Lever Bros. Co. v. PROCTER & GAMBLE DISTRIBUTING
| Decision Date | 08 September 1987 |
| Docket Number | 85-2501 (AJL).,Civ. A. No. 84-4188 (AJL) |
| Citation | 668 F. Supp. 924 |
| Court | U.S. District Court — District of New Jersey |
| Parties | LEVER BROTHERS COMPANY, Plaintiff, v. The PROCTER & GAMBLE DISTRIBUTING COMPANY, Defendant. The PROCTER & GAMBLE COMPANY, Plaintiff, v. LEVER BROTHERS COMPANY, Defendant, J.L. Prescott Company, Defendant-Intervenor. |
Berj A. Terzian, Pennie & Edmonds, New York City, David M. McCann, Carpenter, Bennett & Morrissey, Newark, N.J., for Lever Bros. Co. and J.L. Prescott Co.
Jerome G. Lee, Morgan & Finnegan, New York City, Frank L. Bate, Shanley & Fisher, P.C., Morristown, N.J., for Procter & Gamble Co.
This consolidated action involves cross-claims for patent infringement brought by the makers and/or distributors of the products "Bounce" and "Snuggle." Bounce and Snuggle are the small sheets used in automatic clothes dryers to reduce the static, and to enhance the fluffiness, of dried laundry. The parties refer to their products as "fabric softeners." Jurisdiction over this action is asserted by way of 28 U.S.C. § 1338(a). Venue in the District of New Jersey is asserted under 28 U.S.C. § 1400 (b).
The Lever Brothers Company ("Lever") commenced this action on October 9, 1984 by filing its complaint against The Procter & Gamble Company1 and The Procter & Gamble Distributing Company ("P & G"). Lever is a Maine corporation with its principal place of business in New York, New York, and does substantial business in New Jersey. Lever markets and sells the dryer-added fabric softening product, Snuggle. P & G is an Ohio corporation with its principal place of business in Cincinnati. P & G apparently manufactures, as well as markets and sells, the dryer-added fabric softening product, Bounce.
P & G commenced an action against Lever by complaint filed May 24, 1985.2 By order, filed September 30, 1985, a motion brought by J.L. Prescott Company ("Prescott") for leave to intervene as a defendant in the second action was granted. Apparently, Prescott manufactures dryer-added fabric softening products for sale to companies which market, distribute and sell such products to the general public. It seems Lever is Prescott's largest customer for dryer-added fabric softener products. I shall refer to Lever and Prescott collectively as "Lever/Prescott."
These actions were originally assigned to another judge and were consolidated for all purposes on October 4, 1985. By notice of motion, filed November 26, 1985, Lever/Prescott brought the instant motion seeking summary judgment on P & G's claim against Lever/Prescott. In this motion Lever/Prescott assert (1) P & G's two allegedly infringed patents do not cover Lever/Prescott's Snuggle product; (2) even if the patents do cover Snuggle, P & G granted Lever/Prescott an implied license to use the allegedly infringed patent; and (3) P & G is barred by the doctrines of estoppel and laches from asserting the alleged infringement. The judge to whom these actions were originally assigned entertained oral argument on the motion on March 10, 1986 and reserved decision. By order, filed July 29, 1986, these matters were transferred to me.
I was unaware that the case had been transferred to me with a decision reserved on the pending summary judgment motion. The parties apprised me of the fact at a status conference held in late October, 1986. The parties reargued the motion before me on February 13, 1987. I filed an opinion deciding the motion on February 26, 1987. The parties have submitted briefs on a motion for reargument filed by Lever/Prescott. This amended opinion supersedes my original opinion and addresses certain issues raised in the reargument submissions.
Prior to 1965, clothes softening products were developed for use in the washing machine. Added during the rinse cycle of the washing process, these products were designed to enhance the feel and smell of freshly laundered clothes, reduce knotting and wrinkling of clothes and render the clothes static-free. Although these washer-added softeners basically achieved their intended purposes, they apparently had several drawbacks: they did not react well with standard clothes washing detergents; they required additional work on the part of the person washing the clothes; and, to be effective, they had to be used in relatively large amounts. (See Rzucidlo Decl., 1/2/86, Ex. D, at col. 1.) To address these drawbacks, inventors began to develop dryer-added softener products.
Four patented inventions, developed by three different inventors, are relevant to this motion. All four patents are now and, at all relevant times, have been owned by P & G. Two of the patents originally obtained by Messrs. Gaiser and McQueary are not directly at issue in this motion and need not be described in depth. The two patents obtained by an inventor named Morton are the primary focus of this summary judgment motion.
On August 13, 1965, Conrad Gaiser, an independent researcher, filed an application for a patent on his invention for a dryer-added softening product. The product was designed to overcome the drawbacks associated with washer-added softeners. The abstract of Gaiser's patent states: "Fabrics are conditioned by commingling the same in a laundry dryer by tumbling them together with a flexible substrate carrying a softening or other modifying agent whereby the agent is transferred to the fabrics." (Rzucidlo Decl., 1/2/86, Ex. D, at col. 1.) The discussion of the invention indicates that the preferred form of substrate sheet —i.e. the sheet upon and in which the chemical softeners are carried—is "in the form of cellulosic sheet material" such as paper toweling or flannel. (Id. at col. 2, 1. 25.) The discussion further sets forth several preferred fabric conditioners, but notes "it is immaterial what the conditioning agent is as long as it is substantive to the fabric upon which it is deposited, and will vaporize under the flow of drying air and steam generated from the washed fabric as it is being dried." (Id. at col. 3, 1. 62-66.) The discussion also notes that roughly one to ten grams of fabric conditioner carried in a sheet of approximately 105 square inches of paper toweling is sufficient to be effective.
Although the above-cited references in the discussion section of Gaiser's patent are somewhat specific, the actual claims awarded to Gaiser are not.4 The eight claims asserted by Gaiser are all related to the first which claims: "The method of conditioning fabrics which comprises commingling pieces of damp fabric by tumbling said pieces under heat in a laundry dryer together with a flexible substrate carrying a conditioning agent to effect transfer of the conditioning agent to the fabric while being dried." (Id. at col. 5, 1. 20-25.) Claims four through six assert the method of claim one where the agent is a softening, antistatic and bacteriostatic agent.
The patent was awarded to Gaiser on May 6, 1969. Although the record indicates P & G now owns the Gaiser patent, it is unclear exactly when P & G acquired it. The patent was first commercialized under license to the Purex Corp., Ltd., which utilized the invention in its "Tumblepuffs" product. (Rzudiclo Decl., 1/2/86, Ex. A, FW 65-76.)
At some point prior to December, 1968, a P & G employee named Morton began to study the Tumblepuffs product and to investigate the possibility of improving it. Apparently, at this point in time, P & G had not yet acquired the rights to the Gaiser patent. Morton apparently discovered that although the Tumblepuffs product achieved its basic purposes, it occasionally caused unsightly staining of the clothes with which it was tumbled. Morton determined the staining occurred because the substrate sheet used in Tumblepuffs was not sufficiently absorbent to prevent excessive chemical softening agents from being transferred to the tumbling clothes: "The prior art has failed to recognize the importance of controlling release of softener from the substrate by controlling the absorbency of the material used as a substrate." (Rzucidlo Decl., 1/2/86, Ex. A, FW 3.) To address the problem, Morton developed the idea of using a more absorbent substrate sheet than had been used under the Gaiser patent, upon which the chemical softeners were coated or impregnated.
On December 30, 1968, an application was filed on Morton's behalf for a patent on his invention, setting forth seventeen claims. Because the Patent Office determined the application actually set forth grounds for two distinct inventions, the application was eventually treated as two applications. (Id., FW 101.) Claims one through sixteen of Morton's original application were treated as one application and eventually resulted in the issuance of United States patent number 3,686,025 (the "'025 patent"). These claims involved an invention for an improved "process for coating of felt or fibrous materials." (Rzucidlo Decl., 1/2/86, ¶ 8.) Claim seventeen of Morton's application was not pursued until after issuance of the '025 patent. It resulted in the issuance of United States patent number 3,843,395 (the "'395 patent"), for an improved "coating process which involves tumbling during the coating process." (Id.) Because infringement of the Morton patents is the subject matter of this motion, the prosecution history—i.e. the actions taken, and the arguments made, by counsel for Morton and officials of the Patent Office during prosecution of the patent—must be assessed in some detail.5
As originally filed on December 30, 1968, the '025 patent application was approximately sixty pages long. It was divided into sections headed "Background of the Invention," "Detailed Description of the Invention," "Brief Summary of the Invention" and "Examples" and concluded with a section setting forth the specific claims of the...
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