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February 3, 1989

FULLER COMPANY, Defendant, and Plaintiff on the Counterclaims v. KRUPP POLYSIUS A.G., a corporation of the Federal Republic of Germany, Defendant on the Counterclaims

The opinion of the court was delivered by: CAHN

 In this complex patent litigation, plaintiffs seek declaratory and injunctive relief pertaining to United States Patent No. 4,357,287 which sets forth a method for reducing the size of brittle minerals. Plaintiffs also claim entitlement to counsel fees for the allegedly willful and deliberate conduct of the defendant. *fn1" The defendant denies infringement and raises the defenses of patent invalidity, patent misuse, and fraud on the Patent Office. Defendant claims entitlement to counsel fees relating to the defense of the infringement count. The defendant also seeks money damages on its counterclaim for alleged antitrust and unfair competition violations.

 The case was heard non-jury in February, March, and July of 1988. The parties, through counsel, have presented extensive closing arguments to the court and have filed post argument briefs as well as requests for findings of fact and conclusions of law. I make the following:


 1. The plaintiffs are:

 (a) Polysius Corp. ("Polysius"), a Georgia corporation with its principal place of business in Atlanta, Georgia;

 (b) Dr. Klaus Schonert ("Schonert"), a citizen of West Germany and the owner of U.S. Patent No. 4,357,287 (the '287 patent).

 2. The defendant is Fuller Company ("Fuller"), a Pennsylvania corporation with its principal place of business in Bethlehem, Pennsylvania.

 3. The counterclaim defendant is Krupp Polysius A.G. ("Krupp Polysius"), a West German corporation. Polysius is a wholly-owned subsidiary of Krupp Polysius.

 4. On February 17, 1978, Schonert filed a patent application in the United States Patent and Trademark Office for a "Method of Fine and Very Fine Comminution of Materials Having Brittle Behavior."

 5.(a) Prior to the filing of the United States application, Schonert granted a nonexclusive license to Krupp Polysius *fn2" under a pending German patent application for the same method;

 (b) Krupp Polysius thereafter embarked on a research and development program to design and manufacture equipment capable of carrying out the Schonert process. This program resulted in the development of a high pressure roll press marketed under the trade name "Polycom";

 (c) In 1979, a German firm, Klockner-Humboldt-Deutz ("KHD") instituted an Opposition Proceeding to Schonert's application in the German patent office;

 (d) In 1985, Schonert, Krupp Polysius, and KHD entered into agreements which provided:

(ii) Schonert will authorize Krupp Polysius to sub-license KHD to use the patented process;
(iii) Schonert will not grant further licenses without the prior approval of Krupp Polysius;
(iv) Krupp Polysius will not grant further sub-licenses without the prior approval of KHD;
(v) Krupp Polysius will not authorize Schonert to grant additional licenses without the prior approval of KHD;
(vi) Krupp Polysius and KHD will share expenses in regard to enforcing the patents for the Schonert process;

 (e) KHD withdrew its opposition and the German patent issued.

 6. On November 2, 1982, the '287 patent was issued to Schonert by the United States Patent Office.

 7. The '287 patent discloses and claims a process to comminute brittle material. The patent describes a process for fine and very fine comminution of brittle material in two steps. First, a bed of materials is compressed between non-yielding surfaces in a single pass at a pressure of at least 500kg Ö2. At such pressure the material is comminuted but is also agglomerated into flakes resembling pancakes. Second, the flakes are deagglomerated to release the fine material.

 8. The major advantage of the '287 patent is significant energy savings (generally in the form of reduced electrical costs) for firms in the mineral, mining, and cement industries.

 9. In the spring of 1985, Fuller sent a member of its engineering staff to meet with Schonert in Germany.

 10. In June of 1985 Schonert met with the Fuller representative and explained his process in detail.

 11. Thereafter, Fuller requested a license from Schonert under the '287 patent.

 12. In July of 1985 Krupp Polysius refused to allow Schonert to license Fuller under the '287 patent.

 13. Thereupon, Fuller embarked on a program to develop equipment to compete with Polysius and others.

 14. In June of 1985 Fuller's Research and Development Department purchased a used Allis Chalmers compactor ("the A-C compactor") and modified it as follows:

 (a) a feed hopper was installed to create a bed of material above the rollers of the compactor;

 (b) a 50 horsepower motor was incorporated rather than the 40 horsepower motor which was standard for this A-C compactor;

 (c) the 8 inch roll width was reduced to 6 inches;

 (d) devices were incorporated into the circuit to provide deagglomeration after the compaction step.

 15. In August of 1985 Fuller used the rebuilt A-C compactor to carry out the Schonert process. Fuller used this equipment to analyze cement clinker samples obtained from prospective customers in an effort to sell high-pressure roll crusher equipment.

 16. Fuller's test procedure included stressing the brittle material provided by prospective customers by processing it through the counter-rotating cylindrical rolls of the A-C compactor in a single pass at pressures in excess of 500kg Ö which were sufficient to comminute the material. The agglomerates formed by this process were then disintegrated in subsequent steps.

 17. In November of 1985 Fuller presented a seminar to the mineral and mining industries at its home office wherein the operation of the A-C compactor circuit was demonstrated and explained to those in attendance. A brochure was also distributed entitled "Fundamentals of the Clinker Preliminator." This brochure was written by the engineer who visited Schonert.

 18. Fuller prepared a videotape of the operation of the A-C compactor circuit. Upon advice of one of its patent lawyers, the audio portion of this videotape was erased.


 The parties raise a plethora of issues all of which must be considered and discussed. The threshold issue, however, is the validity of the '287 patent.

 1. The '287 Patent is Valid

 a. The language of the '287 patent complies with 35 U.S.C. § 112.

 The first task in an adjudication of the issues of patent validity and infringement involves a consideration of the language of the patent in suit. Claim 1 of the '287 patent reads as follows:

1. In a method for comminution of particles of brittle materials to obtain product of fine particles the maximum particle size of which is approximately in the range of 2 um-1000 um comprising:
(a) stressing a bed of bulk coarse material containing particles of the brittle material to be comminuted which are of a size larger than the fine particles to be obtained, between non-yielding hard surfaces to thereby obtain comminution of the coarse particles into finer fragments along with a agglomeration of finer fragments; and
(b) subsequently disintegrating the resulting agglomerates to obtain the product containing the fine fragments, the improvement comprising:
(c) carrying out said stressing of said bed of material by subjecting said bed to a pressure of at least 500kg Ö between said non-yielding surfaces; and
(d) carrying out said stressing in a single pass, whereby the total energy required [sic] comminute said particles will be substantially reduced.

 The remaining claims alleged by plaintiffs to be infringed by Fuller are dependent upon Claim 1. Claim 2 discloses and claims the method of Claim 1, the difference being that Claim 2 requires pressure of at least 800kg Ö. Claims 10 and 11 disclose and claim the method according to Claim 1, further specifying that the stressing referred to in Claim 1 be carried out using, respectively, a roller mill with cylindrical rotors and a roller briquetting press. Claims 15 and 16 disclose and claim the method according to Claim 1 with the deagglomeration being accomplished by, respectively, combined compression -- sheer stressing and stressing in a ball mill. Claim 18 specifies that the method according to Claim 1 be carried out on such materials as cement clinker. Claim 19 discloses and claims a method according to Claim 18, specifying that the deagglomeration step take place in a ball mill. Claim 24 discloses and claims the method according to Claim 1, specifying that at least 30% of the fragments obtained after the deagglomeration step be in the size range of the final product.

 35 U.S.C. § 112 provides in 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, . . . to make and use the same, and shall set forth ...

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