Technicon Instruments Corp. v. Coleman Instruments, Inc.
| Decision Date | 07 June 1966 |
| Docket Number | No. 63 C 738.,63 C 738. |
| Parties | TECHNICON INSTRUMENTS CORPORATION, Plaintiff, v. COLEMAN INSTRUMENTS, INC. and American Hospital Supply Corporation, Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
COPYRIGHT MATERIAL OMITTED
Homer J. Schneider, Wolfe, Hubbard, Voit & Osann, Chicago, Ill., for plaintiff.
George B. Newitt and Sheldon W. Witcoff, Bair, Freeman & Molinare, Chicago, Ill., for defendants.
FINDINGS OF FACT and CONCLUSIONS OF LAW
The above entitled cause having come on for trial, and the court having heard the evidence, and having observed the witnesses and considered their testimony, having examined the exhibits introduced at the trial, having examined and considered the briefs submitted by counsel, having given careful consideration to the record in this cause, and being fully advised in the premises, now finds the facts and states the conclusions of law as follows:
FINDINGS OF FACT
1. Plaintiff Technicon Instruments Corporation is a New York corporation which manufactures and sells analytical equipment for chemical analysis. Defendant Coleman Instruments Corporation, a Delaware corporation, and ultimate successor to original Defendant Coleman Instruments, Inc., also a Delaware corporation, also manufactures and sells chemical analytical equipment and has a regular and established place of business in Maywood, Illinois in this district. Defendant American Hospital Supply Corporation is an Illinois corporation which distributes various products to the hospital trade and serves as a distributor of certain products manufactured by Defendant Coleman Instruments Corporation. American Hospital Supply Corporation has a place of business at Evanston, Illinois in this district. (Reference to "defendant" herein indicates Coleman Instruments Corporation, or its predecessor Coleman Instruments, Inc., unless otherwise indicated).
2. The complaint alleges a cause of action for infringement of four patents and the jurisdiction of the court arises from the Patent Laws of the United States. Both defendants have counterclaimed for a declaration of non-infringement and invalidity of the same patents. The venue is properly laid in this district.
3. The four patents in suit are owned by Plaintiff Technicon and involve apparatus that analyzes, on a continuous basis, samples of various liquids to determine the quantity of certain constituents in these liquids. For example, the apparatus is useful in determining the amount of sugar or urea (crystalloids) present in human blood. The patents in suit and the claims charged to be infringed are as follows:
PATENT ISSUED TITLE CLAIMS
Skeggs 2,797,149 June 25, 1957 Method and Apparatus 4, 14
for Analyzing 16, 19
Liquids Containing
Crystalloid and Non-Crystalloid
Constituents
Skeggs 2,879,141 March 24, 1959 Automatic Analyzing 10, 16
Apparatus
Ferrari et al
2,865,303 December 23, 1958 Pumps 8
Ferrari et al
2,935,028 May 3, 1960 Pumps 14
The '149 patent contains apparatus claims 4, 14, 16 and method claim 19 directed to an entire system for quantitative automatic analysis of crystalloids using flowing streams. Claim 10 of the '141 patent is directed to a sampling device for feeding a series of liquid samples successively to the apparatus disclosed in the '149 patent, and Claim 16 of that patent is directed to apparatus for treating a liquid for processing which employs means for injecting air into a stream of the liquid to divide the stream into alternate segments of liquid separated from each other by intervening segments of air. The '303 and '028 patents relate to pumps useful for pumping liquid streams to and through tubing comprising part of the apparatus of the '149 patent.
4. Defendants Coleman and American Hospital Supply Corporation are charged to have infringed the plaintiff's patents by reason of manufacture and use of an analytical apparatus called the Coleman Chem-Matic (DX-23). Defendant American Hospital Supply Corporation contends that it has never made, used or sold a single Chem-Matic apparatus and is therefore not an infringer. Defendants contend that Claims 4, 14, 16 and 19 of the '149 patent and Claim 10 of the '141 patent are not infringed by the Chem-Matic, and if they are so construed by plaintiff they are invalid over the prior art; that Claim 16 of the '141 patent is invalid for several reasons; that Claim 8 of the '303 patent and Claim 14 of the '028 patent are not infringed by the Coleman pump used in the Chem-Matic and are invalid over the prior art.
5. The inventions represented by the four patents in suit have been embodied in commercial apparatus sold by Technicon as the "AutoAnalyzer" analytical equipment.
6. For many years prior to the inventions of Leonard T. Skeggs, and indeed until the AutoAnalyzer was placed on the market, body fluids such as blood had customarily been analyzed for diagnositically significant factors by manual methods. These required a complicated sequence of many operations and involved careful weighing or measurements together with record keeping, and consequently were time-consuming and subject to errors. Manual analyses were also expensive and required cleaning of equipment.
7. In the analysis of body fluids, whether made manually or automatically, it is usually necessary as a preliminary to the final determination to separate dissolved components ("crystalloids"), that are to be analyzed, from suspended components ("non-crystalloids") such as colloidal proteins, corpuscles, and the like. A chemical reagent of a type that changes color in the presence of one of the dissolved components is then mixed with the dissolved components, and the resulting color change is determined. The color change is an indication of the original concentration of the dissolved component in the body fluid sample.
8. Skeggs, as a research biochemist conducting work in hypertension and artificial kidneys in a hospital, also had responsibility for the hospital's clinical chemistry laboratory where colorimetric tests of blood samples for diagnostically significant factors were performed manually. Because of his dissatisfaction with the manual tests, he became interested in the possibility of automatic analysis of body fluids.
9. Skeggs, working long hours at home and financing his efforts on borrowed money, conceived and reduced to successful practice the first practical system for the automatic analysis of body fluids for diagnostically significant substances. In contrast to the stepwise manual methods which required careful weighings or volume measurements, Skeggs formed body fluid samples (containing crystalloids and non-crystalloids) into a flowing stream, continuously separated from the stream a portion of the crystalloid in proportion to the amount originally present, combined this separating portion with a proportional stream of a color-changing reagent, and analyzed the combined stream. Dr. Skeggs personally made and tested equipments for demonstrating his system.
10. The term "non-crystalloids" in the claims of the Skeggs '149 patent is not a common term but is easily understood and defined from the specification by those skilled in clinical chemistry and clinical pathology.
11. None of the prior art identically disclosed or described Skeggs' system, nor would his system have been obvious to a person skilled either in the art of automatic chemical analysis or the art of body fluid analysis. The art (Hewson U.S. 2,560,107) showed an automatic apparatus for determining blood sugar content that operated like a mechanized manual system, in that tablets of different reagents were added to a blood sample in a test tube to coagulate the proteins and to obtain a color change, and the test tubes were moved through heatings, cooling, and agitating stages; this did not continuously separate a portion of the crystalloid (sugar) and there were no proportional flows. The art (Alston et al. U.S. 2,408,900) also showed proportional gravity flows of sample and reagent streams in a device for detecting the presence of sugar in boiler feed-water; this had a screen and a filter to remove pieces of boiler scale but neither is capable of separating crystalloids from a sample containing crystalloids and noncrystalloids. The Alston et al. reference is the closest prior art; it was cited and overcome during prosecution of both Skeggs patents; and it is incapable of analyzing body fluids.
12. The means disclosed in the Skeggs '149 patent for continuously separating a proportional amount of crystalloids from a sample containing crystalloids and non-crystalloids was a continuous dialyzer using a semi-permeable membrane of cellophane or the like. Dialyzers per se had long been used to separate crystalloids from non-crystalloids, and they do this by permitting molecules of crystalloid to pass through tiny holes or pores in a semi-permeable membrane which are too small to allow non-crystalloids through. This was the best mode know to him (Skeggs)—both at the time he filed the '149 application and at present—and is used in most of the AutoAnalyzers. Claims 4, 14, 16, and 19 of the patent, the claims in issue here, are not limited to continuous dialysis; other claims in the patent call for dialysis.
13. Various statements in the file wrapper of the '149 patent application, in the testimony of Dr. Skeggs, and in advertisements and later-filed patent...
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