Cutter Laboratories v. Lyophile-Cryochem Corp.

• Decision Date: 30 January 1950
• Docket Number: No. 12083.,12083.
• Citation: 179 F.2d 80
• Parties: CUTTER LABORATORIES, Inc. v. LYOPHILE-CRYOCHEM CORPORATION et al.
• Court: U.S. Court of Appeals — Ninth Circuit

179 F.2d 80 (1949)

CUTTER LABORATORIES, Inc. v. LYOPHILE-CRYOCHEM CORPORATION et al.

No. 12083.

United States Court of Appeals Ninth Circuit.

December 27, 1949.

Rehearing Denied January 30, 1950.

COPYRIGHT MATERIAL OMITTED

Leonard S. Lyon, Leonard S. Lyon, Jr., Richard F. Lyon, Los Angeles, Cal., for appellant.

Theodore H. Lassagne, San Francisco, Cal. (Frank E. Barrows, Roger T. McLean, W. B. Morton, Jr., New York City, of counsel), for appellee.

Before HEALY, BONE and ORR, Circuit Judges.

ORR, Circuit Judge.

Appellees brought this action for damages for the infringement of Reichel Reissue Patent No. Re. 20,969 and Flosdorf et al., Patent No. 2,345,548. By a bill of particulars, the charge of infringement was limited to claims 6, 11, 12 and 13 of the Reichel patent, and claims 4 and 5 of the Flosdorf patent. Judgment for damages and costs was entered upon a jury verdict that each of these claims was valid and had been infringed by appellant and assessing damages at $70,922, or two per cent of the stipulated amount of net sales of appellant's allegedly infringing products.

Appellant, in addition to denying the validity and infringement of the patent claims, set up the equitable defense that appellees were attempting to use the patents to create a monopoly over unpatented products and in other ways to restrain trade contrary to the public interest, and counterclaimed, asking a declaratory judgment that all of the claims of the two patents were invalid, were not infringed, and for an injunction against further infringement suits by appellees. The District Court rendered a separate decree on the equitable defense and counterclaim, 78 F.Supp. 905, adopting the verdict of the jury as to the validity and infringement of the claims involved in the action for damages, declaring the other claims of the two patents to be valid, and that appellees had not misused the patents.

A. The Reichel Patent.

1. Validity.

The Reichel Patent describes a process for preserving sera, and other biologically active substances, by extracting the moisture therefrom and leaving them in lyophilic form, dry and porous. They can be kept thus for long periods of time, during which they can be reconstituted by the addition of the amount of water originally removed without the loss of their original biological properties. The first step in the process, as described, is to subject the liquid serum or other biological product to "substantially instantaneous freezing." This can be done by freezing the substance in a thin layer on the inside of a container which is immersed in a very cold refrigerant such as liquid air or dry ice (both of which are colder than -70° C.). It is suggested that substantially instantaneous freezing of a sizable quantity of liquid material may be best assured by adding it to the container in installments, each installment forming a thin layer that will quickly freeze through on contact with the preceding layer, which will previously have reached a very low temperature through the action of the refrigerant. The container is then removed from the refrigerant and connected with a condenser, which is another chamber surrounded by a refrigerant, and the condenser is in turn connected with a very high-vacuum pump. Through the action of the pump, as high as possible a vacuum is maintained in the container and condenser, the effect of which is to "sublime" the ice in the frozen charge, that is, to transform the ice directly into water vapor without its passing through the liquid state at all. The vapor thus formed and removed from the frozen charge is collected in the form of ice in the condenser. The sublimation process may be expedited by subjecting the container to warm air or a warm bath, but the container must never be warmed to such an extent as to melt or even soften the frozen material. After the visible ice has been removed from the material, there still remains residual moisture which may adversely affect the keeping qualities; to effect the removal of this residual moisture the application of the high vacuum is continued until container and its contents attain a temperature substantially above 0° C., or room temperature.

The parties agree that the Reichel process can be analyzed into five steps: (1) freezing the substance; (2) subjecting it to a high vacuum; (3) adding heat to the substance while under the vacuum, (4) without melting or softening the sub stance; (5) continuing to apply the vacuum until the substance has reached a temperature substantially above its freezing point. Of the thirteen claims in the Reichel patent, only claim 9, a product claim, and claim 10, a process claim, include the entire five-step process. Both of these specify freezing through exposure to a refrigerant -70° C. or colder. Only claims 6, 11, 12 and 13 were held valid in the infringement action, neither of which specifies the complete process. Claims 6 and 12 specify "quickly freezing" the substance in a container, removing water vapor from the solidly frozen substance under a high vacuum, and hastening the removal of the water vapor by exposing the container to the atmosphere or to a bath substantially above 0° C. without melting or softening the frozen material.¹ Both these claims omit the step of continuing the application of the vacuum after sublimation of the ice until the substance is substantially above 0° C. Claims 11 and 13 specify subjecting the substance to "substantially instantaneous freezing", removing the water by the application of a high vacuum while maintaining the material in a solid state, and continuing the application of the vacuum until the material is substantially above 0° C.² These claims omit the step of heating the frozen material by exposing the container to the atmosphere or a warm bath.

That none of the claims in the infringement action includes the entire Reichel process is not necessarily fatal to their validity. The inventor of a multistep process may be entitled to separate patents, as well as separate claims within the same patent, for subcombinations of steps representing only part of the entire process. Such sub-combination claims may be necessary to prevent others from impairing the value of the entire invention by appropriating an essential part thereof. Special Equipment Co. v. Coe, 324 U.S. 370, 65 S.Ct. 741, 89 L.Ed. 1006. But each sub-combination claim, to be valid, must meet the requirements of a separate patentable invention. Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 55 S.Ct. 455, 79 L.Ed. 1005. Even though a claim does not embody the ideal whole of the invention as described in the patent specification, it must encompass a process which is operable in itself and which by itself has the qualities of invention and novelty. Rodman Chemical Co. v. Deeds Commercial Laboratories, 7 Cir., 261 F. 189; H. Schindler & Co. v. C. Saladino & Sons, Inc., 1 Cir., 81 F.2d 649.

We cannot upset the jury's findings that claims 6, 11, 12 and 13 were each valid unless "the evidence is such that without weighing the credibility of the witnesses there can be but one reasonable conclusion as to the verdict * * *." Brady v. Southern Ry., 320 U.S. 476, 479-480, 64 S.Ct. 232, 234, 88 L.Ed. 239. Claims 6 and 12 specify, (1) "quickly freezing," (2) application of a high vacuum, (3) addition of heat by exposing the container to the atmosphere or a warm bath (4) without melting or softening the frozen material. It is generally agreed that it was old in the art to desiccate biological materials by freezing them and drying them under a high vacuum. Appellees base the patentability of these claims on the application of heat to the frozen material under vacuum without the melting or softening thereof. Dr. Leake, appellee's expert, testified that the maintenance of a solid condition while applying heat was new on the part of Dr. Reichel. On cross-examination he was confronted with a number of articles, published before the development of the Reichel process and describing freeze-drying processes in which the material was apparently to be kept frozen solid throughout the process. The most striking of these articles was one written by Dr. James Craigie called "Method of Drying Complement from the Frozen State," appearing in Vol. 12 of The British Journal of Experimental Pathology in 1931. The article prescribed freezing the material and then leaving the apparatus at room temperature. It says, "No further supervision is necessary for the complement will remain frozen until dry because the evaporation of the water automatically keeps it several degrees below 0° C." It also lists as one of the advantages of the described process the fact that the material is automatically kept below 0° C. until perfectly dry. On being asked to reconcile his views with these articles, Dr. Leake readily admitted that Dr. Reichel had not been the first one to keep the material frozen solid during sublimation. All that Dr. Leake claimed for Dr. Reichel was that the latter was the first one to stipulate the maintenance of the solid condition as a necessary requirement. Although Dr. Leake undoubtedly considered this stipulation to be a major and inventive contribution, it was not sufficiently inventive to validate claims 6 and 12 under patent law. Where a process has been fully disclosed in the prior art without full appreciation of all its valuable attributes, the perception of new advantages in the old process does not in itself constitute invention. General Electric Co. v. Jewell Incandescent Lamp Co., 1945, 326 U.S. 242, 247-249, 66 S.Ct. 81, 90 L.Ed. 43; Celite Corp. v. Dicalite Co., 9 Cir., 96 F.2d 242, 248.

Claim 12, however, contains a further limitation which, when read in the light of the proceedings in the Patent Office, is sufficient to support a finding of validity. Claims 12 and 13 were not in the original Reichel patent, but were added in the reissue. The file wrapper of the reissue patent...