Federal Yeast Corporation v. Fleischmann Co.

• Decision Date: 08 June 1926
• Docket Number: No. 2426.,2426.
• Citation: 13 F.2d 570
• Parties: FEDERAL YEAST CORPORATION v. FLEISCHMANN CO.
• Court: U.S. Court of Appeals — Fourth Circuit

13 F.2d 570 (1926)

FEDERAL YEAST CORPORATION v. FLEISCHMANN CO.

No. 2426.

Circuit Court of Appeals, Fourth Circuit.

June 8, 1926.

Charles H. Howson, of Philadelphia, Pa. (Howson & Howson, of Philadelphia, Pa., on the brief), for appellant and cross-appellee.

Leonard A. Watson, Julius M. Mayer, and Frederic P. Warfield, all of New York City (Mayer, Warfield & Watson, of New York City, on the brief), for appellee and cross-appellant.

Before WADDILL, ROSE, and PARKER, Circuit Judges.

ROSE, Circuit Judge.

The Fleischmann Company, appellee and cross-appellant, was the plaintiff in the District Court and the Federal Yeast Company, the defendant. We will refer to each of them by the position they there occupied.

The plaintiff is the owner of two patents both issued on March 20, 1923. The first, No. 1,449,103, was granted upon an application of Fred Hayduck, of Wilmersdorf, Germany, filed October 30, 1920, and the second, No. 1,449,127, upon that of Martin Nilsson and Norman S. Harrison, of Peekskill, N. Y. Their application was made as early as January 7, 1919. In our view, as in that of the learned District Judge, the infringement of each of these patents has been established. The controversy is as to their validity.

Both of them are for yeast-making processes. In the opinion below, 8 F. (2d) 186, will be found a full, fair, and painstaking review of the evidence and of the contentions of the respective parties. It need not be here repeated. We have given careful examination to the record, and have considered the elaborate arguments, oral and printed, which have been submitted to us, and are satisfied the court below was right in holding the Hayduck patent valid. Henneberg and perhaps others of the earlier workers in the field may have come near the discovery described by Hayduck, but none of them made it. Some of them were among the most highly skilled of the world's experts in the yeast-making art. They were in immediate and almost daily touch with the practical men of the industry, as well as with those who controlled the capital employed in it. They were on the outlook for every possible improvement in its methods. If they had known of the Hayduck process, they would have made prompt use of it.

We pass to the consideration of the patent to Nilsson and Harrison. In our Patent Office, their application preceded that of Hayduck by almost two years. Nevertheless he was entitled to priority over them because as early as March 15, 1915, he had asked for a German patent for the same invention, and his American application by virtue of section 4887 of the Revised Statutes (Comp. St. § 9431), and of the Act of March 3, 1921, 41 Stat. 1313 (Comp. St. Ann. Supp. 1923, §§ 9431a-9431h), commonly called the Nolan Act, is to be treated as if it had been then made. At our bar, the defendant does not insist upon its earlier contention that Harrison was the sole inventor, and that the patent is consequently invalid, because issued for a joint invention of Nilsson and Harrison.

If the validity of their patent is to be governed by the ordinary rules, the learned District Judge was clearly right in holding that, in view of the disclosures of Hayduck, their claims in suit cover nothing patentable. It was not until after the instant case was argued at our bar that the Supreme Court handed down its decision in Alexander Milburn Co. v. Davis-Bournonville Co., 46 S. Ct. 324, 70 L. Ed. ___. What was there said renders unnecessary any comment upon some of the contentions strenuously urged by the learned counsel for the plaintiff. It is now clear that, apart from the possible effect of any limitations or provisos of the so-called Nolan Act, Nilsson and Harrison were anticipated by the disclosures in the application of Hayduck, whether they were included in his claims or not. During the lifetime of a patent to A., B. may, of course, obtain a patent for an improvement on A.'s process or device. When that happens, B. cannot, without the consent of A., use what A. has patented, even though he adds his (B.'s) own improvement to it, and, on the other hand, A. may not, without B.'s permission, use B.'s improvement.

It would scarcely, however, be possible seriously to contend that, when Hayduck had patented a process for yeast making which prescribed the use of a sugar material and an inorganic ammoniacal compound having certain described qualities, Nilsson and Harrison could validly patent a process distinguished from that of Hayduck, merely by the fact that in it they...