Monsanto Company v. Rohm and Haas Company
| Decision Date | 21 May 1970 |
| Docket Number | Civ. A. No. 68-1269. |
| Citation | 312 F. Supp. 778,164 USPQ 556 |
| Parties | MONSANTO COMPANY v. ROHM AND HAAS COMPANY. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
COPYRIGHT MATERIAL OMITTED
Wolfe, Hubbard, Voit & Osann, by C. Frederick Leydig, Phillip H. Mayer, John Rosenquist, Chicago, Ill., for plaintiff.
Connolly, Bove & Lodge, by Arthur G. Connolly, Werner H. Hutz, Brereton Sturtevant, Wilmington, Del., for defendant.
FINDINGS OF FACT, OPINION, CONCLUSIONS OF LAW, AND ORDER.
1. Plaintiff (hereinafter "Monsanto") is a Delaware corporation with its principal place of business in St. Louis, Missouri. Defendant (hereinafter "Rohm and Haas") is a Delaware corporation with its principal place of business in Philadelphia, Pennsylvania. (Final Pre-Trial Order, p. 1).1
2. This action arises under the patent laws of the United States and this Court has jurisdiction over the parties and the subject matter thereof under 35 U.S.C. § 271 and 28 U.S.C. §§ 1338 and 1400. (PTO, p. 1).
3. The action involves the validity, enforceability and infringement of plaintiff's United States Letters Patent No. 3,382,280, issued May 7, 1968, entitled "3',4'-dichloropropionanilide".2 (Plaintiff's Exhibit No. 1).3
4. Monsanto has sued Rohm and Haas for damages for its alleged infringement of the above patent and also asks for an injunction against further infringement.
Rohm and Haas has counterclaimed, first for a declaratory judgment of invalidity, noninfringement and unenforceability of said patent (paragraphs 12 through 14 of its Answer and Counterclaims), and secondly for an injunction against and damages for plaintiff's allegedly unfair competitive acts against defendant's manufacture and sale of its allegedly infringing compound (paragraphs 15 through 20 of its Answer and Counterclaims). The foregoing injunction would, inter alia, prevent plaintiff from asserting the patent in suit against defendant and its customers. Those issues affecting the extent of defendant's liability have been deferred to an accounting, to be had in the event of an appellate or unappealed decision in favor of plaintiff. Those issues arising under defendant's second Counterclaim, paragraphs 15 through 20 in the Answer and Counterclaims, have been deferred to a separate trial to be had after a final determination of the patent infringement issue. (PTO, pp. 1-2).
Rohm and Haas has stipulated that if plaintiff's patent is valid and enforceable, it is guilty of infringement (PTO, Agreed Statement of Contested Legal and Factual Issues) since it manufactures 3,4-DCPA in the Philadelphia area and the compound is formulated into a product called STAM F-34 containing three pounds of 3,4-DCPA per gallon.
Hence, the case before this Court has resolved itself into a legal and factual dispute over the validity and enforceability of Monsanto's patent.
5. The trial in this case was extensive, commencing on November 12, 1969, and concluding on November 19, 1969. The Court entertained argument on the legal issues involved on November 21, 1969. The transcript of the trial record comprises about 1,000 pages and multiple exhibits. The testimony at trial concerned technical matters, and conflicts therein were resolved only after careful consideration of the most credible evidence, both testimonial and documentary.
6. 3,4-DCPA is a chemical compound which has the structural formula (PTO, Uncontested Fact No. 14, in part)
This chemical is a member of a class of compounds known as "anilides". It is a "dichloro" compound since the 3,4-DCPA molecule includes two chlorine atoms; hence it is a "dichloroanilide". The numbers 3 and 4 refer to the particular corners of the hexagonal ring of carbon atoms (benzene ring) to which the chlorine atoms are attached. By an accepted chemical numbering system, the corners of this ring may be numbered as indicated in the formula. (PTO, Uncontested Fact No. 15).
7. 3,4-DCPA is marketed extensively by both parties as a selective post-emergence herbicide. (PTO, Uncontested Facts Nos. 41 and 43).
A "selective post-emergence herbicide" is one which, when applied after emergence to a crop and weeds normally associated therewith, substantially destroys the weeds without adversely affecting the crop. (McRae, Notes of Trial Testimony 304).
8. A "homolog" of 3,4-DCPA is a chemical compound of the same series as 3,4-DCPA, whose structure differs from 3,4-DCPA in that it contains a different number of - CH2 - groups. A "higher" homolog of 3,4-DCPA has more - CH2 - groups, and a "lower" homolog has fewer - CH2 - groups. When a homolog of 3,4-DCPA differs in structure from 3,4-DCPA by only one more or one less - CH2 - group, it is an "adjacent" or "next" homolog of 3,4-DCPA. (PTO, Uncontested Fact No. 29).
9. 3',4' -dichloroacetanilide4 has the structural formula
It is the adjacent or next lower homolog of 3,4-DCPA since it differs in structure solely by having one less - CH2 - group. (PTO, Uncontested Fact No. 30).
10. An "isomer" of 3,4-DCPA is a chemical compound having the same composition as 3,4-DCPA, i. e., the same kinds and numbers of atoms, but with those atoms differently arranged in the molecule. A "ring position" isomer of 3,4-DCPA is a chemical compound having the same basic propionanilide structure and number of chlorine atoms attached to the benzene ring, but having at least one of the chlorine atoms affixed to a different corner of the benzene ring. (PTO, Uncontested Fact No. 31).
11. 2',4' -dichloroproprionanilide and 2',5' -dichloropropionanilide are ring position isomers of 3,4-DCPA and have the following formulae, respectively
(PTO, Uncontested Fact No. 32)
12. An "analog" of 3,4-DCPA is a compound which is not a homolog or isomer of 3,4-DCPA although its structure is closely related to, but different from, the structure of 3,4-DCPA. (PTO, Uncontested Fact No. 33).
13. 4' -chloropropionanilide has the structural formula It is an analog of 3,4-DCPA. Accepted technical names for 4' -chloropropionanilide are p-chloropropionanilide and para-chloropropionanilide. (PTO, Uncontested Fact No. 34).
14. 3' -chloropropionanilide has the structural formula
It is an analog of 3,4-DCPA. Accepted technical names for 3' -chloropropionanilide are m-chloropropionanilide and meta-chloropropionanilide. (PTO, Uncontested Fact No. 35).
15. 2' -chloropropionanilide has the structural formula
It is an analog of 3,4-DCPA. Accepted technical names for 2' -chloropropionanilide are o-chloropropionanilide and ortho-chloropropionanilide. (PTO, Uncontested Fact No. 36).
16. Ortho-, meta- and para- compounds are substituted products derived from benzene in which two of the substituting radicals or groups are structurally placed in certain defined positions on the benzene nucleus. When two substituting groups (A and B) are in such position that they are attached to adjoining carbon atoms of the benzene nucleus, they are said to be in ortho- or o-position to each other. If A and B are so attached that they have a third carbon atom of the nucleus between them, a meta- or m- compound results. If A and B are attached to opposite atoms in the nucleus (two other carbon atoms between them), a para- or p- compound results. The following formulae are illustrative:
17. The patent in suit, No. 3,382,280, issued May 7, 1968 on an application filed in the Patent Office on February 3, 1967 bearing Serial No. 613,738. (PTO, Uncontested Fact No. 1, in part).
18. The patent in suit contains a single claim which reads "3',4' -dichloropropionanilide". It states that 3,4-DCPA possesses "unusual and valuable herbicidal activity" (PX-1, col. 1, lines 44-55) whereas "related compounds possess little or no herbicidal efficiency" (PX-1, col. 3, line 73). The patent granted is 3,4-DCPA, per se, without restriction to its "unusual and valuable herbicidal activity". If this patent is sustained, it would entitle Monsanto to exclude 3,4-DCPA from the public domain until May 7, 1985. (35 U.S.C. § 154).
19. Monsanto filed two other applications relevant to the case at bar prior to its 1967 application. (DX-2 and DX-3). In each of Monsanto's three applications, Dr. Clarence Huffman was named as the inventor. (PTO, Uncontested Fact No. 5, in part).
20. In 1958, through 1962, Rohm and Haas attempted to patent 3,4-DCPA as a compound and the patent office rejected its claim as unpatentable over the prior art. (See PTO, Uncontested Facts Nos. 49, 60, 61).
21. The first Huffman application, Serial No. 661,575 (DX-3), was filed on May 27, 1957. It claimed both the herbicidal compositions of chemical compounds and the use of these compounds to destroy undesired plants. (DX-3, pp. 21-24).
22. At no time during the prosecution of Huffman's first application were any claims presented to the Patent Office directed to a chemical compound per se. (PTO, Uncontested Fact No. 8). Such claims were included in a draft of this application but were omitted by Monsanto from the application as filed. (DX-54; Peterson, designated Deposition 175-176;5 Huffman, Notes of Trial Testimony 181-182, 185-186).6
23. This application disclosed a large class of 3,4-dihalogenated anilides, including 3,4-DCPA, and also stated that the members of said class possessed "unusual and valuable herbicidal activity." (PTO, Uncontested Fact No. 7, in part). This 1957 application asserted that each compound included within the huge class of anilides (McRae, N.T. 333-34; Price, N.T. 492) possessed "unusual and valuable herbicidal activity" (DX-3, p. 2, lines 1-4), while related compounds possessed "little or no herbicidal efficiency" (DX-3, p. 12, lines 1-19). Huffman confirmed this "unusual and valuable herbicidal activity" of all compounds included...
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