Cosden Oil & Chemical Co. v. American Hoechst Corp.
| Decision Date | 23 June 1982 |
| Docket Number | Civ. A. No. 76-37. |
| Court | U.S. District Court — District of Delaware |
| Parties | COSDEN OIL & CHEMICAL COMPANY, Plaintiff, v. AMERICAN HOECHST CORPORATION, Defendant. |
COPYRIGHT MATERIAL OMITTED
Douglas E. Whitney, Morris, Nichols, Arsht & Tunnell, Wilmington, Del., William D. Harris, Jr., Garland P. Andrews, Jerry R. Selinger, Richards, Harris & Medlock, Dallas, Tex., M. N. Cheairs, Monty L. Ross, Dallas, Tex., Joe A. Moss, American Petrofina, Inc., Dallas, Tex., for plaintiff.
E. Norman Veasey, Robert H. Richards, III, Jesse A. Finkelstein, Richards, Layton & Finger, Wilmington, Del., Francis J. Hone, Edward V. Filardi, Brumbaugh, Graves, Donohue & Raymond, New York City, John C. Wyman, Roche, Carens & DiGiacomo, Boston, Mass., for defendant.
These are consolidated actions involving the validity, infringement, ity of United States Patents No. 3,868,434 ("'434 patent") and No. 3,996,311 ("'311 patent"), which issued to Richard C. Westphal ("Westphal") and Paul Heinig ("Heinig"). Cosden Oil and Chemical Company ("Cosden") originally filed this suit asking for a declaratory judgment that the patents in suit are invalid, unenforceable and not infringed. It has since added allegation of fraud on the Patent Office. American Hoechst Corporation ("AHC"), as successor to Foster Grant Co.,1 the original assignee from Heinig and Westphal, seeks damages and injunctive relief against Cosden for infringement. Jurisdiction and venue are conferred upon this Court by 28 U.S.C. §§ 1338(a), 2201, 2202 and by 28 U.S.C. §§ 1391(a), 1391(b) and 1400(b). This opinion constitutes the Court's findings of fact and conclusions of law.
Styrene is a "monovinyl aromatic" liquid compound; it contains both an aromatic, or cyclic, substituent and an aliphatic substituent called a "vinyl" group having two carbon atoms connected by a double bond. The presence of this aliphatic double bond makes styrene a chemically reactive monomer which can be polymerized by heat or the addition of a catalyst to form homopolystyrene which has a clear or "crystal" appearance. This so-called "crystal polystyrene" can be molded to form clear plastic products having many desirable properties, such as good moldability, an attractive surface gloss, and good dimensional stability. Unfortunately, crystal polystyrene products suffer from relatively poor resistance to fracture under slight pressure. This characteristic detracts from the use of crystal polystyrene in certain applications and makes it wholly unsuitable for many others.
It has long been known that the impact resistance of crystal polystyrene may be improved by adding a small amount of a rubbery material to the styrene either before or after its polymerization. These "rubber toughened" materials are referred to as impact styrene polymer compositions, high impact polystyrene compositions (HIPS), or simply "impact polystyrene," and are currently used to make hundreds of items ranging from TV cabinets to refrigerator door linings.
Concerted efforts were made in the 1940's to commercialize impact styrene polymer compositions for wider end use applications. The early compositions were made either by dissolving a rubbery matter in styrene monomer and polymerizing the resulting mass, or by simple mechanical blending of the polystyrene and the rubbery material. These manufacturing techniques were well known by 1958 and are very similar to those used today.
In the early 1950's, Amos and his co-workers at the Dow Chemical Company ("Dow") added a step to the process by "agitating" or stirring the solution of rubbery material in styrene monomer. Agitation was shown to cure the early defect of large insoluble gels in the end products.2 This was the last significant change in the process; the focus of the industry after 1954 was on improving the compositions themselves by the substitution of new rubbers.
The prevailing rubber used by the mid-1950's was a styrene-butadiene type rubber, "SBR", which consisted of about 75% butadiene and 25% styrene.3 In 1956, "stereo-specific polymerization catalysts," invented by Karl Ziegler, were proved useful in the preparation of "stereoregulated" or "stereospecific" polybutadiene rubbers. These new catalysts made it possible to alter polybutadiene by directing and changing its microstructure. Among the many possibilities which resulted was the "high cis, low vinyl polybutadiene" rubber which was later used to make compositions encompassed by the claims of the patents in suit. "Vinyl" refers to the presence of 1,2-addition butadiene polymer units (called vinyl groups) in which only the first and second carbon atoms of the monomer form the polymer chain backbone, and the third and fourth carbons are in side chains:
"Cis" refers to the presence of Cis 1,4-polybutadiene polymer units, in which the first and fourth carbon atoms are disposed on the same side of a line joining the second and third carbon atoms:
The presence of these particular molecular configurations in quantities of at least 25% cis 1,4-butadiene, and not more than approximately 10% 1,2-addition butadiene, constitutes a "high cis, low vinyl polybutadiene" for purposes of this Opinion.
High cis, low vinyl polybutadiene first became known to the public in 1956 by reference made in a Belgian patent issued to Goodrich Gulf. In 1957, several other foreign patents issued, and an article was published by Short, Kraus and Thornton of the Phillips Rubber Co. ("the Short article"), extolling the virtues of the new material. By 1957, stereospecific rubbers had been sufficiently studied and evaluated that they were being recommended as a substitute for natural rubber in certain applications.
About this time, an effort was made in the industry to standardize the impact strength specification for various grades of impact polystyrene. Impact strength was the first property selected, evidently because it represents the most significant improvement over crystal polystyrene. Indeed, this is the property which enabled styrene polymer compositions to be used for a much larger number of products. The Izod impact test, which had been used since the 1920's to measure fracture resistance, was selected by the industry in 1956-574 to establish representative values for crystal polystyrene and three grades of impact polystyrene (medium, high and super high impact polystyrene). For compositions made using the same type of rubber, the principal difference among the grades of impact polystyrene is determined by the amount of a rubber used in making the composition. The Izod impact strengths provided by high impact styrene polymer compositions made using about 6% SBR rubber were generally about 1 ft-lb/in. notch or less. This is contrasted with crystal polystyrene which has an Izod impact strength of about 0.3 ft-lb/in. notch.
In late March, 1958, Mr. Heinig of AHC found a box on his desk. Based on a label and the feel of the material, he concluded that it contained a rubber composition from the Phillips Petroleum Company. While the label contained the words "cis 1,4 polybutadiene", he did not know its microstructure. The box had been left by a Phillips' salesperson who had earlier suggested that his company's new stereospecific rubber should be tried in making impact polystyrene.5 The material was ultimately determined to be a high cis, low vinyl polybutadiene produced by Phillips.
Heinig went immediately to Westphal and instructed him to make impact polystyrene using this material. In April, 1958, Westphal polymerized three specimens of impact polystyrene: one using the Phillips' polybutadiene at a 6% level, one using a mixture of 3% Phillips' polybutadiene and 3% SBR 1006, and a "control" specimen using 6% SBR 1006. The three interpolymers were prepared using AHC's then current process of producing impact polystyrene which involved the sequential addition of two specific catalysts. The first catalyst added was Lupersol # 7 (75% tertiary butyl peracetate). Somewhat later in the polymerization cycle, a second catalyst addition was made, this time with a mixture of Lupersol # 7 and a dissimilar catalyst, di-tertiary butyl peroxide.
The two products made using the Phillips' rubber were described by Westphal and Heinig in their April 16, 1958 Memorandum of Invention to exhibit two "disadvantages": "poor color" and a "slightly slower rate of polymerization," and one advantage: good impact strength. These are the only advantages or disadvantages disclosed in writing by Westphal and Heinig in their initial Memorandum of Invention in the laboratory records; or in their subsequent memorandum to Leon Horne, then AHC's in-house patent counsel. There was no reference (comparative or otherwise) in any document prepared in April or May 1958 to the properties of creep yield or gloss. At trial, Mr. Heinig recalled that the gloss of the two products made using the Phillips' rubber was about the same as the gloss of the SBR-based control.
Some additional work was done by AHC during the summer of 1958, when Westphal polymerized three additional impact polystyrene specimens using Phillips' stereospecific rubber (with its unknown microstructure) at the 2%, 4% and 10% levels. During this time there was substantial correspondence between Mr. Heinig, Dr. Finestone, Heinig's supervisor, and Mr. Zallen, AHC's outside patent counsel, who was drafting the first patent application. To define the scope of the "invention" for Mr. Zallen, Heinig and Westphal generalized from a single stereospecific polybutadiene data point. They assumed that the Phillips' rubber must be one of the stereospecific polybutadienes discussed in the Short article and used that article to predict the cis content range over which stereospecific polybutadiene would enhance the impact strength of polystyrene. Specifically, they obtained the...
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