Eastman Kodak Co. v. EI DuPont de Nemours & Co.

• Decision Date: 11 February 1969
• Docket Number: Civ. A. No. 6038.
• Citation: 298 F. Supp. 718
• Parties: EASTMAN KODAK COMPANY v. E. I. DuPONT de NEMOURS & COMPANY, Inc.
• Court: U.S. District Court — Eastern District of Tennessee

298 F. Supp. 718

EASTMAN KODAK COMPANY v. E. I. DuPONT de NEMOURS & COMPANY, Inc.

Civ. A. No. 6038.

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

February 11, 1969.

Francis T. Carr, Douglas G. Brace and Edward J. Handler, New York City, Jackson C. Kramer, Knoxville, Tenn., George W. Petersen, Rochester, N. Y., for plaintiff.

Dexter N. Shaw, Gordon S. Rogers, Philadelphia, Pa., J. W. Baker, Knoxville, Tenn., C. Harold Herr, John E. Dull, Wilmington, Del., for defendant.

MEMORANDUM

ROBERT L. TAYLOR, Chief Judge.

This is a patent case involving novelty yarns. The action was filed under Title 35 U.S.C. Section 146. The trial was protracted, extending over a period of five weeks and two days. Testimony and argument consisted of 4,888 pages, and 360 exhibits were filed.

Plaintiff, Eastman Kodak Company, hereinafter sometimes referred to as Eastman, seeks an order of the Court directing the Commissioner of Patents to issue a patent to plaintiff. Eastman owns a patent application.

Defendant, E. I. DuPont de Nemours & Company, Inc., hereinafter sometimes referred to as DuPont, owns U. S. Patent No. 2,985,995 (hereinafter called '995) which was granted on May 30, 1961 based on application SN68130 filed on November 8, 1960 by William Walter Bunting and Thomas Larsen Nelson, who claim the benefit of the filing date of an earlier application SN752451 filed August 1, 1958, hereinafter sometimes called Bunting parent application.

Plaintiff is the assignee of U. S. Patent Application SN75396 filed on December 12, 1960 by Richard F. Dyer, as well as a predecessor application SN400,544 of Dyer filed on December 28, 1953, hereinafter sometimes called Dyer's parent application. Dyer filed his application in 1953 for a patent on the product and process of his 1952 work. The application disclosed two types of apparatus; one, the Figure 8 machine, which produces intermittently bulked yarn by an oscillating reciprocal guide which governs the rate of yarn fed to the jet; the other worked by variable speed rolls. The application was involved immediately in an interference with a Breen patent on the priority of invention of continuously bulked yarn and subsequently on the priority regarding intermittently bulked yarn. Both interferences were decided adversely to the Dyer application.

Plaintiff claims that Dyer made the invention of the counts (claims) at issue before Bunting and Nelson. This action was preceded by Patent Interference No. 93581 involving the Bunting and Nelson patent and Dyer's application, Serial No. 75,396 filed on December 12, 1960.

Count 1 (Claim 1), which is typical, of the Bunting and Nelson patent reads as follows:

"A compact interlaced multifilament textile yarn essentially consisting of closely adjacent continuous filaments free from ring-like or other filament loops, the filaments being randomly intermingled with adjacent filaments and groups of filaments along the length of the yarn to maintain the unity of the yarn by frictional constraint between the filaments, the yarn having a coherency factor of at least 2.5 when tested in the absence of adhesive and at zero yarn bundle twist by the hook-drop test."

It is to be noted that this count or claim defines the yarn as a compact, interlaced and loop-free yarn which has a coherency so that it can be used as a twist substitute.

The ultimate issue is whether Dyer's 1953 application covers any of the claims in Patent No. '995. That question depends on whether the 1953 application is a constructive reduction to practice of the invention described in the counts in interference. As bearing on what the application disclosed, the Court considers whether Dyer reduced his claimed invention to actual practice in 1952 by making the yarn which is referred to in the record as the Stevens "head-end" yarn.

A pre-trial order was filed, following the pre-trial conference, which contains eighteen so-called factual issues and the same number of legal issues, all of which appear to be subsidiary to the aforementioned issue.

Dyer's 1960 application disclosed the invention, but it was materially different from his 1953 application. Eastman's position before this Court has been that unless the 1953 application discloses the invention, the Court could not validly order a patent issue to Eastman. Before the Patent Office Dyer relied solely on the language of the 1953 application; and without any testimony being given the Board of Patent Interferences found on May 16, 1967 that the 1953 Dyer application failed to disclose any conception of the invention contained in the '995 patent. If this finding is correct, Eastman cannot prevail in this action.

With respect to the issues presented to the Board of Patent Interferences and decided adversely to plaintiff, the burden of proof is upon plaintiff. This burden is a heavy one and requires evidence that "carries thorough conviction `that the Patent Office decision was in error.'" Morgan v. Daniels, 153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 667; Aloe Creme Laboratories, Inc. v. Texas Pharmacal Co., 335 F.2d 72 (5 Cir.); TVA v. Monsanto Chemical Co., 383 F. 2d 973 (5 Cir.).

As to issues neither presented nor decided by the Board of Patent Interferences, plaintiff is only required to prove its case by a preponderance of evidence. TVA v. Monsanto Chemical Co., supra.

Theories of Plaintiff:

In 1952, Dyer prepared at the request of Management a yarn which he called an intermittently lofted yarn which was sent to J. P. Stevens Company, Inc. in North Carolina, hereinafter called Stevens, with which Eastman had a joint development program for preparation of novelty fabrics of different types. The purpose of the cooperative program was to find profitable lines of yarn development for Eastman and to give Stevens a source of new and better yarns that it could use for introducing new fabrics to the industry. Novelty yarns are those which vary in some characteristic along the length of the yarn with the result that when woven into a fabric unusual and different visual effects are caused.

Intending to create a novelty yarn for the development program, Dyer constructed a relatively simple apparatus which consists of passing a yarn through an air jet which agitates the filaments of the yarn in such a way that the filaments may or may not be permanently rearranged. By means of a moving yarn guide Dyer increased or decreased the speed at which the yarn entered the jet. The process which he used produced a yarn which had alternating segments of lofted and non-lofted yarn. Lofting imparts a high density of loops that are formed by filaments bending back on themselves and protruding from the main yarn bundle with a resultant increase in yarn size, or bulk, Eastman contends that the non-lofted portions are the loop-free, compact, coherent yarn of the '995 patent and that the manufacture of that yarn in 1952 was an actual reduction to practice of the invention.

Plaintiff says that Dyer's 1953 application disclosed three yarns, the intermittently lofted yarn, the lofted segments, and the non-lofted segments. Dyer claims that the language is sufficiently clear that a person skilled in the art could learn how to make the yarn of the '995 patent by reading his application. He says that it defines the essential process variables which are the following: passing the yarn through an air jet, maintaining equal rates of yarn feed to the jet and yarn take-up from the jet, and maintenance of positive tension on the yarn. Eastman contends that by using the essential process variables and a variable speed roll apparatus described briefly in the 1953 application, one skilled in the art could make an unlofted yarn extending indefinitely without insertion of the lofted segments which were characteristic of the yarn Dyer sent to Stevens.

Finally, plaintiff says that DuPont has marked with the '995 patent number intermittently lofted yarns, so-called "slub" yarns, which are similar in nature to Dyer's intermittently lofted yarns. Eastman contends that DuPont should not be allowed to take the inconsistent position that Dyer's intermittently lofted yarn does not come within the '995 patent claims.

Theories of Defendant:

Defendant contends that Claim 1 of the Bunting patent requires that there be a compact, interlaced multifilament yarn essentially consisting of "closely adjacent continuous filaments free from ring-like or other filament loops," and that the quoted language excluded any yarn which has loops, whether those loops be continuous or whether they be in a yarn with alternate sections of unlooped yarn.

The Patent Office noted that loopy and intermittently lofted yarns were part of the prior patented art and cited the Breen Patent No. 2783609, which at column 9, line 68, reads as follows:

"* * * Intermittent impulsing of the multifilament being processed can be used to produce a novelty yarn having alternating smooth lengths and bulked regions produced according to the described process."

That same Breen patent in an earlier interference was awarded priority over Dyer's 1953 application with respect to intermittently lofted yarns. The Patent Office considered that the 1953 Dyer application claimed an intermittently lofted yarn which by definition contained loops and could not fall within the Bunting and Nelson claims which specified freedom from loops.

As further proof that the Patent Office was correct in its several holdings that the Dyer application was not a constructive reduction to practice of the '995 yarn, defendant says that Dyer does not sufficiently disclose a process by which one skilled in the art could make the product of the invention.

Defendant contends that finding a twist substitute was a long-existing problem in the textile industry and in 1956 Bunting and Nelson were assigned to the task of solving the problem and after about two years of work, in May 1958, made the invention at issue. Such invention provides a yarn that has...