Adco Products, Inc. v. Carlisle Syntec Inc., Civ.A. 99-359-RRM.
| Citation | 110 F.Supp.2d 276 |
| Decision Date | 11 August 2000 |
| Docket Number | No. Civ.A. 99-359-RRM.,Civ.A. 99-359-RRM. |
| Parties | ADCO PRODUCTS, INC., Plaintiff, v. CARLISLE SYNTEC INCORPORATED, Defendant. |
| Court | U.S. District Court — District of Delaware |
Richard K. Herrmann, Mary B. Matterer, Blank Rome Comisky & McCauley LLP, Wilmington, DE, Robert G. Krupka, Kirkland & Ellis, Los Angeles, CA, Sarah O. Slover, Clifford E. Wilkins, Jr., Maxine Y. Graham, Kirkland & Ellis, New York City, for plaintiff.
Richard D. Kirk, Morris, James, Hitchens & Williams LLP, Wilmington, DE, R. Terrance Rader, James F. Kamp, Rader, Fishman & Grauer PLLC, Bloomfield Hills, MI, for defendant.
This is a patent case. Plaintiff Adco Products, Inc. is a Delaware corporation with its principal place of business in Raleigh, North Carolina. Adco owns United States Patent No. 5,242,727 (the '727 patent). Defendant Carlisle Syntec Incorporated is a Delaware corporation with its principal place of business in Carlisle, Pennsylvania.
On June 9, 1999, Adco filed the complaint in this action, which it amended on June 11, 1999. Adco alleges that Carlisle has infringed, induced infringement of, or contributorily infringed the '727 patent. Adco seeks injunctive relief, and an award of actual damages, punitive damages, costs, and fees.
On July 6, 1999, Carlisle answered the complaint, denying infringement, asserting the affirmative defenses that the '727 is invalid and that Adco is estopped from asserting its claims, and counterclaiming for a judgment of invalidity. On July 20, 2000, pursuant to Fed.R.Civ.P. 15(b), the court granted Carlisle's motion for leave to amend its pleadings to assert the affirmative defense and counterclaim that the '727 patent is unenforceable due to inequitable conduct.
This case is scheduled for a fourteen day jury trial beginning September 11, 2000.
On April 14, 2000, Carlisle moved for summary judgment of noninfringement, invalidity, unenforceability, and no willful infringement of the '727 patent. The issues raised by Carlisle's motions include whether the priority date of the dispute should be governed by a continuation-in-part application filed by Adco; whether Adco's sales of products to Carlisle trigger the "on-sale bar"; whether a chemical constituent of Carlisle's accused products falls within the scope of the patent; and whether Adco intentionally misled the Patent and Trademark Office during the prosecution of the '727 patent by withholding information about its prior commercial products.
On July 20, 2000, the court held a trial in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), to construe disputed claims of the '727 patent. On the same day, the court heard oral argument on Carlisle's summary judgment motions. This is the court's construction of those disputed claims and its decision on the pending motions.
I. FACTUAL AND PROCEDURAL BACKGROUND
The court draws the following facts from the '727 patent, its prosecution history, and the affidavits and documents submitted by the parties.
The patent at issue relates to adhesives used for creating watertight seams between sheets of rubbery roofing material. Carlisle manufactures and sells roofing systems which include large rubber roofing membranes made from a material known as ethylene-propylene-nonconjugated diene terpolymer (EPDM). The membranes must be overlapped and spliced together with adhesives to form a continuous, water-tight sheet.
EPDM membranes are wound into rolls after they are manufactured. Tension during the winding process may cause the EPDM to expand slightly. The membranes are commonly unrolled onto a roof with a 5-inch overlap between adjacent membranes. After installation, the EPDM shrinks somewhat and recovers to its original size. Environmental conditions may cause the membranes to further contract. If the adhesive material used to join adjacent EPDM membranes is not sufficiently strong, the shrinkage of the membranes may pull the seams apart.
Adhesives contain strands of molecules that are chemically linked together in what are called polymer chains. These polymer chains provide strength and flexibility to the adhesive. Adhesives may be either "uncured" or "cured" at the time of installation. The term "uncured" refers to the absence of chemical bonds between the polymer chains.
The term "cure," also known as "cross-linking" or "vulcanization," refers to the formation of bonds between unsaturated hydrocarbon molecules in opposing polymer chains. These bonds physically link the polymer chains together, forming a stable, three-dimensional polymer network. One of several ways to cure an uncured adhesive is to expose it to high temperatures. In general, as the adhesive cures, it becomes stronger.
In the mid-1980s, several different kinds of adhesive materials were used to seam EPDM membranes. One technique, as disclosed in U.S. Patent No. 4,472,119 issued to Donald Close on February 28, 1986, involves dissolving an uncured liquid adhesive in a solvent, and applying the adhesive in liquid form to the membranes. Uncured liquid adhesives have adequate strength properties once cured. However, the curing process for these liquid adhesives often takes several days. It has been found that environmental conditions, and particularly temperature swings, can cause the EPDM membranes to shrink and pull apart before the adhesive fully cures.
Another method for seaming EPDM membranes involves the use of an unvulcanized tape. The unvulcanized tape is introduced into the overlapped portion of the membranes, and a "vulcanizing press" is passed over the overlapped portions to heat the tape, apply pressure, and induce vulcanization. This method has been found to be undesirable because it requires the use of a vulcanizing press and is a relatively slow process.
Brian Briddell and Michael Hubbard were employed by Adco in the mid-1980s and early 1990s. The challenge they faced was to design an adhesive material that could seam EPDM membranes quickly, with the requisite strength to prevent shrinkage of the membranes and concomitant rupture of seams. Briddell and Hubbard used three primary ingredients in the various adhesive compositions they developed: (1) rubbery polymer components; (2) tackifiers; and (3) an accelerator/cure package.
The rubbery polymer components consist of materials such as EPDM and halogenated butyl rubber. In some of Adco's formulations, the rubbery polymer components also include "rubbery polymer diluents" such as polyisobutylene, that serve to dilute the rubbery polymer and reduce its viscosity, making the rubber more flexible.
Tackifiers are compounds that give the adhesive composition its softness and high initial adhesivity, or "grab." The accelerator/cure package contains chemical compounds such as sulfur that induce the curing reaction and that promote rapid curing.
In the mid-1980s, Hubbard set out to develop a cured adhesive tape for EPDM roofing installations that would provide sufficient initial tackiness and long-term strength. Hubbard found that curing the product prior to installation increased the strength of the tape; however, this had the adverse effect of reducing the tackiness of the material, which frustrated, in particular, cold weather installations. In approximately 1985, Hubbard developed a formulation designated SP-303, which had a blend of two rubbery polymer components (EPDM and halogenated butyl rubber), a compatible tackifier (polybutene), and an accelerator/cure package. He employed a ratio of rubbery polymer to tackifier of approximately 0.3. Adco began selling its SP-303 formulation to Carlisle in approximately 1985.
In the late 1980s, Hubbard and Briddell developed an adhesive designated SP-501 to improve the tack level of the tape. SP-501 uses polyisobutylene as a rubbery polymer diluent as a component of the rubbery polymer. In the Spring and Summer of 1989, Adco employed in its SP-501 formulation a ratio of rubbery polymer to tackifier of approximately 0.4. On April 19, 1989, Briddell sent a memorandum to J.G. Premo, one of the in-house attorneys at Adco's parent company, Nalco Chemical Co., regarding the filing of a patent application for a new roofing tape. Approximately two weeks later, Briddell sent a recipe for the SP-501 formulation to Anthony Cupoli, another in-house patent attorney, and included therewith product data on the SP-303 tape.
On April 20, 1989, Carlisle invited Adco to make an offer to sell it the SP-501 tape. At some point in the parties' discussions, Carlisle requested assurances from Adco that the SP-501 tape did not infringe a number of patents, including U.S. Patent No. 4,558,637 issued on March 5, 1984 to Jessie Chiu and assigned to Rockor, Inc.
Beginning in June 1989, Briddell, Cupoli, Premo and other Adco personnel exchanged a series of communications regarding potential infringement by Adco of the Rockor patents. After the commencement of this litigation, Briddell acknowledged during his deposition that Adco's decision to seek patent protection for its adhesive tapes may have arisen, at least in part, in response to its customers' concerns that the SP-501 tape may have infringed the Rockor patents.
In late summer 1989, Firestone Tire & Rubber Company expressed an interest in purchasing adhesive tapes from Adco, but found that Adco's tapes lacked sufficient strength. Briddell and Hubbard began a series of experiments to introduce increased amounts of rubbery polymer in the tapes. The formulation sheets produced by Adco show that in October 1989, Adco developed adhesives employing ratios of rubbery polymer to tackifier ranging between 0.60 and 1.18. Briddell acknowledged during his deposition that during the time period from October to December 1989,...
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...cites a number of cases which hold that the actions here do not constitute undue delay. See, e.g., ADCO Prods., Inc. v. Carlisle Syntec Inc., 110 F.Supp.2d 276, 278 (D.Del.2000) (granting defendant's motion to add inequitable conduct claim on eve of Markman hearing, two months before trial)......