Akzo v. EI DuPont de Nemours

• Decision Date: 23 May 1986
• Docket Number: Civ. A. No. 85-0459-R.
• Citation: 635 F. Supp. 1336
• Parties: AKZO N.V. and Aramide Maatschappij Vof., Plaintiffs, v. E.I. DUPONT DE NEMOURS, Defendant.
• Court: U.S. District Court — Eastern District of Virginia

635 F. Supp. 1336

AKZO N.V. and Aramide Maatschappij Vof., Plaintiffs, v. E.I. DUPONT DE NEMOURS, Defendant.

Civ. A. No. 85-0459-R.

United States District Court, E.D. Virginia, Richmond Division.

May 23, 1986.

James C. Roberts, Gary J. Spahn, Mays, Valentine, Davenport & Moore, Richmond, Va., Dennis McInerney, George Wailand, P. Kevin Castel, Cahill, Gordon & Reindel, New York City, Robert Hardy Falk, Hubbard, Thurman, Turner & Tucker, Dallas, Tex., C. Frederick Leydig, Phillip H. Mayer, Charles S. Oslakovic, Leydig, Voit & Mayer, Chicago, Ill., for plaintiffs.

Robert H. Patterson, Jr., Anne Marie Whittemore, McGuire, Woods & Battle, Richmond, Va., Joseph M. Fitzpatrick, Fitzpatrick, Cella, Harper & Scinto, New York City, for defendant.

FINDINGS OF FACT

RICHARD L. WILLIAMS, District Judge.

JURISDICTION AND VENUE

1. Plaintiffs Akzo N.V. ("Akzo") and Aramide Maatschappij Vof. ("Aramide") instituted the present action by a complaint filed May 6, 1985, in the United States District Court for the Eastern District of Virginia, Richmond Division. Plaintiffs' complaint alleges that defendant, E.I. DuPont de Nemours & Company ("DuPont"), has deliberately infringed U.S. Patent 4,308,374 ("the '374 patent"). Plaintiffs seek an injunction prohibiting infringement of the '374 patent by DuPont, an accounting of past damages, a determination that DuPont's alleged infringement was willful, and an award of attorneys' fees.

2. DuPont manufactures Kevlar fiber at its Spruance plant in Richmond, Virginia, using a solvent system which plaintiffs allege infringes the '374 patent.

3. DuPont has counterclaimed for a declaratory judgment that the '374 patent is unenforceable because of Akzo's fraud in its procurement, because the patent is invalid in view of the prior art, and because DuPont has not infringed the patent. DuPont also seeks an award of attorneys' fees by reason of Akzo's alleged fraud in the procurement of the '374 patent.

THE PARTIES

4. Plaintiff Akzo is a corporation organized and existing under the laws of The Netherlands and has its principal office and place of business in Arnhem, The Netherlands. (Stipulated to by parties).

5. Plaintiff Aramide is a partnership organized and existing under the laws of The Netherlands and has a place of business in Emmen, The Netherlands. (Stipulated to by parties).

6. Defendant DuPont is a corporation organized and existing under the laws of the State of Delaware, having its principal offices in Wilmington, Delaware, and its Spruance plant in Richmond, Virginia. (Stipulated to by parties).

7. DuPont makes Kevlar fiber at its Spruance plant using a solvent in the polymerization of PPD-T polymer which Akzo charges infringes the '374 patent. (Stipulated to by parties).

THE PATENT IN SUIT

8. U.S. Letters Patent No. 4,308,374 ("the '374 patent"), entitled "Process for the Preparation of Poly-p-phenyleneterephthalamide" was issued on December 29, 1981 to Akzo on an application by Leo Vollbracht and Teunis J. Veerman, filed November 15, 1979 under Serial Number 94,589. The Application Serial Number 94,589 is a continuation of Serial Number 915,585, filed June 15, 1978, which in turn is a continuation of Serial Number 658,750, filed February 17, 1976. An application for a patent for the same invention was filed by Akzo in the Netherlands on February 21, 1975 as Application Number 7,502,060. (Stipulated to by parties) (PTX-52, 374).

9. By an agreement dated March 4, 1983, Aramide acquired certain interests under the '374 patent, Akzo retaining responsibility to bring patent infringement actions against third parties. (Stipulated to by parties) (PTX-246, 247).

10. The invention for which the '374 patent was issued is a process by which poly-p-phenyleneterephthalamide PPD-T polymer having an inherent viscosity of at least 2.5 is made using the solvent N-methyl pyrrolidone ("NMP") containing at least 5% calcium chloride (caC12) salt. (PTX-374, DX-15, col. 1, lines 5-9). The patent states:

The present invention is based on the unexpected discovery that in mixtures of N-methyl pyrrolidone and at least 5 percent by weight of calcium chloride, there can be prepared poly-p-phenyleneterephthalamide having an inherent viscosity of 2.5 or higher. Such a property is unique considering that other combinations of an organic solvent and a salt, for instance as in the above-cited literature, only yield poly-p-phenyleneterephthalamide having a low inherent viscosity.

(PTX-375, DX-15, col. 2, lines 18-26).

11. All claims of the '374 patent require at least 5 percent by weight calcium chloride based on the weight of NMP. (Stipulated to by parties).

PRE-1975 DEVELOPMENT OF PPD-T SOLVENT PROCESS BY DUPONT

12. Generally, in order to produce commercial grade high-strength, low density fibers from aromatic polyamides, it is necessary to spin the fiber from a polymer of high molecular weight. High molecular weight of a polymer is indicated by relatively high inherent viscosity of the polymer. High inherent viscosity is desirable with respect to production of all polymers relevant to this action, including the polymer produced by the invention claimed in the patent in suit, i.e., PPD-T.

13. DuPont conducted research on aromatic polyamides at least as early as the mid-1950's.

14. In 1957, DuPont researchers discovered that among the amide-type solvents most effective in producing high molecular weight poly-p-phenylene isophthalamide ("MPD-I") were dimethylacetamide ("DMAc"), N-methylpyrrolidone (NMP), and hexamethylphosphoramide ("HMPA"). DuPont researchers also produced PPD-T polymer in a solution polymerization process using DMAc and HMPA. (PTX-357, 358).

15. In the mid-1960's, DuPont began research regarding polymerization of 1,4-B polymer (1,4 poly-p-benzamide or "Fiber B") spun from a solvent solution of NMP and calcium chloride or of NMP and lithium chloride ("LiCl"). (PTX-162).

16. In September and October 1966, Dr. Szucs, a DuPont scientist, reported that he had attempted to produce 1,4-B polymer in NMP but obtained a polymer of low inherent viscosity. The addition of calcium chloride or lithium chloride to the system "did not help." (PTX-163, 164).

17. In a DuPont memorandum dated October 19, 1966 it was reported: "Szucs has now definitely concluded that NMP is unsuitable for direct solution polymerization." (PTX-017).

18. By 1969, however, DuPont was producing 1,4-B polymer where polymerization was carried out in a solvent of NMP and lithium chloride. (DX-225).

19. By July 1969, DuPont targeted PPD-T rather than 1,4-B polymer as its principal candidate for commercial development of a low density, high strength fiber. At that time, PPD-T was produced in the laboratory from a 2:1 reaction mixture of HMPA and NMP. The polymer was of high inherent viscosity. (PTX-326).

20. From 1969 on, DuPont was aware that HMPA had toxic effects on humans. DuPont therefore began research to find substitute solvents for making PPD-T. (PTX-324).

21. At the time DuPont was initially investigating solvents for use in the manufacture of PPD-T in 1969-70, DuPont was concurrently investigating the polymerization of chloro-PPD-T, a polymer chemically closely related to PPD-T but of higher solubility. As a result of research in the field of chloro-PPD-T polymerization, it was known that chloro-PPD-T could be produced using either DMAc or NMP as the polymerization medium. (PTX-322, 323, 328).

22. In 1969, Dr. Fitzgerald of DuPont conducted experiments to polymerize chloro-PPD-T using DMAc/LiCl, DMAc/CaCl2, NMP/LiCl, or NMP/CaCl2 as the polymerization media. Dr. Fitzgerald concluded that to make chloro-PPD-T, DMAc/CaCl2 and NMP/CaCl2 were both "much worse than DMAc/LiCl or NMP/LiCl." Nevertheless, Dr. Fitzgerald achieved inherent viscosity in the range of 2.8-3.7 using DMAc/CaCl2 and NMP/CaCl2. (PTX-328).

23. Between 1969 and 1971, DuPont continued to search for a PPD-T solvent system not containing HMPA. During this time, it was determined that NMP by itself was not a suitable polymerization medium for PPD-T. (PTX-145, 165).

24. DuPont's first commercial unit, MDF-1 (Manufacturing Development Facility-1) used a solvent system of an HMPA/NMP mixture. (Heckert, Tr. 378).

25. When DuPont scaled up MDF-1 to use a continuous rather than a batch process, the solvent system used was 100% HMPA because DuPont desired to use one solvent in the continuous process. For polymerizing PPD-T, HMPA is a distinctly better solvent than NMP and therefore HMPA was chosen as the single solvent. (Heckert, Tr. at 378; Memeger Dep. p. 46).

26. Between the time in 1971 that 100% HMPA was selected as the solvent system to make PPD-T and the time in 1975 that HMPA was determined to be carcinogenic to animals, DuPont conducted virtually no research to develop an alternate solvent system for polymerizing PPD-T. (Schulz, Tr. at 438-39).

27. From 1971-74, considerable research was conducted at DuPont with respect to developing a vapor-phase polymerization system to produce PPD-T. Vapor-phase polymerization does not involve the use of an alternate solvent system, but in fact uses no solvent at all. (Schulz, Tr. at 438-41; PTX-371, 372).

28. DuPont's research into the use of vapor-phase polymerization was to determine the general applicability of vapor-phase polymerization to many polymer systems, including PPD-T. With respect to producing PPD-T, vapor-phase polymerization was determined not to be a viable alternative to the HMPA solvent system. (Schulz, Tr. at 438-41; PTX-371, 372).

29. At the time that DuPont decided to scale up its Kevlar process and to virtually discontinue research into alternate solvent systems, it was well known by DuPont researchers that there existed possible alternative solvent systems for the polymerization of PPD-T. The most promising of the systems that contained no HMPA were those composed of certain organic solvents, particularly NMP, DMAc, and TMU, which were combined with certain salts,...