Donner v. Walgreen Co.

• Decision Date: 08 November 1930
• Docket Number: No. 8438.,8438.
• Citation: 44 F.2d 637
• Parties: DONNER v. WALGREEN CO. et al.
• Court: U.S. District Court — Northern District of Illinois

44 F.2d 637 (1930)

DONNER v. WALGREEN CO. et al.

No. 8438.

District Court, N. D. Illinois, E. D.

November 8, 1930.

Williams, Bradbury, McCaleb & Hinkle, of Chicago, Ill., for plaintiff.

Glenn S. Noble, of Chicago, Ill. (Hugh K. Wagner, of St. Louis, Mo., of counsel), for defendants.

LINDLEY, District Judge.

The plaintiff originally filed suit against the Walgreen Company charging infringement of patent 1,379,855 to Donner May 31, 1921, upon application filed March 3, 1921, covering depilatories for removing hair from the human body, by the sale of various depilatories, viz. Delatone, Nu-Del, X-Bazin and Odo-Ro-No. Subsequent to the commencement of the suit, settlement was made with the manufacturers of Nu-Del and Delatone, and Neet, Inc., intervened as party defendant and is charged to infringe the patent by the manufacture and sale of the depilatory paste Neet. The defenses are invalidity, noninfringement, and estoppel by way of laches.

In his specifications Donner stated that his invention related to a toilet preparation known as a depilatory used for the removal of hair from the human body; that the principal object of his invention was the preparation of such a depilatory in the form of a cream or paste by the incorporation of a depilating agent in an air-restraining base resulting in a finished depilatory or depilating cream or paste, permanent and stable, which could be applied directly to the skin without the intervention of water or other substance, and which would effect the removal of hair with facility and with perfect safety to the skin. His claims, some seventeen in number, ten of which, viz. 1, 2, 3, 6, 7, 9, 13, 14, 16 and 17, are in suit, are brief and not most artfully drawn. The ten claims are in the margin.¹

No. 7 is a typical representation of the composition of plaintiff in this case as to his invention, viz. "a composition of matter comprising a depilatory mixture and a colloid carrying the same, in the form of a finished, stable depilatory paste." Under well-known principles, these claims are to be read as if they contained the words "substantially as described." See Matthews v. Shoneberger (C. C.) 4 F. 635; Olds v. Brown (C. C.) 41 F. 698; Jewell Filter Co. v. Jackson (C. C. A.) 140 F. 340; National Tube Co. v. Mark (C. C. A.) 216 F. 507.

Donner recognized that efficient depilatories had been made previously in the forms of powder, liquid, and lotion, and stated that the physical states of these were such that their application was invariably attended with inconvenience or waste of material or both; that because of their fluidity they were apt to flow or spread over a greater area than intended for the application; that it was difficult to confine them to the removal of hair in a small localized area without acting on the adjacent skin; that the lotion depilatories were imperfect suspensions of alkaline and alkaline earth sulfids, polysulfids and sulfhydrates in water; and that in all of these the dissolved sulfhydrates constitute the active depilating agent. He pointed out further defects in existing depilatories, and stated that he had overcome these difficulties by taking advantage of the air-restraining properties of colloids and colloid-like bodies, which are capable, when mixed with the depilating agent and any suitable vehicle, of producing a paste or cream-like mass, in which the molecules of the depilating agent are permanently suspended, thus rendering them proof against the substantial entrance of and interaction with air, and guaranteeing stability and permanence of the preparation.

The word "permanently" is obviously used in a relative sense. As a typical example of his method of manufacture, he stated that he placed a quantity of quicklime (CaO) in a large vessel and slaked it by pouring upon it approximately four times its weight of water. He specified, however, that he did not wish to be limited to the exact proportions outlined. His method was to make first of all a mass of calcium hydroxid, to add thereto sufficient water to bring the same to a thin consistency, that is, about ten parts of water to one of lime, straining this through gauze to remove foreign matter, and then to pass a current of hydrogen sulfid gas, constituting his depilating agent, through this magma until it assumed an even pale blue color. His last step was to add calcined magnesia or equivalent chemicals in sufficient quantity to produce the consistency of a pasty mass of cold cream or tooth paste. His conclusion was that dissolved sulfhydrates constitute the active depilating agent, and that if the same were in a liquid or lotion form upon the opening of the receptacle air would enter and frequent exposures cause reactions to a stage where the original depilatory would be materially altered; that often they become valueless and possibly capable of producing harmful effects.

He emphasized as the dominant and characteristic feature of his invention "discovery of the air-restraining and agglutinant or adhesive properties of non-reactive colloids or colloid-like bodies when used with depilating mixtures which enable the same to be prepared in the form of creams, pastes, or jellies; which by virtue of their air-restraining properties maintain the depilating agents from air interaction whereby they are preserved from deterioration, and which by their adhesive or agglutinant properties bring the depilating mixtures into a cream or paste from which permits of its easy application in definite areas with freedom from spreading."

The evidence indicates that the line of distinction between colloids and colloid-like bodies is rather vague, and that the difference is largely one of size. His specified calcined magnesia and its chemical equivalents fall within the term colloid and colloid-like bodies. The language of his specifications and claims is such that colloid-like substances which are air-restraining and nonreactive and agglutinating in character are embraced within the scope of his patent as well as true colloids. He testified as to the advantages of his product; that when finished it can be used without water; is marketable in the collapsible tube; proof against deterioration; remains where it is applied on a vertical surface as well as on a horizontal surface; requires no mixing; is not messy, and can be made of standard strength by incorporating a standardized depilating solution into any direct plasticizing paste; and that the user can always rely upon working with a definite strength in the depilant.

Taking into consideration all that is said in the description, specifications, and claims, and considering the testimony in this record, the court is of the opinion that the patent discloses utility and invention, unless there be something in the prior art that negatives the latter.

The prior art pleaded includes first of all Formula IV of the New Standard Formulary, which suggests a depilatory made from two parts of freshly slaked lime mixed with three parts of water, through which is passed a stream of sulfuretted hydrogen. This is clearly not in accordance with the specifications, description, or claim of Donner. The steps that he suggested as a proper method of achieving a permanent paste have been discussed, and it is apparent from the testimony in the record that the result of this formula is a mass which will decompose and separate into water and residuum. The formula apparently is nothing more than a recipe for the making of calcium sulfhydrate, a long-recognized depilatory. The final magma was produced before the introduction of the depilating agent, whereas Donner inserted the depilating agent into a thin magma, and then developed therefrom by the steps mentioned a permanent finished paste by the introduction of air-restraining colloids or colloid-like substances.

Era Formulary, Formula 2020, does not essentially differ materially from the formula just mentioned. It directs that the manufacturer mix lime and water to a thick cream, and pass through the mixture 25 or 30 times its volume of sulfuretted hydrogen gas. This apparently fulfills the same function as the first step of Donner's process, but it does not cover the ground of his completed achievement. There is no thickening of a thin magma, after the introduction of sulfuretted hydrogen gas, by the introduction of air-restraining bodies of colloid-like character.

The formula of the United States Dispensatory of 1854 is as follows: "This compound is formed by passing sulfuretted hydrogen (hydrogen sulfid H2S) so long as it is absorbed through water holding lime in suspension." Obviously from the wording and the testimony it is apparent that lime in suspension means a mixture which when allowed to stand will settle and separate into liquid and lime residuum, really as described by one witness as "a saturated aqueous solution."

The British patent to Lutje is probably the nearest to Donner's achievement. He contemplated the creation of a thin magma and its subsequent formation into a thicker substance by converting the starch into paste. He heated the mixture to the boiling point, stirring it continually so that the starch was converted into paste, and the previously thin magma into thick cream. Prof. Clark, a skilled chemist, made up three different specimens, according to the Lutje patent. In the first sample produced by him he achieved a mixture of roughly three-fourths sedimentation and one-fourth liquid; in the second sample, in which he used arrow-root starch, because, as he said, he considered it one of the finest paste making starches known, he obtained 25 per cent. liquid and 75 per cent. residuum. Fearing that he might not have used sufficient heat in making the first samples, he made a third, which he boiled over a naked flame, and in this the result was approximately the same as in the two others. The samples produced by the defendant's chemists, which have been under observation by the court for several...