*1 ASSOCIATES, INC., & W.L. GORE
Appellant/Cross-Appellee,
GARLOCK, INC., Appellee/Cross-Appellant. 83-613,
Nos. 83-614. Appeals, Court of United States Federal Circuit. 14, 1983.
Nov. *5 Pfeffer, City, argued New York
David H. J. Robert Dai- appellant/cross-appellee; for Dore, City, New York John S. and Janet ley Newark, Del., counsel. Campbell, Pa., Mackiewicz, ar- Philadelphia, John J. With appellee/cross-appellant. for gued Heist, Phila- were Dale M. him on the brief Ouziel, Pa., New York Bernard delphia, of counsel. City, MARKEY, Judge, and DA- Chief Before MILLER, Judges. Circuit and VIS MARKEY, Judge. Chief of the District judgment from a Appeal of Ohio the Northern District for Court 3,953,566 (’566) and holding Patents U.S. part, affirm in 4,187,390 (’390) invalid. We and remand for a determi- part, reverse in issue. infringement nation
Background polytetrafluorethy- unsintered
Tape of (known by the trademark (PTFE) lene Nemours, Inc.) (5) de for high performance of E.I. Pont insulation TEFLON du electric cables. in small increments. had been stretched Associates, (Gore), assign- Inc. Gore & W.L. May On Gore filed the patent' suit, experienced tape patents ee of the application patents that resulted the operation of its breakage problem suit. The ’566 has 24 claims directed Dr. tape stretching “401” machine. Robert to processes stretching highly crystal- for Gore, Gore, developed Vice President of line, unsintered, processes, PTFE. The in- claimed in the ’566 invention disclosed and alia, steps stretching ter include patents ’390 in the course of his effort per PTFE at a rate above 10% second The 401 machine problem. to solve that between temperature about 35°C in Gore’s was disclosed and claimed melt crystalline point of PTFE. 3,664,915 (’915) Patent was the inven- The ’390 has directed Gore, Dr. Gore’s tion Wilbert L. father. products by processes various obtained tape had sold as thread seal PTFE been i.e., tape, tape keep pipe joints used to from It effectively undisputed leaking. The patent, application ’915 present long sought yet inventions filled a for which was filed October Army unfilled need. The United States rate, stretch makes reference to at 10% Garlock, and the research director of a Inc. otherwise, second or or to matrix tensile (Garlock) customer had been looking 7,300 strength psi. excess of to a following up every remote lead experimented heating Dr. Gore with and waterproof/breathable many material crystalline highly PTFE rods. years. slow, Despite stretching, careful the rods It is undisputed present inven- a relatively broke when stretched small enjoyed prompt tions and remarkable com- amount. Conventional wisdom in the art mercial to their success due merits and taught that breakage could be avoided only to or other advertising extraneous causes. by slowing the stretch rate or decreasing undisputed pro- It is the inventions October, 1969, crystallinity. In late Dr. vide the important synthetic most material discovered, contrary to teaching, available for in vascular hun- surgery, use *6 as fast as stretching possible the rods persons re- having dreds thousands him them to enabled to stretch more than pat- ceived artificial arteries formed of the length times original ten their with no product pat- ented and that since Further, breakage. though the rod was use- products unique properties ented have its greatly lengthened, thus diameter re- procedures, ful in other medical commu- unchanged mained virtually throughout its satellites, nications radar elec- systems, and length. The rapid also trans- applications. trical hard, formed rods into rods of a shiny major It is that the sources of undisputed soft, flexible material. PTFE, Pont, greeted patent- ICI and du Gore developed products several PTFE by product “magical”, ed “a “bewitching”, rapidly PTFE, stretching highly crystalline material”, remarkable new and one including: (1) film for filters porous and Tef- processed “differs from other forms of laminates; (2) laminates of fabric PTFE lon”. produce film bonded to fabric to a remarka- patented It is undisputed prod- having contradictory ble material prop- skepticism ucts were met with and disbelief impermeability liquid erties water and by at who least one scientist had worked permeability vapor, to water the material PTFE Pont and many years with at du for being used to make “breathable” rainwear expert who testified as an trial. filters; (3) yarn and for porous weaving or braiding into other like It is that Garlock first products, space undisputed produc- suits pump packing; (4) and tubes ed an accused to a product response used as re- veins; placements request for human arteries customer’s for substitute for the and trial, only advertised At Garlock addressed claims patented product, Garlock as a “new form” of product its accused 3,17, patent and 19 of the ’566 and claims PTFE and as “a versatile new material 35, 36, 43, 67, 77 of 9,12,14,18, the ’390 performance new orders of provides this patent. Appendix opinion. See consumer, industrial, for medical and elec- court, thorough in a memo- district applications”, trical and that the customer accompanying judgment, randum and in product that accused as “a new describes respect patent: (1) of the ’566 found claim 1 fabrics”. rainproof/breathable dimension in 102(a) anticipated by under 35 U.S.C. § use of its 401 machine and use Gore’s Proceedings Company (Budd) Cropper Budd of a ma- 2, 1979, On Gore sued Nov. Garlock chine; (2) patent declared all claims of the infringement claims 3 and 19 of 102(b) invalid under because the invention injunctive the '566 re- patent, sought public had been in use and on sale more lief, damages, attorney fees. Garlock 18, 1979, counterclaimed on Dec. year patent applica- de- than one before Gore’s claratory judgment patent invalidity, tion, as evidenced Budd’s use of the solicitation, non-infringement, fraudulent machine; (3) 1, 3, Cropper held claims attorney and entitlement fees. On Feb. and 19 invalid for obviousness under 35 filed a Gore second suit for in- 103, on the basis of various refer- U.S.C. § 14, 18, 36, 43, fringement product claims (a) ence pairings: Japanese patent 13560/67 67 and 77 light of the ’390 of a (Sumitomo) 3,214,503 patent with U.S. stipulation, the district court consolidated 2,776,465 (Markwood); (b) patent the two suits for trial. Markwood; (Smith) (c) with or Gore’s ’915 alleged infringement of certain Sumitomo; (4) with held all products: claims certain claims invalid as indefinite under 35 U.S.C. H2.1
§ opinion patent, In its respecting 1, 9, 12, (1) the district court held: 43, 67 and 77 invalid under 102 and 103 in view of Sumitomo and §§ Smith; (2) all claims invalid as indefi- nite under 102(a) (b) provide: nary subject 1. 35 U.S.C. skill in the art to which said pertains. Patentability matter shall not be person A shall be entitled to a un- negatived by the manner in which the inven- less— tion was made. (a) the invention was known or used provides: 35 U.S.C. § country, patented in this others or describ- specification *7 The a written shall contain printed publication foreign ed in a in this or a invention, description the and of the man- country, the before invention thereof the it, making using ner and and in applicant patent, for or full, clear, concise, such and exact terms as (b) patented the invention was or describ- any person to enable skilled in the art to printed publication foreign ed in a in this or a pertains, which it with or which is most near- country public or in use or on sale in this connected, same, ly to make and use the and country, year prior more than one to the date contemplated by shall set forth the best mode application of the in the United carrying States, the inventor of out his invention. or ... specification The shall conclude with one provides: 35 103 U.S.C. particularly pointing patent may or more claims out and though A not be obtained the distinctly claiming subject identically matter which invention is not disclosed or de- applicant regards title, as his invention. A scribed as set forth in section 102 of this independent subject be in if claim written or de- the differences between the matter form, form, sought dependent patented prior pendent to be and if in and the art are subject such be construed matter a whole shall to include all the limita- as incorporated would have been of the claim obvious at the time the tions reference having dependent person invention was made to a ordi- claim. into
1547 Gore did lock its carry court found that not com- failed to burden of all proving fraud before and mit the Patent Trademark claims of present patents invalid. (PTO), request Office denied Garlock’s fees, from attorney deciding and refrained of Review Standard infringement issue. Where, here, dispositive as legal error occurred in interpretation application and Issues statute, U.S.C., parties’ (1) err in: its hold- Did the district court arguments to the relating salutory injunc- 102(a), 102(b),
ings invalidity under §§ 52(a) tion of Fed.Rule Civ.P. cannot con- be 112; (2) finding its that Gore did 103 and trolling on all issues. Findings that “rest PTO; (3) deny- commit fraud on the an erroneous view of the law set may be ing fees. attorney basis”, aside on that Pullman-Standard
Swint, 456 S.Ct. L.Ed.2d 66 (1982). Thus it unnecessary OPINION here to set any probative aside fact found fought bitterly This hard contested district court on the basis of its years discovery, over case involved two being clearly erroneous, or to in engage trial, testimony of 35 five weeks of what would be an inappropriate reweighing live, (19 by deposition), witnesses of the facts. district court issued 300 exhibits. The over Among the errors extant legal opin- exhaustive memorandum 37-page an record, below, each are of which is discussed careful, ap- conscientious reflective of a ion (1) the invention forth in was set each claim many of the to the determination proach whole; not in each instance considered as a presented at trial. issues (2) 102(b) applied though was U.S.C. § The record on consists of 2000 appeal criteria application present; for its were not total 199 pages. parties’ pages. briefs (3) the references were not assessed in their briefs, repeatedly In those counsel accuse entireties; (4) inherency theory an under other of and serious breach- each numerous 102 and was inappropriately ap- §§ of the owed duty es of candor the court. plied; (5) only that which the inventor cites which the testimony, Each instances in art; (6) taught prior to the attributed findings, and the record are or are said prior art steps processes individual deal- quoted out of context. part As ing with distinct materials from those with result, reliability of the usefulness present which the inventions dealt were informing means of court has briefs steps erroneously equated the claimed if not greatly destroyed, been diminished processes; (7) evidence objective of nonob- careful, time-consuming study of all disregarded; (8) the viousness was page exhibits and each record has application function and were mis- required. been construed. Appellant court prior opinions cited 80 . permeated Because it so much of main brief Appellee’s totally ig- its brief. fully we analysis, district court’s note more citations, nores all those but two of but of its frequent restriction consideration Appellant’s reply adds 57 more. brief cites stretching, 10% second rate cited, opinions, court 34 earlier 67 it called the “thrust of the invention”. cited, newly and 25 of those cited appel- repeated throughout That approach Gar- *8 brief Appellee’s reply prior lee. cites 17 briefs, the repeatedly lock’s refer to which cited, cited, opinions, court 4 earlier 7 newly invention”, “thrust of the to “the inventive 6 of the by appellant. 147 cited Ac- concept”, and to the claims “shorn of their cordingly, opinions 211 prior court have extraneous limitations”. That facile focus- evaluated in to proof been relation the “thrust”, “concept”, and “shorn” ing on the found record. at claims, treating the claims resulted in though they In read different- light many points of the entire record and the as law, actually allowed and in suit. applicable ly we are convinced that from those Gar- 1548 (admittedly operated that machine emphasized ing true Dr. Gore
It is
description
op-
machine
as well as the
accord with the
stretching,
example,
rapid
been
patent)
in the ’915
must have
limita
eration
process
stretch
other
amount of
The district
than 10% second.
application
greater
tions, during prosecution
6-c, a
testimony that Teflon
it is the claims
court credited
’566
Yet
for the
Teflon,
form of
was used
highly crystalline
the
define
invention.
that measure and
at the
was the standard resin
Top
v.
because it
Manufacturing
Aro
Co. Convertible
time,
at a
336, 339,
tape
the
was stretched
Co.,
and that
365 U.S.
81 S.Ct.
Replacement
cannot be
Bowser,
above 35°C. Thus it
599, 600,
(1961);
temperature
Inc.
(a) ’566 Patent not at standard. We are convincing course, own for liberty, of to substitute our 102(a) Machine (i) and The 401 findings underlying court’s district undisputed the district court It claim 1 is conclusion that invalid. have only held claim of the ’566 to 102(a) by anticipated opera- been under § 401 machine operation Gore’s shop in the Gore tion of the 401 machine consistent, repro as a must thus be viewed in late Dr. Gore’s invention October before as set of Dr. Gore’s invention ducible use testimony deposition It did so on the 1, irrele and it is therefore forth claim documents, employees, of two former Gore using vant those invention drawings of the 401 machine. Elec appreciated have results. General Co., Lamp 1969, tric Co. v. Jewel Incandescent August, Gore offered to sell 81, 83, 90 L.Ed. 66 S.Ct. (Export) “to 326 U.S. Company tape Tool Export (1945). Were USPQ 157-58 Tape on the 401 machine. made be made” prevent anticipation, enough alone shipped Export the 401 machine was for an 24,1969. would be to obtain a judge possible The trial found on October Brass were, unchanged process. Ansonia on the least old the rolls 401 machine Co., Electric Copper Supply & Co. v. point at some time before October 36 L.Ed. apart less than feet and that U.S. S.Ct. spaced four Sons, see, Inc. v. (1892); Regar H.K. & accomplished operat- the rate of stretch *9 Williams, Inc., express written permission of Cropper Scott & USPQ 81, (2d Cir.1933). any nor will it divulge person to or per- sons other than its own or employees use a claimed proc The nonsecret of of employees its corporations affiliated producing ess in the usual course of articles of the said or any any known-how details a purposes public for commercial is use. relating whatsoever to the apparatus. Storage Shimadzu, Electric Battery Co. agrees 2. all proper BUDD to take steps S.Ct. 83 L.Ed. to employees ensure its observe the USPQ 155, (1939), there terms of Article “E” 1 agrees and further was no that any process evidence different that whenever it is to do proper so it will was used produce shipped to articles to take action in a legal Court of competent Export. jurisdiction to any enforce one or more of Thus it cannot be said that the district or legal equitable remedies available court erred in determining inven- to a secret plaintiff. trade tion in claim ’566 patent set forth 1 of Budd told its employees Cropper ma- 102(a), known or used others under chine required was confidential and them to evidenced Gore’s operation of the 401 sign confidentiality agreements. Budd oth- machine before Dr. date Gore’s asserted erwise the Cropper treated machine like its that invention. manufacturing other equipment. In view of our affirmance of the judg- A former Budd employee said Budd 102(a), ment reached on claim 1 under we made no effort keep secret. That need grounds not discuss other asserted Budd did keep not the machine hidden from was, invalidity however, claim 1. There employees legally to keep bound their no evidence whatever that inventions knowledge confidential does not a evidence claims, set forth in other of either the ’566 failure to maintain the secret. Similarly, or patent, the ’390 were known used employees that du Pont were shown the others operation as a result of Gore’s of the see if they machine to help could increase October, 401 machine before late not speed does itself establish a breach (ii) 102(b) and the Machine Cropper secrecy agreement. of the There is no evi In 1966 W. (Cropper) John Cropper viewing dence of when that occurred. New developed Zealand and constructed a There a is no evidence that viewer of the machine producing stretched and un- machine thereby anything could learn tape. stretched PTFE thread seal In process, among processes, all possible Cropper sent letter to a company Mas- being practice. machine used As sachusetts, machine, offering to sell his de- testified, Cropper looking at machine in scribing its operation, enclosing pho- operation does not reveal whether it to. came of Nothing letter. There is so, if stretching, speed. at what Nor present evidence and no that the finding does disclose looking crystallin whether thereby inventions became known or used ity temperature elements the inven in this country. tion set forth the claims are involved. There is no evidence that Budd’s secret use 1968, Cropper sold his machine to machine Cropper knowledge made Budd, some point which at thereafter used public. to the accessible produce and sell PTFE threat seal tape. agreement Crop- sales between court all claims district held provided: and Budd 102(b), invalid supra, under note “the because invention” was “in
ARTICLE “E” —PROTECTION OF public use on sale” Budd more than [and] TRADE Etc. SECRETS . year one before Gore’s application pat- agrees 1. BUDD agree- Beyond while this ent. failure to consider each of 282; reproduce ment is in force it will the claims any independently, 35 U.S.C. § copies Theatres, of the said apparatus without the Altoona Publix Inc. v. American *10 1550 477, 487, process rendered all of the ’566 pat- 55 claims
Tri-Ergon Corp., 294 U.S. S.Ct. 455, 459, (1935), 102(b). 1005 and a failure ent invalid under 79 L.Ed. § as a the claimed inventions proof Budd before the practiced by whole were (iii) 103 § 21, date, it was error to May critical 1969 1, 3, 17, and 19 of considering Cropper with the activity hold that Budd’s the district court patent, recognized the ’566 machine, indicated, “public” as above was a the obviousness issue under analysis processes use of the claimed in scope requires 103 determination of the § secret, been not patent, activity having art, the prior and content of the differences public. art and the claims at prior between tape sold Assuming, arguendo, that Budd issue, skill in the ordinary and the level of produced Cropper on the machine before Co., art. v. John Deere pertinent Graham 1969, tape October and that that was made 693, 15 L.Ed.2d 383 86 S.Ct. U.S. forth in a claim of the '566 by process set USPQ (1966). 148 467 102(b) is whether patent, the issue under § art, prior In its consideration of the right that sale would defeat Dr. Gore’s to however, the court erred in not tak district patent process on the inventions set forth in markedly ing import into account the the claims. different behavior of PTFE from that anything, If Budd offered and sold clearly thermoplastic polymers conventional whatever was only tape, process was not record, on the undisputed established producing party used in it. Neither con in disregarding unpredictabili thus tends, evidence, and there that the nature unsintered ty unique public process by could learn PTFE to which the claimed inventions re examining tape. Cropper If Budd and late, Whiton, 1082, 164 USPQ In re 420 F.2d that could result tape, commercialized (CCPA 1970); considering 455 claims in patent granted in a forfeiture of a them for Schenck, entireties, supra; less than their process application their on an filed considering and in the references in less year them more than a later. D.L. Auld Co. entireties, i.e., disregarding than their 714 Graphics Corp., Chroma F.2d diverge disclosures the references that (Fed.Cir.1983); 1147 - 48 En Metallizing See away from and teach from the invention at gineering Auto Kenyon Bearing Co. v. & Kuderna, hand. In re 426 F.2d 165 Co., USPQ (2d Parts 153 F.2d USPQ (CCPA 1970). Cir.1946). statutory There is no reason or 102(a) of claim 1 under hav- Invalidity § basis, however, on which Budd’s and Crop determined, ing unnecessary been it is secret per’s process, commercialization of a 103 to applicability discuss in detail of § established, if could be held a bar to the claim. If 1 had not held claim been grant of a on that process. anticipated 102(a) light opera- under Early public linchpin disclosure is a machine, tion of the 401 it is clear from the of the patent system. As between a prop- claim 1 discussion here that could inventor who process by benefits from a erly have been held invalid under selling conceals, its product suppresses, but depends incorpo- from and thus Claim keeps otherwise from the claim 1 but a rate of stretch specifies rates public, promptly and a later inventor who per depends of 100% second. Claim 17 also patent application files a from which the claim 1 specifies from an amount public gain process, will a disclosure of the length. twice original stretch of about the law favors the latter. Horwath v. See depends from claim 17 but speci- Claim Lee, USPQ (CCPA fies an amount of stretch of about five 1977). The district court therefore erred as original length. times the applying matter of law in the statute and 2,983,961 Titterton, in its determination that secret use Vol- Budd’s Encyclopedia Polymer Cropper tape machine and sale of ume 13 of the (1970), Technology Science Sumito- rate of about second as required 100% mo patent, parties, witnesses for both asserted claim 3. Nor is it anywhere teachings suggested by rapid stretching establish that related to conven- a PTFE *11 article be stretched to more than five thermoplastic polymers inapplica- tional are times original length its as required by ble to PTFE. asserted contrary, claim 19. On the the art as a Dogliotti Yelland, Articles and Effect whole teaches the way. other of Proper- Strain Rate on the Viscoelastic concluding In that obviousness was estab- Materials, High Polymeric ties of Fibrous 4 teachings lished pairs various High Speed Testing (1964) 211 and Robin- references, the district sight court lost Graham, son and Methods of Characteriza- principle that there must have been tion of Polymeric by High Speed Materials something present in those teachings to Testing Techniques, 5 High Speed Testing suggest to one skilled in the art that 261 (1965), teach that conventional plastics claimed invention before the court would and sintered PTFE can be stretched further have been obvious. In re Bergel, 292 F.2d if slowly. stretched Dr. Gore demonstrated 955, 956-57, USPQ 206, (CCPA at trial and argument at oral before us that 1961); In re Sponnoble, an attempt highly crystalline, to stretch USPQ (CCPA 1969). unsintered PTFE slowly results in break- age, and rapid stretching produces a The court’s pairing of Sumitomo and greatly lengthened soft, rod of flexible ma- Markwood disregarded, indicated, as above terial. undisputed evidence that the unsintered PTFE of Sumitomo does not respond to the patent The ’566 contains an example of plastics conventional processing of Mark- an stretching length. article to 16 times its wood and the art recognition of that fact. Smith and the ’915 teach patent that PTFE Whiton, supra, USPQ F.2d at could beyond not be stretched four times at 457. length without heating it to above its crys- talline melt temperature, step avoided claim evaluating example, for Dr. pairing disregarded as set forth in the claims. Sumitomo’s limited length teaching. of stretch In evaluating teaches length Sumitomo there is a recognized claim the court that Sumitomo stretching PTFE, limit unsintered made mention of rate of stretch. Look- suggest does not what that limit might be. ing to Markwood to supply teaching Markwood, 3,208,100 patent U.S. to Nash disregarded only plas- the conventional (Nash), 2,823,421 patent to Scar- tics-unsintered PTFE distinction but also (Scarlett) lett teach that non-PTFE thermo- divergence the clear teach- Markwood’s plastics can be stretched rapidly and to ing that must be crystallinity reduced or lengths, reduction, extended and also teach avoided from the presence “highly crys- elimination, or avoidance of crystallinity be- talline” in all claims of the ’566 stretching. fore Similarly, and many of the same rea- The disclosure the Smith sons, pairing of Markwood’s and Smith’s patents and ’915 PTFE article teachings was an inappropriate basis for be stretched to as much as four times its concluding processes set forth in length encompasses the step stretching claims 3 and 19 would have been obvious. to twice its length set forth in claim 17 and indicated, rapid As above Markwood’s establishes that step such would have been stretching of conventional plastic polypro- obvious. pylene with crystallinity reduced would not Claims 3 and 19 must be considered indi- suggest rapid stretching of highly crystal- vidually separately. PTFE, U.S.C. line light teachings in the art Nowhere, in any references, is it that PTFE should be stretched slowly. taught or suggested that highly crystalline, Pont, Smith owned du where unsintered PTFE could be stretched at a Dr. Gore’s invention was considered crystalline melting point. polymer’s new mate- a “remarkable produced have added). (Emphasis surprising, is not rial”. That circumstance PTFE, says Smith, dealing with though plas- film should be teaches that the Nash stretch. any rate of word about not a i.e., viscous, ticized, made more before teaching, to that Dr. stretching. Contrary of Sumitomo Lastly, pairing in- crystallinity not reduce before Gore did from the same short- suffers ’915 stretch, but maintained creasing the rate hy- resulted from pairing comings. “highly crystalline” PTFE the unsintered trial post in Garlock’s forth set pothetical a 100% rate while second testimony on no brief, was based times, than five forth and to more set respect in the record. In evidence other and 19. in claims 3 respectively *12 mentions rate of neither reference claim and in view of all the entire record On In re- importance. its suggests stretch or references, entirety, in its is each point 19 both references spect of claim con- person ordinary that a skill clear invention in their away from the claimed breakage prob- tape with a PTFE fronted teachings. length-of-stretch limited the rate of lem would have either slowed percent “the 65 patent The ’915 states: to temperature or increased the stretching expanded material could be expanded Dr. Gore did nei- crystallinity. decrease the 65 percent second time for an additional accept- to the proceeded contrary ther. He increase ratio of expansion length or a total dramatically prior by of the art ed wisdom original 1:2.72 than three times [less length of stretch increasing the rate and However, neces- great care was length]. That fact is retaining crystallinity. and mate- expanded to sary uniformly obtain United strong evidence of nonobviousness. expansion at these ratios.” very great rial Adams, v. 383 U.S. S.Ct. States patent suggests Thus the ’915 (1966). 15 L.Ed.2d in claim amount of stretch of 500%set forth learned the details of Dr. Gore’s Having (more original than five times the invention, it within the district court found length) possible. is not other material the skill of the art to stretch indicated, are As and Smith Sumitomo PTFE to (Markwood); to stretch rapidly stretch, totally respecting silent the rate of porosity (Sumitomo); and increase teaching is no in the art simply and there (Smith). The high temperatures stretch at skill suggest ordinary that would to one of the claims were used as a result is that other that Markwood’s fast frame, individual, parts sepa- naked employed thermoplastics could or should be were prior employed rate art references by treating taught PTFE a mosaic to recreate facsimile Indeed, either or Smith Sumitomo Smith. point invention. At no did the stretch, nothing about rate of only says not Garlock, why court, explain nor does district teaching away its is from other preferred obvious to one that mosaic would have been in elements of the inventions set forth in the art in or what there skilled claims 3 and 19 disclosesthat stretch- Smith have caused art that would prior ing should done after the PTFE is heat- disregard art to those skilled in the melting ed above its crystalline point just against making there found teachings teach- crystallinity. with decreased Smith the refer- contrary, such a mosaic. On es: testimony, as and the uncontested ences possible indicated, Below about 300°C it is not PTFE is established that above therefore, draw more than about 4X It generis. surprising, sui [times] Stratoflex, that, while such draw ratios can be attained Inc. unlike situation 1530, USPQ polymer’s Aeroquip Corp., around 300°C and below the F.2d (Fed.Cir.1983), testimony there was no crystalline melting point with resultant finding that one skilled in the art it is improved properties orientation thermoplastic conventional would transfer to use at or above preferred temperatures PTFE, to those for unsintered or processes pertinent more than that considered predict would have been able to what would That happen PTO. did not here. In the if happen they did. case, Sumitomo, Smith, present and the ’915 among were references considered To imbue one of skill in the art ordinary by the Other PTO. references referred to suit, with knowledge of the invention in as not cumulative, considered were merely prior when no art reference or references of disclosing nothing not disclosed in referenc- convey suggest knowledge, record es that were considered by the PTO. The to fall victim to the insidious effect of a counterpart Canadian of Nash was con- hindsight syndrome wherein that which sidered PTO. The relevant only the disclo- taught against inventor is used sures of Markwood appear pat- teacher. Sandiford 3,544,671 ent 3,637,- Paratheon It is difficult necessary but that the deci- both considered PTO. Rus- forget sionmaker what he or she has been 240,997, sian Author’s Certificate assuming taught at trial about claimed invention its status as art and whatever and cast the mind back the time the dealt, material with which it contributed (often invention was made many as here nothing beyond the teachings of the ’915 years), to occupy the mind of one skilled patent considered PTO. the art who is presented only with the *13 references, and who is normally guided by As below, discussed more fully the then-accepted wisdom in the art. Had district court erred in specifically declining that been here done the inventions set forth objective consider the evidence of nonob in the claims 3 and 19 of the ’566 patent Sernaker, viousness. In re 989, 702 F.2d only could have been held non-obvious to USPQ 1, 217 7 (Fed.Cir.1983). That those skilled in the art at the time those evidence can often serve as insurance were inventions made. against the insidious attraction of the siren visualizing Error in the burden hindsight when confronted with a difficult proof of obviousness have contribut task evaluating prior of Though art. ed to the application court’s here of the art pointed evidence here more in prior art. Adopting phrase from earlier of direction nonobviousness than obvi precedents, the court said “the presumption ousness, tend, evidence may as objective validity] is weakened greatly where the [of Sernaker, in supra, did to reassure the Patent Office has failed to consider perti decisionmaker. nent prior art”. That is not the law of sum, the district established court erred as a precedent this court. SSIH ITC, matter of law on this Equipment concluding v. 718 record S.A. F.2d 218 USPQ 687 that Garlock had met its (Fed.Cir.1983); proving Re burden of Solder ITC, moval 628, 633, Co. v. 582 F.2d that the inventions of claims 3 and 19 of USPQ 129, 133, (CCPA n. 9 1978). patent The the ’566 would have been obvious. presumption separate has no evidentiary value. It cautions decisionmaker (b) ’390 patent
against a rush to invalidity. conclude Sub (i) mission of additional art merely is “pertinent” does not dispel caution. It The court product district found claims is difficult to imagine patent a law suit in 9, 12, 14, inherently anticipated 18 and 43 which an infringer accused is unable to add because it found that the of microstructure some new “pertinent” art. The inescapable nodes interconnected is an inher- by fibrils burden persuasion on one who would of. ent characteristic of PTFE paste-extruded prove however, invalidity, through remains products resulting from the process dis- out the trial. 35 U.S.C. § closed in The court found the first Smith.
The burden of
four of
proving invalidity may
plus
of
those claims and claim
35, 36,
course be facilitated
by prior
inherently anticipa-
art
67 and
conjecture respecting
mere
the characteris-
products
strength PTFE
high
ted because
products
might
result from
examples of
tics
Sumitomo.
are inherent
in references.
processes
disclosed
practice
a
include neither
teachings of
The
Smith
USPQ
Felton,
In re
484 F.2d
“porous”
suggestion
nor a
disclosure
1973). It is clear that
(CCPA
“microstructure charac-
having a
products
nor
teachings of neither Smith
Sumitomo
by fibrils”
nodes interconnected
by
terized
pat-
claimed in the ’390
products
place
to have
the claims found
required by
as
possession
public.
ent
anticipated by
been
Smith.
not in-
teachings
The
do
Sumitomo
teachings
Smith
Sumi
“a
having
products
clude a disclosure of
vague concerning
unacceptably
are so
tomo
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propriate disparagement in Garlock’s brief met its burden of Garlock has not of Dr. as a “friend” of Sperati Gore. 1, 9, 12, 14, 18, that claims and 43 showing unique nature of unsin Given 1, 9, anticipated by are or that claims Smith PTFE, persuaded tered we are not that 12, 14, 36, 43, 67, 35, anticipated and 77 are processes “effect” of the disclosed Smith by Sumitomo. Sumitomo, and an “effect” undisclosed patents, always those would be to inherent (ii) or ly produce always produce be seen The of the scope and content products meeting all of the claim limita skill, art and level of dis ordinary tions. of inventions set forth Anticipation in relation product patent, be on cussed above to the ’566 predicated claims cannot less, weight ’390 or depending be the same for the The would its nature and however, not, relationship court did to the district does merits of the inven- nor tion. It Garlock, criteria, pertinent, be the most apply supra, proba- the Graham tive, claims, revealing and evidence ’390 available to aid apparently assuming to the that in reaching a conclusion on obvi- claimed products, having been found ous/nonobvious issue. It should when in the processes inherent Sumitomo and present always integral be considered as an Smith, would have been obvious in view of part of the analysis. so, that those references. If was error.
Inherency and obviousness are distinct con- laminates, Gore’s fabric for example, as In re cepts. Spormann, F.2d set forth in claims 36 and satisfied a USPQ (CCPA 1966). long felt need for material having contradictory properties being simulta- discussing inherency the district court neously (allowing breathable water vapor recognize between did differences Smith’s perspiration to pass) waterproof. and The disclosure and the inventions set forth in record establishes such a had material 1, 9, 12, i.e., claims long been sought by makers of rainwear a description from absence Smith of outerwear, Army as products porous Smith’s well. That Gore’s fabric laminates filled the absence from of a disclosure Smith need attested the rise their products those have a microstructure char- annual dollar sales from zero to mil- seven acterized nodes interconnected fibrils. years lion in the first five of their availabil- Similarly, a between Sumito- difference ity. mo’s disclosure and the inventions set forth Gore’s PTFE for replacement tubes 1, 9, 12, 35, 36, 43, in claims and 77 veins, human arteries and also satisfied recognized from absence Sumito- long felt need. uncontradicted evi- quantification mo of a the matrix tensile dence establishes that Gore’s PTFE tubes strengths of products of Sumitomo’s leaking, hold blood without need not process. The district also court discussed pre-clotted patient’s blood, with are dependent differences between the inert, and, breathable, chemically are being the prior art. Because we conclude less likely to cause an air embolism. the independent claims of the pat- ’390 value uniqueness proper- of those four patentable record, ent are the art of over tubes, ties make Gore’s PTFE as described need not dependent we discuss the claims. in unchallenged testimony, “the im- most Having determined the inven portant synthetic material presently exist- *15 tion would have been in view obvious of the and, ing” in vascular with surgery, along Sumitomo, of either Smith the record, other the evidence in reflect the district court did not discuss the strong intended of the working system. showing objective of evidence of nonobvi above, As discussed current annual sales here with present, saying respect ousness to of over million dollars are attributable sixty evidence, part one of such “no amount of products to the merits of the in claimed commercial success can save it.” ap That the patent. Considering ’390 the felt long was error. All evidence proach bearing on need for and the products those obvious obviousness, issue of any the as with other advantage gained by commercial to be in judicial issue raised the conduct of the need, meeting that it is con- reasonable to process, must be considered and evaluated products clude that the ’390 of the legal the required before conclusion is patent per- would not have been obvious to Stratoflex, 1530, supra, reached. 713 F.2d sons of skill in the art at time ordinary the USPQ at 218 879. the claimed inventions were made. The objective indicated, evidence of nonobvi As above the praise which ousness, i.e., Graham, the of supra, greeted products “indicia” the claimed in ’390 the given in a suppliers, case be entitled to more from PTFE including 1556 “specific poly- of solid objec- phrase gravity is further patent, of the
owner Smith is indefinite. mer” evidence of nonobviousness. tive on a misinter findings The rest argument appeal Garlock’s 112, its and purpose. function pretation § the recit are invalid because the ’390claims whether cer The district court considered are strengths matrix tensile minimum ed enabling have to the tain terms would been A claim to is without merit. not “critical” developments and to looked formula public to legally required is not product a new occurring well after Dr. publications and Miller, In limitations. re include critical reaching its conclusions filing Gore’s date 696, USPQ 597, 602 689, however, Patents, are writ under § claims are not (CCPA 1971). The ’390 those art to to enable skilled ten ingredients or to optimization drawn invention, In re public, not the practice teachings, art but ranges within broad Storrs, 474, 478, 293, USPQ F.2d of particular porous products to PTFE new (CCPA 1957), speaks as of 296-97 and § characteristics. filing date, not application as Mott, re time of trial. In F.2d sum, and in view of the difficul USPQ (CCPA 1976). PTFE and working with unsintered ty finding was evidence and no There pro to various unpredictable response skilled in the would have found those art cessing techniques, vagueness of Smith specification non-enabling or the claim products pro concerning and Sumitomo 21, 1970, when language May indefinite on at processes, filling duced those in issuance of application resulted least two felt needs and the commer long Indeed, the Gore’s was filed. patents Dr. above, we conclude cial success described quoted by the district court expert that the inventions set forth testimony upon was relied primarily whose 14, 18, 35, 36, formulae, was still school respecting patent would not have been obvious time. at the those those skilled art time inventions were made. evidence in There uncontradicted at the the application
the record that time (c) patents 112 and ’566 ’390 § filed “stretch rate” meant to those percent in the art of stretch skilled patents single in suit resulted from a stretching, by the time of divided substantially have application thus measurable, for example, latter was in- specifications. holding identical for the stopwatch. with a Concern absence 112 is validity on the basis of common cal specification from the of a formula for patents. both culating misplaced, stretch rate therefore court patents The district found post-filing development and the date did not disclose sufficient information formulae, Dr. later varying including Gore’s art ordinary enable skill in the person corresponding of a formula in his addition invention, required to make use the is irrelevant. Japanese patent, and that certain paragraph, first *16 indefinite, 112 that the inven language presumably requires claim was Section the practicing the best mode of light paragraph, second be- tor set forth of § the at the time the (1) cause: there no definition in invention known him was rate”, Calculating was filed. stretch specification application of “stretch different was actu having accomplished by for stretch rate at that time computing formulae rate trial; (2) the to stretch ally measuring required been time developed presented at only PTFE material. That was the way taught specifica- there was no in the the inventor, used tion to of mode then the calculate minimum rate °C; The record establishes that calcu (3) phrase stretch above 35 “matrix worked. indefinite; mode have em- strength” (4) tensile is lation would been ordinary needed, skill in the art tion were is not ployed by those invalid for experimentation. was because of a need application at the time the filed. As Hyde, Minerals indicated, Separation, disclosure must be Ltd. Dr. Gore’s ex- 270-71, 37 S.Ct. compliance light amined L.Ed. 286 for § (1916). A patent only is invalid when applica- extant in the art on his those knowledge required skilled in the art are to engage in filing tion date. experimentation practice undue the in court, though The district discuss 503-04, vention. In re Angstadt, F.2d enablement, ing also of spoke indefiniteness USPQ 214, (CCPA 1976). There rate”, matter having “stretch to do was no evidence the court made no with paragraph, second relevant finding that undue experimentation was re infringement. assessment of The use of quired. rate “stretching exceeding ... at a about Moreover, finding here rested per 10% second” in the claims is not indefi on confusion of the of the specification role nite. is Infringement clearly assessable with that of the The claims. court found through stopwatch. use of a No witness specification’s failure to state the said that could not done. As above (albeit lower limit of stretch rate above 10% indicated, subsequently developed and per second) degree at of temperature each therefore irrelevant formulae cannot be (a above 35 requirement °C at least hun used to non-enabling render or indefinite dreds of entries in specification) did not that which enabling was and definite at the “distinguish processes performed above the application time the was filed. ‘lower limit’ performed from those below absence Similarly, from the the ‘lower limit’ ”. The claims of the ’390 specification of a method for calculating the patent say processes nothing of and lower minimum rate of stretch above 35°C does limits. what Distinguishing infringes from not render the specification non-enabling. claims, what doesn’t is the role of the specification discloses lower “[t]he the specification. It clear that speci limit of expansion rates interact with temp Storrs, fication is re enabling, supra, In logarithmic fashion, erature in a roughly patents precise claims of both are being higher much higher temperatures.” at within the of the law. requirements re Calculation of minimum stretch rate above Moore, 1232, 169USPQ (CCPA claims, 35°C is nowhere in the and it is the 1971). claimed invention for enablement finding that “matrix tensile require required. The claims at indefinite, like the strength” is other find greater per temp rate than 10% second at ings under to rest on a con appears and the crystalline eratures between 35°C fusion roles of the concerning the melt PTFE. point of unsintered That the specification. finding and the While “ma minimum rate increase with of stretch trix in the strength” tensile claims indefi temperature render non-enabling does not nite, at the same time district court Dr. specification, particularly Gore’s recognized specification itself dis convincing absence of evidence that those compute closed how to matrix tensile skilled in the art would have found it non- “to strength, stating compute matrix enabling application the time porous specimen, tensile strength of a one filed. required divides the maximum force sample The district court break the the cross sectional area invalidated patents porous both of the and then sample, multiplies indefiniteness because of its view this ratio of quantity by specific that some “trial and error” would gravity be needed to the “lower limits” of the solid divided polymer determine specific gravity porous specimen.” stretch rate above 10% second at *17 Further, specification provided the the ac temperatures various above 35°C. That in Assuming strength was some tual matrix tensile several ex- experimenta error. truth, in negligence [emphasis to their that as a settled ampies. It is well In lexicographer. original]. own may be his applicant in of its calculation of the disclosure light USPQ Norton, 795-96, at at F.2d agree that we cannot specification, the 545; PTO, 58 see, Miller, Fraud on the strength” tensile is either indefi- “matrix (1976). JPOS non-enabling. nite or rep alleges fraud in Gore’s Garlock specifi from the Nor does absence a stretching tape at that PTFE resentations “specific gravity cation of a definition was novel greater per rate than 10% second compu of the polymer”, part solid of the physical phenome produces and that it strength, render of matrix tensile tation court found the evidence non. The district undisput It is computation that indefinite. had a to establish that Gore insufficient in examples appli the many ed that defraud PTO. No specific intent to the values used for specific gravity cation the that find overturning for our basis exists PTFE and sintered were 2.3 unsintered agree ing. Accordingly, we with the dis 2.2, testimony was no respectively. There has to sustain trict court that Garlock failed per were not known to that those values heavy proving, by burden clear the art or could not ordinary sons of skill in evidence, from sufficient facts convincing simply or There is be calculated measured. intent can be inferred. fraudulent that “specific conclusion support the September to a points Garlock is or polymer” solid indefinite gravity filed in the that stated: Gore affidavit PTO that absence of its definition renders in my 2. to Prior invention disclosed non-enabling. See re Wer specification during patent application, theim, USPQ (CCPA captioned expanded products PTFE 1976). production Associates, Inc., rate by W.L. & has failed to We conclude that Garlock was neither measured nor stretching prove application that at time the was not my knowledge controlled and to did filed, not specification enabling was stretching of PTFE involve unsintered that the claims were indefinite within second, exceeding per about rate 10% meaning of original) (emphasis in (2) Fraud and no finding No district court Fraud must be shown clear and record that that evidence of establishes Curtiss, convincing Norton evidence. disregard was made reckless statement 797, 167 USPQ (CCPA F.2d 546-47 an of facts from which intent to defraud 1970). bemay inferred. the one making The state of mind of representations probably the most finding court’s in 1982 The district to important of the elements be con- machine stretched inherently that the 401 determining sidered existence of more tape at time in 1969 at a rate some ... and subjective “fraud.” Good faith second, does than not establish 10% intent, considered, while they are be Dr. Gore was aware that fact made necessarily should control- untrue nor does it make his statement circumstances, ling. ordinary Under rate knowledge his that had not been coupled fact of with misrepresentation the district employed. of stretch Nor does proof party making it had finding court’s conflict with Dr. Gore’s enough war- knowledge falsity of its the rate statement there drawing rant the inference that neither measured nor controlled in the Gore public was a fraudulent intent. Where invention shop before his policy complete demands a and accurate a whole. nothing suffice to show disclosure the evidence of isolated than Nor does misrepresentations more Garlock’s contention support were made an statements atmosphere gross *18 itself the attempted infringement convince the determine that Dr. Gore issue on a physical phenomenon always present PTO that the record. Infringement partic- which at a rate stretching great- existed in patents ular two claims of was asserted. per always produced er second a than 10% None of those claims has been finally held than 7300 strength greater matrix tensile Assuming invalid. their continued asser- Dr. set forth in psi. contrary, On the tion, infringement must be decided with his specification examples indicating respect to each as a separate asserted claim broke, samples ruptured, some or disinte- Altoona, 487, entity. supra, 294 at U.S. grated. S.Ct. at 459. Those factual determinations should be made first instance (3) Fees Attorney’s district court. The district court did not abuse its denying request discretion in Garlock its for Decision fees. attorney
The holdings invalidity of claim 1 of Infringement patent the ’566 and of 102(a) under claim § 103, patent 17 of the ’566 under the de- § Where, here, appellate an court termination that Gore did not commit fraud reverses holding invalidity, a and remand PTO, fees, and the attorney denial of for ordered trial of the factual issue of affirmed; are all holdings that claims an infringement, judicial inefficient use of patent are resources results if the invalid under judgment second 102(b), appealed. better that claims 3 of the practice would there and 19 ’566 § fore be for district court to decide both patent are invalid under and that all § the validity infringement issues when patent claims of the ’566 are invalid under trial, both are contested at the enabling the holdings are reversed. The single conduct a appeal disposition 1, 9, 14, 18, 35, 36, claims and 77 case in a single appellate opinion. entire of the ’390 are invalid under §§ and that all ’390 Resolution of the issue infringement patent are invalid under are re- trial may overlap also with resolution of the versed. The case is remanded determi- issue, where, validity example, infringement nation of the issue. copied claimed invention was or was not validity challenger, challenger or PART, AFFIRMED IN REVERSED IN substituted claimed invention for freely PART, AND REMANDED. available art processes products, Appendix Eibel Process Co. v. Minnesota & Ontario ’566 Paper Co., 45, 56, Claims of the discussed at 43 S.Ct. (1923), L.Ed. 523 or an trial: assertion of non- enablement conflict with ease with process production 1. A for the of a which the accused infringer may shown porous of a poly- article manufacture to have practiced taught invention as tetrafluoroethylene mer of Eibel, 65-66, supra, 261 U.S. at comprises expanding a article con- shaped S.Ct. at sisting essentially crystalline of highly poly (tetrafluoroethylene) made court declined having district to de- paste-forming technique, extrusion after issue, infringement cide the Gore suggests lubricant, removal of said that the record here is sufficient to warrant shaped deciding our unsintered article at rate ex- now. With reluctance in ceeding length view of about 10% second main- and bitter nature of the shaped present litigation, taining tempera- we said article at sugges- decline about doing, crystal- tion. In so we ture between 35°C. and the imply nothing of our view point tetrafluoroethylene on the issue. Nor do we intend line melt said any implication during stretching. that the said polymer district court could not *19 has a matrix ten- material which porous Appendix —Continued of at in at least one direction strength sile 1 in of claim which process 3. The be- crystallinity and has a psi, least 9290 second. stretch is about 100% rate of low 95%. about which of claim in process 17. The expanded article is such shaped 43. A porous material made of a tet- expan- direction of length its final in the rafluoroethylene polymer, which material origi- than about twice greater sion is has a microstructure by characterized- length. nal fibrils, by nodes interconnected which claim 17 in which process 19. The (a) material has a matrix tensile strength than about length greater final said in at least one direction above about 9290 original length. five times the psi, (b) has been heated to a temperature at patent of the ’390 discussed Claims above 327°C. a and has be- crystallinity trial: 95%, (c) low about and has a dielectric consisting material essen- porous 1. A constant of 1.2-1.8. polytetrafluo- tially highly crystalline impregnated which material has a 67. An structure com- roethylene polymer, by nodes in- prising microstructure characterized a matrix by
terconnected fibrils and has (a) shaped porous a article formed of a direction strength tensile in at least one material tetrafluoroethylene made of a 73,00 psi. above about polymer which material has a micros- consisting essen- porous 9. A material tructure characterized inter- by nodes polymer, tially polytetrafluoroethylene connected by fibrils and a matrix ten- char- which material has a microstructure strength sile in at least one direction fi- by by acterized nodes interconnected about 9290 psi, above in strength brils and has a matrix tensile (b) polymer impregnated a within the psi, at one direction above 9290 least pores shaped of the said article. which material has been heated to a 77. The structure of claim 35 in which melt temperature crystalline above the the first shaped having article is a sheet crystallin- has a point polymer of said pores pass gas that will but will not n ity below about 95%. pass liquid water. porous 12. A material accordance DAVIS, Judge, Circuit concurring with claim 9 which is in the form of a part result in dissenting part. shaped article. (1) I concur in the result validity 14. A in accordance with product 102-103; patent (2) of the ’390 under §§ a film. claim 12 which is in the form of 112; validity of the ’390 patent under § A in accordance with product (3) the invalidity and 17 of form of continu- claim which is (4) patent; ’566 lack of fraud on the ous filaments. Office; (5) Patent and Trademark deni- comprising 35. A laminated structure attorney’s disagree al of fees. I and dissent (a) a article of a shaped first formed validity as to the of claims 3 and 19 of of a tetrafluoroe- porous material made ’566 thylene polymer, which material has in- by microstructure characterized nodes 1. The invention embodied in terconnected fibrils and has a matrix known, claim 1 of the patent ’566 was strength in at least one direction tensile through use of the 401 machine Gore 7,300 psi, (b) about a second above well shop, before the “invention date” shaped shaped article bonded to said first (claimed Gore, inventor) Robert article. such, October 1969.1 As the claimed inven-
36. The structure of claim 35 in which three grounds: tion was invalid on least first article is shaped (i) anticipated said formed it was and therefore would significance to the pri- reference 1. The 401 machine contains no was used under (issued Gore) or ’915 rate of stretch. to Wilbert (under obvious 103) have been 35 U.S.C. sure that no effective rolls in ques- [stretch] date; at the time of the claimed invention tion would have been more than three feet (ii) the invention was “in public use” simply because of the nature and size of the (under Gore shop 102(b)) 35 U.S.C. more equipment” and that he did not remember year than one applica- feet; any stretching more than three anoth- (i.e., prior 21, 1969); tion to May (iii) er employee testified that the distance (made the invention Gore) Robert between the rollers was “a maximum of 18 *20 known to and used “by others in this coun- (emphasis added); inches” a document pre- (35 try” 102(a)) U.S.C. before the § pared the same by employee (an engineer) invention date of October i.e. the in- on June reports that the stretch vention by was used Wilbert Gore and oth- inches; span was 8 the 401 machine was the ers in the Gore shop before the October only stretching machine by used the Gore date.2 company; and the 401 machine was never substantially changed before October 1969. The critically important aspect the in- All up this adds to the fact the 401 vention of the ’566patent is the stretching machine was at all relevant times operated of PTFE at a rate above per 10% second.3 with a stretch of less than four feet.5 Robert Gore testified that he conceived this There question is no the machine invention no earlier than (and October 1969 so operated (the before October 1969 have the take Dis- right word),4 him at his we trict Court found that tape sales of but the made facts found the District Court the 401 machine proposed were in August plainly show that shop the Gore was in fact 1969). practicing that invention considerably earli- er. I can accept Robert (to Gore’s affidavit PTO) there was no stretching
The District Court found that in the 401 at shop Gore a rate exceeding about machine the distance between the stretch per 10% second to “my invention stretch; rollers dis- controls the rate of a short- closed in the captioned patent application” er distance results in a higher rate of stretch; (emphasis added)6 only because that process decla- described in expressly qualified ration was phrase ’915 practiced to be with a rate “to second, my knowledge” (emphasis added). stretch per below 10% the dis- tance District specifically between the Court found no specific stretch rollers would have to greater feet; and, intent Robert than five if Gore to defraud record, feet, distance is less this we than four cannot properly rate of overturn greater second; stretch is finding. than But the per personal 10% absence of machine drawings used to construct intent to defraud say that, does not mean or machine indicate that the distance between whether not, Robert Gore realized it or inches; the stretch rollers was eight a Gore 401 machine was not actually operating, employee testified that “I am reasonably well before October to stretch unsin- discuss, 2. testimony Aside from the bases I I do opposing not reach cite this but did cite the grounds invalidity evidence) the other testimony. asserted for credited the Gores’ patent. the ’566 stretching 6. The factor of the rate of was of concededly 3. Before the PTO Robert Gore re- during pros- direct interest to the examiner ferred to this as “critical” to his invention response or as ecution ’566 to the his “invention.” express request examiner’s declaration production the Gore firm’s of stretched 4. tape, prior The District found Court that October 1969 PTFE to Robert Gore’s invention here, was the earliest date Robert stretching Gore asserts for asserted did not involve of un- conception pat- his of the invention in the exceeding ’566 sintered PTFE at a rate about 10% ent. second, per Robert filed an affidavit in Gore specifically stating my PTO that “to knowl- (Robert Wilbert) edge" (emphasis added) 5. The Gores testified at the 401 machine did trial stretching exceeding that the distance was five feet but there is not involve at a rate about (which no indication that the trial court did not second. 10% exceeding company rate about 10% tered PTFE at a use” because the Gore public “a * * * Westinghouse per second. Cf. O’Brien in the facto “use of the device made Cir.1961). (3rd 293 F.2d Corp., Electric of business.” Con regular in the course ry to me to reconcile Rob- impossible It seems Inc. v. United Valley Enterprises, necticut (i) facts —that insistence on two ert Gore’s USPQ 404, States, he invented the October (Ct.Cl.1965). knowledge prior October (ii) he had Also, 102(a)8 here because applies 4. the critical 1969 of PTFE was the inventor in Robert Gore facts in the record as rate —with the solid Wilbert and others patent and Gore machine, ex- prior operation of the 401 be- using were the 401 machine shop Gore did not cept on the view that Robert Gore (the in- Wilbert Gore fore October 1969. shop realize that he and others in which the in the ’915 under ventor previously. had made his invention used) and the machine was made and 1969 the It follows that in October are “others” within employees other obvious invention of ’566 would have been 102(a) they are not the same as Robert *21 — 103 to Robert Gore because the under § the who claimed to be inventor of Gore of the 401 machine constitut- prior practice patent.9 that into the ’566 ripened prior Even if this was not art prior ed art. 102(f), which bar Robert also would See § technically statutory pro- within invent the sub- if he did not himself Gore the source of art.” only prior vision “is not of the ’566 ject patent.10 matter Fout, (CCPA In re 675 F.2d of validity sustains the majority 5. The 401 machine was emphasis original). The (the patent 3 and 19 of the '566 (issued to practiced under the ’915 appellant’s suit for claims also involved and, Gore) Wilbert whether or not Robert in- which are infringement) dependent subjectively hap- what was Gore realized invalidity valid claim 1. Because of were pening, shop he and others the Gore novelty 1 the in claim 3 only possible claim later practicing the invention embodied the rate of requirement would be art at least prior That was second, be about 100% stretch would as to Robert Id. at 300-01.7 Gore. novelty of claim 19 would possible to invoke thought necessary 3. If it be greater be length be that the final would directly, anticipa in order to show original length. five times the than about tion, that the 401 proof the record contains added My position is that both of these machine was constructed and designed, novel, elements, if have been obvious would (just supra) used as described in November art. skill in the persons ordinary early and December 1968 and the months of The year prior majority’s 1969—more than one to the ’566 defect in the analysis it neglects the cardinal fact patent application May See 102(b) prior (dis- E art Jt.App. 1199—E 1200. Section included the 401 machine supra), therefore commercial cussed not earlier applies. Although merely pat- production apparently actively ents assessed in the majority opinion. sought practicing itself, until June 401 machine directly involved PTFE 21, 1969 was prior May the 401 machine not conventional thermoplastic polymers. undisputed who that there are no 9. It is that it was Wilbert Gore 7. The District Court has found project for the 401 machine initiated claim 1 of the ’566 differences between it. watched over processes previously used produce paste-extruded unsintered firm to “secondary majority’s 10. discussion PTFE. considerations,” though it is relevant to other case, aspects irrelevant to the issue of of this anticipated if it “was known 8. An invention is machine, anticipation raised the 401 * * * * country others in this be- or used hardly persuasive of obvious- as to the issues applicant for fore the invention thereof respect ma- to the 401 ness based on or with added). (emphasis patent” chine. That machine also involved directly rapid PTFE at
stretching markedly a rate ex- ceeding With this art of the 10%. him, ordinary person
machine before an skilled art would maximize stretch rate, if only improve pro- the machine’s Jewell,
duction Cf. In Dwyer, rate. re Johnson, McGrath, Rubin, & USPQ (CCPA 1963). More-
over, very operation existence and machine,
the 401 which stretched PTFE rapidly without breaking, suggests to the person
skilled probability at even rates. higher Certainly, in the light machine,
of the 401 workers skilled would prior Markwood, Nash, see in at least the patents (teaching Scarlett extensive rapid stretching of non-PTFE thermo- plastics) suggestion method of
the 401 machine could also used for
comparable rapid and extensive stretching
of PTFE. *22 sum,
6. I escape cannot the conclu- sion although there was no fraud that — proved the true facts as to the 401 —if machine had been made known to the PTO
(as it requested), involved claims of (and should probably would) accepted. have been
MEDTRONIC, INC., Med-Rel,
Inc., Appellants, PACEMAKERS, CARDIAC INC., Appellee. Appeal No. 83-820. Appeals, United Court of States Federal Circuit.
Nov.