AOHESOH, Circuit Judge.
The bill charges the defendant with infringement of letters patent Ho. 286,138, dated October 2, 1883, granted to Carl L. Jensen for improvements in the manufacture of pepsin. The patent has two claims; the first for the described process of, manufacture, the second for the product. The process consists in finely cutting up the mucous membranes or the whole stomachs of animals, placing the same in a vessel containing acidulated water, and subjecting the mixture to heat, whereby an artificial digestion takes place akin to the action in the natural stomach, resulting in a sirupy liquid or peptone, which, “after clarifying and purifying by any of the well-known methods,” is spread on glass plates to dry, and is then scraped off, and the flakes or scales passed through a fine sieve. The defendant did not manufacture the pepsin complained of, but merely sold it; the manufacturer being Parke, Dams & Co., a corporation of the state of Michigan. For convenience, however, it will hereinafter be designated as defendant’s pepsin.
The charge of infringement of the first claim of the patent is not insisted on. The second claim (the one here involved) is in the words following:
[291]*291“(2) As a new article of manufacture, the within-described pepsin in the form of hard scales or crystals, transparent, odorless, tasteless, capable of being permanently preserved, freely soluble in water without the use of acid, free from inert additions, and having a digestive power of one to seven hundred, substantially as set forth.”
The defenses are: (1) That the patented article was put in public use and on sale in this country by the patentee more than two years before Ms application for a patent; (2) that it was known; made, and used by others in this country prior to his invention; (3) noninfringement. In the view I take of the case, it will only be necessary for me to consider the defense last mentioned. Upon principle and authority it is clear that the second claim of the patent. in suit, covers only pepsin manufactured by the process described in the patent, or by substantially the same process. Dittmar v. Rix, 1 Fed. 342; Pickhardt v. Packard, 22 Fed. 530; Smith v. Vulcanite Co., 93 U. S. 486, 493; Cochrane v. Soda Fabrik, 111 U. S. 293, 310, 313, 4 Sup. Ct. 455; Bene v. Jeantet, 129 U. S. 683, 686, 9 Sup. Ct. 428. The real question, then, is, was the article sold by' the defendant made in the mode described by Jensen, or by an: equivalent process? The burden of proof to show infringementj is, of course, upon the plaintiff. No direct evidence has been given by the plaintiff to show how the defendant’s pepsin was manufactured. The plaintiff’s case rests exclusively upon the alleged correspondence in physical qualities between the Jensen pepsin and the defendant’s. At the most, however, such evidence only makes out a prima facie case of infringement. But here the defendant has produced positive and uncontradicted testimony that his pepsin was made in accordance with letters patent- No. 421,357, dated March 25, 1890, granted to John B. Bussell. In this state of the proofs, the positive evidence should prevail. Bene v. Jeantet, supra. From the mere grant of the Bussell patent there arises a, presumption -that the process therein described is distinct from that of Jensen. That the two processes are different in principle appears upon a comparison of the patents and a consideration of the proofs. Jensen’s process aims to retain all the peptone formed in the digestion of the stomach tissue, and also jn*eserves the other soluble products of digestion. On the other hand, the Bussell process reduces the peptone and soluble mineral matter, and to that end the peptic solution is subjected to dialysis.
It is very clear from the evidence -that the words “clarifying and purifying by any -of tin' well-known methods,” as found in Jensen’s pafenf. were not intended to cover the use of a dialyzer. Upon this point, Prof. Stebbins, the plaintiff’s expert, testifies:
“It is. however, my opinion that the process of clarifying and purifying referred to in Jensen’s patent meant only the removal of the coarser particles of material, consisting of fat, adipose tissue, and certain mineral matter, by filtration or other means.”
This witness also states that the process -of dialysis would unquestionably remove a portion of the peptone, and also change ihe percentages of mineral salts present in the pepsin solution. In this connection, the following extract from the testimony of Prof. [292]*292Stebbins, who was the only witness called by the plaintiff to prove infringement, deserves serious consideration:
“67 R. C. Q. In your answers to 47 and 48 R. D. Q.’s, do you intend to draw a distinction between pepsin made by a process which aims at separating a portion of the peptone and the pepsin of the Jensen patent? A. Well, I think a distinction should be made, inasmuch as the two kinds of pepsin would differ considerably in their physical, as well as chemical, characteristics. 68 R. C. Q. Then yon would consider a pepsin made by a process which partially separated the peptone as a different pepsin from that described and claimed in the Jensen patent? A. I would.”
Now, under tbe proofs, it is not to be doubted that by the process followed in tbe manufacture of tbe defendant’s pepsin tbe peptone is partially eliminated. According to analyses made by Prof. Chittenden, the defendant’s expert, tbe percentage of ash and water together in the Jensen pepsin amounts to 19.22 against only 8.09 in the defendant’s pepsin, showing a difference in favor of the latter of over 10 per cent, in these two inactive substances; and, comparing peptone with peptone, the defendant’s pepsin contains 5.9 per cent, less peptone than Jensen’s, so that the defendant’s pepsin has 16.22 per cent, less inactive matter than the Jensen pepsin. But this is not all. Calculated on an ash-free and a water-free basis, which is the true method of comparison, the difference in peptone is 14.26 per cent., this being the reduction of pep-tone in the defendant’s pepsin as the effect of dialysis. In digestive liower, which is the test of therapeutic value, the difference in favor of the defendant’s pepsin is remarkable, Jensen’s pepsin being only a little more than one-third as strong as the defendant’s. In view of these facts, Prof, Chittenden’s opinion is that the two forms of pepsin are decidedly different. The attention of Prof. Stebbins, upon his cross-examination, was called to the relative strength of the two preparations, and his answers (which follow) are very significant:
“33 O. Q. How, then, do you account for the fact that you found the defendant’s pepsin much stronger than the Jensen pepsin? A. I can’t account for it, unless it is owing to some special mode of preparation.” “29. C. Q., (in rebuttal.) Tbe ferment pepsin in both Jensen’s and defendant’s preparations of pepsin being the same, is it not certain that there must be some great difference between these preparations to account for their great difference in digestive power? A. Unquestionably there is some great difference, other than the differences already mentioned, namely, the quantities of ash, moisture, and peptone; but what this difference is, I am unable to say.”
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AOHESOH, Circuit Judge.
The bill charges the defendant with infringement of letters patent Ho. 286,138, dated October 2, 1883, granted to Carl L. Jensen for improvements in the manufacture of pepsin. The patent has two claims; the first for the described process of, manufacture, the second for the product. The process consists in finely cutting up the mucous membranes or the whole stomachs of animals, placing the same in a vessel containing acidulated water, and subjecting the mixture to heat, whereby an artificial digestion takes place akin to the action in the natural stomach, resulting in a sirupy liquid or peptone, which, “after clarifying and purifying by any of the well-known methods,” is spread on glass plates to dry, and is then scraped off, and the flakes or scales passed through a fine sieve. The defendant did not manufacture the pepsin complained of, but merely sold it; the manufacturer being Parke, Dams & Co., a corporation of the state of Michigan. For convenience, however, it will hereinafter be designated as defendant’s pepsin.
The charge of infringement of the first claim of the patent is not insisted on. The second claim (the one here involved) is in the words following:
[291]*291“(2) As a new article of manufacture, the within-described pepsin in the form of hard scales or crystals, transparent, odorless, tasteless, capable of being permanently preserved, freely soluble in water without the use of acid, free from inert additions, and having a digestive power of one to seven hundred, substantially as set forth.”
The defenses are: (1) That the patented article was put in public use and on sale in this country by the patentee more than two years before Ms application for a patent; (2) that it was known; made, and used by others in this country prior to his invention; (3) noninfringement. In the view I take of the case, it will only be necessary for me to consider the defense last mentioned. Upon principle and authority it is clear that the second claim of the patent. in suit, covers only pepsin manufactured by the process described in the patent, or by substantially the same process. Dittmar v. Rix, 1 Fed. 342; Pickhardt v. Packard, 22 Fed. 530; Smith v. Vulcanite Co., 93 U. S. 486, 493; Cochrane v. Soda Fabrik, 111 U. S. 293, 310, 313, 4 Sup. Ct. 455; Bene v. Jeantet, 129 U. S. 683, 686, 9 Sup. Ct. 428. The real question, then, is, was the article sold by' the defendant made in the mode described by Jensen, or by an: equivalent process? The burden of proof to show infringementj is, of course, upon the plaintiff. No direct evidence has been given by the plaintiff to show how the defendant’s pepsin was manufactured. The plaintiff’s case rests exclusively upon the alleged correspondence in physical qualities between the Jensen pepsin and the defendant’s. At the most, however, such evidence only makes out a prima facie case of infringement. But here the defendant has produced positive and uncontradicted testimony that his pepsin was made in accordance with letters patent- No. 421,357, dated March 25, 1890, granted to John B. Bussell. In this state of the proofs, the positive evidence should prevail. Bene v. Jeantet, supra. From the mere grant of the Bussell patent there arises a, presumption -that the process therein described is distinct from that of Jensen. That the two processes are different in principle appears upon a comparison of the patents and a consideration of the proofs. Jensen’s process aims to retain all the peptone formed in the digestion of the stomach tissue, and also jn*eserves the other soluble products of digestion. On the other hand, the Bussell process reduces the peptone and soluble mineral matter, and to that end the peptic solution is subjected to dialysis.
It is very clear from the evidence -that the words “clarifying and purifying by any -of tin' well-known methods,” as found in Jensen’s pafenf. were not intended to cover the use of a dialyzer. Upon this point, Prof. Stebbins, the plaintiff’s expert, testifies:
“It is. however, my opinion that the process of clarifying and purifying referred to in Jensen’s patent meant only the removal of the coarser particles of material, consisting of fat, adipose tissue, and certain mineral matter, by filtration or other means.”
This witness also states that the process -of dialysis would unquestionably remove a portion of the peptone, and also change ihe percentages of mineral salts present in the pepsin solution. In this connection, the following extract from the testimony of Prof. [292]*292Stebbins, who was the only witness called by the plaintiff to prove infringement, deserves serious consideration:
“67 R. C. Q. In your answers to 47 and 48 R. D. Q.’s, do you intend to draw a distinction between pepsin made by a process which aims at separating a portion of the peptone and the pepsin of the Jensen patent? A. Well, I think a distinction should be made, inasmuch as the two kinds of pepsin would differ considerably in their physical, as well as chemical, characteristics. 68 R. C. Q. Then yon would consider a pepsin made by a process which partially separated the peptone as a different pepsin from that described and claimed in the Jensen patent? A. I would.”
Now, under tbe proofs, it is not to be doubted that by the process followed in tbe manufacture of tbe defendant’s pepsin tbe peptone is partially eliminated. According to analyses made by Prof. Chittenden, the defendant’s expert, tbe percentage of ash and water together in the Jensen pepsin amounts to 19.22 against only 8.09 in the defendant’s pepsin, showing a difference in favor of the latter of over 10 per cent, in these two inactive substances; and, comparing peptone with peptone, the defendant’s pepsin contains 5.9 per cent, less peptone than Jensen’s, so that the defendant’s pepsin has 16.22 per cent, less inactive matter than the Jensen pepsin. But this is not all. Calculated on an ash-free and a water-free basis, which is the true method of comparison, the difference in peptone is 14.26 per cent., this being the reduction of pep-tone in the defendant’s pepsin as the effect of dialysis. In digestive liower, which is the test of therapeutic value, the difference in favor of the defendant’s pepsin is remarkable, Jensen’s pepsin being only a little more than one-third as strong as the defendant’s. In view of these facts, Prof, Chittenden’s opinion is that the two forms of pepsin are decidedly different. The attention of Prof. Stebbins, upon his cross-examination, was called to the relative strength of the two preparations, and his answers (which follow) are very significant:
“33 O. Q. How, then, do you account for the fact that you found the defendant’s pepsin much stronger than the Jensen pepsin? A. I can’t account for it, unless it is owing to some special mode of preparation.” “29. C. Q., (in rebuttal.) Tbe ferment pepsin in both Jensen’s and defendant’s preparations of pepsin being the same, is it not certain that there must be some great difference between these preparations to account for their great difference in digestive power? A. Unquestionably there is some great difference, other than the differences already mentioned, namely, the quantities of ash, moisture, and peptone; but what this difference is, I am unable to say.”
The inability of this witness to explain to his own satisfaction the striking difference in strength between the two preparations, which undeniably exists, is the less surprising when it is remembered, as he himself states elsewhere in his testimony, that pepsin is a very obscure thing, not fully understood by scientific men, and has never been isolated in an absolute state of chemical purity.
Another quotation from Prof. Stebbins’ testimony is here pertinent: ,
“48 O. Q., (in rebuttal.) Does not the therapeutic value of a preparation of pepsin depend upon its digestive power? A. It does. 49 O. Q. And does not the enormous difference in digestive power between tbe Jensen pepsin and the defendant’s pepsin mark a great advance in this art? A. It certainly marks an advance; yes.”
[293]*293Now, in dealing with (lie question of infringement liere involved, it is io be borin^ in mind that in the preparation of pepsin as an article of pharmacy Jensen was by no means a pioneer. Its extraction from the stomachs of animals by mincing the mucous membranes and producing artificial digestion thereof under the action of diluted acid and heat, was old and well known, as appears fi;om Foster’s Physiology, published in 1877, and as, indeed, may be inferred from the recital in Jensen’s own patent. Neither was Jensen the first to prepare the article in the form of scales produced by evaporation to dryness of the peptic solution.
The evidence fully justifies the conclusion that Jensen’s patented process will not make the defendant’s pepsin. This is shown by Prof. Chittenden’s experiments, to which he testifies. I discover nothing in tlie proofs to discredit his tests. Then, again, the Jensen patent itself fixes the digestive power of the product at 1 to 700 only. Here, too, the testimony of the plaintiff’s witness William H. Ball is important. He has been in the plaintiff’s service since the middle of the year 1800, and fully understands the process it employs. He says that when he first became connected with the plaintiff company the digestive power of the pepsin then made by it was 1 to 600, but that at the time he testified (February, 1892,) the digestive power of the pepsin the plaintiff was then producing was 1 to 1.800. He was asked to describe the process by which, 'the plaintiff then manufactured its pepsin, but declined to do so. The inference is irresistible that Jensen’s patented process will not produce a pepsin having the digestive power of that sold by the defendant, and that the plaintiff is employing other and secret means to secure such result. Taking the proofs as a whole, it is clear to me that they fail to make out the charge of infringement; and therefore, without passing upon the other defenses, the bill of complaint will he dismissed.
Let a decree be drawn dismissing the bill, with costs.