The opinion of the court was delivered by: HANNUM
On February 23, 1972, this Court held that the United States patents in suit, assigned to the plaintiff, Congoleum Industries, Inc. (Congoleum), were valid and infringed by the defendant, Armstrong Cork Company (Armstrong).
Presently before the Court is Defendant's Motion Under Rule 60(b)(2), Fed.R.Civ.P. to Reopen the Record to allow the defendant to present newly discovered evidence that its accused product and process do not infringe the patents in suit.
The patents in suit and the accused product and process are concerned with the art of chemical embossing. At trial, the infringement issue centered on whether embossing obtained in the defendant's product and process is achieved by means of an inhibitor which substantially alters the temperature at which at least some of the blowing agent decomposes. Congoleum contended that benzoyl peroxide, employed as a catalyst in defendant's process, is an inhibitor within the meaning of the patents in suit. The plaintiff presented convincing evidence of infringement when it established, through the testimony and reports of Dr. Myer Ezrin, that there is a significant difference in residual blowing agent between the depressed areas of Armstrong's product, where an ink containing benzoyl peroxide is printed, and the raised areas, where benzoyl peroxide is not present; and that there is a direct relationship between the amount of foam formed in the raised and depressed areas of defendant's commercial products and the amount of residual blowing agent found in these areas. As an explanation of these phenomena, the defendant, through the testimony and reports of Dr. Nathaniel Hager, argued that greater decomposition of blowing agent occurs in the raised areas because these areas are at a slightly higher temperature at the time of the blowing agent decomposition reaction. Dr. Hager stated that this higher temperature is the result of heat generated by thermal polymerization of the monomer in the raised areas which occurs after heat generated in the depressed areas by a catalytic reaction has been dissipated.
Armstrong further contended that embossing in its product is obtained by physically restricting the expansion of decomposed blowing agent in certain areas, thus causing those areas to achieve less foam growth than other areas. After considering the extensive evidence presented on the issue of infringement, this Court concluded that the difference in residual blowing agent between the raised and depressed areas of defendant's product could not be accounted for on the basis of Dr. Hager's theory. The Court discounted defendant's physical restriction theory as a significant cause of its embossing, and found that the decomposition temperature of the blowing agent in defendant's commercial product was substantially altered such that an embossed effect, which would enhance the saleability of defendant's commercial product, was obtained.
The defendant, in its present motion, recognizes that the Court correctly discounted its earlier theory that embossing in its product and process is caused by physical restriction of blowing agent expansion in the depressed areas resulting from the rheological change which takes place in those areas, but Armstrong now asserts that "mortar-broadening" is the mechanism whereby the rheological change produces embossing in its product. Armstrong argues that its present "mortar-broadening" postulate accompanied with affidavits and data book would probably change the decision of February 23, 1972 insofar as the Court found that there is a direct relationship between the amount of foam formed in the raised and depressed areas of defendant's commercial products and the amount of residual blowing agent found in those areas and the Court's conclusion that an amount of embossing sufficient to enhance the saleability of defendant's commercial product can be directly attributed to the difference in the amount of residual blowing agent found in the raised and depressed areas.
An affidavit of Dr. Hager in support of the defendant's motion states that he had a new insight into the mechanism whereby the Armstrong process works in September 1972 after having extensive consultation with the expert witnesses concerned with similar patent litigation in Great Britain. He then ran extensive tests at defendant's plant in Montreal, Canada, where the line conditions are such that mortar-broadening can be readily observed. He states that the line conditions in Lancaster, Pa., where earlier tests were run, were not suitable for observing the effect. In Part V of the data book in support of the defendant's motion, Dr. Hager explains that the viscosity difference between land and mortar materials (due to cross-linking of the monomer in the mortar areas) is the only plausible explanation for the "peak-and-valley" profile which is characteristic of the Armstrong emboss. He states that when blowing begins, both mortar and land areas rise, and, at the edges where the land and mortar areas meet, the mortar material expands laterally into the less viscous land material, as well as upward. This vertical and horizontal motion results in ridges at the edge of the lands and valleys at the edge of the mortars in defendant's product. At distances remote from the land-mortar boundary, the mortar material expands straight up because it is surrounded by material of equal viscosity. Dr. Hager's affidavit indicates that data compiled by Dr. Reuwer, which measured blowing agent consumed in the edge areas, as well as the centers of lands and mortars, show that foam height in defendant's product is not directly related to the amount of blowing agent consumed. However, Dr. Hager further states that there is a difference between foam height at the center of the broad mortar regions and at the center of the land areas away from the ridged edges which can be related to the amount of embossing induced by the difference in residual blowing agent recognized to be present in the defendant's product.
The ridge and valley profile, which is a characteristic of the defendant's product, was described by several witnesses testifying for each side at trial.
Dr. Newton, an Armstrong witness, testified that blowing agent bubbles carried mortar material into the lands.
The data book offered in support of the present motion states that Dr. Newton's observation was a plausible explanation for the ridge at the land edge and the valley at the mortar edge but that it suffered from lack of proof. Dr. Ezrin, whose proportionality tests were a primary basis for the Court's finding of infringement testified as follows:
"Q. Well, surely you don't disagree with the fact that the profilometer very clearly reveals the existence of ridges on the side of all --
A. Oh, I don't deny the existence of ridges. Our measurements are outside the so-called ridge area.
The ridge area really constitutes a fairly small fraction of the whole sample and --
Q. Well, it may constitute a small fraction of the sample, but where did the material come from that is in the ridge, in your opinion?
A. Well, I think one very likely possible explanation is from the movement of the foam material itself, pushing from the mortar area into the -- slightly into the land area, causing the land area to raise.
The basis I have for saying that is experiments which I am familiar with that were done at Congoleum using plasti -- gelled sheet which was then blown side by side, in which there was no cross linking, but there was a difference in the -- in the molecular weight of the -- of the material on the two sides and in which one was colored black, so that it could be seen readily against the other one, and when these were blown to approximately the commercial condition, the effect, a ridge effect was produced very much like that which is seen in the typical Armstrong product." (Tr. 4452, 4453)
In summarizing the evidence at trial the defendant argued:
"Well, how do they get to be ridges?
Well, we think something is pushed out from under the mortar area.
Well, if something is pushed out from under the mortar area to raise the land area, then how, possibly, can the elevation in the mortar area remain proportional to the gas blown? It can't. Something has caused this stuff to go sidewise, not up -- everybody has agreed about that -- and that, we say, is the reason why, right off, we have gone beyond our necessity to show that there is a sufficient explanation for everything in our product, right there; we have a sufficient explanation of the embossing." (Tr. 4677)
The affidavit of Dr. Goodyear, a research manager at Armstrong, submitted in support of defendant's motion refers to a "newly extended calorimetric technique, . . . which for the first time in this lawsuit provides a means to measure directly the temperatures at which the blowing agent is decomposing in the Armstrong and Congoleum processes." Dr. Goodyear further states that "This new technique has been subjected to scientific scrutiny and has withstood such scrutiny as evidenced by its publication, Review Scientific Instruments, 43, 1116 (1972), in August, 1972." This publication which is authored by Dr. N. E. Hager, Jr., and which was received by The Review of Scientific Instruments on March 27, 1972, explains a method used to obtain specific heat data at heating rates exceeding 500 degree F./min. by using a modification of the thin foil calorimeter described in earlier publications by Dr. Hager.
Armstrong's brief in support of this motion states that "The newly discovered evidence includes experimental evidence using a newly extended calorimetric technique. . . . This technique is capable of measuring accurately temperatures under the conditions of the Armstrong process, i.e., temperature differences of plus minus 1 degree F. at heating rates on the order of 200 degree F./min. at temperatures on the order of 400 degree F."