Corning Glass Works v. Sumitomo Electric U.S.A., Inc.

868 F.2d 1251, 1989 WL 13184
CourtCourt of Appeals for the Federal Circuit
DecidedFebruary 22, 1989
DocketNos. 88-1192, 88-1193
StatusPublished
Cited by47 cases

This text of 868 F.2d 1251 (Corning Glass Works v. Sumitomo Electric U.S.A., Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1989 WL 13184 (Fed. Cir. 1989).

Opinion

NIES, Circuit Judge.

Sumitomo Electric U.S.A., Inc. (SEUSA), Sumitomo Electric Industries, Ltd. (SEI), and Sumitomo Electric Research Triangle, Inc. (SERT), (collectively Sumitomo) appeal from the judgment of the United States District Court for the Southern District of New York, 671 F.Supp. 1369, 5 USPQ2d 1545 (S.D.N.Y.1987) (Conner, J.), holding Sumitomo liable for infringement of claims 1 and 2 of United States Patent No. 3,659,-915 (’915) and claim 1 of United States Patent No. 3,884,550 (’550), all directed to the structure of optical waveguide fibers. On appeal, Sumitomo challenges the validity of both patents and the finding of infringement of the ’915 patent by one of its accused products. Corning Glass Works cross-appeals from the portion of the judgment holding that Sumitomo does not infringe another of its patents, United States Patent No. 3,933,454 (’454), which claims a method of making optical waveguide fibers. We affirm the judgment in all respects.

[1254]*1254I

BACKGROUND1

A. General Technology

The inventions involved in this case relate to optical waveguide fibers of the type now widely used for telecommunications, such as long-distance telephone transmissions. Such fibers were developed as a medium for guiding the coherent light of a laser a distance suitable for optical communications.

It had long been known that light could be guided through a transparent medium that was surrounded by another medium having a lower refractive index (RI). A glass fiber surrounded by air, for example, will function as a conduit for light waves, because air has a lower RI than glass. To prevent scratches, imperfections, or foreign materials on the fiber surface from scattering light away from the fiber, glass fibers were cladded with a glass layer having a lower RI. Before 1970, however, these glass-clad, glass-core fibers, referred to generally as “fiber optics,” were capable of transmitting light of practical intensity only for very short distances due to high attenuation of the glass fibers then available. While suitable for illumination or for imaging systems, as in endoscopic probes, they could not be used for optical communications.

Another impediment to the use of conventional fiber optics for optical communications was the need that the fiber limit the transmitted light to preselected rays or “modes.” In contrast, conventional fibers were designed to pass the maximum amount of incident light. The relatively large core diameter of conventional fibers permitted modes of light to enter the core over a fairly wide range of angles which, provided they entered at less than the critical angle, would be propagated along the fiber. Upon entering a fiber core, the light modes travel to the cladding and then back into the core, thus “bouncing” back and forth in a zig-zag path along the length of the fiber. The shallower the angle at which the modes enter the core, the less they will “bounce” and the sooner they will reach the receiving end of the fiber. When the number of modes are restricted, intelligibility of the information transmitted increases. The optimum restriction is achieved when only a single mode is transmitted, and by limiting the core diameter, that purpose is accomplished.

By the mid-1960’s, worldwide efforts were ongoing to develop long-distance lightwave transmission capability. In particular, the British Post Office sought an optical waveguide with an attenuation of 20 db/km, the approximate transmission efficiency of the copper wire commonly used in telephone communications.

B. The ’915 Invention

Coming’s work on optical waveguides began in 1966, when it was contacted by the British Post Office. Drs. Robert D. Maurer and Peter C. Schultz, working at Corning, developed the world’s first 20 db/km optical waveguide fiber by early 1970. That achievement was due, in part, to the development of a fiber with a pure fused silica cladding and a fused silica core containing approximately three percent by weight of titania as the dopant in the core.2 It was also due to the careful selection of the core diameter and the RI differential between the core and the cladding.

Bell Laboratories confirmed the attenuation measurements of Coming’s fibers and considered Coming’s achievement an important breakthrough, making long-distance optical telecommunications possible. Dr. Maurer first publicly reported the achievement of a 20 db/km optical wave[1255]*1255guide fiber at the Conference on Trunk Telecommunications by Guided Waves held in London, England. That announcement created enormous interest and was the subject of many articles in both technical and general publications. The inventors’ advancement in technology won them accolades from various societies and institutes, for which they were presented with many prestigious awards and honors. In addition, the invention of the ’915 patent has achieved impressive commercial success on a worldwide basis. The district court determined that “[t]he 915 patent clearly covers a basic, pioneering invention.” 671 F.Supp. at 1377, 5 USPQ2d at 1551.

The ’915 patent discloses a fused silica optical waveguide fiber capable of limiting the transmitted light to preselected modes for use in optical communication systems. Specifically, such a fiber is disclosed as having a doped fused silica core and a fused silica cladding (doping optional), wherein the RI of the core is greater than that of the cladding. Prior to the filing date of the application for the '915 patent, the inventors had experimented with do-pants which increased the RI of fused silica, e.g. titania, and the ’915 specification mentions only such positive dopant materials. At the time the application was filed, the inventors did not know of specific do-pants that would decrease the RI of fused silica, although it had been known in the art since 1954 that the introduction of fluorine decreases the RI of certain multicom-ponent glasses.

C.The ’550 Invention

Coming’s titania-doped fibers required heat treatment to reduce attenuation to an acceptable level. An undesirable result of that treatment was a lowering of the mechanical strength of the fibers. Consequently, Coming sought to develop a low attenuation fiber which did not require heat treatment. In 1972, Drs. Maurer and Schultz found a solution in doping a fused silica core with germania, which also had the advantage of transmitting more light than using titania.

D.The ’454 Invention

Corning recognized that when optical waveguide fibers were produced by flame hydrolysis, they contained hydroxyl ions. The residual hydroxyl ions absorbed light at certain wavelengths used in optical communications and, if they remained, would increase the attenuation, of the fiber at those wavelengths. Working at Corning, Dr. Robert D. DeLuca invented a process to overcome this inherent problem by introducing a chlorine-containing drying atmosphere into the furnace during the “consolidation” phase.

E.District Court

Corning is the assignee of the three patents at issue. SEI and its subsidiaries, SERT and SEUSA, are engaged in the manufacture and sale of optical waveguide fibers. This appeal involves two suits which were consolidated: an action by SERT3

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Bluebook (online)
868 F.2d 1251, 1989 WL 13184, Counsel Stack Legal Research, https://law.counselstack.com/opinion/corning-glass-works-v-sumitomo-electric-usa-inc-cafc-1989.