Nestle-Le Mur Co. v. Eugene

• Citation: 55 F.2d 854
• Decision Date: 05 February 1932
• Docket Number: No. 5787.,5787.
• Parties: NESTLE-LE MUR CO. v. EUGENE, Limited.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

55 F.2d 854 (1932)

NESTLE-LE MUR CO. v. EUGENE, Limited.

No. 5787.

Circuit Court of Appeals, Sixth Circuit.

February 5, 1932.

F. O. Richey, of Cleveland, Ohio (F. M. Bosworth and Richey & Watts, all of Cleveland, Ohio, on the brief), for appellant.

Alfred W. Kiddle, of New York City (Wylie C. Margeson, of New York City, Squire, Sanders & Dempsey, of Cleveland, Ohio, on the brief), for appellee.

Before MOORMAN, HICKS, and HICKENLOOPER, Circuit Judges.

HICKENLOOPER, Circuit Judge.

This is an action for infringement of patent No. 1,266,879, issued to Eugene Francois Suter, May 21, 1918, for electrical heating apparatus for permanently waving hair. Claim 1 is the only claim in suit, and is printed in the margin.¹ The District Court found this claim to be valid and infringed as against defenses of anticipation, aggregation, want of invention, and noninfringement. The defendant below appeals.

The human hair is waved (permanently, so called) by winding strands or tresses tightly around suitable curlers, dampening with borax solution or other preferred preparation, enclosing these coils in stiff paper tubes, inserting in tubular electric stoves, and applying heat. The patentee is said to have discovered that, since the hair is coarser and more abundant near the roots, that portion requires heating for a longer period than nearer the tips, where it is finer and more easily injured by excessive heat. To accomplish this result, or practice this method, the patentee duplicated the electric stoves or heaters in common use (see patents to Grosert and Unger, No. 1,103,506, and to Kremer, No. 1,164,102), and connected the electric circuit in parallel to the resistance or heating coils, so that by the operation of a switch the current to the upper or outer heater could be connected or disconnected at will. The two heaters are coaxially arranged, attached to each other and held in position by hollow struts through which the electrical connections pass, and, except for these struts, are separated by air gaps to prevent heat from passing from one to the other. The method employed by the plaintiff for use of this device is first to connect electrically the lower heater, or that next to the head, and, after that heater has been in operation for a given period of time, to connect the upper or outer heater by means of the switch. Both heaters then remain in use until the waving operation is completed, and thus heat is applied for a longer period to that portion of the hair nearer the roots. The device of the patent is said by the defendant to be but the obvious and logical means of accomplishing the desired end of applying heat for different periods of time to the different longitudinal sections of the hair, to involve no more than the ordinary skill of an electrician, and to represent merely a duplication of parts, and hence not to be patentable.

The defendant's device is an almost exact copy of the plaintiff's commercial device, but is claimed not to infringe chiefly for two reasons, (1) because the connecting struts are of aluminum, a metal of high heat conductivity, and the two heaters are thus said not to be "heat insulated from each other"; and (2) because in operation the defendant first passes current through both heaters for a given period of time and then disconnects the upper heater whereby the heat is said to be thereafter maintained throughout both heaters by the sole operation of the lower unit. The patent says nothing as to the material of which the tubular struts are to be made, and it is obvious that, if these struts are composed of a metal of high heat conductivity, which joins the tubular members forming the inner and outer casings of the heater, which members are likewise of high conductivity, the two stoves cannot be completely "heat insulated" from each other. Claim 1 as originally presented in the application contained no call for heat insulation. It was rejected upon reference to the patent to Grosert and Unger, supra, and other patents, and was canceled, and claim 1 as now contained in the issued patent was substituted. Under these circumstances it is at least very doubtful whether any device could be said to infringe which did not have the several units heat insulated from each other, and whether the defendant's device, in spite of similarity of construction to plaintiff's commercial device, is so insulated. See Grand Rapids Refrigerator Co. v. Stevens (C. C. A.) 27 F.(2d) 243; Southern Textile Machinery Co. v. United Hosiery Mills Corp. (C. C. A.) 33 F.(2d) 862; Reynolds Spring Co. v. L. A. Young Industries, 36 F.(2d) 150 (all C. C. A. 6). In our opinion, however, the case need not turn upon this now well-established principle.

We are not impressed by the contention that, because the defendant, as manufacturer, instructed its vendees to operate the heaters by a method differing from the method employed by the plaintiff, or even by a method which is in direct opposition to plaintiff's method, infringement is thereby avoided. Both plaintiff's and defendant's heaters are susceptible of operation in the same manner. The patent is a machine patent, and, so long as all of the mechanical and electrical elements are identical in both the defendant's and the patented devices, and both are capable of being operated in the same manner and to accomplish the same result in substantially the same way, there would be infringement through manufacture and sale notwithstanding different methods of use were employed by the hairdresser vendees.

Defendant also attacks the utility of the device, contending that human hair is neither coarser nor more abundant near the roots to an extent requiring application of heat for longer periods to those portions. We have no doubt that by copying and using the patented device the defendant has estopped itself from claiming want of utility in the sense of the patent statute. Seymour v. Ford Motor Co., 44 F.(2d) 306, 308 (C. C. A. 6), and cases there cited. As pointed out by us in the decision just cited, this defense of want of utility is distinct from that of lack of the exercise of the inventive faculty, as to which no estoppel arises because of infringement or use.

We come then to what we consider the main issue upon the present record. Conceding the utility, or even the necessity, of applying heat for a longer period to the hair near the roots in order to procure a better and more permanent hair wave, the only real advance in the art seems to lie in, or result from, the discovery of the advantages of that method. Having made this discovery, the patentee designed the obvious electrical device to effect his purpose. We say "obvious," for it seems to us that, if the desired end of applying heat for different periods to different sections of the hair had been disclosed, it was well within the realm of electrical and mechanical skill, in view of the prior art, to arrange a plurality of heaters along a common axis, corresponding to the sections of hair to be differently treated, to construct resistance or heating coils within each of said units, of the size and material best adapted to produce the intensity of heat desired, and to connect such heating units in parallel and with such switches that each might be operated independently of the other or simultaneously. The question of law thus presented may perhaps be stated as follows: Where one discovers a new and useful process for accomplishing a given result, is the obvious mechanical or electrical device, obvious to any one to whom the proposed method is disclosed, patentable apart...