Standard Oil Company v. Montedison
| Decision Date | 28 February 1980 |
| Docket Number | Civ. A. No. 4319. |
| Citation | 494 F. Supp. 370,206 USPQ 676 |
| Court | U.S. District Court — District of Delaware |
| Parties | STANDARD OIL COMPANY (INDIANA), Plaintiff, v. MONTEDISON, S.p.A., et al., Defendants. PHILLIPS PETROLEUM COMPANY, Plaintiff, v. MONTEDISON, S.p.A., et al., Defendants. E. I. du PONT de NEMOURS & COMPANY, Plaintiff, v. MONTEDISON, S.p.A., et al., Defendants. |
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Robert H. Richards, III, of Richards, Layton & Finger, Wilmington, Del., for plaintiff, Standard Oil Co. (Indiana); John T. Kelton, Thomas V. Heyman, Maxim H. Waldbaum, William G. Todd of Watson, Leavenworth, Kelton & Taggart, Thomas F. Reddy, Jr., Gerald J. Flintoft, Stanton T. Lawrence, III, of Pennie & Edmonds, New York City, Arthur G. Gilkes, Ralph C. Medhurst, Chicago, Ill., of counsel.
C. Waggaman Berl, Jr., Wilmington, Del., for plaintiff, Phillips Petroleum Co.; Sidney Neuman, Harry J. Roper, Kenneth R. Adamo, George S. Bosy of Neuman, Williams, Anderson & Olson, Chicago, Ill., Donald J. Quigg, Bartlesville, Okl., of counsel.
Roger A. Hines, Wilmington, Del., for plaintiff, E. I. du Pont de Nemours & Co.; Earl L. Handley, Francis A. Paintin, Wilmington, Del., of counsel.
Edmund D. Lyons of Morris, James, Hitchens & Williams, Wilmington, Del., for defendant, Montedison, S.p.A., et al.; George B. Finnegan, Jr., Jerome G. Lee, Alfred P. Ewert, David H. Pfeffer, Stephen R. Smith, Richard C. Komson of Morgan, Finnegan, Pine, Foley & Lee, New York City, of counsel.
This case is an appeal under 35 U.S.C.A. § 1461 from a Board of Patent Interferences ("Board") Opinion issued pursuant to 35 U.S.C.A. § 135.2 That Opinion awarded Montedison, S.p.A. ("Montedison")3 priority for the invention of solid crystalline polypropylene. Each plaintiff in this litigation, E. I. du Pont de Nemours & Co. ("Du Pont"), Standard Oil Company ("Standard"), and Phillips Petroleum Company ("Phillips"), seeks to invalidate Montedison's claim of priority by establishing that it produced the product prior to Montedison. Each also argues that it is entitled to the patent in its own right. In addition, Du Pont argues that Montedison's senior party status should be vacated on the grounds of a possible discrepancy in inventorship in Montedison's applications, and Phillips premises a similar demand upon Montedison's alleged failure to teach the best mode of producing its invention. Montedison defends the Board's decision awarding it priority, claiming that none of the other parties ever completed the steps required for an actual or a constructive reduction to practice.
This case traces its history to the early 1950s. Prior to that time, polymer chemists did not know whether the manufacture of solid crystalline polypropylene was possible, much less how to make it. By 1957, however, at least five companies,4 including the litigants herein, claimed to have polymerized solid crystalline polypropylene and were seeking patent coverage for their alleged discoveries.5 On September 9, 1958, the Patent Office initiated this Interference to determine which applicant, if any, was entitled to receive the American patent rights to solid crystalline polypropylene.6
The Primary Examiner initially defined the Interference Count7 as:
Normally solid polypropylene having a crystalline polypropylene component.
The parties immediately filed Patent Office Rule 231 Motions8 in order to change the wording of this Count. The Primary Examiner finally decided these motions on June 14, 1962,9 amending the Count to its present form:
Normally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content.
Du Pont, Phillips, and Standard subsequently took extensive testimony which was completed by March 25, 1966.10 Montedison was given until July 29, 1966 to complete its testimony.11 Montedison proceeded to file ancillary proceedings seeking broad discovery under 35 U.S.C. § 24,12 and the Patent Office suspended any further action pending resolution of these ancillary proceedings.13 The Interference was resumed on May 12, 1969,14 and Natta's testimony period was extended to December 8, 1969.15 In April, 1970, the parties terminated their rebuttal testimony, having generated more than 800 pleading papers, deposed more than 100 witnesses, and amassed more than 18,000 pages of testimony and over 1000 exhibits.16
The parties argued their cases for priority before the Board on October 28 and 29, 1970,17 and on November 29, 1971 the Board released its 113 page Opinion awarding priority to Montedison.18 The Board's Opinion was appealed in early 1972 by Du Pont,19 Standard,20 and Phillips.21 These cases were consolidated in this Court on May 15, 1975.22 On July 1, 1977, this Court approved and signed a 181 page Pre-Trial Order.23 Trial followed, consuming eighty-five days between September 19, 1977 and May 17, 1978. The parties generated a transcript in excess of 14,000 pages and prepared about 4,600 exhibits, more than 500 pages of legal memoranda, and nearly 2,000 proposed Findings of Facts and Conclusions of Law, about which they have argued extensively during two rounds of briefing totalling more than 1,800 pages.
In considering the evidence, this Court has generally adhered to the well established rule that clear and convincing evidence must be adduced in order to justify overruling a determination of priority made by the Board. This rule was established by the Supreme Court in Morgan v. Daniels:24
Where the question decided in the Patent Office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction.25
The Morgan v. Daniels rule, however, is not always applicable. If, for instance, it is established that "fraud and perjury have intervened to impeach the very foundation upon which the ruling of the Patent Office was based",26 the Board's Opinion must be given less weight and may be overturned upon a showing that a mere preponderance of evidence supports an alternative finding.27
In this case, all three plaintiffs claim that Montedison acted fraudulently in misrepresenting or failing to supply relevant information to the Examiners. As explained below, this Court finds that Montedison committed fraud against Phillips but that the other fraud claims against Montedison are either inadmissible or without merit.28 Phillips therefore need only adduce a preponderance of evidence that it is entitled to a priority date different from that awarded by the Board, but since fraud did not impeach the very foundation of the Board's findings with regard to the other plaintiffs, this ruling does not apply to them. The remaining plaintiffs must still adduce clear and convincing evidence to overcome the Board's findings regarding their priority dates.
Applying these standards, this Court finds that Montedison is entitled to a June 8, 1954 priority date as determined by the Board. This Court also finds that Du Pont failed to adduce even a preponderance of the evidence that it is entitled to a priority date prior to the August 17, 1954 date awarded by the Board, and that Standard similarly failed to adduce even a preponderance of evidence showing that it is entitled to a priority date prior to the October 15, 1954 date awarded by the Board. These findings are therefore affirmed. This Court, however, reverses the Board's findings as to Phillips, since Phillips did adduce at least a preponderance of evidence demonstrating its entitlement to a priority date no later than January 27, 1953 instead of the January 11, 1956 priority date found by the Board. Since Phillips's date is senior to those of the other three parties, priority is awarded to Phillips.
The distinguishing characteristics of solid crystalline polypropylene are described by the single Count in Interference: (1) normally solid; (2) polypropylene, consisting essentially of recurring propylene units; (3) having a substantial crystalline polypropylene content.29
The first limitation requires that the product be normally solid. The term "solid" implies a substance of definite shape,30 while "normally" is implied when scientists usually characterize a material as solid.31
The second limitation requires that the product be a polypropylene consisting essentially of recurring propylene units. "Polypropylene" is a substance made by polymerizing molecules of propylene.32 Propylene molecules contain three carbon atoms (C) and six hydrogen atoms (H) arranged as a methylene group (= CH2) connected by a double bond to a = CH- group that is in turn connected by a single bond to a methyl group (-CH3). This arrangement may be depicted as follows:
Figure 133
In a polymerization reaction, one of the bonds constituting the double bond breaks and provides the propylene molecule with an extra bond with which it can attach itself to other molecules. Sometimes the polymerization is very orderly, resulting in the production of a polypropylene consisting of recurring propylene units:34
Figure 235
This type of regular polymerization is known as head-to-tail polymerization or 1-2 addition.36 Its essential feature is that the first (head) carbon atoms in every propylene molecule joins with another propylene molecule by binding to its second (tail) carbon atom. One noticeable result of this 1-2 addition is that none of the methylene groups are adjacent, but are isolated from each other; another is that the pendant methyl group are also isolated in that none of them "dangle" from adjacent carbon atoms.37
The Count's second limitation does not require that the polypropylene be composed solely of recurring propylene...
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