Studiengesellschaft Kohle mbH v. Dart Industries

• Decision Date: 05 October 1982
• Docket Number: Civ. A. No. 3952.
• Citation: 549 F. Supp. 716
• Parties: STUDIENGESELLSCHAFT KOHLE mbH, Plaintiff, v. DART INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — District of Delaware

549 F. Supp. 716

STUDIENGESELLSCHAFT KOHLE mbH, Plaintiff, v. DART INDUSTRIES, INC., Defendant.

Civ. A. No. 3952.

United States District Court, D. Delaware.

October 5, 1982.

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Howard M. Handelman, of Bayard, Brill & Handelman, Wilmington, Del., for plaintiff; Arnold Sprung, and Nathaniel D. Kramer, of Sprung, Horn, Kramer & Woods, New York City, of counsel.

Arthur G. Connolly, Jr., of Connolly, Bove & Lodge, Wilmington, Del., for defendant; Thomas F. Reddy, Jr., Gerald J. Flintoft, Stanton T. Lawrence, III, and Brian M. Poissant, of Pennie & Edmonds, New York City, of counsel.

OPINION

CALEB M. WRIGHT, Senior District Judge.

BACKGROUND

This is a suit alleging infringement of United States Patent No. 3,113,115 ('115), issued to Dr. Karl Ziegler of the Max Planck Institute for Coal Research in 1963. The plaintiff, Studiengesellschaft Kohl mbH, (SGK), is the successor in interest to Professor Ziegler. The defendant Dart Industries is the successor corporation to Rexall Drug & Chemical Company. This action was initiated in July, 1970. The life of the patent expired before trial. This Court has jurisdiction under 28 U.S.C. § 1338(a).

Briefly, the '115 patent teaches a system for the polymerization of ethylene and other lower olefins, including propylene. The catalyst system consists of alkyl aluminum halides, especially diethyl aluminum chloride, and titanium halides, especially titanium tetrachloride. The interaction of these components produces a catalyst that has proven singularly active, effective and efficient in producing high grade plastic polymers.

SGK contends that Dart's process for the production of commercial grade polypropylene infringes SGK's patent. Dart defends first, that the patent is invalid because anticipated by and obvious from the prior art; second, that its catalyst system is so distinct from the system disclosed by the SGK '115 patent that it does not infringe; and finally, that the equitable doctrines of laches and estoppel render the '115 unenforceable because SGK unreasonably delayed instituting any infringement action, affirmatively misrepresented its enforcement intentions and, in so doing, materially prejudiced Dart.

The '115 patent has been the subject of previous litigation. The United States Court of Appeals for the Fifth Circuit addressed the issue of the validity of the '115 in its 1973 opinion in Ziegler v. Phillips Petroleum Co., 483 F.2d 858, cert. denied, 414 U.S. 1079, 94 S.Ct. 597, 38 L.Ed.2d 485 (1973). The Fifth Circuit upheld the validity of the patent and found it to be infringed by the catalyst system used by Phillips. While this Court is and has been aware of Phillips, this Opinion reflects independent findings of fact and conclusions of law based on all the evidence in the case presented during February and March of this year.

The Opinion addresses the issues of validity, infringement and equitable doctrines in that order. The sheer magnitude of the evidence presented precludes addressing each issue raised. Failure explicitly to mention an issue or argument in this Opinion indicates only that, after due consideration, the Court found the issue or argument to be without merit or of no consequence to the outcome of the case. This Opinion represents the Court's findings of facts and conclusions of law as required by Fed.R. Civ.P. 52.

I. VALIDITY

Dart Industries argues that U.S. Patent 3,113,115 issued to Karl Ziegler, Heinz Breil, Heinz Martin and Erhard Holzkamp on December 3, 1963, is invalid. Dart contends that the claims and content of the '115 violate 35 U.S.C. §§ 102 and 103, arguing that the '115 was anticipated by and obvious from prior art in the field. In support of these arguments, which proved to be the principal part of its case, Dart offered a wide range of evidence, much of it highly technical. Central to Dart's thesis, however, are two strands of evidence: the German Patent No. 874,215¹ granted to Dr. Max Fischer of Badische Anilin & Soda Fabrik (BASF); and the experimental work done at the Du Pont Company which resulted in a number of U.S. patents, particularly those to Dr. Arthur W. Anderson.

The Fischer work was first patented in 1943, but was not issued or published by the post-war Federal Republic of Germany until 1953. The patent was not known even to members of the scientific community until the later date. Dr. Fischer's laboratory was destroyed during the latter part of World War II, as were his experimental notes and data. Consequently, there is very little contemporaneous information to aid the Court, or any other reader, in interpreting the Fischer patent. The patent itself is very short—only three and one-half typed pages as translated—and contains only one working example.

The Du Pont work is much better documented and has been effectively supplemented and explained by both deposition and live testimony. The Du Pont research bears only on the question of obviousness under § 103, not anticipation under § 102. Ziegler's '115, entitled to priority dates based on foreign applications, pre-dates the relevant Du Pont patents to Anderson et al.

A. Anticipation

Dart's anticipation defense is based on its assertion that the Fischer patent meets the standards of 35 U.S.C. § 102(a) and (b). Since the Fischer patent was awarded before even the earliest of Ziegler's German applications, the question of anticipation reduces to whether Fischer actually describes the same invention as that claimed in the '115. The Court heard an enormous amount of testimony about the Fischer work, most of it post hoc experimentation and interpretation of what is actually described in the Fischer patent. As noted, the destruction of contemporaneous records and the brevity of the patent itself made such an approach almost inevitable.

In evaluating a claim of anticipation, the Court will apply a test of strict construction. See Research Corp. v. NASCO Industries, Inc., 501 F.2d 358 (7th Cir.), cert. denied, 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974); Alco Std. Corp. v. Tenn. Valley Auth., 516 F.Supp. 431 (W.D.Tenn. 1981); 1 Chisum, Patents § 3.02 p. 3-5 (1982) ("The standard for novelty, that is, for "anticipation," is one of strict identity."). To anticipate the '115, the Fischer patent must disclose "the very invention of the '115 patent"² or "a device substantially identical to that claimed under the terms of the patent."³ The Third Circuit has further elaborated the test for anticipation:

For a prior publication to defeat a patent it must exhibit a substantial representation of the invention in such full, clear and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills.⁴

Anticipation, to be effective, must be both clear and contained in a single reference. The publication argued to anticipate must contain "within its four corners, adequate directions for the practice of the patent claim sought to be invalidated." Congoleum Industries, Inc. v. Armstrong Cork Co., 339 F.Supp. 1036, 1052 (E.D.Pa. 1972), aff'd, 510 F.2d 334 (3d Cir.), cert. denied, 421 U.S. 988, 95 S.Ct. 1991, 44 L.Ed.2d 478 (1975). "Anticipation cannot be shown by combining more than one reference to show the elements of the claimed invention."⁵

To invalidate the '115 on grounds of anticipation by Fischer, Dart must show that the Fischer patent clearly, fully and independently demonstrates the essentials of the '115 claims Dart challenges. To make this determination, the Court must examine and compare the '115 and the Fischer patent.

Briefly, Ziegler's '115 patent claims a polymerization catalyst of the general formula RR'A1X, where R and R' are organic radicals, especially alkyl radicals, and X is a halogen, combined with a heavy metal salt, usually a titanium chloride.⁶ The most widely used organo-aluminum component is diethyl aluminum chloride (DEAC or Et2 A1C1). The '115 teaches the use of these claimed catalyst components for the polymerization of "lower olefins up to about C5, and particularly ethylene."⁷ SGK, as successor in interest to Karl Ziegler on the '115, has brought this infringement action against Dart on the basis of Dart's use of DEAC and titanium trichloride (TiCl3) to polymerize propylene (C3H6).⁸ SGK claims that propylene, as well as ethylene, polymerization is covered by the '115.

The Fischer patent⁹ relates to the production of polyethylene. In particular, the language of the Fischer patent claims novelty in the ease with which the invention permits the production of solid or near-solid polyethylene as opposed to the oils predominantly formed by previous methods.

It is known that one can polymerize ethylene or ethylene-rich gases to form lubricating oil-like products with the aid of aluminum chloride under pressure and at elevated temperature....

It has now been found that the course of the polymerization can be influenced in such a way that the formation of liquid polymerizate can be suppressed in favor of the formation of higher solid substances and that these will be formed in a greater amount if one uses as catalyst aluminum chloride with addition of titanium tetrachloride and, if necessary, with addition of other halides of the Friedel-Crafts catalyst series. These solid substances are formed especially easily, moreover, if one also adds hydrogen chloride-fixing metals, such as iron, zinc, or aluminum in finely divided form, especially aluminum powder.¹⁰

The Fischer patent teaches the combination of aluminum powder (Al), aluminum chloride (AlCl3) and titanium tetrachloride (TiCl4) to polymerize ethylene. Nowhere in the patent is there any mention of diethyl aluminum chloride or any organo-aluminum molecule. Indeed, none of the substances listed above as catalyst components even contains a carbon source for the formation of the...