IN RE MULTIDISTRICT LITIGATION INVOLVING FROST PAT.

• Decision Date: 11 April 1975
• Docket Number: No. 46.,46.
• Citation: 398 F. Supp. 1353
• Parties: In re MULTIDISTRICT LITIGATION INVOLVING FROST PATENT.
• Court: U.S. District Court — District of Delaware

398 F. Supp. 1353

In re MULTIDISTRICT LITIGATION INVOLVING FROST PATENT.^*

No. 46.

United States District Court, D. Delaware.

April 11, 1975.

Arthur G. Connolly, Jr., and John R. Bowman, of Connolly, Bove & Lodge, Wilmington, Del., John T. Kelton, Herbert Blecker, Robert Kosinski, and Robert J. Eichelburg, of Watson, Leavenworth, Kelton & Taggart, New York City, and Frank C. Rote, Akron, Ohio, for The General Tire & Rubber Co.

David F. Anderson, of Potter, Anderson & Corroon, Wilmington, Del., Thomas F. Reddy, Jr. and Sidney Bresnick, of Pennie & Edmonds, New York City, for Reichhold Chemicals, Inc., in Civ. A. No. 3867.

C. Waggaman Berl, Jr., Wilmington, Del., John D. Foley, of Morgan, Finnegan, Pine, Foley & Lee, New York City, and Neal T. Levin, Morristown, N. J., for Diamond Shamrock Corp. in Civ. A. No. 3868.

Howard L. Williams, of Morris, James, Hitchens & Williams, Wilmington, Del., and Warren D. McPhee, of Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., for Upjohn Company in Civ. A. No. 3866 C. Walter Mortenson and Charles A. Weigel, Jr., of Mortenson & Weigel, Wilmington, Del.

John J. Mackiewicz, of Woodcock, Washburn, Kurtz & Mackiewicz, Philadelphia, Pa., and Jordon J. Driks, of Witco Chemical Company, New York City, for Isocyanate Products, Inc. and Murphy Body Works, Inc. in Civ. A. No. 3183.

Richard L. Sutton, William O. LaMotte, III, and Douglas E. Whitney, of Morris, Nichols Arsht & Tunnell, Wilmington, Del., James R. Sweeney, and J. Robert Stapleton, of Coffee & Sweeney, Chicago, Ill., for Jefferson Chemical Co., Inc. in Civ. A. No. 3910.

Clair John Killoran and Andrew G. T. Moore, II, of Killoran & Van Brunt, Wilmington, Del., W. Philip Churchill, and Paul C. Flattery, of Fish & Neave, New York City, and Gordon W. Hueschen, Kalamazoo, Mich., for Wyandotte Chemicals Corp. in Civ. A. Nos. 3944 and 4665.

David F. Anderson and William Poole, of Potter, Anderson & Corroon, Wilmington, Del., and John Boustead, of McLean, Morton & Boustead, New York City, for Olin Corp. in Civ. A. Nos. 3945 and 4688.

OPINION

WRIGHT, Senior District Judge.

This controversy involves Patent No. 3,072,582 (the Frost Patent), which is assigned to General Tire & Rubber Company (General), and is the subject of litigation in several United States District Courts.¹ Under the procedures provided by 28 U.S.C. § 1407, the Panel on Multidistrict Litigation transferred two of the cases filed elsewhere to this Court for the limited purpose of directing discovery and disposing of pretrial motions. The remaining case filed elsewhere was transferred to this District pursuant to 28 U.S.C. § 1404(a). Subsequently, the defendants in the suits transferred pursuant to § 1407 filed declaratory judgment actions in this District against General. Those declaratory judgment actions were then consolidated with the action transferred pursuant to § 1404(a) and the actions previously brought in this District, and a trial involving all of the parties was possible.

On December 19, 1972, this Court filed an unreported opinion and order denying a motion by four of the defendants² for summary judgment. That motion had urged that the patent involved in this litigation was invalid or unenforceable because of fraud on the Patent Office, i. e., because of improper conduct by the assignee General in the prosecution of the patent application. Although that motion was denied, this Court subsequently held, in a opinion reported at 178 U.S.P.Q. 391 (1973), that the issue of fraud was separable from the other issues and that a separate trial on that issue would be appropriate under Rule 42(b) Fed.R.Civ.P. That trial has now been held.

In its opinion denying summary judgment, this Court discussed in some detail the history of the prosecution of the Frost patent. In view of the fact that that opinion was not reported, much of that background will be repeated here.

THE INVENTION

The Frost patent is the result of work performed by Charles Frost, an employee of General. The patent claims a particular method of making polyether urethane foams,³ and also claims those foams so made. Polyurethane foams are a commercially successful product with a variety of uses. If the foams are formulated so as to be flexible, they are useful in applications such as cushions for upholstery. If they are formulated so as to be rigid, they find utility as thermal insulation. In addition to having a low thermal conductivity, the rigid type of polyurethane foam can be formed in place and lends structural support to the containers it insulates. Thus, rigid polyurethane foam is advantageously incorporated in refrigerators and in refrigerated trailers and railroad cars.

Polyurethanes are the product of a polymerization reaction whereby molecules having hydroxyl (OH) groups, called polyols, are joined through those groups with molecules having isocyanate groups (NCO). In one method of preparation, a polyol, a polyisocyanate, a so-called "cross linking agent", and a suitable reaction catalyst are mixed together in the presence of a gas-forming material, commonly called a "blowing agent". A reaction occurs whereby a urethane is produced, and the simultaneous formation of a gas causes the urethane to foam, the process being crudely analogous to the rising of bread from yeast-containing dough. Alternatively, some of these reagents can be mixed first, in the absence of a blowing agent, to form a "prepolymer". This prepolymer is subsequently blended with the remaining reagents and the blowing agent to react and form the foam. Accordingly, it is possible to prepare foams using either a single step (one-shot) or two-step method.⁴

The degree of rigidity of the foam depends to a large extent on the amount of cross linking⁵ present in the final product. The amount of cross linking can be controlled by the choice of the polyol and polyisocyanate used and can be further affected by the addition of certain materials called cross linking agents which form additional cross links.

The actual chemistry involved in making urethane foams was known at the time Frost made his invention and is not the subject of the Frost patent. Rather, the Frost patent is concerned with particular blowing agents, i. e., those additives in the process which form a gas and cause the urethane to expand into a cellular structure.

Prior to the Frost invention, one of the methods used to blow foams was to incorporate water into the reaction mixture along with isocyanate in excess of that needed to react with the polyol. The water and the excess of the isocyanate react to form two products: carbon dioxide gas, which acts as the blowing agent, and amines, which react with excess isocyanate to produce urea linkages, which act as cross linking agents. Apparently, this technique had certain disadvantages. One is that isocyanate is expensive. Further, in the preparation of flexible foams, the urea linkages make the product foam stiffer than desired.

Frost discovered that certain inert volatile materials would vaporize under the reaction conditions and overcome the disadvantages associated with the in situ production of carbon dioxide. Not all gas producing agents, however, were acceptable. Many materials cause the expansion of the foam before the polyurethane product has developed sufficiently to contain the gas. The gas will thus escape and cause a crust to form on the surface of the foam. Other agents produce commercially unacceptable foams because the foams shrink after the initial rise and, eventually, may even collapse.

The blowing agents of the Frost invention, which included the lower molecular weight alkanes and alkanes, halogen-substituted lower molecular weight alkanes, particularly certain halogen-substituted alkanes containing at least one atom of fluorine (a halogen) known by their tradename as "freons", and the lower molecular weight dialkyl ethers, avoided these problems.⁶ The boiling points of the Frost agents and the solubility of the agents in the reaction mixture were such that they did not vaporize until the polyurethane had formed to the extent needed to trap the gas.

HISTORY OF THE FROST PATENT

The route to obtain the patent in suit began on October 20, 1955, when Charles B. Frost filed an application (Serial Number 541,823) (the 823 or parent application) in the Patent Office describing and claiming a method of making polyurethane foams utilizing as blowing agents halogen-substituted alkanes.⁷ This application disclosed both polyester and polyether polyurethane foams⁸ in either rigid or flexible form. The working examples in the specification included water as part of the reaction mixture, although water was not specifically mentioned in any of the claims. The application, however, did imply that an excess of isocyanate could be present,⁹ apparently to provide enough isocyanate to react with water and form carbon dioxide which would aid in the blowing of the foam. In other words, carbon dioxide could act as an "auxiliary blowing agent".

This application met resistance in the Patent Office and on July 31, 1956, all the claims were rejected by the patent examiner as unpatentable over a combination of references. The claims were also rejected for numerous problems of form. For the purposes of this suit, the contents of this rejection and the response by the patent attorney prosecuting the case are not important. The same is true of the second rejection by the patent examiner on June 19, 1957, and the subsequent response by the applicant's attorney.

On June 24, 1958, the patent examiner again considered the claims in the application and for the third time rejected all of them. (DX-2 at 72-74). For the first time the examiner cited German Patent-schrift No. 860,109 to Dr. August Hochtlen (DX-5, hereinafter cited as Hochtlen). Hochtlen described a method for making synthetic sponges. In one of the examples (example 3), Hochtlen made a polyester urethane foam by reacting the reaction...