Shell Development Co. v. Pure Oil Co.

• Decision Date: 04 March 1953
• Docket Number: Civ. No. 2434-51 and 2776-51.
• Citation: 111 F. Supp. 197
• Parties: SHELL DEVELOPMENT CO. v. PURE OIL CO. et al. SOCONY-VACUUM OIL CO. v. PURE OIL CO. et al.
• Court: U.S. District Court — District of Columbia

111 F. Supp. 197

SHELL DEVELOPMENT CO. v. PURE OIL CO. et al.

SOCONY-VACUUM OIL CO. v. PURE OIL CO. et al.

Civ. Nos. 2434-51 and 2776-51.

United States District Court for the District of Columbia.

March 4, 1953.

COPYRIGHT MATERIAL OMITTED

Herbert L. Shepard, Emeryville, Cal., Edward B. Beale, Washington, D. C., for Shell.

Richard K. Stevens, Washington, D. C. (Robert E. Watkins and Myron J. Burkhard, New York City, of counsel), for Socony-Vacuum.

Edward H. Lang, Chicago, Ill., Bernard F. Garvey, Washington, D. C., for Pure Oil.

KEECH, District Judge.

There are before the court two actions under R.S. § 4915 1952 Revision, 35 U.S. C.A. §§ 145, 146, Shell Development Co. v. Pure Oil Co., Civil Action No. 2434-51, wherein Shell seeks issuance of a patent, and Socony-Vacuum Oil Co., Incorporated v. Pure Oil Co., Civil Action No. 2776-51, wherein Socony seeks issuance of a patent. These actions grew out of applications filed by Zublin, assignor of Shell, Cauley, Assignor of Socony, and Bond, assignor of Pure Oil, for a patent on the same subject matter. An interference proceeding followed in the Patent Office, resulting in the award of a patent to Pure Oil. The two court actions were consolidated for hearing by a consent order. Hearing of these causes extended over a period of five days, and the matter was argued at length by counsel for the respective parties, all of whom have filed briefs.

These actions, by statute and judicial pronouncement, are not in the nature of an appeal, but are de novo proceedings.¹ As permitted by the statute² there are before the court for its consideration not only large portions of the record before the Patent Office, but also substantial additional testimony offered for the first time before this court. Socony shifted the emphasis in its case from an alleged actual reduction to practice, relied on and rejected by the Patent Office, to prior conception, which had been alleged but not urged in the Patent Office proceedings. At the outset, Pure Oil objected to admission of any evidence which was or could have been available at the time of the Patent Office proceedings, but was not introduced there.

New evidence may be received which strengthens contentions already fully made and supported by testimony before the Patent Office,³ where there has been no suppression, bad faith, or gross negligence on the part of the party offering it.⁴ The court found that the circumstances in this case did not indicate any bad faith, suppression, or gross negligence on the part of Shell or Socony, and that the proffered evidence tended to strengthen contentions already made in the Patent Office. Hence, there was no estoppel, and the new evidence was admitted.⁵

Counsel for the respective parties have been of real assistance to the court in the presentation of their contentions and authorities in support thereof. Indeed, counsel have substantially agreed upon the basic legal principles applicable.

The claimed invention or "count", as it is known in an interference proceeding, reads:

"In the treatment of hydrocarbon oils containing heavy mercaptides for the removal thereof which comprises contacting oil containing heavy mercaptides with aqueous alkali metal hydroxide reagent containing an effective amount of soluble organic oxidation promoter itself capable of oxidation and an amount of mercaptides sufficient to protect said promoter to extract said mercaptans and to produce a fat reagent containing heavy mercaptides, separating said fat reagent, regenerating said fat reagent by passing oxygen-containing oxidizing gas there-through to oxidize a portion of said mercaptides to disulfides and to retain sufficient of said mercaptides to protect said promoter, separating said disulfides to produce a lean reagent, and contacting hydrocarbon oil containing heavy mercaptides with said lean reagent, the improvement which comprises contacting hydrocarbon oil containing predominantly heavy mercaptans with aqueous alkali metal hydroxide reagent containing an effective amount of soluble organic oxidation promoter itself capable of oxidation and an amount of mercaptides sufficient to protect said promoter to extract heavy mercaptans and to produce a fouled reagent containing heavy mercaptides, introducing light mercaptans into said fouled reagent in an amount sufficient to ensure substantially complete oxidation of said heavy mercaptides to disulfides whilst oxidizing a portion of said light mercaptides during regeneration and to retain sufficient mercaptides comprising substantially only light mercaptides to protect said soluble organic oxidation promoter after regeneration, regenerating said fouled reagent by passing oxygen-containing oxidizing gas there-through to oxidize substantially all of said heavy mercaptides and a portion of said light mercaptides to disulfides whilst retaining an amount of mercaptides comprising substantially only light mercaptides sufficient to protect said promoter, and separating said disulfides to obtain a lean reagent containing a protective amount of mercaptan sulfur comprising substantially only light mercaptides."

In lay language, the invention in substance is an improvement in the art of treating hydrocarbon oils with an aqueous alkali metal hydroxide reagent for the purpose of removing mercaptans⁶ from the oil. The fouled or "fat" reagent, which contains an organic oxidation promoter or catalyst, is regenerated for recycle by passing an oxidizing gas through it, which oxidizes the mercaptides to disulfides which may be separated from the reagent. A certain amount of mercaptans must be retained in the reagent during regeneration in order to prevent loss of the organic oxidation promoter, which is itself capable of oxidation. Mercaptans are classified as "heavy" and "light" mercaptans, according to molecular weight. It is known that the light mercaptans have a higher partition or distribution coefficient than the heavy mercaptans, that is, they are more easily extracted from the gasoline by the treating solution; that the light mercaptans have a correspondingly lower re-entry value than the heavy mercaptans, that is, they re-enter the gasoline from the regenerated treating solution less readily than the heavy mercaptans; and that the heavy mercaptans in general oxidize more readily than the light mercaptans. There is an accord among the parties that the new feature of the interference count, in lay language, is the adding of light mercaptans to a fouled treating solution containing predominantly heavy mercaptans so that substantially all of the heavy mercaptides may be oxidized and removed therefrom during regeneration, while enough light mercaptides remain unoxidized to protect the promoter from oxidation. Such an improvement is important from an economic standpoint, since it permits removal of substantially all the heavy mercaptides and protects the oxidation promoter from loss by oxidation through the retention of only light mercaptans, which will re-enter the gasoline less readily from the regenerated treating solution.

The parties are agreed that priority of invention should be awarded to the party who was either the first both to conceive and to reduce the invention to practice or, in lieu thereof, was the first to conceive the invention and was proceeding with reasonable diligence to a reduction to practice from a time just prior to the time his opponent entered the field up to the completion of his own reduction, actual or constructive.⁷

The respective conception dates now claimed by the parties are: Cauley, March 15, 1943; Zublin, October 25, 1943; and Bond, January 26, 1944. The respective dates of constructive reduction to practice, through filing of the patent applications, are: Bond, March 4, 1944; Cauley, April 6, 1944; and Zublin, April 15, 1944. None of the parties rely in this action on an actual reduction to practice.

The Board of Interference Examiners in its final decision found that Cauley had failed to establish March 15, 1943, as his conception date and restricted him to April 6, 1944, for conception and reduction to practice; that Zublin had proved October 25, 1943, and Bond had proved January 26, 1944, as their conception dates; but held that Bond was entitled to the patent because he first reduced to constructive practice and Zublin was found to be lacking in diligence from December 3, 1943, to February 7, 1944.

The plaintiff in any interference proceeding under § 4915 has the heavy burden of overcoming the decision of the Patent Office "by testimony which in character and amount carries thorough conviction."⁸ On the record in this case, the court is convinced that the right of Pure Oil to the patent issued has been overcome by evidence which in character and amount carries thorough conviction, and that, if the count be patentable, Socony is entitled to the patent.

Cauley bases his alleged conception date on a memorandum of March 15, 1943, to Mr. L. T. Doiron, chief chemist at Socony's East St. Louis refinery, and an accompanying drawing, entitled "Proposal C," of a suggested modification of the East St. Louis plant.⁹ The memorandum does not expressly state that it is proposed that light mercaptans be added to a fouled treating solution containing heavy mercaptans before regeneration by oxidation, so that substantially all of the heavy mercaptans may be extracted while enough light mercaptans remain unoxidized to protect the catalyst from oxidation; but the diagram of "Proposal C" shows fouled treating solution from a vapor phase cracked gasoline, which would contain a predominant amount of light mercaptans, combined with the fouled treating solution from straight run gasoline, which would contain a predominant amount of heavy mercaptans, and regeneration together of the fouled treating solution from the two phases, the regenerated treating solution being thereafter divided and returned to the two phases for treatment of further gasoline....