Schindler v. Commissioner of Patents

• Decision Date: 12 January 1967
• Docket Number: Civ. A. No. 3068-63.
• Parties: Walter SCHINDLER and Henri Dietrich, Plaintiffs, v. COMMISSIONER OF PATENTS, Defendant.
• Court: U.S. District Court — District of Columbia

269 F. Supp. 630

Walter SCHINDLER and Henri Dietrich, Plaintiffs, v. COMMISSIONER OF PATENTS, Defendant.

Civ. A. No. 3068-63.

United States District Court District of Columbia.

January 12, 1967.

William A. Smith, Jr., Washington, D. C., and Caspar C. Schenider, Jr., New York City, for plaintiffs.

Jack E. Armore, Washington, D. C., for defendant.

OPINION

HOLTZOFF, District Judge.

This is an action against the Commissioner of Patents to authorize him to grant a patent on an application that he has rejected. The application was presented by Walter Schindler and another on December 4, 1959, Serial No. 857,274. The application relates to a medicine intended for use in mental diseases, specifically, conditions of depression.

This action was originally tried before another Judge of this Court and resulted in a judgment for the defendant. In reaching his decision 242 F.Supp. 540, the trial Judge excluded from consideration certain evidence that had been tendered at the trial in behalf of the plaintiffs concerning tests on the compound involved in the application. On appeal taken by the plaintiffs the Court of Appeals, 124 U.S.App.D.C. 21, 360 F.2d 836, disagreed with the trial Judge and held that the excluded evidence should have been admitted. Accordingly, it remanded the case to this Court for the purpose of considering the evidence that had been offered at the trial and hearing any further evidence that it saw fit to permit to be adduced and, finally, to make any additional findings of fact and conclusions of law.

First, there was evidence introduced in the form of affidavits before the Patent Office as to certain tests with the compound in question, with a view to showing its efficacy. The Examiner held that the affidavits were insufficient to demonstrate the efficacy of the medicine. His rejection of the application was affirmed by the Board of Appeals. If the record before this Court consisted solely of the record before the Patent Office, this Court would be inclined to sustain the decision of the Patent Office. Additional evidence was introduced at the first trial as to tests performed on patients with a successful result. The Court has doubt whether that evidence, too, is sufficient to justify the conclusion of efficacy of the medicine. The sufficiency vel non of that particular evidence need not be determined, however, because at this hearing further evidence was introduced, which the Court considers highly impressive.

The medicine involved in this case is chlorimipramine and is administered to patients suffering from depression for the purpose of counter-acting the depressive state. Dr. Gaston Garonne, who is the head of the Psychiatry Department of the University of Geneva and a consultant of a cantonal hospital in mental matters, testified that while in his original affidavit before the Patent Office he cited only 23 cases in which the medicine has been used, he has since that time employed it in 100 additional cases with a successful result. He stated that the medicine was unsuccessful in only 15 or 20 percent of the cases. He also testified that there were fewer side effects than are at times expected or caused by other compounds, and that such side effects as occasionally occurred were not dangerous.

Dr. Pierre Deniker, Professor of Psychiatry at the University of Paris, testified that he and a research group working under him, had administered the medicine involved in this application to 150 patients and that its action was remarkable in treating severe depressant states, apathetic schizophrenia, and severe neurosis. He further testified that, in addition, at the hospital of the University of Paris the medicine had been regularly used for four years last past and several hundred patients had been treated with it with success. He also stated that in only about 20 percent of the cases did the medicine fail to help the patient. He further testified that this medicine can be used, in his opinion, in place of electric shock treatment and that it is gradually displacing electric shock treatment at the hospital of the University of Paris.

The Court is convinced that this evidence is ample to demonstrate the efficacy of the compound involved in this application. The Court reaches this conclusion with due regard to its own observations in Isenstead v. Watson, D.C., 157 F.Supp. 7, and in Commonwealth Engineering Co. v. Ladd, 199 F.Supp. 51, affirmed 113 U.S.App.D.C. 53, 304 F.2d 630. These observations are to the effect that great care and scrutiny should be taken...