Union Carbide Corp. v. Borg-Warner Corp.
| Decision Date | 27 January 1977 |
| Docket Number | BORG-WARNER,No. 75-2263,75-2263 |
| Parties | UNION CARBIDE CORPORATION, Plaintiff-Appellant, v.CORPORATION and Sund-Borg Machines Corporation, Defendants- Appellees. |
| Court | U.S. Court of Appeals — Sixth Circuit |
Vincent L. Barker, Jr., Owen & Owen Co., L.P.L., Toledo, Ohio, John D. Foley, John C. Vassil, Stephen R. Smith, Richard J. Mazza, Morgan, Finnegan, Pine, Foley & Lee, New York City, Thomas S. Calder, Cincinnati, Ohio, for plaintiff-appellant.
Thomas L. Dalrymple, Fuller, Henry, Hodge & Snyder, Toledo, Ohio, Dugald S. McDougall, James P. Ryther, Chicago, Ill., for defendants-appellees.
Before: PHILLIPS, Chief Judge, EDWARDS, Circuit Judge, and MILLER, Judge, United States Court of Customs and Patent Appeals. *
Plaintiff has appealed from the judgment (unpublished) of the United States District Court in favor of defendants that Claim 1 of U.S. Patent No. 3,268,636 ("636 patent") 1 has not been infringed; that said claim is invalid over the prior art under 35 U.S.C. § 102(e) (anticipation) and under 35 U.S.C. § 103 (obviousness); and that the 636 patent is invalid in its entirety for failure to disclose the best mode contemplated to carry out the invention as required by 35 U.S.C. § 112, first paragraph. 2 We affirm on the best mode issue, so it is unnecessary to reach the sections 102(e) and 103 issues. The infringement issue thus becomes moot.
Appellant is the assignee of the inventor, Richard G. Angell, a scientist and one of its employees. Angell's invention is a process 3 for molding foamed thermoplastic products that are useful as substitutes for wood. These have a high density shell, an integral low density cellular core, and a high strength to weight ratio. (The best mode issue involves a valve and an extruder used in apparatus to perform the process.)
Claim 1 of the patent reads:
1. Process for molding foamed thermoplastic articles which comprises the steps of
(a) melting a mixture of a blowing agent and a foamable thermoplastic material in an extruder at a temperature above the foaming temperature of said blowing agent and at a pressure above the foaming pressure thereof;
(b) extruding the resulting molten mixture into an expanding accumulation zone while maintaining said mixture therein in the molten state and at a pressure above the foaming pressure thereof;
(c) establishing communication between said accumulation zone and a mold maintained at a pressure no (d) rapidly forcing said molten mixture from said accumulation zone into said mold whereby the pressure differential between said accumulation zone and said mold causes said mixture to rapidly expand in said mold.
greater than the foaming pressure of said molten mixture;
Referring to the drawings, Angell's specification explains the process as follows:
As shown in FIGURE 2, the extruder charges molten polymer 26, through a valve 21, and into an accumulator 20. The molten polymer 26, must be mixed with a blowing agent prior to the charging of the polymer into the mold.
. . . .
While the various types of blowing agents which can be employed to produce a foamed product can be mixed with the plastic material at various stages in the process, it is advantageous to add liquid or gaseous agents directly to the polymeric material, in the extruder, while the material is in a molten state, in order to obtain a uniform dispersal, of the agent within the molten plastic without employing additional mixing apparatus. Similarly, a decomposable chemical blowing agent is advantageously pre-mixed with the polymer prior to the charging of the polymer into the extruder.
. . . .
Alternatively, the accumulator or the barrel of the extruder, can if desired, contain means, not shown, for the direct addition thereto of a liquid or gaseous blowing agent.
. . . .
The accumulator 20, as shown in FIGURE 2, includes a piston 22, which divides the accumulator into two chambers and which resists the filling of the accumulator because of gas under pressure in the chamber 24 of the accumulator 20. The gas pressure within the chamber 24 is at least equal to the pressure necessary to maintain the mixture of thermoplastic material and gas in an unfoamed state. . . .
Since the charging of the accumulator with molten polymer 26, by the extruder, is opposed by the piston 22, the filling of the accumulator cannot start until the extruder pressure exceeds the back-pressure of the piston 22. As the piston 22 moves in the accumulator 20, the gas volume in the chamber 24 is decreased and the gas pressure is increased. The extruder pressure must continuously exceed the increasing piston pressure during the filling operation.
The amount of material charged into the accumulator chamber 26 is a function of the increase in pressure in the chamber 24, and therefore, a pressure gauge which communicates with chamber 24 may be directly calibrated in terms of amount of material charged to the accumulator.
When the desired amount of thermoplastic material has been charged into accumulator 20, the position of valve 21 is changed to the position as shown in FIGURE 3, whereby communication is suddenly established between the chamber The back-pressure on the piston 22, in combination with the gas contained within the thermoplastic material serves to rapidly fill the mold. . . .
26 of the accumulator 20, and the cavity of the mold 28.
In April of 1963, prior to Angell's filing his application which matured into the involved patent, appellant commenced "scale-up" operations, preliminary to commercial production, in a pilot plant using Angell's process. Testimony by Theodore Loeser, who was directly responsible for the pilot plant and was Angell's supervisor, shows that the valve used was not the one disclosed in the 636 patent, but one which "did not leave in the discharge passages of the machine any slug of semifoamed or unfoamed plastic that would be injected into the next part to be made"; and that the valve so used "was a better valve than is shown in the 636 patent."
Although he testified that, as of the period June-July, 1963, he believed the valve shown in the 636 patent "was the best for practicing my process," Angell acknowledged that prior to June 1, 1963, he had recognized that material being carried into the mold from the previous shot was "undesirable"; and that the pilot plant "eliminates this problem." In a report dated June 1, 1963, entitled "STRUCTURAL FOAM MOLDING," Angell described the pilot plant unit as including: "A unique valve system connected to the valve that is self purging so that no material is carried into the mold from the previous shot." Angell's notebook page 96, dated December 13, 1962, subject "Melt Foam Process Improved Apparatus," states the object of experiment 6413-26 as follows:
To design a piece of equipment that will hold material and force it into the mold and then purge out any remaining material.
The idea is to eliminate the solid pieces of material that result from foam collapsing in the valve of the present equipment. This can be accomplished by running a rod through the entire apparatus . . . .
Angell admitted that the valve shown in the drawing on said page 96 is the same as the one used in the pilot plant and essentially the same as one shown in his patent application No. 364,382, filed May 4, 1964. This application was subsequently abandoned in favor of Angell's application No. 556,103, filed June 8, 1966, as a continuation in part of three applications (including No. 291,898 (636 patent) and No. 364,382). No. 556,103 matured into U.S. Patent No. 3,436,446 ("446 patent"). Angell's testimony shows that the valve in the above-referred-to notebook drawing is "essentially the same" as the one shown in a drawing in the 446 patent. Loeser readily identified the valve originally used in the pilot plant as the same as the one shown in said drawing in the 446 patent.
The following statement appears in Angell's 446 patent:
Perhaps the most serious problems met with injection molding of foamed articles is (sic) the formation of a sprue on the uniformly porous structure and the formation in the equipment of an unfoamed slug which enters the mold on the next succeeding molding cycle creating an undesirable unfoamed, solid region in what should otherwise be a completely foamed article. This unfoamed slug is generally formed in the valve which connects the injection zone and the mold and/or in the conduits leading to and from the valve.
Angell testified that, because of "problems" with his new valve, "we did not have a satisfactory (pilot plant) operation in the spring of 1963." He stated that there were "problems" with the valve rod "sticking" and "severe problems" with "leakage"; that the reliability of the valve was "poor"; and that there were "many failures and periods of inoperability." 4 Loeser testified With respect to the pilot plant operation, the following comments by Angell appear in his notebook:
that the pilot plant was operating "adequately to allow us to operate the Angell process; but we had a lot of difficulties with it, really in the form of mechanical problems . . . ." However, the only contemporaneous record evidence cited by appellant of "problems" prior to the time Angell executed his 636 patent application on or about June 19, 1963, is a Union Carbide work order dated April 22, 1963, requesting heat treatment work on the valve rod and showing an amount of $22.50.
The equipment works fine and boxes can be molded easily. (April 19, 1963)
Good boxes are being made. (April 22, 1963, and May 7, 1963)
Good bowling pins are being made on the pilot plant equipment. (May 15, 1963)
The equipment is working well. (May 21, 1963)
A melt temperature of 330o F makes good boxes with very few voids. (June 6, 1963)
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