The opinion of the court was delivered by: KNIGHT
This is a suit for infringement of patent No. 1,646,157, issued to Herbert T. Leo October 18, 1927, for a "Dry Powdered Jelly Base Containing Pectin and Sugar." Plaintiff is the owner of the patent in suit. Defendant sells a dry powder jelly base under the name "Welch's Powdered Jel-Aid." It is this product which is claimed to infringe.
The patent includes four claims. Each is directed to a jelly base. The specifications recite that "an object of the invention is to provide a convenient and quick method for making jelly and to eliminate any guesswork in the use of powdered pectinous substances." The original application for the patent, filed March 14, 1922, included thirteen claims. All claims were at first rejected by the Patent Office as lacking invention over Barker, No. 1,386,224, in view of Boyles, No. 1,067,714. On October 1, 1923, claims 5 and 11 were amended, and are claims 1 and 2, as they appear herein. Claims 3 and 4 were added, and all other claims of the original application canceled. Claim 3 was first rejected, but approved after amendment. On January 5, 1924, the Patent Office declared an interference between the aforesaid application of Leo and the application of Douglas et al. filed April 23, 1923, No. 634,151, involving claim 4 herein and copied by Douglas et al. for the purpose of the interference. The Examiner of Interferences decided in favor of Leo. This decision was affirmed by the Board of Examiners on October 12, 1926. Certain litigation involving rights in the application delayed final application for the patent until the time of its allowance.
The first essential element of a fruit jelly base is a substance known as pectin. The first two claims in suit are directed to a combination of pectin and sugar with or without an acid mixed within certain critical ranges, the purpose of which is to render the pectin soluble when mixed with the other component parts of the jelly. The third and fourth claims are directed to what is termed "standardization," by which is meant the production of a jelly base of determined unit quantity which will have definite predetermined jellying capacity. The invention is characterized by the plaintiff as disclosing "solubility" plus "standardization in the presence of solubility." It is claimed by the plaintiff that, by virtue of this invention, we have a jelly base which may be put out in any number of packages, in any size, with the pectin in the packages varying in jellifying strength, but the entire jelly base having a determined jellifying strength, whereby, under a standard recipe, a definite quantity of jelly can be made.
Chemical reactions furnish some of the most outstanding wonders of the physical world. Many commonplace substances contain within themselves mysterious creative energies when used in combination with other substances. Research and science in chemistry long ago revealed that certain fruits contain within themselves a substance which forms a base for making fruit products which have and have had almost universal use. Pectin as a separate substance in certain fruits was discovered by Braconnot in 1825. He gave it the name "pectin" from the Greek word meaning "coagulate." He described the substance and made jellies by the use of alkaline "pectates" isolated from carrots in combination with sugar, a mineral acid and water. Mulder in 1838, and Regnault and Fremy, shortly thereafter, investigated the composition of pectin to establish its structure. These went no further. The physical characteristic of pectin, forming jelly under certain conditions, was known in the art long before the time of the application herein. This knowledge is disclosed in various patents. Mingaud (English, 1865), patent No. 1,649; Scott and McDonald (English, 1878), No. 4,376; Camus (French, 1885), No. 167,436; Jux and Ferrand (French, 1895), No. 244,755; "Goldthwaite on Jelly-Making," 1909. The isolation of pectin for practical use long presented a difficult problem, but this likewise was solved long before Leo's patent. Prior to the invention in suit, the art also taught that pectin went into solution readily when mixed with sugar. Camus, Jux, and Ferrand, Boyles (1913), No. 1,067,714, Barker (1919), No. 125,330. Various publications and studies of the United States Department of Agriculture and other patents disclose this same fact. "Goldthwaite on Jelly-Making," 1909-1914. The jellifying properties of pectin when mixed with sugar and fruit juices was likewise known prior to the Leo application. Despite the knowledge in the art of the properties of pectin, its method of isolation, its method of solution and its jellying qualities, its commercial value for use in the making of jelly was not recognized until in or about 1910, and since that date numerous patents have been issued to make the use of pectin commercially practicable. "Though the constitution of these bodies (pectin) is so far from being determined, yet their fundamental characteristic -- that of forming jellies under certain conditions -- has long been well known practically. Our quest in the present work is to find the conditions under which this gelatinizing power best manifests itself. * * *" Goldthwaite, 1909. Later patents are directed to this purpose.
It is claimed that Leo first discovered that pectin varied in jellifying strength; that he taught how to standardize or make the pectin used of specific jellifying strength and the addition of certain proportion of finely divided sugar to dissolve the pectin; that he made it practical to put up, under a formula, a mixture of sugar and pectin which would jellify a stated amount of sugar. Douglas was the pioneer in the development of a definite formula of a pectin base for jelly making. His work is represented by patents No. 1,235,666; No. 1,082,682; and No. 1,304,166, issued commencing in 1913. As was said by Judge Hand in Douglas Pectin Corp. v. Armour & Co. (C.C.A.) 27 F.2d 814, 815, "his product and process were contemporaneous with a revolution in the methods used by jelly manufacturers." Douglas in his patents found a practical jelly base in the form of a concentrated liquid containing pectin. The Douglas product "Certo" is a household commodity of wide use and proven value. This product is boiled down juice obtained from the apple pomace. It is standardized so that it could be utilized by following a definite formula.
Claim 1 describes a jelly base composed of powdered pectin and sugar; the sugar being finely divided and varying in proportion to the pectin in the ratio of from 1 to 1 to 1 to 50.
Claim 2 describes a jelly base composed of acid, powdered pectin, and finely divided sugar, with the ratio of pectin varying from 1 to 1 to 1 to 50 and the ratio of acid to pectin from 1 to 2 to 1 to 4.
The only difference in these claims is in the inclusion of acid in claim 2. It is understood that the addition of acid is dependent on the absence of sufficient acid in the fruit juice which is utilized in jelly making. These claims are directed only to a mixture such as will render the pectin readily soluble when used in the preparation of jelly.
Claims 3 and 4 contemplate the addition of more sugar to the aforesaid preparation in an amount varying in accordance with the variation in the jellying capacity of the pectin to bring the pectin in combination to a determined jellying strength.
Claims 3 and 4 are not easily understood. As stated by a witness for the plaintiff: "The two problems ('solubility' and 'standardization') are so interlocked that it is hard to separate one from the other. * * *" It may be said that claims 3 and 4 relate both to solubility and standardization.
While Leo claims that he first discovered a variation in the jellying power of pectin, the patent to Scott and McDonald, supra, recites: "Pectin must be used in proportion depending on its jellifying strength, which will vary according to its source and mode of preparation, which may be easily ascertained by trial in each case." Douglas in his patent discloses the same fact. Any question as to the discoverer is not decisive of plaintiff's rights under the patent. The record shows that Leo began grading pectin in or about the year 1920. So far as appears, he was the first who graded powdered pectin.
It will be beneficial to give a practical illustration of the process claimed to be described in the patent. The unit of the grade is the amount of pectin which will jellify one pound of sugar.The various batches of pectin from the various sources are mixed together. The mixture is tested for its jellying capacity. The grade of the mixture is changed by the addition of sugar within the ratio limits fixed in the patent; the sugar so added serving to dissolve the pectin and also to standardize the mixture. If the grade of pectin is 160 and the producer wants to put on the market a jelly base of a strength to jelly 80 pounds of sugar, the grade is reduced to an 80 grade by making a mixture of one-half pectin and one-half sugar. The ratios for dissolving and for standardization are both within the claim limitations. The preparation of the product is further illustrated using a pectin of 80 grade: First mix 6 grams of pectin, 2 grams of powdered acid and 30 grams of sugar, or total of 38 grams. To make jelly, combine this mixture with water or fruit juice and bring to a boil. This dissolves the powdered ingredients. Then add 450 grams of sugar (480 grams are needed to work with 6 grams of 80 grade pectin) and boil to 218 degrees F. As Leo claims, he first found that pectin varied in jellying strength, next that it required definite amounts of sugar to make pectin readily soluble, and then that he had to determine for every grade sold the additional amount of sugar to be added at the time of making the jelly.
We come to the issues in the suit. It seems advisable to consider claims 1 and 2 together, separate from claims 3 and 4, and to consider the contentions of the defendant in the natural ...