*1 ately post upon receipt employees Bul- in the notices thereof of the Curtis Regional Director, request defined from the pressroom a well letin revealed respondents in- of the Bulletin pattern that the the Union’s consonant with required post apparent respective particularly their notices terests. This is simultaneously appear previous not does to be un- when considered by under the facts of this reasonable case. admonitions and declarations Union respondents regarding The Board shall direct the Bulletin officials to the simultaneously. hiring to take such action proposed Curtis A of the former decree for enforcement of employees. the order of may the Board submitted. knowingly union officers stand When flagrant passive in the face of miscon- body calcu- duct of their members employer into a

lated to force an viola- taking law,

tion of the affirma- without misconduct, repudiate

tive action when, here, passivity approbation,

amounts to silent the Union liability by claiming escape not INC., CARTER-WALLACE, Plaintiff- misconduct its individual Appellee, members and itself. Union pattern of misbehavior was also DAVIS-EDWARDS PHARMACAL disregard committed in total of cove- CORP., Defendant-Appellant. negotiated bargaining nants at 889, No. Docket 71-1256. agreement and a settlement table8 en- Appeals, United States Court of Although in the court.9 tered into Second Circuit. officers of the difficulties Union knew Argued April caused their at the members Bulletin 1971. underlying plant and the reasons 4,May Decided 1971. them, remedy they made no effort to ig- contrary, situation. On the help. pleas

nored the Bulletin’s

They embarked a course inac- acquiescence

tion to an which amounted objective their the activities supports amply

members. The evidence finding and conclu- the Trial Examiner’s adopted

sion Board that:

“By permitting a situation least continue, the

which it had created to condoned, if did

Union ratified and actually in, participate mem- employees,

bers new treatment of the responsible for

and was therefore

employers em- of those termination

ployees.”

Inasmuch as the order of the respondents

Board is directed to both required

and each of them is to immedi- September agreement dated letter 8. The Bulletin and the Union entered into 1968. bargaining agreement for the collective May May term of supra. agreement supplemented footnote 9. See This *2 Mansfield, Judge, District dissented opinion.

and filed *3 City Brainard,

Charles R. New York (Kenyon Reilly, Chap- Kenyon, & Carr & in, Parsell, Morse, Richard Robert H. K. Sinder, Kramer, Nathaniel D. J. Stuart George City, Badenoch, E. New York Y., Bisnoff, Woodside, and N. William H. counsel), defendant-appellant. for George Jr., Finnegan, B. York New City, (Morgan, Finnegan, & Durham Pine, Lee, Denson, D. William Jerome G. Jr., Foley George Hoare, John D. and P. - Breed, Morgan, Abbott & J. Edward Ross, Stephen Lang and A. R. Louis Mangone, City, counsel), New York for plaintiff-appellee. FEINBERG,

Before and FRIENDLY Judges, MANSFIELD, Circuit Dis and Judge.* trict FRIENDLY, Judge: Circuit Corpora- Davis-Edwards Pharmacal tion, arrangement proceeding now an Chapter Bankruptcy under XI Act York, in the Eastern District of New appeals grant- from an order of that court ing preliminary injunction against infringement conceded of the United York, sitting by designation. * of New District the Southern for Court District Of the bring until Oc 4) this action (Claim tiff did 2,724,720 for Patent States did move meprobamate, tober generally drug known injunction until December Frank issued November court 22, 1970, after this six weeks Ludwig, some Bernard J. M. patent, validity of the predeces had sustained assigned plaintiff’s them Carter-Wallace, against attack, limited pharma Products, sor, Inc. Carter Laboratories, Inc., 433 pat Inc. v. Riverton cological compound described affidavits, (1970).1 Extensive by plaintiff F.2d 1034 pills into ent has made filed. memoranda were tranquilizer exhibits widely marketed as argument Judge Dooling three heard For name “Miltown.” under the trade February following day, days. On many years only other authorized 25, 1971, granted injunction, after single he compound user and seller which, delivering opinion includ an oral Wyeth of American Division *4 al ing colloquy who were with counsel Corporation, man Home which Products on his observations to comment lowed pills marketed under ufactured into typewritten proceeded, he fills 167 “Equanil.” As a result trade name rep pages.2 of defendant’s the basis On a an action consent decree in 1962 meproba the loss its brought resentation by under the Government on of this the effect mate business and laws, antitrust v. Carter United States drugs generic not its of other Inc., (S.D. sales Products, F.Supp. 144 211 Chap any possibility preclude of a agreement Y.1962), N. Carter Products’ prevent arrangement terminated, ter XI but would with American Home was action, a proceeding trial in this agreed compound and it sell the 1971, court, 11, panel March anyone of this on price at not a to exceed $20.00 injunction stayed temporary con on per pound, protective provision with a during argued appeal dition for increase based on the Consumer appreciate March 29. We week of purchased Price Index. Davis-Edwards by counsel the assistance rendered compound plaintiff from at $20.00- arguments filed and the excellent briefs per pound $21.40 from 1963 to 1968. prepared time limits the severe within acquiring Since that time it has been imposed. compound thus mainly sources, from other foreign, per pound. at about 87 cents by any

Defendant not has means I. following Indeed, alone in this course. patent on attacked the Davis-Edwards largest infringer has been the United general grounds, first two three States, began purchasing which the com tendency merge: some have pound early from other sources least at invalidity prior art, over most of as 1960 plaintiff but sued un cited; inequitable previously was not til 1968. applicants the Pat- conduct of the before Office; patent predicated ent misuse Although Carter-Wallace was notified on Ex- laws. violations of the antitrust the Bureau of Customs on June opinion, amination of Riverton 433 purchasing 1968 that Davis-Edwards was foreign sources, plain- F.2d that none shows decision, earlier, Chapter 1. Defendant a few filed under rendered a weeks XI two days injunction granting preliminary against the motion was served. Af- having stayed infringer, Carter-Wallace, prosecution ter another Inc. v. of the mo- tion, bankruptcy Corp., F.Supp. court Wolins Pharmacal 326 vacated stay. (E.D.N.Y.1971). apparent- 1299 Wolins ly damages past infringe- settled its for knowledge 2. The remarkable of the rele- know, ment on what terms we do not chemistry pharmacology vant dis- injunction agreed played Judge opinion Dooling’s made oral part having permanent. have been due to his

871 light little on there the later decisions shed points raised here specific Rosenberg the reasons v. it. presented considered.3 or Corp., (2 Groov-Pin 47 Cir. for reversal case Davis-Edwards’ 1936), Judge L. Hand addressed himself fundamentally rule succinct rests to its rationale: Sim Learned Hand ly stated Co., doctrine that absence Blancard & Bros. son v. long adjudication acquiescence said 1927), (2 have often “We Cir. injunction e., injunc- pat pendente [i. injunction lite that an infringement] tion a suit for go except when ent suit should go, in will not is at first blush anomalous beyond question valid presumption cases, va- fringed.” Newhall four He cited grant lidity generally Co., which courts Hanger Mfg. F. 919 v. McCabe * * * Norton, once issued. 1903); (2 Hildreth v. Cir. * * * theory practical. Exam- 1908); George Co. (2 Cutter F. 428 Cir. Mfg. iners neither the time nor the as- Co., F. Metropolitan Electric art; sistance noth- 1921); to exhaust the B. (2 and A. Dick ing is more common in a Barnett, (2 suit F. 423 Co. v. fringement find than to that all the Dickerson v. cited He also have important up Co., references are turned Refrigerating Vergne Machine De la 1888), industry for the (C.C.S.D.N.Y. first time 35 F. 147-148 *5 a defendant whose interest animates Judge “the to Lacombe referred where his search. It is reasonable caution and rule which wholesome well-settled to tie the of a whole art court, pub hands adjudication requires or an in until there is at least added assur- necessary prerequi acquiescence, lic as a ance which comes such an preliminary granting the relief [a site centive.4 injunction patent in in action for for,” fringement] prayed and Reed here Indeed, Supreme a unanimous Court in Co., Mfg. & Winchester Co. v. Smith Co., 1, Graham v. John Deere 383 U.S. (2 719, Cir. 107 F. 720 18, 684, 694, 86 15 S.Ct. L.Ed.2d 545 (1966), noted the “notorious difference rule, impos Perhaps because the applied by between the standards ing seeking patentee on a courts,” Patent Office and and infringement injunction against a bur suggested “discrepancy” that substantially usual den heavier than the part due in to “the free rein often exer- showing irreparable injury and ones of cised in their of regarded Examiners use probability success, of ” long 1888, concept ‘invention,’ perhaps, result, of “well-settled” as back most judicial against precedent, see, e.g., Corp. 3. Carter-Wallace cites this Radio Riverton, 1040, Engineering statement of 433 America v. Radio F.2d Labora tories, Inc., extremely 1, 7-8, The Patent Office was care- 293 55 U.S. S.Ct. 928, reaching and deliberate in ful its deci- L.Ed. 79 634 was codified patentability 1952, sion of in this 35 282. The case and U.S.C. Reviser’s § nothing sug- paragraph there is in the record to Note states: “The first de gest fully presumption existing that was not clares the substantiated. of valid ity patents.” recently But record Riverton does not at We have noted here, presumption independent all reflect the issues raised and “has no Judge Dooling entirely evidentiary value; rather, correct it serves saying Judge place proof person “I do not know what the burden of on the judge invalidity. Cannella [the district in Riverton] who asserts Reasonable doubt validity and Anderson [who wrote on the issue of must for this be resolved patent holder, court] would have said had in favor of the but advantage preponderance material before case a usual of the evi them.” dence determines the issue.” Rains v. Niaqua, (2 Inc., 275, Cir.), 406 F.2d presumption 278 validity 4. The accorded a patent regularly 1751, issued, denied, 909, cert. 89 S.Ct. 395 U.S. to in referred quoted passage long recognized (1969). 23 L.Ed.2d 222 872 (1 Co, patent appli- 124 939-940 number of McBee F.2d of the enormous 100,000) 1942); Jeoffroy, (nearly are filed 100 F.2d Cir. Hoeme v. cations disparag- (5 year. any way 1938); 226 Cir. Flintkote Co. each Without ing Philip Carey Co, (7 850 Cir. the skill devotion ex- 13 F.2d dissenting Osage 1926); Stoody Co, aminers, our brother Metal Co. v. 1938): tribute, despite (10 pays Pacific 593 Cir. extensive validity, Cage Cage statutory presumption & Screen Co. v. Continental 1958) pat- (9 Corp, bald fact that more than F.2d is 80% (dicta).5 infringement appeal ent re- does seri- actions Carter-Wallace ously propriety question

sult in a determination existence Milgrim, rule, upon sued Sears but is invalid. rather contends relating exceptions Lear to Of Other comes within Painton: Whales and Matters, acquiescence adjudication, n.62 & N.Y.TJ.L.Rev. also (1971). apparent recognition insolvency that Davis-Edwards’ consti- potential allowing unfairness one exception. for a tutes a basis further armed in an with letters obtained Amplifying explanation parte proceeding prevent ex the con- what on its face a curious doctrine seems duct of he has business others before acquiescence by others can affect fairly disputed submitted all issues stated, not, Judge Hand one who does adversary hearing fact to a full and has Rosenberg Corp, supra, v. Groov-Pin court, won a favorable decision some F.2d at 48: industry or the has conceded effect validity patent, his the “wholesome justification Its rational and well-settled rule” has been followed whose those lead them interest would circuits, although in other with differ- validity, to contest examina- precise ences formulation. Packard tion concluded that contest would be Paper Co, fruitless, Box v.Co. O. B. Andrews and that examination (1 1933); some assurance the truth. Leavitt v. *6 suggest parties promptly 5. While we not do decision as the that these settled all stay eases have been the after a to decided differ- case motion the in- ently special junction pending appeal if had not relied on the was denied respect injunc- appeals. Though yet rule with to the court of not patent litigation, Ryan disapproved, tions in it cannot seri- the case has never ously argued be the rule has been been cited. It is for Ninth the Circuit simply employed makeweight. strong as a In- to determine whether its rather deed, only Gage the case to which we statement of the rule in have the Pacific (and others) referred we t£ have found no Screen case be is still followed rejects general Ryan principle the is district courts in that circuit. Toy Corp, F.Supp. (C.D. special v. Ideal 260 828 addition to the rule discussed Cal.1966). though text, court, objections district The the there are acknowledging grant preliminary injunction the enunciation of the of a on the generally accepted merely any rule the basis court case affidavits appeals circuit, disputed its own see Pacific where there are issues of fact. Cage Cage 65(b), 52(a). & Co. v. Screen Continental F.R.Civ.P. While Corp, supra, gone felt nevertheless its decision this court has not far on so this compelled by Supreme 87, Greene, two earlier Court score Sims v. 161 F.2d opinions, Corp. (3 1947) (Biggs, J.), Radio v. Ra- America 88-89 Cir. see con- Engineering Inc, Laboratories, tra, Ross-Whitney Corp Smith, dio 293 v. Kline 1, 928, (1934), Laboratories, 190, U.S. & 55 S.Ct. 79 L.Ed. 634 French F.2d 198 207 Sons, (9 1953), Mumm E. v. Jacob Decker & Cir. we have no un- stated 675, 168, 301 U.S. 57 S.Ct. 81 L.Ed. 983 terms that there certain where are dis- puted presumption fact, which considered the issues of as we believe there validity regu- here, temporary injunction of larly that attends a are a should Supreme Neither case issue on issued. Court the basis of affidavits save proper urgency. either or adverted to involved the instances extreme v. SEC employed grant Frank, (2 486, standard to 388 F.2d 490-493 Cir. preliminary injunction. 1968). Cerruti, McCrory denial a There See also Inc. v. appeal (2 1971). Corp, was no from the court’s district Obviously misplaced. assump- an ad- why even more reasons are two There validity against judication of in an action it is First here. is unwarranted tion adjudicata long infringer res is not another has been questionable there whether theory began against a different one. acquiescence. The United States adjudication exception prior years infringe some five validity Dooling issued, charac- rather that a determination enough “significant a trial adds to what in after full breaches terized statutory presumption, despite U. his acquiescence,” is now the picture of justify dispensation from ac- S.C. there § conclusion that ultimate preliminary injunction Despite the rule that a the considerations quiescence. hardly granted pat- “except dissent, can will when one adduced deliberately beyond question But this ent is valid.” that the Government assume theory valid, primarily on the basis that infringes patents it rests considers recovery urged agreed objections second suit to waive Carter-Wallace raised and have been overruled use November George Carter-Wallace, States, 167 have held. first. Our cases so Inc. United v. 1970). Mfg. Metropolitan U.S.P.Q. (Ct.Cl. Cutter Co. v. Electric 4n. Co., 164; supra, Elec- 275 F. National important, number a More considerable Corp. Grossman, meproba- tric generic Prods. companies in (2 de- began infringe pat- Riverton market mate justify temporary Government, cision would indeed injunction after the ent soon against infringer fringer vigorous conceded de- certain to mount a if fense, like Davis-Edwards substan- filed its answer to Carter-Wallace’s objections urged by tial erton, namely, were Riv- complaint those How- in the Court Claims. applica- ever stood when matters satisfy statutory re- tion did not and Riverton were United States only showing quirement utility, infringers, longer U.S.C. § no known there is 101; that, by failing generic disclose that acquiescence general drug primarily acquiescence intended for humans market. When ceases, any validity out on that tests had been carried inference of and them, greatly depends upon comply patentee weakened. did not Second, requirement application an af- dis- Davis-Edwards submitted president, contemplated fidavit its executive vice mode close “the best George formerly Squibb, carrying R. who out his inven- the inventor of Squibb held 112; various offices with E. R. & tion,” that the 35 U.S.C. same § Sons, leading drug manufacturer, Patent failure constituted fraud *7 acquiescence major pharmaceutical of accompanying Office, text. 3 and see fn. producers meprobamate patent in the had not on those relies Davis-Edwards grounds been due to factors in other than belief nor on others raised but neither validity,6 question its a Perhaps in Riverton. also considered judge seriously did not address himself prior ad- there be instances where allegation which, substantiated, and an if judication arguably an ef- would deprive industry acquiescence of acquiescence is- on fect similar to even significance its usual here. litigated if afforded suffi- sues it reliance our Carter-Wallace’s on had for that there cient basis inference adjudication validity in Riverton is “vigorous of the art” a search industry thought 6. These were that it Squibb that E. R. & Sons asserted patent “better to have an invalid on mepro- pursue not to research on decided meprobamate open up than to the wide- not be a medi- bamate since this “would spread meprobamate manufacture cally acceptable product” inclusion for patent” the absence of a and that Carter- Squibb’s be- counsel line and high pricing meprobamate Wallace’s for strong position on the a “that lieved provided price “a floor for the structure patentability could not subsequently developed of all of the tran- quilizers.” Squibb’s Mr. also maintained.” affidavit rehabilitating it,” Read prior a view to and that defenses of other Brown, ing only those Co. v. 391 U.S. fringer’s counsel had selected 1759, 1762, L.Ed.2d 751 S.Ct. to be substantial. issues he considered recognized po (1968). our there hand, Court cannot blind other we On the damages researching $3,500,000, prior sub eyes tential tort the fact stantially than the assets of concealment more as art and such defenses adjoining prem costly debtor, due to losses in misrepresentation a is alleged business; from a ises fire cause the selection difficult decision, (and, purposes issues, apparent on as for a of them few most Riverton, negligence sumed) patent, a receiver for the face of the possession, priority infringer claims thinks he can debtor which an expenses win, subject only to administration affords scant rational basis thus straight deliberately proceeding inferring subsequent dis- for a that he Damages bankruptcy, lacking In see sub. a. carded § others as merit. event, infringing contrary suggestion for in the course profit “competent sales made would seem Carter-Wallace’s brief fully priority. Diners counsel aware case for Cf. [in Riverton] fortiori Club, Bumb, it such ‘new art’ and discarded Inc. v. * * (9 1970); Bankruptcy Collier on we now have an affidavit 3A averring (14th at 1540 ed. While Riverton’s counsel [[62.15 suggestion arrangement categorically “[t]hat un- the schedule filed in the is proceeding equity true.” does show a rather thin debts, over not unreasonable secured is at first While blush Carter-Wal to believe that Davis-Edwards will have argument laee’s that defendant’s insolv respond plaintiff’s sufficient assets ency ground for ex constitutes another damages if, infringement recoverable ception appealing, in its favor direct, promptly as we this action is analysis. also does not withstand In the Moreover, partly tried.6a. this claim is place, wholly accept first we cannot drained of its force the defendant’s statement that because Davis-Edwards security, offer of we discuss Chapter proceeding, plaintiff XI will concluding portion opinion. of this damages be unable to recover from con infringement, tinued factors, 35 U.S.C. do § of these we validity if the compelled is sustained. not feel to reach firm con Bankruptcy Section concerning a of sub. Act clusion Davis-Edwards’ con gives priority first to “the costs tention that de because Car ter-Wallace expenses administration, including layed learning sixteen months after necessary actual and expenses infringement costs Davis-Edwards’ fil before preserving ing subsequent the estate suit and another fourteen months * * filing petition sought pendente lite, There before it relief can be no applies doubt fairly complain this section cannot another Chapter proceedings XI delay that “the three or four months until a trial ‘preserving words estate’ include the on the irreparable merits would cause it larger objective, arrange- *8 injury. common plaintiff respond While ments, operating the damages debtor’s business that it assumed it could collect equity $111,000. 6a. The damage claim,” shown sug- is some of its as the dissent $4,500 figure The gests, noted in the dissent since Davis-Edwards manufactures represents only drug products. assets not encumbered at between 50 and 100 downgrades all. importance While the dissent this crucial “paper balance,” thereto, as a operation see fn. 1 continued of Davis-Edwards’ suggestion there high-volume is no that the schedule business is that it is a “lead” overstates product, Davis-Edwards’ assets. More- without which Davis-Edwards’ over, profits mepro- ability profit-producing prod- Davis-Edwards’ on to sell other “only ucts, volume, bamate would not be the source to a low even at would seriously impaired. which Carter could look for satisfaction

875 cross-examination, presentation petition for and the filed its until Davis-Edwards plain- testimony. not read assumption that can live do arrangement (an We this, record), seriously disputing tiff’s present brief as the on not be verified although argument pointed out not have counsel any it could event judge’s on injunction un that some of the remarks temporary hoped awin particularly relied this Davis-Edwards sustained patent had been til the Kastar, were made had the Riverton, after he considered Clair cf. court issues, weighing Cir.), cert. substantive the (2 Inc., 646 148 general germane more 90 considerations denied, 66 S.Ct. 326 U.S. granting prob propriety the would defendant 459 L.Ed. injunction. ig- any In event we cannot plaintiff must ably reply that judge’s unequivocal January 1, see nore the statement since least known at Carter-Wallace, not were this a case which “the Pleadings, Inc. v. Marked Appeals 4, Court of had held Laboratories, Inc., 65 Civ. Riverton valid, bases, on not settle whatever would would Riverton decision any think injunction on there was basis which an although some points at least a few granted.” could be This is by Davis-Edwards of those here raised many opin- but one of statements in the already interposed Unit ion which convince us on this issue action ed Carter-Wallaee’s States right. the defendant is March, See of Claims Court States, Carter-Wallace, Inc. v. United disposed Nevertheless we are not to re- U.S.P.Q. (1970). does The record ground While, on verse this alone. however, pre indicate, clearly stated, regard reasons we do not timing nature, extent, cise plaintiff as certain that not be able will art raised the Govern defenses damages to recover if it establishes alleges although Carter-Wallace ment— “ validity patent, we should not got prior art counsel [defendant's subject if Carter-Wallace that risk defenses the Government.” temporary the record that a shows imply event, we do not mean to junction justified exchange un- would have been over this rather inconclusive appropriate der are delay standard. We question disentitle reviewing here of an ad- plaintiff preliminary injunction if the decision to a agency, tests; an order of appropriate ministrative but it met at most it court, adversely special district and in of the absence equities view reflects on good testimony, posi- plaintiff gen of oral are it of claims to relieve whether eral rule. tion as was to determine justi- preliminary injunction would be proper standard. See fied under the II. Fabrics, Bros. Inc. v. Marcus Concord that, Davis-Edwards contends (2 Corp. 409 F.2d Textile point reached, once reversal since, called for view, without more on judge, giving an undue effect decision, Riverton did not address III. question pat himself to the “whether the F.Supp. Riverton, opinions in beyond question ent is rather valid” but 1969) (S.D.N.Y. F.2d 1034 applied rigorous the less standard of (2 1970), give highlights in the probability and, by taking into success statutory history presumption patent application, account of va lidity, placed July 29, in effect 1950. How- U.S.C. was first filed § raised, ever, Davis-Edwards the it will in view of the limited issues burden *9 carry when, however, trial, required have to at a to state were not discovery, it will have had the of the benefits of molecular structure invention. quote points do better to five other For we cannot Davis-Edwards this which, plaintiff’s consid art references when brief: mentioned, along just ered allegedly the two with molecule, The basic from which the in- meproba make invention derived, propane vention is : is obvious within 35 U.S.C. § mate rejected patent examiner When the application he did initial so on basis Berger taught of Baird and I. Baird a process diols, that those com is pounds hydroxyl (such groups with two When the end H atoms are replaced X1) * X and- could dicarbamated. by OH, 1,3 propanediol: result compounds particular While Baird dealing with were not anticonvuls ants, but were inter rather “useful as mediates for com the manufacture of pounds which are useful for the treat compound materials,” ment of The textile Baird’s sub same can written as groups stitution of for the carbamate

hydroxyl groups range of over a broad compounds (to produce diol the dicarba diol) by parent impli ester mate of the 1,3 particular pro cation embraced the or as panediol at here. issue Berger study pharma- I a cological 1,3 properties group a di- propanediols. previously substituted A 1,2 drug, myanesin, propanediol, known distinguishable 1,3 propanediol from the key meprobamate’s outstanding only hy- in that there is one terminal performance par is the substitution of droxyl group, being the other bonded to groups ticular atoms or for X and X1 and atom, the middle carbon was known 1,3-propanediol Ri R2 possess important pharmacological two meprobamate, structure. both X properties: paralysis It caused transient X1 are groups carbamate of the skeletal muscles and had an anti- Berger compared convulsant action. pharmacological properties group of a methyl (NH2 C—0). group is a Ri — 1,3 propanediols of 12 disubstituted with (CH3) propyl group is a and R2 myanesin those and found that (CaH7) :** myanesin having former “differ from paralyzing a weaker action and more powerful anticonvulsant action.” More specifically, Berger injected mice with metrazol—a substance “which caused con- only references cited vulsions and deaths in of the ani- 99% are a British along graded to Baird in issued doses of the mals”— compound articles, 1948 and three relevant under test. The animals were one of which following is a 1949 article one observed for 90 minutes the in- inventors, Berger, jection Dr. to which the and the incidence of convulsions parties refer as Using I. myanesin and deaths noted. a * ** 1,3 refers to the first and third carbon Note substitutions Ri R2 propane part atoms of the molecule occur both on the second carbon atom. hydrogen (H) where reason, atom has been For the chemical name of replaced by hydroxyl (OH) group. 2-methyl-2-propyl-l,3- propanediol dicarbamate. *10 Berger in comparison, he was fair his efforts to demonstrate found of standard ques- compounds this The a had be considered below. number of the will alleged roughly comparable anticon- tion here is the other whether better by properties compared prior with when art references cited Davis-Ed- vulsant myanesin conjunction wards, little and that others showed when considered I, activity. Berger or no The anticonvulsant most with Baird and raise substan- 2,2-diethyl-l,3-propanediol. effective was tial was ob- issue whether the invention 2-methyl-2- The most next effective was vious. parent pro- n-propyl-1,3-propanediol, the important references the five Three of panediol patent in of the suit. Berger II, concededly prior are art: significance Berger I was that journal; technical in a article 1,3 propanediols it identified six or seven article; Kraft, and a 1901 a 1945 having proper- effective anticonvulsant my- Berger with II dealt Bonhoeffer. Berger I, attempt- ties. After a scientist properties anesin, anticonvulsant whose ing develop would anticonvulsant 1,3 compared of the those were with investigate probably vari- not continue to Berger I. Pre- propanediols discussed would ous disubstitutions but Ri R2 the oxida- shown that studies vious had particular di- start with the and R2 Ri hydroxyl group ren- tion the terminal propanediols substitutions major myanesin part of the mole- dered a Berger possessed effective I had found sought pre- Berger cule ineffective. properties and from work anticonvulsant hy- by protecting terminal this vent the ini- It on this basis that was there. par- through and in droxyl esterification rejected. application The exam- tial the acid ticular substitution process of iner since the reasoned that hydroxyl to terminal for the succinate known shown dicarbamation was as (MAS). myanesin produce acid succinate already Berger re- had Baird and since summary Ber- Two conclusions ger homologues (the compounds a few vealed particular interest: II are Baird) with of which were disclosed terminal of the esterification succinate hydroxyl properties, chemist fa- anticonvulsant longer gave dura- a much MAS try Baird out the miliar this with (myane- propanediol parent tion than process diearbamate esterification phar- although intensity of the sin) up Berger compounds and come action) (paralyzing macological effects question, the diear- since the invention parent; and that than in lower Berger’s compounds ester bamate My- organic study esters of of other “the e., expected [i. to have similar “would be appears warranted.” therefore anesin properties.” anticonvulsent] publication Berger was received II receipt of like two months Berger set that dicar- then out to show Berger I. 1,3 ques- propanediol in bamation of the importance Berger tion that —in- II must was not so all obvious unexpected patent ap- deed considered of what the result was unique prop- plication principal terms of claimed. The claim anticonvulsant e., meprobamate (i. perhaps was that erties and even counterindicated dicarba- 2-methyl-2-n-propyl-l,3- ultimately did he to the satis- —which mate ester propanediol) qualities inten- faction of the examiner. Whether of both Berger Hence, myanesin, II also noted MAS was MAS did. myanesin high paralyzant Berger ferior “The “because of the II low noted: discourage paralyzing margin activity dose smaller our of MAS did not safety.” therapeutic drug This follows the fact since the interest Myanesin MAS has intense itself are exerted less effect effects of possi- myanesin, subparalytic larger hence neces- There is doses are doses. sary produce bility paralyzing paralyzant activity, as meas- dose may prove But, experimentally these a true index to be is not doses lethal. ured drug potential course, attempting of a II clinical value prolong type.” find a means to the effects *11 (and greater meprobamate, could not learned until sity be and duration much Berger greater) produced. sum, unexpectedly it was while significantly, most illuminating Berger parent propanediol. II than II was a beacon than its less teachings path meprobamate, that the succinate esterification its shows negative 1,2 might helpful propanediol who has both a have been to one well experimenting positive and in of what was in field and was effect terms Berger knowledge looking Berger in armed and found with the meprobamate. parent compound imparted. can The and Baird distinguished 1,3 propane- be from Kraft and can consid- Bonhoeffer subject diols which are the together. ered Both indicate primary quality as a both terms of its carbamate esters of a number of com- agent paralyzing than anticon- rather an pounds, chemically which are distinct its vulsant and terms of chemical propanediols, sopo- from the will have a having hy- only structure, one terminal rific, hypnotic effect, sedative Moreover, droxyl rather than two. activity terms of the resultant of the through acid esterification was the use compound question. principal through use rather succinate argument for the relevance of these ref- group, of a carbamate and the essential they is that erences generally show carbamates novelty claim to is that carbamate esteri- produce the kind of effect that unexpected produced unique fication meprobamate successfully embodied, and properties compound in the resultant teaching Berger I, that in organic that other esters would not have. the carbamate esters of anticonvul- hand, above, the other noted Ber- On ger sants revealed therein would be ob- suggested study II that the of other seeking vious choice for one to enhance organic myanesin appears war- esters of parent the anticonvulsant effect of ranted; and it is article does clear the through compound sug- esterification, as pro- reveal that the esterification of this gested by Berger principal II. The ar- lengthens Moreover, panediol its effect. gument contrary is that both II mono- fact that involved chemical structure and in terms of the signifi- deprive it suceination does not precise sought, “anticonvulsant” effect cance, it is esterification of since compounds cry these anything were a far hydroxyl prolong effect terminal 1,3 closely pro- related to the indicated, myanesin which is had panediol question. This seems sound only 1,3 pro- hydroxyl, one such while the significant if but if there is a dis- panediols had two. Hence to the extent hynotics, soporifics, tinction between an- hy- that esterification of the terminal ticonvulsants, and muscle relaxants —an droxyl process seen as a properly issue which cannot deter- enhancing some usefulness in terms of present mined on the record. While parent propanediol’s the duration of a ac- among there are distinctions the various tivity, necessarily it cannot be deemed described, many effects of these com- away mepro- lead from the invention of them, pounds produced suggested a number of bamate and well have inquiry preclude the actual method which was used to dis- si- into one would not cover it. The facts dicarbamation inquiry multaneous into another. myanesin actually it” “ruined The two other references cited cleavage that there was a effect in the as Yale are characterized Davis-Edwards myanesin pres- succinate which was of a I and Yale II. Yale a member good ent in the lose a deal group Squibb Sons, at E. & which was R. urged of the force Carter-Wallace doing Dr. on muscle relaxants. research recognized when it is dicarbamation professor at the Univer- Berger, then a myanesin apparently was not discov- Rochester, sity time had acted at one discovery mepro- although group ered until as a consultant to this precise activity role of he bamate and that claims to have terminated ling discounting part joined Products relied in March 1949 Carter them. Inc. in June. significance articles, Yale respect question The initial II, particularly Yale is that show *12 the to is whether art is these references (with ordinary that skill in someone the

prior publication of at all. the While investigating art) systematically was es- concededly Yale and II was after the I sentially compounds the same whose patent application, de initial both were Berger pharmacological properties I had meeting presentations as before a livered compare Berger (ta- explored, I at 271 Society Sep in American Chemical (table), ble) with II and in- Yale at 3717 patent applica tember the before deed that the most effective anticonvul- appears filed. from fur tion It now was taught 1,3 by Berger (the diethyl sant I argu discovery, ther it did not at the as propanediol) had been monocarbamated. Judge during Dooling, ment that before synthesis I, reported Yale which on the 1948, Lott, of of the late fall one the co my- compounds of a number similar articles, pro of the Yale who was authors above, myan- anesin, discussed discloses Berger viding some of the with basic light Berger esin In monocarbamate. investigating, as anticonvulsants he was myanesin disclosures, respect II’s with Berger acknowledged Berger I, had in suggestion succinate and its that provided in him with the monocarba fact study organic myanesin of other esters of 2,2 diethyl propanediol, dis mate warranted, was the fact that carba- Berger’s below, cussed co-inven prior might ester, mate which the art Ludwig, tor, in fact the con attend did suggested activity produce papers read, al ventions were where investigating, was sort was though no he claims to have recollection synthesized re- one of those cannot be presentation. is an of their While garded any It is means irrelevant. fact-finding, area further there for activity true that carbamates legitimate ground scepticism that reported, not not the are but very working Ludwig, who was goal specific Yale Yale II. either I or et same areas as Yale whose al. Rather with the were concerned receiving compounds co-inventor was synthesizing propanediols of a number authors, I Yale and II one describing II, particular, (Yale most did not at least hear about the substance and, Berger I), of those studied mentioned, papers his of these from fellow scientists. with the monocarbamation event, question dis whatever diethyl-1,3-propane- myanesin and the Yale, trict had these court about sig- gives particular IIYale diol.9 What ones, post-hearing were rev serious general esterification nificance give support elations to Davis-Ed added Berger II) (see esterifi- and carbamate position,8 particularly it is wards’ since I) (see particular Yale cation I and II refer now clear the Yale 1,3 being propanediol applied fact to a Berger’s good part ences own anticon- were known to have which words, properties. once work, In other possibility vulsant on which Doo- pharmacological hardly other articles for 8. While we could use this material properties the com- evaluation of as a basis reversal if the district sug- consideration, pounds judge applied proper standard, under reporting gests on may appropriately those who were we it take note of compounds synthesizing were considering of these when we are whether possible In- despite use. not unaware of their affirm production failure to do so. his study deed, important I in Yale is to a the reference of such material discovery by Lott, on illustrates the wisdom of the Yale of the co-authors of one “the wholesome well-settled rule” articles, which tends undermine predecessors. recognized our suggestion brief Carter-Wallace’s synthesizers dis- regard can somehow insignificant, We as not how- ever, tinguished that both Yale II from the evaluators. and Yale refer synthesized someone had the carbamate uct undiscov- propanediol product.” ester of a known to have ered within a utilities disclosed good properties, anticonvulsant as Yale agree pharmacolog that a We (although admittedly II did indi- without ical should not invalidated as cating pharmacological implications), simply because, years obvious likely much became more that one in- issuance, infringer discovered has attempt terested in the effects would seemingly recondite references unre relatively use carbamate esters few chemistry, lated hind fields propanediols with known anticonvulsant sight sufficiently shows have come properties given effects, to test out their close to the solution that this would have suggested what art re- having person “to a obvious ordi *13 spect general to esterification in and car- nary the art” skill to to which inven particular. bamation in pertains, But, tion 35 U.S.C. 103. ex § cept Bonhoeffer, prior art here Again, it is true Yale II did not years discussed dated back at most five dicarbamate; many teach a of the patent application from the and was in paths suggested it have would be very pharmacology of field wherein ends; dead jump and that it is a from Berger Ludwig working. were particular propane- monocarbamated subject surely even, per one where diol there described to the dicarbamated haps particularly, thorough judge a so propanediol, meprobamate. Neverthe- expert patent and so could matters de less, II did Yale teach the carbamation enlightenment hearing rive the tes propanediol of a listed in the same table timony listening scientists, of to their parent propanediol question with the questioning cross-examination, and even having properties. similar And it himself, argu only them rather than very was the carbamate disclosed Yale lawyers ment their of based on affidav requested II which of Lott its.10 Contrast G. B. Co. v. Gould Lewis and received from him. That in itself Products, Inc., (2 1176, goes long way refuting a towards We would not at all to wish contention that Yale II was irrelevant to instructing as the district understood Berger’s investigations. This added in- judge patent meprobamate to hold the in Judge formation enhances the force of light valid as what obvious could Dooling’s given statement Yale II prior be found be the hold to art. We certainly say “it would be difficult to only that, recognized, he “there a as * * * that there an enor- wouldn’t be great validity point to deal more granting mously important to block enough appeared at first blush” — standing suddenly product patent [a] more than court could the district if, prosecution, athwart as are we regard properly as valid satisfied, critically prod- “beyond question.”11 a festing high high 10. frequen- Defendant submitted an affidavit of a Q-factor a professor chemistry cies, repeating: at the Stevens In bears Technology stitute of Thus between difference prior alleged to obvious one skilled art art and Zerbe’s invention proportions of the references now cited. Plain is the ascertainment of the responded manganese tiff with a counter-affidavit oxide and cobalt oxide professor produce high quality at Columbia. that will factor permeability. and a sufficient Just Although we do not our rest conclusion proportions what will be the exact Corp. Krystinel on Indiana General v. particular supply products the needs of Corp., (2 Cir.), 421 F.2d 1023 cert. de large experi- require a amount of nied, 928, 1820, 398 U.S. 26 L. S.Ct. experimenta- very But mentation. Ed.2d 91 case on defend tion is of the essence of the art involved places ant’s brief too much reliance and lawsuit; in this on level of plaintiff’s unwisely ignores, ordinary statement, respect skill in the art. This is all the Medina’s with to a practitioners chemical for a mani- soft ferrite more true because the expansion indicated IV. types misconduct applicants for which will the same conclusion reach We penalized. of miscon respect the defense See also Precision Mfg. Instrument Co. By way the Patent Office. duct before v. Automotive Machinery Maintenance that, is useful to note Co., 806, 324 U.S. 65 S.Ct. Ap and Patent of Customs Court (1945); L.Ed. 561 Beckman Instru concept recently written, peals has ments, Inc. Chemtronics, v. Inc., 428 F.2d beyond goes considerably misconduct now (5 Cir.), denied, cert. 400 U.S. “fraud,” see the classical definition 91 S.Ct. (1970). 27 L.Ed.2d 264 1964), (3d Prosser, Torts, 100-05 ed. §§ range ‘inequita Davis-Edwards’ claim of im includes “a wider propriety failing holding bring Berger justify II, found conduct ble’ patent Yale I patent Curtiss, and Yale II unenforceable,” to the attention of Norton hinges examiner question (1970). The Court importance of their art which continued, we at 793-794: id. just including, course, discussed recognition of a we do subscribe respect issue—with the Pat relationship recent trust between strengthened disclosures have wishing avail Davis- those ent Office *14 position grants Edwards’ governmental Yale I and of the —whether themselves prior Yale II are given art au at all. It agency is has been true which that that none of prose specifically these parte references thority The ex issue. to subject deals with the ap patent, patent of the of a at examination cution and respect qualities least with as an to its of add plication considered not be must intensity ed compared and duration as adversary proceeding and should to parent propanediol. its required in On standards the other be limited hand, each procedings. reveals partes With the esterification inter seemingly (and ever-increasing in two number instances carbamate esterifi cation) it, compound Of either the Patent applications the related before myanesin (myanesin While burden. has tremendous monosuccinate in fice Berger II, fact-finding myanesin ad being as well as monocarbamate in necesarily agency, I) lim judicatory very 1,3 propane Yale or of one of the permitted by Berger good to ascertain shown ited in the time diols I to have an pat adjudge necessary properties (the to 2,2-diethyl- ticonvulsant the facts application. 1,3-propanediol of each merits entable in monocarbamate Yale testing II). Berger addition, glad obviously no facilities it has to learn rely appli Clearly, synthesized it must own. Lott had the carbamic many diethyl (a of the facts propanediol cants for acid ester The 1,3 although are propanediol), only which its decisions based. in its highest honesty and can standards monocarbamate form. There is no rea pre applicants part in dor on the son to think the examiner would senting are facts to the office such this, not also have liked to know and also working necessary elements in a Berger thus II and Yale I to which tended go patent system. far as We would so reinforce the notion that carbamate es follows, say It essential. to therefore, are terification was not shot in the dark. approve- of do we agree We with the statement in Xerox necessity are, must be substantially this art art delineated clear- educated, sophisticated persons highly path sought er the result and ultimate- disposal generally ly have at their here, who achieved Indiana General competent laboratory as- suggestion facilities “experimentation is of sistants. the essence the art involved this law- appear applicable Id. at While it would suit,” 1030-1031. instant case intimating say without —and we to Indiana it was General. appear it will so trial —that Corp. Mfg. Co., F.Supp. Dennison 82 S.Ct. 8 L.Ed.2d 176 (S.D.N.Y. 1971), testimony, particularly in order for that oral demean- inequitable might cross-examination, pow- nondisclosure to constitute under something erfully determining misconduct there must be assist what infer- negligence more than there must ence draw. —that wrongfulness, be “some element of wil- major respect claim with transgresses fulness or bad faith that misrepresentation concerns an affida doing concept equity.” basic But we July Berger vit of 1952 which asserted regard do not it as foreclosed that after possess greater the dicarbamates trial, a full a court conclude that protective parent pro action than their Berger’s failure to disclose of the panediols (which true) and that oth just that, three articles was rather than particular esters, er the diacetate es good judgment the “exercise faith [of] (the 2,2- propanediols ter of one of the deciding what matters are and are diethyl-1,3-propanediol), disclosed not of sufficient relevance and material- Berger having very I as anti effective ity require disclosure.” at Id. 968- properties, convulsant was “less effective again important 969. Here it is that we parent.” than the This was directed at dealing Berger are not with articles. rejection examiner’s of the past read in the remote but ground application initial on the that the very publications, recent one expected carbamate esters would colleagues himself and his former two properties par have the as their same Squibb, (were he in fact aware ents and hence did not in constitute latter) must have been the fore- trying vention. to show front of his mind. It is no answer that that not did the dicarbamates examiner could also have unexpectedly have an better anticonvul paucity found them. of references *15 properties sant also but that esters other cited, only prior with the art re- actually produced than carbamates com lating to chemicals useful in the textile pounds that were less effective than their industry, respect raises an issue with to parents, thereby enhancing his claim to the supply failure to the examiner with quality the inventive his use of carba concerning material, more relevant Although mates. application the inventors, perhaps the and also the exam- again rejected, was the affidavit was available, iner if testify he is should and thereby nonetheless material since he had be cross-examined. It said that be superiority the demonstrated and unex question this issue is not a true of fact pectedness of the dicarbamate in esters conceded, since the non-disclosure is and comparison to in other esters noted his problem proper the is the characteriza- affidavit and all he then to do to had was conduct, tion of the inventors’ which will narrow claim to those includ his esters by judge here be the decided since we ing unexpected properties verify and to gather jury no has been demanded. But the fact that the dicarbamate was unex true, prob- it is still as the with similar Baird, pected comparison concerning in summary to the “textile” judgment, lem see comp Inc., United States Diebold 369 U.S. ound.12 nificantly pro- 12. The Examiner’s letter stated that “the different from the mean applicants’ July ethyl ethyl affidavit 9 fails to dose of the diol com- tective patentability pound. particularly establish on the basis of un- This true expected properties since view of the standard error. showing 1. Broad claim is inclusive of mem- with re- 3. No has been made showing unexpected properties. spect homologues bers not isomers the and to example, Homologues For when are Baird. disclosed R2 Rx ethyl phenyl appears unpatentable it the dicarba- in the absence isomers are unexpected showing mate is inferior to the diol. of a verified properties. 2. Claim 10 covers a member which unexpected properties. Berger text, has no The do all As noted protective ethyl ethyl objections mean dose of was to first two to meet appear sig- dicarbamate does not be those diearba- from his claim eliminate

««3 Berger recognized judge question question The is whether point basing representation “close” and “substantial” he fair in his thought inefficacy was not Patent as to Office diacetate ester 30-minute stage at one which this the case and making stated) (which terval he without present purposes should be resolved the diacetate reference the fact that patentee plain- in favor of the tiff, and the parent ester more effective than * * * finding since to make 60, 90, propanediol minute at the and 120 require today’s purpose even state), (which as an he did not intervals rejection of the inference sub- Berger article before co-authored people don’t do treacherous stantial time had shown. he made the affidavit things advised insubstantial when things pointed Two out: should standing, and that counsel what parent propanediol question did have point unsatisfactory seems at this stronger intensity diacetate es- than the forthcomingness may readily lack of significantly minutes, then ter but greater explanations lend itself min- from 60-120 decreased intensity depth. utes diacetate maintained while the many patents strength. Second, cases which when of its some ineq- been held because Berger unenforceable spoke affidavit his people” uitable conduct “substantial superiority com- dicarbamate show that the inference a rebuttable pared parent propanediol in with the recognized. one, clearly judge as the duration, terms to mention he failed inference, explanation, and the While the diacetate ester also showed negative might well to sustain a suffice prolongation short, what effects. finding misrepresentation if the compare did was to diacetate ordinary one of standard here were parent in ester terms of inten- probability under the rule sity (to of success show that was “less effective” trial, applicable dicarbamate) that would be parent, than its unlike the long-standing circuit re- rule compare then dicarbamate with greater “explanations quired parent propanediol of dura- terms depth” presented issu- before greater should tion, prolongation to show the ing injunction in a temporary dicarbamate, properties of the not men- infringement comments with tioning case. Our that the diacetate also had these *16 testimony in respect oral disclosed, the value of properties. to Had this been Berger’s significance resolving certainly the have shown other forthcomingness” seeming con- “lack esters cer- as well as the dicarbamate had II, cerning Berger II, (Cf. Berger I and and Yale properties. tain desirable apply receipt II, myanesin succinate.) from Lott respect of the carbamate with to resolving his fail- equally the issue This somewhat would have detracted give patent the en- examiner ure to uniqueness from claim of the concerning story ester. the diacetate tire perhaps carbamate ester and led have to examiner that the conclude claims we have the conclusions In view of unexpectedness respect art, with to car- con- issues of on the reached by justified. misrepresentation bamate were not While the cealment continuation-in-part May, unexpectedly mates which were not of the ef- acknowledged objection simply application, a “show- fective. The other quired re- only ing superiority,” that “how him to show that those stated dicarba- mates, persuaded given properties whose before he dose must be much unexpected compound the Examiner has not were is labeled ineffective com- parison supe- specified” showing with “no anticonvulsant com- pounds riority working propanediols with he diurethanes had been over (see Berger I), similarly presented.” has been were unex- of Baird

pected compounds comparison meet these to then affidavits to submitted by rejection objections granted. disclosed Baird. The initial Berger affidavit, unnecessary per pound paid find it we manufacturers $20 challenges buy to consider Davis-Edwards’ other claim from it. Defendant who arguments misrepresentation arguing that, compe- this, or its in the face of respect infringers, tition other it could misuse. purchase compound

have afforded to Carter-Wallace; of the Y. disappearance doubt whether defendant’s vacating Our action in the tem from the market meant have porary injunction predicated de is on infring- simply replacement other go July fendant’s offer trial on ers, by no we are means convinced of only giving plaintiff’s conditioned dis validity plaintiff’s It claim.13 will covery delay. without We read that questions time to consider such when discovery; condition to mean reasonable validity if of the has been prolong defendant must not be allowed to plaintiff sustained. At least will be bet- injunction by discovery its freedom from payment ter off with the escrow merely signifi peripheral on matters of without it. 65(a) gives judge (2) cance. Rule Upon these conditions we vacate ample power prevent delay undue if temporary injunction and the case leave need should arise. diligent capable hands of judge. repeat district We we We also condition our order on Davis- defenses, any way not in decided that the carrying Edwards’ out its offer ably dissenting so pay criticized our broth- into supervision escrow under the er, have such merit entitle as to defend- bankruptcy referee in 5% prevail; gross ant to we have decided proceeds meproba- of its sales of require have sufficient de- merit to mate. This February should date from taking discovery cision and the temporary when injunction evidence on material there where normally issued. issues security While no dispute concerning is fair the facts required would be from a defendant against the inferences to be drawn therefrom. whom injunction issued in error, this condition is not The mandate shall issue forthwith. unreasonable when the reversal grounded especially on the ap- severe rule (dis- MANSFIELD, District plicable to injunc- the issuance of such senting) : patent infringement tions in cases. The Although agree with some of the equity of such a condition is all the more expressed by Judge Friendly views in his ability evident when the of the defendant thorough opinion, I differ on certain cru- respond damages in the event of cial issues and hence must dissent. judgment against questionable. points although Plaintiff that, out Were it not for the Court’s adherence 5% royalty was the on American doctrine, Home’s to an old which seems to have Equanil tablets, sales of percentage *17 blindly by followed some over the applied higher was years, a much base preliminary to the effect that a per pound injunction $5-$7 which defendant patent should not issue in a drug’s generic sells tablets under infringement “except pat- suit when the name; damages it claims its beyond question would be ent valid and in- Specialty 13. Cf. Power Co. v. Schreiber, 373, Connecticut ble v. 415 F.2d Co. 378 Light Co., 874, & (2 Power 1969), denied, 80 F.2d 875 Cir. cert. 396 U.S. (2 1936) ; Pipe Line, Cir. Electric Inc. 90 24 L.Ed.2d 682 cit S.Ct. Systems, Inc., by v. Fluid dissent, profits 699 ed lost were award (2 1957) profits (lost Cir. awarded on ed on the basis of the district court’s findings “justify finding conclusion that “but for defendants’ sale * * * Pipe’s infringement, purchasers that but for Electric bought would have Systems plaintiff supply Fluid would have made all these from in order their installations”). Safety In American Ta- need.”

885 relating fringed,” randa v. Blancard & to Davis’ defenses. Hav Bros. Simson ing granted (2d 1927), preliminary Co., in it relief re 22 499 Cir. F.2d grant sponse similar motion in Carter- the district court’s is evident that Wallace, Corp., Pharmacal preliminary in case Inc. v. Wolins relief sup- (E.D.N.Y.1971), F.Supp. 326 substantial 1299 affirmed. There was Dooling’s Judge having opinions had the porting benefit of the for evidence Infringement finding validity. is con- of the district court and of this Court insolvency Carter-Wallaee, in ceded, Inc. v. of Davis-Ed- Riverton Labo and the (S.D.N.Y. herein) Inc., F.Supp. (“Davis” provides ratories, a sound 304 357 wards 1969) affd., (2d , that a suit for F.2d conclusion 433 1034 Cir. basis for his 1970) , general provide damages an ade- he was familiar not with the at law does background patent remedy. Tropic-Aire, v. Inc. of the in issue. As quate essentia] (D.Minn.1928), Jumper, I F.2d view the record the facts be 631 grounds, Tropic-Aire, dispute, him fore were not so that on other overruled Sears, Co., 44 F.2d 577 there no for him to take Roebuck & need oral v. Inc. Wahl, testimony. Frank, (D.Minn.1930); F.2d v. SEC Norstrom v. (2d Thompson 1928); 1968). were, (7th cf. There on the Cir. F.2d 637 Co., sharp hand, R. other issues to the infer Central New York (2d ences that could be drawn from volu 145-146 Accordingly undisputed minous facts. mepro- questions the fact that No one argument he heard extensive oral propane- (2-methyl-2-propyl-l,3 bamate lengthy, days. lasted for three His oral dicarbamate) existed before had not diol ly opinion, extending for delivered inventors, by created including typewritten pages, colloquy Berger and Bernard J. M. Drs. Frank counsel, thorough grasp with discloses Ludwig. that doubt is there Nor subject painstaking of the matter and a major the field represented advance analysis evidence, including of the each markedly anticonvulsants, possessing “prior put art” the new references strength, greater activity, duration forth Davis that had not been cited Judge compounds. existing utility than wrapper pre the Patent file Office’s instance, mepro- found, Dooling that sumably it. not been considered (which yielded surprising results bamate “unexpectedness”) he described join majority rejecting Car- teaching prior art of the of the injunc- preliminary ter’s contention that public 106-07). (Opin. pp. its first Since on tive relief here warranted product, May 1955, because sales ground validity and enforcea- qualities, superior unique of these bility adjudicated patent were widely accepted medical has been supra. Laboratories, Inc., Riverton Riv- existing preferred profession and over objections erton considered various prescribed for the drugs that adjudicate presented did here and it has purpose, result with the same obviousness, inequitable deal- defenses Davis enjoyed great success. commercial ing Office, and the Patent Carter’s enforcement of avoid seeks raised Davis. misuse which have been 2,724,720) (No. Dooling’s To extent deci- grounds was ob- the invention sion Riverton as relied basis vious, concealed art granting relief, it was Office, the Patent However, apparently therefore error. has been misused. recognizing the of Riverton as weakness *18 relief, majority ground recognizes, devoted little upon As a sole he the it, filing opinion (“Carter” his of contrast of his Carter-Wallaee’s grounds herein) injunc- of preliminary motion extensive consideration other for a including upheld him, inadequacy Judge by 22, 1970, tion on December Doo- by ling Davis, the by parties of new defenses raised inundated with affidavits, industry acquiescence, and extensive of exhibits and memo- existence suggests insolvency. 2d Aware that the doctrine of Davis’ the effect inability imposed upon upon heavy of the Patent Carter based of the burden might issue, Examiners, swamped preliminary he Office’s staff of relief before showing large strong applications with a number of new it had made a found that annually, give stating probability validity, full that “the consideration to validity prior lies art or to obtain a full the issue of references success (Opin. pp. plaintiff” statement of heavily all relevant information 106- found, parte proceeding. 07). after careful an ex I think that this further He downgrade unjustifiably and tends of the evidence Davis’ view consideration industry skill, contentions, thoroughness competency ac- and there was Examiners, quiescence that “the of Patent is an in the and each whom pp. expert (Opin. specialty acquiescence 111- and was real” the area of his irreparable subject has in the Patent Office a On the available dealing library balancing prior jury hardships, he con- art references and damages specialized not afford with that field. In 1959 cluded that 69,000 library comprised adequate relief, of Davis’ volumes Carter view over books, 59,000 insolvency (Opin, p. 142), that un- scientific technical granted, preliminary bound and tech- relief Car- of scientific less volumes nological 8,000,000 periodicals, suffer loss of business and over ter would Amdur, during foreign copies patents. good L. will of other customers remaining patent, thus of the Patent Rules and Practice 60-61 short life Office encouraging infringement by (1959). that, others. It also overlooks the fact parte proceedings, unlike most ex where Dooling’s Judge im- Thus decision accepts the court the data furnished by being fully supported presses me as it, prosecution patent applica- a grounds River- valid unconnected with lengthy proceeding in tion is a out, Since, majority points ton. as the adversary, an Patent Examiner acts like good position we are in as a as the dis- administrator, repeatedly merely an determine, trict court to in the absence rejecting application sat- until he is an testimony, oral whether prior isfied that relevant art has been injunction should issue on the record fully disclosed and examined. Fabrics, us, Inc. v. Mar- before Concord Corp., F.2d 1315 grant cus Bros. Textile “The culminates an Mfg. 1969); Jeoffroy (2d long drawn-out, Cir. v. contest, Graham earnest often 1958), Co., (5th applicant, represented by between the meaningless formality to would be attorney agent, Patent his and the Examiner, if the district court’s Office, remand case represented supported by these other decision party.” public with the interested an grounds. I on these other would affirm Amdur, supra, 2.2. L. § grounds. 104(a) provides. Patent Rule Office Since, it, I satisfied see Carter has taking up application “On for exam- imposed Bros. the Simson burden ination, make a the examiner shall rule, unnecessary perhaps it is to recon- thorough study shall make thereof and However, sider doctrine. view thorough investigation of the availa- great placed upon reliance relating subject- art ble majority, possible differences as to sought matter invention scope, the time has believe patented.” come for and clarification of review Judge Friendly, quoting is not limited from The Patent Examiner rule. Rosenberg opinion references cited his evaluation to the L. Hand’s Amdur, supra, (2d patent applicant, Corp., L. Groov-Pin rely 104; actively Supreme 1936), relying upon out and he seeks § field, other references John Deere Court’s decision Graham v. Co., L.Ed. occurred least once in evaluation 383 U.S. 86 S.Ct.

887 Co., (7th 1969); F.2d 944 Cir. patent suit. Foods 419 application for the Inc., Tools, 412 Corp. Argument, Baker v. Oil Kiva Supplemental Carter’s See denied, (5th Cir.), 396 July 27, cert. F.2d 546 the Patent Office filed in 262, 927, 226 90 24 L.Ed.2d wondering why U.S. have S.Ct. help we cannot One (1969); Carter-Wallace, broadly Inc. Riverton v. it is to be if Office Patent 357, Laboratories, Inc., F.Supp. 368 304 denigrated. Supreme (S.D.N.Y.1969). Although the Having a rare that will be mind Corporation America, in Radio Court alleged infringer cannot an case where dealing supra, with a that case “prior dredge up references art” some merits, I found been tried on the wrap- Office file not the Patent found elsewhere, suggestion by it, no there an per, me that such when it seems upon different an that rule be the would the is- procedure results exhaustive application Nor for relief. be should of letters suance why it do should be. I reason see weight worthless more accorded infringer, upon alleged (cid:127)The fact the Furthermore, the ra- piece paper. mertis, has had the benefit a trial on the majority accepted for the tionale discovery, pretrial provide a does not time rule- —lack Patent Office shifting the burden. sound On basis pri- staffing permit exhaustion of alleged infringer, contrary, where persuad- appear to have or art —does here, the standard defenses asserts expressly provid- Congress, has ed relief, temporary upon application for ed, 282, “A shall 35 U.S.C. § usually support evidentiary he has less presumed of estab- The burden valid. might gain for those defenses than he lishing invalidity rest shall discovery. Surely he should result asserting if party But even it.” on the permitted to benefit because disregard re- mandate which was we inability proof. supporting his offer long Simson enacted 1946 gets ignor credit his Otherwise he Bros, (as established “rule” had been ance, though later turn out even Judge Friendly notes, rule back dates are For these his hollow. defenses Vergne 1888, De la see v. Dickerson question heavy reasons reliance Co., Refrigerating 35 Fed. Machine placed on the “rule” in this case and (C.C.S.D.N.Y.1888)), 147-148 we it. rationale behind expect rule, if to be consist- we are accepting “rule,” assump- one Even ent, apply equal trial force underlying theory tion it is since infringement of an suit on the merits. patentee adequate have an rem- will firmly Supreme Yet has held Court edy damages, 284, no 35 rea- U.S.C. § alleged infringer heavy “bears a disturbing quo son exists for status persuasion, burden of and fails unless pending a on the merits. See decision his has more than a dubious evidence Barnett, A. F. B. Dick 277 Co. v. preponderance,” Corporation Radio 1921). (2d Bros. Simson 424-425 Cir. Radio-Engineering America v. Labora- abridging the not be read as dis- should tories, 1, 8, 78 54 U.S. S.Ct. power, trict exercise of its court’s (1934). has con- L.Ed. 1453 This equitable discretion, to consider practice strued in to mean he must damages, fringer’s ability respond prove invalidity convincing “clear and (Opin. pp. as the court did lower Aktiebolagat evidence.” Purer & Co. v. 142). Jumper, Tropic-Aire, Inc. See v. Addo, (9th 1969); F.2d Cir. (D.Minn.1928); Nor- 28 F.2d Corp. Eimco En- v. Petersen Filters & (7th Wahl, Cir. strom v. 27 F.2d 637 gineering (10th Co., 406 Cir. Mfg. 1968); Copease Co. v. American Photocopy Equipment Co., F.2d 772 concern over the district court’s (7th 1961); support- inadequacy damages amply Scaramucci Dresser v. (10th Inc., major- Industries, ed us. record before Corp. 1970); ity points General Foods Perk dam- to the fact that Carter’s

888 Commission, may priority United Tariff No. age over the States receive claims reselling 337-L-41, 16) p. it, as ad- creditors other unsecured claims of milligram processing tablets, response into 400 expenses, but this ministration 1,000 (Weiss per Aff. tablets unsatisfactory. state- about $5.00 The financial is p. per pound approximately 2), bankruptcy proceeding $5.50 ment filed in the highly (see p. un Aff. It is Weiss total assets reveals that of Davis’ likely profits makes whatever Davis $629,500, $4,500 are encumbered all but (and from such transactions con security Davis and thus would interests cedes that the mail order market probably not for the satis- be available highly operating competi it is is priority which claims.1 More- faction even of tive, Brown, p. Reading Aff. from one over, Weiss which 391 Co. v. U.S. margins profit can infer are mini L.Ed.2d 20 751 88 S.Ct. mal) adequate compensate would be placing in the class of while tort claims damages sug- given Carter for suffered it. priority, not does those to be damages profit gest If are measured as the that such claims stand better administration, expenses which Carter made had Davis would have than other purchased it, meprobamate legal receivership from Ameri fees. Da- such as Safety Schreiber, 139) can (Opin. p. Table Co. 415 and its Presi- vis’ counsel v. (2d 1969), denied, (Weiss 5)p. F.2d 373 dent Aff. asserted that Cir. cert. financially to defend U.S. 24 L.Ed.2d 682 will be unable 90 S.Ct. (1970); Mfg. permitted if Inc. v. E. this action further it is not Bros W. Grace Co., (5th 1963); infringing mepro- Live continue Carter’s Industries, say Livesay patent. v. Window Co. bamate 1958); (5th 251 F.2d 469 Carter infringer’s a situation Products, Colgate-Palmolive Co., Inc. v. admittedly scant, it seems assets are so F.Supp. 383, (D.Md.1963), denied, injunction if clear that were damages huge, could be for an enormous continuing profits sale Davis’ from proportion per pound price of the $24.75 infringing meprobamate be —perhaps as much as $20.00 —would could look source to which Carter (F.T.C. profit Statement, su to Carter damage claim. Yet for satisfaction of its pra, p. 16). Moreover, of this plans profits these are what Davis damages possibility that meas will be the merits. use to finance the trial on profit ured on sales of bulk Carter’s Furthermore, profits if were even meprobamate per pound, Davis’ at $24.75 segregated held as a fund for gross pay offer to into escrow 5% damage claims, they satisfaction later infringing proceeds from its sales buying Davis is would be insufficient. meprobamate per pound lev at the $5-$7 selling prices meprobamate at far be el, majority accepts, me strikes selling under those at is low which Carter support as rather insubstantial monopoly the sanction irrepa conclusion that Carter will in 1962 anti the Consent Decree entered rably insolvency harmed. The of Davis litigation, United Car trust see States why compelling reason Simson thus (S.D. Products, F.Supp. Inc., 211 ter Bros, in this case. should be invoked N.Y.1962). Da record The reveals recog- majority parties buying meprobamate at about and both vis bulk foreign infringing expressed in per pound the “rule” nize that under $1.00 Bros, injunction (F.T.C. Before producers Statement Simson paper that, whatsoever fact al no reliance This is corroborated just likely though lit- It balance. seems the value of Davis’ assets igation expenses in connection with stated the balance sheet exceeds would be found ($458,978.93) claims of secured creditors expenses by $110,- ($59,753.56) as would dam- and tax claims be administrative infringement. counsel, ages 768.51, of un- The claims are Davis and its who $1,692,- certainly total of Davis with its financial creditors more familiar secured court, place situation than Carter or this 391.62. against infringement Government, where it until to restrain 1967.3 issue *21 acquiescence however, occupies public unique position a there has Rosenberg precludes attaching which patent. v. Groov-Pin our the See same significance (2d 1936). 46, 47-48 to Carter’s Corp., Cir. failure to sue it 81 Dooling acquiescence infringement might for such found as inferred be supporting infringer. private from substantial failure to on basis of sue the 111-15). patent against infringer (Opin. pp. private The a suit the evidence 22, patentee may injunctive the 1955. As obtain on relief and issued November heavy damages, recognized, including profits the demonstrat which court district patentee meprobamate ex the over would have made on superiority of sales ed infringement. lost as compounds, the of a a result of isting existence The however, States, protected tranquilizers, the United is market for broad against consequences by profits such Title 28 realized Carter substantial 1948, licensing patentee manufacture, U.S.C. limits of § sale and from to a suit in provide the Court of for product, Claims recov- to a broad combined ery compensa- challenge “reasonable and competitors entire to to incentive tion.” Zimmerman United States Gov- patent for market. Yet v. share the ernment, (3d patent 331 Cir. years is the next four 1970); Hardie-Tynes Mfg. challenge. Broome v. This there no such sued Co., (5th 1937). standing 92 F.2d 886 Cir. The period acquiescence, initial patentee injunctive in no case obtain alone, to warrant sufficient against infringe- relief ment, the Government’s Boyce temporary relief. See v. Stewart- Krupp, Crozier Fried. 224 v. U.S. Speedometer Corp., 118 220 Warner F. 32 56 L.Ed. 771 as S.Ct. (2d 1914); Mitchell Mathieu v. sought against Davis, is here for the Co., (2d F.2d 837 Vance 7 recognizes right statute Gov- except appears It for the further under eminent ernment to take oth Government of the States all United subject only to claim for com- domain meprobamate er dealers continued instituted, pensation. has Carter now many years require purchase their to stage of, first a suit. and won the Carter-Wallace, such its ments from Among licensees. Carter States, Inc. United Davis, purchased these was U.S.P.Q. (Ct.Cl.Comm’r 1970). solely from 1963- its needs from Carter That did not commence its Court Carter (Sigerson p. 14). It Aff. litigation very at the outset of of Claims only having until with the infringement highly is not Government remaining life, years four of its fact that could material in began infringement substantial infringement, rem- halt the not edy part or sellers of domestic manufacturers being compensation. Since Gov- meprobamate products.2 going infringement to ernment’s majority this im- The discount would anyway, followed continue Carter grounds. pressive acquiescence on two allowing do it to course more sensible first is the fact that Government point claims up which its so at meprobamate purchased has unlicensed six-year statute bring off cut did not suit since 1960 and Carter profits high having realized 1959 to 2. countries Manufacturers companies pharmaceutical Italy) from pharmaceutical patents (such some patented course, of certain are, and sale manufacture immune from suit including tranquilizers. drugs, fringement. ethical Government, many urge This led drugs, buyer large probably prompted of such amounts Government was pur- savings through upon purchases realize substantial of unlicensed embark Italy, pub- manufacturers chases a result the wide protection licity given offered where no Estes Kefauver’s Senator pharmaceuticals. Monopoly such on Antitrust Subcommittee limitations, regarding strong 35 U.S.C. then the influence § of this Irving suit4 Air weight, commenced its Cf. any, interest what if should States, F.Supp. aspect United Chute Co. v. be accorded to this affida- of his (1950) (pointing vit, out its fatal Ct.Cl. defect lies in its failure to difficulty computing compensation supporting apparent furnish facts. It infringe- continuing during period the outset of a when he shared ment). Furthermore, Squibb Carter is entitled administration E. R. & against failing on its claims Sons it interest the Gov- “missed the boat” *22 they accrued, meprobamate, ernment from the time that discover or to market States, Optical brought large cf. profits Farrand Co. v. United which later into (2d 328, 1963), even Carter’s coffers. Now we are asked to though accept general it chose to than wait rather file his statement to the ef- “apparent” acquiescence series of in the fect actions Court of Claims. that is Finally, damages “partly upon feeling the measure of based of the industry” Court of Claims suit would be a reason- that an attack on the might compensation. royalty industry’s pricing able or reasonable undermine the though 1910, proof hardly structure. the Act even This kind of “[A]fter worthy any weight implied Judge Dooling there was no excess or license and wisely authorizing opinion. to did not Government use the advert it in his to * * large drug patent, its not The fact use was tortious remains that Irving States, although companies, subject Air Chute Co. v. United not favor- to supra, licensing agreements although at 635. The amount able awarded large compensation possessing Carter as for reasonable resources with which likely patent vig- Government’s use is to be much could have contested the damages orously, infringe. smaller than for awarded did not The smaller infringement private companies infringing, tortious which are now party Davis, may like like adopted Davis. well have hope course in the their activities infringement by For these reasons prove insignificant would too to warrant disregarded should be Government litigation, expectation that, inor determining whether there has been expire to in November public acquiescence. Since the record justice the wheels of turn too infringe- private reveals that the first slowly effectively to enable Carter to ment, un- Riverton, did not occur prevent infringement. their legally significant til the fall of approxi- public acquiescence for existed any In the absence substance to enough mately years, nine more than to long public acqui- Davis’ attack on the injunctive preliminary relief. warrant meprobamate patent, escence in Carter’s reversing Judge uphold The second reason for I would the district find- court’s ing Dooling’s finding acquiescence acquiescence. strikes I also fail to see gen- significance legal me as It rests weaker. the fact even George against suit eral statements in the affidavit Carter failed to institute anti-competi- Squibb until R. to the effect that Davis October almost % large drug years part it of Davis’ in- tendencies on the was notified tive acquiesce prelim- companies prompted fringement, them to and did move validity. inary until 1970. of factors other relief December because including pending, Squibb Vice Dr. is the Executive had other suits now Carter Riverton, financially against Davis, which is President of its actions Wolins urges permit- adequate notice it be in extremis and which constituted infringe patent, Dis- Davis to enforce its ted to in order survive. intention agencies unauthor- 4. Government were unable or Garter first learned of the these September infringement In November June 1960. handle such claims. ized to in the Court action filed administrative claims with it commenced governmental agencies, infringing Claims, U.S.P.Q. but see 167 having Eagle exposing obvious. itself to risk of Cf. Iron Works Mc damages Corp., pay Carter. Car- Lanahan substantial 1381 n. injunc- (3d application In such a situation ter’s appeared surprisingly is made when district court left tive relief was largely respond sug devices, to its own be unable Davis gestion damages. majority that additional enlightenment could live foregoing per- reasons am For the testimony experts (R. 22) question special circumstances suaded that able. case from exclude this shown imposed normally danger heavy the one to which burden second insolvency has, view, majority my prey. rule. Davis’ fallen the Simson Bros. injury irreparable suffi- replete demonstrates records are with instances satisfy single requirement of Rule step required cient where the make startling stated discovery appears For the reasons be- in retro- new F.R.C.P. obvious, spect simple that Carter has I am also convinced low to have been so *23 upon high probability used, of success a once it shown one sees the method that validity proving and en- is no the merits almost unbelievable that one took meprobamate patent. forceability step by that it of its before taken was covering person awarded letters recognized it must be At the outset Dooling it.5 this was aware of very to deter- it difficult that often is everything tendency to seem obvious not an invention on mine whether or retrospect, and his statement of the granted or would a was was problem quoting is worth here: obvious, 103. Cf. 35 been U.S.C. § that “The counter-construct has been 1, Co., 383 U.S. v. Deere Graham John path erected as a of invention certain- (1966). 684, 18, L.Ed.2d 545 86 15 S.Ct. ly toy does not with the evidence nor very done little Thus courts have far the distort it. It’s like those color tests pour into the content substantive color-blindness, pass we all if and remains, term, at least and the standard you slip a lens of or another color one conclusory uninitiated, means of a your eye you over a see different labelling than sure decision rather pattern, large very and so here this guide in new to results cases. pattern imposed field when the is it’s arising dangers Among from the tracing through labyrinth: like any guide is isor absence of as to what plain There it is. And it’s as as the obvious, attention here— two deserve your nose on face. testimony unreliability expert and away pattern take “You things tendency appear obvious again. you’re And one wonders lost bright illumination aid “the you pattern that de- if take the here hindsight,” Stamicarbon, N. v. Escam- V. imaginatively so fense' counsel have 920, Corp., F.2d 929 bia Chemical 430 away, out of real materials constructed 1970). (5th notion of Because No, easy path find? I don’t is the vague undefined, ex- obviousness 89-90.) (Opin. pp. see that is.” testimony pert likely marshalled to be finding pro Moreover, obviousness. both and con a cautioned we have experts against tendency by Supreme occurred This conflict has present Court, Goodyear Ray-O-Vac Co., an case: submitted ex- Davis v. Co. meprobamate pert’s stating that affidavit 88 L.Ed. U.S. 64 S.Ct. obvious; recently with the Carter countered and more vari- distinguished expert Stamicarbon, appellate courts, affidavit of a cate- ous other gorically denying Corp., the invention was N. V. v. Escambia Chemical admir’d, each, found, yet all 5. “Th’ invention Once unfound most thought impossible.” how hee would have miss’d; Milton, Lost, To be th’ inventor so easie Paradise seem’d, YI, Book lines 498-501. indicating sign-posts 1970); the route were (5th Steven- discovery making meprobamate Diebold, Inc., son v. experimentation rather matter of (9th Cir. Corp. Indiana invention. See General subjective dangers in a inherent (2d Krystinel Corp., 421 F.2d 1023 point to determination of obviousness Cir.), denied, 928, 90 cert. 398 U.S. heavy giving necessity ward My (1970). 26 L.Ed.2d 91 S.Ct. long- factors, weight objective such as examination them needs, the unsuccessful unmet felt but me, persuades counsel’s excellent briefs results attempts to achieve others however, pointed these references patentee, accomplished away meproba from rather than towards patented unexpected performance of the mate, research and indicated further v. John device or invention. Cf. Graham along probably the lines revealed would 17-18, Co., supra, Deere 383 U.S. important, none of be fruitless. More present it is In the case S. Ct. 684. through might, them indicated that one inquiry factors into the third of these startling experimentation, discover persuades the invention me properties and unusual later found to be not, meprobamate record be possessed by meprobamate. us, fore obvious. appears Following art II to be the Patent Of- time-honored heavily procedure, Patent reference most relied “action” Ex- fice majority indicating rejected ap- the initial Davis and aminer covering discovery meprobamate plication ob- as ob- patent, did vious one skilled in the art. It on the of the Baird vious basis *24 organic taught (or pro- glycols not deal esterification of the that which dicarbamated, panediol parent mepro- compounds) which was the of could be Berger relating “par- bamate, I, a dif- to the but with esterification of so-called myanesin (also propanediol propanediols.” called The Examiner took ferent ent mephenesin), called had one ter- the that the inventors view what Ludwig, hydroxyl pos- Berger meprobamate, had minal rather than the two by give meprobamate’s parent. Both sessed done the Baird treatment was disclosed, Berger This, propanediols, parent propanediols. I had the he stated my- possessed properties, action, did not con- anti-convulsant his initial office being leading tranquilizer granting anesin the the stitute invention. prior meprobamate. years patent, the to the creation of than five after more Berger filed, II that esterification application the revealed based on was was myanesin by compounds of acid suc- substitution fact that the hydroxyl resulted unexpected far cinate for the terminal results and shown were myanesin product, long-lasting in the creation of a than the more effective and (MAS), acid succinate had anti- prior art have led one to antici- would Dooling properties convulsant that were weaker pate that would be. longer parent yielded than those of the but sur- also found that short, teaching substance prising duration. the new the results strength length. 106-07.) (Opin. sacrificed pp. art. discovery repre- hardly “prior of MAS art” Davis now offers several major arts sented a contribution to the me- not cited in the references were major- urges and sciences. Nevertheless the probamate wrapper6 file Society American Chemical 3121- 6. Of course we do not know whether Supplemental (1948), see Ar- Carter’s p. them were fact consulted inde- gument, supra, ap- pendently by was added to the the Examiner. One refer- plication by an amendment ordered ence which we do know was cited August against though application, an office action on Examiner Examiner unlikely original (Ad- application It the Examiner not cited similarly Hydrogenation Billica, references which he cite kins and “The 25-150°,” had consulted and found irrelevant. Esters to Alcohol 70 Journal experimentation. Although further ority esterifica- conclude that since the majority point myanesin prolonged the weaken- out that this effect was tion of might sug- Berger II, effect, unknown at it the time of it can ed anti-convulsant disputed gest pos- attempted not be if skilled in the art to one result sibility would have esterification occurred. If this con of a dicarbamate hindsight, propanedi- stitutes it is no different than of different anti-convulsant hindsight underlying majority’s hind- with the aid 20-20 ols. Even assumption, huge sight leap based on the for me remarkable this is too properties possessed by place, found to be me take. In the first since the esteri- probamate created, myanesin had resulted in a that Ber fication of ger suggested II delayed-action, possibility. such a anti-convulsant weaker parent, experiment agree finding with the lower court’s dry hole, practical a dud terms or unique reaction and results that resulting product of no to the use upon occurred par- dicarbamation of the profession public. or medical meprobamate, ent my- in contrast theory important, advanced More anesin, synergistic constituted a effect. Berger delayed and II for the weaker It would be difficult to think of a clear- esters func- action of MAS was that example er Supreme of what Court coating pill, providing tion like the said, had in mind when in Great At- gradually eaten shield that inactive Supermarket lantic & Pacific Tea Co. v. body releasing away by fluids, parent Equipment Corp., 147, 152, 340 U.S. myanesin. However, myanesin 127, 130, (1950): S.Ct. 95 L.Ed. 162 cleav- was liberated this breakdown or may, course, especially “Elements age undergoing of the esters was also chemistry electronics, or take on some degradation, oxidation or which weak- quality being new or function ened its effect. one skilled in the Since * * brought into concert That reasonably expect art would the same synergistic result can be a talisman of process to occur esterification non-obviousness is clarified in the Su- propanediols, hardly other II of- preme opinion, Court’s recent Ander- signpost improved fered a to some new Rock, son’s-Black Inc. v. Pavement Sal- *25 vage Co., 57, 61, anti-convulsant. U.S. 90 S.Ct. (1969): 24 L.Ed.2d 258 “A combi- Meprobamate represented complete a nation of elements result in an ef- departure reasonably from what could greater fect than the sum of the several expected experiments have been from the separately. syn- effects taken such No myanesin. Meprobamate with was not ergistic argued here.” Also of result only longer myanesin, duration than Supreme opinion relevance is the Court’s stronger. it was more effective and Adams, in United States v. 383 U.S. reason for this it was that breaks down 86 S.Ct. 15 L.Ed.2d 572 body differently in the than esters of day decided on the same as Graham v. parent propanediols, my other such as Co., supra, John Deere dis- which the being anesin. Instead of the esters eaten puted patent upheld was over a claim of away by body fluids, the two carbamate seen, op- obviousness: “As we have meprobamate radicals of bond with the erating characteristics of the Adams bat- parent propanediol materials tery have been shown to un- have been actively work in combination with them. expected surpassed and to have far then- wholly unexpected A result follows. Ber existing wet batteries.” ger point wholly did not II to this un expected contrary, result. On the prior even The Kraft and Bonhoeffer art references, if a leading scientist had commenced with di rather than me myanesin, carbamation meprobamate he would have conclusion that was obvi- experiment it, ous, only my found that “ruined’- enhance conclusion that destroying activity, Berger Ludwig all anti-convulsant did not conduct an probably and would experiment. have discontinued obvious These references propanediols meprobamate patentable. their rendered did not deal with wholly weakness, all, diacetate, at un- of its but with because dicarbamates Bonhoeffer, worthy compounds. ex- not for of consideration as a related myanesin, leading ample, anti- a monocarbamate substitute disclosed some re- convulsant with which monoaleohol. In the absence of under- standably comparison. Mepro- lationship propanediols, the fact made his wholly bamate, hand, different com- on the other some other was obvious- ly superior pounds soporific, hypnotic or seda- to both. significance. no tive effects Since the district I affirm pub- I and II were Since Yale not decision, court’s some reference should filing ap- lished until after be made to antitrust defenses misuse they plication meprobamate, for the are majority, reverses, which the it because prior important art. But if this even did not These strike reach. defenses disregarded, barrier were not Assuming having any me as not merit. concerned, recognizes, majority as the arguendo post-sale restrictions pharmacological activity. They with agreement Merck Carter’s with only produce disclosed that one could agreements and its 1957 and 1959 with propanediol, carbamate which was Cyanamid, mepro- under which it sold discovery. Baird, not a new which only particular bamate for use combi- Examiner had considered and was drugs, nation violated the antitrust laws rejection, taught basis of his initial executed, when is a doubtful propanediols chemists how to convert proposition best, any illegality dicarbamates and had even disclosed a eliminated Consent Decree. homologue meprobamate, 1,3 pro- obligated The latter Carter to sell bulk panediol dicarbamate. The invention meprobamate qualified pharmaceu- to all more, e., here embraced much the dis- i. houses, including Cyanamid tical covery particular dicarba- Merck, at the maximum non-discrimina- possessed new, mate but it useful tory price per pound (plus $20 unanticipated properties. creases based on the Consumer Price Index) Cyanamid and the and Merck accepts my If one new view agreements accordingly were amended prior art fail references to raise an issue permit require mepro- rather meprobamate, as to the obviousness of drugs. bamate be used in the combination unnecessary becomes me to labor Cyanamid Merck, Thereafter like misconduct, claims which are pharmaceutical some 100 other houses mainly upon based failure to disclose the purchased meprobamate bulk agree aforementioned art. (Sigerson p. 5), Carter Aff. were free Judge Dooling’s finding that “there is buy bulk and resell *26 anything not here from which one can agree- without restraint. The earlier fer an intention to deceive the Patent ments, amended, as thus were continued 85), (Opin. p. Examiner” and that Ber- permit effect Carter to con- ger fraudulent, deceptive” “was charging companies tinue those the lower 86). Berger’s (Opin. p. comparison in prices specified agree- theretofore July, 1952, his affidavit between the ments used in the com- properties meproba- anti-convulsant drugs. suggestion bination There is no myanesin and those mate does not prices others want the lower on the strike me unfair or dishonest because drugs, same basis for use in combination failure to disclose that the diace- or that others would be refused such myanesin compar- tate of had duration terms. Thus antitrust has misuse meprobamate. my able to view long purged dissipated. since been again criticism once makes the mistake divorcing length strength. foregoing It For reasons I would qualities combination of affirm. these