# Petitioners Brief — American Fruit Growers, Inc. v. Brogdex Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_0498%3A04 ## Record - **Collection:** Supreme Court brief - **Document type:** Petitioners Brief - **Published:** January 1, 1931 - **Citation:** 283 U.S. 1 ## Text ” . . . . . . ’ . . 6 ‘ . . ‘ . ‘ ’ . ‘ * . . ° ‘ . ,. . . . . . . . : ; ; ; : FILE COPY | ccc61 ir 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 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 24 34 39 43 62 63 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 3 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 Vv 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 48 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 s : . 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? ay | ‘Thropp’s s Sons Co. vs. 0 264 U. S., 320°. yi 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, | oe American Fruit Growers, Inc., _ + Petitioner-Defendant, ee Taree - Broepex Company, Respondent Plaintif. -—_— = ——— . 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 4 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). 4 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., 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 ~ > , 2 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. _ rach (is ° — ——_—. tits fi eat ond, . . 4 . i 4 ug a > ° . : » . . ° Pee : ” es Fes . . e Z - . . a » ote . . . e . ‘> Be ge “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) . . : - es 4 ° . s ie - . . ‘ . ¥ * . 4 4 a | = : 3 ee = 7 - 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 d, . 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 ° vg ' + ” : : : : “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 2 . UA va atannnne é . ‘ aes . Be ° | ’ . M : 3 . ' e Sai sana &. Ne a - ° . ° . ‘ 7 PO DES TST AEN NE ' ’ ‘ . ° . ’ ‘ e ° - ,F ag , ° . ‘14 _ 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 15 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 fe ae , i 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; y > (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 19 “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 ve ‘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 : [a 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 27 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 te 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. 29 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 i 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-. . / 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 | \ iz fet as \ i oe 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? i —————————— 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- /~ ” a - 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 53 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 55 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. * 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 58 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 not to be expected that such a.thing as the use‘of borax © 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 wash water as a preventive (R., I, 504). Some of 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- ‘rach Manning was a foreman at one of the two packing © | 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 . { : . ° E 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, | et “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 : ” was getting less decay than the rest of the packers (R., © 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 stopped packing his own fruit” and is. now shipping © 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 : ° 62 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 . - . , . a 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 65 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 § an important discovery ‘when’ you hit upon” this. - © 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: ,. ® . . _ 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 - 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. 73 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: First, that there was a crying need and a long-felt © 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’ as to what the art was being taught, shows conclusively © 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.. - es 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- 75 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- ings of the prior art the plaintiff offered a great mass of © 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 , > 76 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 a @ i 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: | cultural Society for 1908 appears a-lengthy p: y paper by © ___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” ° : . . © . . . 4 . . . “ r is ‘ : > ; po , . ° Nin S Sir isan . Pelee if ee RIS 4 — a e oe : 78 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 : . é . . . . e i : Pei: : e : . . ’ x NRE ae eee ites soci ot " — - on . ait tery Rese . «¥ " - Pe EEE CE een rr a ee eee ere sulmapantan we. @ Sa AU Ve,-m™mr ees ? 79... -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 Agriculture for ‘publica- — tion the exhaustive report prepared by G. Harold Powell, assisted by Stubenrauch, Tenny, Eustace, Hasford and White (Pitf.’s Ex. 8, R., 1, 664) which has become the © classic of the industry onthe subject of the aides of blue mold of oranges. : Tenny’s work everywhere-appears in the evidence as devoted singly to the support of. that program. :- U. W. Woodworth appears nowhere in the case exéept _ in 1962°where he appears as author of a bulletin issued . by. the Univ ersity of California on the subject ‘‘Orange and Lemon Rot"’ (R., T, 604).- This is a scientific paper. discussing the. mold fungus as a common cause of rot. : John Francis Dyer. The reference to this. man as one - of the eminent authorities whose long and fruitless work. was pe ive evidence of a long, unsuccessful search — - .for abl mold remedy is * far fetched to the last degree. * . > . oO A es ar aes ELEN IRRARY SSO Rees Pee Bete tones ee peda a Nycept 82 _ He: appears nowhiere in the evidente except as rn writer ; for the **Review of Reviews”? who in 1909. wrote a popu. lar: article somewhat sensational in tone reviewing Powell’s work on the careful handling’ of. trait to avoid, injuries: (R., 11, 777). : ‘H.S. Fawcett. Plaintiff's Exhibit 14.(R., I, 835) con. _ fains a paper read by H. S..Faweett before the Florida ' State Horticultural Society in 1910, limited to a discus sion of stem- end rot (R., UH, 854), and in Exhibit 15 (R. I, 864) as addressing the Florida State Horticultural , _ Society in 1911 on the subject of. ster end rat and gurn “mosis ‘of ¢itrus trees, His only reference to bine mold is ‘that he had found that some chemicals used in treating for stem-end rot -and gummosisx, “fungi of citrus trees, seemed to: increase the amount of blae mold decay “due . probably to injury to the rind’? (RB. UL, 870). oe 2. Faweett is quoted for the sveond atid Inst time as one of the authors of a bulléetin-of 191) froth the U niversity. of Florida on ‘* Disease ‘" of € itrus Fruita.’ The authors, " diseusa, inter aha, blue ineld fot and any that the aqi proved method af. prevention. . tsearefal: handing. in. avoidance of the injuries upon which the mold follows -- , ER; L, 809), Nowhere is there: an intimation that Mr Faweett was of opinion that any other tnexte of prere : tion was needed, morh lees that he was searching forast.: A. weM ‘K 4y appears eutiply as addressing the Ficr 3 State Hortienitaral Seeiety im 1910 The text of. speech was as ‘fptiews (R. al OW | * toe wes “At the: end of lnet year. it wae fait that eit oon ‘secutive seasons. of experimental work. had dermoo atrated thorongiy- the. canees of bine mold dewiar in-Plorida-aranges, in franeit and on the tea rket.. pod the value of careful handling in preventing spnch decay if any farther demonstration wae nebeled. ie needed, if ie furnished om a comimetyial aa! an ipereasing!y large number of grewere a tf | per af vege ‘fruit, who have see rarefal: Raa > ie mae Seale 7 ' ; A } ar ie am ° . ‘ . . “tal : . $ : ; : ieee r : ‘ elie hey adic ° . “ “ . Dias , t ms Ms : —furtliering a. program tard dow: nh and necenin as early Ae 2 igs de. hy cateful handling (Ry TE, 961). "He is- named: isan assistant sin the ‘careful handling"? . ited n° exbigits as OTAne growers ta part in the - “in discuasiane al the. ‘annual Tae Firigen of: the Sockety nh .* WGI: 1994. aed ee Be e Me Ay ponerse throughout ny ay thor =f eh agreeinent. with the [be partment of A; culture's * feeotritnercda tydg: ® far careful hand) ing in gh ‘hige mold The onj+ wvthe f pron ‘rome ‘ty Tir Sadler wad te ere ph meine the. Sid bai tis: ue wf. have oranges, | ther Os tha pont ane 1 ‘i. so - weonaie i nr" it/ ory TR AL, W523) Ae | : dling inethods. There are now packing houses in . ‘thé State whose records are coriclusive evidence that | _it/ is not only possible but practicable, to. handle . oranges and grapef ruit so that they will arrive on}. \ the market with little’or no decay, even under the; \ most. unfavorable weather conditions, igh G ale “this negatives the iden that Mr. McKay wes engaged in any search for anew remedy, “He Was simply - ‘as 1907, Mr. Meé Kay! s ‘naine TT found in only one oyher. place. work: feported on tne Department of Agriculture bulletin y var *s Ex./24, R., 1, 967). | mf Sadler. The ‘fe. ‘are iwo |Sad ers paved in the Ufaguun miei: at RST a of the ‘lorida State Hortica ‘wiral Sootety, The restitas i ae "Radler acoute: onve in the brief state nett, that ih has neighborhood. deeny had. ‘heen - reduced ow Sadler ApPPoars an a pliyrcian and Orange rower of Mt Dora, Fh ude He is meritioned ap. partion pating ondance. of inyurie® aa the logical way wf. preventing the "growth: of cough y dry before i ching He ruyhines) up? ‘hie — > taro ed 7 fa) oe ag ‘iit te at Ms ‘Dete e : We will pack mo _ frat that 12 damp / I have eaitind. frayyt th-mo-ollbes th the. North’ in May and had at lay. until Octobe, ‘ \ eee » 84 ’ The plaintiff’s other quotations from Dr. Sadler’s re- marks are found at R., II, 949, 961, 1057 and 1085. H. J, Ramsey was an employee of the & S. Department of Agriculture engaged exclusively in promoting the work on the careful handling of oranges, so far as shown ‘in plaintiff’s case. Hy. first appears as addressing the Florida State Horticultural Society. in 1912... He confined ’ himself to a review of the Government work in Florida in. ’ promoting the better handling Of citrus fruit. The text of his discussion was as follows: ” ‘‘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 eyndition and hold up for a sufficiently long period to allow of its distribution and consumption’? (R., I, 903). _In'this connection Mr? Ramsey said that their Florida investigations extending over six seasons and covering os practically the entire citrus district, had proven conclu- sively ‘‘that almost without exception the deray occurring in transit and while holding on ‘the market is due to rough: .and more or less careless handling at the time of pic king and packing.”’ o . * Mr. Ramsey’s name next appears in Plaintiff’ 8 Exhibit No. 24 (R., IT, 967) as one of the authors of U.S. Depart- “ment of ‘Agriculture Bulletin No. 63 devoted exclusively to this same subject of careful, handling.. He appears in the same way in Plaintiff's Exhibit No. %2 as author of ‘+a farmer’s bulletin issued in’1915 and devoted to the same subject (R.,- IL, 1097). _ Mr. Ramsey’s name next appears as author yf a simi- lar article which appears in Bailey’s Standard Cyclo- paedia of Horticulture, published 1917 (R., LI, 1145). ‘Thereafter Mr. Ramsey is quoted as Field Manager of the California Fruit Growers Exchange. Plaintiff's Exhibit No. 40 (R., II, 1195) is Mr. Ramsey’s bulletin of 1921 urging the importance of careful handling and pointing out recent slackness in that regard-as bearing. an increased decay. Plaintiff’s Exhibit No. 62 (R.; II, 1329) is Mr. Raméey’s bulletin to shippers, calling atten- tion to the advisability of using Blue Stone in the ‘wash water.on account of the prevalence of brown rot. This © circular was dated December 20, 1921. Qn the next day Mr. Ramsey sent out a second circular pointing out cer- tain abnormal conditions tending toward the in¢rease of decay and calling, therefore, for extreme care in the way _ of careful handling. He referred at the same time to - the previously recommended use of Blue Stone for brown : ‘ rot and cautioned’ the shippers to remember that the ° Blue Stone could not be depended upon to kill blue niold spores (R., II, 1331). ; Plaintiff introduced further California. Citrus Ex- change circulars of Januaxy 4, 1924, and April 8, 1924, which are not signed. They again refer to unusual - conditions, including much rain and hex ~- winds, and again urge great care in the handling of the fruit in avoid-’ ance of hlue mold. They forecast that. much brown rot will follow the rains and advise the shippers to be ready _ with Blue Stone as a disinfectant against brown rot (R., II, 1333, 1337). ° ae C. W. Mann is quoted in Plaintiff’s Exhibit No. 25 (R., II, 1051) as author of a bulletin of 1914 onthe handling of Porto Rican citrus fruit and the causés of its decay. . He repeats the old teachings with respect to blue mold - and says: i. tee - “Tt is apparent, therefore, that the control of blue | mold decay is primarily dependent ‘upon the im- . : a methods of picking, packing and transporting the fru [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_0498%3A04. Public record. Not legal advice.