Amicus Curiae Brief — American Fruit Growers, Inc. v. Brogdex Co.

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IN THE :

a onal Court of the Cnited States

ss iz | Pies Ocroper meri 1929, Rigas

American Frurr Growers, Inc:, Petitioners,

- Brocpex Company, Respondent.

. } ‘

| :

"s+ BRIEF OF AMICI CURIAE.._

eS , : (GES ERGs ‘ Frep H. Davee,’

Be} | a . Attorney General, State

Florida. -

". Barry Mouun, | |

4 eS Seah 7 G@zo. E. Equorr, ~~ °.- . -

- ts oh "+..." Washington, D. C.

ee, | eas Amici Curiae.

! Fawny H. poore erat SiC: ;

Washington, D. C.

..j Wm. Huyrer,

. > fampa, Florida. -

oo Of Counsel. |

\ Pause or Brgon 8. Avaus, ‘Wasutnotox, D.

SUBJECT INDEX..

INTRODUCTORY STATEMENT ....... rem ie ie

STATEMENT OF FACTS ...... re

NECESSITY FOR GRANTING THE WRIT,... 3

_ Point I. Question of Federal Law which should

be settled by this og | UTE EET OEE 4

Point Ik The lower Federal courts have decided ©

the present case in conflict with the

most néarly applicable | decisions of

adhis court ,.........006: bueeeiekes ‘ne

- —

Point 111. The lower courts’ decisions are based

_ on propositions of law contrary to

holdings i in other CORE 5s hae ees ‘13

Point 1V. Public Tiarent’: eerobdopeveaws PEERS Pe 20

| TABLE OF CASES CITED.

. Atmerican Disappearing Bed Co. v. Arnaelsteen,

900 Wed: TOR. bo cto ecccs os Pre, or eee Pea

American Frit. Growers, Ine.,. v. Brogdex Co. .

(D. Cs) (21 Fed. (Sd) FiO s 00. cert coscevcess 2,3:

‘American Fruit - ‘Growers, Ine.,.v. Brogdex Co. .

(C. C. A.), 35 Fed. (: |g” SORE SND hg es 2

Auheuser-Busch Brewing Assn. v. United States,

7 Pe A ry eres 6,7, 15

Armstrong Seatag C orp. v. Smith’ s Island Oyster

, i, Se es ca Ceweul. ane anon Freres 13, 14

“Baker ¥. Duncombe. Manufacturing: Co., , ME Fed. «

SOR Oe Te Mieerevers (Mi iecesvate> eoccee 18

Continental Fibre Co. v. Formica Insulation Co.,

TY FON GOB vs cards ib ev ses ee ae 19

PT SEE SPO oe eo,

. < be

LS PN et

eee , Subject Index Continued.

Page

Duer v. Corbin Cabinet Lock Co., 149 U.S. 216.. 12,

EJectric Boot and Shoe Finishing Co. v. Little, 138 .

Pe OO eenak: bp ou dtedesoneten ve ke ee 18 |

Fond du Lae County v. Ny * 28 137 U. Ss. ere 14

Hartranft v. Wiegmann, 1: o lf yee fee oS A |

Internatjonal Mausoleum Co.sv. Sievert, wire. .:..

SEIS ROE ree Seay nara 5

Jacobs v. Baker, 7 Wall. 295 Lesteccepesseccnqes. At

Johnson v., Johnston, 60. Fed. 618 . Viiaeasees 13

Knight v. Rei iger et al. . 203 Fed. 49, aff'd 212 Fed.

IAS BPE CEC OTE CF TeCT EST ee =o.

Kreshower v. U nited, States, 152 Fed./485........ 16

Locklin‘y. Buck, 159 Fed. 434...... ee eek a ack’ 3 1 8

. Magnum Import Co. v. Coty, 262 U.S. 159, 163.. 3

McClain v. Ortmayer, et al., 141 U.S. 419........ 42

xs Milligan and aguas Glue Co. v. U pton,’97 U,S.3.-

’ me | 9, 4 io

“Myers & Co. v. United’ States, 147 Fed. 204. 15

ititer-Conley Manufacturing Co. v. Aiken et al.,

« 203 Fed. 699 .:.:...; _ ied ee Oe 5, 7, 13, 15, 16

Rod & Burnham Co. v. Payne, 190-Fed. 172... .... 19

Slipsearf Co, v. Filene’s, 259. Pee. O88... BD

Warren Ww ebster” «& Co, vs Dunham Co., 181 Fed.

S36, B39 - Proce Seroyee ree sores eel, 18, 19, 20

7 Section 4886 of the Rev ised Statutes, See. 31, Title

STATUTES AND TEX TBOOKS Cc ITED.

Crops and Markets, published: by the. Uv. S. De-

partment of Agriculturé, December, 1929 .2..° 21

Ne kl as pc asvssss oe a

. .. ., DURE:

| Supreme Court of the Unites States ot

| Ocropex Tek 1929. oe, I |

. | 4

No. 667. f

; Ree } :

* . AMERICAN Fruit Growers, INc., Petiiiontre, ety

*. r. i] ! 7 >

Brocpex Company, Respondent...

a . a -_

‘ BRIEF OF AMICI CURIAE.

. INTRODUCTORY STATEMEN T.

Counsel appearing herein as amici curiae represent,

nespactinely, She State of Florida, and—the—Blozida

This brief is submitted in the belief that several sig-

nificant and important. questions of law are involved

w hich require final determination by this court,

: e

The decision of the Cireuit Court of Appeals for

the Third Cireuit in this case is to be fourid in 35° Fed.

(2d) 106 (R. Vol. 1, page 705), ‘and that of the District’

“Court in 21 Fed. (2a) 110. RS,

| STATEMEN T OF FACTS.

' The respondent company filed suit for infringement.

of United States Letters Patent No. 1,529; 461, issued

March 10, 1925, to Ernest M. Brogden and Miles re

Trowbridge on an application filed August 15, 1928.

The bill charged the petitioner wit with h infringoment-of

process elaims-and ar icle ‘claims. -

The patent in suit relates to the method of presérv-

ing fruit,-and mores partic ‘ularly to the prevention of

deeay. of such fruit by retarding’ the dev elopment of

blue mold. ‘laim’ 3 may be considered as typical of —-

the process claims, and reads as follows:

+ 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 tke duration of the treatment,-being such that

exposed rind or skin tissues of the fruit are etfee-

' tively impregnated with borax and rendered, resis-

tant to blue mold Weeay, while at the same time the

fruit is net scalded hor is its freshness or edibility

otherwise substantially impaired,

‘¢.

The followihg may be taken ag typical of the article

claims:

26. F resh citrus fruit of whieh the tind er skin

. earries borax “in amount that is very small but

- sufficient to render the fruit resistant to blue mold

decay. i | aed

”

3 . .

coe see ee

The District C ourt ‘rendered a decree holding that :

the claims of the patent were valid and that petitioner

infringed claims 1. to 7, 9, 14-to 18, and 23 to 26 inglu-

sive (21 Fed. (2d) 110). This decision was affirmed on

appeal by. the Cireuit Court of Appeals for the Third

Circuit. Petitioner sought a rehearing, which was:

_ denied on | November 15, 1929.

_ NECESSITY FOR OR GRANTING THE WRIT.

tis submitted t that the the writ of certiorari sought by

' petitioner shouls Il be granted for the following: reasons :

‘Federal law which has not. been settled by this

court.

2. The decisions havetia by the Federal. District ©

Court and the Circuit Court -of Appeals are. in -

_ conflict with the most pearly sppiicable decisions

of by court. |

‘The District Court anil the Cireuit Court of

se Poot: rendered, their decisions on: bases incon-

somant with the law’ as announced in other circuits.

4. The public interest (this eontrov ersy.is sub-—

‘stantial and warrants a determination of the ques- .

‘tions involved by this court.

It will be observed that of the reasons above set

forth for.the granting of the writ, 1, 2 and 3 are in-

cluded within the reasons which will he consider ed by

_ this ceurt in exercising its sound judicial discretion,

as contained in Subsection b, paragraph 5 5, Rule 38 of

Revised Rules,.effective July 1, 1928. In respect of the -

reason assigned’ in paragraph 4 we invite attention to

the case of Magnum Import Company v. Coty, 262 U.S.

159, 163, where it is stated that certiorari is employed

‘‘second, to .bring up cases inv nvolving questions of im-

1: This case presents an important question of .

portanee w hich it is-int the public interest to have de-

cided by this court of last resort.””

Question of Federal Law Which Should be Settled by

this Court.

The lower courts- held that the oranges: which peti-.

tioner>sélls constitute’ an infringement of the articte

- claims 23 to 26 inclusive. The oranges here i in question

¢an be distinguished from the ordinary orange only

after careful chemical analysis (Petition for Certi-

orari, page 2). T hey are identical with-oranges. fresh

from the trees save for a minute amount of borax in -

the rind. An tdea of the infinitesimal quantity of

borax upon any one orange is obtained when it is shown

that a pound of borax is used for twerity-five thousand

oranges (Petition for Certiorari, page 3). ‘The ‘ques. —

tion presented for determination by this ¢ourt is

‘whether such an object is ‘*an article of manufacture, ”’

or rather a ‘‘manufacture,’* within the contemplation

_ of: patent law. Counsel have been unable to find any

case decided by this court in which a definition’ in the

patent sense of the word “manufacture” has” been

given, nor has any decision of this court: been found

wherein there -has been squarely: presented for. deter-

mitration the question of just ‘what ix a manufacture, as

found in Seetion ed of the: Revised Statutes (See

tion 31, Title 35 U.S..C.-Al}. Certainly no ease ap- .

proximating: the ate ‘eltuaticn has been presented |

‘for the decision of this court. .

_It-is true that there are decisions in ‘the various Cc ir-

cuits which attempt to define the w ord *‘manufacture”’

e *

She

‘but .as- will be hereinafter’ pointed out, such: decisions

are in conflict. -

It is of large ‘moment to the publie that: it be ap- :

_prised of the meaning of the w ord ‘‘manufacture’’ as

used.in (ag patent staffites, particularly in view-of' the

_ diversity of opinions between the lower Federal courts.

In the absence of any authoritative. definition of the ae Se

word ‘tmanufacture’’ by this court, it is submitted that =. [

the questions raised and product involved in the instant = 2

case present an opportunity for laying down a defini-

tion for the guidance.of the lawer courts and the pyb-.

lic, and of determining the limits of the statute. _ 7

The rene Federal Courts ‘Have Decided the. Present ee

. Case in Conflict with the Most peerty Aprikelie

. Decisions of This Court. Ye

Lt Both of the lower Federal courts in n their decisions 5

. —held_that an orange treated in accordance with the

"process of the patent formed_a_ proper subject: matter - —

for an article claim, . This holding: of ‘the lower courts 2

’ was. over the strenuous objection of petitioner, and

was evidently predicated on the supposed authority

>. of Riter-Conley Manufacturing Company v. Aiken et -

yi al., 203 Fed. 699. That case, which held. a_ building’

‘structure to be an article of manufacture within the.

sense ofthe patent law, will be discussed presently, — oe

and its insufficienty as an authority in the instant case ° ;

pointed out,

. Whilst, as above. stated, ‘no Pi eee of this court

has been found in which there was presented for deter-

* tination the question of just what’ the word ‘‘*manu-

facture” in the patent Statutes embraces, support. for

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“Wis x is. not! an aitiels of manufacture i is to be found in .

thy decisions of this court. Attention is invited to

le case of Anheuser- Busch Brewi ing Association v.

The United States, 207 U. S$. 556, in which there was

presented the question | ‘of whether corks which. had

been subjected to a. rather elaborate treatment were —

‘articles of manufacture’ under the tariff law. » The.

-extent of the treatment to which’ the raw corks were

" subjected is evidenced by the fact that the whole proc:

ess took from one to three days. The contention Was.

mate fir that cteve that ‘any change in a natural prod

uct rendered that prodtet a manufacture’ substan

tially: the same contention which: the respondefit has . a

made herein and in which the lower caurts acquiesced,

The answer of this votrt to that conte ntion made j in the

Anheuser Busch case was, in the following language

. (p. 2) : 6 Pe ne eee ayn ; 2 —

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"ee ‘Sawin ‘ imilies a. chatige, bat’ every

change is not manufacture, and yet every change

_ in we article is the result. of treatment, labor, and:

es mam Rulation.” ony

Again, in Nie earlier aa of Hwioeuis " Wiegmann,

121 U. S. GON, there. was presented the’ question of

whether shells of Mollusea). which had bees «abjected

to: rather -extemaive treatment were- manufartores,

This eourt held that - they could het be property. con:

sidered a “mannfactary ve, 1 disposing of the conten: »

‘tron that. they should™ be placed jn that category the.

court. nae the following. language (p. 618):°° +

Bld ‘They: were atill shells : They had not heen mat

afactured: into a new and different article, having

a distinetive name, character. of use from that af

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ATARI 2 : nee een foo pexsese ee ee 2, . . -

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> *- a shell. .The application of labor ‘to an article, ©

_ either-by hand or dy: mechanism,.does not make the

article necessarily ‘a manufactured article; within.

themeaning of that term as used in the: tariff laws.

. Washing and scouring wool does not make the re-

_ - gulting wool a manufacture of: wool. Cleaning:

eee ginning cotton does not make the resulting:

— cotton a manufyctate of cottori.’

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‘It is submitted that the decisions by this court in

- tariff Cases are applicable. to cases involving patents.

This corftention- is not without authority. The Case of

Stiter Conley’ Manufacturing Company v. Aiken, 203 —.

Fed, 699, the very case relied upon byt the Cirenit |

‘Court of Appeals in support of its holding herein that

‘the article claims .were directed to subject matter em.

i braced within the statute, ‘relies largely upon interpre. |

tahens of the word “manufacture” hy courts: in de

ciding tariff cases, After quoting: from only- a single

patent case and three texthookn, the court in the Riuter.”

f'n mlew vase attempted: te eupport its definition of the -

word ‘manufactare” hy queting from *ix cases, none -

of which involved pate nis, and two of which were cases :

eased open the tariff act ie:

Bs adopting that sarge procedure in Weineptant wit:

uation, if will be readily seen that the decimons of the -

(°° jower courts herein are clearly irreconcilable with the

" decisions of. thie eourt a the Awhénecs Busch and

eae ee Haetranti ie gman cares, supra, “an both of which

Caen the patural products were rubjected to more ex

tensive and elaborate treatment thas. “1. aceorded the

; frssit in the instant Cane, ‘, an 22

4%. Ut ie farther respect{ wily evhenitted that ‘the lower

courte rendered opinions. that were jn conflict with the

opinidne of this court in so far as the procter Claite

} of the Brogden s ard Trow bridge patenteart concerned.

selene “tae eg

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ae tieweny af: Prank fee they, the aom af a ga ien ten, Bee:

‘In the trial of this < case in the Distriet C ourt, the de--

feise introduced an abundance of-art, to show that the.

use of borax in the pre servation ‘of fresh fruits was

old and well known ‘as far back as Ist4 (Gahn, Us

a patent No. 161 MA, Oetober 14. E74, Ro vol IL, page” >

1005). - The -antiseptic + saeed preservative quality, PO Bie dat

beracie acid (whieh -is ineluded in-the scdpe of the ~

protons tlaime herein) Was aled disclosed tis’ the Bish. |

op U,. SS. patent Ne’ fst 8), iaesed on Uetober $1 .

“(R. volt, page #27), which patent wae-for a prowess |.

of. p exerving fotds hy dipping the foo! i a bo rare,

> pebe | solution ated subterjuently, reat rs the food with’...

= Kelatin. “With fespiort té the action “of Sarat eid ai

on the | fired Bushey eave TR vol AL pagic 37) Wa diy egy Sat

: Tie article of. fond (tenif: « egetahhes, gees to

treatedt i¢ Rret Waeber]> or tuaterd im a Ceo #

: atively . weak ted ation of Dene Bet wer a? we ah, hawt he. ‘

ettuve an? Bnet all gwrtyee ail t Bene onag bly o litam yew’ Bi

cx bile sin

amt Fenders The arte fae: we eee sad ; \ FA

“The Hiadop paitein® wae nat» teense et wm eine jeri een

om the pert af the potent ce ; of gig cet f meth ao tse tee

paay wae SF patent ie, perry "on the gatoorwwme af the

* paatipe eH. val: “Eh, gowge TEA: we Ht. thitg Fatt heer tae. | .

2 that he peranmially Babted "tale! al seers whe. pease

‘the aempgile ny severe tia ‘te * Potigfenarn te ot aye f

— pap tare? th. vied, Eo ‘en: Wie 5 ptt ”

. P 4 bad .

“Rese Pa: olen waewertiemn ane re conan ‘wahe onverrod 2

; g tlhe fear biased Rem. s WH. ont er: sant: aia a

S reheat of wee saan trad ae int; af » Thee ici

holww ‘eat er gap of Laniacsl wae | eenevig atend wf oe

septics and preserv atives was ‘old and well know n long

_ prior to the alleged siny enition of Brogden and) Trow-

_\ bridge, . . The question in then presented: whether | the

ine oo tne: of an old: and well Jknpwn process for preke ving

aa ane food: forms a prijper basis for & patent which limite

‘the- use, of that process to a mpocific kind? of food, |

& namely citrus fruit jn. the préservation of whieh it

3 _ log beets wos! before ‘The petitioner; in,

! “brief filed herein in support . of the -petiiien”

qt tae the . writ, ‘refers 1 Rev eral ¢ of. the leading * c

ease: inf thie .eourt on tha “question. Tt is desired \

- refed tw jos one additice sia Caen, that A Milligan: and -

“Wiggins Glee c* ‘om pany Re plom, 97 UV. B82, “The pont

thie by weber a

ae srk fo ton itt ecute » watt i Ngo from. the fepert:

ee ee eee ‘the. ylave pres ees know mtn andl “ane

pe me beets monk im: Ahe fort. of ‘Rakes, tyt: his « ay held

thie grateat yar ald for wand ol iaee bin. We quote

” t dcumms thes fn ts cmt tis Viet cme the fuljew inp y whined ntiewde .

° .

ie oi A hee Seo ‘pit tlhe qwpetoon "of puwenit vy’ ae the

"4 ees qyaeoes > ot: wi the a phedit's: wf Fenghindont Kw arta ie - : tine

pe ae, GF

Bae . . Bee

7 ar oh — was wast mares Tome eur

Va ied - oF ‘* Pree + \eetex! * mtd ey ne eer

3 : vpriagtere hawt ya d- he waged, ele. i ng: ated a 4 sen

or at nl bd conden renege ttle bieriene ~ The whee

os ont there i nuit war for. glues raiber finely pm i

Peres ; ” RS

tHe

epee “oormeget ih,

ways Foamy, q sie gremtesr Scand

oe he fad wr gede eof “seamen i e otete

. i eee tational a Pa ae sen pate gorrengnent roe. aed.

+ Tae Seeman arian: Evite Cee qultonbad doieapoete:

wep Deter eae air stenee: wronshe thee apes wyeserd |

* a ne gopenn san ie ees airy tebike gredtyeth enteral when.

— ax

thy adhead seit monet parton

a pT En ae 3p - *\ ee geri “*

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oe a ; 6. 5 -

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‘*There is nothing new in the fact that the solu-

tion of a soluble substance is aecelerated by in-

creasing its fragmentary division; nor is there

- anything new in the fact that‘articles with rough

angles and edges can be more readily put up into

_ packages with@at injury to’ their Wrappers when

reduced by mechanical division’ into small. par-

ticles; nor-is there anythi@g-new in the fact that

such articles generally improve in ay sgh by

granulation or powdering.

A distinction must be observed betw een a new

article of commerce and a new article which, as

such, is patentable. Any change of form from a -

previous condition. may render the article new in

" commerce; as powdered sugar is a different ar-

ticle in commerce from loaf sugar and ground

coffee is a different article in commerce from coffee

in the berry. But.to render the article new in the

‘sense of the patent law, it must be more or less:

efficacious, or possess new-properties by a combi-

; nation with other ingredients; not from.a mere

change of form produced by a mechanical divi-

sion.’”" ° ‘

Again, page 6-7 (Italics added}:

‘Where certain properties are known to belong -

generally | to classes of articles, there can be no

invention in putting a new species of the class in

a condition for the development of its properties

similar to that in which other sperics of the same

class have been placeil. for similar development;

nor can the changed form of the artiele from its

condition in bulk to small particles, ' by breaking

or bruising or slicing or rasping or fitiny or grind-

ing or sifting, or other similar mechanical means,

make it a new article, in the sense of thé patent.

law.’’

The product of the process of the patent in suit is

“not a proper article as heretofore pointed out for pro-

‘tection of Ahe patent laws, and, moreover, it. is abun-

_ dantly clear that the article has many times before the

filing of the patent-been made by others than the pat-

entees. Prior art is replete with processes which in- .

evitably result in this claimed article.

The patentees should not be allowed to obtain pro-

tection on the ground of novelty, when the process of

making the article and the article itself are both old.

All they have done has been to go to the dictionary

of biological terms and find that one of the numerous

~ fungus growths inhibited by borax is blue mold.

Surely this does not amount to invention, — ,

It ix submitted, in view of the prior art, as shown by ;

the evidence, and the decisions relied on. by the peti-

tioners herein and the ease of Milligan and Higgins

_ Glue Company v. Upton, it would clearly appear that | ~

. there was no invention in using borax or boracic acid in -

a solution of a strength suffice ‘lent .to destroy or inhibit

the development of blue’mold. The testimony is_re-

plete with instances of the use of such materials for

similar purposes, and it is submitted that any person

‘skilled in the art and confronted with the problem of

preventing blue mold decay in oranges of other citrus

fruit would, and as a matter of ney adopt the proc.

ess claimed in the Brogden and ‘Trowbridge patent.

tis respectfully. ingisted this is not a case in which

there is doubt as lo the presence or absence of inven.

tion—-the process in controversy, if not squarely met

by the prior art, was so proximate thereto as to furnish

no doubt as the obviousness of the method of dealing

with the problem.’ Notwithstanding this, both of the

lower courts stressed, we submit, to an unwarranted

ae yore a initiate atebleai tate

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. 12 Wt ge?

extent, the. commercial adoption: of the process dis-

closed in the patent. It is of course well settled by

decisions of ‘this court that the tommercial success of

an alleged ihvention is to be considered most cireum-

spectly. MeCladn v. Ortmayer et al., WAI UV? S. 419,

Duer &. Corbin Pebins Lock Company, 149 US. 216.

In the fifst case, the dinger of employing ‘commercial oats

success as the « riterion of pate ‘ntabilit v is set forth in

the following language. (141 US. #25):

“Hf the generality of sales were made the test of

patentatnlity,it- would result that a person by se

curing @ patent upon some trifling Variation from

previously’ known. methods might, by energy i.

pushing sales of by superiority: in finishing. or

decorating his ¢ ods, drive competitors out of the

market anit sectire a practical monopoly, without

in fact having made the slightest contribution of

‘value to the useful arts. The very case. under

consideration, ix not barren of testimony and the

great success of the Me€'lain pads atic clasping

hooks, a large demand for which seems té have.

arisen and jncreased year by year, is due, partly

at least, to the fact that he was the only one who’

made the manufacture of sweat pads a specialty,

that he made ‘them of .a superior quality, adver:

tixed them in the most extensive and attractive

mariner, and adopted means of pushing them upon

the market, and there by large ly inereased the ex

tent of their sales.’

He Tre again, then, in connection with the questions

of commercial anccess of the process, it is submitted the

District Court and the Cireuit Court of Appeals have

clearly gone contrary to the. decisions of this court.

‘The Lower. Courts’ Decisions Are Based On Proposi-

tions of Law oe To Holdings In Other |

Circuits. sa

There are certain ‘doctrines enunciated. in the de-

cisious of -the lowér courts in’ the instant ease which.

are directly contrary to the law prevailing in other

circuits. . This ‘applies to the holding: of the lower .

courts herein with respect to both the article claims

and the process claims, :

“As shown in the preceding point, the Cirenit Court

of Appeals, in holding that the article claims .were

directed to patentable subject matter, cited the. case

pf Riter Conley Manufac turing Company'v. Aiken, 203

Fed. 699. That ease held that a roof structure was a

“manufacture’t and apparetithy rested“ upon the defi-

nition given by Jndge Acheson in the case of Johnson

. Johnston, 60 Fed. 618, whgrein it was held that the

ord * ‘manufacture’ in the patent law “thas a very

comprehensive sense, embracing whatever is made by

the art or indnstry of? man, not being a machine,

composition of matter, or a design.’’ It is submitted

‘that this definition. of the word **manufacture”’ is far

too inclusive. Reference to a few cases will suffice to.

show the error of that definition.

- In the case of Armstrong Seatag Corporation vy.

Smith? s Island Oyster C ompany, 254 Fed. 82 1, there

was before the Cirenit Court of Appeals for the

- Fourth Cirenit a suit for infringement of a patent for

an oyster having affixed to it a tag.as a mark of identi-

fication. Here was something that was “made by the

art or industry of man’? and-was confessedly neither

a machitie, a composition of matter; nor-a design.

The court, however, had no-hesitancy in holding that ‘

a tagged oyster was not proper subject matter for a

patent because it did not fall within any of the statu-_

" tory classes.’ The court said: (p. 822)

“Tf the patent in suit be ‘supposed to cover a_

‘tagged oystex,_the answer is that a tagged oyster

is not a machine or a composition of matter, and

it is not a manufacture. A. spring chicken, with

an identifying tag fastened .to its leg, is closely

analogous. If he so desired, any fisherman could

~. attach an identifying tag to his fish.- But none

of these natural products could be classed as

“manufactured articles, ‘simply because of being

tagged. se

Similarly, note. the case of Knight v. Reiger, et al.,

203 Fed, 49, decided. by the District Court ‘for the

- District of Maryland (affirmed 212 Fed. 935) wherein

it was stated (p. 52):

| “The learned author of Walker on Patents (4th —

‘Ed.) p. 13, contends that the word ‘manufacture’

as used in the patent law should be given a con-

- struction broad enough: to cover everything made

~ by the hands of man.and not a machine or a com-

position of matter. The weight, of, the decided |

cases is to the contrary. Jacobs v. Bake or, 7 Wall.

295: Fond du Lac County v. May, 137 U. 8.395;

American Disappearing Bed Co. v. Arnaelsteen,

182. Fed. 324; International Mausoleum Co. V.

Sievert, 197 Fed. 936.”’ |

It is apparently well recognized now that there are

certain products which are the result of. manipulation

or the handiwork of man which are-not susceptible of _

_ patent protection, quite apart from the question of

AT go SU is, set eee a" -

novelty or inventive skill, For instance, sculpture is.)

not the subject matter of a mechanical patent, yet into

the fashioning of marbles and bronzes there - is.

; poured some of man’s highest genius. ' Again, new —

trees, plants, and shrubbery, which are the results of

cross breeding and graftitiz, are not susceptible of

“patent protection, As a matter of fact, Congress is -

. wow considering the - advisability of enlarging the

~ statutory classes provided in: Section -4886 of the Re-

‘vised ‘Statutes (Section 31, Title .35; U.S. C. A.), in

- order to ‘include just such new bréeds or varieties of .

vegetable life. ee Serves

Respondent would hardly—urge that oranges still |

growing upoti the tree but which have been sprayed

* . with borax are’ subject matter for patent protec-

tion; névertheless, the holdings of .the lower courts |

afford a basis for urging that growing oranges, SO |

“sprayed would: constitufe: an infringement of the ar-

ticle claims in siit.. A Sat lon | |

But quite aside from ‘the definition of **manufac-

ture’’ as given in the Riter-Conley case, the decision

in that case is directly, contrary to decisions in the:

other circuits. As-heretofore pointed out, this court:

has decided in.at least two instances (Anheuser-Busch

v. The United’ States and Hartranft v, Wiegmann,

supra) that articles markedly analogous to the treated |

‘oranges in the instant case ‘dre not-‘‘manufactures’’.

In the Cireuits, there have also been. cases equally

analogous. For instance, in the case of Myers &

Company y. United. States, 147 Fed. 204, the Circuit’

Court of Appeals for the Second Circuit held that lum-

ber which has been subjected to a fire-proofing pro-

cess whereby its value is largely increased is not duti-

able as manufactures from wood. Again, in the case

it 7

one 16

of. Kreshower v. U.S, 152. Fed. 485, before the Cir--

fit C ourt for the Southers District of New York, it

was held that leaves which had: been subjected .to a

‘process including the gpplication of glycerin and var-

‘nish in order to prevent decomposition, were not man-

ufactures, for the reason that’ (p: 486): o

** The treatment did not ‘result.in a change of

the leaves from their fgrmer appearance. ‘There

was no advance in manufacture in the sense that -

\ UU Afie” proetss” of prese rvation destroyed the orig-

inal articles or-made them useful for othet pur-

poses or-altered their trade designation. Har-

tranft v. Wiegmann, 121 U.S. 609."

Thus: it has been shown that the mere fact. that nsit- ,

ural products have bee mn. subjected to- processes to. in-

sure their’ preservation does not remove those articles

from the category of. natural products into the tate-

gory of manufactures, even when such treatments are

‘more extensive and elaborate than in, the. instant case.

Further, as has beem shown, the Riter-Conley case, on

-which the decision of .the Circuit Court of Appeals

rested in regard to the article claims i in suit, cannot be

‘distinguished from the cases just referred to‘on the

ground that those cases.involved the question of tariff,

while the Riter-Conley case involved a patent. The’

Riter-Conley case, it will be recalled, cited only one

patent case; whereas. some. six. cases involving tariff,

bankruptcy and general law were cited and . quoted in

‘support | of the court’s holding.

The above suffices. to show that the decisions of the

‘lower courts in the jnstant ease with respect of the

‘validity of the article claims were contrary to the haw-.

as-laid down by the courts in other Circuits, ee

outside the scope of the word “manufacture.”

ean atten ree ye a pe he

With respect of the process claims, it is’ clear

the District Court and the Cireuit Court of Appeals

in the instant case applied doctrines contrary, to those _

laid down in other Circuits, because of lack of inven-

tion in the subject matter covered by these process

daims,. As shown, both courts found. borax and borie

acid had been ysed to prevent the growth of mold or

‘fungi upon foods, long prior to the entrance of the

present patentees imto the field—hence the combina-

tion of borax and citrus fruits -is admittedly old. : Tt

Was also found that’ these preservatives were used .

both in a dry. state and in solution, and that the

solutions werebhoth hot and cold. The most favorable

” view,-then, for the respondent.was that, notwithstand-

ing this prior art, borax or boracie acid had not been

‘used as an inhibiting agent for controlling blue mold

decay on fresh @itrus fruit. This’ is merely a question -

of new and analogous use, and as laid down in:

iumerous decisions, such.a new use is not susceptible

of. patent protection, As was said by Judge Sanborn

of the Circuit Court of Appeals of the Eighth Circuit |

. in the case of Warren Webster & Company v. Dunham

Company, 181 Fed. 836, 839: Pe

But the thought that an existing .machine or

“combination, discovered in the same art‘or one .

nearly analogous to’ ity désigned and -suitable to

perform a. similar function, may be used’ or

adopted’ to accomplish. ,the. desideratum, is. not -

the product of inventive genius, but the result.

.of the application of the skill of the mechanic -

to the subject under consideration. It is only.

when the new’ use is so récondite and remote from

_ that to which the old device and combination has’

been applied, or for which it was conceivéd, that

its application would not occur to the mind of the

neg 2

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iE ordinary ‘thee banie akillecl in the. ant, seoking Mai

cheeViee Ybeatia to ‘perform the chesiresd omation:

AS Gu: with thie Noted tac hite of. cotubination before ‘him,

that its e weption tay rine to the dignity of its

rf Vention”’..\° : : ear a |

Sa iatiatial ‘other cases mmght be quoted from in sap.

“port of the prine iple of the - Webster case For ot

ample, “in: Lae kitm ¥ Bae d., 1 “ bend 44; the ( ifreuit |

‘Court of Appeals for the Second Cire uit helt that even

though thy manufacture ‘of window screeta was quite

or different ane distinet dustry fren. thie. manufac He

‘ture of mattresses, neve rthale an AAT TENN inven.

tion in using-certain wow n wire faliric in the. making

‘of a ded bottom when such. material had ‘previously

* been ‘used in the- manufacture of aereens,

Agiin, in the case of Electric Box and She ¢ Pemish

of Appeals for the First Cirenit held, that, inasmuch

as anilin black. had bers: on. iti general tae for addy ving all

kinds of materials, there could be no inv whtion in te

ing anilin Wack for the purpose of dyeing xhoes,

The Circuit Court of Appeals for the Eighth ¢ “Ww

cuit, in the cise of Baker. ¥, Duncombe Moanwfa

‘Company, 146 Fed. 744; held that a patent covering

the roasting and. grinding of coffer and subjecQng

_ the ground: product toa blast of air for the purpove .

of separating: ; ‘the dust and chaff from the coffer

granules, was void for want of invention in view of \

oN:

the age-old practice of using a draft of air te separate

'. wheat from its chaff, and that even the combination:

_ of the preliminary step. of roasting the coffee would

- not-raise the process to the dignity of invention, inas-

much ‘as this step was an old and well known method

of. treating coffee. : : .

: iisies i

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fi 8 ole gs ; i

a a ae . i

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igo eae gt oan, eee .

6s — alla anaes nae

aes cope fe

rf renpindont ous totale that the ait proce saad

eiaet afticoten te were never = heretofare, the

deci siuss in OC mliment al Pihee (Ce Hormice Iniwie

fu m Ce : oe Ped $55, aflords & a shaRer .

There the ¢ areal ¢ ‘ouTt of! Appenie fut the Rinth e af

tent whack var supposed: te

@enetHote.an ittsyet etiert ovet the, hakelite patent it

that the ‘thalesa! of the [pres etpett vue wat unrated,

: pertneation. ” ine doe pace nig of the contes

cuit hase! fwleare at: ihe

w tie reas tb

“We are nat atile le think iat ia’ iferense

Selects < a eaturatian which, gees to the center of the sheet

dog tee, depeoted sng tyson the esseting phaeieal con

saturation ae. prone bile we think mont have beor

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53 ‘the: presence of. invention ‘\e doubtf nl, and can never

ber employ ot te Tai «a doubt where inck af ime antic

; je lear (Rod & Harnham Com pann 3s Pawn, 1) Fed

cote - 172 and Slipsoaws (Company % Bilome's, Qe Pei 64)>

, Fhe contention which was made by the reapondent: wae

Faghth Cirenit in W chester C ampany *_ Dunham, rupna,

and was disposer of by the ecurt in the following lan

af Ruage: (181 Fed. RM, 8)

ween panes differenne the eourt wtated pe 46)"

ee eefane pretmenttion and aalartatien, ated -

ie in iteelf anything mote than « difference in -

: ditvene, and the advantage ‘of petting ae tmueth .

ob ous fo every one i bicen| = ; Ae

from the well-ectilod rale that the commercial eueCeRe .

of an alleged ina ention and the fact that others were its

" urged. before the Circuit, Conit. of Appents ‘of the *

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This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.