OPINION
CALEB M. WRIGHT, Senior District Judge.
BACKGROUND
This is a suit alleging infringement of United States Patent No. 3,113,115 ('115), issued to Dr. Karl Ziegler of the Max Planck Institute for Coal Research in 1963. The plaintiff, Studiengesellschaft Kohl mbH, (SGK), is the successor in interest to Professor Ziegler. The defendant Dart Industries is the successor corporation to Rexall Drug & Chemical Company. This action was initiated in July, 1970. The life of the patent expired before trial. This Court has jurisdiction under 28 U.S.C. § 1338(a).
Briefly, the '115 patent teaches a system for the polymerization of ethylene and other lower olefins, including propylene. The catalyst system consists of alkyl aluminum halides, especially diethyl aluminum chloride, and titanium halides, especially titanium tetrachloride. The interaction of these components produces a catalyst that has proven singularly active, effective and efficient in producing high grade plastic polymers.
SGK contends that Dart's process for the production of commercial grade polypropylene infringes SGK's patent. Dart defends first, that the patent is invalid because anticipated by and obvious from the prior art; second, that its catalyst system is so distinct from the system disclosed by the SGK '115 patent that it does not infringe; and finally, that the equitable doctrines of laches and estoppel render the '115 unenforceable because SGK unreasonably delayed instituting any infringement action, affirmatively misrepresented its enforcement intentions and, in so doing, materially prejudiced Dart.
The '115 patent has been the subject of previous litigation. The United States Court of Appeals for the Fifth Circuit addressed the issue of the validity of the '115 in its 1973 opinion in Ziegler v. Phillips Petroleum Co., 483 F.2d 858, cert. denied, 414 U.S. 1079, 94 S.Ct. 597, 38 L.Ed.2d 485 (1973). The Fifth Circuit upheld the validity of the patent and found it to be infringed by the catalyst system used by Phillips. While this Court is and has been aware of Phillips, this Opinion reflects independent findings of fact and conclusions of law based on all the evidence in the case presented during February and March of this year.
The Opinion addresses the issues of validity, infringement and equitable doctrines in that order. The sheer magnitude of the evidence presented precludes addressing each issue raised. Failure explicitly to mention an issue or argument in this Opinion indicates only that, after due consideration, the Court found the issue or argument to be without merit or of no consequence to the outcome of the case. This Opinion represents the Court's findings of facts and conclusions of law as required by Fed.R. Civ.P. 52.
I. VALIDITY
Dart Industries argues that U.S. Patent 3,113,115 issued to Karl Ziegler, Heinz Breil, Heinz Martin and Erhard Holzkamp on December 3, 1963, is invalid. Dart contends that the claims and content of the '115 violate 35 U.S.C. §§ 102 and 103, arguing that the '115 was anticipated by and obvious from prior art in the field. In support of these arguments, which proved to be the principal part of its case, Dart offered a wide range of evidence, much of it highly technical. Central to Dart's thesis, however, are two strands of evidence: the German Patent No. 874,215
The Fischer work was first patented in 1943, but was not issued or published by the post-war Federal Republic of Germany until 1953. The patent was not known even to members of the scientific community until the later date. Dr. Fischer's laboratory was destroyed during the latter part of World War II, as were his experimental notes and data. Consequently, there is very little contemporaneous information to aid the Court, or any other reader, in interpreting the Fischer patent. The patent itself is very short—only three and one-half typed pages as translated—and contains only one working example.
The Du Pont work is much better documented and has been effectively supplemented and explained by both deposition and live testimony. The Du Pont research bears only on the question of obviousness under § 103, not anticipation under § 102. Ziegler's '115, entitled to priority dates based on foreign applications, pre-dates the relevant Du Pont patents to Anderson et al.
A. Anticipation
Dart's anticipation defense is based on its assertion that the Fischer patent meets the standards of 35 U.S.C. § 102(a) and (b). Since the Fischer patent was awarded before even the earliest of Ziegler's German applications, the question of anticipation reduces to whether Fischer actually describes the same invention as that claimed in the '115. The Court heard an enormous amount of testimony about the Fischer work, most of it post hoc experimentation and interpretation of what is actually described in the Fischer patent. As noted, the destruction of contemporaneous records and the brevity of the patent itself made such an approach almost inevitable.
In evaluating a claim of anticipation, the Court will apply a test of strict construction. See Research Corp. v. NASCO Industries, Inc., 501 F.2d 358 (7th Cir.), cert. denied, 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974); Alco Std. Corp. v. Tenn. Valley Auth., 516 F.Supp. 431 (W.D.Tenn. 1981); 1 Chisum, Patents § 3.02 p. 3-5 (1982) ("The standard for novelty, that is, for "anticipation," is one of strict identity."). To anticipate the '115, the Fischer patent must disclose "the very invention of the ['115] patent"
Anticipation, to be effective, must be both clear and contained in a single reference. The publication argued to anticipate must contain "within its four corners, adequate directions for the practice of the patent claim sought to be invalidated."
To invalidate the '115 on grounds of anticipation by Fischer, Dart must show that the Fischer patent clearly, fully and independently demonstrates the essentials of the '115 claims Dart challenges. To make this determination, the Court must examine and compare the '115 and the Fischer patent.
Briefly, Ziegler's '115 patent claims a polymerization catalyst of the general formula RR'A1X, where R and R' are organic radicals, especially alkyl radicals, and X is a halogen, combined with a heavy metal salt, usually a titanium chloride.
The Fischer patent
The Fischer patent teaches the combination of aluminum powder (Al), aluminum chloride (AlCl
As strict as the test for anticipation may be, it is not based on whether a trial judge can find within the four corners of the asserted anticipatory reference the full, clear and exact representation of the
Dart introduced voluminous testimony in its attempt to prove that the Fischer system as disclosed necessarily and inevitably evolves organo-aluminum reaction products that are active in the observed polymerization of ethylene. Dart further argued that skilled chemists of the 1950's would have looked at the Fischer patent and understood that the evolution of organo-aluminum species was a part of the process even though no organo-aluminums are mentioned in the text of the patent. After a careful review of all the evidence, and for the reasons set forth below, the Court finds that Dart has failed to meet the burden of proving that the Fischer patent anticipates Ziegler's '115.
1. Initial Experimental Evidence
In preparation for its invalidity defense, Dart employed Dr. George A. Olah, formerly of Case Western Reserve University and presently on the faculty of the University of Southern California, to run a series of tests aimed at determining whether the Fischer process, as disclosed in the patent, evolves organo-aluminum compounds in the course of polymerizing ethylene.
In the course of his testing to detect the presence of alkyl aluminums in the supernatant of the Fischer mixture, Dr. Olah used some of the most current analytic technology, including nuclear magnetic resonance (NMR) studies and other non-destructive analytic techniques developed in the last several years. Despite the extent and duration of his effort, Dr. Olah never clearly detected organo-aluminum compounds in any experimental runs that exactly duplicated the proportions of aluminum powder, aluminum chloride, titanium tetrachloride, and hydrocarbon solvent that were enumerated in the working example of the Fischer patent.
The conclusion of Olah's report reflected his belief that, given a choice between ascribing the Fischer results "to some kind of organo-metallics related catalysis, or ... to a typical Friedel-Crafts polymerization,"
In the course of his report, prepared before trial and therefore not reflecting the experiments he conducted during the course of the trial, Olah states that "no ethyl-aluminum compound could be detected in the supernatant heptane layer of the Fischer polymerizations."
2. Evidence from Repeated Experiments
After he had returned from California with additional test results, Olah testified that a carbon-13 NMR spectrum of a particular experimental run indicated to him the presence of "a very small amount of an ethyl aluminum compound."
Despite these experimental differences and the diligence of Dr. Olah's investigation, Dr. Bailey, SGK's expert, examined the data and spectra upon which Olah had commented and concluded that "you'd have to have a great imagination to look at that curve and say that there was evidence of a material, an ethyl aluminum compound. ..." T-4387. It is not at all unusual to find experts in disagreement, but here the data are those developed by Dart's expert to supplement the conclusions one would draw upon examining the text of the Fischer patent. The fact that Olah's support for the inherency of ethyl aluminum chlorides is so weak, even though going beyond the "four corners" of the Fischer patent, leads the Court to conclude that Dart has failed to meet its burden of proving anticipation. The Court finds that the Fischer patent does not exhibit the substantial representation of the invention of the '115 in sufficiently full, clear and exact terms to allow the skilled chemist to recreate the challenged '115 claims without the benefit of any source outside of Fischer.
Thirty years after the fact, experts of extraordinary skill in the field, armed with exceptional technology and, perhaps more important, hindsight, did not conclusively demonstrate that ethyl aluminum chlorides are created by the Fischer reaction. It is unlikely that a skilled chemist who read the Fischer patent would independently surmise and be able to practice the dialkyl aluminum halide and titanium tetrachloride combination of the '115 patent. The Court finds that Fischer does not anticipate the '115.
B. Obviousness
Section 103 denies patentability to inventions that are obvious even though "not
383 U.S. at 17-18, 86 S.Ct. at 693-694. Because Graham provides a certain organizational regularity in inquiries as to obviousness, the Court will, for the most part, structure its analysis around the Graham standards as elaborated and interpreted by more recent rulings.
Before undertaking an analysis based on Graham elements, however, it will be useful to explain the experimental work done at Du Pont and how it relates to or demonstrates prior art. The Du Pont work, examined below in some detail, is not itself prior art relative to the Ziegler '115 patent being challenged here. The Court rejects Dart's arguments to that effect. At best, Du Pont's investigation was contemporaneous with Ziegler's.
Dart, in introducing voluminous testimony on the Du Pont work, sought to establish that Du Pont, working from sources completely independent of Ziegler, developed a polymerization catalyst system
Dart's obviousness theory, like its argument relating to anticipation, hinges on the Fischer patent as prior art.
1. Natta '987 as Prior Art
Dart argues that Natta's United States Patent No. 3,587,987 ('987) is prior art against the '115 based on the '987's July 27, 1954 Italian priority date. The Court
Dart argues that Sperry Rand Corp. v. Knapp-Monarch Co., 307 F.2d 344 (3d Cir. 1962) represents a different position than that adopted by the Fifth Circuit, D.C. Circuit and Court of Customs and Patent Appeals. After a re-examination of Knapp-Monarch, this Court is persuaded that the position it adopted in Waterman-Bic Pen Corp. v. W.A. Shaeffer Pen Co., 267 F.Supp. 849, 854 (D.Del.1967) is not inconsistent with the Third Circuit's opinion in Knapp-Monarch.
2. The Prior Art: Hall & Nash
The Hall & Nash articles describe the authors' observations in a series of ethylene polymerizations in which aluminum powder was added to the typical Friedel-Crafts catalyst, aluminum chloride. Hall & Nash observed that the addition of metallic aluminum increased both the rate of the polymerization and the viscosity of the lubricating oils produced.
All the Hall & Nash data reflect experiments run at 100-200°C. The single recorded attempt to operate below that range was performed at 15° and produced no detectable reaction.
From the perspective of Dart's argument to this Court, the principal discovery of the Hall & Nash work is that the combination of aluminum powder, aluminum chloride and gaseous ethylene produced ethyl aluminum chlorides. Hall & Nash specifically observed and characterized both diethyl aluminum chloride and monoethyl aluminum dichloride.
3. Fischer with Hall & Nash
The Fischer patent makes only passing reference to the state of the art in 1943. Fischer does not mention Hall & Nash or, as
Moreover, Fischer sets out aluminum chloride, titanium chloride and Friedel-Crafts halides in reference to "the catalyst:"
The reference to aluminum powder does not occur until the following sentence: "[Solids] are formed especially easily, moreover, if one also adds hydrogen-chloride fixing metals, such as iron, zinc or aluminum, in finely divided form, preferably aluminum powder."
The parties devoted considerable attention to the experimental differences between Hall & Nash and Fischer. The principal difference is that Hall & Nash recommended a 3:1 ratio of aluminum chloride to aluminum, using 30 grams of AlCl
Secondary differences between Hall & Nash and Fischer, such as differences between parameters of temperature, pressure and the presence or absence of a heptane solvent, are of significantly less consequence in determining the likelihood of whether the two would naturally be read together by a chemist of ordinary skill in 1953.
4. Other Prior Art References
Dart cited a number of other references designed to prove that one or more of the components of the '115 patent were obvious
5. The '115 and the Prior Art
The principal difference between the prior art, especially Fischer, and the '115 is the '115's clear and intended use of dialkyl aluminum halides as indispensible catalyst components to polymerize lower olefins, including but not limited to ethylene, to solid, high molecular weight polymers. As discussed above, Fischer never explicitly mentions organometallics. Hall & Nash did not produce solid polyethylene. Neither Fischer nor Hall & Nash specifically addressed the possibility of polymerizing propylene or other olefins. The '115 explicitly applies to "olefins up to about C
a. Physical Characteristics of the Product
The Fischer patent characterizes its polyethylene product as "yellow brown masses ... which, after purification through extraction, form an almost white, loose powder."
The '115 initially produces a "paste consisting of the solvent used and a white ethylene polymer,"
The Fischer patent does not analyze its solid product in terms of crystallinity, molecular weight or linearity. Professor Koenig's analysis of the products of Dr. Olah's attempts to reproduce Fischer in terms of these variables is not particularly persuasive evidence that the powder in Fischer approached the Ziegler products in crystallinity or molecular weight. The parties never agreed on which, if any, of Olah's samples closely approximated Fischer. Since the Fischer work itself is silent on the point, the Court will not undertake a comparison of Fischer and the '115 on these characteristics. The Court notes in passing, however, that the polyethylene commercially available before the '115 system became known was substantially more branched than that claimed in the '115. Earlier samples showed 5-10 methyl groups per 100 carbon atoms whereas the '115 product contains .1-.3 methyls per 100 carbons.
The Fischer patent teaches the use of "elevated temperatures, preferably at 130 to 180°C and elevated pressures, preferably at 30 to 80 atmospheres or above."
6. Findings As To Obviousness
The determination of what constituted ordinary skill in the relevant art at the time of the Ziegler '115 invention will not be separately made by the Court in this Opinion. The issue was not specifically addressed at trial. The determination of ordinary skill is so closely intertwined with the Court's overall findings on the obviousness defense that it will be made in the context of that analysis and those findings. Two aspects of Dart's obviousness defense depend importantly on issues of ordinary and extraordinary skill and will be dealt with below.
a. Ziegler's Statements on Fischer
In January, 1954, Ziegler wrote to von Kreisler, his German patent counsel, regarding an addition to the German patent applications he was filing. These applications later became the basis for Ziegler's '115 and '332 patents in the United States. In the letter, Ziegler included the following passages:
Dart argues that the statements in the quoted passages indicate that Ziegler himself knew that Fischer's patent (the BASF application) and Hall & Nash made Ziegler's
First, despite his examination of the Fischer patent and his recitation of its features similar to his own work, Ziegler nonetheless concluded that his processes were wholly different than those disclosed by Fischer. While Ziegler saw and admitted similarities, most of which he read into the Fischer patent based on his own knowledge, he concluded that his system was different.
Second, Ziegler's theorizing about the evolution in Fischer of ethyl aluminum compounds did not represent the application of "ordinary skill in the art of which said subject matter pertains." 35 U.S.C. § 103. Ziegler was probably the world's leading authority on organo-aluminums. See T-2324. Even in the quoted passage, he refers to his previous work in the area. His '115 and '332 patents and the fact that he was awarded the Nobel Prize in 1963
Given his background in organo-metallic, especially organo-aluminum, chemistry, the Court finds that Ziegler would read organo-aluminums into the Fischer patent more quickly than would the ordinarily skilled polymer chemist of the day. Ziegler's assessment of the inevitability of combining Fischer with "other references", presumably Hall & Nash, actually represented hindsight on Ziegler's part. Ziegler and his team had been over that ground, whether aware of Fischer or not, and already performed the work that supported the applications of which he wrote. In reading Fischer, Ziegler was the captive of his own work just as subsequent scientists speculating about the actual mechanism of Fischer are captive to the chemistry that has intervened, especially the work of Ziegler and Natta.
The Court notes that Dr. Tornqvist's most recent publication on the subject of Ziegler and Fischer strongly concludes that "[n]othing could be more wrong" than the "suggestion that Ziegler's discovery was in some way influenced or followed as a logical consequence of Fischer's disclosures."
The effect of "hindsight" on the Court's analysis of obviousness will be further discussed below.
Dart argues that the Breil doctoral thesis,
The Court finds that Breil's statement, as was the case with Ziegler's, does not represent the conclusions of a chemist of ordinary skill in the art at the time. While, as a graduate student, Breil is not to be held
In addition to the Ziegler letter and Breil thesis, Ziegler commented upon the Fischer patent in the course of his defense to the German Opposition proceedings brought by BASF and the Nullity proceedings subsequently brought by Ziegler. While Ziegler clearly had an interest in resolving these proceedings in his favor, his September 25, 1957 analysis of Fischer
In support of this interpretation, Dr. Martin testified that, if reacted with TiCl
To the extent that other scientists of the time regarded the formation of organo-iron compounds as unlikely or impossible, the Fischer reference to iron as a possible substitute for aluminum
Overall, the Court finds that statements by Ziegler and Breil about the inherency of organo-aluminums in the Fischer mixture are unpersuasive evidence of obviousness. Ziegler and all the members of his team were far more likely than most polymer chemists of the day to read organo-aluminums into the Fischer patent.
b. The Du Pont Work
United States Patent No. 3,050,471
The Anderson '471 patent teaches reacting "a titanium trihalide with an organo-metallic compound containing at least one hydrocarbon radical bonded to a metal. ..."
In early February of 1954, Dr. Merckling at Du Pont performed experiments along the lines of the example in Fischer. T-2111, DX-56. By mid-February, Merckling and others, including Truett, had done enough work with the Fischer system to persuade Anderson and other senior chemists that the work was significant and that Fischer had not grasped that significance because he perceived his system to be merely an advancement of Friedel-Crafts catalysis. Because the Du Pont chemists had been able to produce polyethylene of high molecular weight, a feat beyond known Friedel-Crafts methods, they concluded that the Fischer work involved something novel. T-2113-2118.
Based on the experiments, a literature review, and his own knowledge and creativity, Anderson intuited
There is no evidence of any alkyl aluminum compound being used until sometime in March or April of 1954.
In early August, additional actors became involved in directing the Du Pont research effort toward turning out patents. By that time, Du Pont had information that Ziegler had developed a low pressure polymerization process.
It was not until August and the addition of Hyson to the exploratory group that alkyl aluminums were actively investigated and used to produce solid polymers. See T-3116-3125. Hyson understood his task to be to find a catalyst system more efficient than those produced by Du Pont to that date. T-3131. In the abstract to an experiment run during this period, Hyson wrote: "The titanium tetrachloride/lithium aluminum R
After an extensive review of the Du Pont work, including the deposition testimony of those not available to testify in person, the Court finds that the efforts of the exploratory group do not demonstrate that Fischer and Hall & Nash or other prior art render Ziegler's '115 obvious. Du Pont chemists read the Fischer patent early. Despite a major effort, involving many experienced scientists with high priority access to the resources of Du Pont's experimental station,
Du Pont's work represented a major effort by fine scientists, headed by at least one, Anderson, who possessed more than ordinary skill in the relevant art. Yet, despite Anderson's exceptional insight in attributing the activity in Fischer to reduced valence titanium species, the team under his direction did not arrive at the organo-aluminum component essential to the Ziegler '115 until after an intensive and sustained effort. Fischer and Hall & Nash may have been the starting point for the Du Pont work, but the path that Du Pont's skilled and highly motivated scientists took cannot be said to demonstrate that Ziegler's work was obvious from the prior art. The ordinarily skilled polymer chemist of 1953-54 would not have read Fischer plus Hall & Nash and concluded that alkyl aluminums inhered in the Fischer reaction or that they were responsible for the activation of the catalyst by reducing TiCl
c. Secondary Considerations
In addition to the basic inquiries it mandates, Graham, supra, 383 U.S. at 17-18, 86
1. Commercial Success
There can be no doubt that the '115 was an enormous commercial success. By radically changing both the conditions under which commercial polymers could be made and the physical characteristics of the polymer product, Ziegler catalysts revolutionized the plastics industry.
The Court finds the widespread and immediate industry recognition to be strong evidence of the nonobviousness of the '115. As was stated in another case in which an obviousness defense was rejected: "All of the indicators of unobviousness approved by the courts are present: ...the revolutionary commercial success; the enormous savings gained by using the invention; the fact that every significant tire manufacturer except Firestone has taken a license...." General Tire & Rubber Co. v. Firestone Tire & Rubber Co., 349 F.Supp. 345, 360 (N.D. Ohio 1972).
2. Unsolved Needs
The evidence that many major chemical companies were working to find a more economical way to produce high quality polyolefins suggests that the industry felt the lack of a catalyst system such as Ziegler's. The extent and intensity of the Du Pont work supports the conclusion that olefin polymerization was being actively studied by some of the finest chemists in the world. Similarly, the fact that Ziegler's work won him the 1963 Nobel prize for chemistry indicates the intellectual as well as commercial importance of his work.
The fact that a solution to the problem was being actively and widely pursued, but was actually solved by Ziegler and the SGK team further supports the Court's finding of nonobviousness.
Mobil Oil Corp. v. W.R. Grace Co., 367 F.Supp. 207, 235 (D.Conn.1973).
3. Hindsight
Finally, the Court finds that the superficial persuasiveness of Dart's arguments and assembled exhibits is substantially undercut by keeping clearly in view the difference between the hypothetical inventor of 1953 working in his shop with all the prior art references, and the current expert witness looking now at what was available then. The current scientist brings with him or her the "baggage" of thirty years of astonishing advances in polymer chemistry. It is a far different inquiry that he or she undertakes, and what is undoubtedly chemically obvious now was not "obvious" under the patents laws to the 1953 inventor to whom the prior art was readily available.
Mobil Oil Corp., supra, 367 F.Supp. at 235. Thus, it has been recognized to be "absolutely essential to guard against piecemeal reconstruction of the [challenged] invention by using the [challenged] patent as a blueprint." Tate Engineering Inc. v. U.S., 477 F.2d 1336, 1345 (Ct.Cl.1973).
The Court finds that when the entire range of evidence is scrutinized without the deceptive clarity of hindsight, the Ziegler '115 patent is demonstrated to be both nonobvious and not anticipated.
Trio Process Corp. v. L. Goldstein's Son's Inc., 461 F.2d 66, 72 (3d Cir.), cert. denied, 409 U.S. 997, 93 S.Ct. 319, 34 L.Ed.2d 262 (1972).
C. Prosecution Before The Patent Office
Dart argues that the manner in which SGK prosecuted the '115 before the Patent Office manifested sufficient bad faith that the '115 should be held invalid or unenforceable.
1. Failure to Cite Fischer
The Court finds no fraud in SGK's failure to cite Fischer to the Patent Office Examiner. Dart's argument to this effect is rejected.
2. Inventorship
Dart argues that the inventors named on the face of the '115—Ziegler, Martin, Breil and Holzkamp—do not accurately reflect the inventorship of the patent. Dart contends that the inventorship determinations for both the '332
The issue was raised before the Patent Office in a different proceeding and resolved in favor of SGK. The Patent Office opinion stated:
Moreover, the Patent Office accepted the change in inventorship list and held "that Ziegler has complied with 35 U.S.C. § 116 and Rule [of Practice] 45(c). Furthermore, we can find no basis in the record for concluding that there was any deceptive intention by any of the inventors in originally omitting the names of Breil and Holzkamp when the involved Ziegler application was filed."
In addition to this previous decision by the Patent Office, the Court finds, as is discussed below in the context of pioneer status for the '115, that each of the named inventors played a role in the essentially unitary program of research that led to both the '332 and the '115.
The Court holds that the '115 patent is valid.
II. INFRINGEMENT
Dart argues that its catalyst system does not infringe the '115 patent. In order to evaluate these claims, the Court must establish the scope of the claims of the '115. See Lockheed Aircraft Corp. v. U.S., 553 F.2d 69 (Ct.Cl.1977); Tate Engineering, Inc. v. U.S., 477 F.2d 1336 (Ct.Cl.1973). See also Kodak, supra, 616 F.2d at 1323-24. The first place to turn is to the patent of itself.
A. Scope of the '115
1. Claims
The initially stated object of the '115 is "a new catalyst useable, inter alia, for the polymerization of ethylenically unsaturated hydrocarbon products."
Claim 1 of the '115 states:
Dart's DEAC falls squarely within the class of aluminum compounds RR'AIX in which R and R' are both alkyl radicals.
The heavy metal component of a '115 catalyst, as described in Claim 1, clearly includes TiCl
DEAC and various titanium chlorides are more narrowly specified in Claim 4:
As discussed above, DEAC is a dialkyl aluminum monohalide and TiCl
2. Development
The '115 embodies work done by Professor Karl Ziegler and his team of chemists during the early 1950s. It differs from his '332 patent in that it covers dialkyl aluminum compounds as opposed to the aluminum trialkyls. The two patents represent revolutionary discoveries that came out of a unitary research effort by a single team of scientists. Ziegler was widely regarded as a prominent authority on organo-aluminum compounds and their application. T-2324. In 1963, Ziegler was awarded the Nobel Prize in chemistry for his work in developing organo-metallic catalysts for polymerizing olefins.
The catalysts that Ziegler and his team developed revolutionized the production of high molecular weight polymers of simple hydrocarbons. These catalysts are crucial in making production of these plastics, especially propylene, commercially practicable. Before Ziegler's work, there was doubt about whether propylene could be polymerized at all. See Standard Oil Company (Indiana) v. Montedison, S.p.A., 494 F.Supp. 370, 374 (D.Del.1980), aff'd, 664 F.2d 356 (3d Cir.1981), cert. denied, ___ U.S. ___, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982).
In professional circles, the catalysts themselves have come to be known as "Ziegler catalysts."
3. Pioneer Status
The Supreme Court, in Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 S.Ct. 707, 42 L.Ed. 1136 (1898) established a workable definition of a pioneer patent:
In Corning Glass Works v. Anchor Hocking Glass Corp., 374 F.2d 473 (3d Cir. 1967), the Third Circuit applied the Westinghouse standard to a situation in some ways analogous to this one.
In Corning Glass, the circuit court affirmed this Court's finding that the development of a crystallized glass marketed under the name Pyroceram constituted a pioneer patent. Before the Pyroceram patent, crystallized glass, with distinctive thermal properties, had "accounted for only a fraction of the total world glass production." Id. 374 F.2d at 476. Citing its adaptability to "a wide variety of commercial applications," the circuit court found that, in the case of "such a pioneer patent, liberality becomes the keynote of construction requiring the court to give the patentee a wide breadth of protection in construing the patent claims and specifications." Id. at 476.
Alpha olefins were polymerized before Ziegler's inventions. The Ziegler team's work, however, did revolutionize a process of great commercial import that had, up to that point, essentially relied upon free radical polymerization methods. Free radical polymerization requires extremes of temperature and pressure, conditions costly to maintain on a commercial scale. See T-31. Ziegler's novel catalysts are effective across a wide but significantly lower range of pressures and temperatures. Ziegler's invention is a basic one, marking a distinctive step in the progress of the art. See Westinghouse, supra, 170 U.S. at 562, 18 S.Ct. 718.
Dart has argued that even if the Ziegler work taken as a whole represents a pioneering breakthrough for the art, the '115, standing alone, is not a pioneer patent because it departs only minimally from the claims and specifications of Ziegler's '332 patent. The '332, although issued later than the '115, is argued to be based on German patent applications submitted a few months earlier than the priority claim for the '115.
The Court acknowledges the difference between deciding that an individual was a pioneer inventor and deciding that a particular patent represents a pioneering addition to the art. See Moore v. U.S., 211 U.S.P.Q. 800, 808 (Ct.Cl.1981). After an extensive review of the record in this case, however, the Court finds itself in agreement with the Fifth Circuit in Phillips, supra, and finds that the '115 is a pioneer patent. The '115 itself represents a significant step in the progress of the art.
The Court considers it significant that the work done by Ziegler's team at the Institute in 1953-54 was continuous and, for all intents and purposes, a unitary inquiry. The work was done primarily by a single, relatively small team in a sustained effort. The development of the catalyst system was brilliant, novel and of the utmost important to the commercial world of polymers. Under the circumstances of this case, and the substance of the testimony before it, the Court cannot accept an argument that "pioneering" status must be attributed exclusively to the '332 or '115 patent. The Court finds the unity of research that led to these two Ziegler patents is not fatal to the '115's status as a patent entitled to a broad range of equivalents.
On cross-examination, Dart's counsel asked Dr. Martin if the novelty of the '115 vis-a-vis the '332 was "substituting a chloride for the ethyl." T-148. Martin agreed. Dart's counsel, drawing on a large sketch
Although he never precisely revived the question on redirect, plaintiff's counsel did eventually ask Martin about the difference in reaction product and polymer product when TiCl
The significance of the difference between a mixture of divalent and trivalent titanium chlorides produced by ATE reduction and unmixed
Whether in his first offer to demonstrate why the '115 was a "pioneer" invention vis-a-vis the '332, Martin would have recited only the facts elicited in the later redirect or whether he would have argued that there was some further revolutionary aspect in Ziegler's substituting DEAC for ATE, is not established by the record. Regardless, in the absence of persuasive evidence by the defendant that this was not the major step that Martin claims for it, the Court finds that the distinctions between the '115 and '332, especially as they relate to the polymerization of propylene, are significant.
Dart's representations that Ziegler's January 7, 1954 letter to von Kreisler in which Ziegler asks that von Kreisler act swiftly to file several additional German applications, one or more of which became bases for the U.S. '115, are ultimately inconclusive. While the Ziegler letter,
Ziegler's estimation of the import of his new discoveries in terms of patent law seems to argue against construing the '115 as a pioneer. Ziegler, however, was not a lawyer and, in any case, used "should be" in a way that qualified his assertion. Moreover, he was predicting the legal importance of the discoveries in terms of German rather than United States patent law. Taken in the context of the entire letter, Ziegler's suggestions about legal novelty go more to his hope for a speedy filing and granting of these German applications than to any consideration relevant to how this Court should read his U.S. patents. In light of the longer of the passages quoted above, the Court finds Ziegler's letter to be inconclusive of whether the '115 is a pioneer patent.
The system of patents and patent law is designed both to reward past inventors and to encourage new invention. Courts that too zealously protect the former class may thwart the law's goal of promoting the latter. Thus, the balance of these values implicit in the doctrine of equivalents dictates that trial courts carefully weigh decisions regarding pioneer patent status. Yet, patent law has as its further goal the protection and advancement of the public good. That goal is accomplished and encouraged by requiring that inventors, in exchange for their temporary legal monopoly, publically disclose the fruits of their labors. These are the elements of the contract between patentee and public. See Catanzaro v. Masco Corp., 423 F.Supp. 415 (D.Del.1976), aff'd sub. nom., Catanzaro v. Int'l Tel. & Tel., 575 F.2d 1085 (3d Cir.), cert. denied, 439 U.S. 989, 99 S.Ct. 586, 58 L.Ed.2d 662 (1978). Furthermore, the public's right is to early disclosure in order to maximize the invention's availability before it is superseded or rendered obsolete.
A policy in favor of prompt disclosure is particularly appropriate in the case of pioneer patents, where publication of a novel invention is all the more likely to stimulate others. "[B]asic inventions have led to basic patents, which amounted to real incentives, not only to invention and its disclosure, but its prompt, early disclosure." Application of Hogan, 559 F.2d 595, 606 (C.C.P. A.1977).
If courts were to sever every aspect of a duly patented invention developed later than the earliest application upon which that patent is based, and refuse protection to those later aspects, no matter how independently important or developmentally integrated with the disclosures of the first application, they could well discourage inventors from making the prompt, early disclosure the patent law seeks to encourage. In the case before the Court, Ziegler's early filing of applications, whether here or in Germany, is consistent with the policies and goals of the patent laws. Where, as with the '115 and '332 patents, concurrently developed yet independent novel inventions, by a single inventor or group of inventors, share a partial reliance upon a single revolutionary technology, the Court may permit more than one to partake of the protections accorded "pioneer" status.
In this case, without having the '332 patent before it and without deciding the status of that patent, the Court finds the '115 patent to be a pioneering advance in the field of olefin polymerization. It is "a great basic invention which has brought substantial benefit to the public at large." Corning Glass, supra, 374 F.2d at 479. Consequently, the patent will be read liberally with a broad range of equivalents. The Court's broad construction of the '115's claims will be limited by what is reasonable under the circumstances and will not expand the claims so far as to risk rendering the patent invalid. Tate Engineering, supra, 477 F.2d at 1341.
B. Dart's Catalyst
Dart's catalyst consists of diethyl aluminum chloride (DEAC or Et
Dart has attempted to distinguish its catalyst from the Ziegler catalyst by emphasizing numerous differences between the titanium tetrachloride (TiCl
Even Dart, however, does not read the '115 to include only TiCl
Dart attempts to distinguish its titanium halide catalyst component first by noting that it starts with a crystalline species of TiCl
Regardless of what treatment they undergo before contact with DEAC or propylene, all species of TiCl
Dart's effort to differentiate between its titanium catalyst component and the claims of the '115 depends critically on arguments going to the fundamentality of the following factors: a preformed violet crystalline starting component, dry ball milling, co-crystallization, in situ formation of the catalyst, and the use of liquid propylene as both monomer source and diluent. Dart argues that these factors collectively result in a catalyst that is far more active and efficient than anything contemplated by Ziegler and his co-workers.
1. Preformed TiCl3
This item has largely been addressed above. The Court finds that the functional similarity, setting aside momentarily the possible differences in activity and efficiency, between Dart's "preformed crystalline violet TiCl
2. Ball Milling
Dart argues that the fact that its TiCl
Ball milling is not a mysterious or novel procedure. Basically, it is a process by which the physical characteristics of a substance are altered by grinding it in a rotating mill vessel in the presence of steel balls, or, sometimes, flint pebbles. The rotation of the mill imparts kinetic energy to the steel balls which in turn transfer it to the substance to be ground through repeated collisions. The usual result of the process is to break the substance into smaller particles. If the substance is suspended in a diluent or solvent during grinding, the process is "wet" milling; if there is no diluent, the milling is referred to as "dry."
United States Patent No. 3,032,510 ('510) issued to Dr. Erik Tornqvist of Esso (now Exxon) in 1962, teaches dry milling of the titanium components of olefin catalysts.
The '115 patent, in several of its examples,
Qualitatively, the Tornqvist patent under which Stauffer presumably ball mills its TiCl
Since, standing alone, the fact of dry milling does not take Dart's catalyst outside the scope of the '115, Dart must rely on its argument that the quantitative differences between dry milled catalyst components
Analyzing ball milling as a discrete factor, independent of the effects upon activity and efficiency claimed for co-crystallization, is quite difficult. The documentary evidence relied upon for quantitative comparisons, especially the work of Dr. Tornqvist of Exxon, and of unidentified scientists at Stauffer, are not primarily designed to isolate the effect of each incremental improvement in the technology of olefin polymerization.
The Court heard extensive testimony comparing the activity and efficiency levels of various combinations of catalyst components, milled and unmilled. While much of the evidence is contradictory, a number of themes emerge that make useful starting points in an analytic framework. Chief among these were: (1) the nature of increases in or tradeoffs between activity level and efficiency; and (2) whether dry milling produced results that could not be explained in terms of changes in the surface area of the milled substance. As previously noted, the replacement of ATE by DEAC in polymerization catalysis increases the crystallinity of the resulting polymer.
Milling is primarily directed at increasing the activity of catalyst preparations. Data presented in Tornqvist's article
SGK's witnesses testified that the entire increase in activity through ball milling was attributable to changes in the particle size and, hence, the surface area of the milled titanium compound. SGK argues that data presented or relied upon by Dart's experts are inconclusive because those data do not yield information on particle size. SGK contends that,
In contrast, Dart's experts relied upon data and conclusions set forth in the Tornqvist '510 patent indicating that "the large increase in catalyst activity obtained with the dry milled preformed metal halides is due to changes in the crystal structure of the metal halides rather than a mere increase in surface area."
The rest of the table, however, confuses the situation. Measurements at days 0, 2 and 6 show a non-linear but direct relation among time, change in surface area and change in activity. Measured surface area declined in samples from days 9 and 13. Activity, measured as yield, continued to increase between days 6 and 9, but declined between days 6 and 13. Between days 13 and 21, surface area increased and yield
While these data suggest that increases in activity associated with dry milling cannot be fully explained as a function of changes in surface area, no alternative pattern emerges to suggest a different relationship. Indeed, Tornqvist's analysis of Table II acknowledges that "the optimum milling time for a particular catalyst and for the particular milling equipment used can easily be determined by routine experimentation."
Table II reflects polymerizations with a co-crystal of titanium trichloride and aluminum trichloride of different ratio than that used by Dart.
Testimony by Martin and Bailey, although unsupported by documentary evidence, suggested that the incomplete correlation between measured surface area and activity reflected an inadequacy of measuring technique. In Tornqvist's work, the surface area was measured by the absorption of nitrogen at liquid nitrogen temperatures.
Bailey testified that since the nitrogen atom was smaller than the catalyst complex, one could observe increases in surface area measurable by nitrogen absorption but not available as an active catalyst site. T-3780-3783. This is an interesting theory, but does not explain the anomaly in Tornqvist's data. Bailey's hypothesis would explain an increase in nitrogen-measured surface area accompanied by a decrease in activity or no change. Tornqvist's data are troublesome because they suggest that activity increases exceed surface area changes, not that they lag behind. Bailey elaborated that measured surface area could decrease even though surface area increased, but he neither postulated a mechanism for that reaction nor explained how it would work in light of his preceding explanation.
Martin testified that SGK experimenters had also noticed and investigated the discontinuity in the surface area/activity relationship. Martin concluded that it was inappropriate to measure surface area with nitrogen at temperatures approximately 200°C. below the temperatures at which olefin polymerization occurs. He testified that SGK experiments measuring surface area with an organo-aluminum at approximately room temperature indicated a consistent relation between particle size and activity in the systems under examination. T-3836-3838. Martin did not produce the data or tests to which he referred. In the
The sum of the scientific evidence before the Court indicates that a dry ball-milled crystalline starting component reliably produces a substantially higher activity level than is encountered with unmilled components. Within the limits of its ability to unravel the actual chemical reaction, however, the Court finds that activity increases result from increasing the number of active sites available for attachment of propylene molecules. It is not clear whether dry milling techniques accomplish this merely by increasing the surface area of the milled catalyst component or whether there is some additional factor involved.
Regardless, the Court finds that the evidence before it does not permit the conclusion that increased exposure of catalytically active sites represents a qualitatively different interaction between catalyst and monomer. The evidence indicates that the active sites of dry milled catalyst components are functionally equivalent to those that are produced by the unmilled or wet milled catalysts of the '115 patent. Consequently, the Court finds that the milled catalyst components used to produce crystalline polypropylene through the use of a titanium halide (TiCl
3. Co-Crystallization
The Dart process uses a TiCl
Throughout the trial, evidence relating to co-crystallization was presented in conjunction with evidence regarding ball milling. Their impacts upon activity and efficiency are not wholly independent of one another. Thus, observed differences between the '115 and the co-crystallized TiCl
Co-crystallized TiCl
While the exact function of the AlCl
In determining whether co-crystallized TiCl
The Court finds that co-crystallization of TiCl
Though not dispositive of its findings in either area—ball milling or co-crystallization —the Court finds it significant that only Dart took a license under the Anderson '471
In testimony comparing the activity and efficiency of the '115 to Dart's process, Dart's witnesses compared working example 1 of Ziegler's August, 1954 German Patent Application
Dart contends that quantitative comparison alone sets its system outside the scope of the '115 and yet the basic patent under which Dart elected to take a license and pay royalties compares even less favorably, at least with regard to activity, than the Ziegler working example Dart chose to hold up to comparison. Viewed in this context, the claims of non-infringement by virtue of purely quantitative improvements lose a substantial amount of their superficial persuasiveness.
Second, and similarly, the debate over the magnitude of the difference between the '115 system and Dart's system relying on Tornqvist's improvements, dry milling and co-crystallization, is put into a more concrete perspective in light of the testimony that Exxon, under whose auspices Tornqvist developed his improvements, is a licensee under the '115 for the production of polypropylene. Exxon's process uses a TiCl
The Court finds that Dart's co-crystallized dry ball milled catalyst system is within the scope of the '115. Dart's use of
4. Other Claimed Distinctions
Dart claims that other comparisons between its system and the specifications of
a. "Essentially Consisting Of"
Dart argues that inclusion of AlCl
Titanium and organo-aluminums are the "essence" of both Dart's catalyst and the '115. The addition of AlCl
b. IN SITU Formation
Dart attempts to distinguish its process on the grounds that its catalyst is formed in situ, in the presence of the monomer. Dart contends, as Phillips did before it, "that the '115 discloses only a catalyst that is mixed and reacted beforehand, out of the presence of the monomer." Phillips, supra, 483 F.2d at 879.
Dart's argument ignores the broad range of equivalents to which the '115 is entitled. While the '115 teaches preformation of the catalyst components as the preferred mode, it is not limited to that preferred embodiment. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 28 S.Ct. 748, 52 L.Ed. 1122 (1908); Phillips, supra; Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., 431 F.2d 539 (5th Cir. 1970), cert. denied, 401 U.S. 909, 91 S.Ct. 869, 37 L.Ed.2d 807 (1971). The Court finds that the SGK patent neither requires preformation nor excludes in situ formation and that the Dart catalyst falls within the equivalents of the '115.
c. Liquid Propylene as Suspension Medium
Dart's commercial process uses liquid propylene as both monomer source and suspension medium. The liquid propylene that comes into contact with the active site of the catalyst is polymerized. The unreacted liquid propylene suspends the polymer particles, holding them in solution. T-2945-46. By contrast, the '115 prefers suspension media of aromatic hydrocarbons, but also mentions aliphatic hydrocarbons
5. Summary
Despite the additions and improvements of which Dart, largely through Stauffer, has availed itself, the evidence demonstrates that the fundamental polymerization chemistry of the Dart process is that of the '115. The evidence establishes that the '115 contemplates and is capable of the production of isotactic polypropylene through the interaction of titanium tetrachloride, diethyl aluminum chloride and monomeric propylene. The valence of the titanium halide is reduced to 3 and, in further interaction with DEAC, an active catalyst is formed. Dart's process appropriates the essence
After a careful review of all the factual and theoretical evidence presented, the Court finds that Dart's process infringes the '115 patent.
III. LACHES AND ESTOPPEL
Laches and estoppel are equitable doctrines enforced in patent cases because the federal patent statutes prescribe no specific period of limitations for a patentee's initiation of an infringement suit. As a consequence of their basis in equity, the appropriateness of the defenses will be determined in each individual case under its particular facts and circumstances. Wayne-Gossard Corp. v. Sondra, Inc., 434 F.Supp. 1340, 1361 (E.D.Pa.1977), aff'd, 579 F.2d 41 (3d Cir.1978). Furthermore, the decision regarding the applicability of either laches or estoppel rests predominantly with the trial judge in the exercise of his or her sound discretion. See Studiengesells-chaft Kohle (SGK) v. Eastman Kodak Co., 616 F.2d 1315 (5th Cir.), cert. denied, 449 U.S. 1014, 101 S.Ct. 573, 66 L.Ed.2d 473 (1980); Advanced Hydraulics, Inc. v. Otis Elevator Co., 525 F.2d 477 (7th Cir.), cert. denied, 423 U.S. 869, 96 S.Ct. 132, 46 L.Ed.2d 99 (1975); Baker Mfg. Co. v. Whitewater Mfg. Co., 430 F.2d 1008 (7th Cir.1970), cert. denied, 401 U.S. 956, 91 S.Ct. 978, 28 L.Ed.2d 240 (1971); Johnson & Johnson v. W.L. Gore & Assoc., Inc., 436 F.Supp. 704 (D.Del.1977).
A. Laches
To make out a defense of laches, a defendant must establish: (1) that the delay in bringing suit was unreasonable or inexcusable; and (2) that the defendant has been prejudiced by the delay. Advanced Hydraulics, supra; Jenn-Air Corp. v. Penn Ventilator Co., 464 F.2d 48 (3d Cir.1972). The burden of so demonstrating rests with the defendant asserting the defense. Simply to establish that there was a delay is not adequate.
In determining what constitutes unreasonable or inexcusable delay, courts have frequently turned to 35 U.S.C. § 286, which restricts the period for which a party may collect damages to the six years prior to the commencement of suit. While the six year period of § 286 provides a useful frame of reference, the Third Circuit, in contrast with some of the other circuits,
See Minnesota Mining & Mfg. Co. v. Berwick Industries, Inc., 373 F.Supp. 851, 863 (M.D.Pa.1974), aff'd, 532 F.2d 330 (3d Cir. 1976).
Dart argues that the period of delay should be measured as running from May, 1964, when it broke off licensing negotiations with Montecatini that included Montecatini's repeated offer of a license
SGK contends that it had no reason to believe that Dart was infringing Ziegler's '115 patent until it was so informed by its licensee, Hercules, in 1969.
The '115 issued in December of 1963. Dart's Odessa, Texas, plant went into operation in February 1964. By December, 1964, Ziegler had negotiated a license agreement with Shell Oil that extended to crystalline polypropylene under '115.
It is plausible, however, that Ziegler was not aware of the specifics of the Dart process or of the catalyst it used, and so might not have been able to determine, in the face of Dart's representations that it did not require a '115 license, whether Dart infringed his '115 catalyst patent. The Court finds that knowledge merely that Dart was producing polypropylene would not initiate a period in which a reasonable catalyst patentholder's failure to prosecute for infringement could justifiably be labeled "delay."
1. Publically Available Information
a. Ash analysis
Dart has suggested that SGK could have obtained samples of Dart's polypropylene and, upon discovering traces of aluminum and titanium, based an infringement suit on the combination of that evidence and widely publicized information about the volume of Dart's commercial production of polypropylene.
While Dr. Martin admitted that the European suits against Avisun were initiated with very little knowledge of the particulars of Avisun's catalyst, T-4025-28, he also stated that the nature of the patent under which Ziegler and Montecatini were suing, at least in Switzerland, was different than the '115. The Swiss patent apparently protected the catalyst only in combination with protection of the product; there was no separate patent for the catalyst. T-4027. Thus the grounds for bringing suit in Europe could have been rather different than they would be under the United States '115.
Moreover, Martin testified that, upon being notified by Hercules of Dart's possible infringement, SGK actually performed ash analysis tests on samples of Dart polypropylene. The results were inconclusive. They showed trace amounts of a number of metals. While aluminum and titanium were among the trace elements detected, they were not present in sufficient concentrations relative to other metallic elements to allow any conclusion about the nature of Dart's catalyst. T-3805-06.
b. Erchak Patent
Dart also argues that a conscientious patentee would have been aware of a number of United States patents assigned to Dart after February, 1964. Of these, only U.S. Patent No. 3,225,041 issued to Erchak
The other major teaching of the '041 patent is its system design which, allows a smoothly continuous output of the desired polymer product. Basically, the patent represents an improvement in efficiency and, hence a cost savings. It does not teach or directly relate to a particular catalyst system, or the chemistry of olefin polymerization.
In the course of describing its teachings and claims, however, the Erchak patent repeatedly mentions a "preferred" catalyst. Moreover, it explicitly mentions titanium tetrachloride (TiCl
Martin testified that while the people at the Institute generally followed the progress of patents in the area of olefin polymerization, they concentrated on patents and literature relating to polymerization chemistry. Martin described the Erchak patent as one that improves the technology of polymerization and so as one that would not be examined by scientists at the Institute. T-4042.
By early 1966, when the Erchak patent could reasonably have been expected to have become available to the Institute's scientists, Montecatini had already commenced suit against Dart for infringement of that Natta polypropylene patent. In light of that fact, the Court finds that the '041 patent to Erchak, with its mention of Ziegler and of the components not only of Dart's preferred catalyst, but also the TiCl
2. Phillips Suit
Ziegler brought suit against Phillips in September, 1967. The original complaint, however, did not include counts for infringement of the '115 but, rather, was restricted to Ziegler's '332 patent. Ziegler amended his complaint in August, 1969, to include allegations that Phillips infringed the '115.
From the outset, Dart officials watched the Phillips litigation with particular interest. Fred S. Valles, patent counsel for Dart, testified that he became aware of the litigation shortly after it was commenced in 1967. T-626. Valles also testified that he had noted that the Phillips case was the first opportunity Ziegler had had to litigate the '115 and had chosen not to assert it against Phillips. T-627. Valles was aware of when the Phillips complaint was amended to allege infringement of the '115. T-627-28. Shortly after the '115 counts were added to the complaint against Phillips, Ziegler wrote directly to Dart offering a license under the '115.
Based on the testimony of Mr. Valles, the Court finds that Dart had actual notice that Ziegler considered a catalyst system consisting, at least in part of DEAC and TiCl
Patentees are not required to pursue simultaneously every party suspected of infringing a particular patent. Such a requirement would unduly burden both patentholders and courts. Consequently, courts have recognized the "other litigation" excuse to an infringer's laches defense. See, e.g., Kodak, supra; American Home Products Corp. v. Lockwood Mfg. Co., 483 F.2d 1120 (6th Cir.1973), cert. denied, 414 U.S. 1158, 94 S.Ct. 917, 39 L.Ed.2d 110 (1974); Jenn-Air, supra; Clair v. Kastar, Inc., 148 F.2d 644 (2d Cir.), cert. denied, 326 U.S. 762, 66 S.Ct. 143, 90 L.Ed. 459 (1945).
While continuing to recognize the other litigation excuse, a number of courts have recently focused on the degree of notice a patentholder must provide to infringers he chooses not to sue immediately. Some circuits now require a patentholder directly to inform the suspected infringer of the patentholder's position on infringement and make clear that he intends to bring a subsequent
The Third Circuit has not required that other infringers' notice come directly from the litigating patentholder. Instead, this circuit requires simply that the infringer have actual notice of the other litigation.
The Court finds that as of late August, 1969, Dart has actual notice that the '115 had become part of the Phillips suit and was in a position to know that it too might be sued. Von Kreisler's September, 1969, letter was adequate, combined with Dart's knowledge, to meet any fair standard of notice to Dart about Ziegler's intent to pursue his '115 rights. See T-3205-06. This suit was initiated nearly a year before the Northern District of Texas decided the Phillips case, which was subsequently appealed, so there can be no allegation of laches after that period.
SGK is entitled to assert the "other litigation" excuse against Dart's laches defense. Consequently, the Court finds that a period of approximately three years and eight months actually elapsed between the time that Ziegler or his agents knew or should have suspected Dart's infringement of the '115, and the time that Dart was notified of Ziegler's intention to enforce his claims. That period began in January, 1966, when the Erchak patent could reasonably have been expected to have come to the attention of an Institute employee in Mulheim. It ended with Dart's recognition that the Phillips complaint had been amended, in August, 1969, to include '115 claims.
3. Prejudice to Dart
a. Unavailability of Witnesses
Dart argues that the August, 1973, deaths of Ziegler and von Kreisler have prejudiced its ability to prepare its case. However, both men were alive for three years after this suit was commenced. Moreover, Professor Ziegler was exhaustively deposed in Montecatini v. Dart, Consol.Civ.Action No. 3343. That deposition testimony has been read into the record here.
A cursory examination of Dart's trial exhibits relating to expansion during the period between January, 1966, and August, 1969, indicates that the company did, in fact, commit significant resources to the expansion of the Odessa polypropylene plant.
SGK contends, beyond arguing that its delay was reasonable and excusable, that Dart would have undertaken the same course of expansion regardless of the assertion or nonassertion of Ziegler of '115 claims. SGK's argument hinges on two lines of evidence. First, the observed fact that a substantial part of the investment Dart claims to prove prejudice was made during the pendency of Montecatini's suit against Dart for infringement of the Natta '300 patent on crystalline polypropylene. That suit was commenced in June, 1965, and was settled in February, 1975. Thus, Dart proceeded with expansion plans in the face of a risk that it would be held to be infringing Montecatini's '300 patent on the product that the Odessa plant was turning out.
Second, SGK argues that the deposition testimony of Ralph M. Knight, then president and chief executive officer of Dart, indicates that even if Ziegler had sued Dart in the mid-1960s, Dart would probably not have changed its pattern of expansion. Knight has stated on the record both that Dart approved expansion during the time it was being sued by Montecatini, T-3207, and that "inasmuch as we were in the business, we were committed to the business, I probably, although I couldn't be absolutely certainly [sic], I probably would have recommended the same course of action, the expansion," T-3209, even if Ziegler had brought suit.
The Court finds that while this evidence is not conclusive of the absence of prejudice, it casts significant doubt on the characterization Dart now seeks to give its acts. Dart's actions in the face of the Montecatini suit and its evaluation of what it would probably have done even if Ziegler had sued, undercut Dart's attempted demonstration of prejudice. The evidence recited above casts doubt on whether Dart did in fact rely on Ziegler's or SGK's silence in making its expansion decision. If Dart would have behaved in exactly or substantially the same way regardless of notice from or suit by Ziegler, it can hardly have been prejudiced by the absence of such information. The evidence does not establish that Dart would actually have pursued the same course of expansion regardless of Ziegler's action, but, in light of the burden on Dart to prove both elements of its laches defense, Knight's testimony diminishes Dart's best evidence of prejudice.
4. Finding
The Court finds that Dart's defense of laches fails. There was no delay of six or six and one-half years. There were only three years and eight months in which Ziegler knew or should have known that Dart infringed the '115 and did not initiate an infringement action. The delay in suing or directly notifying Dart during that relatively short period was not unreasonable or inexcusable. While Dart did expand its polypropylene plant during the relevant period, the actual prejudice it suffered thereby was not clearly proven.
In sum, this Court, evaluating an equitable defense, finds that Dart has failed to prove "that which is decisive for the chancellor's intervention, namely, whether plaintiff has inexcusably slept on his rights so as to make a decree against the defendant unfair." Holmberg v. Armbrecht, 327 U.S. 392, 396, 66 S.Ct. 582, 584, 90 L.Ed. 743 (1946), quoted in Jenn-Air, supra, 464 F.2d at 50.
B. Estoppel
A defendant asserting estoppel in a patent case must prove not only unreasonable or inexcusable delay, but, further,
IV. CONCLUSION
Based on its review of all the evidence and for the reasons stated above, the Court finds United States Patent No. 3,113,115 to be valid, infringed and enforceable. The Court orders the parties to file proposed orders in accordance with this Opinion by October 18, 1982.
FootNotes
The TiCl
The Court notes an entry in DX-287, the Tornqvist '510 patent, Table II, Cols. 5-6, lines 55-75 labelled "catalyst efficiency g/g." This entry, however, seems to measure grams of total polymer, atactic as well as isotactic, per gram of catalyst. Thus, the apparent relation there between milling and "efficiency" is a relationship between catalyst concentration and grams of total polymer. As such, it is closer to being a measure of activity as used in this Opinion.
Time, days 0 2 6 9 13 21 Surface Area m2 /g 2.5 5.6 35 16.5 14.5 29.0 Yield, g 18.6 47.5 138.0 169.0 156.0 111.0
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