Nicofibers, Inc. v. Reichhold Chemicals, Inc.
| Decision Date | 27 May 1980 |
| Docket Number | NO. C-2-77-1.,C-2-77-1. |
| Citation | 505 F. Supp. 496 |
| Parties | NICOFIBERS, INC., Plaintiff, v. REICHHOLD CHEMICALS, INC., Defendant. |
| Court | U.S. District Court — Southern District of Ohio |
Michael J. Canter, Columbus, Ohio, for plaintiff.
Terrance M. Miller, Columbus, Ohio, for defendant.
This is an action for patent infringement. The subject matter of the action is a patent ("the Miller patent") which has been assigned to plaintiff Nicofibers, Inc. The Miller patent describes a process for making multi-layer glass fiber mats.
Plaintiff Nicofibers seeks a judgment that the process used by defendant Reichhold Chemicals, Inc., for producing multi-layer glass fiber mats infringes the Miller patent. Plaintiff seeks an injunction against further infringement, damages for past infringement, treble damages for defendant's alleged "wilful and deliberate" infringement, and attorneys' fees.
Defendant Reichhold counterclaims, seeking a declaratory judgment that the Miller patent is invalid and not infringed.
This Court has personal jurisdiction over the parties. Subject matter jurisdiction is based on 28 U.S.C. §§ 1338(a), 2201 and 2202. Venue is proper under 28 U.S.C. § 1400(b).
This matter was tried to the Court. The Court has before it the evidence adduced at trial and the briefs and argument of the parties, and it has benefited by personal inspection of the processes in dispute at the plant sites of both the plaintiff and defendant. What follow are the Court's findings of fact and conclusions of law pursuant to Rule 52(a), Fed.R.Civ.P.
The plaintiff, Nicofibers, Inc., is a Delaware corporation with its principal place of business in Shawnee, Ohio. Defendant Reichhold Chemicals, Inc. is a Delaware corporation with its principal place of business in White Plains, New York. Reichhold's Glass Fiber Division, with which this suit is principally concerned, operates a manufacturing plant in Bremen, Ohio.
Nicofibers, Inc. was founded in 1972 by Nicolet Industries. Several employees of Reichhold, including the patentee William Miller, left Reichhold's Glass Fiber Division to join Nicolet and were instrumental in initiating the Nicofibers operation at Shawnee, which now competes with Reichhold in the production of glass fiber mats.
Both Nicofibers and Reichhold manufacture glass fiber mats by a method known as the "Modigliani process." Named after its inventor, Piero Modigliani, this process has been used to produce glass mats for more than 40 years. Essentially the process works as follows: A furnace containing a supply of broken glass traverses back and forth over a large rotating drum, parallel to the drum's axis of rotation. As the glass melts in the furnace it is drawn through small orifices in the bottom of the furnace, emerging as fine fibers or filaments of molten glass. These fibers are attached to the drum, and as it rotates, the fibers are wound into layers upon the drum, much as fishing line is wound upon a reel. The traversing speed of the furnace and the rotating speed of the drum are adjusted so that the glass fibers in each layer formed on the drum cross at acute angles with respect to fibers of adjacent layers. The layers are allowed to accumulate as the filaments are wound on the drum to form a condensed glass fiber mat, a step which takes from about 90 minutes to several hours to complete, depending upon many factors including the speed and size of the drum and the thickness of the mat being spun.
During the winding of the fibers on the drum, the glass fibers are loosely bound and relatively weak. In order to bind them together into a cohesive mat a polyester resin, or "binder solution," is uniformly applied to the layers periodically by means of an automatic spray gun. When the mat has been built up to the desired thickness, the drum is stopped and the condensed mat is cut off the drum parallel to its axis of rotation. The mat is then placed on a table and stretched ("expanded") to increase the porosity and reduce the density of the product. The expanded mat is then conveyed to a curing oven in which hot air is blown through the mat to cure the binder solution, and finally the expanded, cured mat is rolled up and packaged for shipment to the customer.
The Modigliani process is used by both Nicofibers and Reichhold to produce single layer "surfacing mat" and "reinforcing mat." These are used as components in the production of a wide variety of reinforced plastic items such as cafeteria and TV trays, electrical panel board, welding helmets, carrying cases for office equipment, and motorcycle and automobile body parts. Reichhold also produces glass fiber "media" for air filtration products and a glass fiber mat product known as "veil" which performs essentially the same function as surfacing mat except that it is made to conform more easily to complex shapes and curves.
Surfacing mat is manufactured in varying degrees of thickness from 10 "mils" (one mil is .001 inch) to approximately 30 mils. Reinforcing mat, which consists of thin surfacing mat layers sandwiching a swirled reinforced mat, is often made thicker. A ten mil mat is as thin a mat as can be made successfully on a commercial basis, according to Nicofibers' president, John K. Whitacre. A surfacing mat, because of its inherent "layered" nature, can be split manually to produce mats thinner than 10 mils; however it is a "tedious" and unwieldy process.
As the Court has already observed, a critical step in producing a cohesive glass fiber mat is the application of the resin solution which serves to bind the fibers together. Because the solution "migrates" or soaks into the spinning layers it is sprayed intermittently, in fixed "on" and "off" periods, rather than continuously, onto the drum. For example, in the Modigliani process used by Nicofibers, the binder spray is turned "on" for a period of one minute, then "off" for a period of 1.1 minutes, and this cycle is continuously repeated. Reichhold uses an "on" cycle of 47 seconds every 2.5 minutes.
By contrast with these planned and pre-programmed on-off cycles, it not infrequently occurs in the Modigliani process that for various reasons the application of the binder spray is accidentally interrupted and remains "off." In this situation the glass fibers continue to be wound into layers on the spinning drum, but without the resin spray there is nothing to bind them together. The result, if the interruption of the spray continues for any substantial period of time, is a layer of dry fibers which, without cohesion, falls off of the drum or falls away from the rest of the mat, generally in a tangled mess, during the expansion and curing process. This phenomenon is known as "delamination." Commencing with the introduction of automatic spray equipment in the early 1960's delamination has become a substantial and well-known problem throughout the industry, resulting most frequently from mechanical failures in, or clogging of, the spray equipment. Every witness called by the parties to testify in the case testified that he was aware of the phenomenon of delamination prior to 1973, and knew that it was caused by the inadvertent spinning of a dry fiber layer into the mat. Delamination is generally considered a defect and is a major source of rejected material in the industry.
On March 25, 1975, United States Patent No. 3,873,291 was issued to William R. Miller.1 Essentially, the Miller patent describes a process2 by which several glass fiber mats can be produced on the spinning drum, one on top of the other, without stopping the drum to cut off the individual mats. The Miller process permits these mats to be spun sequentially and in such a fashion that they can be separated after they are removed from the drum, stretched and cured.
The Miller process works as follows: Initially a mat is spun on the drum using the Modigliani process. When this mat reaches its desired weight and thickness, rather than stopping the furnace and drum to cut this single mat from the drum, the Miller process allows glass fibers to continue to be wound on top of the first mat. For a predetermined and controlled period of time, no resin binder solution is sprayed on these fibers. Without the binder solution these fibers accumulate as a dry layer over the first mat. At the end of the "dry" period the spray is re-started and a second mat is built up using the normal Modigliani process. After this mat is completed the spray gun is again shut off for the predetermined period and another dry layer is spun onto the drum, followed by another "Modigliani" mat. This alternating process continues until the desired number of mats-separated by dry layers-is formed.
The product of the Miller process-trademarked "Layer-Pak" by Nicofibers-is then cut in its condensed form from the drum, stretched, and processed through the curing oven. The end result is a product which looks like a thick single mat, but which in fact consists of a number of uniform and separable individual mats. This multi-layered product is rolled and shipped to customers who then separate it according to their production needs.
Scrutiny of the Miller process discloses that it in effect harnesses the well-known phenomenon of delamination and makes it a useful tool for producing multi-layer mats. Indeed, Miller characterized his first attempts to produce the multi-layer product as "programmed delamination experiments." Miller testified:
To continue reading
Request your trial