Smith, Kline & French Laboratories v. Clark & Clark

• Decision Date: 06 August 1946
• Docket Number: No. 9048.,9048.
• Citation: 157 F.2d 725
• Parties: SMITH, KLINE & FRENCH LABORATORIES v. CLARK & CLARK et al.
• Court: U.S. Court of Appeals — Third Circuit

157 F.2d 725 (1946)

SMITH, KLINE & FRENCH LABORATORIES v. CLARK & CLARK et al.

No. 9048.

Circuit Court of Appeals, Third Circuit.

Argued April 18, 1946.

Decided August 6, 1946.

Rehearing Denied October 17, 1946.

Arthur G. Connolly, of Wilmington, Del. (Morton C. Haight, of Pitman, N. J., Nelson Littell, Hammond & Littell, V. Alex Scher, and Richards & Geier, all of New York City, on the brief), for appellants.

George J. Harding, of Philadelphia, Pa. (Grover C. Richman, Sr., of Camden, N. J., George A. Smith and Busser & Harding, all of Philadelphia, Pa., on the brief), for appellee.

Before BIGGS and O'CONNELL, Circuit Judges, and GOURLEY, District Judge.

BIGGS, Circuit Judge.

The suit at bar was brought by Smith, Kline & French Laboratories (SKF), a Pennsylvania corporation, against Clark & Clark (Clark), a New Jersey corporation, and Charles L. Morris and Robert Brinton Morris, citizens of New Jersey, trading as Professional Laboratories (Laboratories) and others who need not be named here.¹ Two causes of action are alleged in the complaint. SKF charges that Clark and Laboratories infringed the two claims of Alles' Patent No. 1,879,003 issued on September 27, 1932, upon an application filed on September 2, 1930; SKF also asserts that Clark and Laboratories are guilty of unfair competition. Clark and Laboratories filed an answer denying the validity of the patent or that they had infringed it, denied any unfair trade practices and asserted by way of counterclaim that SKF itself was guilty of unfair competition.

The court below found that the patent was valid and that claim 1 was infringed.² It also found Clark and Laboratories guilty of unfair competition. Dismissing the counterclaim, it issued an injunction and ordered an accounting. See D.C., 62 F. Supp. 971-1012. Clark and Laboratories have appealed. We will deal first with the patent and next with the questions of unfair competition.

The Patent Case

The patent deals with "Salts of 1-Phenyl-2-Aminopropane". 1-phenyl-2-aminopropane is also known as amphetamine³ and phenylisopropylamine. The specification states, "This invention relates to a new composition of matter useful for therapeutic purposes. The composition of matter of my present invention consists of a salt of 1-phenyl-2-aminopropane, C6H5 CH2CH (CH3) NH2, with an acid. Various acids may be used, the most useful being hydrochloric or sulphuric. The salts of this 1-phenyl-2-aminopropane are physiologically active and produce effects in animals and man similar to the effect of the salts of ephedrine. * * *" There follows a description of a method of making salts, including the hydrochloride and the sulphate, which need not be set out here. The patent contains only two claims, as follows: "1. As a new composition of matter, a salt of 1-phenyl-2-aminopropane.", and "2. As a new composition of matter, the hydrochloride of 1-phenyl-2-aminopropane."

On August 29, 1934 Alles filed a disclaimer disclaiming "so much of claim 1 * * * as is in excess of the following: `As a physiologically active therapeutic agent capable of producing effects in animals and man similar to the effect of salts of ephedrine, a salt of 1-phenyl-2-aminopropane.'", and disclaiming "so much of claim 2 * * * as is in excess of the following: `As a physiologically active therapeutic agent capable of producing effects in animals and man similar to the effect of salts of ephedrine, the hydrochloride of 1-phenyl-2-aminopropane.'"

It is very difficult to evaluate the patent or to determine the impact of the disclaimers on the claims. The fact is that Alles by his specification and by his disclaimers claims effects. The claims of a patent must be read in the light of its specifications.⁴ A patentee can add nothing to a claim by a disclaimer.⁵ A patentee may not claim effects for a new composition of matter. The reason that a patentee may not claim effects for a chemical compound is that the compound works its effects by virtue of its nature and not by reason of any claim made for it by the patentee. It is also established that a patent may not issue for a new use discovered for an old composition of matter.⁶ A patent must be liberally construed, however, to sustain the just claim of the inventor. The principle last stated may not, however, be carried to the point to exclude what is in a claim or to interpolate new matter into it. Liberality of construction rather than strictness is the touchstone.⁷

We think that it would be unfair to destroy Alles' claim 1 because he has claimed effects by his disclaimer when, by reason of the rule that a claim must be read in the light of the specification, claim 1, even without benefit of the disclaimer, would preempt, if the claiming of effects were permissible, "As a new composition of matter, a salt of 1-phenyl-2-aminopropane, capable of producing effects in animals and man similar to the effect of the salts of ephedrine."⁸ But since Alles may not claim effects, claim 1 must stand precisely as printed in the patent, viz., "As a new composition of matter, a salt of 1-phenyl-2-aminopropane."

Alles, however, has not designated any particular salt of amphetamine in claim 1. His specification states that "Various acids may be used to create the salt, the most useful being hydrochloric or sulphuric." The adjective "Various" means "different; diverse; several; manifold * * *."⁹ Interpreting this language (as well as that employed in the disclaimers), the conclusion is inevitable that salts created by the reaction of some acids with amphetamine will have the ephedrine-like quality asserted by Alles but that other salts created by the reaction of other acids with amphetamine will not create salts which will work the desired effect. Since effects may not be claimed, not even experimentation, prohibited by R.S. § 4888, 35 U.S.C.A. § 33, would serve to designate the salts which Alles has claimed in claim 1. This would mean, if there was no alternative construction, that Alles claimed all salts of amphetamine without regard to their effects. Such a conclusion seems absurd for the specification itself shows that Alles lays great store on his discovery that amphetamine salts, particularly the hydrochloride and sulphate, have effects like those of the salts of ephedrine on both the central and the sympathetic nervous systems of animals and man. To hold a patent, based on effects attributed by the inventor to chemical compounds, valid, when the effects insisted on by him may not be claimed, seems unrealistic to a high degree.

Does a possible, albeit narrower, alternative in favor of the patent present itself and require acceptance? Construing claim 1 in the light of the specification may we read the second of the two salts named in Alles' specification, viz., the sulphate (the hydrochloric being already preempted by claim 2) into claim 1? In other words, may we treat amphetamine sulphate as a salt claimed in claim 1? We conclude that we may and should do so.¹⁰ Reading Alles' specification and claim 1 together we entertain no doubt that he intended to include amphetamine sulphate in the monopoly and that that compound is within the scope of the claim.

What then is the state of the prior art? This has been very fully discussed in the opinion of the court below. We will deal with it only to the extent that we deem it to be pertinent.

In 1887, Edeleano, a German scientist, prepared a paper for the Berichte der Duetschen Chemischen Gesellschaft (Ber. Dtsch. Chem. Gesell. 20:616, 1887), outlining a method for the preparation of phenylisopropylamine which, he asserted, had the formula, C6H5CH2CH (CH3) NH2. Cf. Alles' formula for 1-phenyl-2-aminopropane. We think the inference is possible that Edeleano actually prepared betaphenyl-isopropylamine. In any event Edeleano's phenylisopropylamine must be taken as the equivalent of Alles' base, viz., 1-phenyl-2-aminopropane, or amphetamine. SKF and Alles contend that Edeleano did not prepare either the hydrochloride or sulphate of amphetamine. The defendants assert, however, that since Edeleano concededly prepared the base amphetamine it would not constitute invention to prepare such simple salts as the hydrochloride or the sulphate from that base by the use of hydrochloric acid or sulphuric acid. There is the evidence of one of the defendants and of an expert employed by them that the preparation of amphetamine sulphate from amphetamine by the use of sulphuric acid is only "kitchen chemistry". There is testimony by Alles and other experts testifying on behalf of SKF, to the contrary.¹¹ While the question of what constitutes anticipation is one of law, as open for determination by this court as by the court below, the facts on which the legal defense of anticipation is to be based must be found by the court below. While there was evidence that amphetamine sulphate could be prepared from the base by any skilled chemist, there was also testimony that the creation of this salt could not be so easily accomplished. The question to be determined here was really one of fact to be resolved by the trial court in the light of the expert testimony.¹² We cannot say that the learned trial judge was in error in his conclusions as to Edeleano's disclosures. He found that Edeleano's work did not constitute anticipation of Alles' claim. He concluded that the preparation of salts of amphetamine could not be described accurately as "kitchen chemistry" or be accomplished by way of mere routineering. Moreover, Edeleano made no reference to amphetamine sulphate.¹³ To constitute anticipation a prior-art reference must disclose the composition of matter claimed.

Under these views it is unnecessary to discuss at length the Jones and Wallis monograph published in 1926 in "The Journal of the American Chemical Society" (J. Am. Chem. S. 48:169, January-June 1926) under the title "The Beckmann Rearrangement Involving Optically Active Radicals". Jones and Wallis reported the creation of the...