Parke, Davis & Co. v. American Cyanamid Co.

• Decision Date: 30 October 1953
• Docket Number: No. 11719.,11719.
• Parties: PARKE, DAVIS & CO. v. AMERICAN CYANAMID CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

207 F.2d 571 (1953)

PARKE, DAVIS & CO. v. AMERICAN CYANAMID CO. et al.

No. 11719.

United States Court of Appeals Sixth Circuit.

October 30, 1953.

C. B. Zewadski, Detroit, Mich. (Whittemore, Hulbert, & Belknap, Detroit, Mich., on the brief), for appellant.

L. A. Watson, New York City (Harness, Dickey & Pierce, Arthur W. Dickey, Paul Marco, Detroit, Mich., Watson, Johnson, Leavenworth & Blair, John C. Blair, John T. Kelton, New York City, Harvey W. Edelblute, Stamford, Conn., on the brief), for appellees.

Before ALLEN, MARTIN and MILLER, Circuit Judges.

ALLEN, Circuit Judge.

This is a patent infringement suit based upon Patent No. 2,407,096 for antianemia vitamin products. Both claims of the patent are involved and are printed in the margin.¹ The District Court sustained a motion for summary judgment without opinion or findings of fact and held the claims not infringed by appellees' product for the reasons stated in the motion for summary judgment. The pertinent part of the motion reads as follows:

Grounds for the motion are that the claims of the patent in suit are not infringed by defendants' synthetic folic acid product for the following reasons:

1. The claims do not cover a product obtained by synthesis from discrete chemical compounds of known chemical structure by a method unrelated to and patentably different from the method described in the patent suit because:

(a) The patent specification discloses that the patented product (the chemical structure of which was unknown to the applicants) could be obtained only from a natural animal source.

(b) The patent specification states the broad aspects of the invention in terms limiting the invention to obtentions from natural animal sources in the statement:

"The above and other objects of the invention are attained by following the example obtaining the product from hog liver given below. The example is presented by way of illustrating the invention which, in its broader features, embodies use of other similar materials and equivalent procedures mentioned herein or which will occur to those skilled in the art."

(c) The procedure set forth in the patent in suit to obtain the product claimed by the patent has never been and is not susceptible of being commercially practiced.

(d) At the filing date of the application for the patent in suit, it was not known by the applicants how to synthesize from chemical substances of known structure a compound having the chemical, physical or biological characteristics of the product purported to be claimed in the patent in suit nor whether such a compound could ever be obtained except from a natural animal source.

2. The claims of the patent in suit are expressly limited to a product derived by autolysis or equivalent procedure of mammalian liver or similar materials by reason of the following claim language:

"said acid being the acid derived by autolysis of mammalian liver tissue and being free from pantothenic acid and the antipernicious anemia principle obtainable from said liver tissue, * * *."

3. Plaintiff is estopped to deny such limiting effect of the foregoing language in the claims in suit for the reason that claims not so limited were rejected and refused by the Patent Office and thereafter such limitations were introduced into the claims to avoid the earlier grounds of rejection and refusal and to obtain allowance of the patent.

4. Defendants' alleged infringing product has been made only by synthesis from discrete chemical compounds of known chemical structure not from autolyzed mammalian liver, or its equivalent by one or the other of two processes independently discovered not involving the steps described in the patent in suit, or their equivalent, namely, a process disclosed and claimed by U. S. Patent 2,500,296, filed July 23, 1945 and issued March 14, 1950, or a process disclosed and claimed by U. S. Patent 2,443,165, filed October 4, 1946 and issued June 8, 1948, both of said patents being owned by defendant American Cyanamid Company.

The courts are reluctant to decide important issues by summary judgment because of the lack of a record adequate to explain the issues of fact and law, Estepp v. Norfolk & Western Ry. Co., 6 Cir., 192 F.2d 889. But here the issues are clarified by extensive interrogatories filed by both parties and answered fully. Also appellant agrees that there are no issues of fact involved in the specific grounds stated in the motion for summary judgment. Since the action is for infringement the validity of the patent is not involved but its scope is sharply in issue.

It appears from the interrogatories and the answers thereto that appellees' product is a chemical compound identical with that described in the patent but that it is made from different starting materials and by an entirely different process from the product of appellant. The controlling question is whether the claims are so limited by the specification, the file wrapper proceedings and their own language that they do not cover appellees' product. The critical phrase, which is identical in each claim, is "said acid being the acid derived by autolysis of mammalian liver tissue." It is admitted that appellees' product is not derived from mammalian liver tissue nor from any animal product. It is obtained by synthesis from discrete chemical compounds of known chemical structure by a method unrelated to the method described and originally claimed in the patent.

We think the District Court correctly concluded that there is no genuine issue as to any material fact and that the claims of the patent do not cover appellees' products.

The specification of appellant's patent, in light of which the claims must be interpreted, Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132, emphasizes the fact that the appellant's product is to be obtained from animal sources. It states:

"The new product in its acid form can be obtained from various animal sources. For example, it can be obtained from animal glandular tissues such as mammalian liver, or from kidney tissue. It is essential for the growth of bacteria and is also required for growth of the animal organism, yet it can be shown to be a different product from the known vitamins isolated from natural sources.

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