Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.
| Decision Date | 22 February 1989 |
| Docket Number | Nos. 88-1192,88-1193,s. 88-1192 |
| Parties | CORNING GLASS WORKS, Plaintiff/Cross-Appellant, v. SUMITOMO ELECTRIC U.S.A., INC., Sumitomo Electric Industries, Ltd. and Sumitomo Electric Research Triangle, Inc., Defendants/Appellants. |
| Court | U.S. Court of Appeals — Federal Circuit |
William K. West, Jr., Cushman, Darby and Cushman, Washington, D.C., argued for plaintiff/cross-appellant. With him on the brief were George T. Mobille, Chris Comuntzis, Duane M. Byers and Lynn E. Eccleston. Also on the brief were Italo H. Ablondi, F. David Foster, Sturgis M. Sobin and Peter J. Koenig, Ablondi & Foster, Washington, D.C.
Lars I. Kulleseid, Fish & Neave, of New York City, argued for defendants/appellants. With him on the brief were W. Edward Bailey, Daniel M. Gantt, Thomas J. Vetter and Mark H. Bloomberg. Also on the brief were Alfred L. Michaelsen and K. McNeill Taylor, Jr., Corning Glass Works, Corning, N.Y., of counsel.
Before RICH, NIES and BISSELL, Circuit Judges.
Sumitomo Electric U.S.A., Inc. (SEUSA), Sumitomo Electric Industries, Ltd. (SEI), and Sumitomo Electric Research Triangle, Inc. (SERT), (collectively Sumitomo) appeal from the judgment of the United States District Court for the Southern District of New York, 671 F.Supp. 1369, 5 USPQ2d 1545 (S.D.N.Y.1987) (Conner, J.), holding Sumitomo liable for infringement of claims 1 and 2 of United States Patent No. 3,659,915 ('915) and claim 1 of United States Patent No. 3,884,550 ('550), all directed to the structure of optical waveguide fibers. On appeal, Sumitomo challenges the validity of both patents and the finding of infringement of the '915 patent by one of its accused products. Corning Glass Works cross-appeals from the portion of the judgment holding that Sumitomo does not infringe another of its patents, United States Patent No. 3,933,454 ('454), which claims a method of making optical waveguide fibers. We affirm the judgment in all respects.
The inventions involved in this case relate to optical waveguide fibers of the type now widely used for telecommunications, such as long-distance telephone transmissions. Such fibers were developed as a medium for guiding the coherent light of a laser a distance suitable for optical communications.
It had long been known that light could be guided through a transparent medium that was surrounded by another medium having a lower refractive index (RI). A glass fiber surrounded by air, for example, will function as a conduit for light waves, because air has a lower RI than glass. To prevent scratches, imperfections, or foreign materials on the fiber surface from scattering light away from the fiber, glass fibers were cladded with a glass layer having a lower RI. Before 1970, however, these glass-clad, glass-core fibers, referred to generally as "fiber optics," were capable of transmitting light of practical intensity only for very short distances due to high attenuation of the glass fibers then available. While suitable for illumination or for imaging systems, as in endoscopic probes, they could not be used for optical communications.
Another impediment to the use of conventional fiber optics for optical communications was the need that the fiber limit the transmitted light to preselected rays or "modes." In contrast, conventional fibers were designed to pass the maximum amount of incident light. The relatively large core diameter of conventional fibers permitted modes of light to enter the core over a fairly wide range of angles which, provided they entered at less than the critical angle, would be propagated along the fiber. Upon entering a fiber core, the light modes travel to the cladding and then back into the core, thus "bouncing" back and forth in a zig-zag path along the length of the fiber. The shallower the angle at which the modes enter the core, the less they will "bounce" and the sooner they will reach the receiving end of the fiber. When the number of modes are restricted, intelligibility of the information transmitted increases. The optimum restriction is achieved when only a single mode is transmitted, and by limiting the core diameter, that purpose is accomplished.
By the mid-1960's, worldwide efforts were ongoing to develop long-distance lightwave transmission capability. In particular, the British Post Office sought an optical waveguide with an attenuation of 20 db/km, the approximate transmission efficiency of the copper wire commonly used in telephone communications.
Corning's work on optical waveguides began in 1966, when it was contacted by the British Post Office. Drs. Robert D. Maurer and Peter C. Schultz, working at Corning, developed the world's first 20 db/km optical waveguide fiber by early 1970. That achievement was due, in part, to the development of a fiber with a pure fused silica cladding and a fused silica core containing approximately three percent by weight of titania as the dopant in the core. 2 It was also due to the careful selection of the core diameter and the RI differential between the core and the cladding.
Bell Laboratories confirmed the attenuation measurements of Corning's fibers and considered Corning's achievement an important breakthrough, making long-distance optical telecommunications possible. Dr. Maurer first publicly reported the achievement of a 20 db/km optical waveguide fiber at the Conference on Trunk Telecommunications by Guided Waves held in London, England. That announcement created enormous interest and was the subject of many articles in both technical and general publications. The inventors' advancement in technology won them accolades from various societies and institutes, for which they were presented with many prestigious awards and honors. In addition, the invention of the '915 patent has achieved impressive commercial success on a worldwide basis. The district court determined that "[t]he 915 patent clearly covers a basic, pioneering invention." 671 F.Supp. at 1377, 5 USPQ2d at 1551.
The '915 patent discloses a fused silica optical waveguide fiber capable of limiting the transmitted light to preselected modes for use in optical communication systems. Specifically, such a fiber is disclosed as having a doped fused silica core and a fused silica cladding (doping optional), wherein the RI of the core is greater than that of the cladding. Prior to the filing date of the application for the '915 patent, the inventors had experimented with dopants which increased the RI of fused silica, e.g. titania, and the '915 specification mentions only such positive dopant materials. At the time the application was filed, the inventors did not know of specific dopants that would decrease the RI of fused silica, although it had been known in the art since 1954 that the introduction of fluorine decreases the RI of certain multicomponent glasses.
Corning's titania-doped fibers required heat treatment to reduce attenuation to an acceptable level. An undesirable result of that treatment was a lowering of the mechanical strength of the fibers. Consequently, Corning sought to develop a low attenuation fiber which did not require heat treatment. In 1972, Drs. Maurer and Schultz found a solution in doping a fused silica core with germania, which also had the advantage of transmitting more light than using titania.
Corning recognized that when optical waveguide fibers were produced by flame hydrolysis, they contained hydroxyl ions. The residual hydroxyl ions absorbed light at certain wavelengths used in optical communications and, if they remained, would increase the attenuation of the fiber at those wavelengths. Working at Corning, Dr. Robert D. DeLuca invented a process to overcome this inherent problem by introducing a chlorine-containing drying atmosphere into the furnace during the "consolidation" phase.
Corning is the assignee of the three patents at issue. SEI and its subsidiaries, SERT and SEUSA, are engaged in the manufacture and sale of optical waveguide fibers. This appeal involves two suits which were consolidated: an action by SERT 3 seeking a declaration of invalidity and noninfringement of Corning's '915 and '454 patents with a counterclaim by Corning alleging SERT's infringement of those patents, and a suit by Corning against SEUSA and SEI asserting infringement of the '915, '550, and '454 patents.
The trial court held, inter alia, that claims 1 and 2 of the '915 patent and claim 1 of the '550 patent were not invalid and were infringed by Sumitomo. It found no infringement of the '454 patent. These rulings are the subject of this appeal and cross-appeal.
Validity and Infringement of Claims 1 and 2 of '915 Patent
On appeal Sumitomo attacks the validity of the '915 claims in issue solely on the ground that they are anticipated by the prior art United Kingdom Patent No. 1,113,101 ('101). Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983), cert. denied, 465 U.S. 1026, 104 S.Ct. 1284, 79 L.Ed.2d 687 (1984). While recognizing that the '915 patent discloses innovative work by the inventors in the field of fiber optics, Sumitomo maintains that the structure as claimed is identical to the fiber structure disclosed in the '101 reference.
In this case, the question of anticipation turns on claim interpretation, a question of law. Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 866, 228 USPQ 90, 93 (Fed.Cir.1985). If the claims are given Sumitomo's suggested interpretation, the '101 patent anticipates; otherwise, it does not. In particular, the dispute focuses on the interpretation and effect of the words "An optical waveguide" in claim 1 4 which reads (paragraphing and...
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