Appendix — Chas. S. Tanner Co. v. Air Products & Chemicals, Inc.

IN THE

Supreme Court of the Un

OCTOBER TERM, 1984

CHAS. S. TANNER CO. and

NATIONAL STARCH AND CHEMICAL

CORPORATION,

Petitioners,

v.

AIR PRODUCTS AND CHEMICALS, INC.,

Respondent.

ON WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

APPENDIX TO

PETITION FOR CERTIORARI

GEOFFREY C. HAZARD, JR. HERBERT F. SCHWARTZ

New Haven, Connecticut 875 Third Avenue

New York, New York 10022

Tel.: (212) 715-0600

Attorneys for Petitioners

Of Counsel:

FisH & NEAVE

875 Third Avenue

New York, New York 10022

Tel.: (212) 715-0600

October 23, 1984

a)

TABLE OF CONTENTS

Court of Appeals Decision, Filed June 29, 1984 20.00.0000...

District Court Order and Opinion, Including Findings of

Fact and Conclusions of Law, Filed May 2, 1983........

Court of Appeals Judgment, Filed August 28, 1984........

District Court Judgment, Filed May 12, 1983...........0......

District Court Order and Opinion Re Defendents’ Mo-

tion Under Rules 59(e) and 60(b), F.R.Civ.P., For

Alteration And/Or Relief From The Award Of At-

torneys’ Fees, Filed June 14, 1983. .................cc0c00scssece0es

Stipulated Order, Filed December 21, 1981 ......00000c...

Urey TUL TAGE TOMI ia oc snescscccnccissscsnsosnsnecaas

Constitutional Provision, Rules And Canon Involved .....

A-1

Court of Appeals Decision, Filed June 29, 1984

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CURCUIT

AIR PRODUCTS AND CHEMICALS, INC.,

Appellee,

v. Appeal No. 83-1230

CHAS. S. TANNER CO. and NATIONAL

STARCH & CHEMICAL CORP.,

Appellants.

DECIDED: June 29, 1984

Before FRIEDMAN, Circuit Judge, COWEN, Senior Cir-

cuit Judge, and SMITH, Circuit Judge.

SMITH, Circuit Judge.

DECISION

The judgment of the United States District Court for the

District of South Carolina, 219 USPQ 223, holding that the

Lindemann patent No. 3,708,388 (the ‘388 patent), assigned to

appellee Air Products and Chemicals, Inc. (Air Products), is

not invalid, is enforceable, and is infringed by the products of

appellants Chas. S. Tanner Co. and National Starch and

Chemical Corp. ( National), is affirmed.

OPINION

1. Obviousness

National stresses that the trial court, in differentiating

between the prior art and the claimed invention, failed to

realize that the ’388 patent in fact claims, or does not prohibit,

the use of surfactants in promoting the dispersion of vinyl

acetate and ethylene in water to produce the claimed adhesive

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Court of Appeals Decision, Filed June 29, 1984

composition. National points both to example | of the '388

patent, which discloses the use of surfactants, and to the

language of claim 1 which does not on its face exclude

surfactants, as evidence of the trial court’s error in allegedly

finding what National terms a “no surfactant” limitation in the

‘388 patent.

The ‘388 patent, however, claims only the type of com-

position disclosed in example 8. 219 USPQ at 227. Expert

testimony established that the process claimed in claim | results

in the unique product described in example 8; that example

corresponds to Air Products’ and its licensee’s manufactured

adhesives as well as to National’s allegedly infringing products.

219 USPQ at 227, 229, 245-48. Our review of the record

indicates no clear error in the district court’s finding that the

‘388 patent claims only the type of composition exemplified by

example 8, and we so limit our analysis.

National’s second point that claim | does not expressly

exclude surfactants is correct on its face. However, claim | is

limited to “[a]n adhesive composition consisting essentially of

an aqueous vinyl acetate-ethylene copolymer emulsion * * *

copolymerized in the presence of a protective colloid * * *

consisting essentially of a polyvinyl alcohol and hydroxyethy|

cellulose.” 219 USPQ at 230. As the trial court noted, the

“consisting essentially of” language limits the use of additional

ingredients to those which would not change the invention’s

hasic character. 219 USPQ at 230. Hence any surfactants

employed in the claimed composition would be limited to those

used in amounts which would not alter the invention’s basic

characteristics. 219 USPQ at 234.

National’s specific contentions that the trial court failed to

appreciate the significance of the prior art focuses on four

references. Regarding three of these—the Air Products ’990

patent, the French ’382 patent, and the German ‘085 patent

—National emphasizes that the district court failed in dis-

tinguishing these from the claimed composition because of

what National terms the erroneous “no surfactant” limitation.

The lower court did carefully differentiate each of these refer-

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Court of Appeals Decision, Filed June 29, 1984

ences from the claimed product, however, as regards both the

necessity for “copolymerization in the presence of a protective

colloid” and the degree to which surfactants were used.

For example, the ‘990 patent, while disclosing that a

protective colloid can be used, teaches as well that the colloid

should be kept “at the lowest level possible” and that several

surfactants should be used. 219 USPQ at 238. A similar

problem exists with the German ’085 patent, which teaches the

use of a protective colloid as a sort of afterthought to the use of

surfactants. 219 USPQ at 235-36. Likewise, the French ’382

patent teaches a process using a mixture of surfactants and

protective colloids such that the level of surfactants would

exceed the “consisting essentially of” limitation in the ’388

patent. 219 USPQ at 234. Regarding the fourth reference,

Daratak B, National’s argument that the claimed adhesive

constitutes nothing more than the obvious substitution of

ethylene for dibutyl maleate into Daratak B, founders on well-

known law: the “obvious to try” test is not appropriate under 35

U.S.C. § 103 (1982). 219 USPQ at 239.

Finally, National claims clear error as regards the lower

court’s findings on secondary considerations pertaining to

obviousness. The record is particularly strong, however, re-

garding the invention’s immediate and surprising commercial

success, due to its unexpected adhesive and cohesive properties.

219 USPQ at 240.

In sum, we find no clear error in the district court’s factual

findings regarding obviousness and accordingly hold that the

district court correctly held the patent not to be invalid.

2. Unenforceability

National contends that the court below erroneously styled

as fraud what was National’s inequitable conduct claim.

Regardless of which way the issue was analyzed, however,

National must at least have established that the prior art

allegedly withheld from the patent office was material.

Orthopedic Equipment Co. v. All Orthopedic Appliances, 707

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Court of Appeals Decision, Filed June 29, 1984

F.2d 1376, 1383, 217 USPQ 1281, 1286 ( Fed. Cir. 1983). We

see insufficient evidence of materiality to find clear error on this

point. The French and German patents were merely cumula-

tive to the prior art, especially in view of the substantial

progress made by Lindemann as reflected in the ‘851 patent,

which was before the examiner. 219 USPQ at 242. Similarly,

although the court below did not discuss in detail why Daratak

B was not material prior art, the record and the court’s analysis

show that Daratak B employed the comonomer dibutyl maleate

instead of ethylene with the vinyl acetate and that the

copolymerization was carried out at atmospheric rather thas

elevated pressure. In addition, Daratak B was poor in cohesive

strength and creep resistance. 219 USPQ at 232, 239-40. In

sum, we hold that the trial court did not commit clear error in

finding the patent enforceable.

3. Infringement

National’s primary contention against infringement is that

its products are terpolymers, i.e., compositions containing third

monomers, added to improve adhesive properties, in addition

to the monomers vinyl acetate and ethylene—such that its

products are lifted outside the “consisting essentially of” lan-

guage of the ‘388 patent, claim |. The record established,

however, that these third monomers (acrylamide and others),

which were added in very small concentrations, were not such

as to change the basic and novel adhesive characteristics of the

claimed invention, for which National’s products directly

substituted. 219 USPQ 249-50, 245-48. National's advertising

and advice to customers did not tout the presence of the third

monomers, and in fact the addition of the acrylamide caused

manufacturing problems, so that it was replaced by another

third monomer. Having reviewed the record, we find no clear

error in the trial court’s finding that National's products

infringed Air Products’ composition, both directly and under

the doctrine of equivalents.

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Court of Appeais Decision, Filed June 29, 1984

4. Exceptional Case

As an initial matter, National contends that it was “sur-

prised” by the “exceptional case” issue because the trial court

did not permit the exchange of pretrial briefs. Later the trial

court excluded opinions of counsel from the record which

National belatedly offered in its defense on this issue. To the

extent National is raising a due process violation before this

court, we reject the contention, as the trial court required the

Parties to exchange extensive information before trial and

entered a pretrial “stipulated order” delineating the issues in

reference to the pleadings. Moreover, National's trial counsel

did not raise the exchange-of-pretrial-briefs issue until after

trial, and then only informally. While the trial court's practice

concerning pretrial briefs may not be the better one in this

situation, it does not constitute grounds for either denial of due

process or harmful error. Cf Photovest Corp. v. Fotomat Corp.,

606 F.2d 704, 708-11 (7th Cir. 1979), cert. denied, 445 US.

917 (1980). In any event, the district court did admit and

analyze the Wacker-Chemie opinions, the DuPont opinion, and

National’s 1973 opinion, and allowed unrebutted testimony

concerning the 1973 opinion. 219 USPQ at 241. Its exclusion

of additional opinions belatedly offered by National cannot be

considered error, and certainly not harmful error.

National attacks the lower court's finding that this is an

“exceptional case” under 35 U.S.C. § 285, such that National

must pay Air Products’ reasonable attorney fees. This court will

not overrule the district court’s finding on this issue unless we

see an abuse of discretion. Orthopedic Equipment Co., 707 F.2d

at 1384, 217 USPQ at 1287. National has failed to show such

abuse. For example, National's addition of third monomers to

its products constituted important evidence that National was

acting to avoid the ‘388 patent, especially since these additional

monomers added nothing to the nature of the product and in

fact caused process problems, as mentioned above. Additional

evidence was National's hiring one of the inventors, Linde-

mann, who instructed his chemist to copy example 8. The

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Court of Appeals Decision, Filed June 29, 1984

probity of the most important opinion of counsel in evidence,

National’s 1973 opinion concluding that the ‘388 patent was

invalid, is undermined by National’s subsequent actions. It

negotiated with Air Products for a license and declined to

manufacture the claimed composition until 1980, when Nation-

al acquired Tanner, which had been manufacturing infringing

products. Considering all of this in the record below, we find

no abuse of discretion in the trial court's finding that this is an

“exceptional case,” and affirm the lower court’s holding in this

regard.

A-7

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

IN THe UNrtep States District Court

For THE District OF SOUTH CAROLINA

GREENVILLE DIVISION

AIR PRODUCTS AND CHEMICALS, INC.,

Plaintiff,

v. CIVIL ACTION NO. 79-826

CHAS. S. TANNER CO. and NATIONAL

STARCH AND CHEMICAL CORP.,

Defenc ants.

ORDER AND OPINION, INCLUDING

FINDINGS OF FACT AND CONCLUSIONS OF LAW

I. INTRODUCTION

This is an action for patent infringement and mis-

appropriation of trade secrets. The plaintiff brought the patent

infringement action on May 2, 1979. On July 11, 1980, plaintiff

moved to amend the complaint to assert trade secret mis-

appropriation. After briefing and argument, the motion was

granted on February 24, 1981 and the amended complaint wa.

filed on that same day. Thirty days later, defendants filed their

amended answer denying infringement of the patent, challeng-

ing its validity, and denying any misappropriation of trade

secrets. In addition, defendants filed counterclaims contending

that the plaintiff had violated the antitrust laws. On December

21, 1981, the Court ordered a separate trial on the issues of

patent validity, patent infringement and the existence and

misappropriation of trade secrets. All other issues were severed

for separate trial. The trial on the patent and trade secret issues

commenced on November 29, 1982 and was completed on

December 15, 1982.

This order and opinion constitutes the Court’s findings of

fact and conclusions of law on those issues pursuant to Rule

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

52(a), Fed.R.Civ.P. The Court has considered the numerous

issues raised by both plaintiff and defendants in this action.

That some issues or arguments are not specifically mentioned or

addressed in this opinion indicates only that, after due consid-

eration, the Court found the issues or arguments to be without

merit or of no consequence to the outcome of the case. For the

reasons discussed herein, this Court finds for the plaintiff on the

patent issues and for the defendants on the trade secret issues.

Il. THE PARTIES

The plaintiff in this action is Air Products and Chemicals,

Inc. (hereinafter “Air Products’), a corporation organized and

existing under the laws of the State of Delaware, having its

principal place of business in Allentown, Pennsylvania.

The present defendants include National Starch and

Chemical Corporation (hereinafter “National Starch’), a cor-

poration organized and existing under the laws of the State of

Delaware, having its principal place of business in Bridgewater,

New Jersey. The original defendant in the case was Chas. S.

Tanner Co. (hereinafter “CST” ), a wholly-owned subsidiary of

Ciba-Geigy Corporation. CST was a Delaware corporation

with a regular and established place of business in the District

of South Carolina. On or about July 31, 1980, National Starch

purchased all the capital stock of defendant CST and subse-

quently merged CST into National Starch. National Starch and

CST are referred to herein as “the defendants.”

il. PATENT VALIDITY

A. The Patent-In-Suit

The patent-in-suit is U.S. 3,708,388 (hereinafter the

** 388” patent), entitled “Process of Laminating Using Vinyl

Acetate-Ethylene Copolymer Latex Adhesive Composition.”

The original application for the patent, application Serial No.

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

622,412, was filed on March 13, 1967 in the names of Martin K.

Lindemann and John G. Iacoviello. A continuation application

was filed on May 6, 1970, application Serial No. 37,363, and

the patent issued to Air Products on January 2, 1973. (AX

ian”

Tire ’388 patent deals with adhesives used to manufacture

lamina: ., particularly laminates made from at least one flex-

ible material, such as polyvinyl chloride film (‘“‘vinyl”). Vinyl

laminates are used to make kitchen cabinets, simulated wood

grain furniture, picture frames, luggage, upholstery and other

articles. The adhesive of the ’388 patent is used in such

applications as well as in the packaging industry. (Tr (Erik-

son) 40-43, 46-47, 125, 127; Tr (Myrick) 156-58; Tr (Donald-

son) 176-77).

Although the ’388 patent describes several different adhe-

sive compositions, it claims only the kind of composition

exemplified by the patent’s Example 8. (AX 2, pp. 120-21).

The Example 8 adhesive corresponds to two adhesives used

commercially today, Airflex 400, manufactured by the plaintiff,

and Elvace 1875, manufactured by DuPont under a license

from the plaintiff. The same composition corresponds to the

defendants’ infringing products, as discussed in a subsequent

section of this opinion. (Tr (Erikson) 95-96; Tr ( Vanderhoff)

343-45, 398-99: AX 680; Tr (Wacome) 463; AX 98, pp. 20-21;

Tr (Lindemann) 609, 612-15; AX 3, p. 37 (Paper No. 9, p. 3);

Tr (lacoviello) 2696; Tr (Cordeiro) 708-10).

B. Defendants’ Invalidity Contentions

As of October |, 1982, the United States Court of Customs

and Patent Appeals (““CCPA”’) and the United States Court of

Claims were merged to form the United States Court of

Appeals for the Federal Circuit (““CAFC”’). The new court has

exclusive appellate jurisdiction of appeals in all patent in-

fringement actions. 28 USC § 1295(a)(1). In a recent

* The plaintiffs exhibits are referred to herein as “AX _.._”; the

defendants’ exhibits as “TX —_.”

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

decision, South Corp. v. United States, 690 F.2d 1368, 1369

(Fed. Cir. 1982), the new court ruled that all decisions of its

predecessor courts will be considered binding as precedents

upon it. Those decisions are therefore controlling here. This

Court accordingly relies on CCPA and Court of Claims prece-

dents, and on other well-settled patent authority where CCPA

and Court of Claims authority does not exist.

A patent is presumed valid and the burden of establishing

the invalidity of any claim of a patent rests on the party

asserting invalidity. 35 USC § 282; Solder Removal Co. v.

International Trade Comm’n, 582 F.2d 628, 632-33 (CCPA

1978); General Motors Corp. v. International Trade Comm’n,

687 F.2d 476 (CCPA 1982); Stevenson v. International Trade

Comm’n, 612 F.2d 546, 551 (CCPA 1979). The mandate of

Section 282 is twofold: the party asserting invalidity bears both

the burden of going forward with the proofs and also the

burden of persuasion. E.J. du Pont de Nemours & Co. v. Berkley

& Co., 620 F.2d 1247, 1266 (8th Cir. 1980); Solder Removal,

582 F.2d at 632.

This presumption, as the Court said in Plasser American

Corp. v. Canron, Inc., 546 F.Supp. 589, 597 (D.S.C. 1980), is a

matter of “real substance and power.” The presumption flows

from a congressional assumption that the Patent and Trade-

mark Office (hereinafter the “Patent Office’) properly applies

its acknowledged experience and expertise in the examination

of applications. Solder Removal, 582 F.2d at 633 n.10; Plasser,

546 F.Supp. at 597. The Office’s experience and expertise are

to be accorded considerable weight where, as here, “intricate

questions of chemistry are involved, which are peculiarly within

the particular competence of the Patent Office.” Mobil Oil Corp.

v. W.R. Grace & Co., 367 F.Supp. 207, 225 (D.Conn. 1973).

To that end, the Patent Office carefully studies the application

and thoroughly searches the prior art to ensure that the

application complies with all of the applicable statutes and rules

before issuing the patent. E./J. du Pont de Nemours & Co., 620

~~

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

F.2d at 1266. Those statutes include 35 USC §§ 102, 103, and

112, the same sections of the patent statute upon which the

defendants here now urge invalidity.

Specifically with regard to defenses based on prior art,

while this Court is aware of language in some opinions

suggesting that no presumption exists with respect to prior art

not cited by the Patent Office, the better rule, as adopted by the

CAFC, is that the presumption is not vitiated simply by reliance

on prior art which was not cited by the Patent Office. Solder

Removal Co. v. International Trade Comm’n, 582 F.2d 628,

632-33 (CCPA 1978). Where the party asserting invalidity

relies on prior art references that were cited to the Patent Office,

or are cumulative to those references, the presumption of

administrative correctness is necessarily more difficult to over-

come. Solder Removal, 582 F.2d at 633; Power Curbers, Inc. v.

E.D. Etnyre & Co., 298 F.2d 484, 493 (4th Cir. 1962); Marston

v. J.C. Penrzy Co., 353 F.2d 976, 982 (4th Cir. 1965); Plasser

American Corp. v. Canron, Inc., 546 F.Supp. 589, 597 (D.S.C.

1980).

Defendants contend that they have rebutted the presump-

tion and that the patent is accordingly invalid. They contend

they have proven: (a) that the composition was anticipated

under 35 USC § 102 by one or more prior art references; (b)

that even if it was not anticipated, it was obvious to persons

skilled in the art under 35 USC § 103; (c) that plaintiff

committed fraud in obtaining the patent; and (d) that the

patent does not comply with the requirements of 35 USC § 112

in that plaintiff did not make the full and complete disclosure

required by that statute and did not disclose the best mode

known to the inventors for making the adhesive composition.

(Tr 21-26).

In considering the defendants’ arguments on the validity

issue, the Court has evaluated the evidence presented in the

following areas: (1) the properties possessed by the adhesive

A-12

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

composition of the ‘388 patent; (2) the chemical and physical

structure of the new composition and the process by which it is

made; (3) the claims of the patent and how they define the

invention at issue; (4) the scope and content of the prior art;

(5) the differences between the claimed adhesive composition

and the prior art, particularly the nine references relied upon by

the defendants; (6) whether the composition was obvious; (7)

the prosecution of the patent in the Patent Office; and (8) the

best mode and disclosure contentions of the defendants The

Court will address each of these areas separately.

1. The Adhesive Composition Of The ’388 Patent And

Its Properties

The disclosure of the ’388 patent and the state of the

adhesive art at the time of the invention at issue were described

by plaintiffs expert witness, Mr. Carl Erikson, who has been

active in the adhesives industry since 1939, serving much of his

career in adhesives research and manufacturing for the Adhe-

sives Division of the Borden Company, makers of Elmer’s Glue.

Mr. Erikson’s testimony stands unrebutted by the defendants.

He described the problems faced by the adhesives industry in

the mid-1960’s, particularly in regard to laminating, and how

the adhesive composition of the ’388 patent solved those

problems. Mr. Erikson identified six properties which were the

most sought after in the theretofore unavailable “ideal”

laminating adhesive. (Tr (Erikson) 31-37, 57-65, 78-79, 86,

93-95; AX 775, 801, AA).

As Mr. Erikson testified, the six important properties were:

(1) adhesion to difficult-to-bond surfaces, such as vinyl; (2)

cohesion or resistance to creep; (3) good aging; (4) flexibility;

(5) plasticizer tolerance; and (6) machining properties or ease

of mechanical application. The first of these properties,

adhesion, is the ability of the adhesive to bond to other

surfaces. Adhesion is measured by a “peel” test in which a

laminate of vinyl and cloth is pulled apart at a constant rate; the

i

1

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

force required to achieve the delamination is called “peel

strength.” Cohesion is the ability of the adhesive itself to hold

together after setting; it is measured by a test in which a cloth-

to-cloth laminate is subjected to delaminating forces by a fixed

weight over a given period of time. The extent of delamination

is called “‘creep” and the ability of the adhesive to hold the

laminate together in such circumst. ces is called “creep resis-

tance.” An adhesive which has good creep resistance at ele-

vated temperatures is said to have good “heat resistance.”

Flexibility is the ability of the adhesive film to bend after

setting. It is important because laminating adhesives should not

crack when the laminate itself bends at normal temperatures of

use. Plasticizer tolerance is the ability of the adhesive to

perform well in the presence of plasticizers. It is important

because plasticizers are usually present in plastic films and are

frequently added to adhesives for various reasons. Plasticizer

tolerance is measured by adding plasticizer to the adhesive and

testing how it responds in peel tests. Machining properties

relate to viscosity, speed of set, wet tack and other character-

istics affecting how well the adhesive can be applied to the

laminating materials in a mechanical operation. (Tr (Erikson)

43-1€3; AX 791-93, 801, 806, 817, 821, 835, 839, 844-49, 858,

865).

As Mr. Erikson further testified—and again his testimony

stands unrebutted—these six properties are all disclosed in the

‘388 patent for the claimed composition of Example 8. That

composition has superior adhesion or peel strength, excellent

cohesion or resistance to creep even at elevated temperatures,

good retention of peel strength on aging, and good flexibility as

shown by its low “glass transition temperature” (0°C), the

temperature where it becomes brittle; it has excellent tolerance

to plasticizers without loss of peel strength, and good machining

properties in its combination of high solids, large average

particle size and stabilization with polyvinyl alcohol (here-

inafter ““PVOH’’). Mr. Erikson personally received one of the

first samples of Airflex 400, the commercial product corre-

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

sponding to Example 8, when he was at Borden and, as he

testified, he found it to be the first product to provide these six

properties long desired by the industry for a laminating adhe-

sive. (Tr (Erikson) 78-79, 83-103; AX AA, AX 798, 803, 806,

835, 839, 852, 858, 864; see Tr (Vanderhoff) 270-75).

2. The Structure Of The Product And How It Is Made

The chemistry behind the ’388 patent, particularly the

chemistry leading to the product of claim | as exemplified in

Example 8, was explained by Dr. John Vanderhoff, who

testified as an expert witness on behalf of the plaintiff. Dr.

Vanderhoff is a Professor of Chemistry and Co-Director of the

Emulsion Polymers Institute at Lehigh University. In 1965, Dr.

Vanderhoff received the Union Carbide award of the American

Chemical Society for his work in morphology of latex films. He

has over 144 publications and eight U.S. and thirty foreign

patents, mainly dealing with emulsion polymerization. (AX

851; Tr (Vanderhoff) 192-99). On these issues of the basic

chemistry involved with the ’388 patent, his testimony was

unrebutted.

According to the testimony given by Dr. Vanderhoff, which

the Court accepts as credible, the vinyl acetate-ethylene copoly-

mer called for by claim | of the ’388 patent is the product of a

chemical reaction, a polymerization, in which many units of the

two monomers, vinyl acetate and ethylene, link together to

form very large polymer molecules. This reaction occurs in a

water-based emulsion, or latex, which is stabilized with a

protective colloid, particularly PVOH, to keep the emulsion

from separating.

In this process, the initial ingredients—water, vinyl acetate,

polyvinyl alcohol and other ingredients—are charged to a

polymerization reactor. Ethylene, a gas, is then pumped into

the reactor and the reactor contents are stirred for a certain time

to dissolve some of the ethylene in the liquid. This is called the

PATA ISS OTS

PE EE Mes IRS Sr" PS ees ae

“a-15

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

“equilibration” period. The reaction is then started, and

maintained, by adding an “initiator” to the reactor. An initiator

is part of a “redox catalyst” which causes the polymerization to

occur. The process is continued over a period of hours, during

which time ethylene is added to the reactor under pressure.

This process results in the unique composition described in

Example 8 and claimed in the claims of the ‘388 patent. (Tr

(Vanderhoff) 201-03, 227-39, 256-64). The vinyl acetate-

ethylene copolymer produced in this process is suspended in the

water as tiny particles and, with the PVOH, makes up what is

referred to as the “solids” of the latex. (Tr ( Erikson) 74-78; Tr

( Vanderhoff) 228, 271).

When vinyl acetate and ethylene are copolymerized in the

presence of a protective colloid, particularly PVOH, according

to the process disclosed in the ‘388 patent, two basic polymer

components, a “soluble fraction” and an “insoluble fraction,”

are produced in substantial quantities. The relative amounts of

these two fractions are measured by placing the copolymer in

benzene and measuring the amount that remains insoluble, that

being the insoluble fraction; the remainder constitutes the

soluble fraction. Solvents other than benzene, such as toluene,

can also be used for this measurement. (Tr ( Vanderhoff) 202-

03, 244-46, 273-75; AX 858; Tr (Erikson) 83-84).

The excellent adhesive and cohesive strengths of the ’388

composition are directly related to the presence of these two

fractions. (Tr ( Vanderhoff) 202-03, 244-46, 273-75; AX 858).

The soluble fraction contributes to the good adhesive, or peel,

strength of the adhesive composition because it can easily

“wet” and exercise its affinity for the surfaces of the substrates,

including vinyl, with which it is used. (Tr ( Vanderhoff) 202,

246; Tr (Erikson) 43). The insoluble fraction contributes to the

good cohesive strength, or creep resistance, of the adhesive

composition, because the molecules that make up the insoluble

fraction are strongly bound together. Just as the solvent cannot

dissolve this fraction by separating its molecules, the heat and

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

stress encountered in adhesive applications do not separate

them; the result is high cohesive strength. (Tr ( Vanderhoff)

246-50; AX 852). The combination of soluble and insoluble

fractions in the ’388 composition, which contribute to good

adhesive and cohesive strengths, is an important factor in

distinguishing the product from the prior art, as discussed in

subsequent sections of this opinion.

3. The Claims Of The ’388 Patent

For purposes of both the validity and the infringement

issues, the Court must focus on the claims of the patent. The

claims define the metes and bounds of the patented invention

and are to be construed in light of the specification and the

proceedings in the Patent Office which led to the issuance of the

patent, all with the view of ascertaining the invention. United

States v. Adams, 383 U.S. 39, 48-49 (1966); Astra-Sjuco, A.B.

v. International Trade Comm’n, 629 F.2d 682, 686 (CCPA

1980); In re Myers, 410 F.2d 420, 425 (CCPA 1969).

The ’388 patent contains eleven claims, all of which are

asserted against defendants here, and all of which the defend-

ants contend are invalid over the prior art. The first three

claims define the adhesive composition itself. Claims 4 through

7 define a process for manufacturing a laminate using the

adhesive composition defined in claims | through 3. The last

four claims, claims 8 through 11, define the laminate produced

according to the processes of claims 4 through 7. (AX 1 (Col.

15-16) ).

Claim | reads:

1. An adhesive composition consisting essentially of an

agueous vinyl acetate-ethylene copolymer emulsion having

from about 5 to about 40 percent by weight ethylene, a

solids content of from 45 to about 60 percent by weight

and an intrinsic viscosity of from | to 2.5 dl/g as measured

in benzene at 30°C, the vinyl acetate and ethylene mono-

mers copolymerized in the presence of a protective colloid

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in an amount from about 0.05 to about 2 percent by weight

based upon the total weight of the emulsion, said protec-

tive colloid being selected from the group consisting essen-

tially of a polyvinyl alcohol and hydroxyethyl cellulose.

The claim begins with the preamble ‘‘an adhesive com-

position.” Read in light of the specification, this expression

focusses the claimed invention on adhesive compositions of the

kind dealt with by the patent, namely, adhesive compositions

useful for making flexible laminates. The claim, for example,

does not cover other kinds of emulsions such as latex paints,

paper coatings, textile binders and other products which might

incidentally possess some adhesive properties, but would not be

suitable as adhesive compositions, particularly for making

laminated articles. (Tr (Vanderhoff) 360-61, 2779-80; AX 1;

Tr (Lindemann) 1472).

The next element of claim | is the phrase “consisting

essentially of.” This term of patent art serves to limit or close

the claim to the inclusion of certain additional, nonrecited

ingredients, specifically those which, in nature and amount,

would change the basic and novel characteristics of the claimed

composition. It does not close the claim to other ingredients

which do not change the adhesive’s basic character. Ex parte

Davis, 80 USPQ 448, 450 (Bd. App. 1948); see Tr ( Wither-

spoon) 1070-71, 1077-78.

Claim | next recites ““an aqueous vinyl acetate-ethylene

copolymer emulsion.” This limitation deities the basic structure

as being a copolymer of vinyl acetate and ethylene. It also

defines the basic physical form as a water-based latex or

emulsion. (Tr ( Vanderhoff) 271; Tr ( Erikson) 65-78; AX 809-

12, 816, 818, Z; Tr (Lindemann) 1510-12).

Claim | also requires a certain percentage by weight of

copolymerized ethylene, 5 to 40%. The undisputed testimony is

that this ethylene content, as disclosed in the specification,

results in an adhesive that exhibits good flexibility. The

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flexibility facilitates use with flexible laminates and also con-

tributes to the adhesive’s ability to adhere to hard-to-stick vinyl

and other plastic substrates. While the claimed ethylene range

is from 5 to 40%, claim 3 narrows the range to above 15%, a

range which covers most of the products here at issue. (AX |

(Col. 15-16); Tr (Erikson) 84-85, 92-93; AX AA; Tr ( Van-

derhoff) 220-27, 272, AX 806, 835, 839, 858).

The claim also specifies the solids content of the adhesive

composition as being between 45 to 60%. This range of solids is

necessary for the adhesive composition to have good machining

properties and formulating characteristics. (Tr ( Vanderhoff)

272; Tr (Erikson) 76-77).

The claim requires a copolymer with an intrinsic viscosity

between | and 2.5. As Dr. Vanderhoff testified, this means, first

of all, that the copolymer must include a soluble fraction since,

by definition, only soluble polymers can have intrinsic vis-

cosities. It also indicates that the soluble fraction has a

relatively high molecular weight. This high molecular weight

soluble fraction permits the composition to wet and attain

intimate contact with the surface of the substrate and is, in large

part, responsibie for the superior peel strength of the com-

position. ( Tr ( Vanderhoff) 202, 210-16, 272-73, 300, 2792; AX

1 (Col. 5, 11. 12-15); AX 829-30, 853).

The cleix aiso includes what is in effect a process limita-

tion: the copolymerization of vinyl acetate and ethylene must be

carried out in the presence of a protective colloid, either PVOH

or hydroxyethyl cellulose. The patent discloses that the pre-

ferred protective colloid is PYVOH, which, in its partially

acetylated form as used in all the compositions here at issue, is

specifically called for in claim 2. As Dr. Vanderhoff explained,

it is the copolymerization in the presence of a protective colloid,

specifically the PVOH of Example 8, which produces a product

having the insoluble fraction found in the composition of claim

1 and in the commercial products involved in this action. The

insoluble fraction is, as noted above, responsible for the

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outstanding creep resistance properties and cohesive strength of

the adhesive composition. (Tr ( Vanderhoff) 202, 234-50, 273-

75; AX 815, 819, 825-26, 832, 838, 852, 858).

Claim | also defines the amount of protective colloid used

to obtain the results just discussed as being from about 0.05 to

about 2 weight percent.

4. The Applicable Law Regarding 35 USC §§ 102 and

103

Defendants contend that the patent is invalid under 35

USC §§ 102 (“anticipation”) and 103 (“obviousness”). The

law regarding § 102 is simply stated. Under 35 USC § 102, a

patent claim is anticipated only if the claimed subject matter is

identically disclosed in one piece of prior art. Jn re Marshall,

578 F.2d 301, 304 (CCPA 1978). Furthermore, a prior art

reference which contains a broad general disclosure requiring

guessing, testing, speculation or “picking and choosing” from

an encyclopedic disclosure will not anticipate. Jn re Arkley, 455

F.2d 586 (CCPA 1972); In re Samour, 571 F.2d 559, 562

(CCPA 1978); General Battery Corp. v. Gould, Inc., 545

F.Supp. 731, 740 (D.Del. 1982).

The law regarding § 103 is outlined by the Supreme Court

in Graham v. John Deere, 383 U.S. 1, 17 (1966). Following the

analytical procedures set out in that case, the Court here has

considered: (1) the scope and content of the prior art; (2) the

differences between the prior art and the claims in issue; (3) the

level of ordinary skill in the pertinent art; and (4) whether the

subject matter of the claimed invention, as a whole, is

unobvious in light of the differences. Objective considerations

such as commercial success. long-felt but unresoived needs and

the failure of others to arrive at the same result for solving those

needs are important considerations in evaluating the issue of

obviousness.

In determining the issue of obviousness of a chemical

composition, it must be kept in mind that section ° 3 requires

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Conclusions Of Law, Filed May 2, 1983

consideration of the invention as a whole, and, as a matter of

law, a new chemical composition is considered inseparable

from all of its properties and from the manner of making it. Jn

re Papesch, 315 F.2d 381, 391 (CCPA 1963); Eli Lilly & Co. v.

Premo Pharmaceutical Laboratories, Inc., 630 F.2d 120, 126-33

(3rd Cir. 1980). Thus, the existence of novel or superior

unexpected properties, undisclosed by the prior art, weighs

heavily in favor of a conclusion that the claimed composition is

not obvious. Jn re Albrecht, 514 F.2d 1389, 1394-95 (CCPA

1975); In re Blondel, 499 F.2d 1311 (CCPA 1974); In re

Lunsford, 357 F.2d 380, 384-85 (CCPA 1966); In re May, 574

F.2d 1082, 1092-94 (CCPA 1978); Eli Lilly & Co., 630 F.2d at

126-33. And where the prior art teaches away from the claimed

invention, that is highly probative evidence that the invention is

nonoodvious. United States v. Adams, 383 U.S. 39 (1966); In re

Mercier, 515 F.2d 1161, 1165-66 (CCPA 1975); In re Rosen-

berger, 386 F.2d 1015, 1018 (CCPA 1967); American Original

Corp. v. Jenkins Food Corp., (696 F.2d 1053 (4th Cir. 1982)).

Another important consideration in evaluating obviousness

is that the Court does not apply an “obvious to try” test. In

other words, merely because one skilled in the art might “try”

to perform the claimed process or make the claimed product,

that does not mean that the invention is obvious within the

meaning of 35 USC § 103. In re Goodwin, 576 F.2d 375, 377

(CCPA 1978); In re Antonie, 559 F.2d 618, 620 (CCPA 1977);

Nova Industri A/S v. Travenol Laboratories, Inc., 677 F.2d

1202, 1208 (7th Cir. 1982); Trio Process Corp. v. L. Goldstein’s

Sons, Inc., 461 F.2d 66, 72 n.18a (3rd Cir. 1972). Similarly,

the Court should not use hindsight in evaluating obviousness.

Graham, 383 US. at 36; In re Nomiya, 509 F.2d 566 (CCPA

1975); Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047,

1059-60 ( 4th Cir. 1976); Jamesbury Corp... United States, 183

USPQ 484, 491 (Ct. Cl. Tr. Div. 1974), aff'd per curium, 518

F.2d 1384 (Ct. Cl. 1975).

Objective manifestations of nonobviousness, sometimes

called secondary considerations, are important factors on this

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issue, particularly where the dangers of employing hindsight

are great. Black and Decker Mfg. Co. v. Sears Roebuck & Co.,

679 F.2d 1101, 1104 (4th Cir. 1982); Tights, 541 F.2d at 1059;

In re McLaughlin, 443 F.2d 1392, 1396 (CCPA 1971);

Shackelton v. J. Kaufman Iron Works, Inc., 689 F.2d 334, 340

n.4 (2nd Cir. 1982).

These objective indicia include commercial success, satis-

faction of a long felt need, and industry copying of the patented

invention. Jn re Meng, 492 F.2d 843, 846 (CCPA 1974); In re

Tiffin, 443 F.2d 394, 398 (CCPA 1971); In re Sernaker, No.

82-579 Slip Op. at 11 (Fed.Cir. February 28, 1983). Signifi-

cant commercial success makes it highly unlikely that the

invention was obvious, Black and Decker, 679 F.2d at 1103,

“because ... [commercial success] may be the only warning to

a judge that he is engaged in a backward vision when an

invention that seems obvious to him eluded those skilled in the

art at the time the invention was created despite ... the

possibility of significant commercial reward.” Shackelton, 689

F.2d at 340 n.4.

5. Scope And Content Of The Prior Art

There were substantial conflicts in testimony regarding the

disclosures of the prior art relied upon by the defendants; those

conflicts are discussed in the following section dealing with

differences between the prior art and the claimed invention. On

the issue of what particular references make up the prior art,

there was little dispute. The testimony established that the

relevant prior art can be divided into two general categories.

One is the adhesives art; the other is the vinyl acetate-ethylene

copolymerization art. Each of defendants’ nine principal

references, as well as the other prior art cited by defendants,

falls into one or the other of these groups.

With respect to the adhesives art, the record establishes

that there were latex adhesives known to the art before the

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District Court Order And Opinion,

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invention at issue. The first of these was introduced to the

market in the 1940’s by DuPont and others. They were

homop«'ymers of vinyl acetate, that is, they contained no

como, mers. In use, they formed stiff, rigid films, and while

they were, and are, excellent for some paper-to-paper and

wood glue applications, they suffered serious deficiencies in

respect to general laminating applications. They had poor

adhesion to hard-to-bond surfaces, such as vinyl films, and they

were rigid, inflexible and brittle. (Tr (Erikson) 78-80, 82-84,

86-87, 94-95, 102-03; Tr (Lindemann) 1184-86; AX 272-74.

By the mid-1960’s, “copolymer” adhesives were in-

troduced in an attempt to soften the polymer by adding

“internal plasticizers.”” These products employed comonomers

with the vinyl acetate but, unlike the processes here at issue, the

copolymerizations did not employ ethylene and were carried

Out at atmospheric, rather than elevated, pressure. Gelva TS-

100, manufactured by the Monsanto Company, and Daratak B,

manufactured by Dewey and Almy (later, W.R. Grace & Co.),

were two such products. Both products had low insolubles and

exhibited poor cohesive strength and creep resistance. Neither

possessed the combination of the six properties which Mr.

Erikson established were the properties of an ideal laminating

adhesive. (Tr (Erikson) 78-79, 82-83, 95, 140-42; TX 34-36,

39; AX 272-74, 757, p. 470; Tr (Lindemann) 1166-69, 1510-

14).

The other area of prior art here involved relates to the

early processes used to make vinyl acetate-ethylene copolymers.

The most significant of this prior art is found among patents of

plaintiff's predecessor in interest, the Air Reduction Company

(hereinafter “Airco”) (AX 900). The record is undisputed that

in 1963, Airco undertook an extensive research program aimed

at using ethylene as a comonomer with vinyl acetate. The

program was conducted under Mr. Lindemann’s direction. (Tr

(Lindemann) 1211-12, 1217, 1225; TX 59, 61-65, 67). At the

time this research program was begun in 1943, Mr. Lindemann

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was aware of at least some of the earlier technologies for

copolymerizing vinyl acetate and ethylene at pressures low

enough to be commercially feasible. (Tr (Lindemann) 1194-

97, 1211-12; TX 58, pp. 3-4, 62, p. 10). The German company,

Farbwerke Hoechst, had published a patent application

’ Auslegeschrift No. 1,127,085, on this subject in 1962. (TX 3,

3A, 9). Another German company, BASF, had issued a French

patent, No. 1,226,382, on the same subject in February 1960.

(TX 6, 6B, 7, 8, 10). Other European companies, including

Wacker Chemie GmbH, were experimenting in these same

technological areas. (Tr (Lindemann) 1218-19, 1445-79; AX

224-35, 696-97, 755; TX 21, 22). Samples of some Wacker

experimental products, labeled T690 and T700, were for-

warded to Airco’s Mr. Jaffe in 1963. © AX 225). They were

evaluated in paint end-use application tests, found severely

wanting and thereafter ignored. (Tr (Lindemann) 1465-76;

TX 22; AX 226; Blades Dep. 61, 71-72, 103, 165-66, 178-80;

Jaffe Dep. 174-81, 193). Also, other American companies had

filed patent applications on various processes and products

relating to vinyl acetate-ethylene copolymerization. The Wor-

rall patent, U.S. 3,355,322, relates to this area and was filed by

the Monsanto Company in 1960. (TX 15; Tr (Lindemann)

1540).

From that background, the record shows Mr. Lindemann

worked toward a new process for copolymerizing vinyl acetate

and ethylene which led to a number of new products for which

the following patents were granted: paints (U.S. 3,404,113,

3,440,199 and 3,844,990); paper coatings (U.S. 3,404,112,

3,645,952 and 3,716,504); fabric coatings (U.S. 3,345,318,

3,440,200 and 3,526,540); and non-woven adhesive binders

(U.S. 3,380,851, 3,498,875 and 3,526,538). (AX 900; TX 19;

TX 78; Tr (Lindemann) 1288, 1293-1311, 1444, 1500-04; TX

92; Blades Dep. 98-99, 225-28, 238-39; Jaffe Dep. 256). All

these patents preceded the work leading to the invention at

issue and all are prior art here.

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6. The Differences Between The Prior Art And The

Claimed Adhesive Composition

In support of their argument that the adhesive composition

claimed in the ’388 patent was not new, defendants primarily

rely on nine different specific prior art references, as well as on

Daratak B and other early adhesive products.

Both parties presented the testimony of expert witnesses on

the teachings of these references to persons of ordinary skill in

the art in the relevant time period. The testimony of the experts

conflicted on virtually all major issues. The plaintiff's principal

expert witness on these issues was Dr. Vanderhoff, who is

described earlier in this opinion. The defendant’s principal

expert was Dr. Norman Gaylord, who, since 1961, has had his

own private research consulting company (Tr (Gaylord) 1701-

02). The Court found Dr. Vanderhoff to be a highly qualified

and objective expert whose opinions and related testimony

were based upon a thorough and careful study of the relevant

materials, as well as upon his in-depth experience in the

emulsion polymerization field. The Court a-cepts his testi-

mony, on the issues addressed below, as being far more

credible than Dr. Gaylord’s. Dr. Gaylord, to be sure, is a

highly qualified polymer scientist. (TX 610; Tr (Gaylord)

1701-04). However, his testimony did not reflect the consid-

ered study and objectiveness of Dr. Vanderhoff. On the

contrary, his testimony could be characterized more as advo-

cacy than as objectivity and the accuracy of his testimony, as

shown by the cross-examination, was frequently in doubt.

These observations, coupled with a tendency of Dr. Gaylord to

evade direct questions, led the Court to fully consider, but in

most cases reject, Dr. Gaylord’s testimony as being less credible

than Dr. Vanderhoff’s.

Defendants’ other expert, and fact, witness was Mr. Lind-

em an, one of the inventors of the ‘388 patent. While the Court

has fully considered and weighed Mr. Lindermann’s testimony,

the Court finds that his testimony does not impair the credibility

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District Court Order And Opinion,

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of Dr. Vanderhoff’s testimony. This is especially true in view of

the fact that Mr. Lindemann cannot be considered to have the

same degree of objectivity as Dr. Vanderhoff; Mr. Lindemann

himself was instrumental in, if not responsible for, CST’s

infringing activities. For this same reason, the Court gives no

weight to the alleged statement made by Mr. Lindemann to Dr.

Ungefug, another CST employee, that Mr. Lindemann consid-

ered the patent to be invalid. (Tr (Ungefug) 517). Mr.

Lindemann, after all, did execute the declaration, required of

all patent applicants to be made under risk of perjury, that the

application leading to the patent did disclose and claim an

invention. (AX 2, pp. 31-32; Tr (Lindemann) 1538-39).

(a) The French ’382 Patent

Defendants rely on the French patent, No. 1,226,382,

issued to BASF on July 11, 1960. (TX 6, 6B, 7, 8, 10). The

patent discloses one of the early vinyl acetate-ethylene

copolymerization processes, and resulting products, known

before the basic work began at Airco in the early 1960’s. As

Dr. Vanderhoff testified, both the process and the resulting

products are unlike those of the ’388 patent. The basic

differences are apparent from two requirements set forth in the

‘388 patent’s claim 1.

First, claim | requires that the copolymer product have an

intrinsic viscosity of between | and 2.5. That means that the

copolymer must have a soluble fraction and that the soluble

fraction must have a relatively high molecular ‘veight. (Tr

(Vanderhoff) 2788, 2791-93). Second, claim | requires that |

the polymerization be conducted in the presence of a protective

colloid. As Dr. Vanderhoff testified, the French patent teaches

that these two requirements are inconsistent with each other. If

one carries out the polymerization of the French patent in the

presence of a protective colloid, specifically PVOH, as shown

only in Example 5 of the French patent, then there is no soluble

fraction at all. As the patent says, the product of Example 5

was “insoluble in cyclohexanone.” (TX 8, p. 7, ftn. (1); Tr

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( Vanderhoff) 2783-84, 2791-93). This is a basic and important

difference from the adhesive viewpoint, because the soluble

fraction, present in the ’388 composition but absent from the

French patent, gives rise to the high peel strengths of the ’388

adhesive composition. (Tr ( Vanderhoff) 202, 246).

In short, the testimony established that the French patent’s

products do not meet the two basic requirements of claim 1: (1)

copolymerization in the presence of a protective colloid and (2)

a soluble fraction with an intrinsic viscosity in the claimed

range. For that reason alone the French patent does not

anticipate the ’388 invention.

Defendants’ expert testified that the statement in the

French patent that the product of Example 5 was insoluble in

cyclohexanone was a mistake. (Tr (Gaylord) 1734-35, 1848-

55). He maintained that the technician who was responsible

for measuring the intrinsic viscosity and K-index on that

product perhaps did not wait long enough for the polymer to

dissolve, or simply assumed incorrectly that there was no

soluble fraction in the polymer. (Jd.). This testimony,

however, is nothing but unsupported speculation. There is no

reason to conclude that the product of Example 5 was anything

other than what the French patent said it was. This is

particularly so in view of Dr. Vanderhoff’s testimony that one of

the inventors of the French patent, Dr. Hans Fikentscher, is a

respected scientist and was himself the originator of the K-

index test to which the indicated insolubility relates. Dr.

Vanderhoff testified that the data reported in the table should

be read as written. (Tr (Vanderhoff) 2792-93; compare Tr

(Gaylord) 1853-55).

Other examples of the French patent relied upon by

defendants’ expert, specifically Examples 6, 7, 8 and 15, do not

aid their anticipation argument because they use substantial

amounts of surfactants in the emulsifying system. (Tr (Van-

derhoff) 2785-86; Tr (Lindemann) 1488-89; Tr (Gaylord)

1848-49). Consequently, those examples do not carry out the

2

2

;

=

a

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copolymerization “in the presence of a protective colloid” as

required by claim 1 of the ’388 patent; on the contrary, they use

a mixture of surfactants and protective colloids. Moreover, the

high level of surfactants used in those examples is not permitted

by the claim language “consisting essentially of’; the sur-

factants would change the basic and novel characteristics of the

adhesive compositions by deleteriously affecting any adhesive

properties the product might have, as defendants’ expert admit-

ted. (Tr (Gaylord) 1858; AX 3A (Col. 1, 11. 12-23)).

The claimed ’388 composition further requires a solids

content of between 45 and 60%. None of the relevant examples

of the French patent discloses solids in this range; the highest

solids of the examples using PVOH is Example 6, which has a

solids content of 38.5%, and whose product is insoluble in

cyclohexanone. (TX 8, p. 7; Tr ( Vanderhoff) 2781-83). While

the French patent suggests that the solids content may be

increased by blowing a stream of nitrogen over the emulsion

(TX 8, p. 6), Dr. Vanderhoff testified that it would be very

difficult to raise the solids content from this low value through

the nitrogen stream technique and would require a research

program in itself. Even if it could be done, it would inevitably

change the properties of the latex. (Tr (Vanderhoff) 2782).

The French patent does not teach what those changed proper-

ties would be if the solids were so raised to the claimed range.

Consequently, the French patent does not meet this limitation

of the claim.

The differences between the French patent’s products and

those at issue are further apparent from the French patent’s

disclosure of properties related to its products’ adhesiveness.

The French patent states that: “The products consisting of...

45 to 32% of ethylene are very adhesive, whereas those

containing . . . 20 to 5% ethylene adhere hardly at all... .” (TX

8, p. 5). All of the examples relied upon by the defendants

have ethylene contenis falling within the “20 to 5%” range,

where the French patent says they are non-adhesive. Yet the

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product of Example 8 of the ’388 patent, as well as the

commerical products corresponding thereto, have ethylene con-

tents in that same range, and they, obviously, are very adhesive,

indicating that the products must be quite different from those

of the French patent. (AX | (Example 8, Col. 13, 1. 18); Tr

( Vanderhoff) 272, 283, 287-89, 292-94; AX 220, 580). At trial

defendants attempted to avoid this conclusion that the French

patent is basically different from the ’388 patent by amending

the French patent’s translation. But the final amendment

offered by defendants, even if correct, does not change the basi

fact that the teachings of the French patent are very different

from those of the ‘388 patent. (TX 10, p. 5; Tr (Lindemann)

1267-74).

The differences in properties between the French patent

and the ’388 patent are due, as Dr. Vanderhoff testified, to the

differences in processes. Unlike the ’388 patent, the French

patent’s process does not employ an equilibration period to

permit the ethylene to dissolve in the other ingredients before

the reaction is initiated. (Tr ( Vanderhoff) 2789-90). More-

over, according to the French patent the process may be carried

out in either a batch or continuous manner, a choice which is

antithetical to the ‘388 patent’s teaching that the batch-

equilibration technique must be employed. (Tr ( Vanderhoff)

2790).

in addition, with respect to the French patent’s use of

PVOH in Example 5, the record shows that the thermal

polymerization, the non-redox catalyst, the high persulfate

catalyst concentration and the high reaction temperature—none

cf which are used in Example 8 of the ’388 patent—all led to

the extensive cross-linking and branching giving rise to com-

plete insolubility. (Daniels Dep. 313-16, 362-64). The particu-

lar catalyst of the French patent also inevitably leads to the

formation of surfactant-like products which contribute to poor

adhesive properties. (Daniels Dep. 311-12, 378-83, 386, 389).

Finally, the French patent teaches that the high solids necessary

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for adhesive applications are directly obtained only with a

surfactant-based system (specifically Example 10 of the French

patent), rather than the PVOH system of the ’388 patent. (Tr

( Vanderhoff) 2793-97). All these process differences lead to

the conclusion that the product of Example 5 of the French

patent could not have had the ideal adhesive properties pos-

sessed by the composition of the ‘’388 patent. (Tr

( Vanderhoff) 2785-86, 2788-89).

All in all, then, the French patent does not antscipate; on

the contrary, it “teaches away” from the invention of the ’388

patent. (Tr ( Vanderhoff) 2797). If a person skilled in the art

in 1967 set out to make a laminating adhesive, the French

patent would have led him in a direction opposite to that of the

‘388 patent. (Tr ( Vanderhoff) 2793-97).

(b) The German ‘085 Application

Defendants rely on the German patent application,

Auslegeschrift No. 1,127,085, which also relates to an early

vinyl acetate-ethylene copolymerization process. (TX 3, 3A,

9). While the product of this process has at least some adhesive

properties, the product is not a laminating adhesive and it does

not have the unique combination of properties of the claimed

product. (Tr ( Vanderhoff) 2797-98; AX 907/907A).

The thrust of the German application is directly contrary to

the ‘388 patent’s teaching that most, if not all, of the vinyl

acetate should be put into the reactor at the start of the reaction.

The German application teaches that only by adding vinyl

acetate to the reaction vessel continuously throughout the

polymerization (sometimes called “delayed addition”), can a

satisfactory product be produced. (Tr (Vanderhoff) 2798-

2801; TX 9, p. 5; Tr (Gaylord) 1893). This teaching is

contrary to what was discovered by the inventors of the ’388

patent and the resulting products are consequently different.

(Tr ( Vanderhoff) 203, 2798-99, 2803; AX 681, pp. 33-34).

A-30

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

At least two basic differences are reflected by the claims of

the ‘388 patent as compared to the German application. First,

claim 1 requires an intrinsic viscosity of between | and 2.5.

There is no such disclosure in the German application, and

there is no teaching that the German application’s product has

a soluble fraction which the test for intrinsic viscosity requires.

(Tr (Vanderhoff) 2800-02). At trial, defendants’ witnesses

suggested that the German application’s dispersions would

have intrinsic viscosities in the claimed range because, they

argued, the “percent elongation at break” reported for the

German application’s polymers is consistent with the high

molecular weights indicated by the ’388 patent’s intrinsic

viscosity range. (Tr (Lindemann) 1204-05, 1430-34; Tr (Gay-

lord) 1749, 1895-1904). The basic error here is that percent

elongation—no matter what it says about molecular weight

—says nothing about intrinsic viscosity, a property which

requires the existence of a soluble fractien. (Tr ( Vanderhoff)

2800-02; Tr (Gaylord) 1749, 1883-84, 1887). Moreover, on

cross-examination, defendants’ experts were unable to cite any

reports or references directly relating the percent elongation to

molecular weight. (Tr (Lindemann) 1433-34; Tr (Gaylord)

1895-1904). At most, the elongation figures recited in the ‘085

application show a correlation between elongation at break and

percent ethylene, but the correlation cannot be extended to

molecular weight. (Tr (Vanderhoff) 2800-01; TX 60; AX

594).

Second, claim | requires copolymerization in the presence

of a protective colloid; there is no such teaching in the German

application. On the contrary, conventional surfactants are used

throughout. Thus, even though PVOH was a known emulsifier

at this time, as evidenced by the Goldberg patent (TX 28) and

other references, the German application taught that other

emulsifiers should be used instead. (Tr ( Vanderhoff) 2801-

02).

IEE Se a eee

A-31

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Defendants argue that the German application does teach

the use of a protective colloid and that the German appli-

cation’s discussion of the nature of the emulsification system to

be employed is mistranslated from the German into the English

version. (Tr (Lindemann) 1428-29). The German application

says “‘surface-active substances and, if required, of protective

colloids .. .” should be used. (TX 10, p. 3 (emphasis added ) ).

Defendants contend that “if required,” should be “if the

occasion arises” or “if the occasion warrants.” (Tr (Lin-

demann) 1429-30). Even if the Court were to accept defend-

ants’ translation of the German application, this does not

change this Court’s finding that the application prefers the use

of surfactants in the emulsification system “and,” alternatively,

provides for the use of protective colloids, but only in com-

bination with relatively high levels of surfactants.

In that regard, the Court notes that in the Canadian and

British equivalent patents of the German application, namely,

Canadian Patent No. 713,625 (TX 4, p. 4, 1. 10), and British

Patent No. 991,550 (TX 5, p. 2, 1. 39), the disputed phrase is

translated from the German to be “if necessary.” Accordingly,

this Court finds that the appropriate interpretation of the

German patent is that protective colloids may be added to the

surfactants “if necessary,” but that surfactants should always be

used.

In summary, the German application, like the French

patent, does not anticipate, but rather teaches away from the

‘388 invention. If one set out to make a laminating adhesive

and started with the German application, one would have used

continuous vinyl acetate addition, and would have used sur-

factants rather than PVOH. One skilled in the art would not

have been led to the basic discovery embodied in the ’388

invention. (Tr ( Vanderhoff) 2802-03).

(c) The Worrall ’322 Patent

United States Patent No. 3,355,322, issued to Worrall, is

another of the early patents dealing with the copolymerization

A-32

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

of vinyl acetate and ethylene; it was filed by Monsanto in 1960.

(TX 15, ISA). Worrall is one of the references which was

considered by the Patent Office examiner during the prose-

cution of the application for the ‘388 patent-in-suit. (AX 1-2).

Defendants contend that Worrall anticipates the ‘388

invention. The Court, however, takes note of the fact that,

although this application was filed in 1960, Monsanto was still

marketing its non-ethylene-containing laminating adhesive,

Gelva TS-100, as late as 1966 when Airco’s inventors dis-

covered the ‘388 adhesive composition. (Tr (Jaffe) 525).

Moreover, when Monsanto did decide to market a vinyl

acetate-ethylene adhesive it purchased defendants’ E-200 prod-

uct and resold it as Gelva TS-125, rather than manufacture its

own product according to Worrall. (AX 128, 768, p. 11). If

Worrall anticipated the ‘388 invention as defendants contend,

Monsanto would, more probably than not, have had this

commercially-successful product out in the market in the very

early 1970's.

As Dr. Vanderhoff testified, Worrall relates generally to

compositions based on copolymers of ethylene and vinyl ace-

tate which are suitable for use in coating applications, particu-

larly for coating fibrous materials such as paper or textiles.

Such materials do have some adhesive properties, but Worrall

does not teach, nor do Worrall’s products possess, the proper-

ties or the laminating utility of the adhesive composition of the

‘388 patent. (Tr (Vanderhoff) 2804-05; AX 907/907A; Tr

(Gaylord) 1883-84).

While Worrall is more relevant to the ‘3°°% invention than

the French or German references, it does .0t teach basic

elements of claim |, namely copolymerizatior a the presence of

PVOH (to get the insoluble fraction) and an intrinsic viscosity

of between | to 2.5 (corresponding to the soluble fraction). As

to the first, Worrall’s examples all use substantial amounts of

emulsifiers and, while there is a general disclosure of PVOH,

there is no indication that, if used alone, superior properties

A-33

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

would result. As to the second, there is no teaching of either a

soluble fraction or an intrinsic viscosity. (Tr ( Vanderhoff)

2805-08, 2810; Tr (Gaylord) 1883-84, 1905; AX 907/907A).

Defendants’ expert contended that the disclosure in Wor-

rall of a melt index is iadicative of high molecular weight, and

hence, high intrinsic viscosity. (Tr (Gaylord) 1763-64). But

Dr. Vanderhoff pointed out that this does not teach the

existence of a soluble fraction. (Tr (Vanderhoff) 2810).

Additionally, defendants offered no evidence of any actual

correlation between the melt index of vinyl acetate-ethylene

copolymers and molecular weight (Tr (Gaylord) 1905), and

the Court cannot find that the copolymers of Worrall had a

soluble fraction with an intrinsic viscosity within the range of

the claims of the ‘388 patent. (Tr (Vanderhoff) 2810).

Defendants’ expert also found teachings of good aging charac-

teristics in Worrall, but it is apparent that the properties

referred to relate only to discoloration, not to anything having

to do with adhesive performance. (Tr (Gaylord) 1774).

For these reasons, the Worrall patent, while more relevant

to the ‘388 invention than any of the other patents relating to

work earlier than the Airco work, does not anticipate. Like the

other references, it points in a direction away from the in-

vention. One would not have been led by Worrall to the use of

PVOH alone to get the desirable and unexpected properties of

the ‘388 patent. (Tr ( Vanderhoff) 2808-09).

(d) Lindemann And Volpe U.S. Patent No. 3,380,851

Defendants also rely on United States Patent No.

3,380,851, issued to Martin K. Lindemann and Rocco P. Velipe

on April 30, 1968, (TX 16/16A). This is another patent which

was before the Patent Office examiner during his examination

of the applications underlying the ‘388 patent-in-suit. (AX 1-

2). The Court finds that this patent is the most relevant of the

Airco patents predating the ‘388 invention because, as Dr.

Vanderhoff testified, it discloses both the equilibration process

A-34

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filea May 2, 1983

and adhesive uses. ( Tr ( Vanderboff) 2810-11). But it does not

disclose the ‘388 patent’s adhesive composition.

The ‘851 patent relates generally to adhesive binders for

non-woven fabrics. (Tr ( Vanderhoff) 2810). Such fabrics are

composed of loosely-assembled webs of fibers which are bound

together with the binder. {TX 16, Col. I, 11. 23-25). The

binder is a latex copolymer of vinyl acetate and ethylene, but a

third monomer, N-methylol acrylamide ( hereinafter referred to

as “NMA” ), has to be added to increase the binder’s cohesive

strength. (Tr ( Vanderhoff) 2811-12). While the ’851 patent’s

product has some adhesive properties, it is not the adhesive

composition of claim | and does not possess the properties

which that adhesive possesse. (Tr ( Vanderhoff) 2810; AX

™\7/907A; Tr (Gaylord) 188: 84).

The ’851 patent does nqgt teach copolymerization in the

presence of PVOH. (Tr ( Van@erhoff) 2813). The ’851 patent

teaches that an emulsifying ageX ts required, «nd it specifically

refers to various non-ionic emuhifying agents and a series of

surfactants. (Tr ( Vanderhoff) 2&3; TX 16 (Col. 3, 1. 40-Col.

5, 1. 35)). The ‘851 patent disco\¥rages the use of colloids; it

says, “it is preferred to maintain the\polloid concentration at the

lowest level possible.” (TX 16, Col X11. 17-18). In short, the

’851 patent shows no preference or yation that any

particular benefits can be derived through the of PVOH

alone. (Tr ( Vanderhoff) 2813-14). Thuis finding is reinforced

by the fact that in the sole working example, Example 1, no

protective colloiY whatsoever is employed, but instead three

surfactants, Igepal 887, Igepal 630, and sodium lauryl sulfate,

are used. (TX 16, Col. 8, 11. 62-73; Tr ( Vanderhoff) 2813; Tr

(Gaylord) 1916-17).

In summary, the basic teachings of the ‘851 patent and the

‘388 patent are diametrically opposed. The ‘85! patent teaches

that one must employ a cross-linking third monomer, NMA, to

get cohesive strength. It is a central aspect of the ‘388 invention

A-35

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

that cross-linking third monomers need not be used, but that

when PVOH is used alone, as taught by Example 8, the right

balance of solubles and insolubles is obtained. Again, the ’851

patent does not anticipate; its teachings are in a direction

opposite to that of the invention at issue. (Tr ( Vanderhoff)

2814).

(e) Chapman, United States Patent No. 2,543,229

Defendants also rely on United States Patent No.

2,543,229, issued to Chapman on February 27, 1951, based on

an application filed April 27, 1948. (TX 25). Chapman does

relate generally to vinyl acetate-ethylene copolymers which are

described as useful for laminating polyethylene (Tr (Van-

derhoff) 2814-16), but it adds nothing to the prior art which

was before the Patent Office examiner during his consideration

of the patentability of the applications leading to the ’388

patent-in-suit.

The Chapman patent does not describe an emulsion

polymerization. It describes solution polymerizations which

result in products entirely different from the products here at

issue. (Tr ( Vanderhoff) 2816-17). Chapman does not disclose

any solids contents, nor does it give any indication of the

intrinsic viscosity of its products. (Tr ( Vanderhoff) 2817-18).

There is absolutely no suggestion that the polymerization

should be conducted in the presence of a protective colloid. (Tr

(Vanderhoff) 2818). In short, the product does not have the

properties defined by claim |. (Tr ( Vanderhoff) 2816).

The basic differences between Chapman and the ’388

patent are further apparent from the consideration that Chap-

man teaches that products having ethylene contents below 33%,

such as the commercial products here at issue, are not adhesive.

(Tr (Vanderhoff) 2817; TX 25, Col. 2, 11. 40-52; AX

907/907A). Accordingly, the Chapman patent does not antici-

pate; it leads the man skilled in the art away from the invention

described and claimed in the ‘388 patent. (Tr ( Vanderhoff)

2818-19).

A-36

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

(f) Lindemann And Volpe U.S. Patent Nos.

3,716,504 and 3,844,990

Two additional references relied on by the defendants are

the Lindemann and Volpe ’990 and ’504 patents. (TX 12/12A,

11). Both the ‘990 and ’504 patents disclose products which

might have some adhesive properties, but the ’990 patent is

specific to paints and the ‘504 patent is specific to paper

coatings. (Tr (Vanderhoff) 2819-20, 2826). Like the ’851

patent, these patents grew out of the Airco research of the early

1960’s. Neither patent contains any teachings in addition to

those which were contained in the references which the exam-

iner considered, particularly the ’851 patent.

Neither of these patents teaches the polymerization of

vinyl acetate and ethylene in the presence of a protective

colloid, particularly PVOH. The examples’ of these patents

teach the use of three or four surfactants. The ’990 patent

teaches that the amount of protective colloid added should be

kept “at the lowest level possible.” The ‘504 patent contains no

teaching that protective colloids could or should be used. (Tr

( Vanderhoff) 2821-29; TX 11-12; AX 907/907A). In sum, the

‘990 and ’504 patents are, at best, merely cumulative of the

teachings of the ’851 patent; neither anticipates the invention at

issue

(g) The Jaffe Article

The Jaffe article relates to a presentation given by Mr.

Harold L. Jaffe, then manager of the Coating Polymers Depart-

ment of Airco, to the Adhesive and Sealant Council sometime

in the early part of March 1966. (TX 13; Tr (Jaffe )560-62).

The article itself is a “post print” of the Jaffe talk and contains

subject matter not actually mentioned by Mr. Jaffe during his

presentation. (Jaffe Dep. 304-06, 319).

The Jaffe article announces the introduction by Airco of a

new product, Aircoflex 500, a product made by Airco before the

invention of the ’388 patent. The article discloses that the

A-37

District Cour: Order And Opinion,

’ Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Aircoflex 500 product is a vinyl acetate-ethylene copolymer

useful in the formation of laminates in which one of the

substrates is a difficult-to-bond surface, such as plastic film.

The composition was described as containing approximately

25% ethylene, and as having a solids content of 53%. (Tr

(Vanderhoff) 2830-32; Tr (Gaylord) 1810-11). The Jaffe

article itself, however, is silent on the remainder of the com-

position’s makeup.

The product, as the testimony showed, is the disclosed but

unclaimed product of Example 9 of the patent-in-suit. (AX

903; Tr (Lindemann) 1535-36; Tr (Vanderhoff) 2832; Tr

(Gaylord) 1934-35). Example 9, however, is not within the

scope of the claims at issue here for a number of reasons. Not

the least of these is that it employs surfactants rather than a

protective colloid, and also, like the ’851 patent, contains a

termonomer, namely, triallyl cyanurate, as well as sodium vinyl

sulfonate and maleic anhydride. (AX 903; Tr ( Vanderhoff)

2829-32; Tr (Lindemann) 1535-36; Tr (Gaylord) 1934).

Thus, neither the Aircoflex 500 product itself, nor the Jaffe

article, anticipates the claimed ’388 invention under any of the

various subsections of 35 USC § 102.

(h) Roedel United States Patent No. 2,703,794

The last of the nine references is Roedel, United States

Patent No. 2,703,794, issued March 8, 1955, based on an

application filed September 4, 1951. (TX 14). Roedel

discloses an ethylene-vinyl acetate polymer of general latex

utility, suc as for water-based paints, protective coatings and

adhesives. (Tr ( Vanderhoff) 2833; TX 14, Col. 5, 11.53-61).

Roedel also discloses that the copolymers of the compositions

described therein are in emulsion form and have from 25 to

90% by weight ethylene. (Tr. (Vanderhoff) 2834-35; Tr

(Gaylord) 1813).

Roedel does not anticipate because the solids contents of

his compositions, between about 7 to 24%, are too low; no

a iia i

A-38

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

intrinsic viscosities are given for the polymer, and there is no

disclosure of the use of protective colloids during the polymeri-

zation. (Tr ( Vanderhoff) 2835-38). Moreover, since Roedel

does not suggest the use of a protective colloid, it is necessarily

silent as to any amount which is to be incorporated during the

polymerization reaction. (Tr (Vanderhoff) 2837; AX

907/907A).

Roedel discloses three different types of processes: the

batch addition of both the vinyl acetate and ethylene mono-

mers; the batch addition of vinyl acetate and the semi-

continuous addition of ethylene; and the semi-continuous addi-

tion of both vinyl acetate and ethylene. None of the processes

includes the equilibration step which was used to produce the

preduct of Example 8 of the ’388 patent-in-suit. (Tr ( Van-

derhoff) 2834; AX 907/907A).

Finally, Roedel fails to disclose that the compositions

described therein have the unique and novel combination of

unexpected properties which were found for the composition of

the ‘388 patent. (Tr (Vanderhoff) 2833-34; Tr (Gaylord)

1883-84). Accordingly, the Court finds that Roedel adds

nothing to the prior art which the Patent Office examiner

considered during the prosecution of the applications leading to

the ‘388 patent-in-suit.

(i) The Secondary References Relied On By De-

fendants Are Cumulative To The Art Which The

Patent Office Examiner Considered

Defendants also rely on an assortment of trade literature,

handbooks and brochures which extol the virtues of PVOH for

adhesive applications. ( See, e.g., TX 29-31, 37, 43). But none

of those references involves ethylene copolymerizations. The

prior art employing ethylene, for reasons discussed above,

taught away from the use of PVOH. (Tr ( Vanderhoff) 2801-

03, 2807-09, 2813-14, 2818-19, 2821-28, 2833-38).

Te

A-39

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

In any event, the secondary references relied on by defen-

dants are merely cumulative to United States Patent No.

3,301,809, issued January 31, 1967 to Goldberg, based on an

application filed April 23, 1965. (TX 28). The Goldberg

patent was considered by the Patent Office examiner during the

‘388 prosecution (AX 1-2).

Neither Goldberg nor the other references relied upon

disclose or otherwise indicate that vinyl acetate-ethylene emul-

sions copolymerized in the presence of PVOH would have good

heat resistance, good machining properties, good flexibility,

high molecular weight, or any of the other characteristics which

make the product of the ’388 patent an outstanding laminating

adhesive. (Tr ( Vanderhoff) 2786, 2788, 2797-98, 2805, 2810,

2816, 2820, 2826, 2829, 2833-34; AX 907/907A; Tr ( Erikson)

83-98, 102-03; AX AA; Tr (Gaylord) 1883-84).

From the foregoing, it is apparent that the defendants have

cited no new references which add anything to the two most

pertinent references, Worrall and the ’851 patent, both of which

were before the Patent Office. Taken together, those two

references show: some adhesive properties, vinyl acetate-

ethylene copolymerization, the batch vinyl acetate/semi-

continuous ethylene with equilibration process, ethylene and

solids contents within the claimed range and polymer intrinsic

viscosity between | to 2.5. What they do not show is the

combination of all the foregoing properties together with both

copolymerization in the presence of a protective colloid,

particularly PVOH, and the existence of the soluble fraction

having the aforesaid intrinsic viscosity. Neither do they, nor

any of the other references relied upon by defendants, disclose

or suggest the combination of the six adhesive properties which

Mr. Erikson testified were disclosed for the first time by the ’388

patent. (Tr (Erikson) 102-03; Tr (Gaylord) 1883-84; AX AA,

907/907A). In short, defendants’ additiona! references are

merely cumulative to the references available to the Patent

Office. The Court concludes, therefore, that defendants have

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusior » Of Law, Filed May 2, 1983

not overcome the presumption of validity; none of the refer-

ences anticipates any of the eleven claims of the ’388 patent.

7. The Invention Of The ’388 Patent Was Not Obvious

To A Person Of Ordinary Skill In The Art At The

Time The Invention Was Made

As discussed in the preceding sections, the prior art which

was available before 1967 when the ’388 patent application was

filed does not point in the direction of the ’388 invention. On

the contrary, as Dr. Vanderhoff carefully explained, the prior

patents and applications teach away from the claimed adhesive

compositions. (Tr ( Vanderhoff) 2797, 2802-03, 2808-09, 2813-

14, 2818-19, 2822-24, 2828-29, 2832-33, 2837-38, 2840-41; AX

907/907”

For this reason, even if it is assumed that the level of

ordinary skill in this art was very high, the substantial differ-

ences between the claimed invention and the prior art are such

that the invention was not obvious.

On the obviousness issue, the defendants raise another

argument. They contend that since at least one known

laminating adhesive of the day, Daratak B, and various of the

earlier homopolymer adhesives such as Vinac XX, employed

PVOH, then it was obvious to use PVOH in the vinyl acetate-

ethylene work. This argument fails for three basic reasons.

First, this is no more than an argument that it would have

been “obvious to try” PVOH. But the law, as previously stated,

is that “obvious to try” is not the appropriate legal test of the

statute, 35 USC § 103. Second, it is by no means clear that it

would have been obvious to try the combination of PVOH with

a vinyl acetate-ethylene copolymer. Alone, PVOH had not

remedied the cohesive strength problem as shown in the poor

performance of Daratak B on this score. Third, in order to

satisfy the obviousness requirements of the statute, the ’388

products’ properties would have to be obvious as well. The

A-41

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

evidence here is overwhelming that the properties of '388

adhesive were wholly unexpected. (Tr (Erikson) 83-84, 95; Tr

(Vanderhoff) 2786, 2788, 2797-98, 2805, 2810, 2816, 2820,

2826, 2829, 2833-34; Tr (Gaylord) 1883-84; Tr (Lindemann )

1512-14; AX 751, p.470, 907/907A, AA).

The unexpected properties of the new adhesive com-

position and the long felt need for the ideal laminating

adhesive, both discussed earlier in this opinion, were shown by

the unrebutted testimony of Mr. Erikson. (Tr (Erikson) 78-79,

102-03; AX AA). The early work at Airco also supports these

findings.

After several months of work and several unsuccessful

experiments, the Example 8 product was first produced in an

experimental run, P-335, on March 15, 1966. (TX 98-99, 105;

AX 622, 707; Tr (lIacoviello) 2696, 2698-99). That product

was tested for adhesive properties both by Mr. Iacoviello’s

group and by the full-scale adhesive testing laboratory headed

by Mr. Rosenblum. Mr. lacoviello’s tests showed good peel

strengths for some substrates, but gave meaningless results for

vinyl, because of the atypical material used. (TX 148/AX 279,

pp. 13, 38; Tr (Lindemann) 1522-25; Tr (lIacoviello) 2697-98,

2728-30; Iacoviello Dep. 51-57). The tests conducted in Mr.

Rosenbluin’s group, however, immediately showed that the

P-335 product had dramatically better peel strength, better

aging characteristics and better plasticizer response than the

commercial standard, Daratak B. (Tr (Lindemann) 1524-30;

Tr (Iacoviello ) 2698-99, 2734; AX 260/627, pp. 6 et seq., 629;

Rosenblum Dep. 23-24, 27-28; Blades Dep. 336-39; Iacoviello

Dep. 342-43, 373-77).

When the P-335 product was scaled up for pilot plant

production, tests on the resulting product, labeled “414-AS-

F4,” confirmed all the earlier results of the P-335 experiment.

(AX 639; Iacoviello Dep. 423 et seqg.). In addition to peel

strength, aging characteristics, and plasticizer response, Mr.

Rosenblum’s group measured the new product’s creep resis-

A-42

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

tance (cohesive strength). Again, the results were dramatically

better than the industry standard, Daratak B. (AX 748, p. 113;

Iacoviello Dep. 323-24). As a consequence of these new

properties, the product was immediately accepted by the in-

dustry. (AX 642, 644, 748, p.113; Tr (Jaffe ) 525-26; Iacoviello

Dep. 323-24, 440-42, 447-49).

8. Commercial Success And Other Indicia Of

Nonobviousness

The foregoing conclusion of nonobviousness is reinforced

by recognized indicia of nonobviousness: (a) the product was

an immediate and substantial commercial success; (b) there is

evidence of acquiescence by others; and (c) defendants here

copied the ’388 adhesive composition rather than use any of the

compositions of the prior art.

Mr. Harold L. Jaffe, the Airco executive in charge of

marketing Airflex 400, testified to the commercial success of the

product. Mr. Jaffe’s comparison of the sales of Airflex 400 to

the sales of other relevant products shows the dramatic com-

mercial success of this new product.

As Mr. Jaffe pointed out, prior to the invention of the ‘388

patent, managers at Airco optimistically estimated that the

market for any vinyl acetate-ethylene adhesive would level out

at sales of not more than about 10 million pounds per year.

(AX 880; Tr (Jaffe) 529). Yet sales of Airflex 400 were

approximately 12 million pounds in 1968, about 23 million

pounds in 1970 and almost 40 million pounds in 1973, a sales

growth unprecedented n this field. (AX 879/879A; AX 785-

86; Tr (Jaffe) 536).

Compared to sales of other vinyl acetate-ethylene copoly-

mers marketed by Aira (between 4 and 12 million pounds),

Airfiex 400 is by far the greatest success (40 million pounds).

(Tr (Jaffe) 523; AX 879A; AX 787-89). When the sales

growth of Airflex 400 s compared to the sales growth of Air

A-43

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Products’ vinyl acetate homopolymer products (11% com-

pounded in 1968-1973, about the same as the industry wide

growth ), Airflex 400 again was the far greater performer (50%

compounded in those same years). (Tr (Jaffe) 532-33; AX

879/879A; AX 787-89).

The trial testimony establishes that the commercial success

of Airflex 400 was due to the unexpected properties it exhibited.

(Tr (Jaffe) 537). Mr. Erikson testified that when he received

his first sample of the new product, he determined that it was

the first product ever available to the adhesives industry which

combined the six important properties long desired by that

industry for a laminating adhesive. (Tr (Erikson) 78-79, 102-

03; AX 654, AA). Mr. Myrick, a former employee of H.B.

Stuck Adhesives, testified that Airflex 400 “‘made” Stuck Adhe-

sives’ Memphis, Tennessee plant; prior to the advent of Airflex

400, Stuck’s customers had not been able to laminate vinyl

successfully. (Tr (Myrick) 153-54, 158-60). Indeed, even CST

declared in proceedings before the Patent Office that Airflex

400 had an enormous commercial impact on the adhesives

industry, and that it was the largest selling polyvinyl alcohol-

protected adhesive. (AX 3, pp. 24, 27, 37).

Further confirmation of nonobviousness is shown by

acquiesence by others in the patent’s validity. Mr. Jaffe testified

that, in order to encourage sustained rapid growth in the

market for Airflex 400, Air Products, at its customers’ insist-

ence, sought to find a second source of supply. (Jaffe Dep. 467-

70). To that end, Air Products entered intw negotiations with

DuPont which culminated in DuPont’s agreement to accept a

license under the ’388 patent and become a “second supplier.”

DuPont Agreed to royalty payments approximately eight times

greater than its initial offer. (TX 217, 224, 225, 227, 238-39;

Jaffe Dep. 394-97, 474-75, 492-93, 499-500; Wolfson Dep. 29-

31, 42; Szanto Dep. 45-46, 54-55, 99-102).

DuPont agreed to these royalty terms even though it had

previously obtained a draft opinion concluding that the ’388

A-44

District Court Order And Opinion,

Including Findings Of Fuct And

Conclusions Of Law, Filed May 2, 1983

patent was invalid. Given this, this Court can only conclude

that the draft opinion was prepared for negotiating purposes.

DuPont itself apparently never gave its opinion any weight;

indeed, the opinion was never formalized. (Wolfson Dep. 14,

22, 27-28; Szanto Dep. 69, 71-72, 107-09, 117-18; AX 840; see

Jaffe Dep. 489-91; Ellis Dep. 47-61 ).

During its negotiations with Air Products, DuPont also

raised arguments with respect to alleged grounds four avoiding

infringement. Among other things, DuPont argued that the

addition of an unnamed third monomer avoided infringement.

Yet DuPont agreed to the payment of royalties despite the

existence of these purported “non-infringement” arguments.

(AX 733; TX 219, 223-26, 230, 262; Jaffe Dep. 464-67, 483-85,

488-90; Rosenblum Dep. 79-81; Wolfson Dep. 33-34, 37, 40-

48; Szanto Dep. 31-33, 41-44, 49-53, 98).

Long before its purchase of CST, Nationa! Starch obtained

an opinion that the ’388 patent was invalid, but nevertheless

entered into licensing negotiations with Air Products to obtain a

license under the ’388 patent. (TX 263-64). National Starch

chose not to take a license and did not manufacture vinyi

acetate-ethylene copolymer emulsion products covered by the

’388 patent until it acquired CST. (Tr (Nadler) 1613-16). The

Court accordingly gives no weight to the National Starch

invalidity opinion.

>

The remaining indicia of nonobviousness is defendants

copying of plaintiff's patented product. That copying is detailed

in the infringement section of this opinion.

C. Defendants’ Othcr Defenses

The defendants have raised a number of other defenses in

an attempt to defeat the ’388 patent. The Court will take these

up separately.

A-45

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

1. The § 112 Defense

Defendants argue that Messrs. Lindemann and Iacoviello

failed to satisfy the disclosure requirements of 35 USC § 112,

and in particular that they failed to disclose the best mode

known to them for carrying out their invention. Section 112

requires that the patent specification contain a written descrip-

tion sufficient to teach one skilled in the art how to practice the

invention. It also requires that an inventor set forth the “best

mode contemplated by the inventor” for carrying out his

invention at the time the application is filed. What constitutes

the “best” mode is to be judged by the inventors, and it is

settled that the “best mode” need not be the actual commercial

mode ultimately employed. Jn re Gay, 309 F.2d 769, 773

(CCPA 1962).

Defendants’ argument appears to be that the inventors

were charged with the duty of disclosing to the Patent Office the

reaction control apparatus and agitation system of the 500

gallon semi-works reactor used by Airco in scaling up the

Example 8 composition for pilot plant production. They argue

that the scaled-up reactor produced a better product than the

experimental Example 8 product. Defendants’ best mode

argument fails for the following reasons.

As Mr. lacoviello testified, he felt that the best way for

carrying out the invention of the ’388 patent was his bench-

scale procedure described in Example 8. (Tr (Iacoviello) 2696,

2702-06, 2721, 2738). That procedure produced the best

product and it was the safest way to conduct the polymeriza-

tion. (Jd.). It is also telling on this issue that Mr. Lindemann,

defendants’ own expert, gave no testimony in support of the

defendants’ best mode defense.

The evidence of record also fails to show that the inventors

ever had any personal knowledge of the details of the reaction

control apparatus and system associated with the 500-gallon

semi-works reactor, or that they had any knowledge as to the

A-46

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

details of the agitation apparatus of that reactor. (Tr (laco-

viello) 2709).

The Court has considered defendants’ other so-called best

mode objections and found them meritless. The specification is

directed to a person skilled in the art; he would know precisely

how to carry out the process of Example 8 to get the product

there described. (Tr ( Vanderhoff) 256-59, 351-57: lacoviello

Dep. 544-47, 682-84).

Accordingly, the Court finds that the inventors of the ‘388

patent satisfied the requirements of 35 USC § 112.

2. Defendants’ Fraud Contentions

Defendants have charged plaintiff Air Products and its

predecessor in interest, Airco, with fraud in the prosecution of

the ‘388 patent. Defendants allege that Airco and Air Products

failed to disclose to the Patent Office certain prior art materials,

in particular the German application, the French patent and

information concerning Daratak B and Gelva TS-100. They

charge that plaintiffs attorney mischaracterized the Worrall

322 patent when he himself brought it to the Office’s attention.

And they charge that Airco and Air Products falsified or

misrepresented the data set out in Table | for Example 8, the

write-up of which is that of Run P-335. (See Tr (lacoviello)

2737-39).

The allegation of fraud on the Patent Office is a serious

charge and the courts have demanded a substantial quantum of

proof to establish the claim. Norton v. Curtiss, 433 F.2d 779,

797 (CCPA 1970); Oetiker v. Jurid Werke GmbH, 671 F.2d

$96, 600 (D.C. Cir. 1982); Tate Engineering, Inc. v. United

States, 477 F.2d 1336, 1345 (Ct. Cl. 1973). The defendants,

asserting fraud, carry a heavy burden of persuasion. Krenzer v.

Stojfel, 5S1 F.2d 1214, 1217 (CCPA 1977). Clear proof of

“specific intent” that Airco or Air Products “knowingly and

willfully” misrepresented facts to the Patent Office is also

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

required to establish a charge of fraud. O0etiker, 671 F.2d at

600.

In general, a finding of fraud requires proof of two specific

elements: (1) proof that information was, with bad faith intent,

withheld from or misrepresented to the Patent Office during the

prosecution of the patent; and (2) proof that the mis-

representation or Omission was material to the prosecution of

the patent, e.g., proof that the allowance of the patent was the

result of such bad faith conduct. Norton v. Curtiss, 433 F.2d at

793; 41MI Industries, Inc. v. E.A. Industries, Inc., 204 USPQ

568, 589 (W.D.N.C. 1979), aff'd, 644 F.2d 876 (4th Cir.

1981). Absent proof of each of these elements, no fraud can be

found.

(a) The Alleged Fraudulent Failure To Cite Prior

Art

With regard to the charge that a reference was fraudu-

lently withheld, the proof must, as a minimum, establish that

the reference is more relevant to the claimed invention than was

the art considered by the Patent Office, and that the failure to

disclose that reference to the Patent Office was deliberate and

intentional, together with proof that such bad faith conduct was

material to the allowance of the patent. Plasser American Corp.

v. Canron, Inc., 546 F. Supp. 589, 603 (D.S.C. 1980); Feed

Service Corporation v. Kent Feeds, Inc., 528 F.2d 756, 762-63

(7th Cir. 1976); General Battery Corp. v. Gould, Inc., 545

F Supp. 731, 740. (D. Del. 1982); Solvex Corp. v. Freeman, 199

USPQ 797, 800 (W.D. Va. 1976); Kelley Manufacturing Co. v.

Lilliston Corp., 200 USPQ 670, 692 (E.D.N.C. 1978), aff'd, 636

F.2d 919 (4th Cir. 1980).

The testimony in this case shows that Mr. Lindemann and

Mr. Stewart, the Airco patent attorney responsible for drafting

the application, knew of the French and German references

relied on by defendants. (TX 89). But from Mr. Stewart's

testimony it is clear that he did not believe that the German

A-48

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

‘085 application (TX 3, 3A, 9) or the French patent (TX 6B, 7)

were pertinent to the subject matter claimed in the application

either when it was originally filed on March 13, 1967 or when it

issued. (Stewart Dep. 135-38, 183-86, 243-44, 264-68, 297-98,

302-03; cf. Stewart Dep. 26-27; TX 250-51).

In the one instance where Mr. Stewart did consider the

German application relevant, in connection with the first pro-

cess patent application filed by Airco, he did bring it to the

Patent Office’s attention. (TX 19, 74A; Stewart Dep. 73-76,

196-97, 243-44, 265-66, 297-98, 302-03). Mr. Stewart’s con-

temporaneous belief that these patents were not relevant or

material prior art was confirmed at trial by Dr. Vanderhoff’s

testimony. (Tr ( Vanderhoff) 2778-2803; AX 907/907A). The

German application and the French patent are at best merely

cumulative to the art which was of record during the ‘388

prosecution. Defendants’ expert, Mr. Modance, agreed that

cumulative art need not be cited to the Patent Office. (Tr

(Modance) 2572).

Defendants point to an early Airco report (TX 67, 79),

which states that a composition of matter claim probably could

not be obtained because of the German application. As both

Mr. Lindemann and Mr. Modance admitted at trial, however,

that document was dated well over two years before the

claimed invention was made. (Tr (Lindemann) 1441-45; Tr

( Modance ) 2541-43).

Defendants also argue that the German application was

the “jumping-off” point for Airco’s entire vinyl acetate ethylene

program, and therefore should have been cited. (TX 62, 64-66,

89; Blades Dep. 130-31; Stewart Dep. 188-95). But that

~ starting point was two and one half years before the invention

of the ‘388 patent was made. By that time, the German

reference had become irrelevant in view of the substantial

progress made by Mr. Lindemann and his co-workers as

reflected by the ‘851 patent, which was considered by the

en

ee ere ee re nee

ee

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

examiner. (Tr (Lindemann) 1441-45; Tr (Modance) 254]-

43).

Defendants also point to the citation of the German

application and French patent during the prosecution of certain

foreign patent applications based on the application for the ‘388

patent. (AX 756; TX 287-98; Ellis Dep. 185 et seg.; Stewart

Dep. 283-90). The claims against which the foreign patent

authorities cited these patents do not appear in the record; that

failing, together with the difference in legal standards which

may pertain, of which defendants have adduced no proof,

prevents the Court from finding any fault with the failure to cite

these references.

In any event, Dr. Vanderhoff established at trial that these

two references, like the other prior art relied upon, actually

teach away from the claimed invention. (Tr ( Vanderhoff)

2795-97, 2802-03). There is no “fraud” where arguments

favorable to patentability might be but are not made to the

examiner.

y,

Furthermore, defendants adduced no proof of any deliber-

ate intent to withhold any information from the Patent Office,

by either the inventors or by their counsel, Mr. Stewart or Mr.

Ellis. Nor is there any evidence that counsel or the inventors

were guilty of gross negligence for failing to cite any materials.

(b) Defendants’ Contention That Plaintiff Committed

Fraud By “Mischaracterizing” The Worrall Refer-

ence

Defendants further maintain that Mr. Ellis, who took over

the prosecution of the patent application upon Air Products’

purchase of the business from Airco, committed fraud by

mischaracterizing the Worrall reference. Since the reference

was made available to the Patent Office examiner, thus per-

mitting the examiner to study and consider the reference and

make his own independent determination as to the accuracy of

the applicants’ arguments, it is difficult to understand defend-

A-50

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

ants’ fraud charges. See Skil Corp. v. Lucerne Products, Inc.,

489 F.Supp. 1129, 1161 (N.D. Ohio 1980), aff'd, 684 F.2d 346

(6th Cir. 1982). The examiner had the patent before him, he is

assumed to understand it, and he presumably read it after it

was brought to his attention. Furthermore, as this Court has

already found, Worrall’s products are not taught as possessing

utility as laminating adhesives. Consequently Mr. Ellis’s state-

ment that the products do not possess such properties cannot be

fraud. Moreover, defendants have shown no intent to mislead

the examiner. (TX 47, 48; Ellis Dep. 31-37, 245-47).

(c) Defendants’ Allegation Of Fraud In Connection With

Certain Data Set Forth in Table I

Defendants also charge fraud concerning Example 8 and

the peel strength data set out in Table 1. It is settled law,

however, that all patent applicants are entitled to make, and are

expected to make, a good faith judgment as to what test results

are pertinent and require disclosure. Ne/son v. Bowler, 626 F.2d

853, 858 (CCPA 1980); Special Metals Corp. v. Teledyne

Industries, Inc., 215 USPQ 698, 707 (W.D.N.C. 1982); Mobil

Oil v. Filtrol Corp., 186 USPQ 252, 260 (C.D. Cal. 1975);

Rohm & Haas v. Owens-Corning Fiberglas Corp., 196 USPQ

726, 739 (N.D. Ala. 1977). In other words, the applicant is

obligated to present to the Office only those test results that

fairly and accurately represent the true scientific facts. Special

Metals Corp., 215 USPQ at 705-06; General Battery Corp., 215

USPQ at 1028.

The testimony shows that the source of the data reported in

Table 1 for Example 8 is the series of tests run by Messrs.

Iacoviello and Rosenblum in 1966. Most of the data in Table 1

came from Mr. Iacoviello’s original peel tests, which were run

at a peel rate of 5” per minute as reported in the patent. In

some instances, however, Mr. Rosenblum’s data was used

because Mr. Iacoviello’s tests had given meaningless results.

(Iacoviello Dep. 51-57, 314, 364-71). That was the case for the

St iy lt Tit a

A-51

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Example 8 peel strength for vinyl film. Mr. lacoviello’s tests

with his atypical vinyl had shown essentially no peel strength

(i.e. “less than 0.1”) for the PVOH-protected products he

tested, P-335 and Daratak B, the latter being the commercial

bench mark of the time. Mr. Iacoviello’s own contemporaneous

report confirms that the data was insignificant. (AX 279, pp.

13, 38; Tr (Iacoviello) 2697-98, 2704-06, 2728-31; Tr (Lin-

demann) 1522-25; Iacoviello Dep. 120-23, 300-01, 303-09, 456

et seq., 517 et seq; Stewart Dep. 204-11, 217, 229-32, 234-35,

272-75, 308, 309-10, 315-16; Ellis Dep. 23-24, 26-27).

Mr. Iacoviello and Mr. Stewart consequently used the

representative data obtained by Mr. Rosenblum for both the

original P-335 product and the same product produced on a

larger scale in the 500 gallon reactor, Run 414-A5-F4. Mr.

Rosenblum’s tests had been run at peel rates of 2” per minute

and 20” per minute. For 2” per minute, he obtained values of

3.0 (unplasticized product) and 3.5 (plasticized product) for

the original P-335 product, and values of 3.8 (unplasticized )

and 4.0 (plasticized) for the scaled-up run. For the 20” per

minute tests, he obtained values of 5.5 for both the unplasti-

cized and plasticized original P-335 product and 6.0 for both

the unplasticized and plasticized scaled-up product. (AX 627-

29, 639). These results are in accord with the general rule that

as the peel rate increases, the measured peel strength also

increases. (Tr (Lindemann) 1528-29; Tr (Modance) 2594-

95).

In order to arrive at representative values for Example 8 at

the 5” per minute rate, which was used for the other data in

Table | of the ’388 patent, the higher of the 2” per minute

results were used. Because the 5S” per minute values would, if

anything, have been higher than the 2” per minute values, this

choice is entirely appropriate or even somewhat conservative.

In summary, the data set forth in Table | is a fair and accurate

representation of the properties of the Example 8 product. (Tr

(Iacoviello) 2704-06, 2721, 2724-25, 2738-39; Stewart Dep.

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

236, 272-75, 308-10, 315-16; Jaffe Dep. 379-82; AX 662, 665;

Rosenblum Dep. 63-64, 92-94; Blades Dep. 345-47).

To the extent defendants contend that it was inappropriate

to use the data from the scaled-up rather than the laboratory

scale product, their arguments are unsound. The testimony of

defendants’ expert, Dr. Gaylord, is itself dispositive, of this

fraud issue; he admitted that the differences in procedures for

the original and scaled-up runs would not have produced any

significantly different results in peel, i.e. adhesive, strength. (Tr

(Gaylord) 1831-32). Consequently, as to peel strength, there

could have been no misrepresentations. As to cohesive

strength, if there were any differences, the original P-335

product was, if anything, better than the scaled-up 414-A5-F4

product. P-335 had higher benzene insolubles; those higher

insolubles mean that the P-335 product had higher creep

resistance, and there is no dispute that the correct insolubles

were reported for Example 8. (Tr (Gaylord) 1831-32; Tr

(lacoviello) 2740-41; Tr (Lindemann) 1497-98; Rosenblum

Dep. 50-56).

Defendants have also raised questions about the cellulose

acetate data reported in Table | for Example 8. The cellulose

acetate use has never been an issue in this lawsuit or in the

Patent Office prosecution. Moreover, all of that data was

supplied to Mr. Stewart by deferdants’ own expert, Mr.

Lindemann. The cellulose acetate data used for Example 8 in

Table I was obtained from Table III of a memo sent by Mr.

Lindemann to Mr. Stewart in October of 1966. (TX 175). The

data, then, is data obtained in actual experiments and there has

been no showing that it was used in any way whatsoever to

mislead the Patent Office.

In summary, since defendants failed to prove any of the

elements required to substantiate their charges of fraud, on any

of the grounds alleged, the Court accordingly finds that there

was no fraud committed in the prosecution of the ‘388 patent.

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

D. The Court Concludes That The ’388 Patent Is Good And

Valid In Law

For the foregoing reasons, the Court finds that the defend-

ants have not satisfied their burden of rebutting the presump-

tion of validity which attaches to the ’388 patent and all its

claims, even by a preponderance of the evidence. The pre-

sumption therefore stands and, having considered all the

evidence, the Court finds the patent and its eleven claims are

valid.

IV. PATENT INFRINGEMENT

Plaintiff's charges of infringement are the following:

a. Defendants have directly infringed claims |

through 3 of the ’388 patent by making and selling four

adhesive products, Dur-O-Set E-200, E-216, E-220 and E-

230.

b. Defendants have directly infringed claims 4

through 11 of the ’388 patent by making and using

laminated articles using the same four adhesive products.

c. Defendants have induced infringement of claims |

through 6 and 8 through 10 by inducing their customers to

make laminates using defendants’ E-200, E-216, E-220 and

E-230 products.

The Court finds in favor of the plaintiff on each of these

three issues for the reasons set forth below.

A. Defendants Directly Infringe Claim 1

Plaintiff's first charge, direct infringement, may be proven

by showing either: (1) that defendants’ products literally fall

within the scope of the claims; or (2) to the extent they are not

literally within the scope of the claims, they are equivalent to

the claimed composition. In considering literal infringement,

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

“resort must be had in the first instance to the words of the

claim.” If accused matter “falls clearly within the claim,

infringement is made out and that is the end of it.” Graver Tank

& Mfg. Co. v. Linde Air Products Co., 339 US 605, 607 (1950);

International Nickel Co. v. United States, 175 USPQ 209, 215

(Ct Cl. 1972); Ziegler v. Phillips Petroleum Co., 483 F.2d 858,

868 (Sth Cir. 1973).

Under the doctrine of equivalents, a patent claim is

infringed if the accused product performs substantially the

same function in substantially the same way to obtain substan-

tially the same result. Graver Tank & Mfg., 339 US at 608;

Autogiro Co v. United States, 384 F.2d 391, 400 (Ct. Cl. 1967).

Under this doctrine, an accused infringer cannot avoid in-

fringement by making minor changes in the accused product,

process, or article of manufacture. Ziegler, 483 F.2d at 868;

Plasser American Corp., 546 F.Supp. at 604.

Plaintiff has proved both literal infringement and in-

fringement under the doctrine of equivalents.

1. Defendants’ E-200 Product Directly Infringes Claim

1 Of The ’388 Patent

The origins of the defendants’ E-200 and the related ““E”

series products go back to 1970. By that time Mr. Lindemann

had left the employ of Airco and was Vice President of

Research and Deveiopment for defendant Chas. S. Tanner.

(Tr (Lindemann) 606-07, 1157).

While the ’388 pateut had not at that time been issued in

the United States, Mr. Lindemann knew that corresponding

foreign applications had been filed and published in various

foreign countries. He obtained a copy of the Dutch equivalent,

translated Example 8 into English, the same example corre-

sponding to plaintiffs commercial Airflex 400 product, and

used that example for the first experimental work at CST. (Tr

(Lindemann) 608-09, 1385-86; Tr (Wacome) 449-50; AX 11:

AX 13; Tr (Iacoviello) 2696; Tr (Cordeiro) 708-10).

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Mr. Lindemann instructed one of his research chemists,

Mr. Donald Wacome, to reproduce the Example 8 adhesive

composition. (Tr (Lindemann) 608-09, 1385-86; Tr (Wa-

come) 449-50; AX 11, 13). Mr. Wacome was immediately

successful. (Tr (Wacome) 456). This experiment then led to

subsequent reproductions, all of which were designed to pro-

duce a product which could compete in the market with

plaintiffs Airflex 400. (Tr (Wacome) 457-62; AX 53, pp. 61,

63; AX 57-58; AX 59, pp. 4, 15, 17, 27, 29, 31; AX 73; AX 507;

see AX 111; Sembert Dep. 93-97).

CST’s initial commercial efforts in the vinyl acetate-

ethylene field were directed to the manufacture of copolymers

useful in the textile, rather than the adhesives industry. By

1975, however, after CST had been acquired from its original

owners by the Ciba-Geigy Corporation, defendant CST com-

mitted itself to the commercial manufacture of the Airflex 400-

type product. (AX 70). After purchasing and installing the

necessary commercial equipment, CST commenced manufac-

ture of its new product, called “E-200”, in the fall of 1977.

(AX 768, pp. 12-13).

In September or October of 1978, Mr. Blakely, then

President of defendant CST, and Mr. Lindemann attempted to

sell E-200 to the Borden Company, one of plaintiffs major

customers for Airflex 400. Messrs. Blakely and Lindemann told

Mr. Erikson, who was then responsible for adhesives at Borden,

that E-200 was equivalent to Airflex 400 and that the E-200

product could be directly substituted for plaintiffs product.

Neither Mr. Blakely nor Mr. Lindemann suggested to Mr.

Erikson that E-200 was any better than, or different from,

Airflex 400. (Tr (Erikson) 105-07).

At about this same time, defendant CST also sold E-200 to

Mr. Larry Myrick of Universal Adhesives in Memphis, Ten-

nessee, as a direct replacement for Airflex 400. Mr. Myrick’s

company used E-200 as a replacement for Airflex 400 and, in

fact, after purchasing some of the E-200 product, Mr. Myrick

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

placed it in the same storage tank he was then using for Airflex

400. (Tr (Myrick) 153-54, 162-63, 165, 169).

The evidence at trial also showed that defendant CST told

Mr. William Donaldson, the Executive Vice President and

Chief Operating Officer of Southeastern Adhesives, that E-200

was a direct replacement for Airflex 400. (Tr ( Donaldson )

175, 179-81). Defendant CST never stated or suggested that E-

200 was any different from Airflex 400. (Tr ( Donaldson )

181).

Even the defendant National Starch, who purchased CST

only July 31, 1980 ( Defendant’s Answer, J 3), evaluated the E-

200 product and found it comparable to Airflex 400. (TX 564-

66; Tr (Nadler) 1614-15, 1619-21, 1657-67, 1670, 1688 et seq.,

1694-95).

(a) Chemical Analyses Of The E-200 Product Estab-

lish Infringement

Prior to the commencement of this action, both the plain-

tiff, Air Products, and its licensee, DuPont, independently

analyzed defendant CST’s E-200 product; both concluded it

infringed the claims of the ’388 patent. Plaintiff concluded that

E-200 is a vinyl acetate-ethylene emulsion copolymer, having

almost the same performance properties as Airflex 400. (AX

680, 724, 725; Tr (Vanderhoff) 343-44; Rosenblum Dep. 70-

75, 82-89).

The DuPont report concluded that:

We have obtained three separate samples of the

acetate/ethylene emulsion produced by Tanner that clearly

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

place his product within Claim | of the subject patent. The

data is summarized below.

U.S. 3,708,388 cst

Copolymer, 5-40 17.2

% ethylene

Emulsion, 45-60 56.4

% solids

Intrinsic 1-2.5 1.18*

viscosity, dl/g

(in benzene,

30°C)

Protective 0.05-2.0 1.66

colloid, %

Type of PVA &/or HEC PVA

protective

colloid

* This value is the average of three samples obtained from three

separate sources and which we are assured are products from Charles S.

Tanner. Intrinsic viscosity values of 1.02, 1.17 and 1.34 were obtained

by acetone extraction. (AX 726; see TX 240, 243-44; Wolfson Dep. 50-

54).

Analyses conducted by Air Products subsequent to the com-

mencement of this action further confirm and support the

Court’s findings that defendants’ E-200 product (as well as

defendants’ E-216, E-220 and E-230 products) infringes the

claims of the ’388 patent. (AX 752).

The evidence adduced at trial showed that the Borden

Company received samples of defendants’ E-200 product in the

fall of 1978. (Tr (Erikson) 105-08). Borden tested the E-200

samples and determined that there were no significant differ-

ences between E-200 and Airflex 400. (Tr (Erikson) 107-08).

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

(b) Defendants’ Records Show That Their E-200

Product Is Within The Scope Of Claim 1

Plaintiffs expert, Dr. Vanderhoff, studied defendants’ in-

ternal records and provided the Court with summaries which

were unchallenged. (AX 220, 566-82; Tr ( Vanderhoff) 275-

81). At the outset, the Court finds that, in accordance with Dr.

Vanderhoff’s testimony, the process used by defendants is the

same as the process disclosed by plaintiff in Example 8 of the

patent; in other words, defendants employ (1) a batch vinyl

acetate, semi-continuous ethylene process; (2) an equilibration

period; (3) a redox catalyst system; and (4) copoiymerization

in the presence of PVOH. That process leads to the product of

Example 8. (Tr ( Vanderhoff) 345-47, 351-57; AX 212, 582,

857; Schwirian Dep. 775).

Defendants’ formulation sheets show that E-200 is an

adhesive composition that consists essentially of an aqueous

vinyl acetate-ethylene copolymer emulsion as required by claim

1. (AX 566-70; Tr (Vanderhoff) 282-83, 297-99; Tr (Lin-

demann) 608; AX 160). On this point, there seems to have

been little, if any, dispute between the parties.

Dr. Vanderhoff reviewed 672 runs of the E-200 product.

The average ethylene content was 17%, thus placing the E-200

product squarely within the scope of claim |. There were two

anomalous runs outside the claims containing 3% and 4%

ethylene. (Tr ( Vanderhoff) 282-83; AX 220; see AX 580, p. 2,

Runs SG 205 and SG 222).

The solids conterts for nearly all of the 672 E-200 runs

were reported. All were very close to 55% solids, well within

the claimed range of 45 to 60% of claim 1. (AX 220, 574-76,

580-81; Tr ( Vanderhoff) 283-84).

The intrinsic viscosity measurements determined for the

products fell in the range of 0.47 to 1.47, the average intrinsic

viscosity being 0.92. Of these, all except one were inside the

range specified in claim 1. (Tr ( Vanderhoff) 284; AX 220; AX

A-59

Distriet Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

580, p. 8, Run SL 216). The claimed range is “1 to 2.5.”

Scientifically, because the number “1” is stated to only one

significant figure, as opposed to 1.0, it includes values between

0.51 and 1.49; consequently all the intrinsic viscosity values «

except the anomalous 0.47 value are within the claim. (Tr

( Vanderhoff) 273, 437-38). This conclusion is borne out by the

Patent Office proceedings. Both the applicants’ attorney and

the Patent Office examiner considered the intrinsic viscosity

limitation to include Example 8, which has an intrinsic viscosity

of .83. (AX 2, pp. 120-21; Tr (Vanderhoff) 215-16, 273; Tr

( Witherspoon) 1069-70).

In an attempt to exclude some of the E-200 runs, defend-

ants contend that the claimed lower limit of “1” should be

interpreted as 1.0. While the Court rejects this argument in

view of Dr. Vanderhoff’s testimony, even if the claimed range

were so interpreted, the intrinsic viscosities of these products

infringe under the doctrine of equivalents. The defendants

themseives have established that equivalency by selling prod-

ucts having instrinsic viscusities above and below 1.0 as the

same product (AX 220,580), and defendants have offered no

evidence that there are any consequential differences. On the

contrary, plaintiffs expert, Dr. Vanderhoff, testified that the

intrinsic viscosities of all of these products showed they con-

tained soluble copolymer of high molecular weight. (Tr

( Vanderhoff) 216, 300-01 ).

All of the formulation data provided shows the protective

colloid was PVOH. (Tr ( Vanderhoff) 284-86; AX 566-70, 580-

81). The average concentration of PVOH was 2.10%, and the

range was from 1.17% to 2.36%. (Tr (Vanderhoff) 285).

Accordingly, the Court finds that all of these runs satisfy this

limitation of claim |. The upper end of the claimed range for

protective colloid is ‘“‘about 2,” clearly embracing, literally, any

concentration less than 2.5 under the proper scientific inter-

pretation. (Tr ( Vanderhoff) 301-02). The Court therefore

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

concludes that defendants’ products literally meet this limita-

tion and also infringe under the doctrine of equivalents.

,

Accordingly, the Court concludes that all of defendants

E-200 products except the anomalous products of Runs SG 205,

SG 222 and SL 216, infringe claim | of the ‘388 patent both

literally and under the doctrine of equivalents.

2. Defendants’ E-216 Product Infringes Claim 1 Of The

‘388 Patent

The E-216 product, which was manufactured by National

Starch for its internal use after the acquisition of CST, is the full

equivalent of E-200 with no more than a new label. (Tr

( Nadler) 1615-17, 1688; Tr (Schwirian) 2058).

The defendants’ E-216 formulation sheets were also stud-

ied and summarized at trial. The results show that the E-216

product is well within the scope of claim |. (Tr ( Vanderhoff)

286-87; AX 57!, 577, 580-82).

All the E-216 products were produced by the copolymeri-

zation of the ethylene and vinyl acetate monomers in the

presence of a protective colloid, in particular, PYVOH. The

average concentration of protective colloid present during the

polymerization was 2.10%. (Tr ( Vanderhoff) 287, 290-91,

297-99; AX 5° 1, 580-81). The solids contents of the E-216

products were all about 55%. (Tr ( Vanderhoff) 290; AX 577,

580-81). The glass transition temperatures for the E-216

products correspond to an ethylene content in the range from

11 to 16%, with the average corresponding to about 13%

ethylene. (Tr ( Vanderhoff) 287-89, 298-99, AX 577, 580-81;

see Tr ( Vanderhoff) 219-27; AX 806, 839).

While no intrinsic viscosity data were provided by the

defendants for the E-216 product, Dr. Vanderhoff testified that

the conditions of the polymerization and the formulations used

for E-216 (AX 218, 571) would result in an intrinsic viscosity

comparable to that for E-200. (Tr ( Vanderhoff) 290). De-

A-61

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

fendants, who make and use E-216 internally, offered no

evidence in rebuttal to Dr. Vanderhc ifs testimony on this point,

and the Court accepts Dr. Vanderhoff's statements. Nor was

any contention made that the E-200 and E-216 products differ

with respect to intrinsic viscosity. Indeed, Mr. Nadler of

National Starch testified that E-216 was the same as E-200

except for removal of one of two surfactant-like materials. (Tr

( Nadler) 1615-17, 1688). The evidence therefore establishes

to this Court’s satisfaction that the E-216 products infringe

claim | both literally and under the doctrine of equivalents.

(Tr ( Witherspoon) 1086).

3. Defendants’ E-220 Product Infringes Claim 1 Of The

‘388 Patent

Defendants’ E-220 product is also an adhesive consisting

essentially of an aqueous vinyl acetate-ethylene copolymer

emulsion. It is essentially the same product as E-200, and is

made by the same process. (Tr ( Vanderhoff) 291-92, 297-99,

352-57; AX 131, p. 1; AX 143, p. 2; AX 221; AX 572; AX 753,

pp. 13, 15).

Again, defendants’ own internal data confirms the in-

fringement. The protective colloid used in the manufacture of

the E-220 product was PVOH. It was employed in concentra-

tions ranging from 2.05 to 2.17%; the average concentration

was 2.10%. The E-220 product, therefore, contains the requisite

amount and type of protective colloid to satisfy the limitations

of claim |. (Tr ( Vanderhoff) 292; AX 572, 580-81). The

E-220 products all had solids contents close to 55%. (Tr

( Vanderhoff) 291-92; AX 220, 572, 578, 580-81). The average

ethylene content measured was 18.5%, the range being from 11

to 41%. (Tr ( Vanderhoff) 292; AX 220, 580-81). Since the

upper limitation of the ethylene range specified in claim | is “to

about 40%”, all of these products fall within the range of the

claim. Where intrinsic viscosity data was generated, the

average value was exactly the same as the ‘388 patent’s

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Example 8, 0.83; the range of values was from 0.60 to 1.21. (Tr

( Vanderhoff) 292; AX 220, 580-81). The evidence establishes,

and the Court therefore finds, that defendants’ E-220 products

infringe claim | both literally and under the doctrine of

equivaients. (Tr ( Witherspoon) 1086).

4. Defendants’ E-230 Product Infringes Claim 1 Of The

‘388 Patent

Defendants’ E-230 product is also an adhesive consisting

essentially of a vinyl acetate-ethylene copolymer emulsion.

(AX 573, 753, pp. 13, 15; Tr (Vanderhoff) 292-94, 297-99).

The product is essentially the same as E-200 except that it has a

higher ethylene content and is therefore slightly “softer.” The

ethylene content, however, is still within the range of claim 1.

(Tr ( Vanderhoff) 297-99).

Defendants’ data for E-230 show the solids contents for all

the E-230 products were close to 55%. (Tr ( Vanderhoff) 294;

AX 220, 579-81). The average ethylene content of the E-230

product, to the extent measured, was 29%. (Tr ( Vanderhoff)

293-94, 297-98; AX 220, 580-81).

The intrinsic viscosity data available (6 values) showed a

range of 0.45 to 1.07, the average value being 0.59 (Tr

( Vanderhoff) 438-39; AX 220, 580-81). Half the values were

within the claimed range, either literally or under the doctrine

of equivalents. (Tr (Vanderhoff) 439). The E-230 products

were copolymerized in the presence of a protective colloid,

namely, PVOH, and the average concentration of the protective

colloid was 1.97%, ranging from 1.85% to 2.43%. (Tr (Van-

derhoff) 293; AX 573, 580-81). The Court therefore finds that

with the exception of the three anomalous runs having intrinsic

viscosities below .50, the E-230 products infringe claim 1. (Tr

( Witherspoon) 1086).

A-63

District Court Order And Opinion,

including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

B. Defendants Also Directly Infringe Claims 2-11

Claim 2 of the ’388 patent-in-suit, which is dependent on

claim 1, limits the protective colloid of claim | to a partially

acetylated polyvinyl alcohol. (AX 1, Col. 16, 11. 5-6). All of

defendants’ E-200, E-216, E-220 and E-230 products were

manufactured with commercial grades of partially acetylated

polyvinyl alcohol. (Tr ( Vanderhoff) 345-47; AX 160, 566-73).

Accordingly, defendants have directly infringed claim 2 of the

‘388 patent by virtue of their manufacture and sale of E-200,

E-216, E-220 and E-230.

Claim 3 of the patent-in-suit also depends from claim 1,

and requires that the ethylene content of the copolymer be

more than 15% by weight. (AX 1, Col. 16, 11. 7-9). The Court

has previously found that the average ethylene contents of the

E-200, E-220 and E-230 products are, respectively, 17%, 18.5%

and 29%. These products therefore also infringe claim 3 of the

‘388 patent. (Tr ( Vanderhoff) 347-50). The E-216 product,

however, has an average ethylene content of 13% and, while it

infringes claim 1 of the patent, it does not infringe this

narrower, dependent claim. (Tr ( Vanderhoff) 348-49).

Defendants also directly infringed claims 4-11. They

carried out the process of claims 4-7 and manufactured the

laminates of claims 8-11 by using E-200 and other products.

(Tr (Devine) 494-500; AX 283-84).

C. Defendants Also Induced Others To Infringe Claims 1-6

And 8-10 Of The ‘388 Patent

Under the United States patent statutes, a patent owner

has the right to enforce his patent rights against those who

induce infringement as well as against direct infringers. Active

induceme: * exists where one purposefully causes, urges or

encourages another to infringe. 35 USC § 271; Honeywell, Inc.

v. Metz Apparatewerke, 509 F.2d 1137, 1142 (7th Cir. 1975);

Noll v. O.M. Scott & Sons Company, 467 F.2d 295, 300 n.3 (6th

A-64

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Cir. 1972). The Court concludes thai defendants actively

induced the infringement of claims !-6 and 8-10, by urging and

encouraging its customers to use the patented adhesive in

laminating applications.

Defendants induced the infringement of claims 1-3 by

actively encouraging their customers to use the E-200 product

as a replacement for Airflex 400 and Elvace 1875, knowing that

such use would take place, as it in fact did, within the United

States. Specifically, the evidence ai trial establishes that the

defendants induced Taylor Chemical of Hickory, North Caro-

lina; Southeastern Adhesives of Lenoir, North Carolina; DeCor

of Elkhart, Indiana; and Universal Adhesives, Inc. of Memphis,

Tennessee, among others, to use the E-200 products in making

adhesive formulations in their United States plants. (Tr

(Devine) 491-94; Tr (Myrick) 153-56, 165, 171; Tr (Donald-

son) 173-75, 178-84; AX 753, pp. 20-35; AX 754, pp. 13-28).

The evidence also shows that defendants induced the

infringement by others of claims 4-6 and 8-10 of the patent-in-

suit. Claims 4-6 relate to a process for making a laminate by

using the compositions of claims 1-3. Claims 8-10 recite the

resulting laminate. Mr. Devine, an employee of CST, actively

encouraged such use and assisted customers in preparing

laminating adhesive formulations which incorporated the de-

fendants’ products, knowing full well that such products would

be used, as they in fact were, in laminating vinyl webs to

particle board, as well as to other substrates. (Tr (Devine)

491-500; Tr (Myrick) 155-66, 171; Tr (Donaldson) 174-77,

184).

Defendant CST in fact purchased coating and laminating

equipment like that used by its customers in order to further

assist, and thereby induce, its customers to use the E-200

product in the process of making laminates from a continuous

web, such as vinyl film, with full knowledge that the resulting

laminates would be used and sold in the United States. (Tr

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

(Devine) 494-500; Sembert Dep. 247-54; AX 165, 283-84,

531).

Accordingly, the Court concludes that the defendants are

liable for inducing infringement of claims 1-3 due to the use by

defendants’ customers of the E-200, E-216, E-220 and E-230

products. The Court further concludes that the defendants

induced the infringement of claims 4-6 and 8-10.

D. Defendants’ “Third Monomer” Noninfringement Defense

Is Without Merit

Defendants argue that their adhesive products contain

certain additional so-called “‘third monomers”, which take them

outside the scope of the claims in suit. These “third monomers”

include acrylamide and two other compounds ( which the Court

will not identify, in order to preserve defendants’ allegedly

proprietary information). (Tr (Vanderhoff) 277-78; AX 580-

81).

The defendants’ argument focuses on the “consisting

essentially of language used in the introductory portion of

claim 1. As discussed above, this expression precludes a finding

of literal infringement only where a product contains addition-

al, unrecited ingredients which, in nature and amount, change

the basic and novei adhesive characteristics of the product. The

Court finds, as the earlier discussion has shown, that the

adhesive products made by defendants (E-200, E-216, E-220

and E-230), are basically and fundamentally the same as the

product of claim 1. Consequently, the presence of the third

monomers does not take the products outside the scope of the

claims.

Defendants also raise a file wrapper estoppel argument.

The expression “consisting essentially of’ was added to claim |

of the patent to exclude prior art compositions containing third

monomers which in nature and amount change the basic and

novel characteristics of the composition. (AX 2, pp. 121-23,

A-66

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

125-27; Tr (Witherspoon) 1077-80). This, defendants con-

tend, creates a file wrapper estoppel which precludes a finding

of infringement here. Initially, the Court notes that the doctrine

of file wrapper estoppel has no application in this case since the

Court has previously found that defendants’ products literally

infringe the claims in suit; file wrapper estoppel applies only

where infringement depends on the doctrine of equivalents.

Graver Tank & Mfg. Co., 339 US at 607. In the interest of

completeness, however, and because the Court alternatively

finds that defendants’ products infringe under the doctrine of

equivalents, it has considered the file wrapper estoppel argu-

ment On its merits and finds that it does not excuse defendants’

infringement of the ’388 patent.

During prosecution of the application leading to the ’388

patent, the Patent Office examiner rejected various then-

pending claims on the basis of the plaintiffs earlier patents,

particularly the ‘851 patent. (AX 2, pp. 110-13; Tr ( Wither-

spoon) 1077-80). The product of the ’851 patent, as discussed

earlier, was an adhesive binder which was copolymerized in the

presence of emulsifiers rather than PVOH; consequently, the

‘851 product did not have the inherent cross-linking which one

obtains, according to the present invention, by using PVOH.

The ’851 patent employed a third monomer, specifically NMA,

to provide cross-linking and improve the wet strength of non-

woven fabrics treated with the binder. (TX 16, Col. 2, 11. 18-

36; Col. 8, 11. 33-35; Tr (Vanderhoff) 2814; Tr (Gaylord)

1783).

In order to distinguish the claims here at issue from

products of the ’851 type, the phrase “consisting essentially of”

was added. (AX 2, pp. 121-23, 125-27). The “consisting

essentially of’ language was the appropriate language to

accomplish this narrowing because the ’851 products are indeed

basically and fundamentally different from the products here at

issue; without the third monomers, the ‘851 product lacks

cohesive strength. (TX 16, Col. 2, 11. 21-27; Tr (Vanderhoff)

A-67

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

440-43; Tr (Witherspoon) 1078-81, 1084-85; see Tr (Van-

derhoff) 250-53; AX 794, 807-08).

Coming back to defendants’ products here, however, they

are not like the ’851 product at all. They do not use third

monomers to achieve cohesive strength; the third monomers

used by defendants do not change the basic and fundamental

character of the composition. (Tr ( Vanderhoff) 311, 443; see

Tr (Witherspoon) 1119). On the contrary, the infringing

products, like the ’388 product, are copolymerized in the

presence of PVOH and have an inherent cross-linking giving

rise to the insoluble fraction from that source alone. The third

monomers have nothing to do with it. Indeed, the reason they

were added to defendants’ products in the first place was to

provide this non-infringement argument. (AX 108, 122).

Moreover, the specific third monomers which defendants

have added to some of their products are not cross-linking third

monomers of the type used in the ’851 patent. (Tr (Van-

derhoff) 311, 443). The third monomers have been added in

very small concentrations. (AX 875-78; Tr ( Vanderhoff) 308-

11, 325-27, 330-33, 337). These materials at these concentra-

tions produce no change in the basic nature of the product. (Tr

( Vanderhoff) 302, 304-07; see Tr ( Vanderhoff) 308-11, 315-27,

329-40; AX 875-78; AX CC, EE, FF).

This Court’s findings are reinforced by defendants’ own

conduct. All the “E series” products at issue here were

considered by defendants not to have cross-linking capability

through the action of third monomers. (Tr (Wacome) 462-64,

466-69; Tr (Myrick) 169-71; AX 83, 100, 122, 125, 221, 753 pp.

14-15).

Also, the E-200 product was admittedly manufactured

from at least October 17, 1978 to at least January 16, 1979

without any acrylamide or other third monomer. (AX 768,

p. 22; AX 769, p. 23). Later, acrylamide was reintroduced for a

short period commencing in July 1979, but, because it caused

manufacturing problems, it was replaced by another third

A-68

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

monomer in July or August 1979, all for the purpose of

establishing a non-infringement argument. (AX 173, 185, 194;

Paradowski Dep. 564, 620-27; Schwirian Dep. 442-43, 508-09,

518-20; Tr (Schwirian) 2063-65). Despite these changes in

formulation, defendants considered all these products to be the

same, and their advertising and advice to customers in no way

indicated that any third monomer was present. (AX 142, 160,

222; Tr (Wacome) 464-65; Tr (Erikson) 106-07; Tr (Myrick)

165-66, 169-71; AX 753, pp. 3-10, 14-15; Tr (Donaldson) 181-

83; AX 754, pp. 29-35).

Evaluations made by National Starch of E-200 and E-216

with and without the post-July or August 1979 third monomer

dealt only with qualitative tests of machining properties for

which there were no back-up records of actual observations.

Those tests, at best, showed that E-216 is somewhat closer in

performance to Airflex 400 and Elvace 1875 than is E-200.

(TX 565, Production No. H30871; Tr (Nadler) 1670-80, 1688,

1691-95).

In addition, various data relating to the properties and

formulations of defendants’ E-200, E-216, E-220 and E-230

products were analyzed and evaluated at trial. (Tr (Van- -

derhoff) 275-82, 302-43; AX 220, 566-82, CC, EE, FF). These

evaluations showed that there were no substantial differences in

the properties of those emulsions with the additional third

monomers as compared to those without them. (Tr (Van-

derhoff) 302, 305-07, 315-16, 319-20, 325-27, 333-43).

Finally, in the face of all the above evidence that these

third monomers make no difference in the accused products,

defendants presented no evidence that they do. Indeed, during

trial defendants were given the opportunity by the Court to

update their discovery production to plaintiff and present

testimony on this issue, but defendants elected not to do so. (Tr

(Nadler) 1628-46; Tr (Battaglia) 1998-2008). The general

rule is that where an accused infringer “fails to offer any

technical or engineering evidence as to why a minor variation

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

from the literal language of the claim is of any significance, the

Court can only assume that any such differences are colorable

and were adopted by the defendant for patent purposes only.”

Plasser American Corp., 546 F.Supp. at 604. The Court

concludes that any changes made by defendants in their

accused products were indeed made for patent purposes only.

E. Defendants’ Argument That Other “Additives” Avoid In-

fringement Is Without Merit

Defendants in every case carried out their polymerization

in the presence of PVOH, but at various times added other

materials to the infringing products. The other additives were

certain dispersing agents and emulsifiers (which, again, the

Court will not identify in order to preserve defendants’ alleg-

edly proprietary information). (Tr ( Vanderhoff) 277-78, 312).

These materials were, when present, added in very small

amounts (see AX 875-78) and their concentration is far below

that which would be required to stabilize the emulsion. (Tr

( Vanderhoff) 312). Rather these ingredients, like the numer-

ous ingredients which an end-user of the E-200 product might

add by a process known as “compounding,” serve only to tailor

the adhesive to a specific end use. Such coipounding is

contemplated by the ’388 patent and the presence of such

ingredients does not avoid infringement. (AX 1, Col. 15,

11. 43-47). Furthermore, the presence of these ingredients in

the amounts shown had no substantial effect on the basic

properties of the vinyl acetate-ethylene copolymer emulsion.

(Tr (Vanderhoff) 302, 305-07, 312-15, 325, 329, 333, 337-39;

AX CC, EE, FF).

That the “‘additives” included in defendants’ products had

no effect on the basic character of the composition is apparent

from an analysis which compares the products having no

additives to those which did. The results show no significant

changes. (Tr ( Vanderhoff) 315-24, 329, 333-43; AX CC, EE,

FF). As in the case of the third monomers, defendants’

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

advertising never indicated that these additives, which were

present at some times but not at others, had any effect on the

properties of the product.

F. This Is An Exceptional Case Within The Meaning Of 35

USC § 285

From the very beginning of their program to market a

product like Airflex 400, defendants’ conduct evinced a blatant

disregard for plaintiffs patent rights. Initially, defendants

simply copied plaintiff's Example 8 product. Later, in a failed

attempt to avoid the ’388 patent, defendants added certain

third monomers which, as stated above, were designed not to

improve or change the product in any way, but rather to

provide the basis for a legal argument that they had “circum-

vented” the ’388 patent. (AX 108, 122; Tr (Wacome) 465-67;

Tr (Ungefug) 513-17; Paradowski Dep. 569-72).

As the Court previously found, these third monomers did

not materially change the nature of the product. If anything,

the third monomers caused process problems and for a time

had to be eliminated in order to maintain a commercial

operation. (AX 122, 185, 194-95; Tr (Schwirian) 2063-65;

Paradowski Dep. 623-25; Schwirian Dep. 511-14, 681-83;

Plotkin Dep. 484-87, 533-35, 561; Tr (Wacome) 472-78).

That the defendants added these third monomers for

patent purposes only is further supported by statements made

in connection with the prosecution of a patent application, filed

in the name of Martin K. Lindemann, which is directed to one

of the defendants’ products, E-200 (which, on occasion, has

employed the third monomer, acrylamide). (AX 3, 3A). To

secure allowance of that application, which issued as United

States Patent No. 4,339,552, Mr. Devine signed a declaration

supposedly comparing the adhesive properties of Airflex 400

with the claimed acrylamide-containing E-200. (AX 3, pp. 27-

29 (Paper No. 5); Tr (Devine) 503-04). In fact, the data was

taken from a non-acrylamide-containing E-200 product. (AX

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

194-95; Tr (Wacome) 476-78; Tr (Devine) 505, 506-08, 510).

The declaration therefore was totally erroneous, and the results

prove the identity of the adhesive properties of the products,

not the alleged superiority of an E-200 containing acrylamide.

Mr. Devine’s attempts to excuse the error because of CST’s

“internal confusion” concerning ‘ts evaluations of its own

products (Tr (Devine) 504, 506-08) caiil into question the

probity and accuracy of those evaluations on all CST products,

particularly E-200, E-220 and E-230. (AX 161 p.135, 174, 179,

191).

Thus, the Court concludes that defendants never had a

good faith belief that the ‘388 patent was invalid. Defendants’

unsuccessful attempt to avoid infringement of the patent by

adding certain third monomers (and other materials) to the

infringing products lends strong support to this Court’s con-

clusion that the defendants, in truth, believed the ’388 patent

was valid. While defendants at trial attempted to excuse their

disregard for the ‘388 patent by claiming that they were acting

under advice of patent counsel, no written opinion obtained by

CST supporting such advice on the validity of the ‘388 patent

was ever introduced into evidence. (See Tr (Lindemann)

1376-83).

Consequently, the Court finds this an exceptional case

within the meaning of 35 USC § 285 and awards plaintiff its

attorneys’ fees.

G. The Court Concludes That Air Projects Is Entitled To An

Injunction

In view of the foregoing findings and conclusions, the

Court concludes that Air Products is entitled to an injunction

against further infringement of the ’388 patent for the remain-

ing years of the patent’s term.

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

V. TRADE SECRETS

A. Introduction

The alleged trade secrets involved in this action relate to

Air Products’ commercial-scale production of vinyl acetate-

ethylene copolymers, including but not limited to Airflex 400,

the subject of the ’388 patent. These alleged trade secrets were

defined in detail in Appendix A to the Amended Complaint.

This appendix, which had been required by this Court, served

to enumerate and define all of Air Products’ trade secrets which

it alleged and believed had been misappropriated by defend-

ants.

Appendix A set forth sixteen (16) separate alleged trade

secrets. By the time of trial, discovery had reduced the trade

secrets before the Court to those specifically set forth in

Appendix A, part I; parts III(2) and (3); and parts IV(2) and

(4).

Without revealing the alleged trade secrets themselves, the

thrc 2 items defined in Appendix A and before this court at trial

were:

(1) The reaction control system used to control the

reaction conditions during the copolymerization reaction

(hereinafter referred to as “trade secret A-I,” or ‘he “A-I

system”),

(2) The designs used in the reaction vessels them-

selves (hereinafter referred to as “trade secrets A-III (2)

and (3),” or the “A-III (2) and (3) designs”), and

(3) Various process techniques for conducting the

copolymerization reaction (hereinafter referred to as

“trade secrets A-IV (2) and (4)’’).

A-73

District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

B. The Applicable Legal Standards

The burden of proving the existence of a trade secret and

its misappropriation is on the plaintiff, Air Products. Lowndes

Products, Inc. v. Brower, 259 S.C. 322, 177 USPQ 209 (S.C.

1972).

Trade secrets are defined by the American Law Institute’s

Restatement of Torts, § 757. Kiockner-Humboldt-Deutz

Aktiengesellschaft Koln v. Hewitt-Robins, 205 USPQ 257, 263

(D.S.C. 1978); Wilkes v. Pioneer American Insurance Co., 383

F.Supp. 1135, 1139 (D.S.C. 1974). See also Kewanee Oil Co. v.

Bicron Corp., 416 U.S. 470, 474-75 (1974). This Court adopts

the definition of trade secrets as given by the Restatement,

§ 757 comment b (1939):

A trade secret may consist of any formula, pattern, device

or compilation of information which is used in one’s

business and which gives ... [the owner of the trade

secret] an opportunity to obtain an advantage over com-

petitors who do not know or use it. It may be a formula for

a chemical compound, [or] a process of manufacturing . . .

Chemical processes, formulas, and related equipment are

protectable trade secrets. Colgate-Palmolive Co. v. Carter

Products Inc., 230 F.2d 855, 865 (4th Cir. 1956); EJ. duPont

de Nemours & Co. v. Christopher, 431 F.2d 1012, 1013-14 (Sth

Cir. 1970).

A trade secret must be secret, that is, it must not be

generally known to the public. Kewanee Oil Co., 416 US. at

475. Trade secrets can coexist with patent protection directed

to the same general subject matter. Colgate-Palmolive Co., 230

F.2d at 856-65. Trade secrets must also possess at least some

measure of novelty. Kewanee Oil Co., 416 U.S. at 475.

For misappropriation to be shown, Air Products was

required to prove to this Court that competitively-valuable

confidential and proprietary information was taken from Air

Products or its predecessor Airco, and was in fact used by CST.

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Conclusions Of Law, Filed May 2, 1983

Without such a showing, no remediable misappropriation could

have been shown to have taken place, and Air Products would

not be entitled to any relief.

In view of the record in this case, this Court finds that Air

Products has failed to sustain its burden of proof by a pre-

ponderance of the evidence on the trade secret issues.

C. The Reaction Control System

In commercially manufacturing the vinyl acetate-ethylene

copolymer products under consideration in this case, the

copolymerization reaction must be controlled by a “reaction

control system” which regulates the reaction to assure proper

operating conditions. (AX 881-82; Tr (Smith) 766-68, 769-73,

774-82; Tr (Uhl) 886-91, 897-900; Tr ( Cordeiro) 660-61, 664-

66). The system at issue was described in a document which

became known in these proceedings as the “Plotkin memo-

randum,” written in November 1968. (AX 441-42; Plotkin

Dep. 1435-41, 1463-64, 1530-31).

Extensive testimony on the reaction control system was

offered at trial. Considerable expert testimony was presented

by both sides: Mr. Plotkin, Mr. Liptak, Dr. McAvoy, Dr. Smith

and Dr. Cordeiro all testified on the subject. Not surprisingly,

much of the testimony offered was irreconcilably conflicting.

Air Products’ experts, Drs. Smith and Cordeiro, testified

that the A-I system was unique and valuable to the present

commercial operations of Air Products, particularly in per-

mitting flexibility in manufacturing more than one product in a

given reaction system. They testified that the system was

unknown in the open literature, and would not have been

obvious to the skilled chemical engineer specializing in reaction

control systems. (Tr (Smith) 782, 792-93, 825; Tr (Cordeiro)

660-61, 669-73, 680-86; Cordeiro Dep. 364, 403-04, 407, 485-

90, 492-98; see Tr (McAvoy) 2629-31, 2665-66, 2671-74, 2965-

66; Tr ( Plotkin) 2354, 2413).

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District Court Order And Opinion,

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Conclusions Of Law, Filed May 2, 1983

Defendants’ experts, Mr. Plotkin and Dr. McAvoy, relying

in part on patents and other publicly available literature,

testified that the system was not unique, its essentials being old

and available to the public. (TX 530, 589; AX 353; Tr

(Plotkin) 2218-20; Plotkin Dep. 996-97, 1022-23; Tr

(McAvoy) 2624-27; see Tr (Cordeiro) 691-96; Cordeiro Dep.

338-45). Dr. McAvoy, although admitting, in response to this

Court’s direct quest‘ons on the point, that he did not know of

any other disclosure of the A-I system, testified that the

components of the systems were old and known for the contro!

of batch polymerizatioa reactions such as the production of the

‘388 patent’s vinyl acetate-ethylene copolymers. (Tr

(McAvoy) 2629-31; TX 516-18, 530, 634-37; Tr (McAvoy)

2624 et seq.). He testified that the “essence” of the system

could be found, for example, in a reaction control system

illustrated by Mr. Liptak in Figure 10.1h of his book, Jn-

strument Engineer’s Handbook, which Mr. Plotkin confirmed in

his testimony. (TX 518, 634; Tr (McAvoy) 2628-29, 2660-64,

2933-48; Tr ( Plotkin) 2221, 2237-56). Mr. Liptak, testifying

on behalf of the plaintiff, stated that the A-I system was not

disclosed in that figure or in his book. (Tr (Liptak) 2745-46,

2751-71). Dr. McAvoy, on rebuttal, attacked Mr. Liptak’s

refutation of his earlier testimony. (Tr (McAvoy) 2942-45,

2950-52, 2955-60, 2964). Neither yielded in their respective

positions either on cross-examination or in view of each other's

testimony.

Dr. McAvoy also relied on a variety of other publicly

available documents ( patents and other literature ) as disclosing

the A-I system. (TX 516-18, 530, 634-37; Tr (McAvoy) 2624

et seq; 2655-56, 2659-60, 2665). Several of those systems,

however, had earlier been discarded by Mr. Plotkin during his

work at Airco. (TX 516-17; Tr (McAvoy) 2631-37, 2674-77).

Both Dr. McAvoy and Mr. Plotkin also testified at some length

concerning a variety of Dr. Smith's publications (TX 633, 636,

637) in an attempt to show that that literature contained the

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Conclusions Of Law, Filed May 2, 1983

elements of the A-I system. (Tr (McAvoy) 2645 ef seq.; Tr

( Pletkin ) 2225-32).

The record shows that Mr. Plotkin, who was responsible

more than anyone else at Airco for design and development of

the control system described in his memorandum (AX 441-42),

left Airco in 1968 and joined CST at the behest of his former

co-worker Martin K. Lindemann, then CST’s Vice President of

Research and Development. (TX (Lindemann) 606-07, 1157,

1369-70; Tr ( Plotkin) 2265, 2278-79). Mr. Plotkin headed up

process engineering for CST and eventually designed and

supervised installation of its Woodruff plant for the manufac-

ture of vinyl acetate-ethylene emulsions, located in Enoree,

South Carolina. ( See Tr ( Plotkin) 2264-65, 2403-04; Plotkin

Dep. 58-60).

This Court notes that although Mr. Plotkin had certain

obligations of confidentiality to Airco and its successor in

interest of its emulsions business, Air Products, this is not an

action against Mr. Plotkin personally for breach of any duty,

express or implied.

The evidence adduced at trial indicated that Mr. Plotkin

did install the various reaction control systems at CST, in-

cluding those on the reaction systems used to produce vinyl

acetate-ethylenc copolymers. (AX 304, 307-08, 341, 344-45;

Plotkin Dep. 122-24, 135-44, 182-225, 235-36, 239, 303-05,

453, 674-77; see AX 769). In doing so, however, Mr. Plotkin

testified that he had used his experience and ordinary skill as a

chemical engineer to design the control systems he installed,

and that he had not misappropriated Air Products’ confidential

and proprietary trade secret information. (Tr ( Plotkin) 2319,

2333, 2354, 2403-04). Mr. Plotkin further testified that the

systems installed on various CST reactors were never used,

particularly the system on the No. 12 atmospheric reactor. (AX

341, 344; Tr (Plotkin) 2355-61; Tr (Schwirian) 2042-43;

Schwirian Dep. 199; see Plotkin Dep. 141, 145, 183-84, 248,

709).

a ee ee

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District Court Order And Opinion,

Including Findings Of Fact And

Conclusions Of Law, Filed May 2, 1983

Although installed on CST reactors used for vinyl acetate-

ethylene copolymerization reactions, the reaction control system

designed by Mr. Plotkin did not work properly. In fact,

problems with CST’s products arose which were laid in part to

the use of the system. This, in turn, led to extensive ex-

perimental work in late 1979-early 1980 which resulted in the

manual operation of the reaction system. (See AX 173, 175; Tr

(Schwirian) 2036-40; Schwirian Dep. 527 et seq; Paradowski

Dep. 611-17, 665-86; Plotkin Dep. 514 et seg; 561). To prevent

even accidental use of the control system, CST personnel

subsequently physicialiy disabled it so that it could not be used.

(Tr (Plotkin) 2358-59, 2363; Tr (Schwirian) 2039-42; Tr

(McAvoy) 2619-20). The record indicates that CST’s reaction

control system certainly did not give rise to any competitive

advantage to CST, and certainly did not provide the benefit or

value which plaintiff derived from its reaction control system.

(Cf. Tr (Cordeiro) 649-53, 705-07). Whatever Mr. Plotkin

installed at CST, it apparently did not function in the same

manner and with the same effectiveness as the Air Products’

system which was allegedly misappropriated.

The reaction system that Mr. Plotkin installed was in many

instances never used to produce any polymer product, let alone

a vinyl acetate-ethylene copolymer. Where the system he

installed was used, it apparently damaged CST’s ability to

produce copolymer products, rather than enhance its produc-

tion capabilities or product quality. Mr. Plotkin’s experiment

with the Liptak Fig. 10.1h system confirmed that no enhanced

value or unfair competitive advantage resulted from the use of

the system he designed and installed at CST over other systems

unarguably available to the skilled chemical engineer for use

with the CST reaction system. (AX 905A-C; Tr (McAvoy)

2685-86, 2938-40, 2949-52; Tr ( Plotkin ) 2330-31, 2346, 2350).

Under these circumstances, this Court finds that plaintiff

has not shown, by a preponderance of the evidence, that there

has been a misappropriation of the alleged A-I trade secret by

defendants.

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District Court Order And Opinion,

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Conclusions Of Law, Filed May 2, 1983

Besides failing to prove misappropriation, plaintiff has

failed to show that there is any relief to which it could be found

to be entitled if a damage trial was held in this cause. The use

of Mr. Plotkin’s system has damaged CST, nor Air Products;

Air Products cannot be relieved of or seek recompense for such

acts, even assuming that it would want to from its own

competitive viewpoint.

D. Reaction Vessel Configuration

The reaction vessel configuration embodying alleged trade

secrets A-III (2) and (3) was the result of design activities

undertaken at Airco beginning in mid-1963. (See Plotkin Dep.

1014-16, 1130-32). Mr. Plotkin was part of the design team

which designed several generations of reaction vessels,

culminating in the reactor design for the Aircoflex No. | reactor

at Calvert City. (AX 365-67, 369-73, 376A, 379-81, 385, 389-

91; Plotkin Dep. 1057-59, 1062-68, 1121-26, 1130-39, 1168-69,

1174-75, 1205 et seg, 1226-33). This reactor combined a

particular internal heat exchange surface configuration with

jacketing, constituting trade secrets A-III (2) and (3), in a

pressure reactor for manufacture of vinyl acetate-ethylene

copolymer emulsions.

Plaintiffs expert, Dr. Uhl, directed his testimony at trial to

showing the wide variety of reaction vessel configuration

alternatives available in designing a vinyl acetate-ethylene

reaction vessel. (Tr (Uhl) 879 et seq; see AX 882-96). Dr. Uhl

testified that the specific reaction vessel configuration of A-III

(2) and (3) was not generally known for use in the manufac-

ture of vinyl acetate-ethylene copolymer products. (Tr (Uhl)

939-40). He then presented a chart which purported to show a

near identity between the Aircoflex No. | reactor and CST’s

8,000 gallon EVA reactor, both having been designed by Mr.

Plotkin and built by Nooter Corporation. (AX 898, 899; Tr

(Uhl) 940-49,-1011-13, 1027-28; Plotkin Dep. 378-79, 470-71;

Fernengel Dep. 262, 402, 404-05).

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Defendants’ proofs, based primarily

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