Ansul Company v. Uniroyal, Inc.

• Decision Date: 06 June 1969
• Docket Number: No. 68 Civ. 2244.,68 Civ. 2244.
• Citation: 301 F. Supp. 273
• Parties: The ANSUL COMPANY, Plaintiff, and Daly-Herring Co., Carolina Chemical Co., Louisville Chemical Co., Food Machinery Co. and Triangle Chemical Co., Plaintiff-Interveners, v. UNIROYAL, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

301 F. Supp. 273

The ANSUL COMPANY, Plaintiff and Daly-Herring Co., Carolina Chemical Co., Louisville Chemical Co., Food Machinery Co. and Triangle Chemical Co., Plaintiff-Interveners, v. UNIROYAL, INC., Defendant.

No. 68 Civ. 2244.

United States District Court S. D. New York.

June 6, 1969.

COPYRIGHT MATERIAL OMITTED

Morgan, Finnegan, Durham & Pine, New York City, for plaintiff and plaintiffs-interveners; John A. Diaz and David H. Pfeffer, New York City, of counsel.

Arthur, Dry, Kalish, Taylor & Wood, New York City, for defendant; Bert J. Lewen, Martin J. Cohen, Steven H. Bazerman, Kenyon & Kenyon, Malvin R. Mandelbaum, New York City, of counsel.

MANSFIELD, District Judge.

In this action for a declaratory judgment initiated by plaintiff Ansul, in which plaintiffs-interveners later joined, plaintiff seeks an adjudication of invalidity, unenforceability and non-infringement of Claims 1 and 7 of U. S. Patent No. 2,614,916 (the "916" patent herein), issued on October 21, 1952 to two scientists then employed by defendant Uniroyal, Inc. (Otto Hoffman and Dwight Schoene) and assigned by them to it, which granted certain claims for an agricultural chemical composition comprising 1, 2-dihydropyridazine-3, 6-dione and its salts¹ ("dione" herein) with a wetting agent, claimed to have the novel property of regulating and altering the growth characteristics of growing plants. The two claims in issue read as follows:

1. An agricultural chemical composition comprising material of the group consisting of 1, 2-dihydropyridazine-3, 6-dione and its salts, said composition containing a wetting agent.

7. The method which comprises treating growing plants with material of the group consisting of 1, 2-dihydropyridazine-3, 6-dione and its salts in a concentration and amount sufficient to alter the growth characteristics of said plants.

Ansul also seeks relief under the antitrust laws and misuse of the patent. Uniroyal counterclaims for infringement.

This action arises out of Ansul's entry, in the summer of 1968, into manufacture and sale of an agricultural chemical product previously sold only by Uniroyal, which claimed monopoly rights thereto under its 916 patent. Uniroyal's product has been sold under the names "MH-30" and "Slo-Gro," both of which contain, as their active ingredient, 58% by weight of a substance which was first designated as the diethanolamine salt of the dione and which is now termed the diethanolamine salt of 6-hydroxy-3 (2H)-pyridazinone ("6-hydroxy" herein). Despite the various chemical names applied to this substance throughout the years, it was established at trial that the active ingredient of Uniroyal's commercial product has at all times remained the same: the diethanolamine salt of what is designated as the dione or its isomer, commonly called "maleic hydrazide"² ("MH" herein).

Uniroyal exercised its patent monopoly for 15 years in the sale of this product without threat of competition until the summer of 1968 when the Ansul Company ("Ansul" herein) began to market identical products³ (called "Sucker Stuff" and "Retard") to be used for identical purposes.⁴ Uniroyal then moved to protect its market but was beaten in the race to the courthouse by Ansul.

The issues to be decided at this time are relatively narrow due to counsel's ability to stipulate certain important questions and the fact that trial of all issues other than validity and infringement of Claims 1 and 7 of the 916 patent has been deferred until a later date.

From March 3 to 14, 1969 a separate trial was held pursuant to Rule 42(b), F.R.Civ.P., with respect to the issues of invalidity and non-infringement of Claims 1 and 7. For the reasons hereinafter set forth the declaratory judgment action is granted with respect to Claim 1 and denied with respect to Claim 7, which is determined to be valid and enforceable, subject to resolution of the antitrust and misuse issues by trial scheduled to commence in 1969.

Background of the 916 Patent

MH, the active ingredient of the compound which is the subject of the 916 patent, dates back to 1894, when the published dissertation of a German doctoral candidate in chemistry, Hans Foersterling, disclosed the preparation of a chemical compound designated therein by the structural formula for the dione from maleic anhydride and hydrazine. One year later a modified version of this dissertation appeared in an article coauthored by Foersterling and his professor, Dr. Th. Curtius.⁵ In this work the compound which Foersterling had designated by the structural formula for the dione was given the name "maleic hydrazide." No use was suggested for the newly disclosed chemical, and it remained virtually unmentioned in the literature for over 50 years.

In 1947 two employees of defendant Uniroyal, Inc. (then known as United States Rubber Company), Otto Hoffman, a biologist, and Dwight Schoene, a chemist, were conducting joint experiments with various chemicals on tomato plants.⁶ The chemist, Schoene, prepared a compound which he later discovered had been previously disclosed and named by Foersterling and Curtius as maleic hydrazide. This compound, as well as its copper and zinc salts, was applied in a mixture or composition with a wetting agent to the test plants. Two to three weeks later, in December of 1947, it was observed that the chemical had dramatically inhibited the growth of treated tomato plants without injuring them. The plants were observed to be from 30% to 50% smaller than untreated "control group" plants, yet the treated plants appeared to be healthy and normal in all other respects. While other chemicals existed that would inhibit the growth of plants, the discovery that MH could accomplish this result without injury to the plant uncovered a new and unique property offering prospects for possible practical use. Prior to that discovery, although some other compounds had been found that would inhibit plant growth, they also caused plant injury that rendered them of little or no practical use.

In a report dated January 22, 1948, Dr. H. Douglas Tate, Uniroyal's manager of agricultural chemicals research and development, reported under a heading "Herbicides" that the recently tested reaction product of maleic anhydride and hydrazine hydrate (MH) "prevented all development of terminal and lateral buds of plants without any other apparent injury." Thereafter, Uniroyal began testing the chemical on other plants in the greenhouse and in the field, including vines (squash), weeds and grass. In September of 1948 Hoffman, the biologist, wrote the chemist, Dr. Schoene, and informed him that MH's growth inhibition effect was unique and that sufficient information had been accumulated to merit a patent application. As a result of the experimentation conducted at Uniroyal, the inventors described MH's property of inhibiting plant growth as generic. A paper prepared by them in the winter of 1948-1949 (Ex. O) for distribution to numerous experimental stations that would be asked to test the compound on various kinds of plants, described MH as "A UNIQUE GROWTH REGULANT" found to have a "pronounced, but temporary, inhibiting effect on plant growth," without suggesting any limitation to specific species. Although the paper gave details as to their experiments with tomato plants and grass, the authors indicated their belief that it could be used to inhibit growth of plants generally, as follows:

"Trials of this chemical are suggested wherever it is desirable to temporarily inhibit the growth of plants. Such uses include the temporary inhibition of grass growth on lawns so as to reduce the number of mowings; the inhibition of shrubs so as to reduce the amount of trimming; the inhibition of growth in permanent plantings such as nurseries, raspberry plantings, and others."

At approximately the same time, in a report dated October 1, 1948, Dr. Tate reported the results of Uniroyal's most recent experimentation as follows:

"Plant Growth Inhibition by Maleic Hydrazide

"Maleic hydrazide has prevented growth of lawn cover for more than one month without killing any plants or causing any apparent effect other than growth inhibition. Although no practical applications are apparent at the moment, its marked effect in controlling plant growth indicates that a useful application might be found for it or related compounds."

Thus, to summarize the status of Uniroyal's invention as of the beginning of 1949, its scientists had discovered that MH possessed a remarkable new quality and use, up to that point unknown and unappreciated, which was described in generic terms as enabling a person to arrest the growth of a plant temporarily. The basic new utility of the chemical was clear. On the other hand, further experimentation would be required to spell out the details of its use on specific plant species (i.e., to determine the most suitable dosage rates, wetting agents, concentrations, timing, and salts for each of the many varieties of growth forming the plant kingdom). Although various kinds of practical use were visualized, commercial possibilities had not yet developed. It is undisputed that if Hoffman and Schoene had not discovered the compound's unique property of plant inhibition, it might never have become known or available to mankind.

Before seeking the reward of a patent monopoly for the new discovery Uniroyal, in late February or early March of 1949, began to "sample"⁷ MH to independent research personnel who were known to be interested in the areas in which Uniroyal felt practical application of the chemical's newly discovered use might be developed. Each person asked to test the new compound was informed for the first time of its newly discovered property through a copy of the inventor's article entitled "MALEIC HYDRAZIDE, A UNIQUE GROWTH REGULANT" by Hoffman and Schoene. As a result of this sampling, the current major commercial uses of MH were developed. Dr. Aubrey Naylor, a professor of botany at Duke...