Cordant Technology, Inc. v. Alliant Techsystems Inc., Civ.A. 95-706-JJF.

• Decision Date: 26 March 1999
• Docket Number: No. Civ.A. 95-706-JJF.,Civ.A. 95-706-JJF.
• Citation: 45 F.Supp.2d 398
• Parties: CORDANT TECHNOLOGY, INC., Plaintiff, v. ALLIANT TECHSYSTEMS INC., and Hercules, Incorporated, Defendants.
• Court: U.S. District Court — District of Delaware

45 F.Supp.2d 398

CORDANT TECHNOLOGY, INC., Plaintiff, v. ALLIANT TECHSYSTEMS INC., and Hercules, Incorporated, Defendants.

No. Civ.A. 95-706-JJF.

United States District Court, D. Delaware.

March 26, 1999.

COPYRIGHT MATERIAL OMITTED

John G. Mulford, Theisen, Lank, Mulford & Goldberg, P.A., Wilmington, DE; of counsel: Carl G. Love, Lynn E. Eccleston, Michael R. Dzwonczyk, Pillsbury Madison & Sutro, New York City, for plaintiff.

William J. Marsden, Jr. and Joanne Ceballos, Potter, Anderson & Corroon, Wilmington, Delaware; of counsel: James Galbraith, Walter E. Hanley, Jr., Maria Luisa Palmese, and William G. James, II, Kenyon & Kenyon, New York City, for defendants.

OPINION

FARNAN, Chief Judge.

I. INTRODUCTION

This is an action for patent infringement. The Plaintiff, Thiokol Corporation,¹ is the owner of U.S. Patent Number 4,492,779, entitled "Aramid Polymer and Powder Filler Reinforced Elastomeric Composition for Use as a Rocket Motor Insulation," which issued January 8, 1985 (the "'779 patent"). (DTX 77). The Defendants are Hercules Incorporated and Alliant Techsystems Incorporated.² The Plaintiff charges that the Defendants have infringed and continue to infringe the '779 patent under 35 U.S.C. § 271. In response, the Defendants challenge the validity of the '779 patent under 35 U.S.C. §§ 102(b) and 103. The Court has jurisdiction over the subject matter of this patent dispute pursuant to 28 U.S.C. § 1338(a).

In January 1998, the Court held a bench trial of the liability issues in this action. Trial of all damages issues is deferred. The three principal issues tried were: (1) whether the Defendants have infringed claims 1, 13, 17, 18 and 19 of the '779 patent under the theory of the doctrine of equivalents;³ (2) whether the patent in suit is invalid under 35 U.S.C. § 102(b) because the invention was "on sale" or "in public use" more than one year before the filing date of the patent application; and (3) whether the patent in suit is invalid because the claimed invention would have been obvious to a person of ordinary skill in the art. For the reasons set forth below, the Court concludes that the '779 patent is invalid under 35 U.S.C. § 102(b) because the invention was "on sale" more than one year before the filing date of the patent application. The Court further concludes that, if the patent were valid, the Defendants' accused products would infringe under the theory of the doctrine of equivalents.

II. BACKGROUND

A. The '779 Patent

On December 7, 1981, U.S. Patent Application Serial Number 328,333 was filed in the U.S. Patent and Trademark Office (the "PTO"). The named inventors of the '333 patent application are Kenneth E. Junior and James D. Byrd. This application was later granted on January 8, 1985 as the '779 patent. The claims of the '779 patent are directed toward a method of insulating a solid propellant rocket motor employing an elastomeric composition which consists of a vulcanizable elastomeric component, aramid fibers and a powder filler component. Claim 1 states:

A process for insulating a solid propellant rocket motor, comprising the step of employing an essentially asbestos-free elastomeric composition as an insulating liner, said composition comprising:

A. from 1 to 40 percent by weight of aramid polymer fibers B. from 1 to 75 percent by weight of a powder filler selected from the group consisting of silica, iron oxide, carbon, milled glass, and ceramic clays, and

C. A vulcanizable elastomeric composition including:

(i) a vulcanizable elastomer, and

(ii) vulcanizing agents for said elastomer.

(DTX 77, col. 9, lines 9-22). Claim 13 is dependent from claim 1 and adds the limitation "wherein said vulcanizable elastomer is an ethylene-propylene diene monomer." (DTX 77, col. 10, lines 11-12). Claim 17 is also dependent from claim 1 and adds the limitation "wherein said powder filler is silica." (DTX 77, col. 10, lines 19-20). Independent claim 18 is similar to claim 1 and reads:

A process for insulating a solid propellant rocket motor, comprising the step of employing an essentially asbestos-free elastomeric composition as an insulating liner, said composition consisting essentially of:

A. from 1 to 40 percent by weight of aramid polymer fibers;

B. from 1 to 75 percent by weight of powder filler selected from the group consisting of silica, iron oxide, titanium oxide, carbon, milled glass, and ceramic clays; and

C. A vulcanizable elastomeric composition including

(i) a vulcanizing elastomer, and

(ii) vulcanizing agents for said elastomer.

(DTX 77, col. 10, lines 21-33). Claim 19 is dependent from claim 18 and limits the "powder filler" to silica. (DTX 77, col. 10, lines 34-35).

B. The Background of the '779 Patent

Solid propellant rocket motors are comprised of: (1) the case; (2) the insulation; (3) the propellant; (4) the nozzle; and (5) the igniter. As propellant burns, very high temperatures and high pressure gasses create a harsh, arduous environment within the chamber. The gasses exit through the nozzle, providing the thrust for the motor. (DTX 77, col. 1, lines 16-31; White 893-94). In order to protect the chamber from the hot, erosive propellant gases, an internal insulation is placed between the case and the propellant. The insulation provides thermal isolation and prevents heat transfer from direct exposure to the burning propellant and exhaust gases. (DTX 77, col. 1, lines 32-39; White 893-94).

The addition of fibers, such as asbestos, to insulation formulations has long been recognized to improve the insulation's resistance to erosion. (Moore 811-13). Environmental and health concerns associated with the use of asbestos led manufacturers to seek a replacement for asbestos-containing insulation. (McCauley 261). The Plaintiff's invention consists of the discovery that a combination of powder filler and aramid polymer fibers may be substituted for asbestos in elastomeric compositions suitable for use as rocket motor case insulation. (DTX 77, col. 2, lines 10-14).

C. The Accused Compositions

The Defendants' accused method of insulating solid propellant rocket motors employs insulations that have the designations 178 and 045. These insulations have been used in GEM motors supplied to McDonnell Douglas as strap-on boosters for the Delta II launch vehicle and Orion motors supplied to Orbital Sciences for the Pegasus and Taurus Launch vehicles. (White 894-95). The 178 insulation material was used in GEM motors until the early 1990's; thereafter, the 178 formulation was modified by deleting VANFRE (a minor processing aid), and the insulation materials became known as the 045 material. Currently, the 178 insulation formulation is not used in production GEM motors. The 045 insulation is presently used in production GEM, Orion and Titan motors for Delta, Pegasus, and Taurus Launch vehicles. (White 895-96).

D. The 0073 Contract

In September 1978, the Air Force awarded Contract No. F04611-78-C-0073 (the "0073 contract") to the Plaintiff's Huntsville Division. Under the 0073 contract, the Plaintiff was required to develop and deliver a "reduced smoke" rocket motor for the Sidewinder air-to-air missile. The motor is referred to as the "AIM-9L" or "MK36" motor. (DTX 10 at X3880044). The Plaintiff was compensated under the 0073 contract on a "cost plus fixed fee" basis, which meant that the Air Force and the Plaintiff reached an agreement on an initial estimate of what the project would cost the Plaintiff to complete, and then added a fixed fee, or profit, which the Plaintiff would receive upon its performance of the contract requirements. (McCauley 309-10). The Plaintiff's fee under the 0073 contract was $126,078. The fee was determined by taking 6.95 percent of the estimated costs of $1,813,293. (DTX 10 at X3880008).

The 0073 contract included a "Statement of Work" describing the requirements the Plaintiff had to meet in developing and qualifying the AIM-9L motor. In addition to developing the motor, the Plaintiff was required to conduct specified tests of the motor and its components at the Plaintiff's facility and deliver motors to the Air Force for its own testing and evaluation. (DTX 10 at X3880044).

The program was executed in two phases. In Phase I, the Plaintiff developed the motor and conducted "design verification tests." (DTX 10 at X3880044). The Plaintiff was also required to deliver to the Air Force seven inert motors and two motors which would be subject to "cookoff" testing. (DTX 10 at X3880010, X3880049-50). At the end of Phase I, the Plaintiff and the Air Force would review the design, and if the Air Force approved the design, the program could proceed to Phase II. (DTX 10 at X3880051).

Phase II of the contract required that the Plaintiff produce motors in accordance with a specified design for "Preliminary Flight Rating/Qualification" tests to be conducted by the Plaintiff and for flight tests, service life tests and hazard classification tests to be conducted by the Air Force. (DTX 10 at X3880051-52). The 0073 contract imposed extensive reporting requirements on the Plaintiff, including submission to the Air Force of Monthly Status Reports, describing the work done and the results of any tests conducted. (DTX 10 at X38800106-124). The Air Force, however, had no obligation to report to the Plaintiff the results of any testing conducted by the Air Force on the motors delivered by the Plaintiff. (McCauley 308-09).

During Phase I, the Plaintiff was required to commence a one-year accelerated aging study on the propellant, the insulation, and the bonds between the casing and insulation, the insulation and liner, and the liner and propellant. (DTX 10 at X3880049, 051; McCauley 278-79). The purpose of the accelerated aging study was to determine whether the motor could be expected to have a field life of a minimum of five years, and preferably ten years. (McCauley 256, 278-79). Originally, an asbestos-filled insulation designated TI-R300 was...