KUEHMSTED v. FARBENFABRIKEN OF ELBERFELD CO., 179 F. 701

GROSSCUP, Circuit Judge, after stating the facts as above, delivered the opinion: The so-called new

article of manufacture is known in the trade as “Aspirin,” a well-known medicine; a medicine today that has an output in this country of two million ounces per year, standing next to quinine ai the best selling medicine on the market. It is recognized as an “ethical remedy,” being prescribed by physicians. No medicine, possessing the physiological properties of aspirin, was before known. As. an

article of .manufacture in the line of therapeutics, whatever may have been its antecedents chemically, aspirin therefore is a new thing. Is it a new

article of manufacture within the meaning of the patent law ? That is the first question before us. In his letters patent, Hoffmann says: “Kraut lias described that he obtained by the action of acetyl chlorid on salicylic acid a body which he thought to be acetyl salicylic acid. I have now found that on heating salicylic acid with acetic anhydride a body is obtained the properties of which are perfectly different from those of the body described by Kraut.

According to my researches the body obtained by moans of my new process is undoubtedly the real acetyl salicylic acid, /OCO.CH3 CaH* NCOOH. “Therefore the compound described by Kraut cannot be the real acetyl salicylic acid, but is another compound.” This the appellant challenges, the challenge being founded, not upon the contention that appellee’s “body” therapeutically is not different from the Kraut “body,” or its other antecedents, but that the two bodies chemically are the same; shown (

a) by the fact that the formulae are the same, and (

b) that the two bodies respond to the same tests. And upon these contentions, as premises, appellant insists that aspirin is nothing more than Kraut’s acetyl salicylic acid “purified.” The fact that the formulae are identical cuts little figure. A chemical formula is simply the symbolical expression of the composition or constitution of a substance; as the formula for water is PPO (Webster’s New Unabridged International Dictionary).

Customarily, chemists who intend to produce a combination of two substances write the formula of the product in advance of making it. (Professor Plaines, expert for the appellant.) “Without doubt, processes have been described in chemical publications which give products differing somewhat in their chemical structure and name from those which the writer supposed would be produced,” or which give the formulated product “only in conjunction with other substances so that the total product obtained at the end of the process is not correctly represented or entirely represented by the structural formula or chemical .name given.” (Plaines.) “It is quite customary for chemists to predict the structural constitution of substances which they endeavor to produce, and they are often surprised when the result of their prediction exhibits quite a different and totally unexpected constitution, or when the process which they have ingeniously contrived fails to produce any satisfactory result whatever. * * * The great chemist Perkin started out over fifty years ago to produce quinine synthetically and was surprised to find that, instead of producing quinine, he produced a beautiful purple dye stuff, mauve, which laid the foundation for the great coal-tar industry, and other great developments which grew from it.” (Dr.

Chandler, expert for appellee.) And, assuming that the formula actually expresses the constitution of the substance chemically, the substance physically, and in consequence therapeutically, may be widely different, as, for instance, the water of the seas, differs, in its physical body, from the water of certain springs, though the chemical formula for “water,” whether of sea or spring, is H2O. That is to say, two substances, having the same chemical formula, may differ widely j as to impurities, upon qualitative analysis. So much for identity of formula.

What about Kraut’s body responding to the tests laid down in the patent ?' Aspirin, when boiled with water, is readily split up, acetic and salicylic acid being produced, this being one of its characteristics. On the contrary, according to Kraut’s statements, if the Kraut product is boiled with water, even for a long while, acetic acid is not produced.

But appellant insists, that notwithstanding this statement of Kraut, he (appellant) can take’the Kraut body, and by subjecting it to a process in which boiling in water intervenes (as distinguished from the entirely dry process described in the patent), obtain a product responding to the characteristics of aspirin. But how does he do this?

Enlightened by the disclosures of the Hoffmann patent that the product is decomposed by boiling in water, he avoids, as far as possible, this effect by hastening the process — dissolving in water already boiling, rapidly cooling by artificial means, and by pouring off the supernatant liquid (still containing over fifty per centum of the product) in order to rescue the product already crystallized from further contact with the water. This process was repeated from three to five times, in addition to hastening dissolution by finely dividing the crystalline mass and by stirring.

Appellant thereby obtained a substantially pure product, amounting to less than half the original crystalline mass, or less than half the amount obtainable under the Hoffmann process. This, to our minds, is not proof that Kraut’s body is Hoffmann’s body, but only that Kraut’s body can be so treated, apart from the dry process pure and simple, that it will yield some portions corresponding to Hoffmann’s body.

But assuming that the compounds, chemically, are not different— that the two^ bodies are analytically the same — Hoffmann’s recrystallized product is therapeutically different from the Kraut and antecedent products in the following undisputed particulars: It was long known that salicylic acid was the best remedy for rheumatism, and was also anti-neuralgic and anti-pyretic; that when taken internally in a free state it was injurious to the stomachs of all patients, and particularly so to those the physiological action of whose stomachs were idiosyncratic; and that for a long time attempts were made to overcome this pernicious quality of salicylic acid and at the same time retain its beneficent effects, but without ultimate success until the discovery by Hoffmann of the resulting product of the patent in suit.

In the Hoffmann product all the salicylic acid is held entirely in bond while passing through the stomach, where it would do harm, and is set free in the intestines, where its utility as a therapeutical agent is rendered effectual — the acetyl molecule or radical, unaffected by the acid fluids of the stomach, being split off or set free by the alkaline fluids of the intestines — thus making the Hoffmann product practically effective and safe in its therapeutical results as against what previously had been undesirable or unsafe, if effective at all, in therapeutics.^ Hoffmann has produced a medicine indisputably beneficial to mankind — something new in a useful art, such as our patent policy was intended to promote.

Kraut and his contemporaries, on the other hand, had produced only, at best, a chemical compound in an impure state. And it makes no difference, so far as patentability is concerned, that the medicine thus produced is lifted out of a mass that contained, chemically, the compound; for, though the difference between Hoffmann and Kraut be one of purification only — strictly marking the line, however, where the one is therapeutically available and the others were therapeutically unavailable — patentability would follow.

In the one case the mass is made to yield something to the useful arts; in the other case what is yielded is chiefly interesting as a fact in chemical learning. Merrill v. Youmans, 94 U. S. 569, 24 L. Ed. 235; Badische v. Kalle, 104 Fed. 802, 44 C. C. A. 201 (C. C. A. 2d Circuit); Badische v. Klipstein (C. C.) 125 Fed. 543. Upon the question of infringement, appellant offered no explanation of how the product which he sold was obtained, but testified that he sold it as the same chemical product as aspirin and a substitute for aspirin.

What the evidence before us shows is, that it is in chemical characteristics the exact

article that appellee has patented. The fact that the “'ear marks” showing this are chemical instead of physical, such as color, shape or the like, or some characteristic disclosed by taste, smell or the like, makes no difference. They are none the less, so far as the facts in this case have been brought to our attention, true “ear marks” of aspirin — the product of appellee — and therefore, in the absence of explanation, at least, establish identity. In other words, aspirin stands, upon the facts before us, as a new

article of manufacture produced by appellee’s patent, and the product sold by appellant stands, upon the proof before us, as identical with it; wherefore, his sale of it is an infringement of appellee’s product. The decree of the Circuit Court is affirmed.