Wisconsin Alumni R. Foundation v. George A. Breon & Co.

• Decision Date: 08 September 1936
• Docket Number: No. 10612.,10612.
• Citation: 85 F.2d 166
• Parties: WISCONSIN ALUMNI RESEARCH FOUNDATION v. GEORGE A. BREON & CO., Inc.
• Court: U.S. Court of Appeals — Eighth Circuit

85 F.2d 166 (1936)

WISCONSIN ALUMNI RESEARCH FOUNDATION v. GEORGE A. BREON & CO., Inc.^*

No. 10612.

Circuit Court of Appeals, Eighth Circuit.

August 5, 1936.

Rehearing Denied September 8, 1936.

George I. Haight, of Chicago, Ill. (M. K. Hobbs and Ward Ross, both of Chicago, Ill., and R. T. Brewster, of Kansas City, Mo., on the brief), for appellant.

Delos G. Haynes, of St. Louis, Mo. (Frederick B. Wolf, of St. Louis, Mo., on the brief), for appellee.

Before WOODROUGH and THOMAS, Circuit Judges, and DEWEY, District Judge.

THOMAS, Circuit Judge.

This is a suit for infringement of claims 1, 4, 5, and 6 of Hart patent, No. 1,877,237, brought by Wisconsin Alumni Research Foundation, appellant, against George A. Breon & Co., Inc., appellee.

The patent covers an invention or discovery of E. B. Hart, professor of agricultural chemistry in the University of Wisconsin. The application for the patent was filed June 18, 1928, and the patent was issued September 13, 1932. It relates to a "Compound for the Prevention and Treatment of Anemia." Claim 1 of the patent expresses its purpose. It reads: "1. A therapeutic agent for use in connection with the treatment of anemia, including copper sulphate and a salt of iron combined to render effective the utilization of said salts for correcting the anemic condition of the blood."

The valuable feature of the discovery, and the thing that is claimed to be new and novel, consists in the combined or coacting use of the salts of copper and iron to build up the hemoglobin content of the blood. The virtue of the remedy is in such combined or conjoint use of the two metals as distinguished from their additive or cumulative use; and the fact that the combination permits the utilization of the inorganic as well as the organic forms of the metals in building up the hemoglobin of the blood.

The sole issue submitted to the court below and brought here by the appeal is whether the invention had been "known or used by others in this country before his (Hart's) invention or discovery and not * * * described in any printed publication in this or any foreign country before his invention or discovery thereof for more than two years prior to his application." Infringement is admitted if the patent is valid, but its validity is denied for the one reason stated above.

Upon the trial the plaintiff rested after proof of its patent and the infringement thereof by the defendant. The defendant offered testimony to support its contention that the invention had been in use in this country and had been described in publications in foreign countries many years prior to the application and the issuance of the patent.

Before considering the testimony of the defendant, it will be helpful to note the principles of the law which must guide the court in arriving at a decision. Where, as in this case, a defendant in a patent infringement suit "assails the validity of a patent fair upon its face," he "bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance." Radio Corporation v. Radio Engineering Laboratories, 293 U.S. 1, 8, 55 S.Ct. 928, 931, 79 L.Ed. 163, 168. The validity of the patent is presumed, and such presumption can only be overcome by clear and satisfactory proof. Sodemann Heat & Power Company v. Kauffman (C. C.A.8) 275 F. 593, 596. In Coffin v. Ogden, 18 Wall. (85 U.S.) 120, 124, 21 L.Ed. 821, the Supreme Court say: "The burden of proof rests upon him the defendant, and every reasonable doubt should be resolved against him. If the thing were embryotic or inchoate; if it rested in speculation or experiment; if the process pursued for its development had failed to reach the point of consummation, it cannot avail to defeat a patent founded upon a discovery or invention which was completed, while in the other case there was only progress, however near that progress may have approximated to the end in view. The law requires not conjecture, but certainty. If the question relate to a machine, the conception must have been clothed in substantial forms which demonstrate at once its practical efficacy and utility."

Where foreign publications are relied upon, mere vague and general representations will not support a defense, but the knowledge "derived from the publication must be sufficient to enable those skilled in the art or science to understand the nature and operation of the invention, and to carry it into practical use," Seymour v. Osborne, 11 Wall. (78 U.S.) 516, 555, 20 L.Ed. 33, "without assistance from the patent which it is said to have anticipated," Midland Flour Milling Company v. Bobbitt (C.C.A.8) 70 F.(2d) 416, 418; and in case of a foreign patent, where the rule is the same as it is in respect of publications: "In order to be an anticipation of a United States patent, a foreign patent must disclose the invention in such full, clear, and exact terms as to enable any person skilled in the art to practice it without the necessity of experimentation." Donner v. Sheer Pharmacal Corporation (C.C.A.8) 64 F. (2d) 217, 220. It was said in the Bobbitt Case, supra, that if the device as disclosed by the publication would, if produced after the patent has been issued, be an infringement, then its earlier disclosure would be an anticipation.

The invention in question and the publications relied upon by the defendant to show anticipation can be better appreciated if the character of the disease, anemia, is kept in mind. Dr. Logan Clendening, a witness for defendant, a professor of clinical medicine in the medical department of the University of Kansas, testified that "anemia" is a word used to indicate a reduction in the number of red cells in the circulating blood, or of a reduction of the chemical substance known as "hemoglobin," which is contained in those cells, or of the reduction of both the red cells and of the amount of hemoglobin. The blood is the only liquid tissue in the body. It consists of a fluid known as blood serum in which there float red cells, white cells, and platelets. Anemia is concerned only with the red cells. They are formed in the bone marrow. As they mature they are thrust into the blood stream. They contain hemoglobin, which is an iron compound, and iron is therefore necessary for blood formation. After the vitality of the red cells has been used up in the blood stream, they go to the spleen where they are destroyed. In health there is a balance between the number of cells formed in the bone marrow and the number destroyed in the spleen. When more are destroyed for any reason in a given time than are formed, the result is anemia. This situation may result from hemorrhage or from poisons. Such poisons may be generated by different infectious diseases such as pneumonia, cancer, or hookworm. Such anemias are called "secondary" because they are secondary to the accompanying disease which is supposed to cause them. Primary or pernicious anemia is due to the lack in the body of the substance which normally stimulates the bone marrow.

The theory of the patent and of the infringing product is that when the iron and copper salts are fed into the alimentary canal the iron by some means finds its way into the hemoglobin. The copper does not become any part of the blood, but its function is to actuate the iron. Unless they are combined and administered jointly the iron salt is not effective.

With this background we proceed to examine the prior publications which the defendant contends disclose and anticipate the patent. The first of these is a catalogue issued in 1924 by the Haver-Glover Laboratories, manufacturers of special veterinary preparations, biologicals, pharmaceuticals, instruments, and appliances. The catalogue contains various formulae including copper sulphate, iron sulphate, and other ingredients claimed to be remedies for the treatment of intestinal parasitism in sheep and swine, for the treatment of coughs in horses and cattle, for the treatment of heaves in horses, of fowl cholera, and of white diarrhea in chicks. Nowhere is anemia even in animals mentioned. Dr. A. T. Kinsley, a veterinarian who testified for the defendant, said that all these diseases are associated with or that they accompany anemia. These facts do not taken together show that the catalog discloses the invention of the patent. It is of so little probative value that the trial court does not mention it in either his findings or his opinion. The burden was upon the defendant to prove that the remedy claimed to be anticipatory produced the same cure as that for which the patented remedy is a specific, not merely that it is a proper treatment for some other disease. Coffin v. Ogden, 18 Wall. (85 U.S.) 120, 124, 21 L.Ed. 821.

The remaining publications are Italian. The first is an article published in 1862 by Dr. L. Mendini on a Remedy for Amenorrhoea, that is, absence or suppression of the menses from other causes than pregnancy. The author states that he had for a number of years believed that ammoniacal copper, or copper sulphate and ammonia, was the basis of Grezzana pills, famous among the common people as a hemagogic. He had four of them analyzed by a chemist who reported that they contained iron sulphate, "and this containing copper." He thereupon "proceeded to make experiments, at first using ammoniacal copper alone, then combined with pharmaceutical iron sulphate." He then prepared two formulæ, one composed of ammoniacal copper and powdered rhubarb and the other including with the first two elements iron sulphate. He then proceeds: "With only one of these formulæ (he does not say which one) by administering only once, or by repeating it once, I obtained results for which I had many times awaited in vain when using pharmaceutical iron sulfate; that is, I produced the regular monthly function of the uterus and the disappearance of very obstinate chloritic affections." Chloritic affections are a form of anemia.

This article clearly does not...