WISCONSIN ALUMNI RF v. Vitamin Technologists
| Decision Date | 01 October 1941 |
| Docket Number | No. 565-M Civil.,565-M Civil. |
| Citation | 41 F. Supp. 857 |
| Court | U.S. District Court — Southern District of California |
| Parties | WISCONSIN ALUMNI RESEARCH FOUNDATION v. VITAMIN TECHNOLOGISTS, Inc., et al. |
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George I. Haight, Frank Parker Davis, and Ward Ross, all of Chicago, Ill., and Lewis W. Andrews, of Los Angeles, Cal., for plaintiff.
R. Welton Whann and Robert M. McManigal, both of Los Angeles, Cal., for defendants.
The suit involves the validity and infringement of three patents issued to Dr. Harry Steenbock of the University of Wisconsin, who transferred his interest in them to the plaintiff, Wisconsin Alumni Research Foundation of Madison, Wisconsin, a nonprofit affair, which was organized in 1925 for the purpose of promoting scientific research at the University in assisting in the development of inventions and discoveries made by the faculty and students of the University. The defendant Vitamin Technologists is a corporation organized under the laws of the State of California, and the defendant H. F. B. Roessler is a director and officer of the defendant corporation.
The first patent, No. 1,680,818, entitled "Antirachitic Product & Process," was issued August 14, 1928, on an application of Harry Steenbock on June 30, 1924. The second patent, No. 1,871,136, entitled "Antirachitic Product Essence and Process", was issued August 9, 1932, upon an application of Harry Steenbock, filed December 27, 1926, and is stated therein to be a continuation in part of the first patent, and the third patent, No. 2,057,399, entitled "Antirachitic Product and Process," was issued October 13, 1936, on application of Harry Steenbock filed May 14, 1932.
The first patent contained claims directed to the process of imparting antirachitic properties to organic substances of dietary value which comprises subjecting the same to the action of ultra violet rays such as are produced by a quartz mercury vapor lamp for a period sufficient to effect antirachitic activation but seems to be so limited as to avoid subsequent substantial injury to the antirachitic principle.
The second patent contains claims directed to the process of producing a concentrated antirachitically activated substance from substances rich in unsaponifiable lipoids which comprises separation and irradiation of unsaponifiable lipoids, such irradiation being effected by subjecting the lipoids before or after separation to the action of the ultra violet rays such as emanate from a quartz mercury vapor lamp for a period sufficient to effect antirachitic activation and claimed to be limited so as to avoid subsequent substantial injury to the antirachitic principle. It also contains claims directed to an activated edible compound comprising an unsaponifiable lipoidal extract activated antirachitically in accordance with the process stated in claim 1, compounded with an unactivated edible substance.
The third patent contains claims directed to a process which comprises antirachitically activating yeast by subjecting it to the action of artificially produced ultra violet rays for a period sufficient to render the yeast antirachitically active.
With respect to the infringement, the plaintiff contends that the defendants within the last six years and subsequent to the granting of the patents have wilfully infringed them by practicing the processes covered by them and asserts that the defendants have infringed claims 1, 2, 3, 5, 6 and 8 of the first patent; claims 1, 2, 3, 5, 6 and 7 of the second patent, and claims 3 and 4 of the third patent, and that the date of the invention of the second patent goes back as early as the date of the application of the first patent, and the date of the third patent to the date of the second patent, and that all of the inventions of the three patents in suit were made by Dr. Steenbock before the time of the filing of the application of the first patent on June 30, 1924.
The defendants challenge the validity of the patents and assert that (a) they are anticipated by prior publications and patents, and lack invention over the prior art and are not new and useful art and therefore not patentable subject matter. (b) That they are improperly drawn and defined and the Commissioner of the Patent Office exceeded his authority in issuing them. (c) That there is insufficiency of disclosure and indefiniteness of claims. (d) That the claims thereof cover broad classes some materials of which are not activatable with ultra violet rays, and with those materials the inventions are not workable. (e) That they cover a process, principle or law of nature which is not patentable. (f) That the plaintiff is guilty of laches in not instituting the suit within a reasonable time after it knew of the infringing activities of the defendants, and is therefore estopped from asserting its rights against the defendants. (g) That the defendant H. F. B. Roessler has never manufactured or used or sold any machine, product or process of any of the patents in suit and is therefore not personally liable.
At the trial considerable evidence was introduced as to what the three patents in suit cover, and upon the issues thus stated.
What the First Patent Covers.
It appears to relate "to a method of preparing antirachitic products of edible character, such as foods and medicines, and to the products obtained by such method of treatment," and "the process is effected by subjecting edible substances to the action of rays of the region of the ultra violet rays of the spectrum in such manner as to effect the antirachitic activation," and "which comprises subjecting the same to the action of ultra violet rays such as are produced by a quartz mercury vapor lamp, for a period sufficient to effect antirachitic activation but so limited as to avoid subsequent substantial injury of the antirachitic principle." The patents relate to a substance that is able to prevent the development of rickets, vitamin D, which is scarce in the diet of the ordinary person and needed in the diet, and contributes to building strong teeth and bones, and is applied in the prevention and cure of the disease known as rickets, prevalent during infancy, causing faulty bone structure. It covers a process employing an artificial activating agency in such a manner as to accomplish what the natural agency does not and cannot do. It covers the need for the use of artificial sources of ultra violet light and contrives a new method for its direction towards ends. It provides the procedure to be followed in respect to the use of ultra violet light which it asserts there is a difference in effect occasioned by the length of time of the exposure of the material to it, the volume of the product being treated, and the directions there given are that in activating the materials the effect would be to produce vitamin D in them, which depends exclusively upon supplemental sources for vitamin D, and prevents vitamin D deficiency then existing. The patents are not upon the lamp, but new processes in which ultra violet light is utilized and invented products derived from the utilization of ultra violet light, and in the process the organic substances of dietary value are subjected to the action of ultra violet rays. A new mode for employing ultra violet light and has produced new results in providing in medicines and foods, vitamin D for the prevention and cure of rickets in mankind and animals, and the evidence discloses that the nature of the invention is useful in a number of branches of the drug industry and food products.
What the Second Patent Covers.
It is called the essence patent and the application for it was copending with the application for the first patent of June 30, 1924, and recites, to be a continuation in part of the application of the first patent "in so far as subject matter is common to both". Novadel Process Corporation v. J. P. Meyer & Co., Inc., et al., 2 Cir., 35 F. 2d 697. It deals with the production of an antirachitically activated essence. It involves the extraction of a compacted provitamin substance called unsaponifiable lipoidal extract from organic substances, and the irradiation with ultra violet rays of such extract to produce a convincing antirachitic preparation. The treatment of the compacted unsaponifiable lipoids by ultra violet rays is in accordance with the process therein described and results in antirachitically activating the lipoids so that the activated compact extract will serve as a superior curative agent adapted to prevent and cure rickets. It provides that the activated essence of lipoids may be used in medical quantities or may be introduced in limited quantities in foods of various kinds, thus imparting antirachitic properties. It calls for separation of the unsaponifiable lipoids from the substance either before or after irradiation. Its relationship appears to certain claims in the first patent which related to the antirachitic activation of unsaponifiable lipoids after their separation from a substance containing lipoids. The original application contained subject matter as ample basis for the claims in this patent and the subject matter contained in the specifications of this patent relates to elaboration and detail upon the original subject and is therefore a different and separate inventive idea from the first patent. The evidence shows that each species of substance activated by Dr. Steenbock constituted a separate discovery which disclosed that certain procedure patent substances do contain a fraction which can be separated as an essence and by irradiation with ultra violet rays be changed into an activated essence of great power, and patents for different species claimed may be good inventions and are considered as patents for different inventions. Pittsburgh Plate Glass Co. v. American Window Glass Co., D.C., 276 F. 197; Traitel Marble Co. v. U. T. Hungerford Brass & Copper Co., 2 Cir., 22 F.2d...
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