W.L. Gore & Associates, Inc. v. Garlock, Inc., s. 83-613
| Citation | 220 USPQ 303,721 F.2d 1540 |
| Decision Date | 14 November 1983 |
| Docket Number | Nos. 83-613,83-614,s. 83-613 |
| Parties | W.L. GORE & ASSOCIATES, INC., Appellant/Cross-Appellee, v. GARLOCK, INC., Appellee/Cross-Appellant. |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
David H. Pfeffer, New York City, argued for appellant/cross-appellee; J. Robert Dailey and Janet Dore, New York City, John S. Campbell, Newark, Del., of counsel.
John J. Mackiewicz, Philadelphia, Pa., argued for appellee/cross-appellant. With him on the brief were Dale M. Heist, Philadelphia, Pa., Bernard Ouziel, New York City, of counsel.
Before MARKEY, Chief Judge, and DAVIS and MILLER, Circuit Judges.
Appeal from a judgment of the District Court for the Northern District of Ohio holding U.S. Patents 3,953,566 ('566) and 4,187,390 ('390) invalid. We affirm in part, reverse in part, and remand for a determination of the infringement issue.
Tape of unsintered polytetrafluorethylene (PTFE) (known by the trademark Dr. Gore experimented with heating and stretching of highly crystalline PTFE rods. Despite slow, careful stretching, the rods broke when stretched a relatively small amount. Conventional wisdom in the art taught that breakage could be avoided only by slowing the stretch rate or by decreasing the crystallinity. In late October, 1969, Dr. Gore discovered, contrary to that teaching, that stretching the rods as fast as possible enabled him to stretch them to more than ten times their original length with no breakage. Further, though the rod was thus greatly lengthened, its diameter remained virtually unchanged throughout its length. The rapid stretching also transformed the hard, shiny rods into rods of a soft, flexible material.
TEFLON of E.I. du Pont de Nemours, Inc.) had been stretched in small increments. W.L. Gore & Associates, Inc. (Gore), assignee of the patents in suit, experienced a tape breakage problem in the operation of its "401" tape stretching machine. Dr. Robert Gore, Vice President of Gore, developed the invention disclosed and claimed in the '566 and '390 patents in the course of his effort to solve that problem. The 401 machine was disclosed and claimed in Gore's U.S. Patent 3,664,915 ('915) and was the invention of Wilbert L. Gore, Dr. Gore's father. PTFE tape had been sold as thread seal tape, i.e., tape used to keep pipe joints from leaking. The '915 patent, the application for which was filed on October 3, 1969, makes no reference to stretch rate, at 10% per second or otherwise, or to matrix tensile strength in excess of 7,300 psi.
Gore developed several PTFE products by rapidly stretching highly crystalline PTFE, including: (1) porous film for filters and laminates; (2) fabric laminates of PTFE film bonded to fabric to produce a remarkable material having the contradictory properties of impermeability to liquid water and permeability to water vapor, the material being used to make "breathable" rainwear and filters; (3) porous yarn for weaving or braiding into other products, like space suits and pump packing; (4) tubes used as replacements for human arteries and veins; and (5) insulation for high performance electric cables.
On May 21, 1970, Gore filed the patent application that resulted in the patents in suit. The '566 patent has 24 claims directed to processes for stretching highly crystalline, unsintered, PTFE. The processes, inter alia, include the steps of stretching PTFE at a rate above 10% per second and at a temperature between about 35?C and the crystalline melt point of PTFE. The '390 patent has 77 claims directed to various products obtained by processes of the '566 patent.
It is effectively undisputed that the present inventions filled a long sought yet unfilled need. The United States Army and the research director of a Garlock, Inc. (Garlock) customer had been looking for and following up every remote lead to a waterproof/breathable material for many years.
It is undisputed that the present inventions enjoyed prompt and remarkable commercial success due to their merits and not to advertising or other extraneous causes.
It is undisputed that the inventions provide the most important synthetic material available for use in vascular surgery, hundreds of thousands of persons having received artificial arteries formed of the patented product since 1976, and that the patented products have unique properties useful in other medical procedures, in communications satellites, radar systems, and electrical applications.
It is undisputed that the major sources of PTFE, ICI and du Pont, greeted the patented product as "magical", "bewitching", "a remarkable new material", and one that "differs from other processed forms of Teflon".
It is undisputed that the patented products were met with skepticism and disbelief by at least one scientist who had worked with PTFE at du Pont for many years and who testified as an expert at trial.
It is undisputed that Garlock first produced an accused product in response to a customer's request for a substitute for the
patented product, that Garlock advertised its accused product as a "new form" of PTFE and as "a versatile new material which provides new orders of performance for consumer, industrial, medical and electrical applications", and that the customer describes that accused product as "a new dimension in rainproof/breathable fabrics".
On Nov. 2, 1979, Gore sued Garlock for infringement of process claims 3 and 19 of the '566 patent, and sought injunctive relief, damages, and attorney fees. Garlock counterclaimed on Dec. 18, 1979, for a declaratory judgment of patent invalidity, non-infringement, fraudulent solicitation, and entitlement to attorney fees. On Feb. 7, 1980, Gore filed a second suit for infringement of product claims 14, 18, 36, 43, 67 and 77 of the '390 patent. In light of a stipulation, the district court consolidated the two suits for trial.
Gore alleged infringement of certain claims by certain products:
'566 '390
patent patent Garlock
claims claims Product
------ ------ ---------------
19 14,43 film
-- 36,77 laminate
19 18 yarn
-- 67 braided packing
3 -- tape
At trial, Garlock addressed only claims 1, 3, 17, and 19 of the '566 patent and claims 1, 9, 12, 14, 18, 35, 36, 43, 67, and 77 of the '390 patent. See Appendix to this opinion.
The district court, in a thorough memorandum accompanying its judgment, and in respect of the '566 patent: (1) found claim 1 anticipated under 35 U.S.C. Sec. 102(a) by Gore's use of its 401 machine and use by the Budd Company (Budd) of a Cropper machine; (2) declared all claims of the patent invalid under 102(b) because the invention had been in public use and on sale more than one year before Gore's patent application, as evidenced by Budd's use of the Cropper machine; (3) held claims 1, 3, 17 and 19 invalid for obviousness under 35 U.S.C. Sec. 103, on the basis of various reference pairings: (a) Japanese patent 13560/67 (Sumitomo) with U.S. patent 3,214,503 (Markwood); (b) U.S. patent 2,776,465 (Smith) with Markwood; or (c) Gore's '915 patent with Sumitomo; and (4) held all claims invalid as indefinite under 35 U.S.C. Sec. 112. 1
In its opinion respecting the '390 patent, the district court held: (1) claims 1, 9, 12, 14, 18, 35, 36, 43, 67 and 77 invalid under Secs. 102 and 103 in view of Sumitomo and Smith; and (2) all claims invalid as indefinite under Sec. 112.
The court found that Gore did not commit fraud before the Patent and Trademark Office (PTO), denied Garlock's request for attorney fees, and refrained from deciding the infringement issue.
Did the district court err in: (1) its holdings of invalidity under Secs. 102(a), 102(b), 103 and 112; (2) its finding that Gore did not commit fraud on the PTO; or (3) denying attorney fees.
OPINIONThis hard fought and bitterly contested case involved over two years of discovery, five weeks of trial, the testimony of 35 witnesses (19 live, 16 by deposition), and over 300 exhibits. The district court issued an exhaustive 37-page memorandum opinion reflective of a careful, conscientious approach to the determination of the many issues presented at trial.
The record on appeal consists of 2000 pages. The parties' briefs total 199 pages. In those briefs, counsel repeatedly accuse each other of numerous and serious breaches of the duty of candor owed the court. Each cites instances in which the testimony, the findings, and the record are or are said to be quoted in part and out of context. As a result, the usefulness and reliability of the briefs as means of informing the court has been greatly diminished if not destroyed, and careful, time-consuming study of all exhibits and each page of the record has been required.
Appellant cited 80 prior court opinions in its main brief. Appellee's brief totally ignores all but two of those citations, but adds 57 more. Appellant's reply brief cites 126 prior court opinions, 34 earlier cited, 67 newly cited, and 25 of those cited by appellee. Appellee's reply brief cites 17 prior court opinions, 4 earlier cited, 7 newly cited, and 6 of the 147 cited by appellant. Accordingly, 211 prior court opinions have been evaluated in relation to the proof found in the record.
In light of the entire record and the applicable law, we are convinced that Garlock failed to carry its burden of proving all claims of the present patents invalid.
Where, as here, dispositive legal error occurred in interpretation and application of the patent statute, 35 U.S.C., the parties' arguments relating to the salutory injunction of Fed.Rule Civ.P. 52(a) cannot be controlling on all issues. Findings that "rest on an erroneous view of the law may be set aside on that basis", Pullman-Standard v. Swint, 456 U.S. 273, 102 S.Ct. 1781, 42 L.Ed.2d 66 (1982). Thus it is unnecessary here to set aside any probative fact found by the district court...
To continue reading
Request your trial
-
US Surgical Corp. v. Hospital Products Intern.
...the disclosure in a single prior art reference of each element of the claim under consideration." W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed.Cir. 1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). Thus, the defendant must demonstrate "identity ......
-
E2interactive, Inc. v. Blackhawk Network, Inc.
...the applicant, § 102(b) is not a bar when the prior use or knowledge is not available to the public."); W. L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) ("There is no reason or statutory basis, however, on which Budd's and Cropper's secret commercialization o......
-
Micro Chemical, Inc. v. Great Plains Chemical Co.
...easily carried by evidence consisting of more pertinent prior art than that considered by the examiner. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). All evidence bearing on the validity i......
-
Alcon Research, LTD. v. Apotex Inc.
...has done, the claimed invention is non-obvious. In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1552-53 (Fed. Cir. 1983). "'A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be di......
-
Obviousness Allegations Fall Short After Petitioner's "Weak Showing" Of A Motivation To Combine The Art
..."strong evidence of unobviousness." In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. Expert testimony can be a valuable tool to explain the teachings of a cited reference or what is generally known in a field. How......
-
Teaching Away May Preclude Motivation To Modify A Reference
...evidence of unobviousness." See, e.g., In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. Practitioners are cautioned, however, that "teaching away" can be a high bar and is usually not met by mere disclosure of alt......
-
Teaching Away May Preclude Motivation To Modify A Reference
...evidence of unobviousness." See, e.g., In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. Practitioners are cautioned, however, that "teaching away" can be a high bar and is usually not met by mere disclosure of alt......
-
Chapter §9.07 Combining Prior Art Disclosures
...for the combination other than the hindsight gleaned from the invention itself.").[436] See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (criticizing district court's analysis of obviousness in which "the claims were used as a frame, and individual, naked ......
-
Fraud and Misrepresentation
...Tank Lines v. Aetna Cas. & Sur. Co., 89 F.3d 976, 984 (3d Cir. 1995) (citation omitted). But see W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1558 (Fed. Cir. 1983) (“Good faith and subjective intent, while they are to be considered, should not necessarily be made controlling. Under ......
-
Kewanee revisited: returning to first principles of intellectual property law to determine the issue of federal preemption.
...or commercial exploitation more than one year prior to the date of application); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) ("As between a prior inventor who benefits from a process by selling its product but suppresses, conceals, or otherwise keeps......
-
Putting the "public" Back in "public Use" Interpreting the 2011 Leahy-smith America Invents Act
...383, 390 (Fed. Cir. 1984) (citing Metallizing, 153 F.2d at 516; D.L. Auld Co., 714 F.2d at 1144; W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)); D.L. Auld, 714 F.2d at 1147.105. W.L. Gore, 721 F.2d at 1550. 106. See Leahy-Smith America Invents Act, Pub. L. No. 112-29,......