## Facts

- Parke-Davis & Co. owned rights to U.S. Patent No. 730,176 (Takamine) claiming a highly purified active principle from suprarenal (adrenal) glands, sold as “Adrenalin,” and to a later patent claiming stable borate salt solutions of that principle.
- Prior to Takamine, investigators used crude adrenal extracts with variable potency and impurities from gland tissue.
- Takamine developed a method that isolated a “base” by extracting adrenal material and directly precipitating the active principle with ammonia, yielding a highly potent, purified product described as practically free of inert gland material.
- H.K. Mulford Co. manufactured and sold “Adrin” as a dry powder and as a sodium chloride solution containing a borate of the Adrin base with preservatives.
- Mulford’s manufacturing steps differed in some preliminaries, but used the same critical precipitation with ammonia to obtain the active base.
- Mulford argued invalidity based on prior work (including Moore’s dialysate, Abel’s monobenzoylated derivatives, and von Fürth’s compounds) and contested whether its products met the patents’ purity and product-characteristics limitations.

## Issues

1. Whether claims to a highly purified active principle derived from adrenal glands are patentable and valid over asserted prior art.
2. How to construe “practically free from inert and associated gland-tissue,” and whether Mulford’s product met that limitation.
3. Whether Mulford’s Adrin dry product and borate saline solution infringed the asserted product claims, notwithstanding differences in production methods.
4. Whether the later claims directed to stable borate salt solutions were valid and infringed.

## Decision

- The court upheld the validity of Takamine’s product claims to the purified adrenal active principle and upheld key claims of the later borate-salt solution patent.
- The court found Mulford’s Adrin dry powder infringed the asserted product claims covering the purified active principle.
- The court found Mulford’s sodium chloride solution of the borate of the Adrin base infringed the asserted solution/salt claims.
- The court rejected the asserted anticipations as failing to disclose the claimed purified base or meeting the claimed functional purity requirements.

## Legal Principles

- A purified substance derived from natural material may be patentable where isolation and purification produce, for practical commercial and therapeutic purposes, a distinct product with materially improved utility compared to the crude natural mixture.
- “Practically free from inert and associated gland-tissue” is construed as a relative, functional purity limitation focused on removal of associated organic constituents, not an absolute requirement that no remnants of tissue-related material exist.
- For product claims, infringement turns on whether the accused product has the claimed characteristics and falls within the claim scope; differences in manufacturing steps do not avoid infringement if the resulting product is the same within the claims.
- Prior art that is vague, discloses different chemical derivatives/compounds, or fails to achieve the claimed purification does not anticipate product claims to an isolated active principle or to stable salt solutions.

## Conclusion

The court held that patents claiming a highly purified adrenal active principle and stable borate salt solutions were valid, construed the purity language as a practical functional standard, and found that Mulford’s Adrin powder and borate saline solution infringed because their chemical and functional characteristics fell within the product claims despite process variations.


Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95 (C.C.S.D.N.Y. 1911)