Carter Products v. Colgate-Palmolive Company

• Decision Date: 10 March 1955
• Docket Number: Civ. A. No. 6954.
• Citation: 130 F. Supp. 557
• Parties: CARTER PRODUCTS, Inc., Joseph G. Spitzer, and Marvin Small v. COLGATE-PALMOLIVE COMPANY, Noxzema Chemical Co., Inc., Stalfort Pressure-Pak Corporation, John C. Stalfort & Sons, Inc., and Read Drug & Chemical Company, Inc.
• Court: U.S. District Court — District of Maryland

130 F. Supp. 557

CARTER PRODUCTS, Inc., Joseph G. Spitzer, and Marvin Small v. COLGATE-PALMOLIVE COMPANY, Noxzema Chemical Co., Inc., Stalfort Pressure-Pak Corporation, John C. Stalfort & Sons, Inc., and Read Drug & Chemical Company, Inc.

Civ. A. No. 6954.

United States District Court, D. Maryland.

March 10, 1955.

COPYRIGHT MATERIAL OMITTED

R. Dorsey Watkins, of Piper & Marbury, Baltimore, Md., George B. Finnegan, William D. Denson and Jerome G. Lee, of Morgan, Finnegan, Durham & Pine, New York City, for plaintiffs.

Harry N. Baetjer and H. Vernon Eney, of Venable, Baetjer & Howard, Baltimore, Md., Benjamin B. Schneider, Chicago, Ill., Trenton Meredith, Jersey City, N. J., for Colgate-Palmolive Co.

H. Paul Rome and H. Paul Black, Baltimore, Md., for Stalfort Pressure-Pak Corp. and John C. Stalfort & Sons, Inc.

H. Vernon Eney, of Venable, Baetjer & Howard, Baltimore, Md., for Read Drug & Chemical Co.

COLEMAN, Chief Judge.

This is a suit based upon United States Patent No. 2,655,480, issued October 13, 1953, on application filed November 2, 1949, to Joseph Spitzer, Irving Reich and Norman Fine. The corporate plaintiff, hereinafter called Carter, is the exclusive licensee under the patent which, in the words of the patent itself, "relates to a composition for use in producing a soap or a detergent lather without resorting to any manual or mechanical whipping or agitating operation".

More specifically, it embraces a pressurized self-generating lather composition in a small can with a press-button, outlet valve which Carter manufactures and markets as a shaving preparation under the name "Rise". The patent hereinafter will be referred to as the Spitzer patent.

There are four defendants (a fifth, Noxzema Chemical Co., Inc., having been dismissed before trial), namely, Colgate-Palmolive Company, hereinafter called "Colgate"; Stalfort Pressure-Pak Corporation and John C. Stalfort & Sons, Inc., hereinafter referred to, jointly, as "Stalfort", and Read Drug and Chemical Company, hereinafter referred to as "Read".

The Spitzer patent embraces 21 claims, but only 8 of them are in suit, namely, Nos. 5, 6, 8, 9, 10, 15, 18 and 20, are alleged to be infringed, although all 21 are covered by defendant's counterclaim of invalidity. Colgate admits infringement of these 8 claims by one or the other of its products, known as Rapid-Shave and Barber Shave. Stalfort is charged with infringement of 5 claims, Nos. 6, 8, 9, 10 and 19, by packaging and pressurizing a self-generating shaving lather composition for the Mennen Company, called "Foam Shave", and shipping it to Mennen's customers; Read is charged with infringing by reason of selling as a retailer, Rapid Shave, Barber Shave and Foam Shave. Both Stalfort and Read deny any infringement. All defendants assert the defense of invalidity of the Spitzer patent.

In addition to denying invalidity, plaintiffs claim additional damages from defendant Colgate on the ground that it wrongfully appropriated plaintiffs' trade secrets involved in the composition of "Rise", which two of the plaintiffs, Spitzer and Small, as owners of the patent, developed jointly with the corporate plaintiff, Carter; and plaintiffs also claim that Colgate utilized these trade secrets in developing its competitive products just referred to. The two main questions for determination in the present suit are, therefore: (1) whether the Spitzer patent is valid; and, (2) whether Colgate wrongfully appropriated any trade secrets of Carter relating to "Rise". These questions will be considered in the order just stated.

Patent Validity

In considering the question as to the validity of the Spitzer patent, it is essential, first, to understand the state of the shaving preparation art at the time "Rise" first came on the market in April, 1951, with a label bearing the words "Patent Pending" and "Secret Formula".

Prior to this time, lather for shaving had always been made by whipping air into a soap and water solution by using a shaving brush, either with the long-familiar, but now rather obsolete mug, and more recently with tubed shaving cream whipped into a lather on the face by a brush. An adaptation of this principle for the professional barber is the rather modern lather-making machine used in barber shops, where air is mechanically whipped into a soap solution to form a lather by a motorized process. All of these lathers, whether made by brush or by machine, employ ordinary air as the bubble-forming gas.

The other relatively recent and prevalent preparation to facilitate shaving is the so-called "brushless shaving cream". This forms no lather, but is merely spread on the face like cold cream, to provide a hair-softening medium and a lubricant for the razor blade. Brushless shaving creams are relatively inefficient compared with lather. They are less pleasing to use, harder to remove from the razor and the washbowl, and are in vogue primarily because of greater convenience, since no whipping up of lather is required.

Since the composition of the "Rise" patent is not confined to use for shaving, but expressly includes use for "shampooing or other washing or cleansing operations", it is appropriate to quote the following statement from the "Rise" patent as to what the patentees understood to be the state of the prior art in respect to shampooing: "In shampooing the hair, soap solutions are generally applied to the hair and then worked into a lather with the hands. The working up of lather delays the actual hair-washing operation and the rubbing of the hair and scalp incident to mechanically working up the lather may be undesirable in some cases."

The object of the invention and the composition employed to attain these objects are set forth in great detail in the patent, from which we quote as follows at some length, because of the highly technical character of the subject matter: "The present invention has for its object the provision of an improved composition for forming soap or synthetic detergent lather of fine quality without the use of a brush or any mechanical whipping mechanism or operation. The composition of the present invention provides a lather, such as a shaving, shampooing or washing lather, that is formed as the composition is released from its container and may be directly applied to the skin, hair, or other part or material in lather form without the use of a brush or other applying instrument and without preliminary mechanical or manual lather forming operations.

"In general, the above and other objects of the invention are carried out by employing a composition comprising a water solution of a suitable soap or like detergent and a highly volatile propellant. At least a substantial proportion of the propellant used in the mixture is insoluble in the soap solution and the two primary ingredients are mixed and maintained under sufficient pressure so that the insoluble portion of the propellant is in liquid phase, existing as droplets or in the form of a liquid-liquid emulsion in the soap solution. The mixed primary ingredients are confined at the vapor pressure of the propellant in a pressure-tight container having an opening controlled by a suitable manually operable valve. When the valve is opened, the pressure on the composition is released as it emerges from the container, with the result that a fine textured creamy lather is produced. The action is apparently such that the volatile propellant liquid, entrapped as an emulsion within the liquid solution, vaporizes upon the release of the pressure therefrom, forming fine gas cells throughout the liquid soap solution and thus forming it into a lather.

* * * * * *

"The nature of the soap or detergent used, although not critical, has an effect on the type of lather produced. Suitable soaps include the soluble stearate soaps, such as the potassium, ammonium and soluble amine soaps of commercial stearic acid, particularly the triethanolamine and morpholine soaps of commercial stearic acid. The product sold commercially as stearic acid is actually a mixture consisting primarily of stearic and palmitic acid. We shall use the term `stearates' herein to designate soaps of commercial stearic acid, although soaps of chemically pure stearic acid would be the equivalent for the purposes of this invention. The stearates may be made by neutralization of stearic acid with suitable alkali, or may be introduced in the form of animal fats, such as tallow, which are rich in stearic acid and which, when saponified, form soaps rich in stearic acid. Mixtures of the various stearate soaps may be used, and small proportions, preferably less than 5 per cent, of a less soluble soap, such as a sodium stearate soap may be used with the more soluble stearate soaps mentioned above to secure the desired consistency, particularly when the product is used to produce a shaving lather. Vegetable oil soaps, including the soaps of cocoanut oil, cottonseed oil, olive oil, soya oil, etc., may be used either alone or in admixture with the soluble stearate soaps. When the vegetable oil soaps are used alone, or as the primary soap ingredient, the resultant lather is somewhat looser, coarser and less stable than when soluble stearate soaps or mixtures including a substantial proportion thereof are employed. For this reason, when the composition is to be used for producing shaving lather, a substantial proportion of soluble stearate soap is used, whereas compositions producing shampoo or washing lathers preferably comprise or contain a substantial proportion of vegetable oil soaps. On the other hand, vegetable oil soaps may to advantage be used in admixture with soluble stearic acid soaps to prepare a shaving lather producing product for the purpose of making the soap solution less likely to gel at low temperatures than solutions made from the stearate soaps alone."

After setting forth a list of 19 examples of soap solutions recommended in preparing the patent...