Upjohn Company v. Italian Drugs Importing Co.

• Decision Date: 09 January 1961
• Citation: 190 F. Supp. 361
• Parties: UPJOHN COMPANY, Plaintiff, v. ITALIAN DRUGS IMPORTING CO., Inc., Delmond Pharmaceutical Corporation and Ignazio Piracci, Defendants.
• Court: U.S. District Court — Southern District of New York

190 F. Supp. 361

UPJOHN COMPANY, Plaintiff, v. ITALIAN DRUGS IMPORTING CO., Inc., Delmond Pharmaceutical Corporation and Ignazio Piracci, Defendants.

United States District Court S. D. New York.

January 9, 1961.

Kenyon & Kenyon, New York City (Ralph L. Chappell, Francis T. Carr, New York City, of counsel); Joseph K. Andonian, Esq., Kalamazoo, Mich., for plaintiff.

John P. Chandler, New York City, for defendants.

MacMAHON, District Judge.

This is an action for patent infringement tried by the Court without a jury. The patent involved was issued to John T. Correll on March 29, 1949 for a surgical sponge made of gelatin foam hardened to water insolubility and absorbable by a living body in from ten to ninety days.

Plaintiff, The Upjohn Company, a Michigan corporation, is assignee of the patent and manufactures and sells the surgical sponge under the trademark "Gelfoam". Defendant companies, New York corporations, import the accused product from Italy where it is manufactured and market it in this country under the trademark "Spun-Gel". Defendant Piracci, a New York resident, is the president of the defendant corporations as well as a major stockholder. This Court has jurisdiction of the parties and of the subject matter. 28 U.S.C.A. § 1338(a) and § 1400(b).

Plaintiff abandoned a claim for unfair competition at pretrial conference, and the parties stipulated that only Claim 6 of the patent is at issue. Defendants challenge validity and deny infringement. They assert that Claim 6 is bad in form because it describes a function at the exact point of invention. The ultimate issues raised, therefore, are (1) whether the patent is valid, and, if so, (2) whether defendants' product infringes.

Validity

It is necessary to reconstruct the factual situation as it existed at the time Correll made his application in order to determine whether there has been invention over the prior art. Van Heusen Products v. Earl & Wilson, D.C.S.D.N.Y. 1924, 300 F. 922.

Correll, a research chemist, had been working on the problem of blood coagulants from about 1940. He found that a liquid coagulant such as thrombin was unsuitable for surgery because it usually formed a clot away from the point of hemorrhage. This research revealed a need for some product such as a sponge which would form a matrix around which a clot could form. Gauze sponges had been used for this purpose of centuries, but it was necessary to remove them before suturing, and this often disturbed the clot causing renewed hemorrhaging. Furthermore, there was always a danger that through inadvertence a gauze sponge would be left in the body where it might cause infection and certainly invite a suit for malpractice.

Confronted with these problems in March of 1944, Correll conceived that their solution lay in a water insoluble sponge absorbable in a living body. Not only could such a sponge be left in the surgical cavity to form a matrix for a clot at the point of flow, it could also be saturated with a coagulant or antibiotics as well as serve as packing to prevent lesions. Even more significantly, it could be left in the body. In approximately five months, Correll developed a sponge made of gelatin, whipped into a foam and hardened to water insolubility either by formaldehyde or some other process, yet absorbable by a living body. The patent at issue covers this product.

It should be noted at the outset that the patent is presumed valid, and the burden of establishing invalidity rests on the defendants. 35 U.S.C.A. § 282. Their burden is a heavy one and every reasonable doubt should be resolved against the party asserting invalidity. Mumm v. Jacob E. Decker & Sons, 1937, 301 U.S. 168, 171, 57 S.Ct. 675, 81 L.Ed. 983.

Contending that Correll's sponge was obvious to one skilled in the prior art, defendants cite fourteen patents and other publications which they claim anticipated the Correll sponge. At the threshold of our quest for invention we must look to the history of the art. Invention is the act of selection, but "it must be beyond the capacity of the common-place imagination. Often we can truly treat the inquiry as one of fact by observing what went before and what followed. If the combination would have had practical value long before it appeared, if no impediment, technical, or commercial, stood in the way, if during that time others had been at work upon the same subject, and if the invention was at once accepted as an answer to the old need, there is usually just basis for the inference" of invention. B. G. Corporation v. Walter Kidde & Co., 2 Cir., 1935, 79 F.2d 20, 22.

Applying these criteria here, it is plain that what went before fell far short of Correll's sponge. All of the previous patents reveal a "tragic flaw" which would lead not to Correll's sponge but away from it. Indeed, the fact that defendants are forced to rely on so many prior art patents and publications in support of their contention that Correll's invention lacks novelty is in itself significant evidence of the weakness of their defense. Reynolds v. Whitin Mach. Works, 4 Cir., 167 F.2d 78, 83, certiorari denied 1948, 334 U.S. 844, 68 S.Ct. 1513, 92 L.Ed. 1768; York Ice Machinery Corp. v. L & K Ice Corp., D.C.S.D.N.Y.1934, 6 F.Supp. 544. Moreover, the fact that this and similar prior art was before the Patent Office during the prosecution of the patent reinforces the presumption of validity. Stevens v. Carl Schmid, Inc., 2 Cir., 73 F.2d 54, certiorari denied 1934, 294 U.S. 721, 55 S.Ct. 548, 79 L.Ed. 1253.

The keystone to Correll's invention lies in his achievement of a sponge insoluble in water yet absorbable in a living body in from ten to ninety days. Six of the cited patents¹ lack the necessary insolubility. Some indeed were invented with the object of making gelatin more soluble. None of them, therefore, would lead to the desired result because a surgical sponge must have a degree of insolubility to prevent immediate disintegration upon contact with blood or other body fluid.

Seven of the cited patents² contain ingredients or combinations of ingredients which would not be absorbable by a living body. These patents cover such diversified products as cushion stuffing, wall board, and imitation beer, all quite remote from surgical sponges. Certainly none could be inserted or remain in the body for any length of time without deleterious effect since none were absorbable.

Of the remaining cited patents, Sharp's³ was for sutures made of animal ligaments and Altschell's⁴ was for a stomach astringent. Obviously, neither had anything to do with foamed gelatin or surgical sponges.

The three publications cited⁵ all speak of water soluble gelatin made insoluble by the use of formaldehyde. Such teaching resulted in a product known as formo-gelatin, a powder used as an antiseptic for surface wounds, but gave no clue to a gelatin which is insoluble yet absorbable by living tissue. Nor is there any suggestion that gelatin could be used as a surgical sponge. Looking at the problem, therefore, from the view of what had gone before in the chemistry of gelatin and glue, it is plain that the gelatin sponge was not obvious to one skilled in the prior art. Indeed, the chief defense witness, Dr. Donald K. Tressler, an acknowledged expert in the field of gelatin and glue, admitted that the prior art would not, in fact, lead to the foam gelatin sponge.

Tressler, after examining the sum total of the prior art, would not state that the invention was obvious but only that it might be deduced with an adequate library at one's disposal. He felt that perhaps two prior experts in the gelatin field, Doctors Bogue or Alexander, could or should have solved the problem. This hypothetical opinion smacks of the wisdom of hindsight and does not square with the historical facts.

Correll was looking for a surgical sponge from the standpoint of the medical profession. It is, therefore, necessary to consider also the prior art in surgical sponges. Defendants' witnesses testified that some sort of loosely-woven cloth, usually gauze, had been used as a surgical sponge for centuries. Viewed from the existing surgical art, Correll's product was certainly not obvious. On the contrary, it was a marked departure from the prior art since it effectively combined the use of coagulants with sponges without the peril of leaving dangerous foreign substances in the body.

Almost immediately after Correll's sponge was introduced on the market, it met with success. Thus, it was at once accepted as the answer to the old need. Commercial acceptance is not decisive on the issue of invention, but it is a factor meriting weight. Georgia-Pacific Corp. v. United States Plywood Corp., 2 Cir., 258 F.2d 124, certiorari denied 1958, 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112; Technical Tape Corp. v. Minnesota Mining & Mfg. Co., 2 Cir., 1957, 247 F.2d 343, certiorari denied 1958, 355 U.S. 952, 78 S.Ct. 537, 2 L.Ed. 2d 529. The evidence shows that since the product was first offered on the market, gross sales have amounted to over $7,000,000 with sales in 1959 approaching $800,000. It is almost self-evident that the product would have had both practical and commercial value if it had appeared earlier. In this connection plaintiff points to sixty-nine tort actions resulting from leaving gauze sponges in the body.

There were no impediments, either technical or commercial, standing in the way of a gelatin sponge insoluble in water yet absorbable in a living body. The only ingredients, gelatin and formaldehyde, had been known for years. It was Correll who took these and combined them in the correct quantities to achieve the desired result. Thus, the conclusion is impelled that until the flash of genius called invention struck Correll, no one hit upon the answer to an ancient need. Correll's invention lies not in the fact that he combined two well-known ingredients but in the fact that he did so in such a way as to produce a novel and useful...