Ritter v. Rohm & Haas Company

• Decision Date: 28 June 1967
• Docket Number: No. 64 Civ. 3216.,64 Civ. 3216.
• Citation: 271 F. Supp. 313
• Parties: John J. RITTER, Plaintiff, v. ROHM & HAAS COMPANY, Defendant.
• Court: U.S. District Court — Southern District of New York

271 F. Supp. 313

John J. RITTER, Plaintiff, v. ROHM & HAAS COMPANY, Defendant.

No. 64 Civ. 3216.

United States District Court S. D. New York.

June 28, 1967.

COPYRIGHT MATERIAL OMITTED

Kenneth B. Ray, New York City, for plaintiff; Nicholas M. Selinka, New York City, of counsel.

Burgess, Ryan & Hicks, New York City, for defendant; John F. Ryan, New York City, Connolly, Bove & Lodge, Arthur G. Connolly, Januar D. Bove, Jr., Wilmington, Del., of counsel.

OPINION

MacMAHON, District Judge.

Plaintiff, John J. Ritter, New York University Professor Emeritus in organic chemistry, sues for infringement of his United States patent, No. 2,573,673, entitled "Method of Producing N-Mono Substituted Imidic Compounds,"¹ issued October 30, 1951 on a continuation in part application filed May 27, 1950 and an earlier application filed January 27, 1945. Defendant, Rohm & Haas Company, a manufacturer of chemicals, denies infringement and counterclaims for declaratory judgment of noninfringement, invalidity, and unenforceability.

Only claims 1, 4-7, 13, and 16-18 of the Ritter patent are before the court for adjudication. In essence, all of them claim discovery of a single step in a process for producing N-mono hydrocarbon substituted imino compounds by reacting three components—any nitrile, certain cationoid compounds, and certain ethylenic substances—under substantially anhydrous conditions.² It is important to note that the patent teaches, but does not claim, a second step: that "the products of * * * the first step constitute intermediates * * * which will further react readily with water * * * forming various amidic compounds. In the case of water, the resultant products are N-mono substituted amides."³

Defendant manufactures four N-mono substituted amides which it converts to amines. Each of its accused processes reacts hydrogen cyanide (a nitrile), sulfuric acid (a cationoid), and an olefin (an ethylenic substance). There is no question that all of those reactants fall within the class of compounds claimed by plaintiff's patent. The parties are at odds, however, on (1) whether defendant's processes use water as a fourth component of a single step reaction, and (2) whether defendant's processes produce an imino compound.

Denying infringement, defendant claims (1) that its accused processes are not conducted under substantially anhydrous conditions because they all use water as a fourth reactive component in a single step reaction, and (2) that its processes produce, not an imino compound, but a protonated amide, which it then reacts with water to produce an N-mono substituted amide.

Asserting infringement, plaintiff claims (1) that defendant's processes are conducted under substantially anhydrous conditions because no water, as such, is present and, in any event, water is not a reactive fourth component, and (2) that defendant's processes produce an imino compound which defendant then reacts with water to produce an N-mono substituted amide.

As we said above, Ritter teaches a first step (producing the imino compound) and then a second step (reacting the imino compound with water to produce an N-mono substituted amide). Ritter originally tried to patent both steps. The Patent Examiner rejected this application as unpatentable over the prior art, particularly the Gresham patent. In order to distinguish his patent from the prior art, Ritter gave up the second step and restricted his claims to the first step, the one-step, three-component reaction "under substantially anhydrous conditions."

Defendant claims that the quoted phrase impales plaintiff on the horns of a dilemma. If the phrase is stretched to include as much water as defendant uses, Ritter's patent (1) reads on the prior art, or (2) covers a different reaction which produces a different product which Ritter never taught or claimed—the protonated amide. If it is restricted to exclude that much water, defendant's processes do not infringe.

The Issues

Defendant has also leveled a barrage of other defenses. Defendant contends that the patent is invalid because of anticipation, obviousness, fatally indefinite claims, and misrepresentations to the Patent Office. Defendant asserts that the patent is unenforceable against it because of laches. Moreover, in arguing non-infringement, defendant invokes the doctrine of file wrapper estoppel. We now consider these issues seriatim.

A. Validity

(1) The I. G. Farben French Patent

The first prior art reference cited by defendant is I. G. Farben's French patent, No. 902,342 (PX 2), which bears a "delivre" date of December 4, 1944. Ritter concedes that this patent discloses his invention, but asserts that it does not invalidate his patent because (1) Farben's process was not "patented" within the meaning of 35 U.S.C. § 102(a) until after January 27, 1945, the date Ritter filed his application, and (2) even if Farben's process was "patented" on December 4, 1944, Ritter actually invented his process before that date.

(a) Date of the Farben Patent

The court tried the issue regarding the date of the Farben patent before all others and found from the bench that I. G. Farben's process was "patented" within the meaning of 35 U.S.C. § 102(a) on December 4, 1944 (Tr. 151-54).

There is no dispute that, in France, all the rights of a patentee accrue to him on the "delivre" date of his patent (Tr. 36-40, 72-73). On that date, the Minister of Industry grants the application by signing a decree. Soon afterward the Patent Office notifies the applicant. As of the "delivre" date, the patentee acquires a monopoly right to exclude others, and he can sue for infringement. However, unlike American patents, French patents are not published on the same day they are granted. Here, the fact that the Farben application had been granted was not published in the Bulletin Officiel de la Propriete Industrielle (the "BOPI") until July 6, 1945, and the text of the patent was not published in printed form until August 28, 1945.

Plaintiff relies on In re Ekenstam, 256 F.2d 321 (C.C.P.A.1958), which held that a foreign invention is not "patented" within the meaning of 35 U.S.C. § 102(a) until the patent is available to the public. Ekenstam explicitly contradicted General Electric Co. v. Hygrade Sylvania Corp., 61 F.Supp. 476, 529 (S.D.N.Y. 1944). Both cases involved Belgian patents. General Electric stated in a terse dictum that a Belgian invention is "patented" as soon as the ministerial decree issues, rather than when the patent is published. General Electric relied on Sirocco Engineering Co. v. B. F. Sturtevant Co., 220 F. 137 (2 Cir. 1914), cert. denied, 238 U.S. 636, 35 S.Ct. 939, 59 L.Ed. 1500 (1915), which involved two French patents dated 1890 and 1896. However, there are several crucial differences between the Belgian system and the old French system involved in Sirocco (Tr. 80-82; In re Ekenstam, supra, 256 F.2d at 324). Therefore, General Electric is not entitled to much weight.

We shall assume, arguendo, that Ekenstam is correct and that the word "patented" in 35 U.S.C. § 102(a) connotes "available to the public." The Second Circuit has never said otherwise, for in Sirocco it was undisputed that the 1890 and 1896 patents there involved were available to the public.⁴

Thus, the question before us is whether Farben's French patent was available to the public on December 4, 1944. Plaintiff contends that it was not available until July 6, 1945, when the BOPI published a short paragraph listing I. G. Farben's name, the date of its application, and the title of its patent (PX 5, p. 355). The BOPI is simply a periodical list of patent applications which have been granted.

It is undisputed that the French practice from 1903 to 1964 was to type the patentee's name, the date of its application, and the title of its patent on a file card which was available to the public in the French Patent Office even before the patent was granted (Tr. 49, 73-75). However, plaintiff's expert, Dr. Soubbotitch, testified that during World War II the file cards were not kept and the Patent Office was closed (Tr. 49). This was flatly contradicted by defendant's expert, Mr. Miller, who testified that "the Vichy Government functioned very, very well," that the file cards were at all times kept quite regularly (Tr. 105-08), and that the I. G. Farben patent could not have been given its number unless a file card had been kept for it (Tr. 117). Neither witness was in France during World War II. Having observed both witnesses and their manner of testifying, the court was more impressed with the demeanor of Mr. Miller and with his answers, which were frank and responsive. The court found him the more credible witness. Accordingly, we find that in 1944 and 1945 the file cards were kept regularly for each and every patent in the French Patent Office and were available to the public even before the patents were granted.

There were "watchers" in the French Patent Office who would search the card file for inventions which might interest their employers (Tr. 97, 106-07). The title on every card precisely expressed the subject matter (Tr. 97-99). Once the "watcher," or anybody else, found a card that interested him, he could, between 1903 and 1955, obtain a copy of the patent as soon as it was granted, i. e., on the "delivre" date.⁵

Miller testified that all that was necessary to obtain a copy of the patent was the payment of a five franc fee fixed by the decree of 1903 (Tr. 74, 82-83 and 101-02 referring to PX 9 for Id., p. 2, item 6). Soubbotitch conceded that five francs was all that was necessary after the BOPI date (Tr. 64). Nevertheless, he claimed that, between the "delivre" date and the BOPI date, no member of the public could obtain access to the patent unless he obtained permission from the Minister of Industry (Tr. 44, 53, 56-57).

In support of his testimony, Soubbotitch relied on: (1) an order of 1955 (not in evidence) which provided that patents be kept...