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''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. It is one of the early decisions following the Supreme Court's landmark 1964 decision in ''Walker Process v. Food Machinery'' holding fraud on the 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.〔With an estimated use of about 8 million pounds in 2001, propanil is one of the more widely used herbicides in the United States. U.S. Environmental Protection Agency, (2000-2001 Pesticide Market Estimates ).〕 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.〔''Monsanto Co. v. Rohm & Haas Co.'', 456 F.2d 592, 596 (3d Cir. 1972) ("In the view we take, it becomes necessary to reach only the misrepresentation issue.").〕 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.〔456 F.2d at 596.〕 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() in its structural formula solely by having one less CH2 group" than 3,4-DCPA.〔456 F.2d at 596. Such pairs of compounds are termed "adjacent homologues" and they are known to have similar chemical and physical properties. See article homologous series. See also ''In re Henze'', 181 F.2d 196, 201 (CCPA 1950), in which the court stated, "In effect, the nature of homologues and the close relationship the physical and chemical properties of one member of a series bears to adjacent members is such that a presumption of unpatentability arises against a claim directed to a composition of matter, the adjacent homologue of which is old in the art."〕 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."〔''Monsanto Co. v. Rohm and Haas Co.'', 312 F. Supp. 778, 791 (E.D. Pa. 1970)〕 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.〔456 F.2d at 596-97.〕 Under applicable law, as understood by the court, if a compound on which a patent is sought is very similar in structure to a known compound, as 3,4-DCPA and 3,4-DCAA were, a rebuttable presumption arises that the later compound is obvious from the earlier one. "To rebut this presumption it must be shown 'that the claimed compound possesse() unobvious or unexpected beneficial properties not actually possessed by the prior art homologue.'"〔312 F. Supp. at 789. The court said that the reason for this rule is that "the characteristics normally possessed by members of a homologous series are principally the same, and vary but gradually from member to member. Chemists knowing the properties of one member of a series would in general know what to expect in adjacent members." ''Id''. at 790. 〕 The Husted Affidavit thus appeared to rebut the obviousness rejection by showing that 3,4-DCPA possessed an unexpected beneficial herbicidal property that 3,4-DCAA and other products lacked. The Husted Affidavit misled the Patent Office, the trial court said, because both 3,4-DCPA and 3,4-DCAA "in fact possess the newly discovered property of the claimed compound."〔312 F. Supp. at 790.〕 The trial court said that Monsanto submitted a fraudulent affidavit in that: "It is, in short, composed of half-truths." The court pointed to such omissions as these which made the affidavit one of half-truths: For example, one omitted test result showed that 3,4-DCAA had a complete kill on pigweed at 2 lbs. per acre of application, just as 3,4-DCPA did. . . . Monsanto, by the Husted affidavit, attempted to show that closely related compounds do not possess unique herbicidal properties. The facts not stated were, therefore material."〔312 F.Supp. 791-92.〕 The district court held the patent invalid and Monsanto appealed top the Third Circuit. 抄文引用元・出典: フリー百科事典『 ウィキペディア（Wikipedia）』 ■ウィキペディアで「Monsanto Co. v. Rohm and Haas Co.」の詳細全文を読む スポンサード リンク
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