Tennessee Valley Authority v. Monsanto Chemical Co.

• Decision Date: 19 July 1967
• Docket Number: No. 22668.,22668.
• Citation: 383 F.2d 973
• Parties: TENNESSEE VALLEY AUTHORITY, Appellant, v. MONSANTO CHEMICAL COMPANY, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

383 F.2d 973 (1967)

TENNESSEE VALLEY AUTHORITY, Appellant, v. MONSANTO CHEMICAL COMPANY, Appellee.

No. 22668.

United States Court of Appeals Fifth Circuit.

July 19, 1967.

COPYRIGHT MATERIAL OMITTED

Thomas A. Pedersen, Asst. Gen. Counsel, Charles J. McCarthy, Gen. Counsel, T. V. A., Lewis E. Wallace, Knoxville, Tenn., for appellant.

Charles A. Poellnitz, Florence, Ala., Ellsworth, H. Mosher, Washington, D. C., Richard W. Steinberg, St. Louis, Mo., for appellee.

Before GEWIN and GOLDBERG, Circuit Judges, and SPEARS, District Judge.

GEWIN, Circuit Judge:

At issue in this patent interference case is whether employee Driskell of the Tennessee Valley Authority (TVA) or employee Jones of the Monsanto Company (Monsanto)¹ first invented a certain chemical process. The United States District Court for the Northern District of Alabama awarded priority of invention to Monsanto, assignee of the Jones invention. TVA, assignee of the Driskell, invention perfected this appeal. We affirm.

Beginning in 1949, John C. Driskell, who headed a team of TVA research chemists working at TVA's National Fertilizer Development Center at Muscle Shoals, Alabama, conducted experiments on a process for producing nitrogen-phosphorus compounds for use as a fertilizer. On October 27, 1954, Otha C. Jones, an employee of Monsanto, filed application No. 465,201 with the Patent Office for a patent on a chemical process similar or identical to the process involved in the Driskell experiments. On January 7, 1955, while the application on the Jones patent was still pending, Driskell filed an application and was awarded patent No. 2,713,536 on the process and the product on July 19, 1955. On April 30, 1956, Jones filed application No. 581,665 for a patent which was in part a continuation of his prior application.² He also filed a request that an interference with the Driskell patent be established.

Accordingly, the United States Patent Office instituted an interference proceeding under the provisions of 35 U.S.C. § 135. Jones was accorded the benefit of his filing date of October 27, 1954, as constructive reduction to practice and consequently he was designated senior party in the interference proceedings. Therefore Driskell, as junior party, had the burden of proving by a preponderance of the evidence an earlier successful reduction to practice.³

The primary examiner found that an interference existed between that portion of the Driskell patent describing the chemical process and the Jones application. The interfering subject matter was set out in four counts. These counts in interference are:

"Count 5. The process which comprises the steps of drying air to a moisture content of less than about 0.0004 pound water per pound dry air; oxidizing elemental phosphorus with the dry air; cooling the products of combustion to a temperature of 450° to 950°F.; reacting the phosphorus pentoxide vapor in the cooled combustion product with anhydrous ammonia; and collecting the solid, finely divided product of said reaction. "Count 6. The process of claim Count 5 in which the proportion of ammonia reacted with phosphorus pentoxide is within the range of 2.1 to 2.7 moles NH3 per mole of P2O5.

"Count 7. The process of claim Count 5 wherein the products of combustion are cooled to a temperature in the range from 550° to 700°F. prior to reaction with anhydrous ammonia.

"Count 8. The process of claim Count 5 wherein the products of reaction are cooled to a temperature in the range from 550° to 700°F.; and the phosphorus pentoxide therein is reacted with from 2.1 to 2.7 moles of ammonia per mole of phosphorus pentoxide."

In proceedings before the Patent Office Board of Patent Interferences, only TVA presented testimony, Monsanto relying on its filing date of October 27, 1954, as constructive reduction to practice. The Board awarded priority of invention to Jones-Monsanto as to the process specifically defined in the aforementioned counts. The Board held that in order for Driskell-TVA, to be awarded priority he "must not only prove that the process was operated by him, or under his supervision, in conformity with the requirements of the counts but also establish the identity of the reaction product with reasonable certainty as well as the utility thereof." The Board concluded that "Driskell has failed to satisfactorily prove the identity of the product and its utility and so cannot prevail here." That decision was adhered to by the Board on reconsideration.

TVA then brought suit in the district court against Monsanto under 35 U.S.C. § 146, 28 U.S.C. §§ 1337, 1338 and 1345, and the court awarded priority to Monsanto. The court found from the testimony that TVA did not establish with the certainty and reasonableness the law requires that all the process steps as specifically defined in the counts of the interference were carried out by Driskell or those working with him. This decision was based on the court's finding that there was no evidence to show that the dryness of the air was measured or that the temperature of the product of combustion of phosphorus and air was determined prior to reaction with anhydrous ammonia. The Patent Office's decision that TVA did not establish the identity of the reaction product was found by the court to be controlling on the ground that the evidence was not of such character and amount as to carry the thorough conviction that such decision was in error, nor was the additional evidence presented to the court competent or sufficient to prove such identity. Consequently, the action was dismissed and TVA's motion for a new trial was overruled.

On appeal TVA contends that the district court erred in requiring proof of the identity or the composition of the reaction product. Also, it submits that the court used an erroneous standard of proof in reviewing the decision of the Board. Finally, TVA contends that the court's finding that there was "no evidence" that the steps of the process were carried out was clearly erroneous.⁴

I.

Driskell was issued a patent on a process for the production of nitrogen-phosphorus compounds. The steps of this process are described in the patent as follows:

"drying air to a moisture content of less than about 0.00008 pound water per pound of dry air; oxidizing elemental phosphorus with the dried air; cooling the products of combustion to a temperature of 450° to 950°F., preferably 550° to 700°F.; reacting the phosphorus pentoxide vapor in the cooled combustion gases with ammonia in a proportion of from 2.1 to 2.7 moles of NH3 to 1.0 mole of P2O5; and collecting the solid, finely divided product of said reaction."

The patent further states that the "product of this reaction is a new composition of matter consisting of an intimate mixture of ammonium metaphosphate, phosphoronitridic acid, and ammonium phosphoronitridate." The patent claims that this product, being high in nitrogen and phosphorus, is valuable as a fertilizer material. It is further claimed that the product is useful as an intermediate in the preparation of other nitrogen-phosphorus materials, such as water-softening compounds and fire retardants.

In order for Driskell to prove priority of invention he must prove that he reduced this process to practice before Jones' filing date of October 27, 1954. Even though the counts in interference, quoted earlier, are related primarily to the chemical process involved, not the product resulting from the process, the reaction product is an essential element in proving reduction to practice. Where the invention is a method for making a certain product, it is not reduced to practice until it is established that the steps of the process were actually performed and that such process has utility, namely, that the process produces that certain product and that such product is useful. Brenner v. Manson, 383 U.S. 519, 86 S. Ct. 1033, 16 L.Ed.2d 69 (1966); Alpert v. Slatin, 305 F.2d 891, 49 C.C.P.A. 1343 (1962); Allen, et al. v. Bertorelli, et al., 100 U.S.App.D.C. 329, 244 F.2d 777 (1957); Reiners v. Mehltretter, 236 F.2d 418, 43 C.C.P.A. 1019 (1956); Birmingham v. Randall, 171 F.2d 957, 36 C.C. P.A. 780 (1948); Schmutzer v. Ayers, 129 F.2d 703, 29 C.C.P.A. 1176 (1942). Consequently, Driskell must prove by a preponderance of the evidence that he carried out each step of the chemical process and that the process actually results in the production of the product described in the patent, nitrogen-phosphorus compounds (identity of the reaction product), and that such product is useful.⁵

Driskell emphatically contends that it is not necessary to establish the identity or composition of the reaction product. He submits that he is only required to prove that he carried out the process and that the resulting product is useful. He relies heavily on Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 48 S.Ct. 380, 72 L.Ed. 610 (1928), which involved a dispute over who first reduced to practice a certain process for the vulcanization of rubber. In Corona the court stated that "a process is reduced to practice when it is successfully performed. * * *" Such statement seems to indicate that in proving reduction to practice of a process it is not necessary to prove that the claimed product resulted from the process or that such product is useful. However, the opinion in Corona, taken in its entirety, clearly specifies that priority of invention was awarded on the court's finding that the specific process of vulcanization was carried out, that it produced high quality vulcanized rubber and that such product had been successfully tested. See Blicke v. Treves, 241 F.2d 718, 44 C.C.P.A. 753 (1957).

In further defense of his contention that proof of identity is unnecessary, Driskell submits that a determination of whether he has reduced the process to practice should be limited to the counts of interference. Since the counts do not specifically describe the product, Driskell argues that such is beyond the...