Full opinion text
MEMORANDUM OF DECISION WOODROW WILSON JONES, District Judge. The Plaintiff, Trilogy Communications, Inc. brought this civil action against the Defendants, Comm Scope Company, M/A-Com, Inc., M/A-Com Cable Home Communications Corporation and General Instrument Corporation alleging infringement of United States Patent Nos. 3,567,846, 3,693,-250 and 3,529,340. The Defendants deny infringement and seek a declaratory judgment of invalidity, unenforceability and non-infringement of the patents in suit. After considerable discovery the issues were tried to the Court in January 1990 at Statesville, North Carolina and the parties were invited, but not required, to file proposed findings and conclusions and post-trial briefs. Counsel for both sides elected to file proposed findings and conclusions as well as post-trial briefs. After full consideration of the pleadings, evidence, briefs, proposed findings and conclusions and arguments of counsel the Court now enters its findings and conclusions in this Memorandum of Decision. FINDINGS OF FACTS A. Parties, Jurisdiction and Venue 1. Trilogy Communications, Inc. (Trilogy) is a Delaware corporation with its principal office and manufacturing facility located in Pearl, Mississippi. 2. Comm Scope Company (Comm Scope) is a North Carolina corporation with its principal office in Hickory, North Carolina and a manufacturing plant in Catawba, North Carolina, both the office and the plant being located within the Western District of North Carolina. 3. M/A-Com, Inc. (M/A-Com) is a Massachusetts corporation with a principal place of business located in Burlington, Massachusetts. M/A-Com is a holding company that owns a significant amount of the stock of Defendant, M/A-Com Cable Home Communications Corp. (Cable Home Communications). At the time this litigation began Comm Scope was a wholly-owned subsidiary of Cable Home Communications. 4. During the course of this litigation, General Instrument Corporation (General Instrument), a New York corporation with its principal office in New York City, acquired a majority of the stock of Comm Scope from Cable Home Communications. Sometime thereafter most of the stock of Comm Scope was purchased by a number of individuals. 5. In the original complaint the Plaintiff named only Comm Scope and M/A-Com as party defendants but by an amended complaint named Cable Home Communications and General Instrument as additional party defendants. 6. The parties do not dispute jurisdiction and venue and the Court finds that it has jurisdiction of the parties and the subject matter of the pleadings under 28 U.S.C.A. Section 1338 and venue is proper in this district under 28 U.S.C.A. Section 1400(b). B. The Patents in Suit 7. United States Patent No. 3,567,846 (’846 patent) entitled “Metallic Sheathed Cables with Foam Cellular Polyolefin Insulation and Method of Making” issued to General Cable Corporation as assignee from Fred F. Polizzano and William J. Brorein, on March 2, 1971. The application which matured into this patent was filed on May 31, 1968 (PX-4). 8. United States Patent No. 3,693,250 (’250 Patent) entitled “Method of Making Metallic Sheathed Cables with Foam Cellular Po-lyolefin Insulation and Method of Making” issued to General Cable Corporation as as-signee from Fred F. Polizzano and William J. Brorein, on September 26, 1972. The application which matured into this patent has an effective filing date of May 31, 1968 (PX-12). 9. United States Patent No. 3,529,340 (’340 patent) entitled “Apparatus for Making Metallic Sheathed Cables with Foam Cellular Polyolefin Insulation,” issued to General Cable Corporation as assignee from Fred F. Polizzano and William J. Brorein, on September 22, 1970. The application which matured into this patent was filed on August 13, 1968 (PX-1). 10. It is admitted by the parties that Trilogy owns these patents in suit having acquired them through its purchase of that portion of General Cable’s business relating to the manufacture and sale of coaxial cables. This purchase also included an assignment of all of General Cable’s rights to claims for past infringement of the patents. Trilogy filed its complaint on September 19, 1986 alleging that Comm Scope’s QR products, and the method and apparatus by which they are manufactured infringe Claims 1, 2, 3, 6, 7 and 8 of the ’846 patent; Claims 1, 2, 4, 6, 8 and 13 of the ’250 patent and Claims 1, 2 and 3 of the ’340 patent. Trilogy also alleges that Comm Scope’s adhesive P — III product infringes Claims 1, 2, 3, 6, 7 and 8 of the. ’846 patent. The Defendants answered on November 12, 1986 wherein they denied infringement and counter-claim for a declaratory judgment of invalidity, unenforceability and non-infringement of the patents in suit. C. Coaxial Cables 11. The patents “in suit” relate to a method and apparatus for making electrical cable and to the product resulting from the method and apparatus. The accused product is called a coaxial cable which is defined in the dictionary as a cable that consists of a tube of electrically conducting material surrounding a central conductor held in place by insulators and that is used to transmit telegraph, telephone and television signals of high frequency. All coaxial cables, both those referred to in the patents in suit and those of the prior art, consist of an inner metallic conductor, sometimes called a center conductor, surrounded by insulation to form a “core.” The center conductor and the insulation surrounding it are referred to, collectively, as a “core,” but the “core” has also been used to refer to one or more conductors without individual insulation. The insulation, sometimes called “dielectric,” is surrounded by an outer metal conductor, sometimes called a “sheath” or “shield” typically made of aluminum. Many cables, both before and after the inventions alleged in the patents in suit, have an outer layer of polyethylene that is applied in melted condition to “or extruded” upon the exterior surface of the outer conductor. This plastic hardens as it cools to form a “jacket,” which helps to protect the cable from moisture and damage that may occur during installation. The heat that is applied to the foam dielectric by this extrusion is called the “heat of jacketing.” 12. There are two types of coaxial cable used in the cable television (CATV) business at this time and they are referred to as either “trunk” or “dropwire.” Trunk cable is of relatively large diameter and is used to transmit signals from receiving stations along an area distribution network. Drop-wire cable is much smaller and more flexible and is used to transmit a signal from trunk cable to individual homes. Dropwire cable and the method and apparatus used by Comm Scope to make it is not at issue in this litigation. 13. Prior to the inventions alleged in the patents in suit there were several conventional methods and apparatus for the manufacture of coaxial cables of the “trunk” type. For example, it was conventional to extrude foamed polyolefin onto a center conductor in a continuous process to form the cable “core.” It was a metallic conductor around the core either by longitudinally wrapping and overlapping a strip (or tape) of metal around the core, or by placing a core in an oversized welded or seamless tube, and thereafter “sinking” or “swag-ing” the tube down unto the core. “Swag-ing,” which was known in the art well before the inventions alleged in the patents, consists essentially of a process of reducing the circumference of a tube or “sheath” by forcing the tube through one or more reducing dies. (See United States Patents Nos. 3,430,330 and 3,553,811 to Garner, filed December 30, 1965.) 14. During the litigation Trilogy acknowledged that it does not practice any of the inventions alleged in the patents in suit. It does manufacture a coaxial cable product known as “MC2,” but this product is a “disc” type cable wherein the center and outer conductors are separated by periodically spaced plastic discs, rather than foam. D. The Accused Products, Process and Apparatus 15. The evidence shows, and Comm Scope admits, that it manufactures and sells several types of trunk coaxial products. Among these products are the “QR” and “P — III” coaxial cables. Both of these cables have a solid metallic inner conductor and a tubular metallic outer conductor sometimes called a “shield,” with foamed polyolefin insulation between these conductors. In the case of the QR cable the foam is adhered to the outer conductor by means of a heat activated adhesive. The P-III cable is of two types, “adhesive P-III,” wherein the foam is adhesively bonded to the outer conductor, and “regular P-III,” in which the foam is adhered to the outer conductor by means of compression without an adhesive. 16. In this litigation Trilogy alleges and contends that Comm Scope’s QR product and the method and apparatus by which it is manufactured infringe Claims 1, 2, 3, 4, 6, 7 and 8 of the ’846 patent, Claims 1, 2, 4, 6, 8 and 13 of the ’250 patent, and Claims 1, 2 and 3 of the ’340 patent. Trilogy also contends that “adhesive P-III” infringes only Claims 1, 2, 3, 6, 7 and 8 of the ’846 patent. None of the other claims of the patents are alleged to have been infringed. “Regular P-III,” which is Comm Scope’s biggest selling trunk coaxial cable product is not alleged to infringe any of the patents in suit. 17. The evidence shows that the product QR is a jacketed coaxial cable made by conventional welding, swaging and jacketing techniques. QR differs from the prior art primarily in that it has a relatively thin outer conductor, and a relatively thick foam dielectric, features that are the subject of Comm Scope’s own patent, United States Patent No. 4,472,595 to Fox issued September 18, 1984, (PX-58), which is not at issue in this litigation. 18. The foam dielectric insulation of QR cable is adhered to the outer conductor by a heat activated adhesive that is applied to the core in aqueous form, dried and eventually activated by the heat of jacketing. This adhesive is an ethylene acrylic acid copolymer (EAA) of the general type developed for use in the manufacture of electrical cables and disclosed to the cable industry by employees of Dow Chemical Company in the early 1960’s, several years prior to the inventions alleged in the patents in suit. See DX-222 through DX-224 (“Dow Chemical Zetabon Plastic Clad Metals,” “Dow Chemical Zetabon A 282,” and “Dow Chemical Zetabon A 280,” 1965 Zetabon brochure published by Dow Chemical Co.); and see DX-5, (United States Patent 3,795,-540 to Raymond C. Mildner of Dow Chemical Co., “the Mildner '540 patent”). The adhesive used in adhesive P-III is essentially the same as the adhesive used in the QR product, and it is applied to the core in essentially the same way. The heat applied to the core to dry the EAA adhesive is called the “heat of drying,” and it is applied before the cable is swaged and has been measured in the range of 900° F to 1100° F. 19. The method and apparatus by which QR and adhesive P-III are made are essentially the same method and apparatus as were used to make foam coaxial cables prior to the inventions alleged in the patents in suit. QR is made by extruding foam polyethylene dielectric around a metallic center conductor, thereby forming a “core,” and then continuously wrapping the core in a longitudinally welded outer aluminum conductor which is subsequently “swaged” down upon the core by a reducing die, essentially as disclosed in the prior art Garner ’330 patent. A polyethylene jacket is then extruded over the outer conductor, and the cable is quickly quenced in a swirling bath of cool water. The heat of jacketing activates a Dow Chemical type adhesive, thereby bonding the foam to the outer conductor, as disclosed in the Mildner '540 patent. This Mildner patent (DX-5), which is prior act under 35 U.S.C.A. Section 102(e), explicitly teaches using the heat of jacketing to activate the EAA adhesive and bond plastic and metal parts of a cable together, including the core to the outer conductor. (See Col. 6, lines 41-46). Adhesive P-III with a jacket is made in much the same way as QR products, except that P-III products employ a “seamless tube” as an outer conductor, rather than a continuously welded outer conductor. An employee of Comm Scope who was previously employed by Superior Cable, Comm Scope’s predecessor testified that, in the case of at least one manufacturing line, the extruder for applying a jacket to the cable is the same extruder that was used to apply jackets to coaxial cable products known as “Alumagard” made by Superior Cable, as early as 1963. The evidence shows that part of Comm Scope’s adhesive P — III production is un-jacketed. In the unjacketed cable, the adhesive, when used, is activated by a gas flame. The evidence shows that this flame imparts less heat to the foam than the heat of jacketing. Neither the gas flame apparatus nor the method of its use is alleged to infringe the ’250 or ’340 patents in suit. E. Non-Infringement of '846 and ’250 Patents 20, 21. The Court must determine from the evidence whether these two products, that is, QR and adhesive P — III, and the method and apparatus infringe the claims of the patents in suit. The ’846 and the ’250 patents stem from a common original application filed on May 31, 1968. (See DX-6 ’846 patent and DX-7 ’250 patent). All of the claims of the ’250 patent and all but two (Claims 7 and 8) of the asserted claims of the ’846 patent are limited to “fusion bonding” of an electrical cable or to a cable wherein the foam insulation is “fusion bonded,” to the “sheath” or “shield,” which in a coaxial cable is also called the outer conductor. Therefore, the threshold infringement issues are the meaning of “fusion bonding” and whether QR and adhesive P-III cables are “fusion bonded” within the meaning of the patents in suit. 22. Ordinarily technical terms like these are defined in the patent but “fusion bonding” and “fusion bonded” are not defined in either of these patents. The meaning of these terms were disputed at trial. Witnesses called by Trilogy defined the terms broadly, so as to include bonding with virtually any heat sensitive adhesive, even if the underlying foam is not melted and caused to produce the results referred to in the patents in suit. On the other hand, witnesses called by Comm Scope testified that “fusion bonding” and “fusion bonded” as used in the patents are more narrow terms and require relatively high heat so as to melt a substance, in this case polyethylene foam, and cause it to flow onto the surface and thereby “stick” to another material, 'in this case, aluminum. According to this latter definition, an “adhesion promoting material” might or might not be present in a “fusion bond,” but its presence would not relieve the need for heating the foam to a high temperature sufficient to cause it to melt and flow and produce the results referred to in the patents in suit. 23. While the specifications of the patents in suit do not provide an explicit definition of “fusion bonding,” the patents do provide information as to how this bonding is to be achieved. In the ’250 and ’340 patents it is stated that “fusion bonding” of the foam core of an electrical cable to the outer conductor or “shield” is accomplished by using relatively high heat of between 300° F and 850° F, preferably supplied by electrical induction heaters, for a duration of between two (2) and ten (10) seconds, depending upon the size of the cable and upon whether an “adhesion promoting material” is used. The EAA adhesive developed by Dow Chemical Company in the prior art is among the substances listed in the patents as “adhesion promoting materials.” The ’846 patent encompasses an electrical cable having foam insulation which has been fusion bonded to the sheath or outer conductor. 24. A careful reading of the specifications and prosecution history of the ’846 and ’250 patents reveal that the heating technique set forth produces several results. The compression exerted on the foam as a result of reducing the size of the outer conductor during the swaging process is supposedly relieved, because the outer area of the foam is “melted.” In addition, the melted foam is said to “flow” into and fill up “any” irregularities in the inner surface of the metal outer conductor, thereby forming a “hermetic seal” between the foam and the outer conductor. (See DX-6 ’846 patent, Col. 2, lines 3-19 and File History of the ’846 patent CDX-13, Amendment dated February 24, 1970, p. 3.) 25. During the prosecution of the original application the Patent Office Examiner rejected it on the grounds that there was nothing new over the prior art. In order to overcome the rejection, General Cable’s patent counsel repeated and emphasized the importance of several of the features of “fusion bonding” referred to in the patents in suit. (See DX-83, amendment of February 24, 1970, pp. 2-3). These representations emphasized the importance of “melting” the foam and causing it to “flow” into “any irregularities” and forming a “hermetic seal” between the foam and the outer conductor. Because of these representations the Examiner withdrew his rejection and the original application resulted in the ’846 and ’250 patents. Under these circumstances the present owner of the patents should not be permitted, in effect, to disregard the specific representations upon which the patents issued by contending now that filling up merely “some” of the irregularities, is equivalent to filling up “any” irregularities or by contending that, merely “softening” the foam is equivalent to melting the foam and causing it to flow and form a hermetic seal. 26. There appears in each of the patents in suit the following representation: If the sheath is not completely round then the softened foam will accommodate itself to any lack of circularity. E.g. ’846 patent, DX-6. The heat of jacket-ing, as applied by Comm Scope, does not permit the foam to accommodate itself to any lack of circularity in the outer conductor. 27. There also appears in the patents in suit the statement that annealing the outer conductor is an important purpose of the heat treatment of the invention. For example the ’846 patent, DX-6, Col. 4, lines 44-53, states: In addition to the bonding of the foamed insulation to the sheath and the equalizing of the pressures in the insulation, the heating of the sheath by the heater 40 serves another important purpose. In the use of aluminum and copper sheaths, the metal is work-hardened by the sinking operation which reduces the diameter of the sheath to fit snugly around the insulated core. This harding makes the cable stiff. The heating of the sheath in accordance with this invention anneals the sheath and substantially increases the flexibility of the cable. See also DX-14, pp. 2-3 (Conception Memorandum). The evidence is undisputed that the heat of jacketing as used by Comm Scope in the manufacture of QR and adhesive P-III products is insufficient to anneal the metal. 28. The co-inventor of the patents, William Brorein testified that fusion bonding requires not just any heat but “controlled heating” to accomplish the foregoing objectives. The only devices specifically disclosed in any of the patents in suit for obtaining “controlled heating” are electrical induction heaters referred to in the text of each of the patents and shown schematically as coils (items 40 and 60) in Figures 1 and 2 in the drawings of all the patents. E.g., ’846 patent, DX-6, Col. 3, lines 3-6. Induction heaters are not used to heat QR or adhesive P-III coaxial cable after the swaging operation, and the heat of jacket-ing, which is applied in the manufacture of these cables, provides 40° F less heat to the foam than the lowest temperature referred to in the patents. 29. The evidence shows that the only heat treatment applied to the QR and the allegedly infringing jacketed P-III products after the swaging operation is the heat of jacketing. However, in using the heat of jacketing to activate the EAA type adhesive in QR and adhesive P-III products, Comm Scope is merely following the prior art. For example, the Mildner ’540 patent stated: In a preferred embodiment, an out (outer) jacket ... of polyethylene composition is extruded over the shield, the heat of extrusion being usually sufficient to bond the metal shield to the respective neighboring plastic parts thereby forming an air-tight moisture-resisting mechanically strong cable composition. DX-5, Col. 6, lines 41-46 (emphasis added). 30. The evidence at trial shows that the heat of jacketing applied by Comm Scope in producing the QR and adhesive P-III cables imparts no more than 260° F to the exterior of the foam for a period of less than two (2) seconds after which the heat is quenched in an agitated water bath, in much the same way that the heat of jacket-ing was applied and then quenched in producing jacketed “Alumagard” cables as early as 1963. 31. Although jacketed cables, such as jacketed “Qualfoam” made by General Cable, were old in the art at the time of the inventions alleged in the patents in suit — as was the use of the heat of jacketing to activate an EAA adhesive' — none of the patents refers to the heat of jacketing. Mr. Brorein, a named inventor, testified that he considered the heat of jacketing, as applied by General Cable prior to the inventions alleged in these patents, to be “inadequate” and “not controlled.” He also acknowledged that he deliberately left any reference to the heat of jacketing out of the patents. 32. The evidence shows there are important functional distinctions between generating a temperature in an outer conductor using an electrical induction heater and extruding a jacket of melted polyethylene heated to the same temperature onto the conductor. An expert witness, Kenneth Bow, a research scientist employed by Dow Chemical Company, testified at trial that an electrical induction heater instantaneously generates approximately the same amount of heat throughout the metal, in this case the outer conductor, such that the upper and lower surfaces of the metal receive the same amount of heat. On the other hand, he explained that a portion of the heat imported to the upper surface of the outer conductor by the heat of jacketing is dissipated while traveling through the aluminum, such that the lower surface of the aluminum reaches a significantly lower temperature than the upper surface of the aluminum. This difference is important because it indicates that the foam insulation of QR and adhesive P-III cable does not achieve a temperature nearly as high as the temperature of the melted polyethylene extruded onto the surface of the outer conductor. This is confirmed by the test results presented by the parties at trial. These results clearly show that the highest temperature experienced by the foam after swaging is 260° F, which is about 125° F less than the temperature of the melted polyethylene jacketing material and significantly less than the lowest temperature specifically referred to in the patents in suit. 33. Although the heat of drying as applied in QR and adhesive P-III production lines may cause some melting of the exterior of the foam polyethylene prior to swaging, the heat of jacketing is not sufficient to melt the foam. Additionally, Comm Scope demonstrated at trial, by means of a portion of QR type cable made without an adhesive, that the heat of jacketing, as applied by Comm Scope, is not sufficient to cause foam polyethylene to fuse to an aluminum outer conductor, and will not bond the foam to such an outer conductor unless an adhesive of the general type found in the prior art and disclosed in the Mild-ner ’540 patent is also used. 34. Comm Scope also demonstrated that the heat of jacketing, as applied to QR and adhesive P-III cables, does not produce the results referred to in the patents in suit and their file histories. Photomicrographs of the QR and P-III products produced under Comm Scope’s direction show that there is no appreciable “melting” and “flowing” of the foam in either product. These photomicrographs show that there are actually cellular voids throughout the foam, including its exterior surface, which resembles, in appearance, Swiss cheese, DX-158. Obviously, these voids are not able to “fill up” irregularities in the interi- or surface of the outer conductor, and their very presence prevents the formation of a “hermetic seal,” facts that were demonstrated during the testimony of Brian Garrett, an engineer for Comm Scope. 35. Photomicrographs presented by Trilogy (PX-186-194) tend to contradict the one offered by Comm Scope but the Court finds them entitled to less weight than those offered by Comm Scope for the following reasons. First, Trilogy’s photomicrographs were obtained from only a single specimen of completed cable while Comm Scope’s were taken from several different specimens at different locations throughout the production process. Mr. Garrett testified that cable samples can vary a great deal depending on the specific location from which they were obtained and the specific portion of the cable from which they are cut. Second, Trilogy’s photomicrographs evidence fails to account for the heat of drying, which the evidence shows may heat the foam to as much as 1000° F prior to swaging, and can cause a thin layer of foam to melt and form a “skin” before swaging. Mr. Garrett testified that the heat of drying is necessary to dry off the water in which the EAA adhesive used by Comm Scope is dispersed. This is done before swaging and is not alleged to be part of the “post heating” process to which the patents in suit refer. Third, Trilogy’s expert, though clearly qualified in his field, was generally unfamiliar with the manufacture of coaxial cable and acknowledged that he had never visited Comm Scope’s plant or seen any coaxial cable produced. In contrast, Mr. Garrett, who supervised Comm Scope’s efforts, is thoroughly familiar with the method and apparatus by which the cables are made and did account for the heat of drying. Fourth, some of the test results presented by Trilogy’s expert were necessarily based upon “simulated” cables rather than real cables. These “simulated” cables were produced under laboratory conditions by estimating the heat of jacketing as applied by Comm Scope and without taking the heat of drying into consideration. In fact, the temperatures used to make the simulated cables were about 100° F higher than the temperatures of the heat of jacketing as actually applied to QR and P-III by Comm Scope. 36. Trilogy contends that cables produced in accord with the inventions alleged in the patents in suit have improved structural return loss (“SRL”). However, Mr. Garrett of Comm Scope testified to tests he made wherein he measured the structural return loss of QR and jacketed P-III and unjacketed products that were otherwise the same and found that, on the average, the heat of jacketing as applied by Comm Scope either does not materially affect structural return loss or slightly worsens (increases) it. (DX-153 and DX-157). 37. The Court finds that Trilogy has failed to sustain its burden of proving by a preponderance of the evidence that the QR and adhesive P-III cables made by Comm Scope are fusion bonded within the meaning of Claims 1, 2, 3, 4 and 6 of the ’846 patent or that the method by which QR is made entails the step of “fusion-bonding” as required by Claims 1, 2, 4, 6 and 8 of the ’250 patent, or heating a cable so as to “fuse” its foam insulation to its outer sheath, as required by Claim 13. By way of summary the evidence shows that both QR and adhesive P-III cables are made with a prior art adhesive using a method and apparatus that were conventional in the art before the inventions alleged in the patents in suit. The adhesive was developed by Dow Chemical Company specifically for the electrical cable industry, to be used essentially as Comm Scope uses it. The evidence further shows that the QR and adhesive P-III products do not achieve the results referred to in the patents in suit. The heat applied in the process is less than that called for in the patents, the foam is not “melted” by the heat of jacket-ing and caused to “flow” into “any irregularities” in the outer conductor. The voids which exist in the exterior surface of the outer conductor are not filled by the heat of jacketing and therefore a hermetic seal is not formed. The heat of jacketing as applied to these products is in accord with the prior art. The heat is not sufficient to anneal the aluminum, does not cause the foam to accommodate itself to any lack of circularity in the outer conductor, and does not, on the average, produce an improvement in structural return loss. 38. Comm Scope acknowledged at trial that Claims 7 and 8 of the ’846 patent literally read on the QR and adhesive P-III products. The Court would therefore find these claims to have been infringed by these products if the claims are valid and enforceable. However, as will be shown later in these findings and conclusions the Court finds and concludes that these claims are invalid and unenforceable. 39. The heat of jacketing as applied to the QR and adhesive P-III products made by Comm Scope cannot be deemed to be the equivalent of fusion bonding, as required by the patents in suit for the following reasons. First, the heat of jacketing, as applied by Comm Scope, provides at least 40° F less heat to the foam than the lowest amount of heat referred to in the patents and does not achieve most of the results set forth in the patent. Second, the heat of jacketing applies significantly less heat than that required to fuse polyethylene foam to an aluminum sheath. Third, an inventor, Mr. Brorein, testified that the heat of jacketing was “inadequate,” “not controlled” and was therefore intentionally left out of the patents, and did, in effect, acknowledge, that it was not an equivalent. Fourth, the use of the heat of jacketing to activate EAA adhesive, as used by Comm Scope in the production of these products, was a part of the prior art and is specifically disclosed, for example, in the Mild-ner '540 patent, DX-5, Col. 6, lines 42-46. F. Non-infringement of ’3j^0 Patent 40. Trilogy contends that Comm Scope’s QR product infringes Claims 1, 2 and 3 of the ’340 patent, but asserts no claim of infringement against the adhesive P-III product. Claim 1 is the only independent claim of the ’340 patent. This claim specifically calls for two items that are not present in the apparatus used to produce the QR product, namely (1) “a heater station including a heater,” and (2) “the heater being correlated with the speed of the means for advancing the cable.” There is no heater apparatus in the QR production line after the swaging operation. The heat of jacketing cannot be deemed to be an equivalent of such an apparatus for the following reasons, first, the heat of jacket-ing was known and applied in the prior art using essentially the same apparatus in essentially the same way that is applied in making the QR product. (For example, Alumagard, see also Mildner ’540 patent, DX-5); and second, the heat of jacketing is not applied in substantially the same way (i.e., no induction heater for obtaining “controlled heating”) and does not achieve many of the results as set forth with respect to the heater apparatus claims of the patents as Mr. Brorein acknowledged. The extruders used to extrude a jacket upon the QR product are the same kinds of extruders that were conventional in the art several years before the inventions alleged in the patents in suit. In addition the evidence shows that the heat of jacketing, as applied by Comm Scope, is not “correlated” with the speed of any means for moving the cable along the production line. The temperature of heat of jacketing, as applied to QR, is not significantly varied, and the temperature of the polyethylene that forms the jacket remains essentially the same regardless of the speed of the QR production line. For these reasons, the Court finds that Claim 1 of the ’340 patent cannot be deemed to have been infringed by the apparatus used to manufacture the QR product. 41. Claims 2 and 3 of the ’340 patent are dependent from Claim 1 and have not been infringed by the apparatus used to manufacture the QR product for the same reasons that Claim 1 is not infringed. In addition, Claim 2 and 3, (the latter being dependent from Claim 2) require that the heater have a capacity “sufficient to fuse the foam which is in contact with the inside surface of the sheath.” The evidence shows that the heat of jacketing, which Trilogy contends is an equivalent of the heater apparatus referred to in the claims of the ’340 patent, lacks this capacity. See DX-167 (sample of QR cable produced by the usual method on the usual apparatus but without an adhesive and has no bond between the foam and the outer conductor). The Court therefore finds that Claims 2 and 3 of the ’340 patent have not been infringed by the apparatus used by Comm Scope to make the QR cable product. G. Invalidity 42. The Court now turns to the question of the validity of Claims 7 and 8 of the ’846 patent. The evidence discloses and the Court finds that every element set forth in Claims 7 and 8 of the ’846 patent in suit was disclosed in the specifications of the Mildner ’540 patent (DX-5) and that those claims are therefore anticipated under 35 U.S.C.A. Section 102(e). In addition the Court finds that the subject matter claimed in each of the asserted claims of the patents in suit would have been obvious to a man of ordinary skill in the art at the time the alleged inventions were made and are therefore invalid under 35 U.S.C.A. Section 103. 43. Trilogy contends that the ’846 and ’250 patents should be accorded an enhanced presumption of validity because the art cited by Comm Scope is no better than the art considered by the Examiner in allowing the patents in suit to issue. However, as shown, in part, by the testimony of two expert witnesses, Kenneth Bow, an independent technical expert and John Wither-spoon, a former member of the Board of Patent Appeals, Trilogy’s argument is incorrect. The Mildner ’540 patent is more pertinent to the inventions alleged in the ’846 and the ’250 patents than any of the “secondary references” cited by the Examiner for use in conjunction with the primary reference, the Garner '330 patent (DX-3). Although the Examiner cited a French patent to Dow Chemical Company that contains some of the disclosure of the Mildner ’540 patent, the ’540 patent is much more comprehensive than the French patent, especially with respect to coaxial cables. In contrast to the text of the Mild-ner ’540 patent, the text of the French patent does not refer to coaxial cables and does not state that the EAA adhesive can be applied directly to the core, as typically would be done in the ease of a swaged coaxial cable. Whole sections of the text of the Mildner ’540 patent are absent from the French Dow patent, as evidenced by DX-5B, a copy of the Mildner patent with highlights in the French patent. The record seems to indicate that the Examiner did not speak French, did not fully appreciate even the limited text of the French patent, and did not actually apply the text of said patent in making any rejection. He cited the French patent as evidencing a cable having more than one inner conductor, which is apparent from one of the drawings of the French patent, without the text. In the same action, the Examiner stated that the pending Brorein and Poliz-zano claims were directed simply to cable made by the process of the Garner ’330 patent (DX-3) that was “fusion bonded.” See DX-83 (file history of the ’846 patent; office action dated 12-8-69, p. 3). If the Examiner had appreciated that the French patent taught “fusion bonding,” as Trilogy now concedes, he surely would have applied the French patent to reject the pending claims of the Brorein and Polizzano applications. H. Anticipation of Claims 7 and 8 of the ’8Jf6 Patent 44. An element-by-element of the claims of the ’846 patent is as follows: Claim 7: An electrical cable including a conductor core, insulation surrounding the core including a foamed dielectric, a metal sheath surrounding the insulation and holding the foamed dielectric under some compression, and a thin layer of adhesion-promoting material on the outside of the foamed insulation between the foam and the metal sheath and bonded to both the foam and metal sheath. Col. 6, lines 43-49. Claim 8: The electrical cable described in Claim 7 characterized by the adhesion-promoting material being from the group consisting of amorphous polypropylene and polypropylene copolymers, and copolymers of po-lyolefin and acrylic acid. Col. 6, lines 50-53. Claim 8 is dependent from Claim 7 and therefore contains all of the elements of Claim 7 plus the specific adhesive composition that Claim 8 specifies. Claim 8 includes what is known in patent practice as a “Markush group.” See, Ex Parte Markush, 1925 C.D. 126, 340 O.G. 839. This means that Claim 8 would cover a product according to Claim 7 in which the adhesion-promoting material would be either amorphous polypropylene and polypropylene copolymers or copolymers of polyo-lefin and acrylic acid. 45. For sometime before the alleged inventions in the '846 patent was made, and more than one year before the filing of the application that resulted in the patent, several cable manufacturers had made and sold coaxial cable having a center conductor core foam polyethylene insulation surrounding the conductor core, and an outer metal sheath holding the foam dielectric insulation under compression. See e.g. DX-37 (“Alumagard” brochure); Deposition of William J. Brorein, October 27, 1985, which was read into the record at trial. Product of this type was described in United States Patent 3,430,330 to Garner (DX-3). 46. In the early 1960's, more than a year prior to the filing of the application that resulted in the '846 patent, employees of Dow Chemical Company, including Ray Mildner (now deceased), developed and disclosed an ethylene acrylic acid copolymer (sometimes referred to as EAA) for use in manufacturing electrical cables. This adhesive was used to bond plastic to metal, and the application that resulted in Mild-ner’s patent '540 disclosed the use of his EAA adhesive to bond electrical cable core structures having plastic insulation to outer metallic sheaths. DX-5 (Mildner '540 patent); DX-222 through DX-224 (Dow brochures). 47. The Mildner '540 patent specifically discloses surrounding a foamed plastic around internal conductors and surrounding this circular core with a metal sheath: Figs. 2A and 2B show a typical three-conductor power cable. The low resistance Metal Conductors 21, which can be solid or stranded, usually of copper or aluminum, are each insulated, usually with an extruded plastic cover 22 of polyvinyl chloride, polyethylene or rubber, sometimes with impregnated paper. Space fillers 23 of hemp, foamed plastic, or the like are used to provide a substantially circular core assembly which is enclosed in a metal sheath or shield 24, which can be of any ductile metal, usually lead, copper or aluminum. The shield is preferably a seamless tube or a welded or soldered tube. DX-5 (Mildner '540 patent), Col. 4, lines 60-69 (emphasis added). 48. The Mildner '540 patent specifically discloses including an adhesive copolymer of ethylene and unsaturated carboxylic acid (EAA adhesive) between the metal sheath and the underlying foam core to bond the metal sheath to the neighboring plastic part: In preferred embodiments, of this invention, the metal shields 24, 33, 45 and 54 shown in FIGS. 2, 3, 4 and 5, respectively, are tapes of aluminum or copper or other suitable metal, which tapes have been coated preferably on both sides, with the specified copolymer of ethylene and unsaturated acid.... In a preferred embodiment, an out jacket 26, 35, 47 and 57 of polyethylene composition is extruded over the shield, the heat of extrusion being usually sufficient to bond the metal shield to the respective neighboring plastic parts thereby forming an air-tight, moisture-resisting, mechanically strong construction. Id., Col. 6, lines 21-46 (emphasis added). The adhesive described in the Mildner ’540 patent as a “copolymer of ethylene and an ethylenically unsaturated carboxylic acid such as acrylic acid” is a copolymer of polyolefin and acrylic acid. By basic chemical definition, a polypropylene substance is a polyolefin. See, e.g., Webster’s Ninth New Collegiate Dictionary, 1988, defining ethylene as an olefin. 49. The Mildner ’540 patent specifically discloses the advantages gained by bonding the metallic sheath to the adjacent plastic materials: A combination of these alternatives can be used to provide the advantages of the improvement of this invention in securely bonding any of the metal parts of a conductor to any of the neighboring thermoplastic parts through a boundary layer of the specified adhesive binder, i.e., the defined copolymer of ethylene and unsaturated acid, at their common surface of contact, the particular mechanical design being selected by the manufacturer to accomplish the purpose desired. Thus, cables built in accordance with this invention with metallic parts such as shields securely bonded to a neighboring part, such as core or jacket or both through a boundary layer at their common surface of contact are resistant to intrusion of fluids between the neighboring parts. In such cables having bonded parts in accordance with this invention, tensile or compressive force applied to one of the parts is transmitted to the other, whereby the cable resists relative displacement and separation of the parts. Id., Col. 4, lines 12-29 (emphasis added). 50. The Mildner patent discloses utilizing pressure or compression to accomplish the desired bonding with the adhesive: One advantage of using the ethylene co-polymer with ethylenically unsaturated acid as specified in this invention is that the copolymer readily forms a strongly adhesive bond with the metal and such bond is readily formed at mild conditions and with only minor changes in the procedures used in cable manufacture. Moreover, no rigorous cleaning or pretreatment of the metal surface is required. Excellent bonds have been obtained to metal surfaces contaminated with oil. To obtain a good bond, it is only necessary that the adhesive polymer wet the substrate surface and this is readily achieved by employing the polymer in a fluid state and under sufficient pressure to provide good contact between the parts. Id., Col. 7, lines 17-29 (emphasis added). 51. The Mildner ’540 patent also discloses applying the adhesive or bonding material to the insulated core structure: It will be evident to those skilled in the art that the improvements of this invention can be obtained by modifying conventional wire and cable constructions and fabrication methods in various ways. In some instances, the thermoplastic composition for use in fabricating a part can be composed in whole or in part of material capable of bonding to the metal part, i.e., the defined ethylene-unsaturated acid copolymer. Thus, for example, a conductor can be covered with an insulating sheath by extrusion of a thermoplastic insulation composition comprising the defined copolymer to provide a bonded sheath. This technique also provides an insulated core whose exterior surface is comprised of the defined polymer and is suitable for application of a metal shield, e.g., a longitudinally folded metal strip or helically wound tape or the like, which thereby becomes bonded to the core through the surface of defined copolymer. Alternatively, an insulated core structure can be fabricated from conventional materials in the usual way to provide a conventional plastic part, and (prior to adding the metal shield) the outer surface of the prefabricated core can be provided with a continuous surface layer or coating of bonding material such as the defined adhesive polymer whereby the subsequently applied metal shield becomes bonded to the insulated core structure, e.g., through the intermediate surface of the defined copolymer. In another embodiment, the metal strip or tape to be used in construction can be first provided with a coating or covering layer of the defined adhesive polymer or other bonding material on one or both sides of such metal strip or tape which is then fabricated into a shield over the core, being bonded thereto through the coating or layer. Id., Col. 3, lines 32-64 (emphasis added). 52. The above-cited portions of the Mild-ner ’540 patent were included in the original application for that patent which was filed on November 22, 1963. This was pri- or to the time that the alleged invention of the ’846 patent was made. See DX-232 (Mildner ’540 file history). Plaintiffs response to Defendants’ First Set of Requests for Admission No. 5. 53. Trilogy contends that the Mildner ’540 patent does not teach or disclose a cable wherein the metal sheath holds the foamed dielectric under compression, as required by Claims 7 and 8. However, these claims do not require any particular amount of compression, but merely “some” compression, and the Mildner patent specifically states that pressure — hence “some compression” — is to be applied in bonding the metal sheath to the core. DX-5, Col. 7, lines 17-29. The fact that the patents in suit do not require high compression is underscored by their specifications, which note the advantage of using low compression. For example, the ’846 and ’250 patent specifications state: “When the foam insulation is heat-bonded to the metallic sheath, lower initial compression may be used when the sheath is applied over the foam core, thus minimizing the dielectric compression problem.” DX-7, Col. 2, lines 20-24 (emphasis added). Moreover, the Mildner patent discloses cable structures that can be made only by swaging, a process that inherently applies at least “some compression” to the core (e.g., Figs. 2A and 2B, and several references to the use of “seamless” aluminum sheaths, such as Col. 4, lines 70-75). The Mildner patent also refers specifically to “coaxial metal shields,” (Col. 1, lines 46-55) and discloses application of the adhesive to the core, which is the typical manner in which adhesive is applied by Comm Scope in the manufacture of QR and adhesive P-III. Thus, the application of “some compression” is not only specifically disclosed in the Mildner reference but inherent in practicing the Mildner disclosure. 54. The evidence indicates that those coaxial cables made in accord with the “Zetabon” pre-coated tape embodiments of the Mild-ner ’540 patent (which was not swaged) have at least “some” compression applied to the foam by forming rollers that press the outer conductor against the foam. “Zetabon” is the trade name of an aluminum tape made and sold by Dow Chemical Company for use as an outer conductor or shield in coaxial and other electrical cables. The witness Kenneth Bow of Dow Chemical explained at trial the process of making these cables and that it involved compressing the foam. See DX-257, DX-258, DX-259 and DX-260, and testimony explaining pressure exerted in making this type of cable. In addition Mr. Bow testified that he had tested “Sealmetic” coaxial cable (DX-148-1 through DX-148-3) made in accord with the pre-coated “Zetabon” tape embodiments of the Mildner patent. This “Sealmetic” cable has polyethylene foam insulation and an outer aluminum conductor wrapped, like cigarette paper, around the foam and adhered to itself by means of EAA adhesive. Mr. Bow testified that his tests and measurements showed the foam core in this type cable was under substantial compression. Frank Drendle, President of Comm Scope, who has been in the electrical cable business since the early 1960’s testified that some “Sealmetic” type of cable was made having the outer aluminum conductor adhesively bonded to the foam core. (See DX-248, sketch made by Mr. Drendle at trial). This adhesively bonded cable was sold in the United States in 1964 and is therefore prior art under 35 U.S.C.A. Section 102(b). 55. By way of summary, each element recited in Claims 7 and 8 of the ’846 patent is present in the disclosure of the Mild-ner ’540 patent, and each element is united in an electrical cable, in the same way to perform the identical function. It therefore follows that these claims were anticipated under 35 U.S.C.A. Section 102(e). I. Obviousness of the Asserted Claims of the ’84-6 and ’250 Patents 56. Based upon the construction of the Garner ’330 patent (DX-3) and either the Mildner ’540 patent or Lamons United States Patent 3,173,990 (DX-9), the subject matter set forth in each of the claims of the ’846 and ’250 patents asserted in this action would have been obvious to a man of ordinary skill in the art at the time these alleged inventions were made. In addition, the subject matter set forth in these claims would have been obvious to a man of ordinary skill in the art within the meaning of 35 U.S.C.A. Section 103 who was informed of the effects of the heat of jacketing on Qualfoam coaxial cable made and sold by General Cable Company more than one year prior to the filing of the first application resulting in the patents in suit. 57. The evidence reveals that the level of skill in the cable design art at the time of the alleged inventions in the patents in suit was high. A highly qualified witness, Kenneth Bow of Dow Chemical Company, who was personally involved in the art at the time of the inventions testified that research workers in the art held at least an electrical or chemical engineering (B.S.) degree and some had taken additional graduate courses. Most of these workers had several years experience in research and development and were exposed to problems, needs and developments in the industry, including the CATV coaxial cable industry. They all had access to various publications and trade symposia such as the Annual Wire and Cable Symposium which was usually attended by various employees of General Cable. Examples of papers presented at these meetings included a paper entitled, “Adhesive Thermoplastic Copolymers for the Wire and Cable Industry,” by G.E. Clock, G.A. Klumb and R.C. Mildner, given at the Twelfth Annual Wire and Cable Symposium, Asbury Park, New Jersey, (December 4-6, 1963) (DX-16), and “Recent Developments in Small Core Coaxial Cable,” (DX-44), given at the same 1963 symposium. These workers had the skill to employ adhesives to bond foam to the sheath or outer conductor of swaged coaxial cables, such as Qualfoam, DX-21. 58. At the time of the alleged inventions claimed in the patents in suit the scope and content of the electrical cable art were very extensive. See DX-254A through DX-254C (outline prepared by Kenneth Bow of significant developments in cable design art). The art included telephone cables, coaxial cables and power cables of various sizes and applications, (e.g., DX-5, Mild-ner ’540 patent, which refers to all three general types of these cables), as well as a variety of different methods and apparatus for manufacturing these cables. It was known to use foam polyethylene insulation and the swaging technique to make coaxial CATV trunk cables, such as “Qualfoam” made by General Cable and “Alumagard,” made by Superior Cable. See, e.g., DX-3 (Garner ’330 patent regarding swaging); deposition of William J. Brorein, dated March 12, 1987 (swaging was “conventional” by 1962 or 1963); DX-37 (“Alumagard” brochure); deposition of Jerzy Olszewski, December 4, 1987 (read into evidence at trial) (foam dielectric insulations known to be desirable since the turn of the century). It was also known that some form of adhesion between the foam dielectric insulation of a coaxial cable and the outer conductor to prevent water migration and reduce problems of differential expansion. (Olsz-ewski’s deposition, December 2, 1987); see also DX-21 (evidencing some of the skill in the art). Adhesive for use in bonding plastic core elements to the outer shield or conductor of a coaxial cable had been developed and disclosed to the art at least as early as 1963. DX-16; DX-44; DX-5; DX-222 through DX-224; DX-248. 59. The Garner ’330 patent (DX-3) discloses a method and apparatus for manufacturing a swaged coaxial cable having a welded aluminum outer conductor. In addition the swaging process was disclosed prior to the alleged inventions in the patents in suit in at least two publications, including “Communication Cables with Welded and Corrugated Metallic Sheaths” by Andresen and Stein, which was presented at the Eleventh Annual Symposium on Technical Progress in Communication Wires and Cables in As-bury Park, New Jersey, on or about November 28, 1962 (DX-117, p. 3) and “Aluminum Sheathed Cables” by P.M. Holling-worth and R.A. Raine, Proceedings of Institution of Electrical Engineers, Vol. 101, Part 2, p. 608 (1934) (DX-116). 60. The evidence discloses without question that by the early 1960’s swaging had been a conventional way to manufacture coaxial cables. Both Mr. Olszewski of General Cable and Mr. Brorein, one of the inventors, also of General Cable, testified by way of depositions read at the trial that the swag-ing procedure was a conventional way to manufacture coaxial cables before the inventions claimed in the patents in suit. 61. Trilogy claims that the amount of compression called for in the patents in suit and the reduction of this compression resulting from heating of the cable, causing the softened foam to flow into irregularities in the outer conductor is an important part of the invention. However, at trial, Richard Asdourian, a former employee of General Cable who was knowledgeable about the manufacture of Qualfoam coaxial cable, testified that the “optimum” compression for practicing the fusion bonding method and producing the fusion bonded cables of the patents in suit was 8 mils, which is within the preferred range explicitly disclosed in the prior art, Garner ’330 patent. (DX-3, Col. 4, lines 6-10, stating preferred range of “between about 5 and 15 mils”). The Garner patent discloses the method by which unjacketed Qualfoam coaxial cable was manufactured by General Cable several years prior to the inventions alleged in the patents in suit. Thus Trilogy’s contentions about the results of compressing the cable and heating it amount to little more than a statement of results that are inherent and unavoidable when coaxial cable produced in accord with the preferred embodiment of the Garner ’330 patent is heated. 62. The claims of the ’846 and ’250 patents that are asserted in this action essentially relate to an electrical cable made by the swaging process having a polyolefin foam insulation that is “fusion bonded” to the outer sheath. The patents state that fusion bonding can be effected by heat alone, without an adhesion promotion material (e.g. DX-7, ’250 patent, Col. 4, lines 21-36). However, in order to make out any case of infringement against the Comm Scope product, Trilogy necessarily has had to contend that “fusion bonding” should be given a broad definition, so as to include virtually any bonding of polyethylene foam to an aluminum sheath using a heat activated adhesive. By Trilogy’s definition, the adhesive bonding technique disclosed in the Mildner ’540 patent constitutes “fusion bonding” and its expert witness, Dr. Ord-way specifically acknowledged this during cross examination. 63. Accepting Trilogy’s broad definition of “fusion bonding,” the issue is whether it would have been obvious to a man of ordinary skill in the art in the mid-1960’s to have used an adhesive as disclosed in the Mildner ’540 patent to adhesively bond the foam of a swaged type cable, such as Qual-foam, to the outer conductor of this cable. The evidence shows, clearly and convincingly, that the answer must be in the affirmative. Indeed, the problems encountered in Qualfoam type cables are essentially the same problems to which the disclosure of the Mildner ’540 patent was directed. 64. Even though Trilogy’s expert witness, Dr. Ordway, testified that the Mildner ’540 patent teaches "fusion bonding,” according to Trilogy’s broad definition of the term, Trilogy argues that it would be inappropriate to use the disclosure of the Mild-ner ’540 patent together with the disclosure of the Garner ’330 patent because the Mild-ner ’540 patent does not explicitly use the term “swaging” or “swaged cable.” This argument is without merit for several reasons. First, by its own terms (e.g., Col. 3, lines 32-35), the disclosure of the Mild-ner ’540 patent is intended for use with many different cable constructions and cable types, specifically including coaxial cables (e.g., Col. 1, lines 46-59), referring to “coaxial metal shields” and associated plastic dielectric (see also Fig. 5). Second, the Mildner ’540 patent specifically refers to cables having “seamless” or “welded” outer conductors, (e.g., Col. 4, lines 70-75; Figs. 2A, 2B), which various witnesses testified would be swaged in order to produce a tight fit around the core; and the Mildner patent states that the EAA adhesive may be applied directly to the core, which is how the EAA adhesive is typically applied to swaged cable (e.g. Col. 3, lines 50-58). Third, the text of the Mildner patent indicates that the EAA adhesive to which the patent refers was developed, among other things, to solve or lessen moisture penetration problems, differential expansion problems (or relative movement of cable parts), and damage by bending and repeated bending over a short radius. For example, Col. 4, lines 20-34, of the Mildner patent states: Thus, cables built in accordance with this invention with metallic parts such as shields securely bonded to a neighboring part such as a core or jacket or both through a boundary layer at their common surface of contact are resistant to intrusion of fluids between the neighboring parts. In such cables having bonded parts in accordance with this invention, tensile or compressive force applied to one of the parts is transmitted to the other, whereby the cable resists relative displacement and separation of the parts. Such bonded cables are resistant to damage by pulling through ducts and conduits and by suspending unsupported between widely separated poles or towers. Also, such cables are resistant to damage by short radius bending and by repeated bending and straightening, (emphasis added) The evidence indicates that these are largely the same problems to which the patents in suit were addressed. It would have been obvious to a man of ordinary skill in the art to look to the Mildner disclosure to help in solving these problems. The EAA adhesive and its use in various cable constructions were disclosed in prior art other than the Mildner patent, notably DX-16, a 1963 paper co-authored by Mildner and presented to a trade seminar. 65. The obviousness of employing an adhesive such as the Dow EAA between the foam insulation and the outer conductor of a swaged coaxial cable was also apparent from General Cable’s Qualfoam manufacturing techniques as early as 1965. It is undisputed that, even before the inventions alleged in the patents in suit, adhesion between the foam and the inner and outer conductors of coaxial trunk cables was known to be necessary and desirable. General Cable’s 1965 and 1966 specifications relating to commercial Qualfoam stated that this adhesion was necessary and prescribed standards (including a “pull test”) for determining whether adequate “adhesion” had been obtained. Paragraph 3.1 of General Cable’s DS-1135-B specifications for testing Qualfoam stated that “the adhesion between the [inner] conductor and insul