Rohm & Haas Co. v. Mobil Oil Corp.
| Decision Date | 12 November 1981 |
| Docket Number | Civ. A. No. 78-384,79-397. |
| Citation | 525 F. Supp. 1298 |
| Court | U.S. District Court — District of Delaware |
| Parties | ROHM AND HAAS COMPANY, Plaintiff, v. MOBIL OIL CORPORATION and Rhone-Poulenc, Inc., Defendants. MOBIL OIL CORPORATION and Rhone-Poulenc, Inc., Plaintiffs, v. ROHM & HAAS COMPANY, Defendant. |
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Rudolf E. Hutz and James M. Mulligan of Connolly, Bove & Lodge, Wilmington, Del., and George W. F. Simmons and William E. Lambert, III, of Rohm & Haas Company, Philadelphia, Pa., of counsel, for Rohm and Haas Company.
Edward M. McNally of Morris, James, Hitchens & Williams, Wilmington, Del., and John A. Diaz, J. Robert Dailey, Arnold I. Rady, New York City, and James W. Gould, Philadelphia, Pa., Morgan, Finnegan, Pine, Foley & Lee, New York City, of counsel, for Mobil Oil Corp. and Rhone-Poulenc, Inc.
In Civil Action No. 78-384, plaintiff Rohm and Haas Company ("Rohm & Haas") seeks a declaratory judgment that a patent held by defendant Mobil Oil Company ("Mobil"), United States Patent No. 3,979,437 ("437 patent"), is invalid, unenforceable and not infringed. Mobil has counterclaimed for infringement and seeks treble damages against Rohm & Haas. (D.I. 14.) After commencement of this action, Mobil filed an application for reissue of the 437 patent with the Patent and Trademark Office ("PTO") pursuant to 37 C.F.R. § 1.171 et seq. and moved to stay this litigation pending the outcome of the PTO proceeding. (D.I. 11.) On December 12, 1978, the Court granted Mobil's motion to stay but permitted Rohm & Haas to take certain limited discovery regarding some of the issues which would come before the PTO. Rohm and Haas Co. v. Mobil Oil Corp., 462 F.Supp. 732 (D.Del.1978). The PTO subsequently rendered a decision substantially upholding the validity of the 437 patent and rejecting in toto Rohm & Haas' contentions of prior art and fraud in the procurement of the patent. Mobil has now moved for a preliminary injunction prohibiting Rohm & Haas from further infringement of Mobil's 437 patent. (D.I. 38.) Rohm & Haas opposes this motion and has moved in turn to consolidate this action with Civil Action No. 79-397, another patent infringement suit brought by Mobil against Rohm & Haas involving the same network of patents and patent applications pertinent to the present suit. (D.I. 46.) For the reasons discussed in this opinion, the Court concludes that a preliminary injunction is not warranted, and that consolidation of this action with Civil Action No. 79-397 will be allowed.1
Both Mobil and Rohm & Haas hold patents on certain diphenyl ether compounds which can be used as herbicides. Since April, 1980, when it received EPA approval for its product, Rohm & Haas has manufactured and marketed a diphenyl ether herbicide under the trade name "Blazer." Blazer is a post-emergence selective herbicide licensed for use in soybean farming operations and is presently enjoying widespread domestic application. Mobil's 437 patent embraces a category of generic diphenyl ether compounds that includes certain of the Blazer compounds2 and Mobil recently began to manufacture its own diphenyl ether herbicide under the trade name "Tackle." Although Tackle is substantially similar in content to Blazer, it is not currently marketed in the United States and can only be sold abroad. Mobil only recently received an experimental use permit from the EPA to test Tackle on approximately 5000 acres of soybean in the United States and Tackle purportedly is at least a few years from full commercial licensing in this country.
Because of the similar product chemistry of Tackle and Blazer, the patents underlying these herbicides are said to stand in a classic blocking situation in which neither Mobil nor Rohm & Haas can sell its product without infringing the other's patent. In fact, Rohm & Haas has stipulated that if Mobil's 437 patent is deemed valid and enforceable, it has been infringed by Blazer. (D.I. 36.) The dispute thus centers on the validity of the 437 patent, particularly in light of the alleged prior art existing at the time of its issuance.
Both parties agree that the validity of the 437 patent will ultimately depend on the Court's determination of the appropriate filing date of the underlying patent application. Although the 437 patent application was actually submitted to the PTO on September 29, 1975, Mobil contends that this application was a "continuation" of a prior Mobil application filed on February 11, 1971 and, therefore, was entitled to the benefit of the 1971 filing date under 35 U.S.C. § 120.3 If Mobil is not entitled to the 1971 filing date for its 437 patent, the patent in all likelihood would be invalid because of prior art contained in a Rohm & Haas patent application covering Blazer compounds, which was published in the Netherlands in 1973, and a Rohm & Haas United States Patent No. 3,798,276 ("276 patent"), issued in March, 1974, which also allegedly encompassed certain diphenyl ether Blazer compounds.
The invention described in the Mobil 1971 application was a single empirical formula embracing a broad class of potential compounds. The written specification described 26 working examples of typical chemical compounds included within the invention and 57 other "non-limiting examples," and concluded with certain claims. The 1975 application which gave rise to the 437 patent contained the exact same specification as the 1971 application, but had different claims. Claim One of the 1975 application included certain of the Blazer compounds.
Rohm & Haas contends that even under conservative calculations the 1971 disclosure described some 15 trillion compounds and thus failed to meet the requisite specification requirements outlined in 35 U.S.C. § 112.4 The 1971 application, according to Rohm & Haas, essentially contained a "covetous structural formula" designed to encompass any conceivable permutation of chemicals. None of the claims contained in the 1971 disclosure was addressed to Blazer compounds and Mobil purportedly was not aware of their existence until it reviewed a copy of the Rohm & Haas Netherlands application. Thereafter Mobil manufactured and tested for the first time the compounds described in that application, discovered their excellent herbicidal activity, and filed the 437 patent application as a continuation of the 1971 application in an effort to gain the benefit of the earlier filing date and preempt Rohm & Haas' invention. Rohm & Haas thus contends that the 1971 disclosure was hopelessly overbroad and indefinite and could not properly support the claims contained in the 437 patent application. In addition, Rohm & Haas argues that in procuring the 437 patent and subsequent related patents, Mobil fraudulently concealed from the PTO certain highly relevant information, including the prior art contained in the Netherlands application and the fact that Mobil had never synthesized or tested for herbicidal activity any of the compounds covered by Claim One of the 437 patent application, until after discovery of the Netherlands application.
In response, Mobil contends that the generic formula described in the 1971 and 437 patent applications adequately supports Claim One of the 437 patent and denies any efforts on its part to conceal information from the PTO. The PTO Examiner in the reissue proceeding substantially agreed with Mobil, finding that the 437 patent specification was sufficiently clear to enable a person of ordinary skill in the art to recognize and reproduce the invention without undue experimentation. (D.I. 40A at 246-49.) He further found that Claim One of the 437 patent was "subgeneric" with respect to the 437 application disclosure and was adequately supported by the specification. (Id.) Because the 1971 application and the 437 application contained the exact same disclosure, moreover, the Examiner found that the latter application was entitled to the 1971 filing date and Rohm & Haas' Netherlands application and 276 patent, therefore, could not be considered prior art. (D.I. 40A at 249-50.) Finally, the Examiner concluded that Mobil's failure to test any of the Blazer compounds for herbicidal activity prior to the filing of its 437 patent application was irrelevant since federal law does not require a patentee actually to reduce the claimed invention to practice. (D.I. 40A at 332.) Based largely on the Examiner's report, the Assistant Commissioner of Patents, who is entrusted with responsibility for examining allegations of fraud or deception in the patenting process, concluded that there was insufficient evidence of inequitable conduct with respect to Mobil's procurement of its 437 patent to strike the reissue application. (D.I. 40A at 550.)
As this Court has recently observed, the standard for granting a preliminary injunction against infringement of a patent is unusually stringent. Jenn-Air Corporation v. Modern Maid Company, 499 F.Supp. 320, 322 (D.Del.1980), aff'd without opinion, 659 F.2d 1068 (C.A.3, 1981). In patent cases, the courts generally have abandoned the traditional equity rule requiring a showing of likelihood of success as a prerequisite to preliminary injunctive relief in favor of a heavier burden which requires the movant to demonstrate that the patent is "beyond question" valid and infringed. Id. at 322; see Mayview Corporation v. Rodstein, 480 F.2d 714, 717 (C.A.9, 1973); Bose Corporation v. Linear Design Labs, Inc., 467 F.2d 304, 307 (C.A.2, 1972); Eli Lilly & Co. v. Generix Drug Sales, Inc., 460 F.2d 1096, 1099 (C.A.5, 1972); Frommelt Industries v. W. B. McGuire Co., 504 F.Supp. 1180, 1184 (N.D.N.Y.1981). Besides satisfying this unique and substantial burden, the moving party must additionally make the conventional showing that it will be irreparably injured pendente lite if relief is not granted. Moreover, the Court must...
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