Westwood Chemical, Inc. v. Owens-Corning Fiberglas Corp., C 63-460.

• Decision Date: 29 July 1970
• Docket Number: No. C 63-460.,C 63-460.
• Citation: 317 F. Supp. 201
• Parties: WESTWOOD CHEMICAL, INC., Plaintiff, v. OWENS-CORNING FIBERGLAS CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Ohio

317 F. Supp. 201

WESTWOOD CHEMICAL, INC., Plaintiff, v. OWENS-CORNING FIBERGLAS CORPORATION, Defendant.

No. C 63-460.

United States District Court, N. D. Ohio, E. D.

July 29, 1970.

Paul A. Weick, Weick & Genovese, Akron, Ohio, C. D. Lambros, Berger, Kirschenbaum & Lambros, Cleveland, Ohio, Arland T. Stein, Blenko, Leonard & Buell, Pittsburgh, Pa., for plaintiff; T. A. TeGrotenhuis, Cleveland, Ohio, of counsel.

William H. Webb, Webb, Burden, Robinson & Webb, Pittsburgh, Pa., Warren Daane, Baker, Hostetler & Patterson, Cleveland, Ohio, for defendant; Owen & Owen, Toledo, Ohio, of counsel.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

CONNELL, District Judge.

FINDINGS OF FACT

1. The plaintiff in this case Westwood Chemical, Inc., is an Ohio Corporation, having its principal place of business at Olmsted Falls, Ohio. The business of the plaintiff was the sale of fatty acids, stabilizers for plastic materials and metal stearates for the rubber industry. The defendant, Owens-Corning Fiberglas Corporation is a Delaware Corporation, having its principal place of business at Toledo, Ohio. The business of the defendant corporation concerns the manufacture and sale of glass fiber and reinforced products.

2. This action, C 63-460, was filed June 10, 1963, against Owens-Corning Fiberglas Corporation and Johns-Manville Corporation. The original complaint contained four causes of action. The first and second causes of action which charged violations of the Anti-Trust Laws of the United States, specifically 15 U.S.C. § 1 et seq. were dismissed, and the fourth cause of action containing allegations of infringement against Johns-Manville Corporation of the two patents in suit has been severed from this action. Therefore, only the third cause of action in the complaint stands, and it is this allegation upon which this suit was tried.

3. The third cause of action arises under the patent laws of the United States and alleges "infringement or actively inducing infringement and/or for contributory infringement of United States Letters Patent Nos. 2,742,378 and 2,841,566."

4. Also pending in this Court are actions against Ferro Corporation, Johns-Manville Fiber Glass, Inc., Union Carbide Corporation, Molded Fiber Glass Body Corporation, Certain-Teed Products Corporation and Dow Corning Corporation, Civil Actions Nos. C 62-681, C 63-460, C 67-775, C 63-208, C 67-774, and C 67-787, respectively.

5. The defendant, Owens-Corning, has denied infringement and asserts affirmatively that each of the patent in suit is invalid on several grounds and is unenforceable by reason of fraud upon and misrepresentation to the Patent Office.

6. Jurisdiction is based on 28 U.S.C. § 1331 and § 1337.

7. U. S. Patent No. 2,742,378 (referred to as -378) was issued by the Patent Office April 17, 1956, and U. S. Patent 2,841,566 (referred to as -566) was issued by the Patent Office July 1, 1958.

8. The substance of this action relates to glass fibers treated with unsaturated organo-silanes for use in reinforcing polyester resins and the resulting polyester resin bodies.

9. Specifically, the alleged infringing practices of Owens-Corning are described in the document entitled "Commercial Textile Sizes and Mat Binders Employing Coupling Agents as Starting Materials" (PX-17) and a subsequent stipulation covered by a protective order (PX-18).

10. In the defendant's regular commercial operations it utilized four organo-silanes for treating glass fibers, the use of which is charged as an infringement. These organo-silanes are vinyl sodium silanolate (SS2D or SS2DN), vinyl trichlorosilane (A-150), vinyl trimethoxyethoxysilane (A-172) and methacryloxypropyltrimethoxysilane (A-174 or Z-6030). The first three are silanes and the fourth, A-174 or Z-6030 is neither a vinyl silane, allyl silane nor an alkylenyl silane (R. 962-68, 800-01, 1020; DX-Q, DX-KK).

11. The coupling compounds used by the defendant are applied to glass fibers from water solutions (R. 910-11).

12. Glass fibers treated with these coupling agents mentioned above are sold by Owens-Corning to purchasers who use the treated glass fibers for reinforcing polyester resins. Owens-Corning also uses some treated glass fibers for manufacturing tanks and the like, the glass fibers being used to reinforce polyester resins.

13. Owens-Corning first commercially sold glass fibers treated with vinyl sodium silanolate in early 1951 (R. 871). In 1951, Union Carbide commenced commercial production of vinyl trichlorosilane (A-150) and its use on glass fibers was commenced shortly thereafter by Owens-Corning (R. 1081-82). In late 1951 or 1952, Union Carbide commenced the manufacture of vinyl trimethoxyethoxysilane (A-172) and its use was commenced shortly thereafter (R. 1082). The methacryloxypropyltrimethoxysilane (Z-6030 or A-174) was not developed until about 1962 (R. 963, 1082). Thereafter, the use of this coupling agent was commenced (R. 963-64).

14. In June, 1942, Dr. Steinman at Owens-Corning began the study of glass and more specifically its surface chemistry, its condition, and the chemicals which would react with glass; and with this knowledge in the field, the defendant corporation would then begin the development of a material that could utilize its good properties and minimize its weak tendencies.

15. Fiberglass-reinforced plastics or resins had been on the market since about 1940 (R. 501).

16. Glass fibers had been used commercially at this time and were found to be a successful material for the reinforcement of resinous material such as phenolic resins. Glass fibers were being used prior to the advent of unsaturated polyester resins; the next logical step was the attempted combination of glass fibers with this new polyester resin. The purpose of the combination of these two materials would be the added strength the glass fiber, an inorganic material, would give to the polyester resin.

17. Unsaturated polyester resins were developed during World War II (PX-23, p. 13; PX-24, p. 8; PX-25, p. 14; PX-22, p. 19). Due to the War, the resins were unavailable to private concerns and were restricted to governmental use until mid-1945 (PX-23, p. 14).

18. It was found at this time that there was a fair amount of water held on a glass fiber surface by bonds called hydrogen bonds (R. 1143-44). More specifically, the glass surface is composed of as many as 50 to 300 layers of water held to the glass fiber surface through hydrogen bonds.

19. It was found that chlorosilane would react with the hydroxyls on the glass surface permitting lubricity. This brought about the beginning of the "double fishhook" theory (R. 1145). This theory purposes that the coupling agent at one end reacts with the glass fiber surface, and the other end reacts with the resinous material by copolymerization (DX-G, Tab 24, Col. 4, 11.28-35; R. 1141-45).

20. In May 1940, Dr. Rochow discovered that methyl chloride could be brought to reaction with elementary silicon to produce methyl chlorosilanes (R. 624). Soon after this discovery, Dr. Rochow's colleague, Winton Patnode, was able to produce methyl chlorosilane in larger quantities.

21. Furthermore, Winton Patnode showed Dr. Rochow that the reaction of vapors of methyl chlorosilane with glass made it water repellent due to the fact that the methyl chlorosilane had reacted with the water surface on the glass. The result was a thin film or layer of methyl siloxane on that glass surface (R. 627).

22. Dr. Steinman and others at Owens-Corning began the use of organicsilicon compounds in treating glass fibers for the purpose of obtaining lubricity; more specifically the application of dodecyl trichlorosilane to glass fibers.

23. In the middle of February 1943, Dr. Steinman disclosed to Mr. Philipps and later about March 1943 he made the same disclosure to Mr. Overman of his concept of using allyl silanes and silicates as a coupling agent to bond glass fibers to laminating resins (R. 1142, 1101).

24. In June, 1943, Dr. Steinman discussed with Dr. Andregg the double-fishhook theory that Owens-Corning had for improving glass fibers. This discussion included the application of unsaturated silanes to glass fibers.

25. Dr. Steinman made an allyl silane in 1943. The preparation of these allyl silanes being difficult and dangerous; Dr. Steinman was requested by Owens-Corning to end all preparation of these products and made arrangements with Dow Corning to supply him with any silane he needed (R. 1164-65, 1101).

26. Dow Corning was unable to supply allyl silanes immediately, and after repeated requests, Dow Corning was finally able to furnish Owens-Corning with the allyl silanes in mid-1945 (R. 1171, 1101-02).

27. Because no allyl silanes were available from Dow Corning, Dr. Steinman concentrated his efforts in the area of allyl silicate materials; as a result, the silicates were made and evaluated.

28. In testing these, it was found that the allyl silicate was the first material to show improved physical properties by thirty to forty percent in compression, flexure and tensile strength (R. 1166-67).

29. The allyl silicates are structurally very similar to the allyl silanes, the only difference being that in the silane the allyl group is attached directly to silicon, whereas in the silicate the allyl group is attached to silicon through oxygen. The coupling mechanism by which each of these function in a glass fiber reinforced polyester resin is the same.

30. The unsaturation of the allyl group in each provides one fishhook which copolymerizes with the unsaturated polyester resin. The silicon and hydrolyzable group on the other end of the molecule acts as the other fishhook, whereby the silicate or silane is bonded to the glass surface through the hydroxyl groups on the surface of the glass fiber (R. 1167-68, 1107-08).

31. In comparison, the allyl silicate did not bond as well as the silane due to the fact that the strengths of the laminates made with the silanes were far better...