Full opinion text
NUNC PRO TUNC ORDER On October 27, 1982, this Court entered its Findings of Fact and Conclusions of Law in the above-captioned cause. It has come to the attention of the Court that the Findings of Fact and Conclusions of Law entered on October 27,1982, contained several typographical and non-substantive errors. Hence, to ensure the accuracy and completeness of the Findings of Fact and Conclusions of Law of October 27, 1982, the Court hereby directs that the attached corrected version of the Findings of Fact and Conclusions of Law be entered. This Order shall relate back to the time of entry of the Findings of Fact and Conclusions of Law of October 27, 1982. TABLE OF CONTENTS Page I. Introduction 749 II. Findings of Fact 751 A. Parties Involved in this Suit 751 The Patent in Suit 752 B. Discovery of the Invention 753 C. History of Patent in Suit 759 1. Rohm and Haas’ 1958 Application 759 2. Rohm and Haas’ 1960 Application 765 3. Rohm and Haas’ 1961 Application 767 4. Interference Proceeding 769 5. Litigation Between Monsanto and Rohm and Haas 773 6. Renewed Prosecution of 1961 Application 774 D. Construction of Patent Claims 783 E. Prior Art 785 F. Defendants’ Propanil Activities 788 G. Defendants’ Affirmative Defenses 790 H. Antitrust Counterclaims 793 1. Relevant Market 793 2. Bayer-Rohm and Haas Agreements 793 3. Rohm and Haas Marketing and Pricing Practices 794 III. Conclusions of Law 799 A. Jurisdiction and Venue 799 B. Validity of Patent in Suit 799 C. Fraud on the Patent Office 810 D. Infringement 811 E. Should the Supreme Court’s Decision Be Applied Only Prospectively? 815 F. Personal Liability of Joe Eller 818 G. Laches and Estoppel 819 H. Antitrust Counterclaims 823 1. Statute of Limitations 823 2. Defendants’ Standing to Assert Their Antitrust Counterclaims 827 3. The Bayer-Rohm and Haas Agreements Subject Matter Jurisdiction 830 4. Act of State Doctrine 831 5. Defendants’ Section 1 Counterclaims 833 6. Defendants’ Monopolization Counterclaims 837 7. Defendants’ Section 14 Counterclaims 845 I. Injunctive and Legal Relief, Attorney’s Fees 845 Interest 850 IV. Conclusion 850 FINDINGS OF FACT AND CONCLUSIONS OF LAW CARL O. BUE, Jr., District Judge. A brief recapitulation of the procedural history of this litigation may be helpful in placing the multitudinous and complex issues under consideration into proper perspective. I. Introduction On the day of the issuance of United States Patent 3,816,092, June 11, 1974, plaintiff Rohm and Haas Company (hereinafter Rohm and Haas), commenced this action against the Helena Chemical Company (unless indicated otherwise, hereinafter Helena), Crystal Chemical Company, Dawson Chemical Company, and Crystal Manufacturing Corporation (unless indicated otherwise, hereinafter Crystal), alleging that defendants contributorily infringed and actively induced others to infringe United States Patent 3,816,092. The defendants filed answers denying infringement and contending also that Rohm and Haas’ patent was invalid and unenforceable. Defendants Crystal and Helena filed also a counterclaim alleging that Rohm and Haas had violated various sections of the antitrust laws. Specifically, defendants alleged that Rohm and Haas had violated sections 1, 2 of the Sherman Act, and section 3 of the Clayton Act, 15 U.S.C. §§ 1, 2, 14 (1973 & Supp.1982). In addition, Helena counterclaimed for a declaratory judgment that plaintiff’s patent was invalid, unenforceable and not infringed. Shortly, after the commencement of this cause, the defendants took the position that the Rohm and Haas patent was unenforceable as a result of Rohm and Haas’ alleged misuse of its patent. Subsequently, the parties entered into a stipulation of facts which was filed in this cause on October 31, 1974, see Plaintiff’s Exhibit 21, and thereafter filed cross-motions for partial summary judgment seeking to resolve the threshold issue of patent misuse. On August 10,1976, this Court entered its Memorandum and Opinion granting defendants’ motions for partial summary judgment “only insofar as they seek adjudication of the legality of plaintiff’s monopolization of the sale of propanil, but [denying defendants’ motions] to the extent that they seek dismissal of plaintiff’s complaint.” See Rohm and Haas Co. v. Dawson Chemical Co., Inc., 191 U.S.P.Q. 691, 695 (S.D.Tex.1976). Shortly thereafter, defendants moved the Court to reconsider its decision not to dismiss Rohm and Haas’ complaint. On November 23, 1976, the Court granted defendants’ motions and dismissed this cause “without prejudice to plaintiff’s right to re-file upon sufficient showing that it has purged its misuse.” Thereafter, Rohm and Haas appealed the various rulings of this Court and on July 30, 1979, the United States Court of Appeals for the Fifth Circuit reversed this Court’s decision and remanded this case to this Court for further proceedings. See Rohm and Haas Co. v. Dawson Chemical Co., 599 F.2d 685 (5th Cir.1979). On June 27, 1980, the United States Supreme Court affirmed the Fifth Circuit’s decision. See Dawson Chemical Co. v. Rohm and Haas Co., 448 U.S. 176, 100 S.Ct. 2601, 65 L.Ed.2d 696 (1980). On September 18, 1980, Rohm and Haas filed suit against Vertac Chemical Company (hereinafter Vertac) in the United States District Court for the District of Delaware alleging that Vertac contributorily infringed and actively induced others to infringe United States Patent 3,816,092. Plaintiff’s Exhibit 26. On November 3, 1980, Rohm and Haas was permitted to amend its complaint in the case sub judice to add Joe C. Eller (hereinafter Eller) and Wilton W. Vardeman (hereinafter Vardeman) as individual party defendants. Rohm and Haas alleged that Eller and Vardeman were contributorily infringing and actively inducing others to infringe its patent. Additionally, in its amended complaint Rohm and Haas particularized its claim for damages. Plaintiff’s Exhibit 22. In addition to filing an answer denying the claims asserted against them, Eller and Vardeman filed counterclaims alleging that Rohm and Haas had violated Sections 1, 2 of the Sherman Act, and section 3 of the Clayton Act, 15 U.S.C. §§ 1, 2, 14 (1973 & Supp.1982). Plaintiff’s Exhibit 22. While the Delaware action against Vertac was pending, Helena filed a third-party complaint against Vertac in the instant cause. Subsequently, on February 10,1981, Rohm and Haas filed a complaint against Vertac raising essentially the same allegations it had advanced in the Delaware action. Plaintiff’s Exhibit 22. Vertac then filed its answer and asserted counterclaims and defenses similar to those asserted by Crystal. On November 12, 1980, plaintiff filed a separate suit in this Court against American Rice Growers Exchange (hereinafter ARGE), alleging that ARGE contributorily infringed and actively induced infringement of its patent. ARGE thereafter filed its answer and also advanced counterclaims asserting violations of various sections of the Sherman Act. Plaintiff’s Exhibit 22. On January 14, 1981, this Court, at the request of all parties to this cause, consolidated the instant case with the separately filed suit against ARGE for both discovery and trial pursuant to Rule 42(a), Fed.R. Civ.P. On September 1, 1981 the parties filed and this Court approved a stipulation wherein all claims brought by Rohm and Haas against Vardeman were dismissed with prejudice. Pursuant also to the stipulation, Vardeman’s counterclaims against Rohm and Haas were dismissed with prejudice. On September 24, 1981, Crystal filed a Voluntary Petition in Bankruptcy under Chapter 7, Title 11 of the United States Code, 11 U.S.C. § 701 et seq. (1979), and at the time of trial the bankruptcy action was still pending before the United States Bankruptcy Court for the Southern District of Texas, Houston Division. Pursuant to an Order entered by the Bankruptcy Court, the automatic stay provision of 11 U.S.C. § 362 (1979) was modified to permit Crystal to participate in this case. Shortly before the commencement of the trial of the case sub judice, Rohm and Haas and Helena entered into a settlement agreement thereby resolving their differences with respect to the patent in suit. In partial consideration for the settlement of the suit against it, Helena agreed to this Court’s entry of a consent decree and injunction. Plaintiff’s Exhibit 135; Defendants’ Exhibit 293. Subsequently, during the trial of this cause, Rohm and Haas and Vertac settled all of the issues outstanding between them, Plaintiff’s Exhibit 143, and the suit with respect to Vertac was dismissed on December 8, 1981. In an Order entered by the Court pursuant to the consent of Helena and Vertac, Helena’s third party action against Vertac was also dismissed. The cause was tried to the Court sitting without a jury from November 2, 1981 to January 7,1982. Subsequently, on April 2, and April 6-8, 1982, the record was reopened to permit the introduction of additional evidence. At the conclusion of the evidence, the Court requested additional briefing by the parties and took the case under advisement. Pursuant to Rule 52(a), Fed.R.Civ.P., the Court hereby enters its Findings of Fact and Conclusions of Law detailing the reasons for its conclusion that United States Patent 3,816,092 is valid, enforceable and was infringed by defendants Crystal, Eller and ARGE, and that as a consequence thereof Rohm and Haas is entitled to an accounting as well as injunctive and monetary relief. The following Findings of Fact and Conclusions of Law reflect also the Court’s decisions that defendants have failed to sustain their burden of proving that Rohm and Haas violated sections 1, 2 of the Sherman Act, and section 3 of the Clayton Act, 15 U.S.C. §§ 1, 2, 14 (1973 & Supp.1982), and that as a consequence thereof Rohm and Haas should prevail. II. Findings of Fact A. The Parties Involved in this Suit 1. Plaintiff Rohm and Haas Company is a Delaware corporation with its principal place of business in Philadelphia, Pennsylvania. Admission of Fact. 2. Defendant Crystal Chemical Company is a Texas corporation with its principal place of business in Houston, Harris County, Texas. Admission of Fact. 3. Defendants Dawson Chemical Company and Crystal Manufacturing Corporation were at one time corporations organized and existing under the laws of the State of Texas. Dawson Chemical Company and Crystal Manufacturing Corporation were subsidiaries of Crystal Chemical Company, Inc. In 1977, Crystal Chemical Company, Inc. was merged into Crystal Manufacturing Corporation, and the name of the surviving corporation was then changed to Crystal Chemical Company. Since the commencement of this cause, neither Dawson Chemical Company nor Crystal Manufacturing Corporation has been active in the manufacture, sale or use of propanil. The labels under which the allegedly infringing product is sold by Crystal Chemical Company, however, are registered in the name of Dawson Chemical Company. Admission of Fact; Testimony of Joe Eller; Plaintiff’s Exhibits 17, 22. 4. Defendant Joe Eller is a resident of Houston, Harris County, Texas. Since 1974 Eller has been the Chairman of the Board and Chief Executive Officer of Crystal Chemical Company, Dawson Chemical Company and Crystal Manufacturing Company. Admission of Fact; Testimony of Joe Eller; Plaintiff’s Exhibits 22, 73-75. 5. Defendant American Rice Growers Exchange is a Louisiana corporation authorized to do business in the State of Texas. Admission of Fact; Testimony of Barry Jeffrey; Plaintiff’s Exhibits 17, 22; Defendants’ Exhibits 187, 188. The Patent in Suit 6. United States Patent 3,816,092 (unless indicated otherwise, hereinafter Wilson patent), issued on June 11, 1974 naming Drs. Harold F. Wilson and Dougal H. McRae as the inventors. The patent was and is assigned to Rohm and Haas, and Rohm and Haas has been the sole owner of all rights, title and interest in the Wilson patent since its issuance. Admission of Fact; Plaintiff’s Exhibit 1. The Wilson patent issued from application Serial Number 96,089 filed with the United States Patent and Trademark Office on March 16, 1961. The 96,089 application was a division of Serial Number 31,253 filed May 24, 1960 which in turn was a continuation-in-part of Serial Number 714,947 filed February 13, 1958. Plaintiff’s Exhibits 1-4. The claims of United States Patent 3,816,092 are as follows: 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 3,4-dichloropropionani-lide 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 3,4-dichloropropionanilide is applied in a composition comprising 3,4-dichloropropionanilide and an inert diluent therefor at a rate of between 0.5 and 6 pounds of 3,4-dichloropropionanilide per acre. 3. The method according to claim 1 wherein most of the undesirable plants are destroyed by the 3,4-dichloropropion-anilide applied thereto without substantial adverse effect on the crop growing therewith. 4. The method according to claim 1 wherein the established crop is tomatoes. 5. The method according to claim 1 wherein the established crop is potatoes. 6. The method according to claim 2 wherein the established crop is monocotyledonous. 7. The method according to claim 2 wherein the established crop is dicotyledonous. 8. The method according to claim 2 wherein the undesirable plants include monocotyledonous plants. 9. The method according to claim 2 wherein the undesirable plants include dicotyledonous plants. 10. The method according to claim 2 wherein the established crop is a grain crop. 11. The method according to claim 2 wherein the undesirable plants include barnyardgrass. 12. A method for selectively inhibiting the growth of growing, tender, undesirable, annual plants which are susceptible to 3,4-dichloropropionanilide, said undesirable plants growing in an area containing an established monocotyledonous crop which is resistant to 3,4-dichloropropion-anilide, which comprises applying to said undesirable plants a composition comprising 3,4-dichloropropionanilide and an inert carrier therefor at a rate of application which inhibits growth of said undesirable plants and which does not substantially affect the growth of said established monocotyledonous crop. Plaintiffs Exhibit 1. B. The Discovery of the Invention 7. Dr. Dougal H. McRae came to work at Rohm and Haas in September, 1953 for the purpose of establishing and developing a herbicide program. Prior to his arrival, Rohm and Haas did not have a herbicide program. Rather, Rohm and Haas had programs specializing in insecticides, fungicides, and industrial biocides. Testimony of Dougal McRae. 8. By early 1955, Dr. Harold F. Wilson, formerly a synthesis chemist in Rohm and Haas’ insecticide program, became directly responsible for the synthesis of compounds to be tested in a herbicidal screening program under the direction of McRae. Wilson supervised the preparation of the chemical compounds for use in the program. Testimony of Dougal McRae; Plaintiff’s Exhibit 141 (Deposition Testimony of Harold Wilson). Compounds that were found to have a sufficient herbicidal effect in the greenhouse were then selected and field tested by McRae to see if such compounds also exhibited selective herbicidal properties. Testimony of Dougal McRae; Plaintiff’s Exhibit 141 (Deposition Testimony of Harold Wilson). From the beginning of the herbicide program, primary emphasis was placed on selective, post-emergence herbicidal activity, in particular to the control of monocot weeds. Testimony of Dougal McRae; Plaintiff’s Exhibit 127. 9. During the initial stages of the development of Rohm and Haas’ herbicide research program, dichlorophenoxyacetic acids were becoming established as being very effective herbicides against broadleaf plants. Testimony of Dougal McRae. Rohm and Haas’ research policy at that time was to work from a lead compound, and prepare the homologs, isomers and analogs of the lead compound and check their activity. Testimony of Dougal McRae. 10. In 1955, it was Rohm and Haas’ practice to send certain chemical compounds which it had made to the United States Chemical Biological Coordination Center (hereinafter CBCC). Apparently, the compounds were then tested and evaluated in a plant growth regulatory program conducted by CBCC. Testimony of Dougal McRae. 11. In 1955, Dr. McRae received a report from the CBCC containing the results of plant growth regulatory tests and evaluations conducted on 633 compounds including three amides, one of which was cyclohexylmethacrylamide. The report contained also test results which suggested to McRae and Wilson that certain chloroanilides might be a likely area for herbicidal investigation. Testimony of Dougal McRae; Plaintiff’s Exhibit 127; Defendants’ Exhibits 11, 14, 322. 12. McRae and Wilson decided to include in their herbicide screening program a series of compounds related to the compounds suggested in the CBCC report in the hope that such compounds would display herbicidal activity. Two compounds, 4-chlo-romethacrylanilide and 3,4-dichlorometha-crylanilide, were tested and found to have good herbicidal activity, and further work showed that saturated chloroanilides also displayed activity. Testimony of Dougal McRae; Plaintiff’s Exhibits 127, 141 (Deposition Testimony of Harold Wilson); Defendants’ Exhibits 11, 14. 13. 3,4-dichloropropionanilide (hereinafter propanil) was first made in approximately February, 1957 and the chemical was assigned the code-name FW-734. Testimony of Dougal McRae; Plaintiff’s Exhibits 127,128; Defendants’ Exhibits 11,14. McRae first tested propanil as a herbicide in the greenhouse in February and March, 1957. The greenhouse tests showed propanil to have high post-emergence herbicidal activity as opposed to insignificant or negligible pre-emergence activity. Testimony of Dougal McRae; Plaintiff’s Exhibits 127, 128; Defendants’ Exhibits 11, 14. 14. On April 3, 1957, Wilson and McRae attended a meeting with Drs. Lyon and Craig, two senior employees of Rohm and Haas. At this meeting, Wilson and McRae discussed propanil and its herbicidal activity, and as a result of initial testing on monocots and dicots in which propanil exhibited the highest level of activity of those compounds tested, it was decided to prepare a substantial quantity of propanil along with three other chloroanilides, specifically, 4 chloromethacrylanilide, propionanilide, and 4 dichloropropionanilide. These compounds would then be field tested by post-emergence applications at Rohm and Haas’ field test farm in Newtown, Pennsylvania. Testimony of Dougal McRae; Plaintiff’s Exhibits 127, 141 (Deposition Testimony of Harold Wilson); Defendants’ Exhibit 1. 15. On April 4, 1957, Wilson prepared a report summarizing the events which occurred at the April 3, 1957 meeting. The report records the inventors’ decision to make substantial quantities of propanil and to field test it in post-emergence applications at Rohm and Haas’ field test farm. This report sets forth the inventors’ concept that propanil might be more selective than dinitrophenol compounds. Testimony of Dougal McRae; Plaintiff’s Exhibits 127,141 (Deposition Testimony of Harold Wilson); Defendants’ Exhibit 1. See also Defendants’ Exhibit 5. 16. The tests were proposed to begin in the summer of 1957. Included within those tests that were to be conducted were post-emergence tests on corn and beans at the come-up stage and a test on cotton and corn at the lay-by stage. Testimony of Dougal McRae; Plaintiff’s Exhibits 127, 129; Defendants’ Exhibit 1. The inventors did not intend at the April 3, 1957 meeting to limit propanil’s evaluation to just these tests, nor does the contemporaneously prepared report reflect such an intent. Testimony of Dougal McRae; Plaintiff’s Exhibit 127; Defendants’ Exhibit 1. 17. Pursuant to the April 3 decision to field test propanil, significant quantities of propanil and the other compounds mentioned previously were prepared during April and the early part of May. Crops for the initial test were planted on May 8th and treated with propanil on May 29, 1957. Thereafter, McRae conducted additional tests of propanil on other crops, including tests on tomatoes and potatoes. All of these tests were carried out pursuant to the conception of propanil’s selective, post-emergence herbicidal activity on April 3, 1957 as embodied in the memorandum prepared by Wilson on April 4,1957. Testimony of Dougal McRae; Plaintiff’s Exhibits 11, 127, 129. Defendants' Exhibit 1. 18. Although the initial tests on corn and beans did not confirm propanil’s selectivity, McRae continued to conduct field tests of propanil and the other compounds throughout the Summer of 1957. Testimony of Dougal McRae. By the fall of 1957, McRae had applied propanil to such crops as corn, beans, cotton, tomatoes, potatoes, clover, strawberries, turf grasses and in orchards. These tests showed that propanil was highly active against a wide variety of weeds while at the same time tomatoes, potatoes, strawberries, turf grasses, clover, corn, cotton and the plants in those orchards tested were tolerant to propanil applied at weed killing rates. Testimony of Dougal McRae; Plaintiff’s Exhibits 4, 11, 12D, 12N, 53-55, 121,127; Defendants’ Exhibits 2, 11, 14. See also Defendants’ Exhibit 330. 19. The results of these tests revealed that the anilides tested did not exhibit satisfactory pre-emergence herbicidal activity. The results revealed further that propanil was the most phytotoxic of the anilides tested through post-emergent applications and exhibited good herbicidal activity against both dicots and monocot weed species at low rates of application. Propanil was found also to have the most effective control when applied to weeds in the seedling stage, although it was effective also on more mature weeds. Specifically, McRae discovered that propanil was phytotoxic to annual monocots and dicots such as crabgrass, foxtail, millet, red root, tumbling pig-weeds, lamb’s quarter, purslane, ragweed, smartweed, plantain, chickweed, and scarlet pimpernel, but did not exhibit herbicidal activity against perennial monocots in the tests which were conducted. McRae suggested that further studies be conducted in order to draw a more informed conclusion. McRae recommended further that tests on biennial or perennial dicots be run. Testimony of Dougal McRae; Defendants’ Exhibit 5. As to the effect of propanil when applied to crops, McRae found: 16. Tomato plants were injured fairly severely by FW-734 at an application rate of 4 lb./A. Injury was not serious at 2 lb./A. and results obtained indicated that tomatoes might be tolerant to FW-734 at rates below 2 lb./A. In any event, further work should be carried out on tomatoes since it is a crop in which directed sprays can be applied between the plant rows, thereby minimizing the danger of excessive foliar contact and consequent injury. 17. Corn and snap beans in the seedling stage were severely injured by FW-734. 18. Well established field corn and cotton were tolerant to sprays of FW-734 directed toward the base of the plants. Present evidence indicates that most well established crops should be quite tolerant to FW-734. Consequently, FW-734 should be tested in situations where crops have reached a relatively large size but weeds are small. For example, if crops have been kept weed-free from time of planting for a month or two by cultivation or through use of pre-emergence herbicides, there is a high probability that many crops would be tolerant to FW-734. The important point to remember is that FW-734 should not be applied until after new weeds have germinated. 19. Strawberry plants treated after the fruiting season were tolerant to FW-734. An application rate of 6 lbs./A. caused slight foliar burn but lower rates did not produce visible injury. 20. The limited available evidence indicates that most, if not all dormant crops should be tolerant to FW-734. Consequently, the compound should be tested for control of winter annual weeds (e.g. chickweed) in crops such as alfalfa during the dormant season of the crop. Defendants’ Exhibit 5. See also Testimony of Dougal McRae. 20. These outstanding results obtained during the summer of 1957 led Wilson and McRae to request on October 25, 1957, the preparation of a patent claiming propanil and 3,4 dichloroisobutyranilide as new compounds, based upon their activity as herbicides. Plaintiff’s Exhibit 127; Defendants’ Exhibit 3. On December 10, 1957, Wilson forwarded to Rohm and Haas’ patent department a memo containing additional weed control data on the two aforementioned compounds and other closely related compounds. Plaintiff’s Exhibit 127; Defendants’ Exhibit 4. Rohm and Haas’ patent department then prepared a patent application which was filed in February, 1958. This application claimed not only the two compounds suggested by Wilson but also 3,4 dichloro-a-methylvaleranilide. Testimony of Dougal McRae; Plaintiff’s Exhibit 4. 21. Shortly after the 1957 herbicide field tests were completed, the inventors recognized that propanil exhibited considerable potential as a post-emergence herbicide, and decisions relating to future work were made. Propanil was rapidly advanced to the development stage and large quantities of propanil were made for testing in the States of California and Florida during the Fall and Winter of 1957. Testimony of Dougal McRae. Additionally, McRae conducted further tests in the greenhouse in the latter part of 1957 and early part of 1958. As the result of these tests, McRae obtained evidence of the post-emergence selectivity of propanil in wheat. Testimony of Dougal McRae; Plaintiff’s Exhibits 127, 128. See also Plaintiff’s Exhibit 122. 22. After the completion of the summer field tests, McRae suggested in the fall of 1957 that propanil be advanced to the developmental stage. Testimony of Dougal McRae; Plaintiff’s Exhibit 127; Defendants’ Exhibit 2. 23. In 1957 and 1958, it was standard practice for Rohm and Haas to send to experimentors in the United States and abroad chemicals which Rohm and -Haas’ own work had shown to have promise as useful, commercial chemicals. Agricultural chemicals were usually sent out with a statement as to their intended utility, and it was only after Rohm and Haas itself had established a utility that a compound was sent out. Rohm and Haas followed the practice of providing recipients of its chemical samples with whatever technical bulletins or other pertinent information it had at the time. As part of this procedure, agricultural chemical compounds were tested in foreign countries, including Japan, Canada, France and England, to ascertain the effect of differences in local crops, climates and practices. This practice was common in the industry and allowed rapid development of valuable information of the chemical’s properties under local climates, soils and cultural practices as well as on local crops and weeds. Testimony of Dougal McRae; Testimony of Ruppert Palmer; Plaintiff’s Exhibits 19, 120, 127. 24. In late 1957 or early 1958, McRae was informed that propanil was being sent to Rohm and Haas’ representative in Japan for further testing. Testimony of Dougal McRae. 25. In the late 1950’s, Sanyo Trading Company (hereinafter Sanyo) was an independent sales agency. During that time, Sanyo was also Rohm and Haas’ agent in Japan. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. Prior to 1958, Rohm and Haas had sent a sample of one of its chemical compounds, such compound had been code named FW-450, to Sanyo for evaluation as a herbicide. Plaintiff’s Exhibit 19. Sanyo then forwarded the sample to Dr. Tetsuo Takematsu for testing. These tests included evaluation of the compound as a herbicide for weed control in rice crops, a major economic crop in Japan. Testimony of Ruppert Palmer; Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. Takematsu’s results pertaining to FW — 450 were reported to Sanyo which in turn reported the results to Rohm and Haas. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. 26. In a letter dated March 31, 1958, Rohm and Haas informed Sanyo that it would soon forward an experimental herbicide known as FW-734 for Sanyo’s evaluation. The letter stated that FW-734 appeared very interesting as a post-emergent herbicide on monocot and dicot weed species, and was highly effective at relatively low application rates. The letter stated further that technical information would be provided along with the compound. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. 27. On April 28, 1958, Rohm and Haas sent Sanyo 25 gallons of FW-734, or propanil. In a letter informing Sanyo of the shipment, Rohm and Haas stressed its desire to have the herbicide thoroughly tested in Japan during the summer of 1958. Enclosed in the letter was a summary of the technical information on propanil referred to in Rohm and Haas’ letter of March 31, 1958. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. 28. Any thorough testing of a herbicide in Japan would necessarily include testing on rice as Takematsu had done with FW-450. Testimony of Ruppert Palmer; Testimony of Ford Baldwin; Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. 29. On May 22, 1958, Sanyo acknowledged receipt of the 25 gallon sample of propanil furnished by Rohm and Haas. Sanyo advised Rohm and Haas that arrangements were being made to conduct experimental testing of propanil in cooperation with research members of agricultural field laboratories and universities, and that Takematsu, a Professor at Utsunomiya University, had already begun the evaluation of the compound provided by Rohm and Haas. Plaintiff’s Exhibit 19; Defendants’ Exhibits 195, 252. Sanyo informed Rohm and Haas also that the following experiments would be conducted on propanil during the summer: (1) effect for soil treatment; (2) killing action of young weeds in the field; (3) killing action of weeds in paddy-fields; (4) decomposition and translocation in soil; and (5) phytotoxicity against crops. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. Sanyo solicited further suggestions and available experimental data from Rohm and Haas and stated that the results of the experimental testing on propanil would be forwarded immediately to Rohm and Haas. Plaintiff’s Exhibit 19; Defendants’ Exhibits 195, 252. 30. In addition to providing Takematsu with a sample of propanil, Sanyo had provided Takematsu with a Rohm and Haas technical bulletin entitled “Herbicide FW-734 (3,4 Dichloropropionanilide)”. This bulletin advised that propanil had been evaluated by Rohm and Haas under field conditions during the Summer of 1957, and that propanil displayed good herbieidal activity against both dicot and monocot weeds at low rates of application. Specifically, the technical bulletin reported the following with respect to propanil’s effect on various weed species: FW-734 did not exhibit herbieidal activity against perennial monocots in the limited tests carried out. Available evidence indicates that FW-734 does not translocate downward readily in monocots. However, further studies are required to clarify this point. FW-734 was effective against many annual dicot weed species. However, a certain degree of tolerance was exhibited in certain dicots which indicates a possibility of selectivity among these species. Little information was obtained with respect to the activity of FW-734 against bi-annual or perennial dicots. FW-734 was most effective when applied to weeds in the seedling stage, although its activity was quite evident on more mature weeds. As with most herbicides, the most efficient control was obtained when FW-734 was applied to weeds in the early stages of growth. FW-734 as a post-emergence herbicide, effectively controlled all annual and dicot weeds present in herbicide plots. The weeds controlled were: Crab grass Tumbling pigs Smartweed Fox tail weed Plantain Millet Lamb’s quarter Chickweed Redroot Purslane Scarlet Ragweed pimpernel Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. The technical bulletin stated also that the most marked evidence for selectivity was obtained in potatoes, while injury to tomatoes was not serious at two pounds per acre. Field corn, cotton and strawberry plants were also said to be tolerant to propanil. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. 31. Rohm and Haas, through Sanyo, paid Takematsu 40,000 Japanese yen, approximately $120.00, on July 4, 1958 for tests he conducted on propanil and a product called VAPAM. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. The amount paid Takematsu by Rohm and Haas was reasonable at the time for the type of testing that Takematsu had performed. Testimony of Ruppert Palmer. 32. On or about July 3, 1958, a preliminary report of Takematsu’s work was forwarded to Rohm and Haas by Sanyo. Takematsu’s experiments revealed that propanil caused no injury against dry-land rice when applied in post-emergent treatments. Plaintiff’s Exhibit 19; Defendants’ Exhibits 292, 323. See also Defendants’ Exhibit 6. 33. McRae first learned of the results of Takematsu’s testing of propanil in the winter of 1958/1959. Testimony of Dougal McRae. By this time, the results of field testing that McRae had conducted in the summer of 1958 revealed that propanil demonstrated selective, post-emergence herbicidal activity for propanil in grain crops, including barley, wheat, oats, and rye. Testimony of Dougal McRae; Plaintiff’s Exhibits 122,128. See also Testimony of Ruppert Palmer. Testing of propanil conducted by McRae in 1957 had demonstrated that propanil killed barnyard grass, a monocot; such information was reported in Rohm and Haas’ 1958 application. Plaintiff’s Exhibit 4. See also Testimony of Dougal McRae. 34. After Rohm and Haas received the results of Takematsu’s experiments showing the selective, post-emergence herbicidal effect of the propanil supplied by it, rice seed was obtained and rice, a cereal crop, was grown in Rohm and Haas’ herbicide research greenhouses. Testimony of Dougal McRae. 35. In February, 1959, Rohm and Haas conducted greenhouse tests of propanil and seven other compounds on rice. The test results revealed that rice had a tolerance to propanil. Testimony of Dougal McRae; Plaintiff’s Exhibit 125. 36. In January, 1959, Takematsu and Marota Konnai published a booklet containing the results of their work with propanil on rice. The title of the Japanese booklet, translated to English, is “Fundamental Research on the Chemical Weed Control in Arable Land”. Plaintiff’s Exhibit 19; Defendants’ Exhibits 252, 323. At least 125 copies of the booklet were made in Japan before January 16, 1959; such copies were made by a mechanical copymaking technique. Approximately 100 copies of the booklet were handed out to participants during a conference entitled “Conference for Investigation of Test Results of Herbicides Relating to Summer Crop for the Fiscal Year 1958”. The conference was held under the auspices of the Japanese Ministry of Agriculture and Forestry in Tokyo, Japan on January 16 and 17, 1959. The conference was attended by over 100 persons composed of Japanese government personnel and Japanese university and industry personnel interested in herbicides and the use thereof. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. 37. In January, 1959, at least one copy of Takematsu’s booklet was received by the Research Institute of Ihara Noyaku Co., Ltd. in Japan and circulated to members of the Institute. The booklet was deposited then in the Institute’s library. Plaintiff’s Exhibit 19; Defendants’ Exhibit 252. 38. After obtaining the results of the greenhouse tests of propanil on rice in early 1959, Plaintiff’s Exhibit 125, McRae contacted Dr. Shaw, an employee of the United States Department of Agriculture (hereinafter USD A), who was in charge of USD A scientists testing herbicides. McRae contacted Shaw for the purpose of soliciting Shaw’s recommendation of a researcher in the United States who could conduct further tests on rice. Shaw referred McRae to Dr. Roy Smith, an employee of the USDA, whom Shaw contended was the foremost investigator in the field of rice. Testimony of Dougal McRae. 39. Smith was first contacted by McRae in approximately March or April of 1959, and it was requested that he test propanil. Testimony of Dougal McRae; Plaintiff’s Exhibit 124; Defendants’ Exhibit 18. By June 1959, Smith had conducted preliminary tests on propanil and reported that propanil controlled barnyard grass without injuring rice. Plaintiff’s Exhibit 123. Smith continued his field tests of propanil with such outstanding results that, after receiving Rohm and Haas’ permission to disclose the chemical formula of propanil, he reported his findings at the Southern Weed Conference held in late January of 1960 in Biloxi, Mississippi. Testimony of Dougal McRae; Plaintiff’s Exhibits 59,123. See Plaintiff’s Exhibit 34. 40. In January, 1960, Dr. Gordon Brandes, an employee of Rohm and Haas, contacted Smith and several other persons around the country for the purpose of conducting additional field tests of propanil on rice during the 1960 rice growing season. Testimony of Gordon Brandes; Testimony of Dougal McRae. The results of the field tests conducted by the experimenters in 1960 confirmed early findings that propanil was very effective in the control of barnyard grass and other weeds without injury to rice. Testimony of Gordon Brandes. 41. In 1961, Rohm and Haas began marketing propanil commercially, and propanil was registered with the appropriate federal agencies. Testimony of Gordon Brandes; Testimony of Dougal McRae. Rohm and Haas began in 1961 and continues to this day to sell propanil products as selective, post-emergence herbicides for the control of weeds growing in rice under the brand names STAM F-34, STAM M^4 and STAM LV-10. Testimony of Gordon Brandes; Plaintiff’s Exhibits 49, 50, 55-60, 101, 104-107; Defendants’ Exhibits 147, 292. 42. Immediately upon its introduction in 1961, propanil had a substantial impact on the rice industry. More than twenty years later, propanil remains an integral part of the methodology employed by rice farmers to control weeds growing in rice. Testimony of Ford Baldwin; Testimony of Gordon Brandes; Testimony of Bill Fagala; Testimony of Barry Jeffrey; Testimony of Ruppert Palmer; Plaintiff’s Exhibits 18 (Deposition Testimony of Bobby Joe Pace), 34, 36, 39, 47, 50, 117. 43. Propanil has been directly responsible for increases in the yield of rice per acre from 35% to as much as 65% by eliminating barnyard grass, the major destructive weed competing with young rice plants. Prior to propanil, there was no practical way of controlling this weed. Testimony of Ford Baldwin; Testimony of Gordon Brandes; Testimony of Bill Fagala; Testimony of Barry Jeffrey; Testimony of Ruppert Palmer; Plaintiff’s Exhibits 18 (Deposition Testimony of Bobby Joe Pace), 39, 41-44, 46, 47, 49, 50, 52, 117. In addition to eliminating barnyard grass and other weeds, propanil allowed farmers to use new, more productive varieties of rice, plant rice at lower levels, decrease water usage and utilize fertilizer more efficiently. Propanil also made easier the harvesting, drying and cleaning of rice. Testimony of Gordon Brandes; Testimony of Bill Fagala; Testimony of Ruppert Palmer; Plaintiff’s Exhibits 34, 36, 37, 41-44, 46, 47, 49, 50, 52, 58. 44. Since 1961, Rohm and Haas’ domestic sales of propanil to control weeds growing in rice have exceeded 200 million pounds and 170 million dollars, while its foreign sales have exceeded 91 million pounds and 67 million dollars. Since the issuance of the patent in suit, yearly domestic sales of propanil have averaged approximately 12 million dollars. Testimony of James Underwood; Plaintiff’s Exhibits 114, 116, 118, 142, 161. These sales have been accomplished with a minimum amount of advertising. Testimony of William Ambrogi. 45. Rohm and Haas sells herbicidal propanil also under the trade name Stampede for the control of weeds in oats, barley and wheat. Testimony of Gordon Brandes; Plaintiff’s Exhibits 101, 103. Sales of Stampede have exceeded 3 million dollars. Testimony of James Underwood; Plaintiff’s Exhibits 103, 118. C. The History of the Patent in Suit 1. Rohm and Haas’ 1958 Application 46. On February 13, 1958, Wilson and McRae filed an application in the Patent and Trademark Office, serial number 714,-947, describing three herbicidal compounds, the 3-4 dichloroanilides of propionic, isobutyrie, and also a-methylvaleric acids. Plaintiff’s Exhibit 4. One of the herbicidal compounds described in the application bears the chemical name “3,4-dichloropro-pionanilide”, i.e., propanil. These three compounds were asserted to possess marked herbicidal activity and of the three compounds disclosed, propanil was described as being “outstandingly active”. The 1958 application referred also to known herbicides and noted that some of these herbicides were highly toxic to all types of plants and thus lacked the desired selectivity and differential characteristics. The disclosed compounds were said to possess these desired properties and to provide significant advance. Testimony of Dougal H. McRae; Plaintiff’s Exhibit 4. 47. Propanil is a chemical compound which has the structural formula This compound can be named also as N(3,4dichlorophenyl) propananide or N(3,4-dichlorophenyl) propionanide. Testimony of Dougal McRae; Plaintiff’s Exhibits 2, 3. Propanil is a member of a class of compounds known as “anilides”. Propanil is also a “dichloro” compound since the propanil molecule includes two chlorine atoms; hence it is a “dichloroanilide”. The numbers 3 and 4 refer to the particular corners of the benzene ring, i.e., hexagonal ring of carbon atoms, to which the chlorine atoms are attached. The corners of the benzene ring are numbered according to an accepted chemical numbering system. Testimony of Dougal McRae; Plaintiff’s Exhibit 13. Anilides may be formed through a reaction of anilines with organic acid. Propanil, for example, is made by the chemical reaction óf 3,4-diehloroaniline with propionic acid. Testimony of Dougal McRae. 48. Within the anilide family, those anilides which have a structural formula similar to propanil are known as homologs, isomers, and analogs of propanil. Homo-logs differ in structure solely by the number of methyl or CH2 groups in the compounds. Hence, a homolog of propanil, for example, 3,4-dichloroacetanilide, has the following structural formula: Testimony of Dougal McRae; Plaintiff’s Exhibit 13. 49. Isomers contain the same number and types of atoms in the structural formula, but the atoms are located in a different position. An example of an isomer of propanil is 2,4-dichloropropionanilide Testimony of Dougal McRae. 50. Analogs differ by a single atom or a group of atoms having the same valence, i.e., chemical bonding capacity, as the atom or groups of atoms it replaces. Testimony of Dougal McRae; Plaintiff’s Exhibit 13. Thus, examples of analogs of propanil are: 4-chloropropionanilide, which has the structural formula 3-chloropropionanilde, which has the structural formula and 2-chloropropionanilide, which has tne structural formula Testimony of Dougal McRae; Plaintiff’s Exhibit 13. 51. A chemical structure, is simply a shorthand method used by chemists to depict a compound, much as a deed describes the metes and bounds of a particular parcel of land. Chemical structures do not describe the entirety of a compound, namely its properties and character. Seemingly small differences in chemical structure, including the concepts of homology, isomerism and analogy, can produce substantial differences in herbicidal properties; such differences can be significant and unpredictable. Testimony of Dougal McRae; Testimony of Ruppert Palmer. Consequently, such differences have resulted in the commercial success for the methods of using propanil as defined in the patent in suit, as opposed to the agricultural chemical industry’s indifference for methods of using compounds related structurally to propanil, e.g., 3,4-dichloroacetanilide; 3,4-dichloroalphamethylvarylanilide; 4 chloropropionanilide and 3 chloropropionanilide. Testimony of Dougal McRae; Testimony of Ruppert Palmer. 52. A herbicide is a chemical used for killing or adversely affecting the growth and development of plants. Testimony of Dougal McRae. Herbicides are commonly classified into the following four classes: (1) general pre-emergence herbicides inhibit the growth of substantially all plants when applied to the soil before the plants emerge from the ground. (2) general post-emergence herbicides destroy substantially all plants when applied thereto after the plants have emerged from the ground. (3) selective, pre-emergence herbicides, when applied to the soil before the plants emerge, inhibit the growth of weeds without adversely affecting the crop. (4) selective, post-emergence herbicides, when applied after emergence to a crop and weeds normally associated therewith, substantially destroy the weeds without adversely affecting the crop. Testimony of Dougal McRae; Testimony of Ruppert Palmer. 53. A weed is a plant undesired in the location where it is growing while a crop is a plant desired in the particular location where it is growing. Testimony of Dougal H. McRae; Testimony of Gordon Brandes; Plaintiff’s Exhibit 2. 54. Identification of a herbicidal material as selective, general or non-selective may depend upon the conditions under which it is applied. Testimony of Dougal McRae. Factors which may influence the type of activity of the particular herbicide include the rate or time of its application, the growth stage of the plants to which the herbicide is applied, the manner by which the herbicide is applied, i.e., whether it is applied as a blanket spray (over the top of all plants in a given area) or as a directed spray (spray controlled and directed to contact only some plants but not others), and even the type of formulation of the herbicide. Testimony of Dougal McRae, Defendants’ Exhibits 225-227. Nevertheless, compounds which possess one type of herbicidal activity may not necessarily possess any of the other types of herbicidal activity. For example, general herbicides may never become selective. In addition, pre-emergence herbicides may never demonstrate post-emergence activity. Testimony of Dougal McRae; Testimony of Ruppert Palmer. Selectivity can depend also on the type of plant to which the herbicide is applied. Testimony of Dougal McRae. For example, a phenoxy herbicide commonly known as 2,4 D will control the growth of dicotyledonous plants without affecting adversely monocotyledonous plants such as cereal grains. Testimony of Dougal McRae; Testimony of Ruppert Palmer. 55. The most desirable herbicides are those which will selectively kill undesirable plants or weeds under conditions of applications which will cause little or no adverse effect on desirable plants or crops. Testimony of Dougal McRae. 56. Plaintiff’s 1958 application was directed to chemical compounds with post-emergence herbicidal activity, and, in particular, to selective herbicidal effects which could be obtained through various rates of application, times of application or methods of application. Control of weeds among established crops was one of the specifically stated objectives. Testimony of Dougal H. McRae; Plaintiff’s Exhibit 4. 57. Several structurally related prior art compounds were acknowledged in the 1958 application. It was stated in the application that many of these compounds when tested showed slight or no useful herbicidal activity. The 1958 application observed further “that herbicidally active agents in this field of chemistry cannot be predicted from the prior knowledge of compounds which have been demonstrated to exhibit herbicidal activities.” Testimony of Dougal McRae; Plaintiff’s Exhibit 4. 58. The 1958 application disclosed how the compounds described therein were made, how herbicidal compositions from these compounds were formulated, and the methods of application of the formulated compositions to plants. The post-emergence herbicidal activity of the compounds, as well as structurally related prior art compounds, was illustrated by tests carried out in the greenhouse and by data obtained from the field. Field test data contained in the 1958 application demonstrated the selective, post-emergence herbicidal properties of propanil including the control of annual grasses and weeds growing among perennial grasses, the control of weeds growing in alfalfa and clover, and the destruction of a variety of both monocotyledonous and dicotyledonous weeds growing in such crops as strawberry, potato and tomato without injury to the crops. Monocotyledenous plants (hereinafter monocots) comprise a class of plants typified by grasses or narrow leaf plants; dicotyledenous plants (hereinafter dicots) form a separate and distinct class of plants commonly known as broadleaf plants. Additionally, the 1958 application stated that the compounds claimed could be used effectively for the control of annual weeds in such additional crops as corn, sugar cane and pineapples. Testimony of Dougal H. McRae; Plaintiff’s Exhibit 4. 59. In the first office action issued by the Patent Office on October 14, 1958, the patent examiner rejected all of the claims contained in the 1958 application as such claims failed to properly define the invention. The patent examiner rejected the claims contained in this application also on the basis that the claims were obvious by prior art. Moreover, the patent examiner, on the basis that the 1958 application contained two independent and distinct inventions, i.e., one invention being the compounds per se and the other being herbicidal compositions containing and methods of using the compounds, required that the 1958 application be restricted to one of the aforementioned inventions pursuant to 35 U.S.C. § 121 (Supp.1982). Plaintiff’s Exhibit 4. See also Testimony of Walter Modance. 60. In an amendment to the 1958 application filed on January 30, 1959, Rohm and Haas contested the rejections made by the patent examiner and presented arguments in support of its position. Additionally, Rohm and Haas, although contesting the restriction requirement imposed by the patent examiner, elected to pursue prosecution of the claims to the compounds per se. Plaintiff’s Exhibit 4. See also Testimony of Walter Modance. Piled along with the amendment was an affidavit executed by McRae. The affidavit contained the results of a series of tests on a number of analogous chlorinated anilides. The test data was submitted for the purpose of demonstrating “the unexpected and completely unobvious herbicidal properties of the products of the present invention and the inability to predict these properties on the basis of the prior art.” Plaintiff’s Exhibit 4. See also Testimony of Walter Modance. The test data as submitted indicated that propanil was highly phytotoxic to a variety of weeds when compared to 3,4-dichloroacetanilide, 3,4,5-trichloropro-pionanilide, 3-chloropropionanilide, and 2-chloropropionanilide. Testimony of Dougal McRae; Plaintiff’s Exhibit 4; Defendants’ Exhibit 58. 61. Notwithstanding the additional data contained in the affidavit submitted by McRae and Rohm and Haas’ arguments in response to the patent examiner’s rejections of Rohm and Haas’ claims, in an office action dated February 13, 1958 the patent examiner adhered to his prior decision rejecting the claims contained in the 1958 application and to his decision that independent and distinct inventions were being claimed in the 1958 application. Additionally, Rohm and Haas’ method claims were withdrawn by the examiner from further consideration pursuant to plaintiff’s election not to pursue prosecution of such claims. Plaintiff’s Exhibit 4. See also Testimony of Walter Modance. 62. In response to the office action of July 14, 1959, Rohm and Haas filed an amendment on August 25, 1959 wherein it was argued once again that claims 1 to 5 were definite and patentable. Along with this amendment plaintiff submitted another affidavit executed by McRae for the purpose of demonstrating that propanil “has ‘unobvious (or) and unexpected properties not possessed by the prior art isomers’ or homologs or isomeric homologs.” Plaintiff’s Exhibit 4. The affidavit contained test data comparing the phytotoxicity between propanil and 2,5-dichlorobutyranilide; such data revealed that propanil was phytotoxic to a number of weeds whereas 2,5 dichlorobutyranilide had no effect whatsoever on those weeds to which it was applied. Plaintiff’s Exhibit 4; Defendants’ Exhibit 59. 63. On September 2, 1959, the patent examiner reaffirmed his prior decision with respect to the claims contained in the 1958 application and suggested also a claim in the 1958 application for purposes of interference: A compound selected from the group consisting of N-(3,4-dichlorophenyl) — 2-methylpentanamide and N-(3,4-dichlorophenyl) — 2-methylpropanamide. Plaintiff’s Exhibit 4. The claim suggested for interference was drawn to two compounds per se, neither of which was propanil. Plaintiff’s Exhibit 4; See also Testimony of Walter Modance. 64. Shortly thereafter, plaintiff filed an amendment raising again arguments with respect to the patentability of plaintiff’s claims and, in addition, presenting a twelfth claim for purposes of interference as required by the patent examiner. Plaintiff’s Exhibit 4. See also Testimony of Walter Modance. 65. As a result of plaintiff’s September 2 amendment, Interference No. 90,697 was declared on November 24, 1959, and plaintiff’s patent application was forwarded to the Examiner of Interferences. The purpose of the interference proceeding was to determine as between the application filed by Rohm and Haas and an application filed by Robert L. Gates, who was the first inventor of the two compounds, neither of which was propanil, defined in the aforestated claim. Plaintiff’s Exhibit 4; Defendants’ Exhibit 153. See also Testimony of Walter Modance. 66. On May 24, 1960, Rohm and Haas filed an amendment cancelling all references to propanil in claims 1, 5, 7, 8 and 10, as propanil was being claimed in a continuation-in-part application (hereinafter 1960 application) The amendment cancelled further claims 2, 6, 9 and 11 in their entirety. Plaintiff’s Exhibit 4. See also Testimony of Walter Modance. 67. A continuation-in-part or “CIP” application is an application that is filed during the pendency of an application filed earlier by the same inventor, i.e., the parent application, disclosing some subject matter common to the parent application, as well as some subject matter not common to and not supported by the parent application. The continuation-in-part application may or may not claim the new subject matter. Although a continuation-in-part application discloses subject matter not found in the parent application, one or more of its claims may be directed solely to subject matter disclosed in the parent application. In such cases, the effective filing date for the continuation-in-part claims which are supported in the parent application is the filing date of the parent application. Testimony of Walter Modance. 68. In May 1962, the interference declared in October, 1960 was terminated by the patent examiner on the ground that the two compounds in question were unpatentable in view of German Auslegeschrift 1,005,784 which had been filed on April 4, 1957. Plaintiff’s Exhibit 4; Defendants’ Exhibit 153. The examiner declared also that the amendment of May 24, 1960 had been entered, and pursuant to such amendment, claims 2, 6, 9 and 11 were cancelled. The patent examiner held also that claims 7 and 8 stood withdrawn from consideration as a result of plaintiff’s election. Finally, the patent examiner rejected claims 1, 3, 4 and 12 as unpatentable over the German Auslegeschrift or application that had been involved in the interference proceeding declared in 1960, as the Auslegeschrift disclosed the 3,4-dichloroanilide of isobutyric acid (also termed N-(3,4-dichlorophenyl) — 2-methyl propanamide) which obviously fully meets claims 1, 3 and 12. The German Auslegeschrift contemplates the 3,4-dichloroan-ilides of 2-alkyl-alkanoic acids as a class as is readily apparent from a consideration of the generic formula and the named ethylhexanoic and isobutyric acids. The 3,4-dichloroanilide of-methylavaleric acid (also termed 3,4-dichloro-a-methyl-valeranilide; or N-(3,4-dichlorophenyl)-2methyl pentamide) is found to be so readily suggested in view of the prior act as to be rendered obvious as a compound to one of ordinary skill in this art, 35 U.S.C. 103. Plaintiff’s Exhibit 4. The patent examiner rejected further claim 5 of plaintiff’s application by reason of the disclosure in the German Auslegeschrift. Additionally, the patent examiner found that “the compound 3,4-dichloro-a-methylvaleranilide and its application in aqueous media is considered to be so readily suggested in view of the prior art as to the rendered obvious to one of ordinary skill, 35 U.S.C. 103.” Plaintiff’s Exhibit 4. The German Auslegeschrift referred to above does not disclose propanil. Plaintiff’s Exhibit 4. 69. On July 9, 1962, Rohm and Haas expressly abandoned its 1958 application as the continuation-in-part application filed on May 24, 1960 contained the subject matter on which plaintiff desired to secure letters patent. Plaintiff’s Exhibit 4. See also Testimony of Walter Modance. 2. Rohm and Haas’ 1960 Application 70. The continuation-in-part application referred to in the May, 1960 amendment to the 1958 application was filed in the Patent Office on May 24, 1960, and was assigned Serial Number 31,253. The disclosures in the 1960 application were essentially the same as those in the 1958 application except that the 1960 application specifically referred to the use of propanil as a selective, post-emergence herbicide to control weeds growing in rice. Herbicidal data were presented to demonstrate that rice was essentially uninjured when treated with weed killing rates of propanil, whereas the two compounds previously disclosed and claimed, 3,4-dichloroisobutyranilide and 3,4-dichloro-a-methylvaleranilide, injured rice when such compounds were applied at weed killing rates. Consequently, Rohm and Haas asserted that these compounds could not be used to control undesired plants growing in rice. Testimony of Dougal H. McRae; Plaintiff’s Exhibit 3. See also Testimony of Walter Modance; Defendants’ Exhibit 18. The original claims presented in the 1960 application were drawn to herbieidal compositions containing propanil and to methods for controlling weeds in an area containing economically valuable plants by applying propanil. Narrower claims defined the economically valuable plants as cereal grain crops and as rice crops. Plaintiff’s Exhibit 3. In an oath filed along with the 1960 application, McRae and Wilson averred that they were the inventors of the invention or discovery in Herbicidal 3,4-dichloroanilides described and claimed therein; that this application discloses and claims only subject matter disclosed in our pending application, Serial No. 714,947 filed 2/13/58; that we do not know and do not believe that ... [an] application for patent on said invention or discovery has been filed by us or our representatives or assigns in any country foreign to the United States.. .. Plaintiff’s Exhibit 3. See also Testimony of Dougal McRae; Plaintiff’s Exhibit 141 (Deposition Testimony of Harold Wilson). Although when McRae executed the oath he knew that the 1960 application contained new subject matter, i.e., those cla