Atlas Powder Co. v. EI Du Pont

Citation588 F. Supp. 1455
Decision Date14 June 1983
Docket NumberCiv. A. No. CA-3-79-1562-G.
PartiesATLAS POWDER COMPANY, Plaintiff, v. E.I. DU PONT DE NEMOURS AND COMPANY and Alamo Explosives Company, Inc., Defendants.
CourtUnited States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas

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Garland P. Andrews and V. Bryan Medlock, Jr., Richards, Harris & Medlock, Dallas, Tex., for plaintiff.

Stanley E. Neely, Locke, Purnell, Boren, Laney & Neely, Dallas, Tex., Joseph M. Fitzpatrick, Fitzpatrick, Cella, Harper & Scinto, New York City, for defendants.

MEMORANDUM OPINION

PATRICK E. HIGGINBOTHAM, District Judge.

This patent infringement suit involves ammonium nitrate fuel oil ("ANFO") explosives that are used in the form of a water-in-oil emulsion. ANFO explosives are used extensively in mining and construction because they are inexpensive and, in contrast to explosives containing high explosive ingredients such as TNT, they can be transported and handled with relative safety. Because they cannot be detonated without an outside charge equivalent to a no. 8 blasting cap, they enjoy an industry classification of "blasting agents."1 At the same time, ammonium nitrate is exceptionally soluble in water, a distinct disadvantage in wet application such as in wet "bore holes." Coxon, Ammonium Nitrate Explosives — Some Experimental Mixes, paper delivered to Aus. I.M.M. Annual Conference, 1963, Defendants' Exhibit 130, Tab 11 at 2. In a wet bore hole some of the ammonium nitrate in a common ANFO mix will dissolve. The mix will become insensitive and fail to detonate.

In response to this problem, the explosives industry developed slurry mixes of ammonium nitrate in water. Slurries are resistant to water but have less explosive power than a pure ANFO mix. In order to obtain the power necessary for commercial use, the industry added high explosives, such as TNT, or chemical sensitizers to the slurries. Defendants' Exhibit 130, Tab 11 at 2, 9; Plaintiff's Exhibit 16. It was also necessary to add gelling agents to some of these mixtures to prevent the chemical sensitizers from separating from the slurries. See Transcript at 799. The use of sensitizers and gelling agents significantly increased the cost and the danger of explosion of the ANFO blasting agents. See Transcript at 402, 442; Plaintiff's Exhibit 57.

On June 3, 1969, Atlas Powder Co. obtained a patent which claimed to eliminate the need for high explosive or chemical sensitizers while retaining the water resistance of the gels and slurries. The patent, entitled "Ammonium Nitrate Emulsion blasting Agent and Method of Preparing Same," U.S. Patent No. 3,447,978 (hereinafter the "Bluhm patent" for its assignor, inventor Harold F. Bluhm), describes a water-in-oil emulsion slurry blasting agent consisting essentially of water, ammonium nitrate, a carbonaceous fuel, and an emulsifying agent. The ammonium nitrate, or similar oxidizing agent, is placed in a water solution. This solution is mixed with fuel and the emulsifier to create a water-in-oil emulsion. In addition, air is entrapped or occluded in the emulsion to sensitize it.

Atlas alleges that the defendants, E.I. Du Pont de Nemours and Alamo Explosives Company, Inc. (collectively "Du Pont"), have infringed the Bluhm patent. Atlas alleges that Du Pont infringed the patent by manufacturing and selling Du Pont's products, EL-881, Tovex E, and Tovex EA-4, and that Alamo infringed the patent by reselling these same products. Atlas claims that the accused products and the process for making them infringe upon the Bluhm patent product and process. Specifically, Atlas alleges that Du Pont has infringed the Bluhm patent's product claims 1, 2, 3, 4, 5, 7, 12, 13, 14, 16 and 17. Claim 1 sets forth in general terms the patent's product claims:

An emulsion blasting agent consisting essentially of
1 an aqueous solution of ammonium nitrate forming a discontinuous emulsion phase;
2 a carbonaceous fuel forming a continuous emulsion phase;
3 an occluded gas dispersed within said emulsion and comprising at least 4% by volume, thereof at 70°F. and atmospheric pressure; and
4 a water-in-oil type emulsifying agent;
said carbonaceous fuel having a consistency such that said occluded gas is held in said emulsion at a temperature of 70°F.

Bluhm Patent, Col. 14, lines 9-21 (numbering added). The other product claims are dependent on claim 1 and set forth specific ranges of the four major components in claim 1. (The complete text of the patent is attached as Appendix B). Atlas also alleges that Du Pont has infringed the patent's process claims 18, 20, 21, 22, 24, and 30. Claim 18 describes in general terms the patent's process claims:

A process for preparing an emulsion blasting agent which comprises:
(a) preparing with a water-in-oil type emulsifying agent an emulsion of:
(1) an aqueous ammonium nitrate solution as a discontinuous emulsion phase; and
(2) a liquid carbonaceous fuel as a continuous emulsion phase;
(b) thickening by cooling said liquid carbonaceous fuel to a consistency such that a gas may be occluded therein; and
(c) occluding at least 4% by volume at 70°F. and atmospheric pressure of a gas in the thickened emulsion.

Bluhm Patent, Col. 15, lines 36-49. The other process claims are dependent on and represent slight variations of claim 18.

Du Pont counterclaims, arguing that the Bluhm patent should be declared invalid because it was anticipated by the prior art, 35 U.S.C. § 102, it was obvious to one of ordinary skill in the art, 35 U.S.C. § 103, it does not set forth the "best mode" for making the invention, it is a mere invitation to experiment, and its claims are overly broad, 35 U.S.C. § 112. Du Pont also argues that the Bluhm patent is invalid because Atlas committed fraud on the Patent Office in obtaining the patent. Finally, Du Pont argues that even if the patent is valid, it has not been infringed by the accused products.

I. VALIDITY
A. Presumption of Validity and Burden of Proof

Congress requires judicial deference to the judgment of the Patent Office in considering the validity of a patent:

A patent shall be presumed valid .... The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting it.

35 U.S.C. § 282. This statute creates a rebuttable presumption of validity in favor of a patent. If the Patent Office considered all the pertinent prior art, the presumption of validity remains at full strength and the party challenging the patent must prove invalidity by "clear and convincing evidence" or "beyond a reasonable doubt." Baumstimler v. Rankin, 677 F.2d 1061, 1066 (5th Cir.1982). If pertinent prior art was not cited to the Patent Office, the presumption is weakened and the party challenging the patent must prove invalidity by a preponderance of the evidence. Id.

Du Pont's prior art expert, Dr. Kury, testified that "the starting point" for those interested in improving slurried ANFO blasting agents was the Gehrig patent, U.S. Patent No. 3,164,503. Defendants' Exhibit 130, Tab 4. See Transcript at 798-99. Atlas had cited the Gehrig patent to the patent examiner, but it had failed to cite a number of other pertinent prior art references, including the process for making Aquanite, the commercial version of the Gehrig patent.2 Because significant prior art was not before the examiner, the Bluhm patent's presumption of validity is weakened and Du Pont need prove invalidity by only a preponderance of the evidence.

With the burdens so defined, I turn to the specific challenges Du Pont has made to the Bluhm patent.

B. Anticipation

Du Pont claims that the Bluhm patent is invalid because its claims were anticipated by work which was previously available to the public. The "defense" of anticipation derives principally from 35 U.S.C. § 102(a):

A person shall be entitled to a patent unless
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant.

A patent will not be invalidated under this section "unless all of the same elements or their equivalents are found in substantially the same situation where they do substantially the same work in the same way." Continental Oil Co. v. Cole, 634 F.2d 188, 195 (5th Cir.), cert. denied, 454 U.S. 830, 102 S.Ct. 124, 70 L.Ed.2d 106 (1981). The Fifth Circuit has noted that "there is authority that anticipation requires that all material claimed features of a patent be contained in a single prior art reference." Steelcase, Inc. v. Delwood Furniture Co., 578 F.2d 74, 79 (5th Cir.1978), cert. denied, 440 U.S. 960, 99 S.Ct. 1503, 59 L.Ed.2d 774 (1979).

Du Pont urges that the Bluhm product claims were anticipated by the Egly patent, U.S. Patent No. 3,161,551. Defendants' Exhibit 130, Tab 3. The Egly patent, by itself, does not anticipate the Bluhm product because it contemplates a blasting agent composed of an emulsion poured over solid ammonium nitrate "prills." There is no other single invention or publication that anticipates the Bluhm product claims. Du Pont's expert, Dr. Kury, testified that various features of prior inventions and publications had pointed the way to the Bluhm patent. See Transcript at 799-816. This overlap is insufficient to support a finding of anticipation.

Du Pont urges that the Bluhm process claims were anticipated by Atlas's process for making its commercial blasting agent, Aquanite. The two processes are not identical. Aquanite, composed of ammonium nitrate, fuel oil, a water-in-oil emulsifier, and nitric acid, required the addition of a gelling agent to ensure its stability. Transcript at 140-42. Because the Bluhm emulsion does not contain nitric acid, it does not require the extra step of adding a gelling agent. The anticipation defense is too narrow to encompass this extra step. The Aquanite process did not anticipate the Bluhm patent's process claims.

C. Obviousness

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