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

• Decision Date: 12 December 1978
• Docket Number: Civ. A. No. 78-384.
• Citation: 462 F. Supp. 732
• Parties: ROHM AND HAAS COMPANY, Plaintiff, v. MOBIL OIL CORPORATION, Defendant.
• Court: U.S. District Court — District of Delaware

462 F. Supp. 732

ROHM AND HAAS COMPANY, Plaintiff, v. MOBIL OIL CORPORATION, Defendant.

Civ. A. No. 78-384.

United States District Court, D. Delaware.

December 12, 1978.

Rudolph E. Hutz, William E. Lambert III, James M. Mulligan, N. Richard Powers, and George W. F. Simmons of Connolly, Bove & Lodge, Wilmington, Del., for plaintiff.

Edmund D. Lyons of Morris, James, Hitchens & Williams, Wilmington, Del., and John A. Diaz, J. Robert Dailey and Arnold I. Rady of Morgan, Finnegan, Pine, Foley & Lee, New York City, for defendant.

MEMORANDUM OPINION

LATCHUM, Chief Judge.

This action is before the Court on defendant Mobil Oil Corporation's ("Mobil") motion for a stay pending decision by the United States Patent and Trademark Office ("PTO") on Mobil's application for reissue of the patent in suit. The parties have briefed and argued the motion and this Memorandum Opinion addresses their contentions.

Plaintiff, Rohm and Haas Company ("Rohm & Haas"), filed this action on September 11, 1978, against the defendant, Mobil, seeking a declaratory judgment that Mobil's United States Letters Patent No. 3,979,437 ("437 patent") is invalid, unenforceable and not infringed.¹ Both Rohm & Haas and Mobil hold patents on diphenyl ethers useful as herbicides. Rohm & Haas holds patents issued in 1973 and 1974 on certain specific diphenyl ether compounds, which it markets under the trade name "Blazer." Mobil's 437 patent covers a class of diphenyl ether compounds that allegedly includes the Blazer compounds. Consequently, the Mobil and Rohm & Haas patents are believed to stand in a genus-species relationship thus creating a classic "blocking patent" situation so that neither Mobil nor Rohm and Haas can manufacture or sell Blazer compounds without infringing the other's patent. This action was instituted after cross-licensing negotiations between the parties proved unsuccessful.

On October 19, 1978, Mobil applied for reissue of its 437 patent pursuant to 37 C.F.R. § 1.171 et seq. (1977). The recently modified reissue procedure² enables a patentee, like Mobil, to seek reconsideration of an original patent in view of prior art and other information relevant to patentability which was not previously considered by the PTO. In its application for reissue,³ Mobil requests that the PTO review the 437 patent in light of the allegations contained in the complaint in this action.

Stays of limited duration have been granted by several federal courts pending the outcome of a reissue application. See, e. g., PIC, Inc. v. The Prescon Corp., 77 F.R.D. 678 (D.Del.1977); Fisher Controls Co. v. Control Components, Inc., 443 F.Supp. 581 (S.D.Iowa 1977). As Judge Wright observed in PIC, Inc. v. The Prescon Corp., supra:

"The grant or denial of a stay is addressed to the sound discretion of the court. `As with any exercise of discretion, the Court must balance the equities presented by the particular set of facts.'" (citations omitted).

77 F.R.D. at 681, quoting General Tire & Rubber Co. v. Watson-Bowman Associates, Inc., 193 U.S.P.Q. 479 (D.Del.1977). Among the factors to be considered here is whether the reissue proceeding can be expected to result in a simplification of the issues or proof or otherwise benefit this litigation. See Fisher Controls Co. v. Control Components, Inc., supra, 443 F.Supp. at 582-83. For the reasons stated below, the Court concludes that the benefits of a limited stay in this case outweigh the potential harm to the plaintiff that the resultant delay might cause.⁴ The Court is convinced, however, that in order to realize the full benefit of the stay, it must permit a limited amount of discovery now on some of the issues that will be before the PTO in the reissue proceeding. Therefore, the Court will stay all further proceedings in this action with the exception of a few specifically defined lines of discovery by plaintiff pending disposition of the reissue application.

One of the central issues in this case is whether Mobil's application for the 437 patent, which was filed on September 29, 1975, was a "continuation" of a prior Mobil application filed on February 11, 1971 and, therefore, entitled under 35 U.S.C. § 120 to the benefit of the earlier filing date. If it was not a continuation, the Netherlands patent application of Rohm & Haas published in 1973 would be prior art with respect to the 437 patent and present a statutory bar to its patentability under 35 U.S.C. § 102.

Section 120 of Title 35 sets forth the conditions for obtaining the filing date of an earlier patent application. Section 120 provides:

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

The first paragraph of section 112 requires that a patent specification contain a written description of the invention and how to make and use it,

in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same, and . . . set forth the best mode contemplated by the inventor of carrying out his invention.

The 437 patent and Mobil's 1971 patent application contain exactly the same written description of the invention; only the claims are different. An issue to be resolved in this case is whether the written description in the 437 patent adequately discloses the invention claimed in the first claim of the 437 patent.

The written description in the 1971 application and the 437 patent disclosed a generic formula, 26 detailed examples of typical chemical compounds included in the invention and a list of 57 other compounds denominated "non-limiting examples." Rohm & Haas avers that the number of possible compounds embraced by the generic formula may be as high as 200 billion. It further alleges that Mobil's 1971 application did not disclose specifically any of the Blazer compounds and that Mobil, in fact, did not know of their existence or importance until after it examined Rohm & Haas'...