161 F.2d 981 (7th Cir. 1947), 9040, Kalo Inoculant Co. v. Funk Bros. Seed Co.
| Date | 12 June 1947 |
| Docket Number | 9040,9041. |
| Citation | 161 F.2d 981,74 U.S.P.Q. 1 |
| Parties | KALO INOCULANT CO. v. FUNK BROS. SEED CO. (two cases). |
| Court | U.S. Court of Appeals — Seventh Circuit |
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J. Bernhard Thiess, Sidney Neuman and M. Hudson Rathburn, all of Chicago, Ill., for appellant Kalo.
H. A. Toulmin, Jr., and D. C. Staley, both of Dayton, Ohio, and Bernard A. Schroeder, of Chicago, Ill., and Toulmin & Toulmin, of Dayton, Ohio, for appellee Funk.
Before EVANS and MAJOR, Circuit Judges, and LINDLEY, District Judge.
LINDLEY, District Judge.
Plaintiff, manufacturer and vendor of bacterial inoculant for leguminous plants, brought suit for infringement of patent to Bond No. 2, 200, 532, issued May 14, 1940, on application filed August 24, 1938, and assigned to plaintiff, against defendant, wholesale and retail dealer in certain leguminous inoculants, alleged to be infringing products manufactured by The Agricultural Laboratories, Inc., of Columbus, Ohio, who assumed control and direction of the defense. The District Court adjudged the claims upon which plaintiff relied
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invalid for want of invention, finding, however, that, if they were valid, defendant infringed. The court dismissed defendant's counterclaim for declaratory judgment of invalidity of all claims of the patents, including those in suit. Plaintiff appeals from the judgment of invalidity and defendant from the dismissal of its cross-complaint.
The essential facts, as reflected by the court's findings, are not largely in dispute. The patent contains 14 claims. Those in suit 1, 3, 4, 5, 6, 7, 8, 13 and 14 and 2, not in suit, are product claims. 1 The others, 9, 10, 11 and 12, are process or method claims. The patent is entitled 'Bacterial Inoculant for Leguminous Plants.' Its descriptive matter includes recital of scientific facts, then known to scientists delving in the art, and prescribes certain old conventional tests necessary in successful production of bacteria for leguminous plants. The claims cover a composite culture in which are included a plurality of species of bacteria belonging to the general Rhizobium genus, carried in a conventional base. The claim of invention rests primarily upon the fact that each separate culture of the several different species included in the composite inoculant is unaffected by the presence of others in its ability to fix nitrogen in the leguminous plant for which it is specific. It is undisputed that bacteria of this genus promote nitrogen fixation in leguminous plants and are found in nature. The precise mechanism of nitrogen fixation is not understood, but it has been well known for many years that it can be achieved only when the plant grows in symbiotic relationship with certain bacteria of the genus. Leguminous plants capable of such relationship with Rhizobia include peas, beans, alfalfa, red clover, white clover, vetch, lupines and others. When nitrogen is collected or fixed, it appears in the form of nodules on the roots of the plants; the bacteria infect the roots, causing formation of the nodules in which nitrogen fixation occurs. Scientists have known for a long time that Rhizobium bacteria promote nitrogen fixation when a certain species or strain of the same is applied in symbiotic relationship to the leguminous plant of the cross inoculation group to which the particular species or strain is specific. Manufacturers of inoculants have, for a long time, taken these bacteria as found in nature, where they perform this nitrogen fixation, and, by well known laboratory methods of culture, increased their number, changing in no way their shape, form or characteristics, physiologically or otherwise, placed them in a powder or liquid base, as a carrying medium, and sold them for use by agriculturists in the inoculation of leguminous plants. Bond claims to be the first successfully to combine different species of the genus in one composite product so that each species will continue to perform its functions when brought into its proper symbiotic relationship. In other words, a specific species of the genus Rhizobium, functioning with its corresponding species of legume in an inoculant for its specific species of legume had, as we have said, been successfully produced and used with desirable results. As to the facts thus far related, we think there is no substantial dispute.
Bond does not claim to have invented any new species of Rhizobium bacteria but, as the District Court found, he discovered that among the bacteria found widely spread in nature there exist not only mutually inhibitive species but also mutually noninhibitive strains which can be selected and isolated and, when so selected, isolated and combined, continue to perform the same functions that they do in nature. The method of culture of single strains of bacteria described in Bond's patent and his method of placing bacteria in a carrying medium or base were well known in the art. So, too, was the proper character of the base or carrying medium. In fact, Bond's claim of invention arises from his averment of discovery that, though in the bacteria genus Rhizobium some species, when combined with others, had an injurious or adverse effect upon each other,
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when properly selected and combined, certain of them were noninhibitive of each other. This inhibitive character of certain species was already known to scientists, but, he added to that knowledge his own discovery, as a result of empirical tests, that there are also strains or species of bacteria involved which are noninhibitive of others, in other words, that there are noninhibitive cooperative strains as well as inhibitive, destructive strains. Thus he said: 'It has heretofore been considered impractical to prepare a composite inoculant containing organisms which will cause nodulation on more than one of the cross inoculation groups. This has not been done because it was generally believed that one species produced an inhibitory effect on another species within the same culture, whereby symbiotic nitrogen fixation by the plant and the organism was inhibited or even prevented.' His teaching was that he could, by conventional tests, delete the inhibitive strains and retain the noninhibitive ones and that these, when combined, could be put into a composite inoculant where the same desirable results could be achieved by each appropriate species of bacteria as would be accomplished if only a single species of bacteria were included in the inoculant. Upon this we think the question of invention hinges.
The District Judge though invention was not achieved, saying that he found the claims invalid because they did not involve invention or discovery of any new or useful art. This, he said, he did 'with reluctance, ' as he was impressed with the very 'great diligence and ingenuity' of Bond and with the results he had achieved. But, though Bond's work was not to be minimized, the Judge believed it could not be classified under any subject defined as patentable by the congressional act. However, he made a specific finding that Bond did discover that there exist in nature noninhibitive strains and that these noninhibitive strains may be selected, isolated and combined and still perform satisfactorily their ordinary desirable functions. Upon this finding there was controverted evidence, but our examination of the record is convincing that the supporting the finding is rather conclusive and that there is no justification for us to declare the District Court in error in making it. Consequently the specific question which now confronts us is whether, upon the finding of fact, the court erred in concluding that, under the law, Bond made nothing patentable.
We have previously said that Bond recognized everything that had been done by scientists delving in this art prior to his application. He knew that bacteriologists were well informed as to the conventional tests and the essentials of development of a bacterial culture and possessed all the knowledge necessary to successful isolation and culture of bacteria. He recognized that prior delvers in the art were aware of proper media for lodgment and distribution of cultures fully developed and ready for commercial use. He made no claim to have discovered in nature any species of bacteria not previously known. He knew that the different species properly suitable for the several functions to be performed had been thought to be mutually inhibitive. He did discover the fact, as the court found, that there are strains proper for the desired purpose of combination which possess no antagonistic characteristics which, when combined, do not tend to suppress the growth of any of other species, all of which, when combined, develop in wholly noninhibited, unimpeded growth. He emphasized the fact that composite inoculants had not been successful previously and that this was generally but erroneously thought to be because the various strains when combined always inhibited each other.
This, he said, was the status of the art when in June, 1937, he first discussed with the president of his company the possibility of the manufacture of a practical composite or mixed leguminous culture. He was familiar at that time with adverse opinion of authorities in the field in regard to mixed cultures. During that summer he attended the University of Wisconsin and there investigated the literature in the library of the College of Agriculture. In his research he found adverse references to the use of mixed cultures containing more than one species of leguminous organisms and learned that it had been publicly reported that when two or more different species were mixed, they had a definite
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antagonistic effect upon each other which reduced their ability to benefit the host plant. He testified that he found nothing to indicate that anyone had ever thought that there were in existence strains or species...
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