46 F.3d 1556 (Fed. Cir. 1994), 92-1412, Conopco, Inc. v. May Dept. Stores Co.

Docket Nº:92-1412 to 92-1416.
Citation:46 F.3d 1556
Party Name:32 U.S.P.Q.2d 1225 CONOPCO, INC., d/b/a Chesebrough-Pond's USA Co., Plaintiff/Cross-Appellant, v. MAY DEPARTMENT STORES COMPANY and Venture Stores, Inc., and The Benjamin Ansehl Company, and Kessler Containers, Ltd., Defendants-Appellants.
Case Date:September 21, 1994
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1556

46 F.3d 1556 (Fed. Cir. 1994)

32 U.S.P.Q.2d 1225

CONOPCO, INC., d/b/a Chesebrough-Pond's USA Co.,

Plaintiff/Cross-Appellant,

v.

MAY DEPARTMENT STORES COMPANY and Venture Stores, Inc.,

and

The Benjamin Ansehl Company,

and

Kessler Containers, Ltd., Defendants-Appellants.

Nos. 92-1412 to 92-1416.

United States Court of Appeals, Federal Circuit

September 21, 1994

Rehearing Denied; Suggestion for

Rehearing In Banc Declined

Nov. 29, 1994.

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[Copyrighted Material Omitted]

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Berj A. Terzian, Pennie & Edmonds, New York City, argued, for plaintiff/cross-appellant. With him on the brief, were Joseph DiaMante, Peter D. Vogl and Darren W. Saunders.

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Paul F. Kilmer, Gadsby & Hannah, Washington, DC, argued, for defendant-appellant, May Dept. Stores Co. and Venture Stores, Inc. With him on the brief, was Thomas W. Brooke.

William K. West, Jr., Cushman, Darby & Cushman, Washington, DC, argued, for defendant-appellant, The Benjamin Ansehl Co. With him on the brief, were Mark G. Paulson and Stuart T.F. Huang. Of counsel was Mary M. Bonacorsi, St. Louis, MO.

Mary M. Bonacorsi, Thompson & Mitchell, St. Louis, MO, argued, for defendant-appellant, Kessler Containers, Ltd. With her on the brief, were Jerome C. Simon, Moser & Marsalek, St. Louis, MO, and William K. West, Jr., Cushman, Darby & Cushman, Washington, DC.

Before MAYER, MICHEL, and PLAGER, Circuit Judges.

PLAGER, Circuit Judge.

Defendants May Department Stores Co. (May), Venture Stores, Inc. (Venture), The Benjamin Ansehl Co. (Ansehl), and Kessler Containers Ltd. (Kessler) appeal the judgment of the District Court for the Eastern District of Missouri, entered January 2, 1992 after a bench trial. Conopco, Inc. v. May Dep't Stores Co., 784 F.Supp. 648, 24 USPQ2d 1721 (E.D.Mo.1992). The District Court ruled that defendants willfully infringed a package of proprietary rights owned by plaintiff Conopco, Inc. d/b/a Chesebrough-Pond's U.S.A. Co. (Conopco) relating to a relaunch of Conopco's Vaseline Intensive Care Lotion (VICL) product. Those rights consist of (1) the rights conferred by U.S. Patent No. 4,939,179 (the '179 patent), (2) the rights to the VASELINE and INTENSIVE CARE trademarks, U.S. Trademark Registration Nos. 44,790, 140,345, and 864,662, and (3) the rights to the trade dress (container shape and labelling) of the relaunched VICL product pursuant to Sec. 43(a) of the Lanham Act (codified as amended 15 U.S.C. Sec. 1125(a) (1988)). The court awarded plaintiff an injunction, a recall order, enhanced damages of $2,679,201, and prejudgment interest. The court also found the case to be exceptional under 35 U.S.C. Sec. 285 (1988) and 15 U.S.C. Sec. 1117 (1988), and awarded attorney fees and costs. It also imposed joint and several liability on the defendants. The judgment became final on May 26, 1992 when the court denied in all material respects defendants' motions to alter or amend the judgment, or in the alternative, for a new trial. Conopco, Inc. v. May Dep't Stores Co., 797 F.Supp. 740 (E.D.Mo.1992).

Plaintiff cross-appeals the court's pre-trial decision dismissing certain state law claims it had asserted against defendants.

We affirm-in-part, reverse-in-part, vacate-in-part, and remand with instructions.

BACKGROUND

In 1986, Conopco decided to "relaunch" VICL, a product it had been marketing for over 20 years. Conopco wanted to enhance that product's therapeutic image and to further distance it from private label brands, which had been eroding its sales. Accordingly, it set about developing a new bottle shape and label for the product. It also set about developing a new formula for the lotion. Conopco's objective was to reduce the lotion's greasiness while maintaining its thickness and smooth skin feel.

In 1988, Conopco decided upon a revised bottle shape and label for the relaunched product. By 1989, it decided upon a lotion formula. Conopco discovered that the combination of two ingredients--isoparaffin and DEA-cetyl phosphate--resulted in a synergistic increase in the viscosity of the lotion. By adding these two ingredients to its lotion, Conopco found that it could decrease the amount of mineral oil used. Since mineral oil is heavy and greasy, Conopco was thus able to achieve a reduction in greasiness without a corresponding decrease in viscosity.

After filing a patent application on the new formula, Conopco initiated the relaunch. It began shipping the product to retailers and aggressively promoting it. By the fall of 1989, the product was on the shelves of virtually every major retailer and drug store in the United States. Between the fall of 1989 and March of 1990, Conopco spent over $37 million to advertise and promote the product.

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Ansehl is a manufacturer of private label hand lotions, which it distributes through retailers such as Venture, who also handle national brands such as the revised VICL product. Kessler is a manufacturer of containers, and May is Venture's corporate parent.

In January 1989, Ansehl became aware of Conopco's plans to relaunch VICL. Accordingly, it developed a private label product to compete with the revised VICL product. Together with Kessler, it developed a container for the product. In conjunction with Venture, it developed the labelling that would be affixed to the container. Soon after Conopco initiated the VICL relaunch, Ansehl began marketing its product through several retailers, including Venture.

In March 1990, Conopco sent Venture a letter asserting that the Ansehl product infringed the proprietary rights Conopco had then accumulated in the revised VICL product (trademark and trade dress). In May 1990, May, Venture's parent, responded denying infringement of those rights.

On July 3, 1990, Conopco's patent on the new lotion formula, the '179 patent, issued. The sole independent claim in that patent is claim 1, which reads:

  1. An aqueous cosmetic emulsion comprising:

    i) an isoparaffin;

    ii) a C sub8 -C sub22 alkyl phosphate salt;

    wherein the isoparaffin and alkyl phosphate salt are present in a respective weight ratio of from about 40:1 to about 1:1, and said emulsion having a viscosity ranging from 35 to about 90 Brookfield units as measured with a Brookfield Viscometer Model LVT using a # 4 spindle rotating at 60 rpm at 25? C.

    In August 1990, Conopco filed suit against the defendants in the District Court for the Eastern District of Missouri. Conopco's complaint contained six counts. Count one alleged infringement by defendants Ansehl, May, and Venture of the '179 patent; count two alleged infringement by Ansehl, May, and Venture of the VASELINE and INTENSIVE CARE trademarks; count three alleged trade dress infringement by all defendants; and counts four through six were state law counts.

    In March 1991, in the decision that gave rise to Conopco's cross-appeal, the District Court dismissed without prejudice the state law counts (counts four through six) Conopco had asserted. The court found that complete diversity was lacking between plaintiff and defendants and that the only basis upon which it could conceivably exercise jurisdiction was pendent jurisdiction. However, it declined to exercise such jurisdiction on the ground that the state law issues would predominate over the federal issues.

    On January 2, 1992, the court, in the decision that gave rise to defendants' appeals, entered after a bench trial judgment in favor of plaintiff. Conopco, Inc. v. May Dep't Stores Co., 784 F.Supp. 648, 24 USPQ2d 1721 (E.D.Mo.1992). The court found that defendants Ansehl, Venture, and May willfully infringed the '179 patent, both literally and under the doctrine of equivalents, and that all defendants had willfully infringed plaintiff's trademark and trade dress rights. The court found the case to be exceptional, and that enhanced damages were warranted. The court awarded plaintiff trebled damages of $2,397,579 for the patent infringement, and trebled damages of $281,622 for the trademark and trade dress infringement. The court also awarded costs, attorney fees, prejudgment interest, a recall order, and an injunction. It also imposed joint and several liability on the defendants. These appeals followed.

    DISCUSSION

    1. Patent Infringement Issues

  2. We first address the literal infringement issue. Defendants argue that the court erred in its analysis of this issue because it adopted an unduly broad interpretation of the "about 40:1" limitation in the '179 claims. For example, the trial court considered a formulation with a ratio of 162.9:1 to be within the literal scope of the claim, in part on the theory that "about" allows a range to

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    extend as far as the prior art would allow. 1 Had the court interpreted that limitation properly, argue defendants, it would have reached the opposite conclusion on the literal infringement question.

    Defendants are correct. There is simply no basis for interpreting the phrase "about 40:1" to encompass the 162.9:1 ratio. That would imply an expansion of the term "about" to encompass over a fourfold increase in the specified numerical ratio and thus would ignore the ordinary meaning of that term. 2 Although, as we have repeatedly said, a patentee can be his own lexicographer, the words of a claim "will be given their ordinary meaning unless it appears that the inventor used them differently." ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579, 6 USPQ2d 1557, 1560 (Fed.Cir.1988) (citing Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759, 221 USPQ 473, 477 (Fed.Cir.1984)). The '179 specification and prosecution history do not support the argument that the inventors used this term differently from its ordinary meaning. For example, the specification...

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