146 F.2d 941 (9th Cir. 1944), 10079, Vitamin Technologists v. Wisconsin Alumni Research Foundation

Docket Nº:10079.
Citation:146 F.2d 941, 64 U.S.P.Q. 285
Case Date:November 24, 1944
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

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146 F.2d 941 (9th Cir. 1944)

64 U.S.P.Q. 285







No. 10079.

United States Court of Appeals, Ninth Circuit.

November 24, 1944

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R. Welton Whann and Robert M. McManigal, both of Los Angeles, Cal., for Vitamin Technologists, Inc.

George I. Haight, Frank Parker Davis, and Ward Ross, all of Chicago, Ill. (Lewis W. Andrews, of Los Angeles, Cal., of counsel) for Wisconsin Alumni Research Foundation.

Before DENMAN, STEPHENS, and HEALY, Circuit Judges.

DENMAN, Circuit Judge.

Appellee Wisconsin Alumni Research Foundation brought its complaint below alleging that appellant Vitamin Technologists, Inc., and H. F. B. Roessler, one of appellant's employees, were making an infringing use of a process of producing vitamin D by activating ergosterol and yeast, claimed to be organic substances of dietary value, with the ultra violet rays of the spectrum, produced by a mercury vapor lamp, a use of the rays claimed to be in violation of one or another of three patents, Nos. 1, 680, 818, 1, 871, 136 and 2, 057, 399. Their filing dates are, respectively, June 30, 1924, December 27, 1926, and May 14, 1932. The patents were granted August 14, 1928, August 9, 1932, and October 13, 1936.

These patents were secured by Dr. Steenbock of the faculty of the University of Wisconsin and assigned to appellee. They are hereafter referred to as the first, second and third patents in the order of their dates of patenting. The second patent is claimed to be an extension in part of the first patent and the third patent such a continuation of the second. Infringements of product claims of the patents were also alleged.

Appellant answered claiming unclean hands, laches, invalidity of the claims on their face, and anticipation. The district court found the challenged claims valid and adjudged infringements by appellant both as to the process and its products and the court's interlocutory judgment ordered a perpetual injunction. This appeal followed. The district court also held that Roessler did not infringe, from which decision Wisconsin Alumni Research Foundation took an appeal. As to the latter appeal, our holding as to the invalidity of the patents requires an affirmance of the judgment.

The application for the first patent specifies the claimed discovery of a new process of producing vitamin D in such dietary substances by exposing them to the ultra violet rays of the spectrum. The process is of great value to mammalian animals, including human beings, and to poultry. Its contribution to the cure or amelioration of rickets is admitted by all the parties and proved by the testimony.

Many plant and animal foods of man and other animals contain no vitamin D, or less than is necessary in the diet composed of them, properly to support the bone forming functions of the body. Mammals whose food has this deficiency suffer from rickets. Many such foods, however, contain constituents called pro-vitamin D which when exposed to the ultra violet rays of the spectrum develop through their radiation the vitamin D in quantities sufficient to increase the body's bone metabolism.

This pro-vitamin, called a lipoid, is contained as a part of the fat-like material of some animal substances. Similarly in green vegetable material and in the oil of the meat of the coconut and certain other vegetable oils there exist such lipoids containing the pro-vitamin of vitamin D. In the ancient process of soap making from fatty materials there is an unsaponifiable part in

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which the pro-vitamin is mainly, if not entirely, contained.

The phrase 'organic substances of dietary value' of claim 1 of the first patent is much broader than the phrase 'foods customarily eaten.' If of dietary value the broader phrase covers yeast and activated unsaponifiable lipoids extracted from animal or vegetable foods, as described in the specifications of the first patent, as follows:

'In the oils and fats, it appears that the unsaponifiable constituents may be highly activated; and these unsaponifiable lipoids may be separated from the saponifiable fats. The activation of the lipoids may be effected either before or after separation from the saponifiable fats or constituents. For example, olive oil may be activated by subjecting it to the action of the ultra violet rays; the activated oil may be saponified by boiling it thirty minutes in a 20% solution of KOH in alcohol; the material may then be diluted with water; the unsaponifiable substances may be extracted with ether; the extract in ether may be washed; and the ether solution may be mixed with food and the ether evaporated, or allowed to evaporate. The result is to impart to the food the antirachitic property * * * . Other substances relatively rich in lipoids may be employed for the purpose of obtaining extracts, or concentrated activated material * * * .'

Several of the infringements found by the district court consist of appellant's use of the patent's claimed process of projecting ultra violet rays produced by a quartz mercury vapor lamp to irradiate and create vitamin D in ergosterol. Ergosterol is a concentrated extract of unsaponifiable lipoids, derived from animal and vegetable food substances. Other infringements held are in so activating such lipoids in yeast. The district court held on sufficient evidence that both ergosterol and yeast are 'organic substances of dietary value, ' as that phrase is used in claim 1 of the first patent. The possession and sale of the products of so processing ergosterol and yeast were also held to infringes.

A. The Success of the Monopoly of the Aid to or Cure of the Rachitic.

Appellee contends that all the claims obtain support from the commercial success of the monopoly granted. It describes the great number of children suffering from malformation of their bodies due to the defective bone metabolism. The record contains pathetic pictures of such malformations and statistics of the large numbers of such unfortunates. Other maturer sufferers are described, all proving the great numbers of afflicted who, ex necessitate if they are to use such a boon to humanity, have been customers of the licensees of appellee. From the appellee's business manager it appears that it was largely from need of the poor that the business was supported. He testified

'Q. In what classes of people do you find, according to your information, that rickets is more prevalent? A. It is my understanding that rickets is found to a great extent in the so-called poorer class of people.'

We take notice of the future continuance of the poor and of others afflicted and that such customers are excluded by the patents, if valid, from any unlicensed source of the remedy of foods so irradiated to contain vitamin D.

Dr. Steenbock's continuing interest in the management of appellee's business is apparent from his testimony regarding the refusal of licensing of the irradiation of oleomargarine, one of the foods of the poor, with the antirachitic vitamin D. His testimony in this regard is relevant to the issue, later considered, of an inequitable misuse of the monopoly of the patent as warranting the denial of equitable relief. Cf. Morton Salt Co. v. G. S. Suppiger Co., 314 U.S. 488, 492, 62 S.Ct. 402, 86 L.Ed. 363. It is

'Q. Do any of your licensees in this country irradiate or fortify oleomargarine under your process? A. No, - no, in general, we have been unsympathetic with those developments.'

Appellee has shown its receipts from its licenses to December 31, 1939, to be $7, 478, 558, of which Dr. Steenbock received or was allocated $760, 000. Under its vigorous business management the profits gradually increased and in the last five years of the period the amount of income from its licenses averaged $990, 000 per year. The larger payments of the afflicted to the licensees are not shown.

Part of the income is used for advertising to expand the business and profits and part of the remainder for research in natural science of an undisclosed character by the University of Wisconsin, a state of powerful vested interests in dairy enterprises, to which no profits from the declined

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oleomargarine irradiation afford support. An undisclosed part of Dr. Steenbock's share is used in scientific research. He states that other moneys he had received from the appellee are its payments to him for services to the Foundation after the transfer of the patents.

We agree that it has been shown that the monopoly on this aid or cure of the rachitic has been a commercial success which well warrants the consideration of the court. Apart from its legal implications, the large financial returns from such a profit-controlled monopoly barrier between the great numbers of the afflicted and their potent remedy is an interesting episode in the history of the law of patents. The testimony offered by appellee in this connection shows appellee's business manager's claim that its paid service of examination of some of the radiated foods tends to make a better product. Cf. Etyly Gasoline Corp. v. United States, 309 U.S. 436, 460, 60 S.Ct. 618, 84 L.Ed. 852. It may be observed that the same argument could be made for the monopolization of the production of quinine and digitalis.

However, we do not agree that such commercial success overcomes either the unclean hands and laches or the invalidity of the first two patents, later discussed.



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