Good Humor Corporation v. Bluebird Ice Cream & CR

• Decision Date: 29 November 1932
• Docket Number: No. 6414.,6414.
• Citation: 1 F. Supp. 850
• Parties: GOOD HUMOR CORPORATION OF AMERICA v. BLUEBIRD ICE CREAM & CHARLOTTE RUSSE, Inc.
• Court: U.S. District Court — Eastern District of New York

1 F. Supp. 850

GOOD HUMOR CORPORATION OF AMERICA v. BLUEBIRD ICE CREAM & CHARLOTTE RUSSE, Inc.

No. 6414.

District Court, E. D. New York.

November 29, 1932.

Phillips, Mahoney, Libell & Fielding, of New York City (Samuel E. Darby, Jr., of New York City, of counsel), for plaintiff.

Celler & Kraushaar, of New York City (W. Lee Helms, of New York City, of counsel), for defendant.

GALSTON, District Judge.

This is a patent suit in which infringement is alleged of letters patent No. 1,470,524 granted October 9, 1923, and No. 1,718,997 granted July 2, 1929, to Harry B. Burt. The former patent is for a process of making frozen confections, and claims 1, 2, and 5 are in issue; the second patent is for a frozen confection, and claims 1, 5, and 7 thereof are in issue.

The Process Patent.

Reference to the specification discloses that the invention relates to the manufacture of confections which have a frozen body portion formed of an edible substance which is soft or fluid at normal temperatures and is hardened by refrigeration. Such confections are ice cream, sherbet, or the like.

It is said that in the manufacture of such confections from a hygienic or sanitary view-point, as indeed must be so with all foods, it is important that the confection be handled with the hands or fingers as little as possible. To this end a handle member, as, for example, a stick, is attached to the frozen body portion and utilized in subsequent operations.

In carrying out the invention, the confection, "while still in a soft or fluid condition, being preferably partially frozen," is placed in a suitable container. Then suitable handles, such as sticks, are positioned in the "partially frozen substance or ice cream and held in this position while the freezing process is continued and the ice cream or other substance hardened in the well known manner."

After the handles have been thus positioned, the container is then placed in a refrigerating chamber and subjected to a continuation of the freezing operation. After the substance has been hardened the container is removed from the resulting frozen and hardened block.

The frozen composite block is cut up either manually or mechanically into small individual sections, each of which having thus been provided with one of the handles.

The individual sections may then be coated with a protective covering of an edible substance, for example, chocolate. After the protective covering is applied to the body portion, the individual confection is supported on a drying frame or rack.

Claim 1 of the patent reads as follows: "1. The process of making a frozen confection which consists in bringing a handle member in contact with a body of edible substance which is fluid at normal temperatures and subjecting the body to refrigeration whereby it is solidified and thereby attached to the handle by congelation."

The defendant's process consists in filling a brick mould with soft ice cream and freezing this mixture for twenty-four hours in the so-called "hardening room." The solid brick is then cut into a plurality of blocks and the cutting machine forms holes in each block. Operators then place sticks in the holes, and other operators take the sticks and attached blocks and dip the blocks into chocolate. These blocks are then placed in bags; the bags are put into a metal container, and are then placed in the hardening room to prevent the melting of the cream.

It is therefore apparent that in the defendant's operation the sticks are not applied to the body of the confection and the substance subjected to a freezing operation until after the ice cream has been solidified. There is no question that the defendant's operations, as testified to by the witness Lippin, develop ice cream frozen hard before the sticks or handles are inserted in the blocks. The temperature of defendant's hardening room is from zero to 5 or 8 degrees above, and the ice cream mixture, before the blocks are cut and the holes made for the reception of the sticks, remains at that low temperature for twenty-four hours.

I think the defendant's process was not contemplated by the patent, and that the claims cannot be construed in such a manner as to include it.

The contention is made by the plaintiff that Burt's invention consisted of his discovery that if a stick is inserted into "partially" frozen material which has not been frozen to a point where, if pressure is applied, it will crack, the differential of temperature between the stick and the ice cream, as well as the friction caused by the insertion of the stick into the cream, melts the ice cream at the point of contact and thereby forms a wet film at the point of contact; and that, therefore, the ice cream should be refrigerated so as to refreeze the wet film and effect a physical bond between the stick and the ice cream.

But it seems to me that the plaintiff gets little comfort from its own expert, Mr. Veazey, for he said: "When you put a stick into a piece of Eskimo Pie, there is this melting of the ice cream body around the stick or at the surface of contact between the ice cream and the stick; and the coldness of the main part of the ice cream body will then recongelate this melted portion and cause a bond between the two, between the ice cream and the stick." And further:

"XQ58. The ice crystals contact with the stick because the stick is there in the ice cream and in a position to receive the ice crystals, isn't that correct? A. Well, if it is in the road of the growth of crystals they contact it, yes.

"XQ59. So that if the user of an Eskimo Pie placed a stick in it to keep his fingers clean, free from molten chocolate, as I understand your testimony, before he had finished eating the unit there would be some crystal formation on the stick? A. That is correct."

If Mr. Veazey is right, it would seem that the result of defendant's process is to effect a bond between the ice cream block and the stick independently of the placing of the blocks, after the insertion of the handles, in the refrigerator or hardening room for preservation. Burt's disclosure was one of refrigeration, it may be noted, not of hardened ice cream, but of "partially frozen" ice cream. The claims in suit must certainly be limited to such a process.

In the motion for a preliminary injunction made in this case and considered by Judge Campbell on substantially the same proof of defendant's process of manufacture as is here presented, he said: "Obviously the process of the patent in suit contemplates the placing of the handles in a body of edible substance fluid at normal temperatures which has not been completely frozen or hardened." This was the disclosure of the process patent.

It seems also to have been the view of the Court of Appeals of the District of Columbia, In re Burt et al., 58 App. D. C. 7, 24 F.(2d) 273. In that case the court had before it the application for the product patent on an appeal from the Commissioner of Patents who had denied the application. The court said: "Finally, Mr. Burt hit upon the idea of freezing the stick in the ice cream; that is, by inserting the stick in the cream before freezing and then subjecting the mass to refrigeration."

Now what the defendant did in this case was not to insert the stick in the cream before freezing. On the contrary, the defendant inserted the stick after the block was frozen, and thus found a solution of the problem, as stated by the Court of Appeals for the District of Columbia, which did not occur to Burt.

Accordingly, claims 1, 2, and 5 are not infringed.

The Product Patent.

The product patent presents somewhat greater difficulty. The three claims in issue are the following:

"1. A frozen confectionery product including a frozen...