United States District Court, S.D. Indiana, Evansville Division
FINDINGS OF FACT AND CONCLUSIONS OF LAW
RICHARD L. YOUNG, CHIEF JUDGE.
Berry Plastics Corporation (“Berry”), is a direct
competitor of Intertape Polymer Corporation
(“Intertape”), in the manufacture and sale of a
variety of tapes, including adhesive tapes. Intertape is the
assignee of United States Patent No. 7, 476, 416
(“'416 patent”) which claims, inter
alia, a manufacturing process for preparing an adhesive
using a specially modified planetary roller extruder
(“PRE”) that includes planetary mixing spindles
with back-cut helical flights. On May 13, 2010, Berry filed a
declaratory judgment action against Intertape, alleging that
the ‘416 patent is invalid and unenforceable. Intertape
filed a Counterclaim against Berry, alleging that Berry's
PRE infringes independent Claims 1 and 21, and the associated
dependent claims, of the ‘416 patent. The parties tried
this case before a jury from November 3, 2014, to November
17, 2014. The jury found that, inter alia,
Intertape's ‘416 patent was valid and that
Berry's PRE did not infringe the '416 patent.
(See generally Verdict Form, Filing No. 378).
Berry's inequitable conduct trial remained for
parties tried Berry's inequitable conduct claim before
the court on December 7-8, 2015. Following the trial, the
parties filed proposed findings of fact and conclusions of
law. Being duly advised, the court further finds that Berry
failed to prove, by clear and convincing evidence, that the
‘416 patent is unenforceable due to inequitable
court now issues its findings of fact and conclusions of law
pursuant to Federal Rule of Civil Procedure 52(a):
FINDINGS OF FACT
Intertape is the owner by assignment of the ‘416 patent
issued on January 13, 2009. (ITX-66 (‘416 patent)). The
asserted ‘416 patent describes and claims a continuous
process for preparing adhesive tape from raw materials,
including a non-thermoplastic elastomer (i.e., natural
rubber) and tackifying resins, using a planetary roller
extruder (“PRE”) that includes at least one
double transversal mixing spindle comprising a plurality of
back-cut helical flights. The double transversal spindles,
known as “back-cut spindles, ” are designed to
increase the residence time of raw materials in the extruder,
which thereby increases mixing and mastication of the materials.
The process claimed in the ‘416 patent uses at least
one back-cut spindle to reduce the viscosity of the adhesive
mass so that the finished adhesive can be more easily coated
on to a web-form material using conventional equipment.
(Id. col. 4, ll:24-56; id. col. 7,
named inventors are John Tynan, Jr., Richard St. Coeur, David
Kovach, and Thomas Lombardo. (See id.; Filing No.
391, Tynan Tr. at 36). At the time the patent was issued, the
inventors were employees of Intertape. (Id.).
Levy and John Kane prepared and prosecuted the 60/524, 505
provisional application and 10/997, 827 non-provisional
patent application that resulted in the ‘416 patent.
(Filing No. 493-6, Kane Dep. Tr. at 22).
Intertape Learns of Planetary Roller Extruders
the early 2000s, Intertape compounded natural rubber through
a Banbury or batch process, which compounds natural rubber
one batch at a time. (Tynan Tr. at 20 (describing the batch
process as “kind of like making a cake”)).
2002, Intertape learned from a German patent publication that
one of its competitors, Tesa AG (also known as
“Beiersdorf”), had developed a continuous
adhesive-making process using a PRE. (Tynan Tr. at 37). In
April 2002, Kovach and a colleague prepared an English
translation of the patent. (Kovach Tr. at 42-43; St. Coeur
Tr. at 7-8).
Intertape had never heard of a PRE before reading the
Beiersdorf patent. (Tynan Tr. at 38).
Intertape decided to explore this new method of compounding
natural rubber. (Id. at 30).
October 2002 European Trip
Visit to Battenfeld Extrusionstechnik GmbH
Through research, Intertape discovered that Battenfeld
Extrusionstechnik GmbH, a German multi-national manufacturer
of mixing equipment, designed and manufactured PREs. (Tynan
Tr. at 39).
Tynan, Lombardo, and St. Coeur traveled to Germany to meet
with Battenfeld representatives on October 16, 2002. (ITX-5).
During their 2002 meeting, Battenfeld showed the Inventors
PowerPoint Presentations on PRE technology. (Id. at
Intertape learned that a PRE had “ten times the
thermal-exchange capability of a twin-screw extruder . . .,
so [Intertape] was intrigued.” (Tynan Tr. at 43;
see also ITX-5 at 6 (noting the PRE's ability to
“provide good mixing in materials that are shear
sensitive” and “thermally sensitive”).
Representatives of Battenfeld also introduced Intertape to
different types of planetary spindles for use in a PRE. (St.
Coeur Tr. at 56-57; see also ITX-5). Intertape
learned from Battenfeld that “you can achieve different
mixing effects when you go from a spindle, full-flight
spindle without notches, to a spindle with notches.”
(Tynan Tr. at 43-44). Tynan explained that “when you
put notches in them, you get some back-slip of the material;
you get some flow-back of the material. And the material that
flows back stays in the compounding zone longer than the
material that gets moved forward” resulting in
“more mastication.” (Id. at 44; St.
Coeur Tr. at 57 (“[T]hey said you can cut notches into
the spindle for different mixing dynamics.”)).
Inventors were already familiar with back-cut mixing spindles
from their work with twin-screw extruders. (See
Filing No. 402, Kovach Tr. at 11 (“I used that style
extensively in my work with the twin-screw extruders”).
Kovach knew from his experience that the back-cut
configuration is “designed to add more mixing and
mastication.” (Id. at 54-55).
Battenfeld encouraged Intertape to run a search for U.S.
patents belonging to Beiersdorf that might impede the
Inventors' efforts to develop their own adhesive
compounding process in the U.S. (ITX-5 at 8).
Intertape's European trip also included a visit to Maris,
an Italian manufacturer of twin-screw compounding extruders.
(Id. at 2, 13-17; Tynan Tr. at 131). A twin-screw
extruder has two connected barrels with two co-rotating
screws. (Tynan Tr. at 31).
Intertape wanted to meet with the Maris representatives
“to identify the advancements Maris ha[d] made on the
compounding of natural-rubber-based pressure-sensitive
adhesives.” (ITX-6 at 1). The meeting with Maris
representatives occurred on October 21, 2002. (ITX-5 at 13).
Maris “[c]laimed to have developed a process that
allows for continuous compounding of solvent-based adhesives
in a twin screw compounder.” (ITX-5 at 2).
Twin-screw extruders produce a lot of heat which can degrade
the rubber. (Tynan Tr. at 34-35). Maris' “[p]rocess
development focused on keeping temperatures from running
away.” (ITX-5 at 16). Intertape noted, “Solid
resin adds via sidefeeders dropped temperature.”
(Id. at 16).
use of sidefeeders, solid resin, etc., “was known to
[Intertape]” as a means to “cool the adhesive
down.” (Tynan Tr. at 137).
According to Berry, Intertape learned from the Maris
continuous process disclosure that (i) introduction of solid
materials in the compounding section has advantages, (ii) all
solid materials do not have to be fed all at once in the
feeding section, with downstream solids additions, (iii) the
elastomer is given more time to be masticated before addition
of other materials, (iv) solid resin is easier to mix with
rubber because molten resin lubricates, and (v) the solid
materials act as a heat sink to lower the process
temperature. (ITX-5 at 15-16).
Furthermore, Berry argues, the Inventors had not conceived of
the above ideas prior to their meeting with Maris
Berry did not plead this basis for inequitable conduct, nor
was it disclosed or argued at the inequitable conduct court
The 3M Opposition to the Beiersdorf Patent
Following their European trip, Tynan requested an extensive
search for Beiersdorf patents as Battenfeld had suggested.
(Tynan Tr. at 45-46, 151).
Intertape learned that Beiersdorf had obtained a U.S. patent
on its process of manufacturing an adhesive using a PRE.
(Id. at 43-44). Beiersdorf's U.S. Patent No. 6,
506, 447 (“‘447 patent”) generally claims a
continuous, solvent-free, and mastication-free process for
producing a pressure-sensitive adhesive from a
non-thermoplastic elastomer in a PRE. (ITX-7, claim 1). The
‘447 patent issued from a patent application filed in
the PTO on August 17, 2000. (Id. at 1).
Intertape also discovered Beiersdorf's European
application was being opposed by 3M. (Tynan Tr. at 152-53).
3M Opposition was dated February 20, 2003, and uncovered by
Intertape sometime before May 5, 2003. (ITX-20; Tynan Tr. at
150-53; ITX-16 (“Where is Beiersdorf's rebuttal of
3M's contest of Beiersdorf's patent?”)).
3M Opposition to the Beiersdorf patent application centered
on the patent's assertions of
‘mastication-free' and asserted that such claims
were invalid as not enabled. (See, e.g., ITX-20 at 3
(“According to this definition, the term
‘mastication-free' would mean that in the process
of EP ‘584 there is no molecular weight breakdown of
the elastomer at all.”); Tynan Tr. at 152-53; PTX-150;
Levy Tr. at 52-55)). Specifically, the Beiersdorf application
claimed that there was a difference between the mastication
of elastomers and the degradation of elastomers. 3M argued
this differentiation between mastication and degradation
“is artificial and not a technically sound concept. How
can a molecule which is broken down tell whether it was
masticated or degraded? What difference does it make if the
molecular weight breakdown of elastomers is referred to by
two different terms; isn't it still the same
Intertape's request, Prosecution Counsel monitored the 3M
Opposition in Germany quarterly. (Filing No. 529, Tynan Bench
Trial Tr. at 55, 131; Filing No. 530, Levy Bench Trial Tr. at
Kane directly monitored the European prosecutions and
provided selected documents to Levy when they appeared to be
relevant. (Kane Dep. Tr. at 28-29, 36; Levy Tr. at 52; Levy
Bench Trial Tr. at 12-13). Tynan primarily interacted with
Levy, and thus any information from the 3M Opposition would
have come from him. (Tynan Bench Trial Tr. at 27, 131-32).
Kane could not recall any specific documents he submitted to
Levy. (Kane Dep. Tr. at 29). Levy, in turn, could not recall
any specific documents he received from Kane. (See
Levy Tr. at 52 (testifying he did not recall reviewing a
There is insufficient evidence to determine which documents
or information Tynan subsequently obtained. (Tynan Bench
Trial Tr. at 52-53, 62-63).
2003 Trials at Battenfeld
April 2003, Tynan, St. Coeur, and Kovach traveled to Germany
to fully explore the advantages of a PRE for compounding
natural-rubber-based adhesives without the use of solvent.
(Id. at 41, 62; Kovach Tr. at 14).
of Intertape's goals of the trials was to invalidate the
‘447 patent claims because mastication-free PRE
compounding of rubber was not possible and Intertape regarded
the patent as an “obstacle.” (Tynan Tr. at 56,
143-44, 200 (“Q: You did think that everyone knows,
including Beiersdorf [, ] that it's impossible not to
masticate on the PRE equipment; is that correct? A: I said
that, yes.”); St. Coeur Tr. at 59).
During the trials of Battenfeld's PRE, Intertape used
Battenfeld's test set-up, which included only standard
spindles. (St. Coeur Tr. 13, 55; Kovach Tr. at 55; Tynan Tr.
at 64, 198). Kovach testified they went there “for a
free trial they were gracious enough to offer us, and so we
were going to let them demonstrate their equipment for
us.” (Kovach Tr. at 56).
Battenfeld discussed the types of planetary spindles
available for PREs, including back-cut planetary spindles,
and the Inventors took photographs of them. (Tynan Tr. at
63-64; Kovah Tr. at 19).
Intertape discovered, as a result of the trials, that it
“could take natural rubber, tackifying resin, extender,
masticate the rubber in the PRE, produce an adhesive, and it
had an exceptional balance of adhesion and cohesive
strength.” (Tynan Tr. at 65).
Intertape performed a molecular weight analysis of samples
returned from the Battenfeld trials that confirmed
mastication occurred. (ITX-18 at 2 (“There is
significant molecular weight breakdown in adhesives
compounded with the PRE.”)).
Intertape shared the molecular weight data and conclusions
with Prosecution Counsel Levy, and explained that
“[t]his information refutes claims made in Beirsdorf
[sic] patents.” (ITX-18 at 1).
Following the Battendorf trials, Intertape determined that it
was not infringing the Beiersdorf's
“mastication-free” process, and “decided
[to] move ahead with [its] better process.” (Tynan Tr.
Entex Rust & Mitschke GmbH
The DIK Paper
Intertape identified Entex Rust & Mitschke GmbH as a
manufacturer of PREs from the specification of the ‘447
patent. (Kovach Tr. at 21).
June 2003, St. Coeur, Kovach, and Lombardo attended a
National Plastics Expo (“NPE”) in Chicago,
Illinois, to find out whether Entex's processing lab
could handle flammable solvents. (Tynan Bench Trial Tr. at
the three Inventors who attended the NPE, only Kovach and
Lombardo met with Entex sales representative Michael Batton.
(St. Coeur Bench Trial Tr. at 204).
Batton testified that he handed Kovach and Lombardo a copy of
a speech that he gave and distributed to the attendees of a
DIK seminar in Hannover, Germany on March 23, 2003. (Filing
No. 410, Batton Tr. at 26, 67, 72). The speech is titled
“Rubber - the tailor-made material” and subtitled
“Compounding of Elastomer Masses in a Planetary Roller
Extruder.” (PTX-37 (“DIK Paper”)).
DIK Paper discloses that a PRE can be used to compound
rubber-based formulations. (Id., Fig. 20; Rauwendaal
Tr. at 170; Mount Tr. at 62). It also discloses an exemplary
process diagram, (PTX-37 at 12), and states that a PRE can be
fed with rubber, resin and other constituents simultaneously.
It especially mentions that the modular PRE system allows
“compounding of materials which are difficult to
disperse or homogenize, as for example recycled materials,
adhesives, caoutchoucs, etc.” (PTX-37 at 15; Rauwendaal
Tr. at 171). And it discloses that such a system could be set
up with spindles satisfying claim 1, such as the
Noppenspindel. (PTX-37 at 16, Fig. 20; Mount Tr. at 68-69,
143; see also Rauwendaal Tr. at 171 (testifying that
the DIK Paper discloses a PRE modular design to manufacture
adhesives and discloses the claimed spindle)).
Kovach testified that Batton did not give him a copy of the
DIK Paper. (Kovach Tr. at 27).
Kovach memorialized the Inventor's meeting with Batton in
a memo he prepared and distributed a few days after the NPE.
(ITX-22 (Kovach's memo); Kovach Tr. at 24-25, 82). The
DIK Paper is not mentioned in the memo. Kovach testified
that, if he had received the DIK Paper, it would have been
issued a document number and filed along with the memo.
(Kovach Tr. at 27, 82-83; see also Filing No. 493-8,
Lombardo Dep. Tr. at 106 (confirming that “it [was] the
practice of [the Inventors] to circulate information with
each other that was relevant to the PRE work [they] were
doing”); Tynan Bench Trial Tr. at 161 (same)).
Lombardo does not recall receiving the DIK Paper from Batton.
(Filing No. 493-7, Lombardo Dep. Tr. at 45-46).
Coeur testified that he did not receive any materials from
the Entex booth at the NPE, did not see any materials that
were available for visitors to take from the Entex booth, and
did not see any materials received by Lombardo or Kovach from
the Entex booth. (St. Coeur Tr. at 15, 61-62). He further
testified that it would have been “odd” if
Lombardo or Kovach had received materials from Batton but did
not share those materials with him. (St. Coeur Bench Trial
Tr. at 205).
Tynan and Prosecution Counsel testified that they never saw
or had possession of the DIK Paper during prosecution of the
‘416 patent. (Tynan Bench Trial Tr. at 161; Filing No.
493-6, Kane Dep. Tr. at 80; Filing No. 401, Levy Tr. at
28-29). Furthermore, Intertape searched its files for the DIK
Paper, but did not find it. (Tynan Bench Trial Tr. at
After discussions with Batton, Intertape learned that Entex
had a lab-scale PRE that was capable of processing solvents.
(Kovach Tr. at 25; St. Coeur Tr. at 15). The ability to use
solvents was important to Intertape because Intertape used
solvents in several of its manufacturing plants. (Kovach ...