Aerosol Research Company v. Scovill Manufacturing Co.

• Decision Date: 14 July 1964
• Docket Number: No. 14251.,14251.
• Citation: 334 F.2d 751
• Parties: AEROSOL RESEARCH COMPANY, Plaintiff-Appellee, v. SCOVILL MANUFACTURING COMPANY (A. SCHRADER'S SON DIVISION), Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

334 F.2d 751 (1964)

AEROSOL RESEARCH COMPANY, Plaintiff-Appellee, v. SCOVILL MANUFACTURING COMPANY (A. SCHRADER'S SON DIVISION), Defendant-Appellant.

No. 14251.

United States Court of Appeals Seventh Circuit.

July 14, 1964.

Will Freeman, Chicago, Ill., Howard J. Churchill, New York City, Bair, Freeman & Molinare, Chicago, Ill., Sheldon W. Witcoff, Chicago, Ill., of counsel, for defendant-appellant.

Herman Gordon, Dressler, Goldsmith, Clement, Gordon & Ladd, Chicago, Ill., Jack Shore, Chicago, Ill., of counsel, for plaintiff-appellee.

Before SCHNACKENBERG, CASTLE and KILEY, Circuit Judges.

REVISED OPINION ON REHEARING

CASTLE, Circuit Judge.

Aerosol Research Company, plaintiff-appellee, assignee of St. Germain Patent No. 2,881,808 relating to an aerosol valve brought suit in the District Court charging Scovill Manufacturing Company (A. Schrader's Son Division), defendant-appellant, with infringement of the patent and with unfair competition in the manufacture and sale of certain spray tips for aerosol valves. The defendant asserted invalidity of the patent, denied infringement, and denied plaintiff's allegations concerning unfair competition. Following trial of the issues the District Court entered findings of fact and conclusions of law which it incorporated by reference in the judgment order from which the defendant prosecutes this appeal. The court held Claims 2 and 3 of the patent valid and infringed by certain aerosol valves made and sold by the defendant. The court also held defendant's activities in connection with the manufacture and sale of spray tips similar to the plaintiff's to constitute unfair competition. The judgment order granted injunctive relief; ordered the ascertainment of plaintiff's damages by a designated special master, and directed that the damages be trebled; awarded plaintiff attorneys' fees and expenses of litigation, to be determined by the master; and directed defendant to relinquish to the plaintiff all dies, molds, fixtures and special tools which it owns or controls for the manufacture of the infringing valves.

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

(1) Whether the District Court\'s findings and conclusions that Claims 2 and 3 of the patent are valid, and are infringed by the accused devices, are clearly erroneous.

(2) Whether the scope of the injunctive relief granted is too broad.

(3) Whether the court erred in directing the defendant to relinquish its dies, molds, etc. to the plaintiff.

(4) Whether the court\'s determination that defendant is guilty of unfair competition represents the application of correct legal criteria.

(5) Whether the court erred in awarding treble damages and attorneys\' fees and expenses.

Insofar as the detailed findings of the court concern factual issues such as the use made of prior art, the nature of the improvement made over prior art, and the operational functions and characteristics of the patented structure and the accused devices, Rule 52(a) of the Federal Rules of Civil Procedure (28 U.S.C.A.) applies. The court heard the testimony of expert witnesses and observed the demonstrations made in connection with these matters. The scope of our review of such findings is therefore limited to a determination of whether or not they are "clearly erroneous". Armour & Co. v. Wilson & Co., 7 Cir., 274 F.2d 143, 156; Minnesota Mining and Mfg. Co. v. Technical Tape Corp., 7 Cir., 309 F.2d 55, 57. If they find support in the evidence 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 conclusions it did.

The record discloses that aerosol valves of the types here involved are small, relatively inexpensive devices that are secured to the top of a container in which there is material to be dispensed that is maintained under pressure within the container by a substance known as a propellant. Typical of such products are insecticides, deodorants, paints, hair sprays and shaving lathers. The valve operates to permit the user to dispense the material from the container through the valve, usually by applying finger pressure to the button or spray tip attached to the top of the valve, either by pushing down or pushing laterally to tilt the tip. Some valves are operable by both methods. Another distinction arises from the method used to place the propellant in the container. Most often the propellant is a composition which is a liquefiable gas which is partly liquid and partly gaseous in its normal state in the aerosol container. One method for the insertion of this type of propellant is known as "cold filling". This method presents difficulties and is expensive because it requires substantially all of the equipment employed to be thermally insulated and refrigerated. Disadvantages of cold filling are overcome by the method known as "pressure filling" which is used by most high-production manufacturers of aerosol dispensed products and has been widely accepted for several years. The procedure for pressure filling permits operating at room temperature and is employed by first measuring the quantity of material to be dispensed into the container, then sealing the valve onto the container and forcibly injecting the propellant into the container through the valve assembly by sealing an "adaptor" of the filling mechanism onto or over the valve and forcing the propellant through the adaptor and through the valve into the container.

All valves can be used for cold filling, since that method permits the valve to be sealed onto the container after the container has been filled. Pressure filling, however, requires the use of valves which permit the propellant to be forced through the valve in a direction opposite to the normal discharge or dispensing direction of flow. The discharge orifices are normally small, varying from .013" to .040" and where the propellant flow in pressure filling is restricted to these orifices the rate of propellant flow is reduced and the operation slowed.

The structure of the patent in suit consists of five primary parts. These are a valve housing; a rubber gasket; a one-piece valve body with a tubular stem; a spring; and a mounting cup. Additional parts are a dip tube extending downwardly into the container and the spray tip affixed to the upper portion of the stem. The dip tube is affixed to the open lower end of the valve housing or shell as a pipe to conduct the material to be dispensed into the valve. The housing or shell is secured in the pedestal of a mounting cup with a gasket of uniform thickness between the upper edge of the housing and the lower face of the top of the pedestal. The mounting cup also serves as the means by which the valve is mounted on the container and sealed to the open top of the container. A one-piece valve body with a tubular stem which is tiltable within the housing and which has an annular groove therein below the bottom of the gasket and an orifice forming a communication path or flow path between the groove space and the hollow interior of the stem, is normally pressed into sealing engagement with the lower surface of the gasket by a spring. The hollow stem portion projects through concentric holes in the gasket and the pedestal of the mounting cup. The button or spray tip is affixed to the stem externally of the valve, usually by a friction fit. The spray tip has a passage in it that will conduct the aerosol material to be dispensed to a terminal orifice or spray hole through which the material moves out into the air. The size and shape of the hole determine the pattern of the spray and the particle size of the material as it is sprayed. Since all of the parts are concentric, they are normally aligned with the opening at the top of the container.

Findings of the District Court, supported by substantial evidence, make it clear that the novel feature or element of the patent in suit which endows the combination claimed in Claims 2 and 3¹ with the quality of invention, which serves to distinguish those claims over the prior art cited and relied upon by the defendant,² and which enables the structure claimed to achieve the desirable characteristic of being pressure fillable at a high rate of propellant flow while utilizing an inexpensive one-piece valve body and stem and retaining operability by both push-down and lateral or tilt activation of the spray tip, is the annular groove in the upper surface of the valve body dimensioned to provide clearance for the inner edge of the sealing gasket upon downward deflection of such inner edge by external gas pressure. This feature furnishes a flow path for the propellant during pressure filling apart from or in addition to the discharge orifice in the one-piece valve body and stem.

None of the cited prior art discloses the above annular groove element or its equivalent into which the inner edge of the sealing gasket can be deflected or moved for pressure filling of the container through the valve assembly although all other elements of Claims 2 and 3 of the St. Germain Patent appear, singly or in various combinations, in the prior art. The valve of the patent in suit is a new combination resulting in an improved construction which accomplishes a new result and which is more efficient than the prior art devices. Such a construction is patentable. Copease Manufacturing Co., Inc. v. American Photocopy Equipment Co., 7 Cir., 298 F.2d 772, 781; Anderson Company v. Sears, Roebuck and Co., 7 Cir., 265 F.2d 755, 762-763.

The record discloses that at the time of the trial the patent in suit had not resulted in a commercial structure produced by the plaintiff. Plaintiff's president testified that "not until just recently" had the orifice been put in the valve body on a commercial basis; that plaintiff had been unable to find a moldmaker willing to undertake the job of putting this internal metering orifice in automatically in the molding...