Lenzing v Courtaulds Filmtruder Judgement (1995)

908 F.Supp. 172 (1995)

LENZING AKTIENGESELLSCHAFT, Plaintiff,
v.
COURTAULDS FIBERS, INC. and Courtaulds PLC, Defendants.

No. 93 Civ. 1588 (LLS).

United States District Court, S.D. New York.

November 28, 1995.

173*173 Brumbaugh, Graves, Donohue & Raymond, New York City (John D. Murnane, Arthur S. Tenser, of counsel), for plaintiff.

Cravath, Swaine & Moore, New York City (Alan J. Hruska, of counsel), for defendants.

MEMORANDUM AND ORDER

STANTON, District Judge.

Lenzing Aktiengesellschaft ("Lenzing"), an Austrian corporation, sues Courtaulds Fibers, Inc., a Delaware corporation, and Courtaulds PLC, a British corporation with a controlling interest in Courtaulds Fibers, Inc. (collectively "Courtaulds"), alleging infringement of U.S. Patent No. 5,094,690 ("the '690 patent" or "Zikeli's patent"), which Lenzing owns.

Courtaulds moves for summary judgment that the '690 patent is invalid and unenforceable.

BACKGROUND

Zikeli's patent concerns a process patented in 1969 by Dee Lynn Johnson.^[1]Johnson discovered that a natural polymer such as cellulose—e.g., wood pulp—could be dissolved in a solution of water and a chemical called a "tertiary amine oxide." Fibers for making nylon, polyester, and such materials may be spun from the resulting solution—a solution of cellulose in an "aqueous tertiary amine oxide."

In 1980, Neal Franks and Julianna Varga patented a particular method for dissolving the cellulose in the tertiary amine oxide solution.^[2] The "Franks and Varga method" involves using a tertiary amine oxide called N-methylmorpholine N-oxide, or "NMMO." In that method cellulose, aqueous NMMO, and water are combined to make an undissolved mixture, or "suspension." Excess water in the suspension prevents the cellulose from dissolving into the aqueous NMMO. When the suspension is exposed to heat and reduced pressure, the excess water evaporates, 174*174 allowing the cellulose to dissolve into the aqueous NMMO.

On August 16, 1988, Stefan Zikeli, an employee of Lenzing, filed an application in the Austrian Patent Office for a patent on a process disclosing steps for carrying out the Franks and Varga method. He filed a corresponding application in the United States Patent and Trademark Office on August 4, 1989, claiming priority based on the filing in Austria, and was granted the '690 patent.

The scope of Zikeli's patented invention is limited by one independent claim and eight dependent claims. Claim 1, the independent claim upon which all the dependent claims directly or indirectly depend, claims:

Genencor and Courtaulds collaborate on enzyme treatment of Tencel (1996)

A reminder of how important enzyme finishing was to the early success of Tencel in apparel.  The enzymes dissolved the fibre "cuticle" and some amorphous cellulose to allow the fibrillar structure to be raised into a microfibre surface.

Following initial agreement in March 1995, an R and D collaboration between Genencor and Courtaulds Fibres to develop enzyme products to treat Courtaulds' lyocell fibre, Tencel, has been extended for two years. The companies aim to produce more distinctive and cost effective fabrics by exploiting the fibrillation qualities of these cellulosic fibres. Both companies will comarket Genencor enzymes to fabric processors all round the world.

 Anon., Eur. Chem. News, vol. 66, no. 1734, 30 Sept.-6 Oct. 1996, p. 14 (P)

Courtaulds ponders European Tencel site (1994)

Courtaulds has not yet reached a decision on the location of its Tencel solvent spun cellulosic staple fibre plant. A decision is expected before the end of the year. 

Four possible locations are undergoing a detailed feasibility study: two in continental Europe and two in the UK. The plant will have an initial capacity of 25 000 tonne/year.

Courtaulds' first $90m commercial-sized Tencel fibre plant in Alabama, US, was commissioned in June 1992. A second plant in the state cost $134m and is under construction. This will increase Courtaulds' Tencel capacity in the US from 18 000 tonne/year to 43 000 tonne/year.

Tencel's fibre properties have allowed it to be utilised in end uses not previously possible for man-made cellulosics. These include denim jeans, chambray shirts and reusable non-woven apparel.

Currently, Tencel is focused on high quality, exclusive apparel markets, but it is being developed for use in non-woven and industrial uses where its strength and ability to absorb moisture give it a competitive advantage.

Gordon Campbell, Courtaulds' director responsible for fibres, said: 'The decision to invest over $200m in two commercial scale plants in the US is extremely sound. The technology has taken us a decade to perfect, but our experience with the US unit makes us confident that now is the time to bring Tencel to Europe.'

A truly global project, R&D for the fibre was carried out in the UK, it was made commercially in the US, and the market was developed in Japan.

Courtaulds is said to have pioneered the commercial manufacture of solvent spun cellulose fibre. Tencel is the first entirely new textile fibre to be developed for nearly 20 years. Courtaulds claims its is the only commercial scale producer of the product.

07 January 1994 [Source: PCE]

All you need to know about Tencel (1989)

This is the most comprehensive 2-page overview of the Tencel project as it was at the end of 1988 thanks to the journalistic skills of Stan Davies and an interview with Barrie March and Alan Jones for Textile Horizons.

Environmental Impact of Hemp, Tencel and recycled PET fibres in Apparel (1996)

Interesting early observations which, now that the "medium term" has arrived, seem accurate.  Not sure about the longer term though: cellulose doesn't seem to be getting "scarce", and its hard to forget the old adage about hemp in apparel ("Its remarkable how little hemp it takes to ruin a good garment")

Three fibre sources, hemp, Tencel and polyester derived from recycling polyethylene terephthalate (PET) beverage bottles, are compared with respect to their suitability for use in garments and their ecological impact. In the short term, recycled polyester will be the most attractive option. In the medium term, Tencel (lyocell) cellulosic fibres will be highly successful, but hemp may be most successful in the long term as raw materials for the other products become more scarce. Hemp processing is simple and the plant grows well, but it may be difficult to limit tetrahydrocannabinol levels. Tencel has very desirable characteristics but is currently expensive to produce. 

 Drury K; Slater K., Text. Trends India, vol. 39, no. 3, June 1996, pp 29-33