Rohm & Haas Company v. Roberts Chemicals

TO: Professor Risch
FROM: Jennifer Deitz
DATE: November 24, 2007
RE: Patent Law

Rohm & Haas Company v. Roberts Chemicals, 245 F.2d 693 (4th Cir. 1957)

FACTS/BACKGROUND: Rohm & Haas Company were holders of a reissue patent teaching a process of controlling fungus growth on living plants through a fungicidal composition commonly known as Nabam. (Note Rohm and Haas were assigned the patent by Hester, a chemist working in their laboratories). They filed suit against Roberts Chemicals for direct infringement and contributory infringement of the reissue patent on the basis that Roberts Chemicals had put a substantial amount of Nabam in the hands of farmers with detailed instructions regarding its use on growing plants. Roberts Chemicals, a WV manufacturer of chemicals, was organized in 1953 for the purpose of manufacturing and selling chemical compounds, including Nabam. The reissue patent number 23, 742, was issued on November 24, 1953 and filed on October 24, 1952. The original patent was issued on April 27, 1943 and filed on August 20, 1941. The original patent made claims to fungicidal compositions suitable for use on living plants, containing as the active ingredient, disodium salt of ethylene bisdithiocarbamic acid, which is commonly known as Nabam, or related salts of the same acid which were specified in the five claims of the patent. The reissue application included these same claims, which were denied. However, the reissue patent also included 8 claims, at issue in the lawsuit, which only differed from the original patent in that they called for a “process” controlling fungus growth on living plants comprising of applying a fungicidal composition having the same active ingredient as original patent.

PROCEDURAL HISTORY: The U.S. District Court for the Southern District of West Virginia held the reissue patent invalid for anticipation and dismissed the complaint. The plaintiff appealed to the Fourth Circuit Court Appeals. The Fourth Circuit reversed and held the reissue patent valid and held that Roberts Chemicals was guilty of both direct and contributory infringement.

ISSUE: Whether the reissue patent was obvious and anticipated by prior art, thus making it invalid and eliminating any cause of action against the defendant for infringement and contributory infringement.

HOLDING: The Fourth Circuit held that the reissue patent was not obvious and thus valid. It reversed the lower court’s decision of dismissal of the infringement suit and remand for further proceedings.

REASONING: Robert Chemicals’s main argument against the validity of reissue patent was that it was obvious based on U.S. Patent No. 1, 972, 961, which was assigned to E.I. DuPont de Nemours and Company and related to disinfectants, particularly methods of controlling the growth of fungi and microbes. The specification of the 961’ patent disclosed a treatment of plants with a derivative of dithiocarbamic acid and showed that dithiocarbamic acid is a product of the interaction of carbon disulfide with the more basic amines. However, the number of organic compounds that could be formed using the materials in the specification was infinite and many did not fungicidal properties. The Fourth Circuit rejected this first argument because in the 961’ prior art patent there was no mention of Nabam or any mention of the salts of bisdithiocarbamic acid (what was claimed in the reissue patent) and only gave examples of mono compounds. Also, and probably most convincing to the court, Tisdale (the inventor/assignor of the 961’ patent) himself was not aware of the qualities of the bis product even though one of his goals was to find an effective fungicide. Thus, according to the court, the reissue patent was not obvious to persons having ordinary skill in the art. The next argument made by the defendant was that the claims of the reissue patent were indefinite because it did not proscribe the amount of water to be used with the chemical compound and thus was invalid. The Fourth Circuit also rejected this argument, stating that even though the essential elements of a patent compound must be stated in the claims, it is not necessary to include the operating details, if they are routine and well known in the art. The next argument the defendant made was the Rohm and Haas took too long to file an application for a reissue patent and thus it should not have been granted. The Court also rejected this argument based on the fact that the original patent was granted before the Patent Act of 1952 and the reissue was filed for almost right after the Patent Act came into effect. According to the court, prior to the Patent Act of 1952 the case law had held that a new use of an old product was not patentable. However, Section 100 of the Patent Act of 1952 modified that rule by providing that the term “process” includes a new use of a known process. Since under the original patent Rohm and Haas had difficulty enforcing based on the law prior to the Patent Act, the wait to file for a reissue patent, according to the Court was not unreasonable, since Rohm and Haas took advantage of the new Act very soon after its passage. Finally, the Court rejected the defendant’s last argument that the reissue patent broadened the scope of the original patent and thus violated 35 U.S.C. § 251. The Fourth Circuit rejected this argument because only the reissue patent include the limitation of the process to the application of the fungicide to living claims, and therefore if the reissue included a limitation then it could not enlarge the scope of the original patent. After rejecting all of Roberts Chemicals defenses to infringement, the Court held that the defendant had no intervening rights prior to the reissue and thus was guilty of direct and contributory infringement.

ANALYSIS: This case was really interesting because it was a good examination of the law prior to the Patent Act of 1952 and the implications on patent law and litigation following the act. I thought it was very interesting that Roberts Chemicals chose to base so much of its defense on the DuPont patent, when even DuPont Company, holder of an allegedly teaching patent for Nabam, joined in the manufacture and sale of Nabam and even took a license under the Hester patent after it was reissued in 1953.

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