The opinion of the court was delivered by: PARSONS
JAMES B. PARSONS, UNITED STATES DISTRICT COURT JUDGE
Even though the subject matter relates to a recent modernization almost so ordinary in the grocery shopping experiences of the youngest adults among today's general population as to have transpired without much notice, the technical matters involved impressed the court with the need of the ordinary consumer for being educated about the manufacturing of containers for the daily marketing of beverages. The court itself learned that the change from bottled beverages to the use of three piece soldered "tin" cans and then to cans punched in paper thin sheets of aluminum has been but a part of a recent expansion of the use in industry of chemicals and water for cleaning purposes during the shaping of metal parts that are indispensable to the myriad of mechanisms that permeate modern life.
The availability of the aluminum can as a beverage container answered a restless need because of its light weight, its strength, its appearance and its ability to leave undisturbed the original flavor of the beverage; but in return for all of its advantages it presented problems in its own manufacturing process. For example, aluminum oxidizes when heated during its forming process, leaving residues that have to be removed. Also, during the forming process lubricants have to be used which, along with so-called aluminum fines left on the surfaces, have to be removed. In addition, since both the insides of the cans which have to be left spotless and as pure as the beverages themselves, and the outsides of the cans on which painted messages have to be sprayed, both the insides and the outsides of the cans require that the surfaces of the metal must be cleaned to a degree that is called "water-break free", a term that means that the water runs evenly over and off the surfaces of the aluminum without beading. If beading occurs the interiors would not be substance free and the coatings that later would be applied to the outsides would not lay down uniformly.
The cleaning of metal products in industry is not new, but from almost the beginning of the use of aluminum cans for beverages the industry has been busy turning out various cleaning solutions, some containing alkaline combined with a detergent -- these gaining only limited acceptance, and some containing acids combined with detergents, but they have had to be maintained for use at relatively high temperatures and this has always presented difficulties with the machinery used in the forming process as well as with the aluminum itself. The acid generally used has been sulfuric acid, and the temperature of the chemical "bath" has until recently been required to be kept between 170-190 degrees F.
According to the discussions of both parties in this case the history of the pioneering in the development of both an aluminum surface cleaning composition and a method for applying the cleaner, or a combination of both a composition and a process, begins with an article published in the Journal of the American Welding Society by a research authority on the treatment of aluminum composites for airplane parts named W. F. Hess. Hess found that a combination of hydrofluosilicic acid and a wetting agent was a suitable solution for accomplishing his special purposes.
Twenty years later in 1964 one John J. Grunwald obtained a patent numbered 3,140,203 and entitled "A Method of and Composition for Treating Aluminum and Aluminum Alloys." His patent taught that a strong oxidizing agent called persulfate, when added to sulfuric acid produced a solution for effectively deoxidizing and desmutting aluminum.
In 1970 a patent was issued to a Floyd L. Mickelson and a Robert Bland and numbered 3,510,430, for a composition for treating aluminum surfaces which avoided using either hydrofluoric acid or sulfuric acid by making a combination of specific amounts of ferric sulfate, alkali metal bisulfate, alkali metal nitrate and alkali metal silicofluoride.
Then in 1973 Patent No. 3,728,188 was issued to a Robert Warren Yarrington for a chrome-free deoxidizing and desmutting composition and method that would serve as a follow-up cleaner for aluminum surfaces to be applied after the use of the Grunwald or the Mickelson composition.
In 1972 a company named Amchem, the company from whom just before the filing of this case the plaintiff herein, the Henkel Corporation purchased the patent that is the subject matter of this case, assigned one of its research chemists, a Robert E. Binns, to the task of developing an aluminum can cleaner that would effectively clean aluminum cans for use in the beverage industry and do so at low temperatures. Binns eventually added to the then well known use of sulfuric acid various quantities of fluoride and then combined them with a surfactant, itself as in the instant patent in specific amounts and qualities, one of the distinguishing features between the patent in suit and the prior art, in such a manner as to effect a cleaner that would not only work at an especially low temperature but would clean surfaces to a "water break free" condition.
As Binns progressed with his inventing, using various combinations of his products he applied for and eventually received a series of three patents. In 1977 U.S. Patent 4,009,115 (the '115 patent) was issued to him and assigned to his employer. It was for a "Composition and Method for Cleaning Aluminum at low temperatures." Then on September 26, 1978 U.S. Patent 4,116,853 (the '853 patent) was issued to him. It was for a composition for cleaning aluminum surfaces. Finally, on November 7, 1978 U.S. Patent 4,124,407 (the '407 patent) was issued to him claiming a method for cleaning aluminum surfaces when using the compositions described in the two earlier patents. The '407 patent was a special method for using the '115 and the '853 compositions. As Binns progressed with his research his patent prosecutions in the Patent Office were the subject of continuous competitive objections and challenges before the examiner led by the defendant in this case, the Coral Company. Amchem, to whom Binns had assigned all three patents initiated reissue proceedings in the Patent Office on all three patents in September of 1980, and after conducting these contested proceedings the Patent Office reissued '407 (the method for applying the '115 and '853 compositions) as Patent No. Re. 31,198. This reissue was on April 5, 1983. Finally, two and a half years later, as a result of its undergoing substantial changes, the reissue proceedings which had been begun on the original '115 patent culminated in the reissue of that patent as Patent No Re. 32,661. This happened on May 3, 1988.
In the meantime back in 1983, as soon as the reissue of Binns' third patent, his '407 patent as Patent No. Re. 31,198 came through, Amchem Products Company, to whom Binns had assigned the patent, brought a suit against Coral Chemical Company, the defendant herein, charging that Coral's product Clene 100/ACC-2 infringed the '198 patent. That case was assigned to a colleague of the instant Judge, the Honorable Prentice H. Marshall, a judge of this court who commands great respect from the bench and bar for the excellence of his judicial performance. When the case was brought before him the application for reissue of the original '115 patent was still under prosecution before the Patent Office, and when in August of 1987 Judge Marshall decided Amchem's battle with Coral over the '198 patent the reissue of the '115 patent was still being prosecuted.
Judge Marshall on August 31, 1987 decided the '198 patent claim of Amchem in favor of Coral. The reissue of the '115 patent was still before the Patent Office, and though his decision about the '198 patent became a matter of concern for the Examiner in Washington it had been impossible for Judge Marshall in his decision to have taken into consideration what would be happening to the reissue prosecution of the '115 patent. Judge Marshall ruled in favor of Coral on the ground that the '198 patent was invalid for want of novelty. He determined that one skilled in the art of the "removal of lubricants and fines from aluminum alloys" would find the '198 invention obvious. Even though Judge Marshall's decision on '198 was brought to the attention of the Examiner in the '115 reissue proceedings, the Examiner concluded that the invention before him was not anticipated by the prior art and on May 3, 1988 allowed its reissue as Patent No. Re. 32,661. Shortly thereafter Amchem transferred ownership of the '661 patent to the plaintiff herein, the Henkel Corporation which forthwith brought this case against Coral. Coral defends on the ground that the doctrine of Collateral Estoppel causes Judge Marshall's decision to apply to this case also and similarly to render '661 invalid also because of obviousness.
In opposition to Henkel's seeking to enforce by injunctive relief its rights under the Re. '661 patent Coral demurs by its motion for summary judgment, acknowledging thereby the copying of which it is accused, by calling the court's attention to the fact that a year earlier another judge of this court, the Northern District of Illinois, decided that the closely related patent, Re. '198, was void for reasons of obviousness, and by calling this judge's attention to the doctrine of "collateral estoppel." Under the doctrine of "collateral estoppel" (and for purposes of this case it can be referred to as "issue preclusion") I am prohibited from relitigating a controlling issue of fact that already has been determined between the same parties by the same court (and the Northern District of Illinois is under this doctrine one and the same court regardless of differences in judges rendering its decisions). And it is true that the Reissued Patent Re. '198 and the instant patent Reissue '661, though its reissue was granted a year after the decision invalidating the '198 patent, both were born of the same concept for cleaning the surfaces of an aluminum alloy used in the beverage can industry.
The first question this court must now answer is whether under the doctrine of "collateral estoppel" it is precluded from deciding in this case a controlling issue which presumably was decided by Judge Marshall in the case before him. This is a case between the same parties (Henkel in the instant case stands in the identical shoes of Amchem in the earlier case), and the questions in both cases relate to the prior art's insight into the subject matter of both cases. The question is "Do the claims in both cases cause the decision in the earlier case to read upon whatever decision this court may make?" If they do so read then the instant case must stand as having already been decided by Judge Marshall.
It is the position of both judges to whom this area of invention has been submitted that the purpose of the patent procedure is to encourage the availability to the public of novel and useful contributions to the arts and sciences. An awareness of a need for advancement in the industry that has gone unanswered is fundamental to a determination of novelty over obviousness, and when one of those needs has finally been answered and the answering of it has involved novelty and has evoked an enthusiastic reception, it would be in derogation of the relevant constitutional provision to shove it aside with the conjuncture that obviously any of those who has been working in the related field could have thought of it.
A thorough and careful analysis of the differences between the claims of the '198 patent before this court two years ago and the claims of the patent in Re. 661 which claims were not before the court in the first contest, said claims then being still in the process of prosecution and review before the Patent Office at that time, causes me to conclude, as did the Patent Examiner that the '661 patent involves novelty beyond the concepts not only of the '198 patent but indeed, far beyond the prior art as outlined in the materials of Hess through Yarrington. It is this court's opinion that in this case, wherein plaintiff's analyses of the two patents (see items 34 through 40 of Plaintiff's Proposed Findings of Fact), the whole of which are accepted and adopted by this court as its own and appended hereto, and see plaintiff's analysis of the non-obviousness issue (items 41 through 83 of said findings) are careful, comprehensive and convincing, and in a case in which the burden on the defendant to conclusively establish otherwise has not been within defendant's reach, this court finds for the plaintiff and against the defendant.
The court observes from a review of the language of claim 7 of the patent in suit that it presents a formula vastly different from that of the '198 patent that was before Judge Marshall. The specifications are narrower, they speak to a different composition with a different approach. In fact, they are vastly different from the claims of any of the cited prior art, and as to both the '198 patent and the rest of the prior art they extract from the user a much more severe monitoring of the substance and its application. For example nothing in any of the prior art reaches the composition with as much concern for the combined cleaning capabilities of the specific chemicals and the surfactant for activity during the process for effecting at a very low temperature "water break-free" surfaces for both the exteriors and interiors of the aluminum cans. All of this is to be found supported and explained by the expert witnesses and the Patent Office Examiner. There is no question but that the patent in suit here is fundamentally different from and an improvement over the other Binns inventions as well as over any other of the prior art. This position was confirmed not only by the testimony of the exceptionally qualified experts who appeared for the plaintiff before the court, but also by the statements of the Patent Examiner himself.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
Both parties have tendered proposed findings of fact and conclusions of law for the court's convenience. It is the determination of the court that plaintiff's submissions should be adopted by the court as its own. Accordingly they are set forth below.
1. Plaintiff, Henkel Corporation ("Henkel"), seeks a preliminary injunction restraining defendant, Coral, Inc. ("Coral"), from infringing United States Patent Re. 32,661 (the "'661 patent") by selling a low temperature acid cleaner called Clene 100/ACC-2 and inducing its customers to use such cleaner to remove fines and lubricants from aluminum cans to achieve a water-break-free surface. Both Henkel and Coral manufacture and distribute chemicals for industrial use, including low temperature acid cleaners, which, when used, are covered by the claims of the patent in suit. Henkel is the present owner of all right, title and interest in the '661 patent reissued on May 3, 1988.
2. On April 25, 1989, Henkel filed its patent infringement complaint. Henkel filed a Motion for a Preliminary Injunction on May 26, 1989, which was followed by Coral's Motion for Summary Judgment on July 10, 1989. After briefing was completed, the Court issued a Memorandum Opinion and Order setting an evidentiary hearing on both Motions. The evidentiary hearing was conducted for nine days in February and March 1990. Based on all the evidence presented, the Court determines that a preliminary injunction should issue and that Coral's motion for summary judgment should be denied. The following constitutes the Court's Findings of Fact and Conclusions of Law. Fed.R.Civ.P. 52(a).
HOW ALUMINUM CANS ARE PRODUCED
3. Before 1960, beverages were packaged in glass bottles or three-piece tin containers, the three pieces being the top, bottom, and side. The aluminum beverage can industry began in the early 1960's, when bottlers and consumers were seeking alternatives to glass and tin containers. A need existed for a light weight yet strong container, which could be manufactured at less expense. Aluminum became the metal of choice, due to its light weight, appearance and strength. A two-piece aluminum can was developed, which increased the speed of production. The "drawn and ironed" aluminum can industry now produces over 80 billion two-piece cans per year (Hr. Tr. 44-45; Stbr. Tr. 191-92).
4. A drawn and ironed or "D & I" two-piece aluminum can is produced from aluminum coil stock. The coil stock is fed into a cupping press where the flat metal is drawn into a shallow cup, using a lubricant to protect the tooling and ensure a smooth surface. The shallow cups travel to a bodymaker, where successive rings draw and iron the cup to a full length can. The bottoms are domed for added strength and a cutter trims off excess aluminum. The entire process is conducted at high speed. Each set of cuppers and bodymakers produces 300 cans per minute (Hr. Tr. 48; Stbr. Tr. 192-96).
5. After drawing and ironing, the can bodies are carried by a mesh belt to a six-stage washer. The belt carries almost 2,000 cans per minute through a spray washer, which removes the drawing and ironing lubricants as well as dirt and small particles of aluminum called "fines". Aluminum fines are created as the metal is mechanically stretched during the drawing and ironing process. In the first wash stage, the cans are pre-cleaned by spraying with water to remove a significant amount of lubricating oil and soil from the metal surfaces. In the second stage, the cans are sprayed with a cleaning solution which completes the removal of lubricating oil and soil and dissolves aluminum fines from the inside and outside of the can. The two wash stages are followed by rinsing, conditioning, another rinse, and a final deionized water rinse (Hr. Tr. 48-50; Stbr. Tr. 192-96).
6. Following the cleaning stages, the cans move by conveyor to the finishing cylinders. The outsides of the cans are rolled against rubber cylinders which apply decorative paint and protective varnish. A clear sanitary lacquer is then applied to the inside of the cans, and the cans are dried in ovens. Before shipment, the cans are "necked" to provide greater strength and "flanged" to accept a lid after filling (Hr. Tr. 50-51; Stbr. Tr. 192-96).
MAKING THE '661 INVENTION
7. The '661 patent claims the spray composition used to clean the cans in the second wash stage. It is essential that beverage cans be cleaned to a "water-break-free" condition before the application of paint or sanitary lacquer. A water-break-free surface means that rinse water uniformly coats the entire can and sheets off its surface without leaving droplets. If lubricating oils, soil or aluminum fines remain, water will bead, contaminants will dry on the surface, the outside decoration will be discolored, and the inside sanitary coating will have gaps. If the inside protective coating is not uniform, the beverage contacts the aluminum and causes corrosion as well as a "metallic" or "off" taste (Hr. Tr. 52-54; Stbr. Tr. 196-97, 198-200; PX-48 paras. 3, 4).
8. Before the '661 invention, the aluminum can industry used alkaline cleaning solutions and hot sulfuric acid cleaners. Alkaline cleaners proved to be unsatisfactory, due to high cost, ineffective cleaning, and sludge formation which plugged the spray nozzles and caused excessive equipment down time. The alkaline cleaners were replaced by the hot sulfuric acid cleaners, which also had many drawbacks (Hr. Tr. 54-55). Henkel's predecessor, Amchem Products, Inc. ("Amchem"), was the recognized leader in developing compositions to clean and treat metal surfaces. The company was established in 1917, and has continuously served the metal industry since that date. Amchem commercialized the first high-temperature aluminum can cleaning solution in the mid-1960's which contained sulfuric acid, a wetting agent, chromic acid as a corrosion inhibitor, and, in some instances, ammonium bisulfate. This hot cleaner had to be heated to high temperatures, generally 170 degrees to 190 degrees F and above. Without these high temperatures, the cleaning solution was ineffective. There were many problems associated with hot acids for cleaning. High energy costs were required to heat the solution to the operating range and maintain that temperature. The heated solution caused severe corrosion of the spray tanks, plumbing, conveyors, and fire tubes (used to heat the solution). It also posed a great danger to workers from fumes and splash. Although chromates were added to the solution to retard corrosion, chromates were recognized as carcinogens and environmentally hazardous. Waste water had to be treated, raising the operating costs (Hr. Tr. 52-56; Das Tr. 722-23; Stbr. Tr. 207-12, 410; Bdt. Tr. 1141-44; PX-47 para. 3).
9. In the late 1960's, Amchem recognized the industry need for a low temperature acid cleaner that eliminated the numerous drawbacks of the hot acid cleaner. In 1967-1968, Andrew Hamilton, an Amchem employee with a Bachelor of Science degree in chemistry and at least five years of metal cleaning experience, sought to invent a low temperature cleaner. Hamilton devised a cleaning solution containing phosphoric acid, sulfuric acid, surfactant, sequestrant, and oxalic or citric acid. A patent issued on this composition, U.S. Patent Re. 27,662 (PX-11). Although Amchem attempted to market the composition, it proved to be ineffective at temperatures below 170 degrees F, and it was shortly withdrawn from the market. Hamilton's attempts and failures are significant. Hamilton's background and experience were totally devoted to metal cleaning. He had at his disposal the resources of Amchem, the industry leader in metal cleaning and treatment. With all of this assistance and knowledge, he still was unable to formulate a commercially acceptable low-temperature acid cleaner. Although Coral contends that it would have been obvious to start experimentation with the high temperature acid cleaner, Hamilton, illustrative of one skilled in the art, did not follow that approach (Stbr. Tr. 212-14, 410-15; PX-47 para. 4).
10. In April 1972, Eric Binns, a former Amchem employee currently working for Coral, was assigned the task of developing an effective low temperature can cleaner. The proposed cleaner, as reflected in Binns' Project Plan dated April 20, 1972 (PX-21), required the following properties:
low operating temperature (120-150 degrees F)
low corrosion of stainless steel equipment
non-dulling to can exterior
can interior free of aluminum fines and smut
water-break free interior and exterior
bath must hold dissolved aluminum in solution; and
forming lubricants must salt out.
The inventor, Binns, his project leader, Ed Rodzewich, and Lester Steinbrecher, then director of Amchem Research and Development, conferred and jointly assessed Binns' chances of success at only 50%. This joint assessment reflected the considered judgment of Amchem personnel with over thirty years' collective experience in the metal cleaning and treating art, each of whom had at least a Bachelor's degree in chemistry (Stbr. Tr. 215-19, 220-22, 416-18; PX-19, p. 112; PX-47 para. 5).
11. There are a wide variety of essential cleaning requirements for beverage-quality aluminum cans that are difficult to meet in an effective and efficient way. Binns was confronted with goals that were at odds with each other. A composition which cleans consistently and effectively within an acceptably short treating time and under low temperature conditions must be of high strength. However, such high strength cleaning properties are not consistent with the simultaneous goal of avoiding corrosion and degradation of the aluminum surface and the processing equipment. Conversely, the formulation of a composition which does not attack the processing equipment is inconsistent with the goal of performing the cleaning task within acceptable treating times and under low temperature conditions. Similarly, a high-strength composition which does the cleaning job effectively and repeatedly under acceptable time and temperature conditions can cause undue etching of the aluminum surface. Accordingly, in formulating an acceptable cleaning composition, one or more of the desired properties may be achieved, but only at the expense of other desired properties (PX-48, para. 4; Stbr. Tr. 196-207).
12. Binns' early efforts, as reflected in his laboratory notebooks (PX-19; PX-20), were directed towards various concentrations and combinations of mineral acids, including sulfuric acid, hydrochloric acid, phosphoric acid, and nitric acid, as well as the Hamilton cleaner and the prior art hot sulfuric acid cleaner. Despite this experimentation, none of these compositions produced effective cleaning at low temperatures. After these failures, in what Binns then characterized as "way out" experiments, Binns added fluoride-containing compounds to a cleaning solution. The addition of fluoride was "way out" because it was known at the time of Binns' work that fluoride ions could rapidly attack and overetch the aluminum surface. Indeed, at the time Binns proposed the use of fluoride, he also noted that an inhibitor might be necessary to control overetching (Stbr. Tr. 222-27, 231-34, 418-20; PX-19, pp. 159, 162; PX-47 paras. 5, 6).
13. Binns was encouraged by his initial trials with fluoride and he continued to experiment with fluoride in combination with other acids. After much trial-and-error experimentation, which was typical in this art due to a low level of predictability, Binns found that very low concentrations of hydrofluoric acid and sulfuric acid with a surfactant produced remarkable, commercially acceptable results at temperatures between 110 and 130 degrees F (PX-23; Stbr. Tr. 224-27, 227-30).
15. Amchem's new low temperature cleaner was an immediate commercial success. From 1973 to 1983, sales rose from $ 34,000 to almost $ 11 million per year. Sales today are in excess of $ 10 million per year. In the first few years following its introduction almost all aluminum can manufacturers changed from the previous high temperature cleaner to Amchem's new low temperature composition. The product satisfied a long felt need of the industry. As a consequence of the low temperature cleaner's success, the previously employed alkaline cleaners, as well as Amchem's own hot sulfuric acid cleaner, were driven from the marketplace (Das Tr. 723; Hr. Tr. 58-59; Kdl. Tr. 499-506; Stbr. Tr. 231; PX-29 A and B; PX-30 A and B).
16. Binns' developmental work resulted in a highly "fine tuned" composition which unexpectedly has a combination of many properties that enable it to be used commercially in an effective, efficient and economical manner.
PROSECUTION UNDERLYING THE '661 PATENT
17. To assist the Court in understanding the Patent and Trademark Office ("PTO") proceedings, Henkel presented the testimony of George R. Clark. Clark is a member of the Illinois Bar with outstanding credentials who has participated in hundreds of PTO proceedings and has acted as an expert witness on patent matters before this and other Courts (Clk. Tr. 64-71; PX-13 paras. 1-3; PX-17). Coral presented the testimony of John E. Witherspoon, a member of the District of Columbia Bar with experience as a member of an appellate panel in the PTO. He has testified as an expert witness on patent matters many times. Witherspoon generally supported Clark's explanation of the protracted reissue proceeding (DX-122; Wspn. Tr. 1405-09, 1411).
18. On February 14, 1974, the inventor, Binns, filed a patent application (Serial No. 442, 726) claiming cleaning compositions and processes (PX-2B). Binns assigned the application to Amchem, Henkel's predecessor. The PTO Examiner's first Office Action required a restriction between the cleaning compositions and processes under 37 C.F.R. § 1.142 and 35 U.S.C. § 121. The restriction reflected the PTO's expert determination that "two or more independent and distinct inventions are claimed in a single application." 37 C.F.R. § 1.142. It also reflected the PTO's determination that the composition claims were patentably distinct from the method claims and vice versa (PX-2B, p. 22). Amchem abandoned the 1974 application (but not the inventions disclosed therein) in favor of a continuation-in-part ("CIP") application, filed prior to the abandonment date (Clk. Tr. 82-84; PX-13 para. 6).
19. Amchem's CIP application (Serial No. 607,154) was filed on August 25, 1975, and again claimed both cleaning compositions and processes in the single application (PX-2C). Once again, the PTO Examiner held that the compositions were an independent and distinct invention compared with the processes claimed. Restriction was required. Amchem elected to pursue the composition claims in the 607,154 application (PX-2C, p. 29; Clk. Tr. 85-86; PX-13 para. 7).
20. After an initial rejection from the Examiner, Amchem amended the claims of 607,154. The Examiner allowed the amended composition claims on September 9, 1976 (PX-2C, p. 57). United States Letters Patent 4,009,115 ("the '115 patent") issued on February 22, 1977 (PX-3; PX-13 para. 8; Clk. Tr. 86).
22. After Coral representatives notified Amchem's attorneys of prior art not considered by the PTO during the initial prosecutions of the '115 and '407 patents, Amchem filed an application to reissue the '115 patent (composition) on September 23, 1980. This reissue application was assigned Serial Number 189,741 (PX-2D). At the same time, Amchem filed an application to reissue the '407 patent (process), which was assigned Serial Number 189,743. Under the then applicable PTO regulations, a reissue application provided the patentee with an opportunity to have new prior art or other significant facts considered by the PTO. 37 C.F.R. § 1.175 (Clk. Tr. 88-91; Wspn. Tr. 1431-34; PX-13 para. 10).
23. The process claims in Serial Number 189,743 reissued first on April 5, 1983, as United States Letters Patent Re. 31,196 ("the '198 patent") (PX-4; PX-7B). On April 12, 1983, Amchem brought a patent infringement action against Coral based on the '198 patent. The '198 patent was held invalid as obvious by Judge Prentice Marshall in a decision dated August 31, 1987 (PX-26). This decision was affirmed by the Federal Circuit in 1988 (PX-27; PX-13 para. 11; Clk. Tr. 103-04).
24. While the first suit was pending, the composition reissue application with Serial Number 189,741 was abandoned in favor of a continuation reissue application filed on July 27, 1984, as Serial Number 634,668 (PX-2E). This application continued the prosecution of the composition claims as in Serial Number 189,741 (Clk. Tr. 94-95).
24A. Any time after a patent has issued a patentee may file a reissue application if the patentee believes that the patent is "through error without any deceptive intention, deemed wholly or party inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to in the patent . . . ." [Emphasis supplied]. 35 U.S.C. § 251. A reissue application prosecution is a corrective proceeding, with one of the express purposes being to reduce the scope of an overclaimed invention -- to correct the overbreadth (Wspn Tr. 1459-62; Clk. Tr. 88-90).
25. From 1977 to about 1982, reissue proceedings before the PTO were open to the public. Any member of the public could participate in the reissue proceedings and "protest" the issuance of a reissue patent. During this period, the so-called "Dann Amendments" were in effect. For all applications filed after March 1, 1977, and until the Dann Amendments were revoked, the regulations (37 C.F.R. § 1.291) gave third parties full access to reissue applications and the right to enter written protests against them. Such written protests could include citation of additional prior art or other invalidity contentions, all of which had to be considered by the Examiner. Once the PTO had formally granted the protester access to the reissue application proceedings, the protester was entitled to monitor the proceedings, receive copies of all actions, and file additional papers with the PTO. 977 O.G. 13 (December 12, 1978). Under the Dann Amendments, the Examiner could give a protester the opportunity to comment in writing on the responses to Office Actions submitted by patent applicants, where the Examiner believed the protester could "contribute significantly." 977 O.G. 13 (December 12, 1978) (Clk. Tr. 91-92; Wspn. Tr. 1431-34; PX-13 para. 13).
26. The PTO eliminated the opportunity to fully participate as a protester, beyond the submission of an initial written protest, in 1982. Nevertheless, protesters who had filed their protests prior to 1982 and had participated in the reissue proceeding were able to continue their participation if permitted within the discretion of the PTO Commissioner. See 1013 O.G. 19 (December 8, 1981) (Clk. Tr. 92-94; Wspn. Tr. 1518; PX-13 para. 14).
28. Examiner Albrecht specifically noted in his statement of Reasons for Withdrawal of the Rejections on December 23, 1985, that during the reissue proceedings Coral had "enjoyed a high degree of participation in this prosecution far beyond that sanctioned by current PTO practice and policy" and that Coral "has had more than a fair and adequate opportunity to present his position concerning the patentability of the claims in this case . . . ." (PX-14; PX-2E, pp. 216-17). Coral had the opportunity, knowledge and motive to present all prior art and facts it deemed material to the Examiner for consideration, and Coral took full advantage of that opportunity (Clk. Tr. 92-94; Wspn. Tr. 1440, 1441-45; PX-13 paras. 15, 16).
29. During the hotly contested reissue proceedings, which lasted nearly eight years, the broadest claim, claim 7, of Re. 32,661, was significantly narrowed from the broadest claim, claim 1, of the original '115 patent, by adding the language underlined below:
7. An acidic aqueous cleaning solution having a pH of less than 2.0 and consisting essentially of about 1 to about 10 g/l of sulfuric acid, about 0.005 to about 0.1 g/l of hydrofluoric acid, and about 0.1 to about 10 g/l of a surfactant selected from the group consisting of nonionic and anionic surfactants, wherein the sources of said acids are respectively sulfuric acid and hydrofluoric acid, wherein said solution is free of a corrosion inhibitor in a corrosion-inhibiting amount and of a sludge forming material, and wherein said solution is effective in removing and dissolving aluminum fines and in cleaning lubricating oils from the surfaces of drawn and ironed aluminum cans of 3004 alloy at a temperature within the range of about 110 degrees F to about 135 degrees F, said cleaned surfaces being water-break free.
(PX-5; see PX-2E, p. 66). Claim 1, without the underlined limitations, was repeatedly rejected by the PTO. It was only after the underlined limitations were added that the PTO found the now narrowly claimed invention non-obvious. This narrowing of the claims during prosecution better to distinguish over the prior art was a fundamental purpose of reissue proceedings (Clk. Tr. 95, 96-97 PX-13 para. 17).
30. Examiner Albrecht thoroughly considered all the prior art (including patents, publications, on sale and public use activities) submitted by Amchem and by two protestors, Hooker and Coral. In his Statement of Reasons for Withdrawal of the Rejections, the Examiner stated:
As the prior art of record in this case abundantly indicates, many scores -- or even hundreds -- of different compositions have been used to treat or clean aluminum substrates.
Many of these have contained sulfuric acid or its acid salts alone or in combination with hydrofluoric acid or fluoride salts. Of the prior art references disclosing solutions containing both sulfuric acid and hydrofluoric acid, none discloses any specific formulations falling within the proportions recited in the present claims.
When the Examiner began review of the reissue application in late 1981, he was aware that the prior art most closely concerned with removing aluminum fines and lubricating oils from aluminum cans used compositions that were more remote from those claimed than were those disclosed in other references which were directed to different uses.
Instant inventor Benz [sic Binns] has saved workers in this art the huge amount of trial and error testing they would otherwise have had to do themselves and this merits protection for his invention as it is now narrowly claimed.
(PX-14; PX-2E, pp. 215-16; Clk. Tr. 100-03; PX-13 para. 18).
31. The PTO carefully considered the patentability of the '661 composition claims in light of Judge Marshall's August 31, 1987 decision holding that the process claims of Re. 31,198 were invalid for obviousness (reported at 5 U.S.P.Q.2d (BNA) 1736 (N.D.Ill. 1987), aff'd mem., 864 F.2d 149 (Fed. Cir. 1988)) (Clk. Tr. 108; PX-26; PX-27). All of the art relied on in Judge Marshall's Opinion was considered by the PTO during the '661 reissue proceeding (Compare PX-26 with PX-10A-LL). In his Statement of Reasons for Allowance, dated December 15, 1987, the Examiner noted that "the scope of the compositions used in the method claims of Reissue 31,198 is significantly broader" than the composition claims he had before him (PX-15; PX-2E, p. 305). After reviewing Judge Marshall's decision, the Examiner found: "since the scope of the composition claims in this application is more narrow than recited in the claims of Reissue 31,198, the District Court Opinion in said litigation is not controlling in the instant application" (PX-15; PX-2E, p. 308). The Examiner then explained at length the various factors supporting patentability. In an "extraordinary" step, Examiner Albrecht also conferred with the PTO's Solicitor's Office to determine what legal effect Judge Marshall's Opinion might have on the narrow composition application. After such consultation and a careful assessment of the significantly narrowed composition claims, the PTO rejected Coral's protests of unpatentability, and the '661 patent issued on May 3, 1988 (Clk. Tr. 110-16, 123; Wspn. Tr. 1462-68; DX-116, p. 3; PX-1; PX-13 para. 20).
32. After Judge Marshall's opinion, Henkel submitted comments of Coral to the PTO although technically Coral could not do so directly. In a November 9, 1987 letter which Henkel submitted to the PTO, Coral asserted that it had been successfully using a non-infringing cleaning composition containing ammonium bifluoride as the source of hydrofluoric acid (PX-16; PX-2E, pp. 304-05; Wspn. Tr. 1519-21, 1523-26, 1534). Coral asserted that this fact demonstrated obviousness but the Examiner disagreed. After the '661 patent reissued, Henkel obtained samples of several Coral products, some of which indicated that ammonium bifluoride was indeed being used to avoid infringement. However, other testing prior to suit demonstrated that Coral was also using hydrofluoric acid as the source of hydrofluoric acid, as well as the other elements of the composition claimed in '661 patent. After this initial uncertainty was resolved and it became apparent that Coral refused to voluntarily abandon its infringement, Henkel filed its Complaint for patent infringement followed by the instant Motion for a Preliminary Injunction (PX-59, paras. 3, 4; PX-47 paras. 7, 8).
32A. The prosecution history of the '198 patent, including all applications underlying the original '407 patent, was not made an exhibit at the hearing. Coral's Proposed Findings 49-51 suggest that a terminal disclaimer was filed in those applications in response to an obvious-type double patenting rejection. Because neither the terminal disclaimer document nor the accompanying patent prosecution papers were presented for consideration, this Court has not drawn the suggested inference sought by Coral. There is no evidence that an obvious-type double patenting rejection even had been made as terminal disclaimers can be filed for various reasons. Even accepting Coral's suggestion, it has no bearing on the patentability of the '661 claims. (Clk. Tr. 148-50)
33. Coral has raised three primary defenses to Henkel's infringement charges:
34. In a 1987 decision, Judge Marshall of this Court held that the '198 claims to a process for cleaning aluminum beverage containers with certain aqueous acidic compositions were invalid. Although the opinion suggests otherwise, 5 U.S.P.Q. 2d at 1741, the '661 composition claims presently in suit were not before Judge Marshall. Moreover, any suggestion that the obviousness of the composition claims now present in the '661 patent was decided in that case was held to have been error on appeal (PX-27, p. 5; Clk. Tr. 115-16).
35. To determine whether collateral estoppel should be applied, the Court first examines the differences between the '198 and '661 patent claims. When examined side by side, and as found by the PTO Examiner (PX-15; PX-2E, pp. 306-10), there are substantial and significant differences in claim language between the claims of each patent. This can be illustrated by comparing two claims, one from each patent, and underlining the differences in language (PX-6):
Claim 7 of The '661 Patent
An acidic aqueous cleaning solution having a pH of less than 2.0 and consisting essentially of about 1 to about 10 g/l of sulfuric acid, about 0.005 to about 0.1 g/l of hydrofluoric acid, and 0.1 to about 10 g/l of a surfactant selected from the group consisting of nonionic and anionic surfactants, wherein the sources of said acids are respectively sulfuric acid and hydrofluoric acid, wherein said solution is free of a corrosion-inhibitor in a corrosio-inhibiting amount and of a sludge forming material, and wherein said solution is effective in removing and dissolving aluminum fines and in cleaning lubricating oils from the surfaces of drawn and ironed aluminum cans of 3004 alloy at a temperature within the range of about 110 degrees Fahrenheit to about 135 degrees Fahrenheit, said cleaned surfaces being water-break free.
Claim 6 of The '198 Patent
A process for cleaning an aluminum surface by contacting said surface with an aqueous cleaning solution having a pH of less than 1.8 and comprising about 1 to about 10 g/l of sulfuric acid, about 0.005 to about 0.1 g/l of hydrofluoric acid, and a surfactant dissolved therein wherein said solution is effective in removing deposits of aluminum fines and lubricant from the surfaces of aluminum cans of 3004 alloy and the temperature of the spray solution is below 135 degrees Fahrenheit.
The differences underscored above are essentially the same differences that exist between the claims which issued originally in the '115 patent and those which were reissued in the '661 patent. The PTO repeatedly rejected the former as obvious over the prior art, but allowed the latter, thereby again indicating that these differences were patentably significant (Clk. Tr. 95-98, 107-12, 174, 178; Stbr. Tr. 254-55; Ldr. Tr. 437-39, 441; PX-48 para. 13).
36. The sole independent claim of the '661 patent, claim 7, claims a composition which has been substantially narrowed in many ways from the compositions described in the method claims of the '198 patent. As limited, claim 7 is specifically directed to removing fines and lubricating oils so completely from the surfaces of 3004 alloy aluminum cans that the resulting surfaces are cleaned to a "water-break-free" state, thereby distinguishing over lesser cleaning end results. Claim 7 expressly excludes the presence of corrosion inhibitors in corrosion-inhibiting amounts and also expressly excludes components that form sludge. Claim 7 requires that the sulfuric and hydrofluoric acid be added to the cleaning compositions as acids rather than be formed within the cleaning solution such as by adding salts or complexes (Clk. Tr. 97-98, 107-08; Wspn. Tr. 1468-70, 1496-99; Stbr. Tr. 234-50, 254-55; Ldr. Tr. 437-39, 451; Blo. Tr. 1102-07, 1118-19; PX-48 paras. 12, 13; PX-2E, pp. 306-10).
37. In concluding that the prior decision involving the '198 patent was not dispositive of the '661 claims, the PTO Examiner focused on some of these substantial differences:
It should be noted that the scope of the compositions used in the method claims of Reissue 31,198 is significantly broader than the compositions covered by the instant reissue claims. The instant claims require that the sulfuric and hydrofluoric acids in the compositions be derived directly from sulfuric and hydrofluoric acids, and not from acid salts such as sodium bisulfate and ammonia bifluoride. Since such acid salts have sometimes been used in place of sulfuric or hydrofluoric acids in some contexts, the claims of Reissue 31,198 would be construed as covering such acid salts whereas the present claims do not. The claims of this case also differ from the scope of those in Reissue 31,198 in that the instant claims exclude the presence of corrosion inhibitors (e.g., chromium compounds), whereas the claims of Reissue 31,198 do not.
Since the scope of the composition claims in this application is more narrow than recited in the claims of Reissue 31,198, the District Court opinion in said litigation is not controlling (PX-15; PX-2E, pp. 306-10; Clk. Tr. 108-12).
38. Coral has argued that some of the '198 dependent claims contained limitations such as the source of the acids being the acids per se. Coral also contended that, by implication, both corrosion inhibitors and sludge forming constituents were excluded. There is no evidence that Judge Marshall considered the '198 claims as so limited. Equally important, the Court agrees with the PTO that no such limitations can be read into the '198 claims. For example, dependent claims in the '198 patent reciting the addition of acids during replenishment (e.g., claims 11 and 13), still permitted acid salts to be used in the make-up bath (Das Tr. 945-46; Stbr. Tr. 360-63, 365; Wspn. Tr. 1491-92, 1496-99).
38A. Contrary to the arguments now being made by Coral, in a post trial submission to Judge Marshall in connection with the proceedings on the '198 patent, Coral argued that the '198 patent process claims were, "substantially broader" than the then allowed '661 patent composition claims. Coral listed the extensive limitations not present in the process claims that were added to the composition claims as follows:
. . . the composition claim ('661) has been construed by Amchem's counsel to exclude all acid salts. The process claim before this court ('198) does not exclude acid salts and there is no prosecution history estoppel (file wrapper estoppel) to that effect.
The composition claim is limited in temperature; the process claim is not. The composition claim is limited to drawn and ironed aluminum cans, surfactant concentration range, and the absence of specified materials; the process claim is not.
The extensive limitations that were added to the composition claim in order to secure allowance are not present in the process claim. Accordingly, the process claim should be held obvious over the prior art.
40. Coral also argues that Judge Marshall's factual findings, made when considering the '198 method patent, are binding on Henkel, and must be applied equally to the narrowed '661 composition claims. However, Judge Marshall's findings necessarily were based on the substantially broader composition definition found in the process claims he considered. The restrictions newly added to the '661 claims change the relationship between what the '661 patent claimed and what was disclosed in the prior art, in several instances expressly excluding essential elements from the prior art compositions while requiring that the cleaning solution meet the highest standards of a water-break free surface. Because of these new and significant restrictions, this Court must reassess the scope and content of the prior art, the skill of those working in the art as applied to the specific objectives of the claims, and the obviousness or non-obviousness of the now defined invention as a whole. It is not proper, as Coral urges, to consider merely the obviousness or non-obviousness of the new limitations. The findings of Judge Marshall might be binding if the '661 claims were insignificantly changed from the '198 claims, but that is not the case here, so new factual findings must be made (Wspn. Tr. 1478-79; Stbr. Tr. 254-55, 261-64, 355-56; Das Tr. 944-48; Ldr. Tr. 437-39).
41. The Court must now determine whether Coral has presented evidence establishing obviousness of the '661 claims as a whole under the Graham v. John Deere factors. This assessment must be made keeping in mind the exhaustive protested reissue proceedings, the heavy burden of proof arising from the presumption of validity, and Coral's failure to cite any new prior art not considered by the PTO.
42. Henkel presented the expert testimony of Dr. Henry J. Leidheiser, Jr. and Mr. Lester Steinbrecher to assist the Court on the issue of non-obviousness. Both of Henkel's experts were well-qualified to testify concerning the level of ordinary skill in the art and the bearing each prior art reference has upon the obviousness or non-obviousness of the claims in the '661 patent. Leidheiser was Chairman of the Lehigh University Chemistry Department and Director of the Zettlemoyer Center for Surface Studies, Corrosion Laboratory. The Center conducted research and development work in all areas relating to metals and metal treatment. Leidheiser has worked in the area of metal surface treatments continuously since 1945, which has included aluminum and its alloys. Throughout his career, he has worked with and developed many types of metal cleaners, cleaning processes, and treatments (PX-18; Ldr. Tr. 432-36).
43. Steinbrecher started in 1958 as a bench chemist working with metal cleaning and coating processes. He dedicated his career to metal cleaning and treatment, becoming Director of Research and Development for Amchem in 1970. Throughout his more than thirty years in the metal treatment field, he supervised and directly participated in the development of many inventions. Steinbrecher holds over twenty United States patents relating to metal treatment. He is currently Senior Technology Advisor of Henkel (Stbr. Tr. 180-89; PX-47 paras. 1, 2).
44. By contrast, on the question of obviousness or non-obviousness of the claims in the '661 patent, Coral presented testimony of Dr. Fred Basolo, a Professor of Chemistry at Northwestern University and Dr. Narayan Das, a Vice President and Research Director at Coral. While Basolo is well qualified as an expert in chelating agents and coordination chemistry, Basolo readily and repeatedly admitted that he was not skilled in the art to which the '661 patent is directed. He has no training or experience whatsoever in the field of metal cleaning or treatment (Blo. Tr. 1038-47, 1080-81). While Basolo could testify on certain basic reactions between aluminum and acids, he clearly was not qualified as an expert in the area to which the invention claimed in the '661 patent is directed (Blo. Tr. 1007, 1014, 1025-31, 1039, 1047, 1082-83, 1087-91, 1106-08, 1112-13; DX-120; DX-120A; DX-149; DX-150).
45. Das obtained his Ph.D. in chemistry from Lehigh University in 1972, under the supervision of Dr. Leidheiser. Das began working in the field of metal treatment in 1973 at Amchem, where he developed conversion coatings and not cleaning compositions. Das holds an executive position at Coral, and he considers himself a loyal employee doing as much as possible to avoid a preliminary injunction against Coral which would impact directly on him. Das' testimony regarding the prior art particularly reflected his bias. When confronted with express wording in prior art patents at odds with his broad interpretation of the art's impact, Das repeatedly retreated into nebulous and insupportable allegations that one skilled in the art would ignore such wording. This, plus Das' refusal to answer questions directly on cross examination, seriously undercut his credibility (Das Tr. 528, 530-33, 715, 720-21, 784-85, 799-804, 877-83, 895-901, 904-08; Ldr. Tr. 435; DX-121).
45A. The inventor, Mr. Binns, now a Coral employee, did not testify during the hearing before this Court. Instead, Coral submitted an affidavit. The Court has accorded very little weight to this affidavit because it is in the nature of an inventor repudiating his inventor's oath. (DX-123).
45B. Due to lack of training in patent law inventors may erroneously believe an invention "obvious" when that invention is not legally obvious. (Wspn. Tr. 1427-29) The addition of a low temperature acid can cleaner to their product lines would not be difficult. Failure to obtain an injunction against Coral will encourage these other potential infringers. PX-59, para. 2; DX-127, p.26).
46. The Court finds that the testimony of both Henkel witnesses was credible and convincing. Based upon all the evidence, including their testimony, the admissions of Coral's witnesses, and the Court's review of the prior art, the Court finds that Coral cannot establish the invalidity of the '661 patent claims by clear and convincing evidence.
47. Coral relies upon four prior art references, Grunwald (U.S. Patent No. 3,140,203), Yarrington (U.S. Patent No. 3,728,188), Mickelson (U.S. Patent No. 3,510,430) and an article by Hess on surface treatment of specific aluminum products prior to spot welding (PX-8A-D; DX-108-11). Dr. Das spent much of his testimony on direct compiling a chart, selectively picking and choosing particular portions of these four references to the exclusion of all other teachings therein to allegedly recreate the '661 patented invention. These same four references were relied on by Judge Marshall in the earlier litigation between Amchem and Coral, and were known to and fully considered by the PTO when it allowed the '661 patent. The Court finds that none of these references, whether taken alone or in combination, renders the claims of the '661 patent obvious. Nothing in these references motivated or directed one skilled in the art to select or combine them in the manner required to arrive at the claimed compositions (Das Tr. 788-90, 992-93; Ldr. Tr. 442-43, 480-83, 484-85; PX-48 paras. 5, 11; DX-142A).
48. The 1944 Hess article discussed the treatment of selected aluminum surfaces prior to spot welding (PX-8A). Many trials were conducted on a variety of compositions in an effort to find the best room temperature treatment for an aluminum composite then used for airplane parts (called ALCLAD 24S-T) (PX-8A, p. 417; Table 1, p. 418). After all of these tests, the most suitable solution Hess found for this purpose contained a combination of hydrofluosilicic acid (HSiF) and a wetting agent (Solution No. 14 in Hess Table 1, see p. 434, Summary 1). Some tests using sulfuric acid and sodium fluoride at selected concentrations were reported (Solution Nos. 10-10c in Table 1), and the use of hydrofluoric acid alone was also mentioned (Solution No. 18 and p. 419). Nonetheless, for Hess' purposes, only Solution No. 14 was recommended for use with ALCLAD 24S-T. All the other compositions tested proved deficient in several important respects (pp. 419-21 and 425-26). Overall, the Hess article evidences the trial and error method of research typical for the metal treating art and establishes the empirical, rather than predictable, nature of research in this field (Stbr. Tr. 265, 267-72, 273-77, 405-06; Das Tr. 902-07, 918-23; Blo. Tr. 1091-93; PX-48 para. 7).
50. In fact, Hess does not teach that the oxide removing solutions of interest to him have any cleaning function even though acids and surfactants are employed. Indeed, Hess' teaching is that prior to application of his deoxidizing solutions, pre-cleaning is extremely important, and it is carried out to achieve a water-break free surface (PX-8A, pp. 418, Step 1 and 432, Step 3). Because Hess starts with aluminum surfaces which are already water-break free, he teaches the art nothing about the ability of his oxide removing solutions to provide such surfaces for aluminum cans coated with lubricating oils, dirt and aluminum fines. Hess takes substantial pains to distinguish his oxide removing solutions from cleaners and degreasers (p. 418, "Procedure") (Das. Tr. 908-10; Blo. Tr. 1109; Stbr. Tr. 265-68, 405-06).
51. The Hess article does not disclose or suggest the compositions claimed in the '661 patent. There are many significant differences including the following. First, the purpose of Hess' oxide removing solutions is different from Binns -- preparation of surfaces of certain aluminum airplane parts for spot welding, rather than cleaning of 3004 aluminum alloy beverage cans to a water-break free surface (PX-8A, p. 417). Second, Hess does not describe a solution made from hydrofluoric acid in combination with sulfuric acid (PX-8A, p. 418, Table 1; Das Tr. 926-28). Third, in compositions combining sulfuric acid with a fluoride salt, the concentrations of the components in acceptable solutions are significantly different. The sulfuric acid concentration is about 80% greater than the 1 to 10 g/1 of sulfuric acid claimed in the '661 patent (PX-8A, Table 1, Solution No. 10A). The fluoride concentration, added as sodium fluoride which would form sludge in cleaning compositions for aluminum cans, is also greater than the claimed range for hydrofluoric acid. Although Das directed the Court's attention to one Hess composition where the fluoride content was within the '661 claim limits (Solution No. 10A), he admitted on cross examination that he could do so only by pointing to a composition which Hess expressly found to be unacceptable. Thus, higher fluoride concentrations are ...