W.L. Gore & Associates, Inc. v. Garlock, Inc. (JWB)

The Case

• Gore (Appellant/Cross-Appellee), Garlock (Appelle/Cross-Appellant)
• District Court for N. District of Ohio held Patents ‘566 and ‘390 invalid

The Patent

• Gore experimented with heating and stretching of highly crystalline PTFE rods.
• late October, 1969, Dr. Gore discovered, contrary to teaching, that stretching the rods as fast as possible enabled him to stretch them to more than ten times their original length with no breakage
• Gore developed several PTFE products, with commercial success
• May 21, 1970, Gore obtained patents: ‘566 has 24 claims (process), ‘390 has 77 claims (tape, many claims directed at ‘566 patent)
• Filled long sought yet unfilled needs, enjoyed prompt and remarkable commercial success, provide most important synthetic material available for use in vascular surgery
• Garlock first produced an accused product in response to a customer's request for a substitute for the patented product, that Garlock advertised its accused product as a “new form” of PTFE and as “a versatile new material which provides new orders of performance for consumer, industrial, medical and electrical applications”

Infringement

• Nov 2, 1979, Gore sued Garlock for infringement of process claims for ‘566 patent, sought injunctive relief, etc
• Dec 18, 1979, Garlock counterclaimed for declaratory judgment of patent invalidity, non-infringement, fraudulent solicitation
• Feb 7, 1980, Gore filed second suit for infringement of product claims for ‘390 patent

The Ruling

District Court

• ’566
  • declared all claims of the patent invalid under 102(b) because the invention had been in public use and on sale more than one year before Gore's patent application, as evidenced by Budd's use of the Cropper machine
  • held claims 1, 3, 17 and 19 invalid for obviousness under 35 U.S.C. § 103, on the basis of various reference pairings
  • held all claims invalid as indefinite under Section 112
• ’390
  • held claims invalid under §§ 102 and 103
  • held all claims invalid as indefinite under Section 112
• Gore did not commit fraud before the PTO
• refrained from deciding infringement issue

Court of Appeals

• District Court erred in (1) its holdings of invalidity under §§ 102(a), 102(b), 103 and 112; (2) its finding that Gore did not commit fraud on the PTO; or (3) denying attorney fees to Garlock
• Garlock failed to carry its burden of proving all claims of the present patents invalid

’566

Section 102

• In August, 1969, Gore offered to sell to Export Tool Company (Export) tape “to be made” on the 401 machine
• Oct 24, 1969, tapes made on 401 machine were shipped to Export
• Gore offered no proof that his invention date was before the date of shipment to Export
• Therefore, District Court’s judgment of public use for claim 1 of ‘566 patent is affirmed

The Cropper Machine Section 102

• 1966 John W. Cropper (Cropper) of New Zealand developed and constructed a machine for producing stretched and unstretched PTFE thread seal tape
• 1967 Cropper offered to sell his machine, describing its operation – however, no evidence it was known or used in this country
• 1968 Cropper sold machine to Budd, and it was used to produce/sell PTFE
• Budd employees were legally bound to keep it secret, no evidence of failure to do so
  • No evidence that anyone seeing machine would allow them to learn anything of the process
• District Court ruled ‘566 invalid under 102 because “the invention was in public use and on sale” by Budd more than a year before Gore application
  • It was error to hold that Budd’s activity was “public” use of process
• If Budd offered and sold anything, it was only tape, not whatever process was used in producing it

Section 103

• In its consideration of the prior art the district court erred in not taking into account the import of the markedly different behavior of PTFE from that of conventional thermoplastic polymers clearly established and undisputed on the record, and in thus disregarding the unpredictability and unique nature of the unsintered PTFE to which the claimed inventions relate
• '566 patent contains an example of stretching an article to 16 times its length. Smith and the '915 patent teach that PTFE could not be stretched beyond four times its length without heating it to above its crystalline melt temperature
• Nowhere, in any of the references, is it taught or suggested that highly crystalline, unsintered PTFE could be stretched at a rate of about 100% per second as required by asserted claim 3. Nor is it anywhere suggested that by rapid stretching a PTFE article be stretched to more than five times its original length as required by asserted claim 19. On the contrary, the art as a whole teaches the other way.
• Sumitomo made no mention of rate of stretch
• district court erred as a matter of law on this record in concluding that Garlock had met its burden of proving that the inventions of claims 3 and 19 of the '566 patent would have been obvious

’390

Section 102

• Smith includes neither a disclosure nor a suggestion of “porous” products having a “microstructure characterized by nodes interconnected by fibrils”
• Sumitomo does not include a disclosure of products having “a matrix tensile strength ... above about 7,300 psi”
• Garlock has not met its burden of showing that claims 1, 9, 12, 14, 18, and 43 are anticipated by Smith or that claims 1, 9, 12, 14, 35, 36, 43, 67, and 77 are anticipated by Sumitomo

Section 103

• district court did recognize differences between Smith's disclosure and the inventions set forth
• a difference between Sumitomo's disclosure and the inventions was recognized in the absence from Sumitomo of a quantification of the matrix tensile strengths of the products of Sumitomo's process

• “In view of the difficulty of working with unsintered PTFE and its unpredictable response to various processing techniques, the vagueness of Smith and Sumitomo concerning the products produced by those processes, the filling of at least two long felt needs and the commercial success described above, we conclude that the inventions set forth in the '390 patent would not have been obvious to those skilled in the art at the time those inventions were made”

Section 112

• district court found that the patents did not disclose sufficient information to enable a person of ordinary skill in the art to make and use the invention, as required by § 112
  • (1) there was no definition in the specification of “stretch rate”; (2) there was no way taught to calculate the minimum rate of stretch above 35°C; (3) the phrase “matrix tensile strength” is indefinite; and (4) the phrase “specific gravity of the solid polymer” is indefinite
• However, patents are written to enable those skilled in the art to practice the invention, not the public
• We conclude that Garlock has failed to prove that at the time the application was filed, the specification was not enabling or that the claims were indefinite within the meaning of § 112

Fraud

• district court found the evidence insufficient to establish that Gore had a specific intent to defraud the PTO
• no evidence that Gore attempted to convince the PTO that a physical phenomenon always existed in which stretching at a rate greater than 10% per second always produced a matrix tensile strength greater than 7300 psi

Attorney’s Fees

• district court did not abuse its discretion in denying Garlock its request for attorney’s fees

Remand

• reverses holding of invalidity, orders remand for trial of the factual issue of infringement
• district court should decide both validity and infringement so that there will only be one appeal (not two)
• district court declined to decide infringement, as did Court of Appeals – remand told district court to decide on infringement
• case is remanded for determination of the infringement issue

Additional Opinion

Concurring In Part

• concur in the result on (1) the validity of the '390 patent under §§ 102-103; (2) the validity of the '390 patent under § 112; (3) the invalidity of claims 1 and 17 of the '566 patent; (4) lack of fraud on the Patent and Trademark Office; and (5) denial of attorney's fees

Dissenting In Part

• dissent as to the validity of claims 3 and 19 of the '566 patent
• I cannot escape the conclusion that, although there was no fraud proved, if the true facts as to the 401 machine had been made known to the PTO (as it requested), the involved claims of the '566 patent should (and probably would) not have been accepted

Class Notes

• Gore
  • Process for stretching Teflon
  • Prior art: stretch 10 % per second, but Gore: stretch 100 % per second
  • sued Garlock infringement
• Garlock
  • Claimed patents invalid under 102 (statutory bars), 103 (non-obviousness), 112 (fraud)

First Patent – Claim 1 – Section 102

• for process of stretching
• argued it was not novel because of a previous machine (‘Machine 401’)
  • Teflon-stretching machine that was in use in the Gore shop
  • people in his shop were stretching it faster before he actually invented such a process
  • was not the inventor
• Ruled Claim 1 INVALID by BOTH District Court and Court of Appeals
• Gore did not attempt to prove his invention date was before the date of shipment (machine was in operation in early October, and he claimed his invention date in late October)

Cropper Machine

• 1967 Cropper (of New Zealand) offered to sell machine
• 1968 sold to Budd (US company), who forced employees to keep secret
• District Court found patent invalid under 102 because the “invention was in public use and on sale” by Budd more than one year before Gore application
• However, Court of Appeals overturned – Budd’s use was not “public” (he tried to keep it secret; he sold the tape, not the process)

First Patent – Claims 1, 3, 17, 19 – Section 103

• prior art involved other thermoplastic polymers
• CAFC – Teflon not predicted – unexpected results, i.e. contrary to teaching

First Patent – Section 112

• Person with ordinary skill in the art should be able to reproduce the invention having read the patent
• Ruled not invalid due to 112

Ruling

• Remanded back to District Court