, 100 S.Ct. 453, 62 L.Ed.2d

378 (1979); Kaspar Wire Works, Inc, v. Leco Engineering

& Machinery, Inc., 575 F.2d 530, 548 (5th Cir. 1978). Fred

Whitaker Co. v. E. T. Barwick Industries, Inc., 551 F.2d

622, 627 (5th Cir. 1977); Parker v. Motorola, Inc., 524

F.2d 518, 531 (5th Cir. 1975), cert. denied, 425 U.S. 975,

96 S.Ct. 2175, 48 L.Ed.2d 799 (1976); Ziegler v. Phillips

Petroleum Co., 483 F.2d at 867.

The Supreme Court has emphasized the deference due

the findings of the trial court in complex cases, such as

10a

Opinion of Court of Appeals

this one “where so must depends upon familiarity with

specific scientific problems and principles not usually con-

tained in the general storehouse of knowledge and experi-

ence.” Graver Tank & Manufacturing Co. v. Linde Air

Products Co., 339 U.S. 605, 610, 70 S.Ct. 854, 857, 94 L.Ed.

1097 (1950). We have likewise noted that patent cases,

because they so frequently contain conflicts in expert testi-

mony, seem particularly suited for Rule 52(a)’s review

limitations. Kaspar Wire Works, Inc. v. Leco Engineering

& Machinery Inc., 575 F.2d at 543; Bird Provision Co. v.

Owens Country Sausage, Inc., 568 F.2d at 372.

SGK seems to urge that we adopt a more rigorous stan-

dard of review because the trial judge “wholly failed to

grasp the technology involved or the legal standards set

forth in this Court’s earlier decision [in Phillips].” Brief

at 3. Pointing to some of the judge’s remarks during the

trial, SGK apparently contends that the judge had ab-

solutely no understanding of the factual matters before

him. This prompts SGK to assert that “this is one of

those unfortunate cases where there was no ‘understand-

ing analysis of the evidence or reasoned application of

the law to the facts.” Brief at 5. SGK then urges that

we apply the principles of Phillips to the evidence in the

case before us.

We decline SGK’s invitation to consider the evidence

de novo. The district judge’s decision did not come im-

mediately upon the completion of the trial or without fur-

ther help from counsel in understanding the evidence and

the applicable law. Rather, the judge requested extensive

post-trial briefs and summaries of the evidence, heard

lengthy oral argument from both sides, and took the case

under advisement for five months before issuing a lengthy

lla

Opinion of Court of Appeals

and detailed opinion. Indeed, the final judgment came al-

most one year after the conclusion of the trial.

SGK also seems to question the trial court’s understand-

ing because of the court’s heavy reliance upon the pro-

posed findings Eastman submitted to the court. We note

first that the District Court did not adopt Eastman’s find-

ings verbatim. There was considerable reworking of East-

man’s proposed findings; some were omitted, while others

were rearranged, reworded, or otherwise revised. These

revisions indicate that the Court was working through the

analysis on its own, but finding itself in agreement with

Eastman’s position. There is absolutely nothing improper

with this.

Second, we note that even if the Court had adopted

Eastman’s proposed findings verbatim, that would not have

been sufficient grounds for causing us to engage in a de

novo review of the evidence. The clearly erroneous test

applies whether the court drafts its own findings of fact

or adopts the findings submitted by a party. Kaspar Wire

Works, Inc, v. Leco Engineering & Machinery Co., 575

F.2d at 543; Fred Whitaker Co. v. E. T. Barwick Indus-

tries, Inc., 551 F.2d at 627 n. 12; Keystone Plastics, Inc.

v. C é P Plastics, Inc., 506 F.2d 960, 962-63 (5th Cir. 1975) ;

see also United States v. El Paso Natural Gas Co., 376

U.S. 651, 657, 84 S.Ct. 1044, 1047, 12 L.Ed.2d 12 (1964);

Florida Board of Trustees of Internal Improvement Trust

Fund vy. Charley Toppino & Sons, Inc., 514 F.2d 700, 703

(5th Cir. 1975),

In view of the foregoing circumstances and case law, we

believe that the District Court performed its function ad-

equately in its consideration of the evidence.

As we noted earlier, however, not all the issues in this

case are purely factual. In determining whether a pat-

ent has been infringed, it is necessary for the court to con-

12a

Opinion of Court of Appeals

strue the patent. The construction of a patent is a matter

of law, and appellate courts are not bound by the limita-

tions of Rule 52(a) when examining the District Court’s

construction of the patent. Fred Whitaker Co. v. E. T.

Barwick Industries, Inc., 551 F.2d at 629 n. 19; Ziegler v.

Phillips Petroleum Co., 483 F.2d at 867; Harrington Manu-

facturing Co., Inc. v. White, 475 F.2d 788, 796 (5th Cir.),

cert, denied, 414 U.S. 1040, 90 S.Ct. 542, 38 L.Ed.2d 331

(1973). Of course, factual findings may be employed in

arriving at the patent’s proper construction.

After the court has articulated the scope of the patent

by construing it, the court must then explore the infringe-

ment issues. In doing so, it may use two analytical tech-

niques, literal infringement and the doctrine of equivalents.

As the Supreme Court stated in Graver Tank & Manufac-

turing Co., Inc. v. Linde Air Products, 339 U.S. at 607, 70

S.Ct. at 855, “In determining whether an accused device or

composition infringes a valid patent, resort must be had in

the first instance to the words of the claim. If accused mat-

ter falls clearly within the claim, infringement is made out

and that is the end of it.” See also Ziegler v. Phillips Pe-

troleum Co., 483 F.2d at 868; Williams Bit & Tool Co. v.

Christensen Diamond Products Co., 399 F.2d 628 (5th Cir.

1968). In considering literal infringement, the patent’s

claims must be read in connection with patent’s specifica-

tion and its file history, and the claims of patent cannot

be given a construction broader than the teachings ex-

pressed in the patent. Marvin Glass & Associates v. Sears,

Roebuck & Co., 448 F.2d 60, 62 (5th Cir. 1971); Kemart

Corp. v. Printing Aris Research Laboratories, 201 F.2d

624 (9th Cir. 1953).

As we noted in Phillips, however, minor modifications in

a patented invention are sufficient to put the item beyond

13a

Opinion of Court of Appeals

the scope of literal infringement. In recognition of this

fact, courts have developed the doctrine of equivalents to

protect patentees from inventions that perform substan-

tially the same function substantially the same way to ob-

tain substantially the same result. Gaddis v. Calgon Corp.,

506 F.2d 880, 887 (5th Cir. 1975) ; Ziegler v. Phillips Petro-

leum Co., 483 F.2d at 868; Phillips Petroleum Co. v. Sid

Richardson Carbon & Gas Co., 416 F.2d 10, 11 (5th Cir.

1969); Texsteam Corp. v. Blanchard, 352 F.2d 983, 986

(5th Cir. 1965), cert. denied, 387 U.S. 936, 87 S.Ct. 2064,

18 L.Ed.2d 1000 (1967); Up-right Inc. v. Safway Products,

Inc., 315 F.2d 23, 27 (5th Cir. 1963) ; Stewart-Warner Corp.

v. Lone Star Gas Co., 195 F.2d 645, 648 (5th Cir, 1952).

Several factors guide the analysis of an infringement

claim under the doctrine of equivalents. As the Supreme

Court has observed, what constitutes equivalency “must be

determined against the context of the patent, the prior art,

and the particular circumstances of the case.” Graver Tank

& Manufacturing Co. Ic. v. Linde Air Products, 339 U.S.

at 609, 70 S.Ct. at 856. In examining the context of the

patent itself, the pater: claims must be construed in the

light of the description and the real invention disclosed in

the patent’s specifications and examples. The specific facets

of the invention described in the patent are guides to ob-

jects covered by the patent, but they are not necessarily the

exclusive description of the invention. See Continental

Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405,

419, 28 S.Ct. 748, 751, 52 L.Ed. 1122 (1908); Ziegler v.

Philltps Petroleum Co., 483 F.2d at 869 and cases cited

therein. The nature of the invention itself affects the

range of equivalents. A “pioneer” patent, which covers a

function ever performed before, receives a much broader

protection than a patent which merely makes minor im-

14a

Opinion of Court of Appeals

provements upon existing technology. See cases cited in

Ziegler v. Phillips Petroleum Co., 483 F.2d at 869-70. At

the same time, the range of equivalents is limited by the

patentee’s surrender or amendment of claims in response

to demands of the patent examiner, so-called “file wrapper

estoppel.” Ziegler v. Phillips Petroleum Co., 483 F.2d at

870; Williams Bit & Tool Co. v. Christensen Diamond

Products Co., 399 F.2d at 633-34.

Il. LACHES AND ESTOPPEL

A. The Legal Background

Eastman contends, and the District Court held, that

SGK’s claims are barred by the equitable doctrines of

laches and estoppel. Although this Circuit has had before

it a multitude of patent cases, it appears that we have di-

rectly addressed these issues only once in the context of a

patent, Shaffer v. Rector Well Equipment Co., 155 F.2d 344

(5th Cir. 1946). Consequently, we will look to the teach-

ings of other circuits for additional guidance in this area.

At the outset we note that the only statute of limitations

involving patent infringement suits merely limits the pe-

riod of recovery of damages to six years. It does not

expressly limit the patentee’s right to maintain an action.

35 U.S.C. § 286.4 TWM Manufacturing Co., Inc. v. Dura

Corp., 592 F.2d 346, 348 (6th Cir. 1979).

*§ 286. Time limitation on damages

Except as otherwise provided by law, no recovery shall be had

for any infringement committed more than six years prior to the

filing of the complaint or counterclaim for infringement in the

action.

In the case of claims against the United States Government for

use of a patented invention, the period before bringing suit, up

15a

Opinion of Court of Appeals

Laches and estoppel are equitable defenses whose ap-

propriateness must be determined in each case under its

particular factual situation. Advanced Hydraulics, Inc. v.

Otis Elevator Co., 525 F.2d 477, 479 (7th Cir.), cert. denied,

423 U.S. 869, 96 S.Ct. 132, 46 L.Ed.2d 99 (1975) ; Potash Co.

of America v. International Minerals &€ Chemical Corp.,

213 F.2d 153, 155 (10th Cir. 1954); Shaffer v. Rector Well

Equipment Co., 155 F.2d at 345. Whether the plaintiff

should be barred by laches or estoppel is to be determined

by the trial judge in the exercise of judicial discretion, and

his findings will be revised only if they are clearly erro-

neous. Baker Manufacturing Co. v. Whitewater Manufac-

turing Co., 430 F.2d 1008, 1009 (7th Cir. 1970), cert. denied,

401 U.S. 956, 91 S.Ct. 978, 28 L.Ed.2d 240 (1971) ; General

Electric Co. v. Sciaky Brothers, Inc., 304 F.2d 724, 727

(6th Cir. 1962); Potash Co. of America v. International

Minerals & Chemical Corp., 213 F.2d at 155.

Although laches and estoppel are related concepts, there

is a clear distinction between the two. TWM Manufacturing

Co., Inc. v. Dura Corp., 592 F.2d at 349-50; Advanced Hy-

draulics, Inc. v. Otis Elevator Co., 525 F.2d at 479; Conti-

nental Coatings Corp. v. Metco, Inc., 464 F.2d 1375, 1379

(7th Cir. 1972). The defense of laches may be invoked where

the plaintiff has unreasonably and inexcusably delayed in

prosecuting its rights and where that delay has resulted in

material prejudice to the defendant. The effect of laches

is merely to withhold damages for infringement which oc-

curred prior to the filing of the suit. Advanced Hydraulics,

to six years, between the date of receipt of a written claim for

compensation by the department or agency of the government

having authority to settle such claim, and the date of mailing by

the Government of a notice to the claimant that his claim has been

denied shall not be counted as part of the period referred to in the

preceding paragraph.

l6a

Opinion of Court of Appeals

Inc. v. Otis Elevator, 525 F.2d at 479; American Home Prod-

ucts Corp. v. Lockwood Manufacturing Co., 483 F.2d 1120,

1122 (6th Cir. 1973), cert. denied, 414 U.S. 1158, 94 S.Ct.

917, 39 L.Ed.2d 110 (1974); Shaffer v. Rector Well Equip-

ment Co., 155 F.2d at 345.

Estoppel, on the other hand, “arises only when one has

so acted as to mislead another and the one thus misled has

relied upon the action of the inducing party to his prej-

udice.” Lebold v. Inland Steel Co., 125 F.2d 369, 375 (7th

Cir. 1941); see also Advanced Hydraulics, Inc. v. Otis Ele-

vator Co., 525 F.2d at 479; Armstrong v. Motorola, Inc., 374

F.2d 764 (7th Cir. 1967). Estoppel forecloses the patentee

from enforcing his patent prospectively through an injunc-

tion or through damages for continuing infringement. Ad-

vanced Hydraulics, Inc. v. Otis Elevator Co., 525 F.2d at

479; Continental Coatings Corp. v. Metco, Inc., 464 F.2d at

1379; George J. Meyer Manufacturing Co. v. Miller Manu-

facturing Co., 24 F.2d 505, 507 (7th Cir. 1928).

In considering whether plaintiff’s delay in litigating his

claim makes him guilty of laches, courts use the six-year

statutory period for damages as a frame of reference, TWM

Manufacturing Co., Inc. v. Dura Corp., 592 F.2d at 348;

General Electric Co. v. Sciaky Brothers, Inc., 304 F.2d at

727; Whitman v. Walt Disney Productions, Inc., 263 F.2d

229, 231 (9th Cir. 1958); but laches may also bar a suit

brought within the period specified by the corresponding

statute of limitations. Whitman v. Walt Disney Productions,

Tnc., 263 F.2d at 232.

Mere delay in bringing suit is not, of itself, sufficient to

constitute laches in a patent infringement action. Maloney-

Crawford Tank Corp. v. Rocky Mountain Natural Gas Co.,

Inc., 494 F.2d 401, 403 (10th Cir. 1974); Jenn-Air Corp. v.

Penn Ventilator Co., 464 F.2d 48, 50 (3rd Cir. 1972). In-

17a

Opinion of Court of Appeals

stead, two elements must be established: (1) that the delay

was unreasonable or inexcusable; (2) that the defendant

has suffered injury or prejudice as a result of the delay.

Advanced Hydraulics, Inc. v. Otis Elevator Company, 525

F.2d at 479; Maloney-Crawford Tank Corp. v. Rocky Moun-

tain Natural Gas Co., Inc., 494 F.2d at 403; American Home

Products Corp. v. Lockwood Manufacturing Co., 483 F.2d

at 1122; Jenn-Air Corp. v. Penn Ventilator Co., 464 F.2d at

50; Potash Co. of America v. International Minerals &

Chemical Corp., 213 F.2d at 154; Shaffer v. Rector Well

Equipment Co., 155 F.2d at 345; Technitrol, Inc. v. Memorex

Corp., 376 F.Supp. 828, 830-31 (N.D.IIl. 1974), affirmed, 513

F.2d 1130 (7th Cir. 1975) (per curiam).

Although at one time the courts seemed divided over the

relative burdens the parties must bear under a laches de-

fense, recent cases reflect a growing unanimity among the

circuits. Where the plaintiff’s delay has exceeded the statu-

tory six-year period, the delay is presumed unreasonable,

and the plaintiff has the burden of justifying the delay.

Similarly, when the delay exceeds six years, injury to the

defendant is presumed, and the defendant need not neces-

sarily produce additional evidence of prejudice. TWM

Manufacturing Co., Inc. v. Dura Corp., 592 F.2d at 349;

Continental Coatings Corp. v. Metco, Inc., 464 F.2d at 1378;

Baker Manufacturing Co. v. Whitewater Manufacturing

Co., 430 F.2d at 1009; Technitrol, Inc. v. Memorex Corp.,

376 F.Supp. 828, 831 (N.D.Ill. 1974), affirmed, 513 F.2d

1130 (7th Cir. 1975) (per curiam). Where the action is

brought within the analogous limitation period, however,

the defendant must show both that the delay is unreason-

able and that he has suffered injury. Maloney-Crawford

Tank Corp. v. Rocky Mountain Natural Gas Co., Inc., 494

F.2d at 404. Jenn-Air Corp. v. Penn Ventilation Co., 464

F.2d at 50.

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Opinion of Court of Appeals

To determine the length of plaintiff’s delay, the court

must look not to the date on which the patent issued but

rather to the time at which the plaintiff knew or, in the

exercise of reasonable diligence, should have known of the

defendant’s alleged infringing action, See TWM Manufac-

turing Co., Inc. v. Dura Corp., 592 F.2d at 349 (period of

delay begins to run from the notice of infringement given

to defendant); Maloney-Crawford Tank Corp. v. Rocky

Mountain Natural Gas Co., Inc., 494 F.2d at 403 (where

known infringement began before plaintiff obtained title to

patent, delay is measured from time title was obtained) ;

Moore v. Schultz, 491 F.2d 294, 300-01 (10th Cir, 1974)

(period begins when plaintiff became aware of the possible

infringement) ; Potash Co. of America v. International Min-

erals & Chemical Corp., 312 F.2d at 155 (laches will not

be imputed to one who has been justifiably ignorant of facts

which create his right of action, but he must be diligent and

make such inquiry and investigation as the circumstances

reasonably suggest).

The Courts have recognized a variety of factors which

constitute prejudice to the defendant because of plaintiff’s

Gelay. Chief among these are the fact that important wit-

nesses have died, that the memories of other witnesses have

been dulled, that relevant records have been destroyed or

are missing, and that the defendant has made heavy capital

investments in its facilities in order to expand production

connected with the alleged infringing article. See, e.g., Ad-

vanced Hydraulics, Inc. v. Otis Elevator Co., 525 F.2d at

482; Continental Coatings Corp. v. Metco, Inc., 464 F.2d at

1378; Potash Co. of America v. International Minerals &

Chemical Corp., 213 F.2d at 160; Brennan v. Hawley Prod-

ucts Co., 182 F.2d 945, 948 (7th Cir. 1950).

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Opinion of Court of Appeals

The factors which will excuse delay in bringing an in-

fringement suit are less clear. The chief subject of dispute

in this area is the plaintiff’s activity in pursuing other in-

fringement suits during the period of delay. Earlier cases

stated forthrightly that other infringement litigation justi-

fied the plaintiff's delay. In Clair v. Kastar, Inc., 148 F.2d

644, 646 (2d Cir. 1945), for example, the Second Circuit

stated that “[w]hile a patentee is getting his patent sus-

tained [in another suit] he is not bound to assert his claims

to their fullest scope by suing every conceivable infringer.”

Similarly, the Eighth Circuit, in Montgomery Ward & Co.

v. Clair, 123 F.2d 878, 883 (8th Cir. 1941) held that an

inventor “is not required to litigate the validity of his pat-

ent against every possible infringer.” In Montgomery

Ward, during the period of delay the plaintiff was litigat-

ing the validity of the patent until approximately two

months before the suit in question. See also Jenn-Air Corp.

v. Penn Ventilator Co., 464 F.2d at 50 (“it is sound law...

that [plaintiff] is not necessarily bound to take on more

than one infringer at a time’). In viewing other litigation

as a reasonable excuse for delay, the courts have noted

that patent litigation is often unusually complex, lengthy,

and expensive, and forcing the patentee to litigate simul-

taneous challenges to the patent’s validity could be inequi-

table. See American Home Products Corp. v. Lockwood

Manufacturing Co., 483 F.2d at 1123.

More recent cases, however, have rejected the idea that

litigation of the patent’s validity in another suit is per se

sufficient justification for the delay in instituting the current

litigation. See, e.g., American Home Products Corp. v.

Lockwood Manufacturing Co., 483 F.2d at 1123, and Ad-

vanced Hydraulics, Inc, v. Otis Elevator Co., 525 F.2d at

20a

Opinion of Court of Appeals

480, which assert that the existence of other pending litiga-

tion over the patent does not automatically excuse delay in

the bringing of the suit.

The Seventh Circuit in particular has devoted consider-

able attention to the matter of pending litigation as a justi-

fication for delay. In Armstrong v. Motorola, Inc., 374 F.2d

764, the plaintiff had filed suit against RCA in July 1948

and six months later sent a written notice to infringers. He

did not sue Motorola until January 1954 when the suit

against RCA was still pending. Citing Montgomery Ward

and Kastar, the court pointed out that Armstrong was not

required to sue every possible infringer simultaneously,

and it held that Armstrong’s delay was justified. In Ad-

vanced Hydraulics, Inc. v. Otis Elevator Co., 525 F.2d 477,

the Court reviewed its decision in Motorola and rejected

appellant’s argument that the case stood for the principle

that the existence of other pending litigation over the

patent is a complete bar to the assertion of a laches de-

fense. The Court pointed out that in both Motorola and

Clair, the infringers had actual notice of the pending liti-

gation, and it limited the holdings to that fact. In Advanced

Hydraulics no actual notice to the defendant was either

alleged or proven, and the court held that the fact of pend-

ing litigation did not justify or excuse the delay.’ The

court stated the rule as follows: “notice of ‘other litigation’

must be given to all known parties who are thought to be

infringers; otherwise manifest injustice would result.” 525

5 Advanced Hydraulics’ finding of no notice to defendants marks

a departure from earlier cases which had stated the filing of a suit

against another party automatically constituted notice to other

infringers. See, e.g., Montgomery Ward & Co. v. Clair, 123 F.2d

at 883 (a suit pending to sustain the validity of a patent is notice

to all infringers of the insistence of the patentee upon his claimed

rights).

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Opinion of Court of Appeals

F.2d at 481. See also TWM Manufacturing Co., Ince. v.

Dura Corp., 592 F.2d at 349 (other litigation involving the

same patent but a different adversary should not toll the

running of the laches period); American Home Products

Corp. v. Lockwood Manufacturing Co., 483 F.2d at 1123

(plaintiff pursuing other litivation must assert to the other

infringers its intention to bring a subsequent action at the

termination of the presently pending action); Maxon Pre-

mix Burner Co., Inc. v. Eclipse Fuel Engineering Co., 471

F.2d 308, 313 (7th Cir. 1972), cert. denied, 410 U.S. 929, 93

S.Ct. 1365, 35 L.Ed.2d 591 (1973) (defendant had full

notice that plaintiff intended to enforce its patent rights by

reason of plaintiff’s earlier infringement action against

defendant) ; Baker Manufacturing Co. v. Whitewater Manu-

facturing Co., 430 F.2d at 1015 (plaintiff involved in other

litigation should have at least notified defendant that it

was pressing its claim of infringement).

We think the rule outlined by the Seventh Circuit and

adopted as well by the Sixth is a proper one. Where the

plaintiff is engaged in other litigation involving the patent,

to escape a defense of laches he must at least inform the

potential infringer of his intent to pursue his rights under

the patent.

B. Application to the Facts

With this general survey before us, we turn to the facts

of the present case. Throughout the early 1960s, Ziegler

and his colleagues had several meetings to discuss possible

infringement of various Ziegler patents and to consider

action against the alleged infringers, including Eastman.

Preliminary observations led to the belief that Kodak was

infringing the ’115 patent (in the initial suit but not in-

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Opinion of Court of Appeals

volved in this appeal) and in early 1966 Ziegler and Dr.

von Kreisler, Ziegler’s associate and general patent adviser,

discussed the possibility of offering Eastman a license

under the 7115 patent. In July 1966 von Kreisler wrote

Eastman about the 7115 patent, and in November 1966

Ziegler formally offered Eastman a license under the 7115

patent. Eastman replied that the patent “has no perti-

nence to our manufacture of polymers” and declined the

license offer.®

The ’332 patent issued on June 21, 1966. Eastman’s use

of the 409 catalyst at issue in this suit began in the spring

of 1967. Prior to that time Eastman’s catalyst did not con-

tain an aluminum triakyl, one of the components of the

332 patent. In May of 1967 Ziegler offered Eastman a

license under the ’332 patent. Eastman promptly rejected

the offer for the reasons expressed in its rejection of the

* The letter also stated the following:

We assume that you and Professor Ziegler are aware that

our scientists have developed a number of different catalyst

systems for polymerization of a-olefins. You perhaps have

seen our various patents and literature articles describing such

catalysts. We are convinced that none of them, including our

commercial systems, are in any way covered by the claims of

U.S. 3,113,115. In any event, Eastman is not using an alkyl

aluminum halide at all in its commercial operations.

We suppose that your inquiry has been prompted by pub-

liecations by our scientists which disclose alkylaluminum di-

halide catalysts. Distinctions between this type of catalyst and

the type covered by Ziegler’s patent are made clear in several

publications.

Again we thank you for the offer of a license. As a company

policy we do not knowingly infringe the valid patent rights

of others. Therefore, I can assure you that if we had any

reason to believe that we needed a license we would seriously

consider your offer. However, in the present situation we feel

sure that a license is not necessary.

23a

Opinion of Court of Appeals

115 offer.’ Later in 1967 Ziegler sued Phillips Petroleum

on the ’332 patent, a suit which put in issue both the scope

and the validity of the patent.

In January 1970 Ziegler’s American patent attorneys

corresponded with Eastman’s retained counsel, offering

Eastman a license for polypropylene rights under various

Ziegler patents. This offer was rejected. By letter of June

3, 1970, Ziegler’s counsel indicated their inability to draw

a conclusion as to whether Kastman’s operations fell with-

in the coverage of Ziegler’s patents snd asked Eastman to

supply information about its operations that would enable

Ziegler’s counsel to arrive at such a conclusion. Eastman

responded by counsel that “these operations are highly pro-

prietary and important to my client and certainly not sub-

ject matter which should be imparted to others.” Counsel

further stated that “having looked into the matter as far

as we can, my client sees no necessity for having such a

license as you propose and has no interest in entering into

negotiations concerning the same.” On August 27, 1970,

Ziegler’s counsel again informed Eastman’s counsel that

this lack of information rendered a final decision on an

infringement action impossible. Counsel pointed out that

Ziegler was involved in several litigations involving the

7115 and ’332 patents and would have to concentrate on

those actions. The letter then stated

We wish to make it perfectly clear, however, on be-

half of Professor Ziegler that your client, Eastman

Kodak, should not consider any inactivity on Profes-

sor Ziegler’s part with respect to them at this time

7 Eastman stated “For the reasons given in my letter of Decem-

ber 22, 1966, we do not see any possibility that Eastman Kodak

Company would be interested in a license under Dr. Ziegler’s

patent.”

24a

Opinion of Court of Appeals

an acquiescence to any position which they or you

might take with respect to the patent position, and

such inactivity is simply due to lack of information

concerning your client’s activities and the involvement

of Professor Ziegler in enforcing his patent rights

against others. We wish to make it perfectly clear that

at such time when Professor Ziegler is in a position

to determine and evaluate the activities of your client,

Eastman Kodak, should he determine that in his opin-

ion an infringement situation exists, he will promptly

and vigorously enforce his patent rights against Fast-

man Kodak, and this should be taken into considera-

tion by your client in connection with any continuance

or expansion of their activities in the field.

In July 1970, Ziegler sued Dart Industries for infringe-

ment of the ’115 and ’332 patents. The decision in the suit

against Phillips became final on December 3, 1973. SGK

sued Eastman on March 20, 1974.

The District Court in its conclusions of law determined

that the suit was barred by laches and estoppel because

Eastman had been prejudiced by SGK’s inexcusable and

unreasonable delay in filing suit. It found that Eastman

had substantially expended its investment and production

at the Longview, Texas, plant before institution of the

suit. Before any of the patents issued Eastman had ex-

pended $11,000,000 and thereafter it expended and addi-

tional $6,000,000. According to the court’s findings of fact,

production was increased from an initial 7,500,000 lbs. per

year in 1961 to more than 120,000,000 Ibs. per year by the

time the complaint was filed. The Court further found that

between the issuance of the patents and the institution of

the suit, Eastman’s production using the 409 catalyst in-

25a

Opinion of Court of Appeals

creased about two-fold. As further prejudice to Eastman

the Court found that three key participants in Ziegler’s

patent affairs, including Ziegler himself, had died, and the

memory of a fourth had been dulled. Furthermore, the

Court concluded that many documents which could have

an important bearing on issues raised in the litigation were

missing.

Turning to SGK’s conduct during the delay, the Court

found that SGK was aware of Eastman’s commercial entry

into the polypropylene market since at least 1963 and that

SGK believed throughout the entire period from at least

1964 until suit that Eastman was an infringer of one or

more of Ziegler’s catalyst patents. At no time during the

contacts between Ziegler and Eastman during the 1966-

1970 period did Ziegler openly charge infringement or state

that Eastman needed a license in order to operate its plant.

The Court asserted that none of these contacts was such

that Eastman was put in reasonable apprehension of being

sued for infringement on the patents in suit. The Court

measured the delay from the time the patent issued, finding

that the delay on the ’332 patent was 7 years, 9 months.

Based upon these considerations the Court held that SKG@’s

delay was unreasonable and inexcusable.

We feel that the District Court clearly erred in its analy-

sis of the facts and the application of the law to those facts

when it held the action barred by laches and estoppel. We

agree that the factors which the Court cited are sufficient

to constitute injury and prejudice to the defendant, but we

cannot agree that, as a matter of law, the plaintiffs’ conduct

was unreasonable and inexcusable. From shortly after the

time Eastman started using the 409 process until the time

of suit, SGK took a number of actions which would indicate

that it would pursue its patent riz”is ‘and that it saw

26a

Opinion of Court of Appeals

Eastman as a possible infringer. Its offer of a license

indicated that it thought Eastman was employing a process

similar to that outlined in the patent. Its several inquiries

about Eastman’s operation indicated its continuing desire

to prosecute its rights and its ongoing suspicion that the

Eastman process infringed its patents. At the same time,

SGK (through its predecessor Ziegler) was litigating over

the ’332 patent in two separate suits. Furthermore, it ex-

plicitly indicated to Eastman that it was involved in litiga-

tion, and warned that those pending suits were not to be

seen as the only action it would take to protect its patent

rights. This notice came only a little over three years after

Eastman began using the 409 process and only four years

after the patent issued. Within three months of the conelu-

sion of one of the suits Ziegler was prosecuting, and while

the other suit was still pending, SGK filed its suit against

Eastman. The facts here seem to fall easily within the

bounds of those cases, discussed earlier, where other pend-

ing litigation has been a sufficient justification for delay.

Here SGK actively sought to protect its patent (it sued

Phillips only a year after the patent issued) and gave full

notice to Eastman. It is unreasonable on these facts to

require it to do more.

Eastman argues that there is no evidence that the exis-

tence of litigation prevented Ziegler from instituting the

present suit. We know of no appellate case which has estab-

lished a rule requiring the plaintiff affirmatively to demon-

strate that the other litigation prevented the prosecution of

a patent claim. Quite the contrary, as we noted earlier, the

cases have worked from the assumption that a patentee is

not required to litigate against all his potential infringers

simultaneously. See, e.g., Clair v. Kastar, Inc., 148 F.2d at

646; Montgomery Ward v. Clair, 123 F.2d at 883. The most

27a

Opinion of Court of Appeals

the cases have required, in dicta, is that the defendant be

informed of the pending litigation and of the plaintiff’s

intent to pursue his rights against 4 possible infringer. See

Advanced Hydraulics, Inc. v. Otis Elevator Co., 525 F.2d at

481; American Home Products Corp. v. Lockwood Manufac-

turing Co., 483 F.2d at 1123. Those requirements have been

met here.

As we pointed out earlier, estoppel—the preclusion of

prospective or continuing relief—requires not only delay by

the plaintiff and prejudice to the defendant but also mis-

leading action by the plaintiff which causes the defendant

to engage in conduct which would result in its injury if the

suit were allowed to go forward. The plaintiff must have

made representations or engaged in conduct which justifies

an inference of abandonment of the patent claim or which

has induced the infringer to believe that its business would

be unmolested. As the Sixth Circuit observed in TWM

Manufacturing Co., Inc. v. Dura Corp., 592 F.2d at 350, for

silence to work an estoppel, “some evidence must exist to

justify an inference that the silence was sufficiently mislead-

ing to amount to ‘bad faith.’” See also Continental Coat-

ings Corp. v. Metco, Inc., 464 F.2d at 1379-80.

Here we can find no misleading conduct by SGK. At no

point did SGK indicate or imply that it was abandoning its

interest in Eastman’s operation. Quite the contrary, SGK’s

letter of August 27, 1970, explicitly warned Eastman that

SGK’s failure to pursue the matter immediately could not

be viewed as an acquiescence in Eastman’s position. Fur-

thermore, throughout much of the period, SGK was prose-

cuting other possible infringers. Its conduct can hardly be

construed as lulling Eastman into a false sense of security.

Accordingly, SGK is not estopped from pursuing its action

against Eastman.

28a

Opinion of Court of Appeals

The ’792 patent issued on July 30, 1974, and was asserted

against Eastman on July 31, 1974. Although there was no

unreasonable delay in bringing suit after the patent issued,

Eastman contends, and the District Court held, the conclu-

sion of unreasonable and prejudicial delay is applicable to

the ’792 patent because SGK purposely and unjustifiably

delayed issuance of the patent for eight years in order to

extend its monopoly on the use of the ’332 catalyst. Because

we find that SGK did not unreasonably and inexcusably

delay bringing suit on the ’332 patent, we must reject the

trial court’s holding of laches on the ’792 claim. Even if

the patent had issued at the time of the '332, an action

brought on it in 1974, in light of the facts we have artic-

ulated would not have been barred.

Because we find that SGK’s delay is not unreasonable in

light of the foregoing facts, we need not address the ques-

tion whether Eastman misled SGK in connection with its

409 catalyst.

Ill. Tue ’332 Patent

The ’332 patent, entitled “Polymerization of Ethylene,”

expressly relates to “new and useful improvements in the

polymerization of ethylene for the production of high molec-

ular polyethylenes.” According to the teachings of the

patent, gaseous ethylene is polymerized into high molecular

polyethylenes by contact with a catalyst formed by mixing

an aluminum trialkyl compound with a compound of a metal

of Group IVB, VB, or VIB of the Periodic System of the

Elements. Examples outline the use of catalysts composed

of such compounds as aluminum triethy] and titanium tetra-

chloride.

SGK contends that the ’332 patent is not limited to the

polymerization of ethylene, but rather includes other olefins,

29a

Opinion of Court of Appeals

such as propylene. SGK points to the testimony of one of

Professor Ziegler’s research colleagues to the effect that at

the time Ziegler sought the patent, he understood it to in-

clude the polymerization of propylene as well as of ethylene.

SGK further argues that Eastman’s 409 catalyst infringes

the catalyst taught in the ’332 patent. Because we conclude

that the ’332 patent does not extend to the polymerization

of propylene, we need not reach the issue of the equivalence

of the 409 catalyst with that taught in the Ziegler patent.

A. Estoppel

Our consideration of SGK’s claims under the ’332 must

begin with Judge Roney’s careful analysis in Phillips. There

a panel of this court had to address tne validity and con-

struction of the ’332 patent which is once more before us.

In Phillips the alleged infringing operation mixed aluminum

triethyl, titanium tetrachloride, and iodine in the presence

of butadiene to produce polybutadiene.

SGK sought a determination that the ’332 patent covered

Phillips’ operation. We declined to supply that broad a

construction to the patent. Rather, we concluded that “any

construction of the ’332 patent that would encompass a cat-

alyst for the polymerization of butadiene was “untenably

broad.” We stated that the ’332 patent “is liniited to the

polymeri. ‘ion of ethylene and was not intended to encom-

pass the formation of high cts polybutadiene.” 483 F.2d at

875.

Eastman contends that because of our decision in Phillips,

SGK is estopped from again raising the construction of the

332 patent. According to Eastman, SGK is bound by our

assertion that the ’332 patent is limited to the polymeriza-

tion of ethylene. Consequently, Eastman contends, SGK

may not assert the protection of the ’332 patent against

30a

Opinion of Court of Appeals

Eastman’s catalyst, which is used to polymerize propylene,

not ethylene.

This Circuit has expressed its willingness to discard the

rule of mutuality of estoppel, thereby precluding a party

from relitigating an issue decided against him in a prior

action, even if the party asserting the estoppel was a stran-

ger to the prior action. At the same time, however, we have

recognized that a prior litigation will not create estoppel in

every circumstance. To give collateral estoppel effect to a

prior determination we have required that (1) the issue to

be concluded must be identical to that involved in the prior

action; (2) in the prior action the issue must have been

actually litigated; and (3) the determination made of the

issue in the prior action must have been necessary and es-

sential to the resulting judgment. Matter of Merrill, 594

F.2d 1064, 1067 (5th Cir. 1979) ; Stevenson v. International

Paper Co., Mobile, Alabama, 516 F.2d 103, 110 (5th Cir.

1975); James Talcott, Inc. v. Allahabad Bank, Ltd., 444

F.2d 451, 458-59 (5th Cir.), cert. denied, 404 U.S. 940, 92

S.Ct. 280, 30 L.Ed.2d 253 (1971); Rachal v. Hill, 435 F.2d

59, 62 (5th Cir. 1970), cert. denied, 403 U.S. 904, 91 S.Ct.

2203, 29 L.Ed.2d 680 (1971).

The Supreme Court has articulated similar principles in

the patent area in Blonder-Tongue Laboratories, Inc. v.

University of Illinois Foundation, 402 U.S. 313, 91 S.Ct.

1434, 28 L.Ed.2d 788 (1971). There the Court had before it

the issue of the effect to be given a prior determination of

patent invalidity. The Court explicitly overruled its ear-

lier decision in Triplett v. Lowell, 297 U.S. 638, 56 S.Ct.

645, 80 L.Ed. 949 (1936), which had held that a determina-

tion of patent invalidity is not res judicata against the

patentee in subsequent litigation against a different defen-

dant. Noting the arguments in favor of rejecting the doc-

3la

Opinion of Court of Appeals

trine of mutuality of estoppel, the Court’s decision in

Blonder-Tongue allowed a defendant charged with in-

fringement to raise a plea of estoppel where the patent

in question had been declared invalid in a different adjudi-

cation.

At the same time, however, the Court recognized that

the estoppel plea may not be employed automatically or too

broadly. Rather, the issue must be identical with that pre-

sented in the prior adjudication, and the patentee must

have had a full and fair chance to litigate the validity of

the patent. 402 U.S. at 323, 332-34, 91 S.Ct. at 1444.

We have examined the issue of estoppel in a variety of

patent contexts. Our decisions reflect a strong insistence

upon strict compliance with the three requirements out-

lined above. In Prose v. Sears, Roebuck & Co., 455 F.2d

763 (5th Cir. 1972), and Kaspar Wire Works, Inc. v. Leco

Engineering and Machine, Inc., 575 F.2d 530 (5th Cir.

1978), we held that a consent decree in a suit attacking

patent validity does not act as collateral estoppel in the

absence of clear evidence concerning the parties’ intention.

As we noted in Kaspar Wire, the prior decree “was based

entirely on the consent of the parties, and involved neither

a judicial determination nor a stipulation of the parties

with respect to the validity of [the patent] or its infringe-

ment.” 575 F.2d at 539-540. In In re Yarn Processing Pat-

ent Validity Litigation, 498 F.2d 271 (5th Cir.), cert. denied,

419 U.S. 1057, 95 S.Ct. 640, 42 L.Ed.2d 654 (1974), we

pointed out that in order to invoke estoppel, the issnes

must be the same as those previously decided. Because we

found that the date of invention and the date of reduction

to practice were separate issues, only one of which had

been adjudicated earlier, we rejected the estoppel argu-

ment.

32a

Opinion of Court of Appeals

Applying these teachings to the case before us, we con-

elude that SGK is not estopped from charging Eastman

with infringement. We observe at the outset that the

validity of the ’332 patent is not at issue here. The patent’s

validity was upheld in Phillips and was not challenged by

Eastman. The issue is instead whether the ’332 patent

applies to the polymerization of propylene. The question

in Phillips was whether the ’332 patent extended to the

polymerization of butadiene to form high cis-polybutadiene

rubber. The two questions are not the same. Unlike pro-

pylene, butadiene is a conjugated diolefin whose special

properties set it apart from members of the homologous

series containing ethylene or propylene. Even if the mono-

mer involved in Phillips had been butyene, in light of the

different properties possessed by olefins with higher num-

bers of carbon atoms, a finding that the patent did not

cover butylene (C,H,) would not necessarily have entailed

a determination that it did not cover propylene (C,H,).

We acknowledge that language in Phillips states that

the ’332 patent is limited to the polymerization of ethylene.

That language, however, is not necessary to the determina-

tion of the issue in Phillips. Only our holding that the

patent was not intended to encompass the formation of

high-cis-polybutadiene is necessary.

Because our statements limiting the patent to the poly-

merization of ethylene are not necessary and essential to

the result in Phillips, they may not be used as a basis for

estoppel in the present case.

B. Scope of the ’332 Patent

We thus turn to the question whether the ’332 patent

teaches the polymerization of propylene. The resolution

33a

Opinion of Court of Appeals

of this issue is a matter of construction, which is for this

Court to decide for itself, but in ascertaining the appropri-

ate construction, we must rely upon certain factual findings

of the District Court unless those findings are clearly

erroneous. Fed.R.Civ.P. 52(a). As we pointed out in

Phillips, in construing a patent we look to the claims of the

patent itself and to the intention of the patentees., 483 F.2d

at 874.

In examining the claims of the patent we find no express

teaching concerning the polymerization of propylene. We

reaffirm our views in Phillips in this regard:

No intent to claim a catalyst for the polymerization

of monomers other than ethylene may be gleaned from

the patent as a whole. The ’332 patent is entitled

“Polymerization of Ethylene;” its preamble states em-

phatically and succinctly that “[t]his invention relates

to new and useful improvements in the polymerization

of ethylene for the production of high molecular poly-

ethylenes ;” the preamble lists five “Objects of Inven-

tion,” all five of which deal only with “ethylene” or

“polyethylene ;” the description preceding the claims

focuses solely upon the polymerization of ethylene; and

the Examples without exception are limited to the pro-

duction of “high molecular polyethylenes” from ethy-

lene. 483 F.2d at 874-75.

SGK argues that our analysis and holding in Phillips

that propylene is a monomer coming within the scope of

Ziegler’s ’115 patent is equally applicable to the Ziegler

’332 patent. We disagree. In Phillips we went to great

pains to point out that the language of the ’115 patent

expressly covered more monomers than ethylene. First,

34a

Opinion of Court of Appeals

the title of the patent (“Polymerization Catalyst”) did not

limit the claimed catalyst to the polymerization of any

particular monomer. Second, the “Objects of Invention”

listed in the specification indicated that monomers other

than ethylene were within the contemplated scope of the

patent. Indeed, the specification stated that the catalyst

was for use with lower olefins up to about C,, which, of

course, includes propylene. Third, one of the Examples

in the patent expressly encompassed propylene. None of

these factors is present in the ’332 patent. The ’332 patent’s

title and examples deal only with the polymerization of

ethylene. Nowhere in the patent is there mention of the

use of the catalyst with monomers other than ethylene.

SGK contends that the ’332 patent teaches the polymeri-

zation of propylene and ethylene obtained from the crack-

ing of propane and ethane. To support its position, SAK

cites to columns 3 and 4 of the patent which state

Further, in accordance with the invention, instead of

pure ethylene, ethylene-containing gas mixtures may be

directly used for the polymerization, for example, gases

which are generated during the cracking of saturated

hydrocarbons, such as ethane or propane, or from min-

eral oil or its fractions, or generated during similarly

conducted Fischer-Tropsch synthesis, and possibly

freed from other olefins.

SGK’s own expert witness, however did not state that

this language taught the polymerization of propylene. Asked

by counsel to explain his understanding of the teaching of

the ’332 patent, Dr. Herman Mark, a chemist, replied in

part that “gas mixtures may be polymerized by contacting

them with this catalyst, such gas mixtures, for instance,

35a

Opinion of Court of Appeals

produced by the cracking of a mixture of ethane or pro-

pane, which means ethylene and propylene solvents may

be used.” Shortly thereafter in his testimony Dr. Mark

stated that “at the bottom of Column 3 is stated that

gas mixtures—ethylene containing gas mixtures may be

directly used for the polymerization and, as an example

for such a gas mixture, a mixture of ethane or propane

can be used after cracking, which, of course, would indi-

cate that propylene would be present.” On cross-exam-

ination, Dr. Mark was asked if he could point out where

propylene is disclosed as a monomer. He answered, “No,

in the ’332 patent propylene is not specifically mentioned as

a monomer, and it is not actually disclosed in any specific

example, so the only reference to the possibility of using

propylene is in this sense which I have read.” Dr. Mark

indicated he was referring to the reference to ethylene-

containing gas mixtures, and observed that the cracking of

such mixtures would give ethylene and propylene. The

following exchange then took place between Dr. Mark and

defense counsel:

Q. Is it your opinion that there is a disclosure of propy-

lene as a monomer for utilization with this catalyst?

A. This is not a good disclosure, it is just mentioned, the

possibility that propane may be used.

The word “propylene” was known at that time?

The word “propylene” doesn’t occur in the patent.

But the word “propylene” was known?

Sure.

Orpopeé

And there wouldn’t have been any problem in writing

“propylene”, if that is the intent, would there?

No.

36a

Opinion of Court of Appeals

The most that can be made of Dr. Mark’s testimony is

that the patent teaches that polyethylene may be produced

from a gas mixture containing both ethylene and other mon-

omers, including propylene. Such an understanding com-

ports with the stated object of the ’332 patent, the polymer-

ization of ethylene. The paragraph merely reveals one more

condition under which the polyethylene may be produced.

It does not introduce, in a most casual and off-handed way,

a new object of the patent. We thus hold that the patent

does not expressly teach the polymerization of propylene.

Beyond the actual claims of the patent, SAK contends that

Ziegler knew that the ’332 catalyst was useful for the poly-

merization of propylene and had a clear intent of claiming

a catalyst for producing polypropylene. SGK further as-

serts that the evidence presented at trial indicates that the

332 patent was specifically issued with the understanding

that its claims covered a catalyst that polymerized propy-

lene into polypropylene. SGK points to the testimony of

Dr, Heinz Martin, one of Ziegler’s coworkers in Germany.

Martin stated that he and his co-inventors knew that the

catalyst disclosed in the ’332 patent was used for polymeriz-

ing propylene and that when the patent issued it was Zie-

gler’s intent that the patent would cover a catalyst for poly-

merizing propylene.

The issue of the intent and understanding of the paten-

tees is a factual one within the province of the trial court,

whose finding will be reversed only if it is clearly erroneous.

Bird Provision Co. v. Owens Country Sausage, Inc., 568

F.2d 369, 372 (5th Cir. 1978), (findings of fact in patent

cases are tested on appeal under the “clearly erroneous”

standard of review). Viewing the record as a whole, we

cannot conclude that the district judge erred in his deter-

mination. Kastman introduced evidence that at the time

37a

Opinion of Court of Appeals

Ziegler had completed the invention of the ’332 patent in

December 1953, Ziegler had not polymerized propylene to

solid propylene. Indeed in a patent proceeding in Australia

in 1970 Ziegler stated that he had tried to polymerize propy-

lene in his first runs but had failed. Not until July 1954 did

he succeed in polymerizing propylene. Although Ziegler

had polymerized propylene before he filed the U.S. patent

application (but after he had filed in Germany), he made

no mention of it in the application. He filed a separate

application in Germany covering propylene and subsequent-

ly sought to protect the use of his catalyst in polymerizing

propylene through a separate U.S. patent application. In

this application, S.N. 514068 Ziegler stated that a pending

application, S.N. 469059 (which resulted in the ’332 patent),

“describes a method for polymerizing ethylene to high poly-

mers.” Ziegler conceded that “it was not apparent from

the work with ethylene that the same or similar catalysts

would be useful in the production of high molecular weight

polymers of the alpha-olefines [sic] [such as propylene].”

Ziegler expressed a similar view of the scope of the 332

patent in other patent applications.

In light of this evidence, the District Court was justified

in finding that Ziegler intended to limit the ’332 patent to

the polymerization of ethylene. Its conclusions in this re-

gard are not clearly erroneous,

Finally an examination of the chemistry involved and

the understanding of men skilled in the art leads to the con-

clusion that the ’332 patent teaches only the polymerization

of ethylene.

There was expert testimony to the effect that ethylene

and propylene, though close members of an homologous

series, possess significantly different properties, which

could make them respond differently to the ’332 catalyst.

38a

Opinion of Court of Appeals

These differences are sufficiently important as to preclude

the automatic assumption that the polymerization of one

with a given catalyst would mean the polymerization of the

other with the same eatalyst. Dr. C. S. Overberger, a

chemist, testified that the first and second members of

an homologous series often react quite differently. A poly-

mer of ethylene has only one hydrogen atom attached to

the carbon atoms and can exist essentially only in a linear

chain form. In polypropylene, on the other hand, a methyl

group attaches to every other carbon, which can produce a

wide variety of molecular configurations. Indeed, as noted

earlier, polypropylene may exist in two general forms, iso-

tactic, which is stereo regular and takes a crystalline form,

and atactic, where the methyl groups have less regular

arrangement and is amorphous. Ziegler himself, in his pat-

ent application S.N, 514068 acknowledged that “the useful-

ness of a catalyst as initiator for the polymerization of

higher homologous of ethylene cannot be predicated on, or

assumed from, the usefulness thereof as initiator of ethy-

lene polymerization.” Thus even the inventor recognized

that a catalyst for ethylene would not automatically be a

catalyst for propylene.

After this survey of the patent, the patentee’s intent, and

the underlying chemistry involved, we hold that the Dis-

trict Court properly found the ’332 patent limited to the

polymerization of ethylene. Because we find that the pro-

duction of polypropylene is not encompassed by the patent,

we need not address the issue of whether Eastman’s 409

catalyst infringes the patented catalyst by the doctrine of

equivalents.

39a

Opinion of Court of Appeals

IV. The ’792 Parent

A. Validity

1. Prior Art

The District Court held that claims 22 through 32 of the

792 patent—the claims relating to the polymerization of

propylene or other higher olefins*—were invalid because

they were anticipated by the disclosure of prior art as

§ The claims in issue are as follows:

22. Method for the polymerization of alpha-olefins, which

comprises contacting such olefin with a catalyst formed from

an organometal component comprising an aluminum trialkyl

and a heavy metal component comprising a compound selected

from the group consisting of salts and the freshly precipitated

oxides and hydroxides of metals from Groups IV-B, V-B and

VI-B of the Periodic System, including thorium and uranium,

and recovering a high-molecular polymer formed.

23. Method according to claim 22, in which said heavy metal

component is a titanium chloride.

24. Method according to claim 23, in which said organometal

component is aluminum triethyl.

25. Method according to claim 22, in which said organometal

component is aluminum triethyl.

26. Method according to claim 22, in which said olefin is

propylene.

27. Method according to claim 26, in which said heavy metal

component is a titanium chloride.

28. Method according to claim 27, in which said organometal

component is aluminum triethyl.

29. Method according to claim 22, in which said catalyst is

formed by mixing said organometal component and said heavy

metal component in the presence of an organic solvent.

30. Method according to claim 29, in which said heavy metal

component is a titanium chloride.

31. Method according to claim 30, in which said olefin is

propylene.

32. Method according to claim 31, in which said organometal

component is aluminum triethyl.

40a

Opinion of Court of Appeals

revealed in patent No. 3,582,987 (’987) to Professor Giulio

Natta. The ’987 patent, entitled “Method for Producing

Polymers and Copolymers of Certain Unsaturated Hydro-

carbons,” teaches the use of a catalyst prepared by react-

ing titanium tetrachloride with a triethyl aluminum to pro-

duce high molecular weight polymers of the higher homo-

logues of ethylene, such as propylene.’ The ’987 patent

thus discloses the same catalytic process as that at issue

in Ziegler’s ’792 patent.

According to the District Court, Natta’s 987 patent had

an Italian filing date of July 27, 1954, while the earliest

possible effective invention date of the Ziegler ’792 patent

was August 3, 1954, the filing date of Ziegler’s German

application Z4348 covering the polymerization of propyl-

ene.’ Thus the Court found that the Natta patent was

prior art, and the Ziegler claims were invalid.

® The abstract of the ’987 patent is as follows:

There is disclosed a process for polymerizing unsaturated

hydrocarbons of the formula

CH, = CHR

in which R is a saturated aliphatic, an clicylic or an aromatic

radical, alone, in mixtures with one another, or in mixtures

with small amounts of another monomer copolymerizable

therewith. In the formula given, R may be, in specific modi-

fications, an alkyl, cycloalkyl, or aryl radical. The process

involves polymerizing the unsaturated hydrocarbons, alone

or in the mixtures, in contact with a catalyst prepared from

a halide of a transition metal belonging to Groups IV to VI

inclusive of the Mendeleeff Periodic Table and an alkyl com-

pound of a metal belonging to Groups II to III of said Table,

in the presence of the ‘monomer.

10 The Ziegler German application states that “with catalysts of

identical or analogous type, ethylene homologs may also be con-

verted to plastic-like polymers. This is true particularly for

propylene. ...” The U.S. application in which Ziegler first dis-

closed the polymerization of homologues of ethylene, S.N. 514,068,

was filed June 8, 1955. It stated as one of its objects providing a

4la

Opinion of Court of Appeals

Although the existence of a foreign patent is relevant as

prior art, Rosen v. Kahlenberg, 474 F.2d 858, 871 n.7 (5th

Cir. 1972), determining whether a particular foreign patent

constitutes prior art for purposes of a challenge to the

‘validity of another patent requires an examination of patent

law and the judicial constructions placed on that law.

The patent laws outline a series of provisions which will

defeat patentability of an invention. 35 U.S.C. § 102.

Those which are relevant here are §§102(e) and 102(g).

Section 102(e) provides that a person shall be entitled to

a patent unless “the invention was described in a patent

granted on an application for patent by another filed in the

United States before the invention thereof by the applicant

for the patent... .” Section 102(g) allows patentability

unless “before the applicant’s invention thereof the inven-

tion was made in this country by another who had not

abandoned, suppressed, or concealed it.”

Section 119 deals with filings in foreign countries and

provides that an application for an American patent by a

person who has previously filed a patent application in a

foreign country “shall have the same effect as the same

application would have if filed in this country on the date

process “for the production of alpha olefine polymers and co-

polymers.”

The trial court found that the disclosure of the ’792 patent was

based on an application filed July 1, 1958, that consolidated four

earlier patent applications, including S.N. 514,068. An invention

is entitled to the earliest priority date of any application which

adequately discloses its subject matter. 35 U.S.C. § 120; Hinde

v. Hot Sulphur Springs, Colorado, 482 F.2d 829, 835 (10th Cir.

1973) ; Acme Highway Products Corp. v. D. 8. Brown Co., 431

F.2d 1074, 1078-79 (6th Cir. 1970), cert. denied, 401 U.S. 956, 91

8.Ct. 977, 28 L.Ed.2d 239 (1971); Bendix Corp. v. Balaz, Inc.,

421 F.2d 809 (7th Cir.), cert. denied, 399 sar 11, 90 S.Ct. 2203,

26 L.Ed.2d 562 (1970).

42a

Opinion of Court of Appeals

on which the application for patent for the same invention

was first filed in such foreign country.” Eastman contends

that this means the Natta ’987 patent is effective as a prior

art reference as of its Italian filing date. Since that date

precedes the filing date of Ziegler’s German patent on

polypropylene, Eastman argues, the Ziegler claims are

invalid.

This Circuit has never explicitly addressed whether the

filing date of a foreign patent may be used as the date of

filing in the United States for the purposes of showing

prior art under §102(e) and (g). The Court of Customs

& Patent Appeals has addressed this general issue, though

in somewhat different contexts, on several occasions, and

the District of Columbia Circuit has adopted the view

articulated by that court. Although we may explore the

issue On our own, we are reluctant to disagree with a court

whose day-to-day activities require it to interpret and

explicate patent law. This is particularly true, where, as

here, the C.C.P.A.’s decision is a carefully reasoned ex-

amination of the relevant statutory provisions.

In an extensive inquiry into the effect of a foreign filing

upon a U.S. patent used as a prior art reference, the Court

of Customs and Patent Appeals held that a patent was not

effective as a prior art reference under 35 U.S.C. § 102(e)

as of its Swiss filing date. Rather, the patent was effective

as prior art only as of the U.S. filing date. Application of

Hilmer, 359 F.2d 859, 53 C.C.P.A. 1288 (1966) (Hilmer I).

In Hilmer I the appellants showed their earliest invention

date as July 31, 1957, the date when they filed for a German

patent. The patent relied upon as a prior art reference

had a U.S. filing date of January 23, 1958, but also had a

date of filing in Switzerland of January 23, 1958. The ap-

pellants thus could show that their invention occurred

43a

Opinion of Court of Appeals

before the U.S. filing of the reference patent but they could

not show their invention before the Swiss filing date of

the U.S. patent. The Patent Office Board of Appeals gave

the U.S. patent effect as prior art as of a foreign filing

date. The Court of Customs and Patent Appeals reversed.

The Court pointed out that a patent may be entitled to a

foreign filing date for some purposes and not for others.

359 F.2d at 863. Examining the language and legislative

history of § 119, which allows a U.S. patent application to

be effective as of its foreign filing date, the Court asserted

that the purpose of 4 119 was in establishing “priority” be-

tween parties directly competing for a patent on the same

invention. The use of the foreign filing date as a priority

right was “a protection to one who was trying to obtain

patents in foreign countries, the protection being against

patent-defeating provisions of national laws based on

events intervening between the time of filing at home and

filing abroad.” 359 F.2d at 873.

Because $119 was directed to priority between compet-

ing parties and §102(e) was concerned with the elements

which would defeat a patent, quite apart from priority dis-

putes between parties, the Court refused to hold that the

language in §119 overrides the express requirement in

§ 102(e) that a patent relied on as a prior art reference be

“filed in the United States before the invention” by current

applicant. Thus under the Hilmer I doctrine, a prior art

reference patent is effective only as of its U.S. filing date.

The Court of Customs and Patent Appeals implicitly re-

affirmed its position in Hilmer II, Application of Hilmer,

424 F.2d 1108, 57 CCPA 985 (1970), and Application of

McKellin, 529 F.2d 1324 (Cust. & Pat. App. 1976). The

Court of Appeals for the District of Columbia reached a

44a

Opinion of Court of Appeals

similar conclusion in Eli Lilly & Co. v. Brenner, 375 F.2d

599 (D.C.Cir. 1967).

In Hilmer II the Court of Customs & Patent Appeals ex-

tended this interpretation to §102(g). Just as in Hilmer ]

§119 did not override the “filed in the United States”

language of § 102(e), so in Hilmer II, § 119 did not remove

§ 102(g)’s limitation of “in this country.” The essence of

the Court’s view is found in the following statement:

That [an alleged prior inventor], as an applicant,

was entitled to the benefit of his [foreign] filing date

does not mean that his invention acquires that same

date under §102(g) as patent-defeating prior art, in

direct contravention of the “in this country’” limitation

of the section. 424 F.2d at 1113.

Eastman contends that our decision in James B, Clow

& Sons, Inc. v. United States Pipe & Foundry Co., 313 F.2d

46 (5th Cir. 1963) compels us to arrive at a different re-

sult. There, however, the issue was who was the first in-

ventor under a priority claim between inventors. An inter-

ference between the two inventing parties had been

privately settled in an allegedly frauduent manner, In

Clow we held that private parties could not conclusively

settle the question of who the first inventor is, and we

directed the trial court to see if the patent owner had

properly won the interference, so as to be entitled to a

valid patent. We pointed out that the foreign application

was not being offered on the issue of anticipation or

obviousness. Indeed, Eastman apparently concedes that

Clow did not reach the issue. Thus our decision in Clow

reflects the distinction—which is at the heart of this issue

in today’s case—between the use of a foreign application

45a

Opinion of Court of Appeals

to determine priority and the use of a foreign application

to establish prior art. We thus join our brethren in the

Court of Customs & Patents Appeals in declaring that for

purposes of determining whether a patent may serve as

a prior art reference under § 102(e) or (g), the effective

date is its date of filing in the United States.

Ziegler’s German application covering the polymeriza-

tion of polypropylene was filed August 3, 1954. Natta’s

U.S. filing occurred on June 8, 1955. Consequently, the

Natta patent is not a reference of prior art and cannot

render the Ziegler ’792 patent invalid.

2. Other Challenges

The District Court held the ’332 and ’792 patents invalid,

insofar as they purport to teach catalysts or processes for

the polymerization of propylene because (1) the patents

fail to contain sufficient description of the invention as to

enable any person skilled in the art to which it perteins

to make and use the invention; (2) because the patent

specifications do not set forth how to make a useful, prac-

tical product as required by 35 U.S.C. § 101; and (3) be-

cause the inventors did not set forth in their applications

the best mode contemplated by them for the practice of

their invention as required by $112. SKG appeals the

Court’s holding of invalidity on each of these grounds.

Since we held that the ’332 patent does not teach the poly-

merization of propylene, we need deal with these issues

only in the context of the ’792 patent.

The patent statute, 35 U.S.C. § 102, requires that a pat-

ent must be directed to subject matter which is “new and

useful.” Section 112 mandates that a valid patent shall

contain a written description of the invention, and of

the manner and process of making and using it, in such

46a

Opinion of Court of Appeals

full, clear, concise and exact terms as to enable any

person skilled in the art to which it pertains .. . to

make and use the same, and shall set forth the best

mode contemplated by the inventor of carrying out his

invention.

In construing this language, the courts have recognized

that in meeting the statutory disclosure requirements, it is

merely necessary that the patent illustrate some embodi-

ments of the invention and not all of them. Ziegler v.

Philips Petroleum Co., 483 F.2d 858, 871 (5th Cir.), cert.

denied, 414 U.S. 1079, 94 St.Ct. 597, 38 L.Ed.2d 485 (1973) ;

Noll v. O. M. Scott d Sons Co., 467 F.2d 295, 302 (6th Cir.

1972), and this view has been specifically articulated in the

context of patents covering catalysts and catalytic pro-

cesses. Application of Angstadt, 537 F.2d 498, 502-03

(Cust. & Pat. App. 1976); Application of Bowen, 492 F.2d

859, 863 (Cust. & Pat. App. 1974).

Eastman argues that the ’792 patent fails to provide any

teaching of utility. The Supreme Court in Brenner v. Man-

son, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966), has

declared that the practical utility of the compound pro-

duced by a chemical process is an essential element in estab-

lishing paientability of the process.

The ’792 patent provides two examples of the polymeri-

zation of propylene. Example 24 describes the production

of granular polypropylene, The example then states that

“(t]he solid, granular polypropylene may be pressed at

140° C. to obtain flexible sheets or films which appear

transparent in thin films and opaque in thick layers.” Ex-

ample 27 outlines the production of a “white, flocculent

polypropylene” and states that the polymer “can be easily

pressed into foils and rolled into a sheet.”

47a

Opinion of Court of Appeals

Eastman argues that these descriptions are insufficient

to comply with the required demonstration of usefulness.

We disagree.

Eastman insists that use of the ’792 process fails to pro-

duce a useful product because to make a useful polypropy-

lene it is necessary to make and separate the polymer

having the isotactic structure, according to the process

discovered by Natta. Eastman has found this separation

process necessary to produce a polypropylene it can mar-

ket successfully. It asserts that the Ziegler process does

not produce a polymer that Eastman can market. Eastman

thus appears to equate “useful” in the sense of the patent

law with “useful” in the sense of commercial marketability.

We find no reason for imposing a standard of commercial

marketability upon the requirements of the patent laws.

The product of a patented process is useful if it may serve

some identifiable purpose other than merely being the end

product of a series of chemical reactions. To require the

product to be the victor in the competition of the market-

place is to impose upon patentees a burden far beyond that

expressed in the statute.

The decision of the Court of Customs and Patent Ap-

peals in Anderson v. Natta, 480 F.2d 1392 (Cust. & Pat.

App. 1973), relied upon by Eastman, is not controlling.

There the Court did state that it was “not convinced that

the mere production of a simple film .. . is sufficient to

establish usefulness in a practical sense as film,” 480 F.2d

at 1396-97, but the invention in that case was limited solely

to a process for making a very specific copolymer, not here

at issue. Moreover, the court’s language does not deal with

patent disclosure at all, but rather with whether a party

had, outside the disclosure of its application, actually re-

duced the patented invention to practice by making some-

48a

Opinion of Court of Appeals

thing successful, so as to be entitled to an invention date

even earlier than its application.

More directly on point is a decision by the Patent Office

in Ziegler v. Baxter v. Natta (P.O.Bd.Int. 90,833), where

the Patent Office held that Ziegler was the first inventor of

a specific process directed solely at a method of making

polypropylene and that the German equivalent to the ’792

patent example 24 disclosed a useful polypropylene. Of

course, we are not bound by a decision of the Patent Office,

but in this instance we find the logic and reasoning of the

Patent Office persuasive and adopt it. Patent ’792’s dis-

closure of a transparent or opaque flexible film at 140° C.

is a statement of sufficient utility to satisfy the patent

statute.

Eastman also challenges the validity of the ’792 patent

on the grounds that it fails to comply with § 112’s require-

ment that the patent “set forth the best mode contemplated

by the inventor of carrying out his invention.” SGK and

Eastman apparently agree that the ’792 patent does not

teach how to obtain the highly crystalline, isotactie poly-

propylene. According to Eastman, this process, discovered

by Professor Natta, constitutes the best mode of carrying

out the invention. Since Ziegler and his co-workers, as a

result of their collaboration with Natta, were aware of

Natta’s use of a-TiCl, as a catalyst component, Kastman

argues, the trial court was correct in finding that Ziegler

failed to set forth the best mode as required by 35 U.S.C.

§ 11%.

In interpreting 4112, the courts have emphasized the

obligation of the inventor to disclose the best method con-

templated by him to carry out the invention, as of the

time he executes his application. Dale Electronics, Inc. v.

49a

Opinion of Court of Appeals

R. C. L. Electronics, Inc., 488 F.2d 382, 388-89 (1st Cir.

1973); Application of Glass, 492 F.2d 1228, 1233-34 (Cust.

& Pat.App. 1974); Application of Gay, 309 F.2d 769, 50

COPA 725 (1962); Benger Laboratories, Ltd. v. R. K.

Laros Co., 209 F.Supp. 639, 644 (E.D.Pa. 1962), affirmed

per curiam, 317 F.2d 455 (8rd Cir. 1963).

On the other hand, the courts have not required the mode

disclosed by the inventor be in fact the optimum mode of

carrying out the invention. Application of Gay, 309 F.2d

at 773. Even if there is a better method, the failure to dis-

close it will not invalidate the patent if the inventor does

not know of it or does not appreciate that it is the best

method. See Benger Laboratories, Ltd. v. R. K. Laros Co.,

209 F.Supp. at 644, affirmed per curiam, 317 F.2d at 456.

Instead, the thrust of the decisions in this area has been

to require that the inventor act in good faith with no at-

tempt to conceal what he feels is the best method of using

the invention. Benger Laboratories, Ltd. v. R. K. Laros

Co., 317 F.2d at 456; Application of Gay, 309 F.2d at 772.

From our examination of the record we are unable to find

sufficient evidence to justify the conclusion that Ziegler

knew that the method employed by Natta was the best

mode of carrying out the invention. Neither are we able

to conclude that Ziegler acted without good faith or in an

attempt to conceal what he believed to be the best use of

his catalytic process. Under the statute, Ziegler was not

required to disclose every known modification of his pro-

cess, This is particularly true when those modifications

are developed by other people. The mere fact that Ziegler

knew of other uses of his catalysts does not create a pre-

sumption that he contemplated or appreciated those uses

to be the best mode of carrying out his invention. In the

absence of evidence that Ziegler felt the use of a-TiCl, was

50a

Opinion of Court of Appeals

the best mode of using his catalyst process, we cannot con-

clude that the ’792 patent is invalid for failure to state the

best mode.

SGK finally challenges the District Court’s conclusion

that the ’792 patent is invalid because it does not contain a

sufficient description of the invention to enable any person

skilled in the art to make and use the invention. We agree

with SGK that the District Court incorrectly applied the

law in this area.

Claims 23, 24, 27, 28, 30, 31 and 32 of the ’792 patent are

specific as to the combination of components preferred for

propylene polymerization. Furthermore, as a result of the

disclosure of Ziegler’s process, scientists throughout the

world were able to polymerize alpha olefins based on the

teachings of the Ziegler method.

Eastman complains that the great majority of the cat-

alysts described in the examples, including many of the

“preferred” systems, were shown to be inoperative for

polymerizing propylene. Even assuming the truth of this

assertion, it does not necessarily follow that the patent is

invalid. Such claims encompassing myriad operative com-

binations are not invalid but are merely construed to ex-

clude those inoperative combinations. Noll v. O. M. Scott

& Sons Co., 467 F.2d 295, 300 (6th Cir. 1972); Ansul Co. v.

Uniroyal, Inc., 301 F.Supp. 273, 288-89 (S.D.N.Y. 1969),

affirmed, 448 F.2d 872, 876-78 (2d Cir. 1971). See also Ap-

plication of Bowen, 492 F.2d 859 (Cust. & Pat.App. 1974).

The teachings of the ’792 patent adequately describe the

invention.

B. Infringement

We must now turn to the determinative question: whether

Eastman’s catalytic process infringes SGK’s ’972 patent.

dla

Opinion of Court of Appeals

SGK’s contention, in short, is that the patent, which teaches

a catalyst for polymerizing propylene composed of an alu-

minum trihydrocarbon and a titanium salt, covers a catalyst

composed of an aluminum trihydrocarbon, a particular

titanium salt, and lithium butyl.

Construing the reach of a patent of this nature is not

easy, particularly for non-scientist judges. We must bal-

ance the protection to be given the inventor against the

need for creativity by others working in the field. We rec-

ognize that pioneering patents deserve broad protection,

and we likewise note that a patent need not list every imag-

inable permutation of its components nor need it anticipate

every possible modification developed by those who use it.

Yet we must be careful not to give one who makes major

advances in an area complete control over all subsequent

advances and developments in the same area. We must keep

in mind the fact that a patentee is entitled to protection

against parties who make minor changes in his invention,

but we also must not lose sight of the fact that a patent

does not give an individual unlimited protection against

every conceivable item which may employ some elements

of the teaching of the patent. As noted earlier, to come

within the scope of the doctrine of equivalents, the chal-

lenged process must produce substantially the same result

with substantially the same means in substantially the same

manner.

With these considerations guiding us, we hold that the

District Court properly construed the ’792 patent when it

found that the patent did not cover Eastman’s 409 catalyst.

In reaching this conclusion, we are particularly aware of

the fact that in catalytic chemistry, minor changes in com-

ponents, their ratio, or the external condition of the reaction

may produce major changes in the reaction itself. A catalyst

52a

Opinion of Court of Appeals

which works well at one temperature and pressure, for ex-

ample, may be totally ineffective at another. Similarly, a

small change in the oxidation state of one element of a com-

pound may produce an entirely new catalytic process. Hach

component of the process—the precise compounds, the ratio

of their combination, the external condition of the reaction

—may be critical.

Applying these tenets of chemistry to the ’792 patent and

the 409 process leaves us convinced that the ’792 patent

should not be construed to cover the 409 process. First, the

409 process contains a component, lithium butyl, which the

792 patent does not mention. Indeed, the ’792 patent makes

no reference to components other than the aluminum tri-

hydrocarbon and the metallic salt. SGK argues that the

complex compound formed by reacting LiBu and AlEt, pro-

duces merely a known and convenient stable form of AlEt;.

Thus its addition to the reaction, according to SGK, in no

way changes the catalyst. Yet Ziegler filed for different

patents where he disclosed new catalysts prepared using

complexes such as LiBu/AIEt, and specifically claimed those

complexes. In the absence of testimony, we cannot now con-

clude that he meant to include those complexes within the

792 patent. In addition, the trial court heard testimony

that the presence of LiBu made a significant difference in

the final reaction product.

Second, the 409 process uses a particular form of titanium

salt, hydrogen reduced alpha titanium trichloride. To be

sure, the patent teaches the use of a titanium salt, and the

409 process employs a titanium salt, but it employs a par-

ticular form which is neither described nor suggested in the

792 patent. The patent explicitly teaches the use of tita-

nium tetrachloride, but the trial court heard sufficient expert

testimony to justify its conclusion that H-a-TiCl, is not the

53a

Opinion of Court of Appeals

same as the titanium salts mentioned in the patent. The

physical properties themselves are different, Titanium tet-

rachloride is a clear, non-crystalline liquid, while H-e-TiCl,

is a solid, violet-colored crystal. The trial court heard ex-

pert testimony that the electron structure of the H-e-TiCl,

differed significantly from that of TiCl, used in the ’792

examples. According to this testimony, the differences be-

tween the two structures accounted in part for the much

greater amount of isotactic polypropylene produced by the

409 process.

Third, the 409 process co-reacts LiBu, AlEt;, and H-a-Ti

Cl, in a mol ratio of 0.3 to 0.3 to 1.0. The ’792 patent points

out the importance of the ratio in determining the kind of

polypropylene produced and displays the use of ratios of

AlEt, to TiCl, of less than 1:1. However, the consequence

of these lower ratios is a substantial reduction in the molec-

ular weight of the polymer. To produce high molecular

weight polypropylene, such as that sought by Eastman, the

patent suggests using a AlEt, to TiCl, ratio of 2:1, or pro-

viding an excess of AlEt,;. The 3:1 ratio employed in the

process is yet another indication that there are underlying

differences in the chemical reactions generated by the two

processes.

Fourth, Eastman conducts its polymerization at 71 at-

mospheres of pressure and a temperature of 160° C. Once

again, the ’792 patent states that temperatures and pres-

sures this high will produce polypropylene, but the whole

thrust of the patent’s teachings is that the catalyst works

better at lower temperatures and pressures. The patent

states, for instance, that “[i]t is advantageous to work at

pressures of 1 to 10 atmospheres.” Likewise, the patent

notes that temperature is not critical, but adds that it is

advantageous to operate “at somewhat elevated tempera-

54a

Opinion of Court of Appeals

tures and particularly above about 50° C. Thus in olefin

polymerization, as contrasted to prior art processes, the

monomer contacted wtih a catalyst in accordance with

the invention may be rapidly converted into high molec-

ular polymer even at low pressures of less than 100 at-

mospheres and temperatures of less than 100° C. Working

at temperatures above 250° C. is not advisable because

at this temperature the catalysts may decompose to a

considerable extent.” Thus the Eastman process works

best under conditions only marginally effective in the

teachings of the patent.

Finally, the 409 catalyst produces a high proportion of

isotactic polypropylene, while the ’792 produces only min-

imal quantities. Indeed, for Eastman, that which makes

the 409 catalyst attractive is its ability to produce stereo-

regular polypropylene. The ’792 patent, on the other hand,

expresses no teaching about its ability to produce stereo-

regular polymers, and, indeed, most of its product is the

amorphous, atactic polypropylene.

All these factors, taken together, lead us to conclude

that the District Court’s determination on this issue was

correct. No single factor by itself is sufficient to put East-

man’s 409 beyond the reach of SGK’s ’792 patent. When

they are considered together, however, they depict a pro-

cess that produces a different result through means that

are different and by an operation that is different. The 409

process is not the equivalent of the ’792 process. Conse-

quently, Eastman has not infringed SGK’s patent.

SuMMARY

We Reverse those portions of the District Court opinion

which held SGK’s suit barred by laches and estoppel.

doa

Opinion of Court of Appeals

We likewise Reverse the District Court’s determination

that .zrtain claims of the ’792 patent are invalid.

We Arriem the trial court’s decision that Eastman’s con-

duct does not infringe either the ’332 or the ’792 patents.

56a

Findings of Fact and Conclusions of Law

In THE

UNITED STATES DISTRICT COURT

For tHe Hastern District or Texas

Beaumont Drvision

Civil Action B-74-392-CA

SruDIENGESELLSCHAFT KoHLE mbH, as Trustee for the

Max-Puanox-Institvut fiir Kohlenforschung,

Plaintiff,

Eastman Kopak Company,

Defendant.

Creve Bacuman, Esq.

Orgain, Bell & Tucker

Beaumont Savings Buildings

Beaumont, Texas 77701

Arnoitp Sprune, Esq.

NatHanig, D, Kramer, Esq.

Burgess, Dinklage & Sprung

600 Third Avenue

New York, New York 10016

Attorneys for Plaintiff

O. J. Weser, Esq.

Mehaffy, Weber, Keith & Gonsoulin

1400 San Jacinto Building

Beaumont, Texas 77701

57a

Findings of Fact and Conclusions of Law

Francis T. Carr, Esq.

Kenneth BE. Mapsen, Esq.

Auan T. Bowgs, Esq.

Kenyon & Kenyon Reilly Carr & Chapin

59 Maiden Lane

New York, New York 10038

Attorneys for Defendant

Finpinas oF Fact anp Conciusions or Law

The above-styled and numbered cause came on for trial

by the Court and the Court having considered the plead-

ings, the evidence adduced at the trial and in depositions

and documents, the arguments of counsel and stipulations

of counsel, and the briefs filed by the respective parties,

and having been fully advised, makes and files its findings

of fact and conclusions of law.

Finpinos or Fact

I. Nature or THE SUIT AND JURISDICTION

1. This is a patent infringement suit brought by plain-

tiff, Studiengesellschaft Kohle, mbH, a German corpora-

tion, as Trustee for the Max-Planck-Institut fur Kohlen-

forschung (“Institute”) against defendant, Eastman Ko-

dak Company (“Eastman”), a New Jersey corporation.

Plaintiff alleges that defendant, by its manufacture of

certain chemical products in its Longview, Texas plant

within this District, has infringed the following U.S. pat-

ents Nos.: 3,257,332 entitled “Polymerization of Ethylene”

(hereinafter the “’332 patent”); 3,231,515 entitled “Cat-

alysts” (hereinafter the “’515 patent”); 3,392,162 entitled

“Polymerization of Ethylenically Unsaturated Hydro-

carbons” (hereinafter the “’162 patent”) and 3,826,792

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Findings of Fact and Conclusions of Law

entitled “Polymerization of Ethylenically Unsaturated

Hydrocarbons” (hereinafter the “’792 patent”). Plaintiff

originally also charged infringement of U.S. patent No.

3,113,115 entitled “Polymerization Catalyst” (hereinafter

the “’115 patent”), but in March 1975 moved to withdraw

the ’115 patent from suit, which motion was granted with

prejudice.

2. Plaintiff possesses legal title to the patents in suit

but the Institute is the real owner thereof and has agreed

to be bound in this litigation as if joined as a party herein

(Undertaking filed September 17, 1976).

3. Defendant asserts that plaintiff is estopped from en-

forcing the patents in suit because of laches in bringing

this action, denies that it has infringed any of the patents,

asserts that all patents are invalid and unenforceable on

various grounds set out in the Pre-Trial Order and has by

counterclaim asserted a claim for breach of confidential

duty.

4, Trial was held from September 21, 1976 to October 7,

1976. Extended post-trial depositions and testimony were

taken thereafter. The parties have extensively briefed the

questions presented. Extended oral argument was granted

both parties on April 19, 1977.

5. The four patches in suit all pertain to chemical com-

positions known as catalysts which find use in processes

for the production of certain synthetic polymers. Much of

the basic chemical terminology is treated extensively in

Ziegler v. Phillips Petroleum Co., 483 F.2d 858 (C.A. 5,

1973) at pp. 862-63. It is not repeated here in detail. A

59a

Findings of Fact and Conclusions of Law

chemical catalyst is a substance which affects the rate and

course of a given chemical reaction (e.g., a polymerization)

in some manner without becoming a significant part of the

reaction product (e.g., polymer). Thus, the use of a chem-

ical catalyst is an integral part of the definition of that

particular catalyst. Catalyst activity is unpredictable, and

modest changes in catalyst composition can have profound

and unpredictable effects on the results obtained.

Much of the testimony concerns the polymerization of

ethylene and propylene. Both are olefins, but they differ

greatly in their ability to polymerize. The polymerization

of propylene is more complicated than that of ethylene

and can form two different “stereostructures” of poly-

propylene. One is an intrinsically amorphous and soft

material (“atactic’ polypropylene), while the other is a

hard crystalline material (“isotactic” polypropylene). The

latter alone is of substantial commercial importance. Cat-

alysts having the property of inducing the formation of

the “isotactic” structure are called “stereospecific” cat-

alysts.

II. Descrietion or tHe Patents 1x Suit

6. The ’332 patent is directed to a polymerization cat-

alyst for the polymerization of the monomer ethylene, In

general, the catalyst is formed by mixing a first component,

an aluminum trialkyl compound (e.g., aluminum triethyl),

with a second component, a selected transition metal com-

pound (e.g., titanium tetrachloride). The resulting reaction

product is the catalyst. The scope of this patent was pre-

viously considered in Ziegler v. Phillips, 483 F.2d 858 (C.A.

5, 1973).

7. The ’792 patent is directed to the process of using

the catalyst of the ’332 patent and further purports to ex-

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Findings of Fact and Conclusions of Law

tend the ’332 patent by applying the use of the same cat-

alysts to the polymerization of higher olefins, e.g., propy-

lene, butene and pentene.

8. The ’515 patent purports to be directed to poly-

merization catalysts for lower olefins (from ethylene up

to pentene). The ’515 catalyst differs from that of the

332 and ’792 patents in that the first component used to

prepare the catalyst composition is composed of certain

alkali alkyl compounds (e.g., lithium butyl).

9. The ’162 patent purports to be directed to the use

of the catalysts of the ’515 patent to polymerize “ethylen-

ically unsaturated hydrocarbons”, which would literally

include polymerization of olefins generally, including ethy-

lene up to pentene.

Ill. Tae Zrecter Patent APPLlicATIONS

10. The patents in suit are based upon work performed

in the laboratories of the Institute during 1953-54, at which

time Prof. Karl Ziegler was its Director. This resulted in

filing a series of 13 German patent applications which sub-

sequently became the subject of 8 separate U.S. patent ap-

plications. Seven of these original U.S. applications were

directed solely to the polymerization of ethylene to poly-

ethylene. One application, S.N. 514,068, purported to dis-

close the polymerization of propylene and other higher

olefins. These original U.S. applications were thereafter

reorganized and refiled as a series of “consolidated” ap-

plications, three of which ultimately led to the patents in

suit, as set forth in the table below:

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Findings of Fact and Conclusions of Law

Application Filing Original Appls. Patent No.

S.N. Date Consolidated In Suit

745,998 7/1/58 469,059; 527,413, abandoned

554,631; 514,068

125,151 3/17/71 [refiling of S.N. 792

745,998 appln.]

745,850 7/1/58 554,609; 554,631; "162

514,068

745,809 7/1/58 554,609; 554,631 "615

The remaining patent in suit (’332) issued from original

application S.N. 469,059.

TV. EastmMan’s Accusep PoLypRoPpYLENE OPERATION

11. Starting in the mid-1950’s and continuing steadily

thereafter, Eastman conducted catalyst research which re-

sulted in about 1957 in the development of a catalyst, called

“402”, made by co-reacting lithium aluminum hydride

(LiA1H,) with hydrogen-reduced alpha-titanium trichloride

(H-a-TiCl,). After continuing research, Eastman, in 1967,

developed another lithium-based catalyst called “409”. This

was used at high temperature (160°C) to produce good

yields of highly crystalline, high molecular weight poly-

propylene. Both the 402 and later the 409 catalysts were

used by Eastman to commercially manufacture polypropy-

lene on a large scale at Longview, Texas. The Eastman

polypropylene process is unique to the industry.

12. Eastman’s 409 catalyst is prepared from the co-

reaction of three components: lithium butyl (LiBu), alu-

minum triethyl (AIEt,;) and hydrogen-reduced alpha-ti-

tanium trichloride (H-e-TiCl,), in a mol ratio of 0.3 to

0.3 to 1.0, respectively. Eastman’s 409 catalyst was itself

an invention which was patented as U.S. 3,679,775.

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Findings of Fact and Conclusions of Law

13. All of the patents in suit are asserted by plaintiff

to be infringed in certain respects by Eastman’s use of the

409 catalyst and process to make the highly crystalline,

high molecular weight polypropylene, and to co-polymerize

propylene with small amounts of ethylene (about 1%) to

form a modified polypropylene product which Eastman

calls “polyallomer”.

V. Derense or Lacues Anp Estopren

A. Eastman’s Commercial Polypropylene Activities

14. Eastman erected its polypropylene plant in 1961 at

a cost of $7,087,000. Thereafter, the plant was continu-

ously enlarged and production increased. Before issuance

of any of the patents in suit, Eastman had expended

$11,000,000 on its plant and thereafter it expended an addi-

tional $6,000,000. Production was increased from an ini-

tial 7,500,000 lbs. per year in 1961 to more than 120,000,000

Ibs. per year by the tine the complaint herein was filed.

Since issuance of the ’515, ’332 and ’162 patents and prior

to the present suit, Eastman’s production using the 409 cat-

alyst has increased about two-fold, i.e., by about 75,000,000

Ibs. per year.

B. Ziegler’s Awareness of Eastman’s Commercial

Activities

15. Plaintiff was aware of Eastman’s commercial entry

into the polypropylene market since at least 1963. Al-

though plaintiff claims not to have known the identity of

the specific catalyst used by Eastman, it nonetheless be-

lieved throughout the entire period from at least 1964 until

suit that Eastman was an infringer of one or more of Zieg-

ler’s catalyst patents. When plaintiff instituted this suit

in March 1974, it knew as much about the specific catalyst

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Findings of Fact and Conclusions of Law

and process used by Eastman as at any earlier time. Lack

of specific knowledge of Eastman’s 409 catalyst was not a

deterrent to suit.

16. While there were sporadic contacts between East-

man Kodak and Ziegler during 1966-1970, at not time did

Ziegler openly charge infringement, nor did he at any

time state that Eastman needed a license in order to

legally operate its plant. None of these contacts was such

that Eastman was put in reasonable apprehension of being

sued for infringement of any patent now in suit. No actual

notice of infringement was given to Eastman prior to the

institution of this suit in March 1974.

17. Plaintiff presented no evidence that the existence of

other litigation prevented it from sooner instituting the

present suit. It had both the manpower and resources to

engage in multiple litigation and in fact did so.

18. Plaintiff’s delays from the date of issuance of the

patents in suit until their actual assertion against Kast-

man were:

Patent In Date of Date

Suit Issuance Asserted Delay

115 12/03/63 3/29/74 10 years, 3 months

515 1/25/66 5/06/74 8 years, 4 months

"332 6/21/66 3/29/74 7 years, 9 months

"162 7/09/68 5/06/74 5 years, 10 months

"7192 7/30/74 7/31/74 1 day

C. The Losses of Witnesses, Memories and Documents

19. There are four key participants in Ziegler’s patent

affairs whose testimony was ro longer available to East-

man, specifically, Prof. Karl Ziegler (deceased), Dr. An-

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Findings of Fact and Conclusions of Law

dreas von Kreisler (deceased), Dr. Ralph Dinklage (poor

memory) and Col. Harry Toulmin (deceased).

20. Prof. Ziegler was the head of the Institute, the prin-

cipal inventor, the guiding genius, and title holder of the

patent rights. He was in complete personal control of ob-

taining, using and enforcing the patent rights until his

death in August 1973. Ziegler decided what to file and

where. He designated the inventors and wrote the ap-

plications.

21. The other participants possessed vital information

which is no longer available. All were patent advisors

who assisted Ziegler in various critical phases of his ef-

forts to define, obtain and enforce the patents in suit. The

evidence they could have given was not shown to be

available from any other source.

22. In lieu of the above four witnesses, plaintiff offered

as the most knowledgeable witness now available, Dr.

Heinz Martin, a co-patentee and the manager of plain-

tiff. He has a large financial interest in the outcome of

this litigation. His knowledge of the 20-year old history

of Ziegler’s work and patent affairs was quite incomplete

and secondhand. He was frequently unable to explain why

certain actions were taken in connection with the prosecu-

tion of various Ziegler patent applications.

23. Many documents are missing which could have an

important bearing on issues raised by defendant in the

litigation. Ziegler’s internal documents relating to studies

of Eastman’s catalyst systems, to Eastman’s alleged in-

fringement, and to Ziegler’s decision concerning suit

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Findings of Fact and Conclusions of Law

against Kastman in 1967 do not exist. In addition, con-

temporaneous written statements prepared by Ziegler’s

alleged co-inventors setting forth their views on their re-

spective inventive contributions, and Prof. Ziegler’s own

written statement setting forth his views on the contri-

butions to the inventions by the alleged co-inventors, are

missing. The entirety of von Kreisler’s own files have

been destroyed.

24. Eastman has been prejudiced by plaintiff’s delay

because of. the significant and continuing investment in

its plant and expansion of its facilities, the loss of evi-

dentiary material pertinent to the issues in this litigation

through the death of or loss of memory by key witnesses

and the loss or destruction of key documents. Further

prejudice resulted to Eastman because of the unusually

long periods of time the patents in suit were pending

prior to issuance. Therefore, in view of the total cireum-

stances, plaintiff’s long delay in instituting suit after issu-

ance of the ’332, ’515 and ’162 patents was unreasonable.

D. The Delay in Issuance of the ’792 Patent

25. The subject matter leading to the claims of the ’792

patent was pending in the Patent Office for about 20 years

before the patent was issued. At least 8 years of this

delay was of plaintiff’s own making and was solely due

to the plaintiff’s attempt to secure a second patent cov-

ering essentially the same subject matter that had already

been obtained on issuance of the ’332 patent in 1966, This

unnecessary delay in the issuance of the ’792 patent also

resulted in prejudice to Eastman on the same basis as

given above.

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Findings of Fact and Conclusions of Law

VI. NoNINFRINGEMENT

A. The ’332 Patent

26. Claim 1 of the ’332 patent states:

“Polymerization catalyst, comprising the product

formed by mixing

[a] an effective amount of aluminum trialkyl with

[b] a compound of a metal selected from the group

consisting of

[1] salts, freshly precipitated oxides and hydrox-

ides of

[2] metals of Groups IV-B, V-B and VI-B of the

Periodic System, including thorium and ura-

nium.”

Thus, claim 1 calls for a catalyst composition made from

the reaction of two components, [a] and [b].

(1) The Polymer

27. The actual invention of the ’332 patent is a catalyst

only for the polymerization of ethylene. It does not em-

brace catalysts for the polymerization of propylene, which

was neither disclosed nor contemplated by the patent.

Ziegler’s initial and subsequent U.S. patent filings demon-

strate that he intentionally limited the ’332 patent to a

catalyst for the polymerization of ethylene.

28. Polypropylene is a product having its own unique

characteristics and properties. It is a distinctly different

product than polyethylene. Unlike linear polyethylene,

polypropylene comes in different structural forms (i.e.,

67a

Findings of Fact and Conclusions of Law

isotactic, atactic) that have distinct and differing prop-

erties.

29. Eastman uses its accused 409 catalyst solely to

polymerize propylene to solid highly crystalline poly-

propylene, or in the case of polyallomer, to produce a

modified polypropylene containing no polyethylene, It

does not make polyethylene, and hence does not practice

the invention of the ’332 patent.

(2) The Catalyst

30. The ’332 patent is directed to the catalytic compo-

sition formed when the two components (aluminum tri-

ethyl and for example, titanium tetracholoride) are co-

reacted to form a new composition of matter. In contrast,

the 409 catalyst composition is formed by co-reacting a

different combination of three ingredients (LiBu, AIEt,,

H-e-TiCl,), using amounts differing from those described

in the ’332 patent. The active catalyst formed is the inte-

gral result of the interactions of all three components,

each of which is essential to the composition and behavior

of the 409 catalyst. None of the components can be omitted

and still produce a catalyst that will yield a satisfactory,

useful polymer.

31. Plaintiff has failed to prove that the composition

of matter which constitutes the catalyst of the ’332 patent

is actually ev:r formed in the preparation of Eastman’s

409 catalyst.

32. Though the ’332 patent refers generically to “tita-

nium chlorides”, the only titanium chloride actually dis-

closed as useful in the preparation of catalysts is titanium

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Findings of Fact and Conclusions of Law

tetrachloride. The H-e-TiCl, used by Eastman is a dis-

tinctly different material, structurally and chemically, from

TiCl,. H-a-TiCl, is a violet-colored solid having a specific

and unique crystal structure, and it is insoluble in the

solvents used in the polymerization process. TiCl, is a

clear liquid having no crystal structure, and it is soluble

in the solvents used for polymerization. These distinc-

tions are unimportant for the polymerization of ethylene,

but are very important for the polymerization of pro-

pylene. Because of these structural differences, a catalyst

formed using H-e-TiCl, is capable of making highly crys-

talline polypropylene whereas one formed with TiCl, is

not. H-a-TiCl, is not such a titanium chloride as is con-

templated by the ’322 patent.

33. The 409 catalyst is formed from the integral effect

of three components, only one of which (AIEt;) is actually

disclosed or contemplated in the ’332 patent, and the re-

sulting 409 catalyst composition is not substantially the

same as that described and claimed in the ’332 patent.

34. The 409 catalyst is not an equivalent of the ’332

catalyst. The “means” used by Eastman—its catalyst—

has a composition unlike anything contemplated by the

332 patent (Findings, supra). A comparison of the “op-

eration” (process) and “result” (polymer) of the use of

the 409 catalyst with that of the ’332 patent confirm their

non-equivalence:

(a) Eastman’s 409 catalyst is used in a high tempera-

ture process (160°C) to make effective quantities of

high molecular weight polypropylene having a high

content of isotactic (crystalline) structures. By con-

trast, the ’332 patent does not disclose any high tem-

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Findings of Fact and Conclusions of Law

perature process comparable to that used by Kastman

and discloses no catalyst capable of inducing the poly-

merization of propylene at high temperature or of

forming polypropylene of highly crystalline (isotactic)

structure.

(b) The behavior of H-a-TiCl, in the 409 catalyst is

unique and critical. Other titanium salts, such as the

TiCl, disclosed in the ’332 patent, or even other TiCl,

structures, are not suitable substitutes.

most comparable to the 409 catalyst is that formed

from aluminum triethyl plus titanium tetrachloride

(AlEt,/TiCl,). This catalyst is ineffective in making

polypropylene under Eastman’s process conditions.

Conditions can be found under which this ’332 catalyst

does induce the polymerization of propylene, but the

resulting product does not have properties which

would make it a useful plastic and it is totally unlike

the product of the 409 process.

The 409 catalyst is basically a different catalyst from the

invention of the ’332 patent.

B. The ’792 Patent

35. The ’792 patent has not before been the subject of

any lawsuit. The disclosure of the ’792 patent is based on

an application filed July 1, 1958 that consolidated four

earlier patent applications (See Finding 10, supra). Only

one of these, S.N. 514,068, disclosed the polymerization

of propylene and higher olefins, and it was the first U.S.

application of Ziegler et al to do so. It taught that the mol

ratio of the two components used to make the catalyst

(i.e., the ratio of aluminum compound to heavy metal

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Findings of Fact and Conclusions of Law

compound) was “controlled and critical” within the range

of 1 to 1 and 12 to 1, ie., that the ratio should not be less

than 1 to1. That application also taught that the maximum

polymerization temperature is 150°C. However, these limi-

tations of mol ratio and temperature were not referred

to when application S.N. 514,068 was later consolidated

with the three ethylene applications on July 1, 1958.

36. Since plaintiff contends that the catalyst of the

792 patent is the same as the catalyst of the ’332 patent,

Rastman does not use the process of the ’792 patent be-

cause it does not use the catalyst thereof (See Findings

30-34). Unlike the ’332, the ’792 patent discloses two

examples showing the preparation of a polypropylene

product. However, the polypropylene which could be made

from following the teachings of the ’792 patent was shown

to lack practical value; it differs substantially in crystal-

linity, tensile strength, stiffness and softening point from

the product of the 409 process. The 409 catalyst and process

are neither fairly disclosed nor contemplated by the ’792

patent nor could it be considered the equivalent thereof.

It is a different and distinct catalyst and process.

37. Plaintiff presented no proofs in support of its al-

legations of infringement of any of the asserted poly-

ethylene claims of the ’792 patent or the ’332 patent by

reason of Eastman’s “polyallomer” manufacture. On the

other hand, Eastman showed that its polyallomer was not

a polyethylene product as required by the asserted claims

of the ’792 and ’332 patents.

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Findings of Fact and Conclusions of Law

C. The ’515 and ’162 Patents

38. The ’515 patent relates to a polymerization catalyst

made from the reaction of two components: an alkali alkyl,

e.g., lithium butyl (LiBu) and defined transition metal

salts, such as titanium tetrachloride (TiCl,). The °162

patent is for the process of using the ’515 catalyst and is

therefore, in reality, for the same invention. Neither have

been in suit before. Neither has been of any practical value

or been commercially used by anyone. Ziegler considered

them “unimportant”.

39. Claim 1 of the ’515 patent reads as follows:

“A polymerization catalyst composed of a mixture of

a first and second component

[a] said first component being substantially composed

of a member of the group consisting of

[1] alkali metal alkyls and aryls;

[2] complexes of

[i] alkali metal alkyls and complexes of

alkali metal hydrides with

[ii] a metal organo compound of metals con-

sisting of magnesium and zinc; and

[3] complexes constituted of two metal organo

compounds of the group of metals consisting

of aluminum, magnesium and zine,

[b] said second component being a heavy metal com-

pound selected from the group consisting of the

salts and the freshly precipitated oxides and hy-

droxides of the metals of Groups IV-B, V-B and

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Findings of Fact and Conclusions of Law

VI-B of the Periodic System, including the tho-

rium and uranium,

[ec] each of said components being present in an

amount with respect to the other, to cooperatively

act therewith forming an active olefin polymeriza-

tion catalyst.”

Plaintiff has admitted that the scope of the catalyst defini-

tion in claim 1 of ’162 is the same as that of claim 1 of ’515.

40. The 409 and ’515/162 catalyst compositions are not

the same:

(a) Plaintiff has failed to show that the catalyst com-

position of the ’515/’162 patents is ever formed in

Eastman’s accused operations.

(b) Eastman does not use a “first component” that is

“substantially composed of” an alkali metal alkyl,

e.g., LiBu.

pound” as contemplated by the 515/162 patents (Com-

pare Finding 32).

(d) The catalyst of the 515/162 patents is prepared

from two components, it does not contemplate the

presence of AlEt, as used in 409. The 409 catalyst is

not a mere mixture of two catalysts—one formed from

AIEt, and H-a-TiCl, and the other from LiBu and

H-a-TiC),.

41. The 409 catalyst and process are not the equivalents

of ’515/'162. The ’515/’162 patents do not disclose any

working examples showing the use of the catalyst of the

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Findings of Fact and Conclusions of Law

invention for polymerization of propylene. The catalyst

described in the patents that is closest to the 409 catalyst

is one formed from LiBu and TiCl,. A composition pre-

pared from these ingredients, using the preferred mol

ratio of the patents, is ineffective in polymerizing propylene

under Eastman’s 409 operating conditions. Eastman’s 409

catalyst is operable and useful, while the composition of

the ’515/162 patents under similar conditions is not.

D. File Wrapper Estoppel

42. As originally filed, the applications leading to the

515 and ’162 patents, S.N. 745,809 and S.N. 745,850, re-

spectively, disclosed and claimed a polymerization catalyst

(and process utilizing such catalyst) wherein the first com-

ponent of the catalyst included “complexes of alkali metal

alkyls with a metal organo compound of aluminum... .”

Such a component would include a complex formed from

contacting lithium butyl with aluminum triethyl.

43. During the prosecution of Ziegler’s applications for

the 515 and 162 patents, the Patent Office rejected Zieg-

ler’s original claims in view of the prior art U.S. patent

No. 2,905,645 to Anderson et al. The Anderson et al patent

disclosed a catalyst system wherein the first component

used to make the catalyst was a lithium aluminum tetra-

alkyl. This component is a “complex of an alkali metal

alkyl with a metal organo compound of aluminum” as de-

fined in Ziegler’s applications.

44. Ziegler determined that the Anderson et al patent

directly anticipated the claims of S.N. 745,809 as to the

“alkali metal alkyl/organo aluminum complex” catalyst

component, and intentionally caused both applications to

be amended to exclude such a complex from the scope of the

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Findings of Fact and Conclusions of Law

claims and to thereby avoid conflict with the Anderson

patent.

45. The ’515 and ’162 patents, as issued, reflect this vol-

untary limitation in the scope of the original claims. The

essence of what remained after deletion of aluminum com-

pounds was the combination of an alkali metal alkyl and

heavy metal salt, e.g., LiBu/TiCl,, but without AIEt,. See

Application of Ziegler, 347 F.2d 642 (C.C.P.A. 1965).

46. In the preparation of Eastman’s 409 catalyst, the

complex formed from mixing an aluminum compound

(AlEt,) with lithium butyl (LiBu) is used. Thus Eastman

uses the same subject matter given up by Ziegler (LiBu

plus AlEt;).

47. The ’332 and ’792 patents likewise cannot be con-

strued to embrace the catalysts deleted from the ’515/7162

patents. Catalysts formed from use of the LiBu-AlEt,

complex were not disclosed nor contemplated in the ’332

or ’792 patents; rather they were considered by Ziegler

et al to be part of the separate and independent invention

of the ’515/7162 patents from which such catalysts were

irretrievably deleted.

VII. Invaurpity or THe Patents in Svrir

A. Failure to Adequately Disclose or Teach

the Polymerization of Propylene

48. The ’332, ’515 or 162 patents in suit do not contain

any explanation or teaching regarding the process of poly-

merizing propylene, the nature of any polypropylene

product, or how to use it in any practical sense. By com-

parison, the teachings in these patents concerning the

a ree iE i

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Findings of Fact and Conclusions of Law

polymerization of ethylene, the characterization of the

polyethylene product and its uses, are full and informa-

tive. (Defendant makes no attack as to the adequacy of

the teachings pertaining to ethylene).

49, The teachings in the patents in suit regarding the

polymerization of ethylene cannot be applied to propylene.

It was well known to Ziegler that the behavior of propy-

lene was different than that of ethylene and the reactions

of one could not be predicated on the reactions of the

other. In addition, while polyethylene was a known com-

modity at the time of the Ziegler applications, polypropy-

lene was not, and so teachings specific to its preparation,

properties and usage were necessary. Experiments showed

that most of the catalysts described in the ’332, ’162 and

515 patents as useful for ethylene polymerization were

ineffective when applied to propylene or other higher

olefins.

50. The ’792 patent contains two examples concerning

propylene, but otherwise contains no teachings directed

to propylene. The examples describe the polypropylene

product sketchily and make no reference to the existence

of crystalline structure, or to any practical application of

the resulting polymer. Experiments showed that poly-

propylene polymer made by following the limited teach-

ings of ’792 lacked any practical value.

51. No catalyst described in the patents in suit was

shown to be capable of making useful, highly crystalline

polymers of propylene, or other higher olefins. The claims

of all patents embrace catalysts and process conditions

that are inoperative for propylene. Excessive experimen-

tation, amounting to inventive acts, would be required to

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Findings of Fact and Conclusions of Law

overcome the deficiency in the teachings of the patents in

suit and to discover the actual (undisclosed) catalysts

and conditions required to make and recover a useful

polypropylene product.

B. The Lack of Reference to the Known

Teachings of Natta et al

52. The discovery, isolation, and characterization of the

important crystalline (isotactic) polypropylene structure

was originally made by Prof. G. Natta in mid-1954. Later

in 1954 he discovered special catalysts, based on the unique

properties of e-TiCl,, that preferentially produced the

crystalline isotactic structure. These discoveries, which

have been acknowledged by Ziegler, won the Nobel Prize

for Natta in 1963, which he shared with Ziegler. Although

Ziegler et al were aware of these discoveries at the time

they applied for their own U.S. patents, these teachings

for obtaining useful highly crystalline polypropylene were

not incorporated in the Ziegler et al applications.

C. Invalidity in View of the Prior Art

(1) Effect of Prior Invention by

Natta et al on the ’792 Patent

53. Natta et al filed patent applications covering their

discoveries on polypropylene first in Italy and then in the

United States. This resulted in the grant of several U.S.

patents. One of these, U.S. patent No. 3,582,987, discloses

a catalyst prepared from aluminum triethyl and titanium

tetrachloride that is identical to that defined by the claims

of the ’792 patent. Natta discloses the use of such a cata-

lyst to polymerize propylene to solid high molecular weight

polypropylene.

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Findings of Fact and Conclusions of Law

54. The Natta ’987 patent issued on a U.S. application

claiming priority of Italian application 25,109/54, filed

July 27, 1954. The Italian application contains the same

pertinent disclosure as the U.S. application and fully

describes the alleged invention of claims 22-32 of the ’792

patent. Natta’s Italian application antedates the August

3, 1954 filing in Germany of Ziegler et al’s priority appli-

cation Z4348 wherein they first described the polymeriza-

tion of propylene.

(2) Effect of the Prior Invention by

Fischer on ’332 and ’792

55. The record presents substantial conflicting views

as to the anticipatory effect of the disclosure of Fischer

German patent 874,215. All of this mass of evidence was

taken in depositions outside the presence of the Court.

Accordingly, the Court is unable to conclude that the de-

fendant has clearly and convincingly overcome the pre-

sumed validity of the polyethylene claims of the ’792 and

332 patents over the Fischer reference.

(3) Effect of the Prior Inventions of DuPont

Researchers on the ’515 and ’162 Patents

56. Contemporaneously with the work being done by

Ziegler in his laboratories in Mulheim, Germany in 1954,

other researchers in the laboratories of DuPont in Wil-

mington, Delaware, were also active in the same field.

DuPont researchers in 1954 developed a number of cata-

lysts for polymerizing ethylene and other olefins. The use

of catalysts formed from alkali alkyl (as a first component)

and titanium tetrachloride (as a second component) was

conceived in April 1954 and the effectiveness of such

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Findings of Fact and Conclusions of Law

catalysts for polymerizing ethylene to a useful solid poly-

mer was proven at least by August 25, 1954. Other experi-

ments performed by DuPont researchers prior to Decem-

ber 27, 1954 successfully used catalysts formed from

lithium butyl and titanium tetrachloride to make useful

polyethylene polymer. This DuPont work, which was in-

dependent of any knowledge of the corresponding Ziegler

work, became publicly known and was not abandoned, sup-

pressed or concealed. The DuPont work fully describes

the alleged inventions of the ’515/’162 patents, Plaintiff

has not proved a conception or reduction to practice in

this country of the alleged invention of the ’515/’162 pat-

ents prior to the December 27, 1954 filing date of the

German priority applications Z4628 and Z4629, and thus

such inventions were antedated by the DuPont work.

(4) Effect of Pieper on the ’515/’162 Patents

57. U.S. patent No. 2,867,612 was issued to Pieper et

al on January 8, 1959 on application S.N. 558,804 filed

October 5, 1955, which claimed priority of German appli-

cation F 15877 filed October 8, 1954 in Germany. It dis-

closes the polymerization of ethylene to high molecular

polyethylene with catalysts formed by mixing titanium

tetrachoride with an organic alkali metal compound, such

as lithium butyl. The disclosures of German application

F 15877 and Pieper ’612 are substantially the same in this

respect and the October 8, 1954 German priority date of

the Pieper patent antedates the priority filing date of

December 27, 1954 claimed for the 515 and ’162 patents.

(5) Effect of Anderson Patent on the ’515/’162 Patents

58. U.S. patent No. 2,905,645 was issued to Anderson

et al (assigned to DuPont) on September 22, 1959 on ap-

plication S.N. 450,243 filed August 16, 1954, and thus con-

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Findings of Fact and Conclusions of Law

stitutes prior art against the ’515/’162 patents. The ’645

patent discloses the production of high molecular poly-

ethylene by catalysts formed from mixing certain titanium

compounds, such as TiCl,, with reducing agents such as

metal alkyls or aryls and similar organometallic com-

pounds. Lithium butyl is a “metal alkyl” within the scope

of the disclosure of the 645 patent. Example VI of the

645 patent uses an ethylene polymerization catalyst that

is the same as that of the ’515/’162 patents except that

the example uses lithium pheny] rather than lithium butyl

as a reducing agent for TiCl,, However, it was already

known that lithium butyl was also a reducing agent for

TiCl, and behaved like lithium phenyl in this respect.

Accordingly, as of August 16, 1954, it would have been

obvious to a person of ordinary skill in the art to use

lithium butyl in place of lithium phenyl in Example VI

of the Anderson ’645 patent and thus make the invention

of the 515/162 patents.

(6) Effect of Prior Art on the ’515/’162 Patents

to the Extent They Are Construed to Cover

Catalysts or Procusses for Polymerization of

, Propylene or Olefins Generally.

59. The applications for the 515 and ’162 patents (S.N.

745,809 and S.N. 745,850 filed July 1, 1958) are the first

Ziegler et al applications to disclose both alkali metal

alkyls and their use as components of catalysts for poly-

merizing propylene or olefins generally.

60. The invention claimed in the ’515 and ’162 patents,

insofar as such patents purport to cover catalysts and

processes for the polymerization of propylene or olefins

generally (as distinct from the coverage of ethylene spe-

cifically) is fully described in the following patents, all of

2 2

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Findings of Fact and Conclusions of Law

which constitute prior art having effective dates before

July 1, 1958:

(a) British patent specification No. 785,314, published

October 23, 1957.

(b) Belgian patent No. 543,941, granted June 24, 1956.

1959 on an application filed November 2, 1956.

(d) Spanish patent No. 225,790 published October 1,

1956. This patent is essentially the same as Ziegler’s

German application Z4628, one of the priority appli-

cations for the ’515 and ’162 patents. It describes a

catalyst for the polymerization of ethylene (an “ethyl-

enically unsaturated hydrocarbon”) and was granted

more than one year prior to July 1, 1958.

D. Invalidity of the Propylene Claims

of ’792 in View of Late Claiming

61. One week after plaintiff gained detailed knowledge

of Eastman’s 409 catalyst, it filed (on April 30, 1974) in-

dependent claim 22 of the ’792 patent containing new “com-

prising” type language. This new claim 22 replaced a prior

one directed to a catalyst prepared from two components

and sought to substitute therefor one which was susceptible

to the construction that it could include additional com-

ponents. Independent claim 22 of the ’792 patent, under

those circumstances, cannot be broadly construed as em-

bracing the different three component catalyst used by

Eastman since such language was first introduced seven

years after Eastman had established intervening usage of

its catalyst and two years after a U.S. patent thereon had

issued to Hastman.

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Findings of Fact. and Conclusions of Law

E. Invalidity Because of Double Patenting

62. The ’162 patent issued almost 2% years after the

issuance of the 515 patent. These patents differ only in

that the ’515 patent claims a catalyst composition, while

the ’162 patent claims the use of the same catalyst com-

position. There is no known utility for the ’515 catalyst

except in a process as claimed in the ’162 patent. One can-

not distinguish between the alleged invention of the ’515

patent and the alleged invention of the later ’162 patent.

They are the same.

F. Invalidity Because of Broadened Construction

63. Each of the following prior art patents have an

effective date prior to July 1, 1958 and disclose the cata-

lysts of the ’792, ’162 and ’515 patents for the polymeriza-

tion of propylene while using mol ratios of organometal

compound to heavy metal (e.g., AIEt; to TiCl,) of less

than 1 to 1 and at temperatures of 150°C or higher:

(a) U.S. patent No. 2,880,199 (filed November 2, 1956).

(b) British patent spec. No. 785,314 (published Oct. 23,

1957).

G. “Unclean Hands” Defense

64. The defendant has asserted various defenses of un-

enforceability of the patents because of plaintiff's “un-

clean hands”. In light of the Court’s disposition of the

issues of validity and infringement, it finds it is unnec-

essary at this time to consider the copious record relat-

ing to such additional defenses. .

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Findings of Fact and Conclusions of Law

H. Defendant’s Counterclaims for Breach

65. Inasmuch as this Court has concluded that the in-

troduction in April 1974 of the “comprising” type lan-

guage into the pending ’792 claims did not broaden the

scope of the pre-existing claims directed to the use of a

two component catalyst (Finding 61), and that the issued

claims do not embrace the use of the three component

catalyst used by defendant, it finds no injury was caused

defendant by the language change.

ConcLusions or Law

1. This Court has jurisdiction of the subject matter

and over the parties to this act

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