Inject-O-Meter Mfg. Co. v. North Plains Fertilizer & C., Inc.

• Decision Date: 31 March 1971
• Docket Number: No. 29362.,29362.
• Citation: 439 F.2d 1138
• Parties: INJECT-O-METER MANUFACTURING COMPANY, Inc., Plaintiff-Appellant, v. NORTH PLAINS FERTILIZER AND CHEMICAL, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

439 F.2d 1138 (1971)

INJECT-O-METER MANUFACTURING COMPANY, Inc., Plaintiff-Appellant, v. NORTH PLAINS FERTILIZER AND CHEMICAL, INC., Defendant-Appellee.

No. 29362.

United States Court of Appeals, Fifth Circuit.

March 3, 1971.

Rehearing Denied March 31, 1971.

Elsie Brown Silverman, Ely Silverman, Amarillo, Tex., for appellant.

Hugh T. Lyle, Dumas, Tex., Joe E. Edwards, A. H. Evans, Houston, Tex., for appellee.

Before GEWIN, MORGAN and ADAMS^*, Circuit Judges.

GEWIN, Circuit Judge.

The subject of this patent appeal is liquid fertilizer. Appellant, Inject-O-Meter Manufacturing Co. (IOM) is the owner¹ of patents for an apparatus (U. S. Patent No. 3,326,232, June 30, 1967 hereinafter apparatus 232 patent) and a related process (U.S. Patent No. 3,375,976, April 2, 1968, hereinafter process 976 patent) for injecting liquid fertilizer into a crop irrigation system. (Appendix, figure 1) Appellee, North Plains Fertilizer and Chemical Co. (Norpak) has developed and marketed an unpatented device for the same purpose. (Appendix, figure 2) IOM has alleged infringement of both patents by Norpak; Norpak has in turn counterclaimed seeking a declaration that both patents are invalid. On motion for summary judgment the district court found no infringement of either patent and declared the process 976 patent invalid, 308 F. Supp. 538. We affirm.²

I The Process 976 Patent

The court below declared this patent both invalid and not infringed. In accordance with the mandate of this court and the Supreme Court, we deem it appropriate, in light of the Constitution³ and public policy⁴ to consider first the issue of validity.⁵ Our resolution of that issue obviates inquiry into infringement.

It is now well established that there are three statutory and constitutional requirements for a valid patent: utility, novelty, and non-obviousness.⁶ The utility of IOM's device is not disputed. The court below chose to invalidate the process patent on the second of the listed grounds under 35 U.S.C. § 102(b), i. e., that:

"the invention was * * * described in a printed publication * * * more than one year prior to the date of the application for patent in the United States."

Although we do not choose to hold this finding of the district court erroneous, we note that there is some possible ambiguity in the language of the prior printed publication which the district court concluded was a disclosure of IOM's process.⁷ Keeping in mind the requirement that the prior description must be "in such full, clear, and exact terms as to enable any person skilled in the art to which it relates to practice the invention,"⁸ we are constrained to articulate an additional ground for holding the 976 patent invalid — that of obviousness.

Section 103 of Title 35 is the statutory basis of the non-obviousness requirement:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

This statute was intended as a codification of the judicially adopted requirement of "invention" with special congressional instruction to approach the problem by inquiring into the obviousness of the subject matter sought to be patented.⁹ Thus, like "invention", "obviousness" is a word of art incapable of an exact definition appropriate in all circumstances.

What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context. The difficulties, however, are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter, and should be amenable to a case-by-case development.¹⁰

Accordingly, the issue of obviousness is a question of law¹¹ to be determined after examination of the following factual considerations:

the scope and content of the prior art * * *; differences between the prior art and the claims at issue * * *; and the level of ordinary skill in the pertinent art.¹²

(a) The Prior Art. Our examination of the prior art need go no further than a 1965 publication by the University of Florida Agricultural Extension Service.¹³ That pamphlet contains a collection of brief descriptions of methods for injecting liquid fertilizer into irrigation lines. One of the methods described is shown in the diagram reproduced in the Appendix as figure 3. This process simply calls for the fertilizer to be pumped from a storage tank into the main discharge line at a point somewhere between the irrigation pump and the sprinklers. Relevant parts of the descriptive text are copied below.¹⁴ Note that the diagram shows a manually operated "cut-off valve" on the injection line between the fertilizer pump and the main discharge line. The author of this circular testified by deposition that this valve served the obvious function of preventing irrigation water from siphoning back into the fertilizer tank when the fertilizer pump was not in operation.

(b) Appellant's Process. IOM's patent prescribes an improved process for implementing the prior art described above by making the level of application of fertilizer more easily regulatable and uniform despite fluctuations in the flow of water through the main discharge line.¹⁵ To accomplish this desirable goal, Claim 1 of the patent, set out below, teaches to pressurize the liquid fertilizer, pass it through an "adjustable orifice" that will create an intentional pressure drop, and then to inject the solution into the irrigation system.¹⁶ Claim 2 specifies that the pressure drop is to be at least 20 pounds per square inch.¹⁷ The final 2 claims specify the pressure variations in the irrigation line and the attributes of portability.

(c) Difference Between Prior Art and Appellant's Process. Practically speaking, then, the patent calls for the substitution of an adjustable "throttle valve" for the above discussed cut-off valve, and the conscious manipulation of the relationship of pressures in the injection line on either side of the throttle valve and in the irrigation line itself. As a result, a higher pressure is backed up behind the throttle valve; the fertilizer that seeps through at a lower pressure rate is said therefore to be less sensitive to pressure changes in the main line. Thus, a precise amount of fertilizer may be uniformly injected with a higher degree of certainty; and the perils of the prior art, namely uneven and spotty application of fertilizer, are significantly reduced.

In terms of methodology, the only discernible difference between the patented process and the prior art are embodied in Claims 1(b) and 2; absent these claims the process would have been entirely disclosed by the University of Florida circular. The validity of the process hinges on these two claims. If, as a matter of law, they are inventive additions to the prior art, the patent is valid; if they fall under the obviousness test, the patent falls with them.

(d) Obviousness. For reasons to be discussed below it is our conclusion that the difference between these claims and the prior art "would have been obvious at the time the invention was made to a person having ordinary skill in the art."¹⁸

As we perceive appellant's patent, its two principal characteristics are that the flow of fertilizer is (1) precisely regulatable and (2) relatively independent of variations in the flow of water through the main line. The problems solved by these improvements were conspicuous in the prior art. To recognize them was in no way inventive. Once the first need — for a regulatable system — is recognized, the solution reached in the patent — an adjustable orifice — is readily apparent. The second need — for an injection system which is insensitive to the irrigation flow rate — manifestly depends on the interrelationship of pressure levels within the system. This, in turn, would readily suggest that the problem could be solved by experimental manipulation of the pressure levels until a satisfactory relationship of pressures was delivered. We need go no further into detail or speculation to describe the mechanical trial and error process that would logically follow. Manipulation of the relationship of the size and speed of the pump and of the relative size of the various pipe lines to the size of the opening in the throttle valve would inevitably lead to IOM's solution. Simply by using a larger-than-necessary pump and throttling down the adjustable valve, the process of the patent could be duplicated in all of its vital elements by one of ordinary skill in the art.

In Anthony v. Ranco Inc.,¹⁹ we considered a patent which attempted to combine a newly developed automatic valve with a system to reverse a refrigeration process to create heat. In holding that patent invalid, we used language that is appropriate here:

In spite of these and other differences which may amount to improvement over valves of the prior art, in sum all that appellant did was to apply a known valve to an analogous use in a known combination or system. This is not invention. Such advance in the art, if advance there was, merely resulted from that type of activity reasonably to be expected of those mechanically skilled in the applicable art.²⁰

The process 976 patent is invalid by virtue of its obviousness. We make this determination as a matter of law based on evidence which convinces us beyond a reasonable doubt that the statutory presumption of validity of issued patents should fall.²¹

II The Apparatus 232 Patent

Appellant also claims infringement of the parent of the 976 patent — an apparatus patent which proffers a detailed method of effectuating the 976 process. Because Norpak does not...