Monsanto Company v. Dawson Chemical Company, Civ. A. No. 68-H-400.

• Decision Date: 14 April 1970
• Docket Number: Civ. A. No. 68-H-400.
• Citation: 312 F. Supp. 452
• Parties: MONSANTO COMPANY v. DAWSON CHEMICAL COMPANY and Crystal Chemical Company.
• Court: U.S. District Court — Southern District of Texas

312 F. Supp. 452

MONSANTO COMPANY v. DAWSON CHEMICAL COMPANY and Crystal Chemical Company.

Civ. A. No. 68-H-400.

United States District Court, S. D. Texas, Houston Division.

April 14, 1970.

COPYRIGHT MATERIAL OMITTED

C. Frederick Leydig and John A. Rosenquist, Wolfe, Hubbard, Leydig, Voit & Osann, Chicago, Ill., Arnold H. Cole, St. Louis, Mo., and Garrett Tucker, Jr., and Larry Feldcamp, Baker, Botts, Shepherd & Coates, Houston, Tex., for plaintiff.

John McConn, Jr., and Ned L. Conley, Butler, Binion, Rice, Cook & Knapp, and Carl B. Fox, Jr., Houston, Tex., for defendants.

Memorandum and Order

SINGLETON, District Judge.

This is a patent infringement suit between the patentee, plaintiff, and the alleged infringers, defendants, who have counterclaimed for a declaratory judgment nullifying plaintiff's patent. Plaintiff is a Delaware corporation with its principle place of business in St. Louis, Missouri. Defendant Crystal Chemical Company is a Florida corporation with its principle place of business in Houston, Texas within this judicial district. Defendant Dawson Chemical Company is a Texas corporation that is wholly owned by defendant Crystal Chemical Company and has its principle place of business also in Houston, Texas. Because this action arises under the patent laws of the United States, there is jurisdiction under 35 U.S.C. § 271 and 28 U.S.C. § 1338 and venue is proper under 28 U.S.C. § 1400.

The subject matter at the heart of the dispute is a chemical compound known as 3,4-dichloropropionanalide. This compound, also known as propionil or 3,4-DC PA, is one having herbicidal activity. It is the active ingredient in commercial herbicide formulations sold by plaintiff and defendants for use in selectively killing weeds in the presence of rice. Because of this characteristic, it is said to be a selective, post-emergence herbicide, or one which, when generally applied to plants which have sprouted, selects and kills certain of them while leaving others standing and unharmed.¹ Plaintiff's patent issued on May 7, 1968, the same date this suit was filed, on the basis of an application which was presented to the United States Patent Office on February 3, 1967. The application contained a single claim reading: "3,4-dichloropropionanalide." That 1967 application was a division of an application filed May 8, 1961, which in turn was a continuation-in-part of an application filed May 27, 1957. In all three applications Dr. Clarence W. Huffman was named as the inventor.

Plaintiff began selling its herbicide, Rogue, containing 3,4-DCPA in early 1962, and has sold it continuously since that time. The defendants, Dawson and Crystal, first sold their herbicide composition in December of 1967. Since it admittedly contains 3,4-DCPA, there is no question but that defendants have infringed the patent if it is valid. Defendants, however, contend that the patent is not valid and that they have, therefore, not infringed.

3,4-DCPA is a member of a class of compounds known as analides. The May 27, 1957 patent application filed in Dr. Huffman's name disclosed a large class of 3,4-dihalogen substituted analides² as being useful herbicides. Among these disclosures was 3,4-DCPA, although the claims in that application were directed only to its use; it was not claimed as a compound. Apparently, Huffman knew of no disclosure in the prior art of the herbicidal properties which are characteristic of some analides.

Huffman's second patent application, filed on May 8, 1961, narrowed somewhat the range of compounds claimed as herbicides. 3,4-DCPA was likewise disclosed in this continuation-in-part of the 1957 application. From May 27, 1957 until May 7, 1968, when the patent issued, there was continuously pending in the Patent Office a disclosure of the compound 3,4-DCPA, its method of preparation, and experimental evidence of its activity as a herbicide.

There is no doubt that 3,4-DCPA is a novel composition of matter and that 3,4-DCPA was not only disclosed as a useful herbicide, but that, indeed, it has found very substantial commercial utility as a herbicide. Dr. Huffman was hired in 1952 by the Lion Oil Company in El Dorado, Arkansas, for the specific purpose of instituting a research program in the field of herbicides and defoliants. 3,4-DCPA was invented in the course of that program. Monsanto purchased Lion Oil Company about mid-1955 and merged Lion into Monsanto.

For the most part, the research program was carried out either by Huffman or by his assistant synthesizing the chemical compounds to be tested as herbicides and defoliants. Huffman also purchased some of the candidate compounds, but these amounted to no more than about 20% of the total tested in the course of the program. Some of the compounds tested as herbicides and defoliants during the course of the research program which were synthesized by Huffman were thought to be new compounds, but a number of the compounds synthesized by Huffman, and, of course, all the compounds purchased by him, were known to chemical science.

Because Lion Oil had no greenhouse facilities of its own to screen and test herbicide candidates on plants, Lion entered into two contracts with the Midwest Research Institute, a private, nonprofit research organization located in Kansas City, Missouri, to carry out the testing of the candidate chemical compounds sent to it by Huffman for herbicidal and defoliant properties. In the course of the Lion Oil herbicide research program and the contract with Midwest Research Institute which terminated at the end of 1955, Dr. Huffman sent about 300 different chemical compounds to Midwest for screening as herbicides and defoliants. The herbicidal activity which Dr. Huffman was searching for included at all times during his research program both pre-emergence and post-emergence activity. Dr. Huffman conceived of 3,4-DCPA and had it synthesized for the specific purpose of determining its herbicidal and defoliant properties.

The chemical compounds tested by Midwest for Dr. Huffman were of many different chemical types. Huffman initially sought to test compounds which in terms of their chemical structure were similar to certain then commercially available herbicides. By 1954, however, he had evolved a novel theory which led him to select his candidate chemicals in a different and unique way. Dr. Huffman made scale models of the molecules of a number of commercially successful herbicides and measured their over-all dimensions. He found that when stretched out several were about 13 angstroms in length and that when compressed they measured about 10 angstroms. Based on these findings he formed models of other chemical compounds which approximated such dimensions and which had no known herbicidal activity, many of which like 3,4-DCPA had never even been made before. He then proceeded to synthesize and have those chemicals tested as herbicides.

In late 1954, during the course of his herbicide research program and as a result of his examination of the scale models, he gave instructions to Mr. Swafford, a chemist assisting him, to synthesize 3,4-DCPA, a compound having approximately the desired dimensions. By January 11, 1955, 3,4-DCPA had been synthesized by Mr. Swafford for Dr. Huffman. It was sent along with a group of other compounds, including 2,4-dichloropropionanalide,³ a known chemical compound also having the same dimensions as 3,4-DCPA, but which likewise had never been tested as a herbicide. Dr. Huffman expected the 2,4-dichloropropionanalide to show superior herbicidal activity as compared to 3,4-DCPA because the 2,4 substitution of the chlorine atoms in that compound was similar to that in the well-known selective post-emergence herbicide 2, A-D. But as it turned out, 2,4-dichloropropionanalide showed essentially no herbicidal activity while 3,4-DCPA and the closely related 3,4-dichloro-isobutyranalide,⁴ also ostensibly first synthesized by Dr. Huffman, proved to have the highest activity on the plants treated at Midwest.

The testing of 3,4-DCPA by Midwest Research Institute was completed by May, 1955. Its report dated June 15, 1955, explicitly stated that 3,4-DCPA had demonstrated high activity, but that 2,4-dichloropropionanalide should be dropped from further consideration. The data on the herbicidal testing of 3,4-DCPA set forth in Midwest's report showed that all of the plants sprayed with the herbicide formulation containing that compound were killed except rye grass which was not completely killed, although about 90% of the stand of rye grass was killed. This indicated to Dr. Huffman that 3,4-DCPA should be tested further for selectivity on such plants and that the next logical step was to retest at a lower dosage or rate than eight pounds per acre at which Midwest conducted its initial screening. In a later test of 3,4-DCPA on rye grass and other plants at the rate of one pound per acre, some of the same plants killed with 3,4-DCPA killed at eight pounds per acre were again killed at one pound per acre, but the rye grass was completely unharmed, thus confirming the prior indication of selectivity. This data appears in the patent in suit.

The record is clear that it was as a result of Dr. Huffman's work that 3,4-DCPA was first found to be a selective herbicide. As previously mentioned, he saw an indication of selectivity in the Midwest test of 1955. By letter of December 28, 1956, Dr. Huffman asked Dr. Hamm to test 3,4-DCPA at low rates as a post-emergence herbicide. It was as a result of Dr. Huffman's theory as to the significance of molecular size that he was able to arrive at the herbicidal activity of 3,4-dichloro substituted analides in general and of 3,4-DCPA specifically.

The touchstone for the determination of the validity of any patent is the strong presumption that arises in favor of that validity when the Patent Office decides to grant the patent. See Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 57 S.Ct. 675, 81 L.Ed....