Johnson & Johnson v. WL Gore & Assoc., Inc., Civ. A. No. 4334.

• Decision Date: 28 July 1977
• Docket Number: Civ. A. No. 4334.
• Court: U.S. District Court — District of Delaware
• Parties: JOHNSON & JOHNSON, Plaintiff, v. W. L. GORE & ASSOCIATES, INC., Defendant.

436 F. Supp. 704

JOHNSON & JOHNSON, Plaintiff, v. W. L. GORE & ASSOCIATES, INC., Defendant.

Civ. A. No. 4334.

United States District Court, D. Delaware.

July 28, 1977.

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Don K. Harness, John A. Blair, and Robert L. Boynton, of Harness, Dickey & Pierce, Birmingham, Mich., for plaintiff; Thomas S. Lodge, of Connolly, Bove & Lodge, Wilmington, Del., of counsel.

Marcus B. Finnegan, Brian G. Brunsvold, and Bruce C. Zotter, of Finnegan, Henderson, Farabow & Garrett, Washington, D.C., E. A. Uebler, of W. L. Gore & Associates, Inc., Newark, Del., for defendant; C. Walter Mortenson, Wilmington, Del., of counsel.

CALEB M. WRIGHT, Senior District Judge.

Plaintiff, Johnson & Johnson ("J & J") has brought an action against W. L. Gore & Associates, Inc. ("Gore"), charging infringement of U.S. Patent No. 3,002,770 covering a "Threaded Joint with Lubricating and Sealing Ribbon Interposed Between the Threads". In its answer, defendant denies infringement, and asserts three grounds of invalidity with respect to the patent in suit: lack of inventorship under § 102(f), obviousness under § 103, and anticipation under § 102. In addition, defendant urges that the failure of plaintiff to reveal certain prior art to the Patent Office during prosecution of the patent application constitutes fraud which renders the patent unenforceable. Finally, defendant argues that plaintiff is barred from bringing the present suit on the grounds of laches and estoppel.¹ Trial was had on the patent issues from January 27 to February 3, 1977. The following constitutes this Court's findings of facts and conclusions of law as provided by Rule 52, Fed.R.Civ.P.

I. THE PATENT IN SUIT

The patent in suit claims a threaded pipe joint sealed by a tape of unsintered polytetrafluoroethylene ("UPTFE" or "unsintered PTFE") tape.² It was issued to J & J as assignee of the named inventors, James A. Chesnut and Joseph D. Singalewitch, on October 3, 1961, pursuant to an application serial number 767,116, filed October 14, 1958, and a continuation-in-part application, serial number 849,536, filed October 29, 1959 while application number 767,116 was pending.

All three claims of the patent are at issue here. Claim 1, which discloses most of the essential elements of the invention, recites:

"1. A threaded joint comprising a male fitting having continuous male threads, a female fitting having continuous female threads adapted to mate with the threads on the male fitting, and a preformed transversely stretchable and compressible lubricating and sealing ribbon having a relatively low coefficient of friction and a high degree of lubricity wrapped circumferentially around the threads of the male fitting for at least one turn there around with the ends of the ribbon overlapped one upon the other by an appreciable amount, said overlapping end portions of the ribbon adhering to one another when pressed into contact by hand, said ribbon prior to turning the male and female fittings together being in the form of a flat coherent unsintered polytetrafluoroethylene film having a specific gravity in the range of about 1.2-1.8 and being about 1 to 20 mils in thickness, the male and female fittings being turned together with the ribbon compressed and conforming substantially with the shape of the space between the male and female threads and defined by said threads when the threads are turned together with the ribbon between them, the ribbon remaining in substantially continuous film form on the faces of the threads between the tips of said threads and providing the anti-binding and sealing barrier between the threads and a lubricated surface for turning the fittings with respect to one another at any time during the life of the joint, whereby there is provided a joint possessing the following properties:

(a) leakproof tightness at low torque,

(b) retention of leakproof tightness for the life of the joint, and

(c) ease of opening the joint during its life.

Claims 2 and 3 relate to the reusability feature of the completed joint.³

As is described by the specification, UPTFE tape is made by extruding and then calendaring a mixture of very fine, approximately spherical particles of UPTFE and a lubricant such as mineral spirits. After extrusion, the lubricant is evaporated, leaving a smooth, white porous tape which is inert to most chemicals.⁴ The tape is relatively flimsy, and can be torn easily by hand, yet can be stretched latitudinally as much as 100% without tearing. Tr. 17, 22. Due to the evaporation of the lubricant, the tape has a number of air voids or pores distributed throughout. Consequently, the tape has a specific gravity somewhat less than that of solid UPTFE, which is approximately 2.2.⁵ Since prior to the alleged invention of the patent in suit, UPTFE tape manufactured according to this process has been sold for use in wrapping wire to form an insulating coating. After the wire is wrapped with the tape, it is heated to a temperature above the melting point of the UPTFE, thus sintering the UPTFE and creating a solid, nonporous insulating cover of sintered PTFE. Tr. 18.

The process of making the joint is deceptively simple. The UPTFE tape is wrapped around the threads of the male member of the joint prior to assembly. The female member is then threaded onto the male member and tightened in the usual manner. When the female pipe joint member is turned onto the male member, it compacts the UPTFE material into the threads of the joint, compressing the material by squeezing out the air left in the tape. The tape is compressed to a density approximately that of solid PTFE. Tr. 24-26. The formation of a reliably sealed pipe joint using the UPTFE tape is the result of the presence of tightly packed UPTFE completely surrounding at least one circumference of the threads. Pre-Trial Order, Admitted Facts, ¶ 11; Tr. 35.

The claimed invention is a significant improvement over sealed threaded joints in the prior art. The tape is clean and easy to apply by hand, even at low temperatures, with virtually no waste. The joint may be sealed effectively at lower torques than are required using alternative methods. The tape itself is inert to most substances. The protective film formed by the tape resists corrosion and galling often experienced in galvanized iron threaded joints, and does not contaminate material carried through the pipe. The tape does not deteriorate due to age, cold or heat up to its sintering temperature of 320° C. Because of the low coefficient of friction of the PTFE and the compressibility of the tape, the joint may be easily opened and can be resealed by applying slightly more torque than was required for the initial seal. Tr. 39-41.

II. INVENTORSHIP

Defendant's first defense is that of derivation: that the named inventors, Chesnut and Singalewitch, derived the idea for the invention from a third party.⁶ According to defendant, Orrin G. Youngquist, an employee of E. I. du Pont de Nemours, first conceived the idea of using unsintered PTFE in tape form to seal threaded joints during the course of a meeting between sales representatives of du Pont and representatives of the Minnesota Mining and Manufacturing Co. ("3M"), in St. Paul, Minnesota in January, 1957. Youngquist allegedly subsequently disclosed the idea to Charles Carr, also of du Pont, in the spring of 1957. Carr in turn is alleged to have disclosed the idea to various employees of J & J, including James Chesnut, prior to March 19, 1958, which has been admitted to be the date of alleged conception of Chesnut and Singalewitch. Pre-Trial Order, Admitted Facts ¶ 43; Tr. 247, 249-253, 303, 444.

35 U.S.C. § 102(f) provides that:

"A person shall be entitled to a patent unless — . . .

(f) he did not himself invent the subject matter sought to be patented . . .."

To establish the defense of derivation under § 102(f), the defendant must prove both that the invention was previously conceived by another person, and that the complete conception was communicated to the party charged with derivation. Agawam Co. v. Jordan, 7 Wall. 583, 74 U.S. 583, 19 L.Ed. 177 (1868); Amax Fly Ash Corp. v. U. S., 514 F.2d 1041 (Ct.Cl.1975); Hedgewick v. Akers, 497 F.2d 905 (Cust. & Pat.App.1974); Erie Technological Products v. Die Craft Products, 318 F.Supp. 933 (N.D.Ill.1970), mod., 461 F.2d 5 (7th Cir. 1972). The presumption of validity set forth in 35 U.S.C. § 282 extends to the presumption that the inventors named in the patent are the true inventors. Acme Highway Products Corp. v. D. S. Brown Co., 431 F.2d 1074 (6th Cir. 1970), cert. denied, 401 U.S. 956, 91 S.Ct. 977, 28 L.Ed.2d 239 (1971). One who seeks to show that a patent is invalid under 35 U.S.C. § 102(f) must establish each element of the defense by clear and convincing proof, especially when much of the evidence is oral testimony unsupported by contemporaneous documentary evidence. Campbell v. Spectrum Automation Co., 513 F.2d 932 (6th Cir. 1975); Amax Fly Ash Corp. v. U. S., supra; Heyman Manufacturing Co. v. Hap Corp., 131 U.S.P.Q. 165 (D.R.I.1961). All the circumstances in the record must be considered in evaluating the sufficiency of the defendant's proof. Hedgewick v. Akers, supra.

A. Youngquist's Conception

On or about January 25, 1957, Orrin Youngquist, William Franta, and Charles H. Concklin, du Pont employees involved in selling Teflon resins in the Midwest,⁷ met with representatives of 3M⁸ at the 3M offices in St. Paul, Minnesota. Tr. 216, 217 (Franta); 277-279 (Concklin); 435-436 (Youngquist). The independent testimony of Youngquist, Franta and Concklin is that during the course of the meeting, Youngquist suggested to the 3M personnel⁹ that the UPTFE tape then being manufactured as electric wire insulation might be useful in sealing threaded joints. Tr. 434 (Youngquist); 217-218 (Franta); 276-279 (Concklin). Following the meeting in St. Paul, the "Youngquist idea" was not...