Rich Products Corporation v. Mitchell Foods, Inc.

• Decision Date: 15 February 1966
• Docket Number: No. 156,Docket 29952.,156
• Citation: 357 F.2d 176
• Parties: RICH PRODUCTS CORPORATION, Appellee, v. MITCHELL FOODS, INC., and Frank S. Mitchell, Appellants.
• Court: U.S. Court of Appeals — Second Circuit

357 F.2d 176 (1966)

RICH PRODUCTS CORPORATION, Appellee, v. MITCHELL FOODS, INC., and Frank S. Mitchell, Appellants.

No. 156, Docket 29952.

United States Court of Appeals Second Circuit.

Argued January 4, 1966.

Decided February 15, 1966.

Rehearing Denied April 11, 1966.

Hugh A. Chapin, New York City (Kenneth R. Sommer, and Popp & Sommer, Buffalo, N. Y., Edward W. Greason, and Kenyon & Kenyon, New York City, on the brief), for plaintiff-appellee.

Malcolm K. Buckley, Buffalo, N. Y. (Bean, Brooks, Buckley & Bean, Buffalo, N. Y., on the brief), for defendants-appellants.

Before MOORE, SMITH and ANDERSON, Circuit Judges.

ANDERSON, Circuit Judge:

This is a suit for infringement of claims one to four of United States Letters Patent No. 2,868,653, applied for on December 3, 1954 and issued on January 13, 1959 to Robert E. Rich, as assignee of Holton W. Diamond and Eugene L. Powell, the joint inventors. Rich assigned the patent and his rights for past infringement to the plaintiff, Rich Products Corporation.

Subsequent thereto the appellee commenced this action in the Western District of New York, alleging that the patent was being infringed, and demanding an accounting and injunction. The appellants denied the infringement, and affirmatively claimed that the patent was invalid because (1) it had been anticipated by (a) a patent granted in a foreign country more than one year prior to the date of the application for the United States patent (35 U.S.C. § 102(b) (1964 ed.)), and (b) a description in a printed publication in this country also prior to the application (35 U.S.C. § 102(a) (1964 ed.)), and (2) that the subject matter as a whole was obvious at the time of the invention (35 U.S.C. § 103 (1964 ed.)).

The patent describes various liquid emulsions which, when whipped, change in appearance and characteristics into a firm non-pourable product suitable for use as a salad or dessert topping. The appellee, Rich Products Corporation, has for twenty years been in the business of manufacturing and distributing whippable emulsions, and since the spring of 1956 has manufactured and distributed the product described in the patent in suit.

The record discloses that the desirable qualities of a commercial grade, whippable emulsion topping are: a consistently high yield of whipped topping from the liquid emulsion; a consistently stable topping which will not shrink, weep or collapse, or otherwise become deformed prior to consumption; and the attribute of remaining unspoiled even when stored for a relatively lengthy period. The patent in suit produces a product which possesses all of those qualities.

The whippable emulsions specified in the patent have four essential ingredients: water, an edible natural glyceride fat, a substituted cellulose of a special type, and at least one of a specified group of emulsifiers. In addition, sweeteners or flavoring substances may be, and normally are, added. These ingredients are then blended together as set forth in the patent to produce the cream product.

With regard to these components, the edible fat may be derived from animal or vegetable sources and the substituted cellulose is defined in the patent as one in "which at least some of the hydrogen molecules have been substituted with alkyl groups containing not more than two carbon atoms and at least part of such groups being methyl." The emulsifiers are described with particularity in the patent, but for purposes of this litigation they have been identified by their trade names: Spans, Tweens, Myverol, Vrest and Myrj.

The patent in suit sets out five claims, four of which are at issue here, and each of the four teaches the use of the four essential ingredients. Claim One, the generic claim, recites the use of water, fat, a substituted cellulose and any one or more of the four named emulsifying agents. Claims Two, Three and Four each includes water, fat, a substituted cellulose and an emulsifier (Spans in Claim Two, Tweens in Claim Three, and Myverol or Vrest in Claim Four).¹ The function of the emulsifiers is to give the resulting product its characteristic of being particularly whippable and consistent. The substituted cellulose, which replaces protein, contributes the quality of keeping well in storage for a substantial period.

The trial court decided that the patent was valid and that it had been infringed by the appellants. It is from that decision that this appeal is taken. We affirm.

The questions before us are (1) whether, applying the usual standards of appellate review, there is sufficient in the record to support the findings of fact upon which the trial court based its conclusions of absence of anticipation in prior art and lack of obviousness at the time of invention, and (2) whether, applying the standard of full review, the facts found warranted those conclusions and the ultimate determination that the patent was valid. Crest Specialty v. Trager, 341 U.S. 912, 71 S.Ct. 733, 95 L.Ed. 1349 (1951), reversing 7 Cir., 184 F.2d 577 (7th Cir. 1950); Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950); Mahn v. Harwood, 112 U.S. 354, 358, 5 S.Ct. 174, 6 S.Ct. 451, 28 L.Ed. 665 (1884); Gross v. JFD Manuf. Co., Inc., 314 F.2d 196, at 198-199 (2d Cir.), cert. den. 374 U.S. 832, 83 S.Ct. 1873, 10 L.Ed.2d 1054 (1963); Tatko Bros. Slate Co. v. Hannon, 270 F.2d 571, at 572 (2d Cir.), cert. den. 361 U.S. 915, 80 S.Ct. 260, 4 L.Ed.2d 185 (1959); Note, 29 U.Chi. L.Rev. 185 (1961).

ANTICIPATION

The claim of anticipation is based largely upon two patents issued in Great Britain which described a product somewhat similar to that set forth in the present patent and upon a chemical study which is referred to as the "Pratt article." There is also a claim that one of the patentees improperly induced the Patent Office to grant the patent.

The British Patents

The two British patents which the appellants cite as having anticipated the patent in suit are No. 555,361, issued in 1942, and No. 646,484, issued in 1950, a claimed improvement² on the 1942 patent. The central issue of the case, as pursued by the parties at the trial and in their briefs in this court, is a fairly narrow one and principally concerns the use of the term "glyceryl monostearate." The special significance of that substance in this litigation arises from its inclusion as an alternate ingredient in the British patent, and the appellants' contention that it is chemically and functionally the equivalent of the emulsifier, Myverol, specified in Claim Four of the patent in suit. The first British patent states that it "relates to the manufacture of a cream substitute and has as its object the manufacture of a cream substitute which will not suffer the souring or putrefying changes that are common to natural cream or to artificial creams * * *" The patent specification sets forth a formula which involves the use of two emulsifying agents, referred to as "A" and "B," both of which must be used. The other principal ingredient is a basic fat blend.³ The total process for manufacturing the cream substitute, as revealed in the British patent, involves the mixing of all of these ingredients, as well as desired sweeteners, in a specified manner.

In the British process glyceryl monostearate is not the emulsifying agent, though by nature it is an emulsifier. Its principal function under both British patents is to serve as an alternate fat-soluble vehicle for the coloring constituent, which the patent teaches "is preferably incorporated." The patents provide for an alternate formula for the basic fat blend which includes glyceryl monostearate to be used together with lecithin, both in very small relative portions. The emulsifier, however, in both British patents, is the function performed by agents "A" and "B." The patent in suit contains nothing comparable to agent "A," and its named emulsifiers are used in place of "A."

It appears from the record, and the district court so found,⁴ after hearing much evidence on the point, that the glyceryl monostearate specified in the British patent is not the same substance that is referred to in the patent in suit. In its pure form glyceryl monostearate apparently exists only as a curiosity of the laboratory. However, various commercial forms of the composition are commonly available. The court found that the glyceryl monostearate mentioned in the British patent was comparable to a commercial variety known as "Aldo 33," and that Claim Four of the patent in suit actually describes a substance commercially marketed under the name Myverol 18-85. There was abundant evidence, largely the testimony of expert witnesses, to support the critical finding that Aldo 33 and Myverol 18-85 were substantially different both chemically and functionally. There was included in this evidence, testimony concerning two experiments, which were conducted by appellee's expert at the time of the trial, one using Aldo 33 and the other using Myverol 18-85 in the formula of the patent in suit. The resulting products differed significantly, and the one employing Myverol 18-85 exhibited the superiority in consistency and stability which the patent in suit claims.

The appellants make much of their assertion that glyceryl monostearate appears in both the British patents and in the patent in suit and that both Aldo 33 and Myverol may be encompassed within the general generic definition of glyceryl monostearate, but they did not prove that there was no chemical difference between them, nor did they persuasively refute the fact that the functions of these commercial versions in the respective patents were quite different and that the act of substituting Aldo 33 for Myverol in the formula of the patent in suit produced a distinctly inferior result.

The patent in suit does far more than merely restate the teaching of the British patent in some slightly variant manner. It is more than another method of doing...