Becton Dickinson & Co. v. RP Scherer Corp.

• Decision Date: 06 April 1954
• Docket Number: No. 11798.,11798.
• Parties: BECTON DICKINSON & CO. v. R. P. SCHERER CORP. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

211 F.2d 835 (1954)

BECTON DICKINSON & CO. v. R. P. SCHERER CORP. et al.

No. 11798.

United States Court of Appeals, Sixth Circuit.

April 6, 1954.

David S. Kane, New York City (Arthur C. Beaumont, Whittemore, Hulbert & Belknap, Detroit, Mich., on the brief; Kane, Dalsimer & Kane, Daniel H. Kane, Haynes N. Johnson, New York City, Toner, Crowley, Woelper & Vanderbilt, E. Edward Toner, John A. Ackerman, Newark, N. J., of counsel), for appellant.

Will Freeman, Chicago, Ill. (Bair, Freeman & Molinare, Chicago, Ill., on the brief; W. M. Van Sciver, Chicago, Ill., Marco & Marco, Paul Marco, Phillip Marco, Detroit, Mich., of counsel), for appellee.

Clair V. Johnson, Newfane, Vt. (Marco & Marco, Paul Marco, Detroit, Mich., on the brief; Clair V. Johnson, Newfane, Vt., Phillip Marco, Detroit, Mich., of counsel), for intervenor-appellee.

Before SIMONS, Chief Judge, and ALLEN and McALLISTER, Circuit Judges.

ALLEN, Circuit Judge.

This is an appeal from a judgment entered in a declaratory action wherein appellant prayed that Patent No. 2322245, issued to Lockhart on June 22, 1943, and Patent No. 2380534, issued to Lockhart July 31, 1945, for hypodermic injectors called "hypospray" patents be held void for fraud and that appellant's contracts with reference thereto be held null and void and rescinded and cancelled and that the court declare that appellant's needleless hypodermic devices do not infringe. It also attacked the validity of both patents. The District Court found that fraud was not proved, denied the relief sought and dismissed the action, 106 Fed.Supp. 665.

Appellant, owner of the patents in suit, manufactures hypodermic syringes and other medical and pharmaceutical equipment and appellee Scherer Corporation, herein called "Scherer," exclusive licensee of the patents in suit, manufactures gelatine capsulated medicaments and vitamins. Appellee Marshall L. Lockhart, patentee of both patents, on August 11, 1944, granted to the predecessor of Scherer an exclusive license to manufacture, use and sell the hypospray inventions. On June 7, 1947, appellant contracted to purchase Lockhart's whole right, title and interest in and to the hypospray patents, inventions and applications, subject to the outstanding license to Scherer. In the spring of 1948, appellant alleges, it learned that Lockhart was not the original inventor of the patents. It then requested Scherer to acquiesce in a disclaimer of certain claims of the first patent, but this application was declined and appellant instituted the present action against Scherer. Lockhart intervened during the course of the trial.

The case arises out of the following facts: In 1932 Arnold K. Sutermeister, a mechanical engineer, who had noticed that jets of fluid under high pressure from Diesel engines enter a hand or arm without visibly breaking the skin, began working upon the conception of hypodermic injection without a needle and built a device for that purpose. His physician referred him to the College of Physicians and Surgeons of Columbia University, where Sutermeister met Dr. John F. Roberts, who during 1933 and 1934 cooperated with Sutermeister in building a second device for injection without a needle, experimenting with paper, live animals, and dead and living human tissue. In 1935 Roberts, as a part of his work for a medical degree, wrote a preliminary report and a final thesis describing Sutermeister's original device, the second machine, and their experiments therewith. The thesis was filed in the library at Columbia University and thus made available to the public. A physician at Columbia University introduced the idea of needleless injectors to Cambridge Instrument Company, of Ossining, N. Y., hereinafter called "Cambridge." A copy of Roberts's thesis was sent to Cambridge and assigned around the fall of 1935 to Howard Fawcett for study. Appellee Lockhart at the same time was employed as a consultant at Cambridge, where he occupied a desk in the same room as Fawcett and learned from him of the thesis and the experiments by Roberts and Sutermeister.

Fawcett says that Lockhart suggested that Cambridge was "on the wrong track" because of the "bulky apparatus." In the fall of 1935 Lockhart secured Leslie Gillett to work with him on a device which would solve the problem. Later Michael Picciano, a chemical engineer, was associated with Lockhart and Gillett and an instrument was built according to Lockhart's instructions. Early in 1936, on his attorney's advice, Lockhart applied for a patent on this apparatus in his own name. Gillett and Picciano were angry, severed their association with Lockhart, and reported the transaction to Packard, vice president of Cambridge. Gillett and Picciano did nothing thereafter with the idea.

A number of the claims in the application for Patent No. 2322245 filed by Lockhart were repeatedly rejected by the examiner. On appeal to the Board of Patent Appeals the decision of the examiner was reversed and the patent was issued to Lockhart. Appellant contends that in securing this patent Lockhart executed a false oath and thus committed two frauds upon the Patent Office. Under Title 35 U.S.C. § 35, in effect in 1936,¹ the inventor was required to make oath "that he does verily believe himself to be the original and first inventor or discoverer of the art, machine, manufacture, composition, or improvement, or of the variety of plant, for which he solicits a patent; that he does not know and does not believe that the same was ever before known or used; and shall state of what country he is a citizen." Lockhart's oath was made in compliance with this statute. Appellant urges that Lockhart secured the basic concept of "needleless high pressure injection" from Fawcett, from Roberts's thesis, and from the work of Roberts, Sutermeister and Cambridge, and frequently claimed it as his own in prosecuting his patent application before the Patent Office. It also contends that Lockhart applied for a patent on devices to be activated by chemical reaction and explosion knowing that Gillett and Picciano were the inventors, or at least co-inventors, with him. It states that the decision in Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 65 S.Ct. 993, 89 L.Ed. 1381, requires it to bring this unusual action against its exclusive licensee Scherer. In that case the Supreme Court declared that the owner of a patent owes it to the public to do all within its power to expose a fraud committed on the Patent Office.

On the issue of fraud, both as to the Roberts and Sutermeister and Cambridge devices and as to the claimed co-invention of Gillett and Picciano, the District Court found that fraud was not proved. This is a finding of fact and binding on this court if not clearly erroneous.

With reference to the claim that Lockhart appropriated the ideas of Roberts and Sutermeister and fraudulently claimed them as his own, the District Court pointed out that in the file wrapper of Patent No. 2322245 Lockhart and his attorneys "came dangerously close to claiming that Lockhart was giving the world the `needleless' Hypospray injector for the first time. * * *" The file wrapper repeatedly emphasizes the fact that the device is an injector without a needle and stresses the advantage to the patient due to elimination of fear and pain which attend the use of the needle. For instance, in discussing the Doyen patent cited against Lockhart by the examiner, the file wrapper states that "To get away from this hollow needle and the pain occasioned by insertion thereof through the epidermis, applicant has devised a new method of injection, which is clearly not met by Doyen nor by any of the other references of record."

Fairly read, however, we think the file wrapper statements as to the advantages of injectors without a needle are applicable in each instance to the particular device and, as the District Court found, to the particular claim being discussed. The examiner cited no patent disclosing the needleless injector. Moreover, Lockhart's statements in the application are not limited to the needleless injector. They also stress the conception of the various means of generating the necessary pressure, such as a spring, a cartridge, or chemical reaction, and particularly emphasize the highly practical form of the device, whose structure makes possible simple and efficient sterilization, safety, interchange of medicaments, precise control of dosage, and predetermined high pressure, all of which are shown by this record not to have been secured in the devices of the prior art.

The objects of the invention described in the specification and printed in the margin stressed these advantages as well as that of the elimination of the needle.²

Also, if Lockhart's application had disclosed an apparatus substantially similar in structure, operation and function to those of the prior art, appellant would have presented a more tenable case. The fact that one feature of the device is shown to have existed in former devices in the same field is not conclusive of fraud if the circumstances taken together show that the inventor believed that his particular device was new and different from the machines which preceded it. The fact that the machines actually were different is material upon the question of fraud, for if there is a substantial difference this indicates that the device is new and that the appellant in good faith believed it to be new and different. Lockhart was presumed to have knowledge of whatever he produced that was actually first invented and constructed or used by another in the United States or was previously patented or described in a printed publication in any country after having been invented by another. Mast, Foos & Co. v. Stover Manufacturing Co., 177 U.S. 485, 494, 20 S.Ct. 708, 44 L.Ed. 856; Duer v. Corbin Cabinet Lock Co., 149 U.S. 216, 223, 13 S.Ct. 850, 37 L.Ed. 707. The needleless injector according to...