Upon Petition for Rehearing and Upon Motion to Remand for Further Testimony in the District Court.
DENMAN, Circuit Judge.In our opinion filed November 24, 1944, we called the Attorney General’s attention to the refusal of the Wisconsin corporation to permit the vitamin D irradiation of oleomargarine. While claiming the beneficence of the vitamin in food in the cure or aid in cure of rickets in children, and pointing out that rickets is a disease of the poor, the Wisconsin corporation now seeks to justify the denial of irradiation of the “butter of the poor” spread on their bread or used as a fat in cooking of meats and vegetables.
At the hearing of the motion to recommit the case to the district court, it was admitted that in the 20 years since the application was filed, the only time the Wisconsin corporation has permitted the irradiation of oleomargarine was under the recent pressure of the war need and the demand of the Federal Government. This is although Dr. Steenbock, testifying in 1941, stated that the governments of European nations then required such irradiation.
An affidavit of Timothy Brown, a trustee of the Wisconsin corporation since 1925, when Dr. Steenbock transferred his patents to the Wisconsin corporation; is offered as the proof on a recommitment, if granted, of the justification for not permitting the licensing of the vitamin irradiation of oleomargarine. This it will be remembered was described as a successful process in the first patent applied for in 1924. That affidavit states
“ * * * At the time Dr. Steenbock assigned his rights in the inventions upon which the patents in suit were granted, the assignment was accepted by appellee upon condition that irradiation or Vitamin D fortification of oleomargarine would not be licensed without the consent of the president of the University of Wisconsin.”
At the hearing on the motion to recommit, it was admitted that the president of the University of Wisconsin in 1925 and those since have not been scientists. They were the administrative heads of a university supported by funds appropriated by the Wisconsin legislature. Constitution of Wisconsin, Art. X, Sec. 6; cf. §§ 20.39, 20.40 and 20.41, Wisconsin Statutes 1925.
That legislature, elected by a dairy state, then was and since has been one of the most hostile of the forty-eight states to the use of oleomargarine as a food. The history of its hostility shows it began as early as 1885 with continuing legislation. In the Wisconsin laws of that year, in chapter 361, that legislature prohibited the sale of any *955substance “designed to take the place of butter or cheese, produced from pure, unadulterated milk.” There were other laws discriminating against oleomargarine in the laws of Wisconsin. 1887, ch. 185; 1895, ch. 30, §§ 6 and 7; 1925, ch. 279.
In 1925, the year of the transfer of the patents, that legislature in a joint resolution memorialized Congress, reciting the large consumption of oleomargarine in the United States and its claimed adverse competitive effect upon the dairy farming industry in Wisconsin and elsewhere, and petitioned Congress to suppress the manufacture and sale of oleomargarine throughout the United States. The resolution read
“ * * * That the Congress of the United States is hereby earnestly petitioned añd urged to enact such legislation as shall prohibit the manufacture and sale of oleomargarine in the United States and that the representatives in Congress are requested to introduce some [sic] measures as may be necessary to accomplish such end; * * Laws of Wisconsin 1925, p. 717, Jt.Res. 77, A; cf. 1939, p. 1031, Jt.Res. 84.
In 1931 it passed a joint resolution seeking to hamper oleomargarine’s use as a food by National restrictive legislation, on the ground that oleomargarine was lacking in vitamins and hence not beneficial to children. The resolution read
“Whereas, the most eminent scientists and food experts have proved and recognized the superiority of butter over oleomargarine as a food product, and have repeatedly pointed out the vital importance of the vitamin content of butter, absent from oleomargarine and other butter substitutes, to the health, growth and welfare of the children of the United States * *
Nevertheless, Scientist Steenbock gave to the presidents of the University of Wisconsin, dependent upon that legislature’s funds, the sole power to add to oleomargarine by irradiation the vitamin D which that scientist claims is so valuable, if not essential, in the cure of rickets of the children of the forty-eight states; and the Wisconsin corporation accepted and administers the patents subject to such restraint on its beneficent use.
As stated, all these children of the whole Nation thus have been prevented from receiving the vitamin created by this process in the oleomargarine on the bread they eat or in the animal and vegetable foods which are cooked in that fat. At the hearing, on being questioned by one of the judges, the Wisconsin corporation admitted that children so fed oleomargarine on bread or foods so cooked would receive the anti-rachitic vitamin.
Though it is not contended that oleomargarine with vitamin addition is not “of equal effectiveness” compared with butter, the reason given for transferring to the University’s presidents the power to inhibit its use is that some licensee might make fraudulent claims concerning such effectiveness. The affidavit reads:
“At the time there were many persons connected with the University of Wisconsin and particularly its School of Agriculture who were fearful of the possibility that if oleomargarine manufacturers were licensed under the Steenbock patents, fraudulent claims might be made by such manufacturers regarding the alleged equal effectiveness of oleomargarine when compared with butter. It was for these reasons that Dr. Steenbock made his assignment conditional upon appellee agreeing not to license the use of the patented processes in connection with oleomargarine without the consent of the president of the University of Wisconsin.”
The Wisconsin corporation’s briefs explain their inspection and direction of the advertising of the other irradiated food products of its licensees. It is not claimed that responsible licensed irradiators of oleomargarine would be any more likely to make fraudulent statements than the licensed ir-radiators of the many other foods allowed such irradiation.
Dr. Steenbock, when he testified at the trial below in 1941, was a member of the faculty of the University of Wisconsin of which its president is the head, and had been connected with that university since before 1925. He there stated regarding the established policy of licensing
“Q. Do any of your licensees in this country irradiate Or fortify oleomargarine under your process? A. No, — no, in general, me have been unsympathetic with those developments.” (Emphasis supplied.)
As would be expected in such a situation, the affidavit states that but one application for a license to irradiate oleomargarine was attempted to be obtained from the president of the University or the Wisconsin corporation. That is, until the Federal Government, under a war need, dared seek the use of the health giving process, despite *956the antagonism of the Wisconsin legislature and “unsympathetic” attitude of the corporation, and it may he inferred, since they alone could permit such irradiation, of the university’s presidents.
The affidavit also states that a committee of the American Medical Association had decided in 1937 that “for the present milk is the only fortified food which will be considered for acceptance when fortified by vitamin D.” On the hearing the Wisconsin corporation admitted that all the other food substances licensed for irradiation, that is flour, crushed oats and other grains, yeast, ergosterol, etc., are not so considered by the committee. We are unable to see that the statement of this committee warrants the president’s or corporation’s refusal to irradiate oleomargarine.
The affidavit admits that under a regulation of the Federal Food, Drug,'and Cosmetic Act, § 403, 21 U.S.C.A. § 343, oleomargarine may be fortified by vitamin A and vitamin D, the regulation providing
“(7) Vitamin A, added as fish liver oil or as a concentrate of Vitamin A from fish liver oil (with any accompanying Vitamin D and with or without added Vitamin D concentrate), in such quantity that the finished oleomargarine contains not less than 9,000 United States Pharmacopoeia Units of Vitamin A per pound.” 6 Fed.Reg. 2761, 2763.
Since the quantity of the added vitamin D is not fixed by the regulation and may be ‘‘any accompanying” amount, we construe the word “accompanying” as including any vitamin D accompanying the irradiated oleomargarine when vitamin A is added. The Wisconsin corporation would construe the regulation otherwise, as if drawn to justify its refusal to license any such vitamin D irradiation. Its construction is that the direct vitamin D irradiation of oleomargarine, for which process the United States finally procured the right for its armed forces, is prohibited by the regulation. If this latter were the proper construction, it will be noted that the regulation was made not only after the filing of the instant suit but after twenty years of refusal to permit a practical commercial experience in oleomargarine irradiation such as was given by the licenses to irradiate flour, rolled oats, yeast, etc. from which experience fixed limits of vitamin D content could be determined if such limitation were desired. The unlimited amount permitted by the regulation indicates no scientific or medical need for such limitation.
We now have before us from the Wisconsin corporation what, if the case be resubmitted, it will prove as excusing the refusal of the irradiation of oleomargarine. Upon consideration of the proffered evidence all three judges now conclude the refusal unwarranted and'against the public interest and deny th.e motion to remand for proof of these facts. We further hold that such refusal to permit such irradiation warrants the refusal of the equitable injunctive and accounting relief sought by the corporation, though we hold the public interest is served better by our decision that the patents are invalid.
Appellant’s briefs state, without contradiction by appellee in brief or at the hearing, that there was such a license agreement as described in the paragraph beginning first on page 13 of our opinion as printed. It is now conceded that the agreement does not appear in the exhibits in the record. It is therefore ordered (1) that that paragraph,, of IS lines, be stricken from tlje opinion; (2) that the first two lines of the paragraph next below be amended to read “Pressed in the present litigation and contrary to the testimony and the infringement suit, appel-lee now,” and (3) that the first sentence of the paragraph beginning third on page 14 of the opinion as printed [146 F.2d 948] be amended to read “Obviously the present claim was intended to cover the solar radiation, claimed as infringed in the suit to restrain the production of solar irradiated ergosterol.”
The motion to remand on other grounds, is without merit and is denied. The petition for rehearing is denied.