# Appendix — Rohm & Haas Co. v. Crystal Chemical Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385010_3075%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1984 - **Citation:** 469 U.S. 851 ## Text 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- Lt aR Sal HTT aiid wees AGE o> Be cgi ei tibnD ds a cic ives ak Sai Ey 5 - 3 = bi = 4 . © 4 3 : 4 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 [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385010_3075%3A2. Public record. Not legal advice.