Appendix — Rohm & Haas Co. v. Crystal Chemical Co.
Supreme Court brief1984
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ey Supreme Court, U.S.
8 4 ia Zs tE D
JuL 5 1984
No.
At = STEVAS
IN THE cu
Supreme Court of the United States
OCTOBER TERM, 1983
ROHM AND HAAS COMPANY,
Petitioner,
v.
CRYSTAL CHEMICAL COMPANY and JOE C. ELLER,
Respondents.
APPENDIX TO
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
RuDOLF E. HuTz *
1220 Market Building
1220 Market Street
Wilmington, Delaware 19899
(302) 658-9141
Of Counsel: Counsel for Petitioner
JANUAR D. BOVE, JR. PHILIP W. TONE
JEFFREY B. BOVE JENNER & BLOCK
CONNOLLY, Bove, LODGE One IBM Plaza
& Hutz a Chicago, Illinois 60611
1220 Market Building G W.F.S
1220 Market Street ‘tuk Si cmmeeaeaied
Wilmington, Delaware 19899 Box 3377
E. BARRETT PRETTYMAN, JR. Lopez, Washington 98261
HOGAN & HARTSON Ww -
815 Connecticut Avenue, N.W. esc E. ooo oe Il
Washington, D.C. 20006 oo ee COMPANY
Philadelphia, Pennsylvania
* Counsel of Record 19105
ES EPI TT TERETE TTT IT SI I TE TTT TTT aE ED PITTS UE EA
WILSON - EPES PRINTING Co., INC. - 789-0096 - WASHINGTON, D.C. 20001
TABLE OF CONTENTS
APPENDIX A—District Court’s Findings of Fact and
Conclusions of Law ....................-..-----
APPENDIX B—Court of Appeals’ Decision ................
APPENDIX C—Court of Appeals’ Order Granting
Appellee’s Motion for Extension of
Time to File Its Petition for Re
hearing ..... cides
APPENDIX D—Court of Appeals’ Order Denying
Petition for Rehearing ........................
APPENDIX E—Court of Appeals’ Order Staying
Issuance of Mandate .........................-..
APPENDIX F—District Court’s Final Judgment ........
APPENDIX G—Court of Appeals’ Decision on At-
torney Fees and Costs ........................
APPENDIX H—Court of Appeals’ Order Further
Staying Issuance of Mandate ............
Page
la
224a
261la
262a
la
APPENDIX A
UNITED STATES DISTRICT COURT
S.D. TEXAS
HOUSTON DIVISION
C.A. No. 74-H-790
ROHM AND HAAS COMPANY
Vv.
DAWSON CHEMICAL COMPANY, INC., et al.
Jan. 5, 1983
Nunc Pro Tunc Order Jan. 5, 1983
Rudolf E. Hutz, Januar D. Bove, Jr., F.L. Peter Stone
and Jeffrey B. Bove, Connolly, Bove & Lodge, Wilming-
ton, Del., for plaintiff.
James C. Winters and David E. Arnold, Winters, Dea-
ton & Briggs, Houston, Tex., for plaintiff.
Ned L. Conley, Butler, Binion, Rice, Cook & Knapp,
Charles M. Cox, Pravel, Gambrell, Hewitt, Kirk & Kim-
ball, Houston, Tex., for defendants.
NUNC PRO TUNC ORDER
On October 27, 1982, this Court entered its Findings
of Fact and Conclusions of Law in the above-captioned
cause. It has come to the attention of the Court that
the Findings of Fact and Conclusions of Law entered
on October 27, 1982, contained several typographical and
non-substantive errors. Hence, to ensure the accuracy
2a
and completeness of the Findings of Fact and Conclu-
sions of Law of October 27, 1982, the Court hereby di-
rects that the attached corrected version of the Findings
of Fact and Conclusions of Law be entered. This Order
shall relate back to the time of entry of the Findings
of Fact and Conclusions of Law of October 27, 1982.
Pagel*!
Ii = I aitieie thet aamlalaaal 749 [4a]
RR RSET ONES 751 [8a]
A. Parties Involved in this Suit ....................... 751 [8a]
ye FREER eee serra RAS, 752 [9a]
B. Discovery of the Invention .......................... 753 [lla]
C. History of Patent in Suit -...................2....... 759 [25a]
1. Rohm and Haas’ 1958 Application ....... 759 [25a]
2. Rohm and Haas’ 1960 Application _..... 765 [37a]
3. Rohm and Haas’ 1961 Application ........ 767 [43a]
4. Interference Proceeding .............0........... 769 [48a]
5. Litigation Between Monsanto and Rohm
RE Accitesiihccesadedbaiipiatcbtbennnndessbilbtonnnts 773 [57a]
6. Renewed Prosecution of 1961 Applica-
ORR FAN ORy ea omnerER «Sa aOR OTE: 774 [58a]
D. Construction of Patent Claims ..................... 783 [78a]
Te ee el eal 785 [82a]
F. Defendants’ Propanil Activities —................ 788 [90a]
G. Defendants’ Affirmative Defenses _............. 790 [93a]
H. Antitrust Counterclaims -........................... 793 [99a]
i SRE e Teor rN 793 [99a]
TABLE OF CONTENTS
2. Bayer-Rohm and Haas Agreements ...... 793 [101a]
3. Rohm and Haas Marketing and Pricing
INE scabbekcisadctlebdiccsiecnsnististgnbncdubmnsadaminanandias 794 [103a]
(*] The first page number refers to the page as listed in the
reported decision. The page number in brackets refers to the
page in this Appendix where the item appears.
3a
TABLE OF CONTENTS-—Continued
Page
TER, Copeman OE RA si vicncesicctinneineteeeseesntiemnintcn 799 [113a]
A. Jurisdiction and Venue ........................---------- 799 [1138a]
B. Validity of Patent in Suit -......................... 799 [114a]
C. Fraud on the Patent Office ........................... 810 [135a]
0 EL Oe meen eee 811 [138a]
E. Should the Supreme Court’s Decision Be
Applied Only Prospectively? ....................- 815 [148a]
F. Personal Liability of Joe Eller ..................... 818 [153a]
G. Laches and Estoppel -..........................-.....- 819 [156a]
H. Antitrust Counterclaims ...........................-.-- 823 [165a]
1. Statute of Limitations ............................. 823 [1654]
2. Defendants’ Standing to Assert Their
Antitrust Counterclaims .....................-.- 827 [172a]
3. The Bayer-Rohm and Haas Agreements
Subject Matter Jurisdiction .................... 830 [179a]
4. Act of State Doctrine ............................. 831 [182a]
5. Defendants’ Section 1 Counterclaims....833 [185a]
6. Defendants’ Monopolization Counter-
NIE, issisentdcicdoristhtenhdntianndinnante 837 [193a]
7. Defendants’ Section 14 Counterclaims..845 [21la]
I. Injunctive and Legal Relief, Attorney’s
US ARES RE et ARDS IT MEA Soe STU 845 [212a]
i ee ae 850 [222a]
Ty , CI iii cccinieebetnclid taste 850 [223a]
FINDINGS OF FACT AND
CONCLUSIONS OF LAW
CARL O. BUE, Jr., District Judge.
A brief recapitulation of the procedural history of
this litigation may be helpful in placing the multitudi-
nous and complex issues under consideration into proper
perspective.
4a
I. Introduction
On the day of the issuance of United States Patent
3,816,092, June 11, 1974, plaintiff Rohm and Haas Com-
pany (hereinafter Rohm and Haas), commenced this ac-
tion against the Helena Chemical Company (unless in-
dicated otherwise, hereinafter Helena), Crystal Chem-
ical Company, Dawson Chemical Company, and Crystal
Manufacturing Corporation (unless indicated otherwise,
hereinafter Crystal), alleging that defendants contribu-
torily infringed and actively induced others to infringe
United States Patent 3,816,092.
The defendants filed answers denying infringement
and contending also that Rohm and Haas’ patent was
invalid and unenforceable. Defendants Crystal and
Helena filed also a counterclaim alleging that Rohm and
Haas had violated various sections of the antitrust laws.
Specifically, détendants alleged that Rohm and Haas had
violated sections 1, 2 of the Sherman Act, and section
3 of the Clayton Act, 15 U.S.C. §§$1, 2, 14 (1973 &
Supp. 1982). In addition, Helena counterelaimed for
a declaratory judgment that plaintiff’s patent was in-
valid, unenforceable and not infringed.’
Shortly, after the commencement of this cause, the
defendants took the position that the Rohm and Haas
patent was unenforceable as a result of Rohm and Haas’
alleged misuse of its patent. Subsequently, the parties
entered into a stipulation of facts which was filed in
this cause on October 31, 1974, see Plaintiff’s Exhibit
21, and thereafter filed cross-motions for partial sum-
mary judgment seeking to resolve the threshold issue of
patent misuse.
On August 10, 1976, this Court entered its Memo-
randum and Opinion granting defendants’ motions for
partial summary judgment “only insofar as they seek
1In its Third Amended Answer filed on December 22, 1980,
Helens withdrew both of these counterclaims.
5a
adjudication of the legality of plaintiff’s monopolization
of the sale of propanil, but [denying defendants’ mo-
tions] to the extent that they seek dismissal of plain-
tiffs complaint.” See Rohm and Haas Co. v. Dawson
Chemical Co., Inc., 191 U.S.P.Q. 691, 695 (S.D. Tex.
1976). Shortly thereafter, defendants moved the Court
to reconsider its decision not to dismiss Rohm and Haas’
complaint. On November 23, 1976, the Court granted
defendants’ motions and dismissed this cause “without
prejudice to plaintiff’s right to re-file upon sufficient
showing that it has purged its misuse.”
Thereafter, Rohm and Haas appealed the various rul-
ings of this Court and on July 30, 1979, the United
States Court of Appeals for the Fifth Circuit reversed
this Court’s decision and remanded this case to this
Court for further proceedings. See Rohm and Haas Co.
v. Dawson Chemical Co., 599 F.2d 685 (5th Cir. 1979).
On June 27, 1980, the United States Supreme Court
affirmed the Fifth Circuit’s decision. See Dawson Chem-
ical Co. v. Rohm and Haas Co., 448 U.S. 176, 100 8.Ct.
2601, 65 L.Ed.2d 696 (1980).
On September 18, 1980, Rohm and Haas filed suit
against Vertac Chemical Company (hereinafter Vertac)
in the United States District Court for the District of
Delaware alleging that Vertac contributorily infringed
and actively induced others to infringe United States
Patent 3,816,092. Plaintiff’s Exhibit 26.
On November 3, 1980, Rohm and Haas was permitted
to amend its complaint in the case sub judice to add
Joe C. Eller (hereinafter Eller) and Wilton W. Varde-
man (hereinafter Vardeman) as individual party de
fendants. Rohm and Haas alleged that Eller and Varde-
man were contributorily infringing and actively induc-
ing others to infringe its patent. Additionally, in its
amended complaint Rohm and Haas particularlized its
claim for damages. Plaintiff’s Exhibit 22. In addition to
filing an answer denying the claims asserted against
6a
them, Eller and Vardeman filed counterclaims alleging
that Rohm and Haas had violated Sections 1, 2 of the
Sherman Act, and section 3 of the Clayton Act, 15
U.S.C. §§ 1, 2, 14 (1973 & Supp. 1982). Plaintiff’s Ex-
hibit 22.
While the Delaware action against Vertac was pend-
ing, Helena filed a third-party complaint against Vertac
in the instant cause. Subsequently, on February 10, 1981,
Rohm and Haas filed a complaint against Vertac rais-
ing essentially the same allegations it had advanced in
the Delaware action. Plaintiff’s Exhibit 22. Vertae then
filed its answer and asserted counterclaims and defenses
similar to those asserted by Crystal.
On November 12, 1980, plaintiff filed a separate suit
in this Court against American Rice Growers Exchange
(hereinafter ARGE), alleging that ARGE contributorily
infringed and actively induced infringement of its patent.
ARGE thereafter filed its answer and also advanced
counterclaims asserting violations of various sections of
the Sherman Act. Plaintiff's Exhibit 22. On January
14, 1981, this Court, at the request of all parties to this
cause, consolidated the instant case with the separately
filed suit against ARGE for both -discovery and trial
pursuant to Rule 42(a), Fed.R.Civ.P.
On September 1, 1981 the parties filed and this Court
approved a stipulation wherein all claims brought by
Rohm and Haas against Vardeman were dismissed with
prejudice. Pursuant also to the stipulation, Vardeman’s
counterclaims against Rohm and Haas were dismissed
with prejudice.
On September 24, 1981, Crystal filed a Voluntary
Petition in Bankruptcy under Chapter 7, Title 11 of
the United States Code, 11 U.S.C. § 701 et seg. (1979),
and at the time of trial the bankruptcy action was
still pending before the United States Bankruptey Court
for the Southern District of Texas, Houston Division.
Ta
Pursuant to an Order entered by the Bankruptcy Court,
the automatic stay provision of 11 U.S.C. § 362 (1979)
was modified to permit Crystal to participate in this
case.
Shortly before the commencement of the trial of the
case sub judice, Rohm and Haas and Helena entered
into a settlement agreement thereby resolving their dif-
ferences with respect to the patent in suit. In partial
consideration for the settlement of the suit against it,
Helena agreed to this Court’s entry of a consent decree
and injunction. Plaintiff’s Exhibit 135; Defendant’s Ex-
hibit 298. Subsequently, during the trial of this cause,
Rohm and Haas and Vertac settled all of the issues out-
standing between them, Plaintiff’s Exhibit 143, and the
suit with respect to Vertac was dismissed on December
8, 1981. In an Order entered by the Court pursuant to
the consent of Helena and Vertac, Helena’s third party
action against Vertac was also dismissed.
The cause was tried to the Court sitting without a
jury from November 2, 1981 to January 7, 1982.? Sub-
sequently, on April 2, and April 6-8, 1982, the record
was reopened to permit the introduction of additional
evidence. At the conclusion of the evidence, the Court
requested additional briefing by the parties and took the
2 Prior to the commencement of the trial of this cause in No-
vember, 1981, all of the parties filed motions to dismiss and motions
for summary judgment. Subsequently, the Court held a conference
in chambers with counsel for all parties in attendance. The con-
ference was held for the purpose of affording counsel an opportunity
to present oral argument on the various motions pending before
the Court. Because of the complexity of the factual and legal issues
raised by the motions,, the Court informed the parties after the
presentation of their oral arguments that it would defer ruling on
the dispositive motions, and would instead carry the motions with
the case. The Findings of Fact and Conclusions of Law of this
Court set forth above address the issues raised by these motions
as such issues affect the merits of the case. Of course, those mo-
tions which the Court took under consideration were filed by parties
who have since been dismissed from this case are denied as moct.
8a
case under advisement. Pursuant to Rule 52(a), Fed.R.
Civ.P., the Court hereby enters its Findings of Fact and
Conclusions of Law detailing the reasons for its con-
clusion that United States Patent 3,816,092 is valid, en-
forceable and was infringed by defendants Crystal, Eller
and ARGE, and that as a consequence thereof Rohm and
Haas is entitled to an accounting as well as injunctive
and monetary relief. The following Findings of Fact
and Conclusions of Law reflect also the Court’s decisions
that defendants have failed to sustain their burden of
proving that Rohm and Haas violated sections 1, 2 of the
Sherman Act, and section 3 of the Clayton Act, 15 U.S.C.
§§1, 2, 14 (1973 & Supp. 1982), and that as a conse-
quence thereof Rohm and Haas should prevail.
II. Findings of Fact
A. The Parties Involved in this Suit
1. Plaintiff Rohm and Haas Company is a Delaware
corporation with its principal place of business in Phila-
delphia, Pennsylvania. Admission of Fact.
2. Defendant Crystal Chemical Company is a Texas
corporation with its principal place of business in Hous-
ton, Harris County, Texas. Admission of Fact.
3. Defendants Dawson Chemical Company and Crystal
Manufacturing Corporation were at one time corpora-
tions organized and existing under the laws of the State
of Texas. Dawson Chemical Company and Crystal Man-
ufacturing Corporation were subsidiaries of Crystal
Chemical Company, Inc. In 1977, Crystal Chemical Com-
pany, Inc. was merged into Crystal Manufacturing Cor-
poration, and the name of the surviving corporation was
then changed to Crystal Chemical Company. Since the
commencement of this cause, neither Dawson Chemical
Company nor Crystal Manufacturing Corporation has
been active in the manufacture, sale or use of propanil.
The labels under which the allegedly infringing product
9a
is sold by Crystal Chemical Company, however, are reg-
istered in the name of Dawson Chemical Company. Ad-
mission of Fact; Testimony of Joe Eller; Plaintiff’s Ex-
hibits 17, 22.
4. Defendant Joe Eller is a resident of Houston,
Harris County, Texas. Since 1974 Eller has been the
Chairman of the Board and Chief Executive Officer of
Crystal Chemical Company, Dawson Chemical Company
and Crystal Manufacturing Company. Admission of
Fact; Testimony of Joe Eller; Plaintiff’s Exhibits 22,
73-75.
5. Defendant American Rice Growers Exchange is a
Louisiana corporation authorized to do business in the
State of Texas. Admission of Fact; Testimony of Barry
Jeffrey; Plaintiff’s Exhibits 17, 22; Defendants’ Exhibits
187, 188.
The Patent in Suit
6. United States Patent 3,816,092 (unless indicated
otherwise, hereinafter Wilson patent), issued on June 11,
1974 naming Drs. Harold F. Wilson and Dougal H.
McRae as the inventors. The patent was and is assigned
to Rohm and Haas, and Rohm and Haas has been the
sole owner of all rights, title and interest in the Wilson
patent since its issuance. Admission of Fact; Plaintiff’s
Exhibit 1. The Wilson patent issued from application
Serial Number 96,089 filed with the United States Patent
and Trademark Office on March 16, 1961. The 96,089
application was a division of Serial Number 31,253 filed
May 24, 1960 which in turn was a continuation-in-part
of Serial Number 714,947 filed February 13, 1958.
Plaintiff’s Exhibits 1-4. The claims of United States
Patent 3,816,092 are as follows:
1. A method for selectively inhibiting growth of un-
desirable plants in an area containing growing un-
desirable plants in an established crop, which com-
prises applying to said area 3,4-dichloropropionani-
10a
lide at a rate of application which inhibits growth
of said undesirable plants and which does not ad-
versely affect the growth of said established crop.
2. The method according to claim 1 wherein the
3,4-dichloropropionanilide is applied in a composition
comprising 3,4-dichloropropionanilide and an inert
diluent therefor at a rate of between 0.5 and 6
pounds of 3,4-dichloropropionanilide per acre.
3. The method according to claim 1 wherein most
of the undesirable plants are destroyed by the 3-4-
dichlorepropionanilide applied thereto without sub-
stantial adverse effect on the crop growing there-
with.
4, The method according to claim 1 wherein the es-
tablished crop is tomatoes.
5. The method according to claim 1 wherein the es-
tablished crop is potatoes.
6. The method according to claim 2 wherein the es-
tablished crop is monocotyledonous.
7. The method according to claim 2 wherein the es-
tablished crop is dicotyledonous.
8. The method according to claim 2 wherein the un-
desirable plants include monocotyledonous plants.
9. The method according to claim 2 wherein the un-
desirable plants include dicotyledonous plants.
10. The method according to claim 2 wherein the
established crop is a grain crop.
11. The method according to claim 2 wherein the
undesirable plants include barnyardgrass.
12. A method for selectively inhibiting the growth
of growing, tender, undesirable, annual plants which
are susceptible to 3,4-dichloropropionanilide, said
undesirable plants growing in an area containing an
lla
established monocotyledonous crop which is resistant
to 3,4-dichloropropionanilide, which comprises ap-
plying to said undesirable plants a composition com-
prising 3,4-dichloropropionanilide and an inert car-
rier therefor at a rate of application which inhibits
growth of said undesirable plants and which does
not substantially affect the growth of said estab-
lished monocotyledonous crop.
Plaintiff’s Exhibit 1.
B. The Discovery of the Invention
7. Dr. Dougal H. McRae came to work at Rohm and
Haas in September, 1953 for the purpose of establishing
and developing a herbicide program. Prior to his ar-
rival, Rohm and Haas did not have a herbicide program.
Rather, Rohm and Haas had programs specializing in
insecticides, fungicides, and industrial biocides. Testi-
mony of Dougal McRae.
8. By early 1955, Dr. Harold F. Wilson, formerly a
synthesis chemist in Rohm and Haas’ insecticide pro-
gram, became directly responsible for the synthesis of
compounds to be tested in a herbicidal screening pro-
gram under the direction of McRae. Wilson supervised
the preparation of the chemical compounds for use in
the program. Testimony of Dougal McRae; Plaintiff’s
Exhibit 141 (Deposition Testimony of Harold Wilson).
Compounds that were found to have a sufficient herbi-
cidal effect in the greenhouse were then selected and
field tested by McRae to see if such compounds also
exhibited selective herb idal properties. Testimony of
Dougal McRae; Plaintiff’s Exhibit 141 (Deposition Tes-
timony cf Harold Wilson). From the beginning of the
herbicide program, primary emphasis was placed on
selective, post-emergence herbicidal activity, in particu-
lar to the control of monocot weeds. Testimony of Dougal
McRae; Plaintiff’s Exhibit 127.
12a
9. During the initial stages of the development of
Rohm and Haas’ herbicide research program, dichloro-
phenoxyacetic acids were becoming established as being
very effective herbicides against broadleaf plants. Tes-
timony of Dougal McRae. Rohm and Haas’ research
policy at that time was to work from a lead compound,
and prepare the homoiogs, isomers and analogs of the
lead compound and check their activity. Testimony of
Dougal McRae.
10. In 1955, it was Rohm and Haas’ practice to send
certain chemical compounds which it had made to the
United States Chemical Biological Coordination Center
(hereinafter CBCC). Apparently, the compounds were
then tested and evaluated in a plant growth regulatory
program conducted by CBCC. Testimony of Dougal
McRae.
11. In 1955, Dr. McRae received a report from the
CBCC containing the results of plant growth regulatory
tests and evaluations conducted on 633 compounds in-
cluding three amides, one of which was cyclohexylmetha-
crylamide. The report contained also test results which
suggested to McRae and Wilson that certain chloroanil-
ides might be a likely area for herbicidal investigation.
Testimony of Dougal McRae; Plaintiff’s Exhibit 127;
Defendants’ Exhibits 11, 14, 322.
12. McRae and Wilson decided to include in their
herbicide screening program a series of compounds re-
lated to the compounds suggested in the CBCC report
in the hope that such compounds would display herbi-
cidal activity. Two compounds, 4-chioromethacryanilide
and 3,4-dichloromethacrylanilide, were tested and found
to have good herbicidal activity, and further work showed
that saturated chloroanilides also displayed activity.
Testimony of Dougal McRae; Plaintiff’s Exhibits 127,
141 (Deposition Testimony of Harold Wilson) ; Defend-
ants’ Exhibits 11, 14.
13a
13. 3,4-dichloropropionanilide (hereinafter propanil)
was first made in approximately February, 1957 and
the chemical was assigned the code-name FW-734. Tes-
timony of Dougal McRae; Plaintiff’s Exhibits 127, 128;
Defendants’ Exhibits 11, 14. McRae first tested propanil
as a herbicide in the greenhouse in February and March,
1957. The greenhouse tests showed propanil to have high
post-emergence herbicidal activity as opposed to insignifi-
cant or negligible pre-emergence activity. Testimony of
Dougal McRae; Plaintiff’s Exhibits 127, 128; Defend-
ants’ Exhibits 11, 14.
14. On April 3, 1957, Wilson and McRae atiended a
meeting with Drs. Lyon and Craig, two senior employees
of Rohm and Haas. At this meeting, Wilson and McRae
discussed propanil and its herbicidal activity, and as a
result of initial testing on monocots and dicots in which
propanil exhibited the highest level of activity of those
compounds tested, it was decided to prepare a substan-
tial quantity of propanil along with three other chloro-
anilides, specifically, 4 chloromethacrylanilide, propionan-
lide, and 4 dichloropropionanilide. These compounds
would then be field tested by post-emergence applications
at Rohm and Haas’ field test farm in Newtown, Penn-
sylvania. Testimony of Dougal McRae; Plaintiff’s Ex-
hibits 127, 141 (Deposition Testimony of Harold Wil-
son) ; Defendants’ Exhibit 1.
15. On April 4, 1957, Wilson prepared a report sum-
marizing the events which occurred at the April 3, 1957
meeting. The report records the inventors’ decision to
make substantial quantities of propanil and to field test
it in post-emergence applications at Rohm and Haas’
field test farm. This report sets forth the inventors’
concept that propanil might be more selective than dini-
trophenol compounds. Testimony of Dougal McRae;
Plaintiff’s Exhibits 127, 141 (Deposition Testimony of
14a
Harold Wilson); Defendants’ Exhibit 1. See also De-
fendants’ Exhibit 5.
16. The tests were proposed to begin in the summer
of 1957. Included within those tests that were to be
conducted were post-emergence tests on corn and beans
at the come-up stage* and a test on cotton and corn at
the lay-by stage.* Testimony of Dougal McRae; Plain-
tiff’s Exhibits 127, 129; Defendants’ Exhibit 1. The in-
ventors did not intend at the April 3, 1957 meeting to
limit propanil’s evaluation to just these tests, nor does
the contemporaneously prepared report reflect such an
intent. Testimony of Dougal McRae; Plaintiff’s Exhibit
127; Defendants’ Exhibit 1.
17. Pursuant to the April 3 decision to field test
propanil, significant quantities of propanil and the other
compounds mentioned previously were prepared during
April and the early part of May. Crops for the initial
test were planted on May 8th and treated with propanil
on May 29, 1957. Thereafter, McRae conducted addi-
tional tests of propanil on other crops, including tests
on tomatoes and potatoes. All of these tests were carried
out pursuant to the conception of propanil’s selective,
post-emergence herbicidal activity on April 3, 1957 as
embodied in the memorandum prepared by Wilson on
April 4, 1957. Testimony of Dougal McRae; Plaintiff’s
Exhibits 11, 127, 129. Defendants’ Exhibit 1.
18. Although the initial tests on corn and beans did not
confirm propanil’s selectivity, McRae continued to con-
3 The term “‘come-up” was at one time commonly used to describe
an early stage of growth when the plant was emerged from the
ground. Testimony of Dougal McRae.
4The term “lay by” was at one time commonly used to describe
that stage of growth at which a crop could no longer be cultivated
by machinery without damaging the crop. Testimony of Dougal
McRae. Plants at the “lay by” stage are in an advanced stage of
growth. Testimony of Rupert Palmer.
—~
15a
duct field tests of propanil and the other compounds
throughout the Summer of 1957. Testimony of Dougal
McRae. By the fall of 1957, McRae had applied propanil
to such crops as corn, beans, cotton, tomatoes, potatoes,
clover, strawberies, turf grasses and in orchards. These
tests showed that propanil was highly active against a
wide variety of weeds while at the same time tomatoes,
potatoes, strawberries, turf grasses, clover, corn, cotton
and the plants in these orchards tested were tolerant to
propanil applied at weed killing rates. Testimony of
Dougal McRae; Plaintiff’s Exhibits 4, 11, 12D, 12N, 53-
55, 121, 127; Defendants’ Exhibits 2, 11, 14. See also
Defendants’ Exhibit 330.
19. The results of these tests revealed that the anilides
tested did not exhibit satisfactory pre-emergence herbi-
cidal activity. The results revealed further that propanil
was the most phytotoxic of the anilides tested through
post-emergent applications and exhibited good herbicidal
activity against both dicots and monocot weed species
at low rates of application. Propanil was found also to
have the most effective control when applied to weeds in
the seedling stage, although it was effective also on more
mature weeds. Specifically, McRae discovered that pro-
panil was phytotoxic to annual monocots and dicots such
as crabgrass, foxtail, millet, red root, tumbling pigweeds,
lamb’s quarter, purslane, ragweed, smartweed, plantain,
chickweed, and scarlet pimpernel, but did not exhibit her-
bicidal activity against perennial monocots in the tests
which were conducted. McRae suggested that further
studies be conducted in order to draw a more informed
conclusion. MacRae recommended further that tests on
biennial or perennial dicots be run. Testimony of Dougal
McRae; Defendants’ Exhibit 5.
As to the effect of propanil when applied to crops,
McRae found:
16. Tomato plants were injured fairly severely by
FW-734 at an application rate of 4 lb./A. Injury
was not serious at 2 lb./A. and results obtained in-
16a
dicated that tomatoes might be tolerant to FW-734
at rates below 2 lb./A. In any event, further work
should be carried out on tomatoes since it is a crop
in which directed sprays can be applied between the
plant rows, thereby minimizing the danger of ex-
cessive foliar contact and consequent injury.
17. Corn and snap beans in the seedling stage were
severely injured by FW-734.
18. Well established field corn and cotton were
tolerant to sprays of FW-734 directed toward the
base of the plants. Present evidence indicates that
most well established crops should be quite tolerant
to FW-734. Consequently, FW-734 should be tested
in situations where crops have reached a relatively
large size but weeds are small. For example, if
crops have been kept weed-free from time of plant-
ing for a month or two by cultivation or through
use of pre-emergence herbicides, there is a high
probability that many crops would be tolerant to
FW-734. The important point to remember is that
FW-734 should not be applied until after new weeds
have germinated.
19. Strawberry plants treated after the fruiting
season were tolerant to FW-734. An application
rate of 6 lbs./A. caused slight foliar burn but lower
rates did not produce visible injury.
20. The limited available evidence indicates that
most, if not all dormant crops should be tolerant to
FW-734. Consequently, the compound should be
tested for control of winter annual weeds (e.g.
chickweed) in crops such as alfalfa during the
dormant season of the crop.
Defendants’ Exhibit 5. See also Testimony of Dougal
McRae.
20. These outstanding results obtained during the
summer of 1957 led Wilson and McRae to request on
17a
October 25, 1957, the preparation of a patent claiming
propanil and 3,4 dichloroisobutyranilide as new com-
pounds, based upon their activity as herbicides. Plain-
tiff’s Exhibit 127; Defendants’ Exhibit 3. On December
10, 1957, Wilson forwarded to Rohm and Haas’ patent
department a memo containing additional weed control
data on the two aforementioned compounds and other
closely related compounds. Plaintiff’s Exhibit 127; De-
fendants’ Exhibit 4. Rohm and Haas’ patent depart-
ment then prepared a patent application which was
filed in February, 1958. This application claimed not
only the two compounds suggested by Wilson but also
3,4 dichloro-a-methylvaleranilide. Testimony of Dougal
McRae; Plaintiff’s Exhibit 4.
21. Shortly after the 1957 herbicide field tests were
completed, the inventors recognized that propanil ex-
hibited considerable potential as a post-emergence herbi-
cide, and decisions relating to future work were made.
Propanil was rapidly advanced to the development stage
and large quantities of propanil were made for testing
in the States of California and Florida during the Fall
and Winter of 1957. Testimony of Dougal McRae. Ad-
ditionally, McRae conducted further tests in the green-
house in the latter part of 1957 and early part of 1958.
As the result of these tests, McRae obtained evidence of
the post-emergence selectivity of propanil in wheat. Tes-
timony of Dougal McRae; Plaintiff’s Exhibit 127, 128.
See also Plaintiff’s Exhibit 122.
22. After the completion of the summer field tests,
McRae suggested in the fall of 1957 that propanil be
advanced to the developmental stage. Testimony of
Dougal McRae; Plaintiff’s Exhibit 127; Defendants’
Exhibit 2.
23. In 1957 and 1958, it was standard practice for
Rohm and Haas to send to experimentors in the United
States and abroad chemicals which Rohm and Haas’ own
work had shown to have promise as useful, commercial
18a
chemicals. Agricultural chemicals were usually sent out
with a statement as to their intended utility, and it was
only after Rohm and Haas itself had established a utility
that a compound was sent out. | ohm and Haas followed
the practice of providing recipients of its chemical sam-
ples with whatever technical bulletins or other pertinent
information it had at the time. As part of this proce-
dure, agricultural chemical compounds were tested in
foreign countries, including Japan, Canada, France and
England, to ascertain the effect of differences in local
crops, climates and practices. This practice was com-
mon in the industry and allowed rapid development of
valuable information of the chemical’s properties under
local climates, soils and cultural practices as well as on
local crops and weeds. Testimony of Dougal McRae;
Testimony of Ruppert Palmer; Plaintiff’s Exhibits 19,
120, 127.
24. In late 1957 or early 1958, McRae was informed
that propanil was being sent to Rohm and Haas’ repre-
sentative in Japan for further testing. Testimony of
Dougal McRae.
25. In the late 1950’s, Sanyo Trading Company (here-
inafter Sanyo) was an independent sales agency. During
that time, Sanyo was also Rohm and Haas’ agent in
Japan. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252.
Prior te 1958, Rohm and Haas had sent a sample of one
of its chemical compounds, such compound had been
code named FW-450, to Sanyo for evaluation as a herbi-
cide. Plaintiff’s Exhibit 19. Sanyo then forwarded the
sample to Dr. Tetsuo Takematsu for testing. These
tests included evaluation of the compound as a herbicide
for weed control in rice crops, a major economic crop in
Japan. Testimony of Ruppert Palmer; Plaintiff’s Ex-
hibit 19; Defendants’ Exhibit 252. Takematsu’s results
pertaining to FW-450 were reported to Sanyo which in
turn reported the results to Rohm and Haas. Plaintiff's
Exhibit 19; Defendants’ Exhibit 252.
19a
26. In a letter dated March 31, 1958, Rohm and Haas
informed Sanyo that it would soon forward an experi-
mental herbicide known as FW-734 for Sanyo’s evalua-
tion. The letter stated that FW-734 appeared very in-
teresting as a post-emergent herbicide on monocot and
dicot weed species, and was highly effective at relatively
low application rates. The letter stated further that
technical information would be provided along with the
compound. Plaintiff’s Exhibit 19; Defendants’ Exhibit
252.
27. On April 28, 1958, Rohm and Haas sent Sanyo
25 gallons of FW-734, or propanil. In a letter inform-
ing Sanyo of the shipment, Rohm and Haas stressed its
desire to have the herbicide thoroughly tested in Japan
during the summer of 1958. Enclosed in the letter was
a summary of the technical information on propanil re-
ferred to in Rohm and Haas’ letter of March 31, 1958.
Plaintiff’s Exhibit 19; Defendants’ Exhibit 252.
28. Any thorough testing of a herbicide in Japan
would necessarily include testing on rice as Takematsu
had done with FW-450. Testimony of Ruppert Palmer;
Testimony of Ford Baldwin; Plaintiff’s Exhibit 19; De-
fendants’ Exhibit 252.
29. On May 22, 1958, Sanyo acknowledged receipt of
the 25 gallon sample of propanil furnished by Rohm and
Haas. Sanyo advised Rohm and Haas that arrangements
were being made to conduct experimental testing of pro-
panil in cooperation with research members of agricul-
tural field laboratories and universities, and that Tak-
ematsu, a Professor at Utsunomiya University, had
alread begun the evaluation of the compound provided by
Rohm and Haas. Plaintiff’s Exhibit 19; Defendants’ Ex-
hibits 195, 252. Sanyo informed Rohm and Haas also
that the following experiments would be conducted on
propanil during the summer: (1) effect for soil treat-
ment; (2) killing action of young weeds in the field; (3)
killing action of weeds in paddy-fields; (4) decomposition
20a
and translocation in soil; and (5) phytotoxicity against
crops. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252.
Sanyo solicited further suggestions and available experi-
mental data from Rohm and Haas and stated that the re-
sults of the experimental testing on propanil would be
forwarded immediately to Rohm and Haas. Plaintiff’s
Exhibit 19; Defendants’ Exhibits 195, 252.
30. In addition to providing Takematsu with a sample
of propanil, Sanyo had provided Takematsu with a Rohm
and Haas technical bulletin entitled “Herbicide FW-734
(3,4 Dichloropropionanilide)”. This bulletin advised that
propanil had been evaluated by Rohm and Haas under
field conditions during the Summer of 1957, and that
propanil displayed good herbicidal activity against both
dicot and monocot weeds at low rates of application. Spe-
cifically, the technical bulletin reported the following with
respect to propanil’s effect on various weed species:
FW-734 did not exhibit herbicidal activity against
perennial monocots in the limited tests carried out.
Available evidence indicates that FW-734 does not
translocate downward readily in monocots. However,
further studies are required to clarify this point.
FW-734 was effective against many annual dicot weed
species. However, a certain degree of tolerance was
exhibited in certain dicots which indicates a possi-
bility of selectivity among these species.
Little information was obtained with respect to the
activity of FW-734 against bi-annual or perennial
dicots.
FW-734 was most effective when applied to weeds in
the seedling stage, although its activity was quite
evident on more mature weeds. As with most herbi-
cides, the most efficient control was obtained when
FW-734 was applied to weeds in the early stages of
growth.
2la
FW-734 as a post-emergence herbicide, effectively
controlled all annual and dicot weeds present in
herbicide plots. The weeds controlled were:
Crab grass Purslane
Fox tail Ragweed
Millet Smartweed
Redroot Plantain
Tumbling pigs weed Chickweed
Lamb’s quarter Scarlet pimpernel
Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. The tech-
nical bulletin stated also that the most marked evidence
for selectivity was obtained in potatoes, while injury to
tomatoes was not serious at two pounds per acre. Field
corn, cotton and strawberry plants were also said to be
tolerant to propanil. Plaintiff’s Exhibit 19; Defendants’
Exhibit 252.
31. Rohm and Haas, through Sanyo, paid Takematsu
40,000 Japanese yen, approximately $120.00, on July 4,
1958 for tests he conducted on propanil and a product
called VAPAM. Plaintiff’s Exhibit 19; Defendants’ Ex-
hibit 252. The amount paid Takematsu by Rohm and
Haas was reasonable at the time for the type of testing
that Takematsu had performed. Testimony of Ruppert
Palmer.
32. On or about July 3, 1958, a preliminary report of
Takematsu’s work was forwarded to Rohm and Haas by
Sanyo. Takematsu’s experiments revealed that propanil
caused no injury against dry-land rice when applied in
post-emergent treatments. Plaintiff’s Exhibit 19; Defend-
ants’ Exhibits 292, 323. See also Defendants’ Exhibit 6.
33. McRae first learned of the results of Takematsu’s
testing of propanil in the winter of 1958/1959. Testimony
of Dougal McRae. By this time, the results of field test-
22a
ing that McRae had conducted in the summer of 1958
revealed that propanil demonstrated selective, post-
emergence herbicidal activity for propanil in grain crops,
including barley, wheat, oats, and rye. Testimony of
Dougal McRae; Plaintiff’s Exhibits 122, 128. See also
Testimony of Ruppert Palmer. Testing of propanil con-
ducted by McRae in 1957 had demonstrated that propanil
killed anioaet grass, a monocot; such information was
reported in Rohm and Haas’ 1958 application. Plaintiff’s
Exhibit 4. See also Testimony of Dougal McRae.
34. After Rohm and Haas received the results of Tak-
ematsu’s experiments showing the selective, post-emergence
herbicidal effect of the propanil supplied by it, rice seed
was obtained and rice, a cereal crop, was grown in Rohm
and Haas’ herbicide research greenhouses. Testimony of
Dougal McRae.
35. In February, 1959, Rohm and Haas conducted
greenhouse tests of propani! and seven other compounds
on rice. The test results revealed that rice had a tolerance
{> propanil. Testimony of Dougal McRae; Plaintiff’s Ex-
hibit 125.
36. In January, 1959, Takematsu and Marota Konnai
published a booklet containing the results of their work
with propanil on rice. The title of the Japanese booklet,
translated to English, is “Fundamental Research on the
Chemical Weed Control in Arable Land”. Plaintiff’s Ex-
hibit 19; Defendants’ Exhibits 252, 32%. At least 125
copies of the booklet were made in Japan before January
16, 1959; such copies were made by a mechanical copy-
making technique. Approximately 100 copies of the book-
let were handed out to participants during a conference
entitled “Conference for Investigation of Test Results of
Herbicides Relating to Summer Crop for the Fiscal Year
1958”. The conference was held under the auspicies of
the Japanese Ministry of Agriculture and Forestry in
Tokyo, Japan on January 16 and 17, 1959. The confer-
23a
ence was attended by over 100 persons composed of Japa-
nese government personnel and Japanese university and
industry personnel interested in herbicides and the use
thereof. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252.
37. In January, 1959, at least one copy of Takematsu’s
booklet was received by the Research Institute of Ihara
Noyaku Co., Ltd. in Japan and circulated to members of
the Institute. The booklet was deposited then in the In-
stitute’s library. Plaintiff’s Exhibit 19; Defendants’ Ex-
hibit 252.
38. After obtaining the results of the greenhouse tests
of propanil on rice in early 1959, Plaintiff’s Exhibit 125,
McRae contacted Dr. Shaw, an employee of the United
States Department of Agriculture (hereinafter USDA),
who was in charge of USDA scientists testing herbicides.
McRae contacted Shaw for the purpose of soliciting
Shaw’s recommendation of a researcher in the United
States who could conduct further tests on rice. Shaw re-
ferred McRae to Dr. Roy Smith, an employee of the
USDA, whom Shaw contended was the foremost investi-
gator in the field of rice. Testimony of Dougal McRae.
39. Smith was first contacted by McRae in approxi-
mately March or Apri! of 1959, and it was requested that
he test propanil. Testimony of Dougal McRae; Plaintiff’s
Exhibit 125; Defendants’ Exhibit 18. By June 1959,
Smith had conducted preliminary tests on propanil and
reported that propanil controlled barnyard grass without
injuring rice. Plaintiff’s Exhibit 123. Smith continued
his field tests of propanil with such outstanding results
that, after receiving Rohm and Haas’ permission to dis-
close the chemical formula of propanil, he reported his
findings at the Southern Weed Conference held in late
January of 1960 in Biloxi, Mississippi. Testimony of
Dougal McRae; Plaintiff’s Exhibits 59, 123. See Plain-
tiff’s Exhibit 34.
24a
40. In January, 1960, Dr. Gordon Brandes, an em-
ployee of Rohm and Haas, contacted Smith and several
other persons around the country for the purpose of con-
ducting additional field tests of propanil on rice during
the 1960 rice growing season. Testimony of Gordon
Brandes; Testimony of Dougal McRae. The results of the
field tests conducted by the experimentors in 1960 con-
firmed early findings that propanil was very effective in
the control of barnyard grass and other weeds without
injury to rice. Testimony of Gordon Brandes.
41. In 1961, Rohm and Haas began marketing propanil
commercially, and propanil was registered with the ap-
propriate federal agencies. Testimony of Gordon Brandes;
Testimony of Dougal McRae. Rohm and Haas began in
1961 and continues to this day to sell propanil products
as selective, post-emergence herbicides for the control of
weeds growing in rice under the brand names STAM
F-34, STAM M-4 and STAM LV-10. Testimony of Gor-
don Brandes; Plaintiff’s Exhibits 49, 50, 55-60, 101, 164-
107; Defendants’ Exhibits 147, 292.
42. Immediately upon its introduction in 1961, pro-
panil had a substantial impact on the rice industry. More
than twenty years later, propanil remains an integral
part of the methodology employed by rice farmers to con-
trol weeds growing in rice. Testimony of Ford Baldwin;
Testimony of Gordon Brandes; Testimony of Bill Fagala;
Testimony of Barry Jeffrey; Testimony of Ruppert
Palmer; Plaintiff’s Exhibits 18 (Deposition Testimony of
Bobby Joe Pace), 34, 36, 39, 47, 50, 117.
43. Propanil has been directly responsible for in-
creases in the yield of rice per acre from 35% to as much
as 65% by eliminating barnyard grass, the major de-
structive weed competing with young rice plants. Prior
to propanil, there was no practical way of controlling this
weed. Testimony of Ford Baldwin; Testimony of Gordon
Brandes; Testimony of Bill Fagala; Testimony of Barry
Jeffrey; Testimony of Ruppert Palmer; Plaintiff’s Ex-
25a
hibits 18 (Deposition Testimony of Bobby Joe Pace), 39,
41-44, 46, 47, 49, 50, 52, 117.
In addition to eliminating barnyard grass and other
weeds, propanil allowed farmers to use new, more produc-
tive varieties of rice, plant rice at lower levels, decrease
water usage and utilize fertilizer more efficiently. Pro-
panil also made easier the harvesting, drying und clean-
ing of rice. Testimony of Gordon Brandes; Testimony of
Bill Fagala; Testimony of Ruppert Palmer; Plaintiff’s
Exhibits 34, 36, 37, 41-44, 46, 47, 49, 50, 52, 58.
44, Since 1961, Rohm and Haas’ domestic sales of pro-
panil to control weeds growing in rice have exceeded 200
million pounds and 170 million dollars, while its foreign
sales have exceeded 91 million pounds and 67 million dol-
lars. Since the issuance of the patent in suit, yearly do-
mestic sales of propanil have averaged approximately 12
million dollars. Testimony of James Underwood; Plain-
tiff’s Exhibits 114, 116, 118, 142, 161. These sales have
been accomplished with a minimum amount of adver-
tising. Testimony of William Ambrogi.
45. Rohm and Haas selis herbicidal propanil also un-
der the trade name Stampede for the control of weeds in
oats, barley and wheat. Testimony of Gordon Brandes;
Plaintiff’s Exhibits 101, 103. Sales of Stampede have ex-
ceeded 3 million doilars. Testimony of James Underwood;
Plaintiff’s Exhibits 103, 118.
C. The History of the Patent in Suit
1. Rohm and Haas’ 1958 Application
46. On February 13, 1958, Wilson and McRae filed an
application in the Patent and Trademark Office, serial
number 714,947, describing three herbicidal compounds,
the 3-4 dichloroanilides of propionic, isobutyric, and also
26a
a-methylvaleric acids.® Plaintiff’s Exhibit 4. One of the
herbicidal compounds described in the application bears
the chemical name “3,4-dichloropropionanilide”, 7.e., pro-
5 Specifically, the 1958 application contained the following claims:
1. As new compounds, 3,4-dichloroanilides from the class
consisting of 3,4-dichloroisobutyranilide, and 3,4-dichloro-a-
methylvaleranilide.
2. 8,4-Dichloropropionanilide.
8. 3,4-Dichloroisobutyranilide.
4. 3,4-Dichloro-a-methylvaleranilide.
5. A herbicidal composition comprising at least one member
of the class consisting of 3,4-dichloropropionanilide, 3,4-dichlo-
roisobutyranilide, and 3,4-dichloro-a-methylvaleranilide dis-
persed in a carrier therefor.
6. A herbicidal composition comprising 3,4-dichloropropiona-
nilide dispersed in a carrier therefor together with a surface-
active-agent.
7. A herbicidal composition comprising at least one member
of the class consisting of 3,4-dichloropropionanilide, 3,4-dichlo-
roisobutyranilide, and 3,4-dichloro-a-methylvaleranilide dis-
solved in an inert organic solvent and with a solvent-soluble
wetting and emulsifying agent.
8. A method of controlling undesired plant growth which com-
prises applying to undesired plants in a tender state at least
one compound from the class consisting of 3,4-dichloropropion-
anilide, 3,4-dichloroisobutyranilide, and 3,4-dichloro-a-methy]l-
valeranilide.
9. A method of controlling undesired plant growth which com-
prises applying to undesired plants in a tender state 3,4-dichlo-
ropropionanilide.
10. A method of controlling growth of plants which comprises
applying to plants at least one compound from the class con-
sisting of 3,4-dichloropropionanilide, 3,4-dichloroisobutyrani-
lide, and 3,4-dichloro-a-methylvaleranilide at a rate from 0.5
to 50 pounds per acre.
ii. A method of controlling growth of plants which comprises
applying to plants 3,4-dichloropropionanilide at « rate from
0.5 to 50 pounds per acre.
Plaintiff’s Exhibit 4.
‘ 27a
panil.* These three compounds were asserted to possess
marked herbicidal activity and of the three compounds
disclosed, propanil was described as being “outstandingly
active’. The 1958 application referred also to known
herbicides and noted that some of these herbicides were
highly toxic to all types of plants and thus lacked the de-
sired selectivity and differential characteristics. The dis-
closed compounds were said to possess these desired prop-
erties and to provide significant advance. Testimony of
Dougal H. McRae; Plaintiff’s Exhibit 4.
47. Propanil is a chemical compound which has the
structural formula
H 0
| fl
cl N—C—CHe CH
Cl
This compound can be named also as N (3,4-dichloropheny])
propananide or N (3,4-dichlorophenyl) propionanide. Tes-
timony of Dougal McRae; Plaintiff’s Exhibits 2, 3.
Propanil is a member of a class of compounds known as
“anilides’”. Propanil is also a “dichloro” compound since
the propanil molecule includes two chlorine atoms; hence
it is a “dichloroanilide’. The numbers 3 and 4 refer to
the particular corners of the benzene ring, 7.e., hexagonal
ring of carbon atoms, to which the chlorine atoms are
attached. The corners of the benzene ring are numbered
according to an accepted chemical numbering system.
6 During the trial of the instant cause, propanil has been referred
to by the parties also as 3,4-DCPA, the short form for the chemical
name of propanil; FW-734, the designation assigned to the chemical
propanil by plaintiff (FW are the initials of the person under
whose direction propanil was made; 734 is the number assigned to
propanil, compounds are assigned numbers consecutively as they
are made), and Stam, the commercial name assigned to the chemical
propanil by plaintiff. Testimony of Dougal McRae.
28a
Testimony of Dougal McRae; Plaintiff’s Exhibit 13. An-
ilides may be formed through a reaction of anilines with
organic acid. Propanil, for example, is made by the chem-
ical reaction of 3,4-dichloroaniline with propionic acid.
Testimony of Dougal McRae.
48. Within the anilide family, those anilides which
have a structural formula similar to propanil are known
as homologs, isomers, and analogs of propanil. Homologs
differ in structure solely by the number of methyl or
CH, groups in the compounds. Hence, a homolog of pro-
panil, for example, 3,4-dichloroacetanilide, has the follow-
ing structural formula:
H 0
|
. ek4
Cl 1)—N—C—CHg
3 2
Cl
Testimony of Dougal McRae; Plaintiff’s Exhibit 13.
49. Isomers contain the same number and types of
atoms in the structural formula, but the atoms are lo-
cated in a different position. An example of an isomer of
propanil is 2,4-dichloropropionanilide
H 0
| |
Cl N— C—CH2 CH
Cl
Testimony of Dougal McRae.
50. Analogs differ by a single atom or a group of
atoms having the same valence, 7.e., chemical bonding ca-
pacity, as the atom or groups of atoms it replaces. Testi-
mony of Dougal M«Rae; Plaintiff’s Exhibit 13. Thus, ex-
amples of analogs Jf propanil are: 4-chloropropionanilide,
which has the structural formula
oun OG
Cl—4 N—C—CH2 CH3
a 2
3-chloropropionanilde, which has the structural formula
iI
1 aan CH3
Cl
and 2-chloropropionanilide, which has the structural for-
mula
H oO
| |
N—C—CH2 CHg
C!
Testimony of Dougal McRae; Plaintiff’s Exhibit 13.
51. A chemical structure, is simply a shorthand
method used by chemists to depict a compound, much as
a deed describes the metes and bounds of a particular par-
cel of land. Chemical structures do not describe the en-
tirety of a compound, namely its properties and character.
Seemingly small differences in chemical] structure, includ-
ing the concepts of homology, isomerism and analogy, can
produce substantial differences in herbicidal properties;
such differences can be significant and unpredictable.
Testimony of Dougai McRae; Testimony of Ruppert
Palmer. Consequently, such differences have resulted in
the commercial success for the methods of using propanil
as defined in the patent in suit, as opposed to the agri-
cultural chemical industry’s indifference for methods of
using compounds related structurally to propanil, e.g.,
3,4-dichloroacetanilide; 3,4-dichloroalphamethylvarylani-
lide; 4 chloropropionanilide and 3 chloropropionanilide.
30a
Testimony of Dougal McRae; Testimony of Ruppert
Palmer.
52. A herbicide is a chemical used for killing or ad-
versely affecting the growth and development of planis.
Testimony of Dougal McRae. Herbicides are commonly
classified into the following four classes:
(1) general pre-emergence herbicides inhibit the
growth of substantially all plants when applied to the
soil before the plants emerge from the ground.
(2) general post-emergence herbicides destroy sub-
stantially all plants when applied thereto after the
plants have emerged from the ground.
(3) selective, pre-emergence herbicides, when applied
to the soil before the plants emerge, inhibit the
growth of weeds without adversely affecting the crop.
(4) selective, post-emergence herbicides, when ap-
plied after emergence to a crop and weeds normally
associated therewith, substantially destroy the weeds
without adversely affecting the crop.
Testimony of Dougal McRae; Testimony of Ruppert
Palmer.
53. A weed is a plant undesired in the location where
it is growing while a crop is a plant desired in the par-
ticular location where it is growing. Testimony of Dougal
H. McRae; Testimony of Gordon Brandes; Plaintiff’s 2.
54. Identification of a herbicidal material as selective,
general or non-selective may depend upon the conditions
under which it is applied. Testimony of Dougal McRae.
Factors which may influence the type of activity of the
particular herbicide include the rate or time of its ap-
plication, the growth stage of the plants to which the
herbicide is applied, the manner by which the herbicide is
applied, i.e., whether it is applied as a blanket spray
(over the top of all plants in a given area) or as a di-
8la
rected spray (spray controlled and directed to contact
only some plants but not others), and even the type of
formulation of the herbicide. Testimony of Dougal Mc-
Rae, Defendants’ Exhibits 225-227.
Nevertheless, compounds which possess one type of her-
bicidal activity may not necessarily possess any of the
other types of herbicidal activity. For example, general
herbicides may never become selective. In addition, pre-
mergence herbicides may never demonstrate _post-
emergence activity. Testimony of Dougal McRae; Testi-
mony of Ruppert Palmer. Selectivity can depend also on
the type of plant to which the herbicide is applied. Testi-
mony of Dougal McRae. For example, a phenoxy herbi-
cide commonly known as 2,4 D will control the growth of
dicotyledonous plants without affecting adversely mono-
cotyledonous plants such as cereal grains. Testimony of
Dougal McRae; Testimony of Ruppert Palmer.
55. The most desirable herbicides are those which will
selectively kill undesirabie plants or weeds under condi-
tions of applications which will cause little or no adverse
effect on desirable plants or crops. Testimony of Dougal
McRae.
56. Plaintiff’s 1958 application was directed to chemi-
cal compounds with post-emergence herbicidal activity,
and, in particular, to selective herbicidal effects which
could be obtained through various rates of application,
times of application or methods of application. Control of
weeds among established crops was one of the specifically
stated objectives. Testimony of Dougal H. McRae; Plain-
tiff’s Exhibit 4.
57. Several structurally related prior art compounds
were acknowledged in the 1958 application. It was stated
in the application that many of these compounds when
tested showed slight or no useful herbicidal activity. The
1958 application observed further “that herbicidally ac-
tive agents in this field of chemistry cannot be predicted
from the prior knowledge of compounds which have been
82a
demonstrated to exhibit herbicidal activities.” Testimony
of Dougal McRae; Plaintiff’s Exhibit 4.
58. The 1958 application disclosed how the compounds
described therein were made, how herbicidal compositions
from these compounds were formulated, and the methods
of application of the formulated compositions to plants.
The post-emergence herbicidal activity of the compounds,
as well as structurally related prior art compounds, was
illustrated by tests carried out in the greenhouse and by
data obtained from the field. Field test data contained in
the 1958 application demonstrated the selective, post-
emergence herbicidal properties of propanil including the
control of annual grasses and weeds growing among pe-
rennial grasses, the control of weeds growing in alfalfa
and clover, and the destruction of a variety of both mono-
cotyledonous and dicotylendous weeds growing in such
crops as strawberry, potato and tomato without injury to
the crops. Monocotyledenous plants (hereinafter mono-
cots) comprise a class of plants typified by grasses or
narrow leaf plants; dicotyledenous plants (hereinafter
dicots) form a separate and distinct class of plants com-
monly known as broadleaf plants. Additionally, the 1958
application stated that the compounds claimed could be
used effectively for the control of annual weeds in such
additional crops as corn, sugar cane and pineapples. Tes-
timony of Dougal H. McRae; Plaintiff’s Exhibit 4.
59. In the first office action issued by the Patent Office
on October 14, 1958, the patent examiner rejected all of
the claims contained in the 1958 application as such
claims failed to properly define the invention. The patent
examiner rejected the claims contained in this application
also on the basis that the claims were obvious by prior
art.’ Moreover, the patent examiner, on the basis that
7 More specifically, the examiner rejected all of the claims con-
tained in the 1958 application as:
The claims are indefinite and too broad in “3,4-dichloropro-
pionanilide” (it is not clear which positions are chlorinated),
Maa A
33a
the 1958 application contained two independent and dis-
tinct inventions, i.e., one invention being the compounds
per se and the other being herbicidal compositions con-
taining and methods of using the compounds, required
that the 1958 application be restricted to one of the afore-
mentioned inventions pursuant to 35 U.S.C. § 121 (Supp.
1982). Plaintiff's Exhibit 4. See also Testimony of
Walter Modance.
“carrier therefor’, “surface active agent’, “inert organic
solvent”, “solvent-soluble wetting and emulsifying agent” giv-
ing rise to compounds with different properties and that can
react in a different manner. There is not sufficient basis nor
enough specific examples in the specification for such broad
statements. The “composition comprising’ terms are incom-
plete. The composition claims are unduly multiplied, claims
such as 5 to 7 not being patentably distinct from product
claims 1 to 4. (See In re Migridichian 513 O.G. 757 and Ex
parte Billman 71 USPQ 258).
Claims 1 to 7 are rejected as unpatentable over Williams or
Surrey that disclose p-chloro propionanilide and m-chloro pro-
pionanilide. No invention is seen in adding another chlorine
atom to the molecule of the reference compound. See Ex parte
Teter 105 USPQ 192. .
Claims 1 to 9 are rejected as unpatentable over Ng.Ph. Buu-Hoi
that discloses 3,4-dichloroacetanilide which is a lower homologue
of the claimed compounds and the latter in the absence of a
showing of unexpected results are unpatentable under the rul-
ings of Jn re Haas et al 60 USPQ 548; In re Henz 85 USPQ
261.
Claims 8 to 11 are rejected since no invention is seen in a
method of applying 3,4-dichloropropionanilide or a higher
homologue to undesired plants since any layman knows how
to spray weeds with a weed-killer. Sexton teaches the very
similar process.
Plaintiff’s Exhibit 4.
835 U.S.C. § 121 (Supp. 1982) states in pertinent part: “If two
or more independent and distinct inventions are claimed in one
application, the Commissioner may require the application to be
restricted to one of the inventions.”
84a
60. In an amendment to the 1958 application filed on
January 30, 1959, Rohm and Haas contested the rejec-
tions made by the patent examiner and presented argu-
ments in support of its position. Additionally, Rohm and
Haas, although contesting the restriction requirement im-
posed by the patent examiner, elected to pursue prosecu-
tion of the claims to the compounds per se. Plaintiff’s
Exhibit 4. See also Testimony of Walter Modance.
Filed along with the amendment was an affidavit exe-
cuted hy McRae. The affidavit contained the results of a
series of tests on a number of analogous chlorinated ani-
lides. The test data was submitted for the purpose of
demonstrating “the unexpected and completely unobvious
herbicidal properties of the products of the present inven-
tion and the inability to predict these properties on the
basis of the prior art.” Plaintiff's Exhibit 4. See also
Testimony of Walter Modance. The test data as submitted
indicated that propanil was highly phytotoxic to a variety
of weeds when compared to 3,4-dichloroacetanilide, 3,4,5-
trichloropropionanilide, 3-chloropropionanilide, and 2-
chloropropionanilide. Testimony of Dougal McRae; Plain-
tiff’s Exhibit 4; Defendants’ Exhibit 58.
61. Notwithstanding the additional data contained in
the affidavit submitted by McRae and Rohm and Haas’
arguments in response to the patent examiner’s Yejections
of Rohm and Haas’ claims, in an office action dated Feb-
ruary 13, 1958 the patent examiner adhered to his prior
decision rejecting the claims contained in the 1958 appli-
cation and to his decision that independent and distinct
inventions were being claimed in the 1958 application.
Additionally, Rohm and Haas’ method claims were with-
drawn by the examiner from further consideration pur-
suant to plaintiff’s election not to pursue prosecution of
such claims. Plaintiff’s Exhibit 4. See also Testimony of
Walter Modance.
62. In response to the office action of July 14, 1959,
Rohm and Haas filed an amendment on August 25, 1959
35a
wherein it was argued once again that claims 1 to 5 were
definite and patentable. Along with this amerdment
plaintiff submitted another affidavit executed by McRae
for the purpose of demonstrating that propanil “has ‘un-
obvious (or) and unexpected properties not possessed by
the prior art isomers’ or homologs or isomeric homologs.”
Plaintiff’s Exhibit 4. The affidavit contained test data
comparing the phytotoxicity between propanil and 2,5-
dichlorobutyranilide; such data revealed that propanil was
phytotoxie to a number of weeds whereas 2,5 dichloroby-
tyranilide had no effect whatsover on those weeds to
which it was applied. Plaintiff’s Exhibit 4; Defendants’
Exhibit 59.
63. On September 2, 1959, the patent examiner re-
affirmed his prior decision with respect to the claims con-
tained in the 1958 application and suggested also a claim
in the 1958 application for purposes of interference:
A compound selected from the group consisting
of N-(3,4-dichloropheny]) —2-methylpentanamide and
N-(3,4-dichlorophenyl ) —2-methylpropanamide.
Plaintiff’s Exhibit 4. The claim suggested for interfer-
ence was drawn to two compounds per se, neither of
which was propanil. Plaintiff’s Exhibit 4; See also Testi-
mony of Walter Modance.
64. Shortly thereafter, plaintiff filed an amendment
raising again arguments with respect to the patentability
of plaintiff’s claims and, in addition, presenting a twelfth
claim for purposes of interference as required by the
patent examiner. Plaintiff’s Exhibit 4; See also Testi-
mony of Walter Modance.
65. As a result of plaintiff’s September 2 amendment,
Interference No. 90,697 was declared on November 24,
1959, and plaintiff’s patent application was forwarded to
the Examiner of Interferences. The purpose of the inter-
ference proceeding was to determine as between the ap-
plication filed by Rohm and Haas and an application filed
|
36a
by Robert L. Gates, who was the first inventor of the two
compounds, neither of which was propanil, defined in the
aforestated claim. Plaintiff’s Exhibit 4; Defendants’ Ex-
hibit 153. See also Testimony of Walter Modance.
66. On May 24, 1960, Rohm and Haas filed an amend-
ment cancelling all references to propanil in claims 1, 5,
7, 8 and 10, as propanil was being claimed in a continua-
tion-in-part application (hereinafter 1960 application)
The amendment cancelled further claims 2, 6, 9 and 11 in
their entirety. Pleintiff’s Exhibit 4. See also Testimony
of Walter Modance.
67. A continuat. m-in-part or “CIP” application is an
application that is filed during the pendency of an appli-
cation filed earlier by the same inventor, i.e., the parent
application, disclosing some subject matter common to the
parent application, as well as some subject matter not
common to and not supported by the parent application.
The continuation-in-part application may or may not
claim the new subject matter. Although a continuation-
in-part application discloses subject matter not found in
the parent application, one or more of its claims may be
directed solely to subject matter disclosed in the parent
application. In such cases, the effective filing date for the
continuation-in-part claims which are supported in the
parent application is the filing date of the parent applica-
tion. Testimony of Walter Modance.
68. In May 1962, the interference declared in October,
1960 was terminated by the patent examiner on the
ground that the two compounds in question were un-
patentable in view of German Auslegeschrift 1,005,784
which had been filed on April 4, 1957. Plaintiff’s Exhibit
4; Defendants’ Exhibit 153. The examiner declared also
that the amendment of May 24, 1960 had been entered,
and pursuant to such amendment, claims 2, 6, 9 and 11
were cancelled. The patent examiner held also that claims
7 and 8 stood withdrawn from consideration as a result
of plaintiff’s election. Finally, the patent examiner re-
37a
jected claims 1, 3, 4 and 12 as unpatentable over the
German Auslegeschrift or application that had been in-
volved in the interference proceeding declared in 1960, as
the Auslegescrift disclosed the
3,4-dichloroanilide of isobutyric acid (also termed N-
(3,4-dichlurophenyl)—2-methyl propanamide) which
obviously fully meets claims 1, 3 and 12. The Ger-
man Auslegreschrift contemplates the 3,4-dichlorcan-
ilides of 2-alkyl-alkanoic acids as a class as is readily
apparent from a consideration of the generic formula
and the named ethylhexanoic and isobutyric acids.
The 3,4-dichloroanilide of-methylavaleric acid (also
termed 3,4-dichloro-a-methylvaleranilide; or N-(3,4-
dichloropheny])-2-methyl pentamide) is found to be
so readily suggested in view of the prior act as to be
rendered obvious as a compound to one of ordinary
skill in this art, 35 U.S.C. 103.
Plaintiff’s Exhibit 4. The patent examiner rejected fur-
ther claim & of plaintiff’s application by reason of the dis-
closure in the German Auslegeschrift. Additionally, the
patent examiner found that “the compound 3,4-dichloro-
a-methylvaleranilide and its application in aqueous media
is considered to be so readily suggested in view of the
prior art as to the rendered obvious to one of ordinary
skill, 35 U.S.C. 103.” Plaintiff's Exhibit 4. The German
Auslegeschrift referred to above does not disclose propanil.
Plaintiff’s Exhibit 4.
69. On July 9, 1962, Rohm and Haas expressly aban-
doned its 1958 application as the continuation-in-part ap-
plication filed on May 24, 1960 contained the subject mat-
ter on which plaintiff desired to secure letters patent.
Plaintiff's Exhibit 4. See also Testimony of Walter
Modance.
2. Rohm and Haas’ 1960 Application
70. The continuation-in-part application referred to in
the May, 1960 amendment to the 1958 application was
38a
filed in the Patent Office on May 24, 1960, and was as-
signed Serial Number 31,253. The disclosures in the
1960 application were essentially the same as those in the
1958 application except that the 1960 application spe-
cifically referred to the use of propanil as a selective,
post-emergence herbicide to control weeds growing in
rice. Herbicidal data were presented to demonstrate that
rice was essentially uninjured when treated with weed
killing rates of propanil, whereas the twe compounds
previously disclosed and claimed, 3,4-dichloroisobutyrani-
lide and 3,4-dichloro-a-methylvaleranilide, injured rice
when such compounds were applied at weed killing rates.
Consequently, Rohm and Haas asserted that these com-
pounds could not be used to control undesired plants
growing in rice. Testimony of Dougal H. McRae; Plain-
tiff’s Exhibit 3. See also Testimony of Walter Modance;
Defendants’ Exhibit 18. The origina] claims presented in
the 1960 application were drawn to herbicidal composi-
tions containing propanil and to methods for controlling
weeds in an area containing economically valuable plants
by applying propanil. Narrower claims defined the eco-
nomically valuable plants as cereal grain crops and as
rice crops.’ Plaintiff’s Exhibit 3.
® The claims were as follows:
1. 8,4-Dichloropropionanilide.
2. An herbicidal composition comprising (1) 3,4-dichloropro-
pionanilide dispersed in (2) a carrier therefor and (3) a sur-
face active agent.
3. A method of controlling undesired plant growth which com-
prises applying to undesired plants in a tender state 3,4-dichlo-
ropropionanilide.
4. A method of controlling growth of plants which comprises
applying to plants 3,4-dichloropropionanilide at a rate from
0.5 to 50 pounds per acre.
5. An herbicida]) composition comprising (1) 3,4-dichloropro-
pionanilide dissolved in (2) a non-phytotoxic organic solvent
and (3) a solvent-soluble wetting and emulsifying agent.
[Continued }
39a
In an oath filed along with the 1960 application, Mc-
Rae and Wilson averred that they were the inventors of
the invention or discovery in
Herbicidal 3,4-dichloroanilides described and claimed
therein; that this application discloses and claims
only subject matter disclosed in our pending applica-
tion, Serial No. 714,947 filed 2/13/58; that we do not
know and do not believe that... [an] application
for patent on said invention or discovery has been
filed by us or our representatives or assigns in any
country foreign to the United States....
Plaintiff’s Exhibit 3. See also Testimony of Dougal Mc-
Rae; Plaintiff’s Exhibit 141 (Deposition Testimony of
Harold Wilson). Although when McRae executed the
oath he knew that the 1960 application contained new
subject matter, i.e., those claims drawn specifically to
rice, not disclosed in the 1958 application, and that Rohm
and Haas had filed a number of corresponding patent ap-
plications in foreign countries, see Defendants’ Exhibits
19, 320, he nevertheless signed the oath with the good
faith belief that the oath was accurate. Testimony of
Dougal McRae. Wilson signed the oath also with the
* [Continued ]
6. A method for control of weeds in eccnomically valuable
plants which comprises applying to the weeds in a tender state
3,4-dichloropropionanilide.
7. A method for control of weeds in cereal grain crops which
comprises applying to the weeds in a tender state 3,4-dichloro-
propionanilide.
8. A method for the control of weeds in rice crops which com-
prises applying to the weeds in a tender state 3,4-dichloropro-
pionanilide.
9. A method for the control of weeds in rice crops which com-
prises applying to the weeds in a tender state 3,4-dichloropro-
pionanilide at an application rate of 0.5 to 8 pounds per acre.
Plaintiff's Exhibit 3.
40a
good faith belief that the oath was accurate. Plaintiff's
Exhibit 141 (Deposition Testimony of Harold Wilson).
71. In the first office action involving the 1960 appli-
cation, the patent examiner again required restriction be-
tween what were deemed to be two independent and dis-
tinct inventions, one to prepanil per se and the other to
“compositions and methods [sic] of plant control using
[propanil]....” Plaintiff's Exhibit 3. In declaring that
Rohm and Haas had made two independent and distinct
inventions, the patent examiner cited several references
to show classification :
Surrey 2,732,403 Jan. 24, 1956 260/562
Jacob et al 2,727,071 Dec. 13, 1955 260/562
Hill et al 2,876,088 Mar. 3, 1959 71/2.6
Cupery 2,705,195 Mar. 29, 1955 71/2.6
Plaintiff’s Exhibit 3. See also Defendants’ Exhibit 317.
72. Rohm and Haas once again contested this decision
and requested that the patent examiner reconsider his
decision. In order to be completely responsive to the first
office action, Rohm and Haas elected in the alternative to
pursue prosecution of the claim to propanil per se. When
the patent examiner adhered to his prior decision that
separate and distinct inventions were being claimed, Rohm
and Haas filed a petition with the Commissioner of Pa-
tents seeking review of the requirement for restrictions.
Plaintiff’s Exhibit 3.
73. On February 24, 1961, Rohm and Haas’ petition
for review was denied. The Supervisory Classification
Examiner held that the requirement for restriction was
proper as claims to propanil per se and claims to methods
of using and compositions containing propanil are “di-
rected to different inventions which are separately classi-
fied, examined in different divisions of the Patent Office
and have different fields of search.” Plaintiff's Exhibit
3. See also Testimony of Walter Modance. As a result
4la
of the denial of Rohm and Haas’ petition seeking review
or the patent examiner’s decision, Rohm and Haas was
required to prosecute only its claim to propanil per se in
the 1960 application. Plaintiff’s Exhibit 3.
74. During his consideration of the 1960 application,
the patent examiner rejected repeatedly the claim to pro-
panil per se as unpatentable as a result of a prior publica-
tion referred to by the patent examiner as the Beilstein
reference. Such publication, the examiner found, dis-
closed compounds which suggested and rendered obvious
the compound propanil. The patent examiner found that
although propanil was not disclosed in the Beilstein refer-
ence, the next lower adjacent homolog and position dis-
closed 2,4-dichloroacetanilide, 2,4-dichloropropionanilide,
2,4,6-trichloroacetanilide, 2,4,5-trichloropropionanilide, and
3,4-dichloroacetanilide. In further support: of his finding
that propanil per se was unpatentable due to prior art,
the patent examiner pointed out that as the Beilstein
reference disclosed “the preparation of at least two al-
kanoy] anilides having identical chloro substitutes wherein
the alkanoyl moiety is either acetyl or propionyl, it would
be an obvious and suggested step to prepare the propionyl
derivative corresponding to the disclosed 3,4-dichloro-
acetanilide.” Plaintiff’s Exhibit 3.
The patent examiner rejected also Rohm and Haas’
patent claim to propanil per se on the basis of prior art
found in the count of Interference No. 90,697 to which
Rohm and Haas was a party. Plaintiff’s Exhibit 3.
75. Rohm and Haas took issue with the patent ex-
aminer’s findings regarding the prior art disclosure and
argued that although the Beilstein reference disclosed nu-
merous homologs and isomers of their claimed compound,
the patent examiner failed to recognize the unexpected
and unobvious discovery of the utility of propanil as a
herbicide which, together with the compound itself, formed
the basis of Rohm and Haas’ invention. Such subject
matter, Rohm and Haas contended, was not disclosed or
42a
suggested by the Beilstein reference. In support of its
argument, Rohm and Haas submitted on different occa-
sions three affidavits executed by McRae to illustrate that
the high degree of post-emergence herbicidal activity of
[propanil] was completely unexpected on the basis of the
poor or negligible activity of 2,5-dichloropropionanilide,
2,5-dichloroacetanilide, 2,4,6-trichloropropionanilide, 2,4,6-
trichloroacetanilide, 3,4-dichloroacetanilide, 3,4-dichloroiso-
butyranilide, and 3,4-dichloro-a-methylvaleranilide. Plain-
tiff’s Exhibit 3; Defendants’ Exhibits 60-62. See also
Testimony of Dougal McRae. Plaintiff’s Exhibit 3. Be-
cause Rohm and Haas’ claim was drawn to a chemical
compound per se rather than to a method of using such
compound, the patent examiner was unpersuaded by
Rohm and Haas’ attempts to demonstrate the unobvious
and unexpected beneficial properties of propanil. Plain-
tiff’s Exhibit 3.
As to the patent examiner’s finding of unpatentability
on the basis of prior art in the count of interference No.
90,697, plaintiff asserted that its claim drawn to propanil
per se was no longer present in the 1958 application in
which 3,4-dichloroisobutyranilide and 3,4-dichloro-a-meth-
ylvaleranilide were disclosed and claimed. Rohm and
Haas pointed out also the unexpected, unobvious and ad-
vantageous differences between the herbicidal action of
propanil, particularly in cereal grains such as rice, and
the herbicidal activities of 3,4-dichloroisobutyranilide and
3,4-dichloro-a-methylvaleranilide. Plaintiff’s Exhibit 3.
76. On May 2, 1961, all claims to methods of using and
compositions containing propanil were cancelled from the
1960 application, as such claims formed the subject mat-
ter of a divisional! application filed in the Patent Office on
March 16, 1961 (hereinafter 1961 application). Plain-
tiff’s Exhibit 3. See also Testimony of Walter Modance.
77. A division or divisional application is an applica-
tion that is filed during the pendency of an épplication
48a
filed earlier by the same inventor, 7.e., the “parent appli-
cation’, and discloses and claims only the subject matter
disclosed in the parent application. A divisional applica-
tion claims a distinct, separate and independent invention
carved out of its parent application and the invention
claimed therein. A claim in a divisional application is en-
titled to the effective filing date of the parent application
which supports such claim. Testimony of Walter Modance.
78. After the patent examiner’s rejection of Rohm and
Haas’ claim to propanil per se was made final in July
1961, Plaintiff’s Exhibit 3; Defendants’ Exhibit 326, see
also Testimony of Walter Modance, Rohm and Haas ap-
pealed the patent examiner’s decision to the Board of Ap-
peals of the Patent Office. Plaintiff’s Exhibit 3. See also
Testimony of Walter Modance. On June 18, 1962, the
decision of the patent examiner was affirmed by the Board
of Appeals for the Patent Office. Plaintiff’s Exhibit 3.
See also Testimony of Walter Modance.
79. After this decision, the 1960 application, with its
single claim to propanil per se was abandoned. Plaintiff’s
Exhibit 3. See also Testimony of Walter Modance. Rohm
and Haas continued then with its prosecution of its 1961
application drawn to herbicidal methods and compositions
which the patent examiner had held previously were sep-
arate and distinct inventions from the claim drawn to
propanil per se. See Plaintiff’s Exhibits 3, 4.
3. Rohm and Haas’ 1961 Application
80. On March 16, 1961, Rohm and Haas filed its third
patent application relevant to the instant suit as a divi-
sion of the 1960 application. This application was as-
signed Serial Number 96,089. The disclosure of the 1961
application was essentially identical to the 1960 disclosure.
Original claims presented in 1961 were directed to herbi-
cidal compositions containing propanil and to methods of
controlling the growth of plants by applying propanil.
44a
Selective control of weeds in economically valuable plants
was claimed and narrower claims defined such plants as
cereal grain crops and rice crops. Claims to methods of
using propanil as presented in the 1961 application were
drawn to a distinctly different and separately patentable
invention as compared to claims drawn to propanil per se
as a chemical compound.” Plaintiff’s Exhibits 2, 3, 4.
See also Testimony of Walter Modance.
As they had done in the 1960 application, McRae and
Wilson executed an oath containing an averment that
neither they no» their representatives or assigns had filed
10 Specifically, Rohm and Haas’ 1961 application contained the
following claims:
1. An herbicidal composition comprising (1) 3,4-dichloropro-
pionanilide dispersed in (2) a carrier therefor and (3) a sur-
face agent.
2. A method of controlling undesired plant growth which com-
prises applying to undesired plants in a tender state 3,4-dichlo-
ropropionanilide.
3. A method of controlling growth of plants which comprises
applying to plants 3,4-dichloropropionanilide at a rate from
0.5 to 50 pounds per acre.
4. An herbicidal composition comprising (1) 3,4-dichloropro-
pionanilide dissolved in (2) a non-phytotoxic organic solvent
and (3) a solvent-soluble wetting and emulsifying agent.
5. A method for control of weeds in economically valuable
piants which comprises applying to the weeds in a tender state
8,4-dichloropropionanilide.
6. A method for control of weeds in cereal grain crops which
comprises applying to the weeds in a tender state 3,4-dichloro-
propionanilide.
7. A method for the control of weeds in rice crops which com-
prises applying to the weeds in a tender state 3,4-dichloropro-
pionanilide.
8. A method for the contro] of weeds in rice crops which com-
prises applying to the weeds in a tender state 3,4-dichloropro-
pionanilide at an application rate of 0.5 to 8 pounds per acre.
Plaintiff’s Exhibit 2.
45a
foreign patent applications on the subject matter being
claimed in the 1961 application. McRae and Wilson
averred also in the oath that they were the inventors of
the subject matter being claimed including those method
claims drawn specifically to rice. Testimony of Dougal
McRae, Testimony of Harold Wilson; Plaintiff’s Exhibit
2. Although there is evidence to indicate that McRae
knew of the existence of a number of corresponding for-
eign patent applications at the time he executed this oath,
see Testimony of Dougal McRae, the Court is of the belief
that both McRae and Wilson executed the oath with the
good faith belief that the statements contained in the oath
were accurate.
81. Shortly after filing the 1961 application Rohm and
Haas filed a communication describing the prosecution of
the 1960 application and citing the various prior art ref-
erences which the patent examiner had utilized in reject-
ing Rohm and Haas’ claim to propanil per se. Rohm and
Haas filed also an affidavit executed by McRae to illus-
trate the unique herbicidal activity of propanil when com-
pared to 9 closely related compounds. Plaintiff’s Exhibit
2; Defenda. *° Taupit 62. See also Testimony of Dougal
McRae.
82. In an office action dated September 14, 1961, the
patent examiner rejected each of the claims presented in
the 1961 application as being indefinite and/or unpatent-
able over the following: (1) Rohm and Haas’ 1958 ap-
plication which was still pending at that time; (2) the
count and the disclosure of the opposing party to Inter-
ference No. 90,697 to which Rohm and Haas was a
party; (8) a German application referred to as Fis-
cher which the examiner found disclosed that 3,4-di-
chloroanilides were effective herbicides; and (4) a publi-
cation designated as the “CBCC publication” which dis-
closed that halogenated propionanilides were phytotoxic.
Additionally, the examiner rejected claims 1 to 4 as being
unpatentable over a publication cited as prior art during
the prosecution of the 1960 application, 7.e., the Beilstein
46a
reference. The examiner found that the Beilstein refer-
ence disclosed three compounds, 7.e., 2,4-dichloropropion-
anilide, 2,4,5-trichloropropicnanilide, and 3,4-dichloroacet-
anilide, that suggested and rendered obvious propanil.
Plaintiff’s Exhibit 4.
83. In February, 1962, Rohm and Haas filed an amend-
ment cancelling all of the claims contained in its 1961 ap-
plication. Rohm and Haas added seventeen new claims,"
11 The claims added by amendment included the following:
9. A method for selectively inhibiting .growth of undesirable
plants in an area containing growing undesirable plants in an
agronomic crop, which comprises applying to said area 3,4-di-
chloropropionanilide at a rate of application which does not
adversely affect the growth of said agronomic crop.
10. A method of inhibiting the growth of undesirable plants
in agronomic crops which comprises applying to said plants
3,4-dichloropropionanilide in an amount sufficient to inhibit the
growth of said undesirable plants but insufficient to inhibit
the growth of the agronomic crops.
11. A method of inhibiting the growth of undesirable plants
in growing perennial grasses, perennial legumes, cereal grains,
flax, potatoes, tomatoes, sugar cane, and strawberries which
comprises applying to the undesirable plants a growth-
inhibiting amount of 3,4-dichloropropionanilide.
12. A method according to Claim 11 in which the 3,4-dichlo-
ropropionanilide is applied to the undesirable plants in a tender
state.
18. A method of inhibiting the growth of undesirable plants
in cereal grain crops which comprises applying to the unde-
sirable plants a growth-inhibiting amount of 3,4-dichloropro-
pionanilide.
14. A method of inhibiting the growth of undesirable plants
in clover in the dormant state which comprises applying to the
undesirable plants a growth-inhibiting amount of 3,4-dichloro-
prepionanilide.
15. A method of inhibiting the growth of undesirable plants
in alfalfa in the dormant state which comprises applying to the
47a
however, in an attempt to overcome the patent examiner’s
rejection of claims 1 to 8 which Rohm and Haas had just
undesirable plants a growth-inhibiting amount of 3,4-dichio-
ropropionanilide.
16. A method of inhibiting the growth of undesirable plants
in rice crops which comprises applying to the undesirable
plants a growth-inhibiting amount of 3,4-dichloropropionanilide.
17. A method of inhibiting the growth of undesirable plants
in flax crops which comprises applying to the undesirable
plants a growth-inhibiting amount of 3,4-dichloropropionanilide.
18. -A method of inhibiting the growth of undesirable plants in
wheat which comprises applying to the undesirable plants a
growth-inhibiting amount of 3,4-dichloropropionanilide.
19. A method of inhibiting the growth of undesirable plants in
vomatoes which comprises applying to the undesirable plants a
growth-inhibiting amount of 3,4-dichloropropionanilide.
20. A method of inhibiting the growth of undesirable plants in
potatoes which comprises applying to the undesirable plants a
growth-inhibiting amount of 3,4-dichloropropionanilide.
21. A method of inhibiting the growth of undesirable plants in
sugar cane which comprises applying to the undesirable plants
a growth-inhibiting amount of 3,4-dichloropropionanilide.
22. A method of inhibiting the growth of undesirable plants in
strawberries which comprises applying to the undesirable plants
a growth-inhibiting amount of 3,4-dichloropropionanilide.
23. A method of inhibiting the growth of undesirable piants in
rice crops which comprises applying to the undesirable plants in
a tender staye 3,4-dichloropropionanilide at an application rate
of 0.5 to 10 pounds per acre.
24. A method of inhibiting the growth of undesirable plants in
perennial grasses which comprises applying to the undesirable
plants a growth-inhibiting amount of 3,4-dichloropropionanilide.
25. A method for ‘nhibiting the growth of undesirable plants
in growing perennial grasses, perennial legumes, cereal grains,
flax, potatoes, tomatoes, sugar cane, and strawberries which
comprises applying to the undesirable plants 3,4-dichloropro-
pionanilide in an amount which inhibits the growth of said
undesirable planty and which does not adversely affect the
growth of the recited crops at a rate of application between
0.5 to 10 pounds per acre.
48a
cancelled. Rohm and Haas contended that ample support
in the disclosure for the seventeen new claims existed in
the 1961 application. Plaintiff’s Exhibit 2. Rohm and
Haas filed also 4 extensive affidavits, one of which was
executed by McRae, for the purpose of demonstrating the
activity of propanil and related anilides as post-emergence
herbicides. Plaintiff’s Exhibit 2. Defendants’ Exhibit 63.
See also Testimony of Dougal McRae.
4. The Interference Proceeding
84. On August 21, 1963, the Patent Office found claim
9 of the 1961 application allowable for interference pur-
poses. Interference No. 93,751 involved claim 9 of the
1961 application and two other patent applications, an
application filed by Clarence W. Huffman (hereinafter
Monsanto application) , and an application filed by Werner
Schafer (hereinafter Bayer application). Plaintiff’s Ex-
hibits 2, 12A. See also Testimony of Rudolf Hutz; Testi-
mony of Walter Modance. The interference was declared
by primary examiner J. O. Thomas for the purpose of es-
tablishing the first inventor of the subject matter of the
interference:
A method for selectively inhibiting growth of un-
desirable plants in an area containing growing unde-
sirable plants in an agronomic crop, which comprises
applying to said area 3,4-dichloropropionanilide at a
rate of application which inhibits growth of said un-
desirable plants and which does not. adversely affect
the growth of said agronomic crop. :
Plaintiff’s Exhibit 12A.
85. The parties to this interference were Rohm and
Haas, Monsanto Company (hereinafter Monsanto), via an
application filed in the name of Clarence W. Huffman, and
Farbenfabriken Bayer AG (hereinafter Bayer), via an
application filed in the name of Drs. Schafer, Wegler and
Eue. Plaintiff’s Exhibits 2, 12A. See also Testimony of
Walter Modance.
49a
+ i eaten
86. The interference was vigorously contested by all
parties. Each party brought a substantial number of pre-
liminary motions which were decided on June 21, 1965.
One of the motions decided was Monsanto’s motion seek-
ing to broaden the count of the interference tov embrace
pre-emergence herbicidal methods as well as general herbi-
cidal methods. The primary examiner denied this motion
noting that: “the subject matter found allowable in the
applications involved in the interference is limited to se-
lectively destroying weeds in agronomic crops without ad-
versely affecting the same by post-emergent application
of [propanil]....” Plaintiff’s Exhibit 12A. The patent
interference examiner decided also that Bayer was not
entitled to the benefit of the date of an application that
Bayer had filed in Germany on April 20, 1957. Plaintiff’s
Exhibit 12A. See also Testimony of Walter Modance.
87. Following the primary examiner’s decision on the
preliminary motions filed by the parties, both Rohm and e
Haas and Monsanto took extensive testimony, introduced
numerous exhibits, and filed detailed briefs in an effort to
establish the priority of their respective inventions. Plain-
tiff’s Exhibits 12E-I. See also Testimony of Walter Mo-
dance.
88. On December 18, 1967, the Board of Patent Inter-
ferences of the United States Patent Office rendered its
decision awarding Monsanto priority of invention over
Rohm and Haas and Bayer. The Board of Patent Inter-
ferences found that Monsanto’s inventor had conceived
the process contained in the interference count on March
27, 1957 and had constructively reduced the invention to
practice by filing its application on May 27, 1957. The
Board of Patent Interferences found that Rohm and Haas
had conceived the invention contained in the interference
count on April 4, 1957. The Board based its decision
awarding Rohm and Haas a conception date of April 4,
1957 on a memorandum that Wilson had prepared on
April 4, 1957, and forwarded to the Assistant Director of
| —
50a
Research at Rohm and Haas. As to Bayer, the Board
affirmed the primary examiner’s decision that Bayer was
“not entitled to the benefit of their German application
filed April 20, 1957.” The Board stated further that
“there is no reference whatsoever therein to the com-
pound [propanil]. The generic structural formula con-
tained therein does not teach the invention of the count.”
Plaintiff’s Exhibit 12A. See also Testimony of Walter
Modance.
89. Subsequently, Rohm and Haas appealed this deci-
sion to the United States Court of Customs and Patent
Appeals. Plaintiff’s Exhibit 12A. See also Testimony of
Walter Modance. During the pendency of the appeal,
Rohm and Haas obtained certain documents and informa-
tion in the course of discovery in a lawsuit that had been
filed by Monsanto against Rohm and Haas. Based on this
newly discovered evidence, Rohm and Haas filed a motion
with the Court of Customs and Patent Appeals request-
ing that the proceeding be remanded to the jurisdiction
of the Board of Patent Interferences in order to enable
Rohm and Haas to introduce this evidence and seek a
redetermination of priority. Plaintiff’s Exhibits 12A, J-M,
Q-R. See also Testimony of Walter Modance.
90. On May 12, 1969, the Court of Customs and Patent
Appeals entered an order granting Rohm and Haas’ mo-
tion and remanding the interference proceeding to the
Board of Patent Interferences in order to afford Rohm
and Haas an opportunity to obtain consideration of the
newly discovered evidence. Plaintiff’s Exhibit 12A. See
also Testimony of Walter Modance.
91. Upon remand of the cause to the Board of Patent
Interferences, Rohm and Haas filed a motion to reopen
the interference proceeding for the purpose of introducing
newly discovered evidence. Plaintiff’s Exhibit 12B. See
also Testimony of Walter Modance. Rohm and Haas as-
serted that this evidence had a direct and material bear-
ing on key decisions of the Board of Patent Interferences:
5la
a) The Board held that certain observations made on
March 27, 1957 by Hamm, an associate of Huffman,
constituted a conception by Huffman of the invention
of the count. (Decision pp. 9-10). The new evidence
demonstrates that those observations of Hamm were
not communicated to Huffman until after the filing
of his original application. So long as those observa-
tions remained uncommunicated to Huffman, they
could not possibly have been the basis of a conception
by Huffman. ,
b) The Board held that some general statements in
Huff'an’s original patent application filed May 27,
1957, adequately taught the subject matter of the
count and thus constituted a constructive reducti 1
to practice thereof (Decision pp. 3-5). The new evi-
dence demonstrates that the specific compound named
in the count was not then regarded by Huffman and
his associates as being useful in the method specified
in the count—-and indeed they had no inkling of the
unique utility of this compound which alone was re-
sponsible for allowance of the interference count.
This utility first came to the attention of Huffman’s
associates (Huffman having meanwhile gone to work
for a different employer) years later as a result of
disclosures from Wilson et al’s assignee.
Plaintiff’s Exhibit 12B.
92. On September 24, 1969, the Board of Patent Inter-
ferences vacated its decision of December 18, 1967 award-
ing priority of invention to Monsanto, and granted Rohm
and Haas’ motion to reopen the interference proceeding
for the limited purpose of introducing the newly discov-
ered evidence. The Board of Patent Interferences denied,
however, Monsanto’s motion to reopen the proceeding to
permit Monsanto to introduce evidence that it had ob-
tained during the litigation pending at that time between
Monsanto and Rohm and Haas. The evidence which Mon-
santo sought to introduce into the record and bring to the
52a
Board’s attention was the results of the early 1957 field
test on corn and beans which indicated that propanil was
not selective on these crops. In denying such motion, the
Board of Patent Interferences held, in part, that the evi-
dence sought to be introduced by Monsanto was not “sig-
nificant as to the conclusion in our decision that the Wil-
son et al. April 4, 1957 memorandum .. . constituted evi-
dence of conception for Wilson et al. as of that date”.
Plaintiff's Exhibit 12B. See also Testimony of Walter
Modance; Plaintiff’s Exhibit B-D.
93. On February 3, 1970, Monsanto filed a motion to
strike Rehm and Haas’ application pursuant to Rule 56
of the Patent Office Rules of Practice. The basis asserted
by Monsanto in support of its motion was that one of the
inventors of the invention claimed by Rohm and Haas
had committed fraud when Wilson and McRae signed the
inventor’s oath in the 1960 and 1961 applications. Specifi-
cally, Monsanto alleged that McRae had falsely attested
that he was the inventor of the claims drawn to rice
which were contained in the 1960 and 1961 applications.
In support of this contention, Monsanto relied upon the
following excerpts from testimony given by McRae dur-
ing the trial of the cause between Monsanto and Kohm
and Haas:
As shown at page 365-6 of the trial transcript, Mc-
Rae was specifically asked:
“Q Did you or your co-workers find out that it [3,4-
DCPA] had utility on rice?
A No.”
Thereafter, as shown at page 368-9 of the trial tran-
script, McRae was referred to the 1960 Wilson et al
application and asked:
“Q Id like you to look at Plaintiff’s Exhibit 3, Dr.
McRae, which is the second McRae-Wilson applica-
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53a
tion filed May 24, 1960, and I’d like you to turn, if
you will, to page 19 of that prosecution history.
A Yes.
Q Do you recognize that to be the page which con-
tains the oath, power of attorney, and petition that
was submitted to the Patent Office in connection with
that application?
A Yes.
-Q. And do you find your signature and Dr. Wilson’s
signature there?
A Yes.
Q_ Will you turn back to page 18?
Do you find a claim, No. 8, which reads: A method
for the control of weeds in rice crops which comprises
applying to the weeds in a tender state 3,4-dichloro-
propionanilide.
A Yes.
Plaintiff’s Exhibit 12B. According to Monsanto’s motion,
this invention had been made by Dr. Takematsu, a Japa-
nese scientist. Plaintiff’s Exhibits 12B, 12C. See also
Testimony of Walter Modance.
In response to Monsanto’s motion, Rohm and Haas ar-
gued that Dr. Takematsu was a paid agent of the Rohm
and Haas inventors. Dr. Takematsu conducted his experi-
ments on rice at Rohm and Haas’ request and used pro-
panil supplied by Rehm and Haas. In addition, Rohm and
Haas paid Dr. Takematsu for this work. Accordingly,
Rohm and Haas asserted that although Dr. Takematsu
was the first to test propanil on rice, the work he did was
a logical and routine extension of the earlier Rohm and
Haas invention and it inured to the benefit of Rohm and
Haas. Plaintiff’s Exhibit 12C. See also Testimony of
Walter Modance.
54a
94. On April 2, 1970, the Assistant Commissioner of
Patents denied Monsanto’s petition to strike on the basis
that the evidence submitted by Monsanto in support of its
petition did not sustain a charge of fraud. The Assistant
Commissioner stated, however, that “when ex parte prose-
cution of the [Rohm and Haas’] application is resumed
after this interference is terminated, the patentability of
the claims in question should be redetermined in the light
of the facts brought out in the petition.” Plaintiff’s Ex-
hibit 12C. See also Testimony of Walter Modance.
95. Monsanto thereafter filed a motion for reconsidera-
tion of the Assistant Commissioner’s April 2 decision de-
nying Monsanto’s petition to strike. Plaintiff's Exhibit
12C. On May 26, 1970, the Assistant Commissioner de-
nied Monsanto’s motion and reaffirmed his prior finding
that:
The record in this case, including as an evidentiary
fact the answers by McRae in response to questions
as to his belief in his “inventorship”’, fails to show
an intent to falsify the application oaths. The record
shows that McRae did in fact have knowledge of the
rice tests in Japan, authorized by Rohm and Haas, at
the time he signed the oaths in question, but that he
did not direct or carry out the tests. The record also
shows that tests on rice were conducted by Rohm and
Haas in this country before the date of the applica-
tion oaths in question.
In situations such as in the instant case, results of
third party tests inure to the benefit of the znventor.
It is to be noted that tests were conducted by third
parties, Nolan and Hamm, for Huffman and the
benefit of those tests resulted in establishing the date
of conception by Huffman.
On the record in this case, then, it is not seen that
McRae’s answer to the question, “At the time you
55a
signed that oath did you believe you were the inven-
tor of that process?”’, establishes a fraudulent intent.
Plaintiff’s Exhibit 12C (emphasis added). See also Testi-
mony of Walter Modance.
96. Rohm and Haas introduced then its new evidence
and Monsanto was afforded an opportunity to introduce
evidence in rebuttal thereto. Both parties filed also briefs
and presented oral arguments in support of their respec-
tive positions. Plaintiff's Exhibits 12D, 12N-P. See also
Testimony of Walter Modance.
97. On June 30, 1971, the Board of Patent Interfer-
ences entered its decision that Monsanto was not entitled
to the conception of invention date of March 27, 1957, the
date Hamm performed herbicidal tests on propanil. Spe-
cifically, the Board of Patent Interferences stated:
Huffman testified that he believed he received a
report from Hamm about these tests “at some time
in the year 1957” and that it might have been just a
telephone report (W Exh. A). W Exh. F (report
from Hamm to Peterson) shows that Huffman re-
ceived a written report dated April 12, 1957 but one
that did not contain the species data essential as evi-
dence for conception.
Hamm testified that preparation of computer print-
outs on such tests (H Exh. 28) took as long as a
couple of months (WX D). There is no evidence to
show that Hamm discussed these tests (H Exh. 26)
with Huffman or that he corresponded with or sub-
mitted any reports bearing on these tests (H Exh.
26) with Huffman or that he corresponded with or
submitted any reports bearing on these tests other
than W Exh. F mentioned above (W Exh. E) prior
to the May 27, 1957 filing date of the Huffman ap-
plication.
The party Hurfman has made no effort to prove
that Huffman personally received the data of the
56a
March 27, 1957 tests prior to its May 27, 1957 filing
date and makes no assertion that Huffman ever re-
ceived the data. Conception of an invention must be
by the inventor. Bedford v. Boothroyd et al., 51
CCPA 713, 319 F.2d 100 [200], 188 USPQ 42. We
hold that, under the circumstances now brought out,
the Hamm March 27, 1957 test, the results of which
were not communicated to Huffman before his filing
date, does not constitute evidence of conception by
Huffman prior to his May 27, 1957 filing date.
Plaintiff’s Exhibit 12D. Consequently, the Board of Pat-
ent Interferences held that:
Since [Rohm and Haas has] proven conception
prior to the [Monsanto] filing date and diligence
from just prior to the [Monsanto] filing date up to
either the reduction to practice by the tomato lay-by
field test or to the reduction to practice by the potato
lay-by field test in September, 1957, [Rohm and
Haas] must prevail in this interference.
Plaintiff’s Exhibit 12D. The Board of Patent Interfer-
ences fe.nd further that Rohm and Haas “must also pre-
vail in this interference on the basis of first conception
on April 4, 1957 followed by diligence from just prior to
Huffman’s filing date of May 27, 1957 to the constructive
reduction to practice by filing their parent application on
February 13, 1958.” Plaintiff’s Exhibit 12D. Accord-
ingly, on the basis of the above rulings, the Board of Pat-
ent Interferences awarded priority of invention to Rohm
and Haas. Plaintiff’s Exhibit 12A. See also Testimony of
Walter Modance.
98. Subsequently, on August 31, 1971 Monsanto ap-
pealed the decision of the Board of Patent Interierences
awarding priority of invention to Rohm and Haas to the
United States Court of Customs and Patent Appeals. Tes-
timony of Rudolf Hutz; Plaintiff’s Exhibit 12D. On Jan-
uary 16, 1973, a joint motion to dismiss filed by the
j
)
}
;
57a
parties to the interference was granted and the appeal
was dismissed. Plaintiff’s Exhibit 12D. See also Defend-
ants’ Exhibit 325. Upon termination of the interference,
jurisdiction for further prosecution of the 1961 applica-
tion was returned to the examining division of the Patent
Office. Testimony of Rudolf Hutz. See also Testimony of
Walter Modance.
5. Litigation Between Monsanto and Rohm and Faas
99. During the pendency of the interference proceed-
ings, Monsanto had filed a divisiona! application on Feb-
ruary 3, 1967 based on its application involved in the in-
terference. The divisional application contained a single
claim drawn to propanil per se. Plaintiff’s Exhibit 11.
Monsanto’s divisional application issued as United States
Patent 3,382,280 on May 7, 1968. Plaintiff’s Exhibits 10,
11, 13, 30.
106. Immediately upon receiving this patent, Monsanto
filed six lawsuits, one of which was against Rohm and
Haas and another against the Dawson Chemical Company,
alleging infringement of its newly acquired patent.
Plaintiff’s Exhibits 13, 30.
101. The suit between Rohm and Haas and Monsanto
was hard fought from the commencement of the action.
After extensive discovery was conducted by both sides,
the trial of the cause began on November 12 and con-
cluded on November 19, 1969. Plaintiff’s Exhibits 8, 9,
10, 18. On February 17, 1970, the Court entered its Find-
ings of Fact and Conclusions of Law in support of its de-
cision that Monsanto’s patent on propanil per se was in-
valid and unenforceable because Monsanto had engaged in
fraud and inequitable conduct in the procurement of its
patent. Plaintiff’s Exhibit 13. In addition, the trial court
found that propanil per se was “obvious” within the
meaning of 35 U.S.C. § 108, and that as propanil per se
was described implicitly in prior art as a compound, pro-
58a
panil per se was anticipated within the meaning of 35
U.S.C. § 102. Notwithstanding its conclusion regarding
anticipation, the trial court found that “[t]he use of 3,4-
DCAA and [propanil] as selective post-emergent herbi-
cides was not revealed or in any way suggested in the
prior art before May 27, 1956.” Plaintiff’s Exhibit 13.
102. Subsequently, Monsanto appealed and on January
12, 1972, the United States Court of Appeals for the
Third Circuit, 456 F.2d 592, affirmed the district court’s
decision that Monsanto’s patent was invalid for fraud
and inequitable conduct in the procurement of the patent
on propanil per se. Plaintiff's Exhibit 14.
6. Renewed Prosecution of the 1961 Application
103. In 1973, prosecution of the 1961 application was
renewed. The prosecution of the 1961 application was
undertaken by outside counsel skilled in patent law. The
earlier ex parte prosecution had been the responsibility of
an in-house patent agent of Rohm and Haas who had
since died. Testimony of Rudolf Hutz.
104. Rohm and Haas’ in-house patent counsel, Mr.
George Simmons, was aware that a judgment had been
entered in the Monsanto-Rohm and Haas litigation in-
validating Monsanto’s patent on the basis of misrepre-
sentations contained in “Husted’s” affidavit. See Plain-
tiff’s Exhibit 13, 14. Consequently, Simmons wanted to
ensure that Rohm and Haas disclosed completely all op-
erative facts to the Patent Office during the renewed
prosecution of the 1961 application. Testimony of George
Simmons. Simmons had an employee of Rohm and Haas
by the name of Dr. Craig review the various affidavits
underlying the 1958, 1960, and 1961 applications against
Rohm and Haas’ data records to determine whether the
data presented in the affidavits had been fairly made, or
whether they instead represented only a selection of data
most favorable to Rohm and Haas’ position on patenta-
bility. Testimony of George Simmons. Simmons had
en
~~ ee ye
59a
Craig gather up also all of Rohm and Haas’ herbicidal
data on propanil and related anilides. Testimony of
George Simmons.
105. Subsequently, Craig and McRae met with Rudolf
Hutz, an attorney with the outside law firm employed by
Rohm and Haas to man the laboring oar during the prose-
cution of the 1961 application. The purpose of the meet-
ing was to discuss the data which had been collected pur-
suant to Simmons’ orders. At the conclusion of this meet-
ing, Hutz asked Craig and McRae to search the Rohm
and Haas data records again and compile some additional
data records. Thereafter, Craig and McRae again met
with Hutz and during the course of a meeting lasting all
day, discussed Rohm and Haas’ data with him. Testimony
of Rudolf Hutz. See also Testimony of Dougal McRae.
106. On January 29, 1973, Hutz called Mr. Marcus,
the supervisor of the patent examiner in charge of the
1961 application to discuss arrangements for a possible
interview with the patent examiner. The interview was
to take place before the Patent Office renewed its exami-
nation of the 1961 application. Testimony of Rudolf
Hutz; Plaintiff's Exhibit 158. It was noted that Hutz
intended to present a large group of documents and ar-
rangements for a suitable room were discussed. Hutz
stated also that he believed the documents could be pre-
sented rapidly if he was given an adequate amount of
time to properly arrange the documents that were going
to be presented to the patent examiner. Testimony of
Rudolf Hutz; Plaintiff’s Exhibit 158.
107. On February 14, 1973, patent examiner Thomas
called Hutz to confirm the time and arrangements for
the interview scheduled for February 16, 1973. When
asked if there were any particular areas which the ex-
aminer desired to discuss at the interview, patent exam-
iner Thomas told Hutz that he had no specific thoughts
at that time. Plaintiff’s Exhibit 159.
60a
108. On February 16, 1973, Rohm and Haas held an
extensive interview with patent examiner Thomas. In-
tensive preparations were carried out for this interview
to identify areas of potential interest to the patent exam-
iner and to collect and organize documents in logical
sequence to be presented to the Patent Office. Repre-
sentatives of both the Department of Justice, which was
investigating Monsanto in connection with Monsanto’s
fraud on the Patent Office, and the Patent Office Solici-
tor’s Office, the department responsible for handling
inter party issues of fraud and inequitable conduct, were
invited to attend the interview, as well as the Chief of
the Examining Group, Mr. Mareus. Despite these invita-
tions, only patent examiner Thomas was present through-
out the entire interview. Mr. Marcus, however, was
present at the beginning of the interview and remained
available for consultation if serious questions arose.
Testimony of Rudolf Hutz; Testimony of Dougal McRae;
Testimony of James Thomas; Plaintiff’s Exhibits 158,
160, 164, 165. See also Testimony of Walter Modance.
109. James 0. Thomas, Jr., the patent examiner who
was responsible for the renewed examination of Rohm
and Haas’ 1961 application, had been involved previously
with Rohm and Haas efforts to obtain a patient on
propanil. Thomas had been responsible for declaring
Interference 93,751 among Monsanto, Rohm and Haas
and Bayer. Testimony of James Thomas; Plaintiff's
Exhibits 2, 12A. See also Testimony of Rudolph Hutz;
Testimony of Walter Modance. Thomas was also the
patent examiner who had rendered the “Decision on
Motions” during the motion period in Interference
93,751. Testimony of James Thomas; Plaintiff’s Exhibit
12A. See also Testimony of Rudolf Hutz; Testimony of
Walter Modance.
110. At the time of the renewed prosecution in Febru-
ary, 1978, Thomas held the position of primary examiner.
Such a position vested Thomas with authority to decide
DAA P Ay bank 0
Mintle D> Shits bis ANG eat ie
6la
issues of patentability without supervision. Testimony
of James Thomas. See also Testimony of Rudolf Hutz;
Testimony of Walter Modance.
Since 1956, Thomas had examined patent applications
in the area of herbicides, and consequently Thomas had
examined thousands of such applications. Testimony of
James Thomas. In 1973, Thomas was the recognized
herbicide expert in the Patent Office, and he was familiar
with the prior art available in the field. Testimony of
James Thomas; Testimony of Walter Modance. He had
8 or 10 other applications involving the same subject
matter as Rohm and Haas’ 1961 application pending be-
fore him in 1973. Thomas was well aware also of the
herbicidal activity of propanil and related compounds,
and he was familiar with the review and interpretation
of herbicidal data sheets. Testimony of James Thomas.
111. At the request of Rehm and Haas’ counsel, the
interview was held in a conference room, rather than in
the patent examiner’s own small office. On tables that
were available in the conference room, documents which
were to be discussed with the patent examiner were
spread out for ease of reference. Testimony of Rudolf
Hutz; Testimony of James Thomas; Plaintiff’s Exhibits
158, 159, 164. Testimory of Dougal McRae. Thoma>
brought the prosecution files for the Rohm and Haas
applications with him to the interview and indicated
that he had reviewed them prior to the interview. Testi-
mony of Rudolf Hutz; Testimony of James Thomas;
Plaintiff's Exhibit 164.
112. During the interview, Rohm and Haas’ counsel
summarized and explained the key events which had
occurred in the prior proceedings in the case including,
but not limited to, the litigation between Monsanto and
Rohm and Haas and Interference 93,751. Testimony of
Rudolf Hutz; Testimony of Dougal McRae; Plaintiff’s
a
62a
Exhibits 2, 164, 165. Copies of the trial court and appel-
late decisions, Plaintiff's Exhibits 13, 14, as well as
Rohm and Haas’ appellate brief, Plaintiff’s Exhibit 7,
were left with the patent examiner Thomas for his
review. Rohm and Haas gave patent examiner Thomas
also all four volumes of the Appendix before the appel-
late court in the Monsanto appeal. Plaintiff’s Exhibits
8-11. Rohm and Haas marked the index of the Appendix
for iteans therein which might be of particular interest
to the patent examiner Thomas, including: the stipulation
and statement of uncontested facts; the trial testimony of
McRae, one of the inventors of the invention claimed in
the patent application; the prosecution of the Monsanto
application, which led the courts to find fraud and in-
equitable conduct; original data records of both Rohm
and Haas and Monsanto showing herbicide activity for
propanil and related compounds; and certain publica-
tions and summary data sheets prepared by Rohm and
Haas for use in the Monsanto trial summarizing herbi-
cidal data in Monsanto’s records for propanil and related
compounds. Testimony of Rudolf Hutz; Testimony of
Dougal McRae; Plaintiff's Exhibits 6, 162, 164. The
patent examiner stated at the interview that he intended
to review these items after the interview. Testimony
of Rudolf Hutz; Testimony of Dougal McRae; Plaintiff’s
Exhibit 164.
113. When patent examiner Thomas returned these
documents several weeks later, he stated that he had
reviewed the pertinent parts of the documents. Testi-
mony of Rudolf Hutz; Plaintiff’s Exhibit 6; Defendants’
Exhibit 50.
114. Rohm and Haas’ counsel’s discussion at the Feb-
ruary 16, 1973 interview of the decision in the litigation
between Monsanto and Rohm and Haas and his further
disclosure to patent examiner Thomas of Monsanto’s con-
.
;
i
|
;
{EPI ets PENG.
63a
tention that Rohm and Haas had withheld herbicidal
data from the patent office together with his notation to
patent examiner Thomas of the trial court’s comments
in the Monsanto litigation that “Monsanto and Rohm
and Haas were equally disingenuous with respect to the
comparison of the herbicidal effects of DCAA and DCPA
in their applications to the Patent Office”, Plaintiff’s
Exhibit 9, alerted the patent examiner to the importance
of comperative herbicidal data. Testimony of Rudolf
Hutz; Testimony of Dougal McRae.
115. Hutz and McRae also brought with them to the
interview a substantial number of documents for discus-
sion with the patent examiner. Most of these documents,
except for a few marked during the interview at the
patent examiner’s specific request, had been consecutively
numbered prior to the interview starting with 500,000
(hereinafter 500,000 series documents). Testimony of
Rudolf Hutz; Testimony of Dougal McRae; see Plaintiff's
Exhibit 5. Although Hutz repeatedly offered to file these
documents in the Patent Office, the patent examiner
elected to have them remain with Rohm and Haas, and
the 500,000 series documents were thereafter retained
intact by Rohm and Haas’ attorneys. Testimony of
Rudolf Hutz; Testimony of Dougal McRae; Plaintiff's
Exhibits 2, 165.
116. Rohm and Haas’ counsel discussed also with
patent examiner Thomas the prior art that had been
raised during the prior prosecution of Rohm and Haas’
applications, the prior art that Rohm and Haas had
relied on during the Monsanto litigation, and the prior
art that had been cited against Monsanto’s application
prior to the issuance of Monsanto’s patent.’* Testimony
12 Specifically, the prior art cited and discussed with the patent
examiner included the following:
‘Continued }
64a
of Rudolf Hutz; Plaintiff’s Exhibits 2, 164, 165. See also
Plaintiff’s Exhibits 8-11.
12 [Continued ]
1958 Application of Wilson et al Office Action Oct. 14, 1958
Sexton 2,444,905 7/13/48
Ng.Ph. Buu-Hoi, Rec.Trav.Chim. 73, pp. 197-202 (1954)
Williams et al JACS, 1931, 3125-31
Surrey et al, JACS, 68 pp. 514-17 (1946)
Braun, Ann. 453, pp. 113-47 (1927)
Ozawa, J. Pharm.Soc., Japan, Voi. 73, pp. 719-21 (1953)
Office Action July 14,1959
Gertler et al Chem.Ab. Vol. 50 (1956) pp. 17297-8
Office Action July 11, 1962
German Auslegeschrift 1,005,784 Apr. 4, 1957 (Fischer)
1960 Application of Wilson et al Office Action Aug. 3, 1960
Stewart 2,636,816 4/28/53
Coleman et al 2,386,779 10/16/45
Smith 2,226,672 12/31/40
Buu-Hoi, Recueil Dec. Travaux Chimiques, Vol. 73, pages 197-
202 (1954)
Surrey 2,732,403 1/24/56
Jacob et al 2,727,071 12/13/55
Hill et al 2,876,088 3/3/59
Cupery 2,705,195 3/29/55
Office Action Dec. 2, 1960
Beilstein Handbuch der Organischen Chemie, Vol. 12, (4th
Ed.) pp. 622, 626, 628, 629 (1929)
1961 Application of Wilson et al Office Action Sept. 14, 1961
Fischer 1,005,784 9/12/57
“Plant Regulators’, CBCC Positive Data Series, No. 2, June
1955, Nat. Research Counsel, pages a, b, c, 1, 39 and 40
Beilstein Handbuch der Organischen Chemie, Vol. 12, (4th
Ed.) pp. 622-629
Randall et al 2,849,465 8/26/58
[Continued ]
65a
117. In preparation for the interview with the patent
examiner and influenced by the trial court and appellate
12 [Continued ]
King “Insecticides and Repellents”, Agri., Handbook, No. 69,
page 285, issued May 1954.
Specifically, Rohm and Haas’ counsel discussed the following
prior art:
Relied On By Rohm and Haas At Trial *
Bienert Patent No. 2,133,340, Oct. 18, 1938
FIAT Final Report No. 1313 dated Feb. 1, 1948 (PB 85172),
cover page and pp. 2738, 321 and 575
Fontein, Recueil Des Travaux Chiminques Des Pays Ras 47,
pp. 635-667 (1928)
Chattaway J. Chem.Soc.Trans. 81, pp. 637-44 (1902)
Shaw et al, “Weeds” Vol. 2, pp. 43-65 (1953)
Todd Patent No. 2,655,445, Oct. 13, 1953
King “Insecticides and Repellents’, U.S. Dept. Agri., Hand-
book, No. 69, pp. 2, 3, 24, 25, May 1954
Cited In The Huffman et al Applications
Thompson et al, “Botanical Gazette’, June 1946, pp. 475-507
(pp. 499 and 506 applied)
Vecchiotti, ““Chem.Abs.”, Vol. 22, column 2555(3) 1928 Butt-
Hoi, Chem. abs., Vol. 49, column 5341(f) 1955
Hamm et al, “Agricultural and Food Chemistry”, Vol. 4, No.
6, June 1956, pp. 518-522
King “Insecticides and Repellents”, U.S. )*‘ept. Agri., Hand-
book, No. 69, page 94 (May 1954)
Hamm et al, “Agricultural and Food Chemistry”, Vol. 5, No. 1,
January 1957, pp. 30-32
Hamm et al 2,863,752, Dec. 9, 1958
“Plant Regulators” CBCC Positive Data Series, No. 2, June
1955, Nat. Research Counsel, page 3
Of the above art, the Patent Office alleged that herbicidal
activity was at least suggested in:
Smith, U.S. Patent 2,226,672,
Thompson et al “Botanical Gazette” pp. 475 to 507,
[Continued ]
66a
decisions in the litigation between Monsanto and Rohm
and Haas, see Plaintiff's Exhibits 13, 14, Rohm and
Haas collected all records available to it reflecting herbi-
cidal test data on propanil and related compounds re-
gardless of whether the related compounds were prior
art or data which came from Rohm and Haas, Monsanto
or other sources. Testimony of Rudolf Hutz; Testimony
of Dougal McRae; Testimony of George Simmons. These
documents, premarked with numbers beginning with
500,000, see Plaintiff’s Exhibit 5, were collected spe-
cifically for the February 16 interview. The identity of
the compounds for which data existed was brought to
the patent examiner’s attention at the interview. Testi-
mony of Rudolf Hutz; Testimony of Dougal McRae;
Testimony of George Simmons; Plaintiff’s Exhibits 2,
160, 163-165.
118. Among such herbicidal test data were Rohm and
Haas’ records from which several affidavits had been
prepared and filed in the Patent Office in the previous
prosecutions of the 1958, 1960 and 1961 applications.
To the extent that such base records could be recon-
structed, they were identified, keyed to the prior affi-
davits, compared side by side with each of the affidavits
and discussed with the patent examiner at the interview.
Testimony of Rudolf Hutz; Testimony of Dougal McRae;
Plaintiff’s Exhibits 2, 163, 165. Rohm and Haas did not
limit its disclosures to the patent examiner to tests from
12 | Continued }
Hamm “Ag. and Food Chemicals’”’,
Stewart, U.S. Patent 2,636,816,
CBCC Plant Regulators,
Hamm, U.S. Patent 2,863,752, and
Shaw, “Weeds”.
Plaintiff's Exhibits 2, 165. See also Testimony of Rudolf Hutz;
Plaintiff's Exhibit 164. Rohm and Haas’ counsel also raised and dis-
cussed with patent examiner Thomas Monsanto’s patent 3,382,280,
the patent invalidated during the Monsanto litigation, as prior art.
67a
which affidavit data had been taken. Instead, it supplied
all data available to it on related compounds. Testimony
of Rudolf Hutz; Testimony of George Simmons; Plain-
tiff’s Exhibits 2, 164, 165.
119. During the interview, the patent examiner was
informed that Rohm and Haas had been unable to locate
all of the test data in its records corresponding to data
recited in the affidavits filed earlier with the Patent
Office. Testimony of Rudolf Hutz; Testimony of Dougal
McRae. The patent examiner was informed also that
there were data in its records that had not been reported
initially to the Patent Office during the prior prosecu-
tions of the Rohm and Haas patent applications. Testi-
mony of Rudolf Hutz; Testimony of Dougal McRae;
Plaintiff’s Exhibits 164, 169.
120. Test data specifically identified and discussed
with the patent examiner during the February 16 inter-
view illustrated, inter alia, that propanil was not unique
as a pre-emergence or gene:.l herbicide, that propanil
damaged some crops, that related compounds displayed
relatively high herbicidal activity, and that related com-
pounds such as 3,4-dichloracetanilide, also known as “3,4-
DCAA”, 3,4-dichloroisobutyranilide, also known as “3,4-
DCiBA”, and _ 3,4-dichloro-a-methylvaleranilide, also
known as “3,4-DCMVA”, possessed some selective, post-
emergence herbicidal activity. Testimony of Rudolf
Hutz; Testimony of Dougal McRae; Plaintiff’s Exhibit
165. See also Testimony of Ruppert Palmer; Plaintiff’s
Exhibits 2, 160, 164.
121. Although Rohm and Haas admittedly was unable
to locate all of the documents containing herbicidal data
for propanil and related compounds for presentation to
the patent examiner at the February 16 interview, Testi-
mony of Rudolf Hutz; Testimony of Dougal McRae; a
search for all of such data was conducted. Te timony
68a
of Rudolf Hutz; Testimony of Dougal McRae. Refer to
Findings 104, 105. No additional herbicidal data has
been subsequently uncovered or relied upon by defend-
ants in support of their allegations of fraud and in-
equitable conduct in procurement of plaintiff’s patent.
Testimony of Rudolf Hutz; Testimony of Dougal McRae.
122. During the interview, Rohm and Haas disclosed
the existence of foreign counterparts to Rohm and Haas’
1958 application; such foreign counterparts and applica-
tions were identified in documents submitted to the patenu
examiner. Testimony of Rudolf Hutz; Testimony of Dou-
gal McRae; Plaintiff’s Exhibits 2, 7, 8, 18, 14, 165. See
also Plaintiff’s Exhibits 6, 160, 164; Defendants’ Exhibit
19. These foreign counterparts had no effect on the pat-
entability of the claims presented during the renewed
prosecution of the 1961 application with regards to prior
art. Testimony of Donald Dunner; Plaintiff’s Exhibit 2.
123. The interview with the patent examiner on Febru-
ary 16, 1973 lasted approximately 214 hours. This inter-
view was considerably longer than normal interviews be-
tween applicants and patent examiners. Testimony of
Rudolf Hutz; Testimony of Dougal McRae; Testimony of
James Thomas; Plaintiff’s Exhibits 159, 164. See also
Testimony of Donald Dunner; Testimony of Walter Mo-
dance.
124. Following the February 16 interview, Rohm and
Haas filed an amendment on March 7, 1973 summarizing
the interview. See Plaintiff’s Exhibits 2, 165. At the con-
clusion of the amendment, Rohm and Haas, as it had done
during the interview, offered specifically to supply more
information and copies of any document discussed at the
interview. A similar offer was made in each of the sub-
sequent amendments filed during the renewed prosecution
ot the 1961 application. Testimony of Rudolf Hutz; Tes-
i
:
69a
timony of Dougal McRae. Plaintiff’s Exhibits 2, 165. See
also Plaintiff’s Exhibits 160, 164.
In its March 7 amendment, Rohm and Haas cancelled
claims 9 to 25 and presented an entirely new set of claims
numbered 26 to 39;** none of such claims specifically
13 The new claims presented in the amendment are as follows:
26. A method for selectively inhibiting growth of undesirable
plants in an area containing emerged undesirable plants in an
agronomic crop, which comprises applying to said area 3,4-di-
chloropropionanilide at a rate of application which inhibits
growth of said undesirable plants and which does not adversely
affect the growth of said agronomic crop.
27. The method according to claim 26 wherein the 3,4-dichloro-
propionanilide is applied in a composition comprising 3,4-di-
chloropropionanilide and an inert diluent therefor at a rate
of between 0.5 »*d 6 pounds of 3,4-dichloropropionanilide per
acre.
28. The method according to claim 27 wherein the agronomic
crop is monocotyledonous and the undesirable plants include
monocotyledonous plants.
29. The method according to claim 27 wherein the agronomic
crop is monocotyledonous and the undesirable plants include
dicotyledonous plants.
380. The method according to claim 27 wherein the agronomic
crop is dicotyledonous and the undesirable plants include mo-
nocotyledoneous plants.
31. The method according to claim 27 wherein the agronomic
crop is dicotyledonous and the undesirable plants include dico-
tyledonous plants.
82. The method according to claim 28 wherein the monoco-
tyledonous agronomic crop is a grain crop.
33. The method according to claim 28 wherein the undesirable
monocotyledonous plants are annual plants in the tender state.
84. The method according to claim 33 wherein the undesirable
annual monocotyledonous plants include barnyard grass.
[Continued ]}
70a
recited rice. The broadest of the new claims was pat-
terned after the interference count, and this claim, along
with several of the more narrowly drafted claims, em-
braced generically rice as a crop within which weeds were
selectively controlled by post-emergence applications of
propanil. Plaintifi’s Exhibits 2, 165.
125. At the conclusion of the February 16 interview,
Rohm and Haas was of the good faith belief that patent
examiner Thomas appreciated the information supplied
and its implications. Patent examiner Thomas was again
reminded of these disclosures at a subsequent interview,
and he advised Rohm and Haas that he was fully satis-
fied and required no further information. Testimony of
Rudolf Hutz; See also Plaintiff’s Exhibit 169. Rohm and
Haas was entitled to rely on its reasonable belief that
Mr. Thomas understood what he had been told and had
13 | Continued ]
35. The method according to claim 26 wherein the agronomic
crop is a member selected from the group consisting of toma-
toes and potatoes.
36. A method for selectively inhibiting the growth of emerged,
tender, undesirable, annual, monocotyledonous plants which
are susceptible to 3,4-dichloropropionanilide, said undesirable
plants growing in an area containing an agronomic crop which
is resistant to 3,4-dichloropropionanilide and an inert carrier
therefor at a rate of application which inhibits growth of said
undesirable plants and which does not substantially affect the
growth of said agronomic crop.
87. The method according to claim 36 wherein the undesirable
plants include barnyard grass and the agronomic crop is mo-
nocotyledonous.
88. ‘he method according to claim 37 wherein most of the
undesirable plants are destroyed by the 3,4-dichloropropiona-
nilide applied thereto without substantial adverse effect on the
crop growing therewith.
89. The method according to claim 36 wherein the agronomic
crop is dicotyledonous.
Plaintiff’s Exhibits 2, 165.
sunelen Leal A,
:
é
|
3
if
F
Tla
taken the disclosures into account when allowing the Wil-
son patent.
126. During the February, 1973 interview, Rohm and
Haas called the patent examiner’s attention to the work
of Takematsu as well as certain assertions made by Mon-
santo during Interference 93,751 relating to Takematsu’s
experiments on rice. Plaintiff’s Exhibit 2.
127. Regarding Dr. Takematsu’s work and his Janu-
ary, 1959 paper reflecting his findings,'* Rohm and Haas’
post interview amendment advanced two basic contentions.
First, Rohm and Haas asserted that assuming arguendo
though not conceding that Takematsu’s paper was a pub-
lication, the claims presented by the March 1973 amend-
ment were fully supported in the 1958 application, and
hence such claims had an effective filing date well prior
to any work by Dr. Takematsu and to the alleged Janu-
ary 1959 publication. The second argument made by
Rohm and Haas was that Takematsu’s work under the
circumstances inured to Rohm and Haas’ benefit; Testi-
mony of Rudolf Hutz; Plaintiff’s Exhibits 2, 165; such
had heen the conclusion of the Assistant Commissioner of
Patents during the interference proceedings.
128. During the early prosecution of the three patent
applications before the Patent Office between 1959 to
1962, Rohm and Haas submitted a number of affidavits
in support of their contention that propanil displayed
unobvious, unique and distinctive selective, post-emer-
gence herbicidal activity as compared to a number of
structurally related compounds. See Plaintiff’s Exhibits
2, 3, 4; Defendants’ Exhibits 58-63. As defendants ar-
gued and as plaintiff has admitted, at the time the six
allegedly defective affidavits were submitted to the Pat-
14 Although Rohm and Haas never conceded that Dr. Takematsu’s
paper was a publication, it asked the patent office to assume that
it was for the purposes of prosecution. Testimony of Rudolf Hutz;
Plaintiff’s Exhibits 2, 165.
72a
ent Office, all of the test data available to Rohm and
Haas were not disclosed in the affidavits. The Rohm and
Haas employee who was responsible for the early prose-
cution of the patent in suit and for deciding which data
were to be submitted in affidavits to the Patent Office
died before the issuance of the patent in suit and the
commencement of this litigation. The reasons behind his
acuions were not disclosed during the trial of this cause,
and it has been represented to this Court that such mo-
tives, if any, are not known.
What is important to this Court’s inquiry into the
validity of Rohm and Haas’ patent in light of defend-
ants’ fraud allegations is the fact that McRae, the per-
son who executed but did not prepare the affidavits, be-
lieved that such affidavits and the assertions contained
in such affidavits to be accurate. Testimony of Dougal
McRae. More importantly, at the February 16, 1973 in-
terview, Rohm and Haas’ counsel informed patent ex-
aminer Thomas of the omissions of herbicidal test data
from the earlier filed affidavits. In addition, Rohm and
Haas’ counsel supplied to the extent possible the omitted
data and all other herbicidal data in Rohm and Haas’
possession to the patent examiner. Consequently, the
Court is of the belief that all of the deficiencies which
existed in the prosecution of the three Rohm and Haas
patent applications from 1958 to 1963 were corrected
by the complete and detailed disclosure of herbicidal
data and information to the Patent Office in 1973; such
disclosure was made within sufficient time for the Patent
Office to take whatever action it deemed necessary. No
claims presented in the previous prosecutions of the
1958, 1960 and 1961 applications, with the exception of
claim 9 in the 1961 application which had been allowed
for interference purposes only and had been cancelled
subsequently by the first amendment filed in the renewed
prosecution, had been allowed prior to Rohm and Haas’
full disclosure in 1973. Nothing whatsoever prevented
73a
examiner Thomas from rejecting claims during the re-
newed prosecution even though claim 9 had been pre-
viously allowed. Testimony of James Thomas.
129. Moreover, the Court finds that Rohm and Haas’
dealings with patent examiner Thomas during the re
newed prosecution of the 1961 application were reason-
ably based on its belief that patent examiner Thomas
was qualified as an expert in the herbicide field, expe-
rienced in the prosecution of patent applications, and able
to read and comprehend herbicide data sheets of the
type that was discussed with the examiner during the
February 16 interview. Testimony of Rudolf Hutz. See
also Plaintiff’s Exhibits 2, 164, 165.
130. On July 5, 1973, the patent examiner rejected
claim 35 pursuant to 35 U.S.C. § 112 “as being improper
in Markushing the crops therein. The Markush practice
is limited to chemical substances and not extended to
plants to be treated.” Plaintiff’s Exhibit 2 at 258. The
patent examiner rejected also claims 26 to 39 pursuant
to section 112 on the basis that certain terms, 2.e.,
“emerged” and “Agronomic crop’, were not found in
the specification of the pending application. Claims 28,
29, 32 to 34, and 36 to 38 were rejected further under
35 U.S.C. § 102(f) as such claims encompassed an inven-
tion, 2.e., selectivity in rice, that the applicants appar-
ently did not make. The patent examiner found this
rejection proper on the basis of the inventor’s admissions
during the proceedings in Interference 93,751, and the
fact that the claims being rejected were limited sub-
stantially to selectively inhibiting undesirable plants in
rice. In further support of the examiner’s rejection of
claims 29, 32 to 34 and 36 to 38, the patent examiner
found that such claims were obvious from Takematsu’s
work which disclosed that propanil was an effective se-
lective herbicide in rice. In making these rejections, the
patent examiner recognized that the claims being pre-
sented were generic to and embraced rice as a crop, a
74a
conclusion with which Rohm and Haas expressly agreed.
Testimony of Rudolf Hutz; Plaintiff’s Exhibit 2; see
also Plaintiff’s Exhibit 163.
131. On July 25, 1973, Rohm and Haas, through its
attorney Hutz, met patent examiner Thomas to discuss
the recent rejections of Rohm and Haas’ claims. At this
interview, it was agreed that Rohm and Haas would
submit their arguments in opposition to the examiner’s
rejections in writing. Plaintiff’s Exhibit 2. See also
Plaintiff’s Exhibit 169.
132. In an amendment filed August 7, 1973, Rohm
and Haas cancelled claims 26 to 39 without prejudice
and added claims 40 to 54. The new claims were sub-
stantially similar to the recently cancelled claims with
the exception that the terms “emerged” and “agronomic
crop” were deleted and replaced by the terms “growing”
and “established crop” respectively. In addition, the
Markush group criticized by the examiner was deleted
and replaced by two new claims, one drawn to tomatoes,
see claim 53, and the other to potatoes, see claim 54."
15 The following claims added by the August 7 amendments:
40. A method for selectively inhibiting growth of undesirable
plants in an area containing growing undesirable plants in an
established crop, which comprises applying to said area 3,4-di-
chloropropionanilide at a rate of application which inhibits
growth of said undesirable plants and which does not adversely
atfect the growth of said established crop.
41. The method according to claim 40 wherein the 3,4-dichlo-
ropropionanilide is applied in a composition comprising 3,4-di-
chloropropionanilide and an inert diluent therefor at a rate
of between 0.5 and 6 pounds of 3,4-dichloropropionanilide per
acre.
42. The method according to claim 41 wherein the established
crop is monocotyledonous and the undesirable plants include
monocotyledonous plants.
48. The method according to claim 47 wherein the undesirable
annual monocotyledonous plants include barnyard grass.
[Continued ]
75a
133. The amendment presented also Rohm and Haas’
arguments that Takematsu’s work was immaterial to the
patentability of Rohm and Haas’ claims as it was ante-
dated by Rohm and Haas’ parent. application filed in
1958, and that Takematsu’s work was not an independent
15 [Continued ]
49. A method for selectively inhibiting the growth of growing,
tender, undesirable, annual, monocotyledoncus plants which are
susceptible to 3,4-dichloropropionanilide, said undesirable plants
growing in an area containing an established crop which is
resistant to 3,4-dichlorcpropionanilide, which comprises apply-
ing to said undesirable plants a composition comprising 3,4-di-
chloropropionanilide and an inert carrier therefor at a rate
of application which inhibits growth of said undesirable plants
and which does not substantially affect the growth of said
established crop.
48. The method according to claim 41 wherein the established
crop is monocotyledonous and the undesirable plants include
dicotyledonous plants.
44. The method according to claim 41 wherein the established
crop is dicotyledonous and the undesirable plants include mo-
nocotyledonous plants.
45. The method according to claim 41 wherein the established
d crop is dicotyledonous and the undesirable plants include dico-
tyledonous plants.
46. The method according to claim 42 wherein the monoco-
tyledonous established crop is a grain crop.
47. The method according to claim 42 wherein the undesirable
monocotyledonous plants are annual plants in the tender state.
51. The method according to claim 50 wherein most of the
undesirable plants are destroyed by the 3,4-dichloropropicna-
nilide applied thereto without substantial adverse affect on the
crop growing therewith.
52. The method according to claim 49 wherein the established
crop is dicotyledonous.
53. The method according to claim 40 wherein the established
crop is tomatoes.
54. The method according to claim 40 wherein the established
crop is potatoes.
Plaintiff’s Exhibit 2.
|
|
76a
invention but was undertaken at Rohm and Haas’ re-
quest, and as found by Assistant Commissioner of Pat-
ents during Interference 93,751, such work inured to
the benefit of Rohm and Haas. Plaintiff’s Exhibit 2.
134. In an office action dated November 9, 1973, the
patent examiner allowed formally claims 40, 41, 53 and
54. Claims 42-52 were rejected, however, on the basis
of 35 U.S.C. § 112, as such claims failed to disclose
sufficiently the specificity and selectivity among crops
and undesirable plants recited in those claims. Certain
claims, specifically 42, 43 and 46 to 51, were rejected
under 35 U.S.C. § 102(f) because they contained an in-
vention Rohm and Haas had admittedly not made. The
examiner stated that “[t]his rejection is on the basis of
admission by applicants and not on the Takematsu work
as alleged,” and accordingly, “the question of whether
this independent invention inures to the instant appli-
cants is not at issue.” Plaintiff’s Exhibit 2. Finally
claims 42, 43 and 46 to 51 were rejected as obvious from
the Takematsu work:
There is no question that the instant claims em-
brace controlling plant growth in rice, an invention
of another and unsupported in the parent applica-
tion and therefore the Takematsu et al article is a
proper reference. The applicants have not indicated
where in the parent application the invention taught
by Takematsu et al is supported and therefore the
argument and decisions cited in support thereof are
non-persuasive of error in this rejection. General
allegations as to generic invention versus species is
not the issue here. Rather, it is a separate and dis-
tinct invention made by another and available as a
reference that renders the claimed invention prima-
facia [sic] obvious.
Plaintiff’s Exhibit 2 at 331.
135. On November 19, 1973, Hutz telephoned patent
examiner Thomas to seek clarification of the patent ex-
Ta
aminer’s recent decision. Thomas informed Hutz that
if Rohm and Haas could establish to Thomas’ satisfac-
tion that the rejected claims were supported by the 1958
parent application, the rejection on the basis of 35 U.S.C.
$103 would be withdrawn. Hutz and patent examiner
Thomas discussed also the rejection on the basis of 35
U.S.C. §102(F). Hutz explained that he did not think
that McRae had ever made a statement denying inven-
torship of the invention contained in Rohm and Haas’
patent application. Thomas responded with the sugges-
tion that McRae execute a declaration or affidavit and
file it with the Patent Office for the patent examiner’s
consideration. Testimony of Rudolf Hutz; Plaintiff’s Ex-
hibit 167.
136. On December 12, the patent examiner and Rohm
and Haas’ counsel met to discuss in detail the recent
rejections of Rohm and Haas’ claims. At this interview
Hutz urged his arguments in opposition to the exam-
iner’s rejection, presented the patent examiner with a
declaration executed by McRae for the purpose of re-
futing any admission made by McRae during his testi-
mony in the Monsanto litigation with respect to the
Takematsu work, presented a draft of proposed claims
to replace the previously rejected claims, claims 55 to
61; such claims were asserted to be dependent upon a
claim previously allowed, claim 41, and recited either
specifically or generally the protected crop and the con-
trolled weed. Plaintiff’s Exhibit 2..°° Rohm and Haas
16 The claims added by the December amendment are as follows:
55. The method according to claim 41 wherein the established
crop is monocotyledonous.
56. The method according to claim 41 wherein the established
crop is dicotyledonous.
57. The method according to claim 41 wherein the undesirable
plants include monocotyledonous plants.
[Continued }
78a
cancelled also claims 42 to 50 and 52. Plaintiff’s Ex-
hibit 2.
137. On February 6, 1974, the examiner filed.a com-
munication reflecting that “[a]ll of the claims being al-
lowable, prosecution on the merits is closed in this ap-
plication and the Notice of Allowance or other appropri-
ate communication will be sent in due course, in view of:
a. Applicant’s communication filed December 27, 1973.”
Plaintiff’s Exhibit 2.
138. On March 25, 1974, the patent examiner found
the 1961 application allowable for issuance of Letters
Patent. Plaintiff’s Exhibit 2. On June 11, 1974, Letters
Patent No. 3,816,092 was issued. Plaintiff’s Exhibit 1.
D. Construction of the Patent Claims
139. Defendants contend that the claims in the patent
in suit must be read restrictively to exclude rice as a
crop. Upon carefully reviewing the record in this cause,
the Court is unable to accept this construction. A re-
16 [Continued ]
58. The method according to claim 41 wherein the undesirable
plants include dicotyledonous plants.
59. The method according to claim 41 wherein the established
crop is a grain crop.
60. The method according to claim 41 wherein the undesirable
plants include barnyard grass.
61. A method for selectively inhibiting the growth of growing,
tender, undesirable, annual plants which are susceptible to
3,4-dichloropropionanilide, said undesirable plants grewing in
an area containing an established monocotyledonous crop which
is resistant to 3,4-dichloropropionanilide, which comprises ap-
plying to said undesirable plants a composition comprising 3,4-
dichloropropionanilide and an inert carrier therefor at a rate
of application which inhibits growth of said undesirable plants
and which does not substantially affect the growth of said
established monocotyledonous crops.
Plaintiff’s Exhibit 2.
ee ee ee
ae I Ee
79a
view of the patent at issue reveals that the claims con-
tained therein disclose use of propanil as a selective,
post-emergence herbicide to inhibit the growth of un-
desirable plants in an area containing growing undesir-
able plants in an established crop. The patent contains
claims where propanil is used to inhibit the growth of
undesirable plants where such undesirable plants are
growing in an area containing “monocotyledonous crops”
and “grain crops’. All of these terms, “crops”, “mono-
cotyledonous crops” and “grain crops” can be read lit-
erally to embrace rice. Testimony of Rudolf Hutz; Tes-
timony of Dougal McRae; Testimony of George Sim-
mons; Plaintiff’s Exhibit 2. See also Testimony of Don-
ald Dunner.
140. A review of the history of the prosecution of
Rohm and Haas’ patent also leads to the conclusion that
rice is included within the patent claims. Rohm and
Haas’ 1958 application described a generic invention in-
cluding the post-emergenze use of propanil to control
weeds in a variety of resistant crops. Testimony of
Dougal McRae; Plaintiff’s Exhibit 4. At all times dur-
ing the prosecution of the patent in suit, Rohm and
Haas had at least one claim embracing broadly weed
control in rice crops. Testimony of Dougal McRae;
Plaintiff’s Exhibit 2. See also Testimony of Donald Dun-
ner. At no time time during the prosecution of the 1958,
1960 or 1961 applications did Rohm and Haas intend a
limitation of the broad claims to exclude rice as the
crop, and, indeed, Rohm and Haas consistently contended
otherwise. Testimony of Rudolf Hutz; Testimony of
Dougal McRae; Testimony of George Simmons; Plain-
tiff’s Exhibits 2, 12A, 12B. See also Testimony of Donald
Dunner. During the renewed prosecution, both the pat-
ent examiner and Rohm and Haas’ counsel agreed that
the claims, as issued, embraced rice. Testimony of Ru-
dolf Hutz; Testimony of George Simmons; Plaintiff’s
Exhibits 2, 168. See also Testimony of Donald Dunner;
Plaintiff’s Exhibits 166, 169.
80a
141. When Rohm and Haas filed its 1958 application,
several factors were known to those skilled in the her-
bicide art to affect selectivity. These factors included
chemical structure of the herbicide, application rate,
species of plant, type of application, age of plant, and
formulation. Testimony of Dougal McRae; Testimony
of Ruppert Palmer; Plaintiff’s Exhibits 4, 12A. These
factors were and are interdependent. Testimony of
Dougal McRae; Testimony of Ruppert Palmer. The 1958
application was not intended to and did not limit the
described selectivity to a single factor such as age, and
it set forth the various factors in the specification with-
out restriction to one as the basis for propanil’s selec-
tivity. Testimony of Dougal McRae; Plaintiff’s Exhibit
4, 12A, 127. See also Testimony of Ruppert Palmer.
142. The 1958 application was not limited to a par-
ticular age of the crop to be protecied. Several specifi-
cally exemplified crops in the application had both old
growth and young, tender and succulent growth at the
time of treatment, and the existence of these two types
of growth would be recognized by one skilled in the art
upon reading the specification. Testimony of Dougal
McRae; Plaintiff's Exhibit 4. Neither type of growth
was harmed by propanil. Testimony of Dougal McRae;
Plaintiff's Exhibit 4. Other crops mentioned in the speci-
fication were not limited to any particular age, and the
broad objects of the invention included weed and crop
treatment at any relative age. Testimony of Dougal
McRae; Plaintiff’s Exhibits 4, 128. See also Testimony of
Ford Baldwin. Prior to filing the 1958 application, Dr.
McRae had demonstrated crop selectivity where the
crop, e.g. wheat, a grain crop, and weeds were at the
Same young age. Testimony of Dougal McRae; Plain-
tiff’s Exhibits 4, 128.
143. The term “established” as contained in itohm
and Haas’ patent does not limit the crop in terms of
age, but rather means a crop which has at the very least
emerged from the soil and is visible. Testimony of
8la
Dougal McRae; Plaintiff’s Exhibit 2. See also Testimony
of Ruppert Palmer. This express meaning accompanied
the first use of the term in the claims, and the patent
examiner was well aware of and raised no objection to
this meaning. Plaintiff’s Exhibit 2; See also Testimony
of Donald Dunner; Testimony of Walter Modance. At
no time during the prosecution of the 1958, 1960 and
1961 applications was Rohm and Hass required, nor
did it intend, to limit the desirable crop to a particular
age. Testimony of Dougal McRae; Plaintiff’s Exhibit 2.
144. Propanil is effective in controlling the growth
of weeds in rice crops regardless of whether the crop
has just emergea or is in a later stage of growth. Weeds
are controlled and rice is unharmed, and propanil acts
in exactly the same way, regardless of the age of the
rice. Testimony of Ford Baldwin; Testimony of Ruppert
Palmer.
145. Prior to the inclusion of the term “established”
in the claims contained in Rohm and Haas’ patent ap-
plications, McRae and Rohm and Haas had used the
term “established” to mean “emerged”, and had charac-
terized rice in the “emerged” seedling stage as “estab-
lished”. Testimony of Gordon Brandes; Testimony of
Dougal McRae; Plaintiff’s Exhibits 2, 50, 55. See also
Testimony of Ford Baldwin; Testimony of Rupper Pal-
mer. The term “established” has been used simiiarly
by others in the art. Testimony of Ruppert Palmer;
Plaintiff’s Exhibits 137, 146-48. See also Testimony of
Ford Baldwin; Defendants’ Exhibits 140, 141.
146. When Rohm and Haas first introduced propanil
commercially as a selective, post-emergence herbicide in
1961, Rohm and Haas recommended that propanil be ap-
plied to the weeds and rice when barnyard grass, the
key weed to be controlled, was in the 1 to early 4 leaf
stage. Testimony of Gordon Brandes; Plaintiff’s Ex-
hibits 34, 41, 48, 45, 50, 53, 55-57, 58, 60, 165. Since
that time, there has been no substantial change in this
82a
recommended method of application; Testimony of Gor-
don Brandes; Testimony of Dougal MacRae; Plaintiff’s
Exhibits 47, 56, see also 39, 42-44, 48, 51, 52, and from
that time to this day, purchasers of propanil follow
this recommended procedure of application. Testimony of
Ford Baldwin; Testimony of Richard Clipson; Testimony
of Bill Fagala; Testimony of Barry Jeffrey; Testimony
of Ruppert Palmer; Plaintiff’s Exhibits 21, 139B, C, E, F.
147. Generally, rice and barnyard grass germinate
and grow together, and they are essentially at the same
stage of growth when propanil is applied. When barn-
yard grass is at the optimum 1 to early 4-leaf stage, rice
is taller than the barnyard grass and has approximately
the same number of leaves. Testimony of Gordon Bran-
des; Testimony of Ford Baldwin; Testimony of Richard
Clipson; Testimony of Bill Fagala; Testimony of Barry
Jeffrey; Testimony of Dougal McRae; Testimony of Rup-
pert Palmer; Plaintiff’s Exhibit 34. See also Plaintiff’s
Exhibit 139A-E; Defendants’ Exhibit 229.
E. Prior Art
148. Defendants filed notices pursuant to 35 U.S.C.
§ 282 listing eleven items of prior art which include pat-
ents and publications in support of their assertions of
invalidity pursuant to 35 U.S.C. §§102 and 103. See
Notice Under 35 U.S.C. § 282."7 In addition to the pat-
17 The prior art cited by the defendants in their motions filed
pursuant to section 282 of Title 35 of the United States Code in-
cluded the following:
Patents
Country Number Date Patentee
Germany 1,005,784 April 4, 1957 Fischer
Germany 1,039,779 Sept. 25, 1958 Schafer, et al
United States 3,382,280 May 7, 1968 Huffman
United States 2,655,445 Oct. 13, 1953 Todd
[Continued ]
83a
ents and publications listed in their notices, defendants
urge also several other items of alleged prior art in the
hope of prevailing on their claim that the patent in suit
is invalid pursuant to section 103. All of the prior art
cited by defendants were cited and considered by the
Patent Office during the prosecution of Rohm and Haas’
applications. Testimony of James Thomas; Testimony of
Rudolf Hutz; Plaintiff’s Exhibits 2, 3, 4, 165.
149. South West African Patent 827/59 is a foreign
counterpart of Rohm and Haas’ 1958 Wilson application
and was first patented on February 3, 1959. Defend-
ants’ Exhibit 320. German Auslegeschrift 1,039,779, is-
sued in the name of Farbenfabriken Bayer Aktiengesell-
schaft; Leverkusen-Bayerwerk is the Bayer application
involved in Interference No. 93,751. The earliest refer-
ence date for the application is September 25, 1958. De-
fendants’ Exhibits 253, 313. Although the Bayer ap-
plication was filed initially in April, 1957, the applica-
tion as originally filed did not disclose propanil or its
unique herbicidal activity. It was not until a subsequent
application was filed on February 6, 1958 that propanil,
but only as a compound per se, was disclosed. See Plain-
tiff’s Exhibits 12A-12D.
17 [Continued ]
Country Number Date Patentee
South West Africa 827/59 Feb. 5, 1959 Wilson, et al
United States 2,863,752 Dec. 9, 1958 Hamm
United States 2,705,195 Mar. 29, 1955 Cupery, et al
United States 2,876,088 Mar. 3, 1959 Hill, et al
Publications
“Weeds”, Vol. 2, Jan. 1953, pp. 43-65.
“Plant Regulators, CBCC Positive Data Series, No. 2”, June 1955,
pages a, b, c, 1, 39, and 40.
“Fundamental Studies Relating To Control Of Weeds In Farm
Land”, Takematsu, et al, January, 1959, pp. 67, 96, 99-110, 115,
116.
Defendants’ Notice Under 35 U.S.C. § 282.
84a
150. Assuming arguendo that the Takematsu booklet
is a publication within the meaning of 35 U.S.C. § 102,
such publication was distributed on approximately Jan-
uary 16, 1959, Plaintiff’s Exhibits 2, 19, 20; Defend-
ants’ Exhibits 252, 323.
151. Each claim of the patent in suit is entitled to
the benefit of the filing date of the 1958 application,
i.e., February 18, 1958. Consequently, the South West
African Patent 827/59, German Auslegeschrift 1,039,779
and the Takematsu booklet are not prior art as to the
claims contained in the patent in suit.
152. German Auslegeschrift 1,005,784, filed in the
name of Fischer and assigned to BASF, has as its ear-
liest reference date the same date accorded Rohm and
Haas as its conception date by the Board of Patent In-
terferences in Interference 93,751, April 4, 1957. Plain-
tiff’s Exhibits 12D, 20; Defendants’ Exhibits 253, 314.
Following this conception date of the invention contained
in the patent in suit, Rohm and Haas’ inventors were
diligent in making large quantities of propanil, design-
ing and initiating the 1957 summer field tests at New-
town Farm, and applying propanil and observing its ef-
fect on crops and weeds. Consequently, the inventors re-
duced their invention to practice in mid-1957. Testimony
of Dougal McRae; Plaintiff’s Exhibits 5, 12A, 12B, 12D.
Although defendants attack the conception date awarded
Rohm and Haas in Interference 93,751, they rely only
on evidence which was before the Board of Patent In-
terference and have added nothing new to the record.
Plaintiff’s Exhibits 5, 12A, 12B, 12E.
Moreover, an independent review of the evidence dem-
onstrates that Drs. McRae and Wilson conceived the
claimed invention during the meeting of April 3, 1957,
embodied that conception in the memorandum of April
4, 1957, and thereafter conducted a continuous series
of tests which established numerous reductions to prac-
ee ee ee ee a a ee a
85a
tice of the claimed methods. Testimony of Dougal Mc-
Rae. Plaintiff’s Exhibits 12E, 12Q. See Plaintiff’s Ex-
hibit 12
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