Full opinion text
OPINION CALEB M. WRIGHT, Senior District Judge. In this action, Hercules Incorporated (“Hercules”) charges Exxon Corporation (“Exxon”) with infringing both literally and under the Doctrine of Equivalents, United States Patent 3,211,709 which covers a form of sulfur-vulcanizable ethylene propylene terpolymers (“EPT’s”) useful as synthetic rubbers. Hercules’s interest in this patent arises by .virtue of an assignment from Great Britain’s Dunlop Rubber Company, Ltd. (“Dunlop”) whose interest in turn is derived from an assignment by its three employees, Drs. Stephen Adamek, Edward Allen Dudley and Raymond Wood-hams (“Adamek et al.”) whom the patent lists as inventors. Exxon defends by charging that some, if not all, of the claims of the Adamek et al. patent are invalid because (1) the patent involves an obvious development; (2) its disclosure is inadequate; and (3) it was procured by fraud. It is the opinion of this Court that some of Adamek et al.’s involved claims are invalid because Adamek et al.’s disclosures are inadequate. The remaining involved claims, although valid, are not infringed by Exxon’s products. THE CLAIMED PRODUCTS Hercules charges Exxon with infringing Adamek et al. patent claims 1-2, 4-7, 10, 13-14 and 16-18 of which claims 1 and 17 are representative: 1. A sulfur-vulcanizable, elastomeric copolymer of at least two straight chain [alphaj-olefins of from 2 to 10 carbon atoms and an ethylenically unsaturated bridged-ring hydrocarbon containing at least two ethylenic double bonds, at least one of said double bonds being in one of the rings of the bridged ring present in said hydrocarbon, said hydrocarbon being present in the copolymer in an amount imparting sulfur-vulcanizability, said hydrocarbon having from 7 to 20 carbon atoms, the total straight chain [alpha]olefin content of said copolymer being at least 50%. 17. A rubbery copolymer of ethylene consisting of ethylene, at least one alpha-olefin having the structure R-CH = CH2, in which alpha-olefin R is a Ci-Cs alkyl radical, and dicyclopentadiene, there being at least about 2.5 to 92.6% ethylene units by weight and at least about 2.5% to about 92.6% of said alpha-olefin units by weight, and, about 2.5 to 50% of dicyclopentadiene units by weight in said co-polymer. Claim 1 (which typifies claims 1-2, 4-7, 10 and 16) and claim 17 (which typifies claims 13-14 and 17-18), thus cover terpolymers containing three hydrocarbons, at least two of which must be alpha-olefins, including especially ethylene and propylene. Adamek et al.’s terpolymers must also contain a bridged-ring polyolefin. The essential difference between claim 1 and claim 17 is that while claim 1 broadly specifies the use of a large group of bridged ring polyolefins, claim 17 narrowly specifies the use of only one dicyclopentadiene (“DCP”). During polymerization, at least one double bond from each olefin becomes a single bond, releasing two electrons-one to each previously doubly bonded carbon atom. These electrons form the single bonds through which the two previously doubly bonded carbon atoms become incorporated within the main chain of the polymer. Ethylene, for instance, polymerizes in this fashion, known as “head-to-tail” or “1,2-” addition: Bridged-ring polyolefins are added to the polymer in order to make it curable. Curing refers to a treatment by which rubber is stiffened from a putty-like compound into a harder more resilient and useful material: [M]olecules . . . in a piece of . unvulcanized, rubber . . . exist in a randomly coiled arrangement. If that article is stretched . . . the randomly coiled molecules extend in the direction of stress. . . . [and] the [main chain of the] molecules tend to align in the direction of the stress. . . . [I]f you immediately release the article, the molecules will then return to their randomly coiled shape in their original position and the molecule will resume its original shape. ... If, however, you stress an uncured sample of rubber for a long enough time . . . the [main chain of the] molecules will flow past one another [This is known as creep] . . And now when you release the stress on that article, it will no longer retract to its original shape. It will have deformed into its new shape. In contrast, if you can cross-link or cure the polymer, . . . and . stress the molecules by stretching the assembly, again the molecules will tend to stretch out in the direction of the stress. . Now, however, the [main chain of the] molecules are tied together in a three-dimensional network by the cross-links. They can no longer flow past one another because they’re tied together. The molecules remain in the stressed condition for as long as you hold it stressed. When you release it, they want to go back to their original randomly coiled arrangement, and that takes the assembly back to its original shape. . . . Curing is successful when it significantly increases a polymer’s stiffness or resistance to stretching. Stiffness is measured by hanging weights from a molded ring of polymeric material and measuring the resulting elongation. Curing is usually accomplished by incorporating cross-links of sulfur. Sulfur curing requires the presence of double bonds, which the curing process converts to single bonds. Hence, the need for using polyolefins which, by definition, contain at least two double bonds. The theory is that a polyolefin will sacrifice one of its double bonds for polymerization. The remaining double bonds will remain, providing sites for sulfur vulcanization. THE ACCUSED PATENT During World War II, Japan cut off the Allies’ traditional sources of natural rubber. This caused a massive Allied research program to develop a synthetic substitute. For reasons of security, this program was centered among the American rubber companies; as a result, American rubber makers developed their technology far in advance of their foreign counterparts, including Dunlop. In its subsequent efforts to catch up with the American technology, Dunlop established the North American Research Center (“N.A.R. C.”) in Toronto, Canada about 1950. About 1954, N.A.R.C. hired Drs. Raymond Woodhams, Stephen Adamek and Edward Allan Dudley, who together set out to make the invention involved in this suit. Adamek, Dudley and Woodhams began their work during the fall of 1956, when they homopolymerized several olefins. They also copolymerized ethylene and propylene, and soon they began searching for a suitable diene to polymerize with ethylene and propylene They initially investigated isoprene and butadiene, but when this research proved unfruitful, they considered other dienes including DCP. The idea of using DCP may have originated with Dudley, who remembered that in June, 1956, Enjay advertised “that [DCP] was available and [that Enjay] would be interested in people finding some use for it. . It struck [Dudley] as an interesting possibility as a diene ... [so he] wrote away and asked for . samples.” The idea of using bridged ring structures such as DCP may also have originated with Woodhams who attended a September, 1956 meeting of the American Chemical Society in Atlantic City, New Jersey, where he listened to a lecture by three E. I. du Pont de Nemours & Company (“Du Pont”) employees discussing the preparation of homo-polymers of norbornene. Woodhams thought that norbornene, which closely resembles DCP’s bridged-ring, “would be a useful monomer to incorporate in our screening program.” On April 26, 1957, Adamek et al. began preparing and testing EPT’s containing numerous third monomer candidates including two bridged-ring dienes-DCP and norbornadiene — and a variety of other compounds. Only those experiments with the bridged-ring dienes proved successful. Adamek et al. then prepared a “rough draft for patent application” which they sent on June 12, 1957 to Dunlop’s Patent Department in Birmingham, England. From this draft, Dunlop’s Patent Department prepared a patent application and filed it in Great Britain on July 17, 1957. On July 14, 1958, Adamek et al. filed an American application, claiming the benefit of their British filing date under 35 U.S.C. § 119. The American Patent Examiners initially rejected all of Adamek et al.’s claims. Dunlop attempted to meet these objections, but was unable to do so prior to its November 30, 1961 assignment of the Adamek et al.’s American rights to Hercules. Hercules’s Edwin H. Dafter then assumed responsibility for Adamek et al.’s application. Dafter immediately cancelled all claims then on file and submitted a new set. At about the same time, Dafter copied claims from and requested an interference with U.S. Patent 3,000,866, which had previously issued, on September 19, 1961, to Du Pont’s Robert Edward Tarney. The Patent Office granted this request and Hercules’s interference expert Clinton F. Miller assumed responsibility for its prosecution. On or about July 16, 1964, the interference terminated in favor of Adamek et al. Adamek et al.’s patent eventually issued on October 12, 1965. THE LITIGATION During Hercules’s prosecution of Adamek et al.’s application, Exxon began making EPT’s containing methylene norbornene (“MNB”) and ethylidene norbornene (“ENB”). Both MNB and ENB contain two double bonds, one of which is located within a bridged ring. Since the broad language of Adamek et al.’s patent claims 1-2, 4-7, 10 and 16 arguably cover EPT’s containing these structures, Exxon entered licensing negotiations with Hercules. In the midst of these negotiations, Hercules initiated the present litigation on November 17, 1967. The parties subsequently prepared for trial, generating 18,000 pages of deposition from thirty-nine witnesses. A forty-six day bench trial followed, continuing between December 6, 1978 and July 17, 1979, during which time the parties generated a record of 6,900 pages and nearly 1,800 exhibits. In deciding this case, the Court is particularly guided by the presumption of validity that normally attaches to issued patents under 35 U.S.C. § 282. This presumption places the burden of persuasion on the party attacking the validity of the patent. If the Patent Office has previously considered the evidence that is cited to establish invalidity in a judicial proceeding, the party attacking the patent must assume a heavy burden and he must make a “clear and cogent” showing in order to prevail. If, on the other hand, the Patent Office did not consider the cited evidence, the presumption is weakened in accordance with a balancing of the pertinence of the newly cited evidence against the pertinence of the evidence actually considered by the Patent Office. OBVIOUSNESS The Law Exxon’s first challenge to the validity of the Adamek et al. patent arises out of 35 U.S.C. § 103, which, in relevant part, provides: A patent may not be obtained . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Graham v. John Deere Co., provides the following guidelines for testing a patent under Section 103: [T]he scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent are resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. Since Section 103 does not define the term “prior art”, courts generally look to 35 U.S.C. § 102, which defines prior art for purposes of judging novelty, as opposed to obviousness. In relevant part, Section 102 provides: A person shall be entitled to a patent unless— (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or (g) before the applicants invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. Hercules insists that Section 102(g) is applicable to interferences only, and that in an infringement action, a court cannot consider unpatented inventions. Hercules’s contention, however, contradicts recent case law development recognizing that Section 102(g) is not so limited. Although courts in this jurisdiction have not previously decided the issue, Hercules fails to convince this Court that the settled authority from other jurisdictions should not be followed. Section 102(g) clearly covers actual reductions to practice, which consist of three elements: (1) production of the claimed composition; (2) recognition of its properties; and (3) identification of its specific practical utility. Each of these elements must be established using corroborated proof. Exxon argues that Section 102(g) also covers American patent applications, which, although abandoned here, issue in a foreign country. The basis for Exxon’s argument is unclear. “Invention” might conceivably be equated to a constructive reduction to practice, which is established by filing a patent application. This application, however, must meet the standards of American patent law. Whether or not a foreign application ultimately issues is irrelevant for determining the sufficiency of its American counterpart. The Facts Natural rubber consists of long chains of isoprene units which, because they contain double bonds, may be vulcanized with sulfur. During World War II, the Allies polymerized styrene and butadiene, producing a suitable natural rubber replacement, which because it contains double bonds, is also sulfur vulcanizable. Polymer chemists, most of whom held Ph.D.’s in chemistry or chemical engineering, subsequently developed other sulfur vulcanizable rubbers including butyl rubber, which contains isobutylene and isoprene. The first group of patents that Exxon specifically cites as prior art were issued to Brown, Frederick, and Parrish, and relate to artificial rubbers, all of which were prepared using Friedel-Crafts type catalysts under restrictive conditions. Brown’s patent seeks to solve the following problems: The introduction of unsaturation [i. e. a double bond] even a small amount makes the isobutylene isoprene copolymers and their sulfur vulcanizates [i. e. butyl rubbers] susceptible to oxidation and makes them less flexible at low temperatures. Moreover, it is not possible, ordinarily, to produce sulfur vulcanizates from known isobutylene isoprene copolymers having desirably high tensile strength and modulus, especially in the unreinforced condition. Brown suggests the copolymerization of 50% to 98% (weight) of an aliphatic isoolefin, e. g., isobutylene, and 1% to 30% (weight) of an acid chloride. Brown’s polymer does not contain any carbon-to-carbon double bonds and so it apparently is not sulfur vulcanizable. Brown’s patent further specifies that one or more other components may be polymerized with isobutylene and acid chloride in order to vary “the properties of the interpolymers of this invention.” The patent then lists more than a dozen optional components including DCP and cyclopentadiene. Frederick’s patent addresses the following problems: Butyl rubber cures more slowly with sulfur than other useful sulfur vulcanizable rubbers; it does not adhere well to other materials such as natural rubber; when it is mixed with natural rubber and the mixture is vulcanized the resulting vulcanizates are generally less useful and valuable than vulcanizates from either of these rubbery materials alone. Frederick’s patent claims that these problems may be solved by exposing butyl rubber type polymers to a hydrogen halide as an intermediate step between their formation and sulfur vulcanization. The patent thus specifies the copolymerization of between 70% and 99% (weight) of an isoolefin, e. g. isobutylene, and 1% to 30% (weight) of one or possibly two or three polyolefins, each containing between four and eighteen carbon atoms. Possible polyolefins include a very wide variety of hydrocarbons, including cyclopentadiene and DCP which Frederick specifically lists. Formation of the polymer consumes one double bond from each polyolefin, leaving at least one other double bond available as the site for attaching a hydrogen halide. Parrish’s patent addresses the following problems: Although . . isoolefin diolefin co-polymers [butyl type rubbers] are quite useful in the final vulcanized condition, they possess in both the vulcanized and unvulcanized condition several distinct and serious disadvantages. The modulus of elasticity of their vulcanizates is often undesirably low. In addition, they are soft and weak in the unvulcanized raw state such that “cold flow” occurs making it difficult to handle them as in storage and shipment, yet, when they are processed and compounded in the rubber factory, they are tough, “nervy”, difficult to form into a smooth sheet on the mill and not readily admixed with compounding ingredients. In order to overcome these problems, Parrish copolymerized 85% to 99.5% (weight) of an olefin, preferably isobutylene, 1% to 14.5% (weight) of a diolefin, preferably isoprene, and 0.5% to 5% (weight) of a substituted fulvene. The patent claims that the resulting copolymer was sulfur vulcanizable. The patent also specifies that “minor proportions, preferably” 1% to 30% (weight) of a fourth component might be included in his polymers although it does not indicate the purpose for doing so. Parrish’s patent then lists a wide variety of such possible ingredients including eyclopentadiene and DCP. The Brown, Frederick and Parrish patents disclose inventions that clearly are different from that of Adamek et al. Where Adamek et al. use Ziegler catalysts, Brown, Frederick and Parrish use FriedelCrafts type catalysts. Exxon makes no showing that the art relating to FriedelCrafts catalysts renders obvious the use of Ziegler catalysts. Where Adamek et al. require the polymerization of at least three components, Brown, Frederick and Parrish require only two. Moreover, the various components are substantially different. Adamek et al. require that their polymers contain two alpha-olefins and a bridged-ring polyolefin. Contrastingly, Brown requires one isoolefin and one acid chloride, Frederick requires an isoolefin and a diolefin and Parrish requires an isoolefin and a substituted fulvene. The products of Adamek et al. and those of at least Brown and Frederick, also differ in their vulcanization properties. Adamek et al.’s products may be directly vulcanized with sulfur using pendant group vulcanizations sites. In contrast, Brown’s products are not sulfur vulcanizable. Frederick’s products, though sulfur vulcanizable, contain their vulcanization sites in the polymer’s main chain, and they also require intermediate reaction with a hydrogen halide prior to sulfur vulcanization. In order to prove that Adamek et al.’s product was anticipated by prior art, Exxon first relies heavily upon the fact that Brown and Parrish specify that their polymers might possibly contain cyclopentadiene. The Court concludes, however, that since eyclopentadiene is not a bridged-ring compound, its polymerization is not sufficiently relevant to the subject matter of this litigation to constitute prior art. Although the fact that Woodhams believed that DCP and eyclopentadiene were equivalent dienes might indicate a relevant connection, subsequent research proved this belief wrong. Another possible connection with this litigation might be based upon cyclopentadiene’s “spontaneous” formation of DCP at room temperature. While Brown and Parrish report the possible use of eyclopentadiene, then, a polymer chemist might read their specifications and realize that eyclopentadiene dimerizes so quickly that, in effect, they are using DCP. When used in chemical parlance, however, the word “spontaneous”, does not suggest the notion of immediacy normally associated with the word; rather, it usually means merely that a reaction will proceed without external interference, such as that provided by a catalyst. In fact, the reaction by which DCP is formed from cyclopentadiene is so slow that its impact is unimportant. Exxon’s Dr. Maurice Morton testified that the dimerization reaction occurs only “over a long period of time”. Exxon also relies upon the fact that Brown and Parrish specify the possible incorporation of DCP in their polymers. The Court concludes, however, that this fact has little to do with this litigation. Brown and Parrish only mention DCP as an optional ingredient without specifying any particular purpose for its inclusion. A polymer chemist reading their specifications would thus not be significantly influenced to incorporate DCP as a polymeric constituent necessary for introducing sulfur vulcanization sites to an EPT. In sum, the inventions of Adamek et al. and those of Brown, Frederick and Parrish are very different, and the Brown, Frederick and Parrish patents do not render obvious Adamek et al.’s invention. The second group of inventions claimed by Exxon as prior art relate to artificial rubbers prepared with Ziegler type catalysts under flexible conditions. This group includes prior art patents to Goodrich-Gulf Chemicals, Inc.’s S. E. Horne, Jr., et al., Montecatini, S.p.A.’s Guilio Natta et al. and Du Pont’s William F. Gresham, et al. The initial pages of the Horne et al. patent specify homopolymers of conjugated diolefins, including isoprene and cyclopentadiene. The Horne et al. patent later discloses copolymers, trimers, etc. prepared from mixtures of “a large proportion” of “one, two, [or] three or more” conjugated polyolefins and one or more ole-fins. This language arguably covers polymers of cyclopentadiene, ethylene and propylene. The patent does not, however, mention or exemplify this specific combination, although it does exemplify copolymers of isoprene and cyclopentadiene. The Horne et al. patent does not render that of Adamek et al. obvious. Although Exxon emphasizes Horne et al.’s polymerization of cyclopentadiene, this fact is not sufficiently relevant. Further, Horne et al. use a conjugated structure for locating sulfur vulcanization sites within their polymer, while Adamek et al. use bridged ring structures which may, but need not, be conjugated. These developments are very different. Conjugated dienes permit 1,4-addi-tion rather than 1,2-addition. In 1,4-ad-dition, all four carbon atoms comprising the conjugated structure enter the main chain of the polymer and a double bond forms between carbon atoms two and three. If sulfur vulcanization does not consume this unsaturation, it remains available for reaction with other chemicals, especially ozone, which, in reacting with doubly bonded carbons, may split the previously doubly bonded carbon atoms apart from each other. This causes the polymer’s main chain to break into many smaller pieces and thus destroy the integrity of the vulcanized rubber network, with the result that the rubber becomes useless. In contrast, Adamek et al. use a bridged-ring structure with the result that the residual unsaturation becomes more favorably located pendant to the polymer’s main chain. Ozone attack does not occur in the main chain of the polymer and the integrity of the structural network is preserved. The result is a more durable rubber. Horne et al.’s patent does not disclose the use of any bridged-ring structure and Exxon fails to adduce reliable evidence that its use was rendered obvious by Horne et al.’s disclosures. Natta et al.’s patent discloses the polymerization of one or more monoolefins with between 7% and 88% (weight) of a diolefin that yields an elastomeric and sulfur vulcanizable product. Possible monoolefins include compounds of the “general formula CH2 = CHR, in which R” represents a wide variety of straight chain hydrocarbon radicals. Although this language arguably is broad enough to cover ethylene or propylene polymers, Natta et al.’s patent does not mention or exemplify their use. Possible diolefins, including butadiene, 1,3-penta-diene and 1,5-hexadiene must contain a terminal double bond. This requirement excludes the use of many bridged ring dienes, sueh as DCP which do not contain any terminal double bonds. Indeed, Natta et al. fail to mention or exemplify the use of any bridge ring dienes. Gresham et al.’s patent describes the polymerization of at least one alpha olefin, including specifically ethylene or propylene, with a straight chain diolefin, including 1,4-hexadiene “in which the double bonds are . . . [non-conjugated], and in which at least one of the double bonds is terminally located,” and the other is preferably internal. Gresham et al. exemplify polymers containing equal molar amounts of ethylene, propylene, and a diene, obtaining “particularly useful . products with rubber-like properties of the kind usually desired.” The patent does not, however, disclose the use of DCP, which is not a straight chain diolefin. The patents of Adamek et al., Natta et al. and Gresham et al. cover different inventions. The three research teams all attempted to find a suitable polyolefin having at least two double bonds of differing reactivities. One double bond had to react under the relatively mild conditions used in Ziegler catalysis, while the other had to resist reacting until exposed to the much more severe conditions used in sulfur vulcanization. Where Adamek et al. utilize a bridged-ring structure for this purpose, Natta et al. and Gresham et al. employ straight chain dienes having terminal unsaturation. Each of these structures works for an entirely different reason. The structures of Natta et al. and Gresham et al. work because a terminal double bond is more reactive than an internal one. Bridged-ring hydrocarbons, on the other hand, work because they are strained due to the drawing together of many carbon atoms in unnaturally close proximity. In order to relieve some of this strain, a bridged-ring diolefin will, even under the relatively mild conditions of Ziegler catalysis, change one bridged-ring double bond into a single bond. If the polymerization conditions are properly adjusted, the second double bond will not react until it is exposed to the more rigorous conditions of sulfur vulcanization. Since Exxon fails to adduce reliable evidence that the use of straight chain dienes would necessarily imply the use of bridged-ring dienes, the Court concludes that the use of each was a significant, though perhaps narrow, development in the apparently well developed rubber technology field. This conclusion seems especially justified since the Adamek et al. patent issued despite the fact that Hercules cited the Patent Examiners to one of the articles in which Natta et al. describe their discovery. The third group of patents Exxon cites as prior art includes three new polymers made with Ziegler catalysts. Du Pont’s Arthur W. Anderson et al. patented two of these polymers, the first being a homopolymer of norbornene, and the other a copolymer of ethylene and preferably less than fifty mole percent of norbornene. Du Pont’s Gelu Steoff Stamatoff patented the third cited polymer, a copolymer of ethylene and a bridged-ring monoolefin, including, among others, dihydrodo dicyelopentadiene. All of these polymers are saturated, and therefore are not sulfur vulcanizable. This third group of patents also includes a patent to Stamatoff covering a modified Ziegler catalyst suitable for polymerizing ethylene, “over a wide range of conditions”. Example III of the patent describes the copolymerization of ethylene and 27% (weight) of DCP. Stamatoff’s specification does not indicate whether this product contains residual unsaturation or whether it is sulfur vuleanizable. Exxon’s third group of patents involves inventions that are very different from Adamek et al.’s invention and do not render it obvious. Where Adamek et al. use at least two alpha olefins, Anderson et al. and Stamatoff use only one. Where Adamek et al. produce materials containing three or more components, the products of Anderson et al. and Stamatoff are all homopolymers or copolymers. Where Adamek et al.’s products are sulfur vuleanizable, those of Anderson et al. and Stamatoff are not, or at least as in the case of the product of Example III of Stamatoff’s patent, they are not revealed to be. Exxon claims that the Anderson et al. and Stamatoff patents demonstrate that bridged-ring dienes might be polymerized using Ziegler catalysts. Exxon fails to show, however, that this information implies the necessary fact that the second double bond in a bridged-ring hydrocarbon would not affect polymerization, and would remain available as a sulfur vulcanization site. Du Pont’s Dr. Edward K. Gladding, thus testified that he would be “really speculating” to say that knowledge that norbornene could be polymerized would indicate that bridged-ring hydrocarbons might be used to prepare sulfur vuleanizable EPT’s. “[T]he influence of some other structure on that norbornene double bond, to my knowledge was not known. ... I wouldn’t be able to predict that it would or would not influence the polymerization reaction or deactivate the catalyst or what have you.” Indeed, Exxon’s own witness, Dr. Maurice Morton, confirmed the difficulty of making such a priori conclusions in the synthetic rubber field. “There is still very little understood, and there was even less understood then. ... It became a highly empirical science. I should say highly empirical art. It’s more of an art than a science.” The fourth group of allegedly prior art patents upon which Exxon relies consists of a series of foreign patents issuing to Du Pont’s Stamatoff and carrying a November 5, 1956 priority date, based upon an American application. These foreign patents disclose the copolymerization of ethylene and 0.1% to 50% (mole) of a bridged-ring diene, including DCP or MNB, both of which are exemplified by the patents. The resulting polymers may be sulfur vulcanized. Although Stamatoff’s patents may involve an invention that is closely akin to that of Adamek et al., Stamatoff’s patents do not qualify as prior art. Sections 102(a) and 102(b), covering inventions that are patented abroad, specify that such inventions may not be considered as prior art until the date on which they are described in a printed publication. Neither party contends that Stamatoff’s invention was so described prior to the time that Adamek et al. completed their invention and filed their British application on July 17, 1957. Section 102(e), which makes American patents prior art, is also inapplicable because Stamatoff abandoned his American patent application before it could issue in the United States. Exxon finally relies upon Section 102(g), which defines completed inventions as prior art. Exxon’s reliance is misplaced, however, because of a lack of proof that Stamatoff completed his discovery prior to Adamek et al.’s invention. In attempting to show this fact, Exxon alludes to Stamatoff’s abandoned American application. Since Exxon fails to produce a copy of this application, however, the Court is without knowledge regarding the information it might contain. Further, abandoned patent applications are insufficient to prove prior invention. Indeed, the fact that the applicants abandoned their application may evidence a belief in, if not an admission of, the inadequacy of their claim. Exxon next produces what the Court understands to be undated and unwitnessed entries from some unspecified laboratory notebook, possibly belonging to Stamatoff. Exxon also cites a July 13, 1956 Memorandum, from Stamatoff to Gresham, stating: Dicyclopentadiene can be copolymerized with ethylene with [Ziegler] catalysts in a variety of manners and a number of interesting copolymers have been obtained with stiffness varying from slightly stiffer than polyethylene to as stiff or stiffer than polystyrene. This work, of course, is far from complete but, at this time, we are bringing to your attention some pertinent observations which might be of interest to those concerned with the ethylene copolymers. 5. Physical Properties We have just started this phase of the problem and have only a few physical measurements which we present in Table II. From these data we concluded that these copolymers are attractive and deserve consideration. Batch_ . Film Characteristics NB. p. 5234 - 158 tough & stiff 159 clear, touch & stiff 160 stiff, brittle & clear 161 stiff & brittle 162 tough, clear & flexible 163 brittle & very stiff. Physical Tests of Copolymers of Ethylene/dicyclopentadiene Batch Mol. % DCP Tensile Impact 25 °C. Flex Modulus X 103 25 °C. 50 °C. 5234 - 157 5.05 179 236 116 158 5.09 113 262 160 159 5.15 28.6 293 171 160 9.98 25.7 343 263 162 5.05 70 376 148 163 9.98 16 396 330 Since Exxon fails to produce any witness to substantiate the nature and authenticity of these documents, the Court believes that it should not receive and consider them. Assuming arguendo that the Court consider the documents, they do not show that Stamatoff reduced his claimed copolymers to practice. In particular, the submitted notebook pages fail to show that Stamatoff ever identified a specific purpose for which his polymers might be used. Because the July 13, 1956 memorandum includes complex scientific data, and because the Court does not have the benefit of expert testimony regarding this memo’s meaning, the Court cannot conclude that the memo provides enough specific information to demonstrate that Stamatoff’s polymer was useful. Indeed, the opposite conclusion seems justified in light of Stamatoff’s statement that he had “just started” the physical testing phase of the development program and the fact that nearly four months passed before he filed his American patent application which was eventually abandoned. Finally, Exxon seeks to rely upon testimony apparently adduced as an afterthought during the cross-examination of Hercules’s rebuttal witness, C. Marshall Dann. Prior to becoming the Patent Commissioner, Dann served as a patent attorney for Du Pont from 1945 to 1974, and became Chief Patent Counsel in 1969. Dann testified that insofar as he was aware, Du Pont’s “common practice” was to avoid including in “any patent application any example which had not been actually done in the laboratory.” Dann further testified that “[T]he way [Stamatoff’s foreign patent examples] are written, they certainly sound to me like actual working examples.” Although Dann’s testimony might prove helpful to corroborate the testimony of witnesses familiar with the specifics of Stamatoff’s work, his work at Du Pont was so remotely related to Stamatoff’s patent application that his testimony, considered by itself, is insufficient to supply the proof that is otherwise missing from Exxon’s case. The determination that the discovery of EPT’s containing bridged-ring hydrocarbons was unobvious, is supported by what Graham v. John Deere Co., supra, characterized as secondary considerations, including the commercial success enjoyed by EPT’s containing bridged-ring dienes. Beginning in 1966, when American rubber makers produced about 12,500 metric tons of EPT’s containing a bridged-ring diene, they steadily increased production, manufacturing 75,000 metric tons in 1977. Experts expect 1982 production to total more than 100,000 metric tons. That Adamek et al. were the first scientists to conceive inventions to capture this large demand, indicates the unobviousness of their development. Another secondary consideration, the failure of other parties in the field, including Du Pont, Exxon and Hercules, to discover many other competitive EPT’s, further supports the conclusion that Adamek et al.’s discovery was unobvious. Du Pont centered its efforts in a team of research chemists who were given first class laboratory and library facilities. Beginning as early as 1955, they investigated the utility of alternative cross-linking methods not requiring residual unsaturation, but this research was so unsuccessful that it served only to confirm the value of the long used sulfur vulcanization technique. Du Pont’s researchers next searched for dienes suitable for incorporating sulfur vulcanization sites within ethylene-propylene polymers. They soon discovered the workability of straight or branched chain diolefins, especially 1,4-hexadiene, and in January, 1956, Gresham applied for his patent. Gresham’s diolefins, however, could then be made only by using Grignard-style synthesis, which, though suitable for the laboratory work, is generally uneconomical for large scale commercial operations. Moreover, “Addition of even small amounts of unconjugated diolefins of the type represented by 1,4-hexadiene . . . almost completely inhibited] ethylene, propylene copolymerization at atmospheric pressure.” Du Pont researchers next discovered, during 1959, a process to synthesize 1,4-hexa-diene cheaply, and they also discovered that 1,4-hexadiene would not deactivate the catalyst, as long as a low reaction temperature (between 0 to —10 °C.) was maintained. Use of 1,4-hexadiene remained problematical, however: the lowered temperature reduced conversions, necessitating costly recovery and recycling of unused monomers. During the autumn of 1959, four years after Du Pont began its intense research program, Tarney finally conceived using DCP. Initial testing proved so “highly successful” that Du Pont viewed EPT’s containing DCP as its leading commercial candidate. Shortly thereafter, Du Pont drafted and executed a patent application which it rushed by company car from Wilmington, Delaware to the Patent Office. Only when Du Pont subsequently learned of Adamek et al.’s outstanding application did it abandon the use of DCP in favor of 1,4-hexadiene. Hercules began its research as early as April 30, 1956, assigning three or four predominantly Ph.D. level polymer chemists to find a suitable diene. Within the first five months, Hercules tried a dozen dienes, but, as one researcher reported, “No outstanding polymer has been found.” Research continued without success. Indeed, by 1960, Hercules’s scientists performed as many as 140 experiments. These experiments revealed only the possible utility of straight or branched chain dienes. Hercules did not conceive trying any bridged-ring termonomers like DCP until after 1961 when it learned of Adamek et al.’s initial success. Thereafter, it immediately abandoned its other work and concentrated upon the use of bridged-ring termonomers. Exxon, beginning as early as September, 1956, also worked to identify suitable dienes. Exxon’s Dr. Henry Markowski and his associates screened a number of possible dienes, including cyclopentadiene which he and his colleagues prepared by splitting DCP. Unlike Adamek et al., however, Exxon’s workers did not conceive using unsplit DCP. Consequently, they never experienced the success enjoyed by Adamek et al. Indeed, Exxon scientists almost abandoned their project for making sulfur vulcanizable EPT’s. After learning of Du Pont’s success with 1,4 — hexadiene and Dunlop’s success with DCP however, Exxon’s scientists renewed their interest in sulfur vulcanizable EPT’s. In September, 1961, after five years of research Exxon finally prepared a sulfur vulcanizable EPT containing DCP, its “first successful diolefin”. In addition to Dunlop, at least three other major chemical companies, Du Pont, Hercules and Exxon, sought suitable dienes for terpolymerizing with ethylene and propylene. Their efforts were intense, yet, Du Pont’s researchers worked for more than four years before realizing the suitability of bridged-ring hydrocarbons, and researchers at Hercules and Exxon learned of this fact only through Dunlop’s disclosures. That so many companies conducted parallel research without making the same discovery as Adamek et al., further demonstrates the unobviousness of their invention. Another factor to consider is what Hercules calls the industry tribute to the patent in suit. Indeed, a number of companies have taken licenses, paying Hercules substantial sums. Exxon counters that the licensing payments are not tribute to the patent but that, instead, they are an inexpensive means for avoiding costly litigation. Exxon points out that Hercules’s original licensing agreements offered 50% to 70% royalty rebates should Adamek et al.’s patent be invalidated. As this trial neared, Hercules renegotiated these license agreements, granting paid up licenses in return for a release from its possible duty to rebate previously collected royalties. The Court concludes that the evidence regarding licensing is not helpful because the parties did not present any evidence regarding normal licensing arrangements. Consequently, the Court is without sufficient knowledge to judge whether the licensing agreements and their subsequent amendment favor Hercules or its licensees. DESCRIPTION The Law Exxon’s next set of challenges are based on 35 U.S.C. § 112. This section, which traces its history to the first patent statute, now provides in relevant part: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. O’Reilly v. Morse is a fountainhead case in which the disclosure requirement was applied. Samuel F. B. Morse claimed infringement of his telegraph patent which included at least one very broad claim: Eighth. I do not propose to limit myself to the specific machinery, or parts of machinery, described in the foregoing specifications and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, letters, or signs, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer. O’Reilly challenged this claim as covering a “principle or effect, and not a machine, manufacturer, or composition of matter.” The Supreme Court agreed, declaring Morse’s eighth claim illegal and void: Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specified, without any addition to, or subtraction from them, produce precisely the result he describes. Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electromagnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Since Morse, courts have evolved a number of specific description rules that Exxon charges were violated by Adamek et al.’s patent specification. The first such rule requires an applicant to draft claims that closely correspond to the language of his patent specification. In In re Ruschig, an applicant sought to amend his original application by adding a new claim 13, specifically naming the compound for which he sought patent coverage. The applicant claimed that this amendment corresponded to the language of his original specification, and that it was therefore permitted under 35 U.S.C. § 132. The original specification, however, did not include any language remotely resembling that of claim 13. Rather, the original specification described the compounds using a formula that included several chemical constituent lists, from each of which one constituent was to be selected. This formula covered “something like half a million possible compounds,” including the compound of claim 13 which could be made only by selecting the correct constituent from each list. The Examiner rejected the applicant’s claim that his specification and his later-filed claim 13 were equivalent and the Court of Customs and Patent Appeals (“C.C.P.A.”) upheld this rejection: It is an old custom in the woods to mark trails by making blaze marks on the trees. It is no help in finding a trail or in finding one’s way through the woods where the trails have disappeared-or have not yet been made, which is more like the case here-to be confronted simply by a large number of unmarked trees. Appellants are pointing to trees. We are looking for blaze marks which single out particular trees. We see none. Working backward from a knowledge of [the resulting compound], that is, by hindsight, it is all very clear what route one would travel through the forest of the specification to arrive at it. But looking at the problem, as we must, from the standpoint of one with no. foreknowledge of the specific compound, it is our considered opinion that the board was correct in saying: Not having been specifically named or mentioned in any manner, one is left to selection from the myriads of possibilities encompassed by the broad disclosure, with no guide indicating or directing that this particular selection should be made rather than any of the many others which could also be made. The second description rule requires that a specification provide enough information to justify the utility of the claimed compounds. In In re Cavallito, the applicants sought to patent “several hundred thousand possible compounds, of which only thirty [were] specifically identified in appellant’s application.” The C.C.P.A. noted: [W]here the applicant seeks to obtain a monopoly in exchange for his disclosure of a group of compounds there should be a disclosure which gives reasonable assurance that all, or substantially all of them are useful. . . . An applicant is not entitled to a claim for a large group of compounds merely on the basis of a showing that a selected few are useful and a general suggestion of a similar utility in the others. In setting forth this rule, the C.C.P.A. apparently recognized one exception: only a very few compounds need be discussed when it is shown that they and the large group of compounds they represent share a key structural feature from which a common utility derives. Arguments for applying this exception are most persuasive when the application specifies the basic formula necessary to import useful properties or when it is shown that all of the specific compounds have equal potency indicating that their utility derives solely from the basic structural formula common to all of them. The third description rule prevents an applicant’s claim from covering inoperative as well as operative subject matter. In Graver Tank & Mfg. Co. v. Linde Air Products Co., the patentees sought to enforce a part claiming a new welding composition, comprising either “metallic silicate and calcium fluoride” (Claim 24) or chiefly “silicates” (Claim 26). The trial court refused to enforce these claims because “The evidence is clear and convincing that many silicates, even many metallic silicates, are inoperative as major constituents in a welding composition having for its objectives those stated in the patent.’’ The Supreme Court upheld the trial court’s decision: [Claims] must be sufficient to “particularly point out and distinctly claim” an identifiable invention or discovery. . While the cases more often have dealt with efforts to resort to specifications to expand claims, it is clear that the latter fail equally to perform their function as a measure of the grant when they over-claim the invention. When they do so to the point of invalidity and are free from ambiguity which might justify resort to the specifications, we agree with the District Court that they are not to be saved because the latter are less inclusive. The Facts Exxon clearly and convincingly establishes that the rule of In re Ruschig is an obstacle to a finding that Adamek et al.’s specification supports claims 1-2, 4-7, 10 and 16. The parallel between the facts of this instant case and those of In re Ruschig is striking. Like Ruschig’s specification, that of Adamek et al. broadly specifies a wide variety of possible chemical constituents: The preferred [termonomer] compounds are the endocyclic hydrocarbons containing seven to ten carbon atoms and two double bonds, especially those containing a bridge of one or two methylene groups. Substituted endocyclic hydrocarbons such as the alkyl, aryl and cycloalkyl derivatives can also be used. Examples of suitable bridged-ring hydrocarbons are: (a) Unsaturated derivatives of bicyclo(2,2,l) heptane, including- bicyclo(2,2,l) hepta-2-ene (norbornene); ticyclo(2,2,l) hepta-2.5-diene; bicyclo pentadiene [DCP], tricyclopentadiene and tetracyclopentadiene. (b) Unsaturated derivatives of bicyclo(2,2,2) octane, includingbicyclo(2,2,2) octa-2-ene and bicyclo(2,2,2) octa-2.5-diene. (c) Unsaturated derivatives of bicyclo(3,2,l) octane. (d) Unsaturated derivatives of bicyclo(3,3,l) nonane. (e) Unsaturated derivatives of bicyclo(3,2,2) nonane. Indeed, Adamek et al.’s language is so broad that Dunlop’s Woodhams testified that it encompasses an infinite number of compounds. Hercules’s Dr. Charles Price testified that the number is very large, perhaps a million or more, a conclusion in which Exxon’s two experts Dr. John Stille and Mr. Irving Marcus each joined. As in In re Ruschig, Adamek et al. now attempt to amend their application to cover a more narrow class of chemical constituents to wit, EPT’s containing “a bridged-ring hydrocarbon containing at least two ethylenic double bonds, at least one of said double bonds being present in one of the rings of the bridged ring present in said hydrocarbon.” As in Ruschig, however, the specification does not contain any language remotely resembling that of these amended claims 1 — 2, 4-7, 10 and 16. Accordingly, the Court invalidates these claims. The breadth of claims 1-2, 4-7, 10 and 16 must be contrasted with the narrowness of claims 13-14 and 17-18. The latter group of claims name DCP as the third monomer. Since Adamek et al.’s specification explicitly specifies and exemplifies DCP’s use, the rule of In re Ruschig does not prevent the enforcement of these claims. These rulings are particularly appropriate in light of what appears to be a calculated effort on behalf of Adamek et al. to claim the benefit of far more knowledge than they actually generated. Indeed, Adamek et al. knew very little about their invention and the third monomers that might work when they filed their July, 1957 patent application. Thus, Adamek et al.’s draft application, which contained thirty-one examples, exemplifies the use of only four termonomers, including three dienes: DCP, norbornadiene, and methyl cyclopentadiene dimer, and one monoolefin: norbornene. The application specifically mentions only four other possible bridged-ring termonomers: tricyclopentadiene, tetracyclopentadiene, bicyclo(2,2,2) octa-2-ene and bicyclo(2,2,2) octa-2,5-diene. Hercules, which assumed the lead in commercializing Adamek et al.’s inventions, narrowly focused its attention on the use of DCP until 1963 when its use began to present problems. On December 10, 1963, Keim thus noted: The preparation of a sulfur vulcanized EPT is complicated by the fact that the two double bonds in dienes such as DCP are both reactive with Ziegler-type catalysts. The more reactive double bond in DCP is in the bridged six-member ring; it is about 30 times as reactive as the double bond in the five-member ring. Therefore, it will be used almost exclusively to incorporate DCP into the growing polymer chain. Occasionally [however], the DCP will add through the double bond in the five-member ring. When this happens, the reactive bond in the bridged ring will react rapidly with another growing chain to form a long chain branch or cross-link. The result was excessive cross-linking resulting in reactor fouling. Keim suggested designing a better diene and stressed the need for its development. By August 13, 1964, Hercules learned of additional problems with using DCP: Our EPT appears to be less stable in the presence of heat and oxygen than does [Gresham et al.’s product]. . Treads of our EPT appear to be more subject to groove cracking during road tests than does [Gresham’s product]. These two phenomena are not known with certainty to be inter-dependent; however, heat aging of our EPT results in an increase in cross-linking and therefore a higher modulus-higher modulus can be expected to result in a tendency to crack. Eight days later, Hercules’s B. P. Brown summarized what was rapidly becoming a gloomy picture: We have uncovered a deficiency of our EPT, as we know it today, relating to instability and to tire tread groove cracking. “Instability” refers to oxidation as well as to cross-linking or gelation of the raw gum in the absence of added curatives. These problems . . . are real and serious. Unless resolved, our entire position in EPT may be in jeopardy. In order to “salvage [its] position, Hercules sought to uncover an EPT which would cure rapidly, would not groove-crack and yet [would] possess the other physical properties necessary to a good rubber.” To this end, Keim and Christman screened twenty-two dienes between October, 1964 and June, 1965, running “some two hundred polymerizations.” As Hercules was realizing the limitations of DCP and searching for a suitable substitute, it began to learn of the prior success of Du Pont and Exxon with EPT’s containing MNB. On November 22,1963, Dafter thus reported to Miller: Dr. [G. I.] Keim [one of Hercules’s researchers] called me this morning to advise that our latest information on Du Pont’s EPT indicates that it is made in accordance with [its MNB Patent]. . This patent issued June 11, 1963, on an application filed March 29, 1960. Its claims are very much like the Tarney patent except that the third monomer is defined as [MNB] instead of dicyclopentadiene. Dr. Keim also informed me that the Du Pont EPT cures at a lower temperature than Hercules’ EPT and that this could be a material advantage to the trade. Dr. Keim’s prime question was whether or not our Adamek et al. application could be construed to cover the use of [MNB] as the third monomer in the manufacture of EPT. I told him that I think there is reasonable basis for interpreting one or more of the present claims of the application as covering the terpolymers of [Du Pont’s MNB Patent]. At the present time there is nothing we can do except bear in mind the information given by Dr. Keim and to make every effort to obtain as broad claims as possible when the Adamek et al. application [which was then in interference with Tarney’s patent] returns to Ex parte prosecution. (Dr. Keim also informed me that En-jay’s [now Exxon’s] new EPT apparently does not contain dicyclopentadiene but may contain instead a substituted norbornene similar to that used by Du Pont.) Three days later, another Hercules memorandum reported: “Enjay EPT-an unexpectedly good polymer based on preliminary sample-appears easier to cure than our current one. May become our most serious competition.” Thereafter, Hercules restructured its application introducing more specific claims, just broad enough to cover EPT’s containing MNB. After several submissions and interviews, Adamek et al.’s patent including claims 1-2, 4-7, 10 and 16 issued. In sum, Adamek et al., who knew little about the scope of their invention, submitted a broadly worded specification covering myriads of chemical agents worthy of further testing. When Du Pont and Exxon completed that testing, Adamek et al. carefully reworded their claims so as to cover only the most worthy agents. Insofar as Adamek et al. seek to benefit from disclosures they did not make and research they did not initiate, the Court must void their claims. Hercules insists, however, that Adamek et al.’s original application enabled a skilled artisan to reason that the polymerization double bond “must be in a bridged-ring” and that the “structure containing the [vulcanizable] double bond [which is] capable of wide variation” might be located outside of any ring whatsoever. Hence, Hercules argues, Adamek et al.’s specification revealed the use of MNB. Although, in hindsight, it might seem obvious that MNB and its homologues work for the same reason as DCP, the test is whether Adamek et al.’s application prospectively discloses the workability of MNB and its homologues. Since Adamek et al. failed to mention or exemplify the use of any termonomers which, like MNB, contain one double bond in a bridged ring and another outside of any ring whatsoever, the Court cannot say that the choice, viewed prospectively, is as obvious as Hercules would make it seem. Indeed, Hercules failed, at least until after learning of the success of Du Pont and Exxon, to discover MNB’s suitability. Moreover, Hercules’s argument erroneously focuses on the individual attributes of each double bond rather than their ability to work in tandem. First double bonds are useful only if they undergo Ziegler catalysis under conditions that do not affect the remaining double bonds. Second, third and fourth double bonds are useful only if they do not interfere with the polymerization reaction, but remain available for sulfur vulcanization. Adamek et al.’s application fails to indicate, because Adamek et al. did not know, that MNB’s double bonds would satisfy these requirements. In fact, scientists at Du Pont, Exxon and eventually Hercules were able to show the operability of MNB only after undertaking extensive research programs. Exxon also presents clear and convincing evidence that Adamek et al.’s claims 1-2, 4-7, 10 and 16 should be voided for another independent reason-the rule of In re Cavallito-that an application demonstrate the utility of the claimed compounds. Indeed, Adamek et al.’s claims 1-2, 4-7, 10 and 16 present an even more compelling ease for applying this rule. Cavallito sought to patent several hundred thousand compounds, thirty of which he identified and exemplified. Adamek et al. claim EPT’s containing an unspecified but very large number of possible third components, yet their original application lists only eight possible termonomers and exemplifies only four. In re Cavallito, of course, recognizes that an application covering many compounds may occasionally mention or exemplify only a few of their number. Hercules seeks to apply this exception, arguing that the broad class of compounds it claims all feature the same basic structure: a bridged-ring containing one or more double bonds. Hercules ignores, however, the requirements for applying this exception. Adamek