SC Johnson & Son v. Carter-Wallace, Inc.

Citation614 F. Supp. 1278
Decision Date15 March 1985
Docket NumberNo. 81 Civ. 1081 (JFK).,81 Civ. 1081 (JFK).
PartiesS.C. JOHNSON & SON, INC., Plaintiff, v. CARTER-WALLACE, INC., Defendant.
CourtU.S. District Court — Southern District of New York
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Robert L. Baechtold, Henry J. Renk, Fitzpatrick, Cella, Harper & Scinto, New York City, Robert M. Newbury, Pattishall, McAuliffe & Hofstetter, Chicago, Ill., for plaintiff.

Jerome G. Lee, John F. Sweeney, Jay M. Brown, Morgan, Finnegan, Pine, Foley & Lee, Paul J. Weiner, Stephen R. Lang, Breed, Abbott & Morgan, New York City, for defendant.

AMENDED FINDINGS OF FACT AND CONCLUSIONS OF LAW

I. FINDINGS OF FACT

KEENAN, District Judge:

The Parties

Plaintiff S.C. Johnson & Son, Inc. ("Johnson") is a corporation organized and existing under the laws of the State of Wisconsin. It has its principal place of business in Racine, Wisconsin and is engaged in the business of making and selling consumer products, personal care products and, more importantly so far as this case is concerned, gel shaving products.

Defendant Carter-Wallace, Inc. ("Carter") is a corporation organized and existing under the laws of the State of Delaware. It has its principal place of business in New York, New York and is engaged in the business of making and selling consumer products, personal care products and shaving products.

Nature of the Case

This is an action brought by Johnson against Carter for alleged infringement of United States Letters Patent No. 3,541,581 ("the Monson Patent") and for alleged unfair competition and false advertising. The Carter products accused of infringement are RISE Super Gel-Regular and RISE Super Gel-Lime.

Johnson's claim for patent infringement is based on its ownership of the Monson Patent, issued November 17, 1970 to inventor James A. Monson, the patent which protects Johnson's Edge brand post-foaming shaving gel products, and on Carter's manufacture and sale of the accused RISE Super Gel post-foaming shaving gel products.

Johnson's claim for unfair competition is based on its use of its allegedly distinctive trade dress for shaving gel products sold under the Edge brand and Carter's use of an allegedly similar trade dress for shaving gel products sold under the RISE Super Gel brand.

Johnson's claim for false advertising is based on use by Carter of allegedly false or misleading advertising claims that the RISE Super Gel products are preferred by consumers two to one over the Edge products.

Carter's Answer denies the material allegations of the Complaint.

As affirmative defenses and counterclaims raised in the Answer and Pretrial Order with respect to the patent issues, Carter claims that it does not infringe the Monson Patent and that the asserted claims are limited by file wrapper estoppel; that the patent is invalid or unenforceable because (i) the subject matter was obvious to a person of ordinary skill in the art, (ii) the patent does not contain sufficient disclosure to enable a person of ordinary skill in the art to practice the invention, (iii) the asserted claims are overly broad and embrace inoperable gel post-foaming compositions and (iv) Johnson committed a fraud on the United States Patent and Trademark Office or breached its duty of candor and was guilty of inequitable conduct during the proceedings which led to the grant of the Monson Patent.

In response to the unfair competition and false representation claims, Carter alleges that the shape, configuration, appearance and some colors of the Edge packages are functional; that Carter's use of the RISE trademark and logo was prior to the Edge trade dress; and that Johnson's claims are precluded by unclean hands, estoppel, waiver or other equitable grounds because, Carter alleges, Johnson's own conduct has been inconsistent with the standards which it seeks to impose.

Carter counterclaims for a declaration that the Monson Patent is invalid and not infringed and Johnson's Reply denies the material allegations of the counterclaim.

Johnson further seeks an accounting for damages, injunctive relief and an award of attorney fees and Carter seeks an award of attorney fees.

By agreement of the parties, approved by the Court, the liability issues set forth above are to be resolved prior to any accounting on damages.

Pursuant to Judge Goettel's Orders of July 27, 1981 and August 27, 1982, the antitrust-related issues raised by Carter in its affirmative defenses and second counterclaim are reserved for a separate, subsequent trial, if such were necessary.

THE FACTS AS THEY RELATE TO THE PATENT ISSUES
Background and State of the Art Before the Monson Patent

In ancient times beards were generally considered as signs of strength and manhood. The beard was carefully cherished and its removal was viewed as degrading punishment. However, early Egyptians commonly shaved their beards except while in mourning and, with the Jews, an unkempt, neglected beard was viewed as indicative of grief. It is reported that in Greece the beard was universally worn until the 4th century B.C. Then Alexander the Great ordered his soldiers to shave as a precaution against being seized by their beards in combat.1

The historian, Pliny, writes that the first Roman to shave on a daily basis was the great 3d century B.C. general, Scipio Africanus. Over the span of history great men opted both ways. Most biblical figures, e.g., Christ, Moses are depicted as bearded. Caesar and Napoleon apparently shaved. Washington was clean-shaven; yet Lincoln, while President, was bearded. Grant and Lee were bearded. Wilson and Pershing were beardless.

With some notable exceptions, most western men abandoned the custom of wearing beards after World War I. The manufacture of razors and razor blades became big business in the United States. The Court well remembers how, in youth, he sat close by the radio, with the male elders, listening to the live blow-by-blow accounts of the great world heavy-weight championship bouts just before our entry into World War II. They were brought to the living room, directly from ringside, by a razor blade manufacturer.

But, no matter how great the man, or how sharp the blade, be it straight, safety or disposable, the shaving of the male beard is an excruciatingly painful task unless the face is abundantly moistened and lathered. (The Court notes that electric razors are an exception to this rule.)

Just as razors and razor blades became big business so too did the preparation of shaving soaps and shaving creams. That is what this case is about — two shaving creams, Edge and RISE Super Gel.

In 1967, Johnson became interested in entering the shaving cream field because it sought new products to help the company grow. Continued growth was considered important by Johnson management.

Till then Johnson had been active in the areas of floor waxes, furniture polishes, automotive waxes, insecticides and industrial products. Johnson had not sold any personal care products in the United States.

Work toward the development of a shave cream product was initiated at Johnson on March 14, 1967 by the issuance of a new product proposal approved by the Vice-President of Household Products, a Group Product Manager, the Vice-President of Research and Development and Samuel C. Johnson, President of the company.

The initial proposal specified a product "that goes on the face as a liquid for maximum wetting and then turns to a foam under its own power." When the proposal was made, it was only a concept, since Johnson had not done any development work on the idea.

A research project was started at Johnson in response to the new product proposal. The project number 480 was assigned for accounting and informative purposes. The objective of the project, i.e., a liquid shaving composition with delayed foaming properties, was reflected in the research and development project form in the same language used in the new product proposal form.

James A. Monson, a 27-year old chemist in Johnson's development group, was put in charge of the project. Prior to his assignment to that project, he had been authorized to devote large portions of his time to other exploratory projects of his own choice in the personal care field, such as creams and lotions.

State of the Art in 1967

In the 1960's, a number of companies were active in the shave cream market, including Gillette, Carter-Wallace and Colgate-Palmolive, among others. All of the aerosol shave products offered by those companies were basically the same. They were of the instant-foaming type. In those products, the propellant was a liquid which would separate out in the can. To dispense the product, the user had to shake the can to disperse the propellant, then press the button on the can. The liquid propellant provided the force to push the product out of the can. Then, as the product emerged, the liquid propellant would rapidly change to a gas and make the foam. None of those products was "post-foaming" and none was a gel.

In attempting to meet the project objectives, Mr. Monson first tried to prepare slow-foaming liquid compositions by replacing the conventional fast-boiling propellants with ones that boiled more slowly. The liquid products he obtained gave poor foams, caused burning of the skin, did not shave well, started foaming before they were applied to the face, and were too runny. To combat the runniness problem, he tried thickening up the liquid compositions. These products had less severe runniness problems if they were thickened a great deal, but the lather produced was dry and flaky and not good for shaving. They did not meet the objectives of the project. After about six or seven weeks of working with various modifications, Monson concluded that liquid products were not going to work. He then considered the approach of working with gels. It was approximately May 11, 1967 that Mr. Monson decided...

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