Dawson Chemical Co. v. Rohm & Haas Co., 448 U.S. 176 (1980), is a 1980 5–4 decision of the United States Supreme Court limiting the patent misuse doctrine and explaining the scope of the 1952 amendment of the patent laws that resurrected the contributory infringement doctrine in the wake of the Mercoid cases. The Mercoid cases and a few predecessor cases had denied relief against patent infringement to patentees who were deriving revenue from the sale of unpatented products used as supplies for patented combinations or as components of patented combinations, even when the unpatented products were specially adapted for use with the patented combinations and even when they lacked any utility other than that use. The patentees used contributory infringement suits or threats of such suits to enforce their business model, which the Mercoid cases outlawed.
In the Mercoid cases the Court had stated: "The result of this decision, together with those which have preceded it, is to limit substantially the doctrine of contributory infringement. What residuum may be left we need not stop to consider." This caused "some consternation among patent lawyers," and some "segments of the patent bar eventually decided to ask Congress for corrective legislation that would restore some scope to the contributory infringement doctrine. With great perseverance, they advanced their proposal in three successive Congresses before it eventually was enacted in 1952." Dawson interpreted the 1952 amendments to re-establish contributory infringement as a possible claim for relief and held that supplying an unpatented product especially adapted for use in practicing a patented process and without any substantial non-infringing use was unlawful contributory infringement.
Background
Factual setting
This case is part of the aftermath of Monsanto Co. v. Rohm & Haas Co., in which Rohm & Haas succeeded in invalidating Monsanto's patent on propanil, a selective herbicide, by showing that Monsanto deceived the Patent Office in procuring the patent. Propanil thus became an unpatented product. With an estimated use of about 8 million pounds in 2001, propanil was one of the more widely used herbicides in the United States.
Although Monsanto had obtained the product patent on propanil on the basis of its selective herbicidal property, Rohm & Haas was able in 1974 to obtain U.S, Patent No. 3,816,092 (the Wilson patent) on a process for applying propanil to inhibit the growth of undesirable plants in areas containing established crops. Claims 1 and 2 are illustrative for purposes of this case:
1. A method for selectively inhibiting growth of undesirable plants in an area containing growing undesirable plants in an established crop, which comprises applying to said area [propanil] at a rate of application which inhibits growth of said undesirable plants and which does not adversely affect the growth of said established crop. 2. The method according to claim 1 wherein the [propanil] is applied in a composition comprising [propanil] and an inert dilutent therefor at a rate of between 0.5 and 6 pounds of [propanil] per acre.
The claims describe the only substantial use for propanil.
Rohm & Haas exploits the process patent by manufacturing propanil and selling it to farmers. Rohm & Haas does not license the patent to the farmers but they acquire an implied license to practice the process by operation of law when they buy propanil from Rohm & Haas, the owner of the process patent. Rohm & Haas does not license the patent to other manufacturers of agricultural chemicals, such as Dawson, which had been making and selling propanil for herbicidal use before Rohm & Haas received its patent. Dawson did not stop engaging in this business after the patent issued, and it sold propanil in packages labeled with instructions to use it as described in the patent. Accordingly, Rohm & Haas sued Dawson for contributory infringement and active inducement of infringement under 35 U.S.C. § 271(c)–(d). Dawson then requested a patent license but Rohm & Haas refused.
