Petitioners Brief — American Fruit Growers, Inc. v. Brogdex Co.

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Supreme Court of the United States .

- OOTOBER TERM, 1930.

. No. 48.

= =

—

AMERICAN FRUIT GROWERS, ING.,

Petitioner,

vs.

BROGDEX COMPANY,

Respondent.

BRIEF FOR R PETITIONER. ;

On Writ or Cantinonane to THE Unrirep Srates Omoure’

Court or Appeals ror THE Tiriep Crmourr.

; . R. T. M. McCREADY,

W. B. MORTON,

GEORGE E. MIDDLETON,

Counsel for Petitioner.

GALLO & ACKERMAN, Ine, or Liberty Street, ‘Phones—Hitcheodk 8078-0.

SUBJECT MATTER INDEX.

Defendant’ s Practice

NMOowwn wo »

— | ! PAGE

4 I. The Opinions of the Courts Below

bo Il. Jurisdiction )

III. Statement of the Case linia

Practical Effect of Decree . —

dl Prime Question for Review

< , Standard Packing-House Practices

4 _ Primary Conclusions of the Courts Below

Secondary Conclusion

Limitation Placed on Finding of Prior |

om area, Knowledge and Use ; 7

, , . Nature of the Public Interest in This Case 8

| > oe Summary of Argument 9

V. Argument 13

' _ The Patent Is for Polina of Fruits and

| ; Vegetables Against Decay ...... 13

The Patent Recites Treatment of ont

__ Fruit as Illustrative . Te

Effect of Decree ... 14

The Patent Calls for No Change in Packing

House Practices .:.. eb

‘ Careful Handling an Adequate Preventive

of Blue Mold—the mney of Wounded

; Oranges ....... 16

> | Sound Oranges Subject to’ Many Dour

, Producing Organisms and Diseases .... 16

The Nature of the Alleged Invention WW. 18

Plaintiff’s ‘‘Specifie Mode of Application” 20

Vig *

, PAGE

Prior Patents and Publications Relating to

the Use ‘of Borax and Boric Acid as

Food Preservatives

The Particular Toxicity of Borax and Boric

Acid to Molds, with Special Reference

, to the Penicillia

All of the Foregoing Showing ‘ csied by

the Circuit Court of Appeals -ececmunnn

It Is Not Patentable to Apply an. (Old

Process to a New Subject .

If Such Extension of Use to Oranges Were

Invention, Nevertheless the . Patent

Falls Because of Prior Uses of Borax

for Prevention of Decay of Oranges

The Bishop Use

The Pond Use

The Thompson Use

The: Chilton Use

“The Barnes Use

The Morgan Use.

The Davis Use

The Howard Use’

The Palmer Use ..

The Foregoing Evidence of Prior Applica-

tion of Claimed Process to Oranges

Given Qualified Acceptance by the

_ Courts with No Finding to Indicate

the Courts’ Line of Demarcation Be- —

tween. What. Was Accepted and What

Was Rejected

The Evidence of Prior Uses Is Sufficient in

Quality and Amount Under the. Deci-

sions

Bee PAGE

’ Early Work of the Department of Agricul-

: ; ture in the Treatment of Oranges with

Borie Acid to Prevent Blue mee,

Decay 69

Courts Found Claimed Process Inherently

Wanting in Invention but This Con-

- ¢lusion Barred Collaterally ....... 71 -

Decisions of Courts Below Based on Un-

warranted Assumptions . 72,

Unwarranted Assumption of pean

Felt Need and Search for Remedy: 74°

Plaintiff’s First Grade of Avail-

able Evidence Not Used ........ 74

Plaintiff’s Publications Showed

Antithesis of Search ....- 76

Plaintiff’s Leading Expert Nega-

_ tived Theory of Search 76 ©

Citeuit Court of Appeals Thirteen -

Exemplars Had No Connec- :

tion with Search 79

Unwarranted -Assumption of Com-

mercial Success .. 88

The Period of the Brogden and.

_ Trowbridge Patent Shows No --

Substantial Departure from .

What Went Before aacieasient” 98

- Theory of Invention’ Finds No —

Substantial Support in Any:

Showing of Long-Continued

Expenditure of ‘Effort or:

Money in the Making Up and

| Deyeloping of ‘the Process .... 98

a ‘Commercial Success Test of In-

"vention Only in Doubtful

| Cases ‘

PAGE

Unwarranted ‘aieilien As to Why

- the Use of Borax As a Preservative

~ to Be Used on Oranges Was Not

Earlier Endorsed by the Depart-

- ment of Agriculture - 103...

State of the Public’ Mind and

Attitude of Authority with

Regard to the. Use of Pre- ..

servatives on Articles of Food

» During the Period of Blue

Mold Investigations Which ‘

Resulted in Adoption of Care- —

ful Handling Practices as

‘Best Means of Prevention ...,... 105

‘The Article Claims ww 115

The Article Claims Are Invalid Under

the Doctrine of Holland Co. vs. Perkins ,

7 | Glue Co., 277 U. S., 245 ... . 120

VI. Conclusion oe 124

APPENDIX.

Analysis of Plaintiff’ 8 a) as Bearing on.

Efforts to Control Blue Mold ... 129

Analysis of Defendant’s Exhibits 153

Opinion of Judge Dickinson Sur Motion for.

Preliminary Injunction in Brogdex Com-

pany vs. California Fruit Growers ae

change : 158

er aad Bulow ak

Hansen vs. Slick, 230 F., 627 (Ae ie Se Ze

_. Hartranft vs. Wiegmann, et al., 121 U. S., 609 mom. 119

TABLE OF CASES CITED,

PAGES .

peony os Brewing Assoc. vs, U. s, 207 U. 8.

556 117

Arlington Mfg. Co. vs. Celluloid Co, 97 F; Le (C.

C. A. 3) 46

Armstrong Seatag Corp. vs. Smith’s Island Oyster

Co., 254 F., 821 (C. C. A., 4) . 119

Boston Pencil Pointer Co. vs. Automatic Pencil

» Sharpener Co., 276 F., 910 (C. C. A, 2):

Brogdex Co. vs. California “Fruit Growers : Ex-

change (E. D, ili (unreported, seé s Appendix, -

DeLamar vs. DeLamar Min. Co., Ltd, 117 F., 240

‘(C. C. A., 9) yes —

Duer vs. Corbin Cabinet Lock Co. 149 U. Ss, 216 .... 100

First National Bank-vs. Stewart, 114 U. S., 224 .. 106°

Grant vs. Walter, 148 U. S., 547 , 100

Hewes, et al., vs. S. Deiches & Co., 24 F. (2d), 503

(C. C. i 7) ex 102

Hipolite Egg Co. vs. U. S., 220 U. S., 45 siieiasetiishbiasale 114

‘ Holland, ete., Co. vs. Perkins Gine ‘Co., 277 U.°S.,

245 - 120- 124

Incandeséent Lamp Patent, 159 U. S. TED innit Ea

Lovell Mfg. Co. vs.: Cary, 147 U. S., 623.

McDlain vs. Ortmayer, 141 U. S., 419 100

Morgan & Co. vs. Windover & Co., 7 R. P. C.,.131 — 69

: . we

‘ + .

. ¢ 4 -

*. »

ewes . . 5 ran a

‘

102 ..

DP. 158) nescscecconaen _ 41,121

Brown, et al., vs. Piper, 91 U. S., > See 44, 45

Carlton vs. Bokee, 17 Wall., 463 -_ 121

Case vs. Cressy, 18 R. P. C., 419 (1901): WW... 43

David Belais, Inc., vs. Goldsmith, ete., Co. 10 F.

(2d), 673 (C. C. A., 2) 102

Deering vs. Winona, ete., 155 U. S., 286 ........: + Bf?

| ‘Thropp’s s Sons Co. vs. 0 264 U. S., 320°.

2 jpentane

National Tube Co. v8. Spang, et al., 135 F, 351 (C.

C. A., 3) 48

Penn. R. R. Co. vs. Locomotive, ett, ; Co., 110 U.S.,

ay — 490. sil 46

Price vs. Illinois, 238-U. S., 446 7 pissed gu 124

Republic Rubber Co. vs. G. & J. Tire Go., 212 F.,170 .

OO OS. Bag’ TP nites » 101°

Reynolds vs. Standard: Paint Co., 68 F., 483 cS. ©. - .

A., 3) . a

Riter- Conley Mfg. Co. vs. sae 203: F., 699 (C.

mee 115,117 -

Rodwell Sign Co. vs. F. Tuchfarber Co.,127F.,138 8»

: (C.C. A., 6) wee we

Seabury vs. Am ‘Ende, 152 U. es ee atin 126, 127 :

Sewell vs. Jones, 91 U. S., 171 —... is 49

Sipp Electric & Machine Co. vs. Atwood-Morrison

- Co., 142 F., 149 (C. C. A, 3) if

Turner vs. Lauter Piano (o., 248 F., 930 (C. CA,

8) cree | |

Zinsser, et. al., vs. "Krueger, 48 F., 296 (C. C. A., 3) 47

U.S. Conipiled a 1918, ch. 3915, ‘Seo. 7... 25

IN THE

Supreme Court of the United States

De ciscnc 2 TERM, 1930.

No. 48, |

American Fruit Growers, Inc.,

_ + Petitioner-Defendant,

ee Taree

- Broepex Company,

Respondent Plaintif.

-—_— =

———

& .

BRIEF FOR PETITIONER.

(Defendant Below.) 7

THE OPINIONS OF THE couRrTs BELOW.

The opinion of the Cireuit Court of Appeals for the

Third Circuit to be reviewed in this proceeding -is re:

ported in 35 Fed. (2d), 106 (R., I, 571, et ‘seq.). This

opinion of the Cireuit Court of Appeals affirmed the’

decree of tthe District Court for the District of Delaware,

110 (R., I, 16).

the opinion of that Court being ee in 21 Fed. (2d), a

Re eS ee

JURISDICTION. :

_ This: case comes. before this Court. on a writ of cer-

tiorari to the Circuit Court of Appeals for the ‘Third

Cireuit granted March 17, 1930 (R., II, 1615), as pro- .

vided by Judicial Code, Sec. 40 (a) as amended by Act

~ of February 13, 1925 (U. S. Code, Title 28, Sec. 347).

_ STATEMENT OF THE CASE.:

Pursesut to certiorari granted on the pEtition of the

American Fruit Growers, Inc., defendant@m the District ;

Court and. appellant. in the Circuit Court of: Appeals, .

there is here for review a transcript of the proceedings -

originally instituted by the Brogdex Company-as com:.

plainant in. equity in the United States Court for the} *

District of Delaware, wherein on September 26, 1927, . ©

after .trial in open Court before if Morris, frorti’

‘January 31, 1927, through February

ment April 8, 1927, a decree was enter§d September .26,

°1927, adjudging claims 1, 2, 3, 4, 5, 6,.7, 9, 14, 15, 16, 17,

18, 23, 24, 25 and 26, of Brogden and Trowbridge Patent *.

927, and argu-:

No. 1,529,461, issued March 10, 1925, valid and : infringed, —

and ordering. an injunction and accounting ; together with

a transcript of the ‘proceedings. on appeal from said

the Third Circuit wherein after argument a decree’was

_ entered Oétober 7, 1929; affirming. said deoree of the Dis- :

. trict Court. :

The action was .by bill in equity for infringeanerit of

patent. Clainis t, 2, 3, 4, 5, 6, .7,.9, 14, 15,16, 17 and 18

adjudged valid, are process claims all essentially the

'- decree in the United States Circuit Court of Appeals for | =

« . es ‘ .

| ie | ee 3

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2 4

dag . : ‘

same—each. covering the process of subjecting fruit to

the action of an aqueous solution of borax or its substan-

tial equivalent, boric acid or alkali metal borate. Claims

23, 24, 25 and 26, the remaining claims adjudged valid

are, article claims each . similarily covering a natural

-orgnge or other fruit’ bearing in or on its rind a very

small amount of borax or boric acid radical. The de-..

jd - c7 . fenees set/up in the answer were invalidity because of:

| re prior patents, printed publications, public uses, public aah

- knowledge and lack of. invention; also non-infringement. -

The infringement set. up in this particular case was

' «the use of a borax solution as an. antiseptic, upon

‘oranges—one of thé vegetable substances covered by the

_ patent—for the prevention or retardation of the growth :

of penicillium, a saprophytic mold, which is the familiar

blue mold so often seen on organic wubstanees, vege-

| table and animal.

) 7 SS

sf Practical Effect of Decree. is

Since the sustained process claims cover the gineril pa

use on fruit of any strength of borax in solution that.”

may tend: to resist’ blue mold or any kindred Tot ‘and

decay organisms and diseases, the effect of the decree is -&

-. to enjoin the “American Fruit Growers, ‘Ine., the: peti- ° g

tioner from using borax inthe water in which it soaks |

and washes its oranges in the usual course of packing

"house practice, preparatory to wrapping and. packing

z= them. And the decree is further effective to prohibit the :

Ee sale by the defendant of any oranges bearing onthe rind. —° &

borax or boric acid radical'even though in amounts so :

minute as to be ascertainable. only by chemical analysis. FE

Prime Question for Review. p%

‘Therefore the prime “question/ here-for review is

| whether or not it i is lawful. for an unlicensed person to

wash, dip or soak any fruit or se tenigel in water con-

taining any substantial amount of borax. :

This statement does not ignore the opinion of the Cir-

cuit Court of Appeals that the invention ‘‘is not the mere

use of borax or boris acid,,nor of the use of that force in a -

+ specific manner.’’ That Court saw the invention as a

process- Jimited to the idea of applying borax in solution —

' to any breaks found im the rind of an orange to render it

to some.degree immune to the crowth of blue mold, which

is known not to attack the sound rind (R., I, 577)., This —

‘view is suggested in a-statement of the patent spécifica-

-- tion that ‘‘blue mold does not ordinarily attack perfectly ss

sound fruit that is free from bruises, cuts, thorn-pricks |.

or punctures’’ but that ‘‘the slightest surface cut or ~

seratch affords’a point of attack by providing Jodgment:

for blue mold spéres.’’. But. the Court’s theory leaves

‘the real question for review as above ‘stated, since

nowhere in the patent is there any plan or suggestion for ~

sorting out the injured oranges: and treating their

wounds. The claimed procedure is for dipping or soak-

ing or washing all oranges in water carrying with it a

Substantial but undefined. amount of borax. ‘Hence if

the decree stands, one used to or desirous of using ii his

orange packing house this common water: softener,

cleanser, detergent and antiseptic can find no comfort in

the fact that the Court saw invention only in the idea of.

applying the borax solution to the broken places in the

, Tind of a cut, scratched, punctured or otherwise wounded

orange.

ndent for growth upon dead tissues, oranges

and other fruits-are subject to many parasites and dis-

eases that attack the sound skin or rind; and that the ~

patent specifies. that both in the specifications and in

the claims the term ‘‘blue mold”’ is to be taken as generic .

and not restrictive and shall be read’ to include all dis-

t is to be oe that while ‘blue mold’’ is a sapro-

“ eases oid decay producing organisms to which fruits

_ may be susceptible (R., I, 597).

Standard Packing House Practices.

- The evidence shows" without a that for’ many -

years it has been the almost universal practice te’ soak

~-and wash oranges. in an effort to’ remove all dirt, scale,

sinut, spores and other decay- producing. organisms and

send out each tissue- -wrapped. orange in the freshest and

‘best condition possible. The record shows frequent re- |

- eitals with respect to the customary use of well-known

antiseptics such as ¢z ustic soda, borax,- blue stone, per-.- _

manganate of potash, washirig powders and. various 3

kinds of soaps. And the specification of the patent in -

suit advises, that as borax has excellent cleansing or

detergent pr operties, its application ‘‘may be effected as -

a part of or in.conjunction with the usual washing opera:

tion to which the ‘fruit is initially subjeeted in its han-

dling secording te modern. packing house methods’’ (R.,

<a |

In the plaintiff’s evidence is found’ the statement that

twenty-nine ‘kinds of scale attack citrus fruit i. if

1170) in addition to such pests or diseases as blue mold,

stem-end rot, melanose, anthracnose, brown rot, black rot,

nail-head rust, Diplodia rot, and other causes of décay

(R., II, 864, 1080, 1186, 1201). ;

An informing glimpse of: what the industry. saw with

‘respect to the necessity of using something more than.

pure water in the preparation of its fruit for the market |

In the face of this legion of destructive organisms, is

. &fforded in the testimony of one of the sare ’s _—_—

‘packing experts, ‘Allan H. McIntyre, who said:

“Tn my experience washing. powder was con-

‘sidered almost as necessary as the water itself to

” clean ory fruit’? (R., I, 317).

6 | . , it

; |

Primary Conclusions of the Courts Below.

In addition. to sbunibed eidetes of prior like uses of

borax as a food preservative, with particular reference

to inhibiting of molds, the’ defendant offered much evi-. ~_

dence of the use of borax in solution as applied to

oranges in preparation for market. The defendant of-

_ fered-the disclosures of many patents directed toward

- the use of borax for the prevention of decay (R., H,

| 1538-1603) ; introduced evidence. of two years use of

-boracie acid in California prior to 1906 for prevention

of decay of oranges under one patent (R., I, 177; R., Il,

1473) and.introduced evidence of similar practices in j

two other California packing houses and, six Florida ;

——.packing houses. Se ee a

nitély found as follows:

“That borax was used.in the preparation of citrus

fruit for market by several persons prior to the date

‘ of the invention in suit cannot, I think be seriously

questioned” (R., I, 19).

(See limitation stated kilos.

Complementary to this finding i is the following further

finding of the District Court: —

Pane,

“That borax and boric acid have long been known |

to possess antiseptic properties and long been used ;

as preservatives of animal and vegetable matter is ~ — i

here established beyond question. They were so

cused both dry and in solution. The solutions were

both hot and cold. The use of a hot'solution of boric -

-acid or-its salts to prevent the growth of fungi or aa

_mold upon cured meats by immersing: or dipping. g

them into the solution was disclosed as early as 1879. . |

As early as 1888 boric acid and its salts were used in :

packing material such as sawdust, chaff and shav- -

ings for the preservation of ‘all kinds of fresh fruits. :

ah . |

during storage or their transjiortation to near or

distant markets.’ It was even found that many

species of penicillium molds were more or less_

affected by boric acid and its salts’” (Re T, 16-17).

Whereupon the District Court sada that viewed .

retrospectively ‘‘the claimed process would seem. to be ©

“wanting in invention over the disclosures of the. ‘prior

art:’” ;

Secondary Conclusion.

* But the Court said that this ‘conslusion | was met 7 a

. bar in the form of a long, unsuccessful search for a rem-

edy. (R., I, 18). "The views of the Distric ‘were

adopted by the Circuit Court of Appeals (R., I, 18).

If the fact of search be deemed material it ‘is to be

decided ‘whether there is evidence to support it. The

plaintiff ealled thirty-one: witnesses, eighteen of them

- orange packing experts, and none of them were examined

on this subject. The only.evidence pointed to by the

- Court in this connection was certain hearsay, contained.

in publications offered. by the plaintiff for the limited. __

, purpose of showing ‘‘what the art was -being ‘taught. ay

' It is to be decided whether these publications can be

‘taken as evidence of search, and if so whether they go

to show search, or whether, on the contrary thereof they

show the antithesis of search. a prs

Limitatiog Placed on Finding of Prior - Knowledge

: and Use.

The District Court qualified its finding that ses had —

‘been used by several persons in the preparation of citrus —

_: fruit for market prior to the date of the invention in suit,

withi the reservation that the defendant’s evidence did —

/ : i ‘>

not establish with sufficient certainty the fact that any —

of these uses were for the purpose of preventing decay -

and i in such manner as effectively to prevent. decay. The :

Cireuit Court of Appeals based its decision on the same j

conclusion. .. . , ae e

If either or both ‘ansats of this duplex. conclusion «=.

be material in view of the Court’s primary conclusion. - |

.of non-invention then it is for decision whether this con- \,

clusion is so connected with and supported by evidentiary

- facts, as to be antes to any weight. : Sam sta]

‘Nature of the Euihie-{aterest iw this Case.

“The ere to ‘the free use : of ‘such- an important mild

antiseptic and. preservative as borax within its accus-

_ tomed, field of use.is a matter of grave importance, re- | ~

_ gardless of the degree of. importance that ultimately -

might be found to appertain to that right with respect to ._

the application of borax to oranges, which is the thing

4 immediately involvetl in. the decrée in, this case.:

—_——But in addition -to this stibject matter it has been

shown that public interest in this case has been aroused

primarily because of the far-reaching nature of the ap-

parently novel principles of patent’ law that have been

laid down in the opinions below.

As the record shows, the United Sisites, upon the peti- |

tion for. certiorari in this case, filed a. memorandum as.

* Amicus Curiae based upon a letter from the Acting Sec- - 8

retary of Agriculture to the Attorney General, which is -

. attached to the memorandum submitted on the part of

the United States, and which reads i in part as follows:

“ig pecialiste i in this Department entertain theview .

that the decision of the Circuit Court’ of\Appeals in ~

. the case referred to has an unusual and important .

bearing on certain phases of an fo th ‘work. per- |

formed by. the ere and for) this reason ~

also has a‘bearing on the interests of the agricultural

public. As you well know, one of the primary func- -

tions of this Department is to inaugurate and carry —

on varied \investigations in the cultivation, :produc-

tion and marketing of: agricultural products, with a

view to developing new and better methods for their |

‘production and handling, and for controlling and

eradicating diseases and pests that attack them, and

to impart useful information obtained in this: way,

by bulletins or other’ means, to the public. -

c ees. O: oMee ne * eee

Frequently these papers disclosé the adaptability. ioe \ :

_of old well-known chemical’ products co control or

eradicate plant pests and diseases. Many agricul-

turists adopt and follow the processes and methods

set forth in these publications, as they feel they may

safely do so because_the information is' brought to

_ them from official sources. “While it has been the.

practice to have our employees developing improved

- machines or new compounds or new formulae apply

for public service patents, thus dedicating their in- -

ventions to the use of the Government and the public ,

without requiring. the payment of- royalties by the,

users thereof, employees of the Department - have

not, however, until very recently considered it advis- . -

able or necessary, in order to protect interests of

the general public, to apply for public service pat-

ents. upon the adaptation of old machines to new

purposes, slight modification of formulae, or the dis-

covery that well-known chemicals had unusual value

and specific uses, somewhat widening the general

_ purpose or purposes: for which they had formerly

been considered.”? - Se ht SEN

IV. SUMMARY OF ARGUMENT.

The Court erred in entering a decree, the effect of

. which for'three years has been to prevent the petitioner,

: the defendant below, from using borax in the washing

... tanks of its:orange packing houses. _

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“While the wanes is one for the siciarel sipplication: ebro

borax to fruit and vegetables of all kinds, for its effect

‘on any source of decay to which they may. be sus-:

‘ ceptible. (and the treatment ‘of citrus fruit-is referred

to in the patent merely as illustrative)—since the com-

plaint in this case was that the defendant used borax

in the orange washing tanks of hepaipc of its packing

houses with a view to the retarding of the growth ee

/blue mold, the Court viewed the patent as though limited

to that particular use, and as designéd. to prevent blue |

mold which is a saprophyte from gaining access to»

‘ oranges through rind lesions resulting from injuries.

So far as relates to blue mold the citrus industry was

x absorbed with the logical practice of avoiding blue mold |

ee by avoiding injuries. But oranges are subject to a great

7: number of other decay- producing organisms "and. ‘dig: —*

eases and usually come from the groves. sear hae 3

smut, scale, dirt, germs of diseases and sp of fungi,

- parasitic and saprophytic. Therefore it long has been. . -

customary to use: various soaps, powders and other

cleansing and detergent agents. —_ ae in the -

wash water. Songer.

fee of foodstuffs and

a preventive of mold long has been a matter of such

notoriety that the Court might well take_judicial notice

of it as well.as notice of the tenden¢y of the Pure Food

and Drugs Law of 1906 against the adopting of the prac-

tice of adding borax to oranges. as al preservative, —

- is the essence of the claimed process.

‘The: Court erred in looking on the claimed process as

specific ‘and novel rather than at most a mere extension °

of a well known general practice. The defendant’s al-

-leged infringement consisted in the use of borax in

“its wash water which was undertaken in a part of its *

packing houses, at the Suggestion of the en

of heats. ARTS ~S)

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- This very practice was dlissloséd | in many of the prior 7

‘patents and publications; and the inhibiting force of

porax against the growth of blue mold was shown. as

have been long well known.

It is not patentable to apply an ‘a: process ‘to a new

subject; and even if it were, the claimed use. of borax. :

on oranges would. fall, upon consideration of’ that same

use under the early Bishop patent and the same proven |

use in eight other orange packing houses in two States.

‘The Court found that borax had been used in prepar- -

ing. oranges for the market,: but: erroneously eoneluded -

that it had not been used to inhibit: decay. Error ap; -

- péars. here because the Bishop patent expressly specific ad

the preventing of. decay and that purpose was shown in .

the case of the eight other packing establishments shown

to have used:-borax ‘in the orange washing tanks; and

“> the District.Court itself found that for many years borax.

had’ been known to possess antiseptic properties ; had

been known to affect penicillium molds; and Jong had.

been used as preservatives of animal and vegetable a

ter, being used both dry and in solution, with solutions

both hot and ‘cold, and used ‘‘to prevent the growth of .

fungi or mold upon cured meats by immersing or dip- .

ping them into the solution * *.* as early as. 1879’; and ~

_. that as early as 1888 boric acid and its salts had been. -

used to preserve fresh ‘fruits during storage and in trans-

portation, by impregnation. of series! material such as_

- gavdust..

In 1905 the Department of ‘Ausicslinys aoneie out the a

. feasibility of the exact mode of use of borax and boric’ -

_ acid which is claimed in the patent in suit.

The Court. found the claimed process. wanting in inven-

tion over these prior disclosures; but~contrary to the

controlling rule of law, allowed collateral assumptions to

‘‘bar’’ that conclusion. It was error to inject doubt °

from without the four corners of the. patent. But in

ce ae

any “event the collateral assumptions ° ‘which controlled )

‘the decision of both Courts below were without warrant. -

These. assumptions were, one of long -and unsuccessful oe

-_. search,. one of commercial . success, and the last an as: .

sumption that the- Department of Agriculture in. 1905 eis

The patent being inherently bad, as ‘the Court fou ;

a collateral assumption to support the patent is to be.

- proved affizmatively.’ Plaintiff, called a large) number,

“of citrus. fruit experts as witnesses. but failed to examine.

tried the use of borax and failed. 2

. any of them on the subject of search... Hence a pre-

: sumption that they would ‘have negatived. the claim ©

a of search. Plaintiff’s leading expert . Hart, testified

squarely ‘that’ under the standard ‘‘careful. handling”

practice no- other: preventive was needed.

Neither Court pointed to evidence to support the claim —

of search except thatthe Cireuit Court of Appeals tiamed a

- thirteen men as exemplars of the conduct of. search. |

Eleven of them did not testify at all and are not men- | ©

tioned in connection with search. ‘Seven of the eleven |

‘ were Department. of Agriculture experts working inten-. pk

sively and’ exclusively on. fhe careful handling program.

Journalism. and - other - things remote from search occi-

BP pied the other four. Of:-the two who testified in this case,

_one is the witness above mentioned who distinetly nega-

_tived any thought of search | and any need for ‘search.

: The other made no mention of search.

Evidence: of commercial success, fails for various rea-

ns, one being that in practice the plaintiff coupled the

use of borax with the use of a subsequent. antiseptic

waxy coating for which mueh was claimed, so that the

adoption and success of one cannot be distinguished from

the adoption and success of the other. ©

Plaintiff ’s. high pressure campaign. for adoption of its

| patented processes has. had no bearing upon the con-

. tinued reliance upon avoiding of i injuries as aie essential

' +

” : : : :

“hs

o ¥ - : ; -

> 8 Ls

. ie ‘ ° ines

£ . .

rf - -

ney Vas

: ;

. : ’ 2 3

}

: _ method for insuring | that fruit will reach the market and

‘go’ into consumption substantially free: from decay, as —

j for many years has) been visibly notable.

The record shows that the Department of Agriculture

tive coating - of 6ranges is explained by facts’ of great

notoriety with Tespect to the agitations of that day. and

~ afte, against the adding of preservatives to foodstuffs.

oneurring was the fact: that the use of a. supposed pre- ;

dervative would:make more ‘difficult the securing of gen- te

eral: adherencé, to, ‘‘careful handling,”’’ of the kind that —

would send the fruit to the market free from even the

“borax demonstrations in 1905: were suceégsful and’that. _—

~ the failure to recommend the added borax as a preserva- - ,

slightest injuries, the thing upon. which the Department .

of Agriculture has concentrated ever since’ 1905.

The Courts erred in sustaining. the article . claims, —

~ since a. fiesh orange is*none the less a- fresh orange be-

case it may have on its rind.a trace of borax, particu-

- larly since none but a chemist could find the borax and

+ *. thea would not know- whether it-came from use of the

claimed process, or came from soil, water or spray, dur-

ing “growth. _And if this reason were not enough, it’

would appear further that this change from a fresh .

’ orange to an-article of manufacture could not be effected _

by a specification as vague as that of the patent, which

‘specifies the article.as an. orange carrying borax in an

amount that is ‘‘very small but: sufficient to render the es

fruit resistant to ae enol seach = : |

v. "ARGUMENT.

The Patent ts For Treatment of Fruits ond Vegetables :

ce = : ‘Against Decay. ae

The patent pene upon jin this case claims a monopoly :

| on the application of ¢ a solution of borax or. boric acid to

. UA va atannnne é

. ‘ aes .

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&. Ne a - °

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7 PO DES TST AEN NE

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_ fresh fruits and guinea for the viiniitn of decay

and also a monopoly on the sale of fresh fruits and vege- _

. tables which carry a borax or boric acid residue after

such application. .

ae Ue

The ‘Patent Recites Treatment of: Citrus Fruit as

Illustrative.

The patent describes the customary. treatment of citrus

fruit in the packing house ‘‘for the sake of.a concrete

example whereby the principles of the invention ‘may be

illustrated and explained’’ (R.,. I, 587): And as it hap-

pens the infringement charged in this case. was that in

‘1925 and 1926 the defendant below, the American Fruit ‘

Growers, Incorporated, used borax ‘in the tanks in sev-

eral 6f its packing houses in which it washed and ‘disin-

fected its oranges in preparation for marketing, and that

the defendant sold oranges that carried with them after

such washing and disinfecting, minute quantities of borax

as shown by chemical analysis (R., I, 99, 111).

Effect of Decree.

The effect of the decree, which ‘sustains thirteen proc. —

ess claims of the patent and four article claims, is to’

enjoin the American Fruit Growers, Incorporated, from |

‘using borax or any form of the borie acid radical in the’

water 4n which it cleanses and purifies any of its fruits

ang. vegetables, and from selling any fruits or vegetables

that may carry with them into the market traces of borax

or its substantia] equivalent (R., I, 19,.597).

Under this decree the defendant has been required for

three years to wash and so far as desired, disinfect its

oranges without the aid of this commonly used water

softener, cleanser and antiseptic,—although the Courts

below found that borax. dong had been in common use

for those purposes in the general field of preparing and

preserving foodstuffs, and also had been used by sev-

eral persons in the preparation of citrus fruit for the

‘ market, prior to the date of the patent in suit (supra).

. Scientific authorities say that extremely low concen *

trations of borax have a distinctly inhibiting effect on |

penicillium bas mold) (infra, p. 24).

The Patent’ Calls for No Change in

_ Packing House Practices.

The patent itself undertakes to portray in a.general

way the*prior orange packing-house art and specifies that

under the claimed process borax can be added to the wash

water ‘‘as a part of or in eonjunétion with the usual.

washing operation to which the fruit is initially subjected _

in its handling according to modern packing house meth-

ods,’’ to wit: the boram#‘may be added to the wash water

in the usual soaking tank into which the fruit is dumped

from the field boxes as it comes from ‘the groves.’’ _ In

the same connection the patent shows how well the

claimed process will fit into the common packing house

‘practice by pointing out that the borax has -‘‘excellent

cleansing or detergent properties” (R., I, 590, top).

The patent refers further to the customary washing

' and serubbing of the ‘orange (R., I, 587); and the plain-.

tiff’s own evidence throughout shows that for many years

‘it had been customary to use various cleansing and disin-

fecting agents in the wash water, selected from time to

time according to the judgment and experience of the

individual packing house operator ‘and the particular

kinds of. decay-producing organisms and diseases most

prevalent at the time.

Both thé District Court and the Circuit Court of Ap-

peals caused the case to turn upon the idea that the wash-

ing of the oranges in water containing borax results in

leaving a borax residue in any cuts or other wouhds that

have broken the ririd of the orange, the point of this

being that it has been well established and is conceded -

that this ‘“blue mold’’ is a saprophyte which depends for

sustenance on dead or dying tissues and therefore can - —

not grow upon the sound, healthy ririd of an orange, and

can cause decay only by finding growth in rind lesions.

, - ese : ;

Careful Handling An Adequate Preventive of Blue

-Mold—the Enemy of Wounded Oranges. _

The fact is that up to the time of the propaganda of the “

Brogdex Company for the use of borax which that com- _

pany put out originally as a patented composition called

- “Brogdite’’ the industry was led to be absorbed (and |

_ still is absorbed) in a most remarkable way and to a most

remarkable degree in the developing and carrying on: of

elaborately worked out. and standardized :methods and

means of handling the oranges to keep them from injury,

as was found and universally agreed to be a logical and

commercially feasible way of avoiding the attacks of blue

mold, which is the most common cause of decay of food-

stuffs, including fresh fruits and vegetables. The plain-

tiff devoted some eight hundred and fifty pages of pub-

lications to show how continuously these careful handling

methods were taught as. highly effective, from 1902, when

it was well established that blue mold does not attack

sound oranges down to the very time of the trial in

1927. For many years we have’seen the fresh fruit of

the standardized fruit shipping industry what it is, not

because of preserving processes but because of. the care

with which the fruit was grown and handled.

Sound Oranges Subject to ‘Many Decay Preliesing

. Organisms and Diseases.

_And it was shown by the plaintiff that orange growers

and shippers: have to reckon with a great. number of

ae ,

other decay producing organisms and diseases, some of

them, such as stem end rot being very serious; and that. -

most, if not all, of these other pests and diseases attack

sound oranges as well as wounded oranges. Naturally,

therefore, the evidence is full of references to the use of |

-yarious kinds of detergents and disinfectants ‘in the

washing process and use of more powerful antiseptics in

disinfecting the tanks, field boxes, clothing of workmen

and other sources of infection. —

It was thoroughly established in this case, and the fact

will not be disputed, that for many years borax and

boracic acid had béen probably the best known, and most

‘ eommonly used antiseptics for the preserving of animal

’ and vegetable matter and specifically for inhibiting the

growth of this common blue mold upon foodstuffs and

other organic substances. ‘ |

The District Court found all of this and found as a

further fact that a customary ‘manner of use. was by.

immersing or dipping the foodstuffs into a borax or

poracic acid solution, hot or .cold, or in some cases by

applying powdered borax to the surface of the article

to be protected against mold (R., I, 16, 17).

Witnesses on both sides referred freely to the use of

various kinds of soaps,” washing powders and other sub-

*Both medical literature and the popular literature of sanitation and .

antisepsis, and horticultural literature as well have frequent references to

the prophylactic, bactericidal and germicidal properties of ordinary soaps.

‘ Plaintiff's Exhibit_36 (R., II, 1161) is on this subject as bearing on citrus

fruit diseases. See also

Davison, F. R., Detoxifying, diffusing germicidal and surface :

“tension depressing properties of soaps, J. Infect. Diseases, 43: ©

292-299, Oct. ’28;

Eggerth, A. H., Germicidal action of hydroxy soaps,-J. Ex-—

perimental Med. 50: 299-313, Sept. '29;

Norton, J. F., Soaps in relation to their use for hand washing, :

‘J. American Medical Association 74: 302-305, July 31, ’20:

Foreign Letters, Treatment of war wounds by the use of soap, ~

J. A. M. A. 67: 1954, Dec: 23, "16;

(Footnote continued on next page.)

18°

’ stances with antiseptic qualities such as Blue Stone and

permanganate of potash. One of the plaintiff’s witnesses

-who had been.a packing house manager in Florida and

California remarked that he considered washing. powder

"almost as necessary as the water itself (R., I, 317).

Borax was used by various packing. house operators

who knew it both as a cleansing and water softetiing

,agent, and as an antiseptic useful in inhibiting the

growth of mold and consequent decay (infra).

The Mature: of the Alleged. Invention.

PAs

The patent in-wuit" relates to ‘treating fresh: fruits or

vegetables with borax or boric acid to prevent decay.

Emphasis is placed ywpon the ‘treatment of citrus fruit

to prevent blue mold decay, but the claims are not lim-

ited to this use. Thé patentees discuss the scope of their.

invention in these words: (R., I, 586) :

, “This invention rdultes to art of preparing fresh

fruit for ‘market; and in ‘particular it relates to

processes for the: treatment of citrus arid other fruits’ °

in such manner that the development of molds and .

the like, upon. the fruit, and especially the develop-

ment of blue mold and infection by blue mold spores,

is prevented or arrested either wholly or to such

large extent as greatly to prolong the marketable

life of the fruit beyond what has been a here-

tofére; “°°”.

(Footnote continued from eee page.)

Current Comment, Germicidal properties of soap, J. A. M A.

, 87: 37, July 3, '26;

Walker, J. E. The germicidal properties. of shaanlcn ty pure

soaps, J. Infgct. Diseases 35: 557, Dec., 24; also 37: 181

Ang., '25 and 38: ‘127, Feb., '26;

Tilley, F. W., and Schaffer; J. M., Germidical oiiclesan of

coconut oil and linseed, oil soaps, J. Infect. Dis. 37: 359,

“Oct., 25; abst. J. A. M. A. 85: 1757, NOY. 28, ‘25. ;

‘ ott

“The greatest present utility of the invention is:

in the. treatment of citrus fruits such as oranges,

_ grapefruit, lemons, tangerines, etc., also apples and

other fruits that are attacked by blue moid or the -

like. The invention is broad, however, and the term

- frnit as herein employed is te be understood ‘as.

not necessarily restricted to iruit in the sense in

which. the word is usually employed, but is to be:

understood broadly as including not only fruit

‘proper but also vegetables such as tomatoes oF the

like, that can be treated to advantage in acecordance._-—- >

with the principles of the invention to “be herein-

+: after set forts

° °

A broad: invention; not limited to the, treatment of.

oranges, nor. citrus fruit, nor even fruit in the sense in

which the word is usually employed. No, this inven-.

tion is applicable, not only to’ the treatment of fruit .

proper, but also to the treatment of vegetables. This

is important. It-is a clear recognition ‘by the patentees

that the problem of arresting decay from-mold growth ©

is not peculiar to the citrus industry, but is cormmon to

fruit and vegetable growing generally:

The treatment itself is just this—The fruit is im-

mersed in a cold or warm solution/of borax or boric acid, |

_ permitted to remain until thoroughly wet, then removed,

rinsed or not as seems best, and dried. -After drying, any —

deposit of the salt or acid remaining on the fruit is re-

moved by brushing. Either borax or boric (sometimes

called boracic) acid may be used; they are equivalents

‘for the purpose, their toxicity being due to: the boric acid

radical common.to both. Ter: :

Borax and boric acid have been well known and widely

- used as food preservatives and antiseptics for at least

fifty years. Indeed as this Court will doubtless: remem-

~ ber, the Pure Food and Drug Law of 1906 was enacted |

for the'very purpose, among others, of regulating, in fact

prohibiting, the use of borax and boric acid in food pres-

sheiiian: ik 4 use had ai that shin Sect So: wide: -

spread as to be a menace te-public health.

It would nein that thie Court might take judicial’ notice ee:

é old and widespread use of borax and boric acid ~

as preservative for foodstuffs and hold that such use can-

not now be patented. We think this Court would be fully

justified | in ‘so holding. It is not essential, however, to *

take judicial notice of the old and wide-spread use of

' borax and boric acid as preservatives—the reeord amply

proves this use, not only as applied to foods generally - :

‘but as applied to fresh fruits and vegetables specifically. -

ey mas

| Plaintift’s . “Specific Mode of Application.’ nS

“The ait ind for years been dipping toot: including

fresh fruits and. vegetables into solutions of borax and

boric acid for the purpose of preventing decay. Obvi-—

ously, these patentees cannot get a valid capes covering

. this very practice. °

Conceivably .there might be a valid chink covering

some specific mode of application—some novel method of -

making use of this old and well-known property of boric

acid. But no novelty of method is set forth in the patent.

Both of the opinions below quote claim 3 as a typical

claim:

‘**3. In the preparation of fresh fruit for market,

the process which comprises subjecting fruit to the

action: of an aqueous solution of borax, the fluidity,

strength and temperature of the treating solution,

and the duration of the treatment, being such that»

‘ exposed rind or skin tissues of the fruit are effec-

tively impregnated with borax and rendered resistant

to blue mold decay, while at the same time the fruit

_is not sealded-nor is its freshness or edibility other-— :

' wise substantially impaired”’ (R., I, 598), Sief

- 21 ; | i

“and both Courts adopt the following ‘theory of the

patent: meee

“But ‘their seein. as I understand it, is not: the

mere use of borax or boric acid, nor of the use of

that force in a spegifig manner, but it consists in the

subjecti@™ of a sf@ific object to the influence of ‘a

specific force actin ough a 2 ied mode of appli-

eation to produce a specific result.’ ma :

A very specific invention it would seem, involving. the

application of a specific foreé, upon a specific object, act-———~.

‘ing in‘a specific way,, to _produce a specific result.. The

borax. or boric acid is, of course, the specific force, tlie:

same specific force specified in the various prior art pat-

ents from which we have quoted, as well as other prior

patents of record; thé: fruit is the, specific object, also as

specified in the particular citations above referred to;

and preservation from decay is the specific result, the

_ same specific result sought for and obtained by the use

_ | of borax throughout the world for the last fifty years.

Nor does the specific mode of application involve. any-

thing novel or out of the ordinary. : :

That patentees make up a solution of borax in water,

‘dip the fruit in it, allow the fruit.to remain two or three

minutes or long enough to be thoroughly: wet, remove it,

> and allow it to dry.. Could anything be simpler?Isn’t-————-

that the common and normal method of proceeding? « In’

fact, is there any other way that you can subject the ~~

article to the action of a solution of boracic acid as speci-

fied in the Spear patent, or dip it'in the solution as ex-

pressed in the Gahn patent, or wash or bathe it therein,

as stated by Bishop? And as for the saturated solution

there is no magic in that; 5% happens to be saturation

j point at ordinary temperatures and the patent itself

~ + allows a range of from.2% to 20% without being even.

limited to that! (R., I, 591): The defendant i in fact used

LANA Gay

3 jon th ae

ee ee |

ee =

" a solutiow of less than 2%, yet that - too. was. apparently =

ge within the ‘‘specific mode of application’

specified by Judge Morris.

_ The patent leaves also the detail of temperature to

the/choice of the operator, between the natural tempera-

‘ture of the water and a degree of. heat just short of that

/NWhich would “seald or cook”’ the. fruit (R., I, 590; Claim

- / 4, B., I, 598).

No, the mode of application is: certainly’ not. specific in

the sense that its details cannot be varied. Its details

can ‘be varied within. wide limits and are not of vital |

importance; it is important only that the borax be used

effectively. ‘Indeed, the potentees themselve state (R., :

I, 589) ° ‘ 5 : ,

“Tne method of r applying the ger ae ehitiion to.

--the fruit may assume various specifically different

- forms, the precise. details of procedure being not

essential to the invention in its; broader aspects.

However, where it is désirable, as may often be the’

case, to carry out the process without changing prior .

practice any: more than is strictly necessary, the ap-

plication of the mold-reta rding agent may be effected

as a part of or in conjunction with the usual washing

_ operation to which the fruit is initially. subjected in

its handling according: to modern packing house

' methods), especially. as most, of. the mold-retarding

agents herein contemplated also _e excellerit

cleansing « detergent properties’’ (R:, I, 589).

So the patentees have not invented any novel method

. for using borax, and their patent is simply for the ‘effec: ° |

tive use of borax in preventing decay in fresh fruits and

vegetables. Is this patentable? Is it an invention? ~

Clearly no. Then ‘why was the > patent held uae

as “Defendant’s Practice.

- The defendant owns outright only nine ‘packing houses,

and of these only four used borax (R., I, ser Tt owns an

- y — FETE / a 3 .

ae cat dt. iat le co aE ee tal EOE ALLS NERS LEO SELENE Moe ee NE gk hy

ee eT Oe!

: Rene

interest, but not 4 controlling interest, in six other houses %

of which four used borax (R., I, 121).

The defendant used berax in these few houses, not

_ because it knew of plaintiff’s process, not because it ob-

served with envy the advantages accruing to plaintiff a.

licensees because of their licenses, but simply because

- borax was recommended by the Department of Agricul-

- ture. Defendant; like others in the- industry receives

. eirculars from the Department as a matter of course, and.

quite naturally. and innocently supposes that thé Govern-

_ ment would not recommend anything which cannot be -

- freely used:. Thus, in the present case, defendant re-~

ceived ‘a circular from ‘the Department suggesting the

use of a 5% sélution of borax to retard decay. This

circular. was followed by. others. - In accordance with the

~” eustom, the head office embodied these circulars in letters

and forwarded them to all packing house managers who

were free to make such use of the information as they

wished (R., I, 125) ; see, also, Defendant’s‘Exhibit 3 (R.,

TI, 1458). As a consequence a few houses tried out the

Government’ s recommendations. And this was all be--

‘fore defendant had any intimation that the plaintiff was . |

_making claim to the. exclusive use of ‘borax for this

purpose. An innocent infringement, certainly. ._ :

-In the spring of 1926, defendant was: notified that it

was‘infringing, but the packing season. was then prac- .

tically at an erid. Inthe fall of 1926 before the opening

of the’ season experiments were conducted to discover

whether or not satisfactory results might not be-had with

less than the 5% recommended by the Department and

with unheated water... As a result the: defendant proved

to its own satisfaction that a 134% solution of borax in

: ‘ unheated water gave. complete satisfaction, and all pack-_ |

bs. Sayin aia and field men were instructed to use

a solution, if any (Deft.’s Ex. 4, R., II, 1462). The

practice for the 1926-27 season was ‘in accordance with

‘ids jnstenatione (R,, 5, 131). Ricuuitos with hb 1997. A

28 season,’ defendant ‘has used no borax at: all. The

— actual reduction in the loss from decay which tle figures

compiled for use in this case disclosed accurately for the

first time was too small -to warrant accepting the terms

proposed by - the District Court for ‘vaouting the in-

junction. - ,

Did defendant infringe? Defendant finned: its fruit

in a solution of borax to .check decay. -If this be in-

.. fringement, why then’ defendant infringed, just as ©

' the patentees of the prior art patents, which we shall

now discuss, would infringe. ‘should they attempt today

ig operate under their own. ‘old patents, all of which.

_ have long since expired. ‘The. maxim that that which in-.

fringes, if later would anticipate if earlier i is applicable;

here.

Prior. Patents and Publications: Relating to the Use of

: Borax and Boric Acid as Food Preservatives.

“Our expert, Dr. Alsberg, foviene Chief of the Burean

.- of. Chemistry,’ testified (R., I, sic

“The first use of anes as ‘a food preservative

‘that I know of, goes back to the latter years of the ~

‘sixtys.6f the last century, along ’67, *68 and ’69.

It came to bé used -as a food preservative. It had . :

of. course been known long before that in medicine.

It was used for many things in niedicine, and had .

been used as-a wound dressing, for ‘its antiseptic

qualities. long before that time; but it'was first used

in food that I know of, and ‘its use developed in

“Sweden, by a man_of the name of Gahn, and it de-

veloped rapidly and Was widely adopted, and by the

_ 90s was so extensively used that it became a matter

of very serious consideration from the _standpoint

# .

* of public health, because it was so widely used in all

hf _kinds of foodstuffs.” ued ae

“ He then went'on to testify (R., I, 269) that about:1900

England passed laws restricting its use in foodstuffs .

te and that-Germany thereafter prohibited its use entirely. :

| Then in 1906 our Pure Food Law was enacted and regu-

- lations issued under that. Act which excluded boric acid -

_ from use as a preservative in foodstuffs (R., I,.270; ‘see

_ also U..8. Compiled Statutes of 1918, Act of June 30, -

- 1906, Chapter 3915, Section 7, 34 Statutes at large, 767). -

Dr. Alsberg testified (R., 1,271): st eee,

- “Tt would be difficult to give & complete. list. * * *

I can only give those that I can recall. It.was -

’ widely used as a preservative. in various kinds of

meats, particularly. in smoked and salted meats’ that

were prepared for export. It was used in sausage -

‘meat; it was used in milk; it was used on the out-

side of cheeses or to impregnate ‘the cloth with which

certain types of cheese are wrapped; it was com-

monly used in butter, in cream; for the preserva-.

tion of oysters and lobsters, shrimp;~it was used

‘in wine, beer; it was used in the “preservation of .

fruit juices of. various kinds; it was used to help.

Sterilizing process in cafining; it ‘was sold as a can- ~

ning. compeund to. the housewives of the ‘country

and was sold for that purpose as late as 1916, 1917

OF. TUR? © een, Pe

- The patents and publications offered in’ evidenge alep

show the general and widespread knowledge and uie.of: . '

_ borax and borie. acid as antiseptics and food: preserva-

tives long-prigy to the filing. of the patent in suit. Three. _

_ _ publications and twenty-five patents were-offered for this

purpose -and all are pertinent, so widespread, was the |

use of these substances as food preservatives. But for

, the purposes of this brief we shall content ourselves with ~

a discussion. of only nine of them, the other nineteen, .-_

Pht eed ELE eh Coc nt Ae NRO . oe ae

, . . te :

being available if further evidence be desired of the

various preservative uses to which borax and boric acid

have been put. Pi eu

_ Spear, U. S. Patent 67,921, August,15, 1867 (Def. Ex.

19, RMI, 1598). | |

This is the earliest patent of which wé have any ree-

‘ord deseribing the use of borax and boric acid as food

preservatives. Claim 4 of the patent reads as follows:

‘*Subjecting animal or. vegetable matter to the

action of a solution of boraciec acid in the manner

substantially as herein described for the purpose

herein specified.’’ .

No subsequent patentee (prior to the patent in suit) has

attempted to claim the use of borax or borie acid broadly.

For example, in U, S. Patent No. 281,554, July 17, 1883

(Def. Ex. 28, R., Il, 1559), the patentee distinctly dis-

claims anything novel in the use of borie acid in pre-

serving foods, stating: Fes

‘*T am well aware that boracic acid has been used.

in almost every coriceivahle form as an antiseptic.’’

Gahn (Donn ) U.S. Patent 161,944, April 13, 1875 (Def.

Ex. 20, R., II, 1546)... a a

-This old patent issued over fifty years ago is so inter-

esting and pertinent.to the present inquiry that we take

‘ the liberty of quoting the body of it in full: aap

‘This invention relates to a new composition by

which all kinds of: raw food, fruit, and other vege-

table products may be preserved for a loriger tite,

’.- and in warm climate; and the invention consists .in

compounding boracic acid and alum in the propor-

tion of about twenty parts of boracic acid and ten

partsofalum =

This composition may be used in a powdered state,

and then rubbed.and sprinkled over layers of the

OD mn we

ENO nop LR HM Tia eee Se et

substance to be preserved, or in a liquid state, and

then the substances to be preserved have to be dipped

or immersed into the liquid. For this solution I

prefer to use from eight to ten ounces of the powder

to one gallon of water, or as much as the water will.

dissolve. Sugar in the proportion of about two parts |

to ten parts of alum and twenty of boracic acid may

be also used to advantage, in addition to the ingre-

dients named, and the proportion of the alum may

be varied according to the amount of substances: to

"be preserved, some kinds requiring but one part of

alum to twenty of boracie acid, and some as. much

as ten parts of alum to twenty of boracic acid.’’

_ This patent deserves careful study. In the first place

the object of the patentee was to preserve raw food, fruit:

and other vegetable products a longer time in warm

climate—precisely the objects sought by Messrs. Brog-

den and Trowbridge. One method followed. by Gahn in -

_ attaining this object was to make a solution of his boracic

acid ‘and alum in water and then dip or immerse thé

substanees to be preserved in the solution. Here again

we have precisely. the method followed by the patentees

of the patent m.suit. Gahn also.specifies the concentra-

tion of his solution. It is from eight to ten ounces to one

gallon of water, or as much as the water will dissolve.

This falls squarely within the range of thepatent in suit

and is practically the preferred concefitration of . that:

patent. It is to be noted that’ in each case the patent -

adopts the sample course of recommending a degree of

concentration that amounts to a saturated solution. at

an ordinary natural temperature of the water. In fact.

the only difference between the Gahn process and the’

Brogden process is that Gahn employs a small quantity

of alum, and it will be observed that this alum may be

reduced to as little as one part of alum to twenty of

boracic acid. But, in any event, the alum would not

affect the action of the acid and is added because of its

—_—_ eek

Kidline and hardening effect. Dr.: Alsberg made this

game clear in his Tiga R., I, 30:

£6 * * alum bas no preservative action. It has a.

* * tanning and hardening effect, and is so widely used.

For example, i it is a common thing in the making of

vinegar or salt pickles, to tise alum, so that the

pickles remain firm through the winter and do not

get soft and mushy, and now these articles which

are preserved with borax or boracic acid are liable F

to soften and get a brown crust over the outside if |

they are packed dry in borax, as some of these pat-

ents provide, and the alum by tanning and hardening

the tissues of the material has’a tendency to counter-

act that effect. That is clearly recognized -in the

English patent granted to this same patentee that

we will come ‘to later, in which it is specified why

alum is used,-and the literature of that. time de-

scribes that this man Gahn put on the market a |

_ preserving preparation under the name of-Aseptin — |

which analysts who analyzed it at that time, report |

to be in three forms, one without any alum, used in |

things like milk, and one with a -small. amouit of |

-alum, and another with a larger amount of alum.

They were put on the market in those three forms,

and he explains why he uses alum in the English

patent as alum has only the preserving action in ~

so far as by toughening the thing it makes the

entrance of foreign organisms more difficult.’’

sain: i abst cabs Rican nt eon

Plainly under this Gahn patent raw fruit was pro-

posed to be kept as fresh fruit, for a longer time-free

_from decay, under the very procedure of the Brogden -

and Trowbridge patent here in suit. The end in view

under each patent is to have an orange (or other fruit

or vegetable) with the rind or skin made mold-resistant,

‘to a degree, by an application of borax or boric acid.

Under the Gahn patent the pores of the rind or skin

are further somewhat closed against decay producing.

organisms by the hardening effect of alum, used in

strength according to the kind of fruit treated.

It cannot be argued that by reason of the fact that ,

‘the aqueous ‘solution of boracie acid contained a little

alum, an orange that had gone through such. solution

_ was in any essential sense different from an orange that

goes through such a-solution without: the alum. Under

- both patents the aes or immersing. is the. same

process,

It is not to be nebo that oranges treated under tlie

‘Gahn (Donn) | procéss of 1874, were to be left in the

boracic acid solution.

There is no escape from the conclusion that the process’

of the Gahn patent could not be practiced now without

infringing the patent here jn suit. And it is axiomatic.

that a process that infringes if later, anticipates if, ©

earlier.

Annual Report of the Cenndeskente Pe Agriculture for —

the year 1878, page 577. (Def. Ex. 3 &.. Be. 1504).

This publication discusses the use of borax as a pre-

servative in butter. The cabe wee quoted from the

_ report:

‘*The antiseptic. virtues of borax being well known

as well as the experiments to preserve meat and.

other edibles by its aid, it occurred that it might be

_. substituted in butter in place of common salt. On

__ trial it was found not to change in the least the flavor

of the butter and indeed preserved it admirably.” .

- Fagersten U.S. Patent 221 41, November: 11. 1879 (Def.

Fx. 24, R., I], 1552).

This patent relates to the preservation of meats and

has for its object to kill and remove from the meats

germs, fungi, mold or slime. This object is attained by

dipping the meats in a hot solution-of borie acid or its

salts, such ds borax. The novelty claimed for this proe-

“ess resides in the use of the hot solution, the patentee

stating, ‘I do not claim, broadly, the use of boracie acid

Pee ee

30 : ant ie et

Its as I am aware » they have heen used’ in a pow-

pn condition and ina cold solution, but Iam not aware

that a hot, solution of boracic acid or its salts has been

heretofore used for the purpose of pers mold gasaun

meats. a:

The only caution needed to be observed by one de- ,

.siring to extend. this process to fresh fruit is the very

caution that is set out in the Brogden and Trowbridge

patent here in suit: ‘*The bath of treating Solution

should not be hot enough, however,. to scald vt cook the

fruit’’ (R., I, 590). )

Hauff U. S. Patent 234, 567, November 16, 1880 (Det.

Ex. 25, R., I, 1554).

This is another- patent validtien to. the - ‘seeetiviioh. of

foodstuffs, both aniinal and vegetable. ‘The patentee

. States: ‘‘My -invention consists in a preserving com-

pound produced by mixing boric acid and borax, then dis-

_ solving the mixture in ‘water and finally evaporating the. 3

solution to. dryness.’’’ He-goes on to state that boric acid,

_ because of its fatty nature is wétted with difficulty and

hence cannot easily be put in solution. In order to over-

come this difficulty he adds the borax. The resultant mix:

‘ ture is easily soluble in ten parts of water which solution

can then be used as a preservative. Here then isa patent

which fully discloses the food preservative properties of

both borax and boric acid and gives specific instructions

for. the preparation of a‘ten per cent. solution.

- This patent discloses: three of the four things. that

were pointed to by the Courts below as the elements of

invention in the patent in suit. In both patents we have

(a) the specific object, vegetable fogdstuffs (fruits and.

vegetables) (b) the specific force, a solution carrying

the boric acid radical in substantial strength, (c) a

specific result. aimed at, the preserving of the foodstuff.

_.The fourth element of patentability, (d) a,specific mode .

of application, is clearly defined by common sense, and

ae ree | ee ee? oe ati te ct te alt

/ practices, which the District Court itself a into «

the case as common in the prior art (supra, /p.. 6).

_ Heauff frankly left the manner of application of. his

borax solution as a matter of choice to be determined

according to time and circumstance. ; as

The claims of the patent in suit cover the same range

of choice of method of application.

Storer British Patent 214 of 1888 (Def. Ex. 40, R., IT,

1598). .

- Of his invention the patentee states: ‘*My invention

_ has for its object the preparation of packing material -for

the preservation in a cheap and convenient manner of all

kinds of fresh fruits for the storing and for the trans- -

port thereof to near or distant markets; and the preven-

tion for a reasonable time of decay or damage: therein.””

‘In making this packing material he takes sawdust, chaff,

" ete. and impregnates it with a solution of boracie acid

or borax, drys the impregnated material and then packs ~

his fruit therein. This patent is particularly. interesting

because the patentee on page 2, line 21, specifically. refers

to oranges, lemons and limes—all citrus fruit—as fruit

intended to be packed in his, pteservative mixture. _ .

Horticulturist’s Rule Book, published 1898, pages 186-

187 (Def, Ex. 43, R., II, 1611). |

On page’ 187. of this publication, under the heading ©

, “Preserving Fruits for Exhibition’’ there are directions

for preparing: various ‘solutions in which, fruit may be

placed in order to preserve it for exhibition purposes;

among these ‘is a boric acid solution: The directions for

making this solution, contained in paragraph 4 of page

187, read as follows: Meo rtor

‘*Boric seid may. be used as preservative by dis-

solving a half pound in 50 pounds of water. If the.

aiid is not clear, filter it. Useful for colored:

ruits.’’ apes ¥

This is a 1% solution.

Bishop U. S. Patent 683,899, Octaber 8, 1901 (Def. ix

No. 7, R., Il, 1473). -

- This patent is one of the most interesting offered in-

~ evidence in view of the testimony given at the trial, by

Frank Bishop, son of the patentee Simeon Bishop. “The

title of this patent is ‘*Method of Preserving Foods”

and we shall quote pom: it freely:

See invention aims to prolong the period of

\ usefulness of fruit, vegetables, eggs and the like as.

? \articles of faod-and prevent their usual rapid decay

__-and ‘deterioration, thereby betiefiting the grower,

the shipper, the merchant, and the consunier. .

“The invention consists in subjecting the article

of food to an antiseptic bath to purify, cleanse, and

kill all germ, then treating it to a coat of. air-exclud-

ing material. This: process not only’ preserves the

articles of food, but enhances its value. . |

_ **The article ‘of food to be treated is first washed

or .bathed in a comparatively weak solution of

boracie acid, which destroys any and all germs and

thoroughly cleanses and rénders the article whole- Y

some. The article is then coated with gelatin, which °

excludes the air and prevents the entrance of atmos-

‘pheric germs, thereby preventing decay. * * * The

-boracie acid solution is’ prepared by adding’ two.

ounces of commercial boracic acid to one gallon of

pure filtered water.”’

Here then is another clear disclosure of the use of a boric

acid solution in treating fruit and — to prevent

decay, The concentration is 1.50%. .

_» The Bishop patent has all of the precision of the: pat-

ent in suit, and more. The Bishop patent fixes a ee.

of solution and method of application.

The Brogden and Trowbridge patent coming twenty. .

-two years later is not staked on anything defiriite. It.

claims, every degree of concentration from 2% to 20%,

—

33 ©

aan pen agen tm

ae sven outside of that range that may be found’

to have an inhibiting effect (R., I, 591). And it claims

every temperature of solution: from the natural. tem- |

perature of the water to a degree of heat just short of

that which will scald or cook the fruit (R., I, 590).

' - Bishop suggests an air-excluding coating of gelatine,

impregnated. with. boracic ‘acid, to be added after the ;

original beracie acid bath (R., II, 1474).

Bishop shows how he renders his Batt voating anti-

septic by adding boracie acid (R., II, 1474). Brogden’s

coating may well contain the same antiseptic. He does

not say what antiseptic is added to his paraffine and

natural oils and waxes of the citrus tree to make the |

- mixture antiseptic as he says it is (R., II, 1467).~

Frank,C. Bishop testified that for two years he helped

his father in the use of the. Bishop proeess on oranges,

‘pears and eggs. He said on cross examination that they

selected the best fruit for this preservative treatment

(R., 1, 183); but it cannot be argued that he meant that

they discarded fruit with the minute scratches, cuts,

thorn pricks or bruises, described in the plaintiff’s pat-

ent as frequent sources of infection (R., I, 587).

deSturler U. S. Patent 694,301, sbaiticcst 2, Ie

(Def. Ex, 30, R., 11, 1566).

Quoting from the patent :.

‘*This inverition relates to the preservation of -

vegetables, fruit, meat, eggs and other. oe yaeee

substances either. for storage or transit. * * °

‘The object of my invention is to treat‘foods ex-. <

_‘ternally in such manner that they shall be pre-.

served for storage in transit for.a much longer time

than has hitherto generally been possible, and thus

_to-be-transported long distances by sea or land and

‘delivered in a perfectly fresh condition. - -

‘According to iny invention the surface of the

food or substance to be preserved is first treated with

enable many kinds of foods, such as perishable fruits,

‘a sterilizing. médiuin—sach for. er ee as sulfu-

-rous acid, ’ formic aldehyde, or boracic acid—by

. which the surface of the food or substafice is both

- sterilized a nd. protected from the deleterious action |

of the germs contained in the air.’’-

thereyte the food ‘i is- wrapped in’a wrapper which has

en impregnated with these-antiseptics. .

This again is the very. procedural program set ‘ont 5 in

the process in suit. deSturler treats fruits, vegetables,

meat and other perishables with a sterilizing medium

such as boracic acid. It is applied’so as to remain there,

because it is specified that ‘‘the surface of the food or ©

substance is both sterilized and protected from the dele-

teridus action of the germs contained in the air.’’ It is.

not necessary to particularize as to method of applica-

_ tion unless the method proposed is novel. The District —

Court found, that borax and boric acid long have been

applied as food preservatives in two ways, dry and in

solution,—and referred“specifically to the common proc- -

ess of immersion. These things are elementary prac-

tices, not patentable proeesses. Brogden and Trowbridge

instead of saying with ‘\deSturler that the fruit.is to be

ne treated with thetsterilizing.niedium, says that the fruit :

_ is to be subjected to the action of the medium (R., 1597).

_. Curiously -enough the. subsequent -paraffine coating

disclosed by deSturler’in 1902 is called for by the plain.

tiff’s patent licensing agreéments of 1924-as an ee

_.of what the plaintiff calls ‘‘the Brogdex system’’: first

a borax bath, then a paraffine coating (R., II, 1342):

_. This point has been. discussed in detail in connection.

with the discussion: of the Bishop prient (supra).

The Particular Toxicity of Borax and Boric Atid to 2

_ ‘Molds, with Special Reference to the Penicillia.

The foregoing publications and patents prove conclu-.

. gively, that both borax and boric acid had been known

“uN

p septics used in the preservation of meats, butter, and -

and used as antiseptics and food preservatives for many

years prior to the filing of. the patent in suit. . These pat-.

onts and publications show that not only were these anti-

other aninial products, but that they were used in the

"preservation of fresh fruit and vegetables including cit-

-rus fruit. It.does not appear in every instance that the

proponent of the use understood that he was using these:

antiseptics as fungicides although when uséd in the pres-

ervation of fruits of vegetables that would have been

their function. However, the following publications will _

show .that. the fungicidal properties of borax and boric. .

acid were well understood, and that it was also jwell -

known that they inhibited the growth of the penicillig

- or blue molds, the class of molds specifically: mentioned 2 :

in the patent-in suit. - i aoe wi

But; before proceeding with the consideration of these

publications, it would be well to fix clearly in: our minds

just what blue mold is. On this point Dr. Alsberg’s tes-

_timony is enlightening. He testified (R., I, 268):

wi \

| Reheat

-‘Blue mold is a general term applied to a class

of fungi, consisting of a large number of- species.

- that when they. fructify they ‘produce spores which

have a color that varies from blue-green to different

shades of green. The first accurate or approxi-

‘mately accurate description of that type of mold,

- segregating it from other molds, was made early in

- the Nineteenth Century by a man by the name: of

Link, a. botanist, who first described as a species

penicillium glaycum. | His description is general, ©

and it is not possible at the present day to say ex-

actly which one of the many forms of penicillium .

that-have blue or green spores: ‘He actually had no

observation on which he based his description.. The

result is that botanists of. cecent times have either

abandoned that term altogether, or have restricted it .

\ to one of the many species, and have recognized —

\ and established. a considerable number of other -

. ’

* om EY ” %

at een a

ee ert

ey species, ‘all of which have blue- -green or green spores;

so that today penicillium glaucum is either not a rec. .

ognized species for some botanists, and for others

- just one species. Some years ago. it was a term

- . which was used for a large number of species. 2

" ¥©You ‘ean find one or the other species of. this

genus ‘of penicilliam. on a large variety of organic |

* matter. It may be found on pretty nearly any kind

of food. It may be found on other forms of organic

matter. Different species are more common on one

__ kind of organic matters than.on another. As a rule

it attacks only dead or injured tissue. de

Now let us turn to the publications which show that

borax and boric acid were long ago known ate aed

as fungicides.

~ Journal D’ Agriculture Prations, published in 1883,

- pages 75 and 76 (Def. Ex. 13, II, 1506).

_ This. excerpt from this French Journal disclosea the —

use of a borax solution in combating a mold on the

| leaves of -grapevines. ‘It appears from this disclosure

that borax: proved to be effective in checking the ‘devel-

opment of the parasite which was a fangus, ee not .

closely related to penicillium. | zn

- . . Comptes Rendus of the ‘French Academy of ° Boience, ]

_ 1892, ‘‘ Action of Boric Acid on Germination’’ by J.

Morel, pages 131, 132, 133 (Def. Ex. 18, R:, II, 1535).

. This experimenter worked with borax and boric acid

‘to determine the effect of these ee on germina. |

tion. ‘His conclusions are co nemavenae

“The action. of. bicienas is abiogethe:; combarabis

with that of boric acid under the same conditions

‘which seems to indicate that soda acts here in: the. :

same way as. boric acid. |

| One i is now ina position to predict—and I am car-

rying out a’ certain number of experiments along

these lines—that boric acid acts~strongly on the |

lower — and related sd ara the b erowth of

Sys NER OR 9 2 MN INR ats NRT RIE RABIN PEARS tide OS wi: Bsc See oa TE fa RRR AC

;

“very weak solutions..

Penicillium,’”? by Katherine Golden Bitting, pages 391,

. 400; 401, 403, 408, 409 and 410 (Def. Ex. 14, R., II, 1507).

periments recorded in this article, but among others were

- borax and boric acid, The experiments show -that the .

| -penicilliumi was adversely affected in concentrations as ©

low as 1%. .- * an?

Several Other Compounds Upon the Development of:

‘Penicillium Glaycum and Aspergillus Niger’’ by J. Boes- —

- eken and H. I. Waterman, Seeened in: aha (Def. Ex.

«21, R, If, 1516). 2° oe

: es the mechanism of the action of boric acid to.see .

whether a certain theory of the action of toxic agents

could explain the action of boric acid, and in order. to °

carry out this invéstigation penicillium was used as. the

test organism. “The conelusions found in the summary |

which is on page 358 of the German text are significant.

These conclusions read in | part.

which will idle be completely inhibited by é éven eS 2

_ Tf these assumptions shall be eokroboratad *;

facts, :borie acid will be able to take a, place by the

‘side of copper. sulfate to combat the mildew of ‘th

_ grapevine and the smut of wheat, perhaps also we

_tracnose, oidium and other diseases due to ‘0- :

- gamis organisms which infest. useful plants fa

- Proceedings of the Indiana Acedemy of Seience, ‘1909

—‘‘The Effect of Preservatives on the Development of

_A great number of preservatives were need. in the. ex-

Folia Microbiologica “The Effect: ‘of Boric Acid tad le

thie | is a purely abstract investigation designed to: i

“We savavtadivolé 1. That boris aks even in ex-

tremely. low concentration (++0.06 per cent. ),. has a

distinctly. inhibiting effect upon the. development of

| Penicillium. glaucum, and that. this-deleterious con-

centration is much higher it pales f E -Dapergillne .

US 0 EEE Canter oe oven

US. Department of Agriculture, Bulletin No. 109 by :

R. H. True published in 1914 (Def. Ex. 11, R., I, 1495).

This bulletin discusses experiments conducted by Dr.”

True for the purpose of overcoming mold on cigars. He

pstates. on page 5-of the Bulletin:

“It will be seen that the organisms responsible

for ‘the most serious trouble (Aspergillus candidus,

easily first in importance, and Penicillium glaucum)

are not represented in the list of organisms intro-

duced.on the wrapper leaf, but. seem to be always

present in the tragacanth gum. The conelusion

seems, therefore, to follow that in the case in hand

_ the paste used in fastening the wrapper at the head

of t e cigar — with it the. troublesome organ-

isms.’

' Penicillium glaueum was the old generic name for this

group of molds. In treating the paste to prevent the

growth of these molds, a number of well known antisep-

ties and fungicides were tried, among them boric acid.

’ Borie acid was found te be completely successfyl in

checking the growth of the molds and was adapted as reg-

ular routine practice.. The reasons leading to the choice

of boric acid, as expressed on page, 7 of the ballets, aes, om

as follows: a

‘*After considering which of these substances’

should be recommended for general use, boric acid

was chosen because it is cheaper, does not: undergo —

change in the paste, is more readily obtained, and is

not liable to injure anybody if used in excess. The

disadvantages of hydroquinone lie in its contrasted

properties on the points enumerated,’’

This work of Dr. True is significant hechues ba’ was’

confronted with the specific problem of inhibiting the |

growth of two well known fungi, one of them penicillium.

dinate or blue mold. One of the fungicides naturally

' . . =

tried out was boric acid. This proved to be wholly. sue-

cessful, and because cheap and harmless, was immedi-.

ately adopted. This clearly establishes, without further

proof, the toxie effects of boric acid on blue mold.

“The Effect of Certam Agents on the Development of

Some Moulds,’ by K. G. Bitting, pages 5, 24, 25, 26, 27,

‘46, 47 and 51, published. in 1920 (Def. Ex. 17, B., II,

1525).

Among the molds experimented with and reported in

this article was penicillium-expansum, which is-a mold

of this group-commoner on apples than it is on citrus .

fruits but very closely related to those on citrus fruits.

ment of the mold.

_. U.S. Department of Agriculture, Department Circular

237, published August, 1922 (Def. Ex. 10, R., II, 1480).

This is a report on some experiments eondueted to de-

termine what effect boric acid had upon certain molds.

Right different species of penicillium molds were treated,

» and it was found that the boric acid in some instances -

delayed the development of the penicillia arid in some

prevented their growth altogether.

Ail of the Foregoing Showing Ignored by the

“Circuit Court of Appeals.

The opinion of the Cireuit Court of Appeals contains

not one reference to the numerous prior patents and

publications. submitted by defendant showing the prac-

tice of preserv ing foodstuffs of all kinds, including fresh

citrus fruit, by dipping in solutions of borax or boracic

acid, to be old and well known. That the Circuit Court

of Appeals gave any consideration to this prior art ig

deducible, if at all, from only a single paragraph al its

elaborate opinion, in which the Court said:

bad

_ ~Both borax and boric acid were used among other fungi-

cides and found to be effective in delaying the develop-

“There was doubtless prior use of borax as a pre- |

servative, but the record fairly inverpreted, as the

learned district judge found, clearly shows that there ~

was no prior use of it as an st Wie reagent for

blue mold decay.’’ |

The statement that there was no prior use of borax

" “as an inhibiting reagent for blue mold omer”! is clearly

in error.

To begin with, while the Circuit Court of Appeals |

quotes the District Judge as finding to that effect, the

‘fact is that he found just the opposite... The District _

J udge found inter alia as follows:

‘‘The use of a hot solution of boric acid or its

_ salts to prevent the growth of fungi or mold upon

cured meats by immersing.or dipping them into the

solution was disclosed as early as 1879” (R., I, 16).

_And in the same connection the District Judge went

on to find other like uses of borie acid as against peni-

cillium molds including the application of boric acid to

fresh fruits during storage and transportation. Dr. Als- ~

-- berg, former Chief of the Bureau of Chemistry of the

Department of Agriculture, testifying for the defendant, -

said that-the principal cause of decay in meats, cheese,

butter, fresh fruits, vegetables and other articles of food

is the common blue.meld. It is the well known efficacy of

borax and boric acid es a preventive of just such decay.

that was responsible for its widespread use ag a pre-

s2rvative. The action of the borax on the meat, cheese

or fruit dipped in the borax solution has-not been altered

by the grant of this patent defining its action as an ‘‘in- ‘

hibiting’’ action, If it inhibits now it inhibited then,

and no amount of speculation as to the precise effect of

the borax on the blue mold organisms can alter that fact.

The commercial] art is not interested in the effect of the

borax on the organism. That may be a matter of con- eS

"gern to the scientific research worker, and it is interesting

to note that in the technical articles discussing the effect

_ of borax on the blue mold organism (penicillium) its ‘‘in-_

" hibiting’’ action is fully explained. - oe,

The practical art is interested in the effect of the borax |

treatment on the article of food; and when the prior us

patents and publications and formulas state that by

dipping the article in a solution of borax of a substan-

- tial degree of concentration it will be preserved against

decay, they tell us the whole story and give all the direc-

tions necessary for the practical application of the borax

treatment.

The Cireuit Court of Appeals says:

“We sans an old and well known substance ap-

- plied in a new and useful way _ this constitutes

- invention.’’

Bur what we have seen is that inier the process of the

patent this ‘‘old and well known substance’’ is applied

in the old and well kn wn way, namely, by dipping the

article to be preserved in the solution of borax.

| Everyone knows that in applying a mild antiseptic of this

sort, the stronger the solution and the more thorough the

application, the better the effect; and everyone knows

that a warm solution tends to open pores in the tissues

treated and to secure more effective antisepsis than is

. Secured by the use of a cold solution as was noted by

Judge Dickinson in Brogdex- Company vs. California

Fruit Growers Exchange, No.’ 4,745, September Term,

1928, E. D., Pa: (unreported), when. preliminary. in- ~

junction. was sought under the force o the decreé in the

case here instant, ‘‘The question of. how much borax

is evidence of the pirating of the plaintiff’s process can-

“not be determined from the claims of the patent in suit.’’

There were no investigations conducted by the citrus

growers, packers, and shippers, scientific men and De-

. 42

' partments of Agriculture—Federal and’ State, ‘to find

some reagent. to control blue mold decay. There is. not -

even a suggestion of any such investigation having been

_ made from 1905 to 1923, when the application for the

_ patent in suit was filed. But even if there had been any

number of such investigations, all ending in ‘failure, they

could not-sustain the holding that the dipping of an °

orange in a solution of borax is a new mode of applica-

tion of that old and well known substance. .The Court —

of Appeals in discussing the action which takes place

when the fruit is dipped i in the borax solution says:

The patentees proceeded upon a different theory.

It was their idea, not to destroy spores, but by means

of antiseptic borax solution seal the broken places in,

.the citrus rind that had been punctured and thus

close\to the spores avenues through. which they en-

tered the fruit.’’

Even if this were something about the action of the

_* borax not theretofore known, when applied in the old and

well known way it could not confer patentability on this

old and well known process. There is, however, nothing

novel in the idea, It has long been known that the blue

mold attacks the fruit at the abrasions of the rind. The

slogan of the adyocates of ‘‘careful handling’’ was that —

‘‘a sound orange does not décay,’’. Any treatment to be |

_ effective must be effective at the wounds. The Bishop, -

patent states that the boracic acid dip renders the fruit

‘‘antiseptic.’’ Anything more than this is an undue re-

finement. The whole fruit is dipped in thé borax. The

patent itself specifies that the term ‘‘blue mold”’ is not »

to be taken as restrictive, but as including all of the

diseases and decay producing organisms to which the

fruit may be subject.. And the patent claims that the |

‘dipping is for the purpose of securing the benefit of the

borax as a retardent of decay. The claims of the patent

3 2a e

are not limited: to the broken places but extend to the

entire rind of the fruit or vegetable treated.

_ « tnere application of an ‘old contrivance in an

old way to an analogous subject, without any novelty

or invention in the mode of applying such old con-

_trivance to the new purpose, is not a valid .subject )

* matter of a patent.’’ Case vs. Cressy, 18 R. P. C.,

419 (1901). pears

It Is Not Patentable to Apply an Old Process toa

New Subject. — e

The patent in ‘suit reJates broadly to the treatment of

-fresh fruits and vegetables to preserve them from molds.

In this it does not differ from Gahn:

‘‘This invention relates to a new composition by

which all kinds of raw food, fruit, and other vege- .

table products may be preserved for a long time,

and in warm climate; and the invention consists in

compounding boracic acid and: alum in the propor-

tion of about twenty parts of ‘boracic acid and ten

parts of alum’’ (R., Il, 1546). ; + .

Nor from Bishop:

‘*This invention aims to prolong the period of use-

fulness’ of fruit, vegetables, eggs and the like as

articles of food and prevent»their usual rapid decay

and deterioration, thereby benefiting the grower, the

alDps ; the merchant, and the consumer’’ (R., II,

Nor from deSturler:

“This invention relates to the preservation of

‘vegetables, fruits, meat, eggs and other perishable ~

- substances either for storage or transit. * * *:

3 se

. + |

“The object of my invention is to treat feels ex.

‘ternally in such manner that they shall be preserved

. for storage in transit for a much loriger time than

has hitherto generally been possible, and thus enable

many kitids of foods, such as perishable fruits, to

be transported long distances by sea or land =:

delivered in a pe jectly fresh condition’’ (K.,

_ (1566). ; |

\ W hile the sasiieaias infringement dhaxaed in this case

| ‘relates to the application of borax to oranges with the

prevention of blue mold decay in ‘mind, and it is true —

that blue mold is the most important cause of decay unde ae

‘most conditions, yet. none of the plaintiff's witnesses ‘in

their decay percentage estimates confined themselves to

blue mold decay. They included decay from all causes

_ (R., I, 1340; R., TI; 25). And, it was shown that stem.

‘end rot and other kinds of decay are very important “~~ —

‘factors under certain circumstances (R,, I, 71). Also,

the plaintiff showed that in.the season of. 1926 1,300,000

’.” boxes of apples were treated with borax under this pat-

ent in the single State of Washington (R., 1; 95).

The patent cannot be looked upon as one for the treat- —

ment of oranges; and if it could there,would be no pat-

_ entable novelty in applying to oranges a preservative old

in the treatment of other, fresh ‘fruits, as well as many

other raw foodstuffs. |

In Brown vs. Piper, 91 U. S., 37, the patent in suit was

‘*for a new and improved method of preserving fish. and

meats’’ which corisisted in placing the fish or other articles

‘tin a chamber, and cooling the latter by means of a

freezing mixture.so applied that no communication shall

exist between the interior of the preserving chamber and. - |

_ thdt of the yessels.in which the freezing mixture is

placed.’ The defendant proved that the: same process

had been used for preserving corpses. This the plaintiff

admitted, ‘but insisted that the ‘process had never been

applied to the preservation of fish and meats; as to which

this Honorable Court said: . ri

‘*Here was the application of the requisite degree

of cold, exactly in the manner called for in the speci-

fication of’ the. appellee. sind : Pe

_ “This is hardly denied; but .it is insisted. that the

process was never applied by the witness to the”

preservation of fish and meats. Stiga yableaa ces

‘The answer is that this was simply the applica-

_ tion by the patentee of an old process to a new sub-

: ject, without any: exercise of the inventive faculty -

and without the development of any idea which can

be deemed new or original] in the sense of the pat-

ent law. The thing was within the circle of what

| was well known before, and belonged to the public.

No one could lawfully appropriate it to himself and

exclude others from -using it in any usual way for ~

) any purpose to which it may be desired to apply it. —

This is fatal-to. the. patent.’? |

;

The parallel hetween the facts in Brown vs. Piper and =

the present case is arresting. There the patentee stated:

‘I do not profess to have invented the means of

_ artificial congelation, nor to have discovered the fact

| that no decay takes place in animal substances so

long as they are kept a few degrees below the freez-

_ ing point of water; but the practical application of

_them to the art’ of ‘preserving fish and meats, as’

| ney described, is a new and very valuable improve-

ment.’ Rie eee

Here: the patentees have, in effect, stated that they do

* not profess to have discovered the fact that borax and.

borie acid preveiit decay in foods, but that the practical

. application of them to the art of preserving fresh fruits -

and vegetables is a new and very valuable improvement.

And to this the answer will be the same as that given

Piper fifty. years Nps

In Pennsylvania R. R. Co. vs. Locomotive E. 8: Truck oe

Co., 110.U. S., 490, the Court stated the rule of law to _

- be.as follows (p. 223):

‘‘It is settled ies many decisions . of this Court,

which it is unnecessary to quote from or refer to in

detail, that the application of an old process or ma-

chine to a similar or analogous subject, with no

_ change in the manner of application, and no result:

substantially distinct in its nature will not sustain

- @ patent, even if the new form of result has not be.

fore been warmers uae id A Citing numerous cases.)

In Lovell Mfg. Co. vs. Cay, 147 U. S., 623, the Court ;

had before it a patent for-a method of tempering springs, °

the invention betiig. cipal adapted. to the temper-

_ing of furniture or other coil. springs.. The prior art

. Showed that a similar method of tempering had. been

used for other than furniture springs and the Coutt

held the patent invalid, ‘saying: (. 311):

: ‘*But it does not amount to-invention to discover

that an old procegs is better in its results when ap-

plied to a new working, than would. have heen ex-° *

pected, the difference between its prior working and

the new working being only one of degree and not

one of kind.’ It hasbeen often held that the mere

fact that one who uses a patented process finds it

applicable to more extended use than has been per-

ceived by the patentee, is not a defense to a charge

of infringement. It follows necessarily that the’

~ public cannot’ be deprived of an old process. because

some one has discovered that it.is capable of 'pro- -

ducing a better result, or has a wider range-of use.

than was before known. ye

(C. C. A., 3rd), the patent in suit was for a method of

‘te Arlington Mfg. a vs. Celluloid 6. ‘97 Fed., 91°"

- producing pyroxyline compound in imitation of onyx, the:

by Se ey: Pen et ae

claims being (1) for the method and\(2) for the product.

The patent was declared invalid because substantially

/ the same nfethod had before been employed in making

an imitation agate apd making imitation, stone veneer:

The Court said: =. =) Ne

: “Tt was also known that by the introduction of

coloring matter: different colors or tints could be —

imparted to the finished product and that by subject-

_ ing, while plastic, two or more sheets or pieces. of —

celluloid different in color or tint to a rolling or other

kneading or mixing process the different colors or

_tints could be blended in such manner in the finished,

product as to present a variegated, veined, mottled °

_or clouded appearance, and cause such product to

_ imitate a variety of natural objects or substances

9 o 99 (p. 92). .

~ “That the Mehling [prior art] method relates to .

cement while that in question ‘relates to celluloid

or other pyroxyline compounds is/a wholly imma-

terial difference. The two methods cannot be diss ~ .

tingnished from each other ‘in their relation ‘to the

production of artificial veins, streaks, or bands”? (p.

95). . ea : : An

in Reynolds vs. Standard Paint Co., 68'Fed., 483 (C.

C./A., 3rd), the patent in suit claimed “‘as a new article

of manufacture and of commerce, paper pointed or satu-

rated with a compound of bisulphide of carbon and mal-

_ /tha, substantially as herein set forth.” Thé Court held

the patent invalid because it was old to coat paper with

other substances and the substitution of maltha. instead

of such othér coating substances did not amount to in-

vention. of Ere: | 3 :

‘In Zinsser, et al., ‘vs. Krueger, 48 Fed., 296 (C. C. A,,

3rd), the Court held invalid a patent for charging beer

with carbonje acid by ‘dropping into and through the .

” liquid lumps of bicarbonate of soda, saying (p. 300): _

;

“i “Complainants do nothing more than apply the

‘lumps or cartridges to beer instead of to water, and _

thus adopt an old form or method of: applying the «

alkali without any novelty in the mode of its appli-

~ cation; and this, it’ has been frequently decided, -will

- not sustain a patent, even if the new form of result ; se

has not been before contemplated.’” +

See, also, National Tube vs. Spang, et al., 135 Fed., 351

—(C, C. A., 3rd); and Hansen vs. Slick. 230 Fed., 627 (Cu.

C. A., 3rd).

: In DeLamar vs. Sia Min. Co., Limited, 117 Fed.,

. 240 (CY C. A., 9th), the patent related to a process of

precipitating precious, metals from cyanide solutions by

- adding zinc dust and agitating. But the same process :

had been = for ere. copper; the Court :

held: eee :

- “*Tt is perfectly plain thet the process Lie de: .

scribed,* of using zinc dust or fume with mechan- ©

- jeal agitation for the precipitation of copper is the

identical process stated in the first claim of the Wald- ~

_ stein patent’ for precipitating gold and silver.’ The

_ latter was. nothing more than the application of that

. old process to analogous matter, producing a result

bstantially similar’in its nature, and was there-

fore entirely lacking in invention” (citing authori-

ie ties).

‘*We are unable to see any invention in anything

disclosed by the Waldstein patent, and must there-

fore affirm. the judgment.of the court below. The

real inventor is undoubtedly to be encouraged, and

the courts should always be careful to protect his

rights; but it was never the intention of the-pat-

ent law to give a ‘monopoly. to a mere follower of

the knowledge and ingenuity of others. The judg-

ment is affirmed.’” -

°. . =) e *

. ; . : ’ \ .

*(In a prior patent.) on

°.,

: >

. / ad . e = ;

" ‘

2 TNO HENS Sa aN ret: ; Cee ead ‘ ee

Patispaaine “oe al i et SPARE AS te gga : ae et OED SNL

: ”.

‘ ; ee ee a:

But of all such cases Sewall vs. Jones, 91 U. S., 171,

is perhaps the most, interesting because the facts were

substantially on all fours with those i in the Anstant. case.

The patents in suit, granted on inventiony of one Win-

slow, related to the preservation of Indian corn. The _

kernels were first removed from the cob and then heated:

in-sealed cans.. A Frenchman: by the name’ of Appert

had, years hefore, obtained a British patent for the same:

process applied not specifically to Indian corn, but to ~

animal or. vegetable foods generally. Appert not being.

particularly interested in the preservation of Indian corn: -

said nothing, of course, ‘about first’ removing the kernels

from the cob.” The plaintiff tried to make much of this.

There were, besides, other differences in the procedure

_ but the Supreme’ Court held: these to be of minor import-

-ance and to vary with the particular —— to be Pre

_ served, ‘saying: . | | ; ie

a ‘We are of the opinion that the substance. of all

‘that is found in. Winslow’s patent had, nearly half =~

a century before he obtained his ‘patent been put |

forth in Durand’s agai patent. me ;

The. fact that Winslow? s ‘process was ‘specifically in-

tended, and indeéd adapted, to the preservation of Indian» |

eorn, while Appert’s patent did not even mention Indian ~

corn but only animal and vegetable substances generally

- did not affect the decision. _In conclusion the Court

-. Stated: : Se 3

“The discovery i in qinndion has bee of immense

benefit\to mankind. By'means of. bern preserved in.

a compact and nutritious form, protected from its |

natural \tendency to decay, deserts are traversed,

_ Seas navigated, distant regions explored. It is less

brilliant, but more useful, than all the inventions Be:

for the deetrnetion of the homan: race that have ever... -

been known. I to France that the honor ‘of |

fet as

zen. It does not belong to rica or to Winslow.

Appert’s process nts all that we now know

~ pl the subject. It contains absolutely everything

value that is contained i in Winslow’s patent.”

‘this discovery =e to\ ppert, a French citi-

In the present situation: it was to Gahn, a citizen of

Sweden to whom must go the honor of teaching the

world the preservative properties of borax and boric acid,

and not to Brogden and Trowbridge.

Thus if the invention really. does have the-broad scope

which it purports to have and is applicable to fresh

fruits and vegetables generally, . it is surely anticipated.

If, on the other hand, it is a message addressed: to the

citrus industry only, then the patentees have done no

more than apply to oranges a process old in connection

with fresh fruits and vegetables generally. And this is

not patentable.

Tt cannot be ‘patentable. The public has rights which

-eannot be ignored, and certainly the right to use borax

and boric acid as antiseptics and preservatives is one

of them. Three generations of housewives have been

aware of the preservative qualities of borax. More than

three generations of pharmacists have ‘understood the

antiseptic properties of boric acid. Twenty years or

“ more ago the use of borax as a-food preservative’ be-

came so widespread and notorious that it became neces;

sary to regulate this use by statute. In the face of

these things doesn’t it seem a little absurd that at this

late date a valid patent should issue purporting to cover

borax as a preservative when used on a particular class

of foods?

——————————

If Such Exterision of Use to Oranges Were Invention,

’ . Nevertheless the Patent Falls Because of Prior Uses

of Borax for settembre axdoidrecsec

_ In 1900 Dr. Simeon Bishop of San Francisco applied

for a patent to cover his process of prolonging the period

of usefulness of fruit, vegetables and eggs aid the like

-_-and- preventing their usual rapid deeay and deterioration,

“thereby benefiting the grower, the shipper, the merchant

and the consumer.’’ The same year Dr. Bishop and four

others procured the incorporation of the/ ‘‘ Antisepti

Fruit and Egg Packing Company,’’ wit

capital of $50,000 for the purpose o

fruits and other perishable \articlesy of food prepared

. under the process of the Bishop patent (R., II, 1470).

The process of the Bishop patent comprised the immers-

ing of the article in a boracic acid solution and later ©

coating it by means of a gelatin solution bearing boracic

acid. One of the claims included the further step of wrap-

ping the article in tissue paper which had been i impreg-

nated with a solution of boracie acid.

This in all essentials is the process of the Brogden and

Trowbridge patent here in suit. Manifestly one ‘could

“not take advantage of the disclosures of the Bishop pat-

ent without infringing the claims of the Brogden and

Trowbridge patent.

Simeon Bishop is dead. The plaintiff brought his son,

Frank C. Bishop, from California and had him in New

York while the plaintiff’s case was being presented in

the District Court at Wilmington, Delaware. As the -

plaintiff did not call this important witness, the defend-

ant, instead of showing these circumstances and arguing

an unfavorable presumption’ against the plaintiff, had -

the witness brought down from New York (R., I,.116)

and examined him as the defendant’s own witness. Mr.

Bishop testified that as a young man of eighteen or nine-

”

- 52

teen, having graduated from high school, he helped his

father for about two years in this business of preparing

eggs and fruit for the market. He recalled definitely’

applying the boracic acid process to oranges througheut

. this period of two years and said that the business was.

not renewed after the San Francisco earthquake and |

fire (R., I, 178-9).

A number of packing house operators and other wit- .

nesses testified to a similar use of borax for the same

purpose for various long periods in seven different °

_ orange packing establishments, two in California and

five in Florida.

F. 8S. Pond, now dead,-formerly was prominent in the

Florida citrus industry. As packing house manager for |

two different Florida packing houses at different times -

he introduced the use of borax to prevent decay, stating

that he had practiced such use in California. We have’

the testimony of one witness to this use at Tavares, Flor-

ida, in 1913-14, and six witnesses to the use at Eustis,.

Florida, in 1914-15.

J.C. Thompson continued this use of borax at £ Pinion

after Pond left.

B. F. Chilton, who died in 1910, liad been a packing

house manager near New Smyrna, Florida, for a number

of years, and used borax in the wash water to prevent

decay. This use is supported by the testimony of four .

witnesses.

Albert_E. Barnes testified that a as packing house man-

ager at Ocala, Florida, he used borax in the wash water

primarily to clean the fruit and secondarily to prevent |

blue mold.

Albert H. Morgan, manager at Rialto Heights, Cali-

fornia, since 1916, testified to using borax in the wash .

water for ten years, for the purpose of retarding ‘‘blue ~

mold’’ decay. His testimony was supported by a witness

who was assistant manager of this —— house for two

years prior to 1920.

a a oe a ~ = Oe ate ead es Qe i oe o> eee AE

A. J. Davis, manager for Call at Corona, California,

Pes. a number ‘of years following 1907 was offered and

received a salary bonus for a substantial reduction in —

decay, which he brought about by purposeful use. of

borax.

E. D. Howard, packing house manager for Corona Sats

ing Association of California, learned of the definite util-

ity of borax from A. J. Davis. He saw Davis use the’

borax in his wash water and adopted the same practice

and continued it-until the Corona Packing Association

house was closed in 1917.

Geo. W. Palmer became familiar with the use of borax -

as a ‘‘bactericide’’ in New York State creameries, and

with that specific knowledge in mind adopted the use of

borax as a preventive of decay in his own packing opera-

tions at Emporia, Florida, about 1907, and continued that

practice until he stopped packing his own fruit about

1924. Palmer’s testimony was corroborated by the testi-

* mony. of a neighbor.

All of these uses except one, while persisted i in for a

long time, were discontinued many years ago by reason

of deaths, shutting down of packing houses and other

similar reasons. Such a simple fact as that ‘of adding

borax to the wash water in a packing house is one that

is not likely to be the subject:of confusion of memory.

And in each’case the evidence with respect to that simple —

practice is just such.evidence as would be apt to remain ,

after a long lapse of time. The’substance and character

. of the testimony as to these prior uges was as follows:

THE BISHOP USE.

We have already discussed the Simeon Bishop patent |

which discloses a process of treating fruit, vegetables —

and eggs to prolong their period of usefulness, consisting.

54:

in bathing these articles of food in a bath of boracic acid

and then coating them with gelatine. At the risk of .

painting the lily, we called as a witness Frank C. Bishop,

a son of Simeon Bishop, to testify as to the commercial

operations carried on under this patent. He testified

_ that a company was incorporated under the name of the

Antiseptic Fruit & Egg Preserving Company to carry on

the business of treating fruit and eggs under his father’s

patent, and that this business was carried on in San

Francisco for about two years—from 1902 to 1905 (R., |

I, 177). A certified copy of the articles of incorporation °

of the Antiseptic Fruit & Egg Preserving Company was

identified by Mr. Bishop and offered in evidence as De-

- fendant’s Exhibit No. 6 (R., II, 1479). Mr. Bishop tes-

tified that he was personally engaged in the business,

his duties being to process the articles. He was 18 or ..

19 years of age at the time (R., I, 178). The patent men-

tions the treatment of fruit, as well as eggs and Mr.

Bishop testified that; at least, two fruits, oranges and

pears, were treated (R., I, 179). After the fruit was

dipped in the boric acid solution’it was dried and coated.

‘with gelatine. Mr. Bishop testified (R., I, 180) :

“IT did the dipping. As near as I can recollect we

had a sort of a wire container that we put a certain

_ humber of articles in, eggs or fruit, and submerged

-into the boracic acid solution first and then we would .

. take that out and put it on a—the eggs we would put

on the table and after that we dipped. them.in the

sayy solution and then we had Sort. of little racks

or them, as I remember, something like a lath that

_ they would fit in so that they would not roll off and

the fruit we did the same. We let the fruit dry and

then dipped it into the gelatine and set the fruit up

again to dry.’’ Srp

Here then we have clear and uncontradicted testimony

‘ to the effect that during the years from 1902 to 1905, a

company operating in San Francisco, California, was

engaged in the business of treating oranges and other

fruit to preserve them and lessen decay by dipping the

fruit into a solution of boric acid. Thus, Simeon Bishop

not only patented his process, but demonstrated its prac-

tical utility by forming a company and commercially ex-

ploiting it. No attempt was made to cast any doubt upon

Frank Bishop’s testimony, and it stands unassailed. In-

deed plaintiff could not well attack it because Frank

Bishop had actually come all the way from California

at the instance and expense of the plaintiff. It is diffi-..

-eult to see why the Bishop patent, coupled with this

Bishop use, does not wholly and completely anticipate ‘the

. Brogden and Trowbridge invention, and invalidate the

patent in suit. S

The Bishop process, as described in ‘the Bishop pat-

ent, and as practiced by the Antiseptic Fruit & Egg Pre- .

serving Company involved not only the treatment of the

fruit with boric acid, but the subsequent coating of the

- fruit with gelatine: Whether such a coating treatment

would be commercially feasible today, we do not know. .

But this, we submit; is wholly immaterial. The coating

_ step of the process is independent of the boric acid treat-

* ment and may obviously be used, or not, as eonditions

may dictate. Surely there can be no merit in the con-

tention that the public is not now free to use any or all

parts of the process set forth in this expired Bishop pat- »

ent. It is probable that plaintiff. will argue that the gela-”

tine seals the pores of the fruit and prevents breathing,

thus producing a breaking down of the cell structure and

ultimate destruction of/the fruit. As to this it’ may be

observed first, that plaintiff offered. no evidence in sup-

port of this imagined action, second, that the Antiseptic

Fruit & Egg Preserving Company apparently: experi-

enced no difficulty from this cause, and third, that -

» oranges coated with gelatine by Mr. Markell of the de-

rr : | 7

* fendant diel no. signs of deterioration after twelve

- days (R., I, 205). And it may be noted that the coating

_ provided for under plaintiff’s dual Brogdite-Brogdex

system (R., II, 1342) is held out as justifying the state- ‘

mént: ‘‘Brogdexed fruit is waterproof and air proof”?

——

(R., II, 1466). OF

THE POND USE.

F. s. Pond went from California to Florida in 1911, *

and became a packing house manager’ at Tavares ({R.,

I, 501). Minos E. Miller, an Exchange manager of the

district saw him using borax in his‘ wash water during

the period of two years, and was told that it had been

his custom to use it in California, and that he claimed — .

to be using it at Tavares to advantage in the‘prevention -

of ‘‘blue mold’’ decay (R., I, 498). Under cross exam- .

ination Mr. Miller gave much circumstantial detail with

_ respect to this Pond use, including the statement. that

Pond used warm water with the borax in the soaking ~

tank (R., I, 500, 504). And the inherent. probability of

- truthfulness in Mr. Miller’s statement finds collateral

support in the fact that six witnesses, in addition, to Mr.

Miller, testified that when Mr. Pond left Taveres and

became manager of a packing house at Eustis, he earried °

this borax procedure to Eustis and used it there during

his incumbency. A. R. Sandlin, citrus fruit grower and

realtor knew Mr. Pond at Eustis about 1914. He knew

that borax was being used in the wash water to prevent —

blue mold, ’» and Mr. Pond told him that the secret of

his success in keeping down decay was that he used”

borax in his wash water (R., I, 185). Samuel-L. Harris,

owner and manager of extensive groves, was Vice Presi-

dent of the Packing House Company at Eustis during —

Mr. Pond’s management. They sent’Mr. Pond to Cali- ¢

fornia to buy packing house machinery, and Mr, Harris.

* < .

ee. Se ea, Se Ul eee Oe ee

eee eee

discussed the borax use with Mr. Pond (R., I, 192). Wil- -

liam T. Du Pree-was a packing house manager who vis- -

ited Eustis and learned of Mr. Pond’s practices and

claims with respect to borax (R., I, '198).. G. W. Holmes °

was president of the bank at Eustis and also president

of the Packing House Company when Mr. Pond was in

- eharge. He knew about: the use of borax as a preventive

. of “blue mold’’ rot: (R., I, 492). .H. H> Allen; a fruit

grower of Eustis and direetor of the Packing House Com-

pany: recalled the stock of borax that Mr. Pond carried -

in the store room (R., I, 495).: Walter A. Robinson -

. worked for Mr. Pond in the-Eustis packing house. He

-testified that they kept borax on hand at all times and

used it as a preventive of decay (R., 1; 470).: ,

It is to be noted that the active period of these Pond |

uses was from about 1912 to 1915, and that the plamtiff

has in evidence publications of that period offered to

show what the industry was being taught with respect

to the prevention of ‘‘blue mold,’’ for example, the .

plaintiff has submitted extracts from the proceedings of

the Florida State Horticultural Society for. the years

1912 (R., Il, 902-910), 1913 (R., Il, 936-7, 941-2, 956), -

_ 1914 (R., II, 1063-4) and'1915 (R., II, 1086). It there’ .

appears that continuously it was taught that. the

thing to do to prevent ‘‘blue-mold’’ was to avoid

mechanical injuries, pack the fruit when it was thor-

oughly dry and keep it reasonably coo]. Whatever

they said about sanitary: practices was purely incidental,

for example, inthe report of the proceedings of the State

' Horticultural Society for 1915, after‘referring to the

standard practices of ‘‘careful handling’’.and the ‘‘five

years of experimentation by government experts, and

enthusiastic practical experience instigated, by the Flor-

ida Citrus Exchange,”’ the folunsing collateral statement 3

is made: .. ~ te

“During the early experience in ocala, if came

to be believed that. — greatly eer the

decay of fruit. With ‘the careful packing and han-

_dling of fruit, andthe great improvements in wash-

ing machinery, the supposed b bad effects of washing |

have mostly disappeared. —~_

. The bést outfits for washing, now consist of a soak-.

.. ing tank filled with hot water, containing an alkafine

cleansing powder, especially where the fruit is black

from sooty mold from the whitefly. ‘Gold Dust. or

other alkaline powders are now mae in the water’? *

+ (By II, p. 1086). cet Ac an

With the whole industry enthused for*‘careful han-

dling’’ as manifestly | the best means of avoiding ‘blue

mold,” and with. the use of alkaline washing powders ot

. other detergents. a matter of every-day practice, it was

by Mr. Pond and other pectin tot operators would“

attract particular attention or be made a matter of par-

ticular record. Here and there a packing-house maygger : :

gave thought to the fact that borax was commionlyghsed |

to lb g the casio of cheese, meats and other food

‘products, and thought) it worthwhile to use the same

thing-on oranges, doubtless often influenced also by the - ..

fact which Brogden and Trowbridge hold out in the very ,

patent in suit that borax has ‘‘excellent cleansing or

er properties” (R., I, 590). é

THE THOMPSON USE.

“4 C. Tisepecn; a contractor = nedibudio) work, —

living at Tavares, Florida, since 1911, followed Mr. Pond

in the Tavares packing house and was superintendent.

there.. In’ bad seasons for decay he used borax in the

* borax was shipped from J acksonville,, some ‘was bought

from ‘a 1 grocer now dead. A stock df borax was

carried in the packing*house store room. Mr. Thompson

P pas we

. er 1

S ae ae ie dare

customarily dissolved the borax in warm water and then

added it to the washing tank (R., I, ce

THE CHILTON USE.

Benjamin F. Chilton, managed the grove and” packing

house property at New Smyrna, Florida; known as Ron-

noe Groves Estate, for twenty-seven years prior to his

death in 1910. Mr. Chilton’s son, Kirby L. Chilton. of

New Smyrna, was twenty-one years old when his father

* died, and was working in his father’s-office at the packing,

- . house. He stated that his father brought back from Cali-

- fornia the idea of using -borax to keep down n ‘decay and

~ that he knew of its use. Mr. Chilton gave this testimony —

with convincing details (R., I 473). Jonas Meeks,- a

ee at this packing house’ krnéw~of this borax use

I, 479), Gus Taylor, who had charge of the. washer

f e same jacking house, testified clearly that he used

- borax in thé washing tanks for six or seven years under

°. instructions from Mr. Chilton; and that it was used to;

_ keep down deeéiy.. He recalled that the borax was

brought in by wagon-:in half barrels (R., I, 481). Shad-

| houses under Mr. Chilton, and testified to the use of

borax ‘to prevent decay (R., I, 513).

One indication. of the weight of this testimony -is seen

in the frequent references. to Shadrach Manning in plain-

tiff’s rebuttal, under the abbreviation ‘“‘Shady’’ Man-

ning (R., I, 536, 551, 552, si with no —* to justify -

the innuendo.

THE sails USE. ‘

Albert E. Benak had twelve years experience with the

California Fruit Growers Exchange, and later was in the ~

, orange- -packing businéss in Florida. At ‘Ocala, Sexo .

{

ASSN ty YORU Ker PE Soe

: he oa borax regularly ka his . washing enka sha was sf

the opinion that it helped to preserve the oranges against

“bine 1 mold’? and pther decay (R., I, jalan

| Meal oe

THE ORGAN 1 USE. 7

‘Albert H: Morgan had been using borax regularly ‘in

California, wenn atleast seven years prior

to the claimed date o leged invention in suit. Mr.

_ Morgan testified at the trial.. He is a man of important

business and financial standing. His testimony was clear-

- and circumstantial. Mr. Morgan’ s testimony was given

detailed support by the testimony of George Wood, a Oe

fruit buyer, who was assistant. manager for Mr. More =.

at the ‘Rialto packing house in Cali fn. from 1918 “d

1920 (R., I, 418). -It would be difficult to-read the depo-

sition of Mr. Wood, and then read Mr. Morgan’s testi-

mony taken. at the trial without having the conviction .

- that it was the regular practice at the Rialto packing eas

~ house .to use a warm-water solution of borax in the

soaking tank for the purpose of regarding or preventing

decay. .

THE DAVIS USE. -

- J. Davis, a fruit grower and packer, told an. inter-

esting story of how he first.came to use borax in treating .

oranges: Back in. 1908 or 1909 he was working for the -

. ‘

. °

A. F. Fruit Company at Corona, : California, and that

company, like all the rest, was having trouble with decay.

‘So Call made Davis a proposition. He promised that if

_ Davis would cut down the percentage of decay a certain

specified amount, he would raise his salary $25.00 a .

-month.. This offer stimulated Davis into activity. Davis “>

being familiar with the | use of borax in: curing meats, |

“é

{

61.

thought that it aus wold prevent. bles mold. any in

_ oranges. and lemons (Davis ‘deposition, R., I, 427). -

- Accordingly, be tried putting borax in the wih water..

“At: first he found that when using cold water the borax

would not dissolve readily, and he, therefore, heated the |

water to a temperature of about 115° F. At this tem-

- perature he had no difficulty due to re- crystallization of -.-

the*borax in the tank. The borax did check the ene ee

and Davis got the sions oe raise.

, THE njwan USE.

_E. D. Howard was the foretiian of the Corian: Pack-

ing House in 1913 and was having a lot of trouble becatise

“of decay. - The report showed,. however, that A. J. Davis :

I, 442) — so. Howard asked Davis. what he was doing. - }

to get such good results; Davis’ told him ‘that he was)

washing his fruit in warm water containing borax (R., ‘

I, 443). Asa resultof this conversation Howard

had his’ Association install a steari plant for heating the —

water ‘in the wash tank and in 1915- 1916 he started the |

use of borax. os , ‘

‘THE PALMER USE.

George W. Palmer i is a small grower residing i in Em. ; fui

poria, Florida. Sinée 1905 he has been engaged in ‘grow-

ing, ‘packing and shipping oranges (R., I, 453). and

has continued in this business practically every year |

_. since: (R., I, 454) except that two years ago he

through a citrus’ -association (R., I, 462). His _ bus-

iness is a small one varying from a few to’500 boxes

& year (K., O, 457). “He has always shipped. . di-

rectly to the customer and never to dealers. Mr.

ae eine Goat

LL a : : ‘

Ab A pW ee ee

BE 0k Fe ee

3 SR Ie AMEE G3 m5

{ — .

Plog sins | ago CO BE :

Palmer is still living and-his deposition. relates to the

practice which he employed up until 1924 when he

stopped packing his own fruit. He testified’ that evér

since 1907-08 (R., I, 464) he had been dipping his

_ oranges in ¢ borax solution prior to shipping them to in- .

' hibit the growth of blue mold whenever blue mold decay

. became prevalent. It is intéresting to note that he used

_- borax in treating oranges because he had known of its

“use in New York State in the treatment of butter and

- cheese—a mere carrying forward of an old use. .

‘The Foregoing Evidence of Prior Application of Claimed’

Proeess to Oranges Given Qualified Acceptance by

‘the Court ‘With No Finding to Indicate the Courts’

Line of Demarcation Between lead Wee Accepted

_ and What Was Rejected. = = Wr;

With respect to the evidence of prior uses the District |

Court said: :

‘*The alleged prior uses relied upon are many.

That borax was used in the preparation of citrus

fruits for market by several persons ‘prior to the

~ date of the invention in suit cannot, I think, be seri-

ously questioned. But borax-is a cleansing. agent

and frequently used as a washing powder as ‘well as

an antiseptic and preservative. That it was used by

atiy one prior to Brogden and Trowbridge for the

purpose of preventing decay and in such manner as

effectively to prevent decay or otherwise than: as

. a washing powder is not established by the evidence

with that degree of gg which is required with

t to prior uses’’ (R., I, 19).

The Cireuit t of Appeals held to the same effect

(R., I, 577). Neither

to the testimony of any of the considerable number of

witnesses thoroughly established as men of consequence

urt vouchsafed any references |

63.

- in widely separated districts who, without interest in the

event, persisted in the sworn statement that throughout :

long periods they used borax in their orange washing. - __

tanks with a view to retarding decay adequately and |

successfully, or in the case of some witnesses, knew of !

‘. such use in packing houses. with which they were con- . ~

nected immediately as packing company meine or as 5

workmen, superintendants or foremen. | :

, Neither Court gave any indication as to what: tests of ..

credibility or probability were applied or any indication

of what testimony was accepted and what testimony was ~

—

eee

. ait ad e- = ¢

ee ME eee NNER RITE Sh

e ’

The Evidence of Prior Uses Is Sufficient in Quality and

| Amount Under the Decisions.

After permitting ‘itself to be governed by the view

that a showing of specific prior uses of borax as an in-

hibiting reagent for blue mold decay of oranges, was the

only thing that could surmount the bar of unsuccessful

_ search which stood in the way of asserting the earlier

conclusion of non-invention, the Cireuit Court of Appeals

had before it the clear disclosure and. use under the

Bishop patent and gives no indication as to how it arrives

at the conclusion which is stated, with no visible connec-

tion with any evidence, that the record clearly shows that

_there was no prior use of borax as an inhibiting —-

for blue mold decay (R., I, 577). -

And since the Court gave no attention to the Bishop

patent under which oranges were actually subjected to

the action of boracic acid in a way that would be an

infringement’ under. the present decree, both\as to the

process claim and as‘to the product claim, theourts’

rejection of the eight other uses in evidence can not be

given much weight as a self-sustaining conclusion.

. =”

“

In. considering the testimony offered * in support of

these various uses alleged to:have been long continued ‘

at various points in Florida and.in California, a per- _.

suasive element of inherent, probability will be seen in

_ the fact that this claimed usé of borax was just. such ae

thing as was probable’to have been found. as a practice.

in the. preparation of oranges for the market. It is’

beyond question, as the Court found, that it was a matter

‘of common knowledge that borax was an antiseptic much. — .

used in preserving. articles’ of food. by a process of *

immersing the article i in a solution of borax. It is fur-- °

ther fact, as found by the Court, that borax. actually was

used in the -weching and soaking tanks in packing house

practice. There is much evidence in the case to the effect °

~~ that-oranges-are -subject_to many kinds of growth of 4

’ ‘ en ure

— srinaiaitahltintetiaaidas iniininten tema Te | :

le . - . , .

bacteria, spores and scales and diseases and that cleans-.

ing and disinfecting were everyday practices. Accord-

: ingly it-is natural.that some of the many packing house . '

operators knowing borax as a cleansing and preserving ;

agent would use itasa preservative.

And when many disinterested witnesses from different .-

States say that they did use borax as 4 presérvative as |

well as a cleansing agent and. some of them refer to

‘specific things that emphasized in their minds this con- *

ception of use, as in the case of Geo. W. Palmer, who

had been familiar with, its use in the dairy business. in

the. State of New York, the importance of this element of

inherent probability is emphasized.

Testimony as to these uses rings frue throughout. °

Take, for example, Palmer’ s statement (R., I, 453- 4);

“T began intelue my fruit myself, and I —

some trouble as I remarked, about decay, and I

thought to use something to overcome that blue mold

decay and I tried the use of the ‘standard Bordeaux.’

This bordeaux is used as a fungicide on & great —

many farm and fruit crops and I was. satisfied in

my own mind that it would overcome this blue mold

.and wither tipf fungus. - I still think it would work

- all right but it left a dark looking residue on the

fruit, which was, of course, poison, and I abandoned

the idea.. I understood the use of. borax, more as. .

‘the use of a bactericide.in New York State'in the

‘interest. of their creameries, etc., where it was used &—

‘to prevent bacteria that caused loss of flavor in but-- ~~

ter and cheese. Remembering these things I cori- aaa

cluded that the borax would work on the fruit for

about the same purpose and tried it: _As I remember

it I have used, or did use a solution of perhaps 2 or -—

3% Baume to start—it gives the specific gravity—

“)° but of course this solution would be strengthened as

" “washed the fruit put in and-added more borax and

: ‘more water to make up for the loss which the ‘fruit -

itself would take up. Now, I _used this_experimen-——7

~— tally to start with but became perfectly satisfied in

my own imind that this borax solution would prevent

decay: in oranges or citrus fruit, and experience o

twelve or fifteen years bears out this idea.’’ owe are’

* He was asked on cross examination (R., I, 461) .0

“T-gather from your testimony that you wish to

be understood as considering that you made quite §

method of treatment which, I believe you said, you

_ began very soon after you began shipping fruit?’’

And he answered:

‘I never considered that. I had made any real |

discovery. I was simply: adapting the use of borax

. to this purpose, which is, or may be one of the many

of the uses-to which borax was put. Borax being a

natural production I did not consider that it was a

discovery brought about by man, or made by man,

but that the adaptation of its use could properly

enough be considered as an adaptation only. Mixed

Metaphors perhaps.’? i

‘

66 |

- This Palmer use, although convincing in itself, is

strongly: corroborated by ‘the testimony of his neighbor

_ Burden who witnessed Palmer’s operations, knew that

he was using borax, ‘and actually. observed with his own |

eyes the difference ‘between treated and untreated culls 3

(R., I, 468). |

While a prior use set up. in anticipation of a patent °

must be provéd beyond a reasonable doubt, it is ‘against,

reason and. authority to say that a prior use can not be

established by oral testimony alone. Oral testimony as

‘to a prior use standing alone is apt to be rejected when . —

in the nature of things there is. is suDstantial danger that:

_+the witness” was. mistaken as to the. exact device or.

_process. | ;

But it was indicated in the: leading case of Deering .

vs. Winona, 155 U.. S., 286, 301, that a Court should

-. find some genuine danger of mistake-in the nature . |

of the subject matter before rejecting inherently con- |

_ ststent testimony, reasonably probable in character in the

light of the surrounding eircumstan¢ces,and coming from

witnesses of seeming good character and standing, ap-

parently qualified by experience to testify as to the facts

in question. In the case cited the Court said: ,.

<eclig the witnessés to be of the rn char-

acter, and never so conscientious in their desire to.

tell only the truth, the possibility of their being mis-

.. taken as to the exact device used, which though bear-

differ from it.in the very particular which makes it

patentable, are such as to render oral testimony

‘peculiarly untrustworthy; particularly so if the tes-

__timony be taken -after the lapse of years from the

time the alleged anticipating device was used.’’

. But no such state of facts is presented here re. This case’

is not concerned with mechanical devices of ito Sa

structure about which the witnesses ‘might be mistaken.

. .

a -

.? -A

67 oes

The. prior use testimony here is directed to a single, — E

simple fact, namely, the use of borax in the wash water &—

of the several packing houses to. prevent or retard the: |

- decay of the fruit.\ In circumstances such as presented

here, where there are no details or complications about. f

_: which the witnesses might be mistaken, the Courts have. 7 a

uniformly. held that oral testimony of reputable and-un=

impeached witnesses is all that is required to establish |

--@ prior usé. - ee Fei

_._--In Sipp’ Electric & Machine Co. vs. Atwood-Morrison

~ . Co., 142 Fed., 149, 153.(C. GC. A., 3rd), this question wa

discussed at length by ‘Judge Gray, speaking for the

Court: . ee ,

‘‘In addition to these patents, testimony was. ad-

* duced, - showing anticipatory. use of the pivotal »

bracket in precisely the same kind-of combination .

as is claimed-in the patent in suit, There are two or. .

more witnesses who testify to this previous: use.

There,can be no doubt that the prior use, as testified .

to, clearly anticipates the piv tal adjustable bracket,

with means for lateral adjustment.on the rail and. 4

means for supporting: the ends of two. adjacent: |

swifts, and: means for locking each arm against pivo-—

_ tal movement, separately or in combination, as de-

scribed and claimed in the-patent in suit.. This is not

sericusly contested by the appellee, whose principal, -

if not sole, contention is that the evidence as to the .

_alleged- prior uses of the patented device-is irisuf.

ficient to defeat the patent. In support of this ¢on-

"tention, the appellees quote the oft-repeated declara-

tions of courts, that the birden.-of proof as to prior

_ , use rests upon the defendant, and that every. reason- .

* . able doubt should be resolved against him, and that. q

“courts require that the-proof of ‘prior. use shall be —

clear and satisfactory. It is undoubtedly the duty

of courts to exercise, as in nearly all casés they are

careful to declare, the utmost caution in scrutinize |

ing and considering the testimony offered to estab- -_

lish _a prior use. Courts have' frequently taken the

g is

ees ; a,

grind, andes the sirtindeg: shieiniatinieg of ras

. CASE before them, that where a long time has elapsed °

“ gince the alleged use, and the fact depends upon the

_ ° fading. recollection of a single witness, that an ea-

hibit of the device or. thing actually used must ac-

company the affidavit. There is, however, no: hard

and fast rule as to this. In this, as in other cases, the:

, weight and effect of testimony must b passed upon,

, and.a conclusion as to the existence of an alleged

| prior use will be reached if the evidence thereof is

clear and satisfactory to the. aaciidse “mind, (Em- -

“. phasis ours.) - |

‘Tn the present case, we see no reason ‘to doubt the. *

testimony as to these alleged prior uses. The wit.

nesses are.shown to be men of experience and intelli-

gence and there is no impeachment of their charac-

ter. Their familiarity with the art and industry to

which the patent in suit relates, is abundantly’ estab-

lished. No bias or pecuniary interest is shown to

_ qualify the force. of their testimony. ‘The ine tat T

* has’elapsed since the date. of the facts testified to was

" not-great—ten or twelve years. The witnesses were

in the prime of life, and their. testimony direct, posi- -

' tive and distinct as to the facts testified to. Seven

exhibits.of brackets were produced: by them to illus- »

trate the art as they knew it to exist. All but one

of them were reproductions. made for purposes of

- illustration. They are, however,\so simple in char-

“acter that-it is impossible to believe that an. ordi-

’ narily intelligent man could be mistaken as to their

exact form and function. ox PS

} In a similar case, ‘Rodwell Sign Co. vs. F. Tuchfarber

Oo. .127 Fed., 138, 142, the Cireuit Court of Appeals for

the "Sixth Cireuit expressed the same views in the follow-

ing language:

; “Six Satinpemahabl witianes testify to hisis, ning

; before the patent, either made and sold, or to having

seen in public use, in ‘the City of Cincinnati, door .

name- ‘plates made in this same way. These plates

‘ “4 2

; < . ,

: az ; - . ‘“

. \ os > ® . .

_ t A ‘ g eokael

Sart were LPS es GT Rea career ens y ee nies “ye

rea SPARTAN ERO ME STANNS Ua A He ait ‘ Ne

- < ofa aT ° oe

7 . Can - . ” mee

a a

rage consisted of a name cut in a suitable block of wood "-

‘or other material, the letters being recessed. or con-—

‘Gave. The obverse side of this recessed tablet. was -

then placed against a plate of clear glass, and both

* ~~ enclosed: in a silver-plated-frame adapted to be at-

tached to the outside ofa door. . That no two of

these witnesses testify as to the same identical plate,

and that none. of these old plates are produced, is .

urged as ground upon which we should hold the an. . -»

ticipation not proven. We are not unmindful of the

liability to mistake in oral evidence of an-anticipa-

tion, and of the’ rule which.. requires. that the evi-

dence relied upon to overthrow ‘the presumption of

_ novelty should be of a most cogent charactér. Deer-

‘ing vs: Winona Harvester Works, 155 U. S., 286, 300,

15 Sup. Ct., 118, 39 L. Ed., 153; Amer. Roll Paper

. Co. vs. Weston, 59 Fed., 147, 8 C. C. A., 56: Never-

' theless we. cannot escape the conviction that this

-* method of making door name-plates is established as —

_ convincingly as any such fact can be established

where the original article is not produced. So faras .

we cam see, the witnesses are without bias or incen-

_ te to color their evidence. Thé probability of mis- —

_ take is reduced ta a minimum by the very simple —

character of the subject about which they testify.”’

_..,, (Emphasis ours.) coe ene 3

’ In like case a learned . English ~Judge said:

.°_ “The evidence is what it is, and I am unable to

draw such inferences as would dispose and get rid:

of that evidence if the .evidence is in itself suffi-

cient, to prove anticipation.”’ ° Reset ho serene

3 Morgan & Co, -vs. Windover & Co.,.7 R: P. C.,

Early Work of the Department of Agriculture ‘in the af

_ + Treatment of Oranges With Boric Acid *to-Prevent

_ Blue Mold Decay, _ Svat ie :

In 1904 when Dr. Powell, the man who made ‘‘careful

_ handling’’ famous, was ‘starting his work on blue mold . ~

Re ito oct:

10.

-prevention, he was interested in a certain patented

a process for fumigating the fruit in the cars (R., I, 229,

' 234) and asked Dr. Gore of the Bureau of Chemistry fo :

-. Investigate it for hi (R., I, 234).. In the course of these

investigations, Dr. Gore conceived . the idea. of: trying

other chemicals. It oceurred to him at once that, boric

acid should.-have the same effect upon penicillium glau- Wh

. eum on oranges that it did on other ‘foodstuffs. So! 'eX-

Byer gi periments were conducted along this: line with the “assist- naa

wal ance of W: M. Séott of the Buréau of Plant ‘Industry, and

the results carefully. recorded. (A certified copy of

Dr, Goré’s notes were\ received ‘in evidence as Defend-. -

-ant’s Exhibit No. 9, R., II, 1475). . Test oranges were

’ wounded, the Woonded tenis inoculated ‘with cultures of

penicillium glaucum,-and these oranges dipped into boric

acid solutions-of varying strengths, These | ‘xxperiments

‘proved conclusively that boric acid inhibits the develop-

ment of blue mold. Dr. Gore tentien! (R., I, 229): [ie

course rubbed on the abraded surfaces and then thie

“oranges. dipped in boric” acid solution: and allowed

__ to dry and we observed that inthose fruits that had

been so treated the mold was very slow in starting, | 7

it did not start for a good many Gays. spheres: in |

i. the control it went right off. ”

Here then was-a loomiplete ‘sounenGen of the great Brog-

“We got the inhibition or siopning of the germin-

ation of. the spores of blue mold which were of —

den and Trowbridge invention’ followed by a perfect: re- :

duction to practice, all more than’ twenty. years ago. ,

Again we see how knowledge of the use of boric acid

- as a food preservative | for other foods led easily: and

naturally. to its use in: ne oranges from mye

mold.

It is interesting to note that. Dr. Powell himielf - was —

familiar. with this work and kept in close touch -with it

No I, 231). Dr. Gore testified (Ba, is aon

Pa |

eq reported the fedalis of hip: <absbbagioe to Dr.

‘Powell, and I believ¢ also. to Dr..W. A.. Taylor. I _

remember that Dr. Powell noticed the: presence of

a few crystals of -borie acid on the: surface, of the.

oranges and just at that time I might-say there was

_ a: great deal’ of agitation - against the use of any’

_ chemicals in connection with foodstuffs on account. -

of the agitation in connection with the Pure Food

Law which passed a couple of years’ later and Dr..

Powell did’ not like the idea of anything suggest- |

- ing’ that chemicals had. been-.ised, appearing. on a _

‘wiapper or on an orange and he rather deprecated

. e. idea of ‘using kfaaie acid for that reason.’

So ‘this shalt of es “\eberiunbrite were never pub- —

lished, never given to the industry, for the simple reason

that it would; have been impolitie to have: ‘done so. The.

‘plaintiff would haye us believe that the Department was °

- ignorant of the’ toxicity of boric acid for blue mold.on

oranges and that careful handling. was urged for want

of something better. But we now see that this isnot so,

- would do but would not use -this + knbwiedgs int deference

to the. Bureau of Chemistry. | :

, Courts Found Claimed Process Inherently Wanting ‘in

Invention But This Conclusion Barred Collaterally. ’

In view of all this. evidence the District Court eon-

eluded that viewed retrospectively “‘the. claimed process

would seem to be wanting. ir invention over the: diselo- =

sures of the prior art’’ (R., I, 18). 2 a

; But the Court then proceeded to say that’ it saw r at

some undisclosed place in the evidence such need ‘and.

_ search for & blue mold remedy. as ‘‘must stand as a’ ‘bar’’

“to the conclusion of non- invention: unless prior uses

were found to invalidate thé process claims. | After

following the. course of this ccireilar reasonin ‘ _ the 73

and: that in fact Powell himself knew what boric acid: §

original conclusion of ‘non-invention ‘seems to stand

> unimpaired. ; But law and reason forbid that a con-

clusion inherently free from doubt shall be barréd

by any extrinsic evidence. The general rule has been

set out frequently in cases relating to the construction

of wills where the courts say that extrinsic éviderice is

‘not admissible to raise a doubt. It is admissible only

where the doubt arises within the four corners of the will.

And_.in the patent law it has been pointed out fre-

quently that ‘such things as need, search and commercial

success are not to be brought in to show-invention where «

upon comparing the claimed process with the disclosures

of the prior art it appears without reasonable doubt.

that the-claimed process is lacking in invention’ over the

disclosures of that art. :

Decisions of Courts Below Based on Unwarranted

We have briefly ‘summarised the evidence submitted |

by defendant. to establish prior widespread knowledge

and use of borax as a preservative for foodstuffs gener-

ally and for fresh fruits and vegetables in particular,

including citrus fruit specifically. We have not enlargéd

further on the evidence submitted by. defendant for the

reason that as we have’ pointed out above, the lower

Court specifically found this widespread knowledge and

use to be established, and this finding of the District

Court was in substance approved by the Court of Appeals,

but both Courts refused to follow this finding of fact.

‘with what seéms to us the inescapable conclusion that the

. Brogden patent was invalid, on the -basis of certain col-

lateral assumptions,+and it is in the making of these

assumptions and the effect given to them that the princi-

pal error of the lower Courts is’ found.

It is our position that these assumptions are in error,

first, because even if warranted they are insufficient. to

set aside the plain evidence of anticipation submitted by

tlie defendant, and second, because there is no evidence

to support the Court’s assumptions, but on the contrary

‘they rest solely on inferences which an analysis of - .

evidence show to be unwarranted.

These nesnyaptions are:

want for a furthér remedy against blue mold decay and

that there was a long continued, extensive and exhaustive

‘search for a preservative treatment such as disclosed in

the patent. ‘Qn the contrary, the evidence shows that

from 1905 right down to the date of the trial, the efforts .

of the Department of Agriculture in promoting improved

_methods of picking and handling fruit had been success-

ful in reducing the;loss from decay to a small per cent.—

_. even a fraction of one per cgnt. of the season’s crop. The

‘800 or more pages of documentary evidence admitted by

the Court under the guise of establishing the res gestae’

the success attending the Department’s efforts in estab-.

lishing improved scientific packing house methods and the

. ‘plaintiff’s leading witnesses state -without qualification

that where such methods are followed the loss through

decay, is insignificant. Except for the work done at

- the Department of Agriculture by Gore and Scott de-

fendant’s witnesses, with borax, which work demon- —

strated as long ago as 1904 the efficacy of the borax treat-

ment specifically for inhibiting the growth of the blue

mold spore on citrus fruit, there is no evidence of any

experimentation looking toward the commercialization of

such a remedy.

Second: The ouiimption that the process of the patent

in suit because of its outstanding merit has resulted in

—_ |

r) = ~~ re ed "> » . COT OT Og Em Fe

° *

its general adoption by the industry. The evidence is

that such use. of the process as has occurred was not

due to the merits of the alleged invention, but was the

result of the aggressive commercial activities of the

plaintiff company.

Third: ‘The assumption that the recommendation of

the Department of Agriculture of the borax treatment

was withheld because it Was considered ineffective, and

not because of the anti-borax activity of the Department

of Agriculture in connection with the Pure. Food Law..

UNWARRANTED ASSUMPTION OF LONG-FELT

, NEED AND SEARCH FOR REMEDY.

4 this patent is to be ‘iniated by collateral findings;

facts that give such support should be established by

. dirett and substantial evidence and not assumed by re-._

_ mote .inference. ' : -

; Plaintiff’s First Grade of Available Evidence Not Used.

A most persuasive reason ‘to wnat that the facts

of need and search have not been supported properly

appears when it is seen that the plaintiff failed .to

avail itself of its only adequate source of competent

‘evidence, -The plaintiff called thirty-one witnesses the

majority of whom were of long experience in the, citrus

industry and shown to have been ina position to know

the fact if there had been any such long-felt need and

any such search for a remedy. Plaintiff did not examine

‘a single witness on this subject, and. William S. Hart

(infra) the only one of the plaintiff’s witnesses who tes-

tified in such manner as to indicate what he knew on the

subject, testified most strikingly to facts that were abso-

lutely inconsistent with the theory that the industry felt

any such need or that it or anyone in its behalf was en-

‘ gaged in any such search for a remedy.

Plaintiff's Publications Showed Antithesis of Search.

Soniaias for the vated purpose of showing the teach-

publications comprising about 850 pages of the |

record which consistently throughout go to show that

with the aid of experts of the United States: Departmeit |

of Agriculture there had been worked out in the industry |

and generally accepted a system of careful handling of |

oranges that was a pronounced commercial success as, -

based on the avoiding of injuries to the rind of ‘the

orange without which blue mold cannot attack the

orange. |

Because of the large volume of this hearsay which is

pointed to as containing evidence of need and search,

“but which contains no sneh evidence even if it would be

‘competent for that purpose, as brief a digest of these

publications as may be possible has been made and for

convenience of reference is printed as an appendix to |

this argument.

It will be seen that in every case where a witness for

~ the plaintiff touched in any way upon orange packing

house practices he indieated that ever since the adop-.

tion of the-standardized careful handling practices that

had been worked out more than twenty years ago under ’

the leadership of G. Harold Powell, the industry had |

relied primarily and still ‘relies primarily upon the avoid-

.ing of injuries to the fruit as the fundamental way of

avoiding blue mold, whatever might have to be done

for the prevention of such other kinds of disease and

— decay as attack ‘sound | oranges without being limited to

unsound oranges as in’the case of blue mold.

er ,

Plaintiff’s Leading Experi N egatived Theory of Search.

William S. Hart was offered by the plaintiff as a

student of every phase of the orange industry for fifty

years, who owned and operated his own large packing

house: (R., I,.528) who had studied the problems of the

orange industty in the citrus districts of four continents |

and various islands of the sea (R.; 1,529) who for twenty- °

four*years had spent a part of almost every year in

these travels; and was.a business man of wide experi- --

ence,. a director in lots of concerns, with interests ~

throughout the entire State of Florida and managing .

- millions. of business (R., I; 542). Mr. Hart had been ———

either_secretary-or-treasure ¥-of the “State Horticultural. -

‘Society of Florida for thirty-two years beginning with ~

its second meeting (R., 1, 538). In‘all of the thirty-six

_or thirty-eight years of the existence of the Florida Hor-

.ticultural Society he had missed only Tour meetings =

I, 540). : j

The plaintiff. not only offered the sitended testimony

of Mr. Hart (R., “1, 527-550) but also included in the

publications offered to show the. teachings. of the prior

art, held out formal papers and, informal sayings of this

witness: from the. reported proceedings of the Horticult- _

ural Society, —so that we have before us ‘both his testi-

mony and-his teachings.

_ * In his testimony as a witness in the present case, Mr.

- Hart made it clear ‘that in his ‘practices of a lifetime |

covering the entire period of the development of the |

Florida orange industry he gave no thought to. any pre-_

ventive of blue mold decay except careful handling (R.,

I, 535) with the use of plain water for washing (R., I,

533) and that he ‘‘never had any particular trouble with

- blue mold’? .(R., I, 544).° The publistied teachings of |

Williani S. Hart offered by the plaintiff as a part of its. —

showing of what was being taught in the industry, go

back to 1907 (Pltff. Ex. No. 7, R., I, 649). There in a

report of a meeting of the Florida State Horticultural

Society, Mr. Hart appears as a crusader for careful

handling, endorsing and emphasizing out of his own ex-

perience what had been said at the meeting by Lloyd S.

Tenny, government pomologist,.on the subject of care-

ful ‘handling. For several years Mr. Tenny had been

working in California as assistant to G. Harold Powell

in, his careful ‘handling studies and teachings. 3

- Next in the proceedings of the Florida State Hérti:

___William-S--Hart (PItff. Ex. No. 9, B., I, 755) in which

he’reviews and thoroughly endorses Powell’ s work and

from his own experience adds much detailed ‘advice on

what he holds out as the essential and exclusive practice

in the preparation of oranges for the market. This paper |

ends with a copy of Mr. Hart’s eighteen posted rules

for his pickers and packers, most of which relate spe-

| cifically to details of careful handling, - Mr. Hart sum-

marizes with this striking statement: wie ie

_ that should ‘run like the red strand in the cordage

- of the English Navy, through all sur operations and

7 relations with our fruit’’, (R., I, 763). rs

‘‘The lesson then, that I would ees is carefulness

In the proceedings of the same Society tor 1909 Mr.

Hart reports on a visit to the California citrus districts

in company with Powell. He again stresses the matter

of careful handling (R., Il, 821). Again at the. Society’s

annual meeting in 1910 where Stubenrauch presented

. the latest-developments and results in the matter of care-

ful handling, Hart again is quoted as endorsing all that .

was said (R., II, 850-852).

Haré appareritly was absent in 1911. In the proceed-

ings for 1912, H. J. Ramsey of the Department of Agri-°

culture makes an exhaustive report on the careful han-

a”

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is ‘

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po , . °

Nin S Sir isan .

Pelee if ee RIS 4 — a e oe :

dling work in California and Florida. He teaches that

_: work of this season cove i Ctically the entire citrus

' district has that almost without exception the

‘is due.to rough and more or less careless handling.

' at time of picking and packing,’’ and that ‘‘it has been

fully demonstrated that fruit can be carefully picked

and packed in a commercial. way so that it will carry to

the market in sound condition and hold up for a suf-

ficiently one period to allow of its distribution and con-

-sumption’’, (R., II, 903). In striking contrast to the con- :

ception of 30% to 40% decay that influenced the con-

~ elusion of the District Cotirt (R., I, 18) and the Circuit

Court of Appeals (R., I, 574) this 1912 report from the

Department of Agriculture shows an average blue mold

decay in seventy-nine test shipments from Florida in the

season Of 1910-11 ranging under careful pick and pack

from 0.6% ‘on arrival to 1.9% three weeks -later, as

against 7% on arrival to 14. 2% three weeks later under. |

commercial pick and pack ; the averages for sixty-five fest

shipments from thirty-seven houses in 1911 and 1912

being under careful pick and pack 0.6% on arrival and

2.2% three weeks later, as against 4% on- arrival and

, 14.2% three weeks later under commercial pick and pack.

It is to. be noted that the plaintiff here shows that as

- early as 1912 the United States Department of: Agri-

culture was teaching -results from careful handling, as

satisfactory as those claimed by the plaintiff's witnesses

at the trial as secured by adding fo the long-taught prac-

ticé of careful‘ handling . the Brogden Company’s two :

- highly advertised Brogdite and Brogdéx processes under.

which they assumed to take oranges from which injuries

‘have been eliminated for tiie most part by careful han- |

dling and add to them an antiseptic coating of borax

and a further preservative and protective coating made

_ . up of a composition of persia, natural oils and waxes of —

. 2 :

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x NRE ae eee ites soci ot " — - on . ait

tery Rese . «¥ " - Pe EEE CE een rr a ee eee ere sulmapantan we. @ Sa AU

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-ents (R., IT, 1467).

Gis * After this’ presentation by Mr. Wonka to the Florida

~ the orange tree, and certain undisclosed. antiseptic solv-

State Horticultural Society in 1912, Mr. Hart is .re- -

.ported as seconding’ g a motion recommending the grow-

~ ers of Florida to agont the full eareful handling program.

as. presented by Ramsey, and to request the United

_ States Department of Agriculture to allow the careful

handling of work of Mr. Ramsey and his co-workers to:

- continue (R., I, 921).

. ¢ Circuit Court of Appeals Thirteen Exemplats Had ‘No.

Connection With Search.

The most direct statement in either opinion. as to what |

~ Jed to the strong declarations made by both Courts with

respect to need and search is the statement of the Cir-

cuit Court of Appeals which names thirteen men as the |

specified authorities who were seen by the Court to have .

been engaged from 1902 to 1923 ‘‘earnestly and labori-.

problem -of « finding something to prevent blue mold

~~ decay’? (R., I, 574).

In the absence of any findings of. primary facts by the

Circuit Court of Appeals, the most direct way of testing

- ously in a concerted and continuous effort studying the |

the soundness of this conclusion of search seems to be to.

turn to the Record and learn what it shows as to. the

work of: the thirteen men named as ‘‘eminent horticul-

turists and. pomologists”’ engaged in that long continued

_ Work. If it is found that the Circuit Court of Appeals

‘was confused as to what the evidence really shows as to

the work of these men, and that they were not engaged

_ in any such search, then the conclusion of the Court | is *

_. left without any clearly pointed out basis. ox :

- Of the thirteen named hac two only testified in

the case.

* aes laid 4 r na a Sf CN a ae ican 2 rang mtoae

EF RE ASE PERE REIN LEA UPR REAR PRE Sh mS RCN a eee Ahan Mery ee ey

William 8. fart Wi was one of the two who testified.. As |

“geen elsewhefe in this argument his testimony through-

out, and hjé published’ writings show that he never en-

gaged in Any such search and never felt the néed of any.

new mode of prevention. He relied on.careful handling

be ws fruit accompanied by thorough washing in plain |

(R., I, 533, 763) and he never had any substantial.

uble with blue mold (R., I, 544). This witness owned

; sk eta a large packing-house for many years, in-

/ Cluding the period from 1902 to 1923, referred to by the.

Court as the: period of the.alleged search. He was quali-

' fied as an important business man, a leader in the sora

fruit industry and a world student of its method :

Lee B. Skinner, the second and last. of the t aoe

‘named experts to testify, was not asked about any search

and did not testify with respect to. any gas matter .

(R., 1.65). |

The remaining authorities named e the.Court (R., L

~~ 8T4) were Powell, Tenny,. Woodworth, Dyer, Fawcett,

. McKay, Sadler, Ramsey, Mann, Holton; Stubearauch.

None of these men were called. No explanation was

made as to the absence of any of them, or whether.living — -

or dead, except perhaps in the case of G. Harold Powell °

who died- some ‘years AZO. .

. We have. no phir as-to the activities of any of |

_ these men’ except Yor any mention that may be found ~

' by way of hearsay i nN some of the eighty or more publica. .

tions offered by the plaintiff to show the teachings of the

prior art. None of this hearsay ‘portrays a single orie

of these men as oe in ba ‘seatch for a blue mold

remedy.

G. Harold Powell is seen ihroughout asa ‘ervenier for

careful handling, giving no sanction to. anything elie.

He taught that this was all sufficient. His only refer-

| ence to. anything else was in 1905 when as Dr. Gore tes-

peice he eas on cisions of atten to the’ ghia tes Ly

“of oranges with borax (B., I,.229) and in 1908 when he

wrote: ‘‘If it were possible to kill the blue mold in the

washing tank, it would place aspremium on the shiftless

management of the groves and on the rough, careless.

handling of the fruit”? (R., I, 709).

‘Lloyd “S.. Tenny ‘was associated with Powell in the

’ careful handling work in California and continued it in

Florida. He is quoted in Plaintiff’s Exhibit 7 (R., I,

- 649), Exhibit 10 (R., IT, 766).- and Exhibit 13 (R., IE,

808).. In no. place is he quoted or referred to as engaged

. otherwise than in carrying on the careful handling work

to which the United States Department of Agriculture

was comnitted completeély. Aes a

‘There is not a word of evidence in the -case, hearsay

or otherwise, to connect Mr. Tenny with any search for

_a blue mold remedy. In 1907 the ‘careful handling”

‘practice had been exhaustively studied and worked out

to the point-where the Bureau of Plant Industry had

transmitted to the Secretary of Agricultur

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