Popeil Brothers, Inc. v. Schick Electric, Inc.

• Citation: 494 F.2d 162
• Decision Date: 21 March 1974
• Docket Number: No. 73-1050 to 73-1053.,73-1050 to 73-1053.
• Parties: POPEIL BROTHERS, INC., Plaintiff-Appellant, v. SCHICK ELECTRIC, INC., et al., Defendants-Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

494 F.2d 162 (1974)

POPEIL BROTHERS, INC., Plaintiff-Appellant, v. SCHICK ELECTRIC, INC., et al., Defendants-Appellees.

Nos. 73-1050 to 73-1053.

United States Court of Appeals, Seventh Circuit.

Argued November 28, 1973.

Decided March 21, 1974.

Dugald S. McDougall, Melvin M. Goldenberg, George B. Christensen, Chicago, Ill., for plaintiff-appellant.

George R. Clark, Neil M. Rose, Walther E. Wyss, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., for Sunbeam Corp. and Northern Electric Co.

Gerald Levy, Kane, Dalsimer, Kane, Sullivan & Kurucz, New York City, John D. Dewey, Lockwood, Dewey, Zickert & Alex, Chicago, Ill., for Schick Electric, Inc. and Schick Service, Inc.

Edward W. Osann, Jr., James B. Muskal, Wolfe, Hubbard, Leydig, Voit & Osann, Ltd., Chicago, Ill., Charles R. Miranda, Bridgeport, Conn., for Sperry Rand Corp.

Arlie O. Boswell, Jr., Hibben, Noyes & Bicknell, Chicago, Ill., for Aldens, Inc.

Before CLARK, Associate Justice,^* GRANT, Senior District Judge,^** and NOLAND, District Judge.^***

NOLAND, District Judge.

Popeil Brothers, Inc., the owner of U. S. Patent No. 3,565,083, brought suit in the District Court seeking injunctive relief and damages charging each of the defendants with infringement of and inducement to infringe the patent in suit.¹ The defendants denied the infringement allegations and asserted that the patent in suit was invalid.

Following a trial before the court without a jury, the District Court entered findings of fact and conclusions of law and dismissed the complaints, holding that the patent in suit was invalid as anticipated by prior art and for obviousness, that the plaintiff misused the patent, and that the defendants neither infringed it nor induced its infringement. The plaintiff appealed.

The issues presented by the plaintiff's contentions on appeal are:

(1) Whether the District Court erred in finding and concluding that the Popeil patent was anticipated by prior Japanese publications, the Churchill U.S. Patent No. 1,809,510 and the Churchill Canadian Patent No. 295,443.

(2) Whether the court erred in finding and concluding that the Popeil patent was obvious under Section 103 of the Patent Act.

(3) Whether the court erred in finding and concluding that the defendants neither infringed nor induced infringement of the Popeil patent.

(4) Whether the court erred in finding that plaintiff misused the patent in suit.

The cause was heard on the pleadings, stipulations, answers to requests for admission, testimony of witnesses, including expert witnesses, depositions and exhibits on the basis of which the court made fifty-nine detailed findings as to the factual issues presented. In accordance with Rule 52(a) of the Federal Rules of Civil Procedure (28 U.S.C.A.) the trial court's findings of fact may not be set aside unless clearly erroneous. The scope of our review of such findings is therefore limited to a determination of whether they are clearly erroneous. Wahl v. Carrier Manufacturing Co., 452 F.2d 96, 99 (7th Cir. 1971); Reese v. Elkhart Welding and Boiler Works, Inc., 447 F.2d 517, 520 (7th Cir. 1971); George R. Churchill Company v. American Buff Co., 365 F. 2d 129, 130 (7th Cir. 1966); Wahl v. Carrier Manufacturing Co., 358 F.2d 1, 3 (7th Cir. 1966).

"If they find support in the evidence, albeit they involve resolution of conflicting testimony, we are bound thereby and there remains but the question of whether or not the court applied the correct legal criteria in reaching the ultimate conclusion it did. Absent a definite or firm conviction that a mistake has been made we must affirm." Minnesota Mining and Manufacturing v. Permacel-LePage\'s, Inc., 334 F.2d 820, 822 (7th Cir. 1964). See Briggs v. M. & J. Diesel Locomotive Filter Corp., 342 F.2d 573, 574 (7th Cir. 1965).

The Popeil patent is directed to a method of setting hair by wrapping it around a hair curler previously moistened and heated by immersing it in an atmosphere of steam. The sole claim of the patent in suit relevant to this action is claim 1, which states:

"1. In the method of curling hair by using a cylindrical curler in which the hair is wound tightly on the curler and fixed in such tightly wound engagement until the hair is curled, the improved steps of

preheating the cylindrical curler in a steam chamber out of contact with any boiling water therein,

removing the heated curler from the steam chamber after its exterior has attained its maximum effective moisture content of retained distilled water, and

promptly wrapping a strand of hair about the curler in tight engagement thereby entrapping the distilled water retained on the curler, whereby

the moisture transfer at the elevated temperature is from the inside of the tightly wound curl towards the outside atmosphere thereby exposing the hair of the curl to the heat and moisture effect of the entrapped distilled water at the elevated temperature."

While the plaintiff also holds a U.S. patent on a hair curling device designed for use with the patented method, only the method patent is at issue in the instant case. The defendants are manufacturers or distributors of hair curling devices which employ steam to heat and moisten curlers preparatory to placing them in the users' hair.

Plaintiff's primary contentions on appeal take issue with the District Court's findings as to the invalidity of its patent. The Trial Judge determined that the method claimed by the patent in suit was anticipated by prior art. The defense of anticipation arises from 35 U.S.C. § 102(a). In essence Section 102(a) requires that a method or device, in order to be patentable, be novel. Under the statute such novelty is lacking where a purported invention has been anticipated by a foreign or domestic patent or printed publication or domestic knowledge or use prior to the inventor's date of invention. A previous patent, printed publication or domestic product anticipates a purported invention only where, except for insubstantial differences, it contains all of the same elements operating in the same fashion to perform an identical function. Shelco, Inc. v. Dow Chemical Company, 466 F.2d 613, 614-15 (7th Cir. 1972); Dole Valve Company v. Perfection Bar Equipment, Inc., 419 F.2d 968, 971 (7th Cir. 1969); Amphenol Corporation v. General Time Corporation, 397 F.2d 431, 438 (7th Cir. 1968).

With respect to the issue of anticipation, Judge Bauer made ten findings of fact which are challenged by the plaintiff. The Court found that the advantages recited in the patent in suit to distinguish the claimed method over cited prior art are without factual foundation, (Finding 43) and that in fact the difference between the method claim of the patent in suit and the prior art admitted by the plaintiff resides solely in heating the curlers in an atmosphere of steam instead of boiling water. (Finding 37)

Plaintiff attempts to refute Findings 43 and 37 through its claim that the use of steam rather than boiling water to heat hair curlers has the advantage of moistening the user's hair with mineral-free distilled water. However, the inventor of the contested method, Samuel J. Popeil, admitted that no tests had been made to determine the truth of this assertion and that it was in fact merely assumed. Additionally, as stated in the District Court's unchallenged Finding 27, only 1/10,000th to 1/1000th of a gram of moisture per curler is necessary to make a good curl. There is no evidence that the mineral content of such minute amounts of moisture would significantly affect the user's hair. The purported advantage is a distinction without a difference. The issue of anticipation by prior art is not determined by insubstantial distinctions between a purported invention and prior art. A purported invention is anticipated by prior art "if the general aspects are the same and the difference in minor matters is only such as would suggest itself to one of ordinary skill in the art." Amphenol Corporation v. General Time Corporation, supra; Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 1234 (7th Cir. 1969).

From the District Court's finding that the sole difference between admitted prior art and the method claim of the Popeil patent lies in heating curlers in steam rather than boiling water, it is clear that any prior art teaching of heating curlers in an atmosphere of steam as disclosed by the Popeil method claim would invalidate the patent in suit. On this point the Court found that the Patent Office, in allowing the Popeil patent, apparently did not consider certain prior art, the U.S. Churchill patent, the Canadian Churchill patent and the National hair curler instruction book and advertising pamphlet (the Japanese documents), which are each more pertinent to the subject matter claimed in the patent in suit than the prior art cited by or to the Patent Office during the prosecution of the patent. (Finding 26) The Court found that the Churchill patents not only disclose the concept of heating curling irons with steam, but in fact teach every step of the method claim of the Popeil method patent. (Findings 40, 41 and 46) Additionally the Court found that the Japanese documents were distributed to numerous members of the Japanese public prior to the date of invention of the Popeil method patent and that they disclose the method steps of the patent in suit. (Findings 39 and 45)

In response to these findings, plaintiff asserts that the Churchill patents and the Japanese documents are not prior art more pertinent to the subject matter claimed in the patent in suit than the prior art cited by or to the Patent Office during the prosecution of the patent in suit. Plaintiff asserts that the Churchill patents merely exemplify the prior art teaching that lever type curling irons may be heated in boiling water. On the contrary, however, claim 1 of the Churchill Canadian patent specifically refers to heating curling irons in steam.² It is also argued that the Churchill patents do not disclose...