Dennis v. Pitner

• Decision Date: 06 November 1939
• Docket Number: No. 6773.,6773.
• Citation: 106 F.2d 142
• Parties: DENNIS et al. v. PITNER et al.
• Court: U.S. Court of Appeals — Seventh Circuit

106 F.2d 142 (1939)

DENNIS et al. v. PITNER et al.

No. 6773.

Circuit Court of Appeals, Seventh Circuit.

June 30, 1939.

Writ of Certiorari Denied November 6, 1939.

Frank Parker Davis and Louis B. Erwin, both of Chicago, Ill., and Leverett C. Wheeler and Warren G. Wheeler, both of Milwaukee, Wis., for appellants.

Bair & Freeman, of Chicago, Ill., (W. P. Bair and V. D. Beehler, both of Chicago, Ill., and Benjamin T. Schiek, of Milwaukee, Wis., of counsel), for appellees.

Before EVANS, SPARKS, and TREANOR, Circuit Judges.

Writ of Certiorari Denied November 6, 1939. See 60 S.Ct. 143, 84 L.Ed. ___.

EVANS, Circuit Judge.

The District Court held claims 1, 2, and 4 of Reissue Patent No. 18,667 for a "Vermifuge and Insecticide" valid and infringed, and granted an injunction and accounting. Defendants are aggrieved. Hence this appeal.

The patent in suit, a reissue to William J. Dennis, one of the plaintiffs, was originally issued March 15, 1927, on an application filed April 16, 1923. It covered an insecticide in extract or powdered form, made from the root of the cube plant¹ found in Peru or other South American countries. It is effective in killing insects, parasites, and other vermin which may be exterminated by contact poison.

Claims 1, 2, and 4 read as follows:

"1. An insecticide and vermifuge comprising ground cube root with the fibrous element removed.

"2. An insecticide and vermifuge comprising an extract of cube.

"4. An insecticide and vermifuge comprising concentrated extract of cube root and a carrying agent."

Coplaintiffs Stamberg and American Cube Syndicate are exclusive licensees of the patent. Stamberg was, prior to July 29, 1936, associated with defendants, who conduct their insecticide business under the name of Agicide Laboratories and sell among other products, cube insecticide compounds.

The District Court found on the controverted fact issues:

(1) No anticipation by prior U. S. and foreign patents.

(2) No prior discovery.

(3) Cube is sufficiently identified botanically by the patent.

(4) The reissue patent is not broader than the original.

(5) No showing of prior discovery in Peru.

(6) The product is of patentable subject-matter.

(7) No laches established in filing application.

(8) The reissue patent is valid, (claims 1, 2, and 4).

(9) No estoppel between plaintiff Stamberg and defendants.

(10) Defendants purchased and used cube root for their product, and not timbo root, and their insecticide infringed the claims of the patent.

The record discloses a prior art which among others included a United States patent to McDougall, for an insecticide, with derris as a base, applied for September 8, 1911, and issued June 17, 1913; two patents to Lemmens were for an insecticide, based on tephrosia of the order of Leguminosae, applied for January 16, 1917, and issued October 16, 1917. The specifications of a United States patent to Dow, filed March 31, 1920, and issued November 4, 1924, refer to the use of "timboin, nicotine and derris (or `fish poison')."

Defendants contend:

(1) The patented article is a product of nature, namely the powdered cube root, either as dust, extract, or concentrate — the latter being merely modified forms of the natural product.

(2) Prior publications, particularly one published in Peru in 1910 and received in the Library of the United States Department of Agriculture in June, 1910, described the use of cube root, in powdered or extract form for fish poisoning, and also as a "great" insecticide — for sheep ticks, etc.

(3) Anticipation by several United States patents wherein powdered forms of roots of other members of the same botanical family, leguminosae, namely, derris and tephrosia, were used in the same manner and process and with the same results.

(4) The phraseology of the patent is too broad, too indefinite, and too vague to support a valid patent.

Defendants also contend that Dennis' testimony of invention-date as early as 1917 is uncorroborated, and is rebutted by the correspondence between him and Dr. McIndoo, subsequently carried on. Defendants also contend that plaintiff Stamberg, exclusive licensee of the patent, in several states, is estopped from recovering because he promoted defendants' business, and was in partnership with these defendants, and upon dissolution of the partnership he received compensation for his share of the profits of the business based on what he now alleges to be illegal or infringing use of a product covered by plaintiff's patent.

Defendants also deny infringement, first, because they do not follow the teachings of the patent in that they do not remove the fibre as is specified in claim 1, and they do not make an extract as taught in claim 2. They also claim non-infringement on the ground that they do not use cube at all, but use timbo, which is another plant, though of the same species as cube. They assert the material which they used was mislabeled as cube when it was imported, and it was in fact timbo roots which they used to make their insecticide.

We must reject defendants' first defense, namely, that the cube roots utilized as an insecticide may not involve patentable invention under any circumstances, because such discovery is merely a revelation of an existing law of nature. We believe the importance of this conclusion justifies a somewhat extended discussion.

We believe it to be a sound pronouncement to say — The discovery of a natural phenomenon, or of a quality or attribute of a well-known article, which discovery is of value to mankind, may be entitled to patent protection. The objection frequently offered to the patentability of such a discovery is that it is a law of nature or a principle of nature and for that reason not patentable. Section 31, Title 35, U.S.C.A., authorizes the issuance of a patent to

"Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof * * * not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof * * *."

There would seem to be no valid reason or sound support for a position which would deny to discoveries by researchers in the field of science the protection of our patent laws when such discovery is that an old, or at least well-known chemical product, will, acting in a given state, alone, or combined with other elements or physical elements, produce new, unknown, and unexpected results, whereas one who puts together at least two old and well-known chemical substances in certain prescribed proportions and gets new results helpful to man may receive patent protection.² In the latter case, patent protection is universally accorded to the discovery.

In both cases it must be and is assumed, of course, that the discoverer is first, that he timely files his application, and that his said discovery is "new and useful," and was not the result of the exercise of ordinary mechanical skill or the fruit of the reasoning of the normal individual skilled in the art wherein the invention lies.

It would seem to be an unjustifiable distinction to recognize as patentable a machine or other product which puts into novel combination a plurality of old elements producing a new and useful article, and deny to one working in a research field the protection of his discovery, because in his search he finds that a certain article, which we will call a chemical, will act, when taken into the human system or applied to the earth or upon some mineral found therein, in a beneficial way hitherto unknown to man. Clearly the patent law was enacted to benefit society by encouraging discoveries and inventions. That is accomplished by the Government's giving to the inventor or discoverer a patent — a legal monopoly for a term of years.

An analysis of the essential parts of the statute is illuminating. Congress provided for the granting of patents to (a) any person, (b) who has invented or discovered, (c) any new and useful, (d) art, machine, manufacture, or composition of matter, (e) or any new and useful improvements thereof, (f) not known or used by others in this country, (g) before his invention or discovery, (h) and not patented or described in any printed publication in this or any foreign country, (i) before his invention or discovery thereof, etc.

Emphasis must be placed upon the words "invented or discovered" — "new and useful" — "art, machine, manufacture, or composition of matter."

It is true that an old substance with newly discovered qualities possessed those qualities before the discovery was made. But it is a refinement of distinction both illogical and unjustifiable and destructive of the laudable object of the statute to award a patent to one who puts old ingredient A with old ingredient B and produces a cure for ailment C, and deny patent protection to one who discovers that a simple and unadulterated or unmodified root or herb or a chemical has ingredients or health-giving qualities, hitherto unknown and unforeseen.

Let us take an illustration, in another field, of oil cracking, so valuable in gasoline production. Without pretending to give the precise figures, it might be said the problem was to refine crude oil. A chemist who had spent much time and experimented long, found that high heat caused the molecules of oil to crack or divide and a larger amount of gasoline from a given amount of crude oil was obtainable. Another researcher was not satisfied with the percentage or quality. He finally experimented more and discovered that by heating 250 degrees higher the remaining crude oil would crack again. Is he to be denied the protection which the Congress intended he should receive because his discovery was merely that of a principle of nature? Such was not the purpose or the plan of the Congress that enacted the...