Hodosh v. Block Drug Co., Inc., 85-2607

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore RICH, DAVIS, and BALDWIN; RICH
Citation229 USPQ 182,786 F.2d 1136
PartiesMilton HODOSH and Richardson-Vicks, Inc., Appellants, v. BLOCK DRUG COMPANY, INC., et al., Appellees. Appeal
Docket NumberNo. 85-2607,85-2607
Decision Date24 March 1986

John O. Tramontine, Fish & Neave, of New York City, argued for appellant, Richardson-Vicks, Inc.

Hugh A. Chapin, Kenyon & Kenyon of New York City, argued for appellant, Milton Jerome G. Lee, Morgan, Finnegan, Pine, Foley & Lee, of New York City, argued for appellees. With him on brief were William S. Feiler and Maria C.H. Lin of Morgan, Finnegan, Pine, Foley & Lee, and Marvin C. Soffen and Edward A. Meilman, Ostrolenk, Faber, Gerb & Soffen.

Hodosh. With them on the brief were W. Edward Bailey and Norman H. Beamer of Fish & Neave and Paul Lempel and William J. McNichol, Jr. of Kenyon & Kenyon.

Before RICH, DAVIS, and BALDWIN, Circuit Judges.

RICH, Circuit Judge.

This appeal is from the July 12, 1985, judgment of the United States District Court for the District of New Jersey, 226 USPQ 645, granting summary judgment to Block Drug Company, Inc., et al. (Block) and holding that all six claims of patent No. 3,863,006 for "Method of Desensitizing Teeth" ('006 patent), issued to Dr. Milton Hodosh and licensed to Richardson-Vicks, Inc. (collectively, Hodosh), are invalid for obviousness under 35 U.S.C. Sec. 103. We reverse and remand.


Tooth desensitizers reduce discomfort and pain caused by tooth hypersensitivity or exposed dentin, the portion of the tooth between the enamel and the pulp which includes a myriad of microscopic tubules. Persons suffering from this condition react painfully to hot or cold foods, citric acid or sweets, or everyday chemical, thermal, or tactile stimuli including toothbrush contact.

Milton Hodosh, a practicing dentist for about thirty years, independently developed the claimed subject matter of the '006 patent and granted Richardson-Vicks an exclusive license to make, use, and sell the claimed invention; the latter markets its tooth desensitizing toothpaste under the trademark "Denquel."

Claim 1 of the '006 patent 1 reads:

The method of desensitizing hypersensitive dentin and cementum by applying thereto an agent the essential ingredient of which is a nitrate of one of the following alkali metals: potassium, lithium or sodium said nitrate comprising between 1 percent and 20 percent by weight of said agent.

The remaining claims appear in the opinion below.

Appellee Block has, since 1961, marketed a tooth desensitizing toothpaste, covered by its patent No. 2,122,483 (the Rosenthal patent) for "Strontium Ion Toothpaste" issued in 1964, under the trademark "Sensodyne." The Rosenthal patent and the '006 patent disclose toothpaste formulae which are the same except that the latter contains, as a desensitizing agent, potassium nitrate instead of the Rosenthal-Block strontium chloride. After requesting and being denied a license under the '006 patent, Block developed its own potassium nitrate-containing tooth-desensitizing toothpaste called "Promise" and "Sensodyne-F." 2

March 30, 1983, Hodosh sued Block alleging that the sale of "Promise" and "Sensodyne-F" contributorily infringed and actively induced infringement of the '006 patent. Block answered and counterclaimed alleging patent misuse and consequent unenforceability of the '006 patent. On July 11, 1984, Block moved for summary judgment as to both misuse and patent invalidity. Oral argument was heard October 16, 1984, and decision was reserved. June 14, 1985 The district court heard no expert testimony, but did hear arguments of counsel, receive briefs, review exhibits, and had before it declarations and affidavits from experts on both sides commenting on the eight prior art references involved here, including the Rosenthal patent. The court determined that there were no genuine issues of material fact and concluded as a matter of law that the claims of the '006 patent were invalid under Sec. 103 because the Rosenthal patent disclosed each element claimed in the '006 patent except the potassium nitrate, which, in its view, was disclosed in two Chinese references, both based on ancient Chinese writings. The court also stated that six European references supported its conclusion of obviousness.

the reported decision was handed down granting the motion as to patent invalidity and dismissing the motion on misuse as moot, resulting in the judgment now on appeal.

Because the appropriateness of summary judgment is determined on an analysis of the facts, First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968), and because everything about these references, as a whole, see, e.g., Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547-48 (Fed.Cir.1985), is important to our determination, we review the record and lay out the relevant portions of the references in some detail.

A. The Chinese References
1. The Grand Dictionary of Chinese Medicine and Drugs

(The Grand Dictionary )

The Grand Dictionary, published in Hong Kong in 1963 and written in Chinese, is based on ancient Chinese compilations assembled roughly 500 years ago from works of physicians going back 4000-5000 years. Only a portion of the 1963 Chinese text was before the court and is before us on appeal. For purposes of this litigation, that portion was translated into English by Block's translator, Roger Wei-Ming Tsao (Mr. Cao). Mr. Cao is a doctor of Chinese medicine and a bilingual tutor. Block's other expert, Dr. Stephen Wei, a professor of dentistry fluent in Chinese, concurred in that translation. The writings from which the Grand Dictionary was compiled are not in evidence nor are any earlier writings.

In a nutshell, the district court relied upon the Grand Dictionary because of its discussion of "xiao shi" to which the Grand Dictionary associates the name "niter" and the chemical composition KNO3 and the ability to cure, inter alia, tooth pain. The court's opinion was that this reference teaches the use of xiao shi, which is the same as niter and is therefore the same as potassium nitrate, to cure tooth pain; thus, the teachings of the Rosenthal patent and the Grand Dictionary show that the '006 invention would have been obvious.

The following discussion and quotations are part of an attempt to convey the nature of the Grand Dictionary. The translated portion of the Grand Dictionary is entitled "Niter." The text under the first subheading "Nomenclature" reads: "It was so named because it has the power to consume various stones." Under "Other Names Stated in Classical Medical Books," the text reads "Mang Xiao (Bie-Lu), Bitter Xiao (Zhen-Quan), Flaming Xiao (Tu-Su) ... and Xiao-Shi ...." Thereafter, following "Foreign Names," the Grand Dictionary reads: "Salpetrae, Salnitri (in Latin); Niter (in English); and Salpoter (in German)." One page later, "KNO3 " is listed under "Chemical Composition."

The portion upon which Block and the district court rely to show that this substance cures tooth pain is headed "Collective Statements" and reads:

(Ming): Li-Shi-Zhen said: It cures summer infections and the catching of colds. It cures acute enteritis with severe vomiting, exertion through excessive sexual activity, black jaundice, chronic abdominal pain, conjunctivitis, headaches and tooth pain.

The next three or so pages of the Grand Dictionary list the ailments that this substance cures. An interesting but not atypical Pu-Xiao (Na2 SO4 ) has the nature of water, tastes salty, and its flavor is cold. It can only descend and cannot ascend. It is Yin within Yin--that's why it can cleanse the accumulation in the gastrointestinal tract and can expel the San-Jiao devilish fire. Whereas Niter (KNO3 ) has the nature of fire, tastes bitter and spicy, tastes slightly salty and has a flavor which is very warm, it's [sic] nature is ascending. It is fire within water. That's why it can break the accumulation and disperse hardness, and cure the febrile diseases.

                paragraph reads:  "For curing the paralysis of the four limbs, leprosy or problems caused by Taoist stone eating."    This substance also apparently cures indigestion, lack of energy, typhoid, cataracts, and much, much more.  The Grand Dictionary compares what appears to be various forms in which xiao shi is found, and the characteristics of each.  An excerpt is
2. Ben Cao Gang Mu

Ben Cao Gang Mu (Ben Cao) is a treatise on Chinese Medicine published in Hong Kong, in Chinese, in 1930, 1954, and 1965, but was originally written by Li-Shi-Zhen who lived during the Ming Dynasty. 3 Like the Grand Dictionary, only a portion of the Chinese text Ben Cao is in evidence and that portion was translated by Mr. Cao and Dr. Wei for purposes of this litigation. The district court relied upon Ben Cao because it discusses "xiao shi," which the translation of Ben Cao states is "niter" and associates the ability to cure "tooth pain (Ya Tong or Ya Teng)."

It is important to note, and the district court appeared to accept as fact, that the portion of the Grand Dictionary relied upon was compiled during the Ming Dynasty of the 13th to 15th centuries in Ben Cao Gang Mu so that the relevant portion of the Grand Dictionary is substantially a restatement of Ben Cao with some modification by an unidentified author. The court stated that these two references "quote the same Ming Dynasty source as labeling KNO3 for tooth pain."

The Ben Cao translation is entitled "Xiao-Shi (Niter)" and refers to the same "Other names" for this substance listed in the Grand Dictionary. With respect to the quoted sections above, the Ben Cao translation is nearly verbatim. It has this to say about tooth pain:

Da Ming states: It cures summer infections and the catching of colds, acute enteritis with severe vomiting, exertion thru excessive sexual activity and black jaundice, chronic abdominal pain, conjunctivitis, headache and tooth pain (Ya-Tong or Ya Teng).


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