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CONGOLEUM INDUS. v. ARMSTRONG CORK CO.

February 23, 1972

CONGOLEUM INDUSTRIES, INC.
v.
ARMSTRONG CORK COMPANY


Hannum, District Judge.


The opinion of the court was delivered by: HANNUM

HANNUM, District Judge.

 Presently before the Court is an action for infringement of United States Letters Patent 3,293,094 and 3,293,108 (hereinafter the "'094 patent" and the "'108 patent", respectively). The '094 patent is entitled "TEXTURED FOAM PROCESSES" and the '108 patent is entitled "TEXTURED FOAM PRODUCTS". Both patents were granted on December 20, 1966 and were issued to plaintiff's predecessor, Congoleum-Nairn, Inc., as an assignee of the applicants R. Frank Nairn, Joseph C. Harkins, Jr., Frank E. Ehrenfeld, Jr., and Hilton Tarlow. After extensive hearings, and after careful examination and consideration of the exhibits and records admitted at trial, the Court makes the following:

 FINDINGS OF FACT

 1. Plaintiff, Congoleum Industries, Inc., is a corporation organized and existing according to the laws of the State of Delaware. Plaintiff was substituted by stipulation of the parties for Congoleum-Nairn, Inc., the original plaintiff, its predecessor in interest in the patents in suit. Plaintiff is the owner, by assignment, of all the right, title and interest in and to the patents in suit.

 2. Defendant, Armstrong Cork Company, is a corporation organized and existing under the laws of the State of Pennsylvania.

 I History of Patented Process

 3. The floor covering industry has traditionally been a design-style industry.

 5. By the early part of the 1950's, techniques for producing cellular foam vinyl resin compositions by utilizing chemical blowing agents were developed. Congoleum and its competitors recognized the potential applicability of these techniques for surface coverings, particularly resilient floor coverings.

 6. By at least the middle 1950's, techniques had been developed for producing foam vinyl resinous compositions by using chemical blowing agents, such as azodicarbonamide, and stabilizer-promoters for lowering the decomposition temperature of the azodicarbonamide relative to the temperature at which the azodicarbonamide would decompose by itself. Among such known stabilizer-promoters were zinc octoate and dibasic lead phosphite.

 7. Because it was known that embossing would enhance sales appeal, research was directed to developing techniques for producing vinyl resinous composition having an embossed foam decorative layer. However, none of the embossing methods developed to accomplish such purposes were commercially successful.

 8. In 1961, the management of plaintiff's predecessor desired to introduce new floor covering products to take advantage of the technology which had been developed in the foam vinyl field.

 9. While it was recognized that embossed patterns in register with a colored design were desirable, the only practical methods recognized by the flooring industry as applicable to foam vinyl floor coverings for obtaining such patterns involved high costs and gave only limited effects. This caused Congoleum to introduce its early foam vinyl floor covering with a smooth unembossed surface.

 10. In June 1962 and for several years thereafter, plaintiff manufactured and sold, as unembossed "Cushionflor", a decorative floor covering comprising a felt backing, a cellular foam layer, a printed decorative layer and a clear wear layer. The foam layer was formed from a plastisol including polyvinyl chloride resins, azodicarbonamide, and dibasic lead phosphite. In making the product, the felt base was coated with a plastisol and subjected to sufficient heat to gel the resin but insufficient to decompose the azodicarbonamide. Conventional printing inks comprising a mixture of a pigment and a resin binder blended with a vehicle were printed on the gelled plastisol by a rotogravure printing process in the form of a design, the inks were dried to remove the volatiles, and a clear coat in the form of an organosol was applied. Thereafter, the product was heated to fuse the resinous compositions and to decompose the azodicarbonamide to provide a structure with a cellular interlayer.

 11. Following the introduction of flat Cushionflor in June 1962, research on embossing techniques applicable to foam vinyl floor coverings continued, with particular emphasis being given to mechanically embossing the "Cushionflor" product.

 12. During a meeting on January 25, 1963, Frank Nairn suggested that a new approach to the problem of obtaining embossing would be to find a chemical which could be put in the ink which would cause embossing.

 13. In January 1963, the chemical embossing proposal was referred to Congoleum's Research and Development Department for consideration. This approach was rejected by the Director of Research and Development after no one could conceive of how the chemical embossing could be accomplished.

 14. Notwithstanding the rejection of chemical embossing by the Research and Development Department, members of the Manufacturing Department concluded that the idea merited investigation.

 16. This program led to the identification of several chemical compounds (subsequently termed inhibitors) which, when applied to the surface of a foamable vinyl resinous composition would retard the decomposition of the blowing agent during the heating operation.

 17. The Congoleum Research and Development Department, after being advised of the fact that chemical embossing had been demonstrated to be workable, was requested to assist the Manufacturing Division in the identification of the best inhibitor for plant production. The subsequent testing program led to the discovery of additional chemical compounds which were suitable inhibiting agents for use in chemical embossing.

 18. Congoleum conducted its first plant trial of chemical embossing on April 11, 1963. Hydroquinone was used as the inhibitor. It was included in one of the inks and printed on the surface of the gelled plastisol normally used to manufacture the flat Cushionflor product. Although the hydroquinone discolored the foam, embossed effects were produced in register with the printed design.

 19. Thereafter, a series of plant trials were conducted, using different compounds as inhibitors, which trials ultimately led to the commercial production of plaintiff's chemically embossed products sold under the trademark of "New Dimension Cushionflor".

 20. In these trials, a felt backing was coated with a plastisol including polyvinyl chloride resins, azodicarbonamide and dibasic lead phosphite. The coated backing was heated sufficiently to gel the plastisol but not to decompose the azodicarbonamide. Conventional printing inks comprising a mixture of a pigment and a resin binder blended with a vehicle were printed in selected areas on the gelled plastisol by a rotogravure process to provide a design. Additionally, at least one of the inks contained fumaric acid as an inhibitor. The inks were dried to remove the volatiles, and a clear coat in the form of an organosol was applied. Thereafter, the product was heated uniformly to fuse the resinous composition and to decompose the azodicarbonamide selectively to provide a structure with a cellular interlayer. The extent of heating was controlled as to time and temperature to produce depressed areas where the ink containing fumaric acid had been applied.

 21. The manufacture for commercial sale of a product produced by the method described in the '094 patent was commenced on August 22, 1963, with the first sale of products which were so manufactured taking place in September of 1963.

 22. The chemically embossed Cushionflor marketed by Congoleum enjoyed outstanding commercial success and had such a profound effect on the vinyl sheet floor covering market that the major producers were compelled to develop and market competitive chemically embossed products.

 II The Patents in Suit

 23. On September 18, 1963, application Serial No. 309,738 (the "'738 application") was filed in the United States Patent Office naming Messrs. Nairn, Harkins, Tarlow and Ehrenfeld as inventors of certain "Textured Foam Products" and the methods for producing them disclosed therein.

 24. The '094 patent was granted on application Serial No. 522,006 filed December 20, 1965, which was a continuation-in-part of said application Serial No. 309,738 filed September 18, 1963, and application Serial No. 377,023 filed June 22, 1964.

 26. Application Serial No. 425,276, filed February 25, 1965, was a continuation-in-part of application Serial No. 377,023 filed June 22, 1964, and a continuation-in-part of the application Serial No. 309,738 filed September 18, 1963.

 27. Application Serial No. 487,441, filed September 15, 1965, was a continuation-in-part of application Serial No. 435,276 filed February 25, 1965, and a continuation-in-part of application Serial No. 377,023 filed June 22, 1964, and a continuation-in-part of application Serial No. 309,738 filed September 18, 1963.

 28. Application Serial No. 508,184, filed October 22, 1965, was a continuation-in-part of application Serial No. 487,441 filed September 15, 1965, a continuation-in-part of application Serial No. 435,276 filed February 25, 1965, a continuation-in-part of application Serial No. 377,023 filed June 22, 1964, and a continuation-in-part of application Serial No. 309,738 filed September 18, 1963.

 29. Application Serial No. 522,006, filed December 20, 1965, was a continuation-in-part of application Serial No. 508,184 filed October 22, 1965, a continuation-in-part of application Serial No. 487,441 filed September 15, 1965, a continuation-in-part of application Serial No. 435,276 filed February 25, 1965, a continuation-in-part of application Serial No. 377,023 filed June 22, 1964, and a continuation-in-part of application Serial No. 309,738 filed September 18, 1963.

 30. The '108 patent was granted on application Serial No. 508,185 filed October 22, 1965, which was a continuation-in-part of application Serial No. 309,738 filed September 18, 1963 and of application Serial No. 377,023 filed June 22, 1964.

 31. Application Serial No. 435,289, filed February 25, 1965, was a continuation-in-part of application Serial No. 377,023 filed June 22, 1964, and a continuation-in-part of application Serial No. 309,738 filed September 18, 1963.

 32. Application Serial No. 487,422, filed September 15, 1965, was a continuation-in-part of application Serial No. 435,289 filed February 25, 1965, a continuation-in-part of application Serial No. 377,023 filed June 22, 1964, and a continuation-in-part of application Serial No. 309,738 filed September 18, 1963.

 33. Application Serial No. 508,185, filed October 22, 1962, was a continuation-in-part of application Serial No. 487,422 filed September 15, 1965, a continuation-in-part of application Serial No. 435,289 filed February 25, 1965, a continuation-in-part of Application Serial No. 377,023 filed June 22, 1964, and a continuation-in-part of application Serial No. 309,738 filed September 18, 1963.

 34. The '738 application and the two patents in suit which ultimately derived from it describe a specific application of chemical embossing to foam vinyl products of the prior art. These prior art foam vinyl products, exemplified by Congoleum's unembossed Cushionflor, are disclosed as being manufactured by a process including the steps of:

 
(a) applying a layer of foamable resinous plastisol to a suitable base, the foamable resinous plastisol containing sufficient blowing agent that it will expand to the desired degree upon heating to the selected processing temperature;
 
(b) the foamable resinous plastisol is gelled by mild heating to form a printable surface without decomposing the blowing agent;
 
(c) inks to form a decorative design are applied to the surface of the gelled foamable plastisol, typically employing multistate rotogravure printing equipment;
 
(d) in order to impart wearing qualities to the finished product, the printed gel is covered with a second non-foamable vinyl material called a "wear layer";

 35. The '738 application and the two patents in suit further disclose that minor amounts of metal salts are usually incorporated as stabilizers in the foamable composition to reduce degradation by heat and light. Vinyl chloride systems are not normally used without such a metal salt stabilizer. Such stabilizers can also exert an influence on the decomposition temperature of the blowing agent.

 36. The '738 application and the two patents in suit further disclose that to chemically emboss such foam vinyl products an inhibitor is applied before the foaming step.

 37. In the final heating step of the chemical embossing process of the patents in suit the uniform heating is controlled as to time and temperature so that more blowing agent is decomposed in a raised area than in an adjacent depressed area to produce an embossed product. The greater decomposition of the blowing agent causes the raised or uninhibited area to expand more than the depressed area during the final heating step because of the greater amount of gas liberated.

 38. The chemical embossing results from the modification of the chemical reactions involved in the decomposition of the blowing agent by the interreaction between an inhibitor, printed on the surface of a foamable composition, and the blowing system employed in the said composition so that the blowing agent decomposes to a greater or lesser extent in those areas where the inhibitor is present than in areas in which the inhibitor is not present.

 39. The effect which the inhibitor has on the blowing system as described in the patents in suit is there stated as substantially altering the temperature at which the blowing agent decomposes.

 40. The finished chemically embossed floor covering products described in the patents in suit have the preferred construction of a felt base, a foam interlayer, a printed design, and a transparent vinyl surface layer.

 41. Where an inhibitor has been applied which results in depressed areas, the cells of the foam layer below the depressed portion can be smaller than the cells of the foam layer in the other portions because of the reduced gas evolution caused by the inhibitor.

 42. Because the depressed areas occur where the inhibitor has been printed, there can be perfect registration between the embossing and any pattern printed at the same time as the inhibitor is applied during the printing operation.

 III Validity of the Patents in Suit

 Sufficiency of Disclosure

 43. An inhibitor, as used in the patents in suit, is an agent which alters the decomposition temperature of the blowing agent, or the combination of a blowing agent with an accelerator, in the area of a foamable resinous polymer composition above or below where it is deposited.

 44. There is a great variety in the chemical compositions of blowing agents.

 45. The type of compound used as an inhibitor may also vary widely.

 46. A simple test is set forth in the patents to determine whether, under specific conditions of use, a given inhibitor is capable of substantially altering the temperature at which the blowing agent decomposes.

 47. By utilizing the simple test set forth in the patents in suit, any person skilled in the art can determine a given compound's usefulness as an inhibitor under the specific conditions of use.

 48. The concept of "decomposition temperature of the blowing agent" is a relative one in practical foam vinyl technology and derives specific numerical values only when such relevant factors as the heating rate and the chemical and physical make-up of the total system are taken into account.

 49. The concept of decomposition temperature of the blowing agent as used in the patents in suit was well known and was commonly used by those persons familiar with the art prior to its inclusion in the patents in suit.

 50. As used in the patents in suit, the "decomposition temperature" is that range of temperature over which the blowing agent will provide a suitable amount of gas to achieve the desired end result in the system being used.

 51. The concept of "substantially altering the decomposition temperature of the blowing agent" as used in the patents in suit means an alteration of the decomposition temperature of the blowing agent sufficient to cause enough embossing so that the process can be used to enhance the commercial saleability of a product.

 Statutory Bar to Certain Claims

 52. The identification of carbohydrates, by specific reference as "inhibitors", was first set forth in application Serial No. 487,441 filed September 15, 1965, and Serial No. 487,442 filed September 15, 1965. The identification of three sulphur containing compounds, by specific reference, as "inhibitors" was first set forth in application Serial No. 435,276 filed February 25, 1965 and Serial No. 435,289 filed February 25, 1965. Other sulphur containing compounds were first identified as "inhibitors" by specific reference in application Serial No. 487,441 filed September 15, 1965 and Serial No. 487,442 filed September 15, 1965. The identification of other compounds, including dibutyl tin maleate, by specific reference, as "inhibitors" was first set in application Serial No. 508,184 filed October 22, 1965 and Serial No. 508,185, filed October 22, 1965.

 53. All of the specific inhibitors identified in continuation-in-part applications, as set forth in paragraph 52, can be readily identified as inhibitors by utilizing the simple test set forth in the patents.

 54. The patents in suit each state that it was found that certain chelating agents will chelate metal accelerators and thereby remove them from the system.

 55. With respect to the continuation-in-part applications from which the '094 patent was derived, the earliest filed application to discuss the mechanism of chelating agents as an explanation of how certain inhibitors functioned was application Serial No. 487,441 filed September 15, 1965.

 56. With respect to the continuation-in-part applications from which the '108 patent was derived, the earliest filed application to discuss the mechanism of chelating agents as an explanation for how certain inhibitors functioned was application Serial No. 487,442 filed September 15, 1965.

 57. The '738 application disclosed compounds for use as inhibitors which functioned by chelating the metal accelerator.

 58. The patents in suit each state that the inhibitor can form a compound with the accelerator to prevent its availability to lower the decomposition temperature of the blowing agent, i.e., that the inhibitor can interfere with the action of the accelerator on the blowing agent.

 59. The earliest filed continuation-in-part application from which the '094 patent is derived which specifically states that one of the ways in which some inhibitors function is to attack the accelerator for the blowing agent was application Serial No. 435,276 filed February 25, 1965.

 61. Several of the compounds specifically listed in the '738 application as inhibitors functioned by interfering with the action of the accelerator on the blowing agent.

 62. The patents in suit each state that in the specification and claims of the patents the designation "blowing agent" is intended to include not only blowing agent alone, but also "the combination of the blowing agent with an accelerator".

 63. The earliest filed continuation-in-part application from which the '094 patent was derived which made specific reference to the combination of a blowing agent with an accelerator as being included within the term "blowing agent" as used in the patent was application Serial No. 435,276 filed February 25, 1965.

 64. The earliest filed continuation-in-part application from which the '108 patent was derived which made specific reference to the combination of a blowing agent with an accelerator as being included within the term "blowing agent" as used in the patent was application Serial No. 435,289 filed on February 25, 1965.

 65. It was well known in the prior art that azodicarbonamide, as a common blowing agent, must be used with an accelerator to function in a practical polyvinyl resin system. The use of the term "blowing agent" to also encompass the combination of blowing agent with an accelerator was fully supported by the literature at the time the original applications were filed.

 Anticipation

 66. The following patents were cited by defendant as establishing the scope and content of the prior art for the purpose of showing anticipation ...


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