Brock v. Brown

• Citation: 138 F. Supp. 628
• Decision Date: 29 February 1956
• Docket Number: Civ. No. 7725.
• Parties: Jacob BROCK and Max Brock, a copartnership doing business under the name and style of American Character Doll Co. v. Leonard J. BROWN and Paul M. Brown, doing business under the name and style of Baltimore Products Co.
• Court: U.S. District Court — District of Maryland

138 F. Supp. 628

Jacob BROCK and Max Brock, a copartnership doing business under the name and style of American Character Doll Co. v. Leonard J. BROWN and Paul M. Brown, doing business under the name and style of Baltimore Products Co.

Civ. No. 7725.

United States District Court D. Maryland, Civil Division.

February 3, 1956.

Supplemental Opinion February 29, 1956.

COPYRIGHT MATERIAL OMITTED

Richard W. Emory and Venable, Baetjer & Howard, Baltimore, Md., and Albert J. Clark, Thomas J. Byrne, Jr., Drury W. Cooper, Jr., and Robert S. Dunham, New York City, for plaintiffs.

Nyburg, Goldman & Walter and Raphael Walter, Baltimore, Md., and Asher Blum, New York City, for defendants.

THOMSEN, Chief Judge.

United States Patent No. 2,675,644, for a "weeping doll" was issued on April 20, 1954, to plaintiffs as assignees of the applicants, Senior et al. Defendants, who are Baltimore toy dealers, purchased the accused doll from its manufacturer, Ideal Toy Corporation, of New York, which has assumed control of the defense of this suit and has raised the usual questions of validity and infringement.

The doll market is avid for novelties, especially dolls which simulate natural functions of a human baby. For many years there has been a demand for a weeping doll. Hoeffler and Hogan obtained patents for dolls in which the head is a hollow bulb to contain liquid, with slits for eyes, so that the liquid may run out of the slits. Konikoff obtained a patent for a doll in which liquid runs by gravity from a container to openings in the eyes if the doll is held in a certain position. Schachne obtained a German patent, Pages a French patent, and Gilbraith a United States patent for dolls in which a bulb, placed in the buttocks or back of the doll, may be directly squeezed or pressed with a lever to force liquid out of the eyes, after the manner of a syringe or water pistol. None of these dolls was a commercial success, principally because it was difficult for a child to control the amount of pressure applied, and the water tended to gush out of the eyes in a stream rather than in drops. The prior art also included Ideal's wetting doll, sold with diapers under the name "Betsy Wetsy", in which water is introduced through the mouth and flows out through a hole in the bottom of the body.

During the late 1940's Senior, in England, and Beebe, an employee of plaintiffs, in the United States, were working on the problem of a weeping doll. Both came up with the idea of raising the water to the eyes by an air pump, enclosed in a doll with a flexible body. Water introduced into a container through the mouth of the doll is raised to the eye openings by squeezing the flexible body at any place convenient to the child, without regard to the position of the container in the body of the doll. Since this is a relatively inefficient means of causing the water to rise to the eyes, compared with direct pressure applied to the container (bulb) itself, the water comes out of the eyes in drops.

Both Senior and Beebe filed applications in the United States Patent Office, which declared an interference to determine priority of invention. Beebe conceded priority to Senior; and since plaintiffs realized that Beebe's doll, which plaintiffs had produced commercially in 1950, came within the scope of Senior's claims and would infringe, plaintiffs purchased Senior's patent application. Senior's application originally included only claims 1 to 6, but claims 7 and 8 were added before it matured into Senior Patent No. 2,675,644. Claim 7 had been included in the Beebe application, and was the claim with respect to which the Patent Office had declared the interference. Beebe's doll embodied several practical improvements, adapted to mass production, and Beebe Patent No. 2,689,432 issued on September 21, 1954, six months after the Senior Patent.

Dolls made according to Senior's construction have been produced commercially in England by Senior's company, but not in the United States. "Tiny Tears", plaintiffs' commercial doll, is made according to Beebe's construction, and the accused doll, manufactured by Ideal, is a copy of Beebe's doll. Since 1950 and up to October 15, 1955, plaintiffs have sold 1,720,020 weeping dolls.

In this suit plaintiffs charge infringement of claims 1, 2, 4, 7 and 8 of the Senior patent, which dominates the Beebe patent; both of these patents are now owned by plaintiffs.

Claim 1 of the Senior patent reads:

"A toy figure comprising a body, part at least of which is hollow with resilient walls, a head with a mouth opening and tear openings appropriately positioned therein, a hollow, substantially rigid container for liquid disposed in the interior of the figure, a filling tube connecting the interior of said container with said mouth opening, liquid conducting tubing connected to said tear openings and projecting downwards into said container, an air tube projecting upwards into said container and terminating, in the interior of said container, above the lower termination of said liquid conducting tubing, said air tube extending into the interior of the hollow body or body part external to the container, and means for closing said mouth opening, whereby flexure of said resilient walls is adapted to create a flow of air under pressure from the interior of the hollow body through said air tube, into the interior of the container to force liquid from this container through said liquid conducting tubing to the tear openings."

Claims 2, 4, 7 and 8 are for a toy figure constructed according to the same principles with minor variations. Whereas claim 1 calls for "means for closing said mouth opening", claim 2 calls for "a removable member for sealing said mouth". Claim 4 calls for adding "a liquid discharge orifice at a location above the lowest point in the hollow interior" so that the doll may be a wetting as well as a weeping doll. Claims 7 and 8 are broader, i. e. less detailed, than claims 1 and 2.¹

The principle of raising liquid from within a closed container by creating air pressure above the liquid in the container has been known for a long time. Patents have been granted for various devices embodying this principle; e. g. Severson Patent No. 2,105,957 (1938) and Robertshaw Patent No. 2,156,606 (1939), both of which were for variants of the well-known wash bottle, wherein a closed container with a tube leading from near the bottom thereof has provision for the development of pressure within that container and above a liquid to force liquid through the tube and so out of the container.

Plaintiffs contend and ask for findings of fact that the arrangement of the elements of the air lifting device of the Senior patent is new with Senior; that the pressure developing element as entirely enclosing the liquid container is new with Senior; and that the providing of an air conductor or tube serving both to supply air pressure to the container and to provide an overflow for liquid within the container is new with Senior. There is no affirmative evidence that these proposed findings are true, and no evidence that they are false. Based solely upon the prior art patents cited by defendants at the trial, I find that enclosing the liquid container entirely within the pressure developing element, in this case the doll's body, is a new development in air pumps. So is the use of a tube which serves both to supply air pressure to the container and to provide a means of overflow for liquid in the container.

Plaintiffs contend that the invention embodied in claims 1, 2, 4, 7 and 8 of Senior Patent No. 2,675,644 is the combination for the first time within the resilient body of a toy figure or doll of a substantially rigid container for liquid, with a filling tube from the mouth to the container, conducting tubing connected with tear openings at the eyes and projecting downwards into the container, and an air tube projecting into the container from the interior of the doll's body and terminating above the lower termination of the conducting tubing leading to the eyes; so that when the resilient body of the toy figure or doll is squeezed, an increase in air pressure is transmitted into the container by the air tube and liquid in the container is thereby lifted through the conducting tubing to the eyes, where it is emitted as drops or tears; and wherein said air tube also serves as an overflow for liquid within the container.

It has long been recognized as "a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention". Webster Loom Co. v. Higgins, 105 U.S. 580, 591, 26 L.Ed. 1177. A combination "is patentable if it produces new and useful results, although all its constituents were well known and in common use before it was made, provided the results are a product of the combination, and not a mere aggregate of several results, each the product of one of the combined elements;" 40 Am.Jur. 543, Patents, sec. 19, quoted in City of Grafton, W. Va., v. Otis Elevator Co., 4 Cir., 166 F.2d 816, 817.

I am conscious of the admonition that "Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements." Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162. But the Supreme Court in that case was careful to note: "Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it." 340 U.S. at page 152, 71 S.Ct. at page 130.

The new function performed by the air pump in Senior's combination is the production of tear drops in the eyes of a doll when a child squeezes any part of the doll's resilient body. The air tube which projects into the liquid container...