(dissenting) :
Although I agree with some of the views expressed by Judge Friendly in his thorough opinion, I differ on certain crucial issues and hence must dissent.
Were it not for the Court’s adherence to an old doctrine, which seems to have been blindly followed by some over the years, to the effect that a preliminary injunction should not issue in a patent infringement suit “except when the patent is beyond question valid and in*885fringed,” Simson Bros. v. Blancard & Co., 22 F.2d 498, 499 (2d Cir. 1927), it is evident that the district court’s grant of preliminary relief in this case would be affirmed. There was substantial supporting evidence for Judge Dooling’s finding of validity. Infringement is conceded, and the insolvency of Davis-Edwards (“Davis” herein) provides a sound basis for his conclusion that a suit for damages at law does not provide an adequate remedy. Tropic-Aire, Inc. v. Jumper, 28 F.2d 631 (D.Minn.1928), overruled on other grounds, Tropic-Aire, Inc. v. Sears, Roebuck & Co., 44 F.2d 577 (D.Minn.1930); Norstrom v. Wahl, 27 F.2d 637 (7th Cir. 1928); cf. Thompson v. New York Central R. Co., 361 F.2d 137, 145-146 (2d Cir. 1966).
No one questions the fact that meprobamate (2-methyl-2-propyl-l,3 propanediol dicarbamate) had not existed before it was created in 1950 by its inventors, Drs. Frank M. Berger and Bernard J. Ludwig. Nor is there any doubt that it represented a major advance in the field of anticonvulsants, possessing markedly greater activity, strength, duration and utility than existing compounds. Judge Dooling found, for instance, that meprobamate yielded surprising results (which he described as “unexpectedness”) in the light of the teaching of the prior art (Opin. pp. 106-07). Since its first public sales in May 1955, the product, because of these unique and superior qualities, has been widely accepted by the medical profession and preferred over existing drugs that might be prescribed for the same purpose, with the result that it has enjoyed great commercial success. Davis seeks to avoid enforcement of Carter’s meprobamate patent (No. 2,724,720) on the grounds that the invention was obvious, that prior art was concealed from the Patent Office, and that the patent has been misused.
As the majority recognizes, upon the filing of Carter-Wallaee’s (“Carter” herein) motion for a preliminary injunction on December 22, 1970, Judge Dooling was inundated by the parties with extensive affidavits, exhibits and memoranda relating to Davis’ defenses. Having granted preliminary relief in response to a similar motion in Carter-Wallace, Inc. v. Wolins Pharmacal Corp., 326 F.Supp. 1299 (E.D.N.Y.1971), and having had the benefit of the opinions of the district court and of this Court in Carter-Wallaee, Inc. v. Riverton Laboratories, Inc., 304 F.Supp. 357 (S.D.N.Y. 1969), affd., 433 F.2d 1034 (2d Cir. 1970) , he was familiar with the general background of the patent in issue. As I view the record the essentia] facts before him were not in dispute, so that there was no need for him to take oral testimony. SEC v. Frank, 388 F.2d 486, 490 (2d Cir. 1968). There were, on the other hand, sharp issues as to the inferences that could be drawn from the voluminous undisputed facts. Accordingly he heard extensive oral argument which lasted for three days. His lengthy, orally delivered opinion, extending for 167 typewritten pages, including colloquy with counsel, discloses a thorough grasp of the subject matter and a painstaking analysis of the evidence, including each of the new “prior art” references put forth by Davis that had not been cited in the Patent Office’s file wrapper and presumably had not been considered by it.
I join the majority in rejecting Carter’s contention that preliminary injunctive relief is warranted here on the ground that the validity and enforceability of the patent were adjudicated in Riverton Laboratories, Inc., supra. Riverton considered various objections not presented here and did not adjudicate the defenses of obviousness, inequitable dealing with the Patent Office, and patent misuse which have been raised by Davis. To the extent that Judge Dooling’s decision relied upon Riverton as the basis for granting preliminary relief, it was therefore in error. However, apparently recognizing the weakness of Riverton as a sole ground for relief, he devoted little of his opinion to it, in contrast to his extensive consideration of other grounds upheld by him, including the inadequacy of the new defenses raised by Davis, the existence of industry acquiescence, and *886the effect of Davis’ insolvency. Aware of the heavy burden imposed upon Carter before preliminary relief might issue, he found that it had made a strong showing of validity, stating that “the probability of success on the issue of validity lies heavily with plaintiff” (Opin. pp. 106-07). He further found, after careful consideration of the evidence and Davis’ contentions, that there was industry acquiescence in the patent and that “the acquiescence was real” (Opin. pp. 111-15). On the subject of irreparable injury and balancing of hardships, he concluded that damages would not afford Carter adequate relief, in view of Davis’ insolvency (Opin, p. 142), and that unless preliminary relief was granted, Carter would suffer loss of business and good will of other customers during the short remaining life of the patent, thus encouraging infringement by others.
Thus Judge Dooling’s decision impresses me as being fully supported by valid grounds unconnected with River-ton. Since, as the majority points out, we are in as good a position as the district court to determine, in the absence of oral testimony, whether a preliminary injunction should issue on the record before us, Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., 409 F.2d 1315 (2d Cir. 1969); Graham v. Jeoffroy Mfg. Co., 253 F.2d 72, 75 (5th Cir. 1958), it would be a meaningless formality to remand the case if the district court’s decision is supported by these other grounds. I would affirm on these other grounds.
Since, as I see it, Carter has satisfied the burden imposed by the Simson Bros. rule, it is perhaps unnecessary to reconsider that doctrine. However, in view of the great reliance placed upon it by the majority, and possible differences as to its scope, I believe that the time has come for review and clarification of the rule. Judge Friendly, quoting from Judge L. Hand’s opinion in Rosenberg v. Groov-Pin Corp., 81 F.2d 46, 47 (2d Cir. 1936), and relying upon the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 15 L.Ed. 2d 545 (1966), suggests that the doctrine is based upon the inability of the Patent Office’s staff of Examiners, swamped with a large number of new applications annually, to give full consideration to the prior art references or to obtain a full statement of all relevant information in an ex parte proceeding. I think that this view tends unjustifiably to downgrade the skill, thoroughness and competency of Patent Examiners, each of whom is an expert in the area of his specialty and has available in the Patent Office a library of prior art references dealing with that specialized field. In 1959 this library comprised over 69,000 volumes of scientific and technical books, 59,000 bound volumes of scientific and technological periodicals, and over 8,000,000 copies of foreign patents. L. Amdur, Patent Office Rules and Practice 60-61 (1959). It also overlooks the fact that, unlike most ex parte proceedings, where the court accepts only the data furnished to it, the prosecution of a patent application is a lengthy proceeding in which the Patent Examiner acts like an adversary, not merely an administrator, repeatedly rejecting an application until he is satisfied that relevant prior art has been fully disclosed and examined.
“The grant of a patent culminates an earnest contest, often long drawn-out, between the applicant, represented by his attorney or agent, and the Patent Office, represented by the Examiner, with the public an interested party.” L. Amdur, supra, § 2.2.
Patent Office Rule 104(a) provides.
“On taking up an application for examination, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject-matter of the invention sought to be patented.”
The Patent Examiner is not limited in his evaluation to the references cited by the patent applicant, L. Amdur, supra, § 104; he actively seeks out and may rely upon other references in the field, as occurred at least once in the evaluation *887of the application for the patent in suit. See Carter’s Supplemental Argument, filed in the Patent Office July 27, 1955. One cannot help wondering why we have a Patent Office if it is to be broadly denigrated.
Having in mind that it will be a rare case where an alleged infringer cannot dredge up some “prior art” references not found in the Patent Office file wrapper, it seems to me that when such an exhaustive procedure results in the issuance of letters patent they should be accorded more weight than a worthless piece of paper. Furthermore, the rationale accepted by the majority for the rule- — lack of Patent Office time and staffing to permit exhaustion of the pri- or art — does not appear to have persuaded Congress, which has expressly provided, 35 U.S.C. § 282, that “A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on the party asserting it.” But even if we disregard this mandate which was reenacted in 1946 long after the Simson Bros, “rule” had been established (as Judge Friendly notes, the rule dates back to 1888, see Dickerson v. De la Vergne Refrigerating Machine Co., 35 Fed. 143, 147-148 (C.C.S.D.N.Y.1888)), we would expect the rule, if we are to be consistent, to apply with equal force upon trial of an infringement suit on the merits. Yet the Supreme Court has firmly held that the alleged infringer “bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance,” Radio Corporation of America v. Radio-Engineering Laboratories, 291 U.S. 1, 8, 54 S.Ct. 752, 755, 78 L.Ed. 1453 (1934). This has been construed in practice to mean that he must prove invalidity by “clear and convincing evidence.” Purer & Co. v. Aktiebolagat Addo, 410 F.2d 871 (9th Cir. 1969); Eimco Corp. v. Petersen Filters & Engineering Co., 406 F.2d 431 (10th Cir. 1968); Copease Mfg. Co. v. American Photocopy Equipment Co., 298 F.2d 772 (7th Cir. 1961); Scaramucci v. Dresser Industries, Inc., 427 F.2d 1309 (10th Cir. 1970); General Foods Corp. v. Perk Foods Co., 419 F.2d 944 (7th Cir. 1969); Kiva Corp. v. Baker Oil Tools, Inc., 412 F.2d 546 (5th Cir.), cert. denied, 396 U.S. 927, 90 S.Ct. 262, 24 L.Ed.2d 226 (1969); Carter-Wallace, Inc. v. Riverton Laboratories, Inc., 304 F.Supp. 357, 368 (S.D.N.Y.1969). Although the Supreme Court in Radio Corporation of America, supra, was dealing with a case that had been tried on the merits, I have found no suggestion by it, there or elsewhere, that the rule would be different upon an application for preliminary relief. Nor do I see any reason why it should be. •The fact that the alleged infringer, upon a trial on the mertis, has had the benefit of pretrial discovery, does not provide a sound basis for shifting the burden. On the contrary, where the alleged infringer, as here, asserts the standard defenses upon an application for temporary relief, he usually has less evidentiary support for those defenses than he might gain as the result of discovery. Surely he should not be permitted to benefit because of his inability to offer supporting proof. Otherwise he gets credit for his ignorance, even though it may later turn out that his defenses are hollow. For these reasons I question the heavy reliance placed on the “rule” in this case and the rationale behind it.
Even accepting the “rule,” one assumption underlying it is the theory that since the patentee will have an adequate remedy in damages, 35 U.S.C. § 284, no reason exists for disturbing the status quo pending a decision on the merits. See A. B. Dick Co. v. Barnett, 277 F. 423, 424-425 (2d Cir. 1921). Simson Bros. should not be read as abridging the district court’s power, in the exercise of its equitable discretion, to consider the infringer’s ability to respond in damages, as the lower court did (Opin. pp. 133, 142). See Tropic-Aire, Inc. v. Jumper, 28 F.2d 631, 633 (D.Minn.1928); Norstrom v. Wahl, 27 F.2d 637 (7th Cir. 1928).
The district court’s concern over the inadequacy of damages is amply supported by the record before us. The majority points to the fact that Carter’s dam*888age claims may receive priority over the claims of other unsecured creditors as administration expenses, but this response is unsatisfactory. The financial statement filed in the bankruptcy proceeding reveals that of Davis’ total assets of $629,500, all but $4,500 are encumbered by security interests and thus would probably not be available for the satisfaction even of priority claims.1 Moreover, Reading Co. v. Brown, 391 U.S. 471, 88 S.Ct. 1759, 20 L.Ed.2d 751 (1968), while placing tort claims in the class of those to be given priority, does not suggest that such claims stand any better than other expenses of administration, such as legal and receivership fees. Davis’ counsel (Opin. p. 139) and its President (Weiss Aff. p. 5) have asserted that it will be financially unable to defend this action further if it is not permitted to continue infringing Carter’s meprobamate patent.
In a situation in which an infringer’s assets are admittedly so scant, it seems clear that if the injunction were denied, Davis’ profits from the continuing sale of infringing meprobamate would be the only source to which Carter could look for satisfaction of its damage claim. Yet these profits are what Davis plans to use to finance the trial on the merits. Furthermore, even if the profits were segregated and held as a fund for the satisfaction of later damage claims, they would be insufficient. Davis is buying and selling meprobamate at prices far below those at which Carter is selling under the sanction of its patent monopoly and the Consent Decree entered in 1962 antitrust litigation, see United States v. Carter Products, Inc., 211 F.Supp. 144 (S.D.N.Y.1962). The record reveals that Davis is buying bulk meprobamate at about $1.00 per pound from infringing foreign producers (F.T.C. Statement Before United States Tariff Commission, No. 337-L-41, p. 16) and reselling it, after processing into 400 milligram tablets, at about $5.00 per 1,000 tablets (Weiss Aff. p. 2), or approximately $5.50 per pound (see Weiss Aff. p. 4). It is highly unlikely that whatever profits Davis makes from such transactions (and Davis concedes that the mail order market in which it is operating is highly competitive, Weiss Aff. p. 2, from which one can infer that profit margins are minimal) would be adequate to compensate Carter for the damages suffered by it. If damages are measured as the profit which Carter would have made had Davis purchased meprobamate from it, American Safety Table Co. v. Schreiber, 415 F.2d 373 (2d Cir. 1969), cert. denied, 396 U.S. 1038, 90 S.Ct. 683, 24 L.Ed.2d 682 (1970); Bros Inc. v. W. E. Grace Mfg. Co., 320 F.2d 594 (5th Cir. 1963); Livesay Window Co. v. Livesay Industries, 251 F.2d 469 (5th Cir. 1958); Carter Products, Inc. v. Colgate-Palmolive Co., 214 F.Supp. 383, 393 (D.Md.1963), the damages could be huge, for an enormous proportion of the $24.75 per pound price —perhaps as much as $20.00 — would be profit to Carter (F.T.C. Statement, supra, p. 16). Moreover, in light of this possibility that damages will be measured by Carter’s profit on sales of bulk meprobamate at $24.75 per pound, Davis’ offer to pay into escrow 5% of the gross proceeds from its sales of infringing meprobamate at the $5-$7 per pound level, which the majority accepts, strikes me as a rather insubstantial support for the conclusion that Carter will not be irreparably harmed. The insolvency of Davis is thus a compelling reason why Simson Bros, should not be invoked in this case.
The majority and both parties recognize that under the “rule” expressed in Simson Bros, a preliminary injunction *889may issue to restrain infringement where there has been public acquiescence in the patent. See Rosenberg v. Groov-Pin Corp., 81 F.2d 46, 47-48 (2d Cir. 1936). Judge Dooling found such acquiescence on the basis of substantial supporting evidence (Opin. pp. 111-15). The patent issued on November 22, 1955. As the district court recognized, the demonstrated superiority of meprobamate over existing compounds, the existence of a broad market for tranquilizers, and the substantial profits realized by Carter from manufacture, sale and licensing of the product, combined to provide a broad incentive to competitors to challenge the patent and share the market. Yet for the next four years after the patent issued there was no such challenge. This initial period of acquiescence, standing alone, might be sufficient to warrant temporary relief. See Boyce v. Stewart-Warner Speedometer Corp., 220 F. 118 (2d Cir. 1914); Mathieu v. Mitchell Vance Co., 7 F.2d 837 (2d Cir. 1925). It further appears that except for the Government of the United States all other dealers in meprobamate continued for many years to purchase their requirements from Carter or its licensees. Among these was Davis, which purchased its needs solely from Carter from 1963-1968 (Sigerson Aff. p. 14). It was not until 1968, with the patent having only four remaining years of its life, that any substantial infringement began on the part of domestic manufacturers or sellers of meprobamate products.2
The majority would discount this impressive acquiescence on two grounds. The first is the fact that the Government has purchased unlicensed meprobamate since 1960 and Carter did not bring suit against it until 1967.3 The Government, however, occupies a unique position which precludes our attaching the same significance to Carter’s failure to sue it for infringement as might be inferred from failure to sue a private infringer. In a suit against a private infringer the patentee may obtain injunctive relief and heavy damages, including profits which the patentee would have made on sales lost as a result of the infringement. The United States, however, is protected against such consequences by Title 28 U.S.C. § 1948, which limits the patentee to a suit in the Court of Claims for recovery of “reasonable and entire compensation.” Zimmerman v. United States Government, 422 F.2d 326, 331 (3d Cir. 1970); Broome v. Hardie-Tynes Mfg. Co., 92 F.2d 886 (5th Cir. 1937). The patentee may in no case obtain injunctive relief against the Government’s infringement, Crozier v. Fried. Krupp, 224 U.S. 290, 32 S.Ct. 488, 56 L.Ed. 771 (1912), as is sought here against Davis, for the statute recognizes the right of the Government to take the patent under eminent domain subject only to a claim for compensation. Carter has now instituted, and won the first stage of, such a suit. Carter-Wallace, Inc. v. United States, 167 U.S.P.Q. 667 (Ct.Cl.Comm’r 1970). That Carter did not commence its Court of Claims litigation at the very outset of Government infringement is not highly material in light of the fact that it could not halt the infringement, its only remedy being compensation. Since the Government’s infringement was going to continue anyway, Carter followed the more sensible course of allowing it to do so up to the point at which its claims would be cut off by the six-year statute *890of limitations, 35 U.S.C. § 286, and then commenced its suit4 Cf. Irving Air Chute Co. v. United States, 93 F.Supp. 633, 117 Ct.Cl. 799 (1950) (pointing out the difficulty of computing compensation at the outset of a continuing infringement). Furthermore, Carter is entitled to interest on its claims against the Government from the time that they accrued, cf. Farrand Optical Co. v. United States, 325 F.2d 328, 337 (2d Cir. 1963), even though it chose to wait rather than file a series of actions in the Court of Claims. Finally, the measure of damages in the Court of Claims suit would be a reasonable royalty or reasonable compensation. “[A]fter the Act of 1910, even though there was no excess or implied license authorizing the Government to use the patent, its use was not tortious * * Irving Air Chute Co. v. United States, supra, at 635. The amount awarded Carter as reasonable compensation for the Government’s use is likely to be much smaller than the damages awarded for the tortious infringement of a private party like Davis.
For these reasons the infringement by the Government should be disregarded in determining whether there has been public acquiescence. Since the record reveals that the first private infringement, that of Riverton, did not occur until the fall of 1964, the legally significant public acquiescence existed for approximately nine years, more than enough to warrant preliminary injunctive relief.
The second reason for reversing Judge Dooling’s finding of acquiescence strikes me as even weaker. It rests upon general statements in the affidavit of George R. Squibb to the effect that anti-competitive tendencies on the part of large drug companies prompted them to acquiesce because of factors other than validity. Dr. Squibb is now the Executive Vice President of Davis, which is financially in extremis and urges that it be permitted to infringe in order to survive. Disregarding the influence of this strong interest upon what weight, if any, should be accorded to this aspect of his affidavit, its fatal defect lies in its failure to furnish supporting facts. It is apparent that during the period when he shared the administration of E. R. Squibb & Sons it “missed the boat” in failing to discover or to market meprobamate, which later brought large profits into Carter’s coffers. Now we are asked to accept his general statement to the effect that the “apparent” acquiescence is based “partly upon the feeling of the industry” that an attack on the patent might undermine the industry’s pricing structure. This kind of proof was hardly worthy of any weight and Judge Dooling wisely did not advert to it in his opinion. The fact remains that the large drug companies, although not subject to favorable licensing agreements and although possessing large resources with which they could have contested the patent vigorously, did not infringe. The smaller companies which are now infringing, like Davis, may well have adopted that course in the hope that their activities would prove too insignificant to warrant litigation, or in the expectation that, with the patent to expire in November 1972, the wheels of justice would turn too slowly to enable Carter effectively to prevent their infringement.
In the absence of any substance to Davis’ attack on the long public acquiescence in Carter’s meprobamate patent, I would uphold the district court’s finding of acquiescence. I also fail to see any legal significance in the fact that Carter failed to institute suit against Davis until October 1969, almost 1 % years after it was notified of Davis’ infringement, and did not move for preliminary relief until December 22, 1970. Carter had other suits pending, including its actions against Wolins and Riverton, which constituted adequate notice of its intention to enforce its patent, and Davis *891was exposing itself to risk of having to pay substantial damages to Carter. Carter’s application for preliminary injunctive relief was made when it appeared that Davis might be unable to respond in damages.
For the foregoing reasons I am persuaded that special circumstances have been shown which exclude this case from the heavy burden normally imposed by the Simson Bros. rule. Davis’ insolvency demonstrates irreparable injury sufficient to satisfy the requirement of Rule 65, F.R.C.P. For the reasons stated below I am also convinced that Carter has shown a high probability of success upon the merits in proving the validity and enforceability of its meprobamate patent.
At the outset it must be recognized that it is often very difficult to determine whether or not an invention on which a patent was granted was or would have been obvious, 35 U.S.C. § 103. Cf. Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Thus far the courts have done very little to pour substantive content into the term, and the standard remains, at least to the uninitiated, a conclusory means of labelling a decision rather than a sure guide to results in new cases.
Among the dangers arising from the absence of any guide as to what is or is not obvious, two deserve attention here— the unreliability of expert testimony and the tendency of things to appear obvious with the aid of “the bright illumination of hindsight,” Stamicarbon, N. V. v. Escambia Chemical Corp., 430 F.2d 920, 929 (5th Cir. 1970). Because the notion of obviousness is vague and undefined, expert testimony is likely to be marshalled both pro and con a finding of obviousness. This conflict of experts has occurred in the present case: Davis submitted an expert’s affidavit stating that meprobamate was obvious; Carter countered with the affidavit of a distinguished expert categorically denying that the invention was obvious. Cf. Eagle Iron Works v. McLanahan Corp., 429 F.2d 1375, 1381 n. 13 (3d Cir. 1970). In such a situation the district court is not surprisingly left largely to its own devices, and the suggestion of the majority that additional enlightenment could be had from the live testimony of experts (R. 22) is questionable.
The second danger is the one to which the majority has, in my view, fallen prey. The records are replete with instances where the single step required to make a startling new discovery appears in retrospect to have been so simple and obvious, once one sees the method used, that it is almost unbelievable that no one took that step before it was taken by the person awarded letters patent covering it.5 Judge Dooling was aware of this tendency for everything to seem obvious in retrospect, and his statement of the problem is worth quoting here:
“The counter-construct that has been erected as a path of invention certainly does not toy with the evidence nor distort it. It’s like those color tests we all pass for color-blindness, and if you slip a lens of one or another color over your eye you see a different pattern, and so here in this very large field when the pattern is imposed it’s like tracing through a labyrinth: There it is. And it’s as plain as the nose on your face.
“You take the pattern away and you’re lost again. And one wonders here if you take the pattern that defense' counsel have so imaginatively constructed out of real materials away, is the path easy to find? No, I don’t see that it is.” (Opin. pp. 89-90.)
Moreover, we have been cautioned against this tendency by the Supreme Court, Goodyear Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 88 L.Ed. 721 (1944), and more recently by various other appellate courts, Stamicarbon, N. V. v. Escambia Chemical Corp., 430 *892F.2d 920, 929 (5th Cir. 1970); Stevenson v. Diebold, Inc., 422 F.2d 1228, 1232 (9th Cir. 1970).
The dangers inherent in a subjective determination of obviousness point toward the necessity of giving heavy weight to objective factors, such as long-felt but unmet needs, the unsuccessful attempts of others to achieve the results accomplished by the patentee, and the unexpected performance of the patented device or invention. Cf. Graham v. John Deere Co., supra, 383 U.S. at 17-18, 86 S.Ct. 684. In the present case it is an inquiry into the third of these factors that persuades me that the invention of meprobamate was not, on the record before us, obvious.
Following time-honored Patent Office “action” procedure, the Patent Examiner rejected the initial patent application covering meprobamate as obvious on the basis of the Baird patent, which taught that glycols (or organic compounds) could be dicarbamated, and Berger I, relating to the so-called “parent propanediols.” The Examiner took the view that what the inventors of meprobamate, Berger and Ludwig, had done was to give the Baird treatment to the parent propanediols. This, he stated in his initial office action, did not constitute invention. The granting of the patent, more than five years after the application was filed, was based on the fact that the patent compounds had shown unexpected results and were far more effective and long-lasting than the prior art would have led one to anticipate that they would be. Judge Dooling also found that meprobamate yielded surprising results in light of the teaching of the prior art. (Opin. pp. 106-07.)
Davis now offers several “prior art” references that were not cited in the meprobamate file wrapper6 and urges that they were sign-posts indicating the route to meprobamate and making its discovery a matter of experimentation rather than invention. See Indiana General Corp. v. Krystinel Corp., 421 F.2d 1023 (2d Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1820, 26 L.Ed.2d 91 (1970). My examination of them in the light of counsel’s excellent briefs persuades me, however, that these references pointed away from rather than towards meprobamate, and indicated that further research along the lines revealed would probably be fruitless. More important, none of them indicated that one might, through experimentation, discover the startling and unusual properties later found to be possessed by meprobamate.
Berger II appears to be the prior art reference most heavily relied upon by Davis and by the majority as indicating that discovery of meprobamate was obvious to one skilled in the art. It did not deal with esterification of the propanediol which was the parent of meprobamate, but with esterification of a different propanediol called myanesin (also called mephenesin), which had one terminal hydroxyl rather than the two possessed by meprobamate’s parent. Both propanediols, as Berger I had disclosed, possessed anti-convulsant properties, myanesin being the leading tranquilizer prior to the creation of meprobamate. Berger II revealed that esterification of myanesin by substitution of acid succinate for the terminal hydroxyl resulted in the creation of a product, myanesin acid succinate (MAS), which had anticonvulsant properties that were weaker than those of the parent but longer in duration. In short, the new substance sacrificed strength for length.
The discovery of MAS hardly represented a major contribution to the arts and sciences. Nevertheless the major*893ority conclude that since the esterification of myanesin prolonged the weakened anti-convulsant effect, it might suggest to one skilled in the art the possibility of a dicarbamate esterification of different anti-convulsant propanediols. Even with the aid of 20-20 hindsight this is too huge a leap for me to take. In the first place, since the esterification of myanesin had resulted in a delayed-action, weaker anti-convulsant than the parent, the experiment was in practical terms a dud or dry hole, and the resulting product was of no use to the medical profession or to the public. More important, the theory advanced by Berger II for the delayed and weaker action of MAS was that the esters function like the coating of a pill, providing an inactive shield that is gradually eaten away by body fluids, releasing the parent myanesin. However, the myanesin that was liberated by this breakdown or cleavage of the esters was also undergoing oxidation or degradation, which weakened its effect. Since one skilled in the art would reasonably expect the same process to occur upon esterification of other propanediols, Berger II hardly offered a signpost to some new or improved anti-convulsant.
Meprobamate represented a complete departure from what could reasonably have been expected from the experiments with myanesin. Meprobamate was not only of longer duration than myanesin, it was more effective and stronger. The reason for this was that it breaks down in the body differently than esters of other parent propanediols, such as myanesin. Instead of the esters being eaten away by body fluids, the two carbamate radicals of meprobamate bond with the materials in the parent propanediol and work actively in combination with them. A wholly unexpected result follows. Berger II did not point to this wholly unexpected result. On the contrary, even if a scientist had commenced with dicarbamation of myanesin, he would have found that the experiment “ruined’- it, destroying all anti-convulsant activity, and would probably have discontinued further experimentation. Although the majority point out that this effect was unknown at the time of Berger II, it cannot be disputed that if attempted the result would have occurred. If this constitutes hindsight, it is no different than the hindsight underlying the majority’s assumption, based on the remarkable properties found to be possessed by meprobamate after it was created, that Berger II suggested such a possibility.
I agree with the lower court’s finding that the unique reaction and results that occurred upon dicarbamation of the parent of meprobamate, in contrast to myanesin, constituted a synergistic effect. It would be difficult to think of a clearer example of what the Supreme Court had in mind when it said, in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950): “Elements may, of course, especially in chemistry or electronics, take on some new quality or function from being brought into concert * * That a synergistic result can be a talisman of non-obviousness is clarified in the Supreme Court’s recent opinion, Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 61, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969): “A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here.” Also of relevance is the Supreme Court’s opinion in United States v. Adams, 383 U.S. 39, 51, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966), decided on the same day as Graham v. John Deere Co., supra, in which the disputed patent was upheld over a claim of obviousness: “As we have seen, the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries.”
The Kraft and Bonhoeffer prior art references, rather than leading me to the conclusion that meprobamate was obvious, only enhance my conclusion that Berger and Ludwig did not conduct an obvious experiment. These references *894did not deal with propanediols or their dicarbamates at all, but with wholly unrelated compounds. Bonhoeffer, for example, disclosed a monocarbamate of a monoaleohol. In the absence of some relationship to the propanediols, the fact that some other wholly different compounds had soporific, hypnotic or sedative effects was of no significance. Since Yale I and II were not published until after the filing of the application for the meprobamate, they are not prior art. But even if this important barrier is disregarded, they were not concerned, as the majority recognizes, with pharmacological activity. They disclosed only that one could produce a carbamate of a propanediol, which was not a new discovery. Baird, which the Examiner had considered and was the basis of his initial rejection, taught chemists how to convert propanediols to dicarbamates and had even disclosed a homologue of meprobamate, the 1,3 propanediol dicarbamate. The invention here embraced much more, i. e., the discovery not only of a particular dicarbamate but that it possessed new, useful and unanticipated properties.
If one accepts my view that the new prior art references fail to raise an issue as to the obviousness of meprobamate, it becomes unnecessary for me to labor the claims of misconduct, which are based mainly upon failure to disclose the aforementioned prior art. I agree with Judge Dooling’s finding that “there is not here anything from which one can infer an intention to deceive the Patent Examiner” (Opin. p. 85), and that Berger “was not fraudulent, not deceptive” (Opin. p. 86). Berger’s comparison in his July, 1952, affidavit between the anti-convulsant properties of meprobamate and those of myanesin does not strike me as unfair or dishonest because of its failure to disclose that the diacetate of myanesin had duration comparable to meprobamate. In my view this criticism once again makes the mistake of divorcing length from strength. It was the combination of these qualities that rendered meprobamate patentable. The diacetate, because of its weakness, was not worthy of consideration as a substitute for myanesin, the leading anticonvulsant with which Berger understandably made his comparison. Meprobamate, on the other hand, was obviously superior to both.
Since I would affirm the district court’s decision, some reference should be made to the antitrust misuse defenses which the majority, because it reverses, did not reach. These defenses strike me as not having any merit. Assuming arguendo that the post-sale restrictions in Carter’s 1956 agreement with Merck and its 1957 and 1959 agreements with Cyanamid, under which it sold meprobamate for use only in particular combination drugs, violated the antitrust laws when executed, which is a doubtful proposition at best, any illegality was eliminated by the 1962 Consent Decree. The latter obligated Carter to sell bulk meprobamate to all qualified pharmaceutical houses, including Cyanamid and Merck, at the maximum non-discriminatory price of $20 per pound (plus increases based on the Consumer Price Index) and the Cyanamid and Merck agreements were amended accordingly to permit rather than require that meprobamate be used in the combination drugs. Thereafter Cyanamid and Merck, like some 100 other pharmaceutical houses which purchased bulk meprobamate from Carter (Sigerson Aff. p. 5), were free to buy bulk meprobamate and resell it without restraint. The earlier agreements, as thus amended, were continued in effect only to permit Carter to continue charging those companies the lower prices theretofore specified in the agreements for meprobamate used in the combination drugs. There is no suggestion that others want the lower prices on the same basis for use in combination drugs, or that others would be refused such terms. Thus any antitrust misuse has long since been purged or dissipated.
For the foregoing reasons I would affirm.
. This is corroborated by the fact that, although the value of Davis’ assets as stated in the balance sheet exceeds the claims of secured creditors ($458,978.93) and tax claims ($59,753.56) by $110,-768.51, Davis and its counsel, who are certainly more familiar with its financial situation than Carter or this court, place no reliance whatsoever on this paper balance. It seems just as likely that litigation expenses in connection with the meprobamate patent would be found to be administrative expenses as would damages for infringement. The claims of unsecured creditors of Davis total $1,692,-391.62.
. Manufacturers in countries not having pharmaceutical patents (such as Italy) are, of course, immune from suit for infringement.
. The Government was probably prompted to embark upon purchases of unlicensed meprobamate as a result of the wide publicity given by Senator Estes Kefauver’s Subcommittee on Antitrust and Monopoly in 1959 to the high profits realized by some pharmaceutical companies from manufacture and sale of certain patented ethical drugs, including tranquilizers. This led many to urge the Government, a buyer of large amounts of such drugs, to realize substantial savings through purchases from manufacturers in Italy, where no patent protection is offered to such pharmaceuticals.
. Garter first learned of the Government infringement in June 1960. In November 1965 it filed administrative claims with the infringing governmental agencies, but these agencies were unable or unauthorized to handle such claims. In September 1967 it commenced an action in the Court of Claims, see 167 U.S.P.Q. 667.
. “Th’ invention all admir’d, and each, how hee
To be th’ inventor miss’d; so easie it seem’d,
Once found, which yet unfound most would have thought impossible.”
Milton, Paradise Lost, Book YI, lines 498-501.
. Of course we do not know whether any of them were in fact consulted independently by the Examiner. One reference which we do know was cited by the Examiner against the application, though not cited in the original application (Adkins and Billica, “The Hydrogenation of Esters to Alcohol 25-150°,” 70 Journal of the American Chemical Society 3121-25 (1948), see Carter’s Supplemental Argument, supra, p. 6, was added to the application by an amendment ordered by the Examiner in an office action on August 3, 1953. It is unlikely that the Examiner would similarly cite references which he had consulted and found irrelevant.