WL Gore & Associates, Inc. v. Carlisle Corporation
| Decision Date | 09 September 1974 |
| Docket Number | Civ. A. No. 4160. |
| Citation | 381 F. Supp. 680 |
| Parties | W. L. GORE & ASSOCIATES, INC., Plaintiff, v. CARLISLE CORPORATION, Defendant. |
| Court | U.S. District Court — District of Delaware |
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C. Walter Mortenson of Mortenson & Weigel, Wilmington, Del., Marcus B. Finnegan, and Brian G. Brunsvold of Finnegan, Henderson, Farabow & Garrett, Washington, D. C., of counsel, for plaintiff.
William Poole of Potter Anderson & Corroon, Wilmington, Del., James G. Bernheim, Thomas F. Tivnan and Harriet M. Woodard of Parker, Duryee, Zunino, Malone & Carter, and Henry W. Foulds, Jr., New York City, of counsel, for defendant.
This is a patent suit arising under the provisions of Title 35 U.S.C. §§ 271 and 281-285. The patents in suit are United States Patent Numbers 3,082,292 (cited as PX 15), sometimes referred to as the Multi-tet Patent, Robert Gore patent or the 292 patent, and 3,540,956 (cited as PX 34), sometimes referred to herein as the Precise Conductor Patent or the 956 patent.
The plaintiff seeks an injunction permanently enjoining defendant from infringing the patents in suit and seeks treble damages from the defendant for willful and deliberate infringement, together with costs and disbursements in this action including reasonable attorneys fees.
The defendant denies infringement, asserts the invalidity of both patents on the basis of the prior art, fraud on the Patent Office in procurement of the 292 patent, and with respect to the 956 patent, sale of the product produced by the claimed process more than one year prior to the filing of the patent application. By amended answer and counterclaim, the defendant also asserts a violation of Sections 1 and 2 of the Sherman Act, and Sections 4 and 16 of the Clayton Act (15 U.S.C. §§ 1, 2, 15 and 26).
The defendant's anti-trust claim is premised upon the alleged attempt by the plaintiff to monopolize the PTFE flat laminated cable portion of the signal transmission market through the use of invalid and fraudulently obtained patents. Defendant also contends that the plaintiff, by use of this lawsuit, and certain behavior in connection with the attempt by the parties to settle has attempted to divide the market, to increase the price artificially and to prevent the defendant from entering the relevant market by refusing to accept other than a royalty so high as to be prohibitive.
The 292 patent was issued to the plaintiff as assignee of the inventor, Robert W. Gore on March 19, 1963, on application Serial No. 686,900 filed in the Patent Office September 30, 1957. Pre-Trial Order, p. 3(d). The 956 patent was issued to the plaintiff as assignee of the inventors, Howard W. Arnold and Wilbert L. Gore on November 17, 1970 and is entitled to the benefit of an October 8, 1965 filing date. Pre-Trial Order, pp. 3, 4(e)(f). The plaintiff from the date of issue has been and remains the owner of said patents. The defendant, Carlisle Corporation, through its Tensolite Wire and Cable Division (hereafter called "Tensolite") is the manufacturer and seller of certain multiconductor cables alleged to infringe both patents. Both parties are Delaware corporations. Jurisdiction of the patent issues is based on 28 U.S.C. § 1338 and venue is founded on 28 U.S.C. § 1400. Jurisdiction of the anti-trust issue is based on 28 U.S.C. § 1337.
Both patents in suit concern the manufacture of flat multi-conductor ribbon cable insulated with polytetrafluoroethylene (PTFE). The cable is used to transmit electrical signals. Both the plaintiff and defendant manufacture such cable by laminating a multiplicity of conductor wires between sheets of extruded, unsintered PTFE, followed by subsequent sintering of these assemblies to yield the final product.
Preliminarily, and by way of explanation, unsintered PTFE sheets are used both by plaintiff and defendant as the starting material for cable manufacture. At the time of the conception of the invention described in the 292 patent, extruded, unsintered sheets of PTFE were the only commercially available forms of unsupported unsintered PTFE sheets and this is true today. (Tr. 115, 153, 1821). The starting material in extruded unsintered PTFE tape manufacture is PTFE dispersion powder which may be purchased from several manufacturers. (Tr. 59). Dispersion powder consists of particles of polymer about 0.1 micron in diameter. (PX 25B). The powder is mixed with a lubricating agent, usually a light hydrocarbon oil, producing a paste-like material which can be ram extruded. The paste is lightly compressed into a pellet shaped so that it may be inserted into the barrel of a ram extruder. The barrel of the ram extruder is tapered to a narrow constriction, which is followed by a spreader die having a wide and thin exit opening. The dimensions of the exit opening are nearly the same as the sheeting to be made. (Tr. 62). During their passage through the constriction in the barrel of the ram extruder the PTFE particles in the paste are sheared and fibers are formed as shown in an electron micrograph of fiber from unsintered extruder lubricated PTFE. (PX 3). The hydrocarbon lubricant which was added prior to extrusion may be removed by passing the tapes through a high temperature oven. (Tr. 67-68). The product formed is an extruded unsintered sheet made up of a mixture of fibrils and unfibrillated particles and is the starting material for the manufacture of the cables disclosed in the 292 and 956 patents. (Tr. 67a).
The plaintiff asserts that the defendant is infringing claims 1-14 and 24-27 of the 292 patent. Claims 1-14 are process claims and 24-27 are product claims. (PX 15).
A representative process claim is Claim 7 which reads as follows:
7. A process for coating, in a continuous manner, an article which process comprises passing along their longitudinal axes at least two surfaces of a coating material derived from an unsintered tetrafluoroethylene polymer and in sheet form to and through the nip of two pressure rolls, the said sheets and said rolls being at temperatures below the sintering temperature of the said polymer; simultaneously passing the article to be coated to and through the resultant nip being formed by the said sheets; exerting pressure on the said coating material to enclose the said article in the said material and to bond the said unsintered sheets together when and where they contact each other under pressure in said passage to form at least one web which has a thickness less than the sum of the initial thicknesses of said sheets, which contains unsintered polymer and which extends longitudinally along the length of the resultant enclosed article and transversely away from it; and withdrawing from the exit side of said rolls the resultant assembly which comprises the said article having a coating of the said unsintered polymer and at least one web.
The specifications and dependent claims teach that the pressure rolls contain in their surface cut out portions or grooves which correspond to the article to be coated, typically wires. The wires are fed into the grooves in the rolls and the sheets of unsintered PTFE are pressed together around the wires by reason of the pressure exerted on the PTFE. (PX 15, Col. 1, Lines 40-48). The resulting assembly is then passed through an oven to sinter the PTFE. The result is a homogenous assembly consisting of wires separated and encapsulated by the PTFE sheets. (PX 15, Col. 2, Lines 4-11). The coating of PTFE can be made thinner than could be accomplished with other materials. The pressing of the PTFE sheets around the wires results in the thickness of the sheets between the wires being generally less than twice the thickness of the two original PTFE sheets. (PX 15, Col. 2, Lines 25-30).
Prior to sintering, the assembly shows no tendency to separate during handling (PX 15, Col. 2, Lines 55-57), and after sintering the assembly is tightly held together and so tough that it can be flexed and twisted without harm. (PX 15, Col. 2, Lines 59-61).
The inventor of the 292 patent, Robert W. Gore, is now the holder of a Ph.D. degree in chemical engineering. (Tr. 423). At the time the invention was made he was a student at the University of Delaware, enrolled in its Chemical Engineering Department. His father, Wilbert L. Gore was employed in the period 1953-57 by the DuPont Company and worked in an operations research group. (Tr. 83, 84, 90). His job responsibilities included planning the course of research work and commercial development of polymers.
DuPont had encountered problems in processing PTFE and had decided to concentrate its research and development on the perfection and commercial exploitation of fluorocarbon copolymers rather than to continue research and development on the homopolymer PTFE. (Tr. 83-84).
W. L. Gore did not agree with this decision of DuPont and decided to continue on his own the work abandoned by DuPont. In the spring of 1957, Gore was conducting research and development work in the basement of his home using equipment similar to that previously used by Reuben Fields at DuPont in experiments with PTFE granular powder. Instead of using PTFE granular powder as Fields had done Gore was using PTFE dispersion polymer containing a hydrocarbon lubricant. (Tr. 460-461; PX 23, p. 36). Gore's efforts were no more successful than Fields had been and he was not producing an electrically sound cable. (Tr. 85-87, 435-438).
The experimental work by Fields and that of Wilbert Gore involved the feeding of the PTFE powder directly into the calender rolls and then sintering it.
Robert Gore, the son and inventor, asked his father why not take some of the unsintered tape of PTFE and feed the tapes in the nips of the calender rolls, one on each side, and make a wiring strip instead of trying to control the feeding of the powder into the rolls. (Tr. 88). W. L. Gore, being an expert in the...
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