Monsanto Co. v. Rohm and Haas Co., 456 F.2d 592 (3d Cir. 1972), is a 1972 decision of the United States Court of Appeals for the Third Circuit interpreting what conduct amounts to fraudulent procurement of a patent.
This case is one of the early decisions following the US Supreme Court's 1964 decision in Walker Process v. Food Machinery holding fraud on the US Patent Office as potentially violating the Sherman Antitrust Act, and one of the first (if not the first) to hold that failure to disclose material information to the Patent Office was fraudulent.
Background
Monsanto procured U.S. Patent No. No. 3,382,280, issued May 7, 1968, having the title 3',4'-dichloropropionanilide (known as 3,4-DCPA or propanil), a herbicide that selectively killed weeds without killing crop plants such as rice. In November 1969 Monsanto sued Rohm and Haas for patent infringement. The only substantial issue was the validity of the patent, and that ultimately turned on whether Monsanto had committed fraud on the Patent Office in procuring the patent.
The application that resulted in the '280 patent was the third of three successive applications, the first two of which were unsuccessful. In the first application, filed in 1957, Monsanto sought a patent on some 100 "compounds, including 3,4-DCPA and 3,4-DCAA (3,4-dichloroacetanilide), a chemical with some similar properties and a similar physical structure. Monsanto claimed that all the members of the class possessed "unusual and valuable herbicidal activity," while related compounds possessed "little or no herbicidal efficiency."
Unpersuaded by Monsanto's arguments, the Patent Office rejected the application as unpatentable over the prior art. In 1961, Monsanto filed a new application claiming another large class of compounds, again including 3,4-DCPA and 3,4-DCAA and again asserting that the class possessed "unusual and valuable herbicidal activity." Again, the Patent Office rejected the application as unpatentable over the prior art. In 1967, Monsanto applied again, this time claiming only 3,4-DCPA and representing only that 3,4-DCPA had "unusual and valuable herbicidal activity" and that its activity was "surprising" because "related compounds possess little or no herbicidal efficiency." Again. the Patent Office (initially) rejected the application on the ground that the product was obvious over the prior art. But this time Monsanto overcame the rejection.
A major issue in the Patent Office was whether the patent application should be denied because 3,4-DCPA was obvious from previously known products, the most significant of which was 3,4-DCAA (3,4-dichloroacetanilide), a chemical with some similar properties and a similar physical structure. Both were useful in making pigments and both had herbicidal properties. The structural difference between the two "closely related" compounds was that 3,4-DCAA "differ[ed] in its structural formula solely by having one less CH2 group" than 3,4-DCPA. Because of the similarity in structure between 3,4-DCPA and other chemicals, including 3,4-DCAA, the Patent Office rejected the patent application on obviousness grounds. Monsanto then tried to persuade the Office to withdraw the rejection by submitting documents to show that DCPA was not obvious, because it had greatly superior and unexpected selective herbicidal activity.
Monsanto filed the Husted Affidavit. The trial court found that this document "contains no affirmative misrepresentation and is accurate so far as it goes" but "it is misleading, and was intended to be misleading, in that it fails to state facts known to the applicant which were inconsistent with its position that propanil is a superior herbicide." The court of appeals commented:
The patent was issued, however, . . . after Monsanto submitted an affidavit of Dr. Robert F. Husted, based on tests performed by him on twenty plant species at three different rates of application per acre. The report as presented to the Patent Office asserted that 3,4-DCPA completely killed or severely injured nine of the eleven species and failed to have any effect on only two. Eight other compounds were reported to have no effect on any of the eleven plants and two other compounds, one of them 3,4-DCAA, either had very slight or no effect. Significantly, although the Husted tests entailed tests on twenty species, at three separate rates of application per acre, the Patent Office was informed of tests on only eleven species and only at one rate of application, two pounds per acre. In all, the affidavit showed less than 25 per cent of Husted's results; of 899 tests, only 110 were submitted. The district court concluded that this close-cropping of Husted's findings amounted to misrepresentation.