Lever Bros. Co. v. Procter & Gamble Mfg. Co.

• Decision Date: 28 December 1943
• Docket Number: No. 5151.,5151.
• Citation: 139 F.2d 633
• Parties: LEVER BROS. CO. v. PROCTER & GAMBLE MFG. CO. et al.
• Court: U.S. Court of Appeals — Fourth Circuit

139 F.2d 633 (1943)

LEVER BROS. CO. v. PROCTER & GAMBLE MFG. CO. et al.

No. 5151.

Circuit Court of Appeals, Fourth Circuit.

December 28, 1943.

William D. Mitchell, of New York City (Edgar Allan Poe, of Baltimore, Md., William H. Davis and Worthington Campbell, both of New York City, Walter J. Blenko, of Pittsburgh, Pa., John Hoxie and Eben M. Graves, both of New York City, and Floyd S. Davis, of Cambridge, Mass., on the brief), for appellant.

Marston Allen, of Cincinnati, Ohio (Drury W. Cooper, of New York City, Frank B. Ober, of Baltimore, Md., Erastus S. Allen, of Cincinnati, Ohio, Francis G. Cole, of Washington, D. C., and David Fox and Louis Quarles, both of Milwaukee, Wis., on the brief), for appellees.

Before PARKER, SOPER, and DOBIE, Circuit Judges.

DOBIE, Circuit Judge.

Lever Brothers Company (hereinafter called Lever) brought a civil action for patent infringement against the Procter and Gamble Manufacturing Company and the Procter and Gamble Distributing Company (both hereinafter called Procter) in the United States District Court for the District of Maryland. The patent in suit is United States Patent No. 2,215,539 (hereinafter called the Bodman patent), issued to John Bodman on September 24, 1940. Application for the patent was filed by Bodman on April 8, 1933, and the application was amended on June 18, 1936, and again in 1940. Shortly before the issuance of the patent, Bodman, who was director of the Research Department of Lever, assigned the patent to Lever.

The District Judge filed extensive findings of fact, appropriate conclusions of law based on these findings, and an elaborate opinion, 49 F.Supp. 443, in which he held the patent in suit invalid and decided there was lack of infringement. Judgment was accordingly entered for the defendants, the complaint was dismissed, and Lever has duly appealed.

1. Framed Soap and Milled Soap.

Prior to the work and experimentation by Bodman, in connection with his patent, soap in bar form for domestic use was divided into two types, known as "framed" soap and "milled" soap. Each type had distinctive advantages and disadvantages, with which soap makers were quite familiar. These soap makers fully knew the enormous commercial profit that would result if a new type of soap could be developed which would possess a maximum of the advantages of both types of soap with a minimum number of the disadvantages attaching to these two types. Bodman's endeavors were directed toward the solution of this problem.

Framed soap was generally made by mixing the soap stock in an open crutcher, after which the soap was poured into a frame or mould, allowed to cool and cut into bars. The soap could be aerated in the crutcher by stirring in air. Framed soap had a high water content and could be easily made to float; but it tended to warp, and since the air dispersion was coarse and uneven, it did not possess the fine texture or feel which was desired by many fastidious housewives. Procter's Old Ivory was an outstanding example of a floating framed soap.

Milled soap is subjected to milling and plodding. From the kettle, the soap is fed to a cooling roll, solidified in thin films and it then goes through a drier, where the water content is reduced. The dried soap is then fed onto a series of rolls, making up a mill, which, by a squeezing process, causes the soap to become homogeneous. From the mill, the soap emerges in ribbons and then goes to a "Hinkle" which it leaves in the form of small pellets. Then these pellets of soap are fed into a plodder, which squeezes the pellets together, and compacts them. The soap is extruded as a continuous bar. This bar is cut into cakes, which are pressed and stamped. Milled soap has a fine texture or feel, holds perfumery well and does not tend to warp; but it does not float and develops laminations or cleavage planes into which water may enter and cause the soap to swell and disintegrate.

2. The Bodman Patent.

The patent was both a process patent and a product patent. There were 20 claims, the first 10 for the process, the last 10 for the product. Lever, in its brief (page 1) states: "As the product claims are closely interwoven with the process, it is enough for the purposes of this appeal to discuss the process." We proceed on this theory.

The important claims are numbers 5, 7, 13 and 20. These claims read:

5. "The process of producing a floating soap having a continuous aerated mass with a uniform dispersion of fine voids throughout, and a characteristic texture and firmness similar to milled soaps and shape-stability, comprising introducing a soap mass containing about 5 to 25% moisture into a closed mixing chamber, working said mass in the presence of air while heating at a temperature of from about 160 degrees F. to about 225 degrees F. to uniformly distribute air throughout said heated mass, maintaining sufficient pressure on said mass to retain the air therein, releasing said mass to cause it to solidify in a continuous and aerated state."

7. "The process of producing a floating soap having a continuous aerated mass with a uniform dispersion of fine voids throughout and a characteristic texture and firmness similar to milled soap and shape-stability, comprising introducing a soap mass containing less than about 25% moisture into a closed mixing chamber, working said mass under pressure in the presence of air and while in a plastic or semi-fluid condition to uniformly distribute air throughout said mass, and forming the mass into bars or cakes."

13. "A floating soap, having a characteristic texture and firmness similar to milled soaps and shape-stability, said floating soap having a moisture content of less than about 25% and having a compatible gas finely disseminated through it in sufficient quantity to make it float, said floating soap resulting from the cooling of a plastic or semi-fluid soap mass containing less than about 25% of moisture subjected, in the presence of the gas, and under pressure to mechanical agitation to disseminate under pressure the gas through the mass at a temperature sufficiently high to render it at least plastic or semi-fluid."

20. "A floating soap having a uniform dispersion of fine voids throughout its mass, and a characteristic texture and firmness similar to milled soaps and shapestability, with a moisture content of less than about twenty-five per cent, said floating soap resulting from working in a closed mixing chamber a continuous soap mass containing about 5 to 25% moisture in the presence of a compatible gas under pressure, while the mass is heated to a temperature of from about 160 degrees F. to about 225 degrees F., and then releasing the mass to cause it to solidify in a continuous and aerated state."

The essential elements of the Bodman process may be briefly summarized as involving the following steps and conditions:

1. The preparation of a soap mass with a low moisture content (less than about 25%); and

2. While this soap mass is in a plastic or partially melted condition, as the result of a temperature ranging from about 160° F. to about 225°

3. The intense agitation and working of the soap mass;

4. In the presence of air;

5. Under pressure; and

6. In a chamber that is closed to the atmosphere.

We might note that the wording of Claims 5 and 7 is almost identical, with the single exception that while Claim 5 precisely points out in degrees the temperatures at which the soap mass is to be heated, Claim 7 omits any specification of temperature in terms of definite degrees. In like manner, Claim 20 thus specifies the temperature, while this is omitted in Claim 13.

3. The Validity of the Bodman Patent.

(a) The Claims and Specifications.

The District Court held the vital claims of Bodman (apart from the prior art) to be inherently invalid on two grounds: (1) These claims do not properly describe and define Bodman's real discovery or invention, and (2) The terms of the claims, if the broad construction for these terms urged by counsel for Lever be upheld, are so uncertain and so ambiguous that these terms fail to furnish sufficient information of the process to persons versed in the soap-maker's art, as is required by 35 U.S.C.A. § 33. We shall discuss these grounds in the order set out above.

The holding of the District Court that Bodman, in his claims, did not properly describe his real discovery or invention was based largely on the court's finding that Bodman's discovery was limited to a soap that could be made at a temperature of not less than 190° F. with a water content of 15% or more. The District Court appears to have believed that Bodman claimed that soap produced by his process possessed the desirable characteristics of milled soaps to the full extent of very hard milled soaps, and that soaps made under the Bodman process at temperatures below 190° failed to comply with this standard.

A careful reading of the entire patent, we think, will disclose that Bodman did not claim for soap made under his process the fullest degree of the advantageous characteristics of milled soap at all the ranges of temperature. Thus, we find in the patent such expressions as:

"My process may be carried out to produce a bar or cake of the new floating soap of novel structural and other characteristics more nearly resembling a milled soap than a framed soap, in that it may possess some characteristics similar to those of the finest milled soaps, such as firmness, fine grain or texture, smooth `feel' to the fingers, and ability to retain the more volatile perfume, and does not warp on aging and drying."

"Although the soap of the present invention resembles milled soap in appearance and in some of its characteristics, it is distinctly not a `milled soap'."

"* * * Satisfactory results have, however, been obtained by maintaining a given pressure on the soap mass, say about twenty-five pounds per square inch, and varying the temperature according to the degree of the...