Appendix — Garlock Inc. v. W. L. Gore & Associates, Inc.

FILED

84-2 JUL 2 1984

No.

ALEXANDER L. STEVAS

CLERK

IN THE

SUPREME COURT OF THE UNITED STATES

October Term, 1983

GARLOCK, INC..,

Petitioner

wv.

WL. GORE & ASSOCIATES, INC..,

Respondent

APPENDIX TO

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

John J. Mackiewicz H. Francis De Lone

Dale M. Heist Robert C. Heim

WOODCOCK WASHBURN John M. Coleman

KURTZ MACKIEWICZ DECHERT PRICE & RHOADS

& NORRIS 3400 Centre Square West

1800 United Engineers Bldg. 1500 Market Street

30 South 17th Street Philadelphia, PA 19102

Philadelphia, PA 19103 (215) 972-3400

(215) 568-3100

Counsel for Petitioner

Of Counsel:

Anthony J. diBuono,

Vice President and General Counsel

COLT INDUSTRIES INC.

430 Park Avenue

New York, NY 10022

(212) 940-9622

“Counsel of record

PACKARD PRESS / LEGAL DIVISION, 10th & SPRING GARDEN STREETS, PHILA, PA. 19123 (215) 236-2000

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APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

W.L. GORE & ASSOCIATES, INC. : Appeal Nos.

83-613/614

Appellant/Cross-A ppellee,

U.

GARLOCK, INC.

Appellee/Cross-Appellant,

Decided: November 14, 1983

Before MARKEY, Chief Judge, DAVIS and MILLER,

Circuit Judges.

MARKEY, Chief Judge.

Appeal from a judgment of the District Court for the

Northern District of Ohio holding U.S. Patents

3,953,566 (’566) and 4,187,390 (’390) invalid. We affirm

in part, reverse in part, and remand for a determination

of the infringement issue.

Background

Tape of unsintered polytetrafluorethylene (PTFE)

(known by the trademark TEFLON of E. I. du Pont de

Nemours, Inc.) had been stretched in small increments.

W. L. Gore & Associates, Inc. (Gore), assignee of the pat-

ents in suit, experienced a tape breakage problem in the

operation of its “401” tape stretching machine. Dr. Rob-

ert Gore, Vice President of Gore, developed the invention

disclosed and claimed in the ’566 and ’390 patents in the

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course of his effort to solve that problem. The 401 ma-

chine was disclosed and claimed in Gore's U.S. Patent

3,664,915 (915) and was the invention of Wilbert L.

Gore, Dr. Gore’s father. PTFE tape had been sold as

thread seal tape, i.e., tape used to keep pipe joints from

leaking. The 915 patent, the application for which was

filed on October 3, 1969, makes no reference to stretch

rate, at 10% per second or otherwise, or to matrix tensile

strength in excess of 7,300 psi.

Dr. Gore experimented with heating and stretching

of highly crystalline PTFE rods. Despite slow, careful

stretching, the rods broke when stretched a relatively

small amount. Conventional wisdom in the art taught

that breakage could be avoided only by slowing the

stretch rate or by decreasing the crystallinity. In late Oc-

tober, 1969, Dr. Gore discovered, contrary to that teach-

ing, that stretching the rods as fast as possible enabled

him to stretch them to more than ten times their original

length with no breakage. Further, though the rod was

thus greatly lengthened, its diameter remained virtually

unchanged throughout its length. The rapid stretching

also transformed the hard, shiny rods into rods of a soft,

flexible material.

Gore developed several PTFE products by rapidly

stretching highly crystailine PTFE, including: (1) po-

rous film for filters and laminates; (2) fabric laminates of

PTFE film bonded to fabric to produce a remarkable ma-

terial having the contradictory properties of

impermeability to liquid water and permeability to water

vapor, the material being used to make “breathable”

rainwear and filters; (3) porous yarn for weaving or

braiding into other products, like space suits and pump

packing; (4) tubes used as replacements for human arte-

ries and veins; and (5) insulation for high performance

electric cables.

On May 21, 1970, Gore filed the patent application

that resulted in the patents in suit. The '566 patent has

24 claims directed to processes for stretching highly

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crystalline, unsintered, PTFE. The processes, inter alia,

include the steps of stretching PTFE at the rate above

10% per second and at a temperature between about

35°C and the crystalline melt point of PTFE. The ’390

patent has 77 claims directed to various products ob-

tained by processes of the 566 patent.

It is effectively undisputed that the present inven-

tions filled a long sought yet unfilled need. The United

States Army and the research director of a Garlock Inc.

(Garlock) customer had been looking for and following

up every remote lead to a waterproof/breathable material

for many years.

It is undisputed that the present inventions enjoyed

prompt and remarkable commercial success due to their

merits and not to advertising or other extraneous causes.

It is undisputed that the inventions provide the

most important synthetic material available for use in

vascular surgery, hundreds of thousands of persons hav-

ing received artificial arteries formed of the patented

product since 1976, and that the patented products have

unique properties useful in other medical procedures, in

communications satellites, radar systems, and electrical

applications.

It is undisputed that the major sources ot PTFE, ICI

and du Pont, greeted the patented product as “magical”,

“bewitching”, “a remarkable new material”, and one

that “differs from other processed forms of Teflon”.

It is undisputed that the patented products were

met with skepticism and disbelief by at least one scien-

tist who had worked with PTFE at du Pont for many

years and who testified as an expert at trial.

It is undisputed that Garlock first produced an ac-

cused product in response to a customer’s request for a

substitute for the patented product, that Garlock adver-

tised its accused product as a “new form” of PTFE and

as “a versatile new material which provides new orders

of performance for consumer, industrial, medical and

electric applications”, and that the customer describes

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that accused product as “a new dimension in

rainproof/breathable fabrics”.

Proceedings

On Nov. 2, 1979, Gore sued Garlock for infringe-

ment of process claims 3 and 19 of the ’566 patent, and

sought injunctive relief, damages, and attorney fees.

Garlock counterdlaimed on Dec. 18, 1979, for a declara-

tory judgment of patent invalidity, non-infringement,

fraudulent solicitation, and entitlement to attorney fees.

On Feb. 7, 1980, Gore filed a second suit for infringe-

ment of product claims 14, 18, 36, 43, 67 and 77 of the

‘390 patent. In light of a stipulation, the district court

consolidated the two suits for trial.

Gore alleged infringement of certain claims by cer-

tain products:

‘566 patent claims ‘°390 patent claims Garlock Product

19 14,43 film

— 36,77 laminate

19 18 yarn

— 67 braided packing

3 — tape

At trial, Garlock addressed only claims 1, 3, 17, and

19 of the 566 patent and claims 1, 9, 12, 14, 18, 35, 36,

43, 67, and 77 of the ’390 patent. See Appendix to this

opinion.

The district court, in a thorough memorandum ac-

companying its judgment, and in respect of the 566 pat-

ent: (1) found claim 1 anticipated under 35 U.S.C.

§ 102(a) by Gore’s use of its 401 machine and use by the

Budd Company (Budd) of a Cropper machine; (2) de-

clared all claims of the patent invalid under 102(b) be-

cause the invention had been in pubiic use and on sale

more than one year before Gore’s patent application, as

evidenced by Budd’s use of the Cropper machine: (3)

held claims 1, 3, 17 and 19 invalid for obviousness under

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35 U.S.C. §103, on the basis of various reference pair-

ings: (a) Japanese patent 13560/67 (Sumitomo) with

U.S. patent 3,214,503 (Markwood); (b) U.S. patent

2,776,465 (Smith) with Markwood; or (c) Gore’s ’915

patent with Sumitomo; and (4) held all claims invalid as

indefinite under 35 U.S.C. §112.!

1. 35 U.S.C. §102(a) and (b) provide:

A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this

country, or patented or described in a printed publication

in this or a foreign country, before the invention thereof by

the applicant for patent, or

(b) the invention was patented or described in a

printed publication in this or a foreign country or in public

use or on sale in this country, more than one year prior to

the date of the application for patent in the United States.

or .

35 U.S.C. §103 provides:

A patent may not be obtained though the invention is not

identically disclosed or described as set forth in section 102 of

this title, if the differences between the subject matter sought

to be patented and the prior art are such that the subject matter

as a whole would have been obvious at the time the invention

was made to a person having ordinary skill in the art to which

said subject matter pertains. Patentability shall not be

negatived by the manner in which the invention was made.

35 U.S.C. §112 provides:

The specification shall contain a written description of the

invention, and of the manner and process of making and using

it, in such full, clear, concise, and exact terms as to enable any

person skilled in the art to which it pertains, or with which is

most nearly connected, to make and use the same, and shall set

forth the best mode contemplated by the inventor of carrying

out his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention. A claim

may be written in independent or dependent form, and if in de-

pendent form, it shall be construed to include all the limitations

of the claim incorporated by reference into the dependent

claim.

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In its opinion respecting the 390 patent, the district

court held: (1) claims 1, 9, 12, 14, 18, 35, 36, 43, 67 and

77 invalid under §§102 and 103 in view of Sumitomo

and Smith; and (2) all claims invalid as indefinite under

§112.

The court found that Gore did not commit fraud be-

fore the Patent and Trademark Office (PTO), denied

Garlock’s request for attorney fees, and refrained from

deciding the infringement issue.

Issues

Did the district court err in: (1) its holdings of inval-

idity under §§102(a), 102(b), 103 and 112; (2) its find-

ing that Gore did not commit fraud on the PTO; or (3)

denying attorney fees.

OPINION

This hard fought and bitterly contested case in-

volved over two years of discovery, five weeks of trial, the

testimony of 35 witnesses (19 live, 16 by deposition),

and over 300 exhibits. The district court issued an ex-

haustive 37-page memorandum opinion reflective of a

careful, conscientious approach to the determination of

the many issues presented at trial.

The record on appeal consists of 2000 pages. The

parties’ briefs total 199 pages. In those briefs, counsel re-

peatedly accuse each other of numerous and serious

breaches of the duty of candor owed the court. Each

cites instances in which the testimony, the findings, and

the record are or are said to be quoted in part and out of

context. As a result, the usefulness and reliability of the

briefs as means of informing the court has been greatly

diminished if not destroyed, and careful, time-consum-

ing study of all exhibits and each page of the record has

been required.

Appellant cited 80 prior court opinions in its main

brief. Appellee’s brief totally ignores all but two of those

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citations, but adds 57 more. Appellant’s reply brief cites

126 prior court opinions, 34 earlier cited, 67 newly cited.

and 25 of those cited by appellee. Appellee’s reply brief

cites 17 prior court opinions, 4 earlier cited, 7 newly

cited, and 6 of the 147 cited by appeilant. Accordingly,

211 prior court opinions have been evaluated in relation

to the proof found in the record.

In light of the entire record and the applicable law.

we are convinced that Garlock failed to carry its burden

of proving all claims of the present patents invalid.

Standard of Review

Where, as here, dispositive legal error occurred in

interpretation and application of the patent statute, 35

U.S.C., the parties’ arguments relating to the salutory

injunction of Fed. Rule Civ. P. 52(a) cannot be control-

ling on all issues. Though findings that “rest on an erro-

neous view of the law may be set aside on that basis”,

Pullman-Standard v. Swint, 456 U.S. 273 (1982), it is

unnecessary here to set aside any probative fact found

by the district court or to engage in what would be an

inappropriate reweighing of the facts.

Among the legal errors extant in the record, each of

which is discussed below, are (1) the invention set forth

in each claim was not in each instance considered as a

whole; (2) 35 U.S.C. §102(b) was applied though crite-

ria for its application were not present; (3) the

references were not assessed in their entireties: (4) an

inherency theory under §§102 and 103 was inappropri-

ately applied; (5) that which only the inventor taught

was attributed to the prior art; (6) individual steps in

prior art processes dealing with materials distinct from

those with which the present inventions dealt were erro-

neously equated to steps in the claimed processes; (7)

objective evidence of nonobviousness was disregarded;

and (8) the function and application of §112 were mis-

construed.

i

A-8

Because it permeated so much of the district court’s

analysis, we note more fully its frequent restriction of its

consideration to 10% per second rate of stretching,

which it called the “thrust of the invention”. That ap-

proach is repeated throughout Garlock’s briefs, which

.efer repeatedly to the “thrust of the invention”, to “the

inventive concept”, and to the claims “shorn of their ex-

traneous limitations”. That facile focusing on the

“thrust”, “concept”, and “shorn” claims, resulted in

treating the claims at many points as though they read

differently from those actually allowed and in suit.

It is true that Dr. Gore emphasized rapid stretching,

for example, as well as the amount of stretch and other

process limitations, during prosecution of the applica-

tion for the 566 patent. Yet it is the claims that measure

and define the invention. Aro Manufacturing Co. v. Con-

vertible Top Replacement Co., 365 U.S. 336, 339 (1961);

Bowser, Inc. v. U.S., 388 F.2d 346, 349, 156 USPQ 406,

409 (Ct. Cl. 1967).

Each claimed invention must be considered as a

whole. 35 U.S.C. §103; Schenck, A.G. v. Nortron Corp.,

__ F.2d ___, 218 USPQ 698, 700 (Fed. Cir. 1983). In

determining obviousness, there is “no legally recogniz-

able or protected ‘essential’, ‘gist’, or ‘heart’ of the inven-

tion”. Aro, 365 U.S. at 345. A court’s restriction of a

claimed multi-step process to one step constitutes error,

whether done at the behest of a patentee relying on that

restriction to establish infringement by one who employs

only that one step in a process otherwise distinct, or at

the behest of an accused infringer relying on that re-

striction to establish invalidity by showing that one step

in a prior art process otherwise distinct.

(1) Invalidity

(a) ’566 Patent

(i) §102(a) and The 401 Machine

It is undisputed that the district court held only

claim 1 of the 566 patent to have been anticipated under

a

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§102(a) by operation of the 401 machine in the Gore

shop before Dr. Gore’s invention in late October 1969. It

did so on the deposition testimony of two former Gore

employees, documents, and drawings of the 401 ma-

chine.

In August, 1969, Gore offered to sell to Export Tool

Company (Export) tape “to be made” on the 401 ma-

chine. Tape made on the 401 machine was shipped to

Export on October 24, 1969. The trial judge found the

rolls on the 401 machine were, at least at some point in

time before October 1969, spaced less than four feet

apart and that the rate of stretch accomplished in operat-

ing that machine (admittedly operated in accord with

the description of machine operation in the ’915 patent)

must have been greater than 10% per second. The dis-

trict court credited testimony that Teflon 6-c, a highly

crystalline form of Teflon, was used because it was the

standard resin at the time, and that the tape was

stretched at a temperature above 35°C. Thus it cannot

be said that the record fails to support the district court’s

finding that the limitations of claim 1 were met by Gore’s

operation of the 401 machine before Dr. Gore’s asserted

“late October, 1969” date of invention. Though he was

working with the operation of the 401 machine, Dr. Gore

offered no proof that his invention date was before the

date of shipment to Export.

Gore, seeking a review here of the evidence, points —

to certain inadequacies as indicating a failure to meet

the required clear and convincing standard under

§102(a). At the time of trial, the district court, bound by

precedent then applicable, applied a preponderance of

the evidence test. Gore asserts, erroneously, that the

clearly erroneous standard does not therefore apply on

this appeal. Gore does not, however, point to any basis on

which the district court’s findings must be held to have

been clearly erroneous under the clear and convincing

standard. We are not at liberty, of course, to substitute

our own for the district court’s findings underlying its

conclusion that claim 1 is invalid.

a

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Gore’s operation of the 401 machine must thus be

viewed as a consistent, reproducible use of Dr. Gore’s in-

vention as set forth in claim 1, and it is therefore irrele-

vant that those using the invention may not have appre-

ciated the results. General Electric Co. v. Jewel

Incandescent Lamp Co., 326 U.S. 242, 248, 67 USPQ

155, 157-58 (1945). Were that alone enough to prevent

anticipation, it would be possible to obtain a patent for an

old and unchanged process. Ansonia Brass & Copper

Co. v. Electric Supply Co., 144 U.S. 11, 18 (1892); see,

H.K. Regar & Sons, Inc. v. Scott & Williams, Inc., 63

F.2d 229, 231, 17 USPQ 81, 83 (2d Cir. 1933).

The nonsecret use of a claimed process in the usual

course of producing articles for commercial purposes is a

public use. Electric Storage Battery Co. v. Shimadzu,

307 U.S. 5, 20, 41 USPQ 155, 161 (1939), and there was

no evidence that any different process was used to

produce the articles shipped to Export.

Thus it cannot be said that the district court erred in

determining that the invention set forth in claim 1 of

566 patent was known or used by others under §102(a),

as evidenced by Gore’s operation of the 401 machine be-

fore Dr. Gore’s asserted date of that invention.

In view of our affirmance of the judgment reached

on claim 1 under 102(a), we need not discuss other as-

serted grounds of invalidity of claim 1. There was, how-

ever, no evidence whatever that the inventions set forth

in other claims, of either the ‘566 or the '390 patent,

were known or used by others as a result of Gore’s opera-

tion of the 401 machine before late October, 1969.

(ii) §102(b) and the Cropper Machine

In 1966 John W. Cropper (Cropper) of New Zealand

developed and constructed a machine for producing

stretched and unstretched PTFE thread seal tape. In

1967, Cropper sent a letter to a company in Massachu-

setts, offering to sell his machine, describing its opera-

tion, and enclosing a photo. Nothing came of that letter.

, arn

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There is no evidence and no finding that the present in-

ventions thereby became known or used in this country.

In 1968, Cropper sold his machine to Budd, which

at some point thereafter used it to produce and sell

PTFE thread seal tape. The sales agreement between

Cropper and Budd provided:

ARTICLE “E” — PROTECTION OF TRADE

SECRETS Etc.

1. BUDD agrees that while this agreement is in

force it will not reproduce any copies of the said ap-

paratus without the express written permission of

Cropper nor will it divulge to any person or persons

other than its own employees or employees of its af-

filiated corporations any of the said known-how or

any details whatsoever relating to the apparatus.

2. BUDD agrees to take all proper steps to en-

sure that its employees observe the terms of Article

“E” 1 and further agrees that whenever it is proper

to do so it will take legal action in a Court of compe-

tent jurisdiction to enforce any one or more of the

legal or equitable remedies available to a trade se-

cret plaintiff.

Budd told its employees the Cropper machine was confi-

dential and required them to sign confidentiality agree-

ments. Budd otherwise treated the Cropper machine like

its other manufacturing equipment.

A former Budd employee said Budd made no effort

to keep the secret. That Budd did not keep the machine

hidden from employees legally bound to keep their

knowledge confidential does not evidence a failure to

maintain the secret. Similarly, that du Pont employees

were shown the machine to see if they could help in-

crease its speed does not itself establish a breach of the

secrecy agreement. There is no evidence of when tnat

viewing occurred. There is no evidence that a viewer of

the machine could thereby learn anything of which

process, among all possible processes, the machine is

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being used to practice. As Cropper testified, looking at

the machine in operation does not reveal whether it is

stretching, and if so, at what speed. Nor does looking

disclose whether the crystallinity and temperature ele-

ments of the invention set forth in the claims are in-

volved. There is no evidence that Budd’s secret use of

the Cropper machine made knowledge of the claimed

process accessible to the public.

The district court held all claims of the 566 patent

invalid under 102(b), supra, note 3, because “the inven-

tion” was “in public use [and] on sale” by Budd more

than one year before Gore’s application for patent. Be-

yond a failure to consider each of the claims indepen-

dently, 35 U.S.C. §282; Altoona Publix Theatres, Inc. v.

American Tri-Ergon Corp., 294 U.S. 477, 487 (1935),

and a failure of proof that the claimed inventions as a

whole were practiced by Budd before the critical May 21,

1969 date, it was error to hold that Budd’s activity with

the Cropper machine, as above indicated, was a “public”

use of the processes claimed in the ’566 patent, that ac-

tivity having been secret, not public.

Assuming, arguendo, that Budd sold tape produced

on the Cropper machine before October 1969, and that

that tape was made by a process set forth in a claim of

the 566 patent, the issue under §102(b) is whether that

sale would defeat Dr. Gore’s right to a patent on the proc-

ess inventions set forth in the claims.

If Budd offered and sold anything, it was only tape,

not whatever process was used in producing it. Neither

party contends, and there was no evidence, that the pub-

lic could learn the claimed process by examining the

tape. If Budd and Cropper commercialized the tape, that

could result in a forfeiture of a patent granted them for

their process on an application filed by them more than a

year later. D.L. Auld Co. v. Chroma Graphics Corp., No.

83-585, slip op. at 5-6 (Fed. Cir. Aug. 15, 1983); see

Metalizing Engineering Co. v. Kenyon Bearing & Auto

Parts Co., 153 F.2d 516, 68 USPQ 54 (2d Cir. 1946).

—"

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There is no reason or statutory basis, however, on which

Budd’s and Cropper’s secret commercialization of a

process, if established, could be held a bar to the grant of

a patent to Gore on that process.

Early public disclosure is a linchpin of the patent

system. As between a prior inventor who benefits from a

process by selling its product but suppresses, conceals,

or otherwise keeps the process from the public, and a

later inventor who promptly files a patent application

from which the public will gain a disclosure of the proc-

ess, the law favors the latter. See Horwath v. Lee, 564

F.2d 948, 195 USPQ 701 (CCPA 1977). The district

court therefore erred as a matter of law in applying the

statute and in its determination that Budd’s secret use of

the Cropper machine and sale of tape rendered all proc-

ess Claims of the 566 patent invalid under §102(b).

(iii) §103

In considering claims 1, 3, 17, and 19 of the ’566

patent, the district court recognized that analysis of the

obviousness isue under §103 requires determination ot

the scope and content of the prior art, the differences be-

tween the prior art and the claims at issue, and the level

of ordinary skill in the pertinent art. Graham v. John

Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).

In its consideration of the prior art, however, the

district court erred in not taking into account the import

of the markedly different behavior of PTFE from that of

conventional thermoplastic polymers clearly established

and undisputed on the record, and in thus disregarding

the unpredictability and unique nature of the unsintered

PTFE to which the claimed inventions relate, In re

Whiton, 420 F.2d 1082, 164 USPQ 455 (CCPA 1970); in

considering claims in less than their entireties, Schenck,

supra; and in considering the references in less than

their entireties, i.e., in disregarding disclosures in the

references that diverge from and teach away from the in-

vention at hand. In re Kuderna, 426 F.2d 385, 165

USPQ 575 (CCPA 1970).

A-14

Invalidity of claim 1 under §102(a) having been de-

termined, it is unnecessary to discuss in detail the appli-

cability of §103 to that claim. If claim 1 had not been

held anticipated under §102(a) in light of operation of

the 401 machine, it is clear from the discussion here that

claim 1 could not properly have been held invalid under

§103.

Claim 3 depends from and thus incorporates claim 1

but specifies a rate of stretch of 100% per second. Clain

17 also depends from claim 1 and specifies an amount of

stretch of about twice the original length. Claim 19 de-

pends from claim 17 but specifies an amount of stretch

of about five times the original length.

U.S. patent 2,983,961 to Titterton, Volume 13 of the

Encyclopedia of Polymer Science and Technology

(1970), the Sumitomo patent, and witnesses for both

parties, establish that teachings related to conventional

thermoplastic polymers are inapplicable to PTFE.

Articles by Dogliotti and Yelland, Effect of Strain

Rate on the Viscoelastic Properties of High Polymeric

Fibrous Materials, 4 High Speed Testing 211 (1964)

and Robinson and Graham, Methods of Characteriza-

tion of Polymeric Materials by High Speed Testing Tech-

niques, 5 High Speed Testing 261 (1965), teach that

conventional plastics and sintered PTFE can be

stretched further if stretched slowly. Dr. Gore demon-

strated at trial and at oral argument before us that an at-

tempt to stretch highly crystalline, unsintered PTFE

slowly results in breakage, and that rapid stretching pro-

duces a greatly lengthened rod of soft, flexible material.

The ’566 patent contains an example of stretching

an article to 16 times its length. Smith and the ’915 pat-

ent teach that PTFE could not be stretched beyond four

times its length without heating it to above its crystalline

melt temperature, a step avoided by Dr. Gore and as set

forth in the claims.

Sumitomo teaches that there is a length limit to

stretching unsintered PTFE, and does not suggest what

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that limit might be. Markwood, U.S. patent 3,208,100 to

Nash (Nash), and U.S. patent 2,823,421 to Scarlett

(Scarlett) teach that non-PTFE thermoplastics can be

stretched rapidly and to extended lengths, and also

teach reduction, elimination, or avoidance of

crystallinity before stretching.

The disclosure in the Smith and ’915 patents that a

PTFE article may be stretched to as much as four times

its length encompasses the step of stretching to twice its

length set forth in claim 17 and establishes that such

step would have been obvious.

Claims 3 and 19 must be considered individually

and separately. 35 U.S.C. §282. Nowhere, in any of the

references, is it taught or suggested that highly crystal-

line, unsintered PTFE could be stretched at a rate of

about 100% per second as required by asserted claim 3.

Nor is it anywhere suggested that by rapid stretching a

PTFE article be stretched to more than five times its

original length as required by asserted claim 19. On the

contrary, the art as a whole teaches the other way.

In concluding that obviousness was established by

the teachings in various pairs of references, the district

court lost sight of the principle that there must have

been something present in those teachings to suggest to

one skilled in the art that the claimed invention before

the court would have been obvious. In re Bergel, 292

F.2d 955, 956-57, 130 USPQ 206, 208 (CCPA 1961); In

re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 244

(CCPA 1969).

The court’s pairing of Sumitomo and Markwood

disregarded, as above indicated, the undisputed evi-

dence that the unsintered PTFE of Sumitomo does not

respond to the conventional plastics processing of

Markwood and the art recognition of that fact. Whiton,

supra, 420 F.2d at 1085, 164 USPQ at 457.

In evaluating claim 19, for example, the pairing

disregarded Sumitomo’s limited length of stretch teach-

ing. In evaluating claim 3, the court recognized that

A-16

Sumitomo made no mention of rate of stretch. Looking

to Markwood to supply that teaching disregarded not

only the conventional plastics-unsintered PTFE distinc-

tion but also the clear divergence of Markwood’s teach-

ing that crystallinity must be reduced or avoided from

the presence of “highly crystalline” in all claims of the

‘566 patent.

Similarly, and for many of the same reasons, the

pairing of Markwood’s and Smith’s teachings was an in-

appropriate basis for concluding that the processes set

forth in claims 3 and 19 would have been obvious. As

above indicated, Markwood’s rapid stretching of conven-

tional plastic polypropylene with reduced crystallinity

would not suggest rapid stretching of highly crystalline

PTFE, in light of teachings in the art that PTFE should

be stretched slowly. The Smith patent is owned by du

Pont, where Dr. Gore’s process invention was considered

to have produced a “remarkable new material”. That cir-

cumstance is not surprising, for Smith, though dealing

with PTFE, says not a word about any rate of stretch.

Lastly, the pairing of Sumitomo and the ’915 patent

suffers from the same shortcomings. The pairing re-

sulted from a hypothetical set forth in Garlock’s post trial

brief, and was based on no testimony or other evidence

in the record. In respect of claim 3, neither reference

mentions rate of stretch or suggests its importance. In

respect of claim 19 both references point away from the

claimed invention in their limited length-of-stretch

teachings. The ’915 patent states: “the 65 percent ex-

panded material could be expanded a second time for an

additional 65 percent expansion or a total length in-

crease ratio of 1:2.72 [less than three times the original

length]. However, great care was necessary to obtain a

uniformly expanded material at these very great expan-

sion ratios.” Thus the ’915 patent suggests that the

amount of stretch of 500% set forth in claim 19 (more

than five times the original length) is not possible.

or nancial

A-17

As indicated, Sumitomo and Smith are totally silent

respecting the rate of stretch, and there is simply no

teaching in the art that would suggest to one of ordinary

skill that Markwood’s fast stretching of other thermo-

plastics could or should be employed in the process of

treating PTFE taught by either Sumitomo or Smith. In-

deed, Smith not only says nothing about rate of stretch,

its preferred teaching is away from other elements of the

inventions set forth in claims 3 and 19 Smith discloses

that stretching should be done after the PTFE is heated

above its crystalline melting point and with decreased

crystallinity. Smith teaches:

Below about 300°C it is not possible to draw more

than about 4X [times] and while such draw ratios

can be attained around 300°C and below the poly-

mer’s crystalline melting point with resultant onen-

tation and improved properties it is preferred to use

temperatures at or above the polymer’s crystalline

melting point. (Emphasis added).

Nash teaches that the film should be plasticized,

i.e., made more viscous, before stretching. Contrary to

that teaching, Dr. Gore did not reduce crystallinity be-

fore increasing the rate of stretch, but maintained the

unsintered PTFE “highly crystalline” while stretching at

a 100% per second rate and to more than five times, as

set forth respectively in claims 3 and 19.

On the entire record and in view of all the

references, each in its entirety, it is clear that a person of

ordinary skill confronted with a PTFE tape breakage

problem would have either slowed the rate of stretching

or increased the temperature to decrease the

crystallinity. Dr. Gore did neither. He proceeded con-

trary to the accepted wisdom of the prior art by dramati-

cally increasing the rate and length of stretch and re-

taining crystallinity. That fact is strong evidence of

nonobviousness. United States v. Adams, 383 U.S. 39

(1966).

iis

A-18

Having learned the details of Dr. Gore’s invention,

the district court found it within the skill of the art to

stretch other material rapidly (Markwood); to stretch

PTFE to increase porosity (Sumitomo); and to stretch at

high temperature (Smith). The result is that the claims

were used as a frame, and individual, naked parts of sep-

arate prior art references were employed as a mosaic to

recreate a facsimile of the claimed invention. At no point

did the district court, nor does Garlock, explain why that

mosaic would have been obvious to one skilled in the art

in 1969, or what there was in the prior art that would

have caused those skilled in the art to disregard the

teachings there found against making just such a mo-

saic. On the contrary, the references and _ the

uncontested testimony, as above indicated, established

that PTFE is sui generis. It is not surprising, therefore,

that, unlike the situation in Stratoflex, Inc. v. Aeroquip

Corp., F.2d , 218 USPQ 871 (Fed. Cir. 1983),

there was no testimony and no finding that one skilled in

the art would transfer conventional thermoplastic

processes to those for unsintered PTFE, or would have

been able to predict what would happen if they did.

To imbue one of ordinary skill in the art with know]-

edge of the invention in suit, when no prior art reference

or references of record convey or suggest that knowl-

edge, is to fall victim to the insidious effect of a hindsight

syndrome wherein that which only the inventor taught

is used against its teacher.

It is difficult but necessary that the decisionmaker

forget what he or she has been taught at trial about the

claimed invention and cast the mind back to the time the

invention was made (often as here many years), to oc-

cupy the mind of one skilled in the art who is presented

only with the references, and who is normally guided by

the then-accepted wisdom in the art. Had that been here

done the inventions set forth in the claims 3 and 19 of

the 566 patent could only have been held non-obvious to

those skilled in the art at the time those claimed inven-

tions were made.

A-19

Error in visualizing the burden of proof on obvious-

ness may have contributed to the court’s application

here of the prior art. Adopting the phrase from earlier

precedents, the court said “the presumption [of validity]

is weakened greatly where the Patent Office has failed to

consider pertinent prior art”. That is not the law of estab-

lished precedent in this court. SSIH Equipment S.A. v.

ITC, ___ F.2d ___, 218 USPQ 678, 687 (Fed. Cir.

1983); Solder Removal Co. v. ITC, 582 F.2d 628, 633,

199 USPQ 129, 133, n. 9 (CCPA 1978). The presump-

tion has no separate evidentiary value. It cautions the

decisionmaker against a rush to conclude invalidity.

Submission of additional art that is merely “pertinent”

does not dispel that caution. It is difficult to imagine a

patent law suit in which an accused infringer is unable

to add some new “pertinent” art. The inescapable bur-

den of persuasion on one who would prove invalidity,

however, remains through the trial. 35 U.S.C. §282.

The burden of proving invalidity may of course be

facilitated by prior art that is more pertinent than that

considered by the PTO. That did not happen here. In the

present case, Sumitomo, Smith, and the ’915 patent

were among references considered by the PTO. Other

references referred to as not considered were merely cu-

mulative, disclosing nothing not disclosed in references

that were considered by the PTO. The Canadian coun-

terpart of Nash was considered by the PTO. The relevant

disclosures of Markwood appear in Sandiford patent

3,544,671 and Paratheon patent 3,637,906, both consid-

ered by the PTO. The Russian Author’s Certificate

240,997, assuming its status as prior art and whatever

the material with which it dealt, contributed nothing be-

yond the teachings of the 915 patent considered by the

PTO.

As discussed more fully below, the district court

erred in specifically declining to consider the objective

evidence of nonobviousness. In re Sernaker, 702 F.2d

989, 996, 217 USPQ 1, 7 (Fed. Cir. 1983). That evidence

A-20

can often serve as insurance against the insidious attrac-

tion of the siren hindsight when confronted with a diffi-

cult task of evaluating the prior art. Though the prior art

evidence here pointed more in the direction of

nonobviousness than obviousness, the objective evi-

dence may tend, as it did in Sernaker, supra, to reassure

the decisionmaker.

In sum, the district court erred as a matter of law on

this record in concluding that Garlock had met its bur-

den of proving that the inventions of claims 3 and 19 of

the 566 patent would have been obvious.

(b) ’390 patent

(i) §102

The district court found product claims 1, 9, 12, 14,

18 and 43 inherently anticipated because it found that

the microstructure of nodes interconnected by fibrils is

an inherent characteristic of paste-extruded PTFE prod-

ucts resulting from the process disclosed in Smith. The

court found the first four of those claims and claim 43,

plus claims 35, 36, 67 and 77 inherently anticipated be-

cause high strength PTFE products are inherent in the

examples of Sumitomo.

The teachings of Smith include neither a disclosure

nor a suggestion of “porous” products having a

“microstructure characterized by nodes interconnected

by fibrils” as required by the claims found to have been

anticipated by Smith.

The teachings of Sumitomo do not include a disclo-

sure of products having “a matrix tensile strength. . .

above about 7,300 psi” as required by the claims found

to have been anticipated by Sumitomo.

Anticipation requires the disclosure in a single prior

art reference of each element of the claim under consid-

eration. Soundscriber Corp. v. U.S., 360 F.2d 954, 960,

148 USPQ 298, 301, adopted, 149 USPQ 640 (Ct. Cl.

1966). Neither Smith nor Sumitomo disclose an inven-

tion set forth in any claim of the °390 patent.

A-21

The incongruity in findings that the different

processes of Smith and Sumitomo each inherently pro-

duced identical products is striking.

Garlock attempted with expert testimony to over-

come the prior art shortcomings as proof of anticipation.

Gore rebutted with its own expert testimony. It is unnec-

essary, however, to resolve apparent conflicts in the di-

vergent testimony, much if not all of which took the

form of pure unsupported assertion. No inter partes tests

in which the Smith and Sumitomo processes were con-

ducted are of record. No products of those processes

were placed in evidence, and there was, of course, no

analysis of any such evidentiary products.

Nor is it necessary to evaluate the inappropriate dis-

paragement in Garlock’s brief of Dr. Sperati as a “friend”

of Gore.

Given the unique nature of unsintered PTFE, we

are not persuaded that the “effect” of the processes dis-

closed in Smith and Sumitomo, an “effect” undisclosed

in those patents, would be always to inherently produce

or be seen always to produce products meeting all of the

claim limitations. Anticipation of inventions set forth in

product claims cannot be predicated on mere conjecture

respecting the characteristics of products that might re-

sult from the practice of processes disclosed in

references. In re Felton, 484 F.2d 495, 500. 179 USPQ

295, 298 (CCPA 1973). It is clear that the teachings of

neither Smith nor Sumitomo place the products claimed

in the ’390 patent in possession of the public.

The teachings of Smith and Sumitomo are so

unacceptably vague concerning characteristics of prod-

ucts produced by their respective processes as not to

support an anticipation rejection. That fact is confirmed

by the PTO’s having fully considered those references

and by its having issued the ’390 patent over them.

Garlock’s assertion that it employs a process covered

by the Smith patent, if true, is irrelevant. The ’390 pat-

ent was allowed over Smith as a reference. Assuming

A

A-22

Smith a dominating patent, the rule of law is clear that

an accused infringer’s employment of the process of a

dominating patent does not render that employment an

anticipation of an invention described and claimed in an

improvement patent. As indicated, there is no present

record basis for finding that the Smith process in itself

necessarily and inherently results in the products, each

considered in its entirety, in the claims of the ’390 pat-

ent. The testimony of Garlock’s expert about ex parte

tests, the records of which he destroyed before trial, can-

not serve as such a basis. The effusive praise of Dr.

Gore’s claimed products by the owner of the Smith pat-

ented process would appear, on the contrary, to confirm

the action of the PTO in issuing the ’390 patent.

Garlock has not met its burden of showing that

claims 1, 9, 12, 14, 18, and 43 are anticipated by Smith

or that claims 1, 9, 12, 14, 35, 36, 43, 67, and 77 are an-

ticipated by Sumitomo.

(ii) §103

The scope and content of the prior art and level of

ordinary skill, discussed above in relation to the '566 pat-

ent, would be the same for the °390 patent. The district

court did not, however, nor does Garlock, apply the Gra-

ham criteria, supra, to the °390 claims, apparently as-

suming that the claimed products, having been found

inherent in the processes of Sumitomo and Smith,

would have been obvious in view of those references. If

so, that was error. Inherency and obviousness are dis-

tinct concepts. In re Spormann, 363 F.2d 444, 448, 150

USPQ 449, 452 (CCPA 1966).

In discussing inherency the district court did recog-

nize differences between Smith's disclosure and the in-

ventions set forth in claims 1, 9, 12, 14, 18, and 43, i-e.,

the absence from Smith of a description of the products

of Smith’s process as porous and the absence from

Smith of a disclosure that those products have a

microstructure characterized by nedes interconnected

by fibrils.

A-23

Similarly, a difference between Sumitomo’'s disclo-

sure and the inventions set forth in claims 1, 9, 12. 14.

35, 36, 43, 67, and 77 was recognized in the absence

from Sumitomo of a quantification of the matrix tensile

strengths of the products of Sumitomo’s process. The

district court also discussed differences between the de-

pendent claims and the prior art. Because we conclude

that the independent claims of the ’390 patent are pat-

entable over the art of record. we need not discuss the

dependent claims.

Having determined that the invention would have

been obvious in view of the process of either Smith or

Sumitomo, the district court did not discuss the strong

showing of objective evidence of nonobviousness here

present, saying with respect to one part of such evi-

dence, “no amount of commercial success can save it.”

That approach was error. All evidence bearing on the is-

sue of obviousness, as with any other issue raised in the

conduct of the judicial process, must be considered and

evaluated before the required legal conclusion is

reached. Stratoflex, supra, 218 USPQ at 879.

The objective evidence of nonooviousness, i.e.. the

“indicia” of Graham, supra, may ir. a given case be enti-

tled to more weight or less, depencing on its nature and

its relationship to the merits of the invention. It may be

the most pertinent, probative, and revealing evidence

available to aid in reaching a conclusion on the

obvious/nonobvious issue. It should when present al-

ways be considered as an integral part of the analysis.

Gore’s fabric laminates, for example, as set forth in

claims 36 and 77, satisfied a long felt need for a material

naving the contradictory properties of being simulta-

neously breathable (allowing water vapor or perspiration

to pass) and waterproof. The record establishes that

such a material had long been sought by makers of rain-

wear and outerwear, and by the U.S. Army as well. That

Gore’s fabric laminates filled that need is attested by the

rise in their annual dollar sales from zero to seven mil-

lion in the first five years of their availability.

A-24

Gore’s PTFE tubes for replacement of human arte-

ries and veins, also satisfied a long felt need. The

uncontradicted evidence establishes that Gore’s PTFE

tubes hold blood without leaking, need not be pre-clotted

with the patient’s blood, are chemically inert, and, being

breathable, are less likely to cause an air embolism. The

value and uniqueness of those four properties make

Gore’s PTFE tubes, as described in unchallenged testi-

mony, “the most important synthetic material presently

existing” in vascular surgery, and, along with other evi-

dence in the record, reflect the intended working of the

patent system.

As discussed above, current annual sales of over

sixty million dollars are attributable to the merits of the

products claimed in the ’390 patent. Considering the

long felt need for those products and the obvious com-

mercial advantage to be gained by meeting that need, it

is reasonable to conclude that the claimed products of

the ’°390 patent would not have been obvious to persons

of ordinary skill in the art at the time the claimed inven-

tions were made.

As above indicated, the praise which greeted the

products claimed in the ’390 patent from PTFE suppli-

ers, including the owner of the Smith patent, is further

objective evidence of nonobviousness.

Garlock’s appeal argument that the 390 claims are

invalid because the recited minimum matrix tensile

strengths are not “critical” is without merit. A claim to a

new product is not legally required to include critical

limitations. In re Miller, 441 F.2d 689, 696, 169 USPQ

597, 602 (CPA 1971). The ’390 claims are not drawn to

optimization of ingredients or ranges within broad prior

art teachings, but to new porous PTFE products of par-

ticular characteristics.

In sum, and in view of the difficulty of working with

unsintered PTFE and its unpredictable response to var-

ious processing techniques, the vagueness of Smith and

Sumitomo concerning the products produced by those

A-25

processes, the filling of at least two long felt needs and

the commercial success described above, we conclude

that the inventions set forth in claims 1, 9, 12, 14, 18, 35,

36, 43, 67, and 77 of the ’390 patent would not have

been obvious to those skilled in the art at the time those

inventions were made.

(c) §112 and the ’566 and ’390 patents

The patents in suit resulted from a single applica-

tion and thus have substantially identical specifications.

The holding of invalidity on the basis of §112 is common

to both patents.

The district court found that the patents did not dis-

close sufficient information to enable a person of ordi-

nary skill in the art to make and use the invention, as

required by §112, first paragraph, and that certain claim

language was indefinite, presumably in light of §112,

second paragraph, because: (1) there was no definition

in the specification of “stretch rate”, different formulae

for computing stretch rate having been developed and

presented at trial; (2) there was no way taught in the

specification to calculate the minimum rate of stretch

above 35°C; (3) the phrase “matrix tensile strength” is

indefinite; and (4) the phrase “specific gravity of the

solid polymer” is indefinite.

The findings rest on a misinterpretation of §112, its

function and purpose. The district court considered

whether certain terms would have been enabling to the

public and looked to formula developments and publica-

tions occurring well after Dr. Gore’s filing date in reach-

ing its conclusions under §112. Patents, however, are

written to enable those skilled in the art to practice the

invention, not the public, In re Storrs, 245 F.2d 474,

478, 114 USPQ 293, 296-97 (CCPA 1957), and §112

speaks as of the application filing date, not as of the time

of trial. In re Mott, 539 F.2d 1291, 1296, 190 USPQ 536,

541 (CCPA 1976). There was no evidence and no find-

ing that those skilled in the art would have found the

specification non-enabling or the claim language indefi-

A-26

nite on May 21, 1970, when the application which re-

sulted in issuance of Dr. Gore’s patents was filed. In-

deed, the expert quoted by the district court and whose

testimony was primarily relied upon respecting formu-

lae, was still in school at that time.

There is uncontradicted evidence in the record that

at the time the application was filed “stretch rate” meant

to those skilled in the art the percent of stretch divided

by the time of stretching, and that the latter was measur-

able, for example, with a stopwatch. Concern for the ab-

sence from the specification of a formula for calculating

stretch rate is therefore misplaced, and the post-filing

date development of varying formula, including Dr.

Gore’s later addition of a formula in his corresponding

Japanese patent, is irrelevant.

Section 112 requires that the inventor set forth the

best mode of practicing the invention known to him at

the time the application was filed. Calculating stretch

rate at that time was accomplished by actually measur-

ing the time required to stretch the PTFE material. That

was the only mode then used by the inventor, and it

worked. The record establishes that calculation by that

mode would have been employed by those of ordinary

skill in the art at the time the application was filed. As

indicated, Dr. Gore’s disclosure must be examined for

§112 compliance in light of knowledge extant in the art

on his application filing date.

The district court, though discussing enablement,

spoke also of indefiniteness of “stretch rate”, a matter

having to do with §112, second paragraph, and relevant

in assessment of infringement. The use of “stretching

. at a rate exceeding about 10% per second” in the

claims is not indefinite. Infringement is clearly

assessable through use of a stopwatch. No witness said

that could not be done. As above indicated, subsequently

developed and therefore irrelevant formulae cannot be

used to render non-enabling or indefinite that which

was enabling and definite at the time the application was

filed.

A-27

Similarly, absence from the specification of a

method for calculating the minimum rate of stretch

above 35°C does not render the specification non-en-

abling. The specification discloses that “|t]he lower limit

of expansion rates interact with temperature in a

roughly logarithmic fashion, being much higher at

higher temperatures.” Calculation of minimum stretch

rate above 35°C is nowhere in the claims, and it is the

claimed invention for which enablement is required.

The claims require stretching at a rate greater than 10%

per second at temperatures between 35°C and the crys-

talline melt point of unsintered PTFE. That the mini-

mum rate of stretch may increase with temperature does

not render non-enabling Dr. Gore’s specification, par-

ticularly in the absence of convincing evidence that

those skilled in the art would have found it non-enabling

at the time the application was filed.

The district court invalidated both patents for in-

definiteness because of its view that some “trial and er-

ror” would be needed to determine the “lower limits” of

stretch rate above 10% per second at various tempera-

tures above 35°C. That was error. Assuming some ex-

perimentation were needed, a patent is not invalid be-

cause of a need for experimentation. Minerals

Separation, Ltd. v. Hyde, 242 U.S. 261, 270-71 (1916).

A patent is invalid only when those skilled in the art are

required to engage in undue experimentation to practice

the invention. In re Angstadt, 537 F.2d 498, 503-04, 190

USPQ 214, 218 (CCPA 1976). There was no evidence

and the court made no finding that undue experimenta-

tion was required.

Moreover, the finding here rested on confusion of

the role of the specification with that of the claims. The

court found that the specification’s failure to state the

lower limit of stretch rate (albeit above 10% per second)

at each degree of temperature above 35°C (a require-

ment for at least hundreds of entries in the specification )

did not “distinguish processes performed above the

A-28

‘lower limit’ from those performed below the ‘lower

limit’”. The claims of the ’390 patent say nothing of

processes and lower limits. Distinguishing what in-

fringes from what doesn’t is the role of the claims, not of

the specification. It is clear that the specification is en-

abling, In re Storrs, supra, and that the claims of both

patents are precise within the requirements of the law.

In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA

1971).

The finding that “matrix tensile strength” is indefi-

nite, like the other findings under §112, appears to rest

on a confusion concerning the roles of the claims and

the specification. While finding “matrix tensile

strength” in the claims indefinite, the district court at

the same time recognized that the specification itself

disclosed how to compute matrix tensile strength, in

stating “to compute matrix tensile strength of a porous

specimen, one divides the maximum force required to

break the sample by the cross sectional area of the po-

rous sample, and then multiplies this quantity by the ra-

tio of the specific gravity of the solid polymer divided by

the specific gravity of the porous specimen.” Further,

the specification provided the actual matrix tensile

strength in several examples. It is well settled that a pat-

ent applicant may be his own lexicographer. In light of

the disclosure of its calculation in the specification, we

cannot agree that “matrix tensile strength” is either in-

definite or non-enabling.

Nor does absence from the specification of a defini-

tion for “specific gravity of the solid polymer”, a part of

the computation of matrix tensile strength, render that

computation indefinite. It is undisputed that in the

many examples in the application the specific gravity

values used for unsintered and sintered PTFE were 2.3

and 2.2, respectively. There was no testimony that those

values were not known to persons of ordinary skill in the

art or could not be calculated or measured. There is sim-

ply no support for the conclusion that “specific gravity of

A-29

the solid polymer” is indefinite or that absence of its defi-

nition renders the specification non-enabling. See In re

Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).

We conclude that Garlock has failed to prove that at

the time the application was filed, the specification was

not enabling or that the claims were indefinite within

the meaning of §112.

(2) Fraud

Fraud must be shown by clear and convincing evi-

dence. Norton v. Curtiss, 433 F.2d 779, 797, 167 USPQ

532, 546-47 (CCPA 1970).

The state of mind of the one making the repre-

sentations is probably the most important of the ele-

ments to be considered in determining the exist-

ence of “fraud.” . . . Good faith and subjective

intent, while they are to be considered, should not

necessarily be made controlling. Under ordinary

circumstances, the fact of misrepresentation cou-

pled with proof that the party making it had knowl-

edge of its falsity is enough to warrant drawing the

inference that there was a fraudulent intent. Where

public policy demands a complete and accurate dis-

closure it may suffice to show nothing more than

that the misrepresentations were made in an atmos-

phere of gross negligence as to their truth. [empha-

sis in original].

Norton, 433 F.2d at 795-96; 167 USPQ at 545; see,

Miller, Fraud on the PTO, 58 JPOS 271 (1976).

Garlock alleges fraud in Gore’s representations that

stretching PTFE tape at a rate greater than 10% per sec-

ond was novel and that it produces a physical phenom-

enon. The district court found the evidence insufficient

to establish that Gore had a specific intent to defraud the

PTO. No basis exists for our overturning that finding.

Accordingly, we agree with the district court that

Garlock has failed to sustain its heavy burden of proving,

A-30

by clear and convincing evidence, sufficient facts from

which fraudulent intent can be inferred.

Garlock points to a September 4, 1975 Gore affidavit

filed in the PTO that stated:

2. Prior to my invention disclosed in the cap-

tioned patent application, during production of ex-

panded PTFE products by W. L. Gore & Associates,

Inc., the rate of stretching was neither measured

nor controlled and to my knowledge did not involve

stretching of unsintered PTFE at a rate exceeding

about 10% per second. (emphasis in original).

No finding of the district court and no evidence of

record establishes that that statement was made in reck-

less disregard of facts from which an intent to defraud

may be inferred.

The district court’s finding in !982 that the 401 ma-

chine inherently stretched tape at some time in 1969 at a

rate more than 10% per second, does not establish that

Dr. Gore was aware of that fact in 1975, nor does it make

untrue his statement that to his knowledge that had not

been the rate of stretch employed. Nor does the district

court’s finding conflict with Dr. Gore’s statement that

the rate of stretching was neither measured nor con-

trolled in the Gore shop before his invention of the

claimed process as a whole.

Nor does the evidence of isolated statements sup-

port Garlock’s contention that Dr. Gore attempted to

convince the PTO that a physical phenomenon always

existed in which stretching at a rate greater than 10%

per second always produced a matrix tensile strength

greater than 7300 psi. On the contrary, Dr. Gore set

forth in his specification examples indicating that some

samples broke, ruptured, or disintegrated.

(3) Attorney’s Fees

The district -ourt did not abuse its discretion in

denying Garlock its request for attorney fees.

2

5

A-31

Infringement

Where, as here, an appellate court reverses a hold-

ing of invalidity, and remand is ordered for trial of the

factual issue of infringement, an inefficient use of judi-

cial resources results if the second judgment is ap-

pealed. The better practice would therefore be for the

district court to decide both the validity and infringe-

ment issues when both are contested at the trial, en-

abling the conduct of a single appeal and disposition of

the entire case in a single appellate opinion.

Resolution of the infringement issue at trial may

also overlap with resolution of the validity issue, where,

for example, the claimed invention was or was not

copied by the validity challenger, or the challenger sub-

stituted the claimed invention for freely available prior

art processes or products, Eibel, supra, 261 U.S. at 56, or

an assertion of nonenablement may conflict with the

ease with which the accused infringer may be shown to

have practiced the invention as taught in the patent.

Eibel, supra, 261 U.S. at 65-66.

The district court having declined to decide the in-

fringement issue, Gore suggests that the record here is

sufficient to warrant our deciding it now. With reluc-

tance in view of the length and bitter nature of the

present litigation, we decline the suggestion. In so do-

ing, we imply nothing of our view on the issue. Nor do

we intend any implication thai the district court could

not itself determine the infringement issue on the

present record. Infringement of particular claims of two

patents was asserted. None of those claims has been fi-

nally held invalid. Assuming their continued assertion,

infringement must be decided with respect to each as-

serted claim as a separate entity. Altoona, supra, 294

U.S. at 487. Those factual determinations should be

made in the first instance by the district court.

Decision

The holdings of invalidity of claim 1 of the ’566 pat-

ent under § 10%: a) and of claim 17 of the ‘566 patent un-

A-32

der §103, the determination that Gore did not commit

fraud on the PTO, and the denial of attorney fees, are af-

firmed; the holdings that all claims of the 566 patent are

invalid under §102(b), that claims 3 and 19 of the ’566

patent are invalid under §103, and that all claims of the

566 patent are invalid under §112, are reversed. The

holdings that claims 1, 9, 12, 14, 18, 35, 36, 43, 67, and

77 of the ’°390 patent are invalid under §§102 and 103,

and that all claims of the 390 patent are invalid under

§112, are reversed. The case is remanded for determina-

tion of the infringement issue.

AFFIRMED IN PART, REVERSED IN PART,

AND REMANDED

A-33

Appendix

Claims of the ’566 patent discussed at trial:

1. A process for the production of a porous

article of manufacture of a polymer of tetra-

fluoroethylene which process comprises expanding

a shaped article consisting essentially of highly

crystalline poly (tetrafluoroethylene) made by a

paste-forming extrusion technique, after removal of

lubricant, by stretching said unsintered shaped arti-

cle at a rate exceeding about 10% per second and

maintaining said shaped article at a temperature be-

tween about 35°C. and the crystalline melt point of

said tetrafluoroethylene polymer during said

stretching.

3. The process of claim 1 in which the rate of

stretch is about 100% per second.

17. The process of claim 1 in which the shaped

article is expanded such that its final length in the

direction of expansion is greater than about twice

the original length.

19. The process of claim 17 in which said final

length is greater than about five times the original

length.

Claims of the '390 patent discussed at trial:

1. A porous material consisting essentially of

highly crystalline polytetrafluoroethylene polymer,

which material has a microstructure characterized

by nodes interconnected by fibrils and has a matrix

tensile strength in at least one direction above about

7,300 psi.

9. A porous material consisting essentially of

polytetrafluoroethylene polymer, which material

has a microstructure characterized by nodes inter-

connected by fibrils and has a matrix tensile

strength in at least one direction above 9290 psi,

which material has been heated to a temperature

above the crystalline melt point of said polymer and

has a crystallinity below about 95%.

A-34

12. A porous material in accordance with claim

9 which is in the form of a shaped article.

14. A product in accordance with claim 12

which is in the form of a film.

18. A product in accordance with claim 12

which is in the form of continuous filaments.

35. A laminated structure comprising (a) a

first shaped article formed of a porous material

made of a tetrafluoroethylene polymer, which mate-

rial has a microstructure characterized by nodes

interconnected by fibrils and has a matrix tensile

strength in at least one direction above about 7,300

psi, and (b) a second shaped article bonded to said

first shaped article.

36. The structure of claim 35 in which said

first shaped article is formed of a porous material

which has a matrix tensile strength in at least one

direction of at least 9290 psi, and has a crystallinity

below about 95%.

43. A porous material made of a tetra-

fluoroethylene polymer, which material has a

microstructure characterized by nodes _inter-

connected by fibrils, which material (a) has a matrix

tensile strength in at least one direction above about

9290 psi, (b) has been heated to a temperature

above 327° C. and has a crystallinity below about

95%, and (c) has a dielectric constant of 1.2-1.8.

67. An impregnated structure comprising

(a) A shaped article formed of a porous

material made of a tetrafluoroethylene polymer

which material has a microstructure character-

ized by nodes interconnected by fibrils and a

matrix tensile strength in at least one direction

above about 9290 psi, and

(b) a polymer impregnated within the

pores of the said shaped article.

A-35

77. The structure of claim 35 in which the first

shaped article is a sheet having pores that will pass

a gas but will not pass liquid water.

A-36

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

W.L. GORE & ASSOCIATES, INC. : Appeal Nos.

83-613/614

Appellant/Cross-Appellee,

U.

GARLOCK, INC.

Appellee/Cross-Appellant,

DAVIS. Circuit Judge, concurring in the result in

part and dissenting in part.

I concur in the result on (1) the validity of the 390

patent under §§ 102-103; (2) the validity of the 390 pat-

ent under §112; (3) the invalidity of claims 1 and 17 of

the ‘566 patent; (4) lack of fraud on the Patent and

Trademark Office; and (5) denial of attorney's fees. I dis-

agree and dissent as to the validity of claims 3 and 19 of

the ‘566 patent.

1. The process invention embodied in claim 1 of the

‘566 patent was known, through use of the 401 machine

in the Gore shop, well before the “invention date”

(claimed by Robert Gore, the inventor) of October 1969. !

As such, the claimed invention was invalid on at least

three grounds: (i) it was anticipated and therefore would

have been obvious (under 35 U.S.C. §103) at the time of

the claimed invention date; (ii) the invention was “in

public use” by the Gore shop (under 35 U.S.C. §102(b))

more than one year prior to the patent application (i.e.,

prior to May 21, 1969); and (iii) the invention (made by

Robert Gore) was known to and used “by others in this

country” (35 U.S.C. §102(a)) before the claimed inven-

tion date of October 1969, i.e. the invention was used by

1. The 401 machine was used under the prior 915 patent (is-

sued to Wilbert Gore) which contains ne reference to the signifi-

cance of the rate of stretch.

A-37

Wilbert Gore and others in the Gore shop before the

October date.’

The critically important aspect of the invention of

the '566 patent is the stretching of PTFE at a rate above

10% per second.* Robert Gore testified that he con-

ceived this invention no earlier than October 1969 (and

we have the right to take him at his word),* but the facts

found by the District Court plainly show that the Gore

shop was in fact practicing that invention considerably

earlier.

The District Court found that in the 401 machine

the distance between the stretch rollers controls the rate

of stretch; a shorter distance results in a higher rate of

stretch; for the process described in the ’915 patent to be

practiced with a rate of stretch below 10% per second,

the distance between the stretch rollers would have to be

greater than five feet; if the distance is less than four

feet, the rate of stretch is greater than 10% per second;

the machine drawings used to construct the 401] ma-

chine indicate that the distance between the stretch roll-

ers was eight inches; a Gore employee testified that “I

am reasonably sure that no effective [stretch] rolls in

question would have been more than three feet simply

because of the nature and size of the equipment” and

that he did not remember any stretching more than

three feet; another Gore employee testified that the dis-

tance between the rollers was “a maximum of 18 inches”

(emphasis added); a document prepared by the same

employee (an engineer) on June 10, 1969 reports that

the stretch span was 8 inches; the 491 machine was the

only stretching machine used by the Gore company; and

2. Aside from the bases I discuss, I do not reach the other

grounds asserted for invalidity of the ‘566 patent.

3. Before the PTO Robert Gore concededly referred to this as

“critical” to his invention or as his “invention.”

4. The District Court found that October 1969 was the earliest

date Robert Gore asserts for his conception of the invention in the

‘566. patent.

A-38

the 401 machine was never substantially changed be-

fore October 1969. All this adds up to the fact that the

401 machine was at all relevant times operated with a

stretch of less than four feet.° There is no question that

the machine was so operated before October 1969 (the

District Court found that sales of tape made by the 401

machine were proposed in August 1969).

I can accept Robert Gore’s affidavit (to the PTO)

that there was no stretching in the Gore shop at a rate

exceeding about 10% per second prior to “my invention

disclosed in the captioned patent application” (emphasis

added)® only because that declaration was expressly

qualified by the phrase “to my knowledge” (emphasis

added). The District Court specifically found no specific

intent by Robert Gore to defraud and, on this record, we

cannot properly overturn that finding. But the absence

of personal intent to defraud does no”. mean or say that,

whether Robert Gore realized it or nou, the 401 machine

was not actually operating, well before October 1969, to

stretch unsintered PTFE at a rate exceeding about 10%

per second. Cf. O’Brien v. Westinghouse Electric Corp.,

293 F.2d 1, 10 (3rd Cir. 1961). It seems impossible to me

to reconcile Robert Gore’s insistence on two facts — that

(i) he invented the process in Ocober 1969 and (ii) he

had no knowledge prior to October 1969 of stretching

PTFE at the critical rate — with the solid facts in the

5. The Gores (Robert and Wilbert) testified at trial that the dis-

tance was five feet but there is no indication that the trial court

(which did not cite this testimony but did cite the opposing evi-

dence) credited the Gores’ testimony.

6. The factor of the rate of stretching was of direct interest to

the examiner during the prosecution of the ‘566 patent. In response

to the examiner's express request for a declaration that the Gore

firm's production of stretched PTFE tape, prior to Robert Gore's in-

vention asserted here, did not involve stretching of unsintered

PTFE at a rate exceeding about 10% per second, Robert Gore filed

an affidavit in the PTO specifically stating that “to my knowledge”

(emphasis added) the 401 machine did not involve stretching at a

rate exceeding about 10% per second.

ee ee er AN ae

A-39

record as to the prior operation of the 401 machine, ex-

cept on the view that Robert Gore did not realize that he

and others in the Gore shop had made his invention pre-

viously.

2. It follows that in October 1969 the invention of

‘566 would have been obvious under §103 to Robert

Gore because the prior practice of the 401 machine con-

stituted prior art. Even if this was not prior art techni-

cally within §102, that statutory provision “is not the

only source of prior art.” In re Fout. 675 F.2d 297. 300

(CCPA 1982, emphasis in original). The 401 machine

was practiced under the '915 patent (issued to Wilbert

Gore) and, whether or not Robert Gore subjectively real-

ized what was happening, he and others in the Gore

shop were practicing the invention later embodied in the

‘566 patent. That was prior art at least to Robert Gore. Id.

at 300-01.’

3. If it be thought necessary to invoke §102 di-

rectly, in order to show anticipation, the record contains

proof that the 401 machine was designed. constructed

and used (just as described supra) in November and De-

cember 1968 and the early months of 1969 — more than

one year prior to the '566 patent application of May 21,

1970. See Jt. App. E 1199- E 1200. Section 102(b) there-

fore applies. Although commercial production was ap-

parently not ac ively sought until June 1969. the practic-

ing of the 401 machine prior to May 21, 1969 was “a

public use” because the Gore company made “use of the

device * * * in the factory in the regular course of

business.” Connecticut Valley Enterprises, Inc. v.

United States, 348 F.2d 949, 952, 146 USPQ 404, 406

(Ct. Cl. 1965).

4. Also, §102(a)®* applies here because Robert Gore

7. The District Court has found that there are no differences

between claim 1 of the ‘566 patent and the processes previously

used by the Gore firm to produce paste-extruded unsintered PTFE.

8. An invention is anticipated if it “was known or used by

others inthis country” * * ~* before the invention thereof by the

applicant for patent” (emphasis added )

A-40

was the inventor in the 566 patent and Wilbert Gore and

others in the Gore shop were using the 401 machine be-

fore October 1969. Wilbert Gore (the inventor in the ’915

patent under which the 401 machine was made and

used) and the other employees are “others” within

§102(a) — they are not the same as Robert Gore who

claimed to be inventor of the process that ripened into

the ’566 patent.° See also §102(f), which would bar Rob-

ert Gore if he did not himself invent the subject matter of

the 566 patent. !°

5. The majority sustains the validity of claims 3 and

19 of the 566 patent (the claims also involved in appel-

lant’s suit for infringement) which are dependent on

invalid claim 1. Because of the invalidity of claim 1 the

only possible novelty in claim 3 would be the require-

ment that the rate of stretch would be about 100% per

second, and the possible novelty of claim 19 would be

that the final length would be greater than about five

times the original length. My position is that both of

these added elements, if novel, would have been obvious

to persons of ordinary skill in the art.

The defect in the majority’s analysis is that it neg-

lects the cardinal fact that the prior art included the 401

machine (discussed supra), not merely the earlier pat-

ents assessed in the majority opinion. The 401 machine

directly involved PTFE itself, not conventional thermo-

plastic polymers. That machine also directly involved

rapid stretching of PTFE at a rate markedly exceeding

10%. With this prior art of the 401 machine before him,

an ordinary person skilled in the art would maximize

stretch rate, if only to improve the machine’s production

9. It is undisputed that it was Wilbert Gore who initiated the

project for the 401 machine and watched over it.

10. The majority’s discussion of “secondary considerations.”

though it is relevant to other aspects of this case, is irrelevant to the

issue of anticipation raised by the 401 machine, and hardly persua-

sive as to the issues of obviousness based on or with respect to the

401 machine.

en

|

A-41

rate. Cf. In re Dwyer, Jewell, Johnson, McGrath, &

Rubin, 317 F.2d 203, 207, 137 USPQ 540 (CCPA 1963).

Moreover, the very existence and operation of the 401

machine, which stretched PTFE rapidly without break-

ing, suggests to the skilled person the probability of

stretching at even higher rates. Certainly, in the light of

the 401 machine, skilled workers would see in at jeast

the prior Markwood, Nash, and Scarlett patents (teach-

ing extensive and rapid stretching of non-PTFE thermo-

plastics) the suggestion that the method of the 401 ma-

chine could also be used for comparable rapid and

extensive stretching of PTFE.

6. In sum, I cannot escape the conclusion that —

although there was no fraud proved — if the true facts as

to the 401 machine had been made known to the PTO

(as it requested), the involved claims of the 566 patent

should (and probably would) not have been accepted.

A-42

APPENDIX B

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

February 6, 1984

ERRATUM

Appeal Nos. 83-613/83-614

W.L. GORE & ASSOCIATES, INC.,

v.

GARLOCK, INC.

Decided November 14, 1983

Please make the following corrections:

Page 8, last line |A-7, line 16]: delete “Though” and

capitalize — Findings —.

Page 9, line 2 [A-7, line 18]: Change the second

comma to —. Thus —.

Page 9, line 3 [A-7, line 20]: After “court” insert —

on the basis of its being clearly erroneous, —.

aceedairabsiialnh —

A-43

APPENDIX C

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

W.L. GORE & ASSOCIATES, INC..,

Appellant/Cross-Appellee

v. : No. 83-613/614

GARLOCK, INC.,

Appellee/Cross-Appellant

ORDER

A petition for rehearing and a suggestion for

rehearing in banc having been filed in this case,

, UPON CONSIDERATION THEREOF, it is Or-

dered by the court that the petition for rehearing be, and

the same is hereby, Granted, only to the extent of modi-

fying a sentence in the opinion, pursuant to the erratum

dated February 6, 1984.

The suggestion for rehearing in banc is declined.

FOR THE COURT:

George E. Hutchinson, Clerk

February 21, 1984

ec: David H. Pfeffer

John J. Mackiewicz

A-44

APPENDIX D

SUPREME COURT OF THE UNITED STATES

No. A-878, October Term, 1983

GARLOCK, INC.,

Petitioner,

v.

W. L. GORE & ASSOCIATES

ORDER EXTENDING TIME TO FILE PETITION FOR

WRIT OF CERTIORARI

UPON CONSIDERATION of the application of counsel

for petitioner,

IT Is ORDERED that the time for filing a petition for

writ of certiorari in the above-entitled cause be, and the

same is hereby, extended to and including July 5, 1984.

/s/ WARREN E. BURGER

Chief Justice of the United States.

Dated this 4th day of May, 1984

A-45

APPENDIX E

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF OHIO

EASTERN DIVISION

W. L. GORE & ASSOCIATES, INC.,

Plaintiff.

U. | Case Nos.

C79-2074

and C80-174

. Judge

: John M. Manos

GARLOCK, INC. :

Defendant.

ORDER

Pursuant to the Memorandum of Opinion issued in

the above-captioned case this date, the court holds

United States Letters Patent Nos. 3,953,566 and

4,187,390 invalid under 35 U.S.C. §§102, 103 and 112

and enters judgment for the defendant.

IT IS SO ORDERED.

VL Plame

Unite States District Judge

A-46

MEMORANDUM OF OPINION

On November 2, 1979 plaintiff, W. L. Gore & Asso-

ciates, Inc., (hereinafter, Gore), filed the above-cap-

tioned case seeking injunctive relief, damages, and at-

torney’s fees due to the alleged infringement of its

United States Letters Patent No. 3,953,566,

(hereinafter, 566), by the defendant Garlock, Inc.,

(hereinafter, Garlock). On December 18, 1979 Garlock

filed an answer and counterclaim seeking declaratory re-

lief regarding the validity of Gore’s patent and attorney’s

fees. Subsequently, on February 7, 1980 Gore filed a

second action against Garlock alleging that Garlock’s

conduct in the first cause of action also constituted in-

fringement of Gore’s United States Letters Patent No.

4,187,390, (hereinafter, 390). On February 28, 1980 the

parties stipulated that the two actions should be consoli-

dated for trial. Jurisdiction is invoked pursuant to 28

U.S.C. §1338 and 35 U.S.C. §281.!

A trial to the court began on June 23, 1982. At the

close of all the evidence the court took the action under

advisement and the parties submitted post-trial briefs.

Upon consideration of the testimony of witnesses at trial,

the exhibits received, the facts to which the parties stip-

ulated and their briefs, the court finds Gore’s patents

invalid because the inventions claimed: (1) lack novelty

under 35 U.S.C.§102;? (2) are obvious under 35 U.S.C.

1. 28 U.S.C. §1338(a) provides:

1. The district courts shall have original jurisdiction of any

civil action arising under any Act of Congress relating to pat-

ents, plant variety protection, copyrights and trade-marks.

Such jurisdiction shall be exclusive of the courts of the states in

patent, plant variety protection and copyright cases

35 U.S.C. §281 provides as follows

A patentee shall have rernedy by civil action for infringe-

ment of his patent

2. 35 U.S.C. §102 provides as follows

A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this

country, or patented or described in a printed publication in

A-47

§103;° and (4) are indefinite under 35 U.S.C. §112.7

Therefore, the court enters judgment for Garlock. The

this or a foreign country, before the invention thereof by the ap-

plicant for patent, or

(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or on

sale in this country, more than one year prior to the date of the

application for patent in the United States. or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be pat-

ented, or was the subject of an inventor's certificate, by the ap-

plicant or his legal representatives or assigns in a foreign coun-

try prior to the date of the application for patent in this country

on an application for patent or inventor's certificate filed more

than twelve months before the filing of the application in the

United States, or

(e) the invention was described in a patent granted on an

application for patent by another filed in the United States be-

fore the invention thereof by the applicant for patent, or on an

international application by another who has fulfilled the re-

quirements of paragraphs (1), (2), and (4) of section 371(c) of

this title before the invention thereof by the applicant for pat-

ent, or

(f) he did not himself invent the subject matter sought to

be patented, or

(g) before the applicant's invention thereof the invention

was made in this country by another who had not abandoned,

suppressed, or concealed it. In determining priority of inven-

tion there shall be considered not only the respective dates of

conception and reduction to practice of the invention, but also

the reasonable diligence of one who was first to conceive and

last to reduce to practice. from a time prior to conception bv the

other.

3. 35 U.S.C. §103 provides as follows:

A patent may not be obtained though the invention is not

identically disclosed or described as set forth in section 102 of

this title, if the differences between the subject matter sought

to be patented and the prior art are such that the subject matter

as a Whole would have been obvious at the time the invention

was made to a person having ordinary skill in the art to which

said subject matter pertains. Patentability shall not be

negatived by the manner in which the invention was made.

4. 35 U.S.C §112 provides as follows:

The specification shall contain a written description of the

|

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A-48

court finds further that Gore did not commit fraud in ob-

taining the patents and therefore, the court shall not

award fees under 35 U.S.C. §285.° The following find-

NOTE — (Continued )

invention, and of the manner and process of making and using

it, in such full, clear, concise, and exact terms as to enable any

person skilled in the art to which it pertains, or with which it is

most nearly connected, to make and use the same, and shall set

forth the best mode contemplated by the inventor of carrving

out his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature of

the case admits, in dependent or multiple dependent form.

Subject to the following paragraph, a claim in dependent

form shall contain a reference to a claim previously set forth

and then specify a further limitation of the subject matter

claimed. A claim in dependent form shall be construed to incor-

porate by reference all the limitations of the claim to which it

refers.

A claim in multiple dependent form shall contain a refer-

ence, in the alternative only, to more than one claim previously

set forth and then specify a further limitation of the subject

matter claimed. A multiple dependent claim shall not serve as a

basis for any other multiple dependent claim. A multiple de-

pendent claim shall be construed to incorporate by reference all

the limitations of the particular claim in relation to which it is

being considered.

An element in a claim for a combination may be expressed

as a means or step for performing a specified function without

the recital of structure, material, or acts in support thereof, and

such claim shall be construed to cover the corresponding struc-

ture, material, or acts described in the specification and equiv-

alents thereof.

5. 35 U.S.C. §285 provides as follows:

The court in exceptional cases may award reasonable at-

torney fees to the prevailing partv.

A-49

ings of fact and conclusions of law are filed in accor-

dance with Fed. R. Civ. P. 52(a).®

Gore is a Delaware corporation with its principal

place of business in Newark, Delaware. It manufactures

and sells polytetrafluoroethylene, (hereinafter, PTFE),

products under the trademark “GORE-TEX.” Such

products include: (1) fabric laminates made by bonding

expanded PTFE film to one or more pieces of fabric, for

use in breathable rainwear and filter bags; (2) expanded

porous PTFE film manufactured for use in making lami-

nates and certain filters; (3) expanded porous PTFE

yarn for weaving or braiding into other products, includ-

ing space suits for astronauts and packing for pumps;

(4) expanded PTFE tubing for use as replacements for

arteries and veins in the human body and (5) expanded

PTFE insulation for high performance electronic ca-

bles.’ One-half of Gore’s annual sales, which exceed

$120,000,000, are attributable to the two patents in suit.

Garlock is an Ohio corporation with its principal

place of business in Longview, Texas. It is a wholly

owned subsidiary of Colt Industries, Inc., a Pennsylva-

6. Fed. R. Civ. P. 52(a) provides as follows:

In all actions tried upon the facts without a jury or with an

advisory jury, the court shall find the facts specially and state

separately its conclusions of law thereon, and judgment shall

be entered pursuant to Rule 58; and in granting or refusing in-

terlocutory injunctions the court shall similarly set forth the

findings of fact and conclusions of law which constitute the

grounds of its action. Requests for findings are not necessary

for purposes of review. Findings of fact shall not be set aside

unless clearly erroneous, and due regard shall be given to the

opportunity of the trial court to judge of the credibility of the

witnesses. The findings of a master, to the extent that the court

adopts them, shall be considered as the findings of the court. If

an opinion or memorandum of decision is filed, it will be suffi-

cient if the findings of fact and conclusions of law appear

therein. Findings of fact and conclusions of law are unneces-

sary on decisions of motions under Rules 12 or 56 or any other

motion except as provided in Rule 41(b).

7. Plaintiff's Exhibit 8.

A-350

nia corporation with its principal place of business in

New York, New York. Garlock has been engaged in the

manufacture and saie of PTFE products for over twenty-

five (25) vears.

The '566 patent, entitled “Process for Producing Po-

rous Products,” was issued on April 24, 1976 in the

name of Robert W. Gore. It contains twenty-four (24)

claims. Gore alleges that Garlock infringes claims 3 and

19. Although all twenty-four (24) claims of the ’566 pat-

ent are in issue because of Gariock’s counterclaim for a

declaratory judgment, the analysis which follows is

limited to claims 3 and 19 in addition to the broader

claims. 1 and 17, upon which ciaims 3 and 19 depend.

The °390 patent. entitled “Porous Products and Process

Therefor.” was issued on February 5, 1980. Like the

‘566 patent, the ‘390 patent issued in the name of Robert

W. Gore. It contains seventy-seven (77) claims. Gore al-

leges that Garlock infringes claims 14, 18, 36, 43, 67 and

77. Similar to the ’566 patent, although all seventy-seven

(77) claims of the ’390 patent are in issue because of

Garlock’s counterclaim for a declaratory judgment, the

analysis which follows is limited to claims 14, 18, 36, 43.

67 and 77 in addition to four (4) of the broader clairns, 1.

9. 12 and 35.

Garlock’s products alleged to infringe the ‘566 and

‘390 patents fall into three (3) categories: (1) film; (2)

filament or varn; and (3) tape. Garlock n.anufactures

and sells film under the trademark “PLASTOLON.” The

PLASTOLON film is alleged to infringe claim 19 of the

‘566 patent and claims 14 and 43 of the °390 patent. In

addition, a laminate manufactured with PLASTOLON

film by Kenyon Piece Dyeworks, Inc.. is alleged to in-

fringe claims 36 and 77 of the 390 patent. Garlock’s

PTFE yarn is alleged to infringe claim 19 of the 566 pat-

ent and claim 18 of the °390 patent. Garlock’s braided

packing product, which is manufactured with PTFE

varn, is alleged to infringe claim 67 of the °390 patent.

Finally, Garlock’s PTFE threaded seal tape. which

A-51

Garlock manufactures and sells under the trademark

“PLASTI-THREAD,” is alleged to infringe claim 3 of the

‘566 patent. it is not alleged to infringe the ’390 patent.

The ’566 patent is directed to a process for produc-

ing porous PTFE articles by expansion. According to the

patent, a shaped PTFE article is formed by a paste-

forming extrusion technique. Next, the extrusion lubri-

cant is removed by heating and the PTFE aarticle is

stretched. The stretching occurs at temperatures be-

tween 35 degrees and 327 degrees C. After the stretch-

ing is completed, the PTFE article is heated to a tem-

perature above 327 degrees C., to “amorphously lock” it.

Gore alleges that the 566 patent teaches persons skilled

in the relevant art that there are six (6) variables to con-

trol when practicing the claimed invention: (1) the de-

gree of crystallinity of the polymer, (at least 96.5% and

preferably as high as possible); (2) the strength of the

paste-extruded material before expansion; (3) the

amount of exparision, (a greater amount of expansion re-

sults in a product that is stronger); (4) the rate of expan-

sion, (stretching at a rate in excess of 10% per second);

(5) the temperature during expansion, (between 35 de-

grees C., and the crystalline melt temperature); and (6)

amorphous locking, (heating of the stretched PTFE

product to a temperature above 327 degrees C., but be-

low 390 degrees C., to increase strength).®

Regarding rate of stretch the 566 recites that there

is a lower limit below which fracture (i.e. breaking) oc-

curs or weak products are obtained. Specifically, col. 2

lines 7-28 of the 566 patent provide as follows:

In this invention it has been found that such

paste-formed, dried, unsintered shapes can be ex-

panded by stretching them in one or more direc-

tions under certain conditions so that they become

substantially much more porous and stronger. The

phenomenon of expansion with increase in strength

— _

8. Plaintiffs Exhibit 145

<

—rrTm

A-52

occurs with certain preferred tetrafluoroethylene

resins and within preferred ranges of rate of stretch-

ing and preferred ranges of temperature. The pre-

ferred temperature range is from 35 degrees C to

327 degrees C. At the lower temperatures within

this range it has been found that there is a maxi-

mum rate of expansion beyond which fracture oc-

curs, as well as a lower limit beneath which fracture

also occurs or where weak materials are obtained.

The lower limit is of much more practical signifi-

cance. At high temperaiures within this range, only

the lower limit of rate has been detected. The lower

limit of expansion rates interact with temperature in

a roughly logarithmic fashion, being much higher

at higher temperatures. Most, but not all, of the de-

sirable products of this invention are obtained when

expansion is carried out at the higher temperatures

within the range of 35 degrees C to 327 degrees C.

Thus, the 566 patent provides that the lower limit

depends on the temperature at which stretching occurs

and the particular PTFE resin employed. Although the

‘566 patent delineates this relationship, it does not pro-

vide a definition of the term rate of stretch or an equation

by which to compute it. Gore asserts, however, that in all

instances the required rate of stretch must be above the

10% per second referred to in claim 1.°

Also contained in the '566 patent are repeated

references to the term “matrix tensile strength.” Col. 3,

lines 33-43 provide that:

9. According to the testimony of Robert W. Gore and Gore’s ex-

pert witness, Dr. Carleton A. Sperati, rate of stretch in percent per

second is computed by dividing the percent stretch by the time in

seconds required to obtain that amount of stretch. Gore admitted,

however, that the 10% per second value referred to in claim 1 of the

‘566 patent finds no antecedent support in the specifications of the

patent.

A-53

. to compute matrix tensile strength of a

porous specimen, one divides the maximum force

required to break the sample by the cross sectional

area of the porous sample, and then multiplies this

quantity by the ratio of the specific gravity of the

solid polymer divided by the specific gravity of the

porous specimen. Equivalently, the matrix tensile

strength is obtained by multiplying the tensile

strength computed according to the above defini-

tion by the ratio of the specific gravities of the solid

polymer to the porous product.

(Emphasis added). Although the terms emphasized are

not defined, the 566 patent provides further that:

[I]n the examples which follow, both tensile

strength and matrix tensile strength are shown,

computed according to the above method, the low-

est matrix strength measured being about 7300

p.s.i. In other words, the products shown herein all

have matrix strengths of above about 7300 p.s.i.

Col. 3, lines 43-48. (Emphasis added). Therefore, the

thrust of the invention claimed in the ’566 patent is that

when PTFE articles are stretched at a rate that is always

in excess of 10% per second a physical phenomenon oc-

curs which is the production of a stretched PTFE article

with a measurable matrix tensile strength that will be at

least 7300 p.s.i. Claims 1, 3, 17 and 19 of the ’566 patent

provide as follows:

1. A process for the production of a porous arti-

cle of manufacture of a polymer of tetrafluoro-

ethylene which process comprises expanding a

shaped article consisting essentially of highly crys-

talline poly(tetrafluoroethyene) made by a paste-

forming extrusion technique, after removal of lubri-

cant, by stretching said unsintered shaped article at

a rate exceeding about 10% per second and main-

taining said shaped article at a temperature be-

A-54

tween about 35 degrees C. and the crystalline melt

point of said tetrafluoroethylene polymer during

said stretching.

3. The process of claim 1 in which the rate of

stretch is about 100% per second.

17. The process of claim 1 in which the shaped

article is expanded such that its final length in the

direction of expansion is greater than about twice

the original length.

19. The process of claim 17 in which said final

length is greater than about five times the original

length.

The ’390 patent is directed tu porous PTFE prod-

ucts. Such products are described as possessing “out-

standing combinations of high porosity and high

strength.” Col. 1, lines 37-38. Similar to the 566 patent,

the ’390 patent defines “high strength” in terms of “ma-

trix tensile strength” and provides the same computa-

tion for determining it. Indeed, the disclosures of the two

patents are nearly identical with only minor exceptions.

Thirteen (13) of the sixteen (16) examples contained in

the ’566 patent are contained in the ’399 patent. In addi-

tion the rate of stretch value of 574% per second re-

ported in Table 5 of the ’566 patent is deleted from what

is otherwise the same Table 5 of the 390 patent. Claims

1, 9, 12, 14, 18, 35, 36, 43, 67 and 77 of the ’390 patent

provide as follows:

1. A porous material consisting essentially of

highly crystalline polytetrafluoroethylene polymer,

which material has a microstructure characterized

by nodes interconnected by fibrils and has a matrix

tensile strength in at least one direction above about

7,300 psi.

9. A porous material consisting essentially of

polytetrafluoroethylene polymer, which material

A-55

has a microstructure characterized by nodes inter-

connecteu by fibrils and has a matrix tensile

strength in at least one direction above 9290 psi,

which material has been heated to a temperature

above the crystalline melt point of said polymer and

has a crystallinity below about 95%.

12. A porous material in accordance with claim

9 which is in the form of a shaped article.

14. A product in accordance with claim 12

which is in the form of a film.

18. A product in accordance with claim 12

which is in the form of continuous filaments.

35. A laminated structure comprising (a) a

first shaped article formed of a porous material

made of a tetrafluoroethylene polymer, which mate-

rial has a microsiructure characterized by nodes

interconnected by fibrils and has a matrix tensile

strength in at least one direction above about 7,300

psi, and (b) a second shaped article bonded to said

first shaped article.

36. The structure of claim 35 in which said

first shaped article is formed of a porous material

which has a matrix tensile strength in at least one

direction of at least 9290 psi, and has a crystallinity

below avout 95%.

43. A porous material made of a tetrafiuoro-

ethylene polymer, which material has a microstruc-

ture characterized by nodes interconnected by

fibrils, which material (1) has a matrix tensile

strength in at least one direction above about 9290

psi, (b) has been heated to a temperature above 327

degrees C. and has a crystallinity below about 95%,

and (c) has a dielectric constant of 1.2-1.8.

67. An impregnated structure comprising

(a) ashaped article formed of a porous material

idea

A-56

made of a tetrafluoroethylene polymer which mate-

rial has a microstructure characterized by nodes

interconnected by fibrils and a matrix tensile

strength in at least one direction above about 9290

psi, and

(b) a polymer impregnated within the pores of

the said shaped article.

77. The structure of claim 35 in which the first

shaped article is a sheet having pores that will pass

a gas but will not pass liquid water.

The grant of a patent confers on the patentee the

right to exclude others from “making, using, or selling

the invention” for seventeen (17) years. 35 U.S.C.

§154.!° There are three essential elements of patent va-

lidity: (1) novelty; (2) utility; and (3) nonobviousness.

United States v. Adams, 383 U.S. 39, 86 S. Ct. 708

(1966); Hanson v. Alpine Valley Ski Area, Inc., 611 F.2d

156 (6th Cir. 1979); American Seating Co. v. National

Seating Co., 586 F.2d 611 (6th Cir. 1978), cert. deniea,

441 U.S. 907, 99 S. Ct. 1999 (1979); Nicrofibers, Inc. v.

Reichhold Chemicals, Inc., 505 F.Supp. 496 (S.D. Ohio

1980). See: 36 U.S.C. §§101-103. The Sixth Circuit

Court of Appeals has held that “[t]he starting point in

analyzing a challenge to a patent’s validity is the statu-

tory presumption that the patent is valid under 35

U.S.C. §282.” American Seating Co. v. National Seating

Co., supra, 586 F.2d at 615. Accord: Smith v. Acme Gen-

eral Corp., 614 F.2d 1086 (6th Cir. 1980); Hanson v. Al-

10. Specifically, 35 U.S.C. §154 provides as follows:

Every patent shall contain a short title of the invention and

a grant to the patentee, his heirs or assigns, for the term of sev-

enteen years, subject to the payment of fees as provided for in

this title, of the right to exclude others from making, using, or

selling the invention throughout the !)nited States, referring tu

the specification for the particulars thereof. A copy of the speci-

fication and drawings shall be annexed to the patent and be a

part thereof.

A-57

pine Valley Ski Area, Inc., supra.'' “The presumption of

validity is based upon the acknowledged experience and

expertise of the Patent Office and upon the fact that the

issuance of a patent constitutes a type of administrative

determination supported by evidence.” Id. See also:

Hanson v. Alpine Valley Ski Area, Inc., supra. The pre-

sumption, however, has no independent evidentiary

value as it serves only to allocate the burden of proof of

invalidity to the party asserting it. Universal Electric Co.

11. 35 U.S.C. §282 provides as follows:

A patent shall be presumed valid. Each claim of a patent

(whether in independent, dependent, or multiple dependent

form) shall be presumed valid independently of the validity of

other claims; dependent or multiple dependent claims shall be

presumed valid even though dependent upon an invalid claim.

The burden of establishing invalidity of a patent or any claim

thereof shall rest on the party asserting such invalidity.

The following shall be defenses in any action involving the

validity or infringement of a patent and shall be pleaded:

(1) Noninfringement, absence of liability for infringement

or unenforceability,

(2) Invalidity of the patent or any claim in suit on any

ground specified in part II of this title as a condition for patent-

ability,

(3) Invalidity of the patent or any claim in suit for failure

to comply with any requirement of section 112 or 251 of this

title,

(4) Any other fact or act made a defense by this title.

In actions involving the validity or infringement of a patent

the party asserting invalidity or noninfringement shall give no-

tice in the pleadings or otherwise in writing to the adverse party

at least thirty days before the trial, of the country, number,

date, and name of the patentee of any patent, the title, date, and

page numbers of any publication to be relied upon as anticipa-

tion of the patent in suit or, except in actions in the United

States Court of Claims, as showing the state of the art, and the

name and address of any person who may be relied upon as the

prior inventor or as having prior knowledge of or as having pre-

viously used or offered for sale the invention of the patent in

suit. In the absence of such notice proof of the said matters may

not be made at the trial except on such terms as the court re-

quires.

A-58

v. A. O. Smith Corp., 643 F.2d 1240 (6th Cir. 1981);

Eltra Corp. v. Basic Inc., 599 F.2d 750 (6th Cir.), cert.

denied, 444 U.S. 942, 100 S.Ct. 297 (1979); Dickstein v.

Seventy Corp., 522 F.2d 1254 (6th Cir. 1975), cert. de-

nied, 423 U.S. 1055, 96 S.Ct. 787 (1970). Indeed, the

Sixth Circuit Court of Appeals has held that “[i]t is firmly

established that the presumption is weakened greatly

where the Patent Office has failed to consider pertinent

prior art.” Universal Electric Co. v. A. O. Smith Corp.,

supra, 643 F.2d at 1245. Accord: Dollar Electric Co. v.

Syndevco, Inc., 669 F.2d 1370 (6th Cir. 1982); Smith v.

Acme General Corp., supra; Nicrofibers, Inc. v.

Reichhold Chemicals, Inc., supra; Cleveland Fabricating

Co. v. Adsure, Inc., 298 F. Supp. 1275 (N.D. Ohio 1968).

Similarly, the presumption is “seriously weakened”

when a patent applicant fails to disclose to the patent of-

fice the results of tests which are material to the ques-

tion of patentability. Eltra Corp. v. Basic, Inc., supra,

599 F.2d at 754-55, n. 18. (Emphasis added).

Garlock asserts that Gore’s patents are invalid be-

cau e the inventions claimed lack novelty and/or were in

public use more than one year prior to the dates the ap-

plications upon which the 566 and °390 paterts issued

were filed.!* 35 U.S.C. §§102(a) and (b).!%

With regard to patent invalidity for iack of novelty

ur.der 35 U.S.C. §102(a), the Sixth Circuit Court of Ap-

peals has held that “[n]ovelty does not exist if a patented

device is anticipated by a substantially identical device

whose elements perform substantially the same work in

substantially the same manner.” American Seating Co.

v. National Seating Co., supra, 586 F.2d at 616. Accord:

Dunlop Co. Ltd. v. Kelsey-Hayes Co., 484 F.2d 407 (6th

Cir. 1973), cert. denied, 415 U.S. 917, 94 S.Ct. 1414

12. The application upon which the '566 patent issued was |

filed on July 3, 1973. The application upon which the '390 patent i.

issued was filed on June 21, 1971. Both patents, however, issued on |

applications which relate back to one filed on May 21, 1970.

13. See: F.N. 2, supra.

A-59

(1974); A.J. Industries, Inc. v. Dayton Steel Foundry

Co., 394 F.2d 357 (6th Cir. 1968). “ ‘Anticipation’ is a

term of art within patent law meaning the disclosure in

the prior art of a thing substantially identical with the

claimed invention.” Smith v. Acme General Corp., supra,

614 F.2d at 1088, n. 6, citing with approval, In re Arkley,

455 F.2d 586 (CCPA 1972). Under 35 U.S.C. §102(b),

the device must be reduced to practice or use. Dunlop

Co. Ltd. v. Kelsey-Hayes Co., supra; A.J. Industries, Inc.

v. Dayton Steel Foundry Co., supra. This must be a

“public use,” FMC Corp. v. F.E. Myers & Bros. Co., 384

F.2d 4 (6th Cir. 1967), cert. denied, 390 U.S. 988, 88

S.Ct. 1183 (1968), and “a single public use or a mere

placing of the invention on sale meets the requirements

of the statute.” Dunlop Co. Ltd. v. Kelsey-Hayes Co..

supra, 484 F.2d at 413. Secret uses do not constitute

prior art. Stamicarbon v. Escambia Chemical Corp., 300

F. Supp. 1209 (N.D. Fla. 1969), affd as modified, 430

F.2d 920 (5th Cir.), cert. denied, 400 U.S. 944, 91 S.Ct.

245 (1970); Continental Oil Co. v. Cole, 634 F.2d 188

(5th Cir.), cert. denied, _____ ~ U.S. , 102 S.Ct. 124

(1981); General Tire & Rubber Co. v. Firestone Tire &

Rubber Co., 349 F.Supp. 345 (N.D. Ohio 1972), affd

(rev'd) on other grounds, 489 F.2d 1105 (6th Cir. 1973),

cert. denied, 417 U.S. 932, 94 S.Ct. 2643 (1974). See:

FMC Corp. v. F. E. Myers & Bros. Co., supra, in which

“public use” is defined as “... any non-secret use of a

completed and operative invention in its natural and in-

tended way. . . .” 384 F.2d at 9. Garlock bears the bur-

den of proof to establish its affirmative defenses by a pre-

ponderance of the evidence. Saginaw Products Corp. v.

Eastern Airlines, Inc., 615 F.2d 1136 (6th Cir. 1980).

See also: Dickstein v. Seventy Corp., supra, “... a pre-

ponderance of evidence is sufficient to establish invalid-

ity.” 522 F.2d at 1297.

On May 23, 1972 United States Leters Patent No.

3,664,915, (hereinafter, 915), issued to Gore on an ap-

P

A-60

plication filed by W. L. Gore on October 3, 1969.!* It is

prior art to the 566 and ’390 patents and was considered

by the patent office before the patents issued. The ’915

patent discloses a process for expanding PTFE thread

seal tape which is manufactured by a paste-forming

extrusion technique after removal of lubricant. Two affi-

davits executed by W. L. Gore establish that the inven-

tion of the ‘915 patent was reduced to practice before

June 20, 1969.!° The affidavits relate that W. L. Gore di-

rected that an apparatus be constructed to stretch

“unsintered” PTFE tape in a continuous operation. '®

Vipin Mehta, a Gore employee, was selected to design

and supervise construction of such an apparatus. Copies

of his drawings were used by William Antonio, a ma-

chinist, to construct and assemble various component

parts. Once completed, the stretching apparatus became

known as the “401 machine.”

The critical components of the 401 machine are

stretch rollers, the distance between which, controls the

rate of stretch. A shorter distance results in a higher rate

of stretch. Robert W. Gore expressly acknowledged this

in the ’566 patent:

The relative positions of rolis 15 and 16 are adjust-

able so that the gap A between them can be varied.

This allows one to control the rate of expansion. For

example, when the gap distance is halved, the rate

of expansion is doubled. It should be noted that the

rate of expansion is also effected [sic] by the rate at

which film is fed to the machine.

Col. 12, lines 11-17. For the process described in the

915 patent to be practiced at a rate of stretch below 10%

per second, the distance between the stretch rollers on

14. W. L. Gore is the father of Robert W. Gore.

15. Defendant's Exhibits 1054 and 1104.

16. The parties stipulated that “unsintered” PTFE is “PTFE

that has not been heated such that it reached a temperature above

the crystalline melt point.” Joint Glossary of Technical Terms, p. 1.

A-61

the 401 machine would have to be greater than four (4)

feet. If the distance is less than four (4) feet, the rate of

stretch is greater than 10% per second. The machine

drawings used to construct the 401 machine indicate

that the distance between the stretch rollers was eight

(8) inches. When Antonio was asked whether “

through the entire period that you were employed by W.

L. Sore ... from 1968 through 1972, do you have...

any recollection of any machine in whose construction

you participated in which the distance between the roll-

ers used to effect stretching was more than two feet?,”

he responded:

I can’t recall specific dimensions in my mind, trying

to look back at the equipment that I built. I can’t see

any rolls, any large rolls being at specific dimen-

sions, whether it be two feet, three feet. But I am

reasonably sure that no effective rolls in question

would have been more than three feet simplv be-

cause of the nature or size of the equipment.

Deposition of William Antonio, pp. 85-86. Indeed, Anto-

nio testified further that:

\i]f someone said that there was a stretching ma-

chine using a roll to stretch tape. and those stretch-

ing rolls were further than three feet apart, I would

be shocked at my recollection because I don’t re-

member such a thing.

Id., at pp. 91-92. James Dauerty, an engineer formerly

employed by Gore, testified that the distance between

the stretch rollers on the 401 machine was “a maximum

ef 18 inches.” Deposition of James S. Dauerty, p. 24.

Consistent with the machine drawings prepared and

used for construction of the 401 machine, a document

prepared by Douerty on June 10, 1969 reports that the

“stretch span” was eight (8) inches.'’ W.L. Gore testi-

17. Defendant's Exhibit 1123.

A-62

fied that in October, 1969, the earliest date upon which

Robert W. Gore asserts that he conceived of the inven-

tion claimed in the '566 patent, the 401 machine was the

only stretching machine in existence at Gore for manu-

facturing stretched PTFE thread seal tape. Tr., p. 1224.

He testified further that, “|t]}he apparatus drawing in the

915 patent details the essential elements” of the 401

machine and that the only changes in it that were made

from the date on which it was assembled until October,

1969, “were minor mechanical changes and not in any

way a change in the design or method of operation of the

{machine}. Tr., pp. 1224-1225. Gore’s response to an in-

terrogatory in Johnson & Johnson v. Gore, C4389 (D.

Del.), regarding when it first offered for sale any

unsintered PTFE thread seal tape establishes that such

sales were made before October, 1969:

Defendant offered said product in tape form to

Crane Packing Co., Morton Grove, Ill., for use in

sealing threaded joints on August 8, 1969. The per-

son acting on behalf of the defendant was John A.

Crowe. The product was to be substantially 100%

PTFE and was to be made according to the proce-

dure outlined in the patent-in-suit |i.e., the 915 pat-

ent].!®

The °915 patent contains neither a reference to the

claimed significance of rate of stretch nor to unsintered

PTFE products with matrix tensile strengths above 7300

p.S.1.

In 1966 John W. Cropper of Auckland, New Zea-

land developed and constructed a machine for stretch-

ing paste-extruded PTFE thread seal tape. The machine

stretched tape between stretch rollers operated at differ-

ent speeds so that a 20% amount of stretch would be im-

parted to the tape. The distance between the stretch roll-

ers was four (4) inches. The tape was stretched at

18. Defendant's Exhibit 1142, p. 14.

A-63

temperatures above 35 degrees C., after removal of the

extrusion lubricant. The output speed of the machine

was 4000 feet of finished tape per hour. Tr., pp. 1599-

1601. Dr. Robert C. Armstrong, a professor of chemical

engineering, testified that the rate of stretch for the ma-

chine was “about 61% per second.” Tr., p. 1909.

On September 23, 1967 Cropper wrote to the Ches-

terton Company in Everett, Massachusetts.'* The first

two (2) paragraphs of that letter provide as follows:

We have heard from Mr. Denis O’F lynn of E. I.

du Pont de Nemours that he mentioned to you a ma-

chine we have developed for the manufacture of

unsintered Tefion tape. He suggested you would be

interested in some details of the machine, and that

the opportunity existed for us to come to some ar-

rangement to our mutual advantage.

I would first like to say that any such arrange-

ment would be welcomed by us, as we have recently

been considering ways and means of extending our

sales territory and our product range.

Next, the letter describes the operation of Cropper’s ma-

chine and its production capacity. Finally, the letter con-

cludes by informing:

Should you feel therefore, that we could profit-

ably negotiate along the general lines indicated by

Denis O'Flynn we would, | am sure, very quickly

come to terms.

The foregoing will, no doubt, give you only

some of the details which you would like. Please

therefore, do not hesitate to ask for specific informa-

tion and rest assured that we look forward to your

reply.

A photograph of the machine was included and the letter

19. Defendant's Exhibit 1270

eae |

A-64

neither requested Chesterton to maintain confidentiality

nor imposed on it any obligation of secrecy.

In 1968 Cropper sold a machine to produce

stretched, unsintered PTFE thread seal tape to the Budd

Company in Newark, New Jersey. Budd used the ma-

chine and sold stretched PTFE thread seal tape in the

United States in early 1969. Tr., pp. 1738 and 1748. The

sales agreement entered by Cropper and Budd provides

in pertinent part as follows:

ARTICLE “E” — PROTECTION OF

TRADE SECRETS Etc.

1. BUDD agrees that while this agreement is in

force it will not reproduce any copies of the said ap-

paratus without the express written permission of

Cropper nor will it divulge to any person or persons

other than its own employees or employees of its af-

filiated corporations any of. . the said know-how or

any details whatsoever relating to . the apparatus.

2. BUDD agrees to take all proper steps to ensure

that . its employees observe the terms of Article “E”

1. and. . further agrees that whenever it is proper to

do so it will take legal action in a Court of competent

jurisdiction to enforce any one or more of the legal

or equitable remedies available to a trade secret

plaintiff.?°

Although the agreement specified that the construction

and operation of the machine was a trade secret of Crop-

pers and obligated Budd to bring suit for

misappropriation should any of its employees breach

that confidence, Edwin Styring, a former Budd em-

ployee familiar with the machine and the secrecy agree-

ment under which it was sold, testified that: (1) “|t]he

machine was installed as a normal piece of manufactur-

ing equipment in |Budd’s} PTFE manufacturing areas,”;

(2) “|a] ny of our 500 employees in the plant could have

20. Plaintiffs Exhibit 169, p. 3.

A-65

seen it,”; (3) “\i]n fact, we took several Du Pont people to

see it so that they could help increase the speed. .

and (4) the machine was not “in any way shrouded th

hind a curtain.” Tr., pp. 1743-1744. When asked, “|wjas

the machine as used at the Budd Company and the proc-

ess by which the machine produced tape kept secret at

the Budd Company”, Styring responded: “[t}here was no

effort made.” Id.

On January 8, 1957 United States Letters Patent

No. 2,776,465, (hereinafter, Smith patent), issued to Du

Pont on an application filed by Jack C. Smith on August

12, 1954. The Smith patent teaches the production of

shaped articles by stretching paste-extruded PTFE at

temperatures between 300 degrees to 400 degrees C.,

after removal of the extrusion lubricant, to from two (2)

to thirty-five (35) times their original length. In the file

history of Gore’s patents, Gore admitted that “Smith, in

U.S. Patent 2,776,465, shows how to obtain a matrix

tensile strength of PTFE in the range of 25,000 psi.”””!

The Smith patent provides further that:

The heating and drawing [stretching] steps may be

conducted separately or simultaneously. Normally,

the steps are carried out at the same time.

Col. 7, lines 36-38. When Dr. John F. Lontz, a professor

of synthetic organic chemistry, was asked whether he

had an opinion “. . . as to the relationship of the disclo-

sure in the Smith patent of the simultaneous drawing

and sintering operation and the process as practiced by

Garlock. . . for the manufacture of stretched yarn?”, he

responded, “. . . it is my opinion that the simultaneous

drawing and sintering that was done at [Garlock] exactly

fits the disclosure by the Smith patent.” Tr., p. 1774.

(Emphasis added). Dr. Carleton 4. Sperati, Gore’s expert

witness, testified that a PTFE product manufactured ac-

cording to the process taught by the Smith patent would

21. Plaintiffs Exhibit 3, p. 73.

A-66

have a “microstructure characterized by nodes

interconnected by fibrils” as recited in claim 1 of the

‘390 patent. Tr., pp. 954-955.

Japanese patent 13560/67, (hereinafter, Sumitomo

patent), which was published on August 1, 1967, also

describes the stretching of paste-extruded PTFE. The

Sumitomo patent provides in pertinent part as follows:

This invention too has as its objective the ob-

taining of porous structural products which possess

continuous empty holes, but it enables the produc-

tion of products with a more uniform structure than

has been obtained by the methods of up to now,

these products being also superior in terms of

strength and being even in a very thin film state,

and (this invention) also presents a preparation

method for more inexpensive structural products.

Specifically, the porous structural products which

are obtained by this invention are structural prod-

ucts which are obtained by the method which is

characterized by the facts that an unsintered

tetraHuoroethylene resin blend which contains a

liquidform lubricant (singular number is assumed)

is molded into sheet form, rod form, tube form, strip

form, etc., by extrusion or rolling or a method which

includes both, after which this is heated to above

about 327 degrees C in a state stretched in at least

one direction in an unsintered state; and are porous

structural products which are obtained by further

stretching in at least one direction this porous struc-

tural product which has been heated once to above

about 327 degrees C.

Sumitomo patent, p. 3. Thus, the Sumitomo patent

teaches the production of high strength PTFE products

by stretching a paste-extruded PTFE article after re-

moval of extrusion lubricant and then heating it to tem-

peratures above 327 degrees C. The Sumitomo patent

teaches further that the stretching can be performed by

A-67

a pair of stretch rollers operated at different speeds. The

stretched products are described as up to 83% porous.

Tr., p. 571. The Sumitomo patent notes expressly that:

It is possible to vary these porosity values

mainly by varying the stretch ratio when using a

given same unsintered sheet. Again, when one

wishes to obtain a structural product of high poros-

ity, obviously one method is to increase the stretch

ratio.

Sumitomo patent, p. 10. In other words, if a highly po-

rous PTFE product is desired, the Sumitomo patent

directs that it be stretched more. The Sumitomo patent

attaches no specific significance to the rate of stretch

and was considered by the patent office before the 566

and ’390 patents issued. Indeed, while prosecuting the

patent applications leading to the 566 and ’390 patents,

Robert W. Gore argued to the patent office that the

Sumitomo patent did not teach the production of high

strength PTFE products such as could be obtained

when following the teachings of his invention.?? Refer-

ring to Example 1 of the Sumitomo patent, Robert W.

Gore computed the matrix tensile strength of the

stretched sample having “an apparent specific gravity”

of .84 and “a true specific gravi.y” of 2.17 to obtain a fig-

ure of 6980 p.s.i.2* He made no effort, however, to com-

pute the matrix tensile strengths of two additional sam-

ples contained in Example 1. The second sample was

obtained by stretching a portion of the first sample “by

100% ... at about 50°c . . .” and then heating it “at

about 250°c for about 30 minutes.” Sumitomo patent, p.

15. The Sumitomo patent reports that the resulting

product had an “apparent specific gravity” of “.54-.56”

and a porosity of “about 75%. . ..” Id. Similarly, the third

sample was obtained by stretching a portion of the first

22. Id, at p. 62.

23. Id

A-68

sample “by 150% ... at about 50°c .. .” and then heat-

ing it “at about 250°c for about 30 minutes.” Id. This

product was reported to have an “apparent specific grav-

ity” of “.37-.39” and a porosity of “about 83% ....” Id.

Although the stretching of PTFE was known to result in

an increase in tensile strength and, therefore, the actual

tensile strengths of the second and third samples re-

ported in Example 1 were greater than the actual tensile

strength of the first sample, Tr., p. 1778, Dr. Lontz as-

sumed the tensile strengths of the second and third sam-

ples to be the same as the first sample for the purpose of

computing their respective matrix tensile strengths. Tr.,

p. 1779. This assumption was made so that in the result-

ing computation the matrix tensile strengths of the sec-

ond and third samples would be minimum figures. Un-

der this assumption the matrix tensile strength of the

second sample conputes to over 10,000 p.s.i., while that

of the third sample computes to over 15,000 p.s.i. Tr., p.

1780.

Also contained in the Sumitomo patent are two other

examples. In Example 2 the patent teaches the impreg-

nation of other polymers into the porous structural prod-

ucts of Example 1. In Example 3 the patent teaches the

impregnation of the samples obtained in Example 1 with

different polymers and then bonding to a second shaped

article. The shaped article employed in Example 3 was

an iron plate. The court finds the invention claimed in

the 566 patent anticipated by prior art under : (1) 35

U.S.C. §102(a) because it was “known [and] used by

others in this country,” as evidenced by Gore’s use of the

401 machine and Budd’s use of the Cropper machine;

American Seating Co. v. National Seating Co., supra; A.

J. Industries, Inc. v. Dayton Steel Foundry Co., supra

and (2) 35 U.S.C. §102(b) because it was “in public use

[and] on sale in this country, more than one year prior to

the date of [Robert W. Gore’s] application for patent in

the United States,” again, as evidenced by Budd's use of

the Cropper machine. Dunlop Co. Ltd. v. Kelsey-Hayes

A-69

Co., supra; FMC Corp. v. F. E. Myers & Bros. Co..

supra.*+ Therefore the court holds the ’566 patent

invalid. In addition, the court finds the invention

claimed in the ’390 patent anticipated by prior art under

35 U.S.C. §§102(a) and (b) because: (1) the “nodes

interconnected by fibrils” microstructure claimed by the

patent is an inherent characteristic of paste-extruded

PTFE products stretched at temperatures between 300

degrees and 400 degrees C., as taught by the Smith pat-

ent; and (2) the high strength PTFE products of claims

1,9, 12, 14, 18, 35, 36, 43, 67 and 77 are inherent in the

examples taught by the Sumitomo patent. See: Ameri-

can Seating Co. v. National Seating Co., supra; FMC

Corp. v. F. E. Myers & Bros. Co., supra. Therefore, the

court holds the ’390 patent invalid.

In Nickola v. Peterson, 580 F.2d 898, 909 (6th Cir. ),

cert. denied, 440 U.S. 961, 99 S. Ct. 1504 (1979), the

Sixth Circuit Court of Appeals outlined the differences

between a finding of prior art under 35 U.S.C. §102 and

one of obviousness under 35 U.S.C. §103:

Confusion of the novelty requirement defined

in §102 with the nonobvious subject matter require-

ment defined in §103 is avoided when the statutory

sections are applied in proper sequence. The start-

ing point in appying §103 is the recognition that

the claimed invention — the claimed subject matter

as a whole — is novel under §102. If the claimed

subject matter be old, consideration of §103 is un-

necessary. The first clause of §103 states that: “A

patent may not be obtained though the invention is

not identically disclosed or described as set forth in

24. A finding of anticipation under the “public use” provision

of 35 U.S.C. §102(b) is mandated because although, as Gore con-

tends, Budd’s purchase of the Cropper machine was “pursuant to a

specific written injunction of secrecy,” Gore’s Post Trial Proposed

Findings of Fact and Conclusions of Law, p. 39, 4 11.10.7, such

agreement was neither followed by Budd nor enforced by Cropper.

A-70

section 102 of this title.” The heart of §103 then fol-

lows, “if the differences between the subject matter

sought to be patented and the prior art are such

that the subject matter as a whole would have been

obvious at the time the invention was made to a

person having ordinary skill in the art to which

said subject matter pertains.”

(Emphasis added). Thus, if a finding of anticipation by

prior art is made, consideration of obviousness is unnec-

essary. Assuming, however, that the 566 and °390 pat-

ents claimed novel inventions, the patents would still be

invalid as obvious under 35 U.S.C. §103.

In Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.

Ct. 684, 694 (1966), the United States Supreme Court

held:

While the ultimate question of patent validity is

one of law, Great A. & P. Tea Co. v. Supermarket

Equipment Corp., supra, 340 U.S. at 155, 71 S. Ct.

at 131, the §103 condition, which is but one of three

conditions, each of which must be satisfied, lends

itself to several basic factual inquiries. Under §103,

the scope and content of the prior art are to be deter-

mined; differences between the prior art and the

claims at issue are to be ascertained; and the level of

ordinary skill in the pertinent art resolved. Against

this background, the obviousness or nonob-

viousness of the subject matter is determined.

Accord: General Motors Corp. v. Toyota Motor Co. Ltd.,

667 F.2d 504 (6th Cir. 1981), (U.S. App. Pndg.); Smith

v. Acme General Corp., supra; Eltra Corp. v. Basic Inc., .

supra; Nickola v. Peterson, supra; Lucerne Products,

Inc. v. Cutler-Hammer, Inc., 568 F.2d 784 (6th Cir.

1977). The issue is a “mixed question of both fact and

law.” Kolene Corp. v. Motor City Metal Treating, Inc.,

440 F.2d 77 (6th Cir.), cert. denied. 404 U.S. 886, 92 S.

Ct. 203 (1971).

A-71

Robert W. Gore testified that the earliest date he

conceived his invention was October, 1969. By that

time, the stretching of thermoplastic polymers was

“well-known in the prior art.” Tr., p. 864. It was known

also that the stretching of thermoplastic films, tapes and

filaments resulted in significant improvements in the

tensile strengths of such products. Lloyd V. MacPher-

son, President of the Plastics Machinery Division of the

Marshall & Williams Company, (hereinafter, M & W), a

manufacturer of textile finishing and thermoplastic film

processing machinery, testified that “|t]he purpose of

stretching is in fact to increase the physical properties of

the film, primarily the tensile strength of the film, plus

the tear strength and puncture strength... .” Tr., p.

1349. By the “middle 1960's” M & W manufactured a

machine for use in stretching thermoplastic polymer

films which included a pair of cylindrical rolls operated

at different speeds. Tr., p. 865. The thermoplastic film to

be stretched was first heated to some temperature above

room temperature but below the melt point of the film to

facilitate stretching and then stretched between the dif-

ferential speed rolls. Tr., pp. 864-865, 1348-1349.

With regard to the Sumitomo patent, Robert W.

Gore admitted at trial that: (1) it describes production of

stretched PTFE “by taking a paste-extruded PTFE.

unsintered material, and stretching it and then sintering

it...”, Tr. p., 190; (2) the product described at page 3 is

“in general” the same as GORE-TEX film, Tr., p. 193;

(3) the first operation it teaches for producing porous

structural PTFE products is the same as that of Gore’s

patents, Tr., p. 194; (4) it describes the use of a “disper-

sion grade of PTFE” to produce porous structural PTFE

products;2° id; (5) it teaches that stretching is the most

25. Defendant's Exhibit 1035, a “Glossary of Technical

Terms” filed by Gore in a proceeding before the International Trade

Commission, defines the crystallinity of PTFE as follows: “For dis-

persion PTFE which has never been heated above the melt tem-

perature, the polymer is 99 + % crystalline.”

A-72

important part of the invention, Tr., p. 197; (6) it teaches

that the porosity of a PTFE product can be increased by

stretching it more, Tr., p. 199; (7) it describes each

method of stretching found in the ’566 patent in addition

to stretching between a pair of differential speed rolls,

stretching above 327 degrees C., and stretching at right

angles, Tr., p. 201; (8) the products produced by follow-

ing its teaching would be characterized by “nodes inter-

connected by fibrils,” Tr., p. 202; (9) it teaches that

“when one wishes to obtain a structural product of high

porosity, obviously one method is to increase the stretch

ratio.” (i.e., stretch it more), Tr., p. 203, (emphasis

added); and (10) that while it teaches “there is a limit to

the stretching of a molded product in [an] unsintered

state,” Sumitomo patent, p. 10, it does not provide what

the limit is. Tr., p. 205.

The Sumitomo patent discloses further that:

Unsintered tetrafluoroethylene resin has a

tendency to assume a fine fibrous texture when it is

subjected to shearing force, such as when it is being

extruded from the die in the extrusion process or

when it is being rolled with rolls or when it has been

stirred vigorously. A resin which contains a

liquidform lubricant turns fibrous even more easily.

This conversion to a fibrous state is one of the im-

portant points when obtaining the structural prod-

ucts which are obtained by this invention.

Sumitomo patent, p. 10. Robert W. Gore testified that it

was known in the prior art that fibrils were formed when

the PTFE resin passed through the extrusion die and

the calendering rolls and that the amount of fibrils

present depended on the amount of shear or deformation

applied. Tr., p. 178. He testified further that prior to Oc-

tober, 1969 he knew that the paste-extrusion process re-

sulted in the formation of fibrils, Tr., pp. 170-171, and

that if paste-extruded PTFE was stretched it would form

the type of fibrils described in the ’566 patent. Tr., p.

182.

————m==

A-73

Russian Author’s Certificate 240,997 teaches that

paste-extruded “tetrafluoroethylene-4D” articles may be

“drawn [stretched] while heated to 100-300 degrees C.

to 250-400% from the initial length.” Russian Author’s

Certificate 240,997, p.2, Example 2. It teaches further

that “[hjeating of up to 150°C. in drawing to 100% and

up to 300°C. in drawing to 300% is recommended.” Id.

Example 1. The resulting products are described as hav-

ing porosities between “50-85%.” Id. The parties dispute

whether the Russian Author’s Certificate should be con-

sidered prior art to the 566 and °390 patents. It is un-

questioned that it is not a patent. Therefore, it becomes a

prior art reference only as of the date it becomes a

printed publication. Tr., pp. 2257-2258. Page one of the

Russian Author’s Certificate provides that it was “[p]ub-

lished April 1, 1969” and thereafter relates a “|p]ublica-

tion date of description [of] August 19, 1969.” Both of

these dates are prior to the earliest date Robert W. Gore

claims he conceived the inventions of the 566 and °390

patents. The certification page from the United States

Patent and Trademark Office provides that the Russian

Author’s Certificate was first officially translated on July

16, 1973, subsequent to the date the inventions claimed

in the patents were conceived. W. L. Gore testified that

he was not made aware of “this document” until Decem-

ber 3, 1975. Tr., p. 1081. Accordingly, Gore contends

that the Russian Author’s Certificate cannot be consid-

ered a prior art reference to the 566 and ’390 patents.

The court finds Gore’s contention unpersuasive. In a

brief filed in a proceeding before the International Trade

Commission concerning the validity of the 915 patent

Gore admitted that the publication date of Russian Au-

thor’s Certificate 240,997 was August 19, 1969. Specifi-

cally, that brief provides as follows:

Russian Author’s Certificate Nos. 240,996 and

240,997, (as opposed to the abstracts) can be con-

sidered either “(foreign) Patent(s)” or a “printed

publication” for the purposes of §102(a). Under ei-

A-74

ther designation, the references have effective dates

of November 17, 1969 and August 19, 1969, the re-

spective publication dates of the descriptions of the

inventions .26

(Emphasis added). In addition, the court finds Gore’s

contention, that “. . . whether ‘tetrafluoroethylene-4D’,

or ‘Ftoroplast-4D’, no witness was able to establish the

nature of that material, its degree of crystallinity or its

availability,”*° Gore’s Post Trial Proposed Findings of

Fact and Conclusions of Law, p. 28, 411.3.5, to be with-

out merit. Robert W. Gore testified that the Russian Au-

thor’s Certificate discloses the production of porous

PTFE products and that it teaches the stretching of an

unsintered paste-extruded PTFE material up to 300% at

a preferred temperature of 300 degrees C. Tr., pp. 223-

224. His testimony is supported by that of Dr. Sperati.

Tr., p. 867. Indeed, when asked, “(i)s there any doubt in

your mind that the tetrafluoroethylene-4D is the mate-

rial referred to in the Russian reference, and that that is

polytetrafluoroethylene?”, Dr. Sperati responded, “(n)o.”

Id. Finally, Dr. Lontz testified that the material disclosed

by Russian Author’s Certificate 240,997 “. . . is a linear

macromolecular polymer of a very high molecular rate,

and highly crystalline.” Tr., p. 1781. Although Robert W.

Gore and W. L. Gore were aware that the Russian Au-

thor’s Certificate existed, neither of them brought it to

the attention of the patent examiner in connection with

the prosecution of the application that issued as the 566

patent. Tr., pp. 225-226. Premised on these facts, the

court finds that: (1) the experts who testified were suffi-

ciently familiar with the material disclosed in Russian

Author’s Certificate 240,997; and (2) that Gore knew

that it existed, so that it may be considered prior art to

the ’566 and ’390 patents. The court so holds.

26. Defendant’s Exhibit 1223, p. 17.

27. According to Dr. Lontz, “tetrafluoroethylene-4D” should

have been translated as “Floroplast-4D.” Tr., pp. 2115-2116.

A-75

The ’915 patent teaches the stretching of paste-ex-

truded unsintered PTFE ribbons at temperatures be-

tween 200 degrees to 300 degrees C., after removal of

extrusion lubricant. Stretching is performed between a

pair of differential speed rolls and an “input or slow roll

speed” of thirty (30) feet per minute is expressly dis-

closed. Tr., pp. 868,179. Robert W. Gore testified that

the thread seal tape manufactured under the teachings

of the patent had a microstructure of nodes

interconnected by fibrils. Tr., p. 179. When asked,

‘“(n)ow, is there any doubt in your mind that the

stretched PTFE pipe thread sealant was indeed being

made and sold by W. L. Gore & Associates prior to the

time that you made your invention?”, Robert W. Gore re-

sponded, “I guess not.” Tr., p. 184. He testified further,

however, that he never informed the patent office of

such manufacture and sales.

As discussed previously, the Smith patent teaches

the production of shaped articles by stretching paste-ex-

truded PTFE at temperatures between 300 degrees to

400 degrees C., after removal of extrusion lubricant, to

from two (2) to thirty-five (35) times their original length

and Gore admitted that the patent “. . . shows how to ob-

tain a matrix tensile strength of PTFE in the range of

25,000 psi.”

United States Letters Patent No. 3,214,503,

(hereinafter, Markwood patent), issued on October 26,

1965. It teaches the production of polypropylene film of

high strength by stretching it at high rates. It teaches

further that:

It has been determined that the rate of draw for

the purposes of the invention must be at least about

75,000% per minute and can be up to as high as can

be tolerated without breaking of the film. The high

rate of draw means that the film must be drawn

28. See: F.N. 21, supra.

A-76

over an unusually short span, i.e., in the order of a

few inches down to a fraction of an inch.

Col. 2, lines 10-17. (Emphasis added). The Markwood

patent was not cited to the patent office as a prior art ref-

erence to the 566 and ’390 patents.

United States Letters Patent No. 3,208,100,

(hereinafter, Nash patent), issued on September 28,

1965. It describes a machine which includes differential

speed rolls for stretching plastic films longitudi .ally. It

teaches that the following four (4) physical conditions

are required for stretching successfully: “(1) [t]he heat-

ing of the plastic web or film to a proper degree to

plastercise the film,”; “(2) [a] stretch ratio of the film

must be provided,”; “(3) [a] stretch rate must be pro-

vided,”; and “(4) [t]he plastercised film must be ‘set’

after stretching.” Col. 1, lines 35-40. It teaches further

that the stretch ratio of the plastic film is provided by the

difference in linear speed between the stretch rollers.

Dr. Sperati testified that the stretch rate is ascertained

by the linear distance between such rollers. Tr., pp. 878-

879. The Nash patent was not cited to the patent office

as a prior art reference to the 566 and '390 patents. It is

owned by M&W. MacPherson testified that by 1968, it

was known that the stretching of thermoplastic films

had to be performed over short distances to be effective.

Tr., pp. 1352-1360.

Finally, although Gore and Budd produced and sold

paste-extruded, unsintered PTFE thread seal tape,

stretched at rates above 10% per second, at tempera-

tures above 35 degrees and below 327 degrees C., after

removal of extrusion lubricant, before the 566 and ’390

patents issued, their practices were not cited to the pat-

ent office as prior art references.

The court has compared the prior art analyzed

above to the ’566 patent and finds as follows: (1) there

are no differences between claim 1 and the processes

used by Gore and Budd to produce paste-extruded,

unsintered PTFE thread seal tape; (2) the only differ-

A-77

ence between claims 1, 3 and 17 and the Sumitomo pat-

ent is that the Sumitomo patent does not quantify the

rate of stretch or the temperature at which stretching

shoula be conducted;?° and (3) the only difference be-

tween claims 1, 3, 17 and 19 and the Smith patent is that

the Smith patent does not quantify the rate at which

PTFE should be stretched. Similarly, with regard to the

390 patent the court finds as follows: (1) the only differ-

ence between claims 1, 9, 12, 14, 18, and 43 and the

Smith patent is that the Smith patent neither describes

its products as porous nor characterizes them as having

a microstructure of nodes interconnected by fibrils;%°

and (2) the only difference between the claims 1, 9, 12,

14, 35, 36, 43, 67 and 77 and the Sumitomo patent is

that the Sumitomo patent does not quantify the matrix

tensile strength of the PTFE articles that are outlined in

Examples 1-3.°!

The court finds further that the limitations which

describe the articles contained in claim 12, “a shaped

article,” claim 14, “a film” and claim 18, “continuous

filaments” fail to distinguish prior art. The Sumitomo

patent describes porous films produced from stretched

29. The Markwood patent, however, teaches that the stretching

of a thermoplastic film should be conducted at rates of stretch “as

high as can be tolerated without breaking of the film,” and Russian

Author's Certificate 240, 997 teaches that the stretching of a paste-

extruded unsintered material should be conducted at temperatures

between 200 degrees and 300 degrees C.

30. Gore, however, admits that: (1) the Smith patent “shows

how to obtain a matrix tensile strength of PTFE in the range of

25,000 psi,”; and that (2) a PTFE product manufactured according

to the process it teaches would have a microstructure of nodes

interconnected by fibrils.

31. As discussed previously, however, the porous PTFE prod-

ucts described in the Sumitomo patent have matrix tensile

strengths in excess of the 7300 and 9290 p.s.i. minimum values set

forth in the °390 patent. In substance, therefore, there are no

differences between the products of the '°390 and Sumitomo pat-

ents.

A-78

PTFE and the Smith patent describes “. . . shaped arti-

cles such as filaments, fibers, film, foils, tapes, rods,

tubes and similar structures,” produced from stretched

PTFE. Col. 1, lines 18-19. Similarly, the limitations

contained in claims 35 and 36, (‘“‘a laminated structure,”

formed by bonding a stretched PTFE material to “a sec-

ond shaped article”), fail to distinguish prior art because

Exanipie 3 of the Sumitomo patent teaches the same

thing. in addition, claim 67, which recites “{a]n impreg-

nated structure comprising” a shaped article of

stretched PTFE with “a polymer impregnated within the

pores of the said shaped article,” fails to distinguish prior

art because the Sumitomo patent also describes such

structures. Finally, claim 43, which recites “a dielectric

constant of 1.2-1.8,” and claim 77, which recites a pore

size, (i.e., “pores that will pass a gas but will not pass liq-

uid water’’), fail to distinguish prior art because such

properties are inherent characteristics of porous

stretched PTFE products produced in accordance with

the Sumitomo patent. When asked, “.. . are the dielec-

tric products of your stretched PTFE products. . . inher-

ently characteristic of the products themselves ... ?”,

Robert W. Gore responded, “|{Yjes.” Tr., pp. 424-425.

Similarly, when asked whether “. . . the pore size is too

an inherent characteristic of your product... ?”, he re-

sponded, “|i|t varies, but it is inherent in a given prod-

uct.” Tr., p. 425. Robert W. Gore’s testimony is sup-

ported by that of Dr. Sperati. When asked, “{i]sn’t it a

fact ... that the breathability of the film, the water re-

sistance of the film, is .. . an inherent character of the

stretched products that we are talking about?”, Dr.

Sperati responded, “|yljes.” Tr., pp. 977-978.

In this case “the level of ordinary skill in the perti-

nent art,” Graham v. John Deere Co., supra, would be

possessed by an individual familiar with the stretching

of thermoplastic films and fibers. The court finds that

the following would be within the level of ordinary skill

of such an individual as of October, 1969: (1) to stretch

A-79

an unsintered PTFE film produced by a paste-extrusion

technique, after removal of extrusion lubricant, at a rate

above 10% per second; (2) to produce a porous PTFE

film having superior tensile strength by stretching a

paste-extruded PTFE film, after removal of extrusion lu-

bricant and heating the film in the stretched state to

above the sintering temperature of the PTFE material;**

(3) to control the porosity of stretched and sintered

PTFE film by varying the stretch patio so that higher

porosities could be obtained by increasing the ratios;**

(4) to control the temperature of the film stretched,

stretch ratio, stretch rate and to “set” the film after

stretching;*? (5) to use high speeds to perform stretch-

ing and draw rates as high as the film would tolerate

without breaking;*° (6) to use short draw spans when

using high draw rates to stretch thermoplastic films;*°

(7) to stretch an unsintered PTFE ribbon produced by a

paste-extrusion technique between a pair of stretch roll-

ers, operated at different speeds;*’ and (8) to heat an

unsintered PTFE film produced by a paste-extrusion

technique while the film is expanded or stretched to

produce a stretched PTFE product which has a porosity

of 80%. %8

Premised on these facts, the court holds that the in-

ventions claimed in the '566 and ‘390 patents were obvi-

ous under 35 U.S.C. §103 as of October, 1969. See: Gra-

ham v. John Deere Co., supra; General Motors Corp. v.

Toyota Motor Co., Ltd., supra; Nickola v. Peterson,

supra; Lucerne Products, Inc. v. Cutler-Hammer, Inc.,

supra. Such a holding is mandated notwithstanding

32. It is unquestioned that this is disclosed in the Sumitomo

patent.

33. Id.

34. These conditions are disclosed in the Nash patent.

35. Both disclosed in the Markwood patent.

36. Id.

37. This is disclosed in Gore's ‘915 patent.

38. This is disclosed in Russian Author's Certificate 240,997

A-80

Gore’s argument of commercial success. Commercial

success is but one of a number of “[s]econdary consider-

ations. . . [that] might be utilized to give light to the cir-

cumstances surrounding the origin of the subject matter

sought to be patented.” Graham v. John Deere Co.,

supra, 383 U.S. at 17, 18, 86 S.Ct. at 694. Alone, it is not

sufficient to establish that a process or product is the re-

sult of invention. Sakraida v. Ag Pro, Inc., 425 U.S. 273,

278-279, 96 S.Ct. 1532, 1535-1536 (1976); Anderson’s-

Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57,

61, 90 S.Ct. 305, 308 (1969); Eltra Corp. v. Basic, Inc.,

supra. It is unquestioned that if an alleged invention is

found obvious, no amount of commercial success can

save it. In this case it is equally clear that Robert W. Gore

performed nothing unique when he stretched an

unsintered PTFE article produced by a paste-extrusion

process, after removal of extrusion lubricant, at a tem-

perature above 35 degrees C., but below the sintering

temperature of PTFE, at a rate of stretch above 10% per

second. Indeed, if one was to follow Example 1 of the

Sumitomo patent to produce a PTFE film stretched

250% in a lengthwise direction and the slow roll speed

was thirty (30) feet per minute as described in Gore’s

915 patent, the distarice between the stretch rollers

would have to exceed twenty-eight (28) feet for the rate

of stretch to be below 10% per second. Tr., pp. 891-894.

The court is persuaded by Garlock’s contention that “[i]t

is unconceivable that one skilled in the art of stretching

thermoplastic films would use a stretch distance of

twenty-eight feet in stretching a film having a thickness

of the order of four mils (0.004 inch) as taught by

Sumitomo.” Garlock’s Post Trial Brief, p. 49.

35 U.S.C. §112 provides a standard of disclosure for

patent claims.*? Under the statute an application for a

patent must meet: (1) the enablement requirement,

which necessitates that an applicant for a patent set

39. See: F.N. 4, supra.

A-81

forth in the specification information sufficient to enable

a person skilled in the relevant art to make and use the

invention; In re Hafner, 410 F.2d 1403 (CCPA 1969);

and (2) the best mode requirement, which necessitates

that an applicant “set forth the best mode contemplated

by {him] ... of carrying out his invention.” 35 U.S.C.

§112. See generally: Chisum, Patents Vol. 2 §8.03 et seq.

(1981). In Stearn v. Superior Distributing Co., 674 F.2d

539, 543-544 (6th Cir. 1982), the Sixth Circuit Court of

Appeals held that “[t}he objectives of 35 U.S.C. §112...

are that others may construct and use the invention after

the expiration of the patent and that the public be in-

formed during the life of the patent of the limits of the

monopoly asserted so that the public may know which

features may be safely used or manufactured without a

license and which may not.” (citations omitted). See

also: General Electric Co. v. Wabash Appliance Corp.,

304 U.S. 364, 58 S.Ct. 899 (1938). “[I]n determining the

questions of invention and infringement ... [courts]

need and may insist upon the precision enjoined by the

statute,” United Carbon Co. v. Binney & Smith Co., 317

U.S. 228, 232, 63 S.Ct. 165, 168 (1942), because “.. .

the claims [of the patent] measure the invention.” Conti-

nental Paper Bag Co. v. Eastern Paper Bag Cou., 210 U.S.

405, 419, 28 S.Ct. 748, 751 (1908). See also: General

Electric Co. v. Wabash Appliance Corp., supra. Indeed,

in United Carbon Co. v. Binney & Smith Co., supra, 317

U.S. at 233, 63 S.Ct. at 168, the United States Supreme

Court held that “|t]o sustain claims so indefinite as not to

give the notice required by the statute would be in direct

contravention of the public interest which Congress

therein recognized and sought to protect.” For the rea-

sons which follow the court finds the ’566 and '390 pat-

ents invalid for indefiniteness under 35 U.S.C. §112.

The determination of rate of stretch is critical to the

validity of the 566 and ’390 patents. To distinguish prior

art Rebert W. Gore contends that his inventions require

“... arate exceeding about 10% per second.. .”. Claim

A-82

1 of the 566 patent. See also: Claim 71 of the 390 patent

which provides “. . . stretching at a rate exceeding about

10% per second ...”. Neither of the patents, however,

contain a definition of “stretch rate” nor an equation by

which the rate of stretch “may be computed. Indeed, the

court finds that: (1) the term “rate of stretch” does not

have a single definition; (2) different formulas for com-

puting “stretch rate” are known; and (3) different values

result from the use of such formulas. Dr. Armstrong tes-

tified:

Now, the first thing I would like to do is to point

out that there are two general causes for ambiguity

in calculating rate of stretch or rate of strain, and I

will talk about both of these causes in more detail as

I go through the discussion.

But briefly, the two causes are first, first that

there are many definitions of strain that have been

used in the literature, and each one of these defini-

tions of strain can lead to a different formula or defi-

nition for rate of strain.

Secondly, if I pick a definition for rate of strain

and decide on that, there is still a variety of ways

that the particular formula can be applied to a spe-

cific process to calculate a definite value of rate of

strain.

For example, one has to specify whether he

means or wants to calculate average versus instan-

taneous rate of stretch in the process.

Secondly, for either calculated average or in-

stantaneous rate of strain, I can compute different

values depending how | hold the different processes

under consideration.

I can pick different velocities, different velocity

distributions for a process, as | will show in a mo-

ment, and get different values; and in fact, different

velocity distributions have been brought up during

the testimony so far in this trial as being possible

distributions.

LL

A-83

On reading the patents we find there is nc

guidance given on either of these sources of ambigu-

ity in calculating rate of stretch.

Tr., pp. 1868-1870. (Emphasis added).?°

In this case there are two different stretching oper-

ations involved. The first relates to stretching a PTFE

tape or filament between a pair of differential speed roll-

ers. The stretching occurs because of the difference in

speed of the rollers. Thus, if the stretch roller operates at

twice the speed of the feed roller, the tape stretched be-

tween the rollers will double in length. Gore character-

izes this process “continuous.” The parties stipulate that

Garlock’s PTFE tape and filaments are produced by a

“continuous” process. The second process relates to

stretching a PTFE web transversely to its direction of

longitudinal travel. The PTFE web is moved at a con-

stant speed and stretched laterally to make it wider

rather than longer. Gore characterizes this as a “batch”

process. The parties stipulate that Garlock’s PTFE film

is produced by a “batch” process.

The formula advanced by Gore for computing rate

of stretch in a continuous process is expressed as fol-

lows:

Vo2 ne V2

2dV,

The value: R, equals the rate of stretch in percent per

second; V,, equals the peripheral speed of the slow roll;

V., equals the peripheral speed of the fast roll; and d,

equals the length of the stretch zone, defined as, the dis-

tance the film travels from the point it leaves the slow

roll to the point it contacts the fast roll. Tr., pp. 389-396.

The formula for the same stretching process ad-

vanced by Gore in its Japanese patent 1,026,517 which,

corresponds to and is premised on the patent applica-

R = 100

40. “Rate of strain” and “rate of stretch” are synonomous. Tr.,

p. 1868.

A-84

tions filed in the United States upon which the ’566 and

’°390 patents issued, is expressed as follows:

V>

V

R = *x 100

d

The value: R, equals the rate of stretch in percent per

second; V,, equals the peripheral speed of the slow roll;

V>, equals the peripheral speed of the fast roll; and d,

equals the length of the stretch zone. It is unquestioned

that in any given process for stretching a thermoplastic

film on a longitudinal stretching machine, a different

rate of stretch will be computed when using the formula

advanced by Gore in this case rather than that set forth

in its Japanese patent. Considering Table 5 of the 566

patent, in which a rate of stretch of 574% per second is

reported, Dr. Armstrong testified:

Now, from the data in Table 5 I can calculate

rates of strain with either Formula 1 or Formula 2.

If | use Formula 1, I get a rate of strain of 374

percent per second.

If I use Formula 2, due to Markwood, I get a

rate of strain of 724 percent per second.

Unfortunately, when I look in Table 5, I find

given a rate of strain of 574 percent per second,

which is not reconcilable with either one of these

values, so 1 don’t know which one of these formulas

to pick.

In fact, I don’t know of any other formulas that

would give a value of 574 percent per second. The

probable — it is possible to construct one — I won’t

say it doesn’t exist, but I don’t know of any reason-

able formulas that give that.

So in the continuous process then we have no

guidance as to what formula to pick if we want to

evaluate a process and see if it falls within or with-

out the scope of the claims of the patent.

Tr., pp. 1888-1889. (Emphasis added). Dr. Armstrong

testified further that Table 5 is “[t]he only place in the

A-85

patent where I find sufficient data to calculate a rate of

strain...”. Tr., p. 1887. (Emphasis added). The formula

for computing stretch rate that is set forth in Gore’s Jap-

anese patent is the same as that derived from definitions

contained in the 1970 Annual Book of ASTM Stand-

ards.*! Tr., pp. 928-929. When applied to Garlock’s proc-

ess for producing PLASTOLON film the rate of stretch

computes to a value of 4.81% per second.

The rate of stretch in a “batch” process may be com-

puted throughout the process by using the following for-

mula:

V x 100

lop +Vt

The value: R;, equals the instantaneous rate of stretch in

percent per second at time t; V, equals the speed at the

pull; 1,5, equals the initial length or width to be

stretched; and t, equals the total time of stretch. As com-

puted by the formula, the rate of stretch decreases from

a maximum at the beginning of the process to a mini-

mum at the end. Tr., p. 378. It is possible, however, to

compute an average rate of stretch for a “batch” process.

A formula to perform such a computation was developed

by Shanti Mehta, a Gore employee, in 1972.72 When

computed according to Mehta’s formula the average rate

of stretch of Garlock’s “batch” process is 4.81% per sec-

ond. Tr., pp. 900-901 and 1894. When computed accord-

ing to the formula advanced by Gore in this case, how-

ever, the average rate of stretch of Garlock’s “batch”

process is 20.81% per second. That formula is as follows:

ioe = 4

R =

41. ASTM stands for the American Society for Testing and Ma-

terials.

42. Defendant’s Exhibit 1098.

A-86

The value: R, equals the rate of stretch in percent per

second; Lz equals the final length or width of the

stretched film; L,, equals the initial length or width of

the film before it was stretched; and t, equals the total

time of stretch.

It is unquestioned that Mehta’s formula provides

the same value for rate of stretch as the formula

contained in Gore’s Japanese patent. It is equally clear

that Mehta’s formula is consistent with: (1) the formula

for computing the time of stretch as taught in United

States Letters Patent No. 3,652,759, (hereinafter,

Schlemmer patent);4° (2) the formula for computing

stretch rate derived from definitions contained in the

1970 Annual Book of ASTM Standards; and (3) with the

definition of stretch rate used by polymer rheologists be-

fore the applications upon which the ’566 and ’390 pat-

ents issued, were filed. Tr., pp. 1876-1877.

Also recited on the ’566 patent is a critical minimum

rate of stretch:

The preferred temperature range is from 35°C

to 327°C. At the lower temperatures within this

range it has been found that there is a maximum

rate of expansion beyond which fracture occurs, as

well as a lower limit beneath which fracture also oc-

curs or where weak

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