26 F.2d 780 (8th Cir. 1928), 7989, Larson v. Crowther

Docket Nº:7989.
Citation:26 F.2d 780
Case Date:May 14, 1928
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit

Page 780

26 F.2d 780 (8th Cir. 1928)




No. 7989.

United States Court of Appeals, Eighth Circuit.

May 14, 1928

Page 781

Appeal from the District Court of the United States for the District of Minnesota; John B. Sanborn, Judge.

A. C. Paul, of Minneapolis, Minn. (Paul, Paul & Moore, of Minneapolis, Minn., on the brief), for appellant.

Frank A. Whiteley, of Minneapolis, Minn. (John H. Ruckman, of Minneapolis, Minn., on the brief), for appellee.

Before LEWIS and KENYON, Circuit Judges, and KENNEDY, District Judge.

KENYON, Circuit Judge.

Early in 1918 appellant, Larson, and appellee, Crowther, filed applications in the Patent Office for patents upon process and apparatus hereinafter described. The Crowther applications were first filed, closely followed by those of Larson. In a general way it may be said that the process of which each claimed to be the original inventor was based on the idea of the disrupting or destroying of bacteria by subjecting the same to a gas, such as carbon dioxide, which would go into solution readily at high pressure, and when the organisms were impregnated therewith to suddenly release the pressure, causing the organisms to burst and be diffused. The apparatus devices on which patents were sought were to carry out and make practical this process.

While the result sought by Larson was the obtaining or vaccine in a colloidal or fluid state, less likely to absorption by the phagocytes, and Crowther was seeking a process of sterilization, the applications of both for patents substantially embodied the same ideas of invention.

From Larson's application for process patent we quote:

'The object of this invention is to provide a process or method of treating bacteria to obtain the antigenic principle thereof for use in the preparation of vaccines, or material to be used for purposes of immunization. * * *

'I claim as my invention:

'1. A process of making vaccine or immunizing material, consisting in subjecting the bacteria, held in suspension in a fluid having the quality of entering the bacterial cell by osmosis, to gas under pressure in such fluid, and then drawing off the mixture and liberating the gas, thereby killing and disrupting

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the bacteria and releasing the contents of the cells. * * *

'8. Immunizing material or vaccine, in a colloidal or fluid condition, consisting of bacteria disrupted by internal gas pressure.'

Crowther states in his application the object of his process as follows:

'1. The process of sterilizing, which consists in subjecting material to a gas which is inert with relation to the material being treated under pressure for a period of time sufficient to cause the organisms in the material to become saturated, and then suddenly releasing the pressure, whereby the sudden expansion of the gas within the organisms will disrupt the same.'

The claims of invention in the application for apparatus patents are very similar. Claims 1 and 5 of the Larson application are fair examples thereof. They are as follows:

'I claim as my invention:

'1. An apparatus of the class described, comprising a receptacle for fluid containing bacteria having means for connection with gas under pressure and soluble in said fluid, a gas expansion chamber having inlet and outlet ports and means for normally closing said inlet port, and means for conducting mingled gas and bacterial fluid to said inlet port for delivery to and release in said chamber when said closing means is opened. * * *

'5. An apparatus of the class described, comprising a receptacle for fluid containing bacteria having means for connection with gas under pressure and soluble in said fluid, and a gas expansion chamber having means for admitting mingled gas and bacterial fluid thereto, for the purpose specified.'

Interferences were declared in the Patent Office. The first hearing was on the apparatus interference. The Examiner of Interferences awarded priority of invention of the subject-matter of Crowther, holding that he had actually made all the devices which led up to and culminated in the invention, and that the problem was purely a mechanical one, namely, 'that of treating a liquid with a gas under high pressure, and suddenly releasing the pressure, so as not to lose the liquid.' This decision of the Examiner of Interferences was appealed to the Board of Examiners in Chief, which board reversed the action of the Examiner of Interferences and awarded priority of invention to Larson. The board in its opinion stated that Crowther undoubtedly had some idea of sterilizing food by the use of gas under pressure as early as 1912, and that he may have had in mind for such purpose carbon dioxide, as well as other gases. It found that Crowther was unworthy of belief, which opinion was based upon Crowther's testimony regarding tests upon meat or rubber in February or March, 1917, and also his testimony that a tank of carbon dioxide had been sent to his room at the Dental School of the University of Minnesota by Larson, and that he had used the same in experimental tests in developing his process. Crowther was unable to produce other testimony than his own as to this matter, and the Board of Examiners found that no such tank was furnished. They also found that the apparatus was closely tied to the original process for the carrying on of which it was originated, and that it was merely ancillary to the plan of invention; that Larson was the employer and Crowther the employee, and that therefore the invention inured to the employer.

After this decision Crowther petitioned the Commissioner of Patents to remand the apparatus interference to the Examiner of Interferences, with instructions to reopen the same on account of additional evidence. This was granted, and the apparatus and process interferences were heard together. New evidence was introduced, and the acting Examiner of Interferences in his opinion said:

'Since the Board of Examiners in Chief rendered the decision above referred, not only has additional evidence been introduced into this case, but considerable evidence has been adduced in the companion interference, No. 44049, which is believed to give new and additional light relative to the matters in controversy. The former decision of the Board of Examiners in Chief is therefore not regarded as controlling as to findings of fact and particularly as to matters relating to the process invention. After an examination of all the evidence now in the case it is held that Crowther is entitled to prevail.'

Both interferences were decided in favor of Crowther. The case involving both interferences was then appealed to the Board of Examiners in Chief. This board again reviewed the evidence in an extended opinion, and held that long prior to Larson's conception 'Crowther had conceived the idea of employing a gas which, like carbon dioxide, will be taken into the liquid and from thence into the organisms contained therein in considerable quantities, under such pressure as to cause disruption of the organisms upon sudden release of the external pressure,' and referred to dates on which experiments were performed by him, and also to the tank containing carbon dioxide used for experimental purposes in Crowther's room at the University, concerning which, under the new evidence,

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they reached a different conclusion than in their former opinion in the apparatus interference. They sustained the decision of the examiner of interferences awarding priority of invention both as to apparatus and process to Crowther. Appeal was taken by Larson from this decision to the Commissioner of Patents, and the decision of the Examiner in Chief was affirmed by Acting Commissioner of Patents Fenning. In his opinion he stated:

'The issue of this interference is a process, and I am satisfied its conception lay with Crowther. Its development into practical workability was accomplished by Crowther with the technical assistance of Larson. The two men worked together on a common problem, and, as Crowther frankly admits, he had to leave to Larson the determination of the technical bacteriological result. What Larson did was as an assistant in developing the Crowther invention.'

Up to this stage of the proceedings the three tribunals of the Patent Office were in accord in awarding to Crowther priority of invention, both as to process and apparatus. Appeal was taken by Larson to the Court of Appeals of the District of Columbia, and that court reversed the conclusion of the Patent Office, holding that the invention was conceived by Larson; that Crowther was his employee, and that the evidence was insufficient to overcome the presumption that the invention was that of the employer. Larson v. Crowther, 1 F.(2d) 761, 55 App. D. C. 58. The court evidently gave great weight to the fact that Larson was a trained scientist and bacteriologist, and concluded that Crowther was merely a skilled mechanic, with no knowledge of bacteria and incapable of inventing the claimed process, as appears from the following language of the opinion: 'That Crowther, the skilled mechanic, with no knowledge of bacteria or of their absorption of gases, conceived, unaided and without experimentation, their destruction by suddenly releasing gas pressure imposed upon them, simply means the plucking of that conception out of the blue. That he did so we consider highly improbable, if not incredible.'

The decision of the Court of Appeals of the District of Columbia and judgment there entered was not final. It is interlocutory, and is 'to govern the further proceedings in the case.' Frasch v. Moore, 211 U.S. 1, 29 S.Ct. 6, 53 L.Ed. 65. Its adjudication is binding only on the...

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