United States District Court, Northern District of Illinois, E.D
November 13, 1970
MORAINE PRODUCTS, INC., A CORPORATION, PLAINTIFF,
BLOCK DRUG COMPANY, INC., A CORPORATION, ET AL., DEFENDANTS.
The opinion of the court was delivered by: Robson, Chief Judge.
MEMORANDUM ON DEFENDANTS' MOTION FOR SUMMARY JUDGMENT
The defendants in this patent infringement action move for
summary judgment. For the reasons stated below, this court is of
the opinion the motion should be denied.
The patent in issue concerns a method of medical treatment for
flatulency symptoms caused by gastro-intestinal disorders. The
patented method includes the introduction of a pharmaceutical
composition known generically as "simethicone" into the
gastro-intestinal tract where it acts as an anti-foaming agent.
It is undisputed that the inventor, Dr. Joseph A. Rider,
administered the composition to certain of his private and clinic
patients for more than a year prior to his application for the
patent in issue. These patients obtained the simethicone
composition from the pharmacy of the public medical clinic where
Dr. Rider practiced medicine.
The patent laws bar patentability of inventions which have been
subjected to public use for more than one year prior to the date
a patent application is filed. 35 U.S.C. § 102(b). The defendants
claim that Dr. Rider's use of the treatment method in question,
and the clinic's sale of the pharmaceutical composition,
constitute a public use which bars patentability as a matter of
law. The plaintiff, however, contends that Dr. Rider's use of the
treatment method was an experimental one to test its safety and
efficacy, and that the clinic's sale of the simethicone
composition was incidental to the experimental treatment in
question. The statutory rule requiring seasonable disclosure of
inventions is subject to an exception where a reasonable period
of experimentation is involved. Amphenol Corporation v. General
Time Corporation, 397 F.2d 431, 437 (7th Cir. 1968); Koehring
Company v. National Automatic Tool Company, 362 F.2d 100, 103-104
(7th Cir. 1966); George R. Churchill Company, Inc. v. American
Buff Company et al., 365 F.2d 129, 133-134 (7th Cir. 1966).
Factual issues may not be decided in a motion for summary
judgment; the court's duty is to determine whether there are any
factual issues to be tried. Rule 56, Federal Rules of Civil
Procedure; Devex Corporation v. Houdaille Industries, Inc.,
382 F.2d 17, 21 (7th Cir. 1967). Patent cases are rarely a proper
subject for summary judgment because legal conclusions on issues
of patent validity and infringement often rest upon complex and
highly specialized evidence which must be interpreted by expert
witnesses. Ortman v. Stanray Corporation, 371 F.2d 154, 156 (7th
A use for experimental purposes is not a public use barring
patentability if it is conducted in good faith for the purpose of
testing the qualities of the invention, and for no other purpose
not incidental to the experimental purpose. Cloud v. Standard
Packaging Corp., 376 F.2d 384, 390 (7th Cir. 1967).
Whether or not Dr. Rider's use of the simethicone treatment
method upon his patients was experimental is a question of fact.
E.g., McCullough Tool Company v. Well Surveys, Inc.,
343 F.2d 381, 394 (10th Cir. 1965); Cline Electric Mfg. Co. v. Kohler,
27 F.2d 638, 641 (7th Cir. 1928). Similarly, whether or not the sale
of the simethicone composition by the clinic's pharmacy was
incidental to an experimental use is also a question of fact not
properly resolved in a motion for summary judgment.
The defendants further move for summary judgment on the ground
that the Rider patent was anticipated by an earlier patent
application filed by W.H. Feinstone and assigned to the defendant
Plough, Inc. The Patent Office expressly found the Rider patent
to be patentable over the Feinstone invention as a prior art
reference. The defendants' attack upon this finding by the Patent
Office raises questions of fact which, as discussed above, are
not appropriate for consideration in a motion for summary
judgment. See Technograph Printed Circuits et al. v. Methode
Electronics, Inc., 356 F.2d 442, 447 (7th Cir. 1966).
It is therefore ordered that the defendants' motion for summary
judgment be, and it is hereby denied.
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