Dart Industries, Inc. v. EI du Pont de Nemours & Co.

• Decision Date: 04 October 1972
• Docket Number: No. 69 C 676.,69 C 676.
• Citation: 348 F. Supp. 1338
• Parties: DART INDUSTRIES, INC., Plaintiff, v. E. I. DU PONT DE NEMOURS AND COMPANY, Defendant.
• Court: U.S. District Court — Northern District of Illinois

348 F. Supp. 1338

DART INDUSTRIES, INC., Plaintiff, v. E. I. DU PONT DE NEMOURS AND COMPANY, Defendant.

No. 69 C 676.

United States District Court, N. D. Illinois, E.D.

October 4, 1972.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

George B. Newitt and D. D. Allegretti and Molinare, Allegretti, Newitt & Witcoff, Chicago, Ill., Thomas F. Reddy, Jr., Berj A. Terzian and Jonathan A. Marshall, and Pennie, Edmonds, Morton, Taylor & Adams, New York City, for plaintiff.

Melville C. Williams, Chicago, Ill., Earl L. Handley, Wilmington, Del., Ellis A. Ballard and Charles M. Chadd, Chicago, Ill., for defendant; Pope, Ballard, Shepard & Fowle, Chicago, Ill., of counsel.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

PERRY, District Judge.

FINDINGS OF FACT

I. NATURE OF THE ACTION

1. This is an action for infringement of United States Patent No. 2,877,501 which was duly and legally issued on an invention made by Rexford Bradt.

2. Plaintiff, Dart Industries, Inc., a Delaware corporation and owner of the Bradt patent, was known as Rexall Drug and Chemical Company prior to its change of name on April 22, 1969. Dart's Fiberfil Division manufactures and sells, inter alia, glass-reinforced thermoplastic molding compounds which are covered by one or more of the claims of the Bradt patent.

3. Defendant, E. I. DuPont de Nemours and Company, a Delaware corporation, has for a number of years manufactured and distributed various glass-reinforced thermoplastic molding compounds. DuPont has a regular and established place of business in Chicago, Illinois and has sold such injection molding compounds in this judicial district as well as elsewhere within the United States.

4. The Complaint was filed on March 28, 1969 and plaintiff's motion for leave to file an Amended Complaint was granted on April 17, 1969. On April 29, 1969 defendant answered the Amended Complaint and counterclaimed for a declaratory judgment, alleging that all of the claims of the Bradt patent were "invalid, void, and unenforceable and not infringed." Defendant's motion for leave to file an Amended Answer was granted on April 1, 1971. On April 12, 1971, plaintiff filed a Reply to the amended counterclaim of Defendant's Amended Answer to Amended Complaint, denying all of the material allegations set forth therein.

5. Plaintiff charges defendant with direct infringement of claims 1, 8, and 9 of the Bradt patent which cover the molding compound per se. Defendant's declaratory judgment counterclaim has put into issue all of the remaining claims.

II. THE BACKGROUND OF THE CONTROVERSY

6. The Bradt patent issued on March 17, 1959 but DuPont first acquired knowledge of the Bradt injection molding compound in December, 1954 (PX 215, Interrogatory 55), obtained a sample of such compound in about July, 1955 (PX 215, Interrogatory 58) and evaluated the Bradt patent twice during 1960 (PX 85, Interrogatory 111). Experimental quantities of DuPont's glass-reinforced Delrin were first produced in June, 1961 (CX 1, par. 6). This Delrin compound which is still being sold by DuPont is one of the accused products in this action (PX 5, PX 215; Interrogatory 2(d)).

7. During 1962, DuPont supplied substantial quantities of nylon resin to Fiberfil, Inc., then owner of the Bradt patent, for use in the manufacture of the Bradt compound (CX 1, par. 9). From this vantage point, DuPont assessed Fiberfil's growing business in contemplation of the manufacture of its own glass-reinforced injection molding compounds (T 926-927; CX 1, par. 7).

8. In July, 1963, shortly after DuPont commenced commercial distribution of its glass-reinforced Delrin compound, Fiberfil analyzed such compound and determined that it was covered by the claims of the Bradt patent (T 928, 931-932; PX 59, PX 60). Fiberfil so advised DuPont and offered a license under the Bradt patent (T 932-934; PX 61).

9. DuPont immediately initiated tests of its own which confirmed that the glass fibers in its Delrin compound did in fact "have alignment to a high degree" as was claimed in the Bradt patent (PX 61, PX 64). DuPont then entered into license negotiations and, at the same time, undertook further evaluations of the Bradt patent and its file history during which it considered the phenomenon of flow orientation of rod-like particles dispersed in liquids as a possible basis for invalidating the patent claims (T 939; PX 2, PX 64, PX 66).

10. On November 4, 1963, DuPont advised Fiberfil that although its glass-reinforced Delrin was covered by the claims of the Bradt patent, infringement of such claims could be avoided by the use of different extrusion techniques in the manufacture of the compound (T 945-946; PX 58). At that time, DuPont also requested that Fiberfil propose terms for a license (PX 58).

11. After consideration of the Fiberfil proposal, DuPont requested certain modifications and declined to take a license under the process claims of the Bradt patent because it produced its Delrin compound by a different method (T 948-949, 954-957; PX 70). The DuPont Plastics Department then submitted to the Patent Board a resolution seeking approval of the proposed license agreement with Fiberfil. In all, fifteen separate departments formally approved the resolution (PX 73).

12. The license was executed on April 6, 1964 (PX 75), and in April 1969, after the commencement of this action, DuPont voluntarily terminated the license. While the license was in effect, DuPont paid royalties to Fiberfil based upon the actual production of the glass-reinforced Delrin compound which is an accused product in the present litigation (T 975-978, 1365-1366; CX 1, par. 8).

III. THE BRADT PATENT

13. Product claims 1, 8 and 9 of the Bradt patent cover an injection molding granule containing about 15 to 60 percent by weight of glass filaments which extend generally parallel to each other along the longitudinal axis of the granule and which are coated with a thermoplastic molding composition. The glass orientation enables the provision of a molding compound which is readily feedable in any desired quantity into the hopper of a conventional molding machine and which is injection moldable into useful glass-reinforced articles having enhanced physical properties.

14. The Bradt patent complies with the provisions of 35 U.S.C. § 112 in setting forth the best mode of carrying out the claimed invention, both in the molding compound itself and in the process for making it.

15. Of the claims asserted in this action, claim 9 is the broadest in scope, principally because it does not require a sizing compound. Such sizing compound may be applied to the glass fibers before they are coated with a thermoplastic molding composition to enhance the bond between the thermoplastic resin and the filaments, thus serving further to increase the reinforcing effect of the glass in the final molded article. Claim 1 requires a "polymerized sizing compound" and claim 8 "a thermosetting plastic composition" as the sizing.

16. Patent claims are to be construed in the light of the specification and proceedings before the Patent Office should be considered in determining the scope of the claims. A patentee can choose his own terms and use them as he wishes so long as he remains consistent in their use and makes their meaning reasonably clear.

17. The distinguishing feature of the injection molding granule claimed in the Bradt patent is that it contains glass fibers which are oriented generally parallel to each other along a particular axis of the granule (T 630-631, 2223-2227; PX 2, p. 19, PX 40, PX 189). The expression "generally parallel", as used in the Bradt patent, denotes that the glass filaments are pointing in the same general direction; perfect parallelism in the geometric sense of the word is not required (T 648-650).

18. As originally filed, claim 1 recited that the glass filaments were "arranged generally alone one axis of the granule" (PX 2, p. 11, PX 42). From reading the patent specification, it is readily determined that such axis is the direction in which the impregnated glass roving strand was traveling before being cut up into granules (T 640). Just before the application was allowed, however, the patent examiner raised a formal objection to claim 1 because it failed to provide an adequate antecedent for the expression "axis of the granule" (PX 2, p. 122). In response to this formal objection, claim 1 was amended while still bringing out that the glass filaments extend generally parallel to each other longitudinally of the granule (PX 2, p. 122). Application claim 10 patent claim 8 and application claim 11 patent claim 9 were also subject to the same objection. Thus, in Claims 1, 8, and 9 of the Bradt patent, the term "longitudinally" specifies that the direction in which the filaments extend within the granule is the direction in which they had been aligned in the roving strand before it was chopped into granules (T 649-650).

19. The scope of a patent claim remains unaltered by an amendment which is made to correct a formal defect. Such claim is construed just as it was prior to the amendment.

20. The term "elongated" was introduced into the claims together with the expressions "generally parallel" and "extending longitudinally" in order to overcome the formal objection concerning the lack of a proper antecedent (T 641-642; PX 2, pp. 121-122, PX 42). This term serves only as the antecedent for "longitudinally" to aid in describing the particular direction in which the glass fibers extend and bears no relation to the geometry of the granule (T 641-645). Accordingly, claims 1, 8, and 9 of the Bradt patent are not limited to cover only molding granules which are longer than their diameter.

21. At trial, molding granules containing glass fibers which extend substantially the entire length of the granule were defined as "long fiber" compounds. Conversely, granules containing glass fibers which do not extend the entire length of the granule...