Marshall v. PROCTER & GAMBLE MANUFACTURING COMPANY, Civ. A. No. 9207.

• Decision Date: 08 November 1962
• Docket Number: Civ. A. No. 9207.
• Citation: 210 F. Supp. 619
• Parties: Donald E. MARSHALL, Plaintiff, v. The PROCTER & GAMBLE MANUFACTURING COMPANY and The Procter & Gamble Distributing Company, Defendants.
• Court: U.S. District Court — District of Maryland

210 F. Supp. 619

Donald E. MARSHALL, Plaintiff, v. The PROCTER & GAMBLE MANUFACTURING COMPANY and The Procter & Gamble Distributing Company, Defendants.

Civ. A. No. 9207.

United States District Court D. Maryland.

November 8, 1962.

John D. Alexander, Constable, Alexander & Daneker, Baltimore, Md., Ira Milton Jones and James R. Custin, Milwaukee, Wis., George B. White and Alfons Puishes, White & Puishes, San Francisco, Cal., for plaintiff.

William A. Grimes, Ober, Williams, Grimes & Stinson, Baltimore, Md., Dugald S. McDougall and Theodore R. Scott, Chicago, Ill., G. T. Delahunty and Gibson Yungblut, Cincinnati, Ohio, of counsel, for defendants.

R. DORSEY WATKINS, District Judge.

Donald E. Marshall (Marshall or plaintiff) filed a three count complaint against The Procter & Gamble Manufacturing Company and The Procter & Gamble Distributing Company (Procter & Gamble or defendants). Defendants answered and counterclaimed for declarations the converse of plaintiff's claims. During the course of the trial, the counterclaims were abandoned.

The third cause of action was for alleged "False Marking and Misrepresentation in violation of Title 15 U.S.C. § 1125(a) (Lanham Act). Defendants moved that the third cause of action be dismissed for failure to state a claim against defendants upon which relief could be granted. After briefing and argument, the motion to dismiss was granted without prejudice. An amended third count was filed, on which a hearing was had. As a result of the comments of the court, although without formal ruling, plaintiff filed a second amended third count. Following further briefing and argument, the second amended third count was dismissed without leave further to amend, for the reasons stated in Marshall v. The Procter & Gamble Manufacturing Company, et al., D.Md.1959, 170 F.Supp. 828.

The second cause of action was for breach of an alleged confidential relationship. This count was submitted to the jury on interrogatories as to whether or not, during the critical period, plaintiff disclosed to defendants anything defendants did not already know with regard to the processing of certain soap bars; if so, was this disclosed in confidence; if so, was such information used by defendants; and in any event, did the plaintiff have the right to maintain an action on his own behalf with respect to such disclosure and use.¹ The jury answered the first interrogatory in the negative, making it unnecessary to consider the other three; and the court directed the Clerk to enter judgment for the defendants on the second cause of action.

The first cause of action² was for alleged infringement of United States Patent 2,724,702, issued³ on November 2, 1955 on Application No. 447,411, filed August 2, 1954, and claimed to be a continuation-in-part of Application No. 271,060 filed February 11, 1952 and now abandoned. Defendants filed the usual defenses of lack of invention; prior public use; lack of novelty in view of the prior art; and indefiniteness of the claims and disclosures.

The patent in suit is for "Method of Improving and Simplifying the Cold Milling of Soap and Products Obtained Thereby."

Soap is essentially the product of the neutralization of fatty acids (e. g., tallow, grease, certain plant and marine oils) with a caustic solution, usually of potash or soda. The first domestic production appears to have been through the use of tallow and wood ashes to produce a soft potash soap, which was hardened by treating with salt.

In the commercial production of soap, one of the chief problems was the removal of glycerin resulting from the neutralization process. In the "kettle" process, which as its name implies involves heating the fatty acids together with caustics in a large container or kettle for perhaps a week, a separation occurs and the upper, or soap, layer is drawn off. In defendants' production of kettle soap, sodium hydroxide was used as the neutralizer; and defendants have never been able to obtain satisfactory results with a mixture of sodium hydroxide (hereafter sodium or soda) and the more expensive potassium hydroxide (hereafter potassium or potash) in the kettle.

More recently a hydrolizer process has been developed, under which the fatty acids are "split" with water, which removes the glycerin. The resulting fatty acid can then be neutralized with straight sodium hydroxide, straight potassium hydroxide or any mixture of the two.

If the soap produced by either method is heated, or maintained at a temperature sufficient to cause it to flow readily, it may be pumped into a steel frame (either directly, or after having been mixed with builders, fillers or other nonvolatile additives) where it is allowed to cool gradually (perhaps a week) and then cut into slabs and bars.

This "frame" soap has certain characteristics, some desirable, others undesirable from the standpoint of commercial use. Its crystalline structure, relatively uninfluenced by pressure, gives a homogeneous bar, the surface of which reacts uniformly to water. It is therefore not subject to the development of "wet cracks" on exposure to water and drying. Also, it does not tend to develop a thick, gummy layer when left in water. However, it is brittle and can be broken or chipped; it has a moisture content of about thirty per cent; and because of the heat to which it is subjected, it is not practicable to add expensive perfumes or other volatile material.

The raw soap, instead of being poured into frames, may be dried and solidified, and then mechanically worked or milled, by passages between rollers and by extrusion under pressure from screw-like propellants, or by other means by which the soap may be subjected to pressure and internal and external shearing action. As these milling operations may be conducted at room temperature or higher or lower, and as in practice the temperature does not exceed 100°F, there may be added to the soap in its initial stages volatile perfumes, and emollients. The moisture content of the finished product milled soap is usually 12-14%.

(A description of the then existing distinction between milled and frame soaps is to be found in Lever Bros. Co. v. Procter & Gamble Mfg. Co., 4 Cir., 1943, 139 F.2d 633, a case carefully considered by the court, but not otherwise found to be in point).

The soap ordinarily leaves the milling process in cylindrical form, and is cut into blanks roughly the length of the soap bar die. These blanks are then pressed into bar form, with whatever ornamentation or identification may be desired.

Because of the compacting which occurs in milling and extrusion, but which is not completely uniform, the hard, firmly compacted bar, especially if a soda soap, is subject to wet cracking when exposed to water, and dried. It was well known in the trade that wet cracking could be reduced, if not completely eliminated, by the addition of potash in amounts comparatively small as contrasted with the amount of soda soap. The addition of potash, however, had the effect of softening the bar of milled soap. A hardening effect could be introduced in various ways, as by milling the soap at a lower temperature; or by the use of base fats of a lower iodine value.

The defendants are large manufacturers of frame and milled soaps including the accused Camay milled soap. The plaintiff is a former employee of defendants, having held responsible positions with them over a period of seventeen years. He had also held responsible positions for five years with another large soap manufacturer. From 1945 to 1950, he had independently worked on soap making apparatus and soap products in his home laboratory. He then obtained financial backing, and began the development of soap-making machines on which he obtained patents, but none of which has been used on a commercial basis. It was in the course of this machine development work that he claims to have discovered, in December 1951, the invention here in suit.

For an understanding of the claimed invention rather substantial quotations from the specifications will be necessary, as well as the quotation of the full text of Claims 1, 2 and 3, the only claims in suit.

SPECIFICATION

"This invention relates to the art of refining soap preparatory to formation thereof into bars and cakes, and has as its purpose to provide a better bar of soap.

"The invention is predicated upon the discovery that a greatly improved bar of toilet soap with an unprecedented highly desirable waxy texture is obtained if the base material from which it is formed or pressed consists essentially of a mixture of fatty-acid potash soap and fatty-acid soda soap in proportions of between 5% and 30% potash soap, and between 95% and 70% soda soap, which mixture has been subjected in the solid state and at a temperature below the crystalline reversion point of the soap, to a mechanically produced internal shearing action great enough to convert the mixture to an ultramicrocrystalline state.

This state is evidenced by:

1 a rubbery translucent waxy texture,

2 good cold welding properties,

3 a substantially non-swelling gel structure,

4 freedom from objectionable soap dish jelly formation 5 high viscosity, and

6 excellent solubility and lathering action.

These are the qualities which have always been sought in fine toilet soaps but heretofore could not be attained except by the ultramilling technique taught in the Marshall Patent No. 2,619,680, and the Marshall et al. Patent No. Re. 23,760. Cold roller milling, which had long been the conventional way of mechanically refining the crystalline structure of toilet soap prior to the invention of the ultramilling methods covered in Patents Nos. 2,619,680 and Re. 23,760, was incapable of achieving the internal shearing action needed to attain an ultramicrocrystalline state.

"The ultramilling technique disclosed in the afore-said patent sic enabled ordinary fatty-acid soda soap to be reduced to an ultramicrocrystalline state, but required

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