Carter-Wallace, Inc. v. Gillette Co.

Citation211 USPQ 499,531 F. Supp. 840
Decision Date08 May 1981
Docket NumberCiv. A. No. 77-3186-MA.
PartiesCARTER-WALLACE, INC., Plaintiff, v. The GILLETTE COMPANY, Defendant.
CourtU.S. District Court — District of Massachusetts

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Herbert P. Kenway, Kenway & Jenney, Boston, Mass., for plaintiff.

Robert W. Furlong, Gregory A. Madera, and Frank P. Porcelli, Fish & Richardson, Boston, Mass., for defendant.

OPINION

MAZZONE, District Judge.

STATEMENT OF THE CASE

This is an action for patent infringement between the makers of two popular aerosol anti-perspirant products. The plaintiff, Carter-Wallace, Inc. (Carter-Wallace), is a Delaware corporation with its principal place of business in New York. Defendant, The Gillette Company (Gillette), is a Delaware corporation with its principal place of business in Massachusetts.

Carter-Wallace is the owner of United States Letters Patent No. 3,968,203, issued on July 6, 1976. The patent application was initially filed on October 1, 1965, and refiled in 1969. The patent is entitled "Aerosol Astringent Composition" and covers Carter-Wallace's aerosol anti-perspirant, "ARRID EXTRA DRY." A copy of the patent is attached to this opinion as Appendix A.

Carter-Wallace charges that Gillette has willfully infringed Claims 1, 2 and 5 of the patent by making, using and selling fifteen different aerosol anti-perspirant packages embodying the product invention set forth in the above claims. The most commonly known products charged as infringing are marketed by Gillette under the name "RIGHT GUARD" anti-perspirant. Carter-Wallace seeks damages for past infringement, an injunction against future infringement, and attorney's fees under 35 U.S.C. § 285.

Gillette denies that it has infringed the patent in suit, and claims that the patent is invalid both for lack of novelty under 35 U.S.C. § 102(a), (b), (e) or (g), and obviousness under 35 U.S.C. § 103. The defendant also claims that the patent is invalid under 35 U.S.C. § 112 because: (1) the claims are vague and indefinite and do not claim the invention in sufficiently specific terms, (2) the patent fails to disclose the best mode of practicing the invention in that it does not disclose a valve for use in the claimed invention, (3) the patent claims more than was invented by including in the claims the container and the valve as well as the composition. Finally, the defendant claims that patent is invalid or unenforceable because the applicants withheld from the Patent Office certain prior art and information as to the relevance of prior art. Gillette also seeks an award of attorney's fees under 35 U.S.C. § 285.

Briefly, then, Carter-Wallace's theory of the case is that two inventors, George Spitzer and Lloyd Osipow, invented a novel aerosol anti-perspirant composition which satisfied a long felt consumer need. The claimed invention led to the development of ARRID EXTRA DRY and eventually to the issuance of the patent in suit. Carter-Wallace claims Gillette's RIGHT GUARD and other products are nothing more than thinly disguised copies of its ARRID formulations, and defendant is therefore liable for infringement.

While Gillette asserts a number of defenses, the thrust of its case is that the Spitzer-Osipow discovery lacks the necessary features of a patentable invention, in that it simply contains ingredients known in the art performing their usual functions. At best, Gillette asserts, the inventors stumbled upon a particular ratio of these known ingredients which produced surprisingly good results. Even these results, however, Gillette claims were obvious in view of the teachings of the prior art. Finally, Gillette argues that, if the patent in suit were valid, it would be so only because the particular ingredients and numerical limits claimed in the patent were critical. Because its challenged formulations include certain slightly different ingredients, Gillette claims it cannot be held liable for infringement.

The case was tried to the court without a jury. The record consists of the trial testimony, various depositions, and numerous other exhibits. Pursuant to Fed.R.Civ.P. 52(a), the following constitute our findings of fact and conclusions of law.

BACKGROUND OF THE CASE

Aerosol products have become common in the United States since World War II. They are generally sold in the form of valved containers in which a product to be dispensed and a liquefied propellant1 are held under pressure. When the valve is opened, the propellant and the product are expelled as a spray. The propellant evaporates in the atmosphere so that only the product reaches the area being sprayed. The amount of product deposited on the surface, and the spray pattern, depend upon many variables including the type of valve used, the amount and type of propellant, the nature and relative concentration of ingredients in the product, and the length of time the valve remains open. The convenience of aerosol packages has led to their use in dispensing insecticides, cosmetics, paints and, more recently, deodorants and anti-perspirants.

Perspiration odor is not unpleasant in itself, rather, the decomposition by bacteria of organic matter contained in perspiration causes malodor. This unpleasant odor can be eliminated by either reducing underarm perspiration or preventing decomposition of the organic matter. Deodorants destroy the bacteria or simply mask the unpleasant odor which it causes. Anti-perspirants, on the other hand, check both wetness and malodor by actually reducing perspiration.2 A perfume or fragrance ordinarily included in an anti-perspirant composition masks whatever odor is caused by the remaining perspiration, which is never completely eliminated.

Anti-perspirants in the form of creams and lotions first became popular during and immediately after World War II. The active ingredient, usually aluminum chlorohydrate, was present in such products in the form of an aqueous solution. In order to be effective, aluminum chlorohydrate must be dissolved in water, producing aluminum ions. However, aluminum chlorohydrate salt, when dissolved in water, produces an acidic solution which is corrosive to ordinary metals. The salt is also hygroscopic, that is, it has the tendency to absorb water from the atmosphere. As a result, initial efforts to develop an aerosol anti-perspirant were hampered by serious problems such as can corrosion and valve clogging. Clogging results when residual alcohol in the valve orifice evaporates, leaving behind aluminum salt which absorbs water from the atmosphere and recrystallizes.

In 1961, Gillette introduced RIGHT GUARD aerosol deodorant. RIGHT GUARD did not contain aluminum chlorohydrate. It prevented malodor from perspiration but did not reduce perspiration itself. RIGHT GUARD was a solution-type product like the early insecticides and contained no solid powder. It became a great commercial success, proving that the public would accept an aerosol underarm product even though a mildly unpleasant sensation was caused by the cooling effect of the spray. However, while aerosol deodorants were acceptable, they did not provide lasting protection against perspiration and body odor, and did cause irritation in the armpit, especially after shaving. Because it had long been recognized that the public preferred anti-perspirants to deodorants, the search by cosmetics manufacturers for an aerosol anti-perspirant intensified after the introduction of RIGHT GUARD aerosol deodorant. An aerosol anti-perspirant would be extremely successful, it was felt, because it combined the effectiveness of anti-perspirant creams and lotions with the ease and convenience of application of the aerosol.

To avoid the corrosion problem, researchers looked for an anhydrous, i.e., water-free liquid medium in which to dissolve the aluminum salt. Special aluminum compounds designed to be soluble in alcohol were developed. While these formulations reduced corrosion, other difficulties, such as valve clogging, prevented any product from achieving widespread consumer acceptance.

In addition to aerosol solutions, researchers experimented with other types of aerosol systems, in which small solid particles of aluminum chlorohydrate were suspended or dispersed in a liquid inside the aerosol package. Aerosol packages containing aluminum chlorohydrate particles suspended in a propellant and stabilized with small quantities of conventional suspending agents produced a spray of dry aluminum chlorohydrate powder. These systems effectively avoided can corrosion but experienced other problems, including settlement, valve clogging, billowing or dusting, and product inhalation. In addition, these early dry powder sprays were no more effective in stopping perspiration than aerosol deodorants.3

During this period, both Carter-Wallace and Gillette attempted, without success, to develop an effective, commercially acceptable aerosol anti-perspirant. Both believed that the breakthrough, when it came, would involve the solution technology described above. Against this background, George Spitzer, in 1964, began to take an active interest in the growing underarm products market.

Since Gillette's main defense is that the claimed invention was obvious, our analysis must begin with a review of the relevant prior art references. Our task is to determine what the prior art references would have revealed to a person of ordinary skill in the art at the time the claimed invention was made.

PRIOR ART

We find that the relevant art encompasses both anti-perspirant chemistry and the general field of aerosol technology, and includes patents as well as commercial and scholarly research. We set out below those references which we regard as most pertinent, and note that other references were also considered, but further discussion is sacrificed to the need to limit this opinion to a reasonable length.

DeGiacomo Article

In an article published in September, 1956 in a publication...

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3 cases
  • Pall Corp. v. Micron Separations, Inc., Civ. A. No. 86-1427-Y.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • April 24, 1992
    ...436 F.Supp. 704, 729 (D.Del.1977) (citing Farmhand, Inc. v. Craven, 455 F.2d 609 8th Cir.1972); see also Carter-Wallace, Inc. v. Gillette Co., 531 F.Supp. 840, 873 (D.Mass.1981), aff'd in part, rev'd in part, 675 F.2d 10 (1st MSI very well knew the commercial success of the Pall patent and ......
  • Carter-Wallace, Inc. v. Gillette Co., CARTER-WALLAC
    • United States
    • United States Courts of Appeals. United States Court of Appeals (1st Circuit)
    • April 7, 1982
    ...the formula for an aerosol antiperspirant underarm spray called ARRID EXTRA DRY (Arrid). After a jury-waived trial, the district court, 531 F.Supp. 840, in a comprehensive well-written opinion found and ruled that Carter-Wallace's patent was invalid for obviousness and lack of criticality. ......
  • CARTER-WALLACE v. Gillette Co., Civ. A. No. 77-3186-MA.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • June 15, 1982
    ...my finding on criticality as well because it was so intertwined with the obviousness issue. My original opinion was reported at 531 F.Supp. 840 (D.Mass. 1981). The primary basis on which my opinion rested was the failure of Carter-Wallace to establish the criticality of the numerical limits......

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