Becton, Dickinson & Co. v. Sherwood Medical Industries Inc., 72-3599

Decision Date28 July 1975
Docket NumberNo. 72-3599,72-3599
Parties, 1975-2 Trade Cases 60,432 BECTON, DICKINSON AND COMPANY, Plaintiff-Appellant-Cross Appellee, v. SHERWOOD MEDICAL INDUSTRIES INC., Defendant-Appellee-Cross Appellant.
CourtU.S. Court of Appeals — Fifth Circuit

Page 514

516 F.2d 514
187 U.S.P.Q. 200, 1975-2 Trade Cases 60,432
BECTON, DICKINSON AND COMPANY, Plaintiff-Appellant-Cross Appellee,
v.
SHERWOOD MEDICAL INDUSTRIES INC., Defendant-Appellee-Cross Appellant.
No. 72-3599.
United States Court of Appeals,
Fifth Circuit.
July 28, 1975.

Page 515

John F. Corrigan, Jacksonville, Fla., Kane, Dalsimer, Kane, Sullivan, Kurucz & Goldstein, New York City, Leon Jaworski, Jefferson D. Giller, Houston, Tex., for plaintiff-appellant.

George L. Hudspeth, Jacksonville, Fla., Stanley N. Garber, St. Louis, Mo., William J. Stellman, Chicago, Ill., for defendant-appellee.

Appeals from the United States District Court for the Middle District of Florida.

Before BROWN, Chief Judge, and COLEMAN and DYER, Circuit Judges.

JOHN R. BROWN, Chief Judge:

In the midst of today's turbulent world, we have before us two prominent medical supply firms Becton, Dickinson and Company (B-D) and Sherwood Medical Industries, Inc. (Sherwood) controverting who has the right to manufacture and sell the most efficient system of blood letting. Shortly after World War II, B-D patented a device, the Vacutainer, which partially solved the problem of taking multiple blood 1 samples without risking blood coagulation, or having to puncture the body walls more than once. 2 Recently, both B-D and Sherwood marketed devices advertised as solving the last piece of the problem. On appeal, B-D hopes to preserve the patent-monopoly recently lost by the combination of its Vacutainer patent's expiration and the rulings below that (i) its latest devices are not validly patented, and (ii) even if they are, Sherwood's device does not infringe those patents. After carefully reviewing the record, we find ourselves in agreement with the District Court's result, except insofar as it found B-D chargeable with conduct amounting to fraud on the Patent Office. 3 The uphsot is that Russo-Halligan, No. 3,494,352, and Nehring, No. 3,469,572, are held to be invalid.

The essential feature of B-D's Vacutainer system is the receptacle which holds the collecting tube. Each collecting tube 4 is partially evacuated, and sealed with a rubber-like stopper. A double needle-ended cannula 5 is affixed in, and passes through the end of the holder which is slightly bigger than the

Page 516

collecting tube. Thus, the holder serves as a guide, so one end of the needle can penetrate the patient's blood vein, while the other penetrates the rubber stopper of the tube. The combination of the patient's blood pressure and the tube's partial vacuum causes blood to be drawn into the sampler tube. The collecting tube's stopper is self-sealing so that, when the tube is withdrawn from the holder, no blood is lost from it.

A second sample can be obtained by inserting a second collecting tube in the holder until its stopper is fully penetrated by the "rear" end of the cannula. A second body-penetration is avoided.

Of course, the flaw in the operation was long known the patient's blood pressure causes the blood to spill from the cannula while no collecting container is attached. While no serious physical consequences are likely to result from the loss of blood, the significantly detrimental psychological effects are obvious. A number of means for preventing spillage were tried. These need not be related in detail, except to say they proved unsatisfactory either because (i) too costly, (ii) too unreliable, (iii) to awkward for use by relatively unskilled technicians, or (iv) too complex for one person to operate.

All three devices involved in this suit avoid those objections. All three incorporate valve means which are "automatic" in the sense the blood flow is stemmed by the operator's removing the collecting tube from the rear needle further manipulation is not required. Further, the construction of each is inexpensive enough to permit their being discarded after one use. B-D holds patents on two of these, Russo-Halligan 6 and Nehring 7 devices. Sherwood manufactures and sells the third, the "M-214", which is not patented.

Thus, the state is set for the classical patent-battle: B-D sues Sherwood for infringing its patents, Sherwood (i) denies, asserting that both patents are invalid (for a multitude of different reasons) or not infringed, and (ii) counterclaims for attorneys' fees 8 and antitrust 9 treble damages. 10

Too Many Cooks

Russo-Halligan Falls

Patent-monopoly protection is designed to reward the creativeness deemed by the Founding Fathers to be of value to the Republic, U.S.Const. art. I, § 8, cl. 8. As a corollary, the rule is patent protection may not issue in favor of persons not responsible for the creation of advances otherwise qualifying for the specified protection. Iowa State University Research Foundation v. Sperry Rand Corp., 1971, 4 Cir., 444 F.2d 406; 35 U.S.C.A. §§ 102(f), 256. B-D conceded on oral argument that the Russo-Halligan patent cannot be sustained if the District Court was correct in sustaining Sherwood's contention that half the team (namely Russo) did not participate in conceiving the invention.

Before we resolve that question, we turn to B-D's argument it is entitled, because of the issued patent, to a presumption of joint inventorship which may only be overcome by a quantum of evidence greater (though we are not told how much greater) than a mere preponderance of the evidence. We think it is clear B-D is entitled to a presumption of joint inventorship, as a part of the general presumption of the patent's validity as a whole. Simply introducing the patent

Page 517

establishes a prima facie case in favor of B-D.

We decline to pass on the accuracy of B-D's contention beyond that, however, because we think the evidence before the Trial Court was such that it was entitled to reach its conclusion upon any standard B-D could be taken as asserting. 11 Briefly, the Court had three evidentiary touchstones for its conclusion. First, depositions of both Russo and Halligan in which each explained the project's development. Second, a free-hand drawing 12 Halligan made in 1964 about a year before Russo was employed by B-D, and explained in Halligan's deposition. Third, the technological background and experience of each as reflected in these depositions.

It is apparent from examining Halligan's drawing and the portion of his deposition explaining it, that the essential mechanical means had been conceived when the drawing was made. His deposition shows that his experience with blood sampling devices was substantial that he was familiar with the problem that had to be overcome, acquainted with earlier efforts to overcome it, and most important, regularly concerned with doing so. On the other hand, Russo's involvement was limited to depicting Halligan's idea. His background includes a Bachelor of Arts Degree in Industrial Design from the Rhode Island School of Design and pre-B-D experience limited primarily to toy design. Though both men were asked to identify specific contributions made by either one to the sampler's development beyond those shown by the drawing to be already extant neither was able to do so. In short, viewing all these things together, we are left with the firm and definite impression that the Trial Court had ample...

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