Studiengesellschaft Kohle v. Eastman Kodak, Civ. A. No. B-74-392-CA.
| Decision Date | 21 September 1977 |
| Docket Number | Civ. A. No. B-74-392-CA. |
| Citation | 450 F. Supp. 1211 |
| Court | U.S. District Court — Eastern District of Texas |
| Parties | STUDIENGESELLSCHAFT KOHLE mbH, as Trustee for the Max-Planck-Institut fur Kohlenforschung, Plaintiff, v. EASTMAN KODAK COMPANY, Defendant. |
COPYRIGHT MATERIAL OMITTED
Cleve Bachman, Orgain, Bell & Tucker, Beaumont, Tex., Arnold Sprung, Nathaniel D. Kramer, Burgess, Dinklage & Sprung, New York City, for plaintiff.
O. J. Weber, Jr., Mehaffy, Weber, Keith & Gonsoulin, Beaumont, Tex., Francis T. Carr, Kenneth E. Madsen, Alan T. Bowes, Kenyon, Kenyon, Reilly, Carr & Chapin, New York City, for defendant.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
The above-styled and numbered cause came on for trial by the Court and the Court having considered the pleadings, the evidence adduced at the trial and in depositions and documents, the arguments of counsel and stipulations of counsel, and the briefs filed by the respective parties, and having been fully advised, makes and files its findings of fact and conclusions of law.
1. This is a patent infringement suit brought by plaintiff, Studiengesellschaft Kohle, mbH, a German corporation, as Trustee for the Max-Planck-Institut fur Kohlenforschung ("Institute") against defendant, Eastman Kodak Company ("Eastman"), a New Jersey corporation. Plaintiff alleges that defendant, by its manufacture of certain chemical products in its Longview, Texas plant within this District, has infringed the following U. S. patents Nos.: 3,257,332 entitled "Polymerization of Ethylene" (hereinafter the "'332 patent"); 3,231,515 entitled "Catalysts" (hereinafter the "'515 patent"); 3,392,162 entitled "Polymerization of Ethylenically Unsaturated Hydrocarbons" (hereinafter the "'162 patent") and 3,826,792 entitled "Polymerization of Ethylenically Unsaturated Hydrocarbons" (hereinafter the "'792 patent"). Plaintiff originally also charged infringement of U. S. patent No. 3,113,115 entitled "Polymerization Catalyst" (hereinafter the "'115 patent"), but in March 1975 moved to withdraw the '115 patent from suit, which motion was granted with prejudice.
2. Plaintiff possesses legal title to the patents in suit but the Institute is the real owner thereof and has agreed to be bound in this litigation as if joined as a party herein (Undertaking filed September 17, 1976).
3. Defendant asserts that plaintiff is estopped from enforcing the patents in suit because of laches in bringing this action, denies that it has infringed any of the patents, asserts that all patents are invalid and unenforceable on various grounds set out in the Pre-Trial Order and has by counterclaim asserted a claim for breach of confidential duty.
4. Trial was held from September 21, 1976 to October 7, 1976. Extended post-trial depositions and testimony were taken thereafter. The parties have extensively briefed the questions presented. Extended oral argument was granted both parties on April 19, 1977.
5. The four patents in suit all pertain to chemical compositions known as catalysts which find use in processes for the production of certain synthetic polymers. Much of the basic chemical terminology is treated extensively in Ziegler v. Phillips Petroleum Co., 483 F.2d 858 (C.A. 5, 1973) at pp. 862-63. It is not repeated here in detail. A chemical catalyst is a substance which affects the rate and course of a given chemical reaction (e. g., a polymerization) in some manner without becoming a significant part of the reaction product (e. g., polymer). Thus, the use of a chemical catalyst is an integral part of the definition of that particular catalyst. Catalyst activity is unpredictable, and modest changes in catalyst composition can have profound and unpredictable effects on the results obtained.
Much of the testimony concerns the polymerization of ethylene and propylene. Both are olefins, but they differ greatly in their ability to polymerize. The polymerization of propylene is more complicated than that of ethylene and can form two different "stereostructures" of polypropylene. One is an intrinsically amorphous and soft material ("atactic" polypropylene), while the other is a hard crystalline material ("isotactic" polypropylene). The latter alone is of substantial commercial importance. Catalysts having the property of inducing the formation of the "isotactic" structure are called "stereospecific" catalysts.
6. The '332 patent is directed to a polymerization catalyst for the polymerization of the monomer ethylene. In general, the catalyst is formed by mixing a first component, an aluminum trialkyl compound (e. g., aluminum triethyl), with a second component, a selected transition metal compound (e. g. titanium tetrachloride). The resulting reaction product is the catalyst. The scope of this patent was previously considered in Ziegler v. Phillips, 483 F.2d 858 (C.A. 5, 1973).
7. The '792 patent is directed to the process of using the catalyst of the '332 patent and further purports to extend the '332 patent by applying the use of the same catalysts to the polymerization of higher olefins, e. g., propylene, butene and pentene.
8. The '515 patent purports to be directed to polymerization catalysts for lower olefins (from ethylene up to pentene). The '515 catalyst differs from that of the '332 and '792 patents in that the first component used to prepare the catalyst composition is composed of certain alkali alkyl compounds (e. g., lithium butyl).
9. The '162 patent purports to be directed to the use of the catalysts of the '515 patent to polymerize "ethylenically unsaturated hydrocarbons", which would literally include polymerization of olefins generally, including ethylene up to pentene.
10. The patents in suit are based upon work performed in the laboratories of the Institute during 1953-54, at which time Prof. Karl Ziegler was its Director. This resulted in filing a series of 13 German patent applications which subsequently became the subject of 8 separate U. S. patent applications. Seven of these original U. S. applications were directed solely to the polymerization of ethylene to polyethylene. One application, S.N. 514,068, purported to disclose the polymerization of propylene and other higher olefins. These original U. S. applications were thereafter reorganized and refiled as a series of "consolidated" applications, three of which ultimately led to the patents in suit, as set forth in the table below:
Original
Filing Applns. Patent No
Application S.N. Date Consolidated In Suit
745,998 7/1/58 469,059; 527,413, abandoned
554,631; 514,068
125,151 3/17/71 refiling of S.N. '792
745,998 appln
745,850 7/1/58 554,609; 554,631; '162
514,068
745,809 7/1/58 554,609; 554,631 '515
The remaining patent in suit ('332) issued from original application S.N. 469,059.
11. Starting in the mid-1950's and continuing steadily thereafter, Eastman conducted catalyst research which resulted in about 1957 in the development of a catalyst, called "402", made by co-reacting lithium aluminum hydride (LiAlH4) with hydrogen-reduced alpha-titanium trichloride (H-TiCl3). After continuing research, Eastman, in 1967, developed another lithium-based catalyst called "409". This was used at high temperature (160° C) to produce good yields of highly crystalline, high molecular weight polypropylene. Both the 402 and later the 409 catalysts were used by Eastman to commercially manufacture polypropylene on a large scale at Longview, Texas. The Eastman polypropylene process is unique to the industry.
12. Eastman's 409 catalyst is prepared from the co-reaction of three components: lithium butyl (LiBu), aluminum triethyl (AlEt3) and hydrogen-reduced alpha-titanium trichloride (H- a-TiCl3) in a mol ratio of 0.3 to 0.3 to 1.0, respectively. Eastman's 409 catalyst was itself an invention which was patented as U. S. 3,679,775.
13. All of the patents in suit are asserted by plaintiff to be infringed in certain respects by Eastman's use of the 409 catalyst and process to make the highly crystalline, high molecular weight polypropylene, and to co-polymerize propylene with small amounts of ethylene (about 1%) to form a modified polypropylene product which Eastman calls "polyallomer".
14. Eastman erected its polypropylene plant in 1961 at a cost of $7,087,000. Thereafter, the plant was continuously enlarged and production increased. Before issuance of any of the patents in suit, Eastman had expended $11,000,000 on its plant and thereafter it expended an additional $6,000,000. Production was increased from an initial 7,500,000 lbs. per year in 1961 to more than 120,000,000 lbs. per year by the time the complaint herein was filed. Since issuance of the '515, '332 and '162 patents and prior to the present suit, Eastman's production using the 409 catalyst has increased about two-fold, i. e., by about 75,000,000 lbs. per year.
15. Plaintiff was aware of Eastman's commercial entry into the polypropylene market since at least 1963. Although plaintiff claims not to have known the identity of the specific catalyst used by Eastman, it nonetheless believed throughout the entire period from at least 1964 until suit that Eastman was an infringer of one or more Ziegler's catalyst patents. When plaintiff instituted this suit in March 1974, it knew as much about the specific catalyst and process used by Eastman as at any earlier time. Lack of...
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