W.L. Gore & Associates, Inc., Appellant/cross-Appellee v. Garlock, Inc., Appellee/cross-Appellant

DAVIS, Circuit Judge,

concurring in the result in part and dissenting in part.

I concur in the result on (1) the validity of the ’390 patent under §§ 102-103; (2) the validity of the ’390 patent under § 112; (3) the invalidity of claims 1 and 17 of the ’566 patent; (4) lack of fraud on the Patent and Trademark Office; and (5) denial of attorney’s fees. I disagree and dissent as to the validity of claims 3 and 19 of the ’566 patent.

1. The process invention embodied in claim 1 of the ’566 patent was known, through use of the 401 machine in the Gore shop, well before the “invention date” (claimed by Robert Gore, the inventor) of October 1969.1 As such, the claimed invention was invalid on at least three grounds: (i) it was anticipated and therefore would *1561have been obvious (under 35 U.S.C. § 103) at the time of the claimed invention date; (ii) the invention was “in public use” by the Gore shop (under 35 U.S.C. § 102(b)) more than one year prior to the patent application (i.e., prior to May 21, 1969); and (iii) the invention (made by Robert Gore) was known to and used “by others in this country” (35 U.S.C. § 102(a)) before the claimed invention date of October 1969, i.e. the invention was used by Wilbert Gore and others in the Gore shop before the October date.2

The critically important aspect of the invention of the ’566 patent is the stretching of PTFE at a rate above 10% per second.3 Robert Gore testified that he conceived this invention no earlier than October 1969 (and we have the right to take him at his word),4 but the facts found by the District Court plainly show that the Gore shop was in fact practicing that invention considerably earlier.

The District Court found that in the 401 machine the distance between the stretch rollers controls the rate of stretch; a shorter distance results in a higher rate of stretch; for the process described in the ’915 patent to be practiced with a rate of stretch below 10% per second, the distance between the stretch rollers would have to be greater than five feet; if the distance is less than four feet, the rate of stretch is greater than 10% per second; the machine drawings used to construct the 401 machine indicate that the distance between the stretch rollers was eight inches; a Gore employee testified that “I am reasonably sure that no effective [stretch] rolls in question would have been more than three feet simply because of the nature and size of the equipment” and that he did not remember any stretching more than three feet; another Gore employee testified that the distance between the rollers was “a maximum of 18 inches” (emphasis added); a document prepared by the same employee (an engineer) on June 10, 1969 reports that the stretch span was 8 inches; the 401 machine was the only stretching machine used by the Gore company; and the 401 machine was never substantially changed before October 1969. All this adds up to the fact that the 401 machine was at all relevant times operated with a stretch of less than four feet.5 There is no question that the machine was so operated before October 1969 (the District Court found that sales of tape made by the 401 machine were proposed in August 1969).

I can accept Robert Gore’s affidavit (to the PTO) that there was no stretching in the Gore shop at a rate exceeding about 10% per second prior to “my invention disclosed in the captioned patent application” (emphasis added)6 only because that declaration was expressly qualified by the phrase “to my knowledge” (emphasis added). The District Court specifically found no specific intent by Robert Gore to defraud and, on this record, we cannot properly overturn that finding. But the absence of personal intent to defraud does not mean or say that, whether Robert Gore realized it or not, the 401 machine was not actually operating, well before October 1969, to stretch unsin-*1562tered PTFE at a rate exceeding about 10% per second. Cf. O’Brien v. Westinghouse Electric Corp., 293 F.2d 1, 10 (3rd Cir.1961). It seems impossible to me to reconcile Robert Gore’s insistence on two facts — that (i) he invented the process in October 1969 and (ii) he had no knowledge prior to October 1969 of stretching PTFE at the critical rate — with the solid facts in the record as to the prior operation of the 401 machine, except on the view that Robert Gore did not realize that he and others in the Gore shop had made his invention previously.

2. It follows that in October 1969 the invention of ’566 would have been obvious under § 103 to Robert Gore because the prior practice of the 401 machine constituted prior art. Even if this was not prior art technically within § 102, that statutory provision “is not the only source of prior art.” In re Fout, 675 F.2d 297, 300 (CCPA 1982, emphasis in original). The 401 machine was practiced under the ’915 patent (issued to Wilbert Gore) and, whether or not Robert Gore subjectively realized what was happening, he and others in the Gore shop were practicing the invention later embodied in the ’566 patent. That was prior art at least as to Robert Gore. Id. at 300-01.7

3. If it be thought necessary to invoke § 102 directly, in order to show anticipation, the record contains proof that the 401 machine was designed, constructed and used (just as described supra) in November and December 1968 and the early months of 1969 — more than one year prior to the ’566 patent application of May 21, 1970. See Jt.App. E 1199 — E 1200. Section 102(b) therefore applies. Although commercial production was apparently not actively sought until June 1969, the practicing of the 401 machine prior to May 21, 1969 was “a public use” because the Gore company made “use of the device * * * in the factory in the regular course of business.” Connecticut Valley Enterprises, Inc. v. United States, 348 F.2d 949, 952, 146 USPQ 404, 406 (Ct.Cl.1965).

4. Also, § 102(a)8 applies here because Robert Gore was the inventor in the ’566 patent and Wilbert Gore and others in the Gore shop were using the 401 machine before October 1969. Wilbert Gore (the inventor in the ’915 patent under which the 401 machine was made and used) and the other employees are “others” within § 102(a) — they are not the same as Robert Gore who claimed to be inventor of the process that ripened into the ’566 patent.9 See also § 102(f), which would bar Robert Gore if he did not himself invent the subject matter of the ’566 patent.10

5. The majority sustains the validity of claims 3 and 19 of the '566 patent (the claims also involved in appellant’s suit for infringement) which are dependent on invalid claim 1. Because of the invalidity of claim 1 the only possible novelty in claim 3 would be the requirement that the rate of stretch would be about 100% per second, and the possible novelty of claim 19 would be that the final length would be greater than about five times the original length. My position is that both of these added elements, if novel, would have been obvious to persons of ordinary skill in the art.

The defect in the majority’s analysis is that it neglects the cardinal fact that the prior art included the 401 machine (discussed supra), not merely the earlier patents assessed in the majority opinion. The 401 machine directly involved PTFE itself, not conventional thermoplastic polymers. *1563That machine also directly involved rapid stretching of PTFE at a rate markedly exceeding 10%. With this prior art of the 401 machine before him, an ordinary person skilled in the art would maximize stretch rate, if only to improve the machine’s production rate. Cf. In re Dwyer, Jewell, Johnson, McGrath, & Rubin, 317 F.2d 203, 207, 137 USPQ 540 (CCPA 1963). Moreover, the very existence and operation of the 401 machine, which stretched PTFE rapidly without breaking, suggests to the skilled person the probability of stretching at even higher rates. Certainly, in the light of the 401 machine, skilled workers would see in at least the prior Markwood, Nash, and Scarlett patents (teaching extensive and rapid stretching of non-PTFE thermoplastics) the suggestion that the method of the 401 machine could also be used for comparable rapid and extensive stretching of PTFE.

6. In sum, I cannot escape the conclusion that — although there was no fraud proved — if the true facts as to the 401 machine had been made known to the PTO (as it requested), the involved claims of the ’566 patent should (and probably would) not have been accepted.

. The 401 machine was used under the pri- or ’915 patent (issued to Wilbert Gore) which contains no reference to the significance of the rate of stretch.

. Aside from the bases I discuss, I do not reach the other grounds asserted for invalidity of the ’566 patent.

. Before the PTO Robert Gore concededly referred to this as “critical” to his invention or as his “invention.”

. The District Court found that October 1969 was the earliest date Robert Gore asserts for his conception of the invention in the ’566 patent.

. The Gores (Robert and Wilbert) testified at trial that the distance was five feet but there is no indication that the trial court (which did not cite this testimony but did cite the opposing evidence) credited the Gores’ testimony.

. The factor of the rate of stretching was of direct interest to the examiner during the prosecution of the ’566 patent. In response to the examiner’s express request for a declaration that the Gore firm’s production of stretched PTFE tape, prior to Robert Gore’s invention asserted here, did not involve stretching of un-sintered PTFE at a rate exceeding about 10% per second, Robert Gore filed an affidavit in the PTO specifically stating that “to my knowledge" (emphasis added) the 401 machine did not involve stretching at a rate exceeding about 10% per second.

. The District Court has found that there are no differences between claim 1 of the ’566 patent and the processes previously used by the Gore firm to produce paste-extruded unsintered PTFE.

. An invention is anticipated if it “was known or used by others in this country * * * * before the invention thereof by the applicant for patent” (emphasis added).

. It is undisputed that it was Wilbert Gore who initiated the project for the 401 machine and watched over it.

. The majority’s discussion of “secondary considerations,” though it is relevant to other aspects of this case, is irrelevant to the issue of anticipation raised by the 401 machine, and hardly persuasive as to the issues of obviousness based on or with respect to the 401 machine.