Brown v. Brock, 7229.

• Decision Date: 07 January 1957
• Docket Number: No. 7229.,7229.
• Citation: 240 F.2d 723
• Parties: Leonard J. BROWN and Paul M. Brown, a co-partnership doing business under the name and style of Baltimore Products Co., Appellants, v. Jacob BROCK and Max Brock, a co-partnership doing business under the name and style of American Character Doll Co., Appellees.
• Court: U.S. Court of Appeals — Fourth Circuit

240 F.2d 723 (1957)

Leonard J. BROWN and Paul M. Brown, a co-partnership doing business under the name and style of Baltimore Products Co., Appellants, v. Jacob BROCK and Max Brock, a co-partnership doing business under the name and style of American Character Doll Co., Appellees.

No. 7229.

United States Court of Appeals Fourth Circuit.

Argued November 9, 1956.

Decided January 7, 1957.

Asher Blum, New York City (Mock & Blum, New York City, on the brief), for appellants.

Drury W. Cooper, Jr., New York City (Richard W. Emory, Venable, Baetjer & Howard, Baltimore, Md., Thomas J. Byrne, Jr., and Albert J. Clark, New York City, on the brief), for appellees.

Before PARKER, Chief Judge, and SOPER and SOBELOFF, Circuit Judges.

SOBELOFF, Circuit Judge.

This appeal involves a contest as to the validity and infringement of a patent on a weeping doll. From a judgment holding that claims 1, 2, 4, 7, and 8 of Senior Patent No. 2,675,644¹ are valid and that of these claims 1, 4, and 8 were infringed, the defendant appealed. The plaintiffs are doll manufacturers and the assignees of the inventors, Senior and others. The defendants are Baltimore toy dealers and customers of Ideal Toy Corporation of New York, manufacturers of the accused doll. The District Court found that Ideal had assumed control of the defense and selected and paid the defendants' lawyers. The appellants advance two contentions: first, that the patent is invalid, and second, that it has not been infringed.

Long before the patent in suit, toy manufacturers had attempted repeatedly and without success to produce a satisfactorily realistic weeping doll. A number of patents had been issued for dolls designed to meet this demand, but none of them attained commercial success because, it is said, it was difficult for a child to control the amount of pressure on the body of the doll to achieve the desired effect of teardrops instead of a gushing stream of water from the eyes.

The appellees' employee, Beebe, on September 17, 1950, applied for a United States patent on a weeping doll designed to raise water to the eyes by means of a specialized air pump structure enclosed in a hollow flexible doll body. Earlier in that year, under the trade name of "Tiny Tears," appellees had begun making and marketing a doll according to Beebe's design, and it met with quick commercial success. It has remained unchanged in design and continues popular in the trade. In a five-year period appellees have sold about one and three-quarter million of their weeping dolls.

In the preceding year, however, three Englishmen, Senior, Heusman, and Ward, had applied for a United States patent on a weeping doll of similar construction. In September, 1952, the United States Patent Office declared an interference to determine priority of invention between the simultaneously pending applications of Beebe and Senior. The issue was resolved by Beebe's conceding priority to Senior. The appellees acquired the Senior application by assignment in 1953, and the patent here in suit was issued to the assignees on April 20, 1954. The Beebe Patent, No. 2,689,432, was issued on September 21, 1954, six months after the Senior patent, upon Beebe's remaining claims. It embodies manufacturing improvements on Senior in that the water container and air pump are mounted in the head upon a partition at the upper end of the torso. The combined overflow and air tube, which is like Senior's, extends downward from about the middle of the container, through the partition, into the doll's torso.

In the drawing of the Senior patent, the container and the combined overflow and air tube are shown in the body, rather than the head; but the claims of the Senior patent are not limited to any particular placement of these elements. It is, of course, settled law that the claims, rather than the specification or drawing, control in determining the scope of a patent. Graver Tank & Manufacturing Co. v. Linde Air Products Co., 336 U.S. 271, 277, 69 S.Ct. 535, 93 L.Ed. 672; Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 145-146, 62 S.Ct. 969, 86 L.Ed. 1332; General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 58 S.Ct. 899, 82 L.Ed. 1402.

The conflict between the parties arose in either 1952 or 1954, when the appellant stopped selling its "Betsy-Wetsy" wetting doll and began marketing a weeping doll. While conceding that its product is made according to the Beebe patent, which, like the Senior patent, is owned by appellees, the appellants make the point that the suit was not brought on the Beebe patent. As to each of the claims of the Senior patent, which dominates the Beebe patent, the appellants assert either invalidity or non-infringement or both.

The patent in suit discloses and claims a weeping doll which a child can easily manipulate by squeezing the doll's hollow, flexible body at any place convenient to the child. When the body is squeezed, the pressure of the air is transmitted by the air tube into the top of the container and liquid in the container is lifted through the conducting tube to the eyes. This simulates and gives the illusion of a weeping baby by causing water to fall like natural tears, drop by drop, and not to come out in a stream or squirt, in which case the illusion would be destroyed. The patent is a combination patent and discloses a particular structure for a weeping doll. It does not attempt broadly to cover weeping dolls of every construction; nor does it seek to cover every use of air pressure to raise a liquid, for this is an old principle. It claims merely the arrangement of the elements of an air lifting device, whereby for the first time the liquid container is entirely enclosed within the pressure developing element, that is, the doll's body, and a tube serves the double purpose of conducting air pressure to the liquid container and carrying off the overflow of liquid from the container.

The District Judge found novelty in these features in that it was a new combination and arrangement and produced new and beneficial results never attained before. A new combination providing new and unobvious results is patentable. Loom Co. v. Higgins, 105 U.S. 580, 591-592, 26 L.Ed. 1177; Colgate-Palmolive Co. v. Carter Products, Inc., 4 Cir., 230 F.2d 855, 862; United States Industrial Chemical Co. v. Theroz Co., 4 Cir., 25 F.2d 387, 391.

In reaching this conclusion, the Court compared the Senior doll with others for which patents had previously been issued. In one respect or another, each of the prior patents failed to achieve the desired result. The successful Senior doll embodied, for the first time in a doll, a liquid container that is rigid, that can be put anywhere in the doll's body, head, or neck, and need not be adjacent to a rigid wall. The distinctive feature of the combination effected by Senior is that the water container itself need not be squeezed, reduced, or collapsed. It permits, instead, pressure on any part of the doll's body to force air into the upper part of the container, which, in turn, causes the liquid to be forced upward through conducting tubes to the eyes. This is new in dolls.

In earlier patents, various other devices were resorted to. Where bulbs were used, either they had to be outside the body so that they could be readily squeezed — an obviously undesirable feature — or, if inserted into the body, they required a stiff backing or wall on the inside against which the bulb would be pressed when the doll was squeezed.

For example, in the Hoefler patent (No. 1,268,714), the head itself was the container and it was necessary, in filling the head, to attach a syringe to a tube hanging outside the back of the doll. In the Gilbraith patent (No. 2,196,912), a water container was in the head, which was fed by a bulb in the body, and the water descended by gravity to the eyes. Again, it was necessary to have a wall in the doll's body against which the bulb would be squeezed. In the Konikoff patent (No. 2,157,763), the doll had a water reservoir at the top of the head; the doll was to be laid down and fed by a bottle; and if the doll was placed upright, the water would run through a tubing into the eyes by gravity.

The prior art disclosure upon which the appellants put chief reliance is Pages, a French patent, No. 819,329. This also contained a bulb, which had to be squeezed directly by a lever to force water up into the eyes. It operated on a principle in no way resembling the patent in suit.

So much for the manifest distinctions between the mechanical operations of the Pages and Senior dolls. The appellants argued that if the Pages construction were rearranged, it would be the equivalent of the design later developed by Senior. However, not only would the rearrangement be a complete departure from Pages' patent, but there is in addition a legal rule in respect to the citation of foreign patents which completely answers such arguments. The Supreme Court has said: "Patented inventions cannot be superseded by the mere introduction of a...