Parke-Davis & Co. v. H.K. Mulford Co.

• Decision Date: 28 April 1911
• Citation: 189 F. 95
• Parties: PARKE-DAVIS & CO. v. H. K. MULFORD CO. (two cases).
• Court: U.S. District Court — Southern District of New York

189 F. 95

PARKE-DAVIS & CO. v. H. K. MULFORD CO. (two cases).

United States Circuit Court, S.D. New York.

April 28, 1911

[Copyrighted Material Omitted]

Livingston Gifford, for complainant.

Charles Howson, for defendant.

HAND District Judge (after stating the facts as above).

I will first take up the consideration of the mother patent, No 730,176, and of the issue of infringement, which the complainant alleges to be double: First, the dry powder; and second, a sodium chloride solution of the boric acid salt of the dry powder. The dry powder Adrin is produced by a somewhat different process from Takamine's 'crude product,' Adrenalin; but upon the divergence of those processes I do not mean to pass, for it does not seem to me necessary. The crucial step which Takamine discovered was that the base-- it is true with some impurities-- could be directly precipitated by an addition of ammonia, or strictly of caustic alkali and ammonium chloride, which together liberate the ammonia, which in turn effects the precipitation. This being a product patent, it is of no consequence whether the defendant's extraction in the first place by alcohol and trichloracetic acid is the equivalent of an extraction by water and a subsequent addition of alcohol to precipitate albumenous substances. The purpose of both these steps is the same, and the following and crucial step is certainly the same. It may be possible that the preliminary steps result in eliminating different substances, and indeed that must be so as appears from the difference in the proportion of inorganic contamination in each; but the only question upon infringement is whether Adrin falls within any of the claims here in suit.

It certainly falls within claim 1 if it be free from inert and associated gland-tissue. No one supposes that these words mean that the actual cellular structure of the tissue remains, for the process involves its destruction, though, were this not so, the words might quite naturally have been so understood. That meaning being eliminated, what is the most natural meaning? I think it can only mean those organic chemical substances, regardless of the structure, out of which the gland-tissue is composed and of the same chemical composition in which they exist and make up the gland-tissues. To these may well be added those substances arising in the normal metabolism of the tissue of other organs or of the glands themselves, which, being carried in the blood, might remain in the glands at death. Such of these substances as have not the physiological activity of the 'principle,' now known, are the 'inert and associated gland-tissue' mentioned in the claim. Nor can this mean a new chemical disintegration of the 'gland-tissue' so described of which there is much in Adrenalin and over six times as much in Adrin. This substance, ammonium magnesium phosphate, is a new and inorganic substance arising from the regrouping of atoms which have, it is true, been a part of the gland-tissue, but which have been broken from the molecules which constituted their original form. Since the chemical distinction between 'substances' depends, not upon the presence of the same atoms, but upon their definite structural association in known proportion into molecules, it is illegitimate to consider as 'gland-tissue' those substances which, while they represent in part the same atoms, have by rearrangement and by addition of new atoms created new molecules. Moreover, the patent itself corroborates this view. The crude product was the patented substance, and it appears (page 2 lines 50-70) that the patentee understood perfectly well that without purification there would be inorganic matter in the crude product. Moreover, the amendment in the Patent Office of the words 'inert constituents' to the words 'inert and associated gland-tissue' clearly indicate the patentee's intention.

The question remains, however, whether Adrin is in fact free from organic tissue, and upon this there is some dispute. Sadtler found that under the biuret test Adrin showed a rose color. This indicated proteids, and for organic sulphur he used the nitro prusside sodium test. These tests in Chandler's opinion are so delicate that they will detect a mere trace, and Sadtler does not dispute that fact. The question may perhaps be best decided by considering first whether Adrin is substantially as free as Adrenalin from organic matter, and then considering whether Adrenalin itself is 'practically free' within the meaning of the claims. One test much relied on by both experts is that of physiological activity. Adrin, having a much higher ash than Adrenalin, ought to show a correspondingly lower activity. In fact, it shows a more than correspondingly lower activity, thus indicating the presence of some other substance not inorganic, i.e., organic. It would seem that Adrin had therefore somewhat more organic contamination than Adrenalin.

However, in view of the very baffling results of the physiological experiments compared with the other tests, I am not disposed to press this quantitative comparison too far. Indeed, my own belief is that the matter has not been thoroughly cleared up in the testimony at all, and that considering the similarity of the processes, the use of each substance practically, and the approximation of result physiologically, the two are near enough to be an infringement one of the other. Indeed, the contrary is not sharply urged. However, the question remains whether Adrenalin is itself 'practically free,' and upon that issue the burden is on the defendant, unlike the issue of infringement, because it involves the question whether the claim covers the disclosure.

Sadtler upon this question calls attention to the results of his modifications of Von Furth's process, in which he showed much ingenuity. These so-called Von Furth intermediate products were three: Precipitate 5-A-3, Precipitate 1-B, 'Crystalline Base.' The first and third were negative in reaction to these biuret and other tests, and the second showed only a slight reaction. This indicated that all were free, or nearly free, from organic impurities; yet the amount of ash in each was very different. In 5-A-3 it was over 31 per cent., in 1-B it was about 7 per cent., and in 'Crystalline Base' about 26 per cent. Now the physiological activity of 5-A-3 equalled that of crude Adrenalin, though the ash was more than seven times as great, while that of 'Crystalline Base' was only one-eighth that of either. Similarly, 1-B had an activity equal to Adrenalin; the ash being also substantially the same. Both experts conceded that the sole physiologically active agent is the principle itself, and the result seems to be that the reason for the discrepancy between the activities must be the presence of organic substances not detected by Sadtler's tests. Against this there is Chandler's opinion that the conditions of crystallinity preclude the presence of organic matter, an opinion shared by Sadtler when dealing with Moore's Dialysate, and we have in the case of 'Crystalline Base' purely negative test reactions. Why 5-A-3 shows an activity so disproportionate to the ash, I cannot say; it shows a similar disproportion to the Adrenalin purified, though less absolutely. I think that, to solve this apparent contradiction of evidence, one must have recourse, first, to the fact that the use of Adrenalin has been now sufficient to show that it is 'practically free,' and to the presumption from the patent itself that the disclosure answers the claims. Apparently the only difficulty ever arising from the intravenous use of Adrenalin was due to too strong solutions. These did cause destruction of tissue at the point of injection; but even they gave no evidence of contamination. I therefore hold that Adrin infringes claim 1.

Claim 2 is the same, with the addition of the words that the product is a 'whitish' color. It appears that neither crude Adrin nor Adrenalin is, properly speaking, white. Each is a light yellow brownish color. Commercial Adrin is, however, near enough to a white to comply with the claim.

Claim 3 is like claim 1, except that the words 'inert constituents' are substituted for 'inert and associated gland-tissue.' Now it undoubtedly appears in the specifications that the patentee did not suppose his crude product was wholly free from inert constituents, because he provided means of purification.

However, the changes in the Patent Office clearly show that he must have meant something different by the phrase 'gland-tissue' from what he meant by the phrase 'inert constituents,' and I do not think that any one can properly construe those words as not including ammonium magnesium phosphate. His own product did not contain a high percentage of ammonium magnesium phosphate--less than five per cent.-- and it may well be that that is within the terms practically free; but the defendant's Adrenalin contains nearly seven times as much as that. I do not see how by any stretch of words that can be held to be free from inert constituents.

In claim 4 it is provided that the product shall melt at about 207 degrees centigrade. Now Adrin has not been shown to have melted even at 220 degrees and upwards. The difference proportionately is not great, and the patent is entitled to have a generous construction, yet I cannot think that a product is affirmatively shown to have a melting point of about 207 degrees when there is no proof of when it will melt at that heat, and there is proof that it will not melt at 220 degrees. It is true that Chandler says (Q. 10) that he had subjected the Adrin to all the tests required by the patent and found that they corresponded; but this general statement cannot stand in the face of the express testimony of...