University of Illinois Foundation v. Block Drug Co.
| Citation | 241 F.2d 6 |
| Decision Date | 18 February 1957 |
| Docket Number | No. 11605.,11605. |
| Parties | The UNIVERSITY OF ILLINOIS FOUNDATION, Plaintiff-Appellee, v. BLOCK DRUG CO., Amm-i-dent, Inc., and F. W. Woolworth Co., Defendants-Appellants. |
| Court | United States Courts of Appeals. United States Court of Appeals (7th Circuit) |
Benjamin B. Schneider, Chicago, Ill., Robert S. Dunham, William R. Liberman, New York City, Robert L. Broderick, East St. Louis, Ill., and R. Howard Goldsmith, Chicago, Ill., for appellants. Schneider, Dressler & Goldsmith, Chicago, Ill., of counsel.
Charles J. Merriam, Chicago, Ill., Harold G. Baker, East St. Louis, Ill., Robert F. Monaghan, Hugh M. Matchett, John Rex Allen, Chicago, Ill., for appellee. Merriam & Lorch, Chicago, Ill., of counsel.
Before MAJOR, FINNEGAN and SCHNACKENBERG, Circuit Judges.
This is an action alleging infringement of two patents: No. 2,542,886, entitled "Dentifrice," granted February 20, 1951, to Edward C. Wach, and No. 2,622,058, entitled "Ammoniated Dentifrice," granted December 16, 1952, to Robert G. Kesel. (The former will hereinafter be referred to as the Wach and the latter as the Kesel patent.) Plaintiff, The University of Illinois Foundation, acquired the patents by assignment from Wach and Kesel. Both patents relate to dentifrice compositions intended to prevent dental caries, or tooth decay, or to inhibit the development of a particular organism, lactobacillus acidophilus, usually present in human saliva.
Defendant F. W. Woolworth Co. was charged with infringement by the sale at its store in East St. Louis, Illinois, of tooth paste and tooth powder under the name of "Amm-i-dent," which allegedly embodies the inventions of the patents in suit. Defendant Amm-i-dent, Inc. was charged with the manufacture of Amm-i-dent which it sold to defendant Block Drug Co., who in turn made distribution to the retail trade, including defendant Woolworth.
A patent was issued to Chester J. Henschel February 20, 1951 (the same date as the issuance of the Wach patent), entitled "Dentifrice." Henschel licensed the manufacture and sale of Amm-i-dent by defendants Amm-i-dent, Inc. and Block. During the course of the proceeding the suit was dismissed as to Henschel who originally was made a party-defendant.
Defendants relied upon the defenses of invalidity and non-infringement. Invalidity was asserted because (1) Henschel's patent is entitled to priority over plaintiff's patents, (2) plaintiff's patents are anticipated by the prior art or, in any event, do not show invention in view of such art, and (3) plaintiff's patents are without utility. The District Court, after a long trial in which a voluminous record was made, rendered an opinion in which all material issues were discussed and decided adversely to defendants. Following such opinion and in conformity therewith, the Court entered its findings of fact and conclusions of law, and on August 4, 1955, its decree sustaining the validity of both patents, as well as the charge of infringement by defendants. From this decree defendants appeal.
In this Court defendants contend (1) that both the Kesel and Wach patents are invalid, and (2) that even though the validity of Wach be sustained, there is no infringement by defendants. The utility of the product manufactured in accordance with the teachings of Kesel and Wach is conceded and no issue is raised here but that defendants infringe Kesel, if valid.
The problem with which the dental profession was concerned and to which the patents in suit relate was dental decay. The opinion of the District Judge contains a statement concerning the problem confronting the profession, as well as the work done by the patentees, Dr. Kesel and Dr. Wach, about which there seems to be no controversy and which we adopt. (This includes the three paragraphs which immediately follow.)
The cause of dental caries (dental decay) has been studied for a good many years. It has generally been an accepted theory that a bacterium, called lactobacillus acidophilus, is found in the saliva and is associated with decayed teeth. Dr. Robert Kesel began a study of the individuals whose teeth were decay resistant and those whose teeth were not. He graduated from the College of Dentistry of the University of Illinois in 1926, with a degree of D.D.S. and from the University of Illinois Medical School in 1931, receiving an M.S. in Bacteriology. Since 1936 he has been head of the Department of Applied Materia Medica and Therapeutics of the College of Dentistry of the University of Illinois. From this study it was determined that there was an amount of ammonia in the saliva of caries inactive individuals which had the ability to inhibit lactobacilli, and that the amount was greater than normally produced by the breaking down of urea in the saliva. This indicated there was some source of ammonia in the mouth in addition to the salivary urea. Dr. Kesel's method was unusual. As early as 1941 or 1942 he and two of his students, Berry and Orland, all three being caries inactive, placed the incubated saliva of caries active individuals in their mouths. They found that the micro-organism in the saliva they placed in their mouths disappeared. Even when sugar was added these organisms disappeared in 24 hours. This indicated there was something in their saliva which overcame this bacteria. They found this to be aerogenes bacteria which were capable of producing ammonia. A great deal of experimental work in vitro (in test tubes) with saliva was performed. The problem was then presented as to how to raise the ammonium content of the saliva of caries active individuals. Dr. Kesel had working with him Drs. Wach, Kirch and O'Donnell, all of whom were connected with the College of Dentistry of the University of Illinois. They found that alkaline salts of ammonium when added to the saliva stimulated the aerogenes bacteria inhibiting lactobacillus, but that acid salts did not. They selected dibasic ammonium phosphate (hereinafter referred to as dibasic) as the preferred ammonium salt. From time to time in 1944 and 1945, patients with decayed teeth were referred to the group at the University of Illinois Dental School. It was found, with few exceptions, that patients who were administered dibasic had a lower lactobacillus count after three or four months' use.
Sometime before the fall of 1945, Dr. Wach suggested the additional use of urea. In the fall of 1945 or early winter of 1946, tests were made using the combination of urea and dibasic. Their experimental work disclosed the supporting action between dibasic and urea. In the early part of 1948, in Peoria, Illinois, they began study on school children which lasted for about two years. The tests were made with a combination of dibasic and urea dentifrice.
Dr. Kesel appears to have been the spokesman of the group. He reported the findings to the Chicago Dental Society on February 13, 1946, including the test with dibasic dentifrice on some 55 individuals. This report was awarded the annual prize of the Chicago Dental Society for research investigation. He next read a paper October 9, 1946, at Palm Springs, California, on the subject of "Ammonium Production of Oral Cavities and the Use of Ammonium Salts with Control of Dental Caries." In this paper printed in the Journal of Oral Surgery, Dr. Kesel explained the experiments using urea and dibasic. He gave further lectures before Dental Societies and wrote various articles on the experimental work that had been done.
The labors and efforts of Drs. Kesel and Wach culminated in the issuance of the Kesel and Wach patents in suit. During substantially the same period, Dr. Chester J. Henschel, a practicing dentist in New York City and Chief of Dentistry at Sydenham Hospital in New York, was also interested in the same problem and his efforts culminated in the issuance of a patent to him under which defendants are licensed to manufacture and sell "Amm-i-dent."
The Kesel patent contains five and the Wach patent eight claims. Claim 1 of Kesel and Claim 6 of Wach appear to be recognized as typical. The former reads as follows:
"A dentifrice comprising a non-toxic carrier adapted for oral administration and dibasic ammonium phosphate in proportion to provide under conditions of use in the mouth a concentration in the saliva sufficient to inhibit lactobacilli and being not substantially less than 2% of the composition, and a flavor masking ingredient."
The latter reads as follows:
"A dentifrice comprising a major portion of a non-toxic, non-sugary carrier adapted for oral administration, containing from 1 to 10 parts by weight of urea and from 1 to 7 parts by weight of a dibasic ammonium phosphate, there being at least 1% by weight of urea and at least 1% by weight of the phosphate present in said dentifrice."
Claim 1 of the Henschel patent, which appears to be typical of its four claims, reads as follows:
Defendant Woolworth sold Amm-i-dent both in powder and paste form. Insofar as material to the instant case, the former contained 22.5% urea and 5% di-ammonium phosphate. The latter contained 13% urea and 3% di-ammonium phosphate.
Defendants, without attacking any specific finding of the trial Court, present their case here as though it were a trial de novo. An attempt is made to justify this course on the theory that on both the issues of validity and infringement nothing is involved but a consideration of the prior art and statements of the patentees, together with parol evidence explanatory of the prior art. It is contended that such matters "may therefore be considered by this court notwithstanding the findings of the trial court." In support of this premise defendants rely upon three ...
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