Helene Curtis Industries v. Sales Affiliates

• Decision Date: 09 April 1956
• Docket Number: No. 189-192,Dockets 23185-23188.,189-192
• Citation: 233 F.2d 148
• Parties: HELENE CURTIS INDUSTRIES, Inc., and Helene Curtis Sales, Inc., Plaintiffs-Appellees, C. V. Layden, doing business as Southwestern Beauty Products Company, Plaintiff-Intervener, v. SALES AFFILIATES, Inc., Defendant-Appellant. The GILLETTE COMPANY, Plaintiff-Appellee, Skillern & Sons, Inc., and Walgreen Drug Company of Texas, Plaintiffs-Interveners-Appellees, v. SALES AFFILIATES, Inc., Defendant-Appellant. SALES AFFILIATES, Inc., Plaintiff-Appellant, The Procter & Gamble Company, Involuntary Plaintiff, v. C. V. LAYDEN, doing business as Southwestern Beauty Products Company, Defendant-Appellee. SALES AFFILIATES, Inc., Plaintiff-Appellant, The Procter & Gamble Company, Involuntary Plaintiff, v. SKILLERN & SONS, Inc., Walgreen Drug Company of Texas, and The Gillette Company, Defendants-Appellees.
• Court: U.S. Court of Appeals — Second Circuit

233 F.2d 148 (1956)

HELENE CURTIS INDUSTRIES, Inc., and Helene Curtis Sales, Inc., Plaintiffs-Appellees, C. V. Layden, doing business as Southwestern Beauty Products Company, Plaintiff-Intervener, v. SALES AFFILIATES, Inc., Defendant-Appellant.

The GILLETTE COMPANY, Plaintiff-Appellee, Skillern & Sons, Inc., and Walgreen Drug Company of Texas, Plaintiffs-Interveners-Appellees, v. SALES AFFILIATES, Inc., Defendant-Appellant.

SALES AFFILIATES, Inc., Plaintiff-Appellant, The Procter & Gamble Company, Involuntary Plaintiff, v. C. V. LAYDEN, doing business as Southwestern Beauty Products Company, Defendant-Appellee.

SALES AFFILIATES, Inc., Plaintiff-Appellant, The Procter & Gamble Company, Involuntary Plaintiff, v. SKILLERN & SONS, Inc., Walgreen Drug Company of Texas, and The Gillette Company, Defendants-Appellees.

Nos. 189-192, Dockets 23185-23188.

United States Court of Appeals Second Circuit.

Argued March 9, 1955.

Decided April 9, 1956.

COPYRIGHT MATERIAL OMITTED

Kenyon & Kenyon, New York City (Theodore S. Kenyon, New York City, Maurice S. Cayne, Chicago, Ill., and Malvin R. Mandelbaum, New York City, of counsel), for Helene Curtis Industries, Inc., Helene Curtis Sales, Inc., and C. V. Layden, d/b/a Southwestern Beauty Products Co. Henry R. Ashton, New York City (Edgar H. Kent, Boston, Mass., Rynn Berry, New York City, and Martin Kirkpatrick, Boston, Mass., of counsel), for Gillette Co.

Hawkins, Delafield & Wood, New York City (Clarence Fried, New York City, of counsel), for Skillern & Sons, Inc., and Walgreen Drug Co. of Texas.

Morgan, Finnegan, Durham & Pine, New York City (George B. Finnegan, Jr., New York City, William D. Denson, Washington, D. C., and Jerome G. Lee, New York City, of counsel), for Sales Affiliates, Inc.

Before MEDINA and HINCKS, Circuit Judges, and BURKE, District Judge.

HINCKS, Circuit Judge.

These four appeals all involve the validity and infringement of United States Patent No. 2,577,710 which issued to McDonough on December 4, 1951 on an application dated June 16, 1941. The appeals are brought from four decrees of the District Court for the Southern District of New York, in each of which, on a considered opinion reported in 121 F. Supp. 490, it was adjudged that the patent in suit was invalid. The decrees were entered in four suits which had been consolidated for trial and referred to Honorable Simon H. Rifkind as Special Master for report together with his findings of fact and conclusions of law. Two of these suits were actions brought for the infringement of the patent in suit by Sales Affiliates, Inc. against several defendants; the other two were actions for declaratory judgments brought against Sales Affiliates, Inc., seeking a declaration of validity and non-infringement. For purposes of this opinion, we will hereinafter refer to the parties by the terminology used by the Master and the court below, using the designation of "plaintiffs" to refer to the parties collectively attacking the patent and "defendant" to refer to Sales Affiliates, the equitable owner of the patent.

Although the patent in suit as issued contained 18 claims, all of which were dealt with below, the defendant on brief states: "For the purpose of this appeal, appellant stands on Claims 2, 12, 17 and 18." We take this to be a concession that as to the other claims in suit below, the decree may be affirmed. We shall, therefore, focus our attention on these four claims.

We turn first to consider the scope of the invention claimed. The patent relates generally to a chemical composition suitable for permanent hair waving. The inventor's objective, as stated in the patent specifications, was a composition as effective and as rapid, even when applied without heat, as the sulfides used by the prior art, but free from the bad odor and toxicity characteristic of the sulfides. In his specifications the patentee says "I have discovered that I can obtain these objects sic by providing as a waving agent a mercaptan or mixture of mercaptans * * * and that an effective waving solution can be obtained by proper formulation including a mercaptan in water." And the specifications further recite discovery (1) that mercaptans become less effective as their molecular weight increases, stating by way of "Example" that a specified mercaptan having a molecular weight of 77 "is far more efficient as a waving agent than cysteine (molecular weight 121)"; (2) that both the polar and non-polar mercaptans function satisfactorily when used in solutions having a concentration of "usually less than 15%"; (3) that they "are especially effective when the pH range is from 7.0 to 10.0, the preferred range being about 9.2"; and (4) that to produce the desired alkalinity, alkaline materials "are particularly effective with less hair destructive effect" if they have "a dissociation constant less than 5 × 10-3 and preferably about 10-5."

The claims relied on all assert a permanent waving composition in which, whether applied with or without heat, a mercaptan is the waving agent and, in each of the four claims all four of the "discoveries" listed serially above are included as limiting factors. Thus in each the mercaptan is limited to one having a molecular weight of "less than 121" and in all four the dissociation constant of the alkaline base is that stated in the specifications to be "particularly effective." The alkalinity of the solution is, respectively, limited to that "ranging from about pH 9.2 to not higher than 9.5" (Claims 2 and 12); to "about pH 9.2" (Claim 17); and to "higher than pH 7 and not higher than pH 9.5" (Claim 18). The concentration of the mercaptan solution is variously stated as "3% to less than about 8%" (Claims 2 and 12); as "1% to about 10%" (Claim 17); and "about 6%" (Claim 18).

In his penetrating analysis of the claimed invention, the Master wrote as follows:

"It is of course elementary in the patent law that generic claims, such as involved in the present patent, cannot survive where a species within the claimed genus has been invented, known or used by others prior to the patentee\'s date of invention. `A generic monopoly must rest upon a generic discovery.\' Metals Recovery Co. v. Anaconda Copper Mining Co., 9 Cir., 1929, 31 F. 2d 100, 103. Prior invention, disclosure or use of a species anticipates the genus. In re Steenbock, 1936, 83 F.2d 912, 23 C.C.P.A., Patents, 1244; Application of Kyrides, 1947, 159 F.2d 1019, 34 C.C.P.A., Patents, 920.

"That McDonough was not the first to discover the usefulness of mercaptans as permanent waving agents or hair softeners is clear beyond peradventure. The U. S. Patent No. 2,201,929, to Speakman, issued May 21, 1940, on an application dated December 9, 1935, specifically disclosed and claimed a method of permanently waving hair in which the waving agent is cysteine hydrochloride, a mercaptan salt, in an alkaline solution of at least pH 10.

"And so here, defendant posits invention not on the broad generic discovery of mercaptan waving lotions, but rather on the discovery that special laws and criteria govern mercaptans in hair waving.

* * * * * *

"In more conventional patent terminology, the invention on which these claims may be said to rest, is the discovery that certain critical limits exists for mercaptan waving. Indeed, the law of criticality has been the battlefield upon which much of the present contest has been waged with seemingly irreconcilable views as to the meaning of the term and its applicability to the facts at hand.

"The term `criticality\' as used in the patent sense is not synonymous with invention, but rather, more precisely, is a device for determining the presence or absence of invention. The question always is whether the inventive act is of sufficient magnitude to justify the extension of a legal monopoly for the matter covered by the claims. And in determining whether a patentable invention is present, certain rules have been formulated, among which is that of criticality. Thus, as has frequently been said, the mere location of the optimum conditions of use for a known composition of matter does not constitute `invention\' so as to entitle the discoverer thereof to a monopoly. That objective, however useful the final result, can be achieved by `patient experiment\', see Wallace v. F. W. Woolworth Co., 2 Cir., 133 F.2d 763, 764, certiorari denied 1943, 320 U.S. 739, 64 S.Ct. 40, 88 L. Ed. 438; no inventive genius is necessary. Rather, it is only where, other requisites being present, the patentee has found a point or points at which some result differing in kind — and not merely in degree — from the results achieved by the prior art, that an inventive act may be said to exist. At least for this Circuit, the Court of Appeals has summarized the rule in definite terms. In Kwik Set, Inc., v. Welch Grape Juice Co., 2 Cir., 1936, 86 F. 2d 945, 947, it said:

"`A patentee may not arbitrarily select a point in a progressive change and maintain a patent monopoly for all operations in that progressive change falling on one particular side of that arbitrarily selected point. It is only where the selected point corresponds with the physical phenomenon and the patentee has discovered the point at which that physical phenomenon occurs that the maintenance of a patent monopoly is admissible.\'"¹

This analysis was accepted by the court below, and, except for the applicability of the Kwik Set case, has not been questioned by the defendant on this appeal. We, too, accept it not only as a correct statement of the law generally applicable but also as broadly stating the scope of the patentable subject-matter in a sub-generic discovery such as is here involved.

Disclosure of Criticality

It was held below that under 35 U.S.C.A. § 112 the patent was invalid for lack of disclosure that any one of the four limiting factors listed above was a "critical" limitation. As to this, we hold that a disclosure which teaches that a limitation is critical is enough to...