Dawson Chemical Company v. Rohm & Haas Company

PETITIONER: Dawson Chemical Company
RESPONDENT: Rohm & Haas Company
LOCATION: Elkhart, Indiana

DOCKET NO.: 79-669
DECIDED BY: Burger Court (1975-1981)
LOWER COURT: United States Court of Appeals for the Fifth Circuit

CITATION: 448 US 176 (1980)
ARGUED: Apr 21, 1980
DECIDED: Jun 27, 1980

ADVOCATES:
Eugene L. Bernard - as amici curiae
Ned L. Conley - on behalf of the Petitioners
Rudolf E. Hutz - on behalf of the Respondent

Facts of the case

Question

Media for Dawson Chemical Company v. Rohm & Haas Company

Audio Transcription for Oral Argument - April 21, 1980 in Dawson Chemical Company v. Rohm & Haas Company

Warren E. Burger:

Mr. Conley, I think now you may proceed whenever you are ready.

Ned L. Conley:

Mr. Chief Justice, and may it please the Court.

I would like to illustrate the issue in this case with the following.

Two people discover that two different chemicals can be used as herbicides to kill weeds in ricefields.

These chemicals both kill weeds perfectly satisfactorily.

One of the chemicals had no other known use and that is the kind of chemical we call in this case a non-staple material.

The other chemical also has other known uses as, for example, maybe it could be used making a dye.

This is called a staple material in this case.

The contention of the respondent Rohm and Haas in this case is that one of these inventors whose discovery uses the non-staple material should receive a greater reward for no reason other than that the material has not previously been known to have a use.

Rohm and Haas' patent is on a method for killing weeds in ricefields by spraying a chemical called propanil on those weeds and on the ricefields.

Now, propanil is not patented.

Monsanto Company received a patent on propanil in 1968 and they sued Rohm and Haas for infringement of that patent and Rohm and Haas proved that the patent was invalid, that propanil had been known for a long time.

Now, Rohm and Haas doesn't practice its patented invention, which is in the method for using propanil.

Instead, since they are a chemical company they manufacture propanil and they sell it.

And there are instructions on the containers for using the patented method.

By virtue of this the purchasers, the farmers who use this and spray it on their ricefields have an implied license to use that patented method.

In addition to this, Rohm and Haas has refused to grant licenses to these farmers in any other way.

If the farmers want to use the patented process the only way they can do it is to buy the unpatented propanil from Rohm and Haas.

Otherwise, they are infringers.

Now, the petitioners in this case sell propanil, too.

They sold it long before the Monsanto patent issued in 1968.

Our containers also have labels on them which give instructions for using the propanil on ricefields.

We are required to do this by law, by the EPA, because otherwise people might misuse it and cause harm.

Because of this Rohm and Haas sued the petitioners on the patent, on the day it issued in 1974.

We filed a motion for summary judgment.

This motion was granted.

In its very thorough opinion the District Court held that using a patent to obtain a monopoly in propanil, which Rohm and Haas did not invent and which was not covered by the patent, was a misuse of the patent.

William H. Rehnquist:

Mr. Conley, if you will notice the last page of Judge Gee's opinion in the Fifth Circuit at page A-48 of the petition for certiorari he quotes Judge Richards, saying that -- I think he says himself these are the kinds of cases that are argued by professionals to amateurs.

And so you may take my question in that light.

Is it fair to say that both the doctrines of contributory infringement and patent misuse are to a certain extent the obverse sides of the same coin, neither of them are the substance of the patent or what can be patented?