ROHM & HAAS COMPANY v. ROBERTS CHEMICALS

• Decision Date: 27 June 1956
• Docket Number: Civ. A. No. 1632.
• Citation: 110 USPQ 93,142 F. Supp. 499
• Court: U.S. District Court — Southern District of West Virginia
• Parties: ROHM & HAAS COMPANY, a corporation, Plaintiff, v. ROBERTS CHEMICALS, Inc., a corporation, Defendant.

142 F. Supp. 499

110 USPQ 93

ROHM & HAAS COMPANY, a corporation, Plaintiff, v. ROBERTS CHEMICALS, Inc., a corporation, Defendant.

Civ. A. No. 1632.

United States District Court S. D. West Virginia.

June 27, 1956.

Connolly, Cooch & Bove, Arthur G. Connolly, Wilmington, Del., Jackson Kelly, Holt & O'Farrell, William J. Carter, Charleston, W. Va., for plaintiff.

Stevens, Davis, Miller & Mosher, Robert F. Davis, Martin Fleit, Washington, D. C., John B. Fisher, Charleston, W. Va., for defendant.

MOORE, Chief Judge.

Plaintiff claims that defendant is a contributory infringer as well as a direct infringer of plaintiff's patent number 23,742, wherein plaintiff claimed in seven separate claims the process of controlling fungus growth on living plants by applying thereto fungicidal compositions having as an active ingredient various salts of ethylene bisdithiocarbamic acid. This process patent is a reissue of patent number 2,317,765, whereby plaintiff's assignor, one William F. Hester, was granted exclusive rights relating to certain of these fungicidal compositions themselves. No process claims were included in this original patent. The reissue patent, however, contains eight process claims, some of which coincide as to the description of the active ingredient with the claims of the original patent, while others do not. Thus, the reissue patent contains process claims covering the zinc, cadmium and "bivalent metal" salts of ethylene bisdithiocarbamic acid, none of which are mentioned or set out in the claims of the original patent; and further, a process claim of the reissue patent covers the sodium salt, whereas the corresponding composition claim in the original patent speaks of the disodium salt.¹

The particular chemical compound which rests at the basis of the controversy is a substance familiarly known as nabam. This is the sodium salt of ethylene bisdithiocarbamic acid.

Defendant is a manufacturer of chemicals, whose plant is located at Nitro, West Virginia. It was organized in the year 1953 for the purpose of manufacturing and selling various chemical compounds, among which was nabam. This compound was by that time known to be in widespread use by farmers as an ingredient of a fungicide prepared by diluting the nabam with water in the proportion of approximately one-tenth of one per cent of the active ingredient and ninety-nine and nine-tenths per cent of water and applying it to the living plant; or by dispersing it in approximately similar proportion in some inert powder or earthy medium, and thus applying it to the living plant. Only a negligible amount of nabam had been manufactured by defendant prior to the date of plaintiff's reissue patent; but since that date defendant has, through distributors and dealers, placed in the hands of farmers substantial quantities of this product, together with detailed instructions regarding its use on living plants, similar in all material respects to the instructions furnished to farmers by plaintiff in connection with the sale of the same product. It is this activity on the part of defendant which plaintiff seeks to enjoin as an infringement of its reissue patent, and for which it also seeks to recover damages in this case.

Defendant has filed a counterclaim asking for a declaratory judgment to the effect that plaintiff's reissue patent is invalid, and also for an injunction to restrain further suits against it for infringement by plaintiff.

The chemical compound called nabam was not unknown when Hester secured his composition patent in the year 1943. Some thirty years before that date one Nagele published the results of an experiment which, about 27 years later, was repeated by a scientist named Yakubovich. This experiment produced the sodium salt of ethylene bisdithiocarbamic acid.

In the year 1934, and thus prior to Yakubovich's experiment, Tisdale and Williams, chemists for E. I. duPont deNemours & Co., secured patent number 1,972,961, containing claims to "a disinfectant useful as a bactericide, microbicide, and fungicide, comprising a derivative of dithiocarbamic acid." The Tisdale patent disclosed that all the compounds used by him in performing his experiments contained a grouping of chemical elements designated as , and that "all compounds which contain this characteristic group are of value for the control of fungi of various kinds." The compound known as nabam contains this characteristic group.

It is contended by defendant that because the basic chemical compound, nabam, was discovered by Nagele and confirmed by Yakubovich prior to the Hester composition patent, and because of the disclosure by Tisdale in 1934 that all compounds (including by extension nabam) containing the characteristic grouping of chemical elements above set out are of value for the control of fungi of various kinds, and because of the fact that the "compositions" claimed in the original Hester patent consisted merely of the combinations of nabam, or other salts of ethylene bisdithiocarbamic acid, with plain water; that there was therefore nothing new in the disclosures or claims of the original Hester patent, nor any basis on which could be founded a valid reissue of that patent. Defendant also contends (but this is disputed in the evidence) that routine chemical reactions obtained by experienced chemists in following the teachings of the Tisdale patent will produce substantial quantities of nabam itself. Defendant also claims to have acquired intervening rights which should be protected by the Court; that the reissue of the original Hester patent was invalid because (a) plaintiff was guilty of laches in applying for the reissue; (b) plaintiff lacked sufficient grounds for applying for the reissue because, as defendant contends, the omission of the process claims from the original patent was not due to inadvertence, accident or mistake; (c) because the reissue, if proper at all, should have been applied for within 2 years, and (d) because it is not, as defendant contends, within itself a valid reissue.

There was long need among farmers for a fungicide which would perform satisfactorily under actual crop conditions. Many different chemicals were tried, but none were found which would kill the fungus without in some way damaging or destroying the plant itself. The problem was to develop a material whose fungicidal properties would be at their maximum efficiency at the same time that its phytotoxicity (state of being poisonous to plants) was at a minimum. Nabam was the first of the fungicides to possess these properties in a satisfactory measure.

However, the use of nabam as a fungicide was originally not without its difficulties. When combined only with water or other inert medium it proved in large degree unstable, and to that extent unreliable and ineffective. Though it was found superior to fungicides theretofore used, it was not until one of plaintiff's chemists, Heuberger, in the year 1943, had discovered that by combining nabam with zinc sulfate and lime and then diluting this combination, a better degree of stability could be attained, and plaintiff had secured a composition patent on this combination that the sale and use of nabam as a fungicide began and grew rapidly.

About the year 1947, E. I. duPont deNemours & Co. began to manufacture and sell for use by farmers as a fungicide a product which, under another name, was substantially the same as nabam. This was continued for several years, during which time plaintiff did not seek to prevent duPont (as it is now seeking to prevent defendant) from making and selling this product. It was explained by one of plaintiff's representatives who testified as a witness that the reason why no steps were taken against duPont was that plaintiff feared it might be deemed guilty of misuse of its patent, in view of the claims of the Hester patent to "fungicidal" compositions, duPont having been marketing the product in a highly concentrated form which was not a practical fungicide for living plants until greatly diluted, and hence could not be used as such without destroying the living plants. Prior to the bringing of this suit plaintiff had granted duPont a license for the use of the process claims in the reissue patent.

Defendant has sold nabam primarily to two distributors, namely, Diamond Fertilizer Company and Chemical Formulators, Inc. These companies have acted as distributors under indemnity agreements with defendant protecting them against claims of infringement.

Defendant in its answer sets up the defense that nabam is a staple article of commerce, suitable for uses other than those claimed in the Hester reissue patent. Little if any evidence was offered in proof of this defense, and I therefore find as a virtually undisputed fact that the only present commercial use of nabam is as a fungicide, to be used in some form of dilution, or in combination with other chemicals, on living plants.

The method used by Hester in learning about the fungicidal propreties of nabam in its relation to living plants was as follows:

One Dr. Horsfall was, at the time of Hester's investigations, in charge of a plant experimental station in Connecticut. At this place he performed experiments on living plants with various substances as they were furnished to him by persons wishing to have materials tested. Hester, during a period of approximately three years around 1940, took from the shelves of the Rohm & Haas laboratory approximately thirteen hundred different materials or substances, which he sent to Dr. Horsfall for the purpose of having them tested as to their fungicidal properties on living plants. Among these was a sample of nabam. The first report on nabam made by Dr. Horsfall was that it was unsatisfactory. For some reason not explained in the evidence (Hester being deceased and therefore unavailable as a witness) Hester did not discard the possibility of using nabam but, presumably on the theory that the sample sent was an old...