Herschensohn v. Hoffman

• Decision Date: 26 March 1979
• Docket Number: Nos. 77-1718,77-2638,s. 77-1718
• Citation: 593 F.2d 893
• Parties: Arthur M. HERSCHENSOHN and Corona Hair Net Corporation, Plaintiffs-Appellees, v. Robert M. HOFFMAN, Individually, Robert M. Hoffman, d/b/a Image Products Co. and Advanced Design Laboratories, Hoffman Beauty and Barber Supply Co., Hoffman Beauty and Barber Supply Co., d/b/a Image Products Co. and Advanced Design Laboratories, Defendants-Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 893

593 F.2d 893

201 U.S.P.Q. 721

Arthur M. HERSCHENSOHN and Corona Hair Net Corporation Plaintiffs-Appellees, v. Robert M. HOFFMAN, Individually, Robert M. Hoffman, d/b/a Image Products Co. and Advanced Design Laboratories, Hoffman Beauty and Barber Supply Co., Hoffman Beauty and Barber Supply Co., d/b/a Image Products Co. and Advanced Design Laboratories, Defendants-Appellants.

Nos. 77-1718, 77-2638.

United States Court of Appeals Ninth Circuit.

March 26, 1979.

R. Douglas Lyon (argued), of Lyon & Lyon, Los Angeles, Cal., for defendants-appellants.

Ronald W. Reagin (argued), Los Angeles, Cal., for plaintiffs-appellees.

Appeal from the United States District Court for the Central District of California.

Before CARTER and WRIGHT, Circuit Judges, and CRAIG, District Judge. ^*

JAMES M. CARTER, Circuit Judge:

This is an action for infringement of Patent No. 3,253,292 (hereafter No. 292), wherein the district court entered a Judgment that the patent was valid and infringed and awarded damages. This is Appeal No. 77-1718.

Thereafter, a Judgment was entered holding defendants in contempt for offering to sell their devices during the period between the receipt of a Memorandum of Decision and the entry of Judgment for the plaintiffs. The appeal in this proceeding is No. 77-2638. We reverse both Judgments.

Facts

On May 15, 1964, Herschensohn, one of the plaintiffs herein, filed an application for letters-patent. The patent, No. 292, was issued on March 31, 1966.

Prior to 1971, plaintiffs sold a brush made from a flexible copolymer plastic with tufts of bristles, including 7 or 8 slender strands folded to form 14 to 16 bristles. Exhibit 3, in evidence, is an example of this brush. In 1971, the design was changed by the plaintiffs so that each tuft was formed from a single heavier monofilament folded to form two bristles, one longer than the other.

In 1974, the handle, spine and fingers were made from a plastic material which was less flexible than the original copolymer plastic material. Exhibit 2, in evidence, is an example of this second brush.

Defendants admittedly copied the latter brush, Exhibit 2, by having an organization in Hong Kong make the brushes and import them to the United States. They were literally "Chinese copies" of plaintiffs' second brush, Exhibit 2. Exhibit 5, in evidence, is an example of the defendants' alleged offending brush.

Patent No. 292 has four claims, of which # 1, # 3 and # 4 are alleged to be infringed. Claim # 1 is the only independent claim. Claims # 3 and # 4 are merely minor variations of Claim # 1.

Claim # 1 reads as follows:

1. In a hair brush of the character described, a handle, a brush back comprising a flexible spine element extending as a cantilever from said handle, a first series of closely spaced fingers extending laterally from one side and a second series of closely spaced fingers extending laterally from the opposite side of said spine element and tufts of relatively stiff bristles extending downwardly from at least the fingers of said brush back whereby when the brush is pulled through hair through which a comb can pass, said spine will bend so that the distal ends of the fingers on the trailing side of the brush will approach each other.

The appeals raise three questions:

1. The validity of the patent claims, # 1, # 3 and # 4.

2. Whether the patent claims were infringed.

3. Was there a valid injunction in the Memorandum of Decision which can sustain the Contempt Judgment.

Validity

The patent sets forth a combination of old elements, four in number: a handle, a flexible spine, laterally extended fingers, and tufts of relatively stiff bristles. All of these elements are old in the art and no discussion of this art is necessary. The patent, therefore, is a combination patent and is controlled by the Supreme Court decisions on such patents. One of the latest such cases is Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976). There a unanimous Court reviewed the earlier cases and reversed the Fifth Circuit decision which had held the patent valid.

Congress in 1952 enacted 35 U.S.C. § 103, "as a codification of judicial precedents . . . with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966).

Section 103 provides:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

In Sakraida, supra, the Court said (425 U.S. at 280, 96 S.Ct. at 1536):

"The ultimate test of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 155 (, 71 S.Ct. 127, 131, 95 L.Ed. 162, 168) (1950), but resolution of the obviousness issue necessarily entails several basic factual inquiries, Graham v. John Deere Co., supra, 383 U.S. at 17 (, 86 S.Ct. at 693, 15 L.Ed.2d at 556.)

'Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.' Ibid."

"Indeed, respondent admitted at trial 'that the patent is made up of a combination of old elements' and 'that all elements are individually old . . . .' Accordingly, the District Court properly followed our admonition in Great A. & P. Tea Co. v. Supermarket Corp., supra, 340 U.S. at 152 (71 S.Ct. at 130, 95 L.Ed. at 167): 'Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements . . . . A patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men . . . .' " Sakraida, supra, 425 U.S. pp. 280-1, 96 S.Ct. p. 1537.

"We cannot agree (with the appeals court below) that the combination of these old elements . . . can properly be characterized as synergistic, that is, 'result(ing) in an effect greater than the sum of the several effects taken separately.' Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 61 (90 S.Ct. 305, 308, 24 L.Ed.2d 258, 261) (1969). Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations. Such combinations are not patentable under standards appropriate for a combination patent. Great A. & P. Tea Co. v. Supermarket Corp., supra; Anderson's-Black Rock v. Pavement Co., supra. Under those authorities this assembly of old elements . . . falls under the head of 'the work of the skilful mechanic, not that of the inventor.' Hotchkiss v. Greenwood, 11 How. (248, 13 L.Ed. 683, at 691) at 267. . . .

" . . . (D)esirable benefits 'without invention will not make patentability.' Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. at 153 (, 71 S.Ct., at 130, 95 L.Ed., at 167) . . . ." Sakraida, supra, 425 U.S. pp. 282-3, 96 S.Ct. pp. 1537-38.

Counsel for the plaintiffs apparently never understood fully the requirement that a patent based on a combination of elements old in the art must produce a new and unusual result. Counsel stated: "These defendants have asserted that these cases require a patent to have a synergistic result. . . . In their trial brief they said they had to make 2 plus 2 equal 5, which was the expression they used. This appears to be an assertion of one of two things: either 1, an assertion that the Supreme Court has overruled the patent system, or, 2, a requirement that you have to violate or at least disprove a known law of nature before you can have a valid patent. Because obviously 2 plus 2 never equal 5 (sic). . . . " Plaintiffs failed to identify a synergistic result.

The trial court, in Finding of Fact # 22, stated:

"22. The brush of the '292 patent does produce an unusual or surprising result which would not be expected by the man having ordinary skill in the art. The flexibility of the brush's spine element, when coupled with the plurality of bristle carrying fingers extending laterally on each side of the flexible spine, with the vents between the finger members, allows the brush to be pulled through the hair with remarkable ease. This is an unusual or surprising consequence from the unification of the elements concerned. It is an unusual or surprising result. It is not merely the sum of the results of the individual elements of the brush but is instead an effect greater than the sum of the effects of the several elements of the brush taken separately."

The trial court's Memorandum of Decision was similar.

We conclude that Claims # 1, # 3 and # 4 of the patent are invalid. Claim # 1 recited that the bending of the distal ends of the fingers on the trailing side of the brush "would approach each other." The patent lists various purposes:

(1) Mechanical action to penetrate thick tresses, dig into the scalp and cause drag on the hair and scalp to accomplish the effects of massage.

(2) To agitate the root of the hair and its associated muscle tissue and bring additional sebum to the hair and increase the luster of the hair.

(3) To automatically pinch and tug the hair and thus exercise the hair roots and their environments.

(4) To provide a hair brush which is easily cleanable, simple in construction, reasonable in cost, and efficient in carrying out the purposes...