Hoover v. Eckerd's Cut Rate Medicine Co., 696.

• Decision Date: 21 October 1931
• Docket Number: No. 696.,696.
• Parties: HOOVER et al. v. ECKERD'S CUT RATE MEDICINE CO., Inc.
• Court: U.S. District Court — District of Delaware

53 F.2d 215 (1931)

HOOVER et al. v. ECKERD'S CUT RATE MEDICINE CO., Inc.

No. 696.

District Court, D. Delaware.

October 21, 1931.

Charles F. Curley, of Wilmington, Del., and Clifford E. Dunn and David A. Woodcock, both of New York City, for plaintiffs.

Robert Starr Allyn, of New York City, and Henry R. Isaacs, of Wilmington, Del., for defendant.

NIELDS, District Judge.

This is a suit in equity brought by Fred R. Hoover, as owner of the legal title to United States letters patent Nos. 1,222,144, and 1,225,362, granted to William M. Ruthrauff April 10, 1917, and May 8, 1917, respectively, upon applications filed October 2, 1916, against Eckerd's Cut Rate Medicine Company, Inc. Each patent is for a dentifrice. Pursuant to stipulation between the parties, an order was entered making W. M. Ruthrauff Company, a party plaintiff. It is the manufacturer and licensee under these patents of a tooth paste sold under the trade-name of "Acident." The bill contains the usual prayers for an injunction and an accounting of profits and damages.

The defendant attacks plaintiffs' title, contends that there is no patentable invention involved in either patent, that the patenteee abandoned any invention which he might have had, and that, even if the patents are valid, defendant has not infringed either of them.

The principal constituent of the enamel of the teeth is tricalcium or tribasic calcium phosphate. It is soluble in hydrochloric, acetic, or lactic acid in the sense that it will combine with them to form monobasic and dibasic calcium phosphate, both of which are soluble calcium salts, acid in character. Monobasic and dibasic calcium phosphates, when neutralized by an alkali, precipitate tribasic calcium phosphate.

There is evidence that nature hardens teeth through the action of saliva, and that calcium salts are abstracted from the blood stream and secreted by the three glands of the mouth into the saliva. Saliva is sometimes alkaline and sometimes acid; the change occurring several times a day.

It was the aim and object of the patentee to calcify the teeth by imitating or supplementing what he assumed to be nature's process.

Patent No. 1,222,144, the first in suit, relates particularly to an acid calcifying dentifrice. It contains seven claims, of which claims 1 and 2 are in issue. They read:

"1. A calcifying dentifrice comprising a soluble calcium salt adapted to permeate the minute spaces in the tooth surface and be there transformed and deposited by the saliva in the form of the natural cementing substance of the tooth, in combination with an agent for more effectively causing the solution to permeate and completely fill up such spaces.

"2. A calcifying dentifrice containing the calcium salts of which the teeth are composed, held in solution by an acid, so as to be converted by the saliva into the natural cementing substance of the tooth and deposited in the external spaces of the tooth, sealing up these spaces and thereby causing a calcification or solidification of the tooth's surface; and an agent possessing hygroscopic action by which the calcifying solution may be more effectively introduced into the external enamel spaces of the tooth, by virtue of the affinity of said hygroscopic vehicle for the residual moisture of the tooth's structure; and an abrasive which will not chemically interfere with said calcifying action."

The second patent in suit, No. 1,225,362, like the first, relates to an acid calcifying dentifrice. Both patents were applied for on the same day. The second patent contains five claims, all of which are in suit. It is sufficient to quote claim 1, which reads:

"1. A dentifrice comprising an acid salt inert to the tribasic calcium phosphate of the tooth structure, and capable of stimulating secretion of alkaline saliva and of reacting therewith to deposit tribasic calcium phosphate in the interstices of the tooth surface."

The plaintiffs contend that the essence of the invention of the two patents in suit it to provide a tooth paste that will calcify the teeth; the "gist of the invention is to provide a calcifying dentifrice."

There is some scientific opinion in support of the theory that the enamel of the teeth is porous. It is admitted, however, that the spaces, if spaces there be, are infinitesimally small and are close to the limit of visibility under the microscope. It is significant that plaintiffs' expert and the patentee entertain different theories as to the spaces or interstices in the teeth. The expert testified: "Here you have got little columns, rods, apparently there, with a little space in between the rods, as if you had a handful of lead pencils here and there is a little space in between, and I should say that the space, judging from the appearance of the microscope, seems to be pretty close to the limit of visibility, which is about 1/200th of a hair diameter." On the other hand, the patentee testified: "These tubules are interlaced with small fibres, so that there are practically no spaces between the tubules. They are primarily a solid mass and what were formerly recognized as canals and interstices in the enamel are now considered to be largely the spaces inside the tubes." It thus appears that the nature or...