National Hairdressers'& C. Ass'n v. Philad Co.

• Decision Date: 15 November 1941
• Docket Number: Civ. A. No. 155.
• Citation: 41 F. Supp. 701
• Parties: NATIONAL HAIRDRESSERS' & COSMETOLOGISTS' ASS'N, Inc., et al. v. PHILAD CO.
• Court: U.S. District Court — District of Delaware

41 F. Supp. 701

NATIONAL HAIRDRESSERS' & COSMETOLOGISTS' ASS'N, Inc., et al. v. PHILAD CO.

Civ. A. No. 155.

District Court, D. Delaware.

October 14, 1941.

As Modified on Denial of Rehearing November 15, 1941.

COPYRIGHT MATERIAL OMITTED

George B. Finnegan, Jr. (of Morgan, Finnegan & Durham), of New York City, and E. Ennalls Berl (of Southerland, Berl, Potter & Leahy), of Wilmington, Del., for plaintiffs.

Arthur J. Hudson (of Kwis, Hudson & Kent), of Cleveland, Ohio, and Herbert L. Cohen, of Wilmington, Del., for defendant.

BIGGS, Circuit Judge.

The amended complaint at bar asserts two causes of action. The plaintiffs, the National Hairdressers' and Cosmetologists' Association, Inc., and Fred The Hair Stylist, Inc., seek a declaratory judgment adjudging Josef Mayer's¹ Reissue Patent No. 18,841 to be invalid and a declaration that this patent is not infringed by Fred or the members of National.² Fred and National seek also to enjoin the defendant from asserting that the members of National infringe the Mayer patent. Upon the alleged second cause of action the plaintiffs seek to enjoin the Philad Company from bringing any suits alleging infringement of the Mayer patent and to enjoin Philad from attempting to collect license fees under the patent "* * * by acts of harassment, intimidation or false impersonation * * *" as alleged in the complaint. Philad filed a counterclaim claiming that Fred is guilty of infringement of the patent and asking for relief.

The amended complaint is drawn as a class action. National is a non-profit membership corporation organized under the laws of New York. Fred is also a New York corporation, and conducts a hairdressing shop and beauty parlor, practising the so-called "Croquignole" hair waving process. Fred is a member of National. The amended complaint alleges that the plaintiffs are representatives of a class so numerous that it is impracticable to bring all its members before the court; that this class consists of approximately five thousand co-members and affiliated members substantially all of whom have been charged by the defendant with infringement of the Mayer patent. The amended complaint further states that there are common questions of law and fact affecting the rights of the parties constituting the class designated and that common relief is sought. Before determining the question as to whether or not the suit may be maintained as a class suit, it is necessary to pass upon the question of whether or not the relief sought in the complaint may be granted. To do this it is necessary to determine the validity of Mayer's reissue patent.

As to Validity of the Patent Sub Judice.

Reissue Patent No. 18,841 in suit is the second reissue of Patent No. 1,622,957 (following Reissue Patent No. 17,393 as the first reissue) for "Waving Process and Apparatus". Patent No. 1,622,957 was issued on application S.N. 135,439 filed September 14, 1926. This application was filed in the Patent Office as a division of an earlier application filed March 19, 1925 for "Heater, Waving Process and Apparatus", S.N. 16,784. I must decide first whether application S.N. 135,439 which ripened into Patent No. 1,622,957 from which stems the patent at bar was a true and legal division of Mayer's original application, S.N. 16,784.

The plaintiffs contend that the reissue patent and particularly claims 3, 4 and 5³ thereof are invalid and void. Claim 5 is typical of the last three claims. It is as follows: "The process of waving hair upon the human head which comprises gripping a flat strand of hair adjacent to the scalp with a moisture-tight clamp, winding said strand spirally from its end upon a rod nearly to said clamp, enclosing said strand together with moisture in a moisture retaining envelope, enclosing said strand and envelope within a heater extending about the same to the clamp, and then causing the heater to supply heat to the strand." The specifications of the patent refer to the two well-known means of hair curling or hair waving in use; viz., by use of the spindle-wind (referred to also as the corkscrew or helical wind) and by the Croquignole wind. In respect to them Mayer states, "In the older or `spindle wind' type of waving, a strand of hair is coiled from its roots helically upon a curling rod, while in the newer or `Croquignole' style of waving, which, as it is applied to the human head, is a development of the present invention, the hair strands are wound from their free ends towards the scalp, turn upon turn, upon a curler. The hair in the older spindle type of waving is bunched together to form a substantially round strand, while in the Croquignole style of waving, in accordance with my present invention, the hair is spread out and held in substantially a single plane to form a flat strand."

The specifications go on to say that in every case after winding, by the spindle wind as well as by Croquignole wind, the hair must be heated in order to make the curl or wave permanent. It may be stated that generally the spindle wind results in a curl and the Croquignole in a wave. Mayer does not claim to be the inventor of the Croquignole wind. In his specifications he calls attention to the two existing methods of hair curling or hair waving.⁴ The elements of novelty in Mayer's patent are set forth in the last sentence of that portion of the specifications quoted immediately above and consist in the forming of a flat band of hair, putting a clamp around the band near the scalp and winding that band (under tension made possible by the clamp) from the tip end of the strand of hair toward the scalp; viz., by the Croquignole wind.⁵ In respect to the time of applying the clamp, Mayer states in his specifications, "The strand of hair is separated from the remaining hair and then the clamp applied. This holds the strand substantially at right angles to the scalp whereby it may receive further treatment as hereinafter fully described."⁶ Mayer then sets forth the Croquignole method of winding from the end of the hair to the scalp, turn upon turn, upon a curler.

Accepting the claims and the specifications of the patent at face I find three essentials in the Mayer process preceding the wetting and heating of the hair. These essentials are: (1) dividing the hair into flat strands; (2) fastening upon one of these strands, close to the scalp, a clamp; and (3) winding the strand from its end to a point near the clamp upon a rod. Are all of these elements set forth in the original Mayer application S.N. 16,784 as they must be if the divisional application S.N. 135,439 and the patent sub judice stemming from it are to be deemed valid? I conclude that they are not.

In his original application of March 19, 1925, S.N. 16,784, Mayer sets forth as one object of his invention the elimination of all binding. He states that to accomplish this end he first applies "a clamping device" to the hair roots. He says that after the application of the clamping device the hair is wetted with a specified solution and "* * * then wound over a suitable curler * * *". Mayer speaks of hair waving in his application rather than of hair curling, but the fact remains that nowhere in the application does Mayer refer to Croquignole winding after clamping, viz., winding the hair over and over upon itself from the tip end of the strand toward the scalp after clamping. The claims of the original application are for a process which includes the use of a clamp, the wrapping of the hair into a protective covering and the heating of it by electricity, but it was not until the filing of the divisional application S.N. 135,439, upon September 14, 1926 that Mayer made reference to Croquignole winding. In this application he refers to separating a strand of hair from that remaining, applying a clamp to the strand and provides that, "* * * the hair should be wound from the end toward the scalp on a rod or cylindrical support * * *". Patent No. 1,622,957 issued upon this divisional application. I note, however, that even in the claims of this patent when issued Mayer makes no reference to Croquignole winding unless it be by indirection. For example, in the third claim of No. 1,622,957 he speaks of winding the hair so that the axis of the wound hair will be substantially parallel with that part of the head from which the hair extends. In Croquignole winding the hair is not only wound from the tip end toward the scalp, but it is also wound around and around upon itself as opposed to the older spindle winding, which was performed helically, that is to say by winding the hair like a screw around the spindle. It is notable that it is not until we reach application S.N. 346,174, filed March 11, 1929, upon which first Reissue Patent No. 17,393 was issued, that we come to the actual claims involved in the patent in suit. I cite this last fact to indicate that Mayer's process was subject to evolution in Mayer's mind by which he finally arrived at the disclosures of application S.N. 346,174, and finally showed Croquignole winding of a flat strand of hair toward a clamp binding the strand closely to a position near the scalp.

Based largely upon the testimony of Samuel Steek, a professional hair dresser of experience, Philad makes a number of contentions as to inferences which may be drawn from Mayer's original application. Philad argues that from the application itself it may be inferred that Mayer was referring to Croquignole winding after clamping in his application. I find these contentions untenable. Conceding that patents and applications must be construed by those skilled in the art, I conclude that if Mayer did have Croquignole winding after clamping in mind when he filed his first application, he did not disclose this. The defendant argues that in stating that the hair should be "wound over a suitable curler" Mayer referred not to spindle or helical winding but to Croquignole winding, viz., from the end of the strand over and over upon itself...