FRICTION DIV. PRODUCTS v. EI DU PONT de NEMOURS, Civ. A. No. 84-218-JRR.

• Decision Date: 25 August 1988
• Docket Number: Civ. A. No. 84-218-JRR.
• Citation: 693 F. Supp. 114
• Court: U.S. District Court — District of Delaware
• Parties: FRICTION DIVISION PRODUCTS, INC., Plaintiff, v. E.I. Du PONT de NEMOURS & COMPANY, INCORPORATED, Defendant.

693 F. Supp. 114

FRICTION DIVISION PRODUCTS, INC., Plaintiff, v. E.I. Du PONT de NEMOURS & COMPANY, INCORPORATED, Defendant.

Civ. A. No. 84-218-JRR.

United States District Court, D. Delaware.

August 25, 1988.

COPYRIGHT MATERIAL OMITTED

Samuel V. Abramo of Abramo & Abramo, Wilmington, Del. (Steven Kreiss, of Wigman & Cohen, Arlington, Va., John S. Child, Jr. of Synnesvedt & Lechner, Philadelphia, Pa., and John S. Munday, Paoli, Pa., of counsel), for plaintiff.

Jack B. Blumenfeld, of Morris, Nichols, Arsht & Tunnell, Wilmington, Del. (Robert C. Kline, and Earl L. Handley, Legal Dept., E.I. Du Pont de Nemours & Company, Wilmington, Del. and Lawrence F. Scinto, and Lawrence A. Stahl, of Fitzpatrick, Cella, Harper & Scinto, New York City, of counsel), for defendant.

OPINION

ROTH, District Judge.

I. INTRODUCTION.

A. The Nature of the Suit.

This case is a patent infringement action now before the Court for the second time on defendant's motions for summary judgment. Since the filing of defendant's motions, plaintiff has also filed a cross-motion for summary judgment. Plaintiff is Friction Division Products (FDP), a manufacturer of friction products such as disc brake pads and drum brake linings. FDP is one of the larger suppliers of original equipment brakes. Defendant is E.I. DuPont de Nemours & Company (DuPont). DuPont manufactures and sells aramid fibers, under the trademark "Kevlar," in various forms (e.g., continuous filament, cut fiber, and pulp) for a variety of end uses, including friction products.

FDP charges DuPont with infringing and inducing others to infringe United States Letters Patent No. 4,374,211 ('211 patent). DuPont denies infringement, asserts the invalidity of the '211 patent in view of the prior art, and charges FDP with inequitable conduct in its procurement. By counterclaim, DuPont seeks a declaratory judgment that the '211 patent is invalid, not enforceable and not infringed.

The '211 patent arises from the search in the 1970's for a replacement for asbestos in the manufacture of friction products. Asbestos fiber had been widely used as an effective friction material. It added to tensile strength, was relatively inexpensive, and was easily preformed into the intermediate product used to form the shape and size of the end product. In response, however, to the awareness of the health hazards associated with asbestos, the industry began looking for a replacement material. An important goal in the search for a substitute was to find a composition which would give structural integrity or "green strength" to the preforms and thereby permit the continued use of the existing equipment and techniques which were being employed in the manufacture of asbestos-containing friction materials.

In 1972, DuPont commercialized Kevlar, a synthetic aramid. Kevlar in its fiber form was used experimentally, as early as 1976, as a replacement for asbestos. Kevlar pulp, a very short, highly fibrillated form of Kevlar fiber, was later developed and was found to eliminate the clumping problem that occurred when Kevlar fibers were mixed. On November 1, 1979, two DuPont scientists, Drs. Loken and Merriman, visited FDP and met with Philip Dougherty and John Gallagher, the named inventors of the '211 patent. At that meeting, Loken and Merriman made a presentation to FDP on Kevlar fiber and pulp and recommended their use in non-asbestos friction materials. Dr. Loken later on April 15, 1980, presented a paper, entitled "Asbestos Free Brakes and Dry Clutches Reinforced with KEVLAR Aramid Fiber" (Loken Paper), at a Society of Automotive Engineers conference.¹ The Loken paper taught, among other things, that "Kevlar pulp can also be used to reinforce wet and dry friction mixes. The pulp knits well and effectively prevents crack propagation, increasing the toughness of the mix." Friction Division Products, Inc. v. E.I. DuPont de Nemours & Co., 658 F.Supp. 998, 1008 (D.Del.1987) (Friction I). In addition, in February, 1980, DuPont had published in the Research Disclosure Journal an article, entitled "Manufacture and Applications of Pulp of Kevlar Aramid Fiber." This publication disclosed the uniform and easy dispersibility of Kevlar pulp. A1390.²

On September 25, 1981, FDP filed its application for the '211 patent. The abstract of the '211 patent states:

The addition of aramid polymer pulp fiber to non-asbestos type friction material compositions results in a marked improvement in the flexural strength and structural integrity of preforms used in the manufacture of friction elements. The consequent handling characteristics of the preform lead to significant improvements in ease of manufacturing of the friction element.

A1274. The '211 patent contains 40 claims which are grouped into several categories:

(1) generic claims (Nos. 1-4, 18-26, 30-34);

(2) organic non-asbestos claims (Nos. 8-12, 28 and 36);

(3) semi-metallic claims (Nos. 5-7, 27 and 35); and

(4) hydrocarbon cold forming claims (Nos. 12-17, 29 and 27).

The present action was brought in April, 1984. Following the completion of discovery, DuPont filed its original motion for summary judgment of invalidity of all asserted claims of the '211 patent in April, 1986. This Court in Friction I granted DuPont's motion with respect to the generic and organic claims, holding that they were invalid under 35 U.S.C. § 102(b). We did not in Friction I fully adjudicate the motion with respect to the semi-metallic claims because FDP had amended the alleged invention date and scope of those claims during briefing.

Claims 5-7 of the '211 patent comprise the semi-metallic composition claims. These claims are dependent and are set forth below with relevant references:

1. A non-asbestos type friction material composition suitable for use as a friction element consisting essentially of a thermosetting binder, a fibrous reinforcing material, and an effective amount of an aramid polymer pulp fiber to result in good structural integrity of a preform manufactured from said friction material.

. . . . .

5. The composition of claim 2, wherein: said non-asbestos type friction material is semi-metallic material.

6. The composition of claim 5, wherein: said semi-metallic material contains phenolic resin, carbonaceous particles, non-asbestos fibers, ceramic powders, and metal powder.

7. The composition of claim 6, wherein: aid semi-metallic material comprises

from 4 to 13 wt % of phenolic resin,

from 15 to 40 wt % of carbonaceous particles,

from 0 to 25 wt % of non-asbestos fibers,

from 2 to 10 wt % of ceramic powder and

from 15 to 40 wt % of metal powder

Claim 27 and 35 are the semi-metallic method claims and are set forth below with relevant references:

23. A method of making a preform of a non-asbestos type friction material, comprising: forming a mixture of a thermosetting binder, fibrous reinforcing material and an effective amount of an aramid polymer pulp fiber to result in good structural integrity of said preform and compressing said mixture to form a preform.

25. The method of claim 24, wherein: said aramid polymer pulp fiber is included in an effective amount up to 15% by wt based upon the total weight of all other ingredients.

. . . . .

27. The method of claim 25, wherein: said non-asbestos type friction material is semi-metallic material.

. . . . .

30. In a method of manufacturing a friction element which includes the steps of forming a mixture of a friction material composition, compressing said mixture to form a preform, curing said preform at an elevated temperature, and forming a friction element from said cured preform, wherein the improvement comprises including an effective amount of aramid polymer pulp fiber to result in good strutural integrity of the preform.

. . . . .

34. The method of claim 33, wherein: said aramid polymer pulp fiber is included in an amount from 0.5 to 10% by weight based upon the total weight of all other ingredients.

35. The method of claim 34, wherein: said non-asbestos type friction material is semi-metallic material.

FDP has vacillated as to the scope and invention date of the semi-metallic claims.³ In a supplemental response to Interrogatory No. 1, dated January 23, 1985, Dougherty, FDP's president and a named inventor of the '211 patent, had stated that the semi-metallic claims were conceived from about April 1 to 13, 1981, and were reduced to practice on or about April 14, 1981.⁴ A240-41. DuPont filed its first motion for summary judgment on April 14, 1986, based on the April, 1981, invention date. On April 15, 1986, the day after DuPont filed its summary judgment motion, FDP filed a new supplemental answer to Interrogatory No. 1. A1421. In this response FDP represented that the conception date and date of reduction to practice of the semi-metallic claims took place between March to August 1980. DuPont alleged that the change in date was in response to its showing in its summary judgment motion that the work of Nuturn prior to April, 1981, anticipated the '211 patent. Transcript, June 20, 1986, at 12.

FDP responded that the invention date was not changed to preclude anticipation by Nuturn, but instead was revised when it was discovered that certain FDP experiments would support an earlier invention date. Declaration of John S. Child at A1883-84 (former FDP counsel who assisted in the preparation of the April 15, 1986, supplemental response to Interrogatory No. 1). FDP claimed that experiments by two of its employees, Vearling and Tretina, supported the 1980 invention date for the semi-metallic claims. Vearling Declaration at A1496. The Vearling experiment appears in his notebook with the date of June 10, 1980. The Tretina experiment is dated June 5, 1980. A1740 and 1741. Given these dates, FDP now asserts the March-August, 1980, invention period on the theory that the conception date of the semi-metallic claims could have been as early as March, 1980, when FDP was experimenting heavily with Kevlar pulp. Transcript, June 20,...