LNP Engineering Plastics v. Miller Waste

• Decision Date: 21 December 2001
• Docket Number: No. 00-1501-1563,00-1501-1563
• Citation: 275 F.3d 1347,61 USPQ2d 1193
• Parties: (Fed. Cir. 2001) LNP ENGINEERING PLASTICS, INC. and KAWASAKI CHEMICAL HOLDING CO., INC., Plaintiffs-Appellants, v. MILLER WASTE MILLS, INC. (trading as RTP Company), Defendant-Cross Appellant
• Court: U.S. Court of Appeals — Federal Circuit

Page 1347

275 F.3d 1347 (Fed. Cir. 2001)

LNP ENGINEERING PLASTICS, INC. and KAWASAKI CHEMICAL HOLDING CO., INC. Plaintiffs-Appellants, v. MILLER WASTE MILLS, INC. (trading as RTP Company), Defendant-Cross Appellant.

No. 00-1501-1563

United States Court of Appeals for the Federal Circuit

December 21, 2001

Appealed from: U.S. District Court for the District of Delaware, Judge Roderick R. McKelvie

[Copyrighted Material Omitted]

Thomas B. Kenworthy, Morgan, Lewis, of Philadelphia, Pennsylvania, argued for plaintiffs-appellants. With him on the brief were John V. Gorman and Gayle R. Gilgore, Morgan, Lewis & Bockius LLP, of Philadelphia, Pennsylvania. Of counsel on the brief were William W. Schwarze and Lynda L. Calderone, Akin, Gump, Strauss, Hauer & Feld, L.L.P., of Philadelphia, Pennsylvania.

Raphael V. Lupo, McDermott, Will & Emery, of Washington, DC, argued for defendant-cross appellant. With him on the brief were Donna M. Tanguay and Mark G. Davis, of Washington, DC, and Margaret M. Duncan, of Chicago, Illinois. Of counsel on the brief was Karen Jacobs Louden, of Wilmington, Delaware.

Before NEWMAN, RADER, and BRYSON, Circuit Judges.

RADER, Circuit Judge.

After the jury returned its verdict, both plaintiffs, LNP Engineering Plastics, Inc., and Kawasaki Chemical Holding Co., Inc. (collectively LNP), and defendant, Miller Waste Mills, Inc. (trading as RTP Company), filed various motions including motions for judgment as a matter of law (JMOL). The United States District Court for the District of Delaware granted various of these motions, thereby substantially reversing the jury verdict. LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., No. 96-462-RRM, 77 F.Supp.2d 512 (D. Del. Dec. 17, 1999). The district court correctly determined that substantial evidence shows that RTP's accused products do infringe claim 1 of LNP's United States Patent No. 5,019,450 (the '450 patent). The district court also properly granted JMOL that claim 1 of the '450 patent is not invalid for indefiniteness. This court, therefore, affirms those portions of the district court's judgment. However, substantial evidence supports the jury's verdict that claim 1 of United States Patent No. 5,213,889 (the '889 patent) is invalid for obviousness. This court, therefore, reverses the district court's grant of JMOL on that judgment and of a new trial on obviousness.

After a second trial, the jury determined that RTP did not willfully infringe the '450 patent. This court affirms the district court's denial of LNP's motion for a new trial on willfulness. In a third trial, the district court found that LNP did not commit inequitable conduct during the reexamination of the '889 and '450 patents. Because the district court did not clearly err in finding a lack of intent on the part of the prosecuting attorney in not obtaining a full translation of a Japanese reference, this court affirms.

I.

This case features plastic products produced with long fiber reinforced thermoplastics (LFRTs). Thermoplastics are polymeric materials that soften upon exposure to heat and return to their original strength when cooled to room temperature. Manufacturers improve the strength and stiffness of these materials by reinforcing the thermoplastic with various rigid plastic, glass, or carbon fibers.

The manufacturing process for LFRTs pulls these rigid plastic, glass, or carbon strands through a bed of molten thermoplastic to coat, or "wet," the fibers. The process of pulling the fibers through molten thermoplastic is called "pultrusion."After coating, LFRT producers typically chop the fibers into pellets for storage and shipping. A LFRT user then remelts the pellets in an injection or blow molding process to form plastic products, such as handles for snow shovels or flooring for military aircraft.

Since the 1950s, plastics have been reinforced with either short or long fibers. Two factors determine the stiffness of reinforced plastics: the length of the fiber filaments and the degree to which the filaments are wetted by the thermoplastic. These two factors often limit each other. In other words, short fibers are easier to wet, but the shortness of the fibers produces plastics of lower strength. On the other hand, long fibers produce plastics of higher strength but are difficult to wet resulting in reinforced plastics with scattered bundles of fibers. These bundles create brittle spots rather than flexible and sturdy plastics. Additionally, to increase LFRT strength, manufacturers wet the strands with thermoplastics of a higher molecular weight. These weightier thermoplastics, however, create a viscous melt bath that again complicates complete wetting of long fibers.

To assess the degree of LFRT wetting, experts use three methods -- visual inspection, a flexural modulus test, or a dispersal and length test. Under a visual inspection test, an analyst cuts a LFRT pellet open and examines it under a microscope. The analyst looks for indications of poor wetting, namely loose fibers or bundles of fibers not fully surrounded by thermoplastic.

Under the flexural modulus test, an analyst typically melts LFRT pellets and injects them into a rectangular mold. The analyst then places the resulting rectangular bar into a machine that bends the bar. The machine determines the amount of force necessary to flex the bar. The test expresses the flexing force as a percentage of the theoretically attainable flexural modulus of the thermoplastic and the fiber material separately. The LFRT industry recognizes the flexural modulus test as a standard protocol and calls it ASTM D790-80.

ASTM D790: Specimen of 1/8" x 1/2" x 5" is placed on two supports and a load is applied at the center. The load at yield is a material's fiexural strength.

[Tabular or Graphical Material Omitted]

Under the dispersal and length test, an analyst injection molds LFRT pellets, typically into a rectangular bar, then heats the resulting molded product in an oven to ash the thermoplastic. The analyst then examines the filaments left behind to determine the randomness of their dispersal throughout the bar. A completely random distribution of fiber filaments indicates thorough wetting. The analyst also examines the length of the filaments in the ashed bar with the aid of a computer. Longer filaments again indicate better wetting.

In the early 1980s, a group of three inventors at Imperial Chemical Industries, PLC (ICI), Frederic N. Cogswell, David J. Hezzell, and Peter J. Williams, discovered that use of lower molecular weight thermoplastics produced a less viscous melt bath and better wetting of fibers. They further discovered that spreading the fiber strands before and during the melt bath also enhanced the wetting. As explained earlier, with better wetting, this new method made more flexible and stronger LFRT. The inventors applied for a patent in 1983, assigning their rights in the invention to ICI. The patent issued as United States Patent No. 4,559,262 (the '262 patent), claiming fiber reinforced structures.

In 1989, ICI filed a continuation application of a divisional of the '262 patent. The United States Patent and Trademark Office (PTO) issued the continuation application as the '450 patent on May 28, 1991. The '450 patent has the same written description as the '262 patent and claims pellets of reinforced thermoplastic material. In 1991, ICI filed another continuation application of a divisional for the '262 patent. The PTO issued this application as the '899 patent on May 25, 1993. The '899 patent also has the same written description as the '262 patent and claims molded articles formed from fiber reinforced thermoplastic compositions.

In 1991, ICI granted Kawasaki a license under the '262 and '450 patents. Kawasaki in turn granted LNP Engineering Plastics, Inc., a license under this same technology. On September 14, 1995, ICI assigned its interest in all three patents to Kawasaki. That same month, Kawasaki requested that the PTO reexamine the '450 and '889 patents. The PTO issued reexamination certificates for both patents on October 29, 1996. Claim 1 of the '450 patent, as reexamined, recites:

1. Pellets of reinforced thermoplastic material containing at least 30% by volume of parallel, aligned reinforcing filaments between 2 and 100 mm in length, the filaments extending through the length of the pellets, the pellets having been cut from a continuous reinforced product prepared by melt pultrusion in which the filaments have been substantially completely wetted by a molten thermoplastic material, and which pellets can be injection molded into an article in which the filaments are present in the form of randomly dispersed individual filaments at least 50% by weight of the filaments of the pellets retaining a length of greater than 2 mm in the molded article.

United States Patent No. B1 5,019,450, col. 1, ll. 23-35 (indications of change removed and emphasis added). Claim 1 of the '889 patent, as reexamined, recites:

1. A molded article formed from a fibre reinforced thermoplastic composition in a process which includes the step of melting and homogenizing a composition containing at least 30% by weight of fiber reinforced pellets between 2 mm and 100 mm long which pellets have filaments extending the length of the pellet, characterized in that the molded article contains reinforcing filaments in the form of individual filaments and at least 50% by weight of the filaments in the pellets being present in the molded article at a length of greater than 2 mm, the pellets having been cut from a structure of continuous, parallel, aligned, reinforcing filaments which have been substantially completely wetted by a molten thermoplastic polymer in a melt pultrusion process.

United States Patent No. B1 5,213,889, col. 1, l. 23 to col. 2, l. 11 (indications of change removed and emphasis added).

In September 1996, LNP sued RTP for infringement of all three patents, asserting claim 3 of the...