Velsicol Chemical Corp. v. Monsanto Co.

Decision Date30 June 1978
Docket NumberNo. 77-1032,77-1032
Parties, 3 Fed. R. Evid. Serv. 742 VELSICOL CHEMICAL CORPORATION, Plaintiff-Appellant, v. MONSANTO COMPANY, Defendant-Appellee.
CourtU.S. Court of Appeals — Seventh Circuit

Sidney Neuman and Donald A. Peterson, Chicago, Ill., for plaintiff-appellant.

C. Frederick Leydig, Chicago, Ill., Arnold H. Cole, St. Louis, Mo., for defendant-appellee.

Before PELL, BAUER and WOOD, Circuit Judges.

HARLINGTON WOOD, Jr., Circuit Judge.

This is an appeal from a decision of the district court upholding an order of the Board of Patent Interferences of the United States Patent and Trademark Office (the Board) awarding priority of invention to the Monsanto Company. Plaintiff-appellant Velsicol Chemical Corporation contends that the district court erred in failing to permit it to reopen the issue of Monsanto's "right to make" the count in question and in excluding certain evidence offered by Velsicol on the ground that the appellant had failed to produce the evidence in the proceeding before the Board. In addition, the appellant questions the scope of review undertaken by the district court and suggests that the court made a mistake of law concerning the evidentiary standard for determining whether there has been sufficient corroboration of an inventor's reduction to practice of his invention. We affirm.

Statement of Facts

Velsicol Chemical Corporation and the Monsanto Company each claim that its assignor (Krenzer and Stoffel, respectively) independently synthesized chemicals belonging to a new class of compounds 1 which were successfully tested as herbicides. The subject of the instant proceeding is not the patent for the new chemicals themselves, which was awarded in a separate proceeding, but rather a patent for a "method" of applying the compounds as herbicides. The filing date of the Monsanto (Stoffel) application containing the herbicide count was December 13, 1965. The effective filing date of the Velsicol (Krenzer) application containing the identical count was three months later March 18, 1966. 2 The Patent Office instituted an interference proceeding to determine who had priority on the herbicide count, Monsanto (Stoffel) being the senior party by virtue of its earlier filing date. 3

During the early stages of the interference, Velsicol (Krenzer) filed a motion to dissolve the proceeding on the ground that the patent application which Monsanto (Stoffel) had filed did not describe how to make the compounds used in the herbicidal process of the count, as is required by 35 U.S.C. § 112, and that, therefore, Monsanto did not have the "right to make" the count in the interference. Velsicol's motion was denied by the Primary Examiner. The parties then submitted evidence to the Board relating to the priority issue. On final hearing, the Board did not deal with the priority evidence, but instead reconsidered and granted the earlier motion to dissolve and awarded priority to Velsicol (Krenzer) in a decision dated September 20, 1972. Monsanto appealed the Board's decision to the United States Court of Customs and Patent Appeals (CCPA) pursuant to 35 U.S.C. § 141. In its decision of June 23, 1974, the CCPA accepted Monsanto's argument that one skilled in the art could produce the compounds in question without further disclosure or experimentation and reversed the Board. On remand, the Board considered the priority proofs previously submitted by the parties and in a decision dated October 24, 1974, held that neither party had proved a reduction to practice of the herbicide prior to their respective application dates. Consequently, priority of invention was awarded to the senior party Monsanto (Stoffel), solely on the basis of the application filing dates.

On December 20, 1974, Velsicol filed a civil action in the district court for review of the Board's decision pursuant to 35 U.S.C. § 146. In pretrial discovery, Velsicol learned of certain experimental failures experienced by Stoffel which Velsicol believed contradicted Monsanto's position before the CCPA that one skilled in the art could produce the compounds in question without further disclosure or experimentation, but which Monsanto had failed to reveal to the CCPA. On the basis of this information, Velsicol filed a petition on November 17, 1975, with the Commissioner of Patents and Trademarks seeking to strike Monsanto's application for fraud and inequitable conduct pursuant to Rule 56 of the Patent and Trademark Office. On November 21, 1975, Velsicol moved the district court to either stay the proceedings in the civil action pending the outcome of the petition in the Patent Office or to remand the entire case to the Patent Office. In a decision dated April 14, 1976, the district court denied Velsicol's motions and granted Monsanto's motion for an order precluding Velsicol from relitigating at trial the issue of Monsanto's "right to make" the herbicide count. The district judge also granted Monsanto's motion to preclude Velsicol from calling two new witnesses, on the ground that Velsicol had waived their testimony by not offering their depositions in the proceedings before the Board. On May 10, 1976, Velsicol moved for leave to file an amended complaint challenging Monsanto's "right to make," which motion was subsequently denied. The case was tried on June 30, 1976 and on November 1, 1976 the district court entered judgment for Monsanto affirming the decision of the Board. Velsicol now appeals that judgment pursuant to 28 U.S.C. § 1291.

On May 14, 1976, the Assistant Commissioner of Patents and Trademarks stayed consideration of Velsicol's petition to strike the Monsanto (Stoffel) application in order to allow Velsicol to bring the fraud allegations before the CCPA. This was accomplished on June 18, 1976, by means of a petition to recall the mandate in the prior patent appeal. The CCPA denied the petition in a 3 to 2 decision on March 10, 1977. The Patent and Trademark Office denied the motion to strike Monsanto's application on October 27, 1977.

The Scope of Review

Velsicol contends that the district court did not undertake the proper scope of review, suggesting that the court below erroneously failed to scrutinize the evidence in the Patent Office record. We do not agree. It is well established that the proper standard of review in a Section 146 action is that enunciated by the Supreme Court in Morgan v. Daniels, 153 U.S. 120, 124, 14 S.Ct. 772, 773, 38 L.Ed. 657 (1894):

Upon principle and authority, therefore, it must be laid down as a rule that, where the question decided in the patent office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, Unless the contrary is established by testimony which in character and amount carries thorough conviction. (emphasis added).

The "thorough conviction" determination is to be made on the basis of the entire record before the district court, including both the record that was before the Board and any additional evidence admitted by the court. Although a court may end up with a "thorough conviction" that the Board was mistaken even when there is no new evidence beyond the record before the Board, Cody v. Aktiebolaget Flymo, 146 U.S.App.D.C. 345, 350-351, 452 F.2d 1274, 1279-80 (1971), Cert. denied, 405 U.S. 990, 92 S.Ct. 1254, 31 L.Ed.2d 456, this court has recognized that "the less 'new' evidence there is before the district court, the more blatant the Board's factual errors must have been before the district court is justified in reversing the Board's award," Rex Chainbelt, Inc. v. Borg-Warner Corp., 477 F.2d 481, 487 (7th Cir. 1973). With this in mind, we find nothing in the district court's opinion that indicates that the court failed to undertake the proper scope of review. 4 On the whole, the opinion supports the conclusion that the court below gave full consideration to the evidence before the Board.

The Barnas and Berliner Testimony

In its April 14, 1976 order the district court granted Monsanto's motion to preclude Velsicol from presenting the testimony of two witnesses Dr. Barnas and Mr. Berliner whose testimony had not been produced in the proceeding before the Board. The court concluded that by failing to offer the two witnesses' testimony in the earlier proceeding, Velsicol had waived its right to do so in the § 146 action. Because of the requirements of the independent corroboration rule and the fact that Barnas and Berliner were the only potential eyewitnesses to Krenzer's experiments, the court's ruling was of great importance for Velsicol's case. In order to determine whether the ruling constituted an abuse of discretion, we must examine the proper standard for waiver in these circumstances, as well as the allocation of the burden of proof and the actual facts before the trial court.

A § 146 civil action is a hybrid proceeding combining elements of a De novo trial and an appellate review. 5 However, it appears that over the long history of this section and its predecessors the appellate character has increasingly gained in significance. The ancestor of § 146 was the bill in equity, Act of 1870, c. 230 § 52, 16 Stat. 205 (later R.S. § 4915). As the Supreme Court stated in Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 61, 5 S.Ct. 25, 30, 28 L.Ed. 656 (1884):

(A bill in equity proceeding is) a proceeding in a court of the United States having original equity jurisdiction under the patent laws, according to the ordinary course of equity practice and procedure. It is not a technical appeal from the patent office like that authorized in § 4911 (now § 141), confined to the case as made in the record of that office, but it is prepared and heard upon all competent evidence adduced, and upon the whole merits.

It appears that, in general, evidence not previously...

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    ...witnesses do not suffice since they are simply documents which he produced. Reese v. Hurst, supra at 1233; Velsicol Chemical Corp. v. Monsanto Co., 579 F.2d 1038, 1049 (7th Cir.1978); Mikus v. Wachtel, supra at 1162; Gortatowsky v. Anwar, 58 CCPA 1266, 442 F.2d 970, 972 (1977). Further, in ......
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