Rohm and Haas Co. v. Mobil Oil Corp., Civ. A. No. 78-384-JLL

Citation718 F. Supp. 274
Decision Date30 June 1989
Docket NumberCiv. A. No. 78-384-JLL,79-397-JLL.
PartiesROHM AND HAAS COMPANY, Plaintiff, v. MOBIL OIL CORPORATION, Rhone-Poulenc Inc., Rhone-Poulenc Agrochimie, and Rhone-Poulenc AG Company, Defendants. MOBIL OIL CORPORATION, Rhone-Poulenc Inc., Rhone-Poulenc Agrochimie, and Rhone-Poulenc AG Company, Plaintiffs, v. ROHM AND HAAS COMPANY, Defendant.
CourtUnited States District Courts. 3th Circuit. United States District Court (Delaware)

718 F. Supp. 274

MOBIL OIL CORPORATION, Rhone-Poulenc Inc., Rhone-Poulenc Agrochimie, and Rhone-Poulenc AG Company, Defendants.

MOBIL OIL CORPORATION, Rhone-Poulenc Inc., Rhone-Poulenc Agrochimie, and Rhone-Poulenc AG Company, Plaintiffs,

Civ. A. Nos. 78-384-JLL, 79-397-JLL.

United States District Court, D. Delaware.

June 30, 1989.

718 F. Supp. 275
718 F. Supp. 276
Rudolf E. Hutz, Januar D. Bove, Jr. and Mary W. Bourke of Connolly, Bove, Lodge & Hutz, Wilmington, Del., William E. Lambert III and Terence P. Strobaugh, Philadelphia, Pa., of counsel, for Rohm and Haas Co

Charles S. Crompton, Jr. of Potter, Anderson & Corroon, Wilmington, Del., John A. Diaz, J. Robert Dailey, Arnold I. Rady, Jean M. Duvall and Shahan Islam of Morgan & Finnegan, New York City, of counsel, for Mobil Oil Corp., Rhone-Poulenc, Inc., Rhone-Poulenc Agrochimie, and Rhone-Poulenc AG Co.

718 F. Supp. 277


LATCHUM, Senior District Judge.


These consolidated actions1 involve the validity and infringement of six U.S. patents issued over the past 13 years. The actions were filed by the Rohm and Haas Company2 on September 11, 1978 (C.A. No. 78-384-JLL) seeking a declaratory judgment that one of the patents in suit, U.S. Patent 3,979,437, was invalid, unenforceable and not infringed (Docket Item "D.I." 1),3 and by the Mobil Oil Corporation4 on August 14, 1979 (C.A. No. 79-397-JLL) for infringement of three other U.S. Patents. The answers and counterclaims in these suits and subsequent amendments to the pleadings raised the validity, enforceability, and infringement of the six patents now in suit.

The six patents in suit are directed to herbicidal chemical compounds, compositions and methods. Two patents are asserted against Mobil Oil Corporation and its assignees, and four are asserted against Rohm and Haas Company. (D.I. 283, Tab 3A, ¶ 4.)

The issues of liability and damages in the actions were bifurcated for separate trials by stipulated Order of the Court on October 17, 1986. (D.I. 161.) The parties have also stipulated that to the extent the patents asserted against them are valid and enforceable, certain of their activities have infringed. (See D.I. 283, Tab 3A, ¶ 9.0 et seq., ¶ 17.0 et seq.)

The liability issues were tried by the Court without a jury from October 3, 1988 through November 3, 1988. Post-trial briefing was directed by the Court and completed by the parties on March 30, 1989.5 After carefully considering the sufficiency, weight, and credibility of the testimony of the witnesses, their demeanor on the stand, the documentary evidence admitted at trial, and the able submissions of the parties, the Court enters the following findings of fact and conclusions of law which are embodied in this opinion as permitted by Rule 52(a), Fed.R.Civ.P.


The trial in these cases followed over a decade of pursuit by the parties. In that period, the complexion of the cases has changed. Patents have issued and have been added to the litigation,6 several have been withdrawn from the litigation, and several have gone through reissue proceedings in the United States Patent and Trademark

718 F. Supp. 278
Office (the "Patent Office").7

Moreover, the winds of corporate change have landed ownership of, or the rights under, most of the patents in suit in different hands than when these actions were filed. On July 31, 1981, the Mobil Oil Corporation sold its agricultural chemicals business to Rhone-Poulenc, Inc. ("RPI"),8 including one patent asserted here and two patents since reissued as patents asserted here. (D.I. 283, Tab 3A, ¶ 1.A2.) RPI was then added by stipulation as a party to both actions. (D.I. 85; RX 2601, Tab A, ¶ 3.6.) On February 11, 1982, RPI assigned the patents to Rhone-Poulenc Agrochimie ("RPA") (id.),9 and RPA was added as a party by stipulation. (D.I. 97; D.I. 283, Tab 3A, ¶ 1.A2.) On April 6, 1982, Rhone-Poulenc Agrochimie10 was joined as a party to both actions. (RX 2601, Tab A, ¶ 3.8; D.I. 58, 97.) RPAG is a wholly owned subsidiary of RPI. Mobil Oil Corporation and the parties added will be referred to throughout this opinion collectively as "Mobil" unless otherwise noted.

On May 6, 1987, the Rohm and Haas Company entered into a purchase agreement with BASF Corporation ("BASF"),11 pursuant to which BASF was, inter alia, given a fully paid exclusive option to acquire an exclusive license to the two Rohm and Haas patents in suit. (Id. at ¶ 1.B1.) Rohm and Haas has retained ownership of the patents, and has continued to make and sell to BASF technical grade compounds covered by several patents in suit. (Id. at ¶ 5.3.) Rohm and Haas also has agreed to defend and hold BASF harmless for infringement of the Mobil patents in suit. (D.I. 317 at viii.)

All of the patents in suit are directed, generally, to substituted diphenyl ether compounds useful as herbicides. (RX 2601, Tab A, ¶ 8.1.)12 That is, the compounds have a diphenyl ether backbone which consists of two benzene rings13 connected

718 F. Supp. 279
through an ether linkage.14 The structural formula of the backbone is as follows

(See D.I. 285 at 22-23; see also Tr. at 84-88, 423.) Each of the six corners of each benzene ring represents a carbon atom (see Tr. at 51, 92; see also D.I. 285 at 11), and each carbon atom not bonded to the ether oxygen atom can be substituted. (Tr. at 52, 92.) Therefore, there are five sites for substitution on each benzene ring of a diphenyl ether. (Tr. at 92.)

There are several conventions known to the art for the naming of substituted diphenyl ether compounds. For this Opinion, the Court will use the convention agreed to by the parties for trial. (RX 2601, Tab C at 23.) Referring to the structural formula above, the benzene rings will be the "left hand ring" and the "right hand ring" respectively, and the carbon atoms will be numbered counterclockwise and clockwise respectively as follows:

(D.I. 283, Tab C at 22-23.)

Substituted diphenyl ether herbicides were known to the art long before any of the patent claims in suit were filed in the Patent Office. (Tr. at 423; see also JX 1166 at XXXXXX-XX; MX 1459(A); RX 2036; Tr. at 2032, 3287-88.) As will become evident in the sections of this Opinion to follow, it is the substitution of the rings according to the various limitations of the claims in suit which is critical to the resolution of this litigation.

The impetus for this litigation apparently is the commercial success of a herbicidally active15 substituted diphenyl ether compound known as acifluorfen sodium, or the sodium salt of acifluorfen.16 The compound has the following structure:

Acifluorfen sodium is the active ingredient17 in commercial products of both Rohm

718 F. Supp. 280
and Haas and Mobil, marketed under the registered trademarks of "BLAZER" AND "TACKLE," respectively. (D.I. 285 at 34; D.I. 283, Tab 3B, ¶ 15.0 et seq.) BLAZER and TACKLE are selective post-emergence contact herbicides,18 which control a broad spectrum of broadleaf weeds19 commonly found in soybeans. (Id.)

The evidence established that, at least as between Rohm and Haas and Mobil, it was Rohm and Haas, through its researchers, most notably Dr. Colin Swithenbank, that discovered the high herbicidal activity of acifluorfen,20 its methyl ester, and ultimately its sodium salt. In January 1972 Dr. Swithenbank met with Rohm and Haas' patent attorney to discuss the subject matter of several proposed patent applications based on his research. (See Tr. at 3173-74.) He memorialized this meeting in a memorandum to his supervisor, Dr. Horst Bayer,21 in which he described the subject matter of three proposed "Patents." (JX 1047.) One embraced 3'-carboxy, 4'-NO2 compounds. (See id. at 2 ("Patent II"); Tr. at 3175.) A patent application, Serial No. 234,651, was in fact filed by Rohm and Haas directed to this subject matter on March 14, 1972. (See RX 2509, Tab 1; Tr. at 3175.) The application eventually issued as U.S. Patent 3,793,276 ("'276"). (RX 2509, Tab 1.) However, while compounds had been synthesized and tested at Rohm and Haas having the 4'-NO2, 2-Cl and 4-CF3 substituents (as in the acifluorfen compounds) (see Tr. at 3318), no compound had yet been synthesized or tested which also had a carboxy at the 3'-position (as in the acifluorfen compounds). (See Tr. at 3193.)

At the direction of Dr. Swithenbank acifluorfen was first synthesized at Rohm and Haas on or about October 13, 1972 (see MX 1068 at 501509; see also Tr. at 3357-58), converted to its methyl ester on or about October 17, 1972 (see MX 1069 at 501591; see also Tr. at 3361), and to its sodium salt on or about January 3, 1973 (see MX 10700 at 501636; see also Tr. at 3362). The results of initial greenhouse testing22 of acifluorfen esters showed very good herbicidal activity. (MX 1198; MX 1199; MX 1206; MX 1281.)

On February 12, 1973, Rohm and Haas filed several continuation-in-part applications based on compounds synthesized by Dr. Swithenbank since the 1972 application was filed. (JX 1079; see JX 1063.) One of these claimed 3'-carboxy, 4'-NO2 compounds for the first time, and specifically named and provided herbicidal data for acifluorfen and its methyl ester. (JX 1079.) This eventually issued as U.S. Patent 3,928,416 ("'416"). (RX 2509, Tab 2.)

718 F. Supp. 281

On March 14, 1973, Rohm and Haas filed a foreign counterpart to this application in the Netherlands (the "Rohm and Haas Netherlands application"). (RX 2099; RX 2099.1 English translation.) It also specifically disclosed and provided herbicidal data for acifluorfen and its methyl ester. (See RX 2099.1.) The Rohm and Haas Netherlands application was published in accordance with foreign practice on September 18, 1973. (See id. at 1.)

Field testing23 of acifluorfen and its esters in 1973 and 1974 led Rohm and Haas to conclude that while the compounds showed very good...

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